Center for Advanced Study & Research on Innovation Policy


CASRIP Newsletter - Spring/Summer 1998, Volume 5, Issue 2

Recent EPO Decisions

Decision of Technical Board of Appeal 3.3.4 dated 2 July 1996
T 649/92 OJ 1998, 97
Patent Proprietor/Respondent:
Opponent/Appellant: Naohito Oohashi
Opponent/Other party: Delta Biotechnology Limited
Opponent/Other party: Riatal GmbH

Article: 99 EPC
Rules: 55,65 EPC

Keyword: "Nominal opponent" - "Straw man" - "Referral to Enlarged Board of Appeal (yes)"

The following questions are referred to the Enlarged Board of Appeal for decision:
I. Is a respondent patentee entitled to challenge the admissibility of an opposition on grounds relating to the identity of an appellant opponent during the course of appeal, where no such challenge to the admissibility has been raised before the Opposition Division?
II. If the answer to Question 1 depends on the particular circumstances, what are the legal principles governing the circumstances in which the Board of Appeal should take into account in assessing whether a challenge to the admissibility of the opposition is allowable at the appeal stage?
III. If the answer to Question 1 is yes, how should the requirement of Article 99(1) EPC to the effect that any person may give notice of opposition to a European patent be interpreted, and in particular, should it be interpreted to the effect that anybody may give notice of opposition in his or her own name, but not in the name of a nominal opponent, that is, an opponent who merely lends his or her name for the proceedings while allowing the proceedings to be controlled by another?
IV. If the answer to Question 3 means that Article 99 EPC precludes a nominal opponent, in what circumstances, if any, should a suspected nominal opponent be required to provide evidence to establish that the opposition is genuinely his or her own, and what evidence should such a suspected nominal opponent be required to give to prove that he or she is a genuine opponent?
V. If the answers to the above questions involve a restriction on the right to challenge admissibility, should such a restrictive view be applied immediately in all pending proceedings?

Decision of Technical Board of Appeal 3.3.3 dated 20 November 1996
T 472/92 , OJ EPO 1998, 161
Opponent/Appellant: Owens-Illinois, Inc.

Headword: Joint venture/SEKISUI

Articles: 54, 56, 117, 125 EPC
Rule: 72 EPC

Keyword:"Novelty (yes) - prior public use not proved up to the hilt -assumption of confidentiality on the basis of a joint venture agreement" - "Inventive step (yes) - no incentive - extrinsic properties of a material of prior public use not made available to the public by the mere delivery to the recipient company (see G1/92)"

I. Although the standard of proof is the same for all objections covered by Article 100 EPC (cf. T270/90, OJ EPO 93, 725), in those prior public use cases, where practically all the evidence in support of an alleged prior public use lies within the power and knowledge of the opponent, the latter has to prove his or her case up to the hilt (Reasons 3.1).
II. The printability of a material and its surface characteristics after exposure to thermal shrinkage conditions are not "intrinsic" properties which according to G 1/92 should be considered to have been made available to the public by the mere delivery of said material to a customer (Reasons 7.3.4 to 7.3.7).

Decision of Technical Board of Appeal 3.4.1 dated 17 October 1996
T 85/93 OJ EPO 1998, 183
Patent Proprietor/Respondent: Pitney Bowes, Inc.
Opponent/Appellant: Francotyp-Postalia Aktiengesellschaft & Co.

Headword: Apparatus for determining postage fees/Pitney Bowes

Articles: 56, 114 EPC

Keyword: "Late-filed evidence - admitted into the appeal proceedings" - "Inventive step - denied"

Evidence of common general knowledge, like any other evidence in support of an opponent's case, should be filed at an early stage in the proceedings before the Opposition Division (following Decision G 4/95, OJ EPO 1996, 412), and may be rejected as inadmissible in the Board's discretion if it is filed for the first time during the appeal proceedings.

Decision of Technical Board of Appeal 3.2.1 dated 25 February 1997
T 136/95 OJ EPO 1998, 198
Patent Proprietor/Respondent: Justamente, Raphaelle
Opponent/Appellant: Transordures
Headword: Waste compactor/JUSTAMENTE

Articles: 54, 56, 87(1), 88(3), 88(4) EPC

Keyword: "Structural feature claimed in the European application, based on a more general functional feature described in the prior application" - "Priority validly claimed (yes)"

It is necessary to give some flexibility to the requirement of identity of invention between a subsequent European application and a previous application from which priority is claimed. Some features claimed in the European application need not be explicitly mentioned in the prior application, provided that the skilled person is able, purely on the basis of his or her knowledge or by performing simple operations to carry out the invention, to infer these features from the prior application (point 3.3 of the Reasons).

Decisions of the Legal Board of Appeal 3.1.1 dated 10 March 1997
J 29/94 OJ 1998, 147
Applicant: González Garcia, Luis Emilio
Headword: Deemed withdrawal/GONZALEZ GARCIA

Articles: 110, 121, 122 EPC

Keyword: "Further processing and re-establishment of rights (no) - request out of time" - "Deemed withdrawal of the application (yes)"

Deemed withdrawal of the application pursuant to Article 110(3) EPC applies in the case of a failure to reply to a communication pursuant to Article 110(2) EPC in ex parte appeal proceedings, even where the decision under appeal did not refuse the application, but only a particular request.

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: ﮏ糷廼� or e-mail:

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