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).
February 2023
1. The issue of which standard of disclosure applies when assessing the legal question of novelty and the issue of which standard of proof applies when assessing evidence and factual questions are distinct and unrelated. The fact that the standard of disclosure required for a finding of lack of novelty (or for allowing an amendment to the application under Article 123(2) EPC) is the standard of a direct and unambiguous disclosure is immaterial for the question of what standard of proof applies when considering evidence and factual issues in the context of novelty (or inventive step) (see point 16).
2. The standard of proof generally applied at the EPO for deciding on an issue of fact is the balance of probabilities. According to this standard, the EPO must base its decisions on statements of fact which, based on the available evidence, are more likely than not to be true. This standard also applies when examining factual issues in the context of novelty (see point 14).
Priority not valid in so far as the claim covers subject-matter disclosed in an earlier application by the same applicant
Coherence with principles of claiming multiple priorities and partial priority
Undisclosed disclaimer based on a disclosure in an earlier application by the same applicant not allowed: basis for the assessment is the claim before the insertion of the disclaimer
Referral to the Enlarged Board of Appeal - (no)
Referral to the Enlarged Board of Appeal - uniform application of law
January 2023
Inventive step - main request and first to sixth auxiliary requests (no): presentation of information on a GUI
Inventive step - "GAMBRO test" not passed
Admittance of requests submitted after summons - seventh and eighth auxiliary requests (no): at least no clear allowability
Appeal deemed validly filed - (yes)
Main request - admission (yes), sufficiency of disclosure (no)
Amended auxiliary request 1 after summons - admission/cogent reasons (no)
Auxiliary request 2 - admission (yes), requirements of the EPC met (yes)
Earliest priority - identity of invention (no)
Amendment to appeal case (yes)
New allegation of fact - admitted (no)
Novelty - public prior use (yes)
Inventive step - auxiliary request 4 (no)
If the claimed non-technical features do not interact with claimed technical features such that they produce a further technical effect, for the assessment of inventive step one may
- either include the corresponding aim to be achieved in a non-technical field in the formulation of the problem as part of the framework of the technical problem that is to be solved,
- or else take the corresponding business scenario as the starting point for the problem and solution approach (see reasons 3.2.2).
Inventive step - mixture of technical and non-technical features
Inventive step - closest prior art
Inventive step - skilled person
Inventive step - main request (no)
Inventive step - first auxiliary request (no)
Appeal decision - remittal to the department of first instance (yes)
Amendments - allowable (yes)
Novelty - public prior use (no)
Inventive step - bonus effect (no)
Amendment to appeal case - justification by party (yes)
Amendment after summons - taken into account (yes)
Inventive step - (no)
Sufficiency (yes): therapeutic effect rendered plausible by the tests shown in the patent; no counter-evidence that the effect cannot be attained
Novelty (yes): no convincing evidence that the invention was made available to the public by public prior use or oral disclosure
Inventive step (yes): claimed therapeutic use not obvious over the cited prior art
Grounds for opposition - insufficiency of disclosure (no)
Grounds for opposition - extension of subject-matter (no)
Novelty - (yes)
Novelty - prior disclosure
Novelty - implicit features (no)
Amendment after summons - exceptional circumstances (no)
Amendment after summons - taken into account (no)
Appeal decision - remittal to the department of first instance (no)