II. Patent application and amendments
6.2.Meaning of terms and phrases: "comprising (substantially)", "consisting (essentially) of", "containing"
6.3.6Definition of the scope of protection with regard to infringement not within the EPO's competences
B.Unity of invention
3.3.Assessment of lack of unity and of requests for refund of further search fees in examination proceedings
C.Sufficiency of disclosure
c) Consideration of post-published documents limited: cannot remedy a fundamental insufficiency of disclosure
c) Recent debate around the majority and minority lines of case law and alleged divergence in the case law
2.1.Application filed in or for a state which is party to the Paris Convention or a member of the WTO
5.1.Publications during the priority interval – effect on elements of the European patent application not entitled to priority
1.2.Content of the application as filed: Parts of the application which determine the disclosure of the invention
a) Combination of the preferred narrower range and one of the part-ranges lying within the disclosed overall range
1.5.3Setting new end point with not expressly disclosed value – "less than", "below" and rounding values
1.6.1Combination of features pertaining to separate embodiments; application as filed is not a "reservoir"
1.6.3Deletion of elements from lists – shrinking the lists without singling out a combination of features
1.6.4Combination of original independent claim with features from a plurality of dependent claims referring back to the independent claim separately – "US style" dependencies
1.7.4Decisions applying the criteria established by the Enlarged Board in G 2/10 – remaining subject-matter test
1.9.2Examples regarding the requirement "no clearly recognisable functional or structural relationship"
1.12.4Incorrect information in earlier application as filed but correct information directly and unambiguously derivable
b) Protection conferred within the meaning of Article 123(3) EPC not determined by subject-matter at issue in national infringement proceedings
2.4.13Narrowing down a generic class or list of chemical compounds; open claims ("comprising"); sequential drafting ("cascade")
c) From product claim to a claim directed to using a product for producing another product – Article 64(2) EPC
2.7.3From product or product-by-process claim to a claim directed to a process for manufacturing/preparing the product, and vice versa
3.2.2Replacement of an added undisclosed feature by another feature disclosed in the application as filed without violating Article 123(3) EPC
3.2.3Deletion of added undisclosed feature, which has no technical meaning, without violating Article 123(3) EPC
3.2.4Added undisclosed feature, which does not provide a technical contribution and does not contravene Article 123(2) EPC
3.2.5Resolving the conflict in cases of clerical errors or incompatibility between the claims as granted and the description
4.2.3Obvious correction – immediately evident that nothing else would have been intended than what is offered as the correction
4.5.Correction of errors in the description, claims and drawings after grant, and in opposition proceedings
2.4.3Final decision on subject-matter in the parent application or a sibling application – res judicata
3.5.8Pendency in case of deemed withdrawal of earlier application and no reaction to loss of rights communication under Rule 112(1) EPC
3.6.Time limits under Rule 36(1)(a) and (b) EPC in the version in force between 1 April 2010 and 31 March 2014
4.1.4Intention to file divisional application immaterial to admissibility of appeal against grant of the parent
4.2.1Deemed designation of all states designated in earlier application at the date of filing of divisional
- T 424/21
1. If the deletion of dependent claims after notification of a summons to oral proceedings enhances procedural economy by clearly overcoming existing objections without giving rise to any new issues this might constitute cogent reasons justifying exceptional circumstances in the sense of Article 13(2) RPBA 2020.
2. For a first medical use of a substance or composition according to Article 54(4) EPC to be sufficiently disclosed it is not required to show the suitability for each and every disease, but it usually suffices to show that at least one medical use is credibly achieved.
- T 88/21
In view of the principles of multiple priorities and partial priority: undisclosed disclaimer based on a disclosure in an earlier application by the same applicant not allowed.
- T 500/20
Reasons 3.6. In claimed inventions that do not involve a range of parameter values or compositions but are directed at a concept expressed in terms of generic structural or functional features of an apparatus or of a method, it is not enough to demonstrate insufficiency to conceive of an example that falls within the terms of the claim that does not work because it does not achieve the claimed effect fully or at all so that therefore the invention would not be sufficiently disclosed across the entire breadth of the claim.
- T 3097/19
1. If a request is not admitted because earlier objections are not overcome, Rule 111(2) EPC requires that these earlier objections be made explicit in the decision (see reasons 3).
2. Non-convergence of requests is, on its own, not a sufficient reason for non-admittance. It must be reasoned that and why non-convergent requests affect procedural economy in view of the particular circumstances of the case (see reasons 4).
3. The purpose of the claims to define the matter for which protection is sought (Article 84 EPC) imparts requirements on the application as a whole, in addition to the express requirements that the claims be clear, concise and supported by the description. The Board deems it to be an elementary requirement of a patent as a legal title that its extent of protection can be determined precisely. Whether this is the case for a specific patent application (or an amended patent) can only be decided with due consideration of the description. Claims and description do not precisely define the matter for which protection is sought if they contradict each other (see reasons 27 to 34).
- T 2194/19
The requirement that the claims are to be supported by the description under Article 84, second sentence, EPC does not necessarily mean that all the "embodiments" of the description of a patent application have to be covered by the (independent) claims, i.e. that all the embodiments must fall within the scope of those claims (see point 6.2.2 of the Reasons).
- T 1553/19
The normal rule of claim construction of reading a feature specified in a claim in its broadest technically meaningful sense corresponds to determining the broadest scope encompassed by the subject-matter being claimed according to a technically sensible reading. In the case of a feature defined in a positive manner, which imposes the presence of a specific element, this is effectively achieved by giving to the element in question its broadest technically sensible meaning. However, for a feature defined in a negative manner, which excludes the presence of a specific element, the broadest scope of the claim corresponds to the narrowest (i.e. most limited) technically sensible definition of the element to be excluded. (Reasons, point 5.7)
- T 1473/19
1.) Article 69 EPC in conjunction with Article 1 of the Protocol thereto can and should be relied on when interpreting claims and determining the claimed subject-matter in proceedings before the EPO, including for the purpose of assessing compliance with Article 123(2) EPC (Reasons 3.1-3.15). 2.) Although Article 69(1), second sentence, EPC requires that generally account be taken of the description and the drawings when interpreting a claim, the primacy of the claims according to Article 69(1), first sentence, EPC limits the extent to which the meaning of a certain claim feature may be affected by the description and the drawings (Reasons 3.16-3.16.2). 3.) Claim interpretation is overall a question of law which must as such ultimately be answered by the deciding body, and not by linguistic or technical experts. It does, however, involve the appraisal of linguistic and technical facts which may be supported by evidence submitted by the parties (Reasons 3.17).
- T 2293/18
Stützung der Ansprüche durch die Beschreibung, s. Punkt 3.3.5
- T 1303/18
If the patent proprietor introduces various differences between the definition of a certain compound in a granted claim and that in the priority application and if despite these differences, the patent proprietor, in arguing that the effective date of the subject-matter of the granted claim is the claimed priority date, asserts that the compound of the granted claim is the same as that disclosed in the priority application, it is the patent proprietor who bears the burden of proving this assertion (point 2.13 of the reasons).
- T 1024/18
Necessity to adapt the description (Reasons 3)
- T 2766/17
Statements in the description contradicting the plain claim wording may cast doubts as to the intended meaning of this wording. Under such circumstances an objection under Article 84 EPC has to be raised.