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Citation: Supplementary publication 3, OJ EPO 2018, Insert

Online publication date: 18.6.2018

FOREWORD by the President of the Boards of Appeal	1
BOARDS OF APPEAL AND ENLARGED BOARD OF APPEAL CASE LAW 2017	2
I. PATENTABILITY	2
A. Exceptions to patentability	2
1. Essentially biological processes for the production of plants	2
2. Therapeutic methods	3
2.1 Methods with both therapeutic and non-therapeutic indications	3
B. Novelty	5
1. State of the art	5
2. Availability to the public	6
2.1 Advertising brochure	6
2.2 Public prior use	7
2.2.1 Internal structure or composition of a product	7
2.3 Obligation to maintain secrecy	7
2.4 Making samples/products available for test purposes	8
3. Determining the content of the relevant prior art	10
3.1 General rules of interpretation	10
4. First and second medical use	10
4.1 Interpretation of "substance or composition"	10
C. Inventive step	11
1. Closest prior art	11
1.1 Speculative character	11
2. Assessment of inventive step	12
2.1 Technical character of the invention	12
2.2 Assessment of features relating to mathematical algorithms	13
2.3 Example of lack of inventive step	14
3. Secondary indicia in the assessment of inventive step	14
II. PATENT APPLICATION AND AMENDMENTS	15
A. Claims	15
1. Clarity of claims	15
2. Interpretation of claims	15
B. Unity of invention	15
1. Unsearched subject-matter and applicability of Rule 137(5) EPC or former Rule 164(2) EPC	15
C. Sufficiency of disclosure	17
1. The relationship between Article 83 and Article 84 EPC	17
D. Priority	18
1. Priority right of the applicant or his successor in title	18
2. Disclosure in the previous application as a whole – solution of the same problem	20
3. First application – identity of invention	21
4. Multiple priorities for one claim – partial priority – application of G 1/15	22
E. Amendments	27
1. Article 123(2) EPC – added subject-matter	27
1.1 Gold standard and essentiality test	27
1.2 Ranges – setting a new end-point with a value that has not been expressly disclosed	28
1.3 Disclaimers	29
2. Article 123(3) EPC	31
2.1 Extent of protection	31
F. Divisional applications	32
1. Inadmissible extension – amending the description	32
2. Language for filing divisional application	32
3. Pendency of earlier application	33
III. RULES COMMON TO ALL PROCEEDINGS BEFORE THE EPO	34
A. The principle of the protection of legitimate expectations	34
1. Contradictory acts	34
B. Right to be heard	35
1. Surprising grounds or evidence	35
1.1 The meaning of "grounds or evidence"	36
2. Text submitted or agreed by applicant (patent proprietor) – Article 113(2) EPC	37
2.1 General	37
2.2 Cases where the EPO is uncertain or mistaken about the approval of the text	39
C. Oral proceedings	40
1. Late submission of new facts and evidence in the preparation for oral proceedings – Rule 116 EPC (Rule 71a EPC 1973)	40
2. Doubt as to the nature of the request for oral proceedings	40
D. Re-establishment of rights	41
1. Right to file request for re-establishment of rights	41
2. Loss of rights as a direct consequence by virtue of the EPC	41
3. Admissibility of requests for re-establishment of rights	43
E. Languages	45
1. Translations	45
F. Law of evidence	46
1. Taking of evidence	46
1.1 Time frame for submitting evidence	46
2. Evaluation of evidence	46
2.1 Witness testimony and written statements	46
2.2 Archives and internet publications	47
2.3 Standard of proof	49
2.3.1 Receipt of formal documents	49
G. Main and auxiliary requests	49
1. Request not sufficiently defined	49
2. Withdrawal of request	50
H. Suspected partiality	51
I. Formal aspects of decisions of EPO departments	51
1. Opposition division	51
2. Completion of the internal decision-making process	52
3. Department of first instance issues more than one decision	52
4. Examples of non-compliance with the requirements of Rule 111(2) EPC	53
5. Decisions according to the state of the file	53
J. Notification	54
1. Forms of notification	54
2. Spheres of risk and apportioning the burden of proof	54
K. Representation	56
1. Legal practitioners entitled to act as professional representatives	56
IV. PROCEEDINGS BEFORE THE EPO	57
A. Examination procedure	57
B. Special features of opposition and appeal proceedings	58
1. Apportionment of costs	58
1.1 Acts or omissions prejudicing the timely and efficient conduct of oral proceedings	58
C. Opposition procedure	60
1. Amendments in opposition proceedings	60
2. Correction of the name of the opponent	61
3. No consideration of late-filed evidence of public prior use	61
D. Appeal procedure	62
1. Filing and admissibility of appeal	62
1.1 Entitlement to appeal – party adversely affected	62
1.2 Entitlement to appeal – procedural status of the parties	63
1.3 Form and content of notice of appeal (Rule 99(1) EPC)	63
1.4 Statement of grounds of appeal	64
2. Interlocutory revision	65
3. Subject-matter under examination and non-opposed dependent claims	65
4. Review of first-instance decisions	66
4.1 The boards' discretion	66
4.1.1 Scope for reviewing discretion	66
4.1.2 Own discretion to admit submissions not admitted at first instance	69
4.2 Review of an opposition division's discretionary decision (not) to admit a new ground for opposition	70
4.3 Review of discretion – stay of proceedings	71
5. Late submission	71
5.1 Late-filed documents	71
5.2 Unsubstantiated requests	72
5.3 Late-filed requests	72
5.3.1 Response to new objections	72
5.3.2 Diverging versions of claims	73
5.3.3 Reverting to the patent as granted	73
6. Reimbursement of appeal fees	74
6.1 Distinction between an appeal deemed not to have been filed and an inadmissible appeal	74
6.2 Substantial procedural violation	75
6.2.1 Oral proceedings	75
6.2.2 No reasons for refusal of request for postponement	75
E. Proceedings before the Enlarged Board of Appeal	76
1. Petition for review under Article 112a EPC	76
V. DISCIPLINARY BOARD OF APPEAL	79
1. Objective review of the marks awarded	79
VI. THE EPO ACTING AS A PCT AUTHORITY – EURO-PCT APPLICATIONS	80
1. Competence of the EPO acting as designated or elected Office	80
ANNEXES
ANNEX 1	82
Decisions discussed in the Case Law Report 2017
ANNEX 2	91
Cited decisions
ANNEX 3	96
Headnotes/catchwords to 2017 decisions which have been (or will be) published

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