Case Law of the Boards of Appeal of the European Patent Office

1464 Pages·2016·9.93 MB·English

by  European Patent Office

Case Law
of the Boards of Appeal
of the European Patent Office
Eighth Edition
July 2016
Legal Research Service
of the Boards of Appeal

Editors
Albert Ballester Rodés
Frédéric Bostedt
Barbara Dobrucki
Helen Fineron
Annemarie Schwab-Grabrucker
Nikolaus Obrovski
Yvonne Podbielski
Jérôme Serre

Editorial Assistant
Michèle Meurice

Published by
European Patent Office
Directorate General 3 (Appeals)
Directorate Legal Research
and Administration

Printed by
Druckerei C.H. Beck
Bergerstraße 3 - 5
86720 Nördlingen

Printed in Germany
© 2016 European Patent Office
ISBN-978-3-89605-154-7

This publication is also available
in PDF and HTML format on
www.epo.org/case-law
Foreword
Foreword to the eighth edition
Foreword
The boards of appeal have developed a substantial body of case law over the past
37 years. They have settled more than 40 000 cases. In addition, more than 90 decisions
or opinions of the Enlarged Board of Appeal have clarified legal points of fundamental
importance in order to ensure uniform application of the law.
The eighth edition of the "Case Law of the Boards of Appeal of the European Patent
Office" offers a comprehensive overview of the entire case law of the boards of appeal.
More than 5 500 decisions are either summarised or cited in chapters which are
arranged by topic. This edition incorporates decisions issued in writing by the end of
2015 and also takes account of a number of important decisions rendered at the
beginning of 2016. While it follows the same overall structure as the seventh edition,
some chapters have been re-organised to allow topics to be located more quickly or to
take further developments in the case law into account. The book is complemented by
the regular "Board of Appeal Case Law" supplementary publications of the EPO Official
Journal, which provide updates on the boards' most recent case law.
This book will help anyone concerned with European patent law to identify the decisions
they need. Nevertheless, no summary, however careful, can replace study of the actual
decision. All of the decisions handed down since 1979 can be consulted in full and free
of charge on the EPO website (www.epo.org).
I would like to thank the members of our Legal Research Service, who updated, revised
and harmonised the text of this edition. My thanks also go to the EPO Language Service,
without whose co-operation the simultaneous publication in the three official languages
would not have been possible. Lastly, I wish to thank all the other EPO staff who have
helped produce the present publication.
Wim van der Eijk
Chairman of the Enlarged Board of Appeal
Vice-President Directorate-General 3
III

Table of contents
TABLE OF CONTENTS
Table of contents
FOREWORD TO THE EIGHTH EDITION III
READER'S GUIDE XV
1. Abbreviations XV
2. Citations XVI
3. Case numbers XVI
I. PATENTABILITY 1
A. Patentable inventions 1
1. Patent protection for technical inventions 2
2. Non-inventions under Article 52(2) and (3) EPC 10
B. Exceptions to patentability 35
1. Introduction 36
2. Breaches of "ordre public" or morality 37
3. Patentability of biological inventions 43
4. Medical methods 51
C. Novelty 66
1. General 69
2. State of the art 69
3. Availability to the public 78
4. Determining the content of the relevant prior art 101
5. Ascertaining differences 115
6. Chemical inventions and selection inventions 121
7. First and second medical use 134
8. Second (or further) non-medical use 148
D. Inventive step 158
1. Introduction 160
2. Problem and solution approach 161
3. Closest prior art 163
4. Technical problem 172
5. "Could-would approach" 183
6. Ex post facto analysis 184
V
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7. Expectation of success, especially in the field of genetic engineering and
biotechnology 185
8. Skilled person 188
9. Assessment of inventive step 197
10. Secondary indicia in the assessment of inventive step 243
E. The requirement of industrial application under Article 57 EPC 254
1. Notion of "industrial application" 254
2. Reproducibility and sufficiency of disclosure 257
3. Indication of a profitable use of the invention in industry 258
II. PATENT APPLICATION AND AMENDMENTS 261
A. Claims 261
1. Basic principles 262
2. Form, content and conciseness of claims 263
3. Clarity of claims 270
4. Disclaimers 283
5. Claims supported by the description 284
6. Interpretation of claims 287
7. Product-by-process claims 296
8. Claims fees 300
B. Unity of invention 302
1. Introduction 302
2. Unity in the context of different types of claims 303
3. Assessing lack of unity of invention 307
4. Criteria for determining lack of unity 312
5. The single general inventive concept 314
6. Plurality of inventions and further search fees 321
C. Sufficiency of disclosure 327
1. Date of compliance 328
2. Parts of the application relevant for assessing sufficiency of disclosure 329
3. Knowledge of skilled person relevant for assessing sufficiency of
disclosure 330
4. Clarity and completeness of disclosure 333
5. Reproducibility 338
6. The requirement of sufficiency of disclosure in the biotechnology field 344
7. The relationship between Article 83 and Article 84 EPC 356
8. Evidence 362
VI
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D. Priority 366
1. Introduction 367
2. Applications giving rise to a right of priority 368
3. Identity of invention 372
4. First application 387
5. Partial and multiple priorities 391
E. Amendments 398
1. Article 123(2) EPC – added subject-matter 401
2. Article 123(3) EPC – extension of the protection conferred 459
3. Relationship between Article 123(2) and Article 123(3) EPC 475
4. Correction of errors in the description, claims and drawings – Rule
139 EPC 481
5. Evidence and standard of proof for allowing amendments and corrections 489
F. Divisional applications 491
1. Introduction 492
2. Subject-matter of a divisional application 493
3. Filing a divisional application 499
4. Procedural questions 505
5. Double patenting 508
III. RULES COMMON TO ALL PROCEEDINGS BEFORE THE EPO 513
A. The principle of the protection of legitimate expectations 513
1. Applicability of the principle of the protection of legitimate expectations 514
2. Information provided by EPO 518
3. Obligation to draw attention to easily remediable deficiencies 521
4. Obligation to enquire in case of unclear nature of request 526
5. Legitimate expectation and case law 527
B. Right to be heard 530
1. Introduction 531
2. The right to be heard under Article 113(1) EPC 532
3. Text submitted or agreed by applicant (patent proprietor) - Article
113(2) EPC 553
C. Oral proceedings 556
1. Right to oral proceedings 558
2. Request for oral proceedings 560
VII
Table of contents
3. Non-attendance at oral proceedings 566
4. Preparation and conduct of oral proceedings 568
5. Costs 589
D. Time limits, further processing and interruption of proceedings 591
1. Calculation, determination and extension of time limits 591
2. Further processing under Article 121 EPC 595
3. Interruption of proceedings under Rule 142 EPC 596
E. Re-establishment of rights 601
1. Introduction 602
2. Right to file request for re-establishment of rights 603
3. Non-observance of time limit directly causing a loss of right 604
4. Admissibility of requests for re-establishment of rights 606
5. Merit of request for re-establishment of rights 615
6. Procedural treatment of requests for re-establishment 638
7. Rights of use under Article 122(5) EPC 642
8. Principle of proportionality 642
9. Refund of the fee for re-establishment 644
F. Languages 646
1. Language of filing and date of filing of a European patent application 646
2. Language of the proceedings 647
3. Derogations from the language of the proceedings in written proceedings
and in oral proceedings 647
4. Language privilege 649
5. Translations 649
6. Language-related fee reductions 651
G. Law of evidence 653
1. Introduction 654
2. Admissible evidence 656
3. Taking of evidence 664
4. Evaluation of evidence 674
5. Burden of proof 693
H. Interpretation of the EPC 704
1. The Vienna Convention on the Law of Treaties 705
2. Interpretation of the EPC affected by TRIPS Agreement 710
3. The European Convention on Human Rights 711
4. Impact of national decisions on the case law of the boards of appeal 711
VIII
Table of contents
5. Decisions of the Administrative Council: boards of appeal not formally
bound 713
6. Implementing Regulations 713
7. Changes in relation to an established practice and interpretation 714
8. Interpretation of the various language texts of the EPC (Article 177 EPC) 715
I. Main and auxiliary requests 716
1. Possibility of filing auxiliary requests 716
2. Order of requests 716
3. Admissibility of requests 717
4. Obligation to give reasons for refusal of each request 718
5. Examination procedure 719
6. Interlocutory decision on allowable auxiliary request – distinction between
examination proceedings and opposition proceedings 719
7. Opposition procedure 720
8. Appeal procedure 721
J. Suspected partiality 722
1. General principles 723
2. Initiation of partiality proceedings and other procedural issues 727
3. Admissibility 730
4. Suspected partiality of members of the departments of first instance 732
5. Suspected partiality of members of the boards of appeal 734
6. Suspected partiality of members of the Enlarged Board of Appeal 737
7. Legal restrictions for former board members 740
K. Formal aspects of decisions of EPO departments 741
1. Right to a decision after notification of loss of rights (Rule 112 EPC) 742
2. Composition of the competent departments of first instance 744
3. Date of decision 747
4. Form of decisions 748
5. Principles for the exercise of discretion 761
L. Correction of errors in decisions 763
1. General issues 763
2. Errors in the printed version of the European patent specification 765
3. Competence to correct a decision under Rule 140 EPC (former Rule
89 EPC 1973) 766
4. Procedural status of third parties 767
IX
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M. Inspection of files, European Patent Register and stay of
proceedings 768
1. Inspection of files 768
2. European Patent Register 771
3. Stay of proceedings under Rule 14(1) EPC 773
N. Observations by third parties 776
1. Introduction 776
2. Formal requirements 777
3. Third party's legal status 779
4. Third-party observations in opposition proceedings 781
5. Third party observations filed at a late procedural stage 782
6. Remittal following filing of observations 784
O. Notifications 785
1. Forms of notification 785
2. Notification to representatives 787
3. Notification to third parties 788
4. Spheres of risk and apportioning the burden of proof 789
P. Applications by non-entitled persons 791
Q. Rules relating to Fees 792
1. General 792
2. Payment of fees 793
3. Date of payment 795
4. Insufficient payments - small amounts lacking 795
5. Reduction of the examination fee 797
6. Partial refund of the examination fee 797
R. Representation 798
1. Professional representatives 799
2. Legal practitioners entitled to act as professional representative 803
3. Appointment of a common representative (Rule 151 EPC) 806
4. Authorisations for appointment of a representative 808
5. Oral submissions by an accompanying person 815
6. Distinction between presentation of facts and evidence and presentation
of arguments 826
S. Guidelines for Examination in the European Patent Office 828
1. Guidelines not binding on boards 828
X