Citation: Supplementary publication 3, OJ EPO 2018, Insert
Online publication date: 18.6.2018
FOREWORD by the President of the Boards of Appeal
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BOARDS OF APPEAL AND ENLARGED BOARD OF APPEAL CASE LAW 2017
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I. PATENTABILITY
A. Exceptions to patentability
1. Essentially biological processes for the production of plants
2. Therapeutic methods
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2.1 Methods with both therapeutic and non-therapeutic indications
B. Novelty
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1. State of the art
2. Availability to the public
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2.1 Advertising brochure
2.2 Public prior use
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2.2.1 Internal structure or composition of a product
2.3 Obligation to maintain secrecy
2.4 Making samples/products available for test purposes
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3. Determining the content of the relevant prior art
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3.1 General rules of interpretation
4. First and second medical use
4.1 Interpretation of "substance or composition"
C. Inventive step
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1. Closest prior art
1.1 Speculative character
2. Assessment of inventive step
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2.1 Technical character of the invention
2.2 Assessment of features relating to mathematical algorithms
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2.3 Example of lack of inventive step
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3. Secondary indicia in the assessment of inventive step
II. PATENT APPLICATION AND AMENDMENTS
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A. Claims
1. Clarity of claims
2. Interpretation of claims
B. Unity of invention
1. Unsearched subject-matter and applicability of Rule 137(5) EPC or former Rule 164(2) EPC
C. Sufficiency of disclosure
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1. The relationship between Article 83 and Article 84 EPC
D. Priority
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1. Priority right of the applicant or his successor in title
2. Disclosure in the previous application as a whole – solution of the same problem
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3. First application – identity of invention
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4. Multiple priorities for one claim – partial priority – application of G 1/15
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E. Amendments
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1. Article 123(2) EPC – added subject-matter
1.1 Gold standard and essentiality test
1.2 Ranges – setting a new end-point with a value that has not been expressly disclosed
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1.3 Disclaimers
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2. Article 123(3) EPC
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2.1 Extent of protection
F. Divisional applications
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1. Inadmissible extension – amending the description
2. Language for filing divisional application
3. Pendency of earlier application
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III. RULES COMMON TO ALL PROCEEDINGS BEFORE THE EPO
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A. The principle of the protection of legitimate expectations
1. Contradictory acts
B. Right to be heard
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1. Surprising grounds or evidence
1.1 The meaning of "grounds or evidence"
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2. Text submitted or agreed by applicant (patent proprietor) – Article 113(2) EPC
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2.1 General
2.2 Cases where the EPO is uncertain or mistaken about the approval of the text
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C. Oral proceedings
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1. Late submission of new facts and evidence in the preparation for oral proceedings – Rule 116 EPC (Rule 71a EPC 1973)
2. Doubt as to the nature of the request for oral proceedings
D. Re-establishment of rights
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1. Right to file request for re-establishment of rights
2. Loss of rights as a direct consequence by virtue of the EPC
3. Admissibility of requests for re-establishment of rights
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E. Languages
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1. Translations
F. Law of evidence
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1. Taking of evidence
1.1 Time frame for submitting evidence
2. Evaluation of evidence
2.1 Witness testimony and written statements
2.2 Archives and internet publications
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2.3 Standard of proof
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2.3.1 Receipt of formal documents
G. Main and auxiliary requests
1. Request not sufficiently defined
2. Withdrawal of request
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H. Suspected partiality
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I. Formal aspects of decisions of EPO departments
1. Opposition division
2. Completion of the internal decision-making process
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3. Department of first instance issues more than one decision
4. Examples of non-compliance with the requirements of Rule 111(2) EPC
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5. Decisions according to the state of the file
J. Notification
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1. Forms of notification
2. Spheres of risk and apportioning the burden of proof
K. Representation
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1. Legal practitioners entitled to act as professional representatives
IV. PROCEEDINGS BEFORE THE EPO
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A. Examination procedure
B. Special features of opposition and appeal proceedings
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1. Apportionment of costs
1.1 Acts or omissions prejudicing the timely and efficient conduct of oral proceedings
C. Opposition procedure
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1. Amendments in opposition proceedings
2. Correction of the name of the opponent
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3. No consideration of late-filed evidence of public prior use
D. Appeal procedure
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1. Filing and admissibility of appeal
1.1 Entitlement to appeal – party adversely affected
1.2 Entitlement to appeal – procedural status of the parties
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1.3 Form and content of notice of appeal (Rule 99(1) EPC)
1.4 Statement of grounds of appeal
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2. Interlocutory revision
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3. Subject-matter under examination and non-opposed dependent claims
4. Review of first-instance decisions
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4.1 The boards' discretion
4.1.1 Scope for reviewing discretion
4.1.2 Own discretion to admit submissions not admitted at first instance
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4.2 Review of an opposition division's discretionary decision (not) to admit a new ground for opposition
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4.3 Review of discretion – stay of proceedings
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5. Late submission
5.1 Late-filed documents
5.2 Unsubstantiated requests
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5.3 Late-filed requests
5.3.1 Response to new objections
5.3.2 Diverging versions of claims
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5.3.3 Reverting to the patent as granted
6. Reimbursement of appeal fees
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6.1 Distinction between an appeal deemed not to have been filed and an inadmissible appeal
6.2 Substantial procedural violation
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6.2.1 Oral proceedings
6.2.2 No reasons for refusal of request for postponement
E. Proceedings before the Enlarged Board of Appeal
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1. Petition for review under Article 112a EPC
V. DISCIPLINARY BOARD OF APPEAL
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1. Objective review of the marks awarded
VI. THE EPO ACTING AS A PCT AUTHORITY – EURO-PCT APPLICATIONS
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1. Competence of the EPO acting as designated or elected Office
ANNEXES
ANNEX 1
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Decisions discussed in the Case Law Report 2017
ANNEX 2
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Cited decisions
ANNEX 3
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Headnotes/catchwords to 2017 decisions which have been (or will be) published
