Center for Advanced Study & Research on Innovation Policy


CASRIP Newsletter - Winter 1997, Volume 4, Issue 1


The European Patent Convention (EPC) went into force in the late 1970s with the aim of creating a harmonized European Patent system. From its inception, the importance of the EPC has continued to increase, as has the number of EPC members. Currently, there are eighteen member countries and a number of other countries (e.g. the Baltic States and Slovenia) that have applied for membership.

In former issues of this newsletter some important decisions have been discussed intensively, as well as many important developments in certain fields of technology (e.g. biotechnology and computer science). In deciding to write about European Patent law in this section, I have made efforts to keep within the established harmony. The increasing significance of the EPO and its decisions was another reason CASRIP decided to add a European Corner section to its newsletter. This will allow CASRIP to deliver each decision of the European Patent Office (EPO) published in the Official Journal, starting in November 1996.

The presented decisions contain the file number, citation, parties, headwords, articles, keywords and the headnotes. The headnotes are customarily written by the EPO, and are not a part of the official decision. For example, the correct citation of a decision would be: T 840/94, OJ EPO 1996, 680 which means T 840 of 1994 in the Official Journal of the EPO 1996, page 680.

Since space is limited, only the headnotes are printed for information on the decided case. Neither the facts, requests nor the reasons for the decision are included. For those interested in the reasons or other missing information, I will send a copy of the complete decision; please note the requesting party will bear the mailing costs. My address for these requests, or other questions: Matthias A. Bosch, c/o Bardehle & Partners, Galileiplatz 1, 81679 Mchen, Germany. Fax: 89-9280 5444.

Decisions of the enlarged Boardof Appeal dated July 19, 1996.

G 1/95
Citation: OJ EPO 1996, 615
Patent proprietor/Respondent: Thomas de la Rue & Co. Ltd.
Opponent/Appellant: GAO Gesellschaft f Automation und Organisation mbH
Headword: fresh grounds for opposition/DE LA RUE
Article: 99, 100 (a), (b) and (c), 114 (1) EPC
Rule: 55, 56 EPC
Keyword: "No power to examine fresh grounds for opposition without agreement of patentee"

In a case where a patent has been opposed on the grounds set out in Art. 100 (a) EPC, but the opposition has only been substantiated on the grounds of lack of novelty and lack of inventive step, the ground of unpatentable subject-matter based upon Art. 52 (1) and (2) EPC is a fresh ground for opposition and accordingly may not be introduced into the appeal proceedings without the agreement of the patentee.

Decision of the Enlarged Board of Appeal dated 19 July 1996.

G 7/95
Citation: OJ EPO 1996, 626
Patent proprietor/Respondent: ETHICON Inc.
Opponent/Appellant: United States Surgical Corporation
Headword: fresh grounds for opposition/ETHICON
Article: 99, 100 (a), (b) and (c), 114 (1) EPC
Rule: 55, 56 EPC
Keyword: "No power to examine fresh grounds for opposition without agreement of patentee"

In a case where a patent has been opposed under Art. 100 (a) EPC, on the ground that the claims lack an inventive step in view of documents cited in the notice of opposition, the ground of lack of novelty based upon Art. 52 (1) and 54 EPC is a fresh ground for opposition and accordingly may not be introduced into the appeal proceedings without the agreement of the patentee. However, the allegation that the claims lack novelty in view of the closest prior art document may be considered in the context of deciding upon the ground of lack of inventive step.
These two decisions of the Enlarged Board of Appeal are very important for practitioners before the EPO, since they require filing oppositions against a European patent using all possible offensive remedies, i.e. oppose a European patent by questioning all requirements for patentability according to Articles 52 - 57 EPC. This should not only be done in a general manner, but also be directed at each requirement and combined with reasoning to support these allegations. The EPO's intention in making these decisions was to force the opponent in his/her first statement - the notice of opposition - to indicate all remedies of offense, so that the boards are able to deal with all arguments when establishing their decision. The holder of the patent should be confronted at the first stage of the proceedings with all materials and documents so that he can decide, if a "killing reference" is brought up, to waive the patent and, thus, to save the EPO's time as well as his/her money.

Decision of the Enlarged Board of Appeal dated 24 July 1996.

G 6/95
Citation: OJ EPO 1996, 649
Patent proprietor/Respondent: GE Chemicals Inc.
Opponent/Appellant: BAYER AG Leverkusen, Konzernverwaltung RP Patente Konzern
Headword:Interpretation of Rule 71a (1) EPC, GE Chemicals
Article: 23, 33 (1) (b), 112 (1) (a), 164 (2) EPC
Article: 11 (2), 18 RPBA
Rule: 10 (2), 11, 66 (1), 71, 71a(1) EPC
Keyword: "Interpretation of Rule 71a (1) EPC vis-.-vis the boards of appeal"

Rule 71a(1) EPC does not apply to the boards of appeal.

Decision of Technical Board of Appeal 3.3.1 dated 26 March 1996.

T 840/94-3.3.1
Citation: OJ EPO 1996, 680
Patent proprietor/Appellant: UNION CAMP
Opponent/Respondent: Akzo N.V.
Headword: Revocation/UNION CAMP
Article: 108, 122 (2) EPC
Rule: 81 (1) EPC
Keyword: "Re-establishment of rights" - "Removal of cause of noncompliance" - "Introduction not to pass on information on pending proceedings"

If a party instructs an authorized representative not to pass on any further communication from the EPO, it cannot then rely on the fact that information notified to the authorized representative and necessary for continuing the proceedings was lacking.

Decision of Technical Board of Appeal 3.3.4 dated 11 January 1996.

T 386/94-3.3.4
Citation: OJ EPO 1996, 658
Patent proprietor/Respondent: Unilever N.V. et al.
Opponent/Appellant: Celltech Ltd.
Opponent/Appellant: Chr. Hansens Laboratorium A/S
Headword: Chymosin/UNILEVER
Article: 123 (2) and (3), 84, 83, 54 (3) and (4), 56, 87, 88 EPC
Keyword: "Sufficiency of disclosure (yes)" - "Novelty" - "Inventive Step (no)"

Inventive step may be acknowledged in the field of gene technology if there is no reasonable expectation of success that the cloning and expression of a given gene can be carried out. However, in a case where, at the priority date a skilled person can expect to perform the cloning an expression of a gene in a fairly straightforward manner, and the cloning and expression, although requiring much work, does not pose such problems as to prove that the expectation of the success was ill-founded, inventive step cannot be acknowledged.

Decision of the Technical Board of Appeal 3.3.1 dated 30 January 1996.

T 337/95-3.3.1
Citation: OJ EPO 1996, 628
Applicant: NIHON NOHYAKU Co. Ltd.
Headword: Lower alkyl/NIHON NOHYAKU
Article: 84 EPC
Rule: 29 (1), 35 (12) EPC
Keyword: "Clarity of claims for compounds per se" - "Meaning of `lower alkyl` unclear"

I. Claims have to be clear for the sake of legal certainty.
(No. 2.2 to 2.4 of the reasons).
II. Since, in the absence of any unambiguous reference point, a relative term such as "lower alkyl" in the field of organic chemistry does not have a generally accepted meaning with respect to its maximum number of carbon atoms, such a term is ambiguous and therefore not suitable for clearly defining the subject-matter for which protection is sought in a claim which is directed to a group of organic compounds (No. 2.8 of the reasons).

- Matthius Bosch

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