Center for Advanced Study & Research on Innovation Policy


CASRIP Newsletter - Winter 1998, Volume 5, Issue 1

Recent EPO Decisions

Decision of Technical Board of Appeal 3.2.5 dated 9 June 1997
T 742/96 - 3.2.5
Citation: OJ EPO 1997, 533
Patent Proprietor/Respondent: UNILEVER PLC, et al.
Opponent/Appellant: Procter & Gamble European Technical Center N.V.
Headword: Textile/UNILEVER

Articles: 112(1)(a), 108 EPC

Keywords: "Referral to the Enlarged Board" - "Fee for appeal" - "Principle of good faith"

The following question is referred to the Enlarged Board of Appeal:
Should the board of appeal, in application of the principle of good faith, notify the appellant of a missing appeal fee when the notice of appeal was filed so early that the appellant could react and pay the fee in time, even if there was nothing either in the notice of appeal or in any other document filed in relation to the appeal from which it could be inferred that the appellant would, without such notification, inadvertently miss the time limit for paying the appeal fee?

Decision of Technical Board of Appeal 3.2.5 dated 27 June 1997
T 301/95 - 3.2.5
Citation: OJ EPO 1997, 519
Patent Proprietor/Respondent:: INDUPACK AG
Opponent/Appellant: Hartdegen Emmerich Ing.
Headword: Straw man/HARTDEGEN

Articles: 99, 107 EPC
Rule: 55(c) EPC

Keywords: "Referral to the Enlarged Board of Appeal" - "Admissibility of opposition filed by a straw man" - "Evidence of acting as a straw ma"

The following points of law of fundamental importance are referred to the Enlarged Board of Appeal under Article 112(1)(a) EPC:
I. Is an opposition filed by an indirect representative ("straw man") admissible?
II. If the answer to I is no, to what extent must the objection to a "straw man" be investigated if circumstances raising reasonable suspicion that the opponents are not acting in their own interests are introduced?

Decision of the Legal Board of Appeal dated 28 February 1997
J 3/95 - 3.1.1
Applicant: ETA S.A. Fabriques d=Ebauches
Headword: ETA

Articles: 15(e), 20(1), 21(1), 106(1), 110, 111, 112(1)(a), 113, 116, 127 EPC
Rules: 89, 92 EPC

Keywords: "Legal status of the boards of appeal" - "Res judicata" - "Exhaustion of the available remedies" - "Administrative or jurisdictional procedure to be adopted in response to requests submitted after a final board of appeal decision and alleging a violation of a fundamental procedural principle" - "Referral to the Enlarged Board of Appeal"

The following questions concerning an important point of law are referred to the Enlarged Board of Appeal:
I. In the context of the European Patent Convention, what administrative or jurisdictional measures should be taken in response to requests based on the alleged violation of a fundamental procedural principle and aimed at the revision of a decision by a board of appeal with the force of res judicata?
II. If administrative or jurisdictional measures are necessary, should it be required that they be entered in the Register of European Patents?

Decision of Technical Board of Appeal 3.4.1 dated 6 December 1996
T 433/93 - 3.4.1
Citation: OJ EPO 1997, 509
Patent Proprietor/Appellant: ATOTECH UK LIMITED
Opponent/Respondent: Isola Werke AG
Headword: Rehearing/ATOTECH

Articles: 100(a), 100(b), 113(1) EPC
Rule: 67 EPC

Keywords: "Opposition substantiated on the ground of lack of inventive step" - "New ground of lack of novelty introduced by opposition division during oral proceedings" - "Patent revoked by opposition division on the grounds of lack of novelty and insufficiency (Article 100(b) EPC)" - "No opportunity for proprietor to comment on the ground of insufficiency" - "Substantial procedural violation" - "Remittal to department of first instance for rehearing before a different composition of opposition division"

I. If an opposition division wishes to introduce a new ground of opposition into the proceedings in addition to the ground(s) substantiated in the notice of opposition, either on its own motion or upon request by an opponent, the patent proprietor must be informed (normally in writing) not only of the new ground of opposition (i.e. the new legal basis for the opposition), but also of the essential legal and factual reasons (i.e. its substantiation) which could lead to a finding of invalidity and revocat ion. Thereafter, the patent proprietor must have a proper opportunity to present comments in response to the new ground and its substantiation.
II. Following a substantial procedural violation in connection with a decision issued by a first instance department, at the request of a party, such decision has to be set aside. If a party has reasonable grounds to suspect that the same composition of o pposition division would be tainted by the previous decision and therefore partial, at the request of that party, the case should be reheard before a different composition of opposition division.

Decision of Technical Board of Appeal 3.3.2 dated 20 December 1996
W 4/96 - 3.3.2
Citation: OJ EPO 1997, 552
Applicant: UNILEVER N.V., et al.
Headword: Teeth whitening/UNILEVER

Article: 17(3)(a) PCT
Rules: 13.1, 13.2, 40.1, 40.2(c)(e) PCT

Keywords: "Lack of unity"- "a posteriori - (yes)" - "Absence of a common technical feature defining a contribution of the claimed Markush grouping over the prior art "

I. An objection of lack of unity may be raised "a posteriori" in regard to all categories of grouping of alternatives of chemical compounds.
II. The requirement of a technical relationship as defined in Rule 13.2, 1st sentence, PCT, may be met when all claimed alternatives belong to a class of compounds which may be expected to behave in the same way in the context of the claimed inventions ("Markush claims"). The technical relationship involves those common special technical features that define a contribution over the state of the art (Rule 13.2, 2nd sentence, PCT). However, such contribution cannot be recognized on the basis of this expectation if members of the class have already been shown in the prior art to behave in the manner disclosed in the application.

Decision of Technical Board of Appeal 3.3.2 dated 11 February 1997
T 665/92 - 3.3.2
Citation: OJ EPO 1998, 17
Patent Proprietor/Appellant: NYCOMED AS
Opponent/Respondent: Advanced Magnetics, Inc.
Headword: Contrast agent for NMR imaging/NYCOMED

Articles: 52(4), 54, 56, 84 EPC

Keywords: "Clarity - (yes)" - "Diagnostic method within the meaning of Article 52(4) - (yes)" - "Novelty - (yes)" - "Inventive step - (yes)"

I. The use of a substance or composition for the manufacture of a preparation to be used in a specific method may derive its novelty from the subsequent use of the preparation in this specific method only if said method is one of those excluded from patentability by virtue of Article 52(4) EPC (see G/83, OJ EPO 1985, 64).
II. Methods for determining chemical or physical conditions which do not include any stages or measures requiring a doctor to carry them out but rather involve a technician in order to provide a basis for a doctor=s subsequent activity of diagnosis may not necessarily fall within the exclusion of Article 52(4) EPC (see e.g. T385/86, OJ EPO 1988, 308).
III. However, the diagnostic character of a process, within the meaning of Article 52(4) EPC, may be recognized in that such a process for which protection is sought does include essential steps which are to be implemented by medical staff or under the responsibility of a doctor (see reasons, point 5.2).

Decision of Technical Board of Appeal 3.4.2 dated 17 April 1997
T 382/94 - 3.4.2
Citation: OJ EPO 1998, 24
Applicant: Carl Zeiss et al.
Headword: Documents as filed/CARL ZEISS

Articles: 14, 70, 80, 90, 91, 123(2) EPC
Rules: 32(2)(j), 39, 43, 67, 88 EPC

Keywords: "Accordance of date of filing" - "Documents as filed" - "Languages of the EPO" - "Text matter in the drawings" - "Authentic text of a European patent application"

I. The Convention does not make the accordance of the date of filing dependent on whether text matter in the drawings is in the same language as that of the description and claims in accordance with Articles 14(1) and (2) EPC.
II. If the drawings are filed in full on the date of filing, they form part of the application as filed, even if they contain text matter in an official language other than the language of the proceedings. There is nothing to prevent the application from being amended on the basis of a translation of this text matter into the language of the proceedings.

Decision of Technical Board of Appeal 3.4.1 dated 1 April 1997
T 750/94 - 3.4.1
Citation: OJ EPO 1998, 32
Applicant: AT&T Corp.
Headword: Proof of prior publication/AT&T

Articles: 54, 56, 113 EPC

Keywords: "Nominal publication date of journal" - "Available on demand from publishers (not proved)" - "Sent by mail to subscribers" - "Received by at least one subscriber before the filing date (not proved)" - "Made available to the public (not proved)"

I. When an issue of fact is being examined and decided by the EPO on the balance of probabilities, the more serious the issue the more convincing must the evidence be in order to support it. If a decision on such an issue may result in the refusal or revocation of a European patent, for example, in a case concerning any alleged prior publication or prior use, the available evidence in relation to that issue must be very critically and strictly examined. A European patent should not be refused or revoked unless the grounds for refusal or revocation (that is, the legal and factual reasons) are fully and properly proved.
II. In accordance with the principle of "free evaluation of evidence" (see decision T 482/89, OJ EPO 1992, 646), items of evidence relevant to a matter in issue must be given an appropriate weight in order to reliably establish what is likely to have occurred. An unsigned statement by an unknown and unnamed person should in principle be given minimal weight.

Matthias Bosch

For further information on the decisions or other information regarding European patent law, please contact Matthias Bosch, c/o Patent Attorneys Zipse & Habersack, Wotanstr. 60, 80639 Munich, Germany. Fax: 49891783567 or e-mail:

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