EPO Case-Law Update
Recent decisions of the Boards of Appeal
- Proposed revisions to the RPBA
- Recent procedural decisions
- Recent substantive decisions, including decisions on computer-implemented and pharma/biotech inventions
- Referrals to the Enlarged Board
- Petitions for review
- Report period 2018 - 2019
Aims and objectivesEach year the Boards of Appeal (BoA) 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 The most important published and unpublished decisions of the Boards of Appeal will be presented.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. In particular with respect to the basis of the appeal proceedings and the admittance of late filed submissions (new requests, prior art and arguments) the possible impact of the amended Rules of Procedure of the Boards of Appeal, intended to enter into force 2020, will be analyzed and discussed in comparison with the old RPBA.
- The three levels of convergence
- Extension of periods set by the Boards
- Acceleration of appeal proceedings
- Remittal to the first instance
- Oral Proceedings:
- Summons - time limit
- Change of date of oral proceedings
- Abridged decisions
- Issuance of decisions after oral proceedings
- Video or telephone conferences before the Boards
- Transitional provisions
- Effect on the procedure of first instance
- Suggestions from the speakers from the Boards
- Admissibility of opposition
- Admissibility of appeal
- Accompanying persons
- Substantiation of objections in appeal proceedings
- Substantiation of requests in appeal proceedings
- Substantial Procedural Violation
- Oral proceedings
- Remittal by a Board of Appeal to the first instance
- Availability to the public
- Public Prior Use
- Novelty: quality of translation, purity
- Effects in a method claim
- Selection inventions
- Inventive step and presentation of information
- Computer implemented inventions
- Sufficiency of disclosure: plausibility, functional features
- Added subject-matter
- Intermediate generalisation
- Correction of errors
- Three points test = former "essentiality test"
- Extension of protection
- Amendment of the description
- Apportionment of costs
- Priority: validity, transfer
- Appeal inadmissible or deemed not filed (G 1/18)
- Modelling Method (G 1/19)
- Haar or Munich as venue of oral proceedings (G 2/19)
- "Article 164(2) EPC / Pepper" (G 3/19)
- Double patenting (G x/19)
Petitions for review (Art112a)
Dr.-Ing. Hans-Peter Felgenhauer was a Technical Member of the Boards of Appeal in the technical field of mechanical engineering from 2001 to 2014. Prior to that he was an examiner at the EPO. Before Hans-Peter joined the EPO, he worked as a patent attorney in private practice and as in-house counsel in Germany. He is currently working as a European Patent Attorney at Meissner Bolte, focusing on preparing expert opinions and conducting mock trials. Hans-Peter has a technical background in mechanical engineering.
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 1054 Amsterdam
Phone: +31 20 6075555
Fax: +31 20 60075511
Please note that the agenda of the course may be varied to include relevant new decisions published between the dates of this brochure and the seminar and other possible developments.
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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