EPO Case-Law Update
Recent decisions of the Boards of Appeal
- Recent procedural decisions
- Recent substantive decisions
- Decisions on computer-implemented inventions and pharma/biotech inventions
- Report period 2018 - 2019
Aims and objectivesEach year the boards of appeal of the European Patent Office hand down more than 2000 decisions.
These decisions set the standard for interpreting and applying the European Patent Convention. It is therefore vital for practitioners to keep up to date with the latest developments of the jurisprudence of the boards of appeal.
The most important published and unpublished decisions of the Boards of Appeal will be presented. The panelists will discuss, in particular, the consequences of these decisions on patent practice. As by the time of the seminar, the new Rules of Procedure of the Boards of Appeal may have entered into force, the major differences between the old and the new RPBA will be analysed and any decisions based on the new RPBA will be discussed in comparison with the old RPBA. Whether in force or not, the impact of the (proposed) revised RPBA on the proceedings before the Boards will be discussed.
9:00 - 17:00
- Basis of proceedings
- Amendment to a party's case
- Oral proceedings
- Abridged decisions
- G 1/18
- Some decisions relating to the latest decisions of the EBA
- Any referrals made by the time of the seminar will also be discussed
- General legal framework
- Obligation to raise objections
- Violation of right to be heard
- Some statistics
- Party status (including transfers of oppositions)
- Re-establishment of rights
- Observations by third parties
- Reimbursement of fees
- Auxiliary requests
- Late submissions
- Clear and unambiguous claims
- Interpretation of specific features
- Partial priority
- Transfer of priority
- Intermediate generalisation
- Correction of errors
- Essentiality test
- Decisions applying G 1/16
- 'Positively disclosed' disclaimers
- Availability to the public (internet disclosures, lectures)
- Choice of the closest prior art
- Secondary indicia
- 'Technical' character
- Graphical Interface Units
- Sufficiency, plausibility, industrial application
- Plants, animals and essentially biological processes
- Surgical, therapeutic and diagnostic methods
This agenda may be varied to include relevant new decisions published between the dates of this brochure and the seminar and other possible developments.
Christopher Rennie-Smith studied at Cambridge and the Vrije Universiteit, Amsterdam. He lectured at Sheffield University for four years, qualified as a solicitor in 1978, and then practised intellectual property litigation in London until he was appointed a member of the Boards of Appeal at the European Patent Office in 1999, becoming a member of the Enlarged Board of Appeal in 2005 and chairman of a biotechnology technical board in 2010. He was chairman or member in hundreds of EPO appeal cases and, since 2007, many petitions for review. He was also one of the draftsmen of the current Rules of Procedure of the Boards of Appeal. Christopher has lectured regularly in patent law since 2001 and from 2007 onwards was also involved in judicial training for both new members of the Boards of Appeal and judges from European national courts. Since retiring from the Boards of Appeal in 2014 he has remained actively involved in teaching and training in patent law and procedure and is a visiting lecturer at Cambridge and Uppsala universities. However, his principal activity is now advising as a consultant on all aspects of European patents and procedure. He is an Associate Member of CIPA and 'of counsel' to Collyer Bristow LLP, the law firm at which he was a partner before he went to Munich. As well as English, he speaks fluent French and German and passable Swedish.
Daniel X. Thomas is an electronics engineer by training. He started his career in the patent field in 1971 and has at last been heading directorates in various fields of electronics, physics and mechanics. Although he retired from active service at the EPO in 2013., D.X. Thomas continues to be active in the field of IP. To that effect he is leading workshops/seminars relating to various aspects of the European granting procedure. Daniel X. Thomas is also working as consultant in IP matters for various firms around Europe: legal practitioner firms, patent representatives or technical companies.
NL 1011 Amsterdam
Phone: +31 20 5300800
Fax: +31 20 5300801
Paul Janssen, Director
Intervet International BV, Boxmeer (The Netherlands)
Ian Tollett, European Patent Attorney
Williams Powell, London (UK)
Jussi Jaatinen, European Patent Attorney
Seppo Laine Oy, Helsinki (Finland)
Louise M. Niclasen, IP Engineer
AAK AB, Malmö (Sweden)
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