The Board observed that it could not be understood that the “technical relevance” criterion, proposed by another board in T 1906/11 for judging extension of subject matter, defines a new standard for judging amendments with respect to Article 123(2) in the case of intermediate generalizations. Instead, the Board had to decide whether the technical information…
The Board of Appeal accepted that filing of a criminal complaint for patent infringement could meet the EPC condition of Art. 105 EPC, for intervention that ‘proceedings for infringement´ have been instituted. In the present case, the licensee of the patent raised a criminal complaint (‘Privatanklage’ under Austrian law), requesting a court to institute criminal…
An amendment of independent patent claim 1 during prosecution introduced a new feature. According to the Examining Division this led to the combinations of features of dependent claims 2-4 to extend beyond the disclosure of the application as filed (Art. 123(2) EPC). The Board of Appeal held that the focus of the Examining Division was…
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.
There is insufficiency of disclosure if the skilled person must deliberately ignore a feature of the claim which is perfectly understandable per se in order to work the invention. Click here for the full text of this case. A summary of this case will be posted on http://www.Kluweriplaw.com
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…
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…
The complexities of European patent architecture raise a number of issues relating to the interface between opposition proceedings before the European Patent Office (“EPO”) and infringement proceedings before national courts. A recent case has raised one of such issues, namely: what the impact should be of the revocation of the patent by the EPO in…
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…
In an appeal against a decision by the Opposition Division to maintain the patent in amended form, the Board ordered the representative of the opponent to file an authorization. The representative did not do so in due time, but indicated that the opponent would take no further action. The Board held that the legal fiction…
