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).
August 2023
Aufgrund folgender außergewöhnlicher Umstände ist das von der Einsprechenden verspätet eingereichte Dokument E65a im Sinne der Artikel 13 (1) und (2) VOBK 2020 im Verfahren zu berücksichtigen:
- Das Dokument war objektiv schwer auffindbar.
- Es wurde zweifellos nicht absichtlich zurückgehalten, sondern von einem Dritten erstmals in einem vom vorliegendem Einspruchsverfahren getrennten Einspruchsverfahren entgegengehalten und ist hierdurch der Einsprechenden bekannt geworden.
- Es gehört prima facie zum Stand der Technik.
- Es ist prima facie sehr relevant.
(Siehe Punkt 3.3 der Entscheidungsgründe)
Änderungen - zulässig (ja)
Ausreichende Offenbarung - Ausführbarkeit (ja)
Spät eingereichte Beweismittel - Verfahrensmissbrauch (nein)
Spät eingereichte Beweismittel - Dokument hätte bereits im erstinstanzlichen Verfahren vorgebracht werden können (nein)
Spät eingereichte Beweismittel - prima facie relevant (ja)
Spät eingereichte Beweismittel - zugelassen (ja)
Zurückverweisung - besondere Gründe für Zurückverweisung
1. The requirement for immediate and complete substantiation of a request for re-establishment corresponds to the principle of "Eventualmaxime/Häufungsgrundsatz/le principe de la concentration des moyens", according to which the request must state all grounds for re-establishment and means of evidence without the possibility of submitting these at a later stage.
2. Dynamic interpretation of the EPC, as derived from Articles 31(1) and 31(3) Vienna Convention on the Law of Treaties, must take account of developments in national and international procedural law, notably as regards the guarantees of fair trial before a tribunal of law (Article 6(1) ECHR).
3. There is no "absolute" right to oral proceedings upon a party's request, but it is subject to inherent restrictions by the EPC and procedural principles generally recognised in the Contracting States of the EPO.
4. If oral proceedings do not serve any legitimate purpose, the requirement of legal certainty in due time prevents the Board from appointing them.
5. It is not the purpose of oral proceedings in the context of proceedings for re-establishment to give the appellant a further chance to substantiate their factual assertions or to provide evidence despite the absence of factual assertions in the request for re-establishment.
Re-establishment of rights - (no)
Re-establishment of rights - time limit for paying renewal fee
Re-establishment of rights - time limit for filing statement of grounds
Re-establishment of rights - cross-check (no)
Re-establishment of rights - request not duly substantiated
Re-establishment of rights - all due care (no)
Re-establishment of rights - due care on the part of the professional representative
Admissibility of appeal - statement of grounds
Admissibility of appeal - filed within time limit (no)
Oral proceedings - before board of appeal
Oral proceedings - right to be heard in oral proceedings
Oral proceedings - request for oral proceedings
July 2023
Inventive step - (no)
Amendment after summons - exceptional circumstances (no)
Amendment after summons - cogent reasons (no)
Amendment after summons - taken into account (no)
Main request and auxiliary requests 1 and 2 - lack of clarity (yes)
Auxiliary request 3 - lack of clarity (no)
Amendment after summons - exceptional circumstances (yes)
Remittal - (yes)
1. For the question of whether the applicant is "successor in title" within the meaning of Article 87(1) EPC, it is sufficient for the applicant or patent proprietor to demonstrate that the assignment of the priority right was effective before the subsequent application was filed. The law does not set forth any other condition. In particular, the assignment need not be effective before the filing date of the subsequent application. (see point 2.3).
2. In the context of in-person oral proceedings, a request of a party for a hybrid format to allow the representatives to attend the hearing in person and other attendees to attend remotely should normally be granted only if the participation of the person for whom the access by means of videoconferencing technology has been requested is related to a person whose participation in the oral proceedings is relevant to the case, in particular to the decision to be taken at the oral proceedings (see point 1.).
Novelty - main request (yes)
Inventive step - ex post facto analysis
Inventive step - main request (yes)
Inventive step - formulation of the technical problem
Priority - transfer of priority right
Priority - partial priority (yes)
Priority - validity of priority date (yes)
Amendment after summons - exceptional circumstances (no)
Amendment after summons - taken into account (no)
Where opposition proceedings have been interrupted under Rule 142(1)(b) EPC, acts done by the parties or the competent body of the EPO during the period of interruption are considered invalid.
An appeal against a decision taken during the interruption is inadmissible, because it has no valid subject eligible for a judicial review.
The RPBA also apply to requests for apportionment of costs under Article 104(1) EPC.
A negligent behaviour may also justify apportionment of costs. However, the negligence must be serious enough to be considered equivalent to wilful misconduct.
Admissibility of appeal - (no)
Apportionment of costs - severe negligence (no)
Amendment after summons - exceptional circumstances (yes)
Admission - final new request of claims (yes)
Amendments - allowable (yes)
Inventive step - (yes)
Inventive step - (yes)
Inventive step - non-obvious alternative
Amendment after summons - filed on express invitation from the Board
Amendment after summons - not detrimental to procedural economy
Amendment after summons - taken into account (yes)
1. Two successive appeals, interlocutory revision, request for reimbursing first or second appeal fee.
2. Giving one single ground for the refusal, presently a violation of Article 123(2) EPC, may not be procedurally optimal, but is in itself not a procedural violation. Depending on the subject-matter claimed, it can be a defendable procedure to refrain from examining certain substantive issues, such as inventive step and novelty, as long as the division is not convinced that the potential distinguishing features have a proper basis under Article 123(2) EPC. An erroneous assessment of a substantive issue by the division is not a substantial procedural violation, either. In sum, there was no basis for the ordering of the reimbursement of the (first) appeal fee in the decision allowing the interlocutory revision (Reasons 5.9).
3. The board notes that the applicant may not have been able to avoid paying the second appeal fee in all circumstances. Even assuming for the sake of argument that the division would not have allowed the interlocutory revision and instead would have referred the first appeal to the Board of Appeal under Article 109(2) EPC, the payment of a second appeal fee might still have become unavoidable. Since the first refusal decision only dealt with added subject-matter, it would still have been quite likely that the case would have been remitted to the examining division for examination of the outstanding substantive issues even after a successful (first) appeal (Reasons 5.13).
4. Once the examining division reopens the examination, it is formally not prevented from re-examining all the issues which were already the subject of the previous decision. The principle of prohibition of reformatio in peius does not apply in this situation (Reasons 5.18).
Amendments - allowable (no)
Interlocutory revision - substantial procedural violation (no)
Interlocutory revision - reimbursement of appeal fee (no)
Interlocutory revision - reformatio in peius (no)