Amendments to a patent (application) are bound to strict rules under the European Patent Convention (EPC). According to Art. 123(2) of the EPC, a European patent (application) may not be amended in such a way that it contains subject-matter which extends beyond the content of the application as filed. Adding subject-matter which is not disclosed would give an applicant an unwarranted advantage and could be damaging to the legal security of third parties. (G 1/93, OJ 1994, 541) The ‘gold standard’ of the European Patent Office’s Board of Appeal is that any amendment can only be made within the limits of what a skilled person would derive directly and unambiguously, using common general knowledge, and seen objectively and relative to the date of filing, from the whole of the documents as filed (G 3/89, OJ 1993,117; G 11/91, OJ 1993, 125).
The amendments of the Italian IP Code introduced by Legislative Decree no. 131 of 13 August 2010 are many and I tend to believe that there is no Italian IP lawyer who is sure to have already counted them all. Each time I have to consider a new issue for a client, I find some…
By 24 similar decisions rendered on 14 April 2010, the Cour d’Appel of Paris held that new Article L. 614-7 of the French Intellectual Property Code, implementing the London Agreement, applies not only to European patents in respect of which the mention of grant had been published after 1 May 2008 but also to European patents in respect of which the mention of grant had been published before 1 May 2008. One of these decisions is here summarized.
Questions submitted to the Enlarged Board. During opposition the Proprietor announced that it wanted a correction of the decision to grant from the examining division. The opposition division decided to stay proceedings and the Opponent appealed the decision to stay. The Board submitted questions to the Enlarged Board, asking (1) whether a request for correction…
The Tribunal de Grande Instance of Paris in its 28 May 2010 decision, Institut Pasteur v Société Siemens Healthcare Diagnostics, illustrates the specificity of the French doctrine of equivalents, rejecting the “file wrapper estoppel” theory as it is known in the US. However, since it applies the doctrine of equivalents although the function of the claimed means is not novel, this decision does not seem to be in line with the majority of decisions rendered on that item.
The Enlarged Board of Appeal states in its Opinion G3/08, reason 7.2.1 (italics added): “The European Patent Organisation is an international, intergovernmental organisation, modelled on a modern state order and based on the separation of powers principle, which the sovereign contracting states have entrusted with the exercise of some of their national powers in the…
The Austrian Supreme Court decided that a patent owner is free to base an infringement action on a limited version of its claims, irrespectively of initiating formal limitation proceedings. An application for cost reimbursement by the Main Association of the Austrian Social Insurance Institutions, which contained a declaration of the price and the availability of…
The Enlarged Board of Appeal in reply to three questions of law submitted to it, concludes as follows: Question 1: When an international application is filed and published under the PCT in an official language of the EPO, it is not possible upon entry into the regional phase to file a translation of the application…
This decision of the Board of Appeal covers two questions of interest: 1) May an Opposition Division include an obiter dictum in its decision? (The answer in this case is yes.) 2) To what extent is amendment in the background section of the description allowed in a divisional application? A full summary of this case…
The selection of explicitly disclosed borderline values defining several (sub)ranges, in order to form a new (narrower) subrange, is not contestable under Article 123 (2) EPC when the ranges belong to the same list. However, the combination of an individual range from this list with another individual range from a second list that relates to…
In the search report of the patent application several prior art references were mentioned that were not described in the patent application as originally filed, while they were known to the applicant. The Examining Division had decided that Rule 42(1) EPC 2000 would not allow a later introduction of the discussion of the prior art…
