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EPO Boards of Appeal Case Law 2020

Online publication date: 18.5.2021
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(multilingual)

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

 

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