Friday, October 18, 2024 T 56/21 - The end (?) of the debate on whether the description must be adapted to match allowable claims of more limited subject-matter

This decision came online earlier this week, on  14 October 2024, and the outcome was a surprise to many. Whereas it had earlier been indicated that a referral to the Enlarged Board of Appeal was likely (and was a reason why the Guidelines were not amended further in the last few years - see e.g. item 127 in here), the Technical Board of Appeal 3.3.04 decided themselves. When reading the decision, it almost reads like an Enlarged Board: the format of the decision including a detailed Table of Contents, the detailed consideration of the (alleged) relevant EPC Articles and Rules (Art. 84, Rules 42, 43, 48 EPC) incl their interpretation and function (interestingly, in view of pending referral G 1/24, also addressing Art. 69 EPC), extensive discussion of earlier decisions of the Boards, and a clear, firm and reasoned conclusion in reasons 100-104 that no referral is needed "since the requirements of Article 84 EPC for the purpose of examining European patent applications appear unequivocal when considering the different elements of interpretation (see points 7. and 8.), the guidance by the Enlarged Board of Appeal (see, the references in point 35.), and the practical implications. The wording of Article 84 EPC as well as its context leave no room for requiring, in examination, that the description be adapted to allowable claims to match their subject-matter." Will this close the debate after a long period of uncertainty and will the Guidelines be amended as of the next edition? It is hoped so, although quite some practioners would have preferred a decision from the Enlarged Board, so that it would effectively be binding without reservations/ uncertainty and with immediate effect.

Monday, July 01, 2024 G 1/24 - Referral: Can the description and figures be consulted when interpreting the claims to assess patentability?

Today, the Boards of Appeal published the following communication (no changes made, except for emphasis added and references to points in the referring decision added cf. the Order of the latter) on their website:

Referral to the Enlarged Board of Appeal – G 1/24 ("Heated aerosol")

01.07.2024

Under Art. 112(1)(a) EPC, a Board of Appeal refers a question to the Enlarged Board of Appeal if it considers that a decision is required, in order to ensure uniform application of the law  [see point 3] or if a point of law of fundamental importance  [see point 4] arises.

Technical Board of Appeal 3.2.01 has by interlocutory decision T 439/22 referred the following questions to the Enlarged Board of Appeal (referral pending under G 1/24 - Heated aerosol):

1. Is Article 69(1), second sentence EPC and Article 1 of the Protocol on the Interpretation of Article 69 EPC to be applied on the interpretation of patent claims when assessing the patentability of an invention under Articles 52 to 57 EPC? [see points 3.2, 4.2 and 6.1]
2. May the description and figures be consulted when interpreting the claims to assess patentability and, if so, may this be done generally or only if the person skilled in the art finds a claim to be unclear or ambiguous when read in isolation? [see points 3.3, 4.3 and 6.2]
3. May a definition or similar information on a term used in the claims which is explicitly given in the description be disregarded when interpreting the claims to assess patentability and, if so, under what conditions? [see points 3.4, 4.4 and 6.3]

Contact

Nikolaus Obrovski
Jeannine Hoppe
Spokespersons of the Boards of Appeal of the European Patent Office
boa-press@epo.org

Referring Board's decision: T 0439/22 (Gathered sheet) dd 24-06-2024

Thursday, April 18, 2024 No more faxing to the EPO as of 1 July 2024 :(

Hidden in a News message on MyEPO services, the EPO announced that from July onwards, the EPO will no longer accept submissions by fax. All fax services relating to EP and PCT as well as Unitary Patent procedures will thus cease completely as of July. 

Already since 1 March 2023, EPO no longer sends faxes in proceedings under the EPC and the PCT - but at that time still continued to receive them; see OJ 2023, A15.

As of 1 July 2024, the EPO will also stop receiving faxes; see the News message.

The EPO indicated that, in emergency cases, the Contingency Upload Service is available via the EPO  website (CUR here). Note that Webform Filing will be decommissioned in December 2024. 

A Decision from the President and a Notice from the EPO on the abandoning of fax are expected to be published in OJ EPO April 2024.

For the News message: see here

Wednesday, November 01, 2023 No more 10 days :(

Overview of notification and time-limit calculation rules before and after 1 November 2023

Application of the transitional provision

Today, amended Rules 126(2)/127(2)/131(2) EPC entered into force, abandoning the 10-day legal fiction for deemed notification as applicable for time limits triggered by a notification, and replacing it by the date of dispatch and a compensation for late receipt (similar as in PCT Rule 80.6).

See:

• OJ 2022, A101 Decision of the Administrative Council of 13 October 2022 amending Rules 46, 49, 50, 57, 65, 82, 126, 127 and 131 of the Implementing Regulations to the European Patent Convention (CA/D 10/22), article 1.10-12, art 2 second sentence and art 3 second sentence
• OJ 2022, A114 Notice from the European Patent Office dated 25 November 2022 concerning legal changes to support digital transformation in the patent grant procedure, section IV.
• OJ 2023, A29 Notice from the European Patent Office dated 6 March 2023 concerning amended Rules 126, 127 and 131 EPC

Wednesday, October 11, 2023 G 1/22 and G 2/22 decided - Competence of EPO to assess whether a party is entitled to priority & possible implicit agreement of a transfer of priority

Yesterday, a Press Communiqué was published as the Enlarged Board had issued its decision in consolidated cases G 1/22 and G 2/22 and the decision became available in the register, and today on the Recent Decisions page.  The Enlarged Board concluded, in the order, that:

"I. The European Patent Office is competent to assess whether a party is entitled to claim priority under Article 87(1) EPC. There is a rebuttable presumption under the autonomous law of the EPC that the applicant claiming priority in accordance with Article 88(1) EPC and the corresponding Implementing Regulations is entitled to claim priority." 
"II. The rebuttable presumption also applies in situations where the European patent application derives from a PCT application and/or where the priority applicant(s) are not identical with the subsequent applicant(s). In a situation where a PCT application is jointly filed by parties A and B, (i) designating party A for one or more designated States and party B for one or more other designated States, and (ii) claiming priority from an earlier patent application designating party A as the applicant, the joint filing implies an agreement between parties A and B allowing party B to rely on the priority, unless there are substantial factual indications to the contrary."

Thursday, June 29, 2023 New referral to the Enlarged Board by T 0438/19 - is product on the market prior art if undue burden to analyse composition? (G 1/23)

 T 0438/19 of 27-06-2023 referred the following questions to the Enlarged Board of Appeal for decision:

1. Is a product put on the market before the date of filing of a European patent application to be excluded from the state of the art within the meaning of Article 54(2) EPC for the sole reason that its composition or internal structure could not be analysed and reproduced without undue burden by the skilled person before that date?

2. If the answer to question 1 is no, is technical information about said product which was made available to the public before the filing date (e.g. by publication of technical brochure, non-patent or patent literature) state of the art within the meaning of Article 54(2) EPC, irrespective of whether the composition or internal structure of the product could be analysed and reproduced without undue burden by the skilled person before that date?

3. If the answer to question 1 is yes or the answer to question 2 is no, which criteria are to be applied in order to determine whether or not the composition or internal structure of the product could be analysed and reproduced without undue burden within the meaning of opinion G 1/92? In particular, is it required that the composition and internal structure of the product be fully analysable and identically reproducible?

The decision discusses alleged conflicting or at least diverging application of G 1/92, as well as G 1/92 itself, in detail. The reasons from the decision are cited below (no changes made except for highlighting in color).

The referral is pending under G 1/23 "solar cell".

Tuesday, May 09, 2023 T 2432/19 - Right to oral proceedings in form of a videoconference (no)

In the present opposition appeal case, the Board issued a summons to oral proceedings in Haar. The appellant (patent proprietor) requested that the oral proceedings be held by videoconference. No reasons were given for this request. The Board then issued a communication containing its provisional opinion. The parties were also informed that if the Board found it appropriate to do so, the oral proceedings might be held by videoconference. The parties were also asked to inform the Board if they wished to invoke any reasons against holding the oral proceedings by videoconference, for the case that the Board decided to use that format. The appellant repeated its request for oral proceedings by videoconference and stated that it knew of no reason why the oral proceedings could not be held by videoconference. The respondent invoked no reasons against holding oral proceedings by videoconference, but requested that the Board inform the parties as soon as possible if it decided to hold the oral proceedings by videoconference. Oral proceedings took place on the 25 April 2023 in person at the premises of the EPO in Haar. The Board argued that: 1. although the order of G 1/21 refers to an emergency situation, it follows from the ratio decidendi of this decision that in-person oral proceedings can only be denied under very limited conditions, even in a situation of general emergency such as a pandemic; 2. due to the fact that videoconferences, at least with current technology, can only provide a suboptimal form of communication, parties have a right to the optimum format for oral proceedings, i.e. in-person oral proceedings, that can only be denied under very limited conditions; and 3. e contrario it also follows from the reasons underlying the Enlarged Board's decision, that parties cannot force Boards to conduct videoconferences instead of in-person oral proceedings.