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Case Law of the Boards of Appeal
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Case Law of the Boards of Appeal – Case Law of the Boards of Appeal of the European Patent Office

Overview

DETAILED TABLE OF CONTENTS

FOREWORD TO THE ELEVENTH EDITION

USER GUIDE

1.Structure and features of the "Case Law of the Boards of Appeal"
2.Abbreviations
3.Citations
4.Case Numbers
5.Search the Case Law of the Boards of Appeal

I. PATENTABILITY

A.Patentable inventions
1.Patent protection for technical inventions
2.Whether there is an invention under Art. 52(1) EPC
3.Technical character as a requirement for an invention
4.Two-hurdle approach G 1/19
5.Assessment of technical character
5.1.Assessment without regard to the prior art
5.2.Concept of technical character in the case law
5.2.1Apparatus
5.2.2Methods
a)Methods involving technical means
b)Methods used in a technical process carried out on a physical entity
5.2.3Technical considerations and technical implementations
6.Non-inventions under Article 52(2) and (3) EPC
6.1.Legal basis
6.2.Scope of application
6.3.Discoveries, scientific theories and mathematical methods
6.3.1Discoveries and scientific theories
6.3.2Mathematical methods
6.4.Aesthetic creations
6.5.Computer-implemented inventions
6.5.1Definition of computer-implemented invention
6.5.2Distinction from computer programs
6.5.3Scope of Article 52(2)(c) EPC exception to patentability
6.5.4Patentability of computer programs: G 3/08
6.5.5Patentability of computer programs: technical character
6.5.6Establishing technical character
a)Further effects of programs for computers and G 1/19
b)Direct link to physical reality
c)Potential technical effect
d)Virtual or "calculated" technical effect
e)Tangible effect
f)Technical considerations: programming a computer
g)Technical considerations: implementation of a function on a computer system
h)Methods performed by a computer
i)Computer-implemented simulation methods
6.6.Schemes, rules and methods for performing mental acts, playing games or doing business
6.6.1Methods for doing business
6.6.2Methods for performing mental acts
6.6.3Word-processing
6.7.Presentation of information
6.7.1User Interfaces
B.Exceptions to patentability
1.Introduction
1.1.Amendments made to Article 53 EPC as part of the EPC 2000 revision
1.2.Basic principles
2.Breaches of "ordre public" or morality
2.1.Rule 28 EPC
2.1.1Scope of exception under Rule 28(c) EPC
2.1.2Scope of exception under Rule 28(d) EPC
2.1.3Test date
2.2.Article 53(a) EPC
2.2.1Test date
2.2.2Assessment of an objection according to Article 53(a) EPC
a)Difference from test under Rule 28(d) EPC
b)Concept of "morality" and "ordre public"
c)Donor consent
3.Patentability of biological inventions – Article 53(b) EPC
3.1.Plants and plant varieties
3.1.1Definition of the term "plant varieties"
3.1.2Limits to patentability
3.2.Animals and animal varieties
3.3.Essentially biological processes
3.3.1Essentially biological processes for the production of animals
3.3.2Essentially biological processes for the production of plants
a)G 2/07 and G 1/08
b)Patentable technical processes
3.3.3Product claims for plants or plant material
a)G 2/12 and G 2/13
b)G 3/19 – dynamic interpretation of Article 53(b) EPC
3.4.Microbiological processes and the products thereof
3.4.1The concept of "microbiological processes"
3.4.2Difference between microbiological and genetic-engineering processes
4.Medical methods
4.1.Introduction
4.2.Differences and similarities in approaches to establishing whether a method for treatment by surgery or therapy or a diagnostic method involved
4.3.No need for practitioner involvement
4.4.Surgical methods
4.4.1One surgical step in a multi-step method
4.4.2Treatment by surgery not limited to surgery for a therapeutic purpose
4.4.3Towards a new concept of "treatment by surgery"
4.4.4"Treatment by surgery" in the case law since G 1/07
a)Surgical nature of a method step
b)Assessment of "substantial health risks"
c)Surgical step part of claimed method or simply a preparatory measure?
d)Surgical step not in the claim but covered by it?
e)The apparatus claim is not a disguised method claim
f)Unpatentable claims for products that can only be produced in a surgical step
4.4.5Avoiding the exclusion of methods of treatment by surgery from patent protection under Article 53(c) EPC
a)Claim cannot be left to encompass surgical step
b)Disclaimer
c)Methods only concerning the operation of a device
4.4.6Data obtained during surgery
4.5.Therapeutic methods
4.5.1The term "therapy"
a)Definition of the term
b)Prophylactic treatments
c)Distinction from performance improvement
d)Distinction from cosmetic methods
e)Examples from case law
4.5.2Methods with both therapeutic and non-therapeutic indications
a)Inevitable and inextricably linked therapeutic effect of the claimed method
b)Therapeutic and non-therapeutic effects distinguishable
4.5.3Disclaimer for escaping the exception to patentability under Article 53 c) EPC
4.6.Diagnostic methods
4.6.1Opinion G 1/04 and its application in case law
a)What constitutes "diagnostic methods"
b)The criterion "practised on the human or animal body"
c)Clarity of a claim relating to diagnostic methods
d)Intermediate findings of diagnostic relevance
C.Novelty
1.General
2.State of the art
2.1.General
2.2.Applications with same filing or priority date
2.3.Relevant date of documents
2.4.Prior rights – Article 54(3) EPC
2.4.1European prior rights
2.4.2Applicability of Article 54(3) EPC in cases of potentially colliding European parent and divisional applications
2.4.3Excluded national prior rights
2.4.4PCT applications as state of the art
2.5.Non-prejudicial disclosures under Article 55 EPC
2.6.In-house knowledge not published before the priority date
2.7.Prior art acknowledged in a patent application
2.8.Common general knowledge
2.8.1Definition of "common general knowledge"
2.8.2Patent specifications as common general knowledge
2.8.3Specialist journals as common general knowledge
2.8.4Databases as common general knowledge
2.8.5Proof of common general knowledge
3.Availability to the public
3.1.General
3.2.Ways of making information available to the public
3.2.1Publications and other printed documents
a)General
b)Company papers
c)Advertising brochure
d)Report available in the specialist field
e)Books
f)Instruction manual
g)Patent and utility models
h)Trade names
i)Abstracts of documents
3.2.2Lectures and oral disclosure
3.2.3Internet disclosures
a)General
b)Public availability of a document stored on the World Wide Web
c)Publication date
3.2.4Public prior use
a)General
b)Public prior use occurred
c)No public prior use
d)Internal structure or composition of a product
3.2.5Biological material
3.3.The concept of "the public"
3.3.1Sale to a single customer
3.3.2Making available to a person not skilled in the art
3.3.3A limited circle of people
3.3.4Public library
3.4.Obligation to maintain secrecy
3.4.1General
3.4.2Parts for serial production
3.4.3Distribution of prospectuses, technical descriptions
3.4.4Commercial relationships and interests
3.4.5Demonstrating products for presentation purposes
3.4.6Presenting the product in writing
3.4.7Making samples/products available for test purposes
3.4.8Conferences
3.4.9Public availability of documents submitted for standardisation
3.4.10Joint venture and other commercial agreements
3.4.11Paper submitted to obtain an academic degree
3.4.12Medical field including clinical trials
3.4.13Notary
3.5.Evidence
3.5.1Burden of proof
3.5.2Standard of proof
a)General
b)Public prior use
c)Internet – proof of the date of availability
4.Determining the disclosure of the relevant prior art
4.1.General rules of interpretation
4.2.Combinations within a prior art document
4.3.Taking implicit features into account
4.4.Taking intrinsic features into account
4.5.Taking equivalents into account
4.6.Taking drawings into account
4.7.Taking examples into account
4.8.Broad claims
4.9.End-values
4.10.Deficiencies and mistakes in a disclosure
4.11.Accidental disclosure
4.12.Reproducibility of the content of the disclosure
5.Ascertaining differences
5.1.Comparing each individual item from the prior art
5.2.Distinguishing features
5.2.1Difference in wording
5.2.2Differences in values
5.2.3Difference in parameters
5.2.4Difference in composition
5.2.5Functional features
5.2.6Generic disclosure
5.2.7Product claim with process features
5.2.8Non-technical distinguishing features
6.Chemical inventions and selection inventions
6.1.General
6.2.Novelty of chemical compounds and groups of compounds
6.2.1Anticipation of certain compounds
a)Definition of a substance by its structural formula or other parameters
b)Selection of starting substances from different lists
c)Selection on the basis of a general formula
6.2.2Novelty of groups of substances
6.2.3Novelty of enantiomers
6.2.4Achieving a higher degree of purity of a compound
6.3.Selection from parameter ranges
6.3.1Selection of a sub-range
a)Requirements for novelty: narrow, far removed and the "gold standard"
b)Purposive selection: a requirement for inventive step rather than novelty
c)Earlier case law: three requirements for novelty
6.3.2Overlapping ranges and multiple selection
6.4.Subject-matter group
7.First and second medical use
7.1.First medical use
7.1.1Introduction
7.1.2Scope of a purpose-related product claim
7.1.3Protection of a preparation in the form of a "kit-of-parts"
7.1.4Further technical information as compared with the state of the art
7.2.Second (or further) medical use
7.2.1Introduction
7.2.2Restriction to substances and compositions
7.2.3Interpretation of the term "substance or composition“
7.2.4Transitional provisions
7.2.5Purpose-limited product claims and Swiss-type claims – scope of protection
7.2.6Novelty of the therapeutic application
a)General
b)New therapeutic application based on the group of subjects to be treated
c)New technical effect
d)Same illness
e)New dosage regimen
f)New therapy with a different mode of administration
g)Statement of purpose of surgical use for a known instrument
h)Discovery of a previously unknown property of a compound underlying the known effect
7.2.7Whether there is a therapeutic method
8.Second (or further) non-medical use
8.1.Novelty criteria for use claims and process claims containing a purpose feature
8.1.1General issues decided before the Enlarged Board
8.1.2Non-therapeutic treatment of animals
a)Non-therapeutic application
8.1.3Applicability of G 2/88 and G 6/88 to process claims
a)General
b)Different treatment of use and process claims
c)Interpretation of process claims
d)Use of a known process for a particular purpose
e)Discovery of new properties/technical effects underlying the known use
f)Use of a substance to achieve a technical effect only attained in special circumstances
8.1.4Statement of purpose in non-medical use claims in view of Article 52(4) EPC 1973
8.1.5Novelty criteria for product claims with purpose characteristics
D.Inventive step
1.Introduction
2.Problem-solution approach
2.1Objective assessment of inventive step
2.2Departing from the problem-solution approach
3.Closest prior art
3.1.Determination of closest prior art in general
3.2.Approaches to selecting the closest prior art
3.3.Several workable routes to the invention
3.4.Same purpose or effect
3.5.Similarity of the technical problem
3.6.Implicit features
3.7.Most promising starting point
3.7.1General
3.7.2Most promising springboard
3.8.Further criteria for determining the closest prior art
3.8.1Defective disclosure
3.8.2Confidential disclosure in the application
3.8.3Speculative character
3.8.4Old prior art documents
3.8.5Improvement of a production process for a known product
3.9.Consequences of choosing a certain starting point
4.The technical problem
4.1.Determination of the objective technical problem in general
4.1.1Objective criteria
4.1.2Technical effect encompassed by the technical teaching of the application documents and actually provided/achieved
a)Decisions before G 2/21
b)Decisions following G 2/21
4.1.3Whole scope of the claim
4.2.Formulation of the objective technical problem
4.2.1No pointer to the solution
4.2.2Problem formulated in the patent application as starting point
4.2.3Formulation of partial problems – lack of unity
4.3.Solving the technical problem
4.3.1Sufficient evidence for alleged advantages
4.3.2Comparative tests
4.3.3Post-published evidence and reliance on a purported technical effect for inventive step ("plausibility")
a)General principles
b)Decisions prior to G 2/21
c)Decisions following G 2/21
4.4.Reformulation of the technical problem
4.4.1Reformulation if the problem is not solved
4.4.2Reformulation of the "subjective" into an objective technical problem
4.4.3Limitations to the reformulation of the technical problem
a)General principles and relationship with Article 123(2) EPC
b)Subsequently invoked technical effect
4.5.Alternative solution to a known problem
5."Could-would approach" (obviousness)
6.Ex post facto analysis
7.Expectation of success, especially in the field of genetic engineering and biotechnology
7.1.Reasonable expectation of success
7.2.Obvious to try
7.3.Random techniques and elements of surprise
7.4.Try and see situation
8.Skilled person
8.1.Definition of the skilled person
8.1.1Definition
8.1.2Point at which the skilled person enters the stage
8.1.3Competent skilled person – group of people as "skilled person"
8.1.4Definition of the person skilled in the art in the field of biotechnology
8.1.5Identification of the skilled person in the case of computer-implemented inventions
8.2.Related technical fields (neighbouring fields)
8.3.Skilled person – level of knowledge
8.3.1In general
8.3.2Awareness of the totality of the pertinent prior art
8.3.3Textbooks, technical literature and common knowledge
8.3.4Common general knowledge in general
8.3.5Technical field
8.3.6Other
8.4.Everyday items from a different technical field
9.Assessment of inventive step
9.1.Assessment of inventive step in the case of mixed-type inventions
9.2.Problem-solution approach when applied to mixed-type inventions
9.2.1The Comvik approach
9.2.2Excluded subject-matter
9.2.3Technical implementation of excluded subject-matter
9.2.4G 1/19
9.2.5Features contributing to the technical character of the invention
9.2.6Assessment of non-technical features
a)Technical contribution
b)Interaction of non-technical features with technical subject-matter
9.2.7Aim to be achieved in a non-technical field included in the formulation of the technical problem
9.2.8Credible technical effects
9.2.9The notional business person
9.2.10Computer programs
9.2.11Assessment of features relating to a presentation of information
a)Data visualisation
b)Graphical user interfaces
c)Functional and cognitive data
d)User preferences for displaying data
e)Data structures
9.2.12Assessment of features relating to mathematical algorithms
a)Designs
b)Simulations/modelling
c)Database management systems and information retrieval systems
d)Navigation systems
e)Artificial intelligence and machine learning
f)Linguistics and classification of texts
g)Image processing
h)Security
9.2.13Discoveries
9.2.14Human Perception
9.2.15Games
9.2.16Mental acts – technical embodiments
9.2.17Logistics
9.2.18Weather-related algorithms
9.3.Combination invention
9.3.1Existence of a combination invention
9.3.2Partial problems
9.4.Combination of teachings
9.5.Technical disclosure in a prior art document
9.6.Features not contributing to the solution of the problem
9.7.Substitution of materials – analogous use
9.8.Combination of documents
9.9.Chemical inventions
9.9.1Problem-solution approach in chemical inventions
9.9.2Structural similarity
9.9.3Broad claims
9.9.4Intermediate products
9.9.5Predictable improvements resulting from to crystalline forms
9.9.6Synergistic effects
9.10.Equivalents
9.11.Selection inventions
9.12.Problem inventions
9.13.New use of a known measure
9.14.Obvious new use
9.15.Need to improve properties
9.16.Disclaimer
9.17.Optimisation of parameters
9.18.Small improvement in commercially used process
9.19.Analogy processes
9.20.Envisageable products
9.21.Examples of lack of inventive step
9.21.1Foreseeable disadvantageous or technically non-functional modifications
9.21.2Modifications to the closest prior art obvious to the skilled person
9.21.3Technical standards
9.21.4Reversal of procedural steps
9.21.5Purposive selection
9.21.6Automation
9.21.7Enhanced effect
9.21.8Simplification of complicated technology
9.21.9Choice of one of several obvious solutions
a)Arbitrary choice from a host of possible solutions
b)Selection from obvious alternatives
9.21.10Several obvious steps
9.21.11Putting the closest prior art device into practice
9.21.12Animal testing and human clinical trials
10.Secondary indicia in the assessment of inventive step
10.1.General issues
10.2.Technical prejudice
10.2.1Demonstrating prejudice
10.2.2Isolated examples of prejudice
10.2.3Development of the art in a different direction
10.3.Age of documents – time factor
10.4.Satisfaction of a long-felt need
10.5.Commercial success
10.6.Market competitors
10.7.Simple solution
10.8.Unexpected bonus effect
10.8.1General
10.8.2One-way-street situation (inevitable effect)
10.8.3Determining effects that are crucial from those that are merely accidental?
10.8.4Assessment of inventive step where unexpected effect solves a further technical problem
E.The requirement of industrial application under Article 57 EPC
1.Notion of "industrial application"
1.1.Invention and industrial application
1.2.Any kind of industry
1.2.1Methods applied in the private and personal sphere
1.2.2Cosmetic and beauty salons
2.Reproducibility and sufficiency of disclosure
3.Indication of a profitable use of the invention in industry

II. PATENT APPLICATION AND AMENDMENTS

A.Claims
1.Basic principles
1.1.Purpose of claims
1.2.Types of claim
1.3.Technical features
1.4.Examination of the requirements under Article 84 EPC in opposition and opposition appeal proceedings
1.5.Requirements under Article 84 and Article 83 EPC
2.Form, content and conciseness of claims
2.1.Form of claims: Rule 43(1) EPC
2.1.1One-part or two-part claim
2.1.2Two-part claims: preamble and characterising portion
2.2.More than one independent claim per category: Rule 43(2) EPC
2.2.1Conditions
2.2.2Burden of proof
2.2.3No applicability in opposition proceedings
2.3.Conciseness and number of claims
2.4.Reference to the description or drawings: Rule 43(6) EPC
3.Clarity of claims
3.1.General principles
3.2.Relative qualities and vaguely formulated claims
3.3.Indication of all essential features
3.4.Clarity of broad claims
3.5.Functional features
3.6.Characterisation of an invention by a parameter
3.7.Unspecified features
3.8.Standards
3.9.Trade marks
3.10.Principles in connection with categories of claim
4.Disclaimers
5.Claims supported by the description
5.1.General principles
5.2.Restrictions on generalising the technical information and examples adduced in the description
5.3.Bringing the description into line with amended claims
6.Interpretation of claims
6.1.General principles
6.2.Meaning of "comprising (substantially)", "consisting (essentially) of", "containing"
6.3.Using description and drawings to interpret the claims
6.3.1General principles
6.3.2Legal basis for using description and drawings to interpret the claims
6.3.3Interpretation of ambiguous terms or confirmation of the text of a claim
6.3.4Reading additional features and limitations into the claims
6.3.5Use in the examination relating to the clarity requirement pursuant to Article 84 EPC
6.3.6Definition of the scope of protection with regard to infringement not within the EPO's competences
7.Product-by-process claims
7.1.Introduction
7.2.Requirement that the claimed product must be patentable
7.3.Requirement that the claimed product cannot be described in any other way
7.4.Applicability of the principles for product-by-process claims to use claims
7.5.Process claims containing product features
7.6.Extension of protection conferred by product-by-process claims
8.Claims fees
8.1.Number of claims
8.2.No refund of claims fees
B.Unity of invention
1.Introduction
2.Unity in the context of different types of claims
2.1.Plurality of independent claims
2.2.Dependent claims
2.3.Intermediate products
3.Assessing lack of unity of invention
3.1.General approach – content of claims
3.2.Assessment of lack of unity at the search stage
3.3.Assessment of lack of unity and of requests for refund of further search fees in examination proceedings
3.4.No assessment of lack of unity in opposition proceedings
4.Criteria for determining lack of unity
4.1.Analysis of the technical problem as a precondition
4.2.Examination as to novelty and inventive step
5.The single general inventive concept
5.1.General
5.2.Special technical features and inventive character of the single general concept
5.3.Unity of single claims defining alternatives ("Markush claims")
6.Plurality of inventions – further search fees
6.1.Consequences of non-payment of a further search fee
6.2.Euro-PCT applications
6.3.Applicability of Rule 64, (former) Rule 164(2) EPC or Rule 137(5) EPC
6.4.Dispensing with further search fees
C.Sufficiency of disclosure
1.Introduction
2.Date of compliance
3.Parts of the application relevant for assessing sufficiency of disclosure
3.1.Application as a whole
3.2.Meaning of terms in the relevant technical field
3.3.Alleged effect not a feature of the claims
4.Knowledge of skilled person relevant for assessing sufficiency of disclosure
4.1.The disclosure is aimed at the skilled person
4.2.References may also enable the skilled person to carry out an invention
5.Clarity and completeness of disclosure
5.1.General principles
5.2.Indication of at least 'one way'
5.3.Examples
5.4.Invention to be performed over the whole scope claimed
a)Invention defined by its function - variants – technical concept fit for generalisation – broad claims
b)Impact of claim interpretation, realistic approach and non-working embodiments
c)Speculative subject-matter
d)Objection of lack of sufficiency by technical field – approach in mechanical engineering and case law discussion
e)Objection of insufficient disclosure based on the subject-matter of a dependent claim
f)Case law assessment in specific cases
5.5.Parameters
5.5.1Ambiguous parameters
a)Essential parameters
b)Several known methods of determining a parameter
c)No or incomplete information on method of determining parameter
d)Effect of ambiguous parameter on claim interpretation
5.5.2Open-ended parameter features
5.5.3Unusual parameters
6.Reproducibility
6.1.Repeatability
6.1.1Artificial neuronal network
6.2.Hypothetical embodiments
6.3.Variants
6.4.Use to which invention is put
6.5.Reach-through claims
6.6.Reproducibility without undue burden
6.6.1Occasional failure
6.6.2Routine selection
6.6.3Wrong citations
6.6.4Forbidden area of the claims
6.6.5Non-disclosed steps
6.6.6Machine not available
6.6.7Experiments
6.6.8Calibration and identifiable measurement method
6.6.9Analytical measuring methods
6.6.10Chemical compounds
6.6.11Trademark
6.7.Trial and error
6.8.Post-published documents
6.9.Post-published standard
7.The requirement of sufficiency of disclosure in the biotechnology field
7.1.Clarity and completeness of disclosure
7.1.1General
7.1.2One way of implementing invention over whole scope of claim
7.1.3Repeatability
7.1.4Broad claims
7.2.Level of disclosure required for medical use – credible effect
7.2.1Preliminary remark
7.2.2Principles established by the case law – Requirement of suitability for the therapeutic effect rendered credible
7.2.3Evidence of therapeutic effect
a)Plausibility of therapeutic effect – case law prior to G 2/21
b)Consideration of post-published documents
c)Consideration of post-published documents limited: cannot remedy a fundamental insufficiency of disclosure
d)Whether opponents can cite post-published documents
e)Invoking G 2/21 for evidence of a non-therapeutic effect
f)Types of evidence of a therapeutic effect and consideration of clinical trials
g)Level of proof required in case of a serious disease
7.2.4Pharmaceutical compositions
7.2.5Field of pharmaceutical combinations (drug-drug interactions)
7.2.6Medicament directed to a specific group of patients
7.2.7Disclosure for some side effects
7.3.Level of disclosure required for antibodies
7.4.Whether opponents can cite post-published documents
7.5.Factors contributing to a finding of undue burden
7.6.Requirements relating to nucleotide and amino acid sequences
7.7.Deposit of living material
7.7.1Substantive law questions
7.7.2Procedural law questions
a)Conversion into deposit under the Budapest Treaty
b)Late submission of deposit number
c)Biological material deposited by a person other than the applicant
8.The relationship between Article 83 and Article 84 EPC
8.1.Article 83 EPC and support from the description
8.2.Article 83 EPC and clarity of claims
8.2.1Minority – or earlier – case law
8.2.2Majority case law
a)Currently predominant approach
b)Reiteration and/or illustration of predominant case law in recent case law
c)Case law before the now established approach
d)Debate around the majority and minority lines of case law and alleged divergence in the case law
9.Evidence
9.1.General principles
9.2.Consequences of a strong or weak presumption for sufficiency of disclosure
9.3.Objection of insufficient disclosure rejected – examples
9.4.Burden of proof on the opponent – special cases
9.5.Burden of proof shifted to the patent proprietor
9.6.Taking account of doubts
9.7.Burden of proof wrongly allocated at first instance
9.8.Consequence of an invention going against generally accepted scientific principles
9.9.Miscellaneous – argument based on potential effects on competition rejected by the board
D.Priority
1.Introduction
1.1.EPC provisions on priority
1.2.Purpose of the priority right
1.3.Internal priorities
1.4.Checks for validity of the priority right during examination and opposition proceedings
1.5.Evidence, correction and restoration
2.Right of priority of the applicant or its successor in title
2.1.General
2.2.Competence of the EPO to assess priority entitlement
2.2.1Question referred to the Enlarged Board in consolidated cases T 1513/17 and T 2719/19
2.2.2Distinction between title to the subsequent application and priority right
2.3.Application of the autonomous law of the EPC to the transfer of priority rights
2.4.Rebuttable presumption of entitlement to claim priority
2.4.1Introduction
2.4.2Relevant time for presumption and rebuttal
2.4.3Reversal of the burden of proof and strong presumption
2.4.4No restriction on who can challenge priority entitlement
2.5.Joint applicants for the subsequent application
2.5.1Introduction
2.5.2"Joint applicants" approach
2.5.3"PCT joint applicants" in G 1/22 and G 2/22
2.5.4Application of G 1/22 and G 2/22 by the boards – joint applicants for the subsequent application
2.5.5Implied agreement
2.6.Not all applicants for priority application named in subsequent application
2.6.1Rebuttable presumption applies
2.6.2No agreement can be implied
2.7.Case law prior to G 1/22 and G 2/22
2.7.1The "all applicants" approach applied by the boards prior to G 1/22 and G 2/22
2.7.2National laws considered
a)Determination of the applicable national law
b)Application of national law to succession in title under Article 87(1) EPC
2.7.3Burden of proof, standard of proof and suitable evidence of valid transfer
a)Burden of proof
b)Standard of proof
c)Suitable evidence of valid transfer, formal requirements
2.7.4Timing of transfer
3.Applications giving rise to a right of priority
3.1.Application filed in or for a state which is a party to the Paris Convention or a member of the WTO
3.2.National deposit of industrial design
3.3.Exhibition priority
3.4.Postdating of the previous application
3.5.Multiple exercise of the right of priority for one contracting state
4.Identity of invention
4.1.G 2/98 – interpretation of "the same invention"
4.2.Disclosure as the basis for the right to priority under Article 87(1) EPC
4.2.1Generally interpreted in the same way as for Article 123(2) EPC
4.2.2Qualification for partial priority – G 1/15
4.3.Disclosure in the previous application as a whole
4.4.Reference to common general knowledge
4.5.Explicit or implicit disclosure in the priority document of the features of the invention
4.5.1Example cases – features of the invention all disclosed in the priority document
4.5.2Example cases – features of the invention not all disclosed in the priority document
4.6.Enabling disclosure in the priority document
4.7.Error margins and definitions of limits
4.8.Selection from generic disclosure
4.9.Inventions relating to nucleotide and amino acid sequences
5.First application in respect of the invention
5.1.Identity of invention
5.2.Identity of applicant
5.3.Previous first application withdrawn
6.Partial and multiple priorities
6.1.Publications during the priority interval – effect on elements of the European patent application not entitled to priority
6.2.Different priorities for different parts of a European patent application
6.3.Multiple priorities or partial priority for one claim
6.3.1Development of the case law after G 2/98 in respect of generically formulated "OR" claims
6.3.2Referral case G 1/15 ("Partial priority")
6.3.3Application of G 1/15 in the jurisprudence of the boards
E.Amendments
1.Article 123(2) EPC – added subject-matter
1.1.General principles
1.2.Content of the application as filed: Parts of the application which determine the disclosure of the invention
1.2.1Description, claims and drawings
1.2.2Abstracts, titles, priority documents, parallel applications
1.2.3Language issues
1.2.4Cross-references to other documents – incorporation by reference
1.3.Standard for assessing compliance with Article 123(2) EPC
1.3.1Gold standard: directly and unambiguously derivable
1.3.2Standpoint of the skilled person
1.3.3Implicit disclosure
1.3.4Subject-matter not implicitly disclosed
a)Subject-matter merely rendered obvious by the content of the application
b)Results of reflection and imagination of the skilled person
c)General open-ended statement in description
1.3.5Conditions insufficient for compliance with Article 123(2) EPC
a)Consistency with original disclosure
b)Reasonable plausibility of the included feature
1.3.6Criteria not relevant for assessing compliance with Article 123(2) EPC
a)Indication in the description that subject-matter is known to the skilled person
b)Enabling disclosure
c)Limitation of scope of the original claim
1.3.7Novelty test
1.3.8Non-technical subject-matter
1.3.9Claim interpretation when assessing compliance with Article 123(2) EPC
a)Standpoint of the skilled person
b)Claim feature in itself imparts clear credible teaching
c)Illogical and technically inaccurate claim features may not be disregarded
d)Ambiguous features – role of description and drawings
e)Construction with regard to all technically logical interpretations
f)Possible but undefined embodiments in dependent claim
g)Incoherent use of terminology
h)Role of punctuation
1.4.Removal or replacement of features from a claim
1.4.1Broadening of claim – permissible within the limits of the original disclosure
1.4.2Basis in the application as originally filed – gold standard
1.4.3Omission of a feature presented as essential
1.4.4The essentiality or three-point test
a)Decisions setting out the test
b)Mere aid in assessing the allowability of amendments
c)No longer considered appropriate
d)Necessary but not sufficient condition
e)Decisions criticising the essentiality or three-point test
1.4.5Removal of set of features
1.4.6Removal of a feature indicating the intended purpose
1.4.7Elimination of inconsistencies and unclear features
a)Amendment allowed
b)Amendment not allowed
c)Article 84 EPC and Article 123(2) EPC – alleged inescapable trap
1.5.Ranges of parameters – setting upper and lower limits
1.5.1Forming a range by combination of end points of disclosed ranges
a)Combination of the preferred narrower range and one of the part-ranges lying within the disclosed overall range
b)Combination of the lower limit of the general range with the lower limit of the preferred range
c)End points which are not part of a range
d)Combination of an end point of a range with a value from a list of individually disclosed values
e)Combination of end points of different levels of preference for several aspects of a composition
1.5.2Forming a range with isolated value taken from example
a)Principle
b)Amendment allowed
c)Amendment not allowed
1.5.3Setting new end point with not expressly disclosed value – "less than", "below" and rounding values
1.6.Combination of features pertaining to separate embodiments or lists
1.6.1Combination of features pertaining to separate embodiments; application as filed is not a "reservoir"
a)Principles
b)Examples of cases where the combination was held to be unallowable
c)Examples of cases where the combination was held to be allowable
1.6.2Selections from two lists – singling out a combination of features
a)Principles
b)Meaning of "selection from two lists"
c)Disclosure of combination in an individualised manner – pointers
d)Lists of converging alternatives
1.6.3Deletion of elements from lists – shrinking the lists without singling out a combination of features
1.6.4Combination of original independent claim with features from a plurality of dependent claims referring back to the independent claim separately – "US style" dependencies
1.7.Disclaimers
1.7.1Definition
1.7.2Standards for examining disclosed and undisclosed disclaimers
a)Principles established in G 1/03 and G 2/03 for undisclosed disclaimers
b)Principles established in G 2/10 for disclosed disclaimers
c)Explanations in G 1/16
1.7.3Decisions applying the criteria established by the Enlarged Board in G 1/03 and G 1/16
a)Accidental anticipation
b)Drafting of disclaimers – disclaimer to remove no more than necessary
c)Drafting of disclaimers – disclaimer shall not remove less than is necessary
d)Drafting of disclaimers – delimitation against any potential prior art
e)Drafting of disclaimers – clarity
f)Undisclosed disclaimer must not be related to the teaching of the invention
g)Positive features – G 1/03 not applicable
h)Negative feature implicitly disclosed in original application – G 1/03 not applicable
1.7.4Decisions applying the criteria established by the Enlarged Board in G 2/10 – remaining subject-matter test
1.7.5Applicability of the decisions of the Enlarged Board to cases already pending
1.7.6No analogy with G 1/03 where a disclaimer already in the application as filed is deleted
1.8.Generalisations
1.8.1Replacing specific feature with more general term – no inclusion of undisclosed equivalents
1.8.2Generalisation and claim category
1.8.3No generalisation of an effect obtained for particular embodiments
1.8.4Amendments to preamble of claim by substituting general term for specific term
1.9.Intermediate generalisations
1.9.1Principles
1.9.2Examples regarding the requirement "no clearly recognisable functional or structural relationship"
1.9.3Further examples of unallowable intermediate generalisations
1.9.4Further examples of allowable extractions of isolated features from a set of features
1.10.Specific derived from generic
1.10.1Specific term or embodiment derived from generic disclosure
1.10.2Component of entity derived from entity
1.10.3Restricting a generic definition of a substituent to a specific (individual) one
1.10.4Multiple arbitrary selection
1.11.Additions
1.11.1Addition to the claim of a feature taken from drawings
1.11.2Addition to the claim of an isolated feature taken from description
1.11.3Addition to the claim of features originally presented as prior art
1.11.4Addition to the claim of features previously described as non-essential
1.11.5Adding prior art citations to the description
a)General
b)Erroneous delimitations from the relevant prior art
1.11.6Addition of advantages and effects to the description
1.11.7Addition/change of claim category
1.11.8Insertion of an ambiguous feature in the claim
1.11.9Characteristic described for intermediate product added to the claimed end product
1.12.Errors in the disclosure
1.12.1Calculation errors
1.12.2Incorrect structural formula
1.12.3Amendment based on erroneous figure in the disclosure
1.12.4Incorrect information in earlier application as filed but correct information directly and unambiguously derivable
1.13.Disclosure in drawings
1.13.1General
1.13.2Schematic drawings
1.13.3Negative features
1.14.Amending the description
1.14.1Amendment to provide support for unsupported claim
1.14.2Impact on the claimed subject-matter
1.14.3Adding prior art citations to the description – removing the wrong label "prior art"
1.14.4Amendment of definitions or removal of examples
1.14.5Shift in the information provided by the examples after amendment of claims
1.14.6Reformulation of the technical problem
1.14.7Replacement of complete description
1.14.8Deletion from the description of expressions making features optional
1.15."Comprises", "consists of", "consists essentially of", "contains"
1.16.Different sets of claims for different contracting states
2.Article 123(3) EPC – extension of the protection conferred
2.1.Purpose of Article 123(3) EPC
2.2.Totality of claims
2.3.Extent of protection
2.3.1Article 123(3) EPC and Article 69 EPC
a)Principles
b)Protection conferred within the meaning of Article 123(3) EPC not determined by subject-matter at issue in national infringement proceedings
c)Generally accepted meaning of a term in the claims versus definition in the description
2.3.2Cut-off point
2.3.3General claim interpretation
2.4.Deletions and replacements
2.4.1Deletion of a limiting feature in a claim – inescapable trap
2.4.2Deletion of feature from description where claim remains unchanged
2.4.3Deletion of examples for a general feature in a claim
2.4.4Deletion of disclaimer
2.4.5Deletion or replacement of drawings
2.4.6Deletion of feature in a claim mentioned "in particular"
2.4.7Deletion of a "preferred" feature in a claim
2.4.8Replacement of a restrictive term by a less restrictive term
2.4.9Replacement of an inaccurate technical statement in a claim
2.4.10Replacement of "cell of a plant" by "plant"
2.4.11Replacement of substance by device containing substance or substance with mechanical device
2.4.12Replacement by aliud
2.4.13Narrowing down a generic class or list of chemical compounds; open claims ("comprising"); sequential drafting ("cascade")
2.5.Additions
2.5.1Addition of technical features defining the invention more narrowly
2.5.2Reducing scope of claim by adding embodiments to a negative feature
2.6.Transposition of features within claims
2.7.Change of claim category
2.7.1From product claim to a claim directed to the use of the product
a)Different categories of use claims
b)From product claim to a claim directed to using a product to achieve an effect
c)From product claim to a claim directed to using a product for producing another product – Article 64(2) EPC
2.7.2From device claim to a method claim directed to using the device to carry out a work method
2.7.3From product or product-by-process claim to a claim directed to a process for manufacturing/preparing the product, and vice versa
2.7.4From a product claim to a product-by-process claim
2.7.5From method of operating a device claim to product claim
2.7.6From use claim to process claim, and vice versa
2.7.7From use claim to Swiss-type claim
2.7.8From Swiss-type claim to purpose related product claim under Article 54(5) EPC
3.Relationship between Article 123(2) and Article 123(3) EPC
3.1.Inescapable trap
3.2.Attempts to resolve the conflict
3.2.1General
3.2.2Replacement of an added undisclosed feature by another feature disclosed in the application as filed without violating Article 123(3) EPC
3.2.3Deletion of added undisclosed feature, which has no technical meaning, without violating Article 123(3) EPC
3.2.4Added undisclosed feature, which does not provide a technical contribution and does not contravene Article 123(2) EPC
3.2.5Resolving the conflict in cases of clerical errors or incompatibility between the claims as granted and the description
4.Correction of errors in the description, claims and drawings – Rule 139 EPC
4.1.Relationship of Rule 139 EPC with Article 123(2) and (3) EPC
4.2.Obviousness of the error and the correction
4.2.1Documents to be taken into account for the assessment of obvious error and correction
4.2.2Obvious error – incorrect information objectively recognisable
4.2.3Obvious correction – immediately evident that nothing else would have been intended than what is offered as the correction
a)Decisions where it was not immediately evident that nothing else would have been intended than what was offered as the correction
b)Decisions where it was immediately evident that nothing else would have been intended than what was offered as the correction
4.3.No replacement of the description under Rule 139 EPC
4.4.Request for correction to be filed without delay
4.5.Correction of errors in the description, claims and drawings after grant, and in opposition proceedings
5.Evidence and standard of proof for allowing amendments and corrections
F.Divisional applications
1.Introduction
2.Subject-matter of a divisional application
2.1.Subject-matter extending beyond content of the earlier application
2.1.1Principles
2.1.2Directly and unambiguously derivable from content of earlier application as filed
2.1.3Sequence of divisionals – derivable from each of the preceding applications as filed
2.1.4Language issues
2.2.Amendments to divisional applications
2.3.Subject-matter of a patent granted on a divisional application
2.3.1Findings of G 1/05 and G 1/06 also applicable to granted patents
2.3.2Two distinct grounds for opposition under Article 100(c) EPC
2.3.3Ground raised against amended claims in opposition proceedings
2.4.Link between subject-matter of earlier application and divisional application
2.4.1No abandonment of subject-matter in earlier application if divisional is filed
2.4.2No effect on content of divisional application if earlier application was refused
2.4.3Final decision on subject-matter in the parent application or a sibling application – res judicata
a)Decisions affirming "cross-procedural" res judicata effect
b)Decisions leaving open the question of "cross-procedural" res judicata effect
c)Decisions doubting "cross-procedural" res judicata effect
2.4.4Re-filing of same subject-matter
3.Filing a divisional application
3.1.Right to file a divisional application
3.1.1Applicant of earlier application entitled to file divisional application
3.1.2Filing of divisional application during stay of proceedings
3.1.3No obligation to postpone a decision to allow the filing of a divisional application
3.2.Filing date attributed to divisional application
3.3.Language for filing divisional application
3.4.Divisional application to be filed with EPO
3.5.Requirement of pending earlier application
3.5.1Requirement of pending earlier application sets no time limit
3.5.2Pendency of a Euro-PCT application before the EPO acting as patent-granting authority according to the EPC
3.5.3Pendency in case of grant of earlier application against which no appeal was filed
3.5.4Pendency in case of grant of earlier application against which an appeal was filed
3.5.5Pendency in case of refusal of earlier application against which no appeal was filed
3.5.6Pendency in case of refusal of earlier application against which an appeal was filed
3.5.7Pendency in case of deemed withdrawal of earlier application and request for re-establishment
3.5.8Pendency in case of deemed withdrawal of earlier application and no reaction to loss of rights communication under Rule 112(1) EPC
3.5.9Pendency in case of withdrawal of earlier application
3.6.Time limits under Rule 36(1)(a) and (b) EPC in the version in force between 1 April 2010 and 31 March 2014
4.Procedural questions
4.1.Procedural independence of divisional application
4.1.1Principles
4.1.2No preclusive effect of a decision with respect to identical requests in the other procedure
4.1.3Filing a divisional application not a response to a communication under Article 94(3) EPC
4.1.4Intention to file divisional application immaterial to admissibility of appeal against grant of the parent
4.1.5Submissions made in the parent proceedings
4.2.Designation of contracting states in a divisional application
4.2.1Deemed designation of all states designated in earlier application at the date of filing of divisional
4.2.2Designated state forfeited in the parent application at the time of filing the divisional
4.2.3Full effect of designation up to the due date for payment
4.2.4Payment of fee for each designated State – case law concerning situation prior to 1 April 2009
4.3.Correction of errors in a divisional application
4.4.Search fee for a divisional application
G.Prohibition of double patenting
1.Introduction
2.Legal basis for the prohibition of double patenting
3.Subject-matter and scope of protection
3.1.Introduction
3.2.Decisions allowing claims directed to overlapping subject-matter
3.2.1Independent "parent" claim includes all features of the "divisional" claim with an additional feature
3.2.2Overlap relates to dependent claim
3.2.3Overlapping scope of protection
3.2.4Scope of claims of granted patent fully encompassed in scope of protection of claim request
3.3.Decisions rejecting claims directed to overlapping subject-matter
3.3.1Reclaiming the preferred way of carrying out the invention
3.3.2Combination of features of granted independent and dependent "parent claims"
3.4.Change of claim category
3.5.Different descriptions
4.Double patenting objection in opposition

III. RULES COMMON TO ALL PROCEEDINGS BEFORE THE EPO

A.The principle of the protection of legitimate expectations
1.Introduction
2.Applicability of the principle of the protection of legitimate expectations
2.1.Sources of legitimate expectations
2.2.Limits of the legitimate expectations principle
2.2.1Knowledge of the relevant legal provisions and the case law
2.2.2Interpretation of substantive patent law
2.2.3Weighing of interests in inter partes cases
2.2.4Area of party's own responsibility
2.2.5Administrative notice with no legal consequences
2.2.6No communication under Article 101(1) EPC
2.2.7Communication under Article 15(1) RPBA not binding
2.3.Causal link and the requirement of proof
3.Information provided by EPO
3.1.Clear and unambiguous communications and forms
3.2.Information provided as courtesy service
3.3.Contradictory acts
3.4.Information provided by telephone
3.5.Decisions of the administrative departments of the EPO
3.6.Correction of already issued decision
3.7.Information provided in the Guidelines
4.Obligation to draw attention to easily remediable deficiencies
4.1.General principle
4.1.1Deficiency correctable within the relevant time limit
4.1.2Obligation to set new time limit
4.2.Examples of cases addressing the obligation to draw attention to easily remediable deficiencies
4.2.1Language issues
4.2.2Missing or insufficient fee payments
4.2.3Electronic filing of documents
4.2.4Further examples involving easily identifiable deficiencies
4.3.Limits of the obligation to draw attention to easily remediable deficiencies
4.3.1Area of party's own responsibility
a)Filing of valid appeal
b)Filing of divisional application
c)Bank account information
4.3.2No obligation to scrutinise submissions for deficiencies
5.Obligation to enquire in case of unclear nature of request
6.Legitimate expectation and case law
6.1.Case law deviating from or overruling the practice
6.2.Point in time from which a new decision which deviates from existing practice becomes generally applicable
B.Right to be heard
1.Introduction
2.The right to be heard under Article 113(1) EPC
2.1.Violation of the right to be heard examined ex officio
2.2.Decisions within the meaning of Article 113(1) EPC
2.3.Causal link between the violation of the right to be heard and the final decision
2.3.1Appeal proceedings
2.3.2First-instance proceedings
2.4.Surprising grounds or evidence
2.4.1General principles
2.4.2The meaning of "grounds or evidence"
2.4.3Opportunity to comment on evidence
2.4.4Documents supplied by applicants but used against them
2.4.5Document cited containing information already known
2.4.6Reliance on the International Preliminary Examination Report
2.4.7No sufficient time for an adequate response to the deciding body's objections
2.4.8Change of provisional opinion
2.4.9Statement of grounds of appeal not received by respondent
2.4.10Patent proprietor unaware of opposition proceedings
2.5.Consideration of the parties' arguments, requests, evidence and other submissions
2.5.1General principles
2.5.2Decision must demonstrably show that arguments were heard and considered
2.5.3No obligation to address each and every argument
2.5.4Failure to consider submissions made after a communication
2.5.5Failure to consider evidence
2.5.6Mere reference to jurisprudence
2.6.The right to be heard and the timing of decisions
2.6.1Decision could not be expected
2.6.2Issuing of decision before expiry of time limit to comment
2.6.3Immediate refusal after communication
2.6.4Invitation to oral proceedings at short notice
2.7.The right to be heard in oral proceedings
2.7.1Introduction of a new claim or relevant document
a)Cases in which Article 113(1) EPC was violated in relation to the introduction of new claims or relevant documents
b)Cases in which Article 113(1) EPC was not violated even though new claims or relevant documents were introduced
c)Cases where no new claims or relevant documents were introduced
d)Cases in which Article 113(1) EPC was violated in relation to a non-admission of auxiliary requests
e)Cases in which Article 113(1) EPC was not violated even though auxiliary requests were not admitted
2.7.2Introduction of new arguments
2.7.3Introduction of a new ground of opposition by the opposition division
2.7.4Hearing witnesses
2.7.5Oral submissions of an accompanying person
2.8.The right to be heard in case of the non-attendance of oral proceedings
2.8.1Facts and evidence put forward for the first time during oral proceedings
2.8.2Non-attendance at oral proceedings before the boards – case law on G 4/92
2.8.3Non-attendance at oral proceedings before the boards – Article 15(3) RPBA
a)Ex parte proceedings
b)Inter partes proceedings
2.9.Changes in the composition of the competent department of first instance
2.9.1Composition change before oral proceedings
2.9.2Composition change after oral proceedings
2.10.Changes to the composition of a board
2.10.1Composition change after oral proceedings
3.Text submitted or agreed by applicant (patent proprietor) – Article 113(2) EPC
3.1.General
3.2.The requirement of a text submitted by the applicant
3.3.The requirement of a text agreed by the applicant
3.4.Cases where the EPO is uncertain or mistaken about the approval of the text
C.Oral proceedings
1.Introduction
2.Purpose of oral proceedings
3.Right to oral proceedings
3.1.Right to oral proceedings in examination, opposition and appeal proceedings
3.1.1Right to oral proceedings even after a Rule 71(3) EPC communication
3.1.2Right to oral proceedings even if no new arguments are presented
3.1.3Right to oral proceedings before a division in the composition in which it takes the final decision
3.1.4No right to telephone conversation
3.1.5No absolute right to oral proceedings?
3.2.Right to oral proceedings before the Receiving Section
4.Oral proceedings at the instance of the EPO
4.1.Expediency of oral proceedings
4.2.Effects of withdrawal of a request for oral proceedings in case of oral proceedings at the instance of the EPO
5.Request for oral proceedings
5.1.Doubt as to the nature of the request for oral proceedings
5.2.Wording of request
5.2.1Wording constituting a request
5.2.2Wording not constituting a request
5.3.Withdrawal of request for oral proceedings
5.3.1Withdrawal only by virtue of a clearly expressed intention not to proceed with the request
5.3.2Oral proceedings not held despite the lack of an explicit withdrawal
a)Announcing non-attendance – equivalent to a withdrawal of the request for oral proceedings
b)Announcing non-attendance – request for oral proceedings becoming ineffective
c)Announcing non-attendance – waiver of the party’s opportunity to present their case orally
d)Announcing non-attendance – no obligation to hold oral proceedings in the party's absence
e)No substantive response to a notification of inadmissibility of the appeal – equivalent to abandonment of the request for oral proceedings
f)Oral proceedings serving no legitimate purpose – exceptions to the right to oral proceedings
5.3.3Withdrawal of request for oral proceedings – reimbursement of appeal fee
a)Explicit withdrawal required
b)Explicit withdrawal not required
5.3.4Duty to hold oral proceedings not affected despite withdrawal of request for oral proceedings
5.4.Further oral proceedings before the same department
5.4.1Same subject of proceedings
5.4.2Not the same subject of proceedings
5.5.Auxiliary request for oral proceedings
5.6.Decision in favour of the party – no oral proceedings despite unconditional request
5.7.Request for oral proceedings in relation to further prosecution proceedings after remittal
5.8.Request for oral proceedings as a reply to a communication
6.Non-attendance at oral proceedings
6.1.Right to present comments and non-attendance of a party by choice
6.2.Non-attendance of party who filed new claims without amended description before oral proceedings; no reason for postponement of ruling
6.3.Obligation to give notice if not attending oral proceedings
7.Preparation of oral proceedings
7.1.Fixing or changing the date for oral proceedings
7.1.1Legal provisions and notices
7.1.2Oral proceedings in closely-related cases
7.1.3Request for changing the date of oral proceedings
7.1.4Request or reasons for postponement filed too late
7.1.5Reasons submitted in a request for postponement
a)Serious illness
b)Booked holidays
c)Business trips
d)Speaking at a conference
e)National holiday
f)Newly appointed representative
g)Obligation to give reasons as to why a representative cannot be substituted
h)Absence of duly represented party or of inventor
i)Flight cancellation along with impossibility of using other travel means
j)Loss of the representative’s passport
k)Postponement because of late receipt of board's communication
l)New evidence or requests
m)Proceedings before a national court
n)Postponement in order to avoid adverse decision of the board
o)Ongoing takeover negotiations between both parties
p)Expected childbirth by the partner of the professional representative
q)COVID-19 pandemic
r)Representative unable to identify authorised person
s)Unavailability of an accompanying person – Article 15(2)(c)(iv) RPBA
7.1.6Postponement of the oral hearing at the instigation of the EPO
7.2.Notice of two months in the summons
7.3.Final date for written submissions in the preparation for oral proceedings and late submission of new facts and evidence – Rule 116 EPC
7.3.1General issues
7.3.2Examination and opposition proceedings
7.4.Communication under Article 15(1) RPBA
7.4.1General issues
7.4.2Purpose of communication under Article 15(1) RPBA 2007 or Article 15(1) RPBA
7.4.3Boards not bound by communication under Article 15(1) RPBA 2007 or Article 15(1) RPBA
7.4.4Boards' discretion to send communication under Article 15(1) RPBA 2007
7.5.Location of oral proceedings
8.Conduct of oral proceedings
8.1.Length and structuring of oral proceedings
8.1.1Speaking time during oral proceedings and interruptions by the board
8.1.2Oral proceedings scheduled from the start for more than one day
8.1.3Continuation of oral proceedings beyond the last scheduled day
8.1.4Duration of deliberations
8.2.Excluding the public from oral proceedings
8.3.Format of oral proceedings
8.3.1Legal provisions and sources of information
a)Boards of appeal
b)Departments of first instance
8.3.2Oral proceedings by videoconference in case of general emergency – G 1/21
8.3.3Case law concerning oral proceedings held after the end of pandemic measures at the Boards of Appeal
a)G 1/21 – limited applicability beyond a general emergency
b)G 1/21 – applicability beyond a general emergency
c)Applicability of G 1/21 beyond a general emergency – not addressed
d)Requirements for holding mixed-mode oral proceedings
e)Applicability of considerations set out in G 1/21 to first-instance proceedings and to hearing a witness
8.3.4Case law concerning oral proceedings held after G 1/21 and prior to the end of pandemic measures at the Boards of Appeal
a)Compliance with G 1/21 – holding oral proceedings by videoconference without a party’s consent
b)Compliance with G 1/21 – holding oral proceedings in person without a party’s consent
c)Establishing the (non-)existence of a general emergency
d)Oral proceedings held by videoconference as an "often equivalent alternative" to in-person oral proceedings
e)Technical aspects of videoconferencing
f)Applicability of considerations set out in G 1/21 to first-instance proceedings
8.3.5Case law concerning oral proceedings held during the COVID-19 pandemic and prior to G 1/21
a)Consent to holding oral proceedings before the boards of appeal by videoconference initially required
b)Consent to holding oral proceedings before the boards of appeal by videoconference no longer required
c)Oral proceedings by videoconference before opposition divisions
8.3.6Case law concerning oral proceedings held prior to the COVID-19 pandemic
a)Oral proceedings by videoconference before the boards of appeal
b)Oral proceedings by videoconference before examining divisions
8.4.Computer-generated presentations and other visual aids
8.5.Sound recording
8.6.Handwritten amendments during oral proceedings before the board
8.7.Interpreting in oral proceedings
8.8.Oral submissions by an accompanying person
8.9.Closing and reopening the debate
8.10.Minutes of oral proceedings (Rule 124 EPC)
8.10.1Content of minutes
8.10.2No recording of statements for use in subsequent national proceedings
8.10.3Correction of minutes
8.10.4Refusal to record statement not an infringement of the right to be heard
8.10.5Signing of minutes
8.11.Presence of assistants during deliberations of the board
9.Costs
9.1.Apportionment of costs
9.2.Interpreting costs during oral proceedings
D.Time limits, documents transmitted by fax, further processing and interruption of proceedings
1.Calculation, determination and extension of time limits
1.1.Calculation of time limits under Rule 131 EPC
1.2.Determination and extension of periods under Rule 132 EPC
1.2.1Relevant criteria when time limits are extended upon request (R. 132(2), second sentence, EPC)
1.2.2Applicability of Rule 132 EPC to the Rules relating to Fees
1.3.Extension of time limits ipso jure on account of public holidays or dislocation in delivery of mail (Rule 134 EPC)
1.3.1Public holidays (Rule 134(1) EPC)
1.3.2General dislocation or interruption in delivery or transmission of mail in a contracting state (R. 134(2) EPC)
1.3.3Dislocation due to an exceptional circumstance (Rule 134(5) EPC)
1.4.Statutory periods of grace, additional period for payment of renewal fees and the fiction of observance of a time limit for fee payments
1.4.1Additional period for payment of renewal fees under Rule 51(2) EPC
1.4.2Period of grace for payment of fees under Rule 85a EPC 1973
1.4.3Fiction of fee payment in due time pursuant to Article 7(3) and (4) RFees
2.Date of receipt of documents transmitted by fax
3.Further processing under Article 121 EPC
4.Interruption of proceedings under Rule 142 EPC
4.1.Application of Rule 142 EPC by the EPO of its own motion
4.2.Amended Rule 142(2) EPC
4.3.Concept of legal incapacity (Rule 142(1)(a) and (c) EPC)
4.4.Determining legal incapacity of the applicant or patent proprietor for the purpose of Rule 142(1)(a) EPC
4.5.Determining legal incapacity of the representative for the purpose of Rule 142(1)(c) EPC
4.6.Legal incapacity of a representative from outside the contracting states
4.7.Interruption of proceedings because of insolvency (Rule 142(1)(b) EPC)
4.8.Consequences of interruption of proceedings (Rule 142(4) EPC)
E.Re-establishment of rights
1.Introduction
2.Right to file request for re-establishment of rights
2.1.Exception for opponent – time limit for filing statement of grounds of appeal
2.2.Re-establishment only in cases of failure to observe a time limit for which it was for the applicant to observe
3.Non-observance of time limit directly causing a loss of right
3.1.The meaning of "time limit"
3.1.1Requirement of pendency when filing divisional application is not a time limit
3.1.2Designation of States
3.1.3"Time limitation" condition for requests for correction
3.2.Time limits excluded from re-establishment under Article 122(4) EPC and Rule 136(3) EPC
3.3.Time limits concerning the PCT proceedings
3.4.Loss of rights as a direct consequence by virtue of the EPC
4.Admissibility of requests for re-establishment of rights
4.1.Time limits for filing a request for re-establishment (Rule 136(1) EPC)
4.1.1Two-month time limit from the removal of the cause of non-compliance
a)Removal of the cause of non-compliance
b)Responsible person
c)Legal fiction of deemed notification
4.1.2One-year time limit following the expiry of the unobserved time limit
4.2.Inability to observe a time limit
4.2.1Deliberate act missing a time limit; tactical considerations
4.2.2Financial difficulties
4.3.Making good the omitted act
4.4.Substantiation of the request for re-establishment
4.5.Number of re-establishment fees due where more than one time limit is missed
4.6.Correction of deficiencies in the request for re-establishment
5.Merit of request for re-establishment of rights
5.1.Submissions to be taken into account
5.2.General comments on due care
5.3.Exceptional circumstances
5.3.1Organisational restructuring
5.3.2Change to or withdrawal of representation
5.3.3Complex transfers of company ownership
5.3.4Monitoring or computer systems matters
5.3.5Sudden serious illness and severe psychological stress
5.4.Isolated mistake within a satisfactory system for monitoring time limits or for processing mail
5.4.1"Isolated mistake" by representative
5.4.2A system operating efficiently for many years as evidence that it is normally satisfactory
5.4.3Cause of mistake remains unclear
5.4.4Requirement for a cross-check
a)Cross-check should be independent in a large firm
b)Control mechanisms in small firms
5.4.5All due care in making provisions for staff absences
5.4.6Second mistake by responsible person
5.4.7Deficiencies in computerised systems
5.5.Persons required to exercise due care; requirements regarding due care
5.5.1Due care on the part of the applicant
a)Due care standard
b)Reliance on the professional representative
c)Unrepresented individual applicant
d)Choosing a sufficiently competent representative
5.5.2Due care on the part of the professional representative
a)Communication between professional representatives and their clients, the EPO or other representatives
b)Payment of renewal fees
c)Ignorance of or erroneous interpretation of a provision of the EPC
d)Requesting and acting on information from the EPO
e)Starting work on a case close to the expiry of the time limit
f)Designation of receiving offices
g)Abandonment of application
5.5.3Due care on the part of a non-authorised representative
5.5.4Due care in dealing with assistants
a)Introduction
b)Selection, instruction and supervision
c)Technically qualified assistants
d)Substitutes replacing assistants
e)Ultimate responsibility of the representative
5.5.5Due care in using mail delivery services
6.Procedural treatment of requests for re-establishment
6.1.Department competent to decide upon the request
6.2.Request for re-establishment as auxiliary request
6.3.Parties to re-establishment proceedings and the right to be heard
6.4.Concurrent request for interruption of proceedings
6.5.Re-establishment in the context of the President's extension of time limits during general disruption
6.6.Redundant request for re-establishment
7.Rights of use under Article 122(5) EPC
8.Principle of proportionality
9.Reimbursement of the fee for re-establishment
9.1.Legal reason for payment of fee
9.2.Reimbursement where request for re-establishment found to be redundant
9.3.Request for re-establishment due to mistakes made by EPO
9.4.Reimbursement where more than one fee for re-establishment has been paid
F.Languages
1.Language of filing and date of filing of a European patent application
2.Language of the proceedings
3.Derogations from the language of the proceedings in written proceedings and in oral proceedings
4.Language privilege
5.Translations
6.Language-related fee reductions
6.1.European patent application
6.2.Request for examination
G.Law of evidence
1.Introduction
2.Admissible evidence
2.1.Non-exhaustive list of admissible means of evidence
2.2.Distinction between the admissibility of evidence and its probative value
2.3.Freedom of choice when selecting evidence
2.4.Witness testimonies and expert opinions
2.4.1Hearing witnesses
a)Role of witnesses and wording of request
b)Relationship between witness and party
c)Statutory declarations and hearing witnesses
d)Ranking of means of evidence
e)Hearing a witness before a national court
f)References
2.4.2Difference between witnesses and experts
2.4.3Expert opinions (Article 117(1)(e) EPC)
2.4.4Expert opinion submitted by a party
2.5.Statements in writing
2.5.1Sworn statements and affidavits
2.5.2Relationship between witness and party
2.5.3Statutory declarations and hearing witnesses
2.5.4Ranking of means of evidence
2.6.Other documents
3.Taking of evidence
3.1.Relevance of the evidence
3.1.1Basic principles
3.1.2Offering evidence – effect on the outcome of the dispute – refusal to hear a witness
3.1.3Taking evidence (hearing of a witness) deemed unnecessary
3.1.4Hearing the witness introduces new facts into the proceedings
3.1.5Hearing the patent proprietor
3.1.6Re-hearing a witness
3.1.7Example procedure for hearing a witness
3.1.8Means of taking evidence by videoconference
3.2.Time frame for submitting evidence and ordering the taking of evidence
3.2.1Evidence wrongly rejected by the examining division as late-filed
3.2.2Evidence wrongly rejected by the opposition division as late-filed
3.2.3Late-filed evidence before the board of appeal - rejected
3.2.4Comparative tests to demonstrate a technical effect achieved by the claimed invention
3.2.5Evidence rejected as prima facie irrelevant
3.2.6Evidence submitted "in due time"
3.2.7Parties' responsibilities
3.2.8Large volume of evidence
3.2.9Strategic procedural approaches of parties to presenting evidence
3.2.10Parties treated equally (or not)
3.2.11When to order the taking of evidence and hearing of witnesses at oral proceedings
3.2.12When to submit supporting evidence – specific examples
3.2.13Late offer of a replacement for a deceased witness – admitted
3.2.14Hearing the party without their attorney
3.3.Right to be heard
3.3.1General
3.3.2Parties' right to comment
3.3.3Parties' responsibilities
3.3.4Improper reasons for rejection of evidence offered
3.3.5Witnesses at oral proceedings despite not confirming attendance in advance
3.3.6No violation where evidence irrelevant to the outcome of the case
3.3.7No violation of right to be heard where evidence of limited probative value
3.3.8Violation of the right to defend a case
3.3.9Third-party observations
3.3.10Failure of a party to attend oral proceedings
4.Evaluation of evidence
4.1.Principle of free evaluation of evidence
4.1.1G 2/21: reasserting and refining the principle of free assessment of evidence
4.2.Probative value of evidence on a case-by-case basis
4.2.1Ranking of means of evidence
4.2.2Witness testimony and written statements
a)Credibility of allegedly linked witnesses
b)Evaluation of evidence by the department of first instance – review
c)Events long past
d)Contradictory or consistent testimony
e)Witness testimony and national proceedings
f)Obligation to raise objections under Rule 106 EPC
4.2.3Test and experimental evidence
a)Test methodology and probative value
b)Evaluation of tests cited to prove that problem solved (Article 56 EPC)
c)Evaluation – other tests
4.2.4Archives and internet publications
4.2.5Other written evidence
4.3.Standard of proof
4.3.1General on the two standards of evidence
4.3.2Public prior use
a)Both parties have access to the evidence: balance of probabilities
b)Evidence within the sphere of the opponent: beyond any reasonable doubt
c)Miscellaneous – evaluation in the case law
4.3.3Posters and ephemeral presentations
4.3.4Public availability of prior art documents
a)Commercial brochures
b)Convincing the board and discussion on the standard of proof
c)Archives and internet publications
4.3.5Claiming a valid priority
4.3.6Abusive conduct
4.3.7Receipt of formal documents
5.Burden of proof
5.1.Apportioning the burden of proof
5.1.1General
5.1.2Individual cases
a)Burden of proof on appeal
b)Novelty
c)Inventive step
d)Sufficiency of disclosure
e)Priority and content of the priority document
f)Specific case of internet citations of prior art
g)Receipt of formal documents
h)Generally accepted procedural principles (Article 125 EPC) and national law
5.2.Shifting the burden of proof
5.2.1General
5.2.2Cases in which the burden of proof was reversed
a)Inventive step – furnishing of tests
b)Non-disclosure agreement
c)Sufficiency of disclosure
d)Unusual parameters
e)Priority
f)Disputing an experimental protocol
g)Common general knowledge of the skilled person
h)Violation of the laws of physics
i)Adverse effect of a reversal of the burden of proof cited in support of a request for review
5.2.3Cases in which the burden of proof was not reversed
H.Interpretation of the EPC
1.General
1.1.Guidance in the EPC on its interpretation
1.2.Interpretation according to public international law
2.The Vienna Convention on the Law of Treaties
2.1.2.1. Application of the Vienna Convention to the interpretation of the EPC
2.2.2.2. The rules of interpretation of the Vienna Convention
2.3.2.3. Application of the rules of interpretation of the Vienna Convention in decisions of the Boards of Appeal
2.3.12.3.1 Literal interpretation
2.3.22.3.2 Systematic interpretation
2.3.32.3.3 Teleological interpretation
2.3.42.3.4 Subsequent agreement or practice
2.3.52.3.5 Secondary considerations: dynamic interpretation
2.3.62.3.6 Supplementary means of interpretation – "travaux préparatoires"
2.3.72.3.7 Interpretation of exclusions from patentability under the Vienna Convention
3.Implementing Regulations
4.Interpretation of the various language texts of the EPC
5.The Paris Convention for the Protection of Industrial Property
6.The Agreement on Trade-Related Aspects of Intellectual Property Rights
7.The European Convention on Human Rights
8.National decisions and legislation in EPC contracting states
8.1.National decisions: taken into account for the sake of harmonisation
8.2.National decisions: no binding effect on the boards of appeal
8.3.Effects on the case law due to the differences between national legislation and the EPC
I.Main and auxiliary requests
1.Possibility of filing auxiliary requests
2.Order of requests
2.1.Requirement to specify the order of requests
2.2.Order of examination of requests
3.Admissibility of requests
3.1.Party's responsibility to define subject-matter by filing appropriate requests
3.2.Requests of equal ranking
3.3.Requesting further opportunity to formulate new requests
3.4.Admissibility of late-filed requests
4.Obligation to give reasons for refusal of each request
5.Withdrawal of request
5.1.Circumstances leaving no doubt that requests have been withdrawn
5.2.Circumstances indicating that requests have not been withdrawn
6.Examination procedure
6.1.Direct rejection of auxiliary request by examining division
6.2Rejection in advance of further request by examining division
6.3Practice of proposing one main and one or more auxiliary requests
7.Interlocutory decision on allowable auxiliary request – distinction between examination proceedings and opposition proceedings
8.Opposition procedure
9.Appeal procedure
J.Suspected partiality
1.General principles
1.1.Exclusion and objection
1.2.Rationale and importance
1.3.The European Convention on Human Rights
1.4.Parties' right to have their case decided by the judge designated by law
1.4.1Allocation of appeals
1.4.2Use of objective criteria to determine correctness of composition
1.5."Subjective" and "objective" test, presumption of impartiality
1.6.Applicability of Article 24 EPC to first-instance proceedings
1.7.Applicability of Article 24 EPC to disciplinary proceedings
2.Initiation of partiality proceedings and other procedural issues
2.1.Notices of self-recusation
2.2.Objection by other board members of the same board of appeal
2.3.Objection by a party to a board member or members
2.4.Objection by a third party
3.Admissibility
3.1.Competence of the board in its original composition
3.2.Obligation to raise the objection immediately
3.3.Objection must be reasoned and substantiated
3.4.No objection to the board as a whole
3.5.Objection based on an obviously wrong understanding of the board's procedural obligations, the right to be heard and the principle of a fair trial
3.6.Repetition of a previous objection
3.7.Dual function as members of the Enlarged Board and another board of appeal
4.Suspected partiality of members of the departments of first instance
4.1.Competence to decide
4.2.Remittal and rehearing of a case
4.3.Personal interest
4.4.Disqualifying partiality
5.Suspected partiality of members of the boards of appeal
5.1.Grounds for exclusion under Article 24(1) EPC
5.1.1Previous involvement of a board member as a party's representative in the case in question
5.1.2Participation in the decision under appeal
5.2.Grounds for exclusion under Article 24(2) EPC: any other reason
5.3.Grounds for objection under Article 24(3) EPC
5.3.1Expressions of preliminary opinions
5.3.2Disqualifying partiality
5.3.3Late filed objections under Article 24(3) EPC
5.3.4Discretionary procedural decisions negatively affecting a party
5.4.Comments of the board member concerned
6.Suspected partiality of members of the Enlarged Board of Appeal
6.1.Referral proceedings under Article 112 EPC
6.1.1Previous participation in cases as members of the boards of appeal
6.1.2Previous involvement in the preparation of legislation
6.1.3Previous expressions of opinion on the legal issues to be decided
6.2.Petition for review proceedings under Article 112a EPC
6.2.1Previous participation in cases as members of the boards of appeal
6.2.2Article 24(3) EPC objection under Article 112a(2)(a) EPC
6.2.3Expressions of preliminary opinions
6.2.4Suspected partiality of the Chair of the Enlarged Board of Appeal who at the same time was Vice-President of Directorate-General 3 (VP3)
7.Legal restrictions for former board members
K.Formal aspects of decisions of EPO
1.Composition of the competent departments of first instance
1.1.General comments on changes in composition of the competent departments of first instance
1.2.Examining division
1.3.Opposition division
1.3.1Enlargement of the opposition division by addition of a legal member
1.3.2Change in composition of opposition division during opposition proceedings
1.3.3Composition of opposition division includes those who have taken part in proceedings for grant contrary to Art. 19(2) EPC
1.3.4Remittal after breach of Article 19(2) EPC
2.Date of decision
2.1.Entry into force of decisions
2.2.Completion of the internal decision-making process
2.3.Date European patent takes effect and jurisdiction after pendency
3.Form of decisions
3.1.When is there a decision within the meaning of Rule 111 EPC?
3.1.1Cases involving two decisions
3.1.2Inconsistency between oral and written decisions
3.2.Pointing out the right to appeal in accordance with Rule 111(2) EPC
3.3.Signatures on a decision under Rule 113 EPC
3.3.1Decisions to be signed
3.3.2Examples of invalid or missing signatures
a)Decision announced in oral proceedings
b)Decision not announced in oral proceedings
c)Director's signature in place of examiner's signature
3.3.3Examples of valid signatures
a)Computer-generated communications
b)Death of examiner between oral proceedings and written decision
c)Decision in written proceedings
d)Illegible signature
e)Draft decisions
3.4.Reasons for the decision
3.4.1Purpose of the duty to provide reasons
3.4.2Right to be heard – right to have submissions taken into consideration
3.4.3The requirement of sufficient reasoning
3.4.4Deficient reasons
a)Deficient reasons sufficient for the purposes of Rule 111(2) EPC?
b)Deficient reasoning insufficient for the purposes of Rule 111(2) EPC
c)No reasons for decision
3.4.5Special cases
a)References to communications
b)Reference to a board decision or case law
c)Assessment of inventive step without assessing the prior art
d)Identical decision after remittal for further prosecution
e)Dealing with issues that go beyond the decision itself
3.5.Decisions according to the state of the file
3.5.1Request for decision "according to the state of the file"
3.5.2No absolute right to a decision issued by way of EPO Form 2061
3.5.3No waiver of right to a reasoned decision
3.5.4Reasons for a decision by way of EPO Form 2061
a)Requirements
b)Reference to more than one communication
3.5.5Documents included in the "state of the file"
4.Loss of rights within the meaning of Rule 112(1) EPC
4.1.Purpose of notification of loss of rights under Rule 112(1) EPC
4.2.Form of notification of loss of rights under Rule 112(1) EPC
4.3.Request for a decision under Rule 112(2) EPC subsequent to a communication
4.4.Responsibility for issuing decisions under Rule 112(2) EPC
4.5.Right to a decision under Rule 112(2) EPC
5.Notification of decision under Rule 111(1) EPC
L.Correction of errors in decisions
1.Competence to correct a decision according to Rule 140 EPC
1.1.Competence of opposition division or examining division
1.2.Competence of the boards of appeal
1.2.1Legal Board or Technical Boards
1.3.Competence to correct if application is no longer pending
2.Scope of Rule 140 EPC
2.1.Correction of the text of a patent
3.Obvious mistakes according to Rule 140 EPC
4.Legal effect of corrections according to Rule 140 EPC
4.1.Correction requests as opposed to appeals
5.Correction of printing errors in the publication of the patent specification
6.Procedural status of third parties
M.Inspection of files, European Patent Register and stay of proceedings
1.Inspection of files
1.1.General
1.2.Exclusion from inspection under Rule 144 EPC
1.2.1Test for exclusion
1.2.2Examples where file inspection was found not to be prejudicial to interests of appellant
1.2.3Examples where documents were excluded from file inspection
2.European Patent Register
2.1.General
2.2.Registration of licences
2.3.Registration of transfers
3.Stay of proceedings under Rule 14 EPC
3.1.Rule 14(1) EPC
3.1.1General
3.1.2Opening of proceedings before a national court
3.2.Rule 14(3) EPC
N.Observations by third parties
1.Introduction
2.Formal requirements
2.1.Language of the documents
2.2.When can third-party observations be filed?
2.3.Pending proceedings
2.4.Anonymously filed observations
2.5.Reasons for observations
3.Third party's legal status
3.1.General issues
3.2.Third party's procedural rights
4.Third-party observations in opposition-appeal proceedings
4.1.Third-party observations and the extent of opposition
4.2.Introducing a fresh ground for opposition in opposition proceedings
4.3.Introducing a fresh ground for opposition in appeal proceedings
4.4.Third-party observations presented after expiry of the opposition period
4.4.1General
4.4.2Third-party observations admitted
4.4.3Third-party observations not admitted
5.Remittal following filing of observations
O.Transfer of party status
1.Party status as patent proprietor
2.Party status as opponent
2.1.General principles
2.2.Universal succession
2.3.Transfer together with the business assets to which the opposition relates
2.4.No transfer: sale of opponent's subsidiary company
2.5.Legal uncertainty as to who is the correct party
2.6.Evidence for and effect of a transfer
2.6.1Date of effective transfer
2.6.2What kind of evidence suffices
2.6.3Natural heir
2.7.Effect of finding that no transfer took place during opposition proceedings
2.8.No administrative fee for a transfer of opponent status
P.Intervention
1.Admissibility of intervention
1.1.Any third party – independent legal entity
1.2.Relevant patent
1.3.National infringement proceedings
1.3.1Proceedings for infringement instituted by patent proprietor – Article 105(1)(a) EPC
1.3.2Request to cease alleged infringement and institution of proceedings for non-infringement – Article 105(1)(b) EPC
1.4.Proceedings pending before the EPO
1.4.1Intervention in opposition proceedings
1.4.2Intervention in appeal proceedings
1.5.Time limit for intervention
1.6.Fees
1.7.Substantiation requirement
2.Legal status of the intervener
2.1.In opposition proceedings
2.2.In appeal proceedings
2.3.2.3. Intervener enters proceedings at stage they are at on the date of intervention
3.Legal status of documents filed with intervention during appeal proceedings
3.1.No need to exercise discretion for the board to admit documents filed with intervention
3.2.No change of legal status of documents after withdrawal of intervention
4.Intervention shortly before oral proceedings
Q.Continuation of the opposition proceedings by the EPO
1.General
2.Surrender and lapse of the patent
2.1.Surrender of patent
2.2.Continuation of the opposition proceedings after lapse or surrender (Rule 84(1) EPC)
2.2.1Request for continuation of the proceedings made by the opponent
2.2.2Request for continuation of the proceedings made by the patent proprietor
3.Death or legal incapacity of an opponent
4.Withdrawal of opposition
4.1.Form and effect of withdrawal on party status
4.2.Effect of withdrawal on opposition proceedings before the departments of first instance
4.3.Effect of withdrawal on opposition appeal proceedings
R.Apportionment of costs
1.Principle that each party must bear its own costs
2.Equity of a different apportionment of costs – case groups
2.1.Late submission of documents and/or requests
2.1.1Late submission was unjustified
a)Different apportionment of costs ordered
b)No different apportionment of costs ordered – no disadvantage
2.1.2Late submission was justified
a)No different apportionment of costs ordered
b)Different apportionment of costs ordered for reasons of equity
2.2.Acts or omissions prejudicing the timely and efficient conduct of oral proceedings
2.2.1Failure of a party to appear at oral proceedings
a)Different apportionment of costs ordered
b)Refusal of a request for apportionment of costs
2.2.2Request for scheduling or postponement of oral proceedings; withdrawal of request for oral proceedings
a)Request for scheduling or postponement of oral proceedings
b)Withdrawal of request for oral proceedings
2.2.3Other cases concerning oral proceedings
2.3.Filing of opposition or appeal
2.4.Withdrawal of opposition or appeal at short notice
2.5.Other cases
3.Expenses that may be apportioned
3.1.Necessary expenses
3.2.Future costs
3.3.Procedure for fixing costs
3.4.Appeal against decision fixing amount of costs
4.Procedural aspects
4.1.Filing a request for apportionment of costs
4.2.Competence issues
4.3.Appeal solely against the decision on apportionment of costs inadmissible
S.Notifications
1.Documents subject to formal notification
2.Forms of notification
2.1.Notification by postal services
2.2.Notification by means of electronic communication
2.3.Notification by delivery by hand and public notification
3.Notification to representatives
4.Notification to third parties
5.Burden of proof and safeguards
5.1.Burden of proof where notification is disputed
5.2.Notification under Rule 125(4) EPC
5.3.Safeguards in case of late delivery
T.Applications by non-entitled persons
U.Rules relating to Fees
1.General
2.Payment of fees
2.1.Methods of payment
2.2.Debit orders
2.2.1Governing provisions
2.2.2Accepted means of filing a debit order
2.2.3Authority to sign
2.2.4Types of debit orders
2.2.5Interpretation and correction of debit orders
a)Interpretation of debit orders
b)Correction of errors in a debit order under Rule 139 EPC
2.2.6Processing of debit orders
2.2.7Date of payment of amounts paid by debit order
2.3.Indication of purpose of payment
3.Date of payment
3.1.Payment to a bank account held by the EPO
3.2.Payment by credit card
3.3.Payment by debit order
3.4.Fiction of fee payment in due time – fail-safe arrangement
3.5.Prepayment of a fee
4.Insufficient payments – small amounts lacking
5.Fee reductions
5.1.Filing fee, examination fee
5.2.Fee for appeal
6.Fee refunds
6.1.Partial refund of the examination fee
V.Representation
1.Overview
2.Professional representatives
2.1.List of professional representatives (Article 134(1) EPC)
2.2.Party having its seat in an EPC contracting state
2.3.Duty of persons without residence nor place of business within a contracting state to be represented by a professional representative
2.4.Professional representatives during the transitional period
2.5.Procedural steps performed by a person other than the professional representative
2.6.Submissions by a professional representative after transfer of opponent status
3.Legal practitioners entitled to act as professional representative
3.1.General issues
3.2.Register of legal practitioners
3.3.Qualifying conditions according to Article 134(8) EPC
3.3.1Representation by a legal practitioner
3.3.2Common representative
4.Authorisations for appointment of a representative
4.1.Filing of the authorisation
4.2.General authorisations
4.3.Sub-authorisations
4.4.Authorisation of an association of representatives
4.5.Termination of authorisation
5.Oral submissions by an accompanying person
5.1.Enlarged Board's landmark decision G 4/95
5.2.Application of the case law established by the Enlarged Board
5.2.1Introduction
5.2.2Trainee patent attorneys
5.2.3Distinction between party to proceedings and accompanying person
5.2.4Inventor as accompanying person
5.2.5Name, qualifications and subject-matter to be specified
5.2.6Oral submissions to be requested sufficiently in advance
5.2.7Exceptional circumstances
5.2.8Professional representative's responsibility
5.2.9Procedural objection under R. 106 EPC
5.3.Oral submissions by former members of the boards of appeal
5.4.Oral submissions by qualified patent lawyers of non-EPC contracting states
W.Guidelines for Examination in the European Patent Office
1.Guidelines not binding on boards
2.Guidelines binding (in principle) on departments of first instance
3.The boards' application of the Guidelines in specific cases

IV. PROCEEDINGS BEFORE THE DEPARTMENTS OF first instance

A.Preliminary and formalities examination
1.Introduction
2.Responsibility for formalities examination
3.Where and how applications may be filed
4.Persons entitled to file application
5.Accordance of a date of filing
5.1.Requirements for according a date of filing
5.2.Identity of applicant
5.2.1Requirement for information identifying the applicant (Rule 40(1)(b) EPC)
5.2.2Correction of designation of applicant (Rule 139 EPC)
5.3.Legal effect of accordance of a date of filing
5.4.Subsequent filing of missing parts of the description or missing drawings (Rule 56 EPC)
5.4.1Legal provisions
5.4.2Interpretation of Rule 56 EPC
5.5.Corrections under Rule 139 EPC
5.5.1Legal provisions
5.5.2No replacement of invention
5.5.3Extent of competence of the Receiving Section for corrections under Rule 139, second sentence, EPC
5.6.Erroneously filed application documents or parts (Rule 56a EPC)
5.7.Change of date of filing
6.Examination of formal requirements
6.1.Requirements of a European patent application (Article 78 EPC)
6.2.Designation of the inventor
6.3.Any other requirement laid down in the Implementing Regulations
6.3.1Presentation of the application documents (Rule 49 EPC)
7.Designation of states
7.1.Legal provisions
7.2.Effect of non-payment of the designation fee
7.2.1Deemed withdrawal
7.2.2Designation of states in divisional applications
7.2.3No correction of non-payment of fee under Rule 88 EPC 1973
7.3.Correction of designation of states (Rule 139 EPC)
7.3.1Decisions considering the application of the EPC 1973
7.3.2Decisions considering the application of the EPC 2000
8.Priority
8.1.Filing of priority documents
8.2.Correction of priority declarations
8.2.1Requirement for mistake to have been made
8.2.2Time limit for request for correction
8.2.3Correction of the priority declaration under Rule 52(3) EPC
9.Fiction of withdrawal of the application (Rule 100(3) EPC)
10.Publication of the application
B.Examination procedure
1.Stage before substantive examination
1.1.Amendments made by the applicant of their own volition under Rule 137(2) EPC
1.2.Request for examination (Rule 70 EPC)
1.2.1General issues
1.2.2The invitation to confirm early request for examination (Rule 70(2) EPC)
1.2.3Transfer of the responsibility for examining the application to the examining division
2.The first stage of substantive examination
2.1.Beginning of "substantive examination"
2.2.Communications under Rule 71(1) and (2) EPC
2.2.1Invitation to correct deficiencies and to propose amendments (Rule 71(1) EPC)
2.2.2Content of Article 94(3) EPC communication (Rule 71(2) EPC)
2.3.Refusal after a single communication
2.3.1Discretion of the examining division
2.3.2Bona fide attempt to deal with the examining division's objections
2.4.Amendments under Rule 137(3) EPC
2.4.1Discretion of the examining division under Rule 137(3) EPC
2.4.2Consent under Rule 137(3) EPC in oral proceedings
2.4.3The burden of proposing amendments
2.4.4Converging or diverging versions of claims
2.4.5Reasons for the exercise of discretion
2.4.6Requests for amendments filed at an advanced stage in proceedings
2.4.7Late-filed requests after summons to oral proceedings in examination
2.4.8Second communication under Rule 71(3) EPC: the consent of the examining division
2.5.Failure to reply to the communication from the examining division (Article 94(4) EPC)
2.5.1Reply within the meaning of Article 94(4) EPC
2.5.2Waiver of the applicant's right to present comments
2.6.Issuing a further communication in light of Article 113(1) EPC
2.6.1Introduction
2.6.2Arguments taken into account in the decision of the examining division
2.6.3Inclusion of the essential reasoning
2.6.4Essential reasoning based on an International Preliminary Examination Report
2.6.5Fresh argument based on grounds and evidence communicated beforehand
2.6.6Bona fide attempt by the applicant to overcome the objections
2.6.7Form of the communication under Article 113(1) EPC
2.7.Informal communications
2.7.1Telephone conversations
2.7.2Interviews
3.The grant stage in examination
3.1.Informing applicant of the text intended for grant (Rule 71(3) EPC)
3.2.Approval of the text by the applicant
3.2.1Clear and unambiguous approval of the text
3.2.2Option to waive the right to a further communication under Rule 71(3) EPC
3.2.3Decisions with no text submitted or agreed by the applicant (Article 113(2) EPC)
a)General issues
b)Deemed approval under Rule 71(5) EPC
c)Auxiliary request issues
3.3.Amendments or corrections filed in response to the communication under Rule 71(3) EPC
3.3.1Amendments where Rule 71(3) EPC communication is the first communication
3.3.2Amendments and corrections requested according to Rule 71(6) EPC
3.3.3Criteria for admitting amendments filed in reply to the Rule 71(3) EPC communication
3.3.4Claims fees due in response to Rule 71(3) EPC communication
3.4.Amendment after approval of the text for grant
3.5.Examination after remittal for further prosecution
3.6.Amendments after the decision to grant
3.7.Withdrawal of amendments and abandonment of subject-matter
3.7.1General issues
3.7.2Effects of non-payment of claims fees
3.8.Withdrawal of the patent application
3.8.1General issues
3.8.2Unambiguous and unconditional withdrawal
3.8.3Correction of the withdrawal of the application
a)Conditions for the correction
b)Public interest
c)Intention of the party
3.9.Refusal of a European patent application under Article 97(2) EPC
3.10.Date on which a decision to grant a European patent takes effect
3.11.Errors in the European Patent Bulletin
4.Additional searches during examination
4.1.Rule 63 EPC governing incomplete search
4.1.1Introduction
4.1.2Additional search necessary: limited discretion of the examining division
4.1.3Declaration under Rule 63(2) EPC
a)Notoriously well-known technical features
b)Subject-matter not having technical character
c)Statement indicating the subject-matter to be searched not sufficient to overcome the deficiency noted under Rule 63(1) EPC
4.2.Non-payment of further search fees under Rule 64 EPC
5.Amendments relating to unsearched subject-matter – Rule 137(5) EPC
5.1.General issues
5.2.The purpose of Rule 137(5) EPC
5.3.Applicability of Rule 137(5) EPC
5.3.1General issues
5.3.2Extent of the European search report
5.3.3Subject-matter of amendment not combining with the originally claimed invention
5.4.Criteria for amendments to be allowable under Rule 137(5) EPC
5.4.1Amendment not affecting the notion of unity of invention
5.4.2No legal basis for exercise of discretion
5.4.3Amendments filed to meet an objection
5.5.Non-compliance with Rule 137(5) EPC: a ground for refusing an application
C.Opposition procedure
1.Legal character of opposition proceedings and applicable principles
2.Filing and admissibility requirements
2.1.Entitlement to file an opposition
2.1.1General principles
2.1.2A natural or legal person, or equivalent thereto
2.1.3Examination at any stage in the proceedings of entitlement to oppose
2.1.4Filing of opposition by patent proprietor or inventor
2.1.5Filing of opposition on behalf of a third party – straw man
2.1.6Repeated filing of opposition documents by the same person
2.1.7Filing of multiple oppositions by different persons – single opposition proceedings
2.1.8Filing a joint opposition – multiple opponents
a)Payment of a single opposition fee
b)Representation, legal status and composition of a multiple opponent
2.2.Formal requirements for opposition and filing in due time
2.2.1Introduction
2.2.2Opposition period
a)Period triggered by the publication of the mention of the grant of the patent
b)Observance of the time limit
2.2.3Payment of opposition fee – correction of a payment form
2.2.4Identity of opponent and correction of opponent's name
a)Principles
b)Incorrect designations and abbreviations
c)Evidence of identity
d)Availability of Rule 139 EPC to rectify errors
2.2.5Sufficient identification of the opposed patent
2.2.6Statement of extent of opposition
2.2.7Statement of grounds for opposition
2.2.8Substantiation of grounds for opposition: indication of facts, evidence and arguments
a)No "partial inadmissibility"
b)Relevant date for compliance
c)Full and concise reasoning
d)Substantiation to be distinguished from strength of the opponent's case
e)Indication of evidence
f)No burden of proof with regard to negative facts
g)Examples – sufficient substantiation acknowledged
h)Examples – sufficient substantiation denied
i)Alleged public prior use
j)Non-patent literature and oral disclosures
2.2.9Other requirements for notice of opposition
a)Translation
b)Signature
c)Authorisation
2.3.Procedural aspects of examination of admissibility
2.3.1Admissibility of opposition to be checked at every stage
2.3.2Formalities officers' powers in opposition proceedings
2.3.3Preliminary opinions on admissibility
2.3.4Consequences of inadmissibility
3.Substantive examination of opposition
3.1.Introduction
3.2.Extent of opposition
3.3.Scope of examination of grounds for opposition
3.4.Fresh grounds for opposition
3.4.1Fresh grounds examined exceptionally
3.4.2Meaning of "fresh grounds for opposition"
3.4.3Prima facie relevance
3.4.4Objections of lack of novelty and lack of inventive step
3.4.5Examination of fresh facts and evidence related to a fresh ground
3.4.6Opportunity to comment on new grounds for opposition
3.5.Grounds raised against claims amended after grant
4.Late submission of documents, lines of attack and arguments
4.1.Discretionary decision
4.2.Concept of "in due time"
4.2.1Duty to facilitate due and swift conduct of proceedings
4.2.2Rule 116(1) EPC – not an invitation to file new submissions
4.2.3Fair response – examples
4.3.Sufficient reasoning
4.4.Documents cited in the patent specification or search report
4.5.Criteria for the exercise of discretion
4.5.1Different approaches
4.5.2Review of discretionary decisions by the boards
a)Limits to the discretionary power in Article 114 EPC
b)No legal basis to overturn submissions admitted by the opposition division
4.5.3Prima facie relevance
a)Relationship between prima facie assessment and in-depth assessment
b)Relative or absolute concept of relevance
c)Further examples
d)Other aspects must be considered
4.5.4Abuse of proceedings and submissions contrary to fair and expedient procedure
4.5.5Legitimate expectation that the document is already in the proceedings
4.6.Late submissions of new arguments
4.6.1New arguments – definition
4.6.2No legal basis for disregarding late-filed arguments in opposition proceedings
5.Amendments to claims, description and drawings in opposition proceedings
5.1.Admissibility of amendments
5.1.1Principles
5.1.2Amendments occasioned by a ground for opposition – Rule 80 EPC
a)General
b)Correction of errors
c)Amendments intended to remedy a lack of clarity (Article 84 EPC)
d)Filing of new dependent or independent claims
5.1.3Amendments occasioned by national prior rights
5.1.4Timeframe for filing amendments
5.1.5Discretion to admit or not admit amendments
a)Rule 116 EPC as legal basis
b)Article 123(1) EPC in conjunction with Rules 79(1) and 81(3) EPC as legal basis
c)Article 114(2) EPC as legal basis
5.1.6Concept of "late-filed" and implications for discretion
5.1.7Principles for the exercise of discretion by the opposition division
a)Criteria applicable at later stages of the proceedings – in general
b)Prima facie allowability
c)Procedural expediency and abuse of procedure
d)Reasonable expectation that the opponents familiarise themselves with the proposed amendments in the time available
5.1.8Review of first-instance discretionary decisions by the boards
5.1.9Amending a non-opposed sub-claim
5.1.10Applicability of Rule 43(2) EPC in opposition proceedings
5.1.11Applicability of Rule 137(5) EPC in opposition proceedings
5.1.12Converging or diverging versions of claims in opposition proceedings
5.1.13Correction or removal of error (in claim) in opposition proceedings – Rule 139 EPC
5.2.Scope of examination of amendments
5.2.1Scope of examination not limited to grounds raised pursuant to Rule 76(2)(c) EPC
5.2.2Extent of power to examine amended claims for compliance with Article 84 EPC
5.2.3Additional searches
5.3.Proprietor's approval of amended text of the patent
6.Right to be heard in opposition proceedings
6.1.Principle of equal treatment
6.2.Invitation to file observations under Article 101(1) EPC
6.3.Invitation to file observations under Rule 82(1) EPC
6.4.EPO communication concerning submissions by the other party – adequate opportunity to reply
6.5.Opportunity to present comments
6.6.Communications allegedly not received
6.7.Change in composition of opposition division during opposition proceedings
7.Acceleration of opposition proceedings
7.1.Following remittal back to the opposition division
7.2.In the case of pending infringement proceedings
8.Decisions of opposition division
8.1.Revocation of a European patent for failure to fulfil formal requirements – by way of decision
8.2.Interlocutory decisions
8.2.1General
8.2.2Maintenance of European patent as amended
D.Limitation/revocation
1.Limitation/revocation – Article 105a-105c EPC
2.Requests for revocation during opposition and opposition appeal proceedings

V. PROCEEDINGS BEFORE THE BOARDS OF APPEAL

A.Appeal procedure
1.Legal character of appeal procedure
1.1.General
1.2.Rules of Procedure of the Boards of Appeal
1.3.Suspensive effect of the appeal
1.4.Devolutive effect of the appeal
1.5.Accelerated processing before the boards of appeal
2.Filing and admissibility of the appeal
2.1.Transitional provisions for the EPC 2000
2.2.Appealable decisions
2.2.1Departments
2.2.2Whether there has been a decision
a)Examples of appealable decisions
b)Examples where the communication was not an appealable decision
2.2.3Interlocutory decisions
2.2.4Appeals against decisions of the boards of appeal
2.3.Board competent to hear a case
2.3.1Technical or Legal Board of Appeal
a)General
b)Technical board of appeal competent
c)Legal Board of Appeal competent
2.3.2Specific cases
a)Interruption of proceedings
b)Request for a search-fee refund
c)Interlocutory revision and reimbursement of appeal fee
2.4.Entitlement to appeal
2.4.1Formal aspects under Article 107 EPC
a)Appeal filed by wrong company
b)Appeal filed in name of representative
c)Party consisting of plurality of persons
d)Company in receivership
e)Death of the appellant (opponent)
2.4.2Party adversely affected (Article 107 EPC)
a)General
b)Patent applicant
c)Patent proprietor
d)Opponent
2.4.3Procedural status of the parties
a)Parties to appeal proceedings
b)Rights of parties under Article 107 EPC
c)The boards' duty of impartiality in inter partes proceedings
d)Existence of a company
2.5.Form and time limit of appeal
2.5.1Electronic filing of appeal
2.5.2Form and content of notice of appeal (Rule 99(1) EPC)
a)Name and address of the appellant – Rule 99(1)(a) EPC
b)Indication of the decision impugned – Rule 99(1)(b) EPC
c)Request defining the subject of the appeal – Rule 99(1)(c) EPC
d)Rule 99(3) EPC
2.5.3Appeal filed within the time limit
a)Notification issues
b)Languages
c)Misleading decisions of the department of first instance
2.5.4Payment of appeal fee
a)Notice of appeal not filed
b)Payment of only one appeal fee
c)Reduced fee for appeal filed by a natural person or a particular entity
d)Payment not from own account
2.5.5Appeal deemed not to have been filed
2.6.Statement of grounds of appeal
2.6.1Legal provisions
2.6.2Form of statement of grounds of appeal
2.6.3Content of the statement of grounds of appeal
a)General
b)Indication of the extent to which the decision impugned is to be amended
c)Direct link between the contested decision and the statement of grounds of appeal
d)Adequate reasoning for an appeal against a refusal of the application
e)Adequate reasoning in an appeal filed by the opponent
f)Statement of the legal or factual reasons
g)Addressing the reasons given in the decision in the statement of grounds of appeal
h)Complete case within the meaning of Article 12(3) RPBA
i)Mere repetition of arguments
j)Appeal based on objection not raised nor examined at first instance
k)Statement of grounds of appeal not filed in full
l)Duty of board to be impartial
2.6.4New case raised
a)Appeal based on the same ground for opposition
b)Taking new submissions into consideration
c)Amended claims filed
2.6.5References to earlier submissions
2.6.6Arguments need not be new or relevant
2.6.7Exceptional circumstances warranting admissibility of appeal
a)Immediately apparent the contested decision cannot be supported
b)Patent proprietor requests revocation
c)Substantial procedural violation
2.6.8No partial admissibility of appeal
2.7.Examination of the admissibility of appeal in every phase of appeal proceedings
2.8.Cases where admissibility of appeal need not be considered
2.9.Interlocutory revision
2.9.1General
2.9.2The department of first instance's obligation to rectify the decision
2.9.3Well-founded appeal within the meaning of Art. 109(1) EPC
2.9.4Competence of the department of first instance
2.9.5"Cassatory" or "reformatory" interlocutory revision
3.Substantive examination of the appeal
3.1.Binding effect of requests – no reformatio in peius
3.1.1Reformatio in peius does not apply separately to each point
3.1.2Reformatio in peius and devolutive effect of appeal
3.1.3Cases where reformatio in peius does not apply
3.1.4Patentee as sole appellant
3.1.5Opponent as sole appellant
3.1.6Revocation of patent
3.1.7Exceptions to the prohibition of reformatio in peius
a)Limited exceptions to the prohibition of reformatio in peius – G 1/99
b)Case law around G 1/99
c)Remittal to the department of first instance
d)Lack of clarity
e)Causal link
f)Undisclosed disclaimer
3.1.8Reformatio in peius and lack of cross-appeal in the EPC
3.2.Subject-matter under examination
3.2.1Primary object of the appeal proceedings – Article 12(2) RPBA
3.2.2Complete case on appeal
3.2.3Opposition appeal proceedings
a)Admissibility of opposition
b)The notice of appeal
c)Unopposed subject-matter not reviewed
d)Dependent claims
e)Appeal by patentee against revocation
f)Removal of references in dependent claims
g)Abandonment of subject-matter
h)Fresh ground for opposition on appeal
i)No general review of the first-instance decision
j)Ambiguities in the claims
k)Ex officio examination of Art. 123(2) EPC
3.2.4Patentability requirements under examination in ex parte proceedings
3.3.Facts under examination – applying Article 114 EPC in appeal proceedings
3.4.Review of first-instance discretionary decisions
3.4.1Principles applying to the review of first-instance discretionary decisions
a)General
b)Proper exercise of discretion
c)Review of first-instance discretionary decisions taken on substantive grounds
3.4.2Exercise of the boards' own discretion not to admit submissions
a)Submissions refused at first instance admitted on appeal
b)Submissions not admitted by the boards
c)Discretion misused by the department of first instance
3.4.3Submissions admitted at first instance are part of the appeal proceedings
3.4.4Review of an opposition division's discretionary decision (not) to admit a new ground for opposition
3.4.5Review of discretion – stay of proceedings
4.New submissions on appeal
4.1.Introduction
4.1.1Legal basis
a)Legal bases in the EPC
b)Legal bases in the Rules of Procedure of the Boards of Appeal
4.1.2Primary object of appeal proceedings and the convergent approach to amendments made to party's case
4.2.Amendment to a party's case
4.2.1Discretion under Articles 12(4) and 13(1) and (2) RPBA applies only to amendments
4.2.2First level of the convergent approach: amendments to a party's case – Article 12(4) RPBA
a)Principles
b)Whether submissions on appeal were directed to requests, facts, objections, arguments or evidence on which the decision under appeal was based
c)Whether submissions were "admissibly raised" at first instance
d)Whether submissions were "maintained" at first instance
e)Documents referenced in the patent specification – not automatically part of the appeal proceedings
4.2.3Second and third levels of the convergent approach: amendments to a party's appeal case – Article 13(1) and (2) RPBA
a)Principles
b)Submissions at first instance not automatically part of appeal case
c)Request for dismissal of the appeal and maintenance of the patent
d)Deletion of claims or alternatives within claims
e)New request combining subject-matter of previously filed claims
f)Request previously only paraphrased and not set out in full
g)Resubmission of withdrawn requests or requests no longer pursued
h)Belated substantiation of requests
i)Requests reordered
j)Procedural requests – requests for non-admittance of the other party's submissions
k)Amendment of the description
l)Further developing arguments within the framework of the appeal case as submitted so far
m)Belated substantiation of objections
n)New objection based on documents already on file – new assertions of fact
o)New defence and belated substantiation of a defence
p)Submissions concerning interpretation of the law
q)Information supporting oral submissions
r)Translation filed later
s)Late assertion of a breach of the right to be heard
4.3.First level of the convergent approach – submissions in the grounds of appeal and the reply – Article 12(3) to (6) RPBA
4.3.1Principles
4.3.2Transitional provisions
4.3.3Amendment within the meaning of Article 12(4) RPBA
4.3.4Discretion under Article 12(4) RPBA
a)Principles
b)Requirement to identify each amendment to the case and provide reasons for timing of submission – Article 12(4), third sentence, RPBA
c)Requirement to indicate the basis for amendments to the patent application or patent in the application as filed and to provide reasons why the amendment overcomes the objections raised – Article 12(4), fourth sentence, RPBA
d)Complexity of amendment
e)Suitability to address the issues leading to the decision under appeal
f)Need for procedural economy
g)Whether the submission should have been filed in first-instance proceedings – Article 12(6), second sentence, RPBA
h)Primary object of the appeal proceedings to review the decision under appeal
i)Application of the principles expressed in Article 12(6) RPBA to amended requests or single claims
j)Convergence criterion
k)No objection raised by opposing party
l)Obvious corrections in description
4.3.5Incomplete case in grounds of appeal or reply – substantiation requirement – Article 12(3) and (5) RPBA
a)Principles
b)Incomplete appeal case – unsubstantiated requests – Article 12(3) RPBA
c)Incomplete appeal case – unsubstantiated objections or defence – Article 12(3) RPBA
d)Discretion under Art. 12(5) RPBA
4.3.6Submissions not admitted at first instance – error in the use of discretion – Article 12(6), first sentence, RPBA
a)Principles
b)Whether a submission was late-filed
c)Prima facie relevance of late-filed objections and evidence
d)Prima facie allowability of a request
e)Need for procedural economy – convergence
f)Principles of fairness and equal treatment of parties
g)Board's own discretion when the exercise of discretion by the department of first instance suffers from an error
h)Admittance justified by the circumstances of the appeal case
i)Not covered by Article 12(6), first sentence, RPBA: submissions admitted at first instance
4.3.7Submissions that should have been submitted or which were no longer maintained at first instance – Article 12(6), second sentence, RPBA
a)Principles
b)New request addressing objection raised for the first time at the first instance oral proceedings
c)New request addressing objection that was dismissed or in case of a rejected opposition
d)New request in reaction to a change of opinion of the opposition division
e)New request – amended pages of the description
f)New request – opportunity in opposition proceedings to address the issue
g)New request – opportunity in examination proceedings to address the issue
h)New request – examination of subject-matter deliberately foregone
i)New request – repeated attempts to meet EPC requirements
j)New request – unambiguous indication how to address the objection
k)New defence or evidence in response to objections raised late in the proceedings
l)New defence in response to a change of opinion by the opposition division at the oral proceedings
m)New objections or defence in response to views in the opposition decision that had already been set out in the preliminary opinion
n)New objections or evidence in response to the patent proprietor's submissions at first instance
o)New evidence for objection raised early in opposition proceedings
p)Objection to admittance of a claim request
q)Submissions that were no longer maintained in first instance and counter-examples
r)Admittance justified by the circumstances of the appeal case
4.4.Second level of the convergent approach – submissions made after filing of grounds of appeal or reply – Article 13(1) RPBA
4.4.1Principles
4.4.2Transitional provisions – immediate applicability of Article 13(1) RPBA
4.4.3Amendment to appeal case within the meaning of Article 13(1) RPBA
4.4.4Party's duty to justify amendment
a)Principles
b)Party's duty to provide reasons for not submitting amendment at an earlier stage
c)Requirement to substantiate the amendments to the patent application or patent
4.4.5Discretion under Article 13(1) RPBA – new requests
a)Time of filing – whether request should have been filed earlier
b)Whether the amendment prima facie overcomes the issues raised without giving rise to new objections
c)Whether the amendment is detrimental to procedural economy
d)Complexity of the amendment
e)Convergence of claim requests
f)Deletion of claims or alternatives within claims
4.4.6Discretion under Article 13(1) RPBA – new facts, objections, arguments and evidence
a)Time of filing – whether the new submissions should have been filed earlier
b)Suitability to solve the issues raised
c)Prima facie relevance for assessment of patentability
d)Whether the amendment is detrimental to procedural economy
e)Complexity of the amendment
4.5.Third level of the convergent approach – submissions filed after notification of the Article 15(1) RPBA communication or after expiry of period specified in Rule 100(2) EPC communication – Article 13(2) RPBA
4.5.1General principles
a)Overview
b)Events which trigger the third level of the convergent approach
c)Duty under Article 13(2) RPBA to provide cogent reasons to demonstrate exceptional circumstances and duties under Article 13(1) RPBA
d)Whether a causal link between the exceptional circumstances and the time of filing is required
e)Meaning of "exceptional"
f)Meaning of "in principle"
g)Whether assessment of "exceptional circumstances" and exercise of discretion to admit an amendment is a two-step evaluation
4.5.2Transitional provisions
4.5.3Amendment to an appeal case within the meaning of Article 13(2) RPBA
4.5.4Admittance of new requests
a)Waiting for the preliminary opinion not compatible with convergent approach
b)Justified response to new objections raised in board's communication, in subsequent submissions or at oral proceedings
c)Justified response to an objection – earlier response could not be expected
d)Purpose of oral proceedings especially in ex parte proceedings
e)No carte blanche to amend claims at will – criteria set out in Articles 13(1) and 12(4) RPBA
f)Board's preliminary opinion that confirms in essence objections or arguments previously raised
g)Other cases in which amendments should have been filed earlier
h)Change of the board's opinion
i)Repeated attempts at overcoming deficiencies
j)Deletion of claims or alternatives in claims
k)Amendment not detrimental to procedural economy and no other party negatively affected
l)Right to be heard violated and no other party affected
m)Prima facie and clear allowability
n)Editorial amendments to remove inconsistencies and typographical errors
o)Adaptation of the description
p)Response to a large number of objections
q)Requests reordered
r)Procedural requests – requests for non-admittance of other party's submissions
s)Circumstances in the sphere of the representative
4.5.5Admittance of new facts, objections, arguments and evidence
a)Waiting for the preliminary opinion not compatible with convergent approach
b)Justified response to new requests in the reply to the appeal
c)Justified response to new line of arguments in the board's preliminary opinion
d)Justified response to a reweighting of the case in the board's preliminary opinion
e)Justified response to new developments in the case following the communication under Article 15(1) RPBA
f)Board's opinion based exclusively on earlier party submissions or reasoning of the first-instance division
g)Importance of a direct response to the other party's written submissions
h)Inventive step objection following unsuccessful novelty objection
i)Further cases in which the new submissions should have been filed earlier
j)Basis of the appeal proceedings unchanged and amendment not detrimental to procedural economy
k)Immediately apparent that objection raised against different request also applies to request at issue
l)Appellant's silence in response to unsubstantiated submissions by the respondent
m)Prima facie relevance
n)Submission of new evidence
o)Allegation of public prior use
p)Allegation and evidence of common general knowledge
q)Decisions and opinions by national courts filed at the earliest opportunity
r)Filing of translations
s)Circumstances in the sphere of the representative
t)No absolute right to discussion of all objections raised at first instance
u)Further illustration of the technical teaching by means of photographs
5.Parallel proceedings
6.Change in composition of a board
7.Termination of appeal proceedings
7.1.Closure of the substantive debate
7.1.1Decision taken as the file stands
7.1.2Proceedings after delivery of the decision
7.2.Interlocutory decisions of a board
7.3.Withdrawal of the appeal
7.3.1Article 114(1) EPC and withdrawal of the appeal
7.3.2Board's powers to decide on issues after withdrawal of the appeal
7.3.3Partial withdrawal of appeal by sole appellant and opponent
7.3.4No withdrawal of appeal with retrospective effect
7.3.5Request for withdrawal of appeal to be unambiguous
7.3.6Conditional withdrawal of appeal
7.3.7Correction of withdrawal of appeal under Rule 139 EPC
7.4.Deemed withdrawal of patent application
7.5.Legitimate interest in the continuation of the grant and the appeal proceedings
8.Reasons in abridged form
8.1.Abridged reasons under Art. 15(7) RPBA
8.2.Abridged reasons under Art. 15(8) RPBA
9.Remittal to the department of first instance
9.1.General
9.1.1Article 111(1) EPC
9.1.2Article 11 RPBA
9.1.3Art. 11 RPBA 2007
9.2.Exercise of discretion to remit
9.2.1No absolute right to have issue decided on at two instances
9.2.2Remittal and admittance of auxiliary requests
9.2.3Remittal and scope of review
a)Primary object of appeal proceedings is to review decision under appeal in a judicial manner
b)Ex parte proceedings
c)Inter partes proceedings
9.2.4TRIPS
9.3.Special reasons for remittal
9.3.1Introduction
9.3.2Non-examined patentability issues
a)Issues undecided at first instance but which become relevant during or after appeal proceedings
b)Primary object of the appeal proceedings
c)Undue burden
d)Different interpretation of terms
9.3.3Procedural economy
9.3.4Financial situation of a party
9.3.5Remittal following amendments to the claims
a)Ex parte cases
b)Inter partes cases
c)Discrepancies between the clean and the annotated versions of a request
9.3.6Incomplete search
a)Features considered non-technical
b)Closest prior art not suitable or misinterpreted
c)Additional prior-art search necessary
9.3.7Opposition withdrawn
9.4.Remittal following fundamental deficiencies
9.4.1Article 11 RPBA
9.4.2Article 11 RPBA 2007
9.4.3The term "fundamental deficiencies"
9.4.4Fundamental deficiencies
a)Violation of right to be heard
b)Reasons for decision deficient
c)Missing signatures
d)Failure to hold oral proceedings
e)Incorrect application of R. 137(5) EPC
9.5.Requests for or against remittal
9.6.No remittal to the department of first instance
9.6.1Discretion despite special reasons
9.6.2Same legal and factual framework
9.6.3Objections raised by the board
9.6.4Opportunity to comment
9.7.Obiter dicta
9.8.Remittal for hearing of witnesses
9.9.Remittal for adaptation of the description
9.10.Remittal to a differently composed department of first instance
9.11.Accelerating proceedings after remittal
10.Binding effect
10.1.Binding effect of decision remitting case to department of first instance
10.1.1Department of first instance bound by decision of board of appeal
a)Notion of ratio decidendi and binding effect
b)Binding effect on examining divisions
c)Binding effect on opposition divisions
10.1.2Binding effect in opposition proceedings after remittal to an examining division
10.1.3Board of appeal bound in subsequent appeal proceedings following remittal
10.1.4Binding effect: remittal for the continuation of proceedings
10.1.5Binding effect: remittal only for adaptation of the description
10.2.Binding effect of interlocutory referral decision on subsequent proceedings
11.Reimbursement of appeal fees
11.1.Introduction
11.2.Examination ex officio
11.3.Appeal deemed not to have been filed
11.3.1Appeal deemed not to have been filed due to late filing of the notice of appeal and/or late payment of the appeal fee
11.3.2Translation of notice of appeal
11.3.3No legal ground for payment
11.3.4Request for re-establishment in respect of the time limit for filing the notice of appeal and/or for paying the appeal fee
11.3.5No legal basis for retaining appeal fee in case of intervention in opposition appeal proceedings
11.3.6Several appellants
11.3.7No reimbursement if appeal filed in accordance with the requirements of Article 108 EPC
11.4.Reimbursement of appeal fee in case of interlocutory revision
11.4.1Requirements
11.4.2Competence to decide on reimbursement
11.4.3Examining division should have rectified decision
11.4.4A rectification decision maintaining earlier decision
11.4.5Re-opening examination after rectification
11.5.Allowability of the appeal
11.6.Substantial procedural violation
11.6.1Violation must be of a procedural nature
11.6.2Violation must be substantial and affect the entire proceedings
11.6.3Procedural violation must be committed by the department whose decision is under appeal
11.6.4Search
11.6.5Guidelines
11.6.6Request for interview
11.6.7Oral proceedings
a)Failure to summon for oral proceedings
b)Submissions of parties as response to summons
c)No reasons for refusal of request for postponement
d)No reasons for refusal of request to change location for oral proceedings
e)Repeated postponements of oral proceedings
f)Minutes
11.6.8Right to be heard
11.6.9Inadequate reasons given in the decision at first instance
11.6.10Error of judgment by a department of first instance
a)Communications
b)Wrong assessment of prior art or technical content
c)Error in the application of the law
d)Board reaches a different conclusion than the department of first instance
e)Exercising of discretion
f)Wrong procedure adopted
g)Following earlier decisions
11.6.11Cases concerning the decision-making process and the decision
a)Issuing of decision
b)Content of decision
c)Requests
d)Amendments
e)Signature on decision and minutes
f)Composition of opposition division
11.6.12Partiality
11.6.13Suspensive effect of appeal
11.6.14Non-compliance with order of the board
11.6.15Referral pending before Enlarged Board
11.6.16Refusal of application on one ground only
11.6.17Cases concerning documentation and communications passing between the EPO and the parties
a)Ambiguous communication or wrong form
b)No reply to communication under Article 101 EPC
c)Wrong type of communication
d)Period set for opponent to reply to patentee's response
e)Observations not forwarded to other party
f)Appointment of professional representative
g)Warning in relation to a grace period
11.7.Reimbursement must be equitable
11.7.1Causal link between substantial procedural violation and filing of appeal
11.7.2Conduct of appellant
a)Reimbursement held not to be equitable
b)Reimbursement held to be equitable
11.8.Reimbursement in full under Rule 103(1)(b) EPC
11.9.Revised Rule 103 EPC on partial reimbursement of the appeal fee
11.10.Partial reimbursement (75%) under Rule 103(2) EPC
11.11.Partial reimbursement (50%)
11.11.1Partial reimbursement under former Rule 103(2) EPC
11.11.2Partial reimbursement (50%) under Rule 103(3) EPC
11.12.Partial reimbursement (25%) under Rule 103(4) EPC
11.13.Communication in preparation for the oral proceedings
11.14.Reimbursement of the appeal fee outside of the scope of Rule 103 EPC because of a violation of the principle of the protection of legitimate expectations
B.Proceedings before the Enlarged Board of Appeal
1.Introduction
2.Referral under Article 112 EPC
2.1.General
2.2.Composition
2.3.Referral by a board of appeal
2.3.1General
2.3.2Discretion of the board
2.3.3Relevance of the referred question for the underlying case
2.3.4Question of law
2.3.5Pending proceedings
2.3.6Ensuring uniform application of the law
2.3.7Point of law of fundamental importance
2.4.Referral by the President of the EPO
2.4.1General
2.4.2Discretion of the President
2.4.3Differing decisions
2.4.4Two boards of appeal
2.5.Procedural issues
2.5.1Question already decided by the Enlarged Board
2.5.2Question already pending before the Enlarged Board
2.5.3Stay of first-instance proceedings following a referral
2.5.4Stay of appeal proceedings following a referral
3.Petition for review under Article 112a EPC
3.1.General
3.2.Transitional provisions
3.3.Article 112a EPC – Continuity of the petitioner's legitimate interest
3.4.Article 112a(1) EPC – party adversely affected by the board’s decision entitled to file a petition for review
3.4.1Article 112a(1) EPC – Party adversely affected
3.4.2Article 112a(1) EPC – Whether there has been a decision
3.4.3Article 112a(1) EPC – Whether a decision has been taken by a board
3.5.Scope of review by the Enlarged Board
3.5.1Article 112a(2) EPC – grounds for a petition for review
3.5.2Grounds listed exhaustively
3.5.3No suspensory effect – review of substantive law excluded
3.6.Petitions for review of an interlocutory decision
3.7.Obligation to raise objections
3.7.1Purpose of Rule 106 EPC
3.7.2Requirements of a valid objection
a)Recognisable immediately as an objection, defect clear and unambiguous
b)Objection raised in good time by persons capable of validly doing so
c)Different defects must be objected to and considered separately
d)Board’s explicit reaction to an alleged objection
3.7.3Written form to avoid uncertainties
3.7.4Examples of invalid objections
3.7.5Minutes as evidence that the objection was raised
3.7.6Requirements of a valid dismissal of an objection
3.7.7Objection could not have been raised
3.7.8Compliance with Rule 106 EPC left open
3.8.Contents of the petition for review
3.8.1Petition must be adequately substantiated
3.8.2Non-compliance with Rule 107 EPC and failure to remedy a deficiency
3.9.Time limit for filing a petition for review
3.10.Article 12(1) RPEBA – late-filed submissions in the review procedure
3.11.Rule 109 EPC – composition of the Enlarged Board and review procedure
3.11.1Composition of the Enlarged Board
3.11.2Involvement of parties other than the petitioner in petition for review proceedings
3.11.3Group parties
3.11.4Procedural efficiency
3.12.Factual bases for the review – minutes and grounds for the decision
3.13.Burden of proof
3.14.Effects of a successful petition for review
3.14.1Decision of board of appeal set aside
3.14.2Replacement of board members
3.14.3Reimbursement of the fee for petitions for review
4.Grounds for petition for review
4.1.Article 112a(2)(a) EPC – alleged breach of Article 24 EPC
4.2.Article 112a(2)(b) EPC – person not appointed as a board member
4.3.Article 112a(2)(c) EPC – alleged fundamental violation of Article 113 EPC
4.3.1General
4.3.2"Fundamental" violation of Article 113 EPC – causal link and adverse effect
4.3.3No prior assessment of the merits of a submission
4.3.4Objective approach – board's intention irrelevant
4.3.5No obligation to provide detailed reasons for a decision in advance
4.3.6Boards' obligation to remain neutral
4.3.7Independence of the board members
4.3.8Parties' obligation to participate actively in the appeal proceedings
4.3.9Reasons for a decision allegedly surprising
a)No opportunity to comment, surprising reasons
b)Grounds not emanating from the board
c)Subjective surprise
d)Reasoning formed part of the proceedings
4.3.10Timing of a decision allegedly surprising
4.3.11Consideration of the parties' arguments in the written decision
a)Requirement to have comments considered
b)No obligation to consider each and every argument
4.3.12Parties' obligation to know the case law, references to decisions
4.3.13Normally no violation of the right to be heard where oral proceedings held by videoconference
4.3.14No right to be heard separately on all requests
4.3.15No right to a further hearing at first instance
4.3.16No right to a referral under Article 112 EPC
4.3.17No right to a communication; communication allegedly misleading
4.3.18Late-filed submissions – boards' discretion under Article 13 RPBA 2007
4.3.19Alleged violation of Article 113(2) EPC
4.3.20Further examples of unsuccessful petitions
4.3.21Successful petitions under Article 112a(2)(c) EPC
4.4.Article 112a(2)(d) EPC – any other fundamental procedural defect
4.4.1Rule 104(a) EPC – failure to arrange requested oral proceedings
4.4.2Rule 104(b) EPC – failure to decide on a party's request
4.4.3Successful petition under Rule 104(b) EPC
4.5.Article 112a(2)(e) EPC – criminal act having an impact on a decision
5.Removal from office of a board member
5.1.General
5.2.Composition
5.3.Removal and judicial independence
5.4.Independence from disciplinary proceedings
5.5.Adversarial judicial proceedings
5.6.Publication of the decision
5.7.Reimbursement of costs
C.Proceedings before the Disciplinary Board of Appeal
1.Introduction
2.European qualifying examination
2.1.Formalities and conditions for registration and enrolment
2.1.1Required qualification or equivalent knowledge
2.1.2Professional experience
2.2.Examination conditions – principle of equal treatment
2.2.1Application of the European qualifying examination language rules
2.2.2Online examination
2.2.3Mark-up error and missing question
2.2.4Other circumstances
2.3.Complaints about the conduct of the examination – duties of the Examination Board
2.4.Setting, marking and grading
2.4.1Setting and marking the pre-examination
2.4.2Case law on pre-examination questions and marking not applicable to the European qualifying examination
2.4.3Marking the European qualifying examination answer papers consistently
2.4.4Marking the European qualifying examination answer papers fairly
2.5.Substantiation of European qualifying examination decisions
2.6.Appeals against decisions of the Examination Board and the Examination Secretariat
2.6.1Competence of the Disciplinary Board of Appeal
2.6.2Procedural aspects
a)Requirements for appeal – paper form, statement of relief sought and payment of the appeal fee
b)Rectification of decisions
c)Oral proceedings
d)Remittal and special reasons
2.6.3Objective review of the marks awarded in the examination
2.6.4Review of the marking of the pre-examination
2.6.5Legitimate interest
3.Disciplinary matters
3.1.Admissibility of the appeal - statement of the relief sought
3.2.Applicability of the Regulation on Discipline for Professional Representatives
3.3.Procedural aspects
3.3.1Observation of the time limit under Article 6(3) RDR
3.3.2Breach of the confidentiality of deliberations under Article 20 RDR
3.4.Disciplinary measures
3.5.Appealability of decisions of the epi Disciplinary Committee
4.Code of Professional Conduct
4.1.General professional obligations
4.2.Professional secrecy
5.Non-appealability of decisions of the Disciplinary Board of Appeal

VI. THE EPO ACTING AS A PCT AUTHORITY – EURO-PCT APPLICATIONS

1.Introduction
2.Jurisdiction of the Boards of Appeal
3.The EPO acting as designated or elected Office
3.1.Competence of the EPO as designated or elected Office
3.2.Remedies under the PCT applied by the EPO as designated Office
3.2.1Review (Article 25 PCT, Article 24(2) PCT)
3.2.2Opportunity to correct before designated Offices (Article 26 PCT)
3.2.3Excusing of delays in meeting time limits (Article 48 PCT, R. 82bis PCT)
3.2.4Rectification of errors made by the receiving Office or the International Bureau (Rule 82ter PCT)
3.2.5Restoration of the right of priority (Rule 49ter PCT)
4.Language of the proceedings
5.Priority

VII. INSTITUTIONAL MATTERS

1.Legal status of the EPO Boards of Appeal
1.1.The institutional structure of the European Patent Organisation
1.2.Authority to amend the RPBA
1.3.Boards of Appeal as judicial authorities
1.3.1Courts of law under the EPC
1.3.2Boards of Appeal as judicial or quasi-judicial authorities according to national case law
1.3.3"Self-binding" of the Boards of Appeal as tribunals under Article 6 of the ECHR
1.3.4Judicial or quasi-judicial authorities under the TRIPS Agreement
1.3.5Not a court or tribunal of an EU Member State
1.4.Relationship with the law of the European Union and with CJEU case law
1.5.Nature of the case law of the Boards of Appeal – no binding precedents
1.6.Significance of national law and national case law for the Boards of Appeal
1.6.1In principle no binding effect – strive for harmonisation
1.6.2Binding nature of national decisions in relation to procedures under Article 61(1) EPC
1.7.Competency of the EPO to assess priority entitlement
2.Extension agreements and ordinances
2.1.Legal nature
2.2.No jurisdiction of the Boards of Appeal
2.3.Non-applicability of Article 105(1)(a) EPC
3.Legal status of the President of the EPO
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