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7.2. Level of disclosure required for medical use – plausibility

Overview

Foreword to the tenth edition
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. Whether there is an invention under Art. 52(1) EPC
3. Technical character as a requirement for an invention
4. Two-hurdle approach G 1/19
5. Assessment of technical character
5.1. Assessment without regard to the prior art
5.2. Concept of technical character in the case law
5.2.1 Apparatus
5.2.2 Methods
a) Methods involving technical means
b) Methods used in a technical process carried out on a physical entity
5.2.3 Technical considerations and technical implementations
6. Non-inventions under Article 52(2) and (3) EPC
6.1. Legal basis
6.2. Scope of application
6.3. Discoveries, scientific theories and mathematical methods
6.3.1 Discoveries and scientific theories
6.3.2 Mathematical methods
6.4. Aesthetic creations
6.5. Computer-implemented inventions
6.5.1 Definition of computer-implemented invention
6.5.2 Distinction from computer programs
6.5.3 Scope of Article 52(2)(c) EPC exception to patentability
6.5.4 Patentability of computer programs: G 3/08
6.5.5 Patentability of computer programs: technical character
6.5.6 Establishing technical character
a) Further effects of programs for computers
b) Direct link to physical reality
c) Potential technical effect
d) Virtual or "calculated" technical effect
e) Tangible effect
f) Technical considerations: programming a computer
g) Technical considerations: implementation of a function on a computer system
h) Methods performed by a computer
i) Computer-implemented simulation methods
6.6. Schemes, rules and methods for performing mental acts, playing games or doing business
6.6.1 Methods for doing business
6.6.2 Methods for performing mental acts
6.6.3 Word-processing
6.7. Presentations of information
6.7.1 User Interfaces
B. Exceptions to patentability
1. Introduction
1.1. Amendments made to Article 53 EPC as part of the EPC 2000 revision
1.2. Basic principles
2. Breaches of "ordre public" or morality
2.1. Rule 28 EPC
2.1.1 Scope of exception under Rule 28(c) EPC
2.1.2 Scope of exception under Rule 28(d) EPC
2.1.3 Test date
2.2. Article 53(a) EPC
2.2.1 Test date
2.2.2 Assessment of an objection according to Article 53(a) EPC
a) Difference from test under Rule 28(d) EPC
b) Concept of "morality" and "ordre public"
c) Donor consent
3. Patentability of biological inventions
3.1. Plants and plant varieties
3.1.1 Definition of the term "plant varieties"
3.1.2 Limits to patentability
3.2. Animals and animal varieties
3.3. Essentially biological processes
3.3.1 Essentially biological processes for the production of animals
3.3.2 Essentially biological processes for the production of plants
a) G 2/07 and G 1/08
b) Patentable technical processes
3.3.3 Product claims for plants or plant material
a) G 2/12 and G 2/13
b) G 3/19 – dynamic interpretation of Article 53(b) EPC
3.4. Microbiological processes and the products thereof
3.4.1 The concept of "microbiological processes"
3.4.2 Difference between microbiological and genetic-engineering processes
4. Medical methods
4.1. Introduction
4.2. Differences and similarities in approaches to establishing whether a method for treatment by surgery or therapy or a diagnostic method involved
4.3. No need for practitioner involvement
4.4. Surgical methods
4.4.1 One surgical step in a multi-step method
4.4.2 Treatment by surgery not limited to surgery for a therapeutic purpose
4.4.3 Towards a new concept of "treatment by surgery"
4.4.4 "Treatment by surgery" in the case law since G 1/07
a) Surgical nature of a method step
b) Assessment of "substantial health risks"
c) Surgical step part of claimed method or simply a preparatory measure?
d) Surgical step not in the claim but covered by it?
e) The apparatus claim is not a disguised method claim
f) Unpatentable claims for products that can only be produced in a surgical step
4.4.5 Avoiding the exclusion of methods of treatment by surgery from patent protection under Article 53(c) EPC
a) Claim cannot be left to encompass surgical step
b) Disclaimer
c) Methods only concerning the operation of a device
4.4.6 Data obtained during surgery
4.5. Therapeutic methods
4.5.1 The term "therapy"
a) Definition of the term
b) Prophylactic treatments
c) Distinction from performance improvement
d) Distinction from cosmetic methods
e) Examples from case law
4.5.2 Methods with both therapeutic and non-therapeutic indications
a) Inevitable and inextricably linked therapeutic effect of the claimed method
b) Therapeutic and non-therapeutic effects distinguishable
4.5.3 Disclaimer for escaping the exception to patentability under Article 53 c) EPC
4.6. Diagnostic methods
4.6.1 Opinion G 1/04 and its application in case law
a) What constitutes "diagnostic methods"
b) The criterion "practised on the human or animal body"
c) Clarity of a claim relating to diagnostic methods
d) Intermediate findings of diagnostic relevance
C. Novelty
1. General
2. State of the art
2.1. General
2.2. Applications with same filing or priority date
2.3. Relevant date of documents
2.4. Prior rights – Article 54(3) EPC
2.4.1 European prior rights
2.4.2 Applicability of Article 54(3) EPC in cases of potentially colliding European parent and divisional applications
2.4.3 Excluded national prior rights
2.4.4 PCT applications as state of the art
2.5. Non-prejudicial disclosures under Article 55 EPC
2.6. In-house knowledge not published before the priority date
2.7. Prior art acknowledged in a patent application
2.8. Common general knowledge
2.8.1 Definition of "common general knowledge"
2.8.2 Patent specifications as common general knowledge
2.8.3 Specialist journals as common general knowledge
2.8.4 Databases as common general knowledge
2.8.5 Proof of common general knowledge
3. Availability to the public
3.1. General
3.2. Ways of making information available to the public
3.2.1 Publications and other printed documents
a) General
b) Company papers
c) Advertising brochure
d) Report available in the specialist field
e) Books
f) Instruction manual
g) Patent and utility models
h) Trade names
i) Abstracts of documents
3.2.2 Lectures and oral disclosure
3.2.3 Internet disclosures
a) General
b) Public availability of a document stored on the World Wide Web
c) Publication date
3.2.4 Public prior use
a) General
b) Public prior use occurred
c) No public prior use
d) Internal structure or composition of a product
3.2.5 Biological material
3.3. The concept of "the public"
3.3.1 Sale to a single customer
3.3.2 Making available to a person not skilled in the art
3.3.3 A limited circle of people
3.3.4 Public library
3.4. Obligation to maintain secrecy
3.4.1 General
3.4.2 Parts for serial production
3.4.3 Distribution of prospectuses, technical descriptions
3.4.4 Commercial relationships and interests
3.4.5 Demonstrating products for presentation purposes
3.4.6 Presenting the product in writing
3.4.7 Making samples/products available for test purposes
3.4.8 Conferences
3.4.9 Public availability of documents submitted for standardisation
3.4.10 Joint venture and other commercial agreements
3.4.11 Paper submitted to obtain an academic degree
3.4.12 Medical field
3.4.13 Notary
3.5. Evidence
3.5.1 Burden of proof
3.5.2 Standard of proof
a) General
b) Public prior use
c) Internet – proof of the date of availability
4. Determining the disclosure of the relevant prior art
4.1. General rules of interpretation
4.2. Combinations within a prior art document
4.3. Taking implicit features into account
4.4. Taking intrinsic features into account
4.5. Taking equivalents into account
4.6. Taking drawings into account
4.7. Taking examples into account
4.8. Broad claims
4.9. Deficiencies and mistakes in a disclosure
4.10. Accidental disclosure
4.11. Reproducibility of the content of the disclosure
5. Ascertaining differences
5.1. Comparing each individual item from the prior art
5.2. Distinguishing features
5.2.1 Difference in wording
5.2.2 Differences in values
5.2.3 Difference in parameters
5.2.4 Difference in composition
5.2.5 Functional features
5.2.6 Generic disclosure
5.2.7 Product claim with process features
5.2.8 Non-technical distinguishing features
6. Chemical inventions and selection inventions
6.1. General
6.2. Novelty of chemical compounds and groups of compounds
6.2.1 Anticipation of certain compounds
a) Definition of a substance by its structural formula or other parameters
b) Selection of starting substances from different lists
c) Selection on the basis of a general formula
6.2.2 Novelty of groups of substances
6.2.3 Novelty of enantiomers
6.2.4 Achieving a higher degree of purity
6.3. Selection of parameter ranges
6.3.1 Selection from a broad range
6.3.2 Overlapping ranges
6.3.3 Multiple selection
6.4. Subject-matter group
7. First and second medical use
7.1. First medical use
7.1.1 Introduction
7.1.2 Scope of a purpose-related product claim
7.1.3 Protection of a preparation in the form of a "kit-of-parts"
7.1.4 Further technical information as compared with the state of the art
7.2. Second (or further) medical use
7.2.1 Introduction
7.2.2 Transitional provisions
7.2.3 Purpose-limited product claims and Swiss-type claims – scope of protection
7.2.4 Novelty of the therapeutic application
a) General
b) New therapeutic application based on the group of subjects to be treated
c) New technical effect
d) Same illness
e) New dosage regimen
f) New therapy with a different mode of administration
g) Interpretation of "substance or composition"
h) Statement of purpose of surgical use for a known instrument
i) Discovery of a previously unknown property of a compound underlying the known effect
j) Whether there is a therapeutic method
8. Second (or further) non-medical use
8.1. Novelty criteria for use claims and process claims containing a purpose feature
8.1.1 General issues decided before the Enlarged Board of Appeal
8.1.2 Non-therapeutic treatment of animals
a) Non-therapeutic application
8.1.3 Applicability of G 2/88 and G 6/88 to process claims
a) General
b) Different treatment of use and process claims
c) Interpretation of process claims
d) Use of a known process for a particular purpose
e) Discovery of new properties/technical effects underlying the known use
f) Use of a substance to achieve a technical effect only attained in special circumstances
8.1.4 Statement of purpose in non-medical use claims in view of Article 52(4) EPC 1973
8.1.5 Novelty criteria for product claims with purpose characteristics
D. Inventive step
1. Introduction
2. Problem and solution approach
3. Closest prior art
3.1. Determination of closest prior art in general
3.2. Same purpose or effect
3.3. Similarity of the technical problem
3.4. Most promising starting point
3.4.1 General
3.4.2 Most promising springboard
3.5. Further criteria for determining the closest prior art
3.5.1 Defective disclosure
3.5.2 Confidential disclosure in the application
3.5.3 Speculative character
3.5.4 Old prior art documents
3.5.5 Improvement of a production process for a known product
3.6. Consequences of choosing a certain starting point
4. The technical problem
4.1. Determination of the objective technical problem in general
4.1.1 Objective criteria
4.1.2 Technical effect encompassed by the technical teaching of the application documents and actually provided/achieved
a) Decisions before G 2/21
b) Decisions following G 2/21
4.1.3 Whole scope of the claim
4.2. Formulation of the objective technical problem
4.2.1 No pointer to the solution
4.2.2 Problem formulated in the patent application as starting point
4.2.3 Formulation of partial problems – lack of unity
4.3. Solving a technical problem
4.3.1 Sufficient evidence for alleged advantages
4.3.2 Comparative tests
4.3.3 Post-published evidence and reliance on a purported technical effect for inventive step ("plausibility")
a) General principles
b) Decisions prior to G 2/21
c) Decisions following G 2/21
4.4. Reformulation of the technical problem
4.4.1 Reformulation if the problem is not solved
4.4.2 Reformulation of the "subjective" into an objective technical problem
4.4.3 Limitations to the reformulation of the technical problem
a) General principles and relationship with Article 123(2) EPC
b) Subsequently invoked technical effect
4.5. Alternative solution to a known problem
5. "Could-would approach"
6. Ex post facto analysis
7. Expectation of success, especially in the field of genetic engineering and biotechnology
7.1. Reasonable expectation of success
7.2. Try and see situation
8. Skilled person
8.1. Definition of the skilled person
8.1.1 Definition
8.1.2 Competent skilled person – group of people as "skilled person"
8.1.3 Definition of the person skilled in the art in the field of biotechnology
8.1.4 Identification of the skilled person in the case of computer-implemented inventions
8.2. Neighbouring field
8.3. Skilled person – level of knowledge
8.4. Everyday items from a different technical field
9. Assessment of inventive step
9.1. Assessment of inventive step in the case of mixed-type inventions
9.2. Problem-solution approach when applied to mixed-type inventions
9.2.1 The Comvik approach
9.2.2 Excluded subject-matter
9.2.3 Technical implementation of excluded subject-matter
9.2.4 Features contributing to the technical character of the invention
9.2.5 Non-technical features
a) Technical contribution
b) Interaction of non-technical features with technical subject-matter
9.2.6 Aim to be achieved in a non-technical field included in the formulation of the technical problem
9.2.7 The notional business person
9.2.8 Credible technical effects
9.2.9 Computer programs
9.2.10 Assessment of features relating to a presentation of information
a) Data visualisation
b) Graphical user interfaces
c) Functional and cognitive data
d) User preferences for displaying data
e) Data structures
9.2.11 Assessment of features relating to mathematical algorithms
a) Design
b) Simulations
c) Database management systems and information retrieval systems
d) Navigation systems
e) Artificial Intelligence and Machine Learning
f) Linguistics and classification of texts
g) Image processing
h) Security
9.2.12 Discoveries
9.2.13 Human Perception
9.2.14 Games
9.2.15 Mental acts / modelling
9.2.16 Logistics
9.3. Combination invention
9.3.1 Existence of a combination invention
9.3.2 Partial problems
9.4. Combination of teachings
9.5. Technical disclosure in a prior art document
9.6. Features not contributing to the solution of the problem
9.7. Substitution of materials – analogous use
9.8. Combination of documents
9.9. Chemical inventions
9.9.1 Problem and solution approach in chemical inventions
9.9.2 Structural similarity
9.9.3 Broad claims
9.9.4 Intermediate products
9.9.5 Predictable improvements resulting from amorphous forms as compared to crystalline forms
9.9.6 Synergistic effects
9.10. Equivalents
9.11. Selection inventions
9.12. Problem inventions
9.13. New use of a known measure
9.14. Obvious new use
9.15. Need to improve properties
9.16. Disclaimer
9.17. Optimisation of parameters
9.18. Small improvement in commercially used process
9.19. Analogy processes
9.20. Envisageable products
9.21. Examples of lack of inventive step
9.21.1 Foreseeable disadvantageous or technically non-functional modifications
9.21.2 Modifications to the closest prior art obvious to the skilled person
9.21.3 Technical standards
9.21.4 Reversal of procedural steps
9.21.5 Purposive selection
9.21.6 Automation
9.21.7 Enhanced effect
9.21.8 Simplification of complicated technology
9.21.9 Choice of one of several obvious solutions
a) Arbitrary choice from a host of possible solutions
b) Selection from obvious alternatives
9.21.10 Several obvious steps
9.21.11 Putting the closest prior art device into practice
9.21.12 Animal testing and human clinical trials
10. Secondary indicia in the assessment of inventive step
10.1. General issues
10.2. Technical prejudice
10.3. Age of documents – time factor
10.4. Satisfaction of a long-felt need
10.5. Commercial success
10.6. Market competitors
10.7. Simple solution
10.8. Surprising effect – bonus effect
E. The requirement of industrial application under Article 57 EPC
1. Notion of "industrial application"
1.1. Invention and industrial application
1.2. Any kind of industry
1.2.1 Methods applied in the private and personal sphere
1.2.2 Cosmetic and beauty salons
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
1.1. Purpose of claims under Article 84 EPC
1.2. Types of claim
1.3. Technical features
1.4. Examination of clarity post-grant
1.5. Clarity of claims and Article 83 EPC
2. Form, content and conciseness of claims
2.1. Form of claims: Rule 43(1) EPC
2.1.1 One-part or two-part claim
2.1.2 Two-part claims: preamble and characterising portion
2.2. More than one independent claim per category: Rule 43(2) EPC
2.2.1 Conditions
2.2.2 Burden of proof
2.2.3 No applicability in opposition proceedings
2.3. Conciseness and number of claims
2.4. Reference to the description or drawings: Rule 43(6) EPC
3. Clarity of claims
3.1. Introduction and general principles
3.2. Indication of all essential features
3.3. Clarity of broad claims
3.4. Functional features
3.5. Characterisation of an invention by a parameter
3.6. Unspecified features and relative qualities
3.7. Principles in connection with categories of claim
4. Disclaimers
5. Claims supported by the description
5.1. General principles
5.2. Restrictions on generalising the technical information and examples adduced in the description
5.3. Bringing the description into line with amended claims
6. Interpretation of claims
6.1. General principles
6.2. Meaning of "comprising (substantially)", "consisting (essentially) of", "containing"
6.3. Using description and drawings to interpret the claims
6.3.1 General principles
6.3.2 Legal basis for using description and drawings to interpret the claims
6.3.3 Interpretation of ambiguous terms or confirmation of the text of a claim
6.3.4 Reading additional features and limitations into the claims
6.3.5 Use in the examination relating to the clarity requirement pursuant to Article 84 EPC
6.3.6 Definition of the scope of protection with regard to infringement not within the EPO's competences
7. Product-by-process claims
7.1. Introduction
7.2. Requirement that the claimed product must be patentable
7.3. Requirement that the claimed product cannot be described in any other way
7.4. Applicability of the principles for product-by-process claims to use claims
7.5. Combination of product and process features
7.6. Extension of protection conferred by product-by-process claims
8. Claims fees
8.1. Number of claims
8.2. No refund of claims fees
B. Unity of invention
1. Introduction
2. Unity in the context of different types of claims
2.1. Plurality of independent claims
2.2. Dependent claims
2.3. Intermediate products
3. Assessing lack of unity of invention
3.1. General approach – content of claims
3.2. Assessment of lack of unity at the search stage
3.3. Assessment of lack of unity and of requests for refund of further search fees in examination proceedings
3.4. No assessment of lack of unity in opposition proceedings
4. Criteria for determining lack of unity
4.1. Analysis of the technical problem as a precondition
4.2. Examination as to novelty and inventive step
5. The single general inventive concept
5.1. General
5.2. Special technical features and inventive character of the single general concept
5.3. Unity of single claims defining alternatives ("Markush claims")
6. Plurality of inventions – further search fees
6.1. Consequences of non-payment of a further search fee
6.2. Euro-PCT applications
6.3. Applicability of Rule 64, (former) Rule 164(2) EPC or Rule 137(5) EPC
6.4. Dispensing with further search fees
C. Sufficiency of disclosure
1. Introduction
2. Date of compliance
3. Parts of the application relevant for assessing sufficiency of disclosure
3.1. Application as a whole
3.2. Alleged effect not a feature of the claims
4. Knowledge of skilled person relevant for assessing sufficiency of disclosure
4.1. The disclosure is aimed at the skilled person
4.2. References may also enable the skilled person to carry out an invention
5. Clarity and completeness of disclosure
5.1. General principles
5.2. Indication of at least 'one way'
5.3. Examples
5.4. Invention to be performed over whole range claimed
5.5. Parameters
5.5.1 Ambiguous parameters
a) Essential parameters
b) Several known methods of determining a parameter
c) No or incomplete information on method of determining parameter
d) Effect of ambiguous parameter on claim interpretation
5.5.2 Open-ended parameter features
5.5.3 Unusual parameters
6. Reproducibility
6.1. Repeatability
6.2. Hypothetical embodiments
6.3. Variants
6.4. Use to which invention is put
6.5. Reach-through claims
6.6. Reproducibility without undue burden
6.6.1 Occasional failure
6.6.2 Routine selection
6.6.3 Wrong citations
6.6.4 Forbidden area of the claims
6.6.5 Non-disclosed steps
6.6.6 Machine not available
6.6.7 Experiments
6.6.8 Calibration and identifiable measurement method
6.6.9 Analytical measuring methods
6.6.10 Chemical compounds
6.7. Trial and error
6.8. Post-published documents
7. The requirement of sufficiency of disclosure in the biotechnology field
7.1. Clarity and completeness of disclosure
7.1.1 General
7.1.2 One way of implementing invention over whole scope of claim
7.1.3 Repeatability
7.1.4 Broad claims
7.2. Level of disclosure required for medical use – plausibility
7.2.1 Principles established by the case law
7.2.2 Evidence of therapeutic effect
a) Plausibility of therapeutic effect
b) Consequences of plausibility for whether post-published documents considered
c) Consideration of post-published documents limited: cannot remedy a fundamental insufficiency of disclosure
d) Whether opponents can cite post-published documents
e) Types of evidence of a therapeutic effect and consideration of clinical trials
7.2.3 Pharmaceutical compositions
7.2.4 Field of pharmaceutical combinations (drug-drug interactions)
7.2.5 Medicament directed to a specific group of patients
7.3. Level of disclosure required for antibodies
7.4. Factors contributing to a finding of undue burden
7.5. Requirements relating to nucleotide and amino acid sequences
7.6. Deposit of living material
7.6.1 Substantive law questions
7.6.2 Procedural law questions
a) Conversion into deposit under the Budapest Treaty
b) Late submission of deposit number
c) Biological material deposited by a person other than the applicant
8. The relationship between Article 83 and Article 84 EPC
8.1. Article 83 EPC and support from the description
8.2. Article 83 EPC and clarity of claims
8.2.1 Minority – or earlier – case law
8.2.2 Majority case law
a) Currently predominant approach
b) Case law before the now established approach.
c) Recent debate around the majority and minority lines of case law and alleged divergence in the case law
9. Evidence
9.1. General principles
9.2. Consequences of a strong or weak presumption for sufficiency of disclosure
9.3. Objection of insufficient disclosure rejected – examples
9.4. Burden of proof on the opponent – special cases
9.5. Taking account of doubts
9.6. Burden of proof wrongly allocated at first instance
9.7. Consequence of an invention going against generally accepted scientific principles
9.8. Miscellaneous – argument based on potential effects on competition rejected by the board
D. Priority
1. Introduction
2. Applications giving rise to a right of priority
2.1. Application filed in or for a state which is party to the Paris Convention or a member of the WTO
2.2. Right of priority of the applicant or his successor in title
2.2.1 General
2.2.2 Applicable law – proof of transfer
2.2.3 Plurality of applicants for the first application
2.3. National deposit of industrial design
2.4. Exhibition priority
2.5. Postdating of the previous application
2.6. Multiple exercise of the right of priority for one contracting state
3. Identity of invention
3.1. Disclosure in the previous application of the invention claimed in the subsequent application
3.1.1 G 2/98 – interpretation of "the same invention"
3.1.2 G 2/98 and the concept of disclosure – interpretation in the same way as for Art. 123(2) EPC
3.1.3 Disclosure in the previous application as a whole
3.1.4 Reference to common general knowledge
3.1.5 Explicit or implicit disclosure of the features of the invention in the priority document
a) Example cases – features of the invention all disclosed in the priority document
b) Example cases – features of the invention not all disclosed in the priority document
3.1.6 Enabling disclosure in the priority document
3.1.7 Error margins and definitions of limits
3.1.8 Selection from generic disclosure
3.1.9 Inventions relating to nucleotide and amino acid sequences
3.2. Claiming in the subsequent application the invention disclosed in the previous application
4. First application in respect of the invention
4.1. Identity of invention
4.2. Identity of applicant and joint applicants approach
5. Partial and multiple priorities
5.1. Publications during the priority interval – effect on elements of the European patent application not entitled to priority
5.2. Different priorities for different parts of a European patent application
5.3. Multiple priorities or partial priority for one claim
5.3.1 Development of the case law after G 2/98 in respect of generically formulated "OR" claims
5.3.2 Referral case G 1/15 ("Partial priority")
5.3.3 Application of G 1/15 in the jurisprudence of the boards
E. Amendments
1. Article 123(2) EPC – added subject-matter
1.1. General principles
1.2. Content of the application as filed: Parts of the application which determine the disclosure of the invention
1.2.1 Description, claims and drawings
1.2.2 Abstracts, titles, priority documents, parallel applications
1.2.3 Language issues
1.2.4 Cross-references to other documents – incorporation by reference
1.3. Standard for assessing compliance with Article 123(2) EPC
1.3.1 Gold standard: directly and unambiguously derivable
1.3.2 Standpoint of the skilled person
1.3.3 Implicit disclosure
1.3.4 Subject-matter not implicitly disclosed
a) Subject-matter merely rendered obvious by the content of the application
b) Results of reflection and imagination of the skilled person
c) General open-ended statement in description
1.3.5 Conditions insufficient for compliance with Article 123(2) EPC
a) Consistency with original disclosure
b) Reasonable plausibility of the included feature
1.3.6 Criteria not relevant for assessing compliance with Article 123(2) EPC
a) Indication in the description that subject-matter is known to the skilled person
b) Enabling disclosure
c) Limitation of scope of the original claim
1.3.7 Novelty test
1.3.8 Non-technical subject-matter
1.3.9 Claim interpretation when assessing compliance with Article 123(2) EPC
a) Standpoint of the skilled person
b) Claim feature in itself imparts clear credible teaching
c) Illogical and technically inaccurate claim features may not be disregarded
d) Ambiguous features – role of description and drawings
e) Construction with regard to all technically logical interpretations
f) Possible but undefined embodiments in dependent claim
1.4. Removal or replacement of features from a claim
1.4.1 Broadening of claim – permissible within the limits of the original disclosure
1.4.2 Basis in the application as originally filed – gold standard
1.4.3 Omission of a feature presented as essential
1.4.4 The essentiality or three-point test
a) Decisions setting out, applying and distinguishing the test
b) Mere aid in assessing the allowability of amendments
c) No longer considered appropriate
d) Necessary but not sufficient condition
e) Decisions criticising the essentiality or three-point test
1.4.5 Removal of set of features
1.4.6 Removal of a feature indicating the intended purpose
1.4.7 Elimination of inconsistencies and unclear features
a) Amendment allowed
b) Amendment not allowed
c) Art. 84 and 123(2) EPC – inescapable trap
1.5. Ranges of parameters – setting upper and lower limits
1.5.1 Forming a range by combination of end points of disclosed ranges
a) Combination of the preferred narrower range and one of the part-ranges lying within the disclosed overall range
b) Combination of the lower limit of the general range with the lower limit of the preferred range
c) End points which are not part of a range
d) Combination of an end point of a range with a value from a list of individually disclosed values
e) Combination of end points of different levels of preference for several aspects of a composition
f) Peptide fragments
1.5.2 Forming a range with isolated value taken from example
a) Principle
b) Amendment allowed
c) Amendment not allowed
1.5.3 Setting new end point with not expressly disclosed value – "less than", "below" and rounding values
1.6. Combination of features pertaining to separate embodiments or lists
1.6.1 Combination of features pertaining to separate embodiments; application as filed is not a "reservoir"
a) Principles
b) Examples of cases where the combination was held to be unallowable
c) Examples of cases where the combination was held to be allowable
1.6.2 Selections from two lists – singling out a combination of features
a) Principles
b) Meaning of "selection from two lists"
c) Disclosure of combination in an individualised manner – pointers
d) Lists of converging alternatives
1.6.3 Deletion of elements from lists – shrinking the lists without singling out a combination of features
1.6.4 Combination of original independent claim with features from a plurality of dependent claims referring back to the independent claim separately – "US style" dependencies
1.7. Disclaimers
1.7.1 Definition
1.7.2 Standards for examining disclosed and undisclosed disclaimers
a) Principles established in G 1/03 and G 2/03 for undisclosed disclaimers
b) Principles established in G 2/10 for disclosed disclaimers
c) Explanations in G 1/16
1.7.3 Decisions applying the criteria established by the Enlarged Board in G 1/03 and G 1/16
a) Accidental anticipation
b) Drafting of disclaimers – disclaimer to remove no more than necessary
c) Drafting of disclaimers – disclaimer shall not remove less than is necessary
d) Drafting of disclaimers – delimitation against any potential prior art
e) Drafting of disclaimers – clarity
f) Undisclosed disclaimer must not be related to the teaching of the invention
g) Positive features – G 1/03 not applicable
h) Negative feature implicitly disclosed in original application – G 1/03 not applicable
1.7.4 Decisions applying the criteria established by the Enlarged Board in G 2/10 – remaining subject-matter test
1.7.5 Applicability of the decisions of the Enlarged Board to cases already pending
1.7.6 No analogy with G 1/03 where a disclaimer already in the application as filed is deleted
1.8. Generalisations
1.8.1 Replacing specific feature with more general term – no inclusion of undisclosed equivalents
1.8.2 Generalisation and claim category
1.8.3 No generalisation of an effect obtained for particular embodiments
1.8.4 Amendments to preamble of claim by substituting general term for specific term
1.9. Intermediate generalisations
1.9.1 Principles
1.9.2 Examples regarding the requirement "no clearly recognisable functional or structural relationship"
1.9.3 Further examples of unallowable intermediate generalisations
1.9.4 Further examples of allowable extractions of isolated features from a set of features
1.10. Specific derived from generic
1.10.1 Specific term or embodiment derived from generic disclosure
1.10.2 Component of entity derived from entity
1.10.3 Restricting a generic definition of a substituent to a specific (individual) one
1.10.4 Multiple arbitrary selection
1.11. Additions
1.11.1 Addition to the claim of a feature taken from drawings
1.11.2 Addition to the claim of an isolated feature taken from description
1.11.3 Addition to the claim of features originally presented as prior art
1.11.4 Addition to the claim of features previously described as non-essential
1.11.5 Adding prior art citations to the description
a) General
b) Erroneous delimitations from the relevant prior art
1.11.6 Addition of advantages and effects to the description
1.11.7 Addition/change of claim category
1.11.8 Insertion of an ambiguous feature in the claim
1.11.9 Characteristic described for intermediate product added to the claimed end product
1.12. Errors in the disclosure
1.12.1 Calculation errors
1.12.2 Incorrect structural formula
1.12.3 Amendment based on erroneous figure in the disclosure
1.12.4 Incorrect information in earlier application as filed but correct information directly and unambiguously derivable
1.13. Disclosure in drawings
1.13.1 General
1.13.2 Schematic drawings
1.13.3 Negative features
1.14. Amending the description
1.14.1 Amendment to provide support for unsupported claim
1.14.2 Impact on the claimed subject-matter
1.14.3 Adding prior art citations to the description – removing the wrong label "prior art"
1.14.4 Shift in the interpretation of a claim by amendment of the description
1.14.5 Shift in the information provided by the examples after amendment of claims
1.14.6 Reformulation of the technical problem
1.14.7 Replacement of complete description and drawings
1.14.8 Deletion from the description of expressions making features optional
1.15. "Comprises", "consists of", "consists essentially of", "contains"
1.16. Different sets of claims for different contracting states
2. Article 123(3) EPC – extension of the protection conferred
2.1. Purpose of Article 123(3) EPC
2.2. Totality of claims
2.3. Extent of protection
2.3.1 Article 123(3) EPC and Article 69 EPC
a) Principles
b) Protection conferred within the meaning of Article 123(3) EPC not determined by subject-matter at issue in national infringement proceedings
c) Generally accepted meaning of a term in the claims versus definition in the description
2.3.2 Cut-off point
2.3.3 General claim interpretation
2.4. Deletions and replacements
2.4.1 Deletion of a limiting feature in a claim – inescapable trap
2.4.2 Deletion of feature from description where claim remains unchanged
2.4.3 Deletion of examples for a general feature in a claim
2.4.4 Deletion of disclaimer
2.4.5 Deletion or replacement of drawings
2.4.6 Deletion of feature in a claim mentioned "in particular"
2.4.7 Deletion of a "preferred" feature in a claim
2.4.8 Replacement of a restrictive term by a less restrictive term
2.4.9 Replacement of an inaccurate technical statement in a claim
2.4.10 Replacement of "cell of a plant" by "plant"
2.4.11 Replacement of substance by device containing substance or substance with mechanical device
2.4.12 Replacement by aliud
2.4.13 Narrowing down a generic class or list of chemical compounds; open claims ("comprising"); sequential drafting ("cascade")
2.5. Additions
2.5.1 Addition of technical features defining the invention more narrowly
2.5.2 Reducing scope of claim by adding embodiments to a negative feature
2.6. Transposition of features within claims
2.7. Change of claim category
2.7.1 From product claim to a claim directed to the use of the product
a) Different categories of use claims
b) From product claim to a claim directed to using a product to achieve an effect
c) From product claim to a claim directed to using a product for producing another product – Article 64(2) EPC
2.7.2 From device claim to a method claim directed to using the device to carry out a work method
2.7.3 From product or product-by-process claim to a claim directed to a process for manufacturing/preparing the product, and vice versa
2.7.4 From a product claim to a product-by-process claim
2.7.5 From method of operating a device claim to product claim
2.7.6 From use claim to process claim, and vice versa
2.7.7 From use claim to Swiss-type claim
2.7.8 From Swiss-type claim to purpose related product claim under Article 54(5) EPC
3. Relationship between Article 123(2) and Article 123(3) EPC
3.1. Inescapable trap
3.2. Attempts to resolve the conflict
3.2.1 General
3.2.2 Replacement of an added undisclosed feature by another feature disclosed in the application as filed without violating Article 123(3) EPC
3.2.3 Deletion of added undisclosed feature, which has no technical meaning, without violating Article 123(3) EPC
3.2.4 Added undisclosed feature, which does not provide a technical contribution and does not contravene Article 123(2) EPC
3.2.5 Resolving the conflict in cases of clerical errors or incompatibility between the claims as granted and the description
4. Correction of errors in the description, claims and drawings – Rule 139 EPC
4.1. Relationship of Rule 139 EPC with Article 123(2) and (3) EPC
4.2. Obviousness of the error and the correction
4.2.1 Documents to be taken into account for the assessment of obvious error and correction
4.2.2 Obvious error – incorrect information objectively recognisable
4.2.3 Obvious correction – immediately evident that nothing else would have been intended than what is offered as the correction
4.3. No replacement of the description under Rule 139 EPC
4.4. Request for correction to be filed without delay
4.5. Correction of errors in the description, claims and drawings after grant, and in opposition proceedings
5. Evidence and standard of proof for allowing amendments and corrections
F. Divisional applications
1. Introduction
2. Subject-matter of a divisional application
2.1. Subject-matter extending beyond content of the earlier application
2.1.1 Directly and unambiguously derivable from content of earlier application as filed
2.1.2 Sequence of divisionals – derivable from each of the preceding applications as filed
2.1.3 Language issues
2.2. Amendments to divisional applications
2.3. Subject-matter of a patent granted on a divisional application
2.3.1 Findings of G 1/05 and G 1/06 also applicable to granted patents
2.3.2 Ground for opposition under Article 100(c) EPC
2.3.3 Ground raised against amended claims in opposition proceedings
2.4. Link between subject-matter of earlier application and divisional application
2.4.1 No abandonment of subject-matter in earlier application if divisional is filed
2.4.2 No effect on content of divisional application if earlier application was refused
2.4.3 Final decision on subject-matter in the parent application or a sibling application – res judicata
a) Decisions affirming cross-procedural res judicata effect
b) Decisions leaving open the question of cross-procedural res judicata effect
c) Decisions doubting cross-procedural res judicata effect
2.4.4 Re-filing of same subject-matter
3. Filing a divisional application
3.1. Right to file a divisional application
3.1.1 Applicant of earlier application entitled to file divisional application
3.1.2 Filing of divisional application during stay of proceedings
3.1.3 Joint applicants
3.1.4 No obligation to postpone a decision to allow the filing of a divisional application
3.2. Filing date attributed to divisional application
3.3. Language for filing divisional application
3.4. Divisional application to be filed with EPO
3.5. Requirement of pending earlier application
3.5.1 Requirement of pending earlier application sets no time limit
3.5.2 Pendency before the EPO acting as patent-granting authority according to the EPC
3.5.3 Pendency in case of grant of earlier application against which no appeal was filed
3.5.4 Pendency in case of grant of earlier application against which an appeal was filed
3.5.5 Pendency in case of refusal of earlier application against which no appeal was filed
3.5.6 Pendency in case of refusal of earlier application against which an appeal was filed
3.5.7 Pendency in case of deemed withdrawal of earlier application and request for re-establishment
3.5.8 Pendency in case of deemed withdrawal of earlier application and no reaction to loss of rights communication under Rule 112(1) EPC
3.5.9 Pendency in case of withdrawal of earlier application
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. Procedural questions
4.1. Procedural independence of divisional application
4.1.1 Principles
4.1.2 No preclusive effect of a decision with respect to identical requests in the other procedure
4.1.3 Filing a divisional application not a response to a communication under Article 94(3) EPC
4.1.4 Intention to file divisional application immaterial to admissibility of appeal against grant of the parent
4.1.5 Submissions made in the parent procedure
4.2. Designation of contracting states in a divisional application
4.2.1 Deemed designation of all states designated in earlier application at the date of filing of divisional
4.2.2 Designated state forfeited in the parent application at the time of filing the divisional
4.2.3 Full effect of designation up to the due date for payment
4.2.4 Payment of fee for each designated State – case law concerning situation prior to 1 April 2009
4.3. Correction of errors in a divisional application
4.4. Search fee for a divisional application
5. Prohibition of double patenting
5.1. Introduction
5.2. Legal basis for the prohibition of double patenting
5.3. Different subject-matter and scope of protection; overlapping subject-matter
5.4. Double patenting objection in opposition
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
2.1. Sources of legitimate expectations
2.2. Limits of the legitimate expectations principle
2.2.1 Knowledge of the relevant legal provisions and the case law
2.2.2 Interpretation of substantive patent law
2.2.3 Weighing of interests in inter partes cases
2.2.4 Area of party's own responsibility
2.2.5 Administrative notice with no legal consequences
2.3. Causal link and the requirement of proof
3. Information provided by EPO
3.1. Clear and unambiguous communications and forms
3.2. Information provided as courtesy service
3.3. Contradictory acts
3.4. Information provided by telephone
3.5. Decisions of the department of first instance
3.6. Correction of already issued decision
3.7. Information provided in the Guidelines
4. Obligation to draw attention to easily remediable deficiencies
4.1. General principle
4.1.1 Deficiency correctable within the relevant time limit
4.1.2 Obligation to set new time limit
4.2. Examples of cases addressing the obligation to draw attention to easily remediable deficiencies
4.2.1 Language issues
4.2.2 Missing or insufficient fee payments
4.2.3 Electronic filing of documents
4.2.4 Further examples involving easily identifiable deficiencies
4.3. Limits of the obligation to draw attention to easily remediable deficiencies
4.3.1 Area of party's own responsibility
a) Filing of valid appeal
b) Filing of divisional application
c) Bank account information
4.3.2 No obligation to scrutinise submissions for deficiencies
5. Obligation to enquire in case of unclear nature of request
6. Legitimate expectation and case law
6.1. Case law deviating from or overruling the practice
6.2. Point in time from which a new decision which deviates from existing practice becomes generally applicable
B. Right to be heard
1. Introduction
2. The right to be heard under Article 113(1) EPC
2.1. Violation of the right to be heard examined ex officio
2.2. Causal link between the violation of the right to be heard and the final decision
2.2.1 Appeal proceedings
2.2.2 First instance proceedings
2.3. Surprising grounds or evidence
2.3.1 General principles
2.3.2 The meaning of "grounds or evidence"
2.3.3 Opportunity to comment on evidence
2.3.4 Documents supplied by applicants but used against them
2.3.5 Document cited containing information already known
2.3.6 Reliance on the International Preliminary Examination Report (IPER)
2.3.7 Change of provisional opinion
2.3.8 Statement of grounds of appeal not received by respondent
2.4. Consideration of the parties' arguments, submissions and evidence
2.4.1 General principles
2.4.2 Decision must demonstrably show that arguments were heard and considered
2.4.3 No obligation to address each and every argument
2.4.4 Failure to consider submissions made after a communication
2.4.5 Failure to consider evidence
2.4.6 Mere reference to jurisprudence
2.5. The right to be heard and the timing of decisions
2.5.1 Decision could not be expected
2.5.2 Issuing of decision before expiry of time limit to comment
2.5.3 Immediate refusal after communication
2.5.4 Invitation to oral proceedings at short notice
2.6. The right to be heard in oral proceedings
2.6.1 Introduction of a new claim or relevant document
a) Cases in which Article 113(1) EPC was violated in relation to the introduction of new claims or relevant documents
b) Cases in which Article 113(1) EPC was not violated even though new claims or relevant documents were introduced
c) Cases where no new claims or relevant documents were introduced
2.6.2 Introduction of new arguments
2.6.3 Introduction of a new ground of opposition by the opposition division
2.6.4 Hearing witnesses
2.6.5 Oral submissions of an accompanying person
2.7. The right to be heard in case of the non-attendance of oral proceedings
2.7.1 Facts and evidence put forward for the first time during oral proceedings
2.7.2 Non-attendance at oral proceedings before the boards – case law on G 4/92
2.7.3 Non-attendance at oral proceedings before the boards – Article 15(3) RPBA 2020
a) Ex parte proceedings
b) Inter partes proceedings
2.8. Changes in the composition of the competent department of first instance
2.8.1 Composition change before oral proceedings
2.8.2 Composition change during oral proceedings
3. Text submitted or agreed by applicant (patent proprietor) – Article 113(2) EPC
3.1. General
3.2. The requirement of a text submitted by the applicant
3.3. The requirement of a text agreed by the applicant
3.4. Cases where the EPO is uncertain or mistaken about the approval of the text
C. Oral proceedings
1. Introduction
2. Right to oral proceedings
2.1. Right to oral proceedings in examination, opposition and appeal proceedings
2.1.1 Right to oral proceedings even after a Rule 71(3) EPC communication
2.1.2 Right to oral proceedings even if no new arguments are presented
2.1.3 No right to telephone conversation
2.2. Right to oral proceedings before the Receiving Section
3. Oral proceedings at the instance of the EPO
3.1. Expediency of oral proceedings
3.2. Effects of withdrawal of a request for oral proceedings in case of oral proceedings at the instance of the EPO
4. Request for oral proceedings
4.1. Doubt as to the nature of the request for oral proceedings
4.2. Wording of request
4.2.1 Wording constituting a request
4.2.2 Wording not constituting a request
4.3. Withdrawal of request for oral proceedings
4.3.1 Withdrawal only by virtue of a clearly expressed intention not to proceed with the request
4.3.2 Announcing non-attendance
4.3.3 Appeal inadmissible
4.3.4 Explicit withdrawal of request for oral proceedings – reimbursement of appeal fee
4.4. Further oral proceedings before the same department
4.4.1 Same subject of proceedings
4.4.2 Not the same subject of proceedings
4.5. Auxiliary request for oral proceedings
4.6. No oral proceedings – decision in favour of the party
4.7. Request for oral proceedings in relation to further prosecution proceedings after remittal
4.8. Request for oral proceedings as a reply to a communication
5. Non-attendance at oral proceedings
5.1. Right to present comments and non-attendance of a party by choice
5.2. Non-attendance of party who filed new claims without amended description before oral proceedings; no reason for postponement of ruling
5.3. Obligation to give notice if not attending oral proceedings
6. Preparation of oral proceedings
6.1. Fixing or changing the date for oral proceedings
6.1.1 Legal provisions and notices
6.1.2 Request for changing the date of oral proceedings
6.1.3 Request or reasons for postponement filed too late
6.1.4 Reasons submitted in a request for postponement
a) Serious illness
b) Booked holidays
c) Business trips
d) Speaking at a conference
e) National holiday
f) Newly appointed representative
g) Obligation to give reasons as to why a representative cannot be substituted
h) Absence of duly represented party or of inventor
i) Flight cancellation along with impossibility of using other travel means
j) Postponement because of late receipt of board's communication
k) New evidence or requests
l) Proceedings before a national court
m) Postponement in order to avoid adverse decision of the board
n) Ongoing takeover negotiations between both parties
o) Expected childbirth by the partner of the professional representative
p) COVID-19 pandemic
q) Representative unable to identify authorised person
r) Unavailability of an accompanying person – Article 15(2)(c)(iv) RPBA 2020
6.1.5 Postponement of the oral hearing at the instigation of the EPO
6.2. Notice of two months in the summons
6.3. Final date for written submissions in the preparation for oral proceedings and late submission of new facts and evidence – Rule 116 EPC
6.3.1 General issues
6.3.2 Examination and opposition proceedings
6.4. Communication under Article 15(1) RPBA 2020
6.4.1 General issues
6.4.2 Purpose of communication under Article 15(1) RPBA 2007 or Article 15(1) RPBA 2020
6.4.3 Boards not bound by communication under Article 15(1) RPBA 2007 or Article 15(1) RPBA 2020
6.4.4 Boards' discretion to send communication under Article 15(1) RPBA 2007
6.5. Location of oral proceedings
7. Conduct of oral proceedings
7.1. Length and structuring of oral proceedings
7.1.1 Speaking time during oral proceedings and interruptions by the board
7.1.2 Oral proceedings scheduled from the start for more than one day
7.1.3 Continuation of oral proceedings beyond the last scheduled day
7.1.4 Duration of deliberations
7.2. Excluding the public from oral proceedings
7.3. Format of oral proceedings
7.3.1 Legal provisions and sources of information
a) Boards of appeal
b) Departments of first instance
7.3.2 Oral proceedings by videoconference in case of general emergency – G 1/21
7.3.3 Case law concerning oral proceedings held after the end of pandemic measures at the Boards of Appeal
a) G 1/21 – limited applicability beyond a general emergency
b) G 1/21 – applicability beyond a general emergency
c) Applicability of G 1/21 beyond a general emergency – not addressed
d) Requirements for holding mixed-mode oral proceedings
e) Applicability of considerations set out in G 1/21 to first-instance proceedings and to hearing a witness
7.3.4 Case law concerning oral proceedings held after G 1/21 and prior to the end of pandemic measures at the Boards of Appeal
a) Compliance with G 1/21 – holding oral proceedings by videoconference without a party’s consent
b) Compliance with G 1/21 – holding oral proceedings in person without a party’s consent
c) Establishing the (non-)existence of a general emergency
d) Oral proceedings held by videoconference as an "often equivalent alternative" to in-person oral proceedings
e) Technical aspects of videoconferencing
f) Applicability of considerations set out in G 1/21 to first-instance proceedings
7.3.5 Case law concerning oral proceedings held during the COVID-19 pandemic and prior to G 1/21
a) Consent to holding oral proceedings by videoconference initially required
b) Consent to holding oral proceedings by videoconference no longer required
7.3.6 Case law concerning oral proceedings held prior to the COVID-19 pandemic
a) Oral proceedings by videoconference before the boards of appeal
b) Oral proceedings by videoconference before examining divisions
7.4. Computer-generated presentations and other visual aids
7.5. Sound recording
7.6. Handwritten amendments during oral proceedings before the board
7.7. Interpreting in oral proceedings
7.8. Oral submissions by an accompanying person
7.9. Closing the debate
7.10. Minutes of oral proceedings (Rule 124 EPC)
7.10.1 Content of minutes
7.10.2 No recording of statements for use in subsequent national proceedings
7.10.3 Correction of minutes
7.10.4 Signing of minutes
7.10.5 Refusal to record statement not an infringement of the right to be heard
7.11. Presence of assistants during deliberations of the board
8. Costs
8.1. Apportionment of costs
8.2. Interpreting costs during oral proceedings
D. Time limits, documents transmitted by fax, further processing and interruption of proceedings
1. Calculation, determination and extension of time limits
1.1. Calculation of time limits under Rule 131 EPC
1.2. Determination and extension of periods under Rule 132 EPC
1.2.1 Relevant criteria when time limits are extended upon request (R. 132(2), second sentence, EPC)
1.2.2 Applicability of Rule 132 EPC to the Rules relating to Fees
1.3. Extension of time limits ipso jure on account of public holidays or dislocation in delivery of mail (Rule 134 EPC)
1.3.1 Public holidays (Rule 134(1) EPC)
1.3.2 General dislocation or interruption in delivery or transmission of mail in a Contracting State (R. 134(2) EPC)
1.3.3 Dislocation of a mail service outside the contracting states (Rule 134(5) EPC)
1.4. Statutory periods of grace, additional period for payment of renewal fees and the fiction of observance of a time limit for fee payments
1.4.1 Additional period for payment of renewal fees under Rule 51(2) EPC
1.4.2 Period of grace for payment of fees under Rule 85a EPC 1973
1.4.3 Fiction of fee payment in due time pursuant to Article 7(3) and (4) RFees
2. Date of receipt of documents transmitted by fax
3. Further processing under Article 121 EPC
4. Interruption of proceedings under Rule 142 EPC
4.1. Application of Rule 142 EPC by the EPO of its own motion
4.2. Amended Rule 142(2) EPC
4.3. Concept of legal incapacity (Rule 142(1)(a) and (c) EPC)
4.4. Determining legal incapacity of the applicant or patent proprietor for the purpose of Rule 142(1)(a) EPC
4.5. Determining legal incapacity of the representative for the purpose of Rule 142(1)(c) EPC
4.6. Legal incapacity of a representative from outside the contracting states
4.7. Interruption of proceedings because of insolvency (Rule 142(1)(b) EPC)
4.8. Consequences of interruption of proceedings (Rule 142(4) EPC)
E. Re-establishment of rights
1. Introduction
2. Right to file request for re-establishment of rights
2.1. Exception for opponent – time limit for filing statement of grounds of appeal
2.2. Re-establishment only in cases of failure to observe a time limit for which it was for the applicant to observe
3. Non-observance of time limit directly causing a loss of right
3.1. The meaning of "time limit"
3.1.1 Requirement of pendency when filing divisional application is not a time limit
3.1.2 Designation of States
3.1.3 "Time limitation" condition for requests for correction
3.2. Time limits excluded from re-establishment under Article 122(4) EPC and Rule 136(3) EPC
3.3. Time limits concerning the PCT proceedings
3.4. Loss of rights as a direct consequence by virtue of the EPC
4. Admissibility of requests for re-establishment of rights
4.1. Time limits for filing a request for re-establishment (Rule 136(1) EPC)
4.1.1 Two-month time limit from the removal of the cause of non-compliance
a) Removal of the cause of non-compliance
b) Responsible person
c) Legal fiction of deemed notification
4.1.2 One-year time limit following the expiry of the unobserved time limit
4.2. Inability to observe a time limit
4.2.1 Deliberate act missing a time limit; tactical considerations
4.2.2 Financial difficulties
4.3. Making good the omitted act
4.4. Substantiation of the request for re-establishment
4.5. Number of re-establishment fees due where more than one time limit is missed
4.6. Correction of deficiencies in the request for re-establishment
5. Merit of request for re-establishment of rights
5.1. Submissions to be taken into account
5.2. General comments on due care
5.3. Exceptional circumstances
5.3.1 Organisational restructuring
5.3.2 Change to or withdrawal of representation
5.3.3 Complex transfers of company ownership
5.3.4 Monitoring or computer systems matters
5.3.5 Sudden serious illness and severe psychological stress
5.4. Isolated mistake within a satisfactory system for monitoring time limits or for processing mail
5.4.1 "Isolated mistake" by representative
5.4.2 A system operating efficiently for many years as evidence that it is normally satisfactory
5.4.3 Cause of mistake remains unclear
5.4.4 Requirement for a cross-check
a) Cross-check should be independent in a large firm
b) Control mechanisms in small firms
5.4.5 All due care in making provisions for staff absences
5.4.6 Second mistake by responsible person
5.4.7 Deficiencies in computerised systems
5.5. Persons required to exercise due care; requirements regarding due care
5.5.1 Due care on the part of the applicant
a) Due care standard
b) Reliance on the professional representative
c) Unrepresented individual applicant
d) Choosing a sufficiently competent representative
5.5.2 Due care on the part of the professional representative
a) Communication between professional representatives and their clients, the EPO or other representatives
b) Payment of renewal fees
c) Ignorance of or erroneous interpretation of a provision of the EPC
d) Requesting and acting on information from the EPO
e) Starting work on a case close to the expiry of the time limit
f) Designation of receiving offices
g) Abandonment of application
5.5.3 Due care on the part of a non-authorised representative
5.5.4 Due care in dealing with assistants
a) Introduction
b) Selection, instruction and supervision
c) Technically qualified assistants
d) Substitutes replacing assistants
e) Ultimate responsibility of the representative
5.5.5 Due care in using mail delivery services
6. Procedural treatment of requests for re-establishment
6.1. Department competent to decide upon the request
6.2. Request for re-establishment as auxiliary request
6.3. Parties to re-establishment proceedings and the right to be heard
6.4. Concurrent request for interruption of proceedings
6.5. Re-establishment in the context of the President's extension of time limits during general disruption
6.6. Redundant request for re-establishment
7. Rights of use under Article 122(5) EPC
8. Principle of proportionality
9. Reimbursement of the fee for re-establishment
9.1. Legal reason for payment of fee
9.2. Reimbursement where request for re-establishment found to be redundant
9.3. Request for re-establishment due to mistakes made by EPO
9.4. Reimbursement where more than one fee for re-establishment has been paid
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
6.1. European patent application
6.2. Request for examination
G. Law of evidence
1. Introduction
2. Admissible evidence
2.1. Non-exhaustive list of admissible means of evidence
2.2. Distinction between the admissibility of evidence and its probative value
2.3. Freedom of choice when selecting evidence
2.4. Witness testimonies and expert opinions
2.4.1 Hearing witnesses
a) Role of witnesses and wording of request
b) Relationship between witness and party
c) Statutory declarations and hearing witnesses
d) Ranking of means of evidence
e) Hearing a witness before a national court
f) References
2.4.2 Difference between witnesses and experts
2.4.3 Expert opinions (Article 117(1)(e) EPC)
2.4.4 Expert opinion submitted by a party
2.5. Statements in writing
2.5.1 Sworn statements and affidavits
2.5.2 Relationship between witness and party
2.5.3 Statutory declarations and hearing witnesses
2.5.4 Ranking of means of evidence
2.6. Other documents
3. Taking of evidence
3.1. Relevance of the evidence
3.1.1 Basic principles
3.1.2 Offering evidence – effect on the outcome of the dispute
3.1.3 Taking evidence (hearing of a witness) deemed unnecessary
3.1.4 Hearing the witness introduces new facts into the proceedings
3.1.5 Hearing the patent proprietor
3.1.6 Re-hearing a witness
3.1.7 Example procedure for hearing a witness
3.2. Time frame for submitting evidence and ordering the taking of evidence
3.2.1 Evidence wrongly rejected by the examining division as late-filed
3.2.2 Evidence wrongly rejected by the opposition division as late-filed
3.2.3 Late-filed evidence before the board of appeal – rejected
3.2.4 Comparative tests to demonstrate a technical effect achieved by the claimed invention
3.2.5 Evidence rejected as prima facie irrelevant
3.2.6 Evidence submitted "in due time"
3.2.7 Parties' responsibilities
3.2.8 Large volume of evidence
3.2.9 Strategic procedural approaches of parties to presenting evidence
3.2.10 Parties treated equally (or not)
3.2.11 When to order the taking of evidence and hearing of witnesses at oral proceedings
3.2.12 When to submit supporting evidence – specific examples
3.2.13 Late offer of a replacement for a deceased witness – admitted
3.2.14 Hearing the party without their attorney
3.3. Right to be heard
3.3.1 General
3.3.2 Parties' right to comment
3.3.3 Parties' responsibilities
3.3.4 Improper reasons for rejection of evidence offered
3.3.5 Witnesses at oral proceedings despite not confirming attendance in advance
3.3.6 No violation where evidence irrelevant to the outcome of the case
3.3.7 No violation of right to be heard where evidence of limited probative value
3.3.8 Violation of the right to defend a case
3.3.9 Direct and indirect evidence of the state of the art
3.3.10 Third-party observations
3.3.11 Failure of a party to attend oral proceedings
4. Evaluation of evidence
4.1. Principle of free evaluation of evidence
4.1.1 G 2/21: reasserting and refining the principle of free assessment of evidence
4.2. Probative value of evidence on a case-by-case basis
4.2.1 Ranking of means of evidence
4.2.2 Witness testimony and written statements
a) Credibility of allegedly linked witnesses
b) Evaluation of evidence by the department of first instance – review
c) Events long past
d) Contradictory or consistent testimony
e) Witness testimony and national proceedings
f) Obligation to raise objections under R. 106 EPC
4.2.3 Test and experimental evidence
a) Test methodology and probative value
b) Evaluation of tests cited to prove that problem solved (Art. 56 EPC)
c) Evaluation – other tests
4.2.4 Archives and internet publications
4.2.5 Other written evidence
4.3. Standard of proof
4.3.1 General – "Balance of probabilities"
4.3.2 Public prior use
a) Both parties have access to the evidence: balance of probabilities
b) Evidence within the sphere of the opponent: beyond any reasonable doubt
c) Miscellaneous – evaluation in the case law
4.3.3 Posters and ephemeral presentations
4.3.4 Public availability of prior art documents
a) Commercial brochures
b) Convincing the board and discussion on the standard of proof
c) Archives and internet publications
4.3.5 Claiming a valid priority
4.3.6 Abusive conduct
4.3.7 Receipt of formal documents
5. Burden of proof
5.1. Apportioning the burden of proof
5.1.1 General
5.1.2 Individual cases
a) Novelty
b) Inventive step
c) Sufficiency of disclosure
d) Content of the priority document
e) Specific case of internet citations of prior art
f) Receipt of formal documents
g) Generally accepted procedural principles (Art. 125 EPC) and national law
5.2. Shifting the burden of proof
5.2.1 General
5.2.2 Cases in which the burden of proof was reversed
a) Inventive step – furnishing of tests
b) Non-disclosure agreement
c) Sufficiency of disclosure
d) Unusual parameters
e) Impact of a lack of information in the patent
f) Evidence where serious doubts drawn from the patent itself
g) Disputing an experimental protocol
h) Common general knowledge of the skilled person
i) Violation of the laws of physics
j) Adverse effect of a reversal of the burden of proof cited in support of a request for review
5.2.3 Cases in which the burden of proof was not reversed
H. Interpretation of the EPC
1. The Vienna Convention on the Law of Treaties
1.1. Principles of interpretation of the Vienna Convention
1.1.1 The interpretation of good faith in accordance with the ordinary meaning
1.1.2 Supplementary means of interpretation – "travaux préparatoires"
1.1.3 Interpretation of exclusions from patentability under the Vienna Convention
1.2. Application of the rules of interpretation
1.2.1 Literal interpretation
1.2.2 Systematic interpretation
1.2.3 Teleological interpretation
1.2.4 Subsequent agreement or practice
1.2.5 Secondary considerations: dynamic interpretation
2. Interpretation of the EPC affected by TRIPS Agreement
2.1. General
2.2. Application of the TRIPS Agreement
3. The European Convention on Human Rights
4. Impact of national decisions on the case law of the boards of appeal
4.1. The duty of the boards of appeal to interpret and apply the EPC
4.2. Effects on the case law due to the differences between national legislation and the EPC
4.3. National decisions: no binding effect on 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
2.1. Requirement to specify the order of requests
2.2. Order of examination of requests
3. Admissibility of requests
3.1. Party's responsibility to define subject-matter by filing appropriate requests
3.2. Requests of equal ranking
3.3. Requesting further opportunity to formulate new requests
3.4. Admissibility of late-filed requests
4. Obligation to give reasons for refusal of each request
5. Withdrawal of request
6. Examination procedure
6.1. Direct rejection of auxiliary request by examining division
6.2. Rejection in advance of further request by examining division
6.3. Practice of proposing one main and one or more auxiliary requests
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
1.1. Exclusion and objection
1.2. Rationale and importance
1.3. The European Convention on Human Rights
1.4. Parties' right to have their case decided by the judge designated by law
1.5. "Subjective" and "objective" test, presumption of impartiality
1.6. Applicability of Article 24 EPC to first-instance proceedings
1.7. Applicability of Article 24 EPC to disciplinary proceedings
2. Initiation of partiality proceedings and other procedural issues
2.1. Notices of self-recusation
2.2. Objection by other board members of the same board of appeal
2.3. Objection by a party to a board member or members
2.4. Objection by a third party
3. Admissibility
3.1. Competence of the board in its original composition
3.2. Obligation to raise the objection immediately
3.3. Objection must be reasoned and substantiated
3.4. Objection based on an obviously wrong understanding of the board's procedural obligations, the right to be heard and the principle of a fair trial
3.5. Repetition of a previous objection
3.6. Dual function as members of the Enlarged Board and another board of appeal
4. Suspected partiality of members of the departments of first instance
4.1. Competence to decide
4.2. Remittal and rehearing of a case
4.3. Personal interest
4.4. Disqualifying partiality
5. Suspected partiality of members of the boards of appeal
5.1. Grounds for exclusion under Article 24(1) EPC
5.1.1 Previous involvement of a board member as a party's representative in the case in question
5.1.2 Participation in the decision under appeal
5.2. Grounds for exclusion under Article 24(2) EPC: any other reason
5.3. Grounds for objection under Article 24(3) EPC
5.3.1 Expressions of preliminary opinions
5.3.2 Disqualifying partiality
5.3.3 Late filed objections under Article 24(3) EPC
5.3.4 Discretionary procedural decisions negatively affecting a party
5.4. Comments of the board member concerned
6. Suspected partiality of members of the Enlarged Board of Appeal
6.1. Referral proceedings under Article 112 EPC
6.1.1 Previous participation in cases as members of the boards of appeal
6.1.2 Previous involvement in the preparation of legislation
6.1.3 Previous expressions of opinion on the legal issues to be decided
6.2. Petition for review proceedings under Article 112a EPC
6.2.1 Previous participation in cases as members of the boards of appeal
6.2.2 Article 24(3) EPC objection under Article 112a(2)(a) EPC
6.2.3 Expressions of preliminary opinions
6.2.4 Suspected partiality of the Chairman of the Enlarged Board of Appeal who at the same time was Vice-President of Directorate-General 3 (VP3)
7. Legal restrictions for former board members
K. Formal aspects of decisions of EPO departments
1. Composition of the competent departments of first instance
1.1. General comments on changes in composition of the competent departments of first instance
1.2. Examining division
1.3. Opposition division
1.3.1 Enlargement of the opposition division by addition of a legal member
1.3.2 Change in composition of opposition division during opposition proceedings
1.3.3 Composition of opposition division includes those who have taken part in proceedings for grant contrary to Art. 19(2) EPC
1.3.4 Remittal after breach of Article 19(2) EPC
2. Date of decision
2.1. Entry into force of decisions
2.2. Completion of the internal decision-making process
2.3. Date European patent takes effect and jurisdiction after pendency
3. Form of decisions
3.1. When is there a decision?
3.1.1 Cases involving two decisions
3.1.2 Inconsistency between oral and written decisions
3.2. Pointing out the right to appeal in accordance with Rule 111(2) EPC
3.3. Signatures on a decision under Rule 113 EPC
3.3.1 Decisions to be signed
3.3.2 Examples of invalid signatures
a) When decision is announced in oral proceedings
b) Director's signature in place of examiner's signature
3.3.3 Examples of valid signatures
a) Computer-generated communications
b) Death of examiner between oral proceedings and written decision
c) Decision in written proceedings
d) Illegible signature
e) Draft decisions
3.4. Reasons for the decision
3.4.1 Purpose of the duty to provide reasons
3.4.2 Right to be heard – right to have submissions taken into consideration
3.4.3 The requirement of sufficient reasoning
3.4.4 Deficient reasons
a) Deficient reasons sufficient for the purposes of Rule 111(2) EPC?
b) Deficient reasoning insufficient for the purposes of Rule 111(2) EPC
c) No reasons for decision
3.4.5 Special cases
a) References to communications
b) Reference to a board decision or case law
c) Assessment of inventive step without assessing the prior art
d) Identical decision after remittal for further prosecution
e) Dealing with issues that go beyond the decision itself
3.5. Decisions according to the state of the file
3.5.1 Request for decision "according to the state of the file"
3.5.2 No absolute right to a decision issued by way of EPO Form 2061
3.5.3 No waiver of right to a reasoned decision
3.5.4 Reasons for a decision by way of EPO Form 2061
a) Requirements
b) Reference to more than one communication
3.5.5 Documents included in the "state of the file"
4. Loss of rights within the meaning of Rule 112(1) EPC
4.1. Purpose of notification of loss of rights under Rule 112(1) EPC
4.2. Form of notification of loss of rights under Rule 112(1) EPC
4.3. Request for a decision under Rule 112(2) EPC subsequent to a communication
4.4. Responsibility for issuing decisions under Rule 112(2) EPC
4.5. Right to a decision under Rule 112(2) 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
1.1. Competence of opposition division or examining division
1.2. Competence of the boards of appeal
1.2.1 Legal Board or Technical Boards
1.3. Competence to correct if application is no longer pending
2. Scope of Rule 140 EPC
2.1. Correction of the text of a patent
3. Obvious mistakes according to Rule 140 EPC
4. Legal effect of corrections according to Rule 140 EPC
4.1. Correction requests as opposed to appeals
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
1.1. General
1.2. Exclusion from inspection under Rule 144 EPC
1.2.1 Test for exclusion
1.2.2 Examples where file inspection was found not to be prejudicial to interests of appellant
1.2.3 Examples where documents were excluded from file inspection
2. European Patent Register
2.1. General
2.2. Registration of licences
2.3. Registration of transfers
3. Stay of proceedings under Rule 14(1) EPC
3.1. Rule 14(1) EPC
3.1.1 General
3.1.2 Opening of proceedings before a national court
3.2. Rule 14(3) EPC
N. Observations by third parties
1. Introduction
2. Formal requirements
2.1. Language of the documents
2.2. When can third-party observations be filed?
2.3. Pending proceedings
2.4. Anonymously filed observations
2.5. Reasons for observations
3. Third party's legal status
3.1. General issues
3.2. Third party's procedural rights
4. Third-party observations in opposition-appeal proceedings
4.1. Third-party observations and the scope of opposition
4.2. Introducing a fresh ground for opposition in opposition proceedings
4.3. Introducing a fresh ground for opposition in appeal proceedings
4.4. Third-party observations presented after expiry of the opposition period
4.4.1 General
4.4.2 Third-party observations admitted
4.4.3 Third-party observations not admitted
5. Remittal following filing of observations
O. Transfer of party status
1. Party status as patent proprietor
2. Party status as opponent
2.1. General principles
2.2. Universal succession
2.3. Transfer together with the business assets to which the opposition relates
2.4. No transfer: sale of opponent's subsidiary company
2.5. Legal uncertainty as to who is the correct party
2.6. Evidence for and effect of a transfer
2.6.1 Date of effective transfer
2.6.2 What kind of evidence suffices
2.6.3 Natural heir
2.7. Effect of finding that no transfer took place during opposition proceedings
2.8. No administrative fee for a transfer of opponent status
P. Intervention
1. Admissibility of intervention
1.1. Any third party – independent legal entity
1.2. Relevant patent
1.3. National infringement proceedings
1.3.1 Proceedings for infringement instituted by patent proprietor – Article 105(1)(a) EPC
1.3.2 Request to cease alleged infringement and institution of proceedings for non-infringement – Article 105(1)(b) EPC
1.4. Proceedings pending before the EPO
1.4.1 Intervention in opposition proceedings
1.4.2 Intervention in appeal proceedings
1.5. Time limit for intervention
1.6. Fees
1.7. Substantiation requirement
2. Legal status of intervener
2.1. In opposition proceedings
2.2. In appeal proceedings
2.3. Intervener enters proceedings at stage they are at on the date of intervention
3. Legal status of documents filed with intervention during appeal proceedings
3.1. No discretion for the board to admit documents filed with intervention
3.2. No change of legal status of documents after withdrawal of intervention
4. Intervention shortly before oral proceedings
Q. Continuation of the opposition proceedings by the EPO
1. Surrender and lapse of the patent
1.1. Surrender of patent
1.2. Continuation of the opposition proceedings after lapse or surrender (Rule 84(1) EPC)
1.2.1 Request for continuation of the proceedings made by the opponent
1.2.2 Request for continuation of the proceedings made by the patent proprietor
2. Death or legal incapacity of an opponent
3. Withdrawal of opposition
3.1. Form and effect of withdrawal on party status
3.2. Effect of withdrawal on opposition proceedings before the departments of first instance
3.3. Effect of withdrawal on opposition appeal proceedings
R. Apportionment of costs
1. Principle that each party must bear its own costs
2. Equity of a different apportionment of costs – case groups
2.1. Late submission of documents and/or requests
2.1.1 Late submission was unjustified
a) Different apportionment of costs ordered
b) No different apportionment of costs ordered – no disadvantage
2.1.2 Late submission was justified
a) No different apportionment of costs ordered
b) Different apportionment of costs ordered for reasons of equity
2.2. Acts or omissions prejudicing the timely and efficient conduct of oral proceedings
2.2.1 Failure of a party to appear at oral proceedings
a) Different apportionment of costs ordered
b) Refusal of a request for apportionment of costs
2.2.2 Request for scheduling or postponement of oral proceedings; withdrawal of request for oral proceedings
2.2.3 Other cases concerning oral proceedings
2.3. Filing of opposition or appeal
2.4. Withdrawal of opposition or appeal at short notice
2.5. Other cases
3. Expenses that may be apportioned
3.1. Necessary expenses
3.2. Future costs
3.3. Procedure for fixing costs
3.4. Appeal against decision fixing amount of costs
4. Procedural aspects
4.1. Filing a request for apportionment of costs
4.2. Competence issues
4.3. Appeal solely against the decision on apportionment of costs inadmissible
S. Notifications
1. Forms of notification
1.1. Notification by postal services
1.2. Notification by means of electronic communication
1.3. Notification by delivery by hand and delivery by public notice
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
2.1. Methods of payment
2.2. Debit orders
2.2.1 Governing provisions
2.2.2 Accepted means of filing a debit order
2.2.3 Authority to sign
2.2.4 Types of debit orders
2.2.5 Interpretation and correction of debit orders
a) Interpretation of debit orders
b) Correction of errors in a debit order under R. 139 EPC
2.2.6 Processing of debit orders
2.2.7 Date of payment of amounts paid by debit order
2.3. Indication of purpose of payment
3. Date of payment
3.1. Payment to a bank account held by the EPO
3.2. Payment by credit card
3.3. Payment by debit order
3.4. Fiction of fee payment in due time – fail-safe arrangement
3.5. Prepayment of a fee
4. Insufficient payments – small amounts lacking
5. Fee reductions
5.1. Filing fee, examination fee
5.2. Fee for appeal
6. Fee refunds
6.1. Partial refund of the examination fee
V. Representation
1. Overview
2. Professional representatives
2.1. List of professional representatives (Article 134(1) EPC)
2.2. Duty of persons without residence nor place of business within a contracting state to be represented by a professional representative
2.3. Professional representatives during the transitional period
2.4. Procedural steps performed by a person other than the professional representative
2.5. Submissions by a professional representative after transfer of opponent status
3. Legal practitioners entitled to act as professional representative
3.1. General issues
3.2. Register of legal practitioners
3.3. Qualifying conditions according to Article 134(8) EPC
3.3.1 Representation by a legal practitioner
3.3.2 Common representative
4. Authorisations for appointment of a representative
4.1. Filing of the authorisation
4.2. General authorisations
4.3. Sub-authorisations
4.4. Authorisation of an association of representatives
4.5. Termination of authorisation
5. Oral submissions by an accompanying person
5.1. Enlarged Board's landmark decision G 4/95
5.2. Application of the case law established by the Enlarged Board
5.2.1 Introduction
5.2.2 Trainee patent attorneys
5.2.3 Distinction between party to proceedings and accompanying person
5.2.4 Inventor as accompanying person
5.2.5 Name, qualifications and subject-matter to be specified
5.2.6 Oral submissions to be requested sufficiently in advance
5.2.7 Exceptional circumstances
5.2.8 Professional representative's responsibility
5.2.9 Procedural objection under R. 106 EPC
5.3. Oral submissions by former members of the boards of appeal
5.4. Oral submissions by qualified patent lawyers of non-EPC contracting states
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
5.1. Requirements for according a date of filing
5.2. Identity of applicant
5.2.1 Requirement for information identifying the applicant (Rule 40(1)(b) EPC)
5.2.2 Correction of designation of applicant (Rule 139 EPC)
5.3. Legal effect of accordance of a date of filing
5.4. Subsequent filing of missing parts of the description or missing drawings (Rule 56 EPC)
5.4.1 Legal provisions
5.4.2 Interpretation of Rule 56 EPC
5.5. Corrections under Rule 139 EPC
5.5.1 Legal provisions
5.5.2 No replacement of invention
5.5.3 Extent of competence of the Receiving Section for corrections under Rule 139, second sentence, EPC
5.6. Erroneously filed application documents or parts (Rule 56a EPC)
5.7. Change of date of filing
6. Examination of formal requirements
6.1. Requirements of a European patent application (Article 78 EPC)
6.2. Designation of the inventor
6.3. Any other requirement laid down in the Implementing Regulations
6.3.1 General provisions governing the presentation of application documents (Rule 49 EPC)
7. Designation of states
7.1. Legal provisions
7.2. Effect of non-payment of the designation fee
7.2.1 Deemed withdrawal
7.2.2 Designation of states in divisional applications
7.2.3 No correction of non-payment of fee under R. 88 EPC 1973
7.3. Correction of designation of states (Rule 139 EPC)
7.3.1 Decisions considering the application of the EPC 1973
7.3.2 Decisions considering the application of the EPC 2000
8. Priority
8.1. Filing of priority documents
8.2. Correction of priority declarations
8.2.1 Requirement for mistake to have been made
8.2.2 Time limit for request for correction
8.2.3 Correction of the priority declaration under Rule 52(3) EPC
9. Fiction of withdrawal of the application (Rule 100(3) EPC)
10. Publication of the application
B. Examination procedure
1. Stage before substantive examination
1.1. Amendments made by the applicant of his own volition under Rule 137(2) EPC
1.2. Request for examination (Rule 70 EPC)
1.2.1 General issues
1.2.2 The invitation to confirm early request for examination (R. 70(2) EPC)
2. The first stage of substantive examination
2.1. Beginning of "substantive examination"
2.2. Communications under Rule 71(1) and (2) EPC
2.2.1 Invitation to correct deficiencies and to propose amendments (Rule 71(1) EPC)
2.2.2 Content of Rule 71(2) EPC communication
2.3. Refusal after a single communication
2.3.1 Discretion of the examining division
2.3.2 Bona fide attempt to deal with the examining division's objections
2.4. Amendments under Rule 137(3) EPC
2.4.1 Discretion of the examining division under Rule 137(3) EPC
2.4.2 Consent under Rule 137(3) EPC in oral proceedings
2.4.3 The burden of proposing amendments
2.4.4 Converging or diverging versions of claims
2.4.5 Reasons for the exercise of discretion
2.4.6 Requests for amendments filed at an advanced stage in proceedings
2.4.7 Late-filed requests after summons to oral proceedings in examination
2.4.8 Second communication under Rule 71(3) EPC: the consent of the examining division
2.5. Failure to reply to the communication from the examining division (Article 94(4) EPC)
2.5.1 Reply within the meaning of Article 94(4) EPC
2.5.2 Waiver of the applicant's right to present comments
2.6. Issuing a further communication in light of Article 113(1) EPC
2.6.1 Introduction
2.6.2 Arguments taken into account in the decision of the examining division
2.6.3 Inclusion of the essential reasoning
2.6.4 Essential reasoning based on an International Preliminary Examination Report (IPER)
2.6.5 Fresh argument based on grounds and evidence communicated beforehand
2.6.6 Bona fide attempt by the applicant to overcome the objections
2.6.7 Form of the communication under Article 113(1) EPC
2.7. Informal communications
2.7.1 Telephone conversations
2.7.2 Interviews
3. The grant stage in examination
3.1. Informing applicant of the text intended for grant (Rule 71(3) EPC)
3.2. Approval of the text by the applicant
3.2.1 Clear and unambiguous approval of the text
a) Rule 71(3) EPC, in the version applicable up to 1 April 2012
b) Rule 71(3) EPC, in the version applicable from 1 April 2012
3.2.2 Option to waive the right to a further communication under Rule 71(3) EPC
3.2.3 Decisions with no text submitted or agreed by the applicant (Article 113(2) EPC)
a) General issues
b) Deemed approval under Rule 71(5) EPC
c) Auxiliary request issues
3.3. Amendments or corrections filed in response to the communication under Rule 71(3) EPC
3.3.1 Amendments where Rule 71(3) EPC communication is the first communication
3.3.2 Amendments and corrections requested according to Rule 71(6) EPC
3.3.3 Criteria for admitting amendments filed in reply to the Rule 71(3) EPC communication
3.3.4 Claims fees due in response to Rule 71(3) EPC communication
3.4. Amendment after approval of the text for grant
3.5. Examination after remittal for further prosecution
3.6. Amendments after the decision to grant
3.7. Withdrawal of amendments and abandonment of subject matter
3.7.1 General issues
3.7.2 Effects of non-payment of claims fees
3.8. Withdrawal of the patent application
3.8.1 General issues
3.8.2 Unambiguous and unconditional withdrawal
3.8.3 No correction of an erroneous withdrawal after public informed
3.8.4 Correction of the withdrawal of the application under Rule 139 EPC
3.9. Refusal of a European patent application under Article 97(2) EPC (former Article 97(1) EPC 1973)
3.10. Entry into force of a decision to grant a European patent
3.11. Errors in the Patent Bulletin
4. Additional searches during examination
4.1. Rule 63 EPC governing incomplete search
4.1.1 Introduction
4.1.2 Additional search necessary: limited discretion of the examining division
4.1.3 Declaration under Rule 63(2) EPC
a) Notoriously well-known technical features
b) Subject-matter not having technical character
c) Statement indicating the subject-matter to be searched not sufficient to overcome the deficiency noted under Rule 63(1) EPC
4.2. Non-payment of further search fees under Rule 64 EPC
5. Amendments relating to unsearched subject-matter – Rule 137(5) EPC
5.1. General issues
5.2. The purpose of Rule 137(5) EPC
5.3. Applicability of Rule 137(5) EPC
5.3.1 General issues
5.3.2 Extent of the European search report
5.3.3 Subject-matter of amendment not combining with the originally claimed invention
5.4. Criteria for amendments to be allowable under R. 137(5) EPC
5.4.1 Amendment not affecting the notion of unity of invention
5.4.2 No legal basis for exercise of discretion
5.4.3 Amendments filed to meet an objection
5.5. Non-compliance with Rule 137(5) EPC: a ground for refusing an application
C. Opposition procedure
1. Legal character of opposition proceedings and applicable principles
2. Filing and admissibility requirements
2.1. Entitlement to file an opposition
2.1.1 General principles
2.1.2 Examination at any stage in the proceedings of entitlement to oppose
2.1.3 Filing of opposition by patent proprietor or inventor
2.1.4 Filing of opposition on behalf of a third party – straw man
2.1.5 Repeated filing of opposition documents by the same person
2.1.6 Filing of multiple oppositions by different persons – single opposition proceedings
2.1.7 Filing a joint opposition – multiple opponents
a) Payment of a single opposition fee
b) Representation, legal status and composition of a multiple opponent
2.2. Formal requirements for opposition and filing in due time
2.2.1 Introduction
2.2.2 Opposition period
a) Period triggered by the publication of the mention of the grant of the patent
b) Observance of the time limit – filing by fax
2.2.3 Payment of opposition fee – correction of a payment form
2.2.4 Identity of opponent and correction of opponent's name
a) Principles
b) Incorrect designations and abbreviations
c) Evidence of identity
d) Availability of Rule 139 EPC to rectify errors
2.2.5 Sufficient identification of the opposed patent
2.2.6 Statement of extent of opposition
2.2.7 Statement of grounds for opposition
2.2.8 Indication of facts, evidence and arguments – substantiation of grounds for opposition
a) No "partial inadmissibility"
b) Relevant date for compliance
c) Full and concise reasoning
d) Substantiation to be distinguished from strength of the opponent's case
e) Indication of evidence
f) No burden of proof with regard to negative facts
g) Examples – sufficient substantiation acknowledged
h) Examples – sufficient substantiation denied
i) Alleged public prior use
j) Non-patent literature and oral disclosures
2.2.9 Other requirements for notice of opposition
a) Translation
b) Signature
c) Authorisation
2.3. Procedural aspects of examination of admissibility
2.3.1 Formalities officers' powers in opposition proceedings
2.3.2 Admissibility of opposition to be checked at every stage
2.3.3 Rejection of opposition as inadmissible
3. Substantive examination of opposition
3.1. Introduction
3.2. Extent of opposition
3.3. Scope of examination of grounds for opposition
3.4. Fresh grounds for opposition
3.4.1 Fresh grounds examined exceptionally
3.4.2 Meaning of "fresh grounds for opposition"
3.4.3 Prima facie relevance
3.4.4 Objections of lack of novelty and lack of inventive step
3.4.5 Examination of fresh facts and evidence related to a fresh ground
3.4.6 Opportunity to comment on new grounds for opposition
3.5. Grounds raised against claims amended after grant
4. Late submission of documents, lines of attack and arguments
4.1. Discretionary decision
4.2. Sufficient reasoning
4.3. Concept of "in due time"
4.3.1 Duty to facilitate due and swift conduct of proceedings
4.3.2 Rule 116(1) EPC – not an invitation to file new submissions
4.3.3 Fair response – examples
4.4. Documents cited in the patent specification or search report
4.5. Criteria for exercise of discretion
4.5.1 Different approaches
4.5.2 Review of discretionary decisions by the boards
4.5.3 Prima facie relevance
a) Relationship between prima facie assessment and in-depth assessment
b) Relative or absolute concept of relevance
c) Examples
4.5.4 Submission contrary to fair and expedient procedure
4.5.5 Abuse of proceedings
4.5.6 Legitimate expectation that the document is already in the proceedings
4.6. Late submissions of new arguments
4.6.1 New arguments – definition
4.6.2 No legal basis for disregarding late-filed arguments in opposition proceedings
5. Amendments to claims, description and drawings in opposition proceedings
5.1. Admissibility of amendments
5.1.1 Principles
5.1.2 Amendments occasioned by a ground for opposition – Rule 80 EPC
a) General
b) Amendments intended to remedy a lack of clarity
c) Filing of new dependent or independent claims
5.1.3 Amendments occasioned by national prior rights
5.1.4 Timeframe for filing amendments
a) Discretionary decision to admit or not admit amendments – legal basis
b) Concept of "late-filed" and implications for discretion
c) Review of first-instance discretionary decisions by the boards
d) Principles for exercise of discretion
5.1.5 Amending a non-opposed sub-claim
5.1.6 Applicability of Rule 43(2) EPC in opposition proceedings
5.1.7 Applicability of Rule 137(5) EPC in opposition proceedings
5.1.8 Removal of error (in claim) in opposition proceedings – Rule 139 EPC
5.2. Scope of examination of amendments
5.2.1 Scope of examination not limited to grounds raised pursuant to R. 76(2)(c) EPC
5.2.2 Extent of power to examine amended claims for compliance with Article 84 EPC
5.2.3 Additional searches
5.3. Proprietor's approval of amended text of the patent
6. Right to be heard in opposition proceedings
6.1. Principle of equal treatment
6.2. Invitation to file observations under Article 101(1) EPC
6.3. Invitation to file observations under Rule 82(1) EPC
6.4. EPO communication concerning submissions by the other party – adequate opportunity to reply
6.5. Opportunity to present comments
6.6. Change in composition of opposition division during opposition proceedings
7. Acceleration of opposition proceedings in the case of pending infringement proceedings
8. Decisions of opposition division
8.1. Revocation of a European patent for failure to fulfil formal requirements – by way of decision
8.2. Interlocutory decisions
8.2.1 General
8.2.2 Maintenance of European patent as amended
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
1.1. General
1.2. Rules of Procedure of the Boards of Appeal (RPBA)
1.3. Suspensive effect of the appeal
1.3.1 Definition of the suspensive effect of the appeal
1.4. Devolutive effect of the appeal
1.5. Accelerated processing before the boards of appeal
2. Filing and admissibility of the appeal
2.1. Transitional provisions for the EPC 2000
2.2. Appealable decisions
2.2.1 Departments
2.2.2 Whether there has been a decision
a) Examples of appealable decisions
b) Examples where the communication was not an appealable decision
2.2.3 Interlocutory decisions
2.2.4 Appeals against decisions of the boards of appeal
2.3. Board competent to hear a case
2.3.1 Technical or Legal Board of Appeal
a) General
b) Technical board of appeal competent
c) Legal Board of Appeal competent
2.3.2 Specific cases
a) Interruption of proceedings
b) Request for a search-fee refund
c) Interlocutory revision and reimbursement of appeal fee
2.4. Entitlement to appeal
2.4.1 Formal aspects under Article 107 EPC
a) Appeal filed by wrong company
b) Appeal filed in name of representative
c) Party consisting of plurality of persons
d) Company in receivership
e) Death of the appellant (opponent)
2.4.2 Party adversely affected (Article 107 EPC)
a) General
b) Patent applicant
c) Patent proprietor
d) Opponent
2.4.3 Procedural status of the parties
a) Parties to appeal proceedings
b) Rights of parties under Article 107 EPC
c) The boards' duty of impartiality in inter partes proceedings
d) Existence of a company
2.5. Form and time limit of appeal
2.5.1 Electronic filing of appeal
2.5.2 Form and content of notice of appeal (Rule 99(1) EPC)
a) Rule 99(1)(a) EPC
b) Rule 99(1)(b) EPC
c) Rule 99(1)(c) EPC
d) Rule 99(3) EPC
2.5.3 Appeal filed within the time limit
a) Notification issues
b) Languages
c) Misleading decisions of the department of first instance
2.5.4 Payment of appeal fee
a) Notice of appeal not filed
b) Payment of only one appeal fee
c) Reduced fee for appeal filed by a natural person or an entity
2.5.5 Appeal deemed not to have been filed
2.6. Statement of grounds of appeal
2.6.1 Legal provisions
2.6.2 Form of statement of grounds of appeal
2.6.3 Content of the statement of grounds of appeal
a) General
b) Direct link between the contested decision and the statement of grounds of appeal
c) Adequate reasoning for an appeal against a refusal of the application
d) Adequate reasoning in an appeal filed by the opponent
e) Statement of the legal or factual reasons
f) Addressing the reasons given in the decision in the statement of grounds of appeal
g) Complete case within the meaning of Art. 12(3) RPBA 2020
h) Mere repetition of arguments
i) Objection not raised at first instance
j) Statement of grounds of appeal not filed in full
k) Duty of board to be impartial
2.6.4 New case raised
a) Appeal based on the same ground for opposition
b) Taking new submissions into consideration
c) Amended claims filed
2.6.5 References to earlier submissions
2.6.6 Arguments need not be new or relevant
2.6.7 Exceptional circumstances warranting admissibility of appeal
a) Immediately apparent the contested decision cannot be supported
b) Patent proprietor requests revocation
c) Substantial procedural violation
2.6.8 No partial admissibility of appeal
2.7. Examination of the admissibility of appeal in every phase of appeal proceedings
2.8. Cases where admissibility of appeal need not be considered
2.9. Interlocutory revision
2.9.1 General
2.9.2 The department of first instance's obligation to rectify the decision
2.9.3 Well-founded appeal within the meaning of Art. 109(1) EPC
2.9.4 Competence of the department of first instance
2.9.5 "Cassatory" or "reformatory" interlocutory revision
3. Substantive examination of the appeal
3.1. Binding effect of requests – no reformatio in peius
3.1.1 Reformatio in peius does not apply separately to each point
3.1.2 Reformatio in peius and devolutive effect of appeal
3.1.3 Cases where reformatio in peius does not apply
3.1.4 Patentee as sole appellant
3.1.5 Opponent as sole appellant
3.1.6 Revocation of patent
3.1.7 Exceptions to the prohibition of reformatio in peius
a) Limited exceptions to the prohibition of reformatio in peius – G 1/99
b) Case law around G 1/99
c) Remittal to the department of first instance
d) Lack of clarity
e) Causal link
f) Undisclosed disclaimer
3.1.8 Reformatio in peius and lack of cross-appeal in the EPC
3.2. Subject-matter under examination
3.2.1 Primary object of the appeal proceedings – Article 12(2) RPBA 2020
3.2.2 Complete case on appeal
3.2.3 Opposition appeal proceedings
a) Admissibility of opposition
b) The notice of appeal
c) Unopposed subject-matter not reviewed
d) Dependent claims
e) Appeal by patentee against revocation
f) Removal of references in dependent claims
g) Abandonment of subject-matter
h) Fresh ground for opposition on appeal
i) No general review of the first-instance decision
j) Ambiguities in the claims
k) Ex officio examination of Art. 123(2) EPC
3.2.4 Patentability requirements under examination in ex parte proceedings
3.3. Facts under examination – applying Article 114 EPC in appeal proceedings
3.3.1 Boards to examine facts of own motion
3.4. Review of first-instance discretionary decisions
3.4.1 Principles applying to the review of first-instance discretionary decisions
a) General
b) Proper exercise of discretion
c) Review of first-instance discretionary decisions taken on substantive grounds
3.4.2 Development of the case law on reviewing first-instance discretionary decisions
a) Early case law on exercising discretion
b) Case law on exercise of discretion under Art. 12(4) RPBA 2007
3.4.3 The boards' own discretion
a) Submissions refused at first instance admitted on appeal
b) Submissions not admitted by the boards
c) Discretion misused by the department of first instance
3.4.4 Submissions admitted at first instance are part of the appeal proceedings
3.4.5 Review of an opposition division's discretionary decision (not) to admit a new ground for opposition
3.4.6 Review of discretion – stay of proceedings
4. New submissions on appeal – case law on the RPBA 2020
4.1. Introduction
4.1.1 Legal basis
a) Legal bases in the EPC
b) Legal bases in the Rules of Procedure of the Boards of Appeal
4.1.2 Primary object of appeal proceedings and the "convergent approach" to amendments made to party's case
4.2. Amendment to a party's case
4.2.1 First level of the convergent approach: amendments to a party's case within the meaning of Article 12(4) RPBA 2020
a) Principles
b) Submissions on appeal not directed to requests, facts, objections, arguments or evidence on which the decision under appeal was based
c) Not admissibly raised and maintained at first instance
4.2.2 Second and third levels of the convergent approach: amendments to an appeal case within the meaning of Article 13(1) and (2) RPBA 2020
a) Principles
b) Submissions at first instance not automatically part of appeal case
c) Request for dismissal of the appeal and maintenance of the patent
d) Deletion of claims or alternatives within claims
e) New request combining subject-matter of previously filed claims
f) Request paraphrased and not set out in full
g) Request considered in decision under appeal and clearly specified in grounds of appeal
h) Resubmission of withdrawn requests
i) Requests belatedly substantiated
j) Requests reordered
k) Fleshing out objections not adequately substantiated in the grounds of appeal or reply
l) New objection based on documents already on file – new arguments with factual elements
m) Further developing arguments within the framework of the appeal case as submitted so far
n) Submissions concerning interpretation of the law
o) Information supporting oral submissions
p) Translation filed later
q) Late assertion of a breach of the right to be heard
4.3. First level of the convergent approach – submissions in the grounds of appeal and the reply – Article 12(3) to (6) RPBA 2020
4.3.1 Principles
4.3.2 Transitional provisions
4.3.3 Amendment within the meaning of Article 12(4) RPBA 2020
4.3.4 Discretion under Article 12(4) RPBA 2020
a) Principles
b) Requirement to identify each amendment to the case and provide reasons for timing of submission – Article 12(4), third sentence, RPBA 2020
c) Requirement to indicate the basis for amendments to the patent application or patent in the application as filed and to provide reasons why the amendment overcomes the objections raised – Article 12(4), fourth sentence, RPBA 2020
d) Complexity of amendment
e) Suitability to address the issues leading to the decision under appeal
f) Need for procedural economy
g) Whether the submission should have been filed in first instance proceedings – Article 12(6), second sentence, RPBA 2020
h) Primary object of the appeal proceedings to review the decision under appeal
i) Application of the principles expressed in Article 12(6) RPBA 2020 to amended requests or single claims
j) Convergence criterion
k) No objection raised by opposing party
l) Obvious corrections in description
4.3.5 Incomplete case in grounds of appeal or reply – Article 12(3) RPBA 2020 in conjunction with Article 12(5) RPBA 2020
a) Principles
b) Incomplete appeal case – Article 12(3) RPBA 2020
c) Discretion under Art. 12(5) RPBA 2020
4.3.6 Submissions not admitted at first instance – error in the use of discretion – Article 12(6), first sentence, RPBA 2020
a) Principles
b) Whether a submission was late-filed – justification for filing at an advanced stage of proceedings
c) Prima facie relevance of late-filed objections and evidence
d) Prima facie allowability of a request
e) Need for procedural economy – convergence
f) Principles of fairness and equal treatment of parties
g) Implicitly admitted request
h) Board's own discretion when the exercise of discretion by the department of first instance suffers from an error
i) Admittance justified by the circumstances of the appeal case
j) Not covered by Article 12(6), first sentence, RPBA 2020: submissions admitted at first instance
4.3.7 Submissions that should have been submitted or which were no longer maintained at first instance – Article 12(6), second sentence, RPBA 2020
a) Principles
b) New request addressing objection raised for the first time at the first instance oral proceedings
c) New request addressing objection that was dismissed or not considered critical by the opposition division
d) New request in reaction to a change of opinion of the opposition division at the oral proceedings
e) New request – amended pages of the description
f) New request – opportunity in opposition proceedings to address the objection
g) New request – opportunity to respond to objections during examination proceedings
h) New request – examination of subject-matter deliberately foregone
i) New request – repeated attempts to meet EPC requirements
j) New request – unambiguous indication how to address the objection
k) New defence or evidence in response to objections raised late in the proceedings
l) New defence in response to a change of opinion by the opposition division at the oral proceedings
m) New objections or defence in response to views in the opposition decision that had already been set out in the preliminary opinion
n) New objections or evidence in response to the patent proprietor's submissions at first instance
o) New evidence for objection raised early in opposition proceedings
p) Objection to admittance of a claim request
q) Submissions that were no longer maintained in first instance and counter-examples
r) Admittance justified by the circumstances of the appeal case
4.4. Second level of the convergent approach – submissions made after filing of grounds of appeal or reply – Article 13(1) RPBA 2020
4.4.1 Principles
4.4.2 Transitional provisions – immediate applicability of Article 13(1) RPBA 2020
4.4.3 Amendment to appeal case within the meaning of Article 13(1) RPBA 2020
4.4.4 Party's duty to justify amendment
a) Principles
b) Party's duty to provide reasons for not submitting amendment at an earlier stage
c) Substantiation of amendments to patent application or patent
4.4.5 Discretion under Article 13(1) RPBA 2020 – new requests
a) Deletion of claims or alternatives within claims
b) Timely and legitimate reaction to issues raised – requests admitted
c) New request in response to preliminary opinion of the board clarifying objections – admitted
d) Board's communication confirming the opposition division's or opponent's opinion – not a justification
e) Issues underlying board's conclusions already raised in the decision under appeal – request not admitted
f) Request does not prima facie overcome objection – procedural economy – not admitted
g) Claim amendments prima facie give rise to new objections – requests not admitted
h) Inclusion of possibly unsearched features – procedural economy – request not admitted
i) Claim requests becoming non-convergent by later submission of further requests – not admitted
j) Filing of reply to the appeal shortly after expiry of non-extended period – admitted
4.4.6 Discretion under Article 13(1) RPBA 2020 – new facts, objections, arguments and evidence
a) New documents filed in response to experimental data submitted by the patent proprietor – admitted
b) No new complexity introduced – objection admitted
c) New lines of attack based on documents submitted during first-instance proceedings – not admitted
d) Relevance of new lines of attack for assessment of patentability – not a sufficient justification
e) New documents not prima facie relevant – not admitted
f) Late substantiation of lines of attack – additional complexity – procedural economy – submissions not admitted
g) Late-filed evidence of a public prior use – not admitted
h) Communication in preparation for the oral proceedings not an invitation to file further submissions on known objections
i) Objections not a reaction to unexpected developments in the appeal proceedings – not admitted
j) New document originating from the patent proprietor submitted by the appellant-opponent – not admitted
4.5. Third level of the convergence approach – submissions filed after notification of summons or after expiry of period specified in Rule 100(2) EPC communication – Article 13(2) RPBA 2020
4.5.1 Principles
4.5.2 Transitional provisions
a) Application of Article 13(1) RPBA 2020 and/or Article 13 RPBA 2007 in transitional cases
b) No contradiction between Article 13(1) RPBA 2020 and Article 13 RPBA 2007 or the EPC
c) Applicability of Article 13(2) RPBA 2020 in cases of postponement of oral proceedings
d) Applicability of Article 13(2) RPBA 2020 in cases where the statement of grounds of appeal or the reply was filed before the entry into force of the RPBA 2020
4.5.3 Amendment to an appeal case within the meaning of Article 13(2) RPBA 2020
4.5.4 Cogent reasons put forward by party to demonstrate exceptional circumstances
a) Principles
b) Causal link between the exceptional circumstances and the late filing
4.5.5 New requests filed – exceptional circumstances established
a) Objections raised for the first time in board's communication
b) Early objection raised by examining division reintroduced by board
c) Objections or arguments raised for the first time during oral proceedings
d) Clarifying claim amendment during oral proceedings not objected to by the other party
e) Filing a slightly amended claim announced in good time
f) Claim amendment addressing all pending objections and thus avoiding oral proceedings
g) Deletion of claims or alternatives in claims
h) Editorial amendments to remove inconsistencies
i) Right to be heard violated by the examining division and no other party affected
j) Amendment not detrimental to procedural economy and no other party affected
4.5.6 New requests filed – no exceptional circumstances established
a) Purpose of the board's preliminary opinion
b) Preliminary opinion of the board maintaining objections or arguments raised by examining division
c) Preliminary opinion of the board containing objections or arguments that were already part of the proceedings
d) Requested amendments could already have been filed in opposition proceedings
e) New request filed shortly before oral proceedings to overcome objections in decision under appeal
f) Party initially addresses new objection raised in preliminary opinion only by providing arguments
g) Objections or arguments which do not go beyond the framework of the earlier discussion
h) Board's opinion different from that of opposition division
i) Change in board's preliminary opinion
j) Amendment not adding anything of substance to the discussion of the objection raised
k) Prima facie allowability
l) Embodiment never claimed
m) Acceleration of the proceedings
n) Change of representative
o) Representative unable to contact appellant
p) Technical problems during videoconference – not causal for need to file only at this stage
q) COVID-19 pandemic – not causal for late filing
4.5.7 New facts, objections, arguments and evidence filed – exceptional circumstances established
a) Response to a new argument of the board
b) Immediately apparent that objection raised against different request also applies to request at issue
4.5.8 New facts, objections, arguments and evidence filed – no exceptional circumstances established
a) Meaning of the time limit set in the communication under Article 15(1) RPBA 2020
b) Board's preliminary opinion based exclusively on earlier submissions
c) No cogent reasons why the objection had not been raised earlier
d) No new issue raised by board's comments in communication under Article 15 RPBA 2020
e) No absolute right to discussion of all objections raised at first instance
f) Change of representative
g) Further illustration of the technical teaching by means of photographs
h) Translation
i) Prima facie relevance
4.5.9 Discretion under Article 13(2) RPBA 2020 – principles
4.5.10 Criteria for discretion applied to new requests
a) Amendments that prima facie overcome the issues raised and do not give rise to new objections – admitted
b) Amendments that do not prima facie overcome the issues raised and/or give rise to new objections – not admitted
c) Amendments and resulting subject-matter not surprising for the opposing party – request admitted
d) Direct reaction addressing the board's objections in ex parte proceedings – admitted
e) Amendment shifting focus to feature that was previously optional – not admitted
f) Requests could and should have been filed during first-instance proceedings
g) No "last chance" doctrine
4.5.11 Criteria for discretion applied to new facts, objections, arguments and evidence
a) Late submission of new facts and evidence contrary to the principle of fair proceedings and procedural economy
b) Prima facie relevance
c) Procedural economy – early and complete presentation of parties' cases
d) Procedural economy – no carte blanche to amend claims at wish
5. New submissions on appeal – case law on the RPBA 2007
5.1. Introduction
5.1.1 General rule that RPBA 2020 immediately applicable and exceptions
5.1.2 RPBA 2007 provisions on late-filed submissions
5.2. Principles established by the case law on late-filed submissions under the RPBA 2007
5.2.1 Inter partes proceedings
5.2.2 Ex parte proceedings
5.3. The boards' discretion
5.4. State of proceedings
5.4.1 General
5.4.2 Procedural economy
a) Late-filed requests
b) Late-filed facts and evidence
5.5. Case amended after oral proceedings arranged – Article 13(1) and (3) RPBA 2007
5.5.1 Whether discretion conferred under Article 13(3) RPBA 2007
5.5.2 Late-filed requests
a) Filing of requests after arrangement of the oral proceedings
b) Filing of requests during the oral proceedings
5.5.3 Late-filed documents and evidence
5.5.4 Absence from the oral proceedings – Article 15(3) and (6) RPBA 2007
a) Absence of applicant (patent proprietor) from oral proceedings
b) Absence of opponent from oral proceedings
5.5.5 New submissions after debate closed
5.6. Parties' right to submit observations on amendments – Article 13(2) RPBA 2007
5.7. Communication of a board of appeal
5.8. Circumstances extraneous to proceedings
5.8.1 Introduction
5.8.2 Change of representative
5.8.3 Illness of representative
5.8.4 Change of ownership or representation
5.8.5 Business reasons
5.9. New submissions in proceedings resumed before the boards
5.10. Late submission of new arguments and lines of attack
5.10.1 New arguments on appeal
5.10.2 Whether amendment or merely elaboration on existing case
5.10.3 New arguments and lines of attack admitted
5.10.4 New arguments and lines of attack not admitted
5.10.5 New documents used to back up arguments
5.11. Article 12(4) RPBA 2007
5.11.1 General principles – substantiation requirement – duty to facilitate the first-instance proceedings
5.11.2 Relationship between Article 12(4) and Article 13 RPBA 2007
5.11.3 Inter partes appeal procedure
a) Documents, evidence and objections which could have been presented in the first-instance proceedings
b) Documents and evidence admitted – appropriate and timely reaction
c) Documents and evidence not admitted by the opposition division
d) Resubmission of objections withdrawn at the opposition stage
e) Requests which could have been presented at first instance
f) Tidying up claims examined by the opposition division
g) Requests admitted – appropriate and timely reaction
h) Requests not admitted by the opposition division
i) Resubmission of requests withdrawn at opposition stage
j) Reintroduction of subject-matter abandoned during examination
5.11.4 Ex parte appeal procedure
a) Requests which could have been presented in the examination proceedings
b) Admission of requests already refused by the examining division
c) Resubmission of requests withdrawn during examination
d) Feature re-introduced on appeal
5.12. Criteria for consideration of amended claims
5.12.1 Principles applicable to amended claims
5.12.2 Withdrawal and resubmission of a a request on appeal
5.12.3 Clear allowability of amended claims
a) General
b) Examples
5.12.4 Response to objections
5.12.5 Converging or diverging versions of claims
5.12.6 Unsubstantiated requests
5.12.7 Discretion to admit amended claims at any stage of the appeal proceedings
5.12.8 No absolute right to a "last chance"
5.12.9 Change of subject-matter
5.12.10 Need for additional search
a) General
b) Features taken from the description
c) Additional search exceptionally performed
5.12.11 Dependent claims
5.12.12 Number of auxiliary requests
5.12.13 Amended claims not admitted with divisional applications pending
5.12.14 Reverting to broader claims, especially those as granted
5.13. Criteria for considering late-filed facts and evidence
5.13.1 Legitimate reaction to the first-instance decision
a) General
b) Late-filed submissions admitted
c) Evidence of common general knowledge
5.13.2 Relevance
5.13.3 Complexity of new subject-matter
5.13.4 Cases of abuse of procedure
a) Late-filed documents admitted
b) Late-filed documents not admitted
5.13.5 Late submission of experimental data
a) Test reports admitted into the proceedings
b) Test reports not admitted into the proceedings
5.13.6 Public prior use
a) No consideration of late-filed evidence of public prior use
b) Consideration of late-filed evidence of public prior use
5.13.7 Admission of submissions relating to Article 55(1)(a) EPC
6. Parallel proceedings
7. Termination of appeal proceedings
7.1. Closure of the substantive debate
7.1.1 Decision taken as the file stands
7.1.2 Proceedings after delivery of the decision
7.2. Interlocutory decisions of a board
7.3. Withdrawal of the appeal
7.3.1 Article 114(1) EPC and withdrawal of the appeal
7.3.2 Board's powers to decide on issues after withdrawal of the appeal
7.3.3 Partial withdrawal of appeal by sole appellant and opponent
7.3.4 No withdrawal of appeal with retrospective effect
7.3.5 Request for withdrawal of appeal to be unambiguous
7.3.6 Conditional withdrawal of appeal
7.3.7 Correction of withdrawal of appeal under Rule 139 EPC
7.4. Deemed withdrawal of patent application
7.5. Legitimate interest in the continuation of the grant and the appeal proceedings
8. Reasons for the decision
8.1. Reasons in abridged form
8.1.1 Abridged reasons under Art. 15(7) RPBA 2020
8.1.2 Abridged reasons under Art. 15(8) RPBA 2020
8.1.3 Decisions issued in written proceedings
9. Remittal to the department of first instance
9.1. General
9.1.1 Article 111(1) EPC
9.1.2 Article 11 RPBA 2020
9.1.3 Art. 11 RPBA 2007
9.2. Exercise of discretion to remit
9.2.1 No absolute right to have issue decided on at two instances
9.2.2 Remittal and scope of review
a) Primary object of appeal proceedings is to review decision under appeal in a judicial manner
b) Ex parte proceedings
c) Inter partes proceedings
9.2.3 TRIPS
9.3. Special reasons for remittal
9.3.1 Introduction
9.3.2 Non-examined patentability issues
a) Issues undecided at first instance but which become relevant during or after appeal proceedings
b) Primary object of the appeal proceedings
c) Undue burden
d) Different interpretation of terms
9.3.3 Procedural economy
9.3.4 Financial situation of a party
9.3.5 Remittal following amendments to the claims
a) Ex parte cases
b) Inter partes cases
c) Discrepancies between the clean and the annotated versions of a request
9.3.6 Incomplete search
a) Features considered non-technical
b) Closest prior art not suitable or misinterpreted
c) Additional prior-art search necessary
9.3.7 Opposition withdrawn
9.4. Remittal following fundamental deficiencies
9.4.1 Article 11 RPBA 2020
9.4.2 Article 11 RPBA 2007
9.4.3 The term "fundamental deficiencies"
9.4.4 Fundamental deficiencies
a) Violation of right to be heard
b) Reasons for decision deficient
c) Missing signatures
d) Failure to hold oral proceedings
e) Incorrect application of R. 137(5) EPC
9.5. Requests for or against remittal
9.6. No remittal to the department of first instance
9.6.1 Discretion despite special reasons
9.6.2 Same legal and factual framework
9.6.3 Objections raised by the board
9.6.4 Opportunity to comment
9.7. Obiter dicta
9.8. Remittal for hearing of witnesses
9.9. Remittal for adaptation of the description
9.10. Remittal to a differently composed department of first instance
9.11. Accelerating proceedings after remittal
10. Binding effect of decision remitting case to department of first instance
10.1. Notion of res judicata
10.2. Department of first instance bound by decision of board of appeal
10.2.1 Binding effect on examining divisions
10.2.2 Binding effect on opposition divisions
10.3. Binding effect in opposition proceedings after remittal to an examining division
10.4. Board of appeal bound in subsequent appeal proceedings following remittal
10.5. Binding effect: remittal for the continuation of proceedings
10.6. Binding effect: remittal only for adaptation of the description
11. Reimbursement of appeal fees
11.1. Introduction
11.2. Examination ex officio
11.3. Appeal deemed not to have been filed
11.3.1 Appeal deemed not to have been filed due to late filing of the notice of appeal and/or late payment of the appeal fee
11.3.2 Translation of notice of appeal
11.3.3 No legal ground for payment
11.3.4 Request for re-establishment in respect of the time limit for filing the notice of appeal and/or for paying the appeal fee
11.3.5 No legal basis for retaining appeal fee in case of intervention in opposition appeal proceedings
11.3.6 Several appellants
11.3.7 No reimbursement if appeal filed in accordance with the requirements of Article 108 EPC
11.4. Reimbursement of appeal fee in case of interlocutory revision
11.4.1 Requirements
11.4.2 Competence to decide on reimbursement
11.4.3 Examining division should have rectified decision
11.4.4 A rectification decision maintaining earlier decision
11.4.5 Re-opening examination after rectification
11.5. Allowability of the appeal
11.6. Substantial procedural violation
11.6.1 Violation must be of a procedural nature
11.6.2 Violation must be substantial and affect the entire proceedings
11.6.3 Procedural violation must be committed by the department whose decision is under appeal
11.6.4 Search
11.6.5 Guidelines
11.6.6 Request for interview
11.6.7 Oral proceedings
a) Failure to summon for oral proceedings
b) Submissions of parties as response to summons
c) No reasons for refusal of request for postponement
d) No reasons for refusal of request to change location for oral proceedings
e) Repeated postponements of oral proceedings
f) Minutes
11.6.8 Right to be heard
11.6.9 Inadequate reasons given in the decision at first instance
11.6.10 Error of judgment by a department of first instance
a) Communications
b) Wrong assessment of prior art or technical content
c) Error in the application of the law
d) Board reaches a different conclusion than the department of first instance
e) Exercising of discretion
f) Wrong procedure adopted
g) Following earlier decisions
11.6.11 Cases concerning the decision-making process and the decision
a) Issuing of decision
b) Content of decision
c) Requests
d) Amendments
e) Signature on decision and minutes
f) Composition of opposition division
11.6.12 Partiality
11.6.13 Suspensive effect of appeal
11.6.14 Non-compliance with order of the board
11.6.15 Referral pending before Enlarged Board
11.6.16 Refusal of application on one ground only
11.6.17 Cases concerning documentation and communications passing between the EPO and the parties
a) Ambiguous communication or wrong form
b) No reply to communication under Article 101 EPC
c) Wrong type of communication
d) Period set for opponent to reply to patentee's response
e) Observations not forwarded to other party
f) Appointment of professional representative
g) Warning in relation to a grace period
11.7. Reimbursement must be equitable
11.7.1 Causal link between substantial procedural violation and filing of appeal
11.7.2 Conduct of appellant
a) Reimbursement held not to be equitable
b) Reimbursement held to be equitable
11.8. Reimbursement in full under Rule 103(1)(b) EPC
11.9. Revised Rule 103 EPC on partial reimbursement of the appeal fee
11.10. Partial reimbursement (75%) under Rule 103(2) EPC
11.11. Partial reimbursement (50%)
11.11.1 Partial reimbursement under former Rule 103(2) EPC
11.11.2 Partial reimbursement (50%) under Rule 103(3) EPC
11.12. Partial reimbursement (25%) under Rule 103(4) EPC
11.13. Communication in preparation for the oral proceedings
11.14. Reimbursement of the appeal fee outside of the scope of Rule 103 EPC because of a violation of the principle of the protection of legitimate expectations
B. Proceedings before the Enlarged Board of Appeal
1. Introduction
2. Referral under Article 112 EPC
2.1. General
2.2. Composition
2.3. Referral by a board of appeal
2.3.1 General
2.3.2 Discretion of the board
2.3.3 Relevance of the referred question for the underlying case
2.3.4 Question of law
2.3.5 Pending proceedings
2.3.6 Ensuring uniform application of the law
2.3.7 Point of law of fundamental importance
2.4. Referral by the President of the EPO
2.4.1 General
2.4.2 Discretion of the President
2.4.3 Differing decisions
2.4.4 Two boards of appeal
2.5. Procedural issues
2.5.1 Question already decided by the Enlarged Board
2.5.2 Question already pending before the Enlarged Board
2.5.3 Stay of first instance proceedings following a referral
2.5.4 Stay of appeal proceedings following a referral
3. Petition for review under Article 112a EPC
3.1. General
3.2. Transitional provisions
3.3. Article 112a(1) EPC – adversely affected party entitled to file a petition for review
3.4. Scope of review by the Enlarged Board of Appeal
3.4.1 Article 112a(2) EPC – grounds for a petition for review
3.4.2 Grounds listed exhaustively
3.4.3 No suspensory effect – review of substantive law excluded
3.5. Petitions for review of an interlocutory decision
3.6. Obligation to raise objections
3.6.1 Purpose of Rule 106 EPC
3.6.2 Requirements of a valid objection
a) Recognisable immediately as an objection, defect clear and unambiguous
b) Objection raised in good time by persons capable of validly doing so
c) Different defects must be objected to and considered separately
3.6.3 Examples of invalid objections
3.6.4 Minutes as evidence that the objection was raised
3.6.5 Objection could not have been raised
3.6.6 Compliance with Rule 106 EPC left open
3.7. Contents of the petition for review
3.7.1 Petition must be adequately substantiated
3.7.2 Non-compliance with Rule 107 EPC and failure to remedy a deficiency
3.8. Time limit for filing a petition for review
3.9. Article 12(1) RPEBA – late-filed submissions in the review procedure
3.10. Rule 109 EPC – composition of the Enlarged Board and review procedure
3.10.1 Composition of the Enlarged Board of Appeal
3.10.2 Involvement of parties other than the petitioner in petition for review proceedings
3.10.3 Group parties
3.10.4 Procedural efficiency
3.11. Factual bases for the review – minutes and grounds for the decision
3.12. Burden of proof
3.13. Effects of a successful petition for review
3.13.1 Decision of board of appeal set aside
3.13.2 Replacement of board members
3.13.3 Reimbursement of the fee for petitions for review
4. Grounds for petition for review
4.1. Article 112a(2)(a) EPC – alleged breach of Article 24 EPC
4.2. Article 112a(2)(b) EPC – person not appointed as a board member
4.3. Article 112a(2)(c) EPC – alleged fundamental violation of Article 113 EPC
4.3.1 General
4.3.2 "Fundamental" violation of Article 113 EPC – causal link and adverse effect
4.3.3 No prior assessment of the merits of a submission
4.3.4 Objective approach – board's intention irrelevant
4.3.5 No obligation to provide detailed reasons for a decision in advance
4.3.6 Boards' obligation to remain neutral
4.3.7 Parties' obligation to participate actively in the appeal proceedings
4.3.8 Reasons for a decision allegedly surprising
a) No opportunity to comment, surprising reasons
b) Grounds not emanating from the board
c) Subjective surprise
d) Reasoning formed part of the proceedings
4.3.9 Timing of a decision allegedly surprising
4.3.10 Consideration of the parties' arguments in the written decision
a) Requirement to have comments considered
b) No obligation to consider each and every argument
4.3.11 Parties' obligation to know the case law, references to decisions
4.3.12 No right to be heard separately on all requests
4.3.13 No right to a further hearing at first instance
4.3.14 No right to a referral under Article 112 EPC
4.3.15 No right to a communication; communication allegedly misleading
4.3.16 Late-filed submissions – boards' discretion under Article 13 RPBA 2007
4.3.17 Alleged violation of Article 113(2) EPC
4.3.18 Further examples of unsuccessful petitions
4.3.19 Successful petitions under Article 112a(2)(c) EPC
4.4. Article 112a(2)(d) EPC – any other fundamental procedural defect
4.4.1 Rule 104(a) EPC – failure to arrange requested oral proceedings
4.4.2 Rule 104(b) EPC – failure to decide on a party's request
4.4.3 Successful petition under Rule 104(b) EPC
4.5. Article 112a(2)(e) EPC – criminal act having an impact on a decision
5. Removal from office of a board member
5.1. General
5.2. Composition
5.3. Removal and judicial independence
5.4. Independence from disciplinary proceedings
5.5. Adversarial judicial proceedings
5.6. Publication of the decision
5.7. Reimbursement of costs
C. Proceedings before the Disciplinary Board of Appeal
1. Introduction
2. European qualifying examination (EQE)
2.1. Formalities and conditions for registration and enrolment
2.1.1 Required qualification or equivalent knowledge
2.1.2 Professional experience
2.2. Examination conditions – principle of equal treatment
2.2.1 Application of the EQE language rules
2.2.2 Other circumstances
2.3. Complaints about the conduct of the examination – duties of the Examination Board
2.4. Setting, marking and grading
2.4.1 Setting and marking the pre-examination
2.4.2 Case law on pre-examination questions and marking not applicable to the EQE
2.4.3 Marking the EQE answer papers consistently
2.4.4 Marking the EQE answer papers fairly
2.5. Substantiation of EQE decisions
2.6. Appeals against decisions of the Examination Board and the Examination Secretariat
2.6.1 Competence of the Disciplinary Board of Appeal
2.6.2 Procedural aspects
a) Requirements for appeal – payment of appeal fee
b) Rectification of decisions
c) Oral proceedings
2.6.3 Objective review of the marks awarded in the examination
2.6.4 Review of the marking of the pre-examination
2.6.5 Legitimate interest
3. Disciplinary matters
3.1. Disciplinary measures
3.2. Appealability of decisions of the epi Disciplinary Committee
4. Code of Professional Conduct
4.1. General professional obligations
4.2. Professional secrecy
4.3. Advertising
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
3.1. Competence of the EPO as designated or elected Office
3.2. Remedies under the PCT applied by the EPO as designated Office
3.2.1 Review (Art. 25 PCT, Art. 24(2) PCT)
3.2.2 Opportunity to correct before designated Offices (Art. 26 PCT)
3.2.3 Excusing of delays in meeting time limits (Art. 48 PCT, R. 82bis PCT)
3.2.4 Rectification of errors made by the receiving Office or the International Bureau (R. 82ter PCT)
3.2.5 Restoration of the right of priority (R. 49ter PCT)
4. Language of the proceedings
5. Priority
VII. Institutional matters
1. Legal status of the EPO boards of appeal
1.1. The judiciary of the European Patent Organisation
1.2. Boards of appeal as judicial authorities
1.2.1 Courts of law under the EPC
1.2.2 Tribunals under Article 6 of the European Convention on Human Rights
1.2.3 Judicial or quasi-judicial authorities under the TRIPS Agreement
1.2.4 Courts according to national case law
1.2.5 Cases pending before the German Federal Constitutional Court concerning the independence of the boards of appeal
1.3. Not a court or tribunal of an EU Member State
1.3.1 Relationship with EU law
1.4. Power to amend the RPBA under Article 23(4) EPC
1.5. Nature of the case law of the boards of appeal – no binding precedents
1.6. Nature of national case law – not binding on the boards of appeal
2. Protocol on Recognition
3. Extension agreements and ordinances
3.1. Legal nature
3.2. No jurisdiction of the boards of appeal
3.3. Non-applicability of Article 105(1)(a) EPC
4. Administrative agreements under Article 10(2)(a) EPC
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

7.2.4 Field of pharmaceutical combinations (drug-drug interactions)

See T 391/18 above on the need in the field of pharmaceutical combinations to assess drug-drug interactions for each drug combination.

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