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Citation: Supplementary publication 4, OJ EPO 2017, Insert

Online publication date: 31.5.2017

FOREWORD by the President of the Boards of Appeal	1
BOARD OF APPEAL AND ENLARGED BOARD OF APPEAL CASE LAW 2015/2016	2
I.PATENTABILITY	2
A. Exceptions to patentability	2
1.Patentability of biological inventions	2
1.1Product claims for plants or plant material	2
1.2Essentially biological processes for the production of plants	3
2.The term "therapy" – definition of the term	4
B. Novelty	4
1.Availability to the public – ways of making information available to the public	4
1.1Publications and other printed documents	4
1.2Public prior use	5
2.Determining the content of the relevant prior art	7
2.1Taking drawings into account	7
2.2Reproducibility of the content of the disclosure	7
3.Non-technical distinguishing features	8
4.First and second medical use	9
4.1Purpose-limited product claims and Swiss-type claims – scope of protection	9
4.2Novelty of the therapeutic application	11
5.Second (or further) non-medical use – process claims	12
C. Inventive step	13
1.Closest prior art	13
1.1Determination of closest prior art in general	13
1.2Selection of most promising starting point	16
2.Technical problem	17
2.1Determination of the technical problem	17
2.2Reformulation of the technical problem	18
3.Ex post facto analysis	18
4.Reasonable expectation of success, especially in the field of genetic engineering and biotechnology	19
5.Assessment of inventive step	20
5.1Technical character of the invention	20
5.2Assessment of features relating to a presentation of information	23
5.3Combination of documents	25
II.PATENT APPLICATION AND AMENDMENTS	26
A. Claims	26
B. Unity of invention	29
1.Single general inventive concept	29
2.Unsearched subject-matter – applicability of Rule 137(5) EPC	31
C. Sufficiency of disclosure	32
1.Parts of the application relevant for assessing sufficiency of disclosure	32
2.Clarity and completeness of disclosure – parameters	32
3.Reproducibility	33
3.1Repeatability	33
3.2Reproducibility without undue burden – trial and error	35
3.3Post-published documents	36
4.The requirement of sufficiency of disclosure in the biotechnology field	38
4.1Level of disclosure required for medical use	38
4.2Deposit of living material	39
5.The relationship between Article 83 and Article 84 EPC	40
D. Priority	42
1.Entitlement to priority – successor in title	42
2.Inventions relating to nucleotide and amino acid sequences	43
3.Partial priority	44
E. Amendments	46
1.Article 123(2) EPC – added subject-matter	46
1.1Gold standard	46
1.2No artificial and semantic construction	46
1.3Amendment and clarity – inescapable trap	47
1.4Disclaimer	48
1.4.1Applicability of the gold standard set out in G 2/10 to undisclosed disclaimers	48
1.4.2Drafting of disclaimers – clarity	50
1.4.3Availability of remaining subject matter at filing or priority date	50
1.5 Ranges – qualifiers "below" and "about"	51
1.6Deletion of essential feature	52
2.Article 123(3) EPC – extension of the protection conferred	53
2.1Narrowing down a generic class or list of chemical compounds (open claims – "comprising")	53
2.2Replacement of drawings	54
2.3Inescapable trap – not Article 123(2)-(3) EPC trap – lack of novelty due to loss of priority	54
2.4Change from a claim in Swiss-type form to a claim under the provisions of Article 54(5) EPC	55
F. Divisional applications – requirement of pending earlier application	56
III.RULES COMMON TO ALL PROCEEDINGS BEFORE THE EPO	57
A. Legitimate expectations	57
B. Right to be heard	59
C. Oral proceedings	61
1.Request for oral proceedings – further oral proceedings before the same department	61
2.Changing the date of oral proceedings	62
3.Purpose of communication under Article 15(1) RPBA	63
4.Oral proceedings conducted by video conference	63
5.Handwritten amendments during oral proceedings before the board	64
D. Time limits, further processing and interruption of proceedings	64
E. Re-establishment of rights – merits of request	66
F. Law of evidence	67
1.Witness testimonies and expert opinions	67
2.Taking of evidence – right to be heard	68
3.Probative value of evidence on a case-by-case basis	70
3.1Witness testimony and written statements	70
3.2Archives and internet publications	71
4.Standard of proof	73
4.1Public prior use	73
4.2Public availability of prior art documents	75
5.Burden of proof	76
5.1Apportioning the burden of proof	76
5.2Shifting the burden of proof	78
G. Suspected partiality	79
H. Formal aspects of decisions of EPO departments	80
I. Corrections of errors in decisions	81
J. European Patent Register	82
K. Observations by third parties	83
L. Representation	84
1.Authorisations for appointment of a representative	84
1.1Sub-authorisations	85
2.Oral submissions by an accompanying person	86
IV.PROCEEDINGS BEFORE THE EPO	87
A. Examination procedure	87
1.Amendments – discretion of the examining division under Rule 137(3) EPC	87
2.Additional searches during examination	88
3.Amendments relating to unsearched subject-matter – Rule 137(5) EPC	89
B. Special features of opposition and appeal proceedings	90
1.Transfer of party status	90
1.1Transfer together with the business assets to which the opposition relates	90
1.2Effect of finding that no transfer took place during opposition proceedings	91
2.Intervention – procedural status of intervener	92
3.Continuation of opposition proceedings after lapse or surrender	92
4.Costs	93
C. Opposition procedure	94
1.Filing of opposition in due time	94
2.Correction of opponent's name – evidence of original intention	95
3.Fresh ground for opposition against amended claim	95
4.Late-filed submissions in opposition proceedings	96
5.Applicability of Rule 43(2) EPC in opposition proceedings	97
6.Clarity of amendment – feature of granted claim taken out of context – applicability of G 3/14	99
D. Appeal procedure	99
1.Board competent to hear a case	99
2.Form and time limit of appeal – appeal filed within the time limit	101
3.Reformatio in peius – exception to the prohibition	102
4.Late-filed submissions in appeal proceedings	103
4.1Relevance	103
4.2Article 12(4) RPBA – general principles	104
4.3Communication of a board of appeal	104
4.4Unsubstantiated requests	105
4.5Amendments after arrangement of the oral proceedings	107
4.6Discretion of the boards to admit requests already refused by the department of first instance	107
4.7Late-filed arguments	111
4.8Documents and evidence admitted	112
4.9New submissions in proceedings resumed before the boards	113
4.10Continuation of the appeal proceedings after the end of oral proceedings	113
5.Termination of appeal proceedings	114
5.1Conditional withdrawal of appeal	114
6.Remittal to the department of first instance	114
6.1Exercise of discretion to remit	114
6.2Special reasons for not remitting the case	115
6.3Binding effect of decision remitting case to department of first instance	116
7.Reimbursement of appeal fees	118
E. Proceedings before the Enlarged Board of Appeal	121
V.DISCIPLINARY BOARD OF APPEAL	126
1.Marking of Paper C	126
2.Pre-examination	127
ANNEXES	129
ANNEX 1	129
Decisions discussed in the Case Law Report 2015/2016	129
ANNEX 2	141
Cited decisions	141
ANNEX 3	148
Headnotes to 2016 decisions which have been (or will be) published	148
ANNEX 4	150
Referrals to the Enlarged Board of Appeal	150

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FOREWORD by the President of the Boards of Appeal