EPC

Added matter, Amendments, Disclaimer, EPC

(Hoffmann Eitle)/

The main principles applicable for assessing whether a non-disclosed disclaimer meets the requirements of Article 123(2) EPC have been laid out in the decision G 1/03 of the Enlarged Board of Appeal (EBA) of the EPO. In the recent decision G 2/10 dated September 19, 2011 a new test for assessing the allowability of non-disclosed disclaimers, the so called “Remaining Subject-Matter Test”, has been established. In applying this test, disclaimers which in the past would have been considered to be allowable in view of G 1/03 may now be (and actually have been)found to actually be in violation of Article 123(2) EPC.

Case Law, Electrical Engineering, EPC, Extension of subject matter, Procedure

(V.O.)/

The Board of Appeal ruled that color figures contained in the application when filed could be used as a basis for amendments. The board had to deal with the problem that no original copy of the color figures was available to the board. Therefore, the board considered it appropriate to compare sets of copies of…

Biologics, Case Law, EPC, Inventive step

(Vereenigde)/

In order to determine whether the features that distinguish the patent claims over the prior art can be considered when assessing inventive ste p and novelty, the Board must consider whether these features make a technical contribution to the invention. Click here for the full text of this case. A summary of this case will be…

Amendments, Chemical Engineering, EPC, Extent of Protection

(Hoffmann Eitle)/ /1 Comment

Article 123(3) EPC stipulates that a European patent may not be amended in such a way as to extend the protection it confers. A special case of extension of the protective scope may occur in claims which define both the type of and the amount of a specific component. An issue addressed in a series…

Case Law, EPC, Procedure

(Vereenigde)/

An applicant for re-establishment of rights who fails to substantiate his request adequately in first-instance proceedings cannot normally remedy that failure by submitting additional evidence with the grounds for appeal. An appellant does not have an absolute right to introduce new evidence with the statement of ground of appeal. Click here for the full text of…