If the positive law is mainly contained in the convention and in its implementing regulations, one should not neglect to look at the clarifications given by the Grand Board of Appeal 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 & #8220; l & #8217; use of & #8217; a compound intended for therapeutic use & #8221; could be accepted. This question was crucial for the pharmaceutical industry.
Firstly (point 13 of the reasons), the Grand Chamber recalls that any wording & #8220;Use of a substance for the treatment of the human or animal body& #8221; would amount to claiming a therapeutic method yet considered a non-invention (A52 (4) CBE73 and today #8217; excluded from patentability by A53 (c) EPC): such a formulation is therefore to be excluded.
On the other hand, the Enlarged Board of Appeal indicates that the wording & #8220;Use of a compound X in order to obtain a medicament intended for therapeutic use Y& #8221; is acceptable since #8217; no exclusions apply to the manufacture of drugs. Of course, it is necessary that the use Y is news and inventive (point 23 of the reasons).
This latter formulation is called & #8220; Swiss type claim & #8221; .
Note that this decision is no longer valid due to the change in the article.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 the present case, the owner of a patent had filed an opposition to 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 qu & #8217; it was formed by the holder of the said patent (point 8 of the reasons).
Indeed, it seems desirable to allow everyone (A99 (1) CBE73) to object in order to & #8220;guarantee as far as possible that the European Office will only issue and maintain European patents if these are found to be valid& #8221; even if this opposition is filed by the owner wishing to limit his patent (point 3 of the reasons).
Note that this decision n & #8217; is no longer valid since decision G9 / 93 which overturns this jurisprudence on the grounds that l & #8217;A99 CBE73 consistently provides that the opposition proceeding is a proceeding inter partes (especially A99 (4) CBE73).
Chapter 5. G1 / 86 & #8211; Reinstatement of an opponent in his rights
decision G1 / 86 was issued on June 24, 1987.
As you know, when filing an appeal on opposition, an opponent or the holder can appeal by filing a notice of appeal (within 2 months from the reasons, A108 CBE73 or A108 EPC) then filing a brief (within 4 months of the reasons).
If the letter from l & #8217;A122 (1) CBE73 (ie & #8220; The applicant or the holder of & #8217; a European patent & #8221;) allows the holder to benefit from & #8217; restitutio in integrum, what about the opponent?
The Grand Chamber indicates that & #8217; one should not have a strict reading of & #8217;A122 (1) CBE73. Thus, an opponent can be reinstated in his rights under l & #8217;A122 (1) CBE73 s & #8217; it has not filed 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).
Please note, the opponent does not benefit from the provisions of the & #8217;A122 (1) CBE73 for the time limit for filing the appeal (ie the first 2 month time limit for filing l & #8217;act appeal, see point 5 of the reasons). If the holder nevertheless benefits from a reinstatement in his rights for the two aforementioned deadlines, the Grand Chamber explains this & #8220; favoritism & #8221; by the fact that :
- the holder cannot remain in uncertainty for a long period concerning the extent of his rights;
- the opponent can always bring an action for nullity.
TheA122 EPC being substantially identical, that decision remains a priori applicable with the EPC 2000.
Chapter 6. G1 / 88 & #8211; Silence of the opponent
decision G1 / 88 was delivered on January 27, 1989.
Suppose the following situation: an opponent does not, after receiving a notification according to R58 (4) CBE73 (Silly & #8217; hui R82 (1) EPC), presented with observation within 1 month on the text in which the EPO plans to maintain the patent.
However, this does mean that the opponent agrees with this text (& #8220;Who tacet consent videtur& #8220;) and does that make a possible appeal by the opponent inadmissible?
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 would simply not be in the spirit of the EPC:
- when the omission of an act leads to a loss of rights, the EPC explicitly provides for it (point 3.1 of the reasons);
- 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 the present case, the rights holder had sought, in the course of the opposition, to change the category of a claim. Is this modification acceptable and not contrary to l & #8217;A123 (2) CBE73.
The Grand Chamber indicates that the change of category (eg & #8220;compound" or "use of the compound& #8220;), whether this occurs in examination or in opposition (without the need to look at any national law, see point 3.3 of the reasons), is & #8217; 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 & #8217; a claim of & #8220;compound& #8221; in a claim d & #8217; & #8220;use of this compound& #8221; with a view to & #8217;get an effect given n & #8217; is not contrary to l & #8217;A123 (2) CBE73 (point 5.1 of the reasons). Attention, because if the claim of & #8217; use relates to & #8217;obtaining a product, it would be prohibited because it would protect this product due to the provisions of l & #8217;A64 CBE73.
Section 7.2. Second non-therapeutic application
In the present case, a claim was directed to the use of a perfectly known additive in order 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 authorizing a claim for use when the only new characteristic resides in the purpose assigned to that use?
The Enlarged Board of Appeal considers that & #8220; l & #8217; new use of & #8217; a known compound & #8221; aims, in reality, l & #8217; 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, & #8220; l & #8217; new use of & #8217; a known compound & #8221; is therefore validated by the Grand Chamber (see point 10.3 of the reasons).
Chapter 8. G4 / 88 & #8211; Transfer of opposition #8217;
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 transmitted to the heirs of the deceased opponent;
- freely surrendered;
- sold with the company or part of the company interested in the field of the invention under consideration.
For the Grand Chamber (point 6 of the reasons), it is clear that the transmission of & #8217; opposition is carried out & #8220; naturally & #8221; during a transfer of a part of the company (understood in its broadest sense, in the economic sense, point 5 of the reasons), because the opposition constitutes an accessory of this part of the company if the opposition has been engaged in the interest of this part (see the reasons section).
Chapter 9. G5 / 88 & #8211; 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 neighboring premises in Berlin.
Thus, very frequently, dazed little ones 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 an administrative agreement with the German office on June 29, 1981. This agreement provides in particular that the documents delivered to the German Office would be presumed to have been received by the EPO on the date of receipt of the German Office.
In the present case, an opposition had been lodged with the German Office, but received by the EPO after the period of 9 months. We understand that the licensee wishes to see this opposition declared inadmissible.
The question put to the Enlarged Board 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 was not approved by the board of directors.
According to the Grand Chamber, or the power of representation of the President defined by l & #8217;A5 (3) CBE73 (point 2.2 of the reasons), or its obligation to take & #8220; all useful measures… in order to & #8217; ensure the functioning of & #8217; European Patent Office & #8221; from l & #8217;A10 (2) CBE73 (points 2.6 and 2.7 of the reasons) do not justify such an agreement.
However, in principle of & #8220;protection of good faith and legitimate expectations& #8221; , the Grand Chamber decided that the ineffectiveness 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 & #8211; 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 & #8211; 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 this decision, the Grand Chamber recalls that (see point 3. of the reasons), even at the stage of PCT research, the research division acting as the ISA must appreciate the novelty and inventive step of the claims in order of & #8217; appreciate the & #8217; invention unit in accordance with & #8217;A17.3.a PCT (even if this assessment does not constitute a true & #8220; examination & #8221; within the meaning of the EPC or the PCT).
Consequently, it is entirely possible for the ISA to formulate objections of non-unity a posteriori (point 5 of the reasons) and doing so #8217; the EPO may ask the applicant for payment of & #8217; 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 & #8211; Correction of obvious errors
decision G3 / 89 was issued on November 19, 1992.
In the opinion of the Grand Chamber, l & #8217;A123 (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 deduce from the description (point 2 of the reasons).
The skilled person must therefore be able, on the date of filing (ie outside any subsequent publication) and based on general knowledge in the field considered:
- of note objectively and unequivocally l & #8217; error, and
- of deduct simply the correction to make.
Therefore, this correction doesn & #8217; a 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 (written, testimony, etc.) demonstrates the general knowledge of the skilled person on the date of filing and not after (point 7 of the reasons).
Chapter 16. G1 / 90 & #8211; Revocation of patent for non-payment of printing fee
decision G1 / 90 was issued on March 5, 1991.
In the present case, the holder of a patent coming from #8217 to be maintained in modified form (ie after opposition) had not paid the printing fee prescribed by the #8217;A102 (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 in #8217;A102 (4) CBE73 or A102 (5) CBE73 had to be the subject of a decision (subject to appeal, A106 CBE73) or d & #8217; a simple observation provided for by the R69 CBE73 (not subject to direct appeal).
The Grand Chamber observes at the outset that if the convention wished to indicate that the penalty for non-compliance with the payment of the printing tax is the loss of the right of office, the wording of the article would probably have been #8220;is deemed revoked& #8221; (point 4 of the reasons) or & #8220;is deemed withdrawn& #8221; (point 6 of the reasons) as everywhere else in the convention.
For the Grand Chamber, the revocation of #8217; a patent for non-compliance with the payment of the printing tax (#8217;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 & #8220;meaningless& #8221; (point 13 of the reasons) contrary to the assertions of the Board of Appeal) even if the loss of rights does not relate to substantive patent law (ie novelty, inventive step, etc.). The remedy may be particularly useful in order to dispute factual problems (eg effective date of payment).
- the presentation of & #8217; a request for restitutio in integrum is not really the source of any legal uncertainty (point 14 of the reasons) even if the decision has not yet been rendered. The decision on a subsequent appeal (which would be brought against the decision) will be merged with the decision on the restitutio in intergrum.
- there is no compelling need to bring about the 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 & #8211; Jurisdiction of the Legal Board of Appeal for decisions rendered by an opposition division
decision G2 / 90 was issued on August 4, 1991.
In the present case, a patent holder had forgotten to pay the publication fees for his patent after publication. The formalities officer had given him two more months and then revoked his patent. For the holder who appealed, the formalities officer did not have any 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 in l & #8217;A21 CBE73. If the Legal Board of Appeal can intervene in the case of a decision rendered by an examination division (#8217;A21 (3) (c) CBE73, point 3.2 of the reasons), it is in no way intended that it may intervene for the decisions of & #8217; an opposition division (#8217;A21 (4) CBE73point 3.3 of the reasons).
In the opinion of the Grand Chamber, the text is clear and an oversight should not be overlooked (points 3.3 and 3.4 of the reasons): only the technical board of appeal is competent for decisions rendered by an opposition division.
TheA21 EPC being identical, this decision still seems to apply with the EPC 2000.
Chapter 18. G1 / 91 & #8211; Unit 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, l & #8217;A102 (3) CBE73 provides that & #8220; the patent and the & #8217; invention which makes it the object & #8217; object satisfy the conditions of this convention & #8221; . These terms do they include the unit of invention (point 2.1 of the reasons)?
In the opinion of the Grand Chamber, the reason for the requirement of #8217; & #8220;invention unit& #8221; is d & #8217;administrative order (point 4.1 of the reasons): l & #8217; utility is for the classification of patents with the international nomenclature, but also d & #8217; avoid that the applicant improperly include several inventions in the same application and avoids, in fact, important research fees and deposit.
D & #8217; moreover, the Grand Chamber notes that the division, although initially planned by the preparatory work for the convention until #8217; at the end of the opposition, had been limited to simple patent applications (point 6.2 of the reasons), because it was & #8220;useless& #8221; due to & #8217;absence of & #8217; possible opposition 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. Reimbursement of appeal fees at the time of the existence of several applicants
In the present case, certain boards of appeal retained the first appeal fee collected and reimbursed the following appeal fees, since the & #8220; other parties to the said proceedings are automatically parties to the appeal proceedings & #8221; as specified by l & #8217;A107 CBE73.
D & #8217; other rooms 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 upon withdrawal of an appeal by an applicant
The Grand Chamber emphasizes that an applicant who did not pay #8217; n & #8217; 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 l & #8217;A107 EPC n & #8217; has not changed.
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 delays are explicitly excluded by l & #8217;A122 (5) CBE73 while the last three delays are not listed there… Is this an oversight? Should it be considered that these are also excluded from the restitutio in integrum ?
In the opinion of the Grand Chamber, all these time limits must be considered in the same way: thus the time limits for payment of the search fee, the national tax and the time limit for the presentation of the request for examination do not benefit of the restitutio in integrum (for European applications, but also for Euro-PCT applications).
This decision no. #8217; is no longer applicable with the EPC 2000, since 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 infringement proceedings had been brought) had submitted a declaration of intervention in accordance with #8217;A105 (1) CBE73, while the opposition division decided to maintain the patent in modified form a few weeks before ...
Is the intervention valid knowing that the time limit for appeal still ran (ie knowing that the decision was not passed in force of res judicata)?
For the Grand Chamber, l & #8217;intervention n & #8217; is not possible in this case, except that one of the parties to the opposition proceedings forms an appeal: indeed, 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 the present case, the owner of a request alleged that one of the members of the opposition division was not impartial, but the director had refused to recompose the room. [#8217;
Section 22.1. Independence of the agents of the organs of first instance of the EPO #8217;
The Grand Chamber notes that (point 2 of the reasons) l & #8217;A24 (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 exam division,
- the opposition division,
However (point 3 of the reasons), this obligation is, in truth, a general principle and must apply to all.
Section 22.2. Decisions subject to appeal
Can the holder appeal against the director's refusal to recompose the room for opposition?
The Grand Chamber indicates (point 5 of the reasons) that #8217; there is no legal basis for such a remedy.
As specified by l & #8217;A106 (3) CBE73, it is not possible to appeal against a decision which does not terminate a procedure (like this decision) unless the said decision provides for independent appeal.
Of course, this question may be the subject of an appeal with the final decision (point 6 of the reasons).
This decision remains valid with the EPC 2000, l & #8217;A106 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 stipulates that people domiciled in the territory of a member country can file documents in their language (other than French, English, German) and thus benefit from tax reductions (R6 (3) CBE73).
Section 23.1. Delivery of the translation simultaneously
In the present case, a person had appealed against a decision by simultaneously supplying a written document in his language as well as a translation.
As a preliminary point, the Grand Chamber considers that #8217; there is no contraindication to filing a translation of the documents filed at the same time than these parts (point 9 of the reasons). However, we must be careful, because these translations should not be taken for the originals and for example: as an illustration, translations cannot be transmitted BEFORE the originals at the risk of #8217; be considered to be 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 holder files several documents to carry out a procedural document, only some of them being in his language?
A priori, there is no reason to consider that 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 for the examination fee (point 19 of the reasons),
- l & #8217; notice of appeal for the appeal fee (and not the memorial, 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 he had withdrawn… can the appeal procedure continue ex officio (a bit like for the opposition R60 (2) CBE73, point 6 of the reasons)?
Even if the non-continuation of & #8217; office may allow & #8220; to survive & #8221; errors in first instance decisions, the Enlarged Board of Appeal do not think that it would be useful to allow the boards of appeal to continue of their own motion an appeal brought.
- There is an opposition procedure open to all if a third party believes that there is an error in a decision (point 10.1 of the reasons)
- A priori, there are not that many errors at first instance (point 10.2 of the reasons);
- Although the office is compelled to issue valid and not tainted titles, it is necessary to close the procedure for the proper management of the office's resources at a time (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 claims not challenged by an opponent or an applicant? Are they bound by the declaration of the opponent of the R55 (c) CBE73 (now R76 (2) (c) EPC)?
For the Grand Chamber, the applicant's obligation 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 n & #8217; has no rights to analyze untested claims (point 11 of the reasons).
On the other hand, it is entirely possible to analyze dependent claims which have not been attacked (point 11 of the reasons):
- if the independent claim & #8220; mother & #8221; was attacked;
- if their validity is, prima faciedoubtful.
Section 26.2. Reasons for the challenge
Is the reasoning the same for the grounds of third party claims? Are the opposition divisions or the boards of appeal bound by the declaration of the opponent?
For the Grand Chamber, l & #8217;A114 CBE73 allows the opposition division to examine ex officio certain grounds not raised, but this must remain exceptional, in particular if prima facie these grounds oppose, in whole or in part, maintaining the patent (point 16 of the reasons).
For the procedure before the boards of appeal, the principle of #8217;A114 CBE73 much more restrictively, because it is a non-inquisitorial legal procedure (point 18 of the reasons).
Thus, an argument not presented at the opposition stage by l & #8217; 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 & #8211; 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 the present case, the facts were the following chronologically:
- 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 delivered by the opposition chamber to the internal mail service without taking this last proposal into account.
- 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 to say at the end of the oral procedure. Indeed, the body which rendered it can no longer return to it (except in the event 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.
This leaves only & #8220;the date of the delivery to the internal mail service of the EPO, by the formalities section of the division& #8221; (point 9 of the reasons). This date can, 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 & #8211; Public availability of a composition or a structure of a disclosed product
decision G1 / 92 was issued on December 18, 1992.
The question that arose in the present case was whether the composition of a product was accessible to the public by the simple fact that this product was accessible to the public (analyzes being necessary to find the composition)?
For the Grand Chamber, if the skilled person succeeds in discovering the composition or the internal structure of the product and reproducing it without excessive difficulty, then 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 at all provide that the skilled person should be 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) of as much 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 undue difficulty).
This decision has no reason to be challenged 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 search division requests payment of & #8217; an additional search fee (R46 (1) CBE73);
- the applicant does not pay this search fee;
In this case, can the applicant request an examination on the second invention (which has not been researched)?
The Grand Chamber considers that (point 2 of the reasons), if despite the invitation of the search 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 its 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 & #8217; in case of & #8217; invention & #8220; stolen & #8221; by an unauthorized applicant (e.g. filing by an employee when the invention came back to the employer), the person having been stolen from the invention can file a new application.
The question was whether the & #8217;A61 (1) (b) CBE73 s & #8217; applied even if the request of the unauthorized applicant n & #8217; was no longer pending (e.g. lack of presentation of the request for examination, forgetting of a tax, etc.). In fact, the security of third parties would not be respected in this hypothesis, legitimately thinking that the invention subject to patents is free.
For the Grand Chamber, if the procedure of l & #8217;A61 CBE73 n & #8217; was no longer applicable when the first request is no longer pending, this would be tantamount to accepting that a court recognizes a person's patent right, but that the EPO refuses such a right for reasons of internal procedures (point 5 of the reasons).
Therefore, there is no reason to refuse, to a person who has been recognized a right on an invention by a national authority, the filing of a request according to #8217;A61 (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 partes, if a party who does not appear at the oral proceedings, renounce his right to be heard? Can we then cite new documents or new arguments to the & #8217; against his request or his patent?
In fact, this question is much broader, because (point 3 of the reasons) it concerns the contradictory principle when rendering the reasons. Indeed, l & #8217;A113 (1) CBE73 has & #8220;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 prior to the oral procedure (and which confirm the allegations of a party), but produced only during this oral procedure;
- of new arguments (point 10 of the reasons) insofar as they do not modify the grounds on which the decision is based (because c & #8217; is only new reasoning invoked in support of the legal and factual means already presented).
There is no reason why the EPC 2000 should have changed 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 files an appeal, can another party to the proceedings (a non-applicant opponent, the non-applicant holder, the Board of Appeal, etc.) ask to modify, to the detriment of the applicant, the decision 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 holder is the sole applicant, the opponent or the Board of Appeal may not request the rejection of a claim set granted by the opposition division (point 14 of the reasons).
If the opponent is the sole applicant, the patent owner cannot incidentally extend the scope of his claims (point 16 of the reasons).
Chapter 37. G10 / 92 & #8211; Divisional application and parent application about to be issued
decision G10 / 92 was issued on April 28, 1994.
The decision raised the issue of the deadline for filing a divisional application. In other words, until #8217; until when a mother request is pending when the latter is about to be delivered
You should know that the R25 (1) CBE73 has undergone many modifications during the life of the CBE73. In this case, R25 (1) read as follows in this decision:
(1) Applicant may file divisional application relating to an initial European patent application still pending until #8217; at the time when, in accordance with Rule 51 (4), he agrees to the text in which it is intended to grant the European patent.
For the Grand Chamber, there is therefore no difficulty in interpretation and if the applicant has agreed to the text of the parent application, it is no longer possible to divide.
This decision is not more topical since the drafting of the R25 (1) CBE73 (then R36 (1) a) EPC, now #8217; deleted today) has been completely changed.
Chapter 38. G1 / 93 & #8211; Restrictive feature, pincers & #8220; 123 (2) -123 (3) & #8221;
decision G1 / 93 was issued on February 2, 1994.
Imagine that during the examination, the holder adds a limiting characteristic to a claim. This characteristic is not, in reality, 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 reasons), a principle which would then mean that one or the other provision should apply according to the case of the species. These provisions are good independent and they must both apply in case of modification of a patent.
Thus, if, due to the presence in the claims of & #8217; a feature violating the provisions of l & #8217;A123 (2) CBE73, a modification is envisaged, this modification must respect l & #8217;A123 (3) CBE73 :
- the amendment is refused if it extends the scope of the claims;
- the modification can be accepted if the modification consists in replacing the characteristic by a characteristic & #8220; more restrictive & #8221; 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 of the depositary authority and the order number of the biological material deposited in a 16 months delay from the earliest priority.
The question was whether the provisions of l & #8217;A91 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 & #8217; requirement to supply & #8217; order number & #8221; (substantive condition for sufficient description) and the requirement to supply priority documents (formal condition). Thus no analogy is possible.
In conclusion, the deadline set for R28 (2) (a) CBE73 n & #8217; is not extendable.
Chapter 40. G3 / 93 - Opposibility and Validity of Priority
decision G3 / 93 was issued on August 16, 1994.
The question which arose was whether a document published during the priority period constituted an enforceable prior art, under & #8217;A54 (2) CBE73, to a European patent application when the priority claim (the application includes items which were not disclosed in the priority document).
We recall that l & #8217;A87 (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, when a request validly claims priority, the priority date is considered to be that of the filing of the European patent application for the application of #8217;A54 (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 only #8217; in English) was released on July 14, 1994.
This decision is the & #8220; version & #8221; English 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 had itself published contrary information in the & #8217; & #8220; Notice to PCT Applicants & #8221; (OJ EPO 1991, 333). In this notice, he indicated that & #8221;in the event of loss of a right [due to non-payment of the basic national fee, designation fees, search fee and claims fees], the depositor may, in application of section 122 EPC, be reinstated in this right& #8221; (point 2.1 of the reasons).
Thus, it would be inequitable if #8217; A122 could not be used in such cases at least until #8217; 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 n & #8217; 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, l & #8217;A113 (1) CBE73 does not give any particular right to the requester concerning his agreement (no right of modification in particular), but rather forbids the & #8217; EPO to take a decision on a request text other than & #8220;the text proposed or accepted by the applicant or the patentee& #8221; (point 2.1 of the reasons).
In the present case, the Grand Chamber emphasizes that the R86 (3) CBE73 (now R137 (3) EPC) gives discretionary power to #8217; EPO to accept the changes proposed by the holder during the examination (point 2.3 of the reasons). However, this discretion must be exercised with a constructive objective. It is thus necessary to take into account both (point 2.5 of the reasons):
- the applicant's interest in obtaining a patent which is legally valid in all designated states, and
- of the interest of the EPO in concluding the examination procedure by deciding on the grant of the patent.
Thus, it is possible for the & #8217; EPO to bypass the & #8220; withdrawal & #8221; of the claimant's agreement if the EPO has invited the claimant to pay the fees for issue and printing and to file the translation of the claims, and not to take into account the proposed modifications. However, it can also take them into account, if they find them relevant.
This decision was probably called into question by the new wording of the R71 (3) EPC : indeed, the terms of the agreement of the applicant on the text has changed. However, the withdrawal of this agreement seems to remain the same: the EPO would keep total discretion on taking into account new claims once this agreement is 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 sole applicant, withdraws his appeal? Is the opposition proceedings terminated ex officio or can the opposition division continue this opposition under #8217;A114 (1) CBE73, especially if it considers that there are serious grounds for revoking or limiting the patent?
The Grand Chamber points out first of all that & #8217; it & # #8217; is not & #8220; withdraw its opposition & #8221; at the appeal stage: only withdrawal of the appeal is possible (the question asked by the Board of Appeal mixed these concepts, point 2 of the reasons).
Finally, the Grand Chamber confirms its decision G8 / 91 and indicates that & #8217; it is & #8217; is not allowed to the boards of appeal to continue ex officio if the appeal is withdrawn by the sole applicant, regardless of 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 decision G1 / 84, the question arose of the legality of the owner's opposition against his own patent. This question arose because the Grand Chamber 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):
one can question the correctness of the statement, at least as a generalization, made by the Enlarged Board of Appeal in case G1 / 84 (OJ EPO 1985, 299, point 4 of & #8217; explanatory memorandum: & #8220 ;… L & #8217; it would be wrong to consider them (the opposition procedures & #8217; provided for by the EPC) as essentially contentious procedures which oppose parties to the conflict […] & #8221;. […]
In any event, the Enlarged Board of Appeal, in its current composition, considers that the post-grant opposition procedure provided for by 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, & #8217; interpret & #8220; anyone & #8221; from l & #8217;A99 (1) CBE73 in the light of the purpose of the procedure (point 3 of the reasons). In particular, the argument of the effort that the EPO must make to & #8220; only issue and maintain valid patents & #8221; does not seem sufficient (point 4.2 of the reasons).
The lack of limitation (at the time), if this is a problem, should rather be resolved by the legislator and not by legal artificial interpretations (point 4.1 of the reasons).
Chapter 46. G10 / 93 & #8211; Scope of the review and appeal procedure ex-parte against a decision rejecting an application
decision G10 / 93 was issued on November 30, 1994.
When appealing against a decision against rejection, does the Board of Appeal carry out a full analysis of patentability or is it limited to the grounds for rejection of the court of first instance instance (ie without re-analyzing the validity conditions that the exam division considered as fulfilled).
The Grand Chamber notes first of all that, for an inter-party procedure, consideration 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 examination divisions. If the Board of Appeal believes that a condition of patentability is not met, it may:
- l & #8217; introduce in the appeal procedure;
- ask the exam division to examine 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 a suspected infringer may intervene in an opposition. But can it do so during an opposition appeal procedure (which has a different legal nature from the opposition procedure: judicial and non-administrative G8 / 91!)? Can the intervener raise any reason for opposition or is it held by those already presented?
In a previous decision (G4 / 91), the Enlarged Board of Appeal simply stated that if none of the parties to the opposition proceedings appealed against the opposition, any intervention remained without effect (point 1 of the reasons).
Referring to the preparatory work for the EPC (point 8 of the reasons), the Grand Chamber stresses that the discussions between the Contracting States were willing to include the action within the scope of l & #8217;A105 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 & #8220; opposition proceedings & #8217; opposition & #8221; from l & #8217;A105 (1) CBE73 should be understood as also covering the appeal procedure Opposition (Point 10 of the reasons).
Furthermore, the Grand Chamber emphasizes that the party intervening in such an appeal procedure may present tany reasons, arguments or evidence qu & #8217; he wishes, even if these have not previously been invoked (point 13 of the reasons): in this case, a referral to first instance may be possible. Indeed, prohibiting the intervener from having recourse to these defenses (knowing that he is accused of forgery) 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 case in point, a professional representative had asked a board of appeal for authorization that a former member of the board (in the case in point a former president who had left office two years previously).
What are the rules governing speaking by a non-proxy? Especially if he is a former president?
First, the Grand Chamber refers to decision G4 / 95 (which was given before) with regard to speaking by an assistant (point 1 of the reasons). Although decision G4 / 95 applies to an opposition procedure, the principles remain the same for an opposition procedure ex-parte : the room has #8217; a full discretion to authorize it if it wishes.
However, to authorize an intervention by an intervener, it is advisable to notify the chamber sufficiently early by indicating the name, the quality, and the subject addressed by the intervener (point 2 of the reasons).
If the intervention is authorized, the assistant then makes his oral presentation under the permanent responsibility and control of the professional representative (point 3 of the reasons).
Regarding speaking by a former member of the chamber, there are no rules formally prohibiting them: care should therefore be taken to avoid, at least, a & #8220; appearance of favoritism & #8221; (point 4 of the reasons) concerning mere speaking. Thus, the boards of appeal have (in the absence of other rules) a power of appreciation in order to determine from when a former member can express themselves before the board (point 7): a priori 3 years should be a good compromise (point 8).
Chapter 49. G1 / 95 & #8211; Number of grounds for opposition A100 a) CBE73
decision G1 / 95 was rendered on July 19, 1996.
In this case, the Board of Appeal dismissed a request on the ground that the claimed object lacked industrial application and was not an invention. (#8217;A52 (1) CBE73 and A52 (2) CBE73). However, the opposition formed only mentioned the novelty (A54 CBE73) and industrial activity (A56 CBE73).
In reality, all the previous articles are mentioned under a single chip from l & #8217;A100 CBE73 (listing possible grounds for opposition):
a) the object of the European patent is not patentable under the terms of articles 52 to 57;
The question therefore arises: does the & #8217;A100 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 & #8217; a single reason, because the & #8220; legal foundations & #8221; novelty, inventive step, etc. are different (point 4 of the reasons).
Consequently, the Board of Appeal cannot introduce a new ground (as indicated in decision G9 / 91) not raised by the opponent, even though that ground would be industrial application and which the opponent had invoked novelty or inventive step.
Chapter 50. G2 / 95 & #8211; Replacement of the entire request due to error
decision G2 / 95 was released on May 14, 1996.
Let us imagine that a depositor files a first request in France, then files a second EP request under priority of the French request. The filing of this second request is completely missed and the description filed does not correspond in any way to the invention of the first request (do not laugh… it happens).
Is it possible, as part of & #8217; a correction of & #8217; error under R88 CBE73, to replace the whole of the parts of a request by one of other parts (ie those which the applicant would have really wanted to file)?
The Grand Chamber recalls that the provisions of l & #8217;A123 (2) CBE73 take precedence over the provisions of R88 CBE73 (point 2 of the reasons). Thus, due to the ban on extending the subject of a request, it is not possible to have recourse to documents. #8217; ban on & #8217; other than the description, the claims and the drawings or documents that confirm the general knowledge of the skilled person on the date of filing which is fixed by the A80 CBE73 (G3 / 89): it is therefore not permissible for a rectification to call upon other documents, even if they have been produced during the filing of the European patent application, whether it is in particular #8217; priority documents, abbreviation, etc. (G3 / 89).
So no ! this & #8217; 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 considered inadmissible, the cited decisions not being 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 that arose was whether a third party (other than the representative) could speak during oral opposition proceedings.
The Grand Chamber does not see anything wrong with it, but oversees this practice, regardless of who takes the floor: the body concerned must agree, accord given discretionally.
The main conditions of this agreement are:
- an authorization must be requested and it must contain the name and qualities of the person wishing to speak and specify the object of the oral presentation;
- this authorization must reach the EPO sufficiently early before the oral procedure: the opposing parties must be able to prepare their response to this statement. Otherwise the authorization must be refused (sf. If the adversaries agree) (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 mainly to opposition or to appeal on opposition (procedure inter partes), there is no reason why it should not apply in #8217; ex parte, as underlined by decision G2 / 94 (rendered after).
Chapter 53. G6 / 95 - Application of R71 bis to the Boards of Appeal
decision G6 / 95 was rendered on July 24, 1996.
In the present case, the Board of Directors of the EPO had added a rule R71bis CBE73 under the powers conferred by l & #8217;A33 (1) (b) CBE73. The R71bis (1) CBE73 provides in particular for a notification, sent at the same time as the summons to oral procedure, detailing the questions necessary to examine.
However, a board of appeal is surprised by this new article (not really in substance, but in form): the board of directors amends the regulations on the basis of & #8217;A33 (1) (b) CBE73 (general power), but seems to oppose the procedural rules of the Boards of Appeal (or RPCR, which he himself arrested according to l & #8217;A23 (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 points out that the RPCR does not & #8220;always comply with the current version of the implementing regulations& #8221; (point 2 of the reasons). Indeed, the Board of Directors cannot modify the implementing 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 cannot apply to the boards of appeal, otherwise we would be in the midst of the contradiction mentioned below (point 5 of the reasons).
Chapter 54. G7 / 95 & #8211; Attack of novelty in opposition while the reason raised is inventive step
decision G7 / 95 was rendered on July 19, 1996.
In reality, this decision was rendered on the same day as decision G1 / 95 (on the number of reasons in #8217;A100 a) CBE73) and shares substantially the same reasons.
Here, the Grand Chamber indicates that, nevertheless, if inventive step and novelty are two separate grounds, it is possible to #8217;attack the novelty of the invention without having explicitly raised it (having only raised inventive step) provided that this new feature is analyzed in relation to the closest state of the art document.
Chapter 55. G8 / 95 & #8211; Correction of & #8217; a decision to issue and jurisdiction of the legal / technical boards of appeal
decision G8 / 95 was issued on April 16, 1996.
If a & #8220;request for amendment of the reasons for issuing” (R89 CBE73) is presented by the holder and that the Examining 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 jurisdiction of the Boards of Appeal against decisions of the Examining Division is defined by l & #8217;A21 (3) CBE73 (point 2 of the reasons). Letter a) indicates that the technical chamber is competent when the contested decision is & #8220;on […] the issuance of & #8217; a European patent” .
The question is therefore whether the decision rendered on a request for rectification of the grounds for granting & #8220; relates to & #8221; the issuance decision.
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 : it is #8217; elsewhere for this reason that #8217; we can appeal (A107 CBE73). The & #8220;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 grounds): consequently, the technical board of appeal is very competent ( point 6 of the reasons)!
Chapter 56. G1 / 97
decision G1 / 97 was issued on December 10, 1999.
Section 56.1. Appeal on an appeal / request for a review
Following a rejection decision by a board of appeal, an applicant appealed against this decision, stating that the revocation decision had been taken by a board exercising the powers of the opposition division in accordance with #8217;A111 (1) CBE73 and that, therefore, his decision was subject to appeal.
However, the Grand Chamber did not agree: the decisions of the boards of appeal were granted force of res judicata as soon as they are rendered, a remedy according to l & #8217;A106 CBE73 against these decisions is therefore excluded (point 2.a of the reasons). L & #8217;A111 (1) CBE73 n & #8217; absolutely does not oblige the boards of appeal to refer cases to the first instance so that the parties retain a right of appeal: the boards of appeal retain discretionary power to reform decisions.
Such an appeal must be declared inadmissible by the Board of Appeal which took the decision whose review is requested: the decision of inadmissibility may be rendered immediately without procedural formality.
Section 56.2. A122 and A121 allowing to correct a violation of #8217; a fundamental principle of procedure
In addition, the complainant had filed restitutio in integrum (A122 CBE73) and in continuation of the procedure (A121 CBE73). Indeed, he maintained that he had not had the opportunity to file additional sets of claims despite all the attention that he had paid to the case, because the Board of Appeal had never indicated his intention to reject.
This reasoning is not possible for the Grand Chamber, since these two articles require the failure of #8217; a delay, which is not the case in the present situation (point 2.b of the reasons).
Section 56.3. R89 allowing to correct a violation of #8217; a fundamental principle of procedure
The applicant had also argued that a review 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. Creation of a specific route
Furthermore, as the vast majority of the countries of the convention provide for possible cassation in the event of a fundamental violation of the procedure, the applicant maintained that l & #8217;A125 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 takes into account the principles generally accepted in the matter in the Contracting States.
The Grand Chamber does not believe that this article is sufficient: indeed, it refers to & #8220; of the principles & #8221; and would not allow the complete creation of a specific way of cassation (points 3.a to 3.d of the reasons).
56.5.1. Contradiction with TRIPS237; TRIPS
The applicant maintained that, if no ground of cassation was possible, l & #8217;A32 TRIPS (which is superior to the convention) is violated:
For any decision concerning the revocation or forfeiture of a patent, a possibility of judicial review will be offered.
The Enlarged Board of Appeal does not share this view, because the & #8217;A62 (5) TRIPS (rule specific to administrative decisions unlike l & #8217;A32 TRIPS which is applicable to all decisions, see point 5.d of the reasons) is in reality the article applicable to the case in point:
The final administrative decisions in #8217; any of the procedures mentioned in paragraph 4 may be subject to #8217; review by a judicial or quasi-judicial authority. However, there will be no obligation to provide for a possibility of review of decisions in the event of an opposition formed in vain or of administrative revocation, provided that the reasons for these procedures can be the subject of invalidation procedures.
Indeed, an administrative decision (here the decision of the opposition chamber), which maintains a patent, can be the subject of a review (here an appeal) by a judicial or quasi-judicial authority (here a board of appeal ). Nothing indicates that l & #8217;A32 TRIPS must apply to the review decision (if not, the appeals would overlap without end…).
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 complainant does not pay an appeal fee, does the principle of good faith require that the & #8217; EPO warns the & #8220; potential claimant & #8221; of his forgetfulness?
According to the Grand Chamber (point 4.1 of the reasons), & #8220; protection of the legitimate expectations of users of the European patent system & #8221; requires the EPO to notify the claimant of any (possibly potential) loss of rights if the claimant can expect to receive such notice.
For example, if the & #8217; EPO receives a letter mentioning & #8220; you will find attached a check & #8221; and that #8217; no check is present, the EPO must notify this potential irregularity. Likewise, if the requester's request is not clear, the EPO must ask the requester to clarify their request.
However, this principle does not go beyond: the EPO has no obligation to notify the applicant if there is no reason to doubt.
Chapter 58. G3 / 97 & #8211; Opposition and & #8220; straw man & #8221;
decision G3 / 97 was released on January 21, 1999.
The question was whether the use of & #8220; nominee & #8221; (commonly called & #8220; straw man & #8221;) was an acceptable practice in opposition to hide the real opponent?
The Grand Chamber emphasizes that the concept of & #8220; real opponent & #8221; is legally absurd, since any third party can file an opposition and the concept of an opponent is a procedural concept (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 context of activities which, overall, are characteristic of those of a professional representative, without having the qualifications required by the & #8217;A134 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 having his domicile or his seat 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 #8217; it is a question of determining whether there is an abusive circumvention of the law, it is appropriate to apply the principle of free appreciation of evidence : the latter must be provided by the party invoking inadmissibility, they must be clear and unequivocal.
Chapter 59. G4 / 97 & #8211; Opposition and & #8220; straw man & #8221;
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 & #8220; transgenic plant & #8221; knowing that :
- this claim effectively included certain specific plant varieties (but without claiming them individually);
- theA53 (b) CBE73 prohibits the claims of & #8220; plant varieties & #8221; .
We recall that & #8217; a plant variety is (point 3.1 of the reasons) a plant set of & #8217; a botanical taxon of the lowest known rank which can be:
- defined by l & #8217;character expression resulting from & #8217; a certain genotype or from & #8217; a certain combination of genotypes,
- distinguished any other plant group by the expression of #8217; at least one of 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 the scope and object (ie the underlying invention) of the claim. Only the claims for which the object is a plant variety are prohibited: l & #8217; prohibition of & #8217;A53 (b) CBE73 is a prohibition on the subject of the claims and not their scope.
Indeed, the prohibition on scope seems excessive, because if we used similar reasoning with the provisions of A53 a) CBE73a photocopier could be excluded from patentability (eg photocopying of banknotes, etc.).
Furthermore (point 3.4 of the reasons), the Grand Chamber recalls that this prohibition was created in order to avoid double protection (by patent and by the right of plant breeder under the UPOV Convention). If this prohibition is rather administrative, the UPOV convention of 1991 no.#8217; no longer prohibits double protection. In any event, this history advocates for a strict interpretation of A53 (b) CBE73 in order to avoid unduly reducing the scope of patentability (point 3.10 of the reasons).
Section 60.2. Product obtained by a process of obtaining a plant variety
The question also arose whether a claim for a plant variety should be excluded because of #8217;A64 (2) CBE73. This article provides that products derived from a process are also protected by such a claim, which would amount, indirectly, to protecting the plant varieties which are however excluded by A53 (b) CBE73.
For the Grand Chamber (point 4 of the reasons) there is no problem, because the protection thus granted to products is not as broad as that granted by a product claim as such. Indeed, the protected product is actually a & #8220; product by process & #8221; characterized by its method of manufacture.
So, theA64 (2) CBE73 is inoperative to analyze the patentability of a claim.
Chapter 61. G2 / 98 & #8211; Priority and conditions for being in the presence of the & #8220; same invention & #8221;
decision G2 / 98 was released on May 31, 2001.
The Chair asked for some clarification on the concept of & #8220; same invention & #8221; .
First of all, the Grand Chamber notes that the EPC (A87 CBE73 and A88 CBE73 in particular) constitutes a & #8220;particular arrangement& #8221; within the meaning of the UPC (provided by l & #8217;A19 CUP) and therefore must respect this agreement (point 3 of the reasons).
In particular A88 (2) CBE73, first sentence and l & #8217;A88 (3) CBE73 correspond to #8217;A4F of the CUP, and l & #8217;A88 (4) CBE73 almost word for word corresponds to #8217;A4H of the CUP (point 6.1 of the reasons).
In reality, for the & #8217; interpretation of & #8220; same invention & #8221; , it is possible to have several interpretations (either E the European request claiming the priority of request P):
- a strict interpretation : if object A is claimed in request E, then priority is valid if A is disclosed alone in P. If object A + B is claimed in request E, then priority is invalid if A + B & #8217; is not disclosed as is in 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 that B is unrelated to the function and the effect of A, and therefore with the character and nature of A.
In the & #8217; hypothesis of & #8217; a strict interpretation, the & #8220; same invention & #8221; of A87 (1) CBE73 corresponds to the notion of & #8220; same object & #8221; from l & #8217;A87 (4) CBE73. This strict interpretation is perfectly in agreement with l & #8217;A87 (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 :
- l & #8217; 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 files A + B then A + B + C, it would be necessary to ask whether C would not be a non-essential characteristic before determining whether A + B + C is a first request (and therefore the priorities l & #8217; invoking could 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;
Consequently, you must have a strict interpretation: & #8220; same invention & #8221; means that it should only be recognized that a claim contained in a European patent application enjoys priority only if the skilled person can, by calling on his general knowledge, deduce directly and unambiguously l & #8217; subject of this claim of the previous application considered in general.
Chapter 62. G3 / 98 & #8211; 6-month time limit and non-binding disclosures in the event of abuse vis-à-vis the applicant
decision G3 / 98 was issued on July 12, 2000.
TheA55 (1) CBE73 provides a kind of & #8220; grace period & #8221; for the filing of #8217; a request, in the event of disclosures resulting from #8217; abuse against the requester (e.g. theft, violation of 1DA38217; an NDA, etc.).
The question was whether this time limit should be calculated:
- from the priority date (ie taking into account l & #8217;A89 CBE73)
- or from the date on which the European patent application was actually filed.
In addition, theA55 (1) CBE73 does not speak of & #8220; filing date & #8221; , but from & #8220; filing & #8221; (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 & #8220; deposit & #8221; is reinforced by its use in l & #8217;A55 (2) CBE73, use which leaves no doubt as to the difference with the & #8217; expression & #8220; filing date & #8221; (point 2.3).
In addition, the preparatory work shows (point 2.4 of the reasons) that & #8217; initially the & #8217; expression used was indeed & #8220; filing date & #8221; , but that this was modified at the request of the Dutch delegation in order to clearly show that & #8217; it was necessary to understand 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 from the President, the question arose of the effect of the 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, l & #8217;A91 (4) CBE73 provides that the designation of & #8217; a country is & #8220; deemed withdrawn & #8221; if the corresponding designation fee is not paid (point 3.1 of the reasons). The preparatory work clearly shows that the non-payment of designation fees has no effect on the filing date (A90 CBE73).
When the EPC wishes to indicate retroactivity, it uses, in the opinion of the Grand Chamber (point 3.2 of the reasons), the terminology & #8221; untrained & #8221; or & #8221; Non-formulated & #8221; (cf. l & #8217;A94 (2) CBE73 for the exam, the #8217;A99 (1) CBE73 for the opposition, l & #8217;A108 CBE73 for the appeal and l & #8217;A136 (1) CBE73 for a conversion) rather than & #8220; deemed withdrawn & #8221; .
Furthermore, decision G1 / 90 (point 6) had already indicated that & #8220; deemed withdrawn & #8221; meant that the loss of rights occurred at the end of the period considered (point 3.3 of the reasons). A different interpretation of the same expression 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 #8217;A4A (3) UPC, because this condition is not a condition to have a regular national deposit);
- retroactive destruction of the divisional requests resulting from this request since this request did not exist on the day of filing of the divisional request (which would be contrary to the principle of & #8217; independence of requests);
- 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 & #8217; there are mechanisms for time extensions (R85 CBE73). Nevertheless,a non-designation does not take effect at the end of the extended period, but at the end of the & #8220; normal & #8221; (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 procedure, if the patent as maintained in an amended form should otherwise be revoked, this revocation being the direct consequence of & #8217; an inadmissible modification (A123 (2) CBE73) that the opposition division had admitted.
In such circumstances, the patent owner may be authorized, in order to remedy this situation, to present the following requests, in order:
- modifications aimed at limiting the scope of the patent as maintained (and which are not contrary to #8217;A123 (2) CBE73);
- modifications to extend the scope of the patent as maintained (but within the limits of #8217;A123 (3) CBE73);
- deletion of the inadmissible modification (but within the limits of l & #8217;A123 (3) CBE73).
Chapter 65. G2 / 99 & #8211; 6-month time limit and non-binding disclosures in the event of abuse vis-à-vis the applicant
decision G2 / 99 was issued on July 12, 2000.
C & #8217; is the same decision as decision G3 / 98 (German version).
Chapter 66. G3 / 99 & #8211; Admissibility of & #8217; joint opposition
decision G3 / 99 was released on February 18, 2002.
In the present case, several parties had filed a joint opposition and had only paid a single opposition fee #8217; Is this practice acceptable?
For the Grand Chamber, there is no reason to reject this practice as long as the formal requirements are met (ie the requirements of #8217;A99 CBE73 and some R55 CBE73) (points 9 and 10 of the reasons).
In a joint opposition, this is the common representative designated in accordance with the R100 CBE73 who must lodge the appeal (if not, the board must consider that the appeal is not duly signed and must invite the common representative to sign it within a given period). 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 procedure, the EPO must be informed by the common representative 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 time limit fixed by the & #8217;A99 CBE73 and the formalities officer had rendered a decision declaring the opposition not filed (following a notification of loss of rights and a request for a decision according to 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 & #8220;to entrust formalities officers with certain tasks normally falling to the opposition divisions of the EPO #8217;” .
For the Grand Chamber, the R9 (3) CBE73 allows the President of the Office to delegate certain tasks to agents of the EPO who are not qualified as a lawyer or an engineer (point 3 of the reasons). In addition, l & #8217;A10 (2) (i) CBE73 allows the president to delegate his powers, in particular to his vice-presidents, if he wishes (point 3.2 of the reasons).
For the Grand Chamber, there is no & #8217; & #8220; particular technical or legal difficulty & #8221; which would prevent such delegation to formalities officers (point 6 of the reasons).
As a result, authorized delegations are not contrary to the provisions of the EPC.
Chapter 68. G2 / 02 & #8211; Priority of #8217; a request from a country not a member of the CUP, but of TRIPS agreements
decision G2 / 02 was released on April 26, 2004.
In the present case, a claimant sought to claim an Indian priority, knowing that on the date of filing of the Indian request India was not part of the CUP, but was part of the TRIPS agreements (Warning, l & #8217; EPO is not part of TRIPS, but only part of CUP).
Although the content of the CUP and the TRIPS Agreement is substantially identical with regard to priorities, the & #8217;A87 (1) CBE73 is clear (point 2 of the reasons): priority n & #8217; is only possible for members of the CUP. To want to modify or interpret this point widely would in reality be to take the place of the legislator, who alone has the power to correct this error (points 8.3 and 8.6 of the reasons).
Although the provisions of l & #8217;A87 (5) CBE73 allow priority & #8220; ad-hoc & #8221; and reciprocal, 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, since the #8217;A87 (1) EPC has changed and now refers to & #8220; members of the & #8217; World Trade Organization & #8221; (all of which have ratified the TRIPs agreement).
Chapter 69. G3 / 02 & #8211; Priority of #8217; a request from a country not a member of the CUP, but of 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 "negative" technical characteristic, which normally excludes d & #8217; a general characteristic of the embodiments or particular fields (point 2 of the reasons).
A disclaimer can be accepted if & #8217; 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 distant from it that the skilled person would never have taken it into consideration) (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, indeed, and in particular for the PCT, knowledge of all the exclusions can 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 event of a preliminary ruling, the appeal fee may be reimbursed by the body whose decision has been challenged. But can it reject this reimbursement?
First of all, the Grand Chamber points out (point 2 of the reasons) that the preliminary ruling allows the appeal (if & #8220;the reimbursement is fair due to a substantial procedural defect& #8220;), but the body whose decision has been appealed can neither dismiss this appeal nor declare it inadmissible or unfounded (A109 (1) CBE73 and A109 (2) CBE73).
Of course, it is necessary that the applicant requests this reimbursement for it to be allowed (point 3 of the reasons).
From a point of view of the efficiency of the procedure (point 3.4.3 of the reasons), the Grand Chamber thinks that it is preferable to let the Board of Appeal decide whether or not to reject the request for reimbursement, even if l & #8217; authority whose decision was challenged allowed by way of preliminary ruling.
Thus, the first instance instance whose decision has been challenged n & #8217; has no jurisdiction to dismiss the request in reimbursement of the appeal fee. The Board of Appeal is competent (in the composition defined by l & #8217;A21 CBE73, as if & #8217; it had not been made right by way of preliminary ruling).
Chapter 73. G1 / 04 - Diagnostic method
decision G1 / 04 was released on December 16, 2005.
After lengthy developments, the Grand Chamber indicates that the claim, which includes ALL of the following characteristics, is excluded:
- the deductive decision phase in medicine, as a purely intellectual activity (point 5.2 of the reasons),
- 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& #8221; (unconditional of type or intensity, ie simply requiring the presence of the body) which occur when they are used those of the previous steps which are of a technical nature.
S & #8217; a step is missing, this is, at most, only #8217; data processing (point 6.2.2 of the reasons) or that #8217; data acquisition.
It is without effect to know, to find out if a process should be excluded under & #8220; diagnostic method & #8221; , 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 & #8217; an opposition
As in the decision G4 / 88, a Board of Appeal asked the question whether an opposition could be freely assigned. For the Board of Appeal that made the referral, decision G4 / 88 did not apply to the case of a transfer of subsidiary owned to 100 % 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 on the fact that an opposition could be assigned. However, the decision G3 / 97 (point 2.2 of this decision) said that #8217; an assignment of #8217; an opposition was not free.
It is clear that (point 2.1.2 of the reasons) the quality of a holder is the accessory of a patent. However, the holder and the opponent cannot be treated in the same way, since the legal situations are different: the opposition is an untitled action and is therefore not the accessory of any entity.
In decision G4 / 88, the Grand Chamber validated the transfer of the quality of an opponent during the transfer of a part of the economic activities of a company. However, for the Grand Chamber, the concept of & #8220; part of the economic activities of & #8217; a business & #8221; cannot be assimilated to the sale of a subsidiary having 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 & #8220;& #8217; activity of & #8217; a business& #8221; n & #8217; has no legal personality, point 2.2.1 of the reasons).
Consequently, the quality of the opponent cannot be freely transmitted, even if the opposition would be in the interest of #8217; one of its divested subsidiaries.
Section 74.2. Identity of the applicant concerning an action on the ownership of an action
As you understood, we did not know here if the opposition could be assigned and therefore we did not know who had the possibility of bringing the action.
The Grand Chamber proposes a pragmatic approach: even if the procedural documents should not normally include conditions (point 3.2.1 of the reasons), it is possible, to avoid any legal uncertainty, to file the appeal on behalf of the person more likely (subjective interpretation therefore ...) and in the alternative, on behalf of & #8217; 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 tax (#8217;A105 (2) CBE73) in order to be able to intervene, even if it is only #8217; at the appeal stage.
However, l & #8217;A107 CBE73 does not provide that the intervener can acquire the status of applicant if he intervenes at this stage of the procedure (point 6 of the reasons). In fact, only the parties to the opposition can appeal (and the intervener was not).
The fact of being part of the procedure does not necessarily mean that the intervener is an applicant.
So, if the sole appeal has been withdrawn, the procedure cannot continue with a party who intervened during the appeal procedure.
Chapter 76. G1 / 05 (1) - Exclusion and Disqualification
If the member of a board of appeal advances, in his statement of abstention, a reason which may in itself constitute a possible ground for challenge for partiality, the decision relating to the replacement of the member of the board concerned must normally take due account of it ( point 7 of the reasons).
In the proceedings before the Enlarged Board of Appeal, if & #8217; there are no special circumstances casting doubt on the ability of a member of the Board to subsequently assess the arguments of & #8217; a party with impartiality, a member of the Great Board of Appeal cannot raise suspicion of bias on the ground that a Board of Appeal of which the member concerned was a member took a position on the question in a previous decision (point 27 of the reasons).
Chapter 77. G1 / 05 (2) & #8211; Correction of & #8217; a divisional request when the mother request is no longer pending
decision G1 / 05 was released on June 28, 2007.
As a reminder, l & #8217;A76 (1) CBE73 has:
A divisional application […] can only be filed for elements which do not & #8217; do not extend beyond the content of the initial application as & #8217; it was filed
In the present case, the question arose as to whether a divisional request which extends, on its effective filing date, beyond the content of the initial request (ie non-compliance with A76 (1) CBE73) can be corrected a posteriori, even though the mother request is no longer pending.
The Grand Chamber notes (point 2.6 of the reasons) that, initially, the EPC contained two provisions which were intended respectively to deal with conflicts of national defense requirements (since divisional applications are filed with the EPO directly) and to avoid that the request pending does not contain added elements. The current layout of #8217;A76 (1) CBE73 results from the amalgamation of these provisions and there is no particular reason to interpret this provision differently. The objective of this provision is therefore (point 2.7 of the reasons):
- define a formal condition with a view to preventing applicants from adding new elements to a divisional application which could give rise to objections on grounds of 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, the fact of having a divisional request which does not meet the requirements of #8217;A76 (1) CBE73 when it is filed is not a reason for the invalidity of this request (point 2.9 of the reasons).
A priori, l & #8217;A96 (2) CBE73 applies (point 3.4 of the reasons) and it is possible to modify your divisional request in order to ensure compliance with the & #8217;A76 (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 handle the cascades of divisional applications with regard to & #8217;A76 (1) CBE73 : should we look at the previous request or the whole cascade of divisional requests to know the & #8220;elements of the initial application"?
First of all, the Grand Chamber notes that, although not explicitly mentioned in #8217;A76 (1) CBE73, divisional requests for divisional requests (ie divisional cascade) seem possible since a divisional request is a request like any other (point 10.2 of the reasons).
For the Grand Chamber, it is only possible to assign the filing date of the initial request only if the divisional request actually contains elements of this initial request and that all the intermediate divisional requests also contain these elements.
Any element which would have been omitted when filing a previous application in the series may not be reintroduced in this application or in any divisional application which 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 have been added to the implementing regulations (decision dated June 16, 1999 of the Board of Directors, effective September 1, 1999). In particular, the R23d (c) CBE73 states that European patents are not granted for & #8220;Uses of human embryos for industrial or commercial purposes& #8221; as being contrary to public policy (#8217;A53 a) CBE73).
The question then was whether the R23d (c) CBE73 & #8217; applied retroactively to requests filed before the entry into force of this rule.
On this question, the Grand Chamber was asked to make a preliminary ruling to the CJEU. The Grand Chamber considers that there is nothing to do so, and even that nothing authorizes it to do so (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, the Contracting States of which 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 l & #8217;A53 a) CBE73 : this list simply explains an article already present and nothing indicates that commercial exploitation of human embryos has never been considered patentable.
The R23d (c) CBE73 explicitly excluded & #8220; uses d & #8217; human embryos & #8221; : should we think that products which can only be obtained via the use of human embryos (at least on the date of deposit) are authorized?
For the Grand Chamber, the formulation of the claim (ie product vs. process) must not play a role (point 22 of the reasons). Otherwise, it would suffice to skillfully and judiciously draft your 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 should also be prohibited (even if after the deposit date there is a method n & #8217; not using d & #8217; human embryos, points 33 to 35).
Chapter 80. G1 / 07 - Surgical method
The question here was whether, in a predominantly non-surgical procedure, a & #8220; small interaction & #8221; with the human body (such as the injection of a contrast agent into a vein) should be excluded under the exclusion of & #8220; surgical methods & #8221; (A52 (4) CBE73 or A53 (c) EPC) even if its purpose was not to care for or keep the person alive.
For the Grand Chamber, it is clear that the claim d & #8217;single step & #8220; surgical & #8221; brings down the claim under #8217;A53 (c) EPC (point 3.2.5 of the reasons).
Il & #8217; it is not important to know the purpose of this step & #8220; surgical & #8221; : whether #8217; it is performed for treatment, for diagnosis or for aesthetic purposes, the answer is the same (point 22.214.171.124 to point 3.3.10 of the reasons). Indeed, if & #8217; you had to understand & #8220; surgical method & #8221; by & #8220; surgical method for therapeutic purposes & #8221; , this exclusion would already be covered by & #8217; prohibition of & #8220; therapeutic methods & #8221; and would therefore be useless.
The fact that decision G1 / 04 (point 6.2.1 of that decision) indicated that & #8220;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 subject's life and health is of paramount importance& #8221; actually means (point 3.3.5 of the reasons) that the surgical methods are methods requiring special attention caused by the danger they pose to the person undergoing the intervention.
Clearly (point 126.96.36.199 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 which poses a health risk, even when it is carried out with the professional care and expertise necessary.
Attention, the risk for health must be linked to the mode of administration and not to another element (eg to the contrast agent injected as such which could be allergenic) (point 188.8.131.52 of the reasons).
It is of course possible to provide a & #8220; disclaimer & #8221; to rule out 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 can seek to use formulations such as & #8220; pre-injected & #8221; , etc.
Chapter 81. G2 / 07 - Essentially biological process
This is called the decision & #8220; Broccoli & #8221; 🙂
As you know, l & #8217;A53 (b) EPC provides that "the essentially biological processes of obtaining plants or animals& #8221; are excluded from patentability even if we accept & #8220;microbiological processes” .
According to R26 (5) EPC, a process for obtaining plants or animals is essentially biological. It consists of: it consists of #8217; it consists of #8217; full in natural phenomena such as crossing or selection & #8221; .
In this case, a non-microbiological process was claimed for obtaining plants comprising a crossing step, but also a selection step. Is this process patentable if the process includes a step & #8220; technical & #8221; (in addition or in a crossing / selection stage)?
For the Grand Chamber (reasons 184.108.40.206):
- must be excluded a method comprising a crossing step and a selection step and that 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 independently introduces a character into the genome or modifies a character in the genome (l & #8217; introduction or modification of this character does not result from the mixing of plant genes chosen for 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 released on December 9, 2010 (French text n & #8217; is not available in HTML so here is 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 & #8220; use of product X to produce medicinal product for the treatment of oral disease Y once a day& #8221; could be patentable if this use was known except for the dosage.
In addition, theA54 (5) EPC (which did not have a counterpart in CBE73) states that a known substance may be patentable & #8220;for any specific use& #8221; until #8217; unknown there (we speak of & #8220;second therapeutic effect& #8220;). Thus, the legal vacuum which previously existed (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 & #8217; no interpretation & #8220;for any specific use& #8221; restrictively (ie & #8220;to cure a new disease& #8221; , point 220.127.116.11 of the reasons, point 5.10 of the reasons), as that would be contrary to the current interpretation of this expression.
Thus, #8217; accept the patentability of & #8217; a & #8220;different therapeutic treatment& #8221; if, of course, the conditions of novelty and inventive step are met (point 5.10.9 of the reasons).
This different therapeutic treatment may very well be a & #8220; dosage & #8221; (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
Like l & #8217;A54 (5) EPC n & #8217; did not exist under the CBE73 regime, the Grand Chamber authorized Swiss-type claims in decision G6 / 83 (point 7.1.1 of the reasons):
- instead of claiming & #8220;Drug containing the compound X for therapeutic use Y” ,
- we claimed & #8220;Use of a compound X in order to obtain a medicament intended 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 longer any need to apply the previous case-law (point 7.1.2 of the reasons).
The Swiss-type 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 claims such as & #8220; Swiss & #8221; (applicable from 3 months from the reasons of the Grand Chamber).
Chapter 84. G3 / 08 & #8211; Computer program
In the present case, the President had seized the Enlarged Board of Appeal (under A112 (1) (b) EPC), because it seemed to him that certain decisions were & #8220; divergent & #8221; concerning software patentability:
- T 1173/97 : this decision emphasizes #8217; the function of the computer program (is the claimed program technical in nature?) and completely disregards the wording of the claim (in the present case, the board accepts the wording & #8220;computer program& #8221; , because this one has, in power, the capacity to produce a technical effect & #8220; additional & #8221;);
- T 424/03 : this decision emphasizes #8217; the wording of the claim (in this case, the board refuses the wording & #8220;computer program& #8221; , but accepts & #8220;computer program product& #8221; , or & #8220;computer-implemented method“)
For the Grand Chamber, & #8220; divergent decisions & #8221; and & #8220; evolution of the law & #8221; should not be confused: the development of the law does not allow a valid referral to the Grand Chamber under the & #8217;A112 (1) (b) EPC (point 7.3.1 of the reasons).
Indeed, it may happen that the Boards of Appeal change their rifle from shoulder to shoulder (possibly radically) by declaring that previous practice n & #8217; is more relevant (point 7.3.5): in this hypothesis, there are no discrepancies, because it is clear that the old practice should no longer be followed.
According to the Grand Chamber (points 10.9 to 10.12 of the reasons), it should be considered that & #8217; there is no divergence between these two decisions, but rather a natural evolution of the case law (because only changes the legal basis for rejection or grant and not the decision as suchpoint 10.13 of the reasons).
Consequently, the referral to the president is not valid.
Chapter 85. G4 / 08 & #8211; Language of the procedure when entering the PCT phase
In the present case, the question which arose was whether it was possible to freely choose the language of the procedure (possibly by filing a translation) if the PCT application had already been published in a language of the Office .
TheA14 (3) EPC states that & #8220; the official language of the & #8217; European Patent Office in which the patent application European has been filed or translated must be used as the language of the procedure& #8221; (point 3.2 of the reasons).
For the Grand Chamber (point 3.4 of the reasons), the fact that l & #8217;A153 EPC clearly distinguishing between the languages of the office and other languages makes it possible to understand that the expression & #8220; another language & #8221; from l & #8217;A153 (4) EPC refers to & #8220;a other language than office languages& #8221; and not & #8220;a language other than that desired by the applicant as a language of& #8221; . In addition, the reference to provisional protection reinforces this point: how can we understand otherwise that provisional protection is refused on the pretext of having been published in French when the language of the intended procedure is English & #8217;
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).
Likewise, the EPO cannot authorize, during the procedure, the substitution of the language of the procedure for one of its other official languages as the new language of the procedure. 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 provides that & #8217; it is possible to & #8220; file a divisional application relating to any previous European patent application still pending” .
THE question that arose was whether an application which was rejected remains pending until the expiry of the time limit for appeal, when no appeal has been lodged. Or before ?
Indeed, there is no #8217; definition in the EPC of & #8220; pending request & #8221; (point 3.1 of the reasons).
First of all, one should not confuse & #8220; pending proceedings & #8221; and & #8220; pending request & #8221; (point 3.2.2 of the reasons), the procedure being able to be suspended while the request is still pending.
Service of & #8220; application pending & #8221; in the R36 (1) EPC relates to the plaintiff's procedural right to take action: division (point 3.2.3 of the reasons). So the substantial rights that the EPC confers on demand still exist when the application can be divided (point 3.2.4 of the reasons).
However, l & #8217;A67 (4) EPC clearly shows that the substantive rights conferred by the patent application disappear after & #8217; it & #8220;has been dismissed by virtue of & #8217; a decision which has become final& #8221; . Thus, the rejection decision must be final for the substantive rights to disappear (point 4.2.1 of the reasons).
Consequently, a request may be divided, even if it is rejected, but until #8217; until the expiry of the time limit for appeal (point 4.2.4 of the reasons) even if no appeal is lodged.
Chapter 87. G1 / 10 & #8211; Correction of & #8217; a patent by the way of & #8217; correction of & #8217; a decision
The R140 EPC has:
In decisions of the European Patent Office, only mistakes in expression, transcription and obvious errors can be rectified.
In the present case, an applicant could invoke the R140 EPC in order to correct the text issued from & #8217; a patent (for example, in opposition proceedings). L & #8217; articulation with the pending proceedings (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 #8217; 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 event, from the date of grant, 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 4 months to agree to the text delivered (point 10 of the reasons). If the EPO renders a decision not in accordance with the plaintiff's agreement, the plaintiff may then appeal, since the latter has been injured by the violation of the & #8217;A113 (2) EPC (point 12 of the reasons).
In conclusion, the R140 EPC makes it possible to correct errors contained in decisions of the EPO (not granted), and not errors appearing in documents produced by a patent applicant or the holder of a patent (point 11 of the reasons).
Chapter 88. G2 / 10 - Disclaimer and A123 (2)
The question was whether a disclaimer could be contrary to & #8217;A123 (2) EPC if the excluded embodiment was explicitly described in the application.
In the opinion of the Grand Chamber, although the subject of disclaimers was widely discussed in decision G1 / 03 (point 3.9 of the reasons), this decision does not address the issue of this question: that of 1 disclaimer which however 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 request (point 4.4.2 of the reasons).
Thus, and in accordance with the application of #8217;A123 (2) EPC, it should be checked that the introduction of the disclaimer does not bring new technical information to the skilled person (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 effectively causes an unwritten sub-interval to be selected within an interval, it is likely that this disclaimer should not be authorized (point 4.5.4 of the reasons)
To determine whether this is the case or not, it is necessary to carry out a case by case assessment relating to all technical aspects, taking into account:
- the nature and extent of the disclosure in the application as filed,
- of the nature and the extent of the excluded object,
- as well as its relation to the object remaining in the claim as amended.
A priori, the fact that the excluded embodiment is disclosed in the description is immaterial (point 4.5.5 of the reasons): indeed, the applicant can choose the embodiment that he wishes 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 this case, a legal board of appeal had been seized of an appeal against a decision by which an examining division had refused the reimbursement of search fees (problem of non-unity of invention).
The legal chamber was embarrassed because even if formally l & #8217;A21 (3) (c) EPC designates it as competent (because A21 (3) (a) EPC and A21 (3) (b) EPC not applicable), the non-unity of the invention is a problem of technical appreciation.
The Grand Chamber shares the opinion of this legal board of appeal: it emphasizes that the spirit of the #8217;A21 (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 this case, a Board of Appeal wondered whether it was possible to correct the name of the applicant (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 action.
According to the Grand Chamber, it is quite possible to correct the name of the applicant:
- using #8217; R101 (2) EPCif, within the time limit for the appeal, the applicant is identifiable:
- the true intention of the applicant must be assessed, intention which is assessed according to the principle of free assessment of the evidence;
- using #8217;R139 EPC, under the conditions laid down by the case-law even outside the period of recourse:
- the applicant 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.
This is called the decision & #8220; Tomatoes II & #8221; .
In this case, the members of #8217; a Board of Appeal wondered whether the exclusion from patentability of essentially biological processes for the production of plants (#8217;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 fully patented (even if these are claimed in the form of & #8217; a product-by-process).
Chapter 92. G1 / 13 & #8211; 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 its legal personality is restored retroactively, the Boards of Appeal have no reason not to take this retroactive restoration into account.
Chapter 93. G2 / 13 - Product obtained by essentially biological process
decision G2 / 13 was released on March 23, 2015.
This is called the decision & #8220; Broccoli II & #8221; .
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 reality, in this case the Grand Chamber held the question inadmissible and therefore did not answer the question asked.
However, the Grand Chamber clarifies that, if a decision is not delivered by registered letter with acknowledgment of receipt, as required by the R126 (1) EPC (but, for example, using UPS), there is a defect in service.
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 this case, a legal board of appeal had been seized with 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 linked to the modification made (eg change of a term)?
The Grand Chamber considers that l & #8217; we cannot have an extensive interpretation of & #8217;A101 (3) EPC : Clarity objections must originate in the changes made.