Pages 152-165

ANNEXES

ANNEX 1

Decisions discussed in the Case Law Report for 2012 and 2013

I. PATENTABILITY

A. Exceptions to patentability

1. Breaches to "ordre public" or morality

2. Patentability of biological inventions

2.1 Essentially biological processes for the production of plants

3. Medical methods

3.1 Surgical methods

B. Novelty

1. Defining the state of the art

1.1 Availability to the public

1.2 Internet disclosures

1.3 Oral disclosure at a lecture

1.4 Prior use

2. Issues of proof

2.1 Cases decided on the absolute conviction criterion

3. Determining the content of the relevant prior art

3.1 Taking non-technical features into account when assessing novelty

4. Novelty of use

4.1 Novelty of the therapeutic application

4.2 Second (or further) medical use

4.2.1 Differentiation of a direct and indirect effect on claims

4.2.2 Claims for therapeutic methods

4.2.3 Means used in the treatment

C. Inventive step

1. Reformulation of the technical problem

2. Treatment of technical and non-technical features

2.1 Identifying technical features

2.1.1 Shopping with mobile device

2.1.2 Games

2.2 Assessment of technical effect

3. Features not contributing to the solution of the problem

4. Chemical inventions – synergistic effect

5. Obvious desiderata

II. PATENT APPLICATION AND AMENDMENTS

A. Claims

B. Unity of invention

1. Euro-PCT applications – consideration of unity by the EPO

C. Sufficiency of disclosure

1. Clarity and completeness of disclosure

2. Reproducibility

2.1 Reproducibility without undue burden

2.1.1 Trial and error

2.2 Post-published documents

3. The requirement of sufficiency of disclosure in the biotechnology field

3.1 Requirements relating to nucleotide and amino acid sequences

4. The relationship between Article 83 and Article 84 EPC

4.1 Article 83 EPC and support from the description

4.2 Article 83 EPC and clarity of claims

D. Priority

1. Enabling disclosure in the priority document

2. First application – partial and multiple priorities

E. Amendments

1. Article 123(2) EPC

1.1 General issues

1.1.1 Notion of content of the application

1.1.2 Value ranges, lists, singling out, generalisation

1.2 Intermediate generalisation – non-disclosed combinations

1.3 Technical contribution – addition or deletion of a feature

1.4 Disclaimers

1.4.1 Applicable law – decisions G 1/03, G 2/03 and G 2/10

1.4.2 Decisions applying the criteria established by G 1/03, G 2/03 and G 2/10

1.5 Disclosure in drawings

1.6 "Tests" for assessing the allowability of an amendment

1.6.1 Direct and unambiguous deducibility of amendments from the application as filed

2. Article 123(3) EPC

2.1 Extent of protection

2.1.1 Relationship between Article 123(3) EPC and Article 69 EPC

2.1.2 Miscellaneous issues

F. Divisional applications

III. RULES COMMON TO ALL PROCEEDINGS BEFORE THE EPO

A. The principle of the protection of legitimate expectations

1. Obligation to draw attention to easily remediable deficiencies

B. Right to be heard

C. Oral proceedings

1. Continuation of oral proceedings on the next day

2. Non-attendance at oral proceedings

D. Re-establishment of rights

E. Language regime

1. Derogation from the language of the proceedings in oral proceedings – provision of simultaneous interpretation

2. Language privilege – fee reduction

F. Law of evidence

1. Witness testimony and expert opinion – Time frame for submitting evidence

G. Suspected partiality

1. Suspected partiality of members of the opposition division

2. Suspected partiality of members of the boards of appeal

3. Suspected partiality of members of the Enlarged Board of Appeal

H. Formal aspects of decisions of EPO departments

1. Completion of the internal decision-making process

I. Correction of errors in decisions

J. Inspection of files and stay of proceedings

1. Inspection of files

1.1 Exclusion from file inspection

2. Stay of proceedings under Rule 14(1) EPC

2.1 General

2.2 Rule 14(3) EPC

K. Observations by third parties

1. Anonymously filed observations in appeal proceedings

2. Third-party observations filed at a late procedural stage

3. Third-party observations inadmissible in review proceedings

L. Rules relating to Fees

1. Methods of payment – debit orders

2. Insufficient payments – small amounts lacking

3. Partial refund of the examination fee

M. Representation

1. Professional representatives

1.1 Duty of persons without residence or place of business within a contracting state to be represented by a professional representative

2. Authorisations for appointment of a representative

2.1 Filing of authorisation

IV. PROCEEDINGS BEFORE THE EPO

A.

Preliminary and formalities examination

1. Accordance of a date of filing

1.1 Subsequent filing of missing parts of the description or missing drawings (Rule 56 EPC)

1.1.1 Interpretation of Rule 56 EPC

B. Examination procedure

1. The first stage of substantive examination

1.1 Beginning of "substantive examination"

1.2 Amendments under Rule 137(3) EPC

1.2.1 Discretion of the examining division under Rule 137(3) EPC

2. The grant stage in examination

2.1 Communication under Rule 71(3) EPC: the text for approval

2.2 Correction of the withdrawal of the application under Rule 139 EPC

2.3 Claims fees due in response to Rule 71(3) EPC communication

3. Additional searches during examination

3.1 Additional search: limited discretion of the examining division

C. Special features of opposition and appeal proceedings

1. Transfer of opponent status

1.1 General principles

1.2 Evidence for and effect of a transfer

2. Intervention

2.1 Admissibility

2.1.1 National infringement proceedings

2.1.2 Proceedings before the EPO

3. Apportionment of costs

3.1 Abuse of procedure

D. Opposition procedure

1. Filing of the opposition and admissibility requirements

2. Identity of the opponent

3. Substantiation of the opposition

3.1 Need to indicate facts and evidence

4. Late submission

4.1 Opposition divisions' exercise of discretion

E. Appeal procedure

1. Filing and admissibility of appeal

1.1 Appealable decisions

1.1.1 Decisions

1.2 Board competent to hear a case

1.3 Entitlement to appeal

1.3.1 Party adversely affected

1.4 Form and time limit of appeal

1.4.1 Form and content of notice of appeal (Rule 99(1) EPC)

1.5 Statement of grounds

1.5.1 General principles

1.5.2 New case raised

1.5.3 Exceptional circumstances warranting admissibility of the appeal

1.6 Admissibility of appeal to be checked in every phase of appeal proceedings

1.7 Interlocutory revision

1.8 Accelerated proceedings

2. Substantive examination of the appeal

2.1 Binding effect of requests – no reformatio in peius

2.2 Subject-matter under examination

2.3 Review of first-instance discretionary decisions

3. Termination of appeal proceedings

3.1 Withdrawal of the appeal

3.1.1 Board's duty to issue decision when appeal is withdrawn after the decision is announced

4. Remittal to the department of first instance

4.1 Remittal following filing or late submission of relevant new document

4.2 Binding effect of decision remitting case to department of first instance

4.2.1 Department of first instance bound by decision of board of appeal

5. Late submission in appeal proceedings

5.1 Complete case (Article 12(2) RPBA)

5.2 Submissions not examined at first instance (Article 12(4) RPBA)

5.2.1 Evidence withheld at first instance

5.2.2 Requests withheld by the proprietor in opposition proceedings

5.2.3 Requests admitted as a normal procedural development

5.2.4 Review proceedings

5.3 Amendments to a party's case – procedural economy (Article 13(1) RPBA)

5.4 Absence of a party from oral proceedings (Article 15(3) RPBA)

6. Reimbursement of appeal fees

7. Proceedings before the Enlarged Board of Appeal

7.1 Important points of law

7.1.1 Situations where referral is not appropriate

7.2 Petition for review under Article 112a EPC

7.2.1 General

7.2.2 Scope of review by the Enlarged Board of Appeal

7.2.3 Obligation to raise objections in accordance with Rule 106 EPC

7.2.4 Contents of the petition for review in accordance with Rule 107 EPC

7.2.5 Fundamental violation of Article 113 EPC (Article 112a(2)(c) EPC)

7.2.6 Any other funamental procedural defect (Article 112a(2)(d) EPC)

7.3 Examination of the petition under Rule 108 EPC

7.3.1 Replacement of members of the board of appeal under Rule 108(3) EPC