Selected decisions
The list of “Selected decisions” alerts users to all newly published decisions for which a headnote or a catchword has been provided by the board. Usually, a board will add a headnote or catchword if it wishes to provide a brief summary of a particular point of law or to draw attention to an important part of the reasons for the decision. The list contains all decisions with a headnote or catchword published in the last three years and can be viewed by year by selecting the year from the menu on the left.
The list below contains all decisions with a headnote or catchword that have been released for publication in the last six months (newest first).
October 2022
Inventive step - mixture of technical and non-technical features
Inventive step - skilled person
Inventive step - notional business person
1. If the deletion of dependent claims after notification of a summons to oral proceedings enhances procedural economy by clearly overcoming existing objections without giving rise to any new issues this might constitute cogent reasons justifying exceptional circumstances in the sense of Article 13(2) RPBA 2020.
2. For a first medical use of a substance or composition according to Article 54(4) EPC to be sufficiently disclosed it is not required to show the suitability for each and every disease, but it usually suffices to show that at least one medical use is credibly achieved.
Amendments - main request, auxiliary requests 1 to 5: added subject-matter (yes)
Amendments - auxiliary request 6: added subject-matter (no)
Amendment to appeal case - justification by party (yes)
Sufficiency of disclosure - auxiliary request 6 (yes)
Inventive step - auxiliary request 6 (yes)
September 2022
Substantial procedural violation - opportunity to comment (no)
Substantial procedural violation - reimbursement of appeal fee (yes)
Admissibility of appeal - appeal sufficiently substantiated (yes)
Admissibility of opposition
Appeal decision - extent of examination
Appeal decision - reformatio in peius
Late-filed evidence - submitted shortly before oral proceedings
Late-filed evidence - admitted (no)
Novelty - (yes)
Inventive step - (yes)
The yardstick for determining whether the position of an appellant is, because of its own appeal, worsened in a way which is incompatible with the principle of the prohibition of reformatio in peius is the order of the decision under appeal, in particular the order's legal effect on the appellant.
If an opposition is considered inadmissible in the appeal proceedings, an appellant whose opposition was rejected in the decision under appeal as unallowable would not be in a worse position than if it had not appealed, as in both cases the patent would be maintained as granted. The legal reasons leading to this result, including whether the opposition is rejected as inadmissible or unallowable, do not fall within the scope of the principle of the prohibition of reformatio in peius (Reasons 3.5).
Admissibility of appeal - appeal sufficiently substantiated (yes)
Admissibility of opposition
Appeal decision - extent of examination
Appeal decision - reformatio in peius
Late-filed evidence - submitted shortly before oral proceedings
Late-filed evidence - admitted (no)
Novelty - (yes)
Inventive step - (yes)
Inventive step - main request (no)
Late-filed auxiliary requests - admitted (no)
August 2022
Added subject-matter - main request and auxiliary request 2b (yes): unallowable intermediate generalisation
Admittance - auxiliary request 1c (no): deletion of claims is an "amendment" (T 1480/16, T 1857/19 and T 2201/19 not followed); no cogent reasons + no clear allowability
Partial reimbursement of appeal fee at 25% - (yes): withdrawal of the proprietor's appeal before announcement of decision
July 2022
Different interpretation of Article 109(1) EPC from that provided for in the Guidelines for Examination in the EPO - application of Article
20(2) RPBA 2020 (see point 2.4.3 of the Reasons).
Decision in written proceedings: cancellation of hearing following appellant's announcement of non-attendance
Novelty under Art. 54(3) EPC
Novelty - sole request (yes)
Interlocutory revision - examining division should have rectified decision (yes)
Substantial procedural violation - (no)
Remittal - (yes): special reasons for remittal
Reimbursement of appeal fee in full (no)
Partial reimbursement of appeal fee at 25% - (yes): timely withdrawal of request for oral proceedings
Inconsistency between Guidelines and Case Law