Supplementary publication 2, OJ EPO 2021, Insert

CONTENT

FOREWORD by the President of the Boards of Appeal	1
Board of Appeal and Enlarged Board of Appeal Case Law 2020	2
I. PATENTABILITY	2
A. Exceptions to patentability	2
1. Product claims for plants or plant material	2
2. Medical methods	4
2.1 One surgical step in a multi-step method	4
B. Novelty	5
1. Availability to the public – obligation to maintain secrecy	5
2. Ascertaining differences – distinguishing features	6
3. Chemical inventions and selection inventions – lists	7
4. Second medical use	8
5. Second (or further) non-medical use	8
C. Inventive step	10
1. Distinction between plausibility and obviousness	10
2. Closest prior art – most promising starting point	10
3. The skilled person's level of knowledge	13
4. Effect not made credible within the whole scope of claim – neural network	13
5. Assessment of inventive step	14
5.1 Technical character of an invention	14
5.2 The aim to be achieved in the formulation of the technical problem	15
II. PATENT APPLICATION AND AMENDMENTS	19
A. Claims	19
1. Clarity of claims – indication of all essential features	19
2. Clarity of a claim specifying a norm or standard	20
3. Claims supported by the description	21
4. Claim terms with a well-established meaning in the art – use of the description	22
B. Unity of invention	23
1. Determining whether one or several "inventions" – complete search – refund of further search fee	23
C. Sufficiency of disclosure	25
1. Reproducibility – neural network	25
2. Level of disclosure required for medical use – plausibility	26
D. Priority	27
1. Right of priority of the applicant or its successor in title	27
1.1 Identity of applicants – multiple applicants in the priority application	27
E. Amendments	30
1. Article 123(2) EPC – added subject-matter	30
1.1 Disclosure derived from the whole of the application as filed	30
1.2 Forming a range by combination of end-points of disclosed ranges	31
1.3 Selection from lists – converging alternatives	32
1.4 Disclosed disclaimers	34
2. Extension of the protection conferred	34
2.1 Change of claim category	34
F. Divisional applications	35
1. Designation of contracting states in a divisional application	35
III. RULES COMMON TO ALL PROCEEDINGS BEFORE THE EPO	37
A. Right to be heard	37
1. The right to be heard in oral proceedings	37
B. Oral proceedings	37
1. Oral proceedings held by videoconference	37
C. Law of evidence	40
1. Evaluation of evidence by the department of first instance	40
D. Suspected partiality	43
1. Suspected partiality of members of the departments of first instance	43
1.1 Remittal and rehearing of a case	43
E. Formal aspects of decisions of EPO departments	45
F. Apportionment of costs	46
G. Rules relating to Fees	46
1. No refund of duly paid renewal fees on account of time taken for examination proceedings	46
2. Debit orders – underpayment of the fee for appeal	48
IV. PROCEEDINGS BEFORE THE DEPARTMENTS OF FIRST INSTANCE	49
A. Examination procedure	49
1. Decisions with no text submitted or agreed by the applicant (Article 113(2) EPC)	49
2. Approval of the text by the applicant	50
3. Amendments after the decision to grant	52
4. Withdrawal of the patent application	53
4.1 Correction of the withdrawal of the application under Rule 139 EPC	53
B. Opposition procedure	55
1. Filing and admissibility requirements – payment of opposition fee	55
2. Late submissions – concept of "in due time"	56
3. Amendments in opposition proceedings	57
3.1 Rule 80 EPC	57
3.2 Time frame for filing amendments	59
V. PROCEEDINGS BEFORE THE BOARDS OF APPEAL	63
A. Appeal procedure	63
1. RPBA 2020	63
1.1 Primary object of the appeal proceedings – Article 12(2) RPBA 2020	63
1.2 Reasons for decisions in abridged form	64
2. Party adversely affected (Article 107 EPC)	65
3. Reduced fee for appeal filed by a natural person or an entity	66
4. Content of the statement of grounds of appeal	71
5. Review of first-instance discretionary decisions	72
6. New submissions on appeal	74
6.1 Late submission of new arguments	74
6.2 Principles applying to late submissions – inter partes proceedings – RPBA 2007	75
6.3 Article 12(4) RPBA 2007	76
6.4 State of proceedings – procedural economy – RPBA 2007	77
6.5 Amendment to a party's case – RPBA 2020	77
6.6 Submissions made in the statement of grounds or the reply – first stage of the appeal proceedings – Article 12(3) to (6) RPBA 2020	80
6.7 Submissions made after filing of statement of grounds or reply – second stage of the appeal proceedings – Article 13(1) RPBA 2020	82
6.7.1 New lines of attack in respect of inventive step based on documents submitted during first-instance proceedings – not admitted	82
6.7.2 New documents in response to experimental data submitted by the patent proprietor – admitted	83
6.8 Submissions made after notification of summons – third stage of the appeal proceedings – transitional cases	84
6.8.1 Simultaneous application of Article 13 RPBA 2007 and Article 13(1) RPBA 2020	84
6.8.2 Applicability of Article 13(2) RPBA 2020 in cases of postponement of oral proceedings	87
6.8.3 New request in response to preliminary opinion of the board clarifying a party's objections – admitted	88
6.8.4 New auxiliary requests in response to the board's preliminary opinion – fundamental importance of the point at issue already clear beforehand – not admitted	89
6.8.5 Inventive step attack substantiated for the first time at oral proceedings – not admitted	90
6.8.6 Limitation not leading to any new disputed points of fact or patent law and prima facie allowable – requests admitted	90
6.8.7 Request does not prima facie overcome objection – not admitted	91
6.9 Submissions made after notification of summons – third stage of appeal proceedings – Article 13(2) RPBA 2020	92
6.9.1 Oral proceedings cancelled after notification of summons – Article 13(2) RPBA 2020 still applies	92
6.9.2 New request based on request filed with statement of grounds and overcoming new objections raised in board's communication – admitted	94
6.9.3 New request based on request filed in response to reply of the respondent and containing editorial amendments to remove inconsistencies – admitted	94
6.9.4 New request in response to board's preliminary opinion based on earlier objections – not admitted	95
6.9.5 New request in response to objections which do not go beyond the framework of the board's initial objection – not admitted	96
6.9.6 New request in response to change in the board's opinion – not admitted as objection and arguments already known	98
6.9.7 Amendment not adding anything of substance to the discussion of the objection raised – not admitted	99
6.9.8 New document and new lines of attack in response to board's preliminary opinion which was exclusively based on earlier submissions – not admitted	99
7. Remittal to the department of first instance	100
7.1 Article 11 RPBA 2020 – special reasons	100
7.2 Incomplete search	103
7.3 Remittal for adaptation of the description	104
7.4 Ordering a different composition of the department of first instance	105
8. Reimbursement of appeal fees	105
8.1 Substantial procedural violation	105
8.2 Excessive length of proceedings	106
8.3 Withdrawal of appeal or withdrawal of request for oral proceedings under Rule 103(4) EPC (25%)	107
B. Proceedings before the Enlarged Board of Appeal	113
1. Referral by the President of the EPO	113
2. Grounds for petition for review	115
2.1 Article 112a(2)(c) EPC – alleged fundamental violation of Article 113 EPC	115

ANNEXES
ANNEX 1	117
Decisions discussed in the Case Law Report 2020
ANNEX 2	127
Cited decisions
ANNEX 3	133
Headnotes/catchwords to 2020 decisions which have been published in the Official Journal
ANNEX 4	134
Referrals to the Enlarged Board of Appeal

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