CASRIP Newsletter - Fall 1997, Volume 4, Issue 3

The period of grace under Rule 85b EPC for filing the request for examination is excluded from a re-establishment by the provisions of Art. 122 (5) EPC.

I. When examining for inventive step using the "problem-and-solution-approach", the starting point for defining the appropriate skilled person in the technical problem to be solved on the basis of what the closest prior art discloses, irrespective of any other definition of the skilled person suggested in the contested patent.
II. Since the technical problem addressed by an invention must so formulated as not to anticipate the solution, the skilled person to be considered cannot be the appropriate expert in the technical field to which the proposed solution belongs if this technical field is different to the one considered when formulated the technical problem.
III. The appropriate skilled person's basic knowledge does not include that of a specialist in the different technical field to wich the proposed solution belongs if the closest prior art gives no indication that the solution is to be sought in this other technical field.

A transfer can be recorded in the register of European Patents even after deemed withdrawal of a patent application if it is still possible that resitutio is available and the successor entitled had taken, together with his request for registering the transfer, procedural steps suitable for withdrawing the application.

I. If a ground of opposition is substantiated in the notice of opposition but is subsequently not maintained during the oppositon division proceedings (here the statement to that effect is made by the opponent during all proceedings), the opposition division is under no obligation to consider this ground further or to deal with it in its decision, unless the ground is sufficiently relevant to be likely to prejudice maintenance of the patent (following opinion G 10/91).
II. A ground of opposition which is substaniated in the notice of opposition but which is subsequently not maintained before the opposition division, is sought to be re-introduced during appeal proceeding is not a "fresh ground of oppotition" within the meaning of opinion G 10/91, and may consequently be re-introduced in the appeal proceedings without the agreement of the patent proprietor, in the exercise of the Board of Appeal's discretion".

I. New Rule 71a EPC should not be construed as an invitation to file new evidence or other material departing from the legal and factual framework of issues and grounds pleaded and evidenced throughout their proceedings prior to the hearing of the appeal (point 3.3 of Reasons).
II. The technical problem as originally presented, in accordance with Rule 27(1)(c) EPC, in the application or patent in suit, which is to be regarded as a "subjective" technical problem, may require re-formulation on the basis of objectively more relevant elements originally not taken into account by the applicant or patentee. This re-formulation yields a definition of the "objective" technical problem. The latter represents the ultimate residue (effect) corresponding to the objective contribution provided by the subject matter defined in the relevant claim (features) (points 5.3.1, 5.3.2, 5.3.3. of Reasons).
III. Whilst generally accepted definitions of the notional "person skilled in the art" do not always use identical language to identify the qualities of such a person, they have one thing in common, namely that none of them suggests that he is in possess of any inventive capability. It is the present of such capability in the inventor which sets him apart from the notional skilled person (point 7.8.4 of Reasons).

I. In the decision to grant, if the text given for grant is not and obviously cannot be the text corresponding to the real intention of the Examining Division, there is an obvious mistake within the meaning of Rule 89 EPC and the text erroneously indicated can be replaced by the text on which the Division actually wanted to base its decision.
II. The filing of replacement pages for the whole specification should be avoided unless the extend of amendments makes it absolutely necessary.

I. Written state of the art which is only mentioned and offered for inspection by an opponent after the parties have presented their main submissions during all proceedings may be regarded by the Board as late-submitted under Art. 114(2) EPC and does not need to be added to the file.
II. A document indicated in the contested patent as the closest or important prior art for the purposes of elucidating the technical problem set out in the description forms part of the opposition or opposition appeal proceeding even if not expressly cited within the opposition period (see decision T 5346/88, OJ EPO 1992, 638). However, a document indicated in the citation as the closest or important prior art for the purpose of elucidating the technical problem set out in the citation does not automatically form part of the oppostion or oppositon appeal proceedings if it has not been expressly cited within the opposition period.

The conditions for amendment of an application laid down in Art. 123(1) EPC in conjunction with Rule 86(3) EPC remain applicable so long as the Examining Division retains competence over the application, including after the issue of a communication under Rule 51(6) EPC, and until the decision to refuse or grant the application is taken (see G 7/93).
The right to be heard at oral proceedings under Art. 116(1) EPC subsists so long as proceedings are pending before the EPO, and the request for all proceedings must be granted (i.e. oral proceedings must be appointed) before any request of a party (whether procedural or substantive) is decided against that party so as to cause them a loss of rights. This applies also in the case of a request for oral proceedings to discuss amendments submitted after the issue of a communication under Rule 51(6) EPC. The discretion of the Examining Division under Rule 86(3) EPC must be exercised in such circumstances having regard to Art. 116(1) EPC. The Enlarged Board has no power to limit the application of Art. 116(1) EPC by means of any guidance it may lay down as to how an Examining Division should exercise its decretion under Rule 86(3) EPC.

A Decision of a Board of Appeal on appeal from an Examining Division has no binding effect in subsequent opposition proceedings or on appeal therefrom, having regard both to the EPC and "res judicata" principle(s).

The European patent may be granted with claims directed to the use of a substance or a composition for the manufacture of a medication for a specified new inventive therapeutique medication (G 583). Such use may be claimed in the form either of the application (or use) of a substance or composition for the manufacture of the medication or of a process (or method) to manufacture a medicament characterized in the use of that substance.

A correction substituting the name of the applicant is allowable under Rule 88 EPC, if there is sufficient evidence to support the request for correction. Rule 88, second sentence, EPC is not applicable.

For a notice of appeal to comply with Art. 108, first sentence, Rule 64(b) EPC, it must express the definite intention to contest an appealable decison. An appeal filed as subsidiary request, i.e. conditional on the main request not being allowed by the department of first instance, is therefore inadmissible.

I. Art. 99(1) EPC, which enables "any person" to institute opposition proceedings, establishes the presumption that the real opponent is the person who has lodged their opposition. The EPC and its attendant provisions make no stipulation as to the opponent's personal circumstances or motives for acting. Requests that the opposition be declared inadmissible must therefore be refused if, as in the present case, they are based on objections regarding the opponent's personal circumstances, e.g. his profession (a professional representative before the EPO) or his field of technical expertise (different from that of the patent forming the subject of the opposition), or on objections concerning the opponent's motives for acting (statement by the opponent explaining that his only reason for acting was to supplement his professional training).
II. The presumption established by Art. 99(1) EPC can only be set aside if proof is furnished, during the proceedings, that a third party has claimed to be the real opponent. In this event to uphold the principle established by Board of Appeal jurisprudence that "opposition's must be filed in pursued ... so as to avoid ... uncertainty", the "person" in whose name the oppostion was filed may be asked to assist in dispelling the doubt (see T 635/88).

A patent applicant who is not heard when grant proceedings are suspended at third parties request pursuant to Rule 13 EPC, may still challenge the justification for that suspension. He is party as of right to appeal proceedings initiated by the third party as rejection of his request by the EPO.

I. Where an invention relates to the actual realisation of a technical effect anticipated at a theoretical level in the prior art, a proper balance must be found between, on the one hand, the actual technical contribution to the state of the art by said invention, and, on the other hand, the terms in which it is claimed, so that, if patent protection is granted, its scope is fair and adequate (see point 3 of the Reasons).
II. In cases where the gist of the claimed invention consists in the achievement of the given technical effect by known techniques in different areas of application and serious doubts exist as to whether this effects can readily be obtained for the whole range of applications claimed, ample technical details and more than one example may be necessary in order to support claims of a broad scope. Accordingly, claims of broad scope are not allowable, if the skilled person, after reading the description, is not able to readily perform the invention over the whole area claimed without undue burden and without needing inventive skill (see point 5 and 19 of the Reasons).

An opponent may only substantiate a ground of opposition against a sinle claim of each request on file. If he succeeds in establishing that a claim of each request is not allowable, the patent will be revoked. Thus, an opponent is under no obligation to "overkill" requests put forward by the proprietor by substantiating grounds of opposition against more than one claim of such request.

I. A divisional application has to comply with the requirements of both Art. 76(1) EPC and Art. 123(2) EPC. Art. 76(1) governs the filing of a divisional application and therefore whether it is entitled to the filing date of the parent application and has the same benefit of right to priority as the parent application. Art. 123(2) EPC governs amendments to the divisional application subsequent to its filing.
II. Where a proposal for amendment of an application involves the addition of a limiting feature to a claim, application of "novelty test" is not appropriate to determine whether or not the amendment complies with Art. 123(2) EPC, because as explained in G 1/93(OJ EPO 1994, 541), whether or not the adding of an undisclosed feature limiting the scope of protection would be contrary to the purpose of Art. 123(2) EPC ... depends on the circumstances".