Friday, 29 October 2021

G 1/21 - OP by Vico - the full decision is out!

On 16 July 2021, a Press Communiqué was issued by Spokespersons of the Boards of Appeal of the European Patent Office on the decision of the Enlarged Board in G 1/21. The full reasoning of the decision was not yet issued at that time, but only the Order and some comments. E.g, in the press communique, the Enlarged Board of Appeal "limited the scope of its answer  by confining its order to oral proceedings that are held during a period of general emergency impairing the parties' possibilities to attend in-person oral proceedings at the EPO premises and moreover are conducted specifically before the Boards of AppealAccordingly, in its order the Enlarged Board did not address the question whether oral proceedings by videoconference may be held without the consent of the parties in the absence of a period of general emergency. Nor did the order address the question whether oral proceedings by videoconference may be held without the consent of the parties in examination or opposition proceedings before the EPO's departments of first instance." The full reasoning of the decision was expected to shed some light on the effect on the legality and conditions of oral proceedings by videoconference in first instance proceedings and in "normal times", when the pandemic is over.

The full decision was published today, 29 October 2021. 
In reason 32 of the decision, "Ihe Enlarged Board considers that the limitations currently inherent in the use of video technology can make it suboptimal as a format for oral proceedings, either objectively or in the perception of the participants, but normally not to such a degree that a party's right to be heard or right to fair proceedings is seriously impaired. If in an individual case these rights cannot be respected, it is of course the duty of the deciding body to take appropriate measures to remedy this."
In reason 45, the Enlarged Board indicates that "a hearing in person is the optimum format or, to use a term well known in the field of European patent law, it is the gold standard. It definitely fulfils the requirements of Article 113 EPC and Article 6 ECHR. It is also the format that the legislator had in mind when drafting Article 116 EPC. Therefore, in-person hearings should be the default option. Parties can only be denied this option for good reasons."
In reason 46, the Enlarged Board indicates that "[...] the holding of oral proceedings is seen as serving the interests of the parties. The vast majority of oral proceedings are held upon request by a party. It therefore makes sense that the choice of format for these oral proceedings can be made by the party who requested them and not by the board of appeal, especially as this concerns more than just an organisational matter. As stated earlier, the Enlarged Board holds that at this point in time videoconferences do not provide the same level of communication possibilities as in-person oral proceedings. A party may thus have good reasons to prefer in-person oral proceedings to a videoconference." (see reasons 47-50)


Wednesday, 20 October 2021

T 116/18 - Referral to the Enlarged Board on post-published evidence and plausibility of an effect relied on for inventive step (G 2/12)

 Today, T 116/18 was published on the Recent Decisions pages of the Boards of Appeal, referring the following questions to the EBA (as G 2/12):

The following questions are referred to the Enlarged Board of Appeal for decision.

If for acknowledgement of inventive step the patent proprietor relies on a technical effect and has submitted evidence, such as experimental data, to prove such an effect, this evidence not having been public before the filing date of the patent in suit and having been filed after that date (post-published evidence):

1. Should an exception to the principle of free evaluation of evidence (see e.g. G 3/97, Reasons 5, and G 1/12, Reasons 31) be accepted in that post-published evidence must be disregarded on the ground that the proof of the effect rests exclusively on the post-published evidence?

2. If the answer is yes (the post-published evidence must be disregarded if the proof of the effect rests exclusively on this evidence), can the post-published evidence be taken into consideration if, based on the information in the patent application in suit or the common general knowledge, the skilled person at the filing date of the patent application in suit would have considered the effect plausible (ab initio plausibility)?

3. If the answer to the first question is yes (the post-published evidence must be disregarded if the proof of the effect rests exclusively on this evidence), can the post-published evidence be taken into consideration if, based on the information in the patent application in suit or the common general knowledge, the skilled person at the filing date of the patent application in suit would have seen no reason to consider the effect implausible (ab initio implausibility)?

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