Case law - general PAD

Question 1

G1/88 Admissibility of appeal by opponent – Opponent’s silence

Answer 1

The fact that an opponent does not make any observations on the text in which the Opposition
Division intends to maintain a European patent after being invited to do so under Rule 82 EPC does not render his appeal inadmissible.

Question 2

G2/91 Reimbursement of appeal fees where several parties have filed an appeal

Answer 2

A person who is entitled to appeal but does not do so and instead confines himself to being a party to the appeal proceedings under Article 107, second sentence, EPC, has no independent right to continue the proceedings if the appellant withdraws the appeal.

Appeal fees cannot be reimbursed simply because several parties to proceedings before the EPO have validly filed an appeal against the same decision.

Question 3

G10/91 Examination appeals from decisions of the Opposition Division

Answer 3

An Opposition Division or a Board of Appeal is not obliged to consider all the grounds for opposition referred to in Article 100 EPC, going beyond the grounds covered by the statement under Rule 76(c) EPC. In principle, the Opposition Division shall examine only such grounds for opposition which have been properly submitted and substantiated in accordance with Article 99(1) in conjunction with Rule 76(c) EPC.

Exceptionally, the Opposition Division may in application of Article 114(1) EPC consider other
grounds for opposition which, prima facie, in whole or in part would seem to prejudice the
maintenance of the European patent. Fresh grounds for opposition may be considered in appeal proceedings only with the approval of the patentee.

See also G7/95, below – novelty and inventive step are (usually) separate grounds.

Question 4

G7/91 and G8/91 Effect of withdrawal of appeal by the sole appellant

Answer 4

In so far as the substantive issues settled by the contested decision at first instance are concerned, a Board of Appeal may not continue opposition appeal proceedings after the sole appellant, who was the opponent in the first instance, has withdrawn his appeal.

See Rule 84(2) EPC for the situation in which an opponent withdraws his opposition during first
instance opposition proceedings.

Question 5

G2/97 Good faith and protection of legitimate expectations

Answer 5

The principle of good faith does not impose any obligation on the Boards of Appeal to notify an
appellant that an appeal fee is missing when the notice of appeal is filed so early that the appellant could react and pay the fee in time, if there is no indication – either in the notice of appeal or in any other document filed in relation to the appeal – from which it could be inferred that the appellant would, without such notification, inadvertently miss the time limit for payment of the appeal fee.

Question 6

G1/12 Identity of the appellant

Answer 6

The answer to question 1 – namely whether when a notice of appeal, in compliance with Rule 99(1)(a) EPC, contains the name and address of the appellant as provided in Rule 41(2)(c) EPC and it is alleged that the identification is wrong due to an error, the true intention having been to file on behalf of the legal person which should have filed the appeal, is it possible to correct this error under Rule 101(2) EPC by a request for substitution by the name of the true appellant – is yes, provided the requirements of Rule 101(1) EPC have been met.

Proceedings before the EPO are conducted in accordance with the principle of free evaluation of evidence. This also applies to the problems under consideration in the present referral.
In cases of an error in the appellant’s name, the general procedure for correcting errors under Rule 139, first sentence, EPC is available under the conditions established by the case law of the boards of appeal.

Question 7

G2/14 Inadmissible appeal or deemed not filed

Answer 7

If a Board of Appeal refers the Grand Board of Appeal by a reference to Article 112 (1) (a) EPC, it is primarily for the referring Board to state in the order for reference that and why it considers a decision of the Enlarged Board of Appeal to be necessary for a ruling in to refer the context of the questions referred to the Board of Appeal before the Board of Appeal in the order for reference.

In any event, the Enlarged Board of Appeal has to examine whether a bill complies with and is
permitted by the provisions of Article 112 (1) (a) EPC (including the criterion of necessity).
However, if the bill is based on an obvious misapplication of a rule of law, with the result that, if the provision is properly applied, a reply to the question by the Grand Chamber of Appeal does not appear to be necessary for the appeal decision, it must be considered inadmissible.

The above is a Google translation from the original German. Despite this decision being issued in 2015, the EPO has not yet translated and published it in the OJ – indicative of its very low relevance. In this case, the appeal was deemed to be filed on time by the Enlarged Board and so the original question was not answered. Rule 126(1) EPC previously required certain notifications to be made by registered letter with advice of delivery (i.e. not including UPS). As the original decision was notified to the representative by UPS and not registered letter, the date of notification calculated by the Enlarged Board was later than the date of notification calculated by the original Board and the Enlarged Board deemed the appeal filed on time. Rule 126(1) has been amended to allow delivery by registered letter with advice of delivery or equivalent.

Question 8

G5/88, G7/88 and G8/88 Administrative Agreement

Answer 8

The capacity of the President of the European Patent Office to represent the European Patent
Organisation by virtue of Article 5(3) EPC is one of his functions but is not one of his powers. The extent of the President’s power is governed by the EPC, but not by Article 5(3) EPC.

To the extent that the Administrative Agreement dated 29 June 1981 between the President of the EPO and the President of the German Patent Office contains terms regulating the treatment of documents intended for the EPO and received by the German Patent Office in Berlin, the President of the EPO did not himself have the power to enter into such an agreement on behalf of the EPO, at any time before the opening of the Filing Office for the EPO in Berlin on 1 July 1989.

In application of the principle of good faith and the protection of the legitimate expectations of users of the EPO, if a person had at any time, since publication of the Agreement in the Official Journal and before 1 July 1989, filed documents intended for the EPO at the German Patent Office in Berlin (otherwise than by hand), the EPO was bound to treat such documents as if it had received them on the date of receipt at the German Patent Office in Berlin.

Question 9

G2/90 Responsibilities of the Legal Board of Appeal

Answer 9

Under Article 21(3)(c) EPC, the Legal Board of Appeal is competent only to hear appeals against
decisions taken by an Examining Division consisting of fewer than four members when the decision does not concern the refusal of a European patent application or the grant of a European patent. In all other cases, i.e. those covered by Article 21(3)(a), (3)(b) and (4) EPC, the Technical Board of Appeal is competent.

The provisions relating to competence in Article 21(3) and (4) EPC are not affected by Rule 13(3)
EPC.

Question 10

G3/03 Reimbursement of the appeal fee following interlocutory revision

Answer 10

In the event of interlocutory revision under Article 109(1) EPC, the department of first instance whose decision has been appealed is not competent to refuse a request by an appellant for reimbursement of the appeal fee.

Rather, it is the Board of Appeal which would have been competent under Article 21 EPC to deal with the substantive issues of the appeal if no interlocutory revision had been granted that is competent to decide on the request.

Question 11

G3/95 Inadmissible referral

Answer 11

The Enlarged Board of Appeal will refuse to rule on a point of law referred by the President of the EPO if it determines that no conflict between two Board of Appeal decisions has occurred.

Question 12

G8/95 Responsibility for deciding on a correction of a decision to grant

Answer 12

An appeal from a decision of an Examining Division refusing a request under Rule 140 EPC for
correction of a decision to grant is to be decided by a Technical Board of Appeal.

Question 13

G1/02 Formality Officers’ powers

Answer 13

Formalities officers may be empowered by the Vice President of the EPO to refuse applications for failure to fulfil specified formal matters.

Question 14

G3/08 Patentability of programs for computers

Answer 14

In exercising his or her right of referral a President of the EPO is entitled to make full use of the
discretion granted by Article 112 (1) (b) EPC, even if his or her appreciation of the need for a referral has changed after a relatively short time.

Different decisions by a single Technical Board of Appeal in differing compositions may be the basis of an admissible referral by the President of the EPO of a point of law to the Enlarged Board of Appeal pursuant to Article 112 (1) (b) EPC.

As the wording of Article 112 (1) (b) EPC is not clear with respect to the meaning of
“different/abweichende/divergent” decisions the provision has to be interpreted in the light of its object and purpose according to Article 31 of the Vienna Convention on the Law of Treaties (VCLT). The purpose of the referral right under 112 (1) (b) EPC is to establish uniformity of law within the European patent system. Having regard to this purpose of the presidential right to refer legal questions to the Enlarged Board of Appeal the notion “different decisions” has to be understood restrictively in the sense of “conflicting decisions”.

The notion of legal development is an additional factor which must be carefully considered when interpreting the notion of “different decision” in Article 112 (1) (b) EPC. Development of the law is an essential aspect of its application, whatever method of interpretation is applied, and is therefore inherent in all judicial activity. Consequently, legal development as such cannot on its own form the basis for a referral, only because case law in new legal and/or technical fields does not always develop in linear fashion, and earlier approaches may be abandoned or modified.

Legal rulings are characterised not by their verdicts, but by their grounds. The Enlarged Board of Appeal may thus take obiter dicta into account in examining whether two decisions satisfy the requirements of Article 112 (1) (b) EPC.

T 424/03, Microsoft does deviate from a view expressed in T 1173/97, IBM, concerning whether a claim to a program on a computer-readable medium necessarily avoids exclusion from patentability under Article 52(2) EPC. However this is a legitimate development of the case law and there is no divergence which would make the referral of this point to the Enlarged Board of Appeal by the President admissible.

The Enlarged Board of Appeal cannot identify any other inconsistencies between the grounds of the decisions which the referral by the President alleges are divergent. The referral is therefore inadmissible under Article 112(1)(b) EPC.

Question 15

G1/11 Competence to hear an appeal regarding refund of search fees

Answer 15

A technical board of appeal is competent to hear an appeal against a decision of the examining
division not to refund the search fees under Rule 64(2) EPC which is not taken together with a
decision granting a European patent or refusing a European patent application.

Question 16

G2/88 Change of claim category

Answer 16

A change of category of granted claims in opposition proceedings is not open to objection under Article 123(3) EPC if it does not result in extension of the protection conferred by the claims as a whole, when they are interpreted in accordance with Article 69 EPC and its Protocol. In this context, the national laws of the Contracting States relating to infringement should not be considered.

An amendment of granted claims directed to “a compound” and to “a composition including such compound”, so that the amended claims are directed to “the use of that compound in a
composition” for a particular purpose, is not open to objection under Article 123(3) EPC.
A claim to the use of a known compound for a particular purpose, which is based on a technical
effect which is described in the patent, should be interpreted as including that technical effect as a functional technical feature, and is accordingly not open to objection under Article 54(1) EPC provided that such technical feature has not previously been made available to the public.

This case corresponds with G6/88, below.

Question 17

G3/89 and G11/91 Correction of the parts of a European patent application or European patent
relating to disclosure

Answer 17

The parts of a European patent application or of a European patent relating to disclosure (the
description, claims and drawings) may be corrected under Rule 139, second sentence, EPC only
within the limits of what a skilled person would derive directly, unambiguously and objectively, using common general knowledge as of the date of filing, from the whole of the documents as filed. Such a correction is of a strictly declaratory nature and thus does not infringe the prohibition of extension under Article 123(2) EPC.

Evidence of what was common general knowledge on the date of filing may be furnished in
connection with an admissible request for correction in any suitable form.

Question 18

G2/92 Non-payment of further search fees

Answer 18

An applicant who fails to pay the further search fees for a non-unitary application when requested to do so by the Search Division under Rule 64(1) EPC cannot pursue that application for the subject matter in respect of which no search fees have been paid. Such an applicant must file a divisional application in respect of such subject matter if he wishes to seek protection for it.

Question 19

G1/93 Conflicting requirements of Article 123 (2) and (3) EPC

Answer 19

If a European patent as granted contains subject matter that extends beyond the content of the application as filed within the meaning of Article 123(2) EPC and which also limits the scope of protection conferred by the patent, the patent cannot be maintained in opposition proceedings unamended, because the ground for opposition under Article 100(c) EPC prejudices the maintenance of the patent. Nor can it be amended by deleting the limiting subject matter from the claims, because such amendment would extend the protection conferred in breach of Article 123(3) EPC. Such a patent can, therefore, only be maintained if there is a basis in the application as filed for replacing such subject matter without violating Article 123(3) EPC.

A feature not disclosed in the application as filed added to the application during examination which, without providing a technical contribution to the subject matter of the claimed invention, merely limits the protection conferred by the patent as granted by excluding protection for part of the subjectmatter of the claimed invention as covered by the application as filed, is not to be considered as subject matter that extends beyond the content of the application as filed within the meaning of Article 123(2) EPC. The ground for opposition under Article 100(c) EPC therefore does not prejudice the maintenance of a European patent that includes such a feature.

The so-called “inescapable trap” – don’t unthinkingly file the amendments your client instructs!

Question 20

G7/93 Amendment after approval of text for grant

Answer 20

Until issue of a decision to grant a patent, an Examining Division has discretion under Rule 137(3), EPC, as to whether or not to allow amendment of the application.

When exercising such discretion an Examining Division must consider all relevant factors. In
particular it must consider and balance the applicant’s interest in obtaining a patent which is legally valid in all of the designated States, and the EPO’s interest in bringing the examination procedure to a close. Having regard to the underlying objective of concluding the granting procedure on the basis of a previously approved text, the allowance of a request for amendment at such a late stage in the granting procedure will be an exception rather than the rule.

Typically amendments are allowed if they do not result in the reopening of examination.

Question 21

G2/95 Replacement of application

Answer 21

The complete documents forming a European patent application, that is the description, claims and drawings, cannot be replaced by way of a correction under Rule 139 EPC by other documents that an applicant had intended to file with its request for grant.

This decision follows logically from G3/89 and G11/91 above.

Question 22

G1/03 and G2/03 Allowability of disclaimers

Answer 22

An amendment to a claim by the introduction of a disclaimer may not be refused under Article 123(2) EPC for the sole reason that neither the disclaimer nor the subject matter excluded by it from the scope of the claim has a basis in the application as filed.

A disclaimer may be allowable in order to:
(i) restore novelty by delimiting a claim against the state of the art under Article 54(3) and (4)
EPC;
(ii) restore novelty by delimiting a claim against an accidental anticipation under Article 54(2)
EPC (an anticipation is accidental if it is so unrelated to and remote from the claimed invention
that the person skilled in the art would never have taken it into consideration when making the
invention); or
(iii) disclaim subject matter which, under Articles 52 to 57 EPC, is excluded from patentability
for non-technical reasons.

A disclaimer should not remove more than is necessary either to restore novelty or to disclaim
subject matter excluded from patentability for non-technical reasons.

A disclaimer that is or becomes relevant for the assessment of inventive step or sufficiency of disclosure adds subject-matter contrary to Article 123(2) EPC.

A claim containing a disclaimer must meet the requirements of clarity and conciseness of Article 84 EPC.

Question 23

G2/10 Disclaiming disclosed subject-matter

Answer 23

An amendment to a claim by the introduction of a disclaimer disclaiming from it subject-matter
disclosed in the application as filed infringes Article 123(2) EPC if the subject-matter remaining in the claim after the introduction of the disclaimer is not, be it explicitly or implicitly, directly and unambiguously disclosed to the skilled person using common general knowledge, in the application as filed.

Determining whether or not that is the case requires a technical assessment of the overall technical circumstances of the individual case under consideration, taking into account the nature and extent of the disclosure in the application as filed, the nature and extent of the disclaimed subject-matter and its relationship with the subject-matter remaining in the claim after the amendment.

Question 24

G1/16 Disclaimer/OLED

Answer 24

For the purpose of considering whether a claim amended by the introduction of an undisclosed
disclaimer is allowable under Article 123(2) EPC, the disclaimer must fulfil one of the criteria set out in point 2.1 of the order of decision G 1/03.

The introduction of such a disclaimer may not provide a technical contribution to the subject-matter disclosed in the application as filed. In particular, it may not be or become relevant for the assessment of inventive step or for the question of sufficiency of disclosure. The disclaimer may not remove more than necessary either to restore novelty or to disclaim subject-matter excluded from patentability for nontechnical reasons.

Question 25

G1/10 Request to correct patent

Answer 25

Since Rule 140 EPC is not available to correct the text of a patent, a patent proprietor’s request for such a correction is inadmissible whenever made, including after the initiation of opposition
proceedings.