Tuesday, 30 April 2019

T 180/14 - Do not miss the opportunity to correct the error!

In this opposition appeal, the appellant (priopretor) filed statement of grounds of appeal including a new main request, which was indicated to include claims 1-22 of the 2nd auxiliary request filed during the oral proceedings before the Opposition division, and several auxiliary requests. Claim 1 of the new main request did not however correspond to claim 1 according to that second auxiliary request filed during the oral proceedings before the opposition division - at least two significant differences were identified.  In the letter of reply to the statement of grounds of appeal, filed by the opponent (respondent) in 2014, the discrepancy between what was said in the statement of grounds and in the submitted main request, was identified in detail. The appellant did not at that stage react to the respondent's reference to this identified discrepancy between the written statement and the content of the annexed main request. In a communication under Article 15(1) RPBA the board drew the appellant's attention to the corresponding discrepancy already identified by the respondent. It was inter alia noted by the board that the subject-matter of claim 1 of the main request and the first, third and fourth auxiliary requests was provisionally considered to not fulfil the requirements of Article 123(2) EPC. With letter of 15 February 2019, i.e. approximately one month prior to the oral proceedings scheduled before the board, the appellant, in response to the board's communication, filed a new main request as well as new first to fifth auxiliary requests. Claim 1 of the new main request is identical to claim 1 of the second auxiliary request as filed during the oral proceedings before the opposition division. The new main request was presented as a request for correction of obvious errors of what was submitted as new main request wit the statement of grounds in 2014. Did the Board accept the correction? Did the Board admit and allow at least one of the other requests?

Wednesday, 17 April 2019

T 0725/14 - Valid transfer of rights results in invalid priority claim

If during the priority year a European patent application - filed by applicant A - is transferred to a party B, is then the priority claim from a subsequent application (from which the patent in suit matured) by applicant A to the earlier application valid? Which acts and statements, including their timing, constitute the transfer of a priority right between parties? And what role do the parties' intentions - as far as they can be derived from the documents on file - play in this?

Tuesday, 9 April 2019

G 3/19 - Patentability of plants exclusively obtained by essentially biological processes: the referral

The full text of the referral by the President to the Enlarged Board of Appeal relating to the patentability of plants exclusively obtained by essentially biological processes is available online. Also see our earlier posts (w.r.t annoucemcentearlier annoucement T 1063/18 and first news message)). The accompanying letter is dated 4.04.2019 and was received in the BoA Office on 08.04.2019.

Under Article 112(1)(b) EPC the President of the European Patent Office refers the following points of law to the Enlarged Board of Appeal:

1. Having regard to Article 164(2) EPC, can the meaning and scope of Article 53 EPC be clarified in the Implementing Regulations to the EPC without this clarification being a priori limited by the interpretation of said Article given in an earlier decision of the Boards of Appeal or the Enlarged Board of Appeal?

2. If the answer to question 1 is yes, is the exclusion from patentability of plants and animals exclusively obtained by means of an essentially biological process pursuant
to Rule 28(2) EPC in conformity with Article 53(b) EPC which neither explicitly excludes nor explicitly allows said subject-matter?

J 4/18 - Dutch and French natural persons as co-applicants entitled to language-based fee reduction

Since Rule 6 EPC was amended per 1 April 2014 by limiting the possible fee reduction to the filing and examination fee and by inserting 3 new paragraphs, 4-7, the possible fee reduction when filing an EP application or a request for examination in an admissible non-EPO language is limited to certain categories of applicants, namely small and medium-sized enterprises, natural persons or non-profit organisations, universities or public research organisation. In case of multiple applicants, each applicant shall be an entity or a natural person of those categories. So, if a Dutch natural person and a large Dutch billion-euro firm together file an EP application in Dutch, they are not entitled to a 30% reduction in the filing fee; however, if two Dutch natural persons together file an EP application in Dutch, they are entitled to such 30% reduction. But what if a Dutch natural person and a French natural person together file an EP application in Dutch? Such a situation was addressed in a list of frequently asked questions intended to provide additional information for users, publisned by the EPO at the time of entry into force of the current (amended) Rule 6 and still available. The current decision decided however differently than what the FAQ provides for. 

Sunday, 7 April 2019

News: President referred questions to the Enlarged Board on patentability of plants exclusively obtained by essentially biological processes

Following his earlier annoucement, the President has submitted questions too the Enlarged Board of Appeal which relate to the patentability of plants exclusively obtained by essentially biological processes and to decision T 1063/18 (also here). According to a news meesage from the EPO posted last Friday, the President of the EPO seeks the Enlarged Board of Appeal to clarify the applicable legal framework.
The full text of the referral is not yet available. It will be interesting to see which clarifiation the Preseident seems to be required as one may argue that T 1063/18 has already given the answer, as that decision analyzed whether conclusion from G 2/12 needed any adaptations after the introduction of Rule 28(2) EPC subsequent to a notice from the EU Commission (no). Also, the news message below does not mention any conflicting decision, which is needed for the referral to be admissable under article Art.112(1)(b) EPC. (However, also with an inadmissible referral, the Enlarged Board may give a clarification as it did in the software decision G 3/08). So, the full text will be highly interesting, we will keep you posted!