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Overview
FOREWORD by the President of the Boards of Appeal
1
Board of Appeal and Enlarged Board of Appeal Case Law 2020
2
I. PATENTABILITY
A. Exceptions to patentability
1. Product claims for plants or plant material
2. Medical methods
4
2.1 One surgical step in a multi-step method
B. Novelty
5
1. Availability to the public – obligation to maintain secrecy
2. Ascertaining differences – distinguishing features
6
3. Chemical inventions and selection inventions – lists
7
4. Second medical use
8
5. Second (or further) non-medical use
C. Inventive step
10
1. Distinction between plausibility and obviousness
2. Closest prior art – most promising starting point
3. The skilled person's level of knowledge
13
4. Effect not made credible within the whole scope of claim – neural network
5. Assessment of inventive step
14
5.1 Technical character of an invention
5.2 The aim to be achieved in the formulation of the technical problem
15
II. PATENT APPLICATION AND AMENDMENTS
19
A. Claims
1. Clarity of claims – indication of all essential features
2. Clarity of a claim specifying a norm or standard
20
3. Claims supported by the description
21
4. Claim terms with a well-established meaning in the art – use of the description
22
B. Unity of invention
23
1. Determining whether one or several "inventions" – complete search – refund of further search fee
C. Sufficiency of disclosure
25
1. Reproducibility – neural network
2. Level of disclosure required for medical use – plausibility
26
D. Priority
27
1. Right of priority of the applicant or its successor in title
1.1 Identity of applicants – multiple applicants in the priority application
E. Amendments
30
1. Article 123(2) EPC – added subject-matter
1.1 Disclosure derived from the whole of the application as filed
1.2 Forming a range by combination of end-points of disclosed ranges
31
1.3 Selection from lists – converging alternatives
32
1.4 Disclosed disclaimers
34
2. Extension of the protection conferred
2.1 Change of claim category
F. Divisional applications
35
1. Designation of contracting states in a divisional application
III. RULES COMMON TO ALL PROCEEDINGS BEFORE THE EPO
37
A. Right to be heard
1. The right to be heard in oral proceedings
B. Oral proceedings
1. Oral proceedings held by videoconference
C. Law of evidence
40
1. Evaluation of evidence by the department of first instance
D. Suspected partiality
43
1. Suspected partiality of members of the departments of first instance
1.1 Remittal and rehearing of a case
E. Formal aspects of decisions of EPO departments
45
F. Apportionment of costs
46
G. Rules relating to Fees
1. No refund of duly paid renewal fees on account of time taken for examination proceedings
2. Debit orders – underpayment of the fee for appeal
48
IV. PROCEEDINGS BEFORE THE DEPARTMENTS OF FIRST INSTANCE
49
A. Examination procedure
1. Decisions with no text submitted or agreed by the applicant (Article 113(2) EPC)
2. Approval of the text by the applicant
50
3. Amendments after the decision to grant
52
4. Withdrawal of the patent application
53
4.1 Correction of the withdrawal of the application under Rule 139 EPC
B. Opposition procedure
55
1. Filing and admissibility requirements – payment of opposition fee
2. Late submissions – concept of "in due time"
56
3. Amendments in opposition proceedings
57
3.1 Rule 80 EPC
3.2 Time frame for filing amendments
59
V. PROCEEDINGS BEFORE THE BOARDS OF APPEAL
63
A. Appeal procedure
1. RPBA 2020
1.1 Primary object of the appeal proceedings – Article 12(2) RPBA 2020
1.2 Reasons for decisions in abridged form
64
2. Party adversely affected (Article 107 EPC)
65
3. Reduced fee for appeal filed by a natural person or an entity
66
4. Content of the statement of grounds of appeal
71
5. Review of first-instance discretionary decisions
72
6. New submissions on appeal
74
6.1 Late submission of new arguments
6.2 Principles applying to late submissions – inter partes proceedings – RPBA 2007
75
6.3 Article 12(4) RPBA 2007
76
6.4 State of proceedings – procedural economy – RPBA 2007
77
6.5 Amendment to a party's case – RPBA 2020
6.6 Submissions made in the statement of grounds or the reply – first stage of the appeal proceedings – Article 12(3) to (6) RPBA 2020
80
6.7 Submissions made after filing of statement of grounds or reply – second stage of the appeal proceedings – Article 13(1) RPBA 2020
82
6.7.1 New lines of attack in respect of inventive step based on documents submitted during first-instance proceedings – not admitted
6.7.2 New documents in response to experimental data submitted by the patent proprietor – admitted
83
6.8 Submissions made after notification of summons – third stage of the appeal proceedings – transitional cases
84
6.8.1 Simultaneous application of Article 13 RPBA 2007 and Article 13(1) RPBA 2020
6.8.2 Applicability of Article 13(2) RPBA 2020 in cases of postponement of oral proceedings
87
6.8.3 New request in response to preliminary opinion of the board clarifying a party's objections – admitted
88
6.8.4 New auxiliary requests in response to the board's preliminary opinion – fundamental importance of the point at issue already clear beforehand – not admitted
89
6.8.5 Inventive step attack substantiated for the first time at oral proceedings – not admitted
90
6.8.6 Limitation not leading to any new disputed points of fact or patent law and prima facie allowable – requests admitted
6.8.7 Request does not prima facie overcome objection – not admitted
91
6.9 Submissions made after notification of summons – third stage of appeal proceedings – Article 13(2) RPBA 2020
92
6.9.1 Oral proceedings cancelled after notification of summons – Article 13(2) RPBA 2020 still applies
6.9.2 New request based on request filed with statement of grounds and overcoming new objections raised in board's communication – admitted
94
6.9.3 New request based on request filed in response to reply of the respondent and containing editorial amendments to remove inconsistencies – admitted
6.9.4 New request in response to board's preliminary opinion based on earlier objections – not admitted
95
6.9.5 New request in response to objections which do not go beyond the framework of the board's initial objection – not admitted
96
6.9.6 New request in response to change in the board's opinion – not admitted as objection and arguments already known
98
6.9.7 Amendment not adding anything of substance to the discussion of the objection raised – not admitted
99
6.9.8 New document and new lines of attack in response to board's preliminary opinion which was exclusively based on earlier submissions – not admitted
7. Remittal to the department of first instance
100
7.1 Article 11 RPBA 2020 – special reasons
7.2 Incomplete search
103
7.3 Remittal for adaptation of the description
104
7.4 Ordering a different composition of the department of first instance
105
8. Reimbursement of appeal fees
8.1 Substantial procedural violation
8.2 Excessive length of proceedings
106
8.3 Withdrawal of appeal or withdrawal of request for oral proceedings under Rule 103(4) EPC (25%)
107
B. Proceedings before the Enlarged Board of Appeal
113
1. Referral by the President of the EPO
2. Grounds for petition for review
115
2.1 Article 112a(2)(c) EPC – alleged fundamental violation of Article 113 EPC
ANNEXES
ANNEX 1
117
Decisions discussed in the Case Law Report 2020
ANNEX 2
127
Cited decisions
ANNEX 3
133
Headnotes/catchwords to 2020 decisions which have been published in the Official Journal
ANNEX 4
134
Referrals to the Enlarged Board of Appeal
