Selected decisions
The list of “Selected decisions” alerts users to all newly published decisions for which a headnote or a catchword has been provided by the board. Usually, a board will add a headnote or catchword if it wishes to provide a brief summary of a particular point of law or to draw attention to an important part of the reasons for the decision. The list contains all decisions with a headnote or catchword published in the last three years and can be viewed by year by selecting the year from the menu on the left.
The list below contains all decisions with a headnote or catchword that have been released for publication in the last six months (newest first).
January 2025
Amendments - main request
Amendments - allowable (no)
Inventive step - auxiliary request (no)
Amendment to case - amendment within meaning of Art. 12(4) RPBA 2020
Amendment to case - allowable (yes)
Amendment after notification of Art. 15(1) RPBA communication - auxiliary request
Amendment after notification of Art. 15(1) RPBA communication - exceptional circumstances (yes)
Amendment after notification of Art. 15(1) RPBA communication - additional auxiliary request
Amendment after notification of Art. 15(1) RPBA communication - exceptional circumstances (no)
1. Regarding the assessment of inventive step of a technical implementation of a non-technical method without starting from a particular IT infrastructure, see points 10 and 11.
2. Underlining words in the text of a claim to identify what is considered "technical" is normally not sufficient to clearly identify the technical and non-technical features of the claimed subject-matter (see point 12.2).
3. Regarding reliance on a book as evidence for common general knowledge, see point 14. The pertinent passage of the Guidelines for Examination in the EPO, G-VII, 3.1, needs nuance (see point 14.4).
Inventive step - assessment of a technical implementation of a non-technical method
Identification of technical and non-technical features by underlining words in the claim - not sufficient
Common general knowledge - book cited as evidence
Appealed decision not sufficiently reasoned (yes)
Remittal of the case to the examining division (yes)
Reimbursement of the appeal fee (yes)
December 2024
Human-animal chimeras and processes to produce them are excluded from patentability in accordance with Article 53(a) EPC if the invention offends against human dignity.
This is the case for instance if it is not excluded that the human cells involved in the chimera integrate into the brain and/or develop into germ cells of the chimera, and result in a chimera with human or human-like capabilities (see point 22 of the Reasons).
Exceptions to patentability - invention contrary to morality (yes)
The Vienna Convention - principle of narrow interpretation of exclusions - no
Category of non-patentable inventions
Human-animal chimeras
Inventive step - technical effect derivable from the application as originally filed in the sense of G 2/21, point 2 of the order (no)
Inventive step - obvious solution
Referral to the Enlarged Board of Appeal - (no)
Beitritt des vermeintlichen Patentverletzers - im Beschwerdeverfahren
Beitritt des vermeintlichen Patentverletzers - zulässig (ja)
Zurückverweisung - (ja)
Zurückverweisung - neuer Einspruchsgrund
Rückzahlungen der Beschwerdegebühren (ja)
Vorlage an die Große Beschwerdekammer - (nein)
November 2024
Under Article 112(1)(a) EPC and Article 21 RPBA the following points of law are referred to the Enlarged Board of Appeal for decision:
After withdrawal of all appeals, may the proceedings be continued with a third party who intervened during the appeal proceedings? In particular, may the third party acquire an appellant status corresponding to the status of a person entitled to appeal within the meaning of Article 107, first sentence, EPC?
Re-establishment of rights - missed time limit for filing notice of appeal and for paying appeal fee
Re-establishment of rights - missed time limit for filing statement of grounds of appeal
Re-establishment of rights - one or two re-establishment fees due (left undecided)
Re-establishment of rights - request duly substantiated (no)
Re-establishment of rights - inability to observe a time limit (no)
Re-establishment of rights - request admissible (no)
Admissibility of appeal - appeal deemed not to have been filed
The appellant considered that ... when [G 1/19] , e.g. at reasons, point 51, states that any technical effect going beyond the implementation of the process on a computer may be considered for inventive step, it means anything beyond a 1:1 mapping between the implementation and a step of the business method being implemented. In other words, any subject-matter that does not "map" to a step in the business method is technical.
The Board agrees that the "implementation" of a business method implies some sort of mapping between non-technical steps of the business method and their technical realisation. Decision G 1/19 has something to say about this mapping, at least in the forward direction, at point 51, when it rephrases the requirement for technical effect as "technical effect going beyond the simulation's straightforward or unspecified implementation on a standard computer system". Thus, even a 1:1 mapping might be inventive if it is not "straight-forward" (e.g. not standard programming or routine modification of the technical means used), or "unspecified" (e.g. not simply as "means for [carrying out the step]").
But, looking for a mapping from "implementation" to the step of a business method in the reverse direction does not make sense as the steps of the non-technical activity do not have to be specified explicitly. They would include any steps that the business person would come up with in a non-technical workflow. The way this is handled is by considering the mapping of the implementation to the effect of the step and to examine whether the effect has any technical character, or whether it would be covered by what the business person would consider as part of the non-technical process. This is, in other words, the standard COMVIK approach where one looks at the effect of a feature in order to pose a technical problem, which might simply be the implementation of the feature, for which the above-mentioned mapping in the forward direction meant in G 1/19 applies. (See Reasons 2.18)
Inventive step - workflow rules controlling tasks and tags labelling the states of the tasks (no
Inventive step - not technical)
Einspruchsgründe - Hauptantrag
Einspruchsgründe - Gegenstand geht über den Inhalt der früheren Anmeldung hinaus (ja)
Spät eingereichter Antrag - Hilfsanträge 1 und 2
Spät eingereichter Antrag - wäre bereits im erstinstanzlichen Verfahren vorzubringen gewesen (ja)