If the substantive law is contained mainly in the Convention and its Regulations, we must not neglect to look at the clarifications given by the Grand Chamber of Recourse on the various texts.
Here is the list, by number, of decisions of the Grand Chamber (updated on 28/03/14).
Chapter 1. G1 / 83 - Second Therapeutic Application
decision G1 / 83 was issued on December 05, 1984.
The question before the Grand Chamber was whether a claim for "the use of a compound for therapeutic use" could be accepted. This question was crucial for drug companies.
As a first step (point 13 of the reasons), the Grand Chamber recalls that any wording Use of a substance for the treatment of the human or animal body Would amount to claiming a therapeutic method which is nevertheless considered a non-invention (A52 (4) CBE73 and today excluded from patentability by A53 (c) EPC): such a formulation is therefore to be excluded.
On the other hand, the Enlarged Board of Appeal states that the wording Using a compound X to obtain a medicinal product for therapeutic use Y Is acceptable since no exclusions apply to the manufacture of drugs. Of course, it is necessary that the use Y be news and inventive (point 23 of the reasons).
This latter formulation is called "Swiss type claim".
Note that this decision is no longer valid because of the change of the article A54 (5) EPCwhich authorizes explicitly a second therapeutic application.
decision G2 / 08 came to confirm the end of Swiss type claims.
Chapter 2. G5 / 83 - Second Therapeutic Application
Chapter 3. G6 / 83 - Second Therapeutic Application
Chapter 4. G1 / 84 - Opposition by the holder
decision G1 / 84 was issued on July 24, 1985.
In this case, the proprietor of a patent had filed an opposition on his own patent and that opposition had been declared inadmissible.
The Grand Chamber opposes this inadmissibility by stating that an opposition is not inadmissible just because that it was formed by the proprietor of the said patent (point 8 of the reasons).
Indeed, it seems desirable to allow everyone (A99 (1) CBE73) to oppose in order to to ensure as far as possible that the European Office will issue and maintain European patents only if they are deemed valid Even if this opposition is formed by the holder wishing to limit his patent (point 3 of the reasons).
It should be noted that this decision is no longer valid since decision G9 / 93 reverses this case-law on the ground that theA99 CBE73 consistently provides that the opposition procedure is a procedure inter partes (especially A99 (4) CBE73).
Chapter 5. G1 / 86 - Reinstatement of an opponent in his rights
decision G1 / 86 was issued on June 24, 1987.
As you know, when filing an opposition appeal, an opponent or the owner may lodge an appeal by filing a notice of appeal (within 2 months of the reasons, A108 CBE73 or A108 EPC) then filing a brief (within 4 months of the reasons).
If the letter of theA122 (1) CBE73 (ie "The applicant or the holder of a European patent") allows the holder to benefit from a restitutio in integrumwhat about the opponent?
The Grand Chamber states that one should not have a strict reading of theA122 (1) CBE73. Thus, an opponent may be reinstated in his rights under theA122 (1) CBE73 if he did not file on time the memory the reasons for the appeal (point 15 of the reasons), since any other interpretation would be contrary to the principle of equality (point 3 of the reasons).
Attention, the opponent does not benefit from the provisions of theA122 (1) CBE73 for the deadline for lodging an appeal (ie the first two-month period for filingact appeal, see paragraph 5 of the reasons). If the holder nevertheless benefits from a restoration of his rights for the two aforementioned periods, the Grand Chamber explains this "favoritism" by the fact that:
- the holder can not remain uncertain for a long time regarding the extent of his rights;
- the opponent can always bring an action in nullity.
TheA122 EPC being substantially identical, that decision remains a priori applicable with the EPC 2000.
Chapter 6. G1 / 88 - Silence of the opponent
decision G1 / 88 was delivered on January 27, 1989.
Suppose the following situation: an opponent has not, after receiving a notification according to R58 (4) CBE73 (today R82 (1) EPC), submitted a comment within one month on the text in which the EPO intends to maintain the patent.
Does this mean that the opponent agrees with this text ( Who tacet consent videtur") And does this render inadmissible a possible appeal of the opponent?
The Grand Chamber considers that it would be disproportionate to sanction the silent opponent and to withdraw his right of appeal (point 7 of the reasons). Indeed, among many arguments, the Grand Chamber stresses that this sanction is simply not in the spirit of the EPC:
- where the omission of an act entails a loss of rights, the EPC explicitly provides for it (point 3.1 of the grounds);
- it would then be necessary to send a notification of loss of rights (R69 (1) CBE73 or now R112 (1) EPC) which is not the case here (point 3.2 of the reasons).
Chapter 7. G2 / 88
decision G2 / 88 was issued on December 11, 1989.
As you can see, many questions have been asked in the Grand Chamber.
Section 7.1. Change of categories of claims
In this case, the owner of the rights had sought, during opposition, to change the category of a claim. Is this change acceptable and not contrary toA123 (2) CBE73.
The Grand Chamber indicates that the change of category (ex. compound " or " use of the compound"), Whether in examination or opposition (without the need to look at any national law, see point 3.3 of the grounds), is not a priori not prohibited, but we must analyze, in concreto, if a range extension occurs as a result of this change (point 4.1 of the reasons).
For example, a transformation of a claim of " compound In a claim of " use of this compound In order toget an effect given is not contrary to theA123 (2) CBE73 (point 5.1 of the reasons). Caution, because if the use claim is for theobtaining a product, it would be prohibited because it would protect this product because of the provisions of theA64 CBE73.
Section 7.2. Second non-therapeutic application
In this case, one claim was directed to the use of a well-known additive to reduce friction in an engine. This effect was not known because this additive was only known to limit corrosion.
TheA54 CBE73 should it be interpreted as allowing a use claim when the only new feature lies in the purpose assigned to that use?
The Enlarged Board of Appeal considers that "the new use of a known compound" is, in fact, intended to obtaining a new technical effect underlying the new use (see paragraph 9 of the reasons). Consequently, a new implicit technical characteristic (ie the function which consists in achieving the desired objective) is present in the claim (point 9.1 of the reasons).
In the end, "the new use of a known compound" is therefore validated by the Grand Chamber (see point 10.3 of the reasons).
Chapter 8. G4 / 88 - Transfer of opposition
decision G4 / 88 was issued on April 24, 1989.
The question that was put to the Grand Chamber was whether an opposition could be:
- only passed on to the heirs of the deceased opponent;
- freely surrendered;
- transferred with the company or part of the company interested in the field of the invention in question.
For the Grand Chamber (point 6 of the reasons), it is clear that the transmission of the opposition is carried out "naturally" at the time of an assignment of part of the undertaking (understood in its broadest sense, in the sense point 5), since the opposition constitutes an accessory to that part of the undertaking if the opposition has been brought in the interest of that party (see the operative part of the reasons).
Chapter 9. G5 / 88 - Power of the President of the EPO to conclude administrative agreements
decision G5 / 88 was issued on November 16, 1990.
For the record, the German Patent Office (Gitschiner Straße 97, 10969 Berlin) and the European Patent Office (Gitschiner Strasse 103, 10969 Berlin) have adjoining premises in Berlin.
Thus, very often, stunned individuals filed European applications (or any other document such as opposition documents) to the German Office and vice versa.
The President of the EPO had sought to alleviate this problem by concluding on 29 June 1981 an administrative agreement with the German Office. This agreement provides, inter alia, that documents submitted to the German Office would be presumed to have been received by the EPO on the date of receipt of the German Office.
In this case, an opposition was lodged with the German Office but received by the EPO after the 9-month period. We understand that the licensee wishes to see this opposition declared inadmissible.
The question before the Enlarged Board of Appeal was therefore whether the President of the EPO had the power to conclude such an agreement having an impact on the rights conferred by the EPC. It should be noted that this agreement has not been approved by the Board of Directors.
According to the Grand Chamber, or the power of representation of the President defined by theA5 (3) CBE73 (point 2.2 of the reasons), or its obligation to take "all necessary measures ... to ensure the functioning of the European Patent Office" of theA10 (2) CBE73 (points 2.6 and 2.7 of the reasons) do not justify such an agreement.
Nevertheless, in a principle of protection of good faith and legitimate expectations The Grand Chamber decided that the non-effectiveness of the agreement would not be retroactive.
Chapter 10. G6 / 88 - Second non-therapeutic application
decision G6 / 88 was issued on December 11, 1989.
This decision is based on the same reasons as decision G2 / 88 issued the same day.
Chapter 11. G7 / 88 - Power of the President of the EPO to conclude administrative agreements
decision G7 / 88 was issued on November 16, 1990.
This decision is based on the same reasons as decision G5 / 88 issued the same day.
Chapter 12. G8 / 88 - Power of the President of the EPO to conclude administrative agreements
decision G8 / 88 was issued on November 16, 1990.
This decision is based on the same reasons as decision G5 / 88 issued the same day.
Chapter 13. G1 / 89 - Non-unity a posteriori and PCT application
decision G1 / 89 was rendered on May 2, 1990.
In that decision, the Grand Chamber recalls that (see paragraph 3. of the grounds), even at the stage of PCT research, the division of research acting as ISA must have a good appreciation of the novelty and the inventive step of the claims in order to to appreciate the unity of invention in accordance with theA17.3.a PCT (even if this assessment does not constitute a genuine "examination" within the meaning of the EPC or the PCT).
As a result, it is entirely possible for the ISA to formulate objections of non-unity a posteriori (point 5 of the reasons) and the EPO may ask the applicant to pay an additional search fee (point 7 of the reasons).
Chapter 14. G2 / 89 - Non-unity a posteriori and PCT application
decision G2 / 89 was rendered on May 2, 1990.
This decision is based on the same reasons as decision G1 / 89 issued the same day.
Chapter 15. G3 / 89 - Fixed Obvious Errors
decision G3 / 89 was issued on November 19, 1992.
In the opinion of the Grand Chamber, theA123 (2) CBE73 is completely applicable to the correction: it is therefore necessary to look at at the filing date what the skilled person could objectively infer from the description (point 2 of the reasons).
The person skilled in the art must therefore be in a position, on the date of filing (ie apart from any subsequent publication) and on the basis of general knowledge in the field in question:
- of note objectively and unequivocally the error, and
- of deduct simply the correction to make.
Therefore, this correction did not no retroactive effect : this is a simple statement (point 4 of the reasons).
Any means of proof is possible (point 8 of the reasons) as long as this means (writing, testimony, etc.) demonstrates the general knowledge of the person skilled in the art on the date of filing and not after (point 7 of the reasons).
Chapter 16. G1 / 90 - Revocation of patent for non-payment of printing fee
decision G1 / 90 was issued on March 5, 1991.
In the present case, the proprietor of a patent which had just been maintained in modified form (ie after opposition) had not paid the printing fee prescribed by theA102 (3) (b) CBE73 within the three-month period laid down by R58 (5) CBE73.
The question then was whether the revocation of the patent provided for inA102 (4) CBE73 or A102 (5) CBE73 was the subject of a decision (subject to appeal, A106 CBE73) or a mere statement provided for by R69 CBE73 (not subject to direct appeal).
The Grand Chamber first observes that if the Convention wished to state that the penalty for non-compliance with the payment of the printing fee was the ex officio loss of rights, the drafting of the article would probably have been " is deemed revoked "(Reasons 4) or" is deemed withdrawn (Point 6 of the reasons) as elsewhere in the Convention.
For the Grand Chamber, the revocation of a patent for non-compliance with the payment of the printing fee (A102 (4) CBE73) or production of translations of the claims (A102 (5) CBE73) must take the form of a decision. Indeed :
- a revocation decision would not be " meaningless (Point 13 of the reasons) contrary to the Board of Appeal's assertions) even if the loss of rights does not concern substantive patent law (ie novelty, inventive step, etc.). The appeal may be particularly useful in order to contest factual problems (eg actual date of payment).
- the submission of a request restitutio in integrum is not really a source of any legal uncertainty (point 14 of the reasons) even if the decision is not yet made. The decision on a subsequent appeal (against the decision) will be merged with the decision on restitutio in intergrum.
- there is no compelling need to cause loss of rights as soon as possible even for the protection of third parties (point 15 of the reasons).
- the decision to revoke is simpler legally (one step unlike the notification + decision on motion, point 17 of the reasons).
Chapter 17. G2 / 90 - Jurisdiction of the Legal Board of Appeal for decisions issued by an opposition division
decision G2 / 90 was issued on August 4, 1991.
In this case, a patentee had forgotten to pay the publication fees of his patent after publication. The formalities officer gave him two more months and then revoked his patent. For the holder who lodged an appeal, the formalities officer had no legal support to do so.
This statement was clearly purely legal.
The question of law at that time was whether the Legal Board of Appeal was competent to hear appeals against decisions entrusted to the formalities officers.
The competence of the boards of appeal is defined inA21 CBE73. If the Legal Board of Appeal may intervene against a decision of an Examining Division (A21 (3) (c) CBE73, point 3.2 of the grounds), there is no provision for it to be able to intervene in the decisions of an opposition division (A21 (4) CBE73point 3.3 of the reasons).
In the view of the Grand Chamber, the text is clear and should not be overlooked (reasons 3.3 and 3.4): only the technical board of appeal is competent for decisions rendered by an opposition division.
TheA21 EPC being identical, that decision still seems to apply with the EPC 2000.
Chapter 18. G1 / 91 - Unity of invention and maintenance in modified form after opposition
decision G1 / 91 was issued on December 9, 1991.
If after an opposition, the patent is modified so that the claims no longer have a common inventive concept (A82 CBE73), is it possible to keep it in modified form? Indeed, theA102 (3) CBE73 provides that "the patent and the invention which is the subject of it shall satisfy the conditions of this Convention". These terms do they include the unity of invention (point 2.1 of the reasons)?
In the view of the Grand Chamber, the rationale for the requirement of unity of invention " is D'administrative order (point 4.1 of the reasons): the usefulness is for the classification of patents with the international nomenclature, but also to avoid that the applicant includes misappropriation several inventions in the same application and avoids, in fact, important taxes of research and deposit.
Moreover, the Grand Chamber notes that the division, although initially provided for in the preparatory work for the Convention until the end of the opposition, had been limited to simple patent applications (point 6.2 of the grounds), since it was " useless Because of the factno opposition possible due to non-unity of invention.
Therefore, the non-unit must not be taken into account for the maintenance of patents in modified form after opposition.
This decision remains valid under the EPC 2000.
Chapter 19. G2 / 91
decision G2 / 91 was issued on November 29, 1991.
Section 19.1. Refund of appeal fees when there are several applicants
In the present case, some Boards of Appeal retained the first appeal fee levied and reimbursed the following appeal fees, since the "other parties to the proceedings are ex parte in the appeal proceedings" as specified by theA107 CBE73.
Other chambers retained all the taxes paid by each of the applicants.
Who was right?
For the Grand Chamber, each of the applicants must pay... and this is justified by the next paragraph.
Section 19.2. Own right to pursue an appeal when an appeal is withdrawn by an applicant
Indeed, the Grand Chamber notes that an applicant who did not pay has no right to pursue the appeal alone if the only applicant who has paid is to withdraw.
Only the latter can decide to maintain his appeal (point 6.1 of the reasons).
Thus, any reimbursement of the appeal fee deprives the applicants of their rights.
This decision remains valid under the EPC 2000 because theA107 EPC did not evolve.
Chapter 20. G3 / 91 - Restitutio in integrum
decision G3 / 91 was made on September 7, 1992.
As you certainly know by heart, the EPC provides:
- that for European applications:
- you have to pay the search fee (A78 (2) CBE73) within one month after the filing of the application and
- you have to pay the designation fees (A79 (2) CBE73) within six months after the mention of the publication of the TPP;
- a request for examination must be made (A94 (2) CBE73) within six months after the mention of the publication of the TPP;
- that for Euro-PCT applications:
- you have to pay the search fee (A157 (2) (b) CBE73) within 31 months after the filing of the earliest priority (R107 (1) (e) CBE73);
- you must pay the national fee (covering the designation fees, A158 (2) CBE73) within 31 months after the filing of the earliest priority (R107 (1) (d) CBE73);
- a request for examination must be made (A150 (2) CBE73) within 31 months after the filing of the earliest priority (A39.1.b PCT).
As you can see, there are some similarities ...
But the first three deadlines are explicitly excluded by theA122 (5) CBE73 while the last three deadlines do not appear ... Is this an oversight? Should it be considered that these are also excluded from the restitutio in integrum ?
In the view of the Grand Chamber, all these time limits must be considered in the same way: the time limits for the payment of the search fee, the national fee and the time limit for filing the request for examination do not benefit of the restitutio in integrum (for European applications, but also for Euro-PCT applications).
This decision is no longer applicable with the EPC 2000, as the different deadlines mentioned above now benefit from the restitutio in integrum.
Chapter 21. G4 / 91 - Intervention
decision G4 / 91 was issued on November 3, 1992.
In the present case, a third party (against whom an action for infringement) had submitted a statement of intervention in accordance with theA105 (1) CBE73, while the opposition division decided to keep the patent in modified form a few weeks before ...
Is the intervention valid given that the appeal period was still running (ie knowing that the decision was not force of res judicata)?
For the Grand Chamber, theintervention is not possible in this case, except that one of the parties to the opposition proceedings lodges an appeal: in fact, without this appeal, the opposition proceedings are not pending.
This decision is still applicable with the EPC 2000 since the R89 EPC repeats the same provisions.
Chapter 22. G5 / 91 - Decisions subject to appeal
decision G5 / 91 was rendered on May 5, 1992.
In this case, the Claimant had alleged that one of the members of the Opposition Division was not impartial, but the Director refused to recompose the Chamber.
Section 22.1. Independence of officials of EPO first instance bodies
The Grand Chamber notes that (point 2 of the reasons) theA24 (1) CBE73 provides for impartiality for the members of the boards of appeal and the Grand Chamber, but not explicitly for the staff of the bodies of first instance such as:
- the examining division,
- the opposition division,
For all that (point 3 of the reasons), this obligation is, in fact, a general principle and must apply to all.
Section 22.2. Decisions subject to appeal
Can the holder appeal the Director's refusal to recontify the Chamber for opposition?
The Grand Chamber states (point 5 of the reasons) that there is no legal basis for such an appeal.
As specified byA106 (3) CBE73it is not possible to appeal against a decision that does not terminate proceedings (such as this decision) unless the decision provides for an independent appeal.
Of course, this question may be appealed against the final decision (point 6 of the reasons).
This decision remains valid with the EPC 2000, theA106 EPC having remained unchanged on this point.
Chapter 23. G6 / 91 - Tax Reduction
decision G6 / 91 was issued on March 6, 1992.
TheA14 (4) CBE73 and A14 (4) CBE73 provides that persons domiciled in the territory of a Member State may deposit documents in their language (other than French, English, German) and thus benefit from a reduction of taxes (R6 (3) CBE73).
Section 23.1. Delivery of the translation simultaneously
In this case, a person had appealed against a decision by simultaneously providing a writing in his own language and a translation.
At first, the Grand Chamber considers that there is no contraindication to file a translation of the filed documents at the same time than these pieces (point 9 of the reasons). However, we must be careful, because these translations should not be taken for originals and for example: by way of illustration, translations can not be transmitted BEFORE the originals at the risk of being considered as precisely the latter. (point 12 of the reasons).
Section 23.2. Plurality of documents and limited translation to only certain documents
What happens if the licensee files several documents to perform a pleading, only some of them being in his language?
A priori, there is no reason to consider all the documents must be produced in the language of the applicant in order to benefit from the reduction (point 15 of the reasons). In fact, when certain documents can be submitted after the payment of the tax, how do you know the amount of the tax to be paid (we are not talking about a tax refund, but a reduction, point 16 of the reasons)?
For the Grand Chamber, it is sufficient to deposit in its language the essential document of the first procedural act to benefit from the tax reduction (point 21):
- the request for examination of the examination fee (point 19 of the reasons),
- the notice of appeal for the appeal fee (not the memorandum, point 24 of the reasons),
Chapter 24. G7 / 91 - Withdrawal of the appeal
decision G7 / 91 was issued on November 5, 1992.
It refers verbatim to the following decision, decision G8 / 91.
Chapter 25. G8 / 91 - Withdrawal of the appeal
decision G8 / 91 was issued on November 5, 1992.
In the present case, an opponent had lodged an appeal without the proprietor doing so, and then withdrew it ... can the appeal procedure continue ex officio (a bit like the opposition R60 (2) CBE73, point 6 of the reasons)?
Even though automatic non-continuation may leave "trial-run" decisions erroneous, the Enlarged Board of Appeal does not think it is useful to allow the Boards of Appeal to continue automatically.
- There is an opposition procedure open to all if a third party thinks there is an error in a decision (point 10.1 of the reasons)
- At first sight, there are not so many errors in the first instance (point 10.2 of the reasons);
- Although the Office makes a point of issuing valid titles that are not tainted with defects, it is necessary to terminate at a certain point the procedure for the proper management of the means of the Office (point 10.3 of the reasons);
- National procedures to cancel a patent remain open (point 11.1 of the reasons);
This decision remains valid with the EPC 2000, as the principles of recourse remain the same.
Chapter 26. G9 / 91 - Competences for analyzing the validity of claims
decision G9 / 91 was issued on March 31, 1993.
Section 26.1. Measure of the mis en cause
Can opposition divisions or boards of appeal analyze the validity of unopposed claims by an opponent or an applicant? Are they bound by the statement of the opponent of the R55 (c) CBE73 (now R76 (2) (c) EPC)?
For the Grand Chamber, the obligation of the applicant to declare to what extent he wishes to challenge the patent (R55 (c) CBE73) would be meaningless if that measure could be subsequently extended (point 10 of the reasons).
Consequently, the Opposition Division or the Board of Appeal has no rights to analyze untested claims (point 11 of the reasons).
On the other hand, it is quite possible to analyze dependent claims that are not attacked (point 11 of the reasons):
- if the independent claim "mother" has been attacked;
- if their validity is, prima faciedoubtful.
Section 26.2. Reasons for the challenge
Is the reasoning the same for the reasons for the mis en cause? Are opposition divisions or boards of appeal bound by the opponent's statement?
For the Grand Chamber, theA114 CBE73 allows the Opposition Division to examine ex officio certain grounds not raised, but this must remain exceptional, in particular if prima facie these reasons are opposed, in whole or in part, maintaining the patent (point 16 of the reasons).
For the proceedings before the boards of appeal, the principle ofA114 CBE73 much more restrictively because it is a non-inquisitorial judicial procedure (point 18 of the reasons).
Thus, an argument not presented at the opposition stage by the opponent can not be presented at the appeal stage (unless, of course, it is accepted by the holder, point 18 of the reasons).
Chapter 27. G10 / 91 - Jurisdiction for analyzing the validity of claims
decision G10 / 91 was issued on March 31, 1993.
This decision reflects the reasons for grounds G9 / 91.
Chapter 28. G11 / 91 - Correction of Obvious Errors
decision G11 / 91 was issued on November 19, 1992.
This decision resumed the substance of grounds G3 / 89 issued the same day.
Chapter 29. G12 / 91 - Final decision
decision G12 / 92 was issued on December 17, 1993.
In this case, the facts were chronologically as follows:
- an opposition had been filed against a patent;
- the opposition chamber decides to reject the opposition and the three members of the chamber sign the form provided for this purpose;
- the licensee proposes to combine claims 1 and 2;
- the form is submitted by the Opposition Chamber to the internal courier service without taking into account the latter proposal.
- the form is mailed by the internal mail service.
The question then is when the internal decision-making process is finished.
The Grand Chamber recalls that, for an oral procedure (point 2 of the reasons), the internal decision-making process occurs when it is pronounced, that is at the end of the oral proceedings. Indeed, the body that rendered it can not come back (except in the case of a preliminary ruling).
According to the Grand Chamber and for a written procedure, the end of the internal process can not be :
- the date of the mailing of the reasons by the internal mail service (point 6.2 of the reasons), since it does not reflect the date of the taking of the reasons;
- the date of the signature by the three members (point 7.1 of the reasons) they can still reconsider their decision if an important element is brought to their knowledge;
- the date of submission of the net copy by the division to the formalities section for the purpose of service (point 8 of the reasons), as it can not be determined from the file.
Thus, there remains only the date of the delivery to the internal mail service of the EPO, by the section of the formalities of the division "(Point 9 of the reasons). This date may, in the opinion of the Grand Chamber, be very easily known from the file since, according to the President of the EPOit is always three days before the buffered date.
Chapter 30. G1 / 92 - Availability to the public of a composition or structure of a disclosed product
decision G1 / 92 was issued on December 18, 1992.
The question that arose in this case was whether the composition of a product was publicly available simply because it was publicly available (analyzes needed to find the composition).
For the Grand Chamber, if a person skilled in the art can discover the composition or internal structure of the product and reproduce it without excessive difficultythen the product and its composition or internal structure are included in the state of the art (see point 1.4 of the Reasons).
The EPC does not provide that the person skilled in the art is encouraged to analyze the composition or the internal structure of a product, and it is therefore not possible to add this condition (point 2 of the reasons), especially as this condition would be subjective (point 2.1 of the reasons).
Thus, any disclosure of a product also discloses its composition or structure (provided that this discovery by the skilled person does not present excessive difficulty).
This decision has no reason to be called into question by the EPC 2000.
Chapter 31. G2 / 92 - Non-payment of new search fees and unsuccessful claims
decision G2 / 92 was rendered on July 6, 1993.
Imagine the following situation:
- a request is with two inventions present in the claims;
- a non-unity objection is raised at the research stage (A82 CBE73) and the Research Division requests the payment of an additional search fee (R46 (1) CBE73);
- the applicant does not pay this search fee;
In this case, can the applicant request a review of the second invention (which has not been searched)?
The Grand Chamber considers that (point 2 of the reasons), if, despite the invitation of the Research Division, the applicant decides not to pay a new search fee, it will not be possible for him subsequently to make this invention the subject of the claims of his application.
Only a divisional will be possible.
Chapter 32. G3 / 92 - Unauthorized Claimant
decision G3 / 92 was issued on June 13, 1994.
TheA61 (1) (b) CBE73 provides in particular that in case of invention "stolen" by an unauthorized applicant (eg filing by an employee while the invention was the responsibility of the employer), the person having stolen the invention may file a new request.
The question that arose was whether theA61 (1) (b) CBE73 applied even if the claim of the unauthorized claimant was no longer pending (eg failure to submit the request for examination, forgetting a fee, etc.). Indeed, the security of third parties would not be respected in this hypothesis, legitimately thinking that the subject invention is free.
For the Grand Chamber, if the procedure of theA61 CBE73 was no longer applicable when the first application is no longer pending, that would amount to accepting that a court recognizes the right to a patent to a person, but that the EPO refuses such a right for reasons of internal 5 reasons).
Therefore, there is no need to refuse, to a person who has been granted a right to an invention by a national authority, the filing of an application according to theA61 (1) (b) CBE73 (point 5.2 of the reasons).
Chapter 33. G4 / 92 - Basis for decisions and new arguments in oral proceedings
decision G4 / 92 was issued on October 29, 1993.
During a procedure inter partesif a party who does not attend the oral proceedings, waives his right to be heard? Can we then cite new documents or arguments against his application or patent?
In fact, this question is much broader, because (point 3 of the reasons) it concerns the contradictory principle when rendering the reasons. Indeed, theA113 (1) CBE73 has' Decisions [...] can only be based on grounds on which the parties have been able to take a position ».
Thus, in order to respect the contradictory, a decision can not be based sure :
- of the facts invoked for the first time during this oral procedure;
- of the means of proof new ones (which were not even announced, point 9 of the reasons).
However, a decision can be based sure :
- of means of proof announced before the oral proceedings (and which confirm the allegations of a party), but produced only during the oral proceedings;
- of new arguments (point 10 of the reasons) in so far as they do not alter the grounds on which the decision is based (since it is only a new reasoning relied on in support of the legal and factual arguments already presented).
There is no reason for the EPC 2000 to change this decision.
Chapter 34. G5 / 92 - Restitutio in integrum
decision G5 / 92 was made on September 27, 1993.
In this decision, the questions asked are essentially the same as those asked for G3 / 91 so we will not detail the reasons for the decision (they are therefore identical 🙂).
Chapter 35. G6 / 92 - Restitutio in integrum
decision G6 / 92 was made on September 27, 1993.
In this decision, the questions asked are essentially the same as those asked for G3 / 91 so we will not detail the reasons for the decision (they are therefore identical 🙂).
Chapter 36. G9 / 92 - Non-Applicant and reformatio in pejus
decision G9 / 92 was rendered on July 14, 1994.
In the event that a person lodges an appeal, can another party to the proceedings (a non-claimant opponent, the non-claimant, the Board of Appeal, etc.) request that the decision be amended to the detriment of the appellant? attacked?
According to the Grand Chamber, the Board of Appeal must base its decision ultra petita (ie without going beyond what is requested by the appeal).
Thus, if the proprietor is the sole applicant, the opponent or the Board of Appeal may not request the rejection of a claim set by the Opposition Division (point 14 of the reasons).
If the opponent is the sole applicant, the patentee can not extend the scope of his claims incidentally (point 16 of the reasons).
Chapter 37. G10 / 92 - Divisional application and parent application about to be issued
decision G10 / 92 was issued on April 28, 1994.
The decision raised the question of the deadline for filing a divisional application. In other words, until when a parent application is pending when it is about to be issued
It should be noted that the R25 (1) CBE73 has undergone many changes during the life of the CBE73. In this case, R25 (1) read as follows in that decision:
(1) The applicant may file a divisional application for an initial pending European patent application until, in accordance with Rule 51 (4), he or she agrees to the text in which it is intended to issue the European patent.
For the Grand Chamber, therefore, there is no difficulty of interpretation and if the plaintiff has agreed to the text of the parent application, it is no longer possible to divide.
This decision is no longer relevant since the wording of the R25 (1) CBE73 (then R36 (1) (a) EPC, now deleted) has been completely changed.
Chapter 38. G1 / 93 - Restrictive feature, the pincer "123 (2) -123 (3)"
decision G1 / 93 was issued on February 2, 1994.
Imagine that during the review, the licensee adds a limiting feature to a claim. This feature is not, in fact, supported by the description.
Can the holder remove this feature in opposition simply?
The Grand Chamber stresses that A123 (2) CBE73 and A123 (3) CBE73 are not interdependent provisions (point 13 of the grounds), which would mean that one or the other provision should apply depending on the particular case. These provisions are well independent and both must apply in the event of a change (s) in a patent.
- the amendment is refused if it extends the scope of the claims;
- the change that can be accepted if the change consists in replacing the characteristic with a "more restrictive" characteristic and supported.
Chapter 39. G2 / 93 - Deposit of biological material and deposit number
decision G2 / 93 was issued on December 21, 1994.
In certain applications, reference may be made to certain biological material that is not accessible to the public (R28 (1) CBE73 or R31 (1) EPC) provided that an indication from the depositary authority and the serial number of the biological material 16 months delay from the earliest priority.
The question that arose was whether the provisions of theA91 CBE73 (ie additional time to correct an irregularity, in particular for the production of priority documents R38 (3) CBE73) could apply even though this article did not explicitly mention this case.
For the Grand Chamber, there is a fundamental difference between the requirement to provide the "serial number" (substantive condition for the sufficiency of description) and the requirement to provide priority documents (formal requirement). Thus no analogy is possible.
In conclusion, the deadline set for R28 (2) (a) CBE73 is not extendable.
Chapter 40. G3 / 93 - Opposibility and Validity of Priority
decision G3 / 93 was issued on August 16, 1994.
The question that arose was whether a document published during the priority period constitutes an opposable prior art, under theA54 (2) CBE73, to a European patent application where the priority claim (the application includes elements that have not been disclosed in the priority document).
We recall that theA87 (1) CBE73 defines the right of priority. This is granted, in accordance with the Paris Convention, for the same invention than that in the priority document.
TheA89 CBE73 provides that where an application validly claims a priority, the priority date shall be considered as the date of filing of the European patent application for the application of theA54 (2) CBE73, A54 (3) CBE73 (opposable state of the art), and A60 (2) CBE73 (the right to the patent belongs to the first applicant).
Thus, if a priority is invalid, any interim disclosure becomes enforceable (point 9 of the reasons).
Chapter 41. G4 / 93 - Non-Applicant and reformatio in pejus
decision G4 / 93 (available in English) was issued on July 14, 1994.
This decision is the English "version" of grounds G9 / 92.
Chapter 42. G5 / 93 - Restitutio in integrum
decision G5 / 93 was issued on January 18, 1994.
As you know, decision G3 / 91 emphasized that the following deadlines do not benefit of the restitutio in integrum (Euro-PCT application):
- payment of the search fee (A157 (2) (b) CBE73) within 31 months after the filing of the earliest priority (R107 (1) (e) CBE73);
- payment of the national fee (covering designation fees, A158 (2) CBE73) within 31 months after the filing of the earliest priority (R107 (1) (d) CBE73);
- submission of the request for examination (A150 (2) CBE73) within 31 months after the filing of the earliest priority (A39.1.b PCT).
The Grand Chamber confirms its analysis, but notes that the EPO itself published information to the contrary in the "Notice to PCT applicants" (OJ EPO 1991, 333). In that opinion he stated thatin the event of loss of a right [due to non-payment of the basic national fee, designation fees, search fee and claim fees], the applicant may, pursuant to Article 122 CBE, be reinstated in this right "(Point 2.1 of the reasons).
Thus, it would be unfair that A122 can not be used in such cases at least until the date on which decision G3 / 91 was made available to the public (point 2.3 of the reasons).
Accordingly, the Grand Chamber indicates that the restitutio in integrum is not possible for the periods mentioned above unless the request for re was submitted before decision G3 / 91 was made available to the public.
Chapter 43. G7 / 93 - Late Amendments, After Agreement on the Granting Text
decision G7 / 93 was released on May 13, 1994.
If an applicant agrees under the R51 (4) CBE73 (now R71 (3) EPC), can it, before the final decision of issue, request a modification of the claims and withdraw its agreement on the previously validated text?
For the Grand Chamber, theA113 (1) CBE73 does not give the applicant any specific rights regarding its agreement (in particular no right of amendment), but rather prohibits the EPO from taking a decision on an application text other than " the text proposed or accepted by the applicant or the patentee "(Point 2.1 of the reasons).
In this case, the Grand Chamber stresses that the R86 (3) CBE73 (now R137 (3) EPC) gives the EPO discretion to accept the changes proposed by the holder during the examination (point 2.3 of the reasons). However, this discretion must be exercised for a constructive purpose. It must therefore be taken into account at the same time (point 2.5 of the reasons):
- the applicant's interest in obtaining a legally valid patent in all designated States, and
- the interest of the EPO in concluding the examination procedure by deciding the grant of the patent.
Thus, it is possible for the EPO to override the "withdrawal" of the applicant's agreement if the EPO has invited the applicant to pay the filing and printing fees and to file the translation of the claims, and not take into account the proposed changes. However, it can also take into account the latter, if they find them relevant.
This decision was probably called into question by the new wording of the R71 (3) EPC : in fact, the terms of the agreement of the plaintiff on the text has changed. However, the withdrawal of this agreement seems to remain the same: the EPO would retain full discretion on the taking into account of new claims once this agreement given.
Chapter 44. G8 / 93 - Withdrawal of the appeal by the applicant and termination of the appeal proceedings
decision G8 / 93 was issued on June 13, 1994.
What happens if an opponent, the only applicant, withdraws his appeal? Is the opposition procedure automatically terminated or can the opposition division pursue this opposition under theA114 (1) CBE73, especially if it considers that there are serious grounds for revoking or limiting the patent?
The Grand Chamber stresses first of all that it is not possible to "withdraw its opposition" at the appeal stage: only the withdrawal of the appeal is possible (the question put by the Board of Appeal mixed these concepts, point 2 of the units).
Finally, the Grand Chamber confirms its decision G8 / 91 and states that it is not permitted the Boards of Appeal to continue ex officio if a withdrawal of the appeal is made by the only applicant, whatever the opinion of the patent owner.
Chapter 45. G9 / 93 - Opposition by the Holder
decision G9 / 93 was rendered on July 6, 1994.
As in G1 / 84, there was the question of the legality of the owner's opposition to his own patent. This question arose because the Grand Chamber had considered in decision G9 / 91 that its analysis on the basis of the opposition proceedings was wrong in decision G1 / 84 (see point 2 of the reasons):
the correctness of the statement, at least as a generalization, made by the Enlarged Board of Appeal in G1 / 84 (OJ EPO 1985, 299, point 4 of the statement of reasons: ... it would be wrong to regard them (the EPC opposition proceedings) as essentially contentious proceedings between opposing parties [...] "[...]
In any event, the Enlarged Board of Appeal, as currently constituted, considers that post-grant opposition proceedings under the EPC must in principle to be considered as a contentious procedure between parties normally defending opposing interestsand to which fair treatment must be accorded.
Thus, the grounds for the grounds G1 / 84, which allowed an opposition against oneself, remained applicable?
The answer is no ! (point 5 of the reasons)
For the Grand Chamber, it is necessary to interpret the "every person" of theA99 (1) CBE73 in the light of the purpose of the procedure (point 3 of the reasons). In particular, the argument that the EPO must endeavor to "issue and maintain only valid patents" does not seem sufficient (point 4.2 of the reasons).
The absence of a limitation (at the time), if that is a problem, must rather be resolved by the legislator and not by legal devices of interpretation (point 4.1 of the reasons).
Chapter 46. G10 / 93 - Scope of the examination and appeal procedure ex-parte against a decision rejecting an application
decision G10 / 93 was issued on November 30, 1994.
In the case of an appeal against a decision rejecting the examination, does the Board of Appeal carry out a complete analysis of the patentability or is it limited to the grounds for rejecting the court of first instance? instance (ie without re-analyzing the validity conditions that the Examining Division considered fulfilled).
The Grand Chamber first notes that, for an inter-party procedure, the consideration of limited new grounds were justified by the contentious procedure (point 2 of the grounds) and by the judicial nature of the appeal.
On the contrary, the procedure ex-parte is an administrative procedure and therefore more inquisitorial (point 3 of the reasons). Thus, boards of appeal may take into account new grounds, new evidence or new facts.
However, it is not necessary to carry out a full examination (point 4 of the reasons), as this falls within the competence of the Examining Divisions. If the Board of Appeal believes that a condition of patentability is not fulfilled, it may:
- introduce it into the appeal procedure;
- request the Examining Division to study the matter.
This principle does not violate no reformatio in pejus (point 6 of the reasons), because no decision can be worse than the rejection of the application.
Chapter 47. G1 / 94 - Intervention in appeal proceedings
decision G1 / 94 was delivered on May 11, 1994.
TheA105 CBE73 provides that an alleged infringer may intervene in an opposition. But can it do this in an opposition appeal procedure (which has a different legal nature than the opposition procedure: judicial and non-administrative G8 / 91!)? Can the intervener raise any ground of opposition or is it bound by those already presented?
In a previous decision (G4 / 91), the Enlarged Board of Appeal merely stated that if none of the parties to the opposition proceedings filed opposition proceedings, any intervention would be ineffective (point 1 of the reasons).
Referring to the travaux préparatoires of the EPC (point 8 of the grounds), the Grand Chamber stresses that the discussions between the Contracting States wished to include recourse within the perimeter of theA105 CBE73 and even adopted R57 (4) in order to moderate some negative effects by R57 (4) CBE73.
The Grand Chamber thus confirms that the expression "opposition proceedings" of theA105 (1) CBE73 should be understood as also covering the appeal procedure Opposition (Point 10 of the reasons).
Moreover, the Grand Chamber stresses that the intervener in such an appeal procedure mayany reasons, arguments or evidence he wishes, even if they have not previously been invoked (point 13 of the reasons): in this case, a referral at first instance may be possible. In fact, prohibiting the intervener from using these defenses (knowing that he is accused of infringement) would be contrary to the purpose of the intervention.
Chapter 48. G2 / 94 - Speech to the Board of Appeal and ex-parte proceedings
decision G2 / 94 was rendered on February 19, 1996.
In the present case, a professional representative had requested a Board of Appeal to allow a former member of the board (in this case a former chairman who had ceased his duties two years previously).
What are the rules governing speaking by a non-proxy? Especially if he is a former president?
In the first place, the Grand Chamber refers to decision G4 / 95 (which was given earlier) with regard to speaking by an assistant (point 1 of the reasons). Although decision G4 / 95 applies to opposition proceedings, the principles remain the same for a procedure ex-parte : the chamber has full discretion to authorize it if it wishes.
However, in order to authorize the intervention of a speaker, the chamber should be notified early enough, indicating the name, the quality and the subject addressed by the speaker (point 2 of the reasons).
If the intervention is authorized, the assistant then makes his oral statement under the permanent responsibility and control of the professional representative (point 3 of the reasons).
Regarding the speech by a former member of the chamber, there is no rule formally prohibiting them: it is therefore necessary to pay attention to avoid, at least, an "appearance of favoritism" (point 4 of the reasons) concerning simple speeches. Thus, the Boards of Appeal have (in the absence of other rules) a discretion to determine from when a former member may speak in front of the board (point 7): a priori 3 years should be a good compromise (point 8).
Chapter 49. G1 / 95 - Number of grounds for opposition of A100 (a) CBE73
decision G1 / 95 was rendered on July 19, 1996.
In that case, the Board of Appeal rejected an application on the ground that the claimed object lacked industrial application and was not an invention (A52 (1) CBE73 and A52 (2) CBE73). Nevertheless, the opposition formed only mentioned novelty (A54 CBE73) and industrial activity (A56 CBE73).
In fact, all the previous articles are mentioned under one chip of theA100 CBE73 (listing possible grounds for opposition):
(a) the subject matter of the European patent is not patentable under Articles 52 to 57;
The question that arises is: does theA100 a) CBE73 is a single reason or several reasons (point 2 of the reasons)?
For the Grand Chamber, bullet a) A100 CBE73 can only contain one reason, because the "legal basis" of novelty, inventive step, etc. are different (point 4 of the reasons).
Consequently, the Board of Appeal can not introduce a new ground (as stated in G9 / 91) not raised by the opponent, even though this ground is industrial application and which the opponent has invoked. novelty or inventive step.
Chapter 50. G2 / 95 - Replacement of the entire application due to error
decision G2 / 95 was released on May 14, 1996.
Imagine that an applicant files a first application in France, then files a second EP application under priority of the French application. The filing of this second application is completely missed and the description filed does not correspond to the invention of the first application (do not laugh ... it happens).
Is it possible, in the context of an error correction under the R88 CBE73, to replace all the parts of an application with other parts (ie those which the applicant would have really wanted to deposit)?
The Grand Chamber recalls that the provisions of theA123 (2) CBE73 take precedence over the provisions of R88 CBE73 (point 2 of the reasons). Thus, because of the prohibition on extending the subject of an application, it is not possible to use other than the description, the claims and the drawings or documents that confirm the general knowledge of the person skilled in the art on the date of filing which is fixed by the A80 CBE73 (G3 / 89): it is therefore not permissible for rectification to use other documents, even if they were produced at the time of filing the European patent application, whether in particular priority documents, the abstract, etc. (G3 / 89).
So no ! It is not possible…
Chapter 51. G3 / 95 - Referral inadmissible
decision G3 / 95 was delivered on November 27, 1995.
It is not very interesting because the question raised by the President was ruled out of order, as the decisions quoted were not contradictory.
Chapter 52. G4 / 95 - Speaking in oral proceedings by a person other than the mandatary
decision G4 / 95 was rendered on February 19, 1996.
The question was whether a third party (other than the agent) could speak during oral opposition proceedings.
The Grand Chamber can not find fault with it, but frames this practice, no matter who is speaking: the authority concerned must agree, accord given discretionally.
The main conditions of this agreement are:
- an authorization must be requested and must contain the name and qualifications of the person wishing to speak and specify the purpose of the oral presentation;
- this authorization must reach the EPO sufficiently early before the oral proceedings: the opposing parties must be able to prepare their response to this statement. Otherwise the authorization must be refused (if agreed by the opponents) (point 10 of the reasons);
- Speaking is under the permanent responsibility and control of the authorized representative (point 8 of the reasons).
If this decision applies especially in opposition or opposition proceedings (procedure inter partes), there is no reason why it does not apply in ex parte, as pointed out in decision G2 / 94 (delivered after).
Chapter 53. G6 / 95 - Application of R71 bis to the Boards of Appeal
decision G6 / 95 was rendered on July 24, 1996.
In this case, the EPO's Administrative Board had added a rule R71bis CBE73 under the powers conferred by theA33 (1) (b) CBE73. The R71bis (1) CBE73 provides in particular a notification, sent together with the summons to oral proceedings, detailing the issues necessary to be examined.
However, a board of appeal is surprised by this new article (not really on the substance, but on the form): the board of directors amends the regulation on the basis of theA33 (1) (b) CBE73 (general power), but seems to oppose the Rules of Procedure of the Boards of Appeal (or RPCR), which he himselfA23 (4) CBE73, special power), RPR (2) of the RPCR not providing for such a notification (only the possibility).
In short, the Board of Appeal is a bit lost ... What should you apply?
The Board of Appeal stresses that the RPCR does not have to always comply with the current version of the Regulations "(Point 2 of the reasons). Indeed, the Board of Directors can not modify the Regulations (ie introduction of the R71bis (1) CBE73) so that the effect of a modified rule is in contradiction with the EPC itself (ie the validation of the RPCR, the articles being superior to the rules, A164 (2) CBE73point 4 of the reasons).
So, the R71bis (1) CBE73 can not apply to the boards of appeal, otherwise we would be in full contradiction mentioned below (point 5 reasons).
Chapter 54. G7 / 95 - Attack of novelty in opposition while the ground raised is the inventive step
decision G7 / 95 was rendered on July 19, 1996.
In fact, this decision was made on the same day as decision G1 / 95 (on the number of reasons forA100 a) CBE73) and shares substantially the same reasons.
Here, the Grand Chamber indicates that, nevertheless, if the inventive step and the novelty are two distinct reasons, it is possible toattack the novelty invention without having raised it explicitly (having only raised the inventive step) provided that this novelty is analyzed in relation to the closest state of the art document.
Chapter 55. G8 / 95 - Rectification of a grant decision and jurisdiction of the Legal / Technical Boards of Appeal
decision G8 / 95 was issued on April 16, 1996.
If a request for amendment of the reasons for issuing »(R89 CBE73) is submitted by the holder and the Examination Chamber has refused to grant it.
The question that arose was which board of appeal was competent (technical or legal). Does it depend on the subject of the appeal?
The Grand Chamber recalls that the competence of the Boards of Appeal against the decisions of the Examining Division is defined by theA21 (3) CBE73 (point 2 of the reasons). Letter (a) indicates that the Technical Chamber is competent when the contested decision is on the grant of a European patent ».
The question is therefore whether the decision on a request for rectification of the grounds for grant "relates to" the decision to grant.
The Grand Chamber notes (point 3 of the reasons) that appeals against decisions to grant are aimed at obtaining what has been refused (A113 (2) CBE73), and therefore seek to have a mistake on the merits : that's why we can appeal (A107 CBE73). The " request for amendment of the reasons for issuing »(R89 CBE73) is also intended to amend a decision, but mistake on the form (point 3.2 of the reasons).
Even if it only addresses the form, it is clear that a request for rectification of the grounds for grant is indeed related to the grant of the patent (point 3.3 of the reasons): consequently, the Technical Board of Appeal is competent ( point 6 of the reasons)!
Chapter 56. G1 / 97
decision G1 / 97 was issued on December 10, 1999.
Section 56.1. Appeal on appeal / request for review
Following a decision of rejection by a Board of Appeal, an appellant appealed against that decision, stating that the decision to dismiss was taken by a Chamber exercising the jurisdiction of the Opposition Division in accordance with theA111 (1) CBE73 and that, therefore, his decision was subject to appeal.
However, the Grand Chamber disagrees: the decisions of the Boards of Appeal of res judicata as soon as they are rendered, a remedy according to theA106 CBE73 against these decisions is therefore excluded (point 2.a of the reasons). TheA111 (1) CBE73 the Boards of Appeal are not obliged to dismiss cases at first instance so that the parties retain a right of appeal: the Boards of Appeal retain discretion to reform decisions.
Such an appeal must be declared inadmissible by the Board of Appeal which has taken the decision whose revision is requested: the decision of inadmissibility may be made immediately without procedural formality.
Section 56.2. A122 and A121 to correct a violation of a fundamental principle of procedure
In addition, the complainant had filed restitutio in integrum (A122 CBE73) and in continuation of the procedure (A121 CBE73). He maintained that he had not had the opportunity to file additional sets of claims despite all the attention he had given to the case, since the Board of Appeal had never indicated his intention to reject.
This reasoning is not possible for the Grand Chamber, as these two articles require the failure of a deadline, which is not the case in the present situation (point 2.b of the reasons).
Section 56.3. R89 to correct a violation of a fundamental principle of procedure
The appellant had also argued that a revision of the grounds was possible on the basis of the R89 CBE73 (same arguments as before).
The Grand Chamber states that the R89 CBE73 allows formal errors in the decisions, but not substantive errors (point 2.c of the reasons).
Section 56.4. Cassation body
The applicant also claimed that the travaux préparatoires of the Convention showed that the ECJ should be seized in the event of a fundamental breach of the procedure.
The Enlarged Board of Appeal disagrees. On the contrary, the referral to the ECJ was abandoned by the legislature for the benefit of the Enlarged Board of Appeal, which was sufficient as a regulatory body (point 2.e of the reasons).
Section 56.5. Creating a specific path
Moreover, since the vast majority of the countries of the Convention provide for a possible annulment in the event of a fundamental violation of the procedure, the applicant argued that theA125 CBE73 gives the legal basis for such an annulment in the EPC system:
In the absence of a procedural provision in this Convention, the European Patent Office shall take into account generally accepted principles in the matter in the Contracting States.
The Grand Chamber does not think this article is sufficient: in fact, it refers to "principles" and does not allow the complete creation of a specific avenue of cassation (points 3.a to 3.d of the reasons).
56.5.1. Contradiction with TRIPS
The applicant maintained that, if no means of cassation was possible, theA32 TRIPS (which is superior to the convention) is violated:
For any decision regarding the revocation or forfeiture of a patent, an opportunity for judicial review will be offered.
The Enlarged Board of Appeal disagrees, as theA62 (5) TRIPS (rule specific to administrative decisions unlike theA32 TRIPS which is applicable to all decisions, see point 5.d of the grounds) is in fact the article applicable to the case in point:
Final administrative decisions in any of the procedures mentioned in paragraph 4 may be subject to review by a judicial or quasi-judicial authority. However, there will be no obligation to provide for the possibility of review of decisions in the event of unsuccessful opposition or administrative revocation, provided that the grounds for such proceedings can be the subject of invalidation proceedings.
Indeed, an administrative decision (here the decision of the opposition chamber), which maintains a patent, can be subject to a review (here an appeal) by a judicial or quasi-judicial authority (here a Board of Appeal ). There is no indication thatA32 TRIPS should apply to the review decision (otherwise, the appeals would be interwoven ...).
Chapter 57. G2 / 97 - Principle of good faith and failure to pay the appeal fee
decision G2 / 97 was issued on November 12, 1998.
If the appellant does not pay appeal fees, does the principle of good faith require the EPO to prevent the "potential claimant" from being forgotten?
According to the Grand Chamber (point 4.1 of the reasons), the "protection of the legitimate expectations of the users of the European patent system" requires the EPO to signify to the applicant any loss of (potential) entitlement if it can expect to receive such notice.
For example, if the EPO receives a letter stating "you will find enclosed a check" and no check is present, the EPO must notify this potential irregularity. Similarly, if the applicant's request is unclear, the EPO should ask the applicant to clarify the request.
But this principle does not go beyond: the EPO has no obligation to warn the applicant if there is no reason to doubt.
Chapter 58. G3 / 97 - Opposition and "straw man"
decision G3 / 97 was released on January 21, 1999.
The question was whether the use of "nominee" (commonly called "straw man") was an acceptable practice in opposition to hide the real opponent?
The Grand Chamber stresses that the notion of "true opponent" is legally absurd, since any third party may form an opposition and the notion of opponent is a procedural notion (point 2.1 of the reasons). Thus, the Grand Chamber decided that an opposition is not inadmissible simply because the opponent is a straw man.
However, it does not make this practice a circumvention of the law:
- the opponent acts on behalf of the holder patent (circumvention of the principle laid down in G9 / 93, point 4.1 of the grounds);
- the opponent acts on behalf of a client in the course of activities which, on the whole, are characteristic of those of a professional representative, without the qualifications required by theA134 CBE73 (point 4.2.1 of the reasons).
This does not prevent the following situations:
- a professional representative acts in his own name on behalf of a client (point 4.2.2 of the reasons);
- an opponent domiciled or domiciled in a State party to the EPC acts on behalf of a third party who does not fulfill this condition (point 4.2.3 of the reasons).
When it comes to determining whether there is abusive circumvention of the law, it is appropriate to apply the principle of free appreciation of evidence : the latter must be brought by the person claiming inadmissibility, they must be clear and unequivocal.
Chapter 59. G4 / 97 - Opposition and "straw man"
decision G4 / 97 was released on January 21, 1999.
It contains the same reasons and decisions as G3 / 97.
Chapter 60. G1 / 98
decision G1 / 98 was issued on December 20, 1999.
Section 60.1. Claims encompassing a plant variety
In the present case, the Board of Appeal did not know whether it had to reject a claim for a "transgenic plant" knowing that:
- this claim effectively included certain specific plant varieties (but without claiming them individually);
- theA53 (b) CBE73 prohibits claims of "plant varieties".
We recall that a plant variety is (point 3.1 of the reasons) a plant group of a botanical taxon of the lowest known rank which can be:
- defined by thecharacter expression resulting from a certain genotype or combination of genotypes,
- distinguished of any other plant group by the expression of at least one of the said characters and
- considered as an entity with regard to its ability to reproduce compliant.
For the Grand Chamber (point 3.1 of the reasons), the Board of Appeal confuses scope and object (ie the underlying invention) of the claim. Only claims whose object is a plant variety are prohibited: the prohibition ofA53 (b) CBE73 is a prohibition on the subject of the claims and not their scope.
Indeed, the prohibition on scope seems excessive, because if one used a similar reasoning with the provisions of A53 a) CBE73a photocopier could be excluded from patentability (eg photocopying of banknotes, etc.).
In addition (point 3.4 of the grounds), the Grand Chamber recalls that this prohibition was created in order to avoid double protection (by patent and plant breeder's right of the UPOV Convention). While this prohibition is rather administrative, the 1991 UPOV Convention no longer prohibits double protection. In any case, this history advocates a strict interpretation of A53 (b) CBE73 in order to avoid unduly reducing the scope of patentability (paragraph 3.10 of the reasons).
Section 60.2. Product obtained by a process for obtaining a plant variety
The question also arose as to whether a claim for plant variety was to be excluded because of theA64 (2) CBE73. This article states that products derived from a process are also protected by such a claim, which would indirectly protect plant varieties that are excluded by A53 (b) CBE73.
For the Grand Chamber (point 4 of the reasons) there is no problem, since the protection afforded to products is not as broad as that afforded by a product claim as such. Indeed, the protected product is actually a "product by process" characterized by its method of manufacture.
So, theA64 (2) CBE73 is inoperative to analyze the patentability of a claim.
Chapter 61. G2 / 98 - Priority and conditions for being in the presence of the "same invention"
decision G2 / 98 was released on May 31, 2001.
The Chair asked for some clarification on the concept of "same invention".
First, the Grand Chamber notes that the EPC (A87 CBE73 and A88 CBE73 particular) constitutes a particular arrangement Within the meaning of the CUP (provided by theA19 CUP) and therefore must respect this agreement (point 3 of the reasons).
In reality, for the interpretation of "same invention", it is possible to have several interpretations (ie E the European demand claiming the priority of the request P):
- a strict interpretation : if the object A is claimed in the request E, then the priority is valid if A is disclosed alone in P. If the object A + B is claimed in the request E, then the priority is invalid if A + B is not disclosed as is in P.
- a wide interpretation : If the object A + B is claimed in the request E, then the priority may be valid if A is disclosed alone in P, but B is unrelated to the function and effect of A, and therefore with the character and nature of A.
In the hypothesis of a strict interpretation, the "same invention" of A87 (1) CBE73 corresponds to the notion of "same object" of theA87 (4) CBE73. This strict interpretation is perfectly in agreementA87 (4) CBE73 or A88 (2) CBE73 at A88 (4) CBE73 (point 6.8). (point 6.8).
In the hypothesis of a strict interpretation, there is more difficulty. Indeed :
- A54 (3) would be meaningless ... (point 8.1 of the reasons)
- the notion of first demand (A87 (4) CBE73) would become more complex to understand (point 8.2 of the reasons): indeed, if an applicant deposits A + B then A + B + C, one would have to ask if C would not be a non-essential characteristic before determining if A + B + C is a first request (and therefore the priorities invoking it might be invalid).
- the notion of first demand (A87 (4) CBE73) would become subjective (point 8.3 of the reasons): depending on the documents cited, certain characteristics may become non-essential or may contribute to different technical problems;
Therefore, a strict interpretation must be taken: "same invention" means that it is appropriate to recognize that a claim in a European patent application is given priority only if the person skilled in the art can, by resorting to his general knowledge, deduce directly and unambiguously the subject-matter of that claim of the earlier application in general.
Chapter 62. G3 / 98 - 6 months delay and non-opposable disclosures in case of abuse against the applicant
decision G3 / 98 was issued on July 12, 2000.
TheA55 (1) CBE73 provides a kind of "grace period" for the filing of an application, in the case of disclosures resulting from an abuse against the applicant (eg theft, violation of an NDA, etc.).
The question was whether this time limit should be calculated:
- from the priority date (ie taking into account theA89 CBE73)
- or from the date on which the European patent application was actually filed.
In addition, theA55 (1) CBE73 does not speak of "filing date" but of "filing" (which is more the act, than a date possibly different from the date of the act) (point 2.2 of the reasons). The importance of the term "deposit" is reinforced by its use in theA55 (2) CBE73, which leaves no doubt as to the difference with the expression "filing date" (point 2.3).
In addition, the travaux préparatoires show (point 2.4 of the reasons) that initially the expression used was indeed "date of filing", but that this was modified at the request of the Dutch delegation in order to show clearly that it was necessary to understand the the date on which the patent application was actually filed.
In conclusion, the decisive date for the calculation of the six-month period is therefore the date on which the European patent application was actually filed (without taking into account any priorities).
Chapter 63. G4 / 98 - Retroactivity of designation and non-payment of designation fees
decision G4 / 98 was released on November 27, 2000.
In this referral to the president raised the question of the effect of non-payment of designation fees ... Indeed, both the filing date and the list of designated countries could be impacted and it is important to understand this point.
In reality, theA91 (4) CBE73 provides that the designation of a country is "deemed to be withdrawn" if the corresponding designation fee is not paid (point 3.1 of the reasons). The preparatory work makes it clear that non-payment of designation fees has no effect on the filing date (A90 CBE73).
Where the EPC wishes to indicate retroactivity, in the view of the Grand Chamber (point 3.2 of the reasons), it uses the terminology »Unformed» or "Not formulated" (see theA94 (2) CBE73 for the exam, theA99 (1) CBE73 for the opposition, theA108 CBE73 for the appeal and theA136 (1) CBE73 for a transformation) rather than "deemed withdrawn".
Moreover, decision G1 / 90 (point 6) had already indicated that "deemed withdrawn" meant that the loss of rights occurred at the end of the period in question (point 3.3 of the reasons). A different interpretation of the same term in the EPC would be dangerous.
Retroactivity could have the following effects (point 5 of the reasons):
- loss of the filing date (which would be contrary to theA4A (3) UPCbecause this condition is not a condition for having a regular national deposit);
- retroactive destruction of the divisional applications resulting from this application since this application did not exist on the date of the filing of the divisional application (which would be contrary to the principle of independence of the applications);
- retroactive destruction of transformations.
Thus, in the opinion of the Grand Chamber, non-payment of designation fees can not have retroactive effect on the designated country lists (point 6 of the reasons).
The Grand Chamber notes that there are mechanisms for extension of time (R85 CBE73). Nevertheless,a non-designation does not take effect at the end of the extended periodbut at the end of the "normal" period (point 7.2 of the reasons)!
Chapter 64. G1 / 99 - Exceptions to the principle of no reformatio in pejus
decision G1 / 99 was released on April 2, 2001.
In the present case, an opponent was the only applicant and challenged the decision to maintain the patent in amended form. The patent had been modified in opposition by adding a feature.
Is it possible for the holder to delete this feature during the appeal (in breach of the principle of no reformatio in pejussince the scope is increased) if this feature is problematic for the patentability of the patent?
It is recalled that decision G9 / 92 (or G4 / 93, which is its English version) deals precisely with reformatio in pejus, unwritten jurisprudential principle (point 6 of the reasons) derived from the principle of judgment ultra petita.
There may be an exception to this principle in order to respond to a newly raised objection during the appeal proceedings, if the patent as maintained in a modified form were otherwise to be revoked, the revocation being the direct consequence of an inadmissible amendment (A123 (2) CBE73) that the opposition division had admitted.
In such circumstances, the patentee may be authorized, in order to remedy the situation, to submit the following motions, in order:
- amendments to limit the scope of the patent as maintained (and which are not contrary to theA123 (2) CBE73);
- amendments to extend the scope of the patent as maintained (but within the limits ofA123 (3) CBE73);
- deletion of the amendment inadmissible (but within the limits of theA123 (3) CBE73).
Chapter 65. G2 / 99 - 6 months delay and non-enforceable disclosures in case of abuse against the applicant
decision G2 / 99 was issued on July 12, 2000.
This is the same decision as G3 / 98 (German version).
Chapter 66. G3 / 99 - Admissibility of Joint Opposition
decision G3 / 99 was released on February 18, 2002.
In the present case, several parties had filed a joint opposition and paid only one opposition fee. Is this practice acceptable?
In a joint opposition, the common representative designated in accordance with the R100 CBE73 who must lodge the appeal (otherwise the board must consider that the appeal is not duly signed and must invite the common representative to sign it within a specified time). The unauthorized person who initially filed the appeal must be informed. If the former common representative no longer participates in the procedure, a new common representative must be appointed in accordance with the R100 CBE73 (points 14 and 20 of the reasons).
If one of the co-opponents withdraws from the proceedings, the EPO must be informed by the common representative in order for this withdrawal to take effect (point 19 of the reasons).
Chapter 67. G1 / 02 - Jurisdiction of officials
decision G1 / 02 was released on January 22, 2003.
In the present case, an opposition fee had been paid outside the period fixed by theA99 CBE73 and the formalities officer issued a decision declaring the opposition unformed (following a notification of loss of rights and a request for R69 (2) CBE73).
This decision was made by the formalities officer in accordance with communiqué of the Vice-President in charge of Directorate-General 2 dated 28 April 1999 (p507, point 4 and point 6) and to entrust to the formalities officers certain tasks normally incumbent on EPO opposition divisions ».
For the Grand Chamber, the R9 (3) CBE73 allows the President of the Office to delegate certain tasks to EPO staff who are not qualified as lawyers or engineers (point 3 of the reasons). In addition, theA10 (2) (i) CBE73 allows the President to delegate his powers, in particular to his vice-chairmen, if he so wishes (point 3.2 of the reasons).
For the Grand Chamber, there is no "particular technical or legal difficulty" which would prevent such delegation to formalities (point 6 of the reasons).
As a result, authorized delegations are not contrary to the provisions of the EPC.
Chapter 68. G2 / 02 - Priority of an application from a non-CUP member country, but from TRIPs agreements
decision G2 / 02 was released on April 26, 2004.
In the present case, an applicant was seeking to claim an Indian priority, given that, at the date of filing of the Indian application, India was not part of CUP, but was part of the TRIPS agreements (Warningthe EPO is not part of the TRIPs agreements, but only part of the CUP).
Although the content of the CUP and the TRIPs Agreement is substantially identical with regard to priorities, theA87 (1) CBE73 is clear (point 2 of the reasons): priority is only possible for CUP members. A desire to modify or interpret this point widely would actually be to replace the legislator who alone has the power to correct this error (points 8.3 and 8.6 of the reasons).
Although the provisions of theA87 (5) CBE73 allow an "ad-hoc" and reciprocal priority, never any communication from the Board of Directors came to validate this priority with India (point 3.2 of the reasons).
This decision is no longer relevant because theA87 (1) EPC has changed and now mentions the "members of the World Trade Organization" (which have all ratified the TRIPS Agreement).
Chapter 69. G3 / 02 - Priority of an application from a non-member country of CUP, but from TRIPs agreements
decision G3 / 02 was released on April 26, 2004.
This decision is identical to decision G2 / 02.
Chapter 70. G1 / 03 - Disclaimers
decision G1 / 03 was released on April 8, 2004.
The question was whether a disclaimer could be admitted, even if it would not be supported by the description (A123 (2) CBE73).
A "disclaimer" means an amendment to a claim that has the effect of introducing into the claim a claim "negative" technical characteristicwhich normally excludes from a general characteristic of the embodiments or particular domains (point 2 of the patterns).
A disclaimer may be admitted if it aims to:
- restore novelty in relation to a state of the art A54 (3) CBE73 and A54 (4) CBE73 (so today A54 (3) EPC only);
- restore novelty versus a fortuitous disclosure A54 (2) CBE73 (ie if foreign to the claimed invention and so remote from it that the skilled person would never have considered it) (point 2.3.4 of the reasons); and
- exclude an object that falls under an exception to patentability under A52 CBE73 at A57 CBE73 for non-technical reasons (point 2.4.3 of the reasons, in fact, and in particular for the PCT, knowledge of all the exclusions may be complex for the applicant).
A disclaimer should not take away more than is necessary.
If a disclaimer is relevant to the assessment of the inventive step or the sufficiency of the statement, then it is contrary toA123 (2) CBE73 (point 2.6.1 of the reasons).
Chapter 71. G2 / 03 - Disclaimers
decision G2 / 03 was released on April 8, 2004.
This decision is identical to decision G1 / 03.
Chapter 72. G3 / 03 - Reimbursement of the appeal fee and interlocutory revision
decision G3 / 03 was released on January 28, 2005.
The R67 CBE73 provides that in the case of a preliminary ruling, the appeal fee may be refunded by the body whose decision has been challenged. But can she reject this refund?
Firstly, the Grand Chamber points out (point 2 of the grounds) that the reference for a preliminary ruling allows the appeal to be granted (if the refund is fair due to a substantial procedural violation"), But the authority whose decision has been challenged may neither dismiss the appeal nor declare it inadmissible or unfounded (A109 (1) CBE73 and A109 (2) CBE73).
Of course, it is necessary for the claimant to claim this refund in order for it to be allowed (point 3 of the reasons).
From the point of view of the efficiency of the procedure (point 3.4.3 of the grounds), the Grand Chamber thinks that it is preferable for the Board of Appeal to decide whether to reject the request for reimbursement, even if the body whose decision has been challenged has been granted by way of interlocutory revision.
Thus, the first-instance body whose decision was attacked does not have jurisdiction to dismiss the motion in reimbursement of the appeal fee. The Board of Appeal is competent (in the composition defined by theA21 CBE73as if it had not been granted by way of a preliminary ruling).
Chapter 73. G1 / 04 - Diagnostic method
decision G1 / 04 was released on December 16, 2005.
After lengthy developments, the Grand Chamber states that the claim, which includes ALL of the following features, is excluded:
- the deductive decision phase in medicine, as a purely intellectual activity (point 5.2 of the grounds),
- the previous steps which constitute the establishment of this diagnosis (point 5.3 of the grounds), and
- the specific interactions " applied to the human or animal body "(Without condition of type or intensity, ie simply requiring the presence of the body) that occur when are implemented those of the previous steps which are of a technical nature.
If a step is missing, it is, at most, only a data processing (point 6.2.2 of the reasons) or a data acquisition.
It is without effect to know, to know if a process should be excluded under the "diagnostic method", if a practitioner participates or must participate in the operations (presence or responsibility, point 6.1 of the reasons).
Chapter 74. G2 / 04
decision G2 / 04 was released on May 25, 2005.
Section 74.1. Transmission / assignment of an opposition
As in the decision G4 / 88, a board of appeal raised the question of whether an opposition could be freely assigned. For the Board of Appeal which made the referral, decision G4 / 88 did not apply to the case of a wholly-owned subsidiary's sale knowing that the opposition had been initiated by the parent company.
For the Grand Chamber (point 2.1.1 of the reasons), the decision G4 / 88 did not rule that an opposition could be assigned. On the other hand, decision G3 / 97 (point 2.2 of this decision) did say that an assignment of an opposition was not free.
It is clear that (point 2.1.2 of the grounds) the quality of a holder is the accessory of a patent. However, the holder and the opponent can not be treated in the same way, because the legal situations are different: the opposition is an action without title and is therefore not incidental to any entity.
In G4 / 88, the Grand Chamber validated the transfer of the status of opponent when transmitting part of the economic activities of a company. Nevertheless, for the Grand Chamber, the notion of 'part of the economic activities of an undertaking' can not be equated with the sale of a subsidiary which has its own activities (point 2.2 of the reasons).
Indeed, the subsidiary could very well have formed an opposition (possibly a co-opposition), which was not possible in the situation of grounds G4 / 88 (because the activity of a company "Has no legal personality, point 2.2.1 of the reasons).
Consequently, the status of opponent can not be freely transmitted, even if the opposition is in the interest of one of its sold subsidiaries.
Section 74.2. Identity of the applicant concerning a claim on the ownership of an action
As you have understood, we did not know here whether the opposition could be sold and therefore we did not know who had the opportunity to introduce the action.
The Grand Chamber proposes a pragmatic approach: even if the pleadings should not normally contain conditions (point 3.2.1 of the grounds), it is possible, in order to avoid any legal uncertainty, to lodge the appeal in the name of the person concerned. more likely (subjective interpretation, therefore ...) and, in the alternative, on behalf of another person, according to another possible interpretation.
Chapter 75. G3 / 04 - Intervention during appeal and withdrawal of appeal
decision G3 / 04 was issued on August 22, 2005.
In that case, the question was whether an appeal could continue with an intervener, even though the only complainant had withdrawn his appeal.
For the Grand Chamber (point 5 of the reasons), the intervener must necessarily pay the opposition fee (A105 (2) CBE73) in order to intervene, even though it would only be at the appeal stage.
However, theA107 CBE73 does not provide that the intervener can acquire the status of applicant if he makes an intervention at this stage of the procedure (point 6 of the reasons). Indeed, only the parties to the opposition can appeal (and the intervener was not).
Being a party by right to the proceedings does not mean that the intervener is an applicant.
So, if the sole appeal has been withdrawn, the proceedings can not be continued with a party who intervened during the appeal proceedings.
Chapter 76. G1 / 05 (1) - Exclusion and Disqualification
If a member of a Board of Appeal puts forward in his declaration of forbearance a reason which may in itself constitute a possible ground of challenge for partiality, the decision on the replacement of the member concerned in the Chamber should normally take due account of it ( point 7 of the reasons).
In the proceedings before the Enlarged Board of Appeal, if there are no particular circumstances casting doubt on the ability of a member of the Chamber to subsequently assess the arguments of a party impartially, a member of the Grande The Board of Appeal can not raise a suspicion of bias on the ground that a Board of Appeal to which the member concerned belonged took a position on the matter in a previous decision (point 27 of the reasons).
Chapter 77. G1 / 05 (2) - Correction of divisional application when parent application is no longer pending
decision G1 / 05 was released on June 28, 2007.
As a reminder,A76 (1) CBE73 has:
A divisional application [...] may be filed only for elements that do not extend beyond the content of the original application as filed
In the present case, the question arose as to whether a divisional application extending, on its actual filing date, beyond the content of the initial application (ie non-compliance with A76 (1) CBE73) can be corrected a posteriorieven though the parent request is no longer pending.
The Grand Chamber observes (point 2.6 of the reasons) that the EPC initially contained two provisions aimed at treating the national defense requirements (as divisional applications are filed with the EPO directly) and preventing request pending does not contain added elements. The current provision of theA76 (1) CBE73 result of the amalgamation of these provisions and there is no particular reason to interpret this provision differently. The purpose of this provision is therefore (point 2.7 of the reasons):
- define a formal requirement to prevent plaintiffs from adding to a divisional application new elements that could raise objections to national security and
- define the substantive condition of the patentability of divisional applications, namely that the latter can not contain any added element in relation to the application from which they originate.
Thus, for the Grand Chamber, having a divisional application that does not meet the requirements of theA76 (1) CBE73 when it is filed is not a ground of invalidity of this application (point 2.9 of the reasons).
A priori, theA96 (2) CBE73 applicable (point 3.4 of the reasons) and it is possible to amend its divisional application in order to enforce itA76 (1) CBE73 (point 3.6 and point 7 of the reasons). The preparatory work goes in this direction (point 4.2 of the reasons).
Whether the parent application is successful or not is irrelevant (point 8.1 of the reasons), since the divisional application is a new independent application.
Chapter 78. G1 / 06 - Cascade of Divisional Applications
decision G1 / 06 was released on June 28, 2007.
It contains the same facts and the same reasons as G1 / 05, but the decision is distinct.
The question that arose here was how to deal with the cascades of divisional applications with respect to theA76 (1) CBE73 : should we look at the previous application or the whole cascade of divisional applications to know the " elements of the initial application "?
First of all, the Grand Chamber notes that, although not explicitly mentioned in theA76 (1) CBE73Divisional divisional applications (ie divisional cascade) seem possible since a divisional application is a request like any other (point 10.2 of the reasons).
For the Grand Chamber, the date of filing of the original application can only be assigned if the divisional application does contain elements of that initial application and all intermediate divisional applications also contain those elements.
An item that would have been omitted from the filing of an earlier application in the series can not be reintroduced in this application or in any divisional application that follows it in the series (point 11.2 of the reasons).
Chapter 79. G2 / 06 - Use of embryos
decision G2 / 06 was released on November 25, 2008.
Following the Directive 98/44 / EC of the European Parliament, the rules R23ter CBE73 at R23sexies CBE73 were added to the Regulations (decision of the Board of Directors dated 16 June 1999, entered into force on 1 September 1999). In particular, R23d (c) CBE73 states that European patents are not granted for Uses of human embryos for industrial or commercial purposes As being contrary to public order (A53 a) CBE73).
The question then was whether the R23d (c) CBE73 applied retroactively to applications filed before the entry into force of this rule.
On this issue, the Grand Chamber was asked to make a preliminary ruling to the CJEU. The Grand Chamber considers that nothing obliges it to do so and that nothing authorizes it (points 3 to 11 of the reasons): if this is the case for national courts (Article 234 of the EC Treaty) the Grand Chamber is rather an international organization whose Contracting States are not all members of the EU (point 4 of the reasons).
For the Grand Chamber (point 13 of the reasons), the fact that the Council does not provide for a transitional provision is an unmistakable sign that these rules must be applied immediately to all pending applications. This is reinforced by the reference to theA53 a) CBE73 : this list simply clarifies an article already present and there is no indication that commercial exploitation of human embryos has ever been considered patentable.
The R23d (c) CBE73 explicitly excludes uses of human embryos ": should products that can only be obtained through the use of human embryos (at least on the filing date) be allowed?
For the Grand Chamber, the formulation of the claim (ie product vs. process) must not play (point 22 of the reasons). Otherwise, it would suffice to write skilfully and judiciously his claim to avoid exclusion ... which would be contrary to the objective pursued: respect for human dignity.
So, products obtained through the use of human embryos must also be prohibited (even if after the filing date there is a method that does not use human embryos, point 33 to 35).
Chapter 80. G1 / 07 - Surgical method
The question that arose was whether, in a predominantly non-surgical procedure, a "small interaction" with the human body (such as the injection of a contrast medium into a vein) should be excluded under the exclusion of "surgical methods" (A52 (4) CBE73 or A53 (c) EPC) even if its purpose was not to heal or maintain the person alive.
For the Grand Chamber, it is clear that the claim fora single "surgical" step makes the claim fall under the prohibition ofA53 (c) EPC (point 3.2.5 of the reasons).
IIt is not important to know the purpose of this "surgical" step : whether performed for treatment, for diagnosis or for aesthetic purposes, the answer is the same (188.8.131.52 to 3.3.10 of the reasons). Indeed, if one had to understand "surgical method" by "surgical method for a therapeutic purpose", this exclusion would already be covered by the prohibition of "therapeutic methods" and would therefore be of no use.
The fact that decision G1 / 04 (point 6.2.1 of that decision) indicated that " Surgical methods within the meaning of Article 52 (4) EPC include any physical intervention on the human or animal body in which the maintenance of the life and health of the subject is of paramount importance Actually means (point 3.3.5 of the reasons) that the surgical methods are methods requiring special attention because of the danger they pose to the person who is undergoing the procedure.
In plain English (point 184.108.40.206 of the reasons) the Grand Chamber considers that a surgical step is;
- invasive stage,
- representing a substantial physical intervention on the body,
- which requires professional medical expertise,
- and that presents a health risk, even when done with the necessary professional care and expertise.
Attention, the risk for health must be related to the mode of administration and not to another element (eg to the contrast agent injected as such which could be allergenic) (220.127.116.11 of the reasons).
It is of course possible to provide a "disclaimer" to rule out a surgical application on the human or animal body.
It is also possible to omit a step if the claim remains clear (point 4.3.1 of the reasons). In particular, one may seek to use formulations such as "pre-injected", etc.
Chapter 81. G2 / 07 - Essentially biological process
It's called the "Broccoli" decision 🙂
As you know, theA53 (b) EPC provides that essentially biological processes for obtaining plants or animals Are excluded from patentability even if we accept microbiological processes ».
According to R26 (5) EPC, a process for obtaining plants or animals is essentially biological "if it consists full in natural phenomena such as crossing or selection ".
In this case, there was claimed a non-microbiological process for obtaining plants comprising a crossing step, but also a selection step. Is this process patentable if the process includes a "technical" step (additionally or in a crossover / selection step)?
For the Grand Chamber (reasons 18.104.22.168):
- must be excluded a method comprising a crossing step and a selection step and that the human intervention is intended to allow the execution of these steps.
- should not be excluded a method comprising a crossing step, a selection step and an additional step of a technical nature:
- which autonomously introduces a character into the genome or modifies a character in the genome (the introduction or modification of this trait does not result from the mixing of the genes of the selected plants for the sexual crossing);
- which is performed as part of the crossing and selection steps (so any additional technical steps that are performed either before or after the cross-breeding and selection process) should be ignored.
Chapter 82. G1 / 08 - Essentially biological process
Decision G1 / 08 was issued on December 9, 2010 (the French text is not available in HTML so here is the decision G1 / 08 in PDF format which was published in the OG 2012, 206).
It contains the same facts and reasons as decision G2 / 07.
Chapter 83. G2 / 08
Section 83.1. Dosage / dosage of a drug
In the present case, the Board of Appeal wondered whether a 'use of a product X to produce medicinal product for the treatment of oral disease Y once a day Could be patentable if that use was known except for the dosage.
In addition, theA54 (5) EPC (which had no equivalent in CBE73) states that a known substance may be patentable " for any specific use Until then unknown (we speak of " second therapeutic effect"). Thus, the legal gap that existed before (and which was filled by decision G6 / 83 of the Enlarged Board of Appeal) no longer exists (point 5.9 of the reasons).
For the Grand Chamber, there is no need to interpret for any specific use "In a restrictive way (ie" to cure a new disease ", Point 22.214.171.124 of the reasons, point 5.10 of the reasons), as this would be contrary to the usual interpretation of this expression.
Thus, it is appropriate to accept the patentability of a different therapeutic treatment If, of course, the conditions of novelty and inventive step are respected (paragraph 5.10.9 of the Reasons).
This different therapeutic treatment may very well be a "dosage" (point 6.1 of the reasons). So, a new dosage can make patentable a claim (point 6.2 of the reasons).
Section 83.2. End of Swiss type claims
As'A54 (5) EPC did not exist under the CBE73, the Grand Chamber had allowed Swiss-type claims in G6 / 83 (7.1.1):
- instead of claiming " Drug containing the compound X for therapeutic use Y »,
- we claimed " Using a compound X to obtain a medicinal product for therapeutic use Y ».
Indeed, the first formulation did not make it possible to overcome the problems of novelty. Since the EPC 2000, this problem has disappeared and there is no need to apply the previous case law (point 7.1.2 of the reasons).
The Swiss-style claims posed, in fact, the problem (point 7.1.3 of the reasons) of the absence of any functional relationship between:
- therapeutic characteristics (possibly conferring novelty and inventive step) and
- the claimed manufacturing process.
Thus, the formalism of "Swiss" type claims (applicable from 3 months from the motives of the Grand Chamber) should no longer be used.
Chapter 84. G3 / 08 - Computer Program
In this case, the President had seized the Enlarged Board of Appeal (under A112 (1) (b) EPC), because it seemed to him that some decisions were "divergent" concerning the patentability of software:
- T 1173/97 : this decision focuses on the function of the computer program (Is the claimed program of a technical nature?) and completely ignores the wording of the claim (in this case, the board accepts the wording " computer program Because the latter possesses, potentially, the capacity to produce an "additional" technical effect);
- T 424/03 : this decision focuses on the wording of the claim (in this case, the board refuses the wording computer program But accepts " product computer program " , or " computer-implemented method«)
For the Grand Chamber, "divergent decisions" and "evolution of the law" should not be confused: the evolution of the law does not allow a valid referral by the Grand Chamber under theA112 (1) (b) EPC (point 7.3.1 of the reasons).
In fact, it may happen that the boards of appeal change their rifle (possibly radically) by declaring that previous practice is no longer relevant (point 7.3.5): in this case, there are no differences, because it is clear that the old practice should no longer be followed.
According to the Grand Chamber (paragraphs 10.9 to 10.12 of the reasons), it should be considered that there is no divergence between these two decisions, but rather a natural evolution of the case-law (since only changes the legal basis for rejection or grant and not the decision as suchpoint 10.13 of the reasons).
As a result, the referral to the president is not valid.
Chapter 85. G4 / 08 - Language of the procedure upon entry into the PCT phase
In this case, the question was whether it was possible to freely choose the language of the proceedings (possibly by filing a translation) if the PCT application had already been published in a language of the Office. .
TheA14 (3) EPC states that "the official language of the European Patent Office in which the patent application European has been filed or translated must be used as the language of the procedure "(Point 3.2 of the reasons).
For the Grand Chamber (point 3.4 of the reasons), the fact that theA153 EPC clearly distinguishes between the languages of the Office and other languages makes it possible to understand that the expression "another language" of theA153 (4) EPC makes good reference to " a other than the languages of the Office " and no " a language other than that desired by the applicant as a language of ». In addition, the reference to provisional protection reinforces this point: how can one understand otherwise that provisional protection is refused on the pretext of having been published in French while the language of the desired procedure is English?
No provision of the PCT (and in particular its R49.2 PCT) provides for the possibility of choosing the official language if the application is already in one of the authorized languages (point 2.8 and point 3.6 of the reasons).
So, it is not possible to freely choose the language of the procedure (possibly translating his request) if the PCT publication language is already one of the official languages (paragraph 3.10 of the reasons).
Similarly, the EPO can not authorize, during the procedure, the substitution of the language of the proceedings of one of its other official languages as a new language of the proceedings. Indeed, this possibility has been removed from the R3 (1) CBE73 in 1991 and can not be added by see Praetorian (point 4.5 of the reasons).
Chapter 86. G1 / 09 - Pending Application and Divisional Application
As you know, the R36 (1) EPC states that it is possible to "file a divisional application for any prior European patent application still pending ».
The question that arose was whether an application that has been rejected remains pending until the expiry of the appeal period, when no appeal has been lodged. Or before ?
Indeed, there is no definition in the EPC of "pending application" (point 3.1 of the reasons).
First of all, "pending proceedings" and "pending applications" should not be confused (point 3.2.2 of the grounds), since the proceedings can be suspended while the application is still pending.
The meaning of "pending application" in the R36 (1) EPC relates to the procedural right of the plaintiff to bring an action: the division (point 3.2.3 of the reasons). Thus, substantial rights that the EPC confers on demand still exist when the application can be divided (point 3.2.4 of the reasons).
Now, theA67 (4) EPC clearly shows that the substantive rights conferred by the patent application disappear after was dismissed pursuant to a decision that has become res judicata ». Thus, it is necessary that the rejection decision be final for the substantive rights to disappear (point 4.2.1 of the reasons).
Consequently, an application may be divided, even if the application is rejected, but until the expiry of the appeal period (point 4.2.4 of the reasons) even if no remedy is formed.
Chapter 87. G1 / 10 - Correction of a patent by correction of a decision
The R140 EPC has:
In decisions of the European Patent Office, only errors of expression, transcription and obvious mistakes can be rectified.
In this case, an applicant could rely on the R140 EPC to correct the text of a patent (for example, in opposition proceedings). The articulation with the pending procedure (ex parte vs. inter partes), inter alia, put questions to the Board of Appeal.
For the Grand Chamber (point 5 of the reasons), it is not possible to correct a patent using the R140 EPC (and this had already been said for the R89 CBE73 in decision G1 / 97). Indeed, it appears from the travaux préparatoires that the legislator wanted to prevent third parties from being prejudiced.
In any case, from the date of issue, a European patent no longer falls within the competence of the EPO (point 6 of the reasons).
It should be noted that the applicant can completely correct a manifest error prior to delivery by means of the R139 EPC (point 9 of the reasons). In addition, the applicant has a period of 4 months to agree on the text delivered (point 10 of the reasons). If the EPO renders a decision that is not in accordance with the agreement of the applicant, the latter may then lodge an appeal, because the latter has been injured by the violation of theA113 (2) EPC (point 12 of the reasons).
In conclusion, the R140 EPC rectifies errors in EPO decisions (non-grant), not errors in patents filed by a patent applicant or patentee (Reasons 11).
Chapter 88. G2 / 10 - Disclaimer and A123 (2)
The question that arose was whether a disclaimer could be contrary toA123 (2) EPC if the excluded embodiment was explicitly described in the application.
In the view of the Grand Chamber, although the subject of disclaimers was extensively discussed in decision G1 / 03 (point 3.9 of the grounds), this decision does not address the problem of the present question: that of a disclaimer which nevertheless aims at an embodiment (or more generally, an object) described.
In any event, decision G1 / 03 never stated that the introduction of a disclaimer never changed the technical content of the application (point 4.4.2 of the reasons).
So, and in accordance with the application of theA123 (2) EPC, it should be verified that the introduction of the disclaimer does not bring new technical information to the person skilled in the art (point 4.5.1 of the reasons, direct and unambiguous deduction of the application as filed on the basis of his general knowledge).
For example, if the introduction of a disclaimer actually causes selection within an interval of an unwritten subinterval, it is likely that this disclaimer should not be allowed (reason 4.5.4)
To determine whether this is the case or not, it is necessary to proceed to a case by case assessment covering all technical aspects, taking into account:
- the nature and extent of disclosure in the application as filed,
- the nature and extent of the excluded object,
- as well as its relation to the object remaining in the claim as modified.
A priori, the fact that the excluded embodiment is disclosed in the description is irrelevant (point 4.5.5 of the reasons): indeed, the applicant can choose the embodiment he wants and he is not obliged to integrate them all.
Chapter 89. G1 / 11 - Jurisdiction of the Legal Boards of Appeal
decision G1 / 11 was released on March 19, 2014.
In that case, a legal board of appeal had been seised to hear an appeal against a decision by a examining division to refuse the refund of search fees (problem of non-unity of invention).
The legal chamber was embarrassed because even if formally theA21 (3) (c) EPC designates it as competent (because A21 (3) (a) EPC and A21 (3) (b) EPC not applicable), non-unity of invention is a problem of technical appreciation.
The Grand Chamber agrees with the opinion of this Legal Board of Appeal: it stresses that the spirit of theA21 (3) (c) EPC was to entrust to the legal chamber only purely legal issues.
Therefore, and in the face of this legal vacuum, the Grand Chamber indicates that a technical chamber must be competent for the problems of reimbursement of the search fee referred to in R64 (2) EPC.
Chapter 90. G1 / 12 - Correction of the name of the applicant
decision G1 / 12 was released on April 30, 2014.
In that case, a board of appeal wondered whether it was possible to correct the applicant's name (according to the R101 (2) EPC or according to the R139 EPC) if the true intention was to file on behalf of the person who should have filed the appeal.
According to the Grand Chamber, it is quite possible to correct the name of the applicant:
- using the R101 (2) EPCif, within the time limit for the appeal, the applicant is identifiable:
- the true intention of the applicant must be assessed, which is evaluated on the basis of the principle of free evaluation of the evidence;
- using theR139 EPC, under the conditions laid down by the case-law even outside the period of recourse:
- the complainant bears the burden of proof, which must be of a high standard.
Chapter 91. G2 / 12 - Product obtained by an essentially biological process
decision G1 / 12 was released on March 23, 2015.
It's called the "Tomatoes II" decision.
In that case, the members of a Board of Appeal wondered whether the exclusion from patentability of essentially biological processes for the production of plants (A53 (b) EPC) excluded the products obtained by these processes.
The Grand Chamber sees no reason for this exclusion: products obtained by excluded processes can be patented (even if they are claimed in the form of a patent). product-by-process).
Chapter 92. G1 / 13 - Status of a Party / Application of National Law
decision G1 / 13 was released on November 25, 2014.
In this case, the Grand Chamber recalls the supremacy of the national law of the States concerning the qualification of legal personalities.
If a company is dissolved, but retroactively its legal personality is restored, the boards of appeal have no reason not to take into account this retroactive restoration.
Chapter 93. G2 / 13 - Product obtained by essentially biological process
decision G2 / 13 was released on March 23, 2015.
It's called the Broccoli II decision.
This decision is identical to decision G2 / 12.
Chapter 94. G1 / 14 - Meaning by a Different Way than the LRAR
decision G1 / 14 was released on November 19, 2015.
In fact, in this case the Grand Chamber ruled the question inadmissible and therefore did not answer the question.
However, the Grand Chamber clarifies that, if a decision is not delivered by registered mail with acknowledgment of receipt, as required by the R126 (1) EPC (but, for example, using UPS), there is a vice of meaning.
Indeed, the first sentence of the R126 (2) EPC can not be satisfied: therefore, no delay can begin to run, even if it would be attested that the addressee would have received this document
Chapter 95. G3 / 14 - Clarity in opposition
decision G3 / 14 was released on March 24, 2015.
In that case, a legal board of appeal had been seised to hear questions relating to the examination of clarity in opposition proceedings. The question was to what extent the clarity of an amended claim could be examined.
However, can the Opposition Division examine the clarity of a simple combination of two existing claims, or can it simply examine the clarity of the amendment (eg change of a term)?
The Grand Chamber considers that we can not have an extensive interpretation of theA101 (3) EPC : Clarity objections must originate in the changes made.