1994-1990

1994

 

IPPT19941221, EBA-EPO, Hepatitis A virus - USA

[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.

 

IPPT19941206, ECJ, Tatry

It is sufficient, in order to establish the necessary relationship between different actions, that separate trial and judgment would involve the risk of conflicting decisions, without necessarily involving the risk of giving rise to mutually exclusive legal conse-quences.

 

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


IPPT19940729, CAFC, Alappat

Invention as a whole is directed to a machine; not a disembodied mathematical concept: the claimed invention as a whole is directed to a combination of interrelated elements which combine to form a machine for converting discrete waveform data samples into anti-aliased pixel illumination in-tensity data to be displayed on a display means

 

IPPT19940714, EBA-EPO,BMW

[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

 

IPPT19940622, ECJ, Ideal Standard

Free movement of goods precludes the use of trade-mark rights in order to prevent the free movement of a product bearing a trade mark whose use is under unitary control.

 

IPPT19940613, EBA-EPO, Unlawful applicant - Latchways

[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.

 

IPPT19940317, BGH, Zerlegvorrichtung für Baumstämme
Scope of protection of a patent does not encompass equivalent modifications, which are based on an inventive step.

 

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.

 

IPPT19940202, ECJ, Clinique

Articles 30 and 36 of the Treaty and Article 6(2) of the Directive on cosmetic products must be interpreted as precluding a national measure which prohibits the importation and marketing of a product classified and presented as a cosmetic on the ground that the product bears the name "Clinique".

 

IPPT19940118, EBA-EPO, Re-establishment - Nellcor
[G 5/93] Application of  time limits of Article 122(5) EPC. Re-establishment Euro-PCT applicants

 

1993

 

IPPT19931020, ECJ, Phil Collins

The principle of non-discrimination precludes a Member State from making the grant of an exclusive right subject to the requirement that the person concerned be a national of that State.

 

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

 

IPPT19930518, ECJ, Yves Rocher
Price comparison: Prohibiting eye catching advertising of new price for imported goods, referring to a higher price in a previous catalogue,  precluded by free movement of goods

 

IPPT19930331, EBA-EPO, Power to examine – Rohm and Haas

[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

 

IPPT19930331, EBA-EPO, Examination of oppositions/appeals

[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.

 

1992

IPPT19921218, EBA-EPO, Availability to the public

[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.

 

IPPT19921119, EBA-EPO, Correction

[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

 

IPPT19921110, ECJ, Exportur v LOR

Articles 30 and 36 of the Treaty do not preclude the application of rules laid down by a bilateral convention between Member States on the protection of indications of provenance and designations of origin, provided that the protected names have not, either at the time of the entry into force of that Convention or subsequently, become generic in the country of origin.

 

IPPT19921027, ECJ, Generics
Compulsory License: Free movement of goods precludes regime for compulsory licenses refusing the licensee the au-thorization to import the patented product from non-member countries where the proprietor of the patent manufactures the product within the national territory, and in order to grant such authorization where the proprietor of the patent works his patent by importing the product from other Member States of the Community

 

IPPT19920505, EBA-EPO, Discovision - Appealable decision

[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.

 

IPPT19920116, ECJ, New Nissan
Advertising parallel imported cars as 'new' is not misleading

 

1991

 

IPPT19910627, ECJ, Overseas Union
International jurisdiction: Second seised court to stay proceedings

 

IPPT19910416, ECJ, Upjohn v Farzoo
Definition medicinal product: a product which is not "for treating or prevent-ing disease in human beings or animals" is a medicinal product if it may be administered "with a view to [...] restoring, correcting or modifying physiological functions", and it is for the national courts to determine on a case-by-case basis the classification of each product having regard to its pharmacological properties as they may be ascer-tained in the current state of scientific knowledge, to the way in which it is used, to the extent to which it is sold and to consumers' familiarity with it. Medicinal product cannot also be a cosmetic product. Rules for medicinal products prevail

 

IPPT19910327, USSC, Feist v Rural

Originality necessitates independent creation and a modicum of creativity.
Originality compilation of facts: Although a compilation of facts may possess the requisite originality because the author typically chooses which facts to include, in what order to place them, and how to arrange the data so that readers may use them effectively, copyright protec-tion extends only to those components of the work that are original to the author, not to the facts them-selves. This fact/expression dichotomy severely limits the scope of protection in fact-based works. Originality not “sweat of the brow” is the touch-stone of copyright protection

 

IPPT19910321, ECJ, Delattre

Definition medicinal product not exclusive: the fact that a product is classified as a foodstuff in another Member State cannot prevent its being classified as a medicinal product in the Member State concerned when it displays the characteristics of such a product. Hunger, heaviness in the legs, tiredness or itch-ing is are ambiguous symptoms and a reference to such states or sensations in the presentation of a product is therefore not decisive.

 

1990

 

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

 

IPPT19901017, ECJ, Hag II

Exhaustion of trademark rights free movement of goods: the proprietor of a trade mark in a Member State may oppose the importation of similar goods law-fully bearing an identical trade mark even if the mark under which the goods in dispute are imported originally belonged to a subsidiary that was acquired by a third undertaking following the expropriation of that subsidiary

 

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.

 

IPPT19900307, ECJ, GB-INNO-BM
Prohibited application of Luxembourg advertising law  on legitimate Belgian advertisement

 

IPPT19900111, ECJ, Dumez France
International jurisdiction: The place where the damage occurred: can be understood only as indicating the place where the event giving rise to the damage, and entailing tortious, delictual or quasi-delictual liability, directly produced its harmful effects upon the person who is the immediate victim of that event.