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Citation: Supplementary publication 4, OJ EPO 2020, Insert

Online publication date: 18.6.2020

CONTENT

FOREWORD by the President of the Boards of Appeal	1
BOARD OF APPEAL AND ENLARGED BOARD OF APPEAL CASE LAW 2018 AND 2019	2
I. PATENTABILITY	2
A. Exceptions to patentability	2
1. Patentability of biological inventions	2
2. Product claims for plants or plant material	4
3. Medical methods	6
3.1 "Treatment by surgery" in the case law since G 1/07	6
3.2 Apparatus claim – disguised method claim?	7
B. Novelty	9
1. Common general knowledge	9
1.1 Specialist journals as common general knowledge	9
2. Availability to the public	9
2.1 Public prior use – internal structure or composition of a product	9
2.2 The concept of "the public" – public library	11
2.3 Public availability of documents submitted for standardisation	11
3. Determining the content of the relevant prior art	13
3.1 Taking implicit features into account	13
4. Ascertaining differences	13
4.1 Functional features	13
5. Chemical inventions and selection inventions	14
5.1 Achieving a higher degree of purity	14
6. First and second medical use – new therapeutic application based on the group of subjects to be treated	15
7. Second (or further) non-medical method – novelty criteria for product claims with purpose characteristics	16
C. Inventive step	16
1. Problem and solution approach	16
2. Determination of closest prior art in general	17
3. Assessment of inventive step	17
3.1 Treatment of technical and non-technical features	17
3.2 Problem and solution approach when applied to "mixed" inventions	20
3.3 Mental activities based on data visualisation	21
3.4 Examples of lack of inventive step – selection from obvious alternatives	22
II. PATENT APPLICATION AND AMENDMENTS	23
A. Claims	23
1. Interpretation of ambiguous terms or confirmation of the text of a claim	23
B. Unity of invention	23
1. Assessment of lack of unity and of requests for refund of further search fees in examination proceedings	23
C. Sufficiency of disclosure	24
1. Clarity and completeness of disclosure	24
1.1 Parameters	24
2. Reproducibility without undue burden	27
2.1 Occasional failure	27
3. The requirement of sufficiency of disclosure in the biotechnology field	28
3.1 Deposit of living material	28
4. The relationship between Article 83 and Article 84 EPC	29
4.1 Article 83 EPC and clarity of claims	29
5. Evidence	30
D. Priority	31
1. Right of priority of the applicant	31
2. First application in respect of the invention	33
2.1 Identity of invention	33
3. Multiple priorities or partial priority for one claim	34
3.1 Application of G 1/15 in the jurisprudence of the boards	34
E. Amendments	35
1. Extension beyond the content of the application as filed – "US-style" dependencies	35
2. Disclaimers	37
2.1 Accidental anticipation	37
2.2 Undisclosed disclaimer must not be related to the teaching of the invention	37
3. Extension of the protection conferred	39
3.1 Article 123(3) EPC and Article 69 EPC	39
3.2 Replacement of drawings	40
3.3 Change of claim category	41
F. Divisional applications	42
1. Request to postpone decision concerning the earlier European patent application	42
2. Double patenting	43
2.1 Referral decision	43
2.2 Same subject-matter claimed	43
III. RULES COMMON TO ALL PROCEEDINGS BEFORE THE EPO	45
A. The principle of the protection of legitimate expectations	45
1. Knowledge of the relevant legal provisions and the case law	45
2. Obligation to draw attention to easily remediable deficiencies	45
B. Right to be heard	46
1. Decision must demonstrably show that arguments were heard and considered	46
2. No obligation to address each and every argument	47
3. The requirement of a text agreed by the applicant	47
C. Oral proceedings	48
1. Right to oral proceedings in examination, opposition and appeal proceedings	48
2. Preparation of oral proceedings – fixing or changing the date for oral proceedings	50
D. Time limits, date of receipt, further processing and interruption of proceedings	51
1. Date of receipt of documents transmitted by fax	51
2. Interruption of proceedings because of insolvency (Rule 142(1)(b) EPC)	52
E. Re-establishment of rights	54
1. Date the error ought to have been noticed is decisive	54
F. Languages	55
1. Derogations from the language of the proceedings in oral proceedings	55
G. Formal aspects of decisions of EPO departments	56
1. Form of decisions	56
1.1 Signatures on a decision under Rule 113 EPC	56
1.2 Deficient reasoning insufficient for the purposes of Rule 111(2) EPC	56
H. Inspection of files, European Patent Register and stay of proceedings	57
1. Stay of proceedings under Rule 14(1) EPC	57
2. Rule 14(3) EPC	58
I. Intervention	58
1. Admissibility	58
1.1 National infringement proceedings	58
J. Apportionment of costs	59
K. Notifications	61
1. Notification by postal services	61
IV. PROCEEDINGS BEFORE THE DEPARTMENTS OF FIRST INSTANCE	62
A. Examination procedure	62
1. Decisions with no text submitted or agreed by the applicant (Article 113(2) EPC)	62
2. Amendments and corrections requested according to Rule 71(6) EPC	64
3. Additional search necessary: limited discretion of the examining division	64
B. Opposition procedure	65
1. Filing and admissibility requirements – sufficient substantiation of grounds for opposition	65
2. Late submission	68
2.1 Concept of "in due time"	68
2.2 Exercise of discretion – prima facie relevance	69
2.3 New argument versus new chain of reasoning	69
3. Amendments in opposition proceedings	70
3.1 Time frame for filing amendments – discretion of the opposition division	70
3.2 Scope of examination of amendment	72
V. PROCEEDINGS BEFORE THE BOARDS OF APPEAL	73
A. Appeal procedure	73
1. Filing and admissibility of the appeal	73
1.1 Party adversely affected (Article 107 EPC)	73
1.2 Appeal filed within the time limit – correction of error	73
1.3 Statement of grounds of appeal	74
1.3.1 Content of the statement of grounds of appeal	74
1.3.2 References to submissions made at first instance	75
2. Facts under examination – applying Article 114 EPC in appeal proceedings	76
2.1 Fresh ground for opposition on appeal	76
2.2 The board need not examine facts of its own motion	77
3. Review of first-instance discretionary decisions	78
3.1 Submissions admitted at first instance – part of the appeal proceedings	78
4. New submissions on appeal	78
4.1 Amendments after arrangement of the oral proceedings	78
4.2 Communication of a board of appeal	79
4.3 Late submission of new arguments, objections and lines of attack in appeal proceedings	80
4.4 Article 12(4) RPBA 2007	83
4.4.1 Broadening of claims considered by the opposition division	83
4.4.2 Resubmission of requests withdrawn at opposition stage	84
4.5 Converging or diverging versions of claims	86
5. Reimbursement of appeal fees	87
5.1 Appeal deemed not to have been filed or inadmissible appeal	87
5.2 Violation must be of a procedural nature	89
5.3 Error of judgement by a department of first instance	90
5.4 Excessive length of proceedings	90
5.5 Violation of the principle of the protection of legitimate expectations	92
5.6 Withdrawal of appeal under Rule 103(2) EPC	93
B. Proceedings before the Enlarged Board of Appeal	93
1. Article 112a(1) EPC – adversely affected party entitled to file a petition for review	93
2. Time limit for filing a petition for review	94
3. No opportunity to comment, surprising reasons	95
4. Article 112a(2)(a) EPC – alleged breach of Article 24 EPC	95
5. Article 112a(2)(c) EPC – alleged fundamental violation of Article 113 EPC	96
6. No right to a further hearing at first instance	97
7. Successful petitions under Article 112a(2)(c) EPC	98
ANNEXES
ANNEX 1	99
Decisions discussed in the Case Law Report 2018/2019	99
ANNEX 2	110
Cited decisions	110
ANNEX 3	116
Headnotes/catchwords to 2019 decisions which have been (or will be) published	116

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