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Patent Index 2020

Case Law of the Boards of Appeal

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

TABLE OF CONTENTS

Reader's Guide: 1.Abbreviations
2.Citations
3.Case numbers
4.Search the Case Law of the Boards of Appeal
I.PATENTABILITY: A.Patentable inventions
1.Patent protection for technical inventions
2.Non-inventions under Article 52(2) and (3) EPC
B.Exceptions to patentability
1.Introduction
2.Breaches of "ordre public" or morality
3.Patentability of biological inventions
4.Medical methods
C.Novelty
1.General
2.State of the art
3.Availability to the public
4.Determining the disclosure of the relevant prior art
5.Ascertaining differences
6.Chemical inventions and selection inventions
7.First and second medical use
8.Second (or further) non-medical use
D.Inventive step
1.Introduction
2.Problem and solution approach
3.Closest prior art
4.Technical problem
5."Could-would approach"
6.Ex post facto analysis
7.Expectation of success, especially in the field of genetic engineering and biotechnology
8.Skilled person
9.Assessment of inventive step
10.Secondary indicia in the assessment of inventive step
E.The requirement of industrial application under Article 57 EPC
1.Notion of "industrial application"
2.Reproducibility and sufficiency of disclosure
3.Indication of a profitable use of the invention in industry
II.PATENT APPLICATION AND AMENDMENTS: A.Claims
1.Basic principles
2.Form, content and conciseness of claims
3.Clarity of claims
4.Disclaimers
5.Claims supported by the description
6.Interpretation of claims
7.Product-by-process claims
8.Claims fees
B.Unity of invention
1.Introduction
2.Unity in the context of different types of claims
3.Assessing lack of unity of invention
4.Criteria for determining lack of unity
5.The single general inventive concept
6.Plurality of inventions – further search fees
C.Sufficiency of disclosure
1.Introduction
2.Date of compliance
3.Parts of the application relevant for assessing sufficiency of disclosure
4.Knowledge of skilled person relevant for assessing sufficiency of disclosure
5.Clarity and completeness of disclosure
6.Reproducibility
7.The requirement of sufficiency of disclosure in the biotechnology field
8.The relationship between Article 83 and Article 84 EPC
9.Evidence
D.Priority
1.Introduction
2.Applications giving rise to a right of priority
3.Identity of invention
4.First application in respect of the invention
5.Partial and multiple priorities
E.Amendments
1.Article 123(2) EPC – added subject-matter
2.Article 123(3) EPC – extension of the protection conferred
3.Relationship between Article 123(2) and Article 123(3) EPC
4.Correction of errors in the description, claims and drawings – Rule 139 EPC
5.Evidence and standard of proof for allowing amendments and corrections
F.Divisional applications
1.Introduction
2.Subject-matter of a divisional application
3.Filing a divisional application
4.Procedural questions
5.Prohibition of double patenting
III.RULES COMMON TO ALL PROCEEDINGS BEFORE THE EPO: A.The principle of the protection of legitimate expectations
1.Introduction
2.Applicability of the principle of the protection of legitimate expectations
3.Information provided by EPO
4.Obligation to draw attention to easily remediable deficiencies
5.Obligation to enquire in case of unclear nature of request
6.Legitimate expectation and case law
B.Right to be heard
1.Introduction
2.The right to be heard under Article 113(1) EPC
3.Text submitted or agreed by applicant (patent proprietor) – Article 113(2) EPC
C.Oral proceedings
1.Introduction
2.Right to oral proceedings
3.Oral proceedings at the instance of the EPO
4.Request for oral proceedings
5.Non-attendance at oral proceedings
6.Preparation of oral proceedings
7.Conduct of oral proceedings
8.Costs
D.Time limits, documents transmitted by fax, further processing and interruption of proceedings
1.Calculation, determination and extension of time limits
2.Date of receipt of documents transmitted by fax
3.Further processing under Article 121 EPC
4.Interruption of proceedings under Rule 142 EPC
E.Re-establishment of rights
1.Introduction
2.Right to file request for re-establishment of rights
3.Non-observance of time limit directly causing a loss of right
4.Admissibility of requests for re-establishment of rights
5.Merit of request for re-establishment of rights
6.Procedural treatment of requests for re-establishment
7.Rights of use under Article 122(5) EPC
8.Principle of proportionality
9.Reimbursement of the fee for re-establishment
F.Languages
1.Language of filing and date of filing of a European patent application
2.Language of the proceedings
3.Derogations from the language of the proceedings in written proceedings and in oral proceedings
4.Language privilege
5.Translations
6.Language-related fee reductions
G.Law of evidence
1.Introduction
2.Admissible evidence
3.Taking of evidence
4.Evaluation of evidence
5.Burden of proof
H.Interpretation of the EPC
1.The Vienna Convention on the Law of Treaties
2.Interpretation of the EPC affected by TRIPS Agreement
3.The European Convention on Human Rights
4.Impact of national decisions on the case law of the boards of appeal
5.Decisions of the Administrative Council: boards of appeal not formally bound
6.Implementing Regulations
7.Changes in relation to an established practice and interpretation
8.Interpretation of the various language texts of the EPC (Article 177 EPC)
I.Main and auxiliary requests
1.Possibility of filing auxiliary requests
2.Order of requests
3.Admissibility of requests
4.Obligation to give reasons for refusal of each request
5.Withdrawal of request
6.Examination procedure
7.Interlocutory decision on allowable auxiliary request – distinction between examination proceedings and opposition proceedings
8.Opposition procedure
9.Appeal procedure
J.Suspected partiality
1.General principles
2.Initiation of partiality proceedings and other procedural issues
3.Admissibility
4.Suspected partiality of members of the departments of first instance
5.Suspected partiality of members of the boards of appeal
6.Suspected partiality of members of the Enlarged Board of Appeal
7.Legal restrictions for former board members
K.Formal aspects of decisions of EPO departments
1.Composition of the competent departments of first instance
2.Date of decision
3.Form of decisions
4.Loss of rights within the meaning of Rule 112(1) EPC
5.Notification of decision under Rule 111(1) EPC
L.Correction of errors in decisions
1.Competence to correct a decision according to Rule 140 EPC
2.Scope of Rule 140 EPC
3.Obvious mistakes according to Rule 140 EPC
4.Legal effect of corrections according to Rule 140 EPC
5.Correction of printing errors in the publication of the patent specification
6.Procedural status of third parties
M.Inspection of files, European Patent Register and stay of proceedings
1.Inspection of files
2.European Patent Register
3.Stay of proceedings under Rule 14(1) EPC
N.Observations by third parties
1.Introduction
2.Formal requirements
3.Third party's legal status
4.Third-party observations in opposition-appeal proceedings
5.Remittal following filing of observations
O.Transfer of party status
1.Party status as patent proprietor
2.Party status as opponent
P.Intervention
1.Admissibility of intervention
2.Legal status of intervener
3.Legal status of documents filed with intervention during appeal proceedings
4.Intervention shortly before oral proceedings
Q.Continuation of the opposition proceedings by the EPO
1.Surrender and lapse of the patent
2.Death or legal incapacity of an opponent
3.Withdrawal of opposition
R.Apportionment of costs
1.Principle that each party must bear its own costs
2.Equity of a different apportionment of costs – case groups
3.Expenses that may be apportioned
4.Procedural aspects
S.Notifications
1.Forms of notification
2.Notification to representatives
3.Notification to third parties
4.Spheres of risk and apportioning the burden of proof
T.Applications by non-entitled persons
U.Rules relating to Fees
1.General
2.Payment of fees
3.Date of payment
4.Insufficient payments – small amounts lacking
5.Fee reductions
6.Fee refunds
V.Representation
1.Overview
2.Professional representatives
3.Legal practitioners entitled to act as professional representative
4.Authorisations for appointment of a representative
5.Oral submissions by an accompanying person
W.Guidelines for Examination in the European Patent Office
1.Guidelines not binding on boards
2.Guidelines binding (in principle) on departments of first instance
3.The boards' application of the Guidelines in specific cases
IV.PROCEEDINGS BEFORE THE DEPARTMENTS OF first instance: A.Preliminary and formalities examination
1.Introduction
2.Responsibility for formalities examination
3.Where and how applications may be filed
4.Persons entitled to file application
5.Accordance of a date of filing
6.Examination of formal requirements
7.Designation of states
8.Priority
9.Fiction of withdrawal of the application (Rule 100(3) EPC)
10.Publication of the application
B.Examination procedure
1.Stage before substantive examination
2.The first stage of substantive examination
3.The grant stage in examination
4.Additional searches during examination
5.Amendments relating to unsearched subject-matter – Rule 137(5) EPC
C.Opposition procedure
1.Legal character of opposition proceedings and applicable principles
2.Filing and admissibility requirements
3.Substantive examination of opposition
4.Late submission of documents, lines of attack and arguments
5.Amendments to claims, description and drawings in opposition proceedings
6.Right to be heard in opposition proceedings
7.Acceleration of opposition proceedings in the case of pending infringement proceedings
8.Decisions of opposition division
D.Limitation/revocation
1.Limitation/revocation – Article 105a-105c EPC
2.Requests for revocation during opposition and opposition appeal proceedings
V.PROCEEDINGS BEFORE THE BOARDS OF APPEAL: A.Appeal procedure
1.Legal character of appeal procedure
2.Filing and admissibility of the appeal
3.Substantive examination of the appeal
4.New submissions on appeal – case law on the RPBA 2020
5.New submissions on appeal – case law on the RPBA 2007
6.Parallel proceedings
7.Termination of appeal proceedings
8.Reasons for the decision
9.Remittal to the department of first instance
10.Binding effect of decision remitting case to department of first instance
11.Reimbursement of appeal fees
B.Proceedings before the Enlarged Board of Appeal
1.Introduction
2.Referral under Article 112 EPC
3.Petition for review under Article 112a EPC
4.Grounds for petition for review
5.Removal from office of a board member
C.Proceedings before the Disciplinary Board of Appeal
1.Introduction
2.European qualifying examination (EQE)
3.Disciplinary matters
4.Code of Professional Conduct
5.Non-appealability of decisions of the Disciplinary Board of Appeal
VI.THE EPO ACTING AS A PCT AUTHORITY – EURO-PCT APPLICATIONS: 1.Introduction
2.Jurisdiction of the boards of appeal
3.The EPO acting as designated or elected Office
4.Language of the proceedings
VII.INSTITUTIONAL MATTERS: 1.Legal status of the EPO boards of appeal
2.Protocol on Recognition
3.Extension agreements and ordinances
4.Administrative agreements under Article 10(2)(a) EPC
TABLE OF CASES: Decisions of the Disciplinary Board of Appeal
Decisions and opinions of the Enlarged Board of Appeal on referrals
Decisions of the Legal Board of Appeal
Decisions of the Enlarged Board of Appeal on petitions for review
Decisions of the Technical Boards of Appeal
PCT Protests
INDEX OF CITED PROVISIONS: 1.European Patent Convention
2.Implementing Regulations to the EPC
3.Rules relating to Fees
4.Patent Cooperation Treaty (articles and rules)
5.Regulation on the European qualifying examination for professional representatives
6.Regulation on discipline for professional representatives
7.Rules of Procedure of the Enlarged Board of Appeal
8.Rules of Procedure of the Boards of Appeal
ANNEXES: 1.Rules of Procedure of the Enlarged Board of Appeal
2.Rules of Procedure of the Boards of Appeal (RPBA 2007)
3.Rules of Procedure of the Boards of Appeal (RPBA 2020)
4.Transitional provisions
5.Cross-reference list EPC 1973 - EPC 2000
6.Detailed table of contents

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