CONTENTS
FOREWORD by the Vice- President | ||
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PART I | ||
BOARDS OF APPEAL ACTIVITIES IN 2014 | ||
1. Introduction | ||
2. Statistics | ||
2.1 General statistics | ||
2.2 Situation of the boards of appeal in the last five years | ||
3. More about the boards' activities | ||
3.1 Proceedings before the Enlarged Board of Appeal | ||
3.1.1 Referrals to the Enlarged Board of Appeal under Article 112 EPC | ||
3.1.2 Petitions for review under Article 112a EPC | ||
3.2 Outcome of proceedings before the technical boards of appeal | ||
3.3 Proceedings before the Disciplinary Board of Appeal | ||
3.4 Length of proceedings | ||
3.5 Breakdown by language of the proceedings | ||
4. Contacts with national courts, applicants and representatives | ||
5. Number of staff and distribution of responsibilities | ||
6. Information on recent board of appeal case law | ||
PART II | ||
BOARD OF APPEAL AND ENLARGED BOARD OF APPEAL CASE LAW 2014 | ||
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I. PATENTABILITY | ||
A. Exceptions to patentability | ||
1. Breaches of "ordre public" or morality | ||
2. Embryonic stem cells | ||
3. Essentially biological processes | ||
4. Therapeutic methods | ||
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B. Novelty | ||
1. Information retrieved from the internet: proof of the date of availability | ||
2. Content of prior art – taking drawings into account | ||
3. Ascertaining differences – functional features | ||
4. Second medical use | ||
4.1 Reproducibility of the content of the disclosure | ||
4.2 Purpose-limited product claims and Swiss-type claims | ||
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C. Inventive step | ||
1. Problem and solution approach | ||
2. Closest prior art | ||
2.1 Similarity of the technical problem | ||
2.2 Speculative character of closest prior art | ||
3. Technical problem | ||
3.1 Formulation of the technical problem | ||
4. Skilled person | ||
4.1 Identification of the skilled person in the case of computer-implemented inventions | ||
4.2 Neighbouring field | ||
5. Assessment of inventive step | ||
5.1 Treatment of technical and non-technical features | ||
5.2 Problem inventions | ||
5.3 Examples of the denial of inventive step | ||
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D. Industrial application | ||
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II. PATENT APPLICATION AND AMENDMENTS | ||
A. Claims | ||
1. Restrictions on generalising the technical information and examples adduced in the description | ||
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B. Unity of invention | ||
1. Unsearched subject-matter – subject-matter searched in divisional application | ||
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C. Sufficiency of disclosure | ||
1. Knowledge of skilled person relevant for assessing sufficiency of disclosure | ||
1.1 The disclosure is aimed at the skilled person | ||
1.2 References may also enable a skilled person to carry out an invention | ||
2. Clarity and completeness of disclosure | ||
2.1 Parameters | ||
3. Reproducibility | ||
3.1 Reproducibility without undue burden | ||
3.1.1 Chemical compounds | ||
4. The requirement of sufficiency of disclosure in the biotechnology field | ||
4.1 Clarity and completeness of disclosure | ||
4.1.1 Repeatability | ||
4.2 Level of disclosure required for medical use | ||
5. The relationship between Article 83 and Article 84 EPC | ||
5.1 Article 83 EPC and clarity of claims | ||
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D. Priority | ||
1. First application | ||
1.1 Identity of applicant | ||
2. Partial priority | ||
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E. Amendments | ||
1. Article 123(2) EPC – added subject-matter | ||
1.1 Implicit disclosure | ||
1.2 Intermediate generalisation – non-disclosed combinations | ||
1.3 Disclaimer | ||
1.4 Addition of limiting feature without technical contribution – legal fiction of compliance with Article 123(2) EPC – G 1/93 | ||
2.1 Interpretation of scope of protection | ||
3. Relationship between Article 123(2) EPC and Article 123(3) EPC, and interpretation under Article 69 EPC | ||
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F. Divisional applications | ||
1. Added subject-matter | ||
1.1 Omission of feature | ||
1.2 Isolation of one species | ||
1.3 Arbitrary selection of upper and lower limits – jurisprudence on "ranges" not applicable | ||
1.4 Selection from lists | ||
2. Final decision on subject-matter in the parent application – res judicata | ||
3. Double patenting | ||
3.1 Swiss-type claim and claim under Article 54(5) EPC | ||
3.2 Product, use, and method claims – not the same subject-matter | ||
3.3 Overlap of scope of protection – internal priority | ||
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III. RULES COMMON TO ALL PROCEEDINGS BEFORE THE EPO | ||
A. Legitimate expectations | ||
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B. Right to be heard | ||
1. Non-attendance at oral proceedings | ||
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C. Oral proceedings | ||
1. Continuation of oral proceedings on the next day | ||
2. Location of oral proceedings | ||
3. Handwritten amendments during oral proceedings before the board | ||
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D. Re-establishment of rights | ||
1. Error in making payment | ||
2. Isolated mistake by representative not excusable | ||
3. Representative's secondary responsibility | ||
4. Request for re-establishment of rights redundant – statement of grounds minimally late-filed | ||
5. Reimbursement of fee for re-establishment | ||
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E. Law of evidence | ||
1. Witness testimonies and expert opinions | ||
2. Evaluation of evidence | ||
3. Burden of proof | ||
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F. Suspected partiality | ||
1. Suspected partiality of members of the opposition division – objections under Article 24(1) EPC | ||
2. Suspected partiality of members of the boards of appeal – admissibility under Article 24(3), second sentence, EPC | ||
3. Suspected partiality of members of the Enlarged Board of Appeal | ||
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G. Formal aspects of decisions of EPO departments | ||
1. Composition of the competent departments of first instance | ||
1.1 Examining division | ||
2. Form of decisions | ||
2.1 Reasons for the decision | ||
2.1.1 Legal requirement for reasoned decisions under Rule 111(2) EPC | ||
2.1.2 Examples of non-compliance with the requirements of Rule 111(2) EPC | ||
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H. Correction of errors in decisions – Rule 140 EPC | ||
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I. Stay of proceedings | ||
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J. Rules relating to Fees | ||
1. Ten-day fail-safe arrangement – small amounts lacking | ||
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K. Representation | ||
1. Oral submissions by an accompanying person | ||
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IV. PROCEEDINGS BEFORE THE EPO | ||
A. Preliminary and formalities examination | ||
1. Accordance of a date of filing | ||
1.1 Requirements for according a date of filing | ||
1.2 Corrections under Rule 139 EPC | ||
1.2.1 No replacement of invention | ||
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B. Examination procedure | ||
1. Amendments under Rule 137(3) EPC | ||
2. Additional searches during examination | ||
3. Amendments relating to unsearched subject-matter | ||
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C. Special features of opposition and appeal proceedings | ||
1. Transfer of party status | ||
1.1 Change of address | ||
1.2 Opponent status | ||
1.3 Evidence | ||
2. Withdrawal of opposition | ||
3. Apportionment of costs | ||
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D. Opposition procedure | ||
1. Admissibility of opposition | ||
1.1 General | ||
1.2 Correction of opponent's name | ||
2. Scope of examination in the case of amendments | ||
3. Correction of error (in claim) in opposition | ||
4. Late-filed facts and evidence in opposition proceedings | ||
4.1 Opposition divisions' exercise of discretion | ||
5. Fresh grounds for opposition | ||
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E. Appeal procedure | ||
1. Filing and admissibility of the appeal | ||
1.1 Appealable decisions | ||
1.1.1 Decisions | ||
1.2 Board competent to hear a case | ||
1.3 Form and time limit of appeal | ||
1.3.1 Form and content of notice of appeal (Rule 99(1) EPC) | ||
1.4 Statement of grounds of appeal | ||
1.4.1 Form of statement of grounds | ||
1.4.2 General principles | ||
1.4.3 New case raised by opponent (appellant) | ||
2. Substantive examination of the appeal | ||
2.1 Binding effect of requests – no reformatio in peius | ||
2.1.1 Opponent as sole appellant | ||
2.2 Patentability requirements under examination in ex parte proceedings | ||
2.2.1 Ex parte proceedings | ||
2.3 Facts under examination – applying Article 114 EPC in appeal proceedings | ||
2.3.1 Boards to examine facts of own motion | ||
3. Remittal to the department of first instance | ||
3.1 General | ||
3.2 Remittal following filing or late submission of relevant new document | ||
3.2.1 Ex parte appeal proceedings | ||
4. Late submission in appeal proceedings | ||
4.1 Article 12(4) RPBA – submission of new arguments on appeal | ||
4.2 Submission of new documents | ||
4.2.1 Justified reaction to the opposition division's decision | ||
4.2.2 Late submission of public prior use | ||
5. Filing of amended claims in appeal proceedings | ||
5.1 Amendments after arrangement of the oral proceedings | ||
5.2 Article 12(4) RPBA – requests not examined at first instance | ||
5.2.1 General principles | ||
5.2.2 Request not submitted by proprietor in opposition proceedings | ||
5.2.3 Resubmission of requests withdrawn at opposition stage | ||
5.2.4 Amendments justified by the normal development of the proceedings | ||
5.2.5 Consideration of amended claims – number of auxiliary requests | ||
6. Reimbursement of appeal fees | ||
6.1 Referral G 1/14 | ||
6.2 Reimbursement must be equitable | ||
7. Proceedings before the Enlarged Board of Appeal | ||
7.1 Referral under Article 112 EPC – admissibility | ||
7.2 Petition for review under Article 112a EPC | ||
7.2.1 Objection not complying with Rule 106 EPC | ||
7.2.2 Fundamental violation of Article 113 EPC | ||
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V. PROCEEDINGS BEFORE THE DISCIPLINARY BOARD OF APPEAL | ||
1. Appeals against decisions of the Examination Board | ||
1.1 Objective review of the marks awarded | ||
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VI. INSTITUTIONAL MATTERS | ||
1. Amendments to the Rules of Procedure of the Boards of Appeal – legislative power with the Administrative Council | ||
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ANNEXES |
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ANNEX 1 | ||
Decisions discussed in the Case Law Report for 2014 | ||
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ANNEX 2 | ||
Cited decisions | ||
Decisions and opinions of the Enlarged Board of Appeal on referrals | ||
Decisions of the Enlarged Board of Appeal on petitions for review | ||
Decisions of the Legal Board of Appeal | ||
Decisions of the technical boards of appeal | ||
Decisions of the Disciplinary Board of Appeal | ||
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ANNEX 3 | ||
Headnotes to published decisions (or to be published) delivered in 2014 and 2015; referring decisions can be found in Annex 4 | ||
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ANNEX 4 | ||
Referrals to the Enlarged Board of Appeal | ||
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