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).
November 2023
Examination procedure - substantial procedural violation
Examination procedure - request for oral proceedings ignored (yes)
Remittal - fundamental deficiency in first-instance proceedings (yes)
Reimbursement of appeal fee - equitable by reason of a substantial procedural violation
October 2023
Board limited to examine objections of lack of inventive step dealt with in the appealed decision (no)
Re-opening the debate on the main request (no)
Re-opening the debate on auxiliary request 1 (yes, but only on a specific point)
Oral submissions by an accompanying person (yes)
Postponement of the oral proceedings (no)
Reply to the statement of grounds of appeal - sufficient substantiation of objections of lack of inventive step (yes)
Evidence - amendment after summons
Evidence - admitted (yes)
Evidence - exceptional circumstances (yes)
Auxiliary request 3a - amendment after summons - admitted (yes) - exceptional circumstances (yes)
Remittal to the opposition division
Remittal - (no)
Main request (patent as granted) - inventive step - (no)
Auxiliary requests 1, 2, 3a, 4, 6 - inventive step - (no)
Auxiliary request 5 - amendments - added subject-matter (yes)
Objections 1 to 6 under Rule 106 EPC - all dismissed
Neuheit - Hauptantrag (nein)
Erfinderische Tätigkeit - Hilfsantrag 1' (nein)
Änderung des Vorbringens - Hilfsantrag 2'
Änderung des Vorbringens - in zulässiger Weise vorgebracht und aufrechterhalten (nein)
Änderung nach Ladung - Hilfsantrag 3'
Änderung nach Ladung - außergewöhnliche Umstände (ja)
Zurückverweisung - (ja)
Novelty - main request (no)
Reply to statement of grounds of appeal - reasons set out clearly and concisely (auxiliary requests 1-3
Reply to statement of grounds of appeal - no)
Amendments - extension beyond the content of the application as filed (auxiliary request 4
Amendments - yes)
If, as in the present case, no causality exists between a newly raised aspect and the final conclusion of the Board, the newly raised aspect does not qualify as an exceptional circumstance according to Article 13(2) RPBA 2020 that could justify taking a new request into account.
(Reasons 2.5.2)
Novelty - main request (no)
Novelty - auxiliary request 1 (no)
Late-filed auxiliary request 2 - admitted (no)
Exceptional circumstances without causality between a newly raised aspect and the Board's final conclusion (no)
I. The European Patent Office is competent to assess whether a party is entitled to claim priority under Article 87(1) EPC.
There is a rebuttable presumption under the autonomous law of the EPC that the applicant claiming priority in accordance with Article 88(1) EPC and the corresponding Implementing Regulations is entitled to claim priority.
II. The rebuttable presumption also applies in situations where the European patent application derives from a PCT application and/or where the priority applicant(s) are not identical with the subsequent applicant(s).
In a situation where a PCT application is jointly filed by parties A and B, (i) designating party A for one or more designated States and party B for one or more other designated States, and (ii) claiming priority from an earlier patent application designating party A as the applicant, the joint filing implies an agreement between parties A and B allowing party B to rely on the priority, unless there are substantial factual indications to the contrary.
admissibility of the referral-(yes)
rephrasing of the referred questions-(yes)
competence of the EPO to assess entitlement to priority-(yes)
I. The European Patent Office is competent to assess whether a party is entitled to claim priority under Article 87(1) EPC.
There is a rebuttable presumption under the autonomous law of the EPC that the applicant claiming priority in accordance with Article 88(1) EPC and the corresponding Implementing Regulations is entitled to claim priority.
II. The rebuttable presumption also applies in situations where the European patent application derives from a PCT application and/or where the priority applicant(s) are not identical with the subsequent applicant(s).
In a situation where a PCT application is jointly filed by parties A and B, (i) designating party A for one or more designated States and party B for one or more other designated States, and (ii) claiming priority from an earlier patent application designating party A as the applicant, the joint filing implies an agreement between parties A and B allowing party B to rely on the priority, unless there are substantial factual indications to the contrary.
admissibility of the referral-(yes)
rephrasing of the referred questions-(yes)
competence of the EPO to assess entitlement to priority-(yes)
1. Neither the omission of a procedural act nor an error caused by miscommunication between the applicant and the representative or by an incorrect recollection of the applicant's instructions can be regarded as an error under Rule 139 EPC, provided that the document filed with the EPO is deemed to express the representative's intention at the time of filing.
2. A request for correction of a declaration of withdrawal of an appeal under Rule 139 EPC does not reopen the appeal proceedings, but only starts ancillary proceedings to decide whether the appeal proceedings should be reopened.
Correction of error - (no)
Correction of error - immediately evident that nothing else could have been intended (no)
Error of representative
Retraction of a declaration to withdraw appeal
Conditions for retracting a declaration
Ancillary proceedings after closure of appeal proceedings
Exercise of discretion to make a referral to the Enlarged Board of Appeal
September 2023
Main request, Auxiliary request 4 - Novelty - (no)
Auxiliary requests 1, 2, 3 and 5 - taken into account (no)
Auxiliary requests 6 to 10 - pending (no)