A board of appeal of the EPO held that for the problem-solution approach to inventive step the requirement of the same “purpose or effect” in the criteria for selecting the closest prior art for a claim refers to the purpose or effect of the claimed subject-matter as a whole, not just of its distinguishing feature(s)….
An EPO board of appeal observed that a careful opponent that is economically active in the same field as the patentee should search for internal evidence of public prior use before filing an opposition. If such internal evidence is filed belatedly, the fact the search was started only after filing the opposition per se is…
An EPO board of appeal expressed its opinion that EBA case law implied that no further use should be made of the three-part “essentiality test” of T 331/87, for deciding whether removal of a feature from a claim complies with article 123(2) EPC. The only test endorsed by the EBA was the “gold standard”. The…
A board of appeal of the European patent office held that a decision to reject an opposition with grounds based on an improperly corrected version of the patent as granted maintains the text used in the decision to grant, without the corrections. A decision of the examining division to correct the text after grant by…
The enlarged board of appeal (EBA) of the European patent office effectively ended the possibility of poisonous priority. The EBA held that entitlement to partial priority may not be refused for a claim encompassing alternative subject-matter by virtue of generic expressions (generic “OR” claims) if the priority document discloses part of that subject matter in…
Although it did not admit a broader claim 1, an EPO board of appeal allowed an auxiliary request wherein claim 1 as granted was replaced by a combination of independent claims from different first instance requests. This combination was admitted because the first instance department had had the opportunity to decide on both claims in…
The Board of Appeal found that the examining division had committed a substantial procedural violation by raising tentative patentability objections rather than completing an improperly justified incomplete search. Thus tentative examination had improperly been used as a condition for completing the search, rather than completing the search first and examining later. This forced the applicant…
An EPO board of appeal decided that it had the discretion to admit a late filed document, even though the opposition division had exercised its discretion not to admit the document. In this respect the board diverged from T 2102/08. The board held that it may be confronted with additional facts (submissions) and different circumstances…
The Legal Board of Appeal of the EPO rejected the decision of the examining division that additional claim fees were due at the start of examination for claims added with the response to the international search report under Rule 161(1) EPC, even if at the end of the 31 month period the claims did not…
An EPO board held that, during opposition proceedings, copies of complaints about file specific issues sent by a party to EPO departments other than the opposition division, as well as the responses to these complaints, should be sent to the other party. The other party also needs to be notified of complaints about the work…
