[G 2/12 and G 2/13] Allowable product claim directed to plants or plant material such as plant parts or fruits.
Fact that only an essentially biological process or a product-by-process claim is available for the claimed subject matter (other than plant varieties) does not make the claims unallowable. Product-by-process claim protects the product, not the process and is only allowable if (a) it is impossible to define the claimed product other than in terms of a process of manufacture and (b) the claimed product itself meets the patentability requirements. Rules for interpretation of EPC: it is established in the jurisprudence that the principles of interpretation provided for in Articles 31 and 32 Vienna Convention are to be applied when interpreting the EPC. Decisions and opinions given by national courts in interpreting the law may also be taken into consideration. No general notion of an obligatory restrictive construction of exceptions to patentability.
When considering if an amended patent meets the requirements of article 101(3) EPC, the patent claims may be examined for compliance with of Article 84 EPC only when, and then only to the extent that the amendment introduces non-compliance with Article 84 EPC.
[G 2/07 and G 1/08] Excluded essentially biological process: process containing sexually crossing. Excluded also if process of sexually crossing contains technical step enabling or assisting sexual crossing. Non-excluded; process containing step which by it-self introduces or modifies a trait in the genome of the plant produced. Nature of additional technical step irrelevant.
[G 3/08] Referral non-admissable: no conflict in case law of Boards of Appeal. The present position of the case law is thus that a claim in the area of computer programs can avoid exclusion under Articles 52(2)(c) and (3) EPC merely by explicitly mentioning the use of a computer or a computer-readable storage medium. If a claim to program X falls under the exclusion of Articles 52(2) and (3) EPC, a claim which specifies no more than "Program X on a computer-readable storage medium," or "A method of operating a computer according to program X," will always still fail to be patentable for lack of an inventive step under Articles 52(1) and 56 EPC.
[T 1063/06] Reach-through claim, also directed to future inventions: Patent protection limited to actual disclosed contribution to the art. Insufficient disclosure: In the absence of any selection rule in the application in suit, the skilled person, without the possibility of having recourse to his common general knowledge, must resort to trial-and-error experimentation on arbitrarily selected chemical compounds to establish whether they possess the capability according to the claim; this represents for the skilled person an invitation to perform a research programme and thus an undue burden.
[G 2/08] Second medical indication need not be treatment of another disease. Dosage regimes: The claimed definition of the dosage regime must not only be verbally different from what was described in the state of the art but also reflect a different technical teaching. Swiss type claims no longer necessary. Freedom of medical practitioners to prescribe generics may be restricted: If deemed necessary, the freedom of medical practitioners may be protected by other means on the national level.
[G 1/07] Excluded from patentability: method for treatment by surgery: A claimed imaging method, in which, when carried out, maintaining the life and health of the subject is important and which comprises or encompasses an invasive step representing a substantial physical intervention on the body which requires professional medical expertise to be carried out and which entails a substantial health risk even when carried out with the required professional care and expertise, is excluded from patentability as a method for treatment of the human or animal body by surgery pursuant to Article 53(c) EPC. A claim comprising a step encompassing an embodiment of excluded method has to be amended. The exclusion from patentability under Article 53(c) EPC can be avoided by disclaiming the embodiment. No treatment by surgery merely because data obtained by method allow a decision on course of action for surgical intervention.
IPPT20091016, EBA-EPO, Computer Implemented Inventions
[G 3/08] No suspicion of partiality: According to established case law of the Boards of Appeal, of the Enlarged Board and also of national courts of member states, the mere fact that a board member has expressed a view on the legal issue to be decided on a previous occasion, be it in a prior decision or in literature, be it in a prior position in the EPO or as an expert for external political institutions, cannot lead to the conclusion of doubts as to impartiality. Nor does a purely subjective impression that the opinions of a board member might be disadvantageous to a particular interest justify an exclusion
IPPT20090615, EBA-EPO, Kos Life Science
[G 2/08] No suspicion of partiality: the present Board cannot identify in the corpus of said decision any reason justifying a suspicion of partiality or establishing a preconceived mind. […]. It is sufficient to state that said decision does not contain any bold contention, nor has it been substantiated in "such outspoken, extreme or unbalanced terms" that it would preclude the capacity of the member concerned from dealing with the pending referral with an open mind and without preconceived thoughts.
[G 2/06] Products derived from destruction of human embryos excluded from patentability: No patenting of products prepared exclusively by method involving destruction of human embryos, even if method is not claimed.Not of relevance that after the filing date the same products could be obtained without having to recur to a method necessarily involving the destruction of human embryos. Application Rule 28(c) EPC to all pending applications. Request for preliminary ruling by ECJ inadmissable.
[G 1/06] Sequences of divisionals: In the case of a sequence of applications consisting of a root (originating) application followed by divisional applications, each divided from its predecessor, it is a necessary and sufficient condition for a divisional application of that sequence to comply with Article 76(1), second sentence, EPC that anything disclosed in that divisional application be directly and unambiguously derivable from what is disclosed in each of the preceding applications as filed
[G 1/05] Amendment divisional application extending beyond original application: So far as Article 76(1) EPC is concerned, a divisional application which at its actual date of filing contains subject matter extending beyond the content of the earlier application as filed can be amended later in order that its subject-matter no longer so extends, even at a time when the earlier application is no longer pending. Furthermore, the same limitations apply to these amendments as to amendments to any other (non-divisional) applications.
IPPT20061207, EBA-EPO, Exclusion and objection
[G 1/05] Avoidance of appearance of partiality: if a member of a Board of Appeal in a notice of withdrawal gives a ground which may by its nature. Participation in earlier matter as such no ground for exclusion
IPPT20061115, TBA-EPO, DUNS
[T 154/04] Methods of business research are excluded "as such" from patentability under Article 52(2)(c) and (3) EPC: Gathering and evaluating data as part of a busi-ness research method do not convey technical character to the business research method if such steps do not contribute to the technical solution of a technical problem. Principles of patentability: Article 52(1) EPC sets out four requirements to be fulfilled by a patentable invention: there must be an in-vention, and if there is an invention, it must satisfy the requirements of novelty, inventive step, and industrial applicability.
IPPT20060223, TBA-EPO, Microsoft
[T 0424/03] Patentability: no computer program ‘as such’: A computer system including a memory (clipboard) is a technical means, and consequently the claimed method has technical character in accordance with established case law. Moreover, the Board would like to emphasise that a method implemented in a computer system represents a sequence of steps actually performed and achieving an effect, and not a sequence of computer-executable instructions (i.e. a computer program) which just have the potential of achieving such an effect when loaded into, and run on, a computer.
[G 0001/04] Diagnostic method practised o the human or animal body: diagnosis for curative purposes stricto sensu representing the deductive medical or veterinary decision phase as a purely intellectual exercise, including preceding steps and specific interactions with body. Not dependent upon participation by medical or veterinary practitioner or medical or technical support staff. Preceding steps must be practiced on the human or animal body. No specific type and intensity of interaction with the human or animal body required.
Transfer of opposition: The status as an opponent cannot be freely transferred.A legal person who was a subsidiary of the opponent when the opposition was filed and who carries on the business to which the opposed patent relates cannot acquire the status as opponent if all its shares are assigned to another company.
IPPT20050511, TBA-EPO, Max Planck
[T 870/04] Susceptible of industrial application: Some profitable use required. Practical application geared to financial gain. Speculative indication of possible objectives not sufficient. Scientific achievement without practical use is not susceptible of industrial application.
IPPT20050128, EBA-EPO, Highland Industries
[G 0003/03] Reimbursement appeal fee: Board of Appeal instead of department of first instance competent to decide on reimbursement of appeal fee
IPPT20041027, TBA-EPO, Salk Institute
[T 0609/02] Enablement; insufficient disclosure: If the description of a patent specification pro-vides no more than a vague indication of a possible medical use for a chemical compound yet to be identified, later more detailed evidence cannot be used to remedy the fundamental insufficiency of disclosure of such subject-matter.
[T 0540/02] Amendment European patent application: Needs to be directly and unambiguously derivable from application. According to the consistent case law of the Boards of Appeal it is not permissible to extract isolated features from a set of features which have originally been disclosed in combination
IPPT20040426, EBA-EPO, AstraZeneca
[G 0002/02 and G 0003/02] Priorities from India: The TRIPs Agreement does not entitle the applicant for a European patent application to claim priority from a first filing in a State which was not at the relevant dates a member of the Paris Convention but was a member of the WTO/TRIPs Agreement
IPPT20040421, TBA-EPO, Hitachi
[T 258/03] In general, a method involving technical means is an invention. Subject matter consisting of technical and non-technical features can be an invention. In the Board's view, activities falling within the notion of a non-invention "as such" would typically represent purely abstract concepts devoid of any technical implications. Business scheme lacking technical character: Method steps consisting of modifications to a business scheme and aimed at circumventing a technical problem rather than solving it by technical means cannot contribute to the technical character of the subject-matter claimed.
[G 0002/03] Allowability of disclaimer not disclosed in application as filed
IPPT20040408, EBA-EPO, PPG
[G 0001/03] Allowability of disclaimer not disclosed in application as filed.
IPPT20040115, TBA-EPO, Ecolab
[T 962/98] Inadmissable generalization of an example: in order to be acceptable an intermediate generalization must be the result of unambiguous information that a skilled person would draw from the review of the example and the content of the application as filed. The Board does not exclude that there may exist situations where some characteristics taken from a working example may be combined with other features disclosed in a more general context without necessarily creating an objectionable intermediate generalization.
[T 0641/00] Invention can only be made up of those features which contribute to technical character: where a feature cannot be considered as contributing to the solution of any technical problem by providing a technical effect it has no significance for the purpose of assessing inventive step.Formulation technical problem: non-technical feauture of claim may legitimately appear in the formulation of the problem
IPPT20020218, EBA-EPO, HOWARD FLOREY
[G 3/99] Admissibility of joint opposition or joint appeal
IPPT20010531, EBA-EPO, Same Invention
[G 2/98] Priority - same invention. The requirement for claiming priority of ”the same invention”, [...] is to be acknowledged only if the skilled person can derive the subject-matter of the claim directly and unambiguously, using common general knowledge, from the previous application as a whole
[G 1/99] Amended claim – In principle no worse situation opponent/appellant. In principle, an amended claim, which would put the opponent and sole appellant in a worse situation than if it had not appealed, must be rejected. However, an exception to this principle may be made in order to meet an objection put forward by the opponent/appellant or the Board during the ap-peal proceedings, in circumstances where the patent as maintained in amended form would otherwise have to be revoked as a direct consequence of an in-admissible amendment held allowable by the Opposition Division in its interlocutory decision.
IPPT20001127, EBA-EPO, Designation fees
[G 0004/98] Effect of late payment designation fee: Without prejudice to Article 67(4) EPC, the designation of a Contracting State party to the EPC in a European patent application does not retroactively lose its legal effect and is not deemed never to have taken place if the relevant designation fee has not been paid within the applicable time limit.
IPPT20000908,TBA-EPO, Pension Benefit Systems
[T 931/95] Having technical character is an implicit requirement for inventions. Method for doing business as such: If the method is technical or, in other words, has a technical character, it still may be a method for doing business, but not a method for doing business as such. Apparatus claim: a computer system suitably programmed for use in a particular field, even if that is the field of business and economy, has the character of a concrete apparatus in the sense of a physical entity, man-made for a utilitarian purpose and is thus an invention within the meaning of Article 52(1) EPC.
IPPT20000712, EBA-EPO, University Patents
[G 3/98] Six month priority period – art 55(1) EPC: For the calculation of the six-month period the relevant date is the date of the actual filing of the European patent application; the date of priority is not to be taken account of in calculating this period.
IPPT19991220, EBA-EPO, Novartis
[G 1/98] Claims comprising but not individually claiming plant varieties: A claim wherein specific plant varieties are not individually claimed is not excluded from pat-entability under Article 53(b) EPC, even though it may embrace plant varieties. Exclusion of plant varieties is irrespective of way of production
IPPT19990121, EBA-EPO, 19980121, Indupack
[G 3/97] Admissability opposition by straw man: An opposition is not inadmissible purely because the person named as opponent according to Rule 55(a) EPC is acting on behalf of a third party. Such an opposition is, however, inadmissible if the involvement of the opponent is to be regarded as circumventing the law by abuse of process.
[G 4/97] Raising grounds for inadmissibility during appeal: The admissibility of an opposition on grounds relating to the identity of an opponent may be chal-lenged during the course of the appeal, even if no such challenge had been raised before the opposition division. Straw man.
IPPT19981112, EBA-EPO, Good Faith - Unilever
[G 2/97] Principle of good faith: no obligation to notify appellant that appeal fee is missing
[T 1173/97] Computer programs as such: lacking technical character. Further technical effect required: It is necessary to look elsewhere for technical character: It could be found in the further effects deriving from the execution (by the hardware) of the instructions given by the computer program. Where said further effects have a technical character or where they cause the software to solve a technical problem, an invention which brings about such an effect may be considered an invention, which can, in principle, be the subjectmatter of a patent. Potential further technical effect: A computer program product may possess a technical character because it has the potential to cause a predetermined further technical effect. No direct applicability of TRIPs
[G 6/95] Rule 71a(1) EPC does not apply to the boards of appeal: If Rule 71a(1) EPC were to be interpreted as applying to all departments of the EPO, including the boards of appeal, its effect would be directly contradictory to and in conflict with the effect of Article 11(2) RPBA which was adopted pursuant to Article 23(4) EPC as the emanation of the independence of the boards of appeal.
[G 1/95] Fresh ground for opposition cannot be introduced without agreement of the patentee: In a case where a patent has been opposed on the grounds set out in Article 100(a) EPC, but the opposition has only been substantiated on the grounds of lack of novelty and lack of inventive step, the ground of unpatentable subjectmatter based upon Articles 52(1), (2) EPC is a fresh ground for opposition and accordingly may not be introduced into the appeal proceedings without the agreement of the patentee.
IPPT19960416, EBA-EPO, Correction of decision to grant – US Gypsum
[G 8/95] An appeal from a decision of an Examining Division refusing a request under Rule 89 EPC for correction of the decision to grant is to be decided by a Technical Board of Appeal.
IPPT19960219, EBA-EPO, Representation - BOGASKY
[G 4/95] Oral submissions on legal or technical issues by non-qualified representative
IPPT19951127, EBA-EPO, Inadmissible referral
[G 3/95] Inadmissible referral by President of EPO: The referral of the question of law to the Enlarged Board of Appeal by the President of the EPO is inadmissible under Article 112(1)(b) EPC. No cinflict between findings in decisions of Boards of Appeal.
[T 939/92]. No lack of support of claim in case of incredible description: A claim concerning a group of chemical compounds is not objectionable simply because the description does not contain sufficient information in order to make it credible that an alleged technical effect is obtained by all the compounds claimed. Inventiveness requires the achieving of a technical effect: the answer to the question what a skilled person would have done in the light of the state of the art depends in large measure on the technical result he had set out to achieve. he must be assumed to act not out of idle curiosity but with some specific technical purpose in mind.
[G 2/93] Sufficient disclosure: In the case of an invention referred to in Rule 28(1) EPC, the primary function of a culture deposit is to complete an otherwise insufficient written disclosure. The culture deposit constitutes then an essential part of the disclosure. The information concerning the file number of a culture deposit according to Rule 28(1)(c) EPC may not be submitted after expiry of the time limit set out in Rule 28(2)(a) EPC.
IPPT19940816, EBA-EPO, Priority interval
[G 3/93] Right of priority – same invention: A document published during the priority interval constitutes prior art citable under Article 54(2) EPC against a European patent application claiming that priority, to the extent such priority is not validly claimed. This also applies if a claim to priority is invalid due to the fact that the priority document, and the subsequent European application, do not concern the same invention because the European application claims sub-ject-matter not disclosed in the priority document.
[G 9/92] Patent proprietor sole appellant interlocutory deci-sion - no challenge of maintenance patent by non-appealing opponent or Board of Appeal. Opponent sole appellant interlocutory decision – proprietor primarily restricted to patent as main-tained by Opposition Division
IPPT19940714, EBA-EPO, Non-appealing party - MOTOROLA
[G 0004/93] If the patent proprietor is the sole appellant against an interlocutory decision maintaining a patent in amended form, neither the Board of Appeal nor the non-appealing opponent as a party to the proceedings as of right under Article 107, second sentence, EPC, may challenge the maintenance of the patent as amended in accordance with the interlocutory decision.If opponent as sole appellant interlocutory decision: patentee restricted to defending the patent in the form of the interlocutory decision
[G 3/92] New application for invention - earlier application filed by a non-entitled person: if a person other than the applicant is entitled to the grant of a European patent, and that person files a new European patent application in respect of the same invention under Article 61(1)(b) EPC, it is not a pre-condition for the application to be accepted that the earlier original usurping application is still pending before the EPO at the time the new application is filed.
IPPT19940513, EBA-EPO, Late amendments – Whitby II
[G 7/93] Discretion to allow amendment until decision to grant:
IPPT19940511, EBA-EPO, Intervention – ALLIED COLLOIDS
[G 1/94] Intervention by assumed infringer admissible in appeal stage of Opposition
IPPT19940202, EBA-EPO, Limiting feature – Advanced Semiconductor Products
[G 1/93] Added undisclosed limiting feature requires amendment. Added undisclosed feature without technical contriubution and limiting scope of protection is not to be considered as subject-matter which extends beyond the content of the application as filed within the meaning of Article 123(2) EPC.
IPPT19940118, EBA-EPO, Re-establishment - Nellcor
[G 5/93] Application of time limits of Article 122(5) EPC. Re-establishment Euro-PCT applicants
IPPT19930927, EBA-EPO, Re-establishment - DURION
[G 6/92] No re-establishment of patent application upon failure to pay examination fee: Article 122 EPC is not applicable to the time limit provided in Article 94(2) EPC for paying the examination fee, and that an applicant who has been unable to observe this time limit may not have his rights re-established.
IPPT19930520, TBoA-EPO, Kawasaki Steel
[T595/90] Envisaged product is non-obvious if inventive method is required to make it
[G 9/91] Contentious nature opposition proceedings. Double function Statement in Notice of Opposition. Scope of opposition: in its examination of an opposition or an appeal an Opposition Division or a Board of Appeal is bound by the statement of the opponent under Rule 55(c) EPC of the extent to which the patent is op-posed and of the grounds for opposition. dependent subject-matters have to be considered as being implicitly covered by the statement under Rule 55(c) EPC. Opposition Division may raise grounds for opoosi-tion on its own motion where, prima facie, there are clear reasons to be-lieve that such grounds are relevant and would in whole or in part prejudice the maintenance of the European patent
[G 10/91] 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 55(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.
IPPT19930318, TBoA, Fuel Oils - Exxon
[T409/91] Sufficient disclosure: application must contain sufficient information to carry out the invention in the whole area that is claimed; it is the definition of the invention in the claims that needs support
[G 1/92] The composition of product is state of the art when the product as such is available to the public and can be analysed and reproduced by the skilled person without undue burden.No implicit disclosure of extrinsic characteristics which are only revealed when the product is exposed to interaction with specifically chosen outside conditions.No distinction between means of information.
[G 3/89] Correction of application. [...] The parts relating to the disclosure (the description, claims and drawings) may be corrected only within the limits of what a skilled person would derive directly and unambiguously, using common general knowledge, and seen objectively and relative to the date of filing, from the whole of these documents as filed. Evidence of common general knowlegde. 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.
IPPT19921119, EBA-EPO, CELTRIX
[G 11/91] Correction or amendment: Correction of error in or amendment of description, a claim or a drawing comprised in a European patent application is subject to the prohibition of extension laid down in 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 allowed by the Convention
[G 5/91] Appealable decision Opposition Division: the composition of the Opposition Division may be challenged on such a ground on appeal against the final decision of the division or against any interlocutory decision under Article 106(3) EPC allowing separate appeal. Impartiality employees EPO in Opposition Division. The basic requirement of impartiality therefore applies also to employees of the departments of the first instance of the EPO taking part in decision-making activities affecting the rights of any party.
IPPT19901116, EBA-EPO, Medtronic - Administrative Agreement
[G 5/88 G 7/88 G 8/88] Administrative Agreement President EPO and German Patent Office: President EPO not authorized to enter into Agreement.Principle of good faith and protection of legitimate expectations of users of the EPO
IPPT19901003, TBA-EPO, Onco-mouse
[T 0019/90] Consider whether the subject-matter of the present application constitutes an "animal variety" - if the subject-matter is not covered [...], then Article 53(b) EPC constitutes no bar to patentability. Not an essentially biological process: The onco-gene is inserted by technical means into a vector (e.g. a plasmid), which is then micro-injected at an early embryonic stage. Patents are grantable for animals produced by a microbiological process: general principle of pat-entability under Article 52(1) EPC is restored for inventions involving microbiological processes and the products of such processes.
IPPT19900502, EBA-EPO, Non-unity a posteriori
[G 2/89] Additional search fee: The EPO in its function as an ISA may, pursuant to Article 17(3)(a) PCT, request a further search fee where the international application is considered to lack unity of invention "a posteriori".
IPPT19900502, EBA-EPO, Polysuccinate esters
[G 1/89] PCT Guidelines binding upon EPO when acting as International Searching Authority (ISA).Unity of invention “a priori” and “a posteriori”: an international application may, under Article 17(3)(a) PCT, be considered not to comply with the requirement of unity of invention, not only "a priori" but also "a posteriori", i.e. after taking prior art into consideration. However, such consideration has only the procedural effect of initiating the special procedure laid down in Article 17 and Rule 40 PCT and is, therefore, not a "substantive examination" in the normal sense of that term.
IPPT19891211, EBA-EPO, Bayer
[G 06/88] Second non-medical indication: novelty of second use with same technical means of of execution. 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 in-terpreted 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
IPPT19891211, EBA-EPO, Mobil Oil – Friction reducing additive III
[G 2/88] Second non-medical indication; new use of a known compound: 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. 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.
[G 4/88] Transferability of pending opposition proceedings. An opposition pending before the European Patent Office may be transferred or assigned to a third party as part of the opponent's business assets together with the assets in the interests of which the opposition was filed.
[G 1/84] Opposition by proprietor of the patent: A notice of opposition against a European patent is not inadmissible merely because it has been filed by the proprietor of that patent.
IPPT19841205, EBA-EPO, EISAI – Second medical indication
[G 01/83, 05/83 and 06/83] Second medical indication – novelty – Swiss type claim: the inventor of a "first medical indication" can obtain purposelimited product protection for a known substance or composition, without having to restrict himself to the substance or composition when in a form technically adapted to a specified therapeutic purpose. No therapeutic use claims permitted. Therapeutic substances or compositions – medical indication: A European patent may be granted with claims directed to the use of a substance or composition for the manufacture of a medicament for a specified new and inventive therapeutic application. Vienna Convention applies to interpretation of European Patent Convention.