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					Consolidation of Special Editions of                                                                                       3.    Determining the content of the relevant prior art..............21
                                                                                                                                     2001 ..................................................................................21
BOARD OF APPEAL &                                                                                                            3.1     General rules of interpretation ........................................21
ENLARGED BOARD OF APPEAL                                                                                                             2003 ..................................................................................21
                                                                                                                                     2001 ..................................................................................22
CASE LAW 2001-2005                                                                                                           3.2     Taking equivalents into account .....................................22
                                                                                                                                     2002 ..................................................................................22
I. PATENTABILITY ...................................................................................... 9                    3.3     Taking drawings into account .........................................22
    A. Patentable inventions ............................................................................. 9                         2002 ..................................................................................22
        1.     Technical nature of the invention ......................................... 9                                 3.4     Taking examples into account.........................................22
                      2005 .................................................................................... 9                    2005 ..................................................................................22
                      2004 .................................................................................... 9            3.5     Common general knowledge...........................................23
                      2003 .................................................................................... 9                    2004 ..................................................................................23
                      2002 ..................................................................................10           4.     Ascertaining differences .......................................................23
           1.1        Computer-implemented inventions.................................10                                             2001 ..................................................................................23
                      2005 ..................................................................................10              4.1     Distinguishing features ....................................................23
                      2004 ..................................................................................10                      2002 ..................................................................................23
                      2003 ..................................................................................11                  4.1.1.         Generic disclosure ...............................................23
           1.1        Methods for doing business.............................................12                                      2001 ..................................................................................23
                      2005 ..................................................................................12              4.2     Interpretation of claims....................................................23
                      2002 ..................................................................................12                      2003 ..................................................................................23
           1.2        Presentation of Information.............................................12                          5.     Chemical inventions and selection inventions ...................23
                      2004 ..................................................................................12                      2004 ..................................................................................23
        2.     Medical methods....................................................................12                         5.1     Novelty of chemical compounds and groups of
           2.1        Therapeutic methods........................................................12                          compounds ....................................................................................24
                      2001 ..................................................................................12                  5.1.1.         Novelty of enantiomers .......................................24
           2.2        Surgical methods..............................................................13                               2002 ..................................................................................24
                      2005 ..................................................................................13                  5.1.2.         Achieving a higher degree of purity...................24
                      2004 ..................................................................................13                      2003 ..................................................................................24
               2.2.1.             Allowability of claims under Article 52(4) EPC                                                     2002 ..................................................................................24
                                  13                                                                                         5.2     Selection of parameter ranges .........................................24
                      2001 ..................................................................................13                      2004 ..................................................................................24
           2.3        Diagnostic method ...........................................................13                            5.2.1.         Overlapping ranges..............................................24
                      2002 ..................................................................................13                      2004 ..................................................................................24
                      2001 ..................................................................................14           6.     Novelty of use.........................................................................25
               2.3.1.             Opinion G 1/04 of the Enlarged Board of Appeal                                             6.1     First medical use ..............................................................25
                                  14                                                                                                 2002 ..................................................................................25
                      2005 ..................................................................................14              6.2     Second (further) medical use...........................................25
               2.3.2.             Interpreting the notion of "diagnostic methods" –                                                  2004 ..................................................................................25
               referral by the President of the EPO to the Enlarged Board of                                                         2002 ..................................................................................25
               Appeal             15                                                                                             6.2.1.         Formulation of claims .........................................26
                      2003 ..................................................................................15                      2001 ..................................................................................26
    B. Exceptions to patentability...................................................................16                          6.2.2.         Novelty of a therapeutical application ...............26
        1.     Introduction ...........................................................................16                            2004 ..................................................................................26
                      2004 ..................................................................................16                  6.2.3.         Novelty of the new therapeutic application –
        2.     Inventions contrary to "ordre public" or morality ............16                                                  difference in the prescribed regimen of two drugs...............26
                      2005 ..................................................................................16                      2001 ..................................................................................26
                      2004 ..................................................................................16              6.3     Second (further) non-medical use ...................................27
                      2002 ..................................................................................17                      2004 ..................................................................................27
        3.     Patentability of animals and animal varieties ....................17                                              6.3.1.         Novelty of a Swiss-type claim............................27
                      2004 ..................................................................................17                      2005 ..................................................................................27
                      2002 ..................................................................................18                  6.3.2.         New use functional feature in a known process 27
    C. Novelty ..................................................................................................18                  2005 ..................................................................................27
        1.     Defining the State of the Art ................................................18                       D. Inventive step........................................................................................27
                      2001 ..................................................................................18           1.     Treatment of non-technical aspects.....................................27
           1.1        Availability to the public .................................................18                                 2003 ..................................................................................27
                      2003 ..................................................................................18           2.     Problem and solution approach...........................................28
                      2001 ..................................................................................18                      2005 ..................................................................................28
               1.1.1.             Publication ...........................................................18                          2002 ..................................................................................28
                      2005 ..................................................................................18           3.     Assessment of technical effect..............................................28
                      2002 ..................................................................................18                      2002 ..................................................................................28
               1.1.2.             Publication - Diploma thesis...............................18                           4.     Closest prior art .....................................................................29
                      2001 ..................................................................................18              4.1     Determination of closest prior art ...................................29
               1.1.3.             Lecture..................................................................19                        2002 ..................................................................................29
                      2001 ..................................................................................19              4.2     Process claims ..................................................................29
               1.1.4.             Prior Use ..............................................................19                         2005 ..................................................................................29
                      2004 ..................................................................................19              4.3     Selection of most promising starting point.....................29
               1.1.5.             Obligation to maintain secrecy ...........................19                                       2004 ..................................................................................29
                      2004 ..................................................................................19              4.4     Assessment of the disclosure of the closest prior art .....29
                      2002 ..................................................................................20                      2004 ..................................................................................29
                      2001 ..................................................................................20              4.5     Old prior art documents as closest prior art ...................29
        2.     Issues of proof........................................................................21                             2002 ..................................................................................30
                      2003 ..................................................................................21           5.     Technical problem.................................................................30
           2.1        Standard of proof .............................................................21                              2005 ..................................................................................30
                      2005 ..................................................................................21                      2004 ..................................................................................30
                      2001 ..................................................................................21              5.1     Treatment of non-technical aspects ................................30

                                                                                      Page 1 of 154
                    2002 ..................................................................................30                       2003 ..................................................................................39
                5.2 Alleged advantages ..........................................................30                    5.     Biotechnology ........................................................................40
                5.3 Reformulation of the problem.........................................31                               5.1       Clarity and completeness of disclosure ..........................40
                    2003 ..................................................................................31                 5.1.1.            Reproducibility without undue burden...............40
                    2002 ..................................................................................31                       2004 ..................................................................................40
        6.      Skilled person.........................................................................31             6.      The relationship between Article 83 EPC and Article 84
            6.1     Definition of the skilled person.......................................31                         EPC 40
                    2003 ..................................................................................31             6.1       Article 83 EPC and support from the description ..........40
                    2002 ..................................................................................31                       2001 ..................................................................................40
            6.2     Relevant content of a patent publication ........................32                                   6.2       Article 83 EPC and clarity of claims ..............................41
                    2003 ..................................................................................32                       2004 ..................................................................................41
        7.      Expectation of success, especially in genetic engineering or                                                        2001 ..................................................................................41
        biotechnology cases ...........................................................................32             7.      Relationship between sufficiency of disclosure and
                    2002 ..................................................................................32         inventive step ......................................................................................41
                    2001 ..................................................................................32                       2004 ..................................................................................41
        8.      Proof of inventive step...........................................................32                  8.      Evidence .................................................................................41
            8.1     Treatment of non-technical aspects ................................32                                           2005 ..................................................................................41
                    2004 ..................................................................................32                       2004 ..................................................................................41
                8.1.1.        Technical character..............................................33                                   2003 ..................................................................................41
                    2005 ..................................................................................33                       2001 ..................................................................................42
                8.1.2.        Identifying technical features..............................33                      B. Claims ...................................................................................................42
                    2005 ..................................................................................33                       2001 ..................................................................................42
                8.1.3.        Technical problem ...............................................34                     1.      1. Clarity .................................................................................42
                    2005 ..................................................................................34             1.1       Principles governing the text of claims ..........................42
            8.2     Mixture of technical and non-technical features............34                                             1.1.1.            General principles................................................42
                    2001 ..................................................................................34                       2005 ..................................................................................42
            8.3     Combination of documents .............................................34                                        2004 ..................................................................................42
                    2005 ..................................................................................34                       2003 ..................................................................................42
            8.4     Chemical inventions ........................................................34                                  2002 ..................................................................................43
                    2003 ..................................................................................34                 1.1.2.            Indication of all essential features ......................43
                8.4.1.        Broad claims ........................................................34                               2005 ..................................................................................43
                    2001 ..................................................................................35                       2003 ..................................................................................43
            8.5     Disclaimer.........................................................................35                           2002 ..................................................................................43
                    2003 ..................................................................................35                 1.1.3.            Interpretation of terms.........................................44
            8.6     Analogy process/Envisageable product..........................35                                                2001 ..................................................................................44
                    2003 ..................................................................................35                 1.1.4.            Categories of claim – Rule 29(2)........................44
            8.7     Comparative tests.............................................................35                                2004 ..................................................................................44
                    2005 ..................................................................................35                       2003 ..................................................................................44
                    2003 ..................................................................................35                       2001 ..................................................................................44
            8.8     Part-invention obvious – lack of unity............................35                                      1.1.5.            Interpretation of claims .......................................44
                    2001 ..................................................................................35                       2001 ..................................................................................44
            8.9     Examples of the recognition of inventive step ...............35                                           1.1.6.            Functional features – Standard tests...................45
                    2003 ..................................................................................35                       2005 ..................................................................................45
        9.      Denial of inventive step.........................................................36                       1.2       Exceptions to the principle ..............................................45
            9.1     Choice of one of several obvious solutions....................36                                          1.2.1.            Disclaimers ..........................................................45
                    2002 ..................................................................................36                       2005 ..................................................................................45
            9.2     Several obvious steps.......................................................36                                  2004 ..................................................................................45
                    2002 ..................................................................................36                       2003 ..................................................................................45
        10.     Secondary indicia in determining inventive step ...............36                                             1.2.2.            Admissibility of disclaimers ...............................46
                    2002 ..................................................................................36                       2001 ..................................................................................46
            10.1              Prejudice in the art...............................................36                           1.2.3.            Broad claims – unspecified features...................46
                    2005 ..................................................................................36                       2004 ..................................................................................46
                    2004 ..................................................................................36                       2002 ..................................................................................46
            10.2              Comparative tests ................................................36                    2.      Conciseness ............................................................................46
                    2004 ..................................................................................36                       2003 ..................................................................................46
    E. The requirement of industrial applicability under Article 57 EPC...36                                          3.      Claims supported by the description....................................46
                    2005 ..................................................................................36                       2003 ..................................................................................46
        1.      Notion of “industrial application”.......................................37                           4.      Claims supported by the description....................................46
                    2001 ..................................................................................37                       2002 ..................................................................................46
II. CONDITIONS TO BE MET BY AN APPLICATION......................37                                                    5.      Interpretation of claims ........................................................47
    A. Sufficiency of disclosure ......................................................................37                 5.1       General..............................................................................47
        1.      Parts of the application relevant for assessing sufficiency                                                         2003 ..................................................................................47
        of disclosure........................................................................................37           5.2       Meaning of terms .............................................................47
                    2004 ..................................................................................37                       2004 ..................................................................................47
                    2002 ..................................................................................38                       2002 ..................................................................................47
        2.      Knowledge of skilled person relevant for assessing                                                        5.3       Relevance of Article 69 EPC ..........................................47
        sufficiency of disclosure....................................................................38                             2004 ..................................................................................47
                    2004 ..................................................................................38             5.4       Use of description and drawings.....................................48
                    2001 ..................................................................................38                       2005 ..................................................................................48
        3.      Clarity and completeness of disclosure ...............................38                              6.      Product-by-process claims....................................................48
                    2004 ..................................................................................38                       2004 ..................................................................................48
                    2003 ..................................................................................38             6.1       Requirement that the claimed product must be patentable
                    2002 ..................................................................................38                       48
                    2001 ..................................................................................39                       2005 ..................................................................................48
        4.      Reproducibility without undue burden ...............................39                                              2003 ..................................................................................48
                    2004 ..................................................................................39     C. Unity of invention.................................................................................48

                                                                                   Page 2 of 154
          1.    Criteria for determining lack of unity .................................48                         A. Priority right of the applicant or his successor in title......................61
                    2004 ..................................................................................48                      2005 ..................................................................................61
        2.      Basis for lack of unity assessment .......................................49                           1.      Interpretation of the concept of ”the same invention”
            2.1     Assessment of lack of unity in examination proceedings                                             referred to in Article 87(1) EPC .......................................................61
                    49                                                                                                             2002 ..................................................................................61
                    2001 ..................................................................................49                      2001 ..................................................................................61
        3.      The single general inventive concept ..................................49                              2.      Disclosure of the essential features in the priority
                    2004 ..................................................................................49          document.............................................................................................62
        4.      Plurality of inventions and further search fees..................49                                                2001 ..................................................................................62
                    2004 ..................................................................................49      B. Multiple exercise of the right of priority for one contracting state...62
                    2003 ..................................................................................49                      2005 ..................................................................................62
III. AMENDMENTS.....................................................................................50             C. Applications giving rise to a right of priority.....................................63
    A. Article 123(2) EPC...............................................................................50             1.      TRIPS Agreement .................................................................63
        1.      Content of the application as originally filed .....................50                                             2003 ..................................................................................63
            1.1     General issues...................................................................50            D. Identity of invention .............................................................................63
                    2005 ..................................................................................50                      2004 ..................................................................................63
                    2004 ..................................................................................50          1.      Disclosure in the earlier application of the invention
                    2003 ..................................................................................51          claimed in the subsequent application.............................................63
                    2002 ..................................................................................52                      2004 ..................................................................................63
            1.2     Technical contribution .....................................................52                     2.      Amendments and disclaimers...............................................63
                1.2.1.      Addition or deletion of a feature.........................52                                           2005 ..................................................................................63
                    2004 ..................................................................................52          3.      Priority and disclaimer .........................................................64
                    2002 ..................................................................................52                      2003 ..................................................................................64
                1.2.2.      Creation of new parameters ................................52                              4.      Definitions of limits...............................................................64
                    2003 ..................................................................................52                      2005 ..................................................................................64
            1.3     Combining two elements from two groups which were                                                  5.      The concept of "the same invention" referred to in Article
            not originally disclosed ................................................................53                87(1) EPC ...........................................................................................64
                    2001 ..................................................................................53                      2003 ..................................................................................64
            1.4     Amendments going beyond specifically disclosed                                                     6.      Enabling disclosure in the priority document ....................64
            combinations of meanings of residues ........................................53                                        2004 ..................................................................................64
                    2001 ..................................................................................53          7.      Validity of priority claims .....................................................65
            1.5     Subsequent addition of details ........................................53                                      2003 ..................................................................................65
                1.5.1.      Disclaimer ............................................................53                  8.      Priority....................................................................................65
                    2004 ..................................................................................53              8.1     Entitlement of applicant...................................................65
                    2003 ..................................................................................53                      2003 ..................................................................................65
                    2002 ..................................................................................54      D. First application in a Paris Convention Country ..............................65
                1.5.2.      Disclaimer not based upon application as filed .54                                                     2005 ..................................................................................65
                    2001 ..................................................................................54      E. Multiple priorities for one claim .........................................................65
            1.6     Disclosure in drawings ....................................................55                      1.      Prior use and right of priority ..............................................65
                    2005 ..................................................................................55                      2005 ..................................................................................65
            1.7     Disclaimers: decisions applying the criteria established                                    V. RULES COMMON TO ALL PROCEEDINGS .................................66
            by G 1/03 and G 2/03 ...................................................................55             A. The principle of the protection of legitimate expectations ................66
                    2005 ..................................................................................55          1.      General issues ........................................................................66
        2.      Divisional applications..........................................................56                                2005 ..................................................................................66
                    2004 ..................................................................................56                      2004 ..................................................................................66
        3.      "Tests" for the allowability of an amendment ...................56                                                 2002 ..................................................................................67
                    2005 ..................................................................................56                      2001 ..................................................................................67
                    2004 ..................................................................................56          2.      Obligation to draw attention to easily remediable
            3.1     The "novelty test".............................................................56                  deficiencies .........................................................................................67
                    2003 ..................................................................................56                      2001 ..................................................................................67
            3.2     Deducibility of amendments from the application as filed                                           3.      Electronic filing of documents.............................................67
                    56                                                                                                             2005 ..................................................................................67
                    2004 ..................................................................................56          4.      Departure from previous case law and the principle of
                    2001 ..................................................................................57          legitimate expectations ......................................................................68
    B. Article 123(3) EPC...............................................................................57                         2005 ..................................................................................68
        1.      General issues ........................................................................57                          2004 ..................................................................................68
                    2004 ..................................................................................57      B. Right to be heard ..................................................................................68
                    2003 ..................................................................................58                      2004 ..................................................................................68
        2.      Correction of errors...............................................................58                              2002 ..................................................................................68
                    2005 ..................................................................................58          1.      The general principle ............................................................68
        3.      Change of category................................................................58                               2005 ..................................................................................68
                    2005 ..................................................................................58                      2004 ..................................................................................68
    C. Relationship between Article 123(2) and 123(3) EPC ......................58                                     2.      Definition of “grounds”........................................................68
                    2005 ..................................................................................58                      2002 ..................................................................................68
                    2001 ..................................................................................59          3.      Right to be heard and the timing of decisions ....................69
        1.      Cases of conflict.....................................................................59                           2005 ..................................................................................69
                    2003 ..................................................................................59              3.1     Opposition procedure.......................................................69
    D. Rule 88 EPC, second sentence............................................................59                                  2004 ..................................................................................69
        1.      Relation to Article 123(2) EPC ............................................59                              3.2     Examination procedure....................................................69
                    2002 ..................................................................................59                      2004 ..................................................................................69
    E. Divisional applications ........................................................................59              4.      Right to be heard in oral proceedings .................................69
        1.      Subject-matter of a divisional application ..........................59                                            2004 ..................................................................................69
                    2005 ..................................................................................59              4.1     Non-appearance at oral proceedings and the right to be
        2.      Validity of divisional applications........................................60                              heard 69
                    2005 ..................................................................................60                      2003 ..................................................................................69
IV. PRIORITY...............................................................................................61          5.      Article 113(2) EPC ................................................................70

                                                                                 Page 3 of 154
                2003 ..................................................................................70           4.      Time limits excluded from re-establishment under Article
C. Oral proceedings..................................................................................70             122(5) EPC .........................................................................................77
    1.     Right to oral proceedings......................................................70                            4.1     PCT time limits excluded under Article 122(5) EPC ....77
       1.1      Telephone consultation....................................................70                                    2004 ..................................................................................77
                2004 ..................................................................................70           5.      Merit of applications for re-establishment of rights ..........77
    2.     Oral proceedings before the Receiving Section..................70                                            5.1     Due care ............................................................................77
                2004 ..................................................................................70                   5.1.1.       A satisfactory system for monitoring time limits
    3.     Request for oral proceedings................................................70                                                77
       3.1      Further oral proceedings..................................................70                                    2004 ..................................................................................77
                2001 ..................................................................................70                   5.1.2.       Due care – exceptional circumstances ...............77
    4.     Postponing the date for oral proceedings ...........................71                                               2003 ..................................................................................77
                2005 ..................................................................................71               5.2     Persons required to exercise due care .............................77
                2002 ..................................................................................71                       2004 ..................................................................................77
    5.     No postponement of the decision.........................................71                                       5.2.1.       Due care on the part of the professional
                2005 ..................................................................................71                   representative..........................................................................77
    6.     Non-appearance at oral proceedings ..................................71                                              2004 ..................................................................................77
       6.1      Obligation to give notice if not attending oral                                                         5.3     Monitoring time limits.....................................................77
       proceedings ...................................................................................71                        2005 ..................................................................................77
                2003 ..................................................................................71               5.4     Due care on the part of the professional representative.78
                2001 ..................................................................................71                       2005 ..................................................................................78
       6.2      Right to present comments and non-attendance of a party                                                 5.5     Due care in using mail delivery services ........................78
       by choice .......................................................................................71                      2001 ..................................................................................78
                2001 ..................................................................................71       F. Late submission ....................................................................................78
    7.     Preparation and conduct of oral proceedings ....................71                                       1.      The meaning of “late” ..........................................................78
       7.1      Fixing or postponing the date for oral proceedings .......71                                                    2002 ..................................................................................78
                2004 ..................................................................................71           2.      Consideration of late submissions .......................................78
                2001 ..................................................................................71                       2004 ..................................................................................78
       7.2      Curtailment of notice in the summons............................72                                              2001 ..................................................................................78
                2004 ..................................................................................72           3.      Exercising discretion over admitting late submissions......79
       7.3      Interpretation and application of Rule 71a EPC ............72                                                   2005 ..................................................................................79
                2005 ..................................................................................72                       2004 ..................................................................................79
                2004 ..................................................................................72                   3.1.1.       Procedural abuse in the case of public prior use 79
                2003 ..................................................................................72                       2004 ..................................................................................79
                2001 ..................................................................................72                       2001 ..................................................................................79
       7.4      Computer generated presentations in oral proceedings .73                                                3.2     Examination as to relevance............................................80
                2004 ..................................................................................73                   3.2.1.       Examination as to relevance – General principles
       7.5      Taking of minutes ............................................................73                                         80
                2004 ..................................................................................73                       2005 ..................................................................................80
                2001 ..................................................................................73                       2003 ..................................................................................80
D. Time limits ............................................................................................74                   2002 ..................................................................................80
                2003 ..................................................................................74                   3.2.2.       Examination as to relevance with regard to G
    1.     Calculation of time limits .....................................................74                               9/91 and G 10/91 ....................................................................80
       1.1      Time limit pursuant to Article 86(1) and (2) EPC –                                                              2005 ..................................................................................80
       establishment of non-observance of the time limit under Article                                                      3.2.3.       Procedural abuse in the case of public prior use 80
       8(4) RFEES...................................................................................74                          2005 ..................................................................................80
                2001 ..................................................................................74                       2002 ..................................................................................80
    2.     Interruption in the delivery of mail .....................................74                                     3.2.4.       Examination as to relevance and justified late
                2004 ..................................................................................74                   submission81
E. Re-establishment of rights ...................................................................74                             2005 ..................................................................................81
    1.     General issues ........................................................................74                            2002 ..................................................................................81
                2003 ..................................................................................74                   3.2.5.       Examination as to relevance and abuse of
    2.     Applicability of re-establishment of rights under Article                                                        procedure 81
    122(1) EPC .........................................................................................75                      2003 ..................................................................................81
                2003 ..................................................................................75           4.      Late-filed arguments .............................................................82
       2.1      The meaning of "time limit"............................................75                                       2005 ..................................................................................82
                2005 ..................................................................................75                       2002 ..................................................................................82
                2004 ..................................................................................75           5.      Remittal to the department of first instance .......................82
                2002 ..................................................................................75                       2005 ..................................................................................82
    3.     Admissibility of applications for re-establishment of rights                                                         2001 ..................................................................................82
           75                                                                                                       6.      Apportionment of costs .........................................................83
       3.1      Department competent to decide upon the application..75                                                         2005 ..................................................................................83
                2004 ..................................................................................75       G. Rules relating to fees ...........................................................................83
       3.2      Time limits for filing an application for re-establishment                                          1.      Payment of fee .......................................................................83
       under Article 122(2) EPC ............................................................76                                  2003 ..................................................................................83
           3.2.1.           Two month time limit from the removal of the                                                        2001 ..................................................................................83
           cause of non-compliance .......................................................76                        2.      Date of payment.....................................................................83
                2005 ..................................................................................76                       2001 ..................................................................................83
                2004 ..................................................................................76           3.      Small amount lacking ...........................................................83
                2001 ..................................................................................76                       2002 ..................................................................................83
           3.2.2.           One-year time limit under Article 122(2) EPC .76                                    H. Divisional applications........................................................................83
                2003 ..................................................................................76           1.      General procedural questions ..............................................83
                2002 ..................................................................................76                       2005 ..................................................................................83
       3.3      Filing and substantiation of the application under Article                                          2.      Rule 25(1) EPC – Legal position after 2 January 2002 ....84
       122(2) and (3) EPC.......................................................................76                              2005 ..................................................................................84
                2004 ..................................................................................76           3.      Designation of contracting states in a divisional application
                                                                                                                            84

                                                                                Page 4 of 154
               2005 ..................................................................................84                         2004 ..................................................................................96
I. Procedural steps ....................................................................................84                       2003 ..................................................................................96
    1.      General principles .................................................................84                           3.2.1.          Compliance with the requirements of Rule 68(2)
               2003 ..................................................................................84                     EPC             96
               2001 ..................................................................................84                         2002 ..................................................................................96
    2.      Admissibility of main and auxiliary requests .....................84                                     4.      Reasoned decision .................................................................96
               2005 ..................................................................................84                 4.1     Decision on the state of the file.......................................96
        2.1    Opposition procedure.......................................................85                                     2005 ..................................................................................96
               2001 ..................................................................................85             5.      Correction of errors in decisions .........................................97
J. Withdrawal of application and surrender of patent ...........................85                                       5.1     Competence to correct a decision under Rule 89 EPC ..97
               2005 ..................................................................................85                         2004 ..................................................................................97
    1.      Abandonment of subject-matter of the application or patent                                                           2001 ..................................................................................97
            85                                                                                                           5.2     Errors in the printed version of the European patent
        1.1    Abandonment without substantive effect .......................85                                          specification ..................................................................................97
               2001 ..................................................................................85                         2001 ..................................................................................97
K. Law of evidence ....................................................................................85                5.3     Allowability of a request for correction under Rule 89
    1.      Admissible evidence ..............................................................85                         EPC 97
               2001 ..................................................................................85                         2001 ..................................................................................97
        1.1    Hearing of witnesses........................................................86                        6.      Duties not entrusted to formalities officers.........................97
               2005 ..................................................................................86                         2004 ..................................................................................97
        1.2    Declarations in lieu of evidence on oath ........................86                               N. Other procedural questions.................................................................98
               2005 ..................................................................................86             1.      Language privilege................................................................98
        1.3    Expert opinions ................................................................86                                2005 ..................................................................................98
    2.      Evaluation of evidence..........................................................86                                   2004 ..................................................................................98
               2004 ..................................................................................86             2.      Inspection of files ..................................................................98
               2001 ..................................................................................87                         2004 ..................................................................................98
        2.1    Issues of probative value .................................................88                                     2001 ..................................................................................98
               2005 ..................................................................................88             3.      Register of Patents.................................................................99
    3.      Standard of proof...................................................................88                               2005 ..................................................................................99
               2002 ..................................................................................88                     3.1.1.          Transfer ................................................................99
               2001 ..................................................................................89                         2002 ..................................................................................99
        3.1    Content of a disclosure ....................................................89                        4.      Suspension of proceedings ...................................................99
               2003 ..................................................................................89                         2005 ..................................................................................99
        3.2    Prior use ............................................................................89                          2004 ..................................................................................99
               2003 ..................................................................................89                         2002 ................................................................................100
        3.3    Claiming a valid priority..................................................89                         5.      Notifications.........................................................................100
               2003 ..................................................................................89                         2005 ................................................................................100
    4.      Burden of proof .....................................................................90                  6.      Unity of the European patent application.........................100
               2001 ..................................................................................90                         2004 ................................................................................100
        4.1    Advantageous effects.......................................................90                     O. Interpretation of the EPC ..................................................................100
               2003 ..................................................................................90                         2005 ................................................................................100
        4.2    Hypothetical experimental protocol................................90                                              2004 ................................................................................101
               2003 ..................................................................................90                         2003 ................................................................................101
        4.3    "Product-by-process" features.........................................90                              1.      Interpretation of Article 87 EPC in the light of TRIPS –
               2003 ..................................................................................90             directly binding effect and self-executing character of TRIPS
        4.4    Shifting the burden of proof ............................................90                           provisions ..........................................................................................101
               2004 ..................................................................................90                         2002 ................................................................................101
               2003 ..................................................................................90             2.      Responsibility for a European patent application............102
               2001 ..................................................................................91                         2001 ................................................................................102
L. Representation ......................................................................................91   VI. PROCEEDINGS BEFORE THE EPO .............................................102
    1.      Legal practitioners entitled to act as professional                                                  A. Preliminary and formalities Examination ........................................102
    representative under Article 134(7) EPC ........................................91                               1.      Accordance of a date of filing ............................................102
        1.1    Introduction ......................................................................91                     1.1     Language of the filed documents..................................102
               2004 ..................................................................................91                         2004 ................................................................................102
               2002 ..................................................................................91             2.      Application Documents.......................................................102
    2.      Authorisations for appointment of a representative ..........92                                              2.1     Filing of application documents....................................102
        2.1    General authorizations .....................................................92                                    2005 ................................................................................102
               2003 ..................................................................................92                         2004 ................................................................................102
        2.2    Sub-authorisations............................................................92                          2.2     Extent of competence of the Receiving Section ..........102
               2004 ..................................................................................92                         2004 ................................................................................103
    3.      Representation by a common representative ......................92                                                   2001 ................................................................................103
               2001 ..................................................................................92             3.      Designation of states ...........................................................103
    4.      Oral submissions by an accompanying person ..................93                                              3.1     Correction of designation of states in Euro-PCT
               2005 ..................................................................................93                 applications .................................................................................103
               2002 ..................................................................................93                         2002 ................................................................................103
M. Decisions of EPO departments...........................................................94                         4.      Divisional applications........................................................103
    1.      Composition of opposition divisions....................................94                                    4.1     General aspects...............................................................103
               2004 ..................................................................................94                         2003 ................................................................................103
               2003 ..................................................................................94                 4.2     Designation of states in a divisional application..........103
    2.      Suspected partiality ...............................................................94                               2004 ................................................................................103
               2005 ..................................................................................94                 4.3     Divisional application in the name of not all the
               2004 ..................................................................................95                 applicants for the parent application .........................................104
    3.      Form of decisions ..................................................................95                               2004 ................................................................................104
        3.1    General issues...................................................................95                       4.4     Identity of the applicant.................................................104
               2004 ..................................................................................95                         2002 ................................................................................104
        3.2    Reasons for the decision..................................................96                              4.5     Interpretation of Rule 25(1) EPC ..................................104

                                                                              Page 5 of 154
                2004 ................................................................................104                    2001 ................................................................................115
                2003 ................................................................................104        8.      Admissibility of opposition – substantiation of the grounds
        4.6     Retrospective application of the latest version of Rule                                         of opposition .....................................................................................115
        25(1) EPC....................................................................................104                    2003 ................................................................................115
        4.7     Division of a divisional application..............................104                           9.      Amendments – filing additional independent claims.......115
                2004 ................................................................................104                    2003 ................................................................................115
                2003 ................................................................................105        10.     Surrender or lapse of a European patent .........................116
        4.8     Subject-matter of divisional applications .....................105                                          2003 ................................................................................116
                2002 ................................................................................105        11.     Transfer of opposition.........................................................116
    5.      Correction of priority declarations ....................................106                                     2001 ................................................................................116
                2005 ................................................................................106        12.     Apportionment of costs .......................................................117
B. Examination procedure......................................................................106                           2002 ................................................................................117
    1.      Request for examination.....................................................106                         12.1              Equity of Apportionment of costs ....................117
                2002 ................................................................................106                    2004 ................................................................................117
    2.      Substantive examination of the application .....................106                                         12.1.1.       Late submissions of documents and/or requests
        2.1     Amendments relating to unsearched subject-matter ....106                                                              117
                2004 ................................................................................106                    2005 ................................................................................117
                2003 ................................................................................106                    2003 ................................................................................117
        2.2     Communication under Rule 51(4) EPC........................107                                           12.1.2.       Request for oral proceedings withdrawn .........118
                2004 ................................................................................107                    2003 ................................................................................118
        2.3     Issuance of a further communication under Article                                                       12.1.3.       One of the parties does not appear at the oral
        113(1) EPC..................................................................................108                 proceedings ...........................................................................118
                2004 ................................................................................108                    2004 ................................................................................118
                2002 ................................................................................108                12.1.4.       Withdrawal of the appeal ..................................118
    3.      Entry into force of a decision to grant a European patent                                                       2005 ................................................................................118
            108                                                                                                         12.1.5.       Failure of a party to appear at oral proceedings
                2004 ................................................................................108                              119
C. Opposition procedure ........................................................................109                         2005 ................................................................................119
    1.      Special features of the opposition procedure ...................109                                         12.1.6.       Procedural requirements ...................................119
        1.1     Transfer of opponent status ...........................................109                                  2004 ................................................................................119
                2004 ................................................................................109                12.1.7.       Cases of alleged abuse of procedure or abuse of
        1.2     Transfer of opponent status in the event of death ........110                                           oral proceedings ...................................................................119
                2005 ................................................................................110                    2003 ................................................................................119
        1.3     Intervention of the assumed infringer ...........................110                                12.2              Future costs ........................................................120
                2005 ................................................................................110                    2001 ................................................................................120
    2.      Admissibility of opposition .................................................110                        12.3              Late withdrawal of requests..............................120
        2.1     Competence to decide....................................................110                                 2001 ................................................................................120
                2002 ................................................................................110     D. Appeal procedure...............................................................................120
                2001 ................................................................................111        1.      Legal character of appeal procedure.................................120
        2.2     Admissibility of joint oppositions.................................111                                      2003 ................................................................................120
                2001 ................................................................................111        2.      Suspensive effect of the appeal ..........................................120
        2.3     Formal requirements for an opposition ........................111                                           2005 ................................................................................120
                2002 ................................................................................111        3.      Devolutive effect of the appeal ...........................................120
        2.4     Partial admissibility .......................................................111                            2001 ................................................................................120
                2002 ................................................................................111        4.      Procedural status of the parties .........................................120
        2.5     Insufficient substantiation .............................................111                        4.1     Parties to appeal proceedings ........................................120
                2004 ................................................................................111                    2004 ................................................................................120
        2.6     Entitlement to file an opposition...................................112                             4.2     Transfer of party status ..................................................120
            2.6.1.        Double filing of opposition by the same person –                                                  2005 ................................................................................120
            Admissibility of the material in the second opposition .....112                                                 2004 ................................................................................121
                2005 ................................................................................112                    2003 ................................................................................121
            2.6.2.        Admissibility of a joint opposition – Legal status                                                2001 ................................................................................121
            and composition of a multiple opponent.............................112                                  4.3     Rights of parties under Article 107 EPC ......................121
                2005 ................................................................................112                    2005 ................................................................................121
        2.7     Oppositions based on public prior use..........................112                                  4.4     Intervention ....................................................................122
                2002 ................................................................................112                4.4.1.        Admissibility of intervention ............................122
        2.8     Legitimate interest .........................................................113                            2004 ................................................................................122
                2001 ................................................................................113                    2003 ................................................................................122
        2.9     Substantiation of the grounds of opposition – sufficiency                                                   2002 ................................................................................122
        of the notice of opposition .........................................................113                            2001 ................................................................................122
                2001 ................................................................................113                4.4.2.        Intervener’s rights – Withdrawal of appeal .....123
    3.      Legal and factual framework of opposition – meaning of                                              5.      Extent of scrutiny ................................................................123
    "fresh grounds for opposition" ......................................................113                                2004 ................................................................................123
                2004 ................................................................................113            5.1     Binding effect of requests – no reformatio in peius.....123
    4.      New ground of opposition – opportunity to present                                                               2003 ................................................................................123
    comments ..........................................................................................113                  2002 ................................................................................124
                2003 ................................................................................113                    2001 ................................................................................124
    5.      Amendments during opposition proceedings ...................114                                         5.2     Subject-matter under examination in opposition appeal
        5.1     Admissibility of amendments........................................114                              proceedings .................................................................................125
                2005 ................................................................................114                    2005 ................................................................................125
        5.2     Substantive examination of amendments .....................114                                              2002 ................................................................................125
                2005 ................................................................................114            5.3     Patentability requirements under examination.............125
    6.      Withdrawal of opposition....................................................114                             5.3.1.        In opposition appeal proceedings .....................125
                2003 ................................................................................114                    2005 ................................................................................125
    7.      Right to be heard – EPO communications inviting a party                                                         2003 ................................................................................125
    to ”take note”, and sufficient time to submit a response .............115                                               2002 ................................................................................125

                                                                              Page 6 of 154
    5.4     Facts under examination – Applying Article 114 EPC in                                                                  2005 ................................................................................136
    appeal Proceedings .....................................................................126                                    2004 ................................................................................136
            2005 ................................................................................126                  12.2                     Criteria for taking amendments to claims into
            2003 ................................................................................126                  consideration 136
            2002 ................................................................................126                        12.2.1.            General issues ....................................................136
            2001 ................................................................................126                               2005 ................................................................................136
6.      Filing and admissibility of the appeal ...............................126                                                  2004 ................................................................................137
            2001 ................................................................................126                               2003 ................................................................................137
    6.1     Appealable decisions .....................................................126                                          2001 ................................................................................137
            2004 ................................................................................126                        12.2.2.            Time of filing.....................................................137
            2003 ................................................................................127                               2004 ................................................................................137
            2001 ................................................................................127                        12.2.3.            Time of filing – difficulty of examination .......137
        6.1.1.      Departments .......................................................127                                         2001 ................................................................................137
            2005 ................................................................................127                        12.2.4.            Reasons for late filing .......................................138
        6.1.2.      Decisions ............................................................127                                      2005 ................................................................................138
            2005 ................................................................................127                               2003 ................................................................................138
    6.2     Board competent to hear a case.....................................127                                    12.3                     Remittal to the department of first instance and
            2004 ................................................................................127                  amendments to claims ................................................................138
            2002 ................................................................................127                               2003 ................................................................................138
    6.3     Entitlement to appeal .....................................................127                      13.         Reimbursement of appeal fees ...........................................138
            2005 ................................................................................127                  13.1                     General issues ....................................................138
            2004 ................................................................................128                               2005 ................................................................................138
        6.3.1.      Formal aspects ...................................................128                                          2004 ................................................................................138
            2002 ................................................................................128                               2001 ................................................................................139
            2001 ................................................................................128                  13.2                     Jurisdiction in the event of interlocutory revision
        6.3.2.      Party adversely affected ....................................128                                                           139
            2003 ................................................................................128                               2002 ................................................................................139
            2002 ................................................................................129                  13.3                     Allowability of the appeal.................................139
            2001 ................................................................................129                               2003 ................................................................................139
    6.4     Form and time limit of appeal.......................................130                                                2002 ................................................................................139
            2005 ................................................................................130                  13.4                     Substantial procedural violation .......................139
            2004 ................................................................................130                               2003 ................................................................................139
        6.4.1.      Form and content of notice of appeal...............130                                                         2002 ................................................................................140
            2005 ................................................................................130                               2001 ................................................................................140
            2003 ................................................................................130                        13.4.1.            Definition ...........................................................140
            2002 ................................................................................130                               2004 ................................................................................140
            2001 ................................................................................130                        13.4.2.            Right to be heard................................................140
        6.4.2.      Appeal filed within the time limit ....................130                                                     2005 ................................................................................140
            2003 ................................................................................130                               2004 ................................................................................141
        6.4.3.      Payment of appeal fee .......................................131                                        13.4.3.            Rules of procedure not applied in the manner
            2005 ................................................................................131                        prescribed by the EPC..........................................................141
    6.5     Statement of grounds of appeal.....................................131                                                 2002 ................................................................................141
        6.5.1.      General principles..............................................131                                     13.4.4.            Inadequate reasons given in the decision at first
            2004 ................................................................................131                        instance 142
            2003 ................................................................................131                               2005 ................................................................................142
            2002 ................................................................................131                        13.4.5.            Other miscellaneous cases ................................142
            2001 ................................................................................132                               2005 ................................................................................142
        6.5.2.      Exceptions to these principles ..........................132                                                   2004 ................................................................................142
            2001 ................................................................................132                  13.5                     Interlocutory revision ........................................142
        6.5.3.      Appeal is only based on new Requests ............132                                                           2005 ................................................................................142
            2005 ................................................................................132                               2004 ................................................................................142
7.      Conclusion of the decision-making process .....................133                                                         2003 ................................................................................142
            2002 ................................................................................133   VII. PROCEEDINGS BEFORE THE DISCIPLINARY BOARD OF
8.      Remittal to the department of first instance .....................133                          APPEAL .......................................................................................................142
            2005 ................................................................................133            1.          European qualifying examination.....................................142
            2003 ................................................................................133                  1.1          Duties of the Examination Board..................................142
            2002 ................................................................................133                               2001 ................................................................................142
            2001 ................................................................................133                  1.2          Legitimate interest .........................................................143
9.      Termination of appeal proceedings ...................................134                                                   2001 ................................................................................143
            2005 ................................................................................134                  1.3          Marking the answer papers............................................143
    9.1     Withdrawal of the appeal...............................................134                                             2004 ................................................................................143
            2003 ................................................................................134                               2002 ................................................................................143
            2002 ................................................................................134                               2001 ................................................................................143
            2001 ................................................................................134                  1.4          Conditions for enrolment...............................................144
    9.2     Patent expired in all designated states ..........................135                                                  2005 ................................................................................144
            2002 ................................................................................135                               2004 ................................................................................144
10.     Interlocutory revision..........................................................135                     2.          Disciplinary matters – disciplinary measures...................145
            2004 ................................................................................135                               2001 ................................................................................145
            2003 ................................................................................135   VIII. THE EPO ACTING AS A PCT AUTHORITY ...........................145
11.     Referral to the Enlarged Board of Appeal........................135                               A. Competence of the boards of appeal in proceedings under the PCT
            2003 ................................................................................135      ..................................................................................................................145
            2002 ................................................................................135                               2001 ................................................................................145
            2001 ................................................................................135            1.          Suspension of proceedings in the regional phase............145
12.     Filing of amended claims in appeal proceedings.............136                                                             2003 ................................................................................145
    12.1            Admissibility of filing amended claims in appeal                                      B. The EPO acting as ISA.......................................................................145
    proceedings 136                                                                                             1.          Protest procedure.................................................................145

                                                                        Page 7 of 154
                     2002 ................................................................................145             16.     Case Number: T 514/05, OJ EPO 2006, ***, Applicant:
                1.1  Substantiation of invitation ...........................................145                          TEXAS INSTRUMENTS INCORPORATED, Headword: Online
                     2004 ................................................................................146             filed appeal/TEXAS INSTRUMENTS, Date: 08.09.05 ...............153
            1.2      Composition of a review panel .....................................146                               17.     Case Number: T 1409/05, OJ EPO 2006, ***, Applicant:
                     2003 ................................................................................146             SEIKO EPSON CORPORATION, Headword: Sequence of
            1.3      Additional fees ...............................................................146                   divisionals/SEIKO, Date: 30.3.06...................................................153
                     2003 ................................................................................146       Referrals by boards of appeal ...................................................................154
    C. The EPO acting as IPEA ...................................................................146                      1.      G 1/05 – divisional applications – extended subject matter
        1.      Protest procedure.................................................................146                     removed subsequently......................................................................154
            1.1      General issues.................................................................146                   2.      G 1/06 – divisional applications – Art 76(1) clarification
                     2004 ................................................................................146                     154
        2.      Substantiation of invitation ................................................146                          3.      G 2/06 – Rule 23d EPC - effect ..........................................154
                     2002 ................................................................................146             4.      G 3/06 – divisional applications – extended subject matter
        3.      Substantiation of protest.....................................................147                         in opposition proceedings................................................................154
                     2001 ................................................................................147
    D. The EPO as designated or elected Office.........................................147
        1.      Withdrawal of priority claims in the international phase –
        analogous application of Rule 82ter PCT .....................................147
                     2002 ................................................................................147
        2.      Jurisdiction of the EPO as a (purported) designated Office
        to decide on a request for correction..............................................147
                     2002 ................................................................................147
IX. INSTITUTIONAL MATTERS ..........................................................148
        1.      Extension Ordinances on the extension of European
        patents148
                     2005 ................................................................................148
            1.1      Extension of European patents to Slovenia – Extension
            Ordinance ....................................................................................148
                     2001 ................................................................................148
        2.      Referrals to the Court of Justice of the European
        Communities under the EC Treaty – legal status of the EPO
        boards of appeal ...............................................................................149
                     2002 ................................................................................149
        1.      Case Number: G 1/04, OJ EPO 2006, 334, Headword:
        Diagnostic methods, Date: 16.12.05 ..............................................150
        2.      Case Number: J 25/03, OJ EPO 2006, 395,
        Applicant/Appellant: MITSUI CHEMICALS, INC., Headword:
        Withdrawal of application/, MITSUI CHEMICALS, Date:
        27.04.05 .............................................................................................150
        3.      Case Number: J 28/03, OJ EPO 2005, 597, Applicant:
        Ericsson Inc., Headword: Divisional application/ERICSSON
        INC., Date: 04.10.04........................................................................150
        4.      Case Number: J 18/04, OJ EPO 2006, ***, Applicant:
        Microsoft Corporation, Headword: Concept of time
        limit/MICROSOFT, Date: 04.05.05...............................................150
        5.      Case Number: T 15/01, OJ EPO 2006, 153, Patentee:
        Stichting Dienst Landbouwkundig Onderzoek, Headword: Mystery
        Swine Disease/SDLO, Date: 17.06.04............................................150
        6.      Case Number: T 619/02, OJ EPO 2007, ***, Applicant:
        Quest International B.V., Headword: Odour selection/QUEST ,
        INTERNATIONAL, Date: 22.03.06 ..............................................151
        7.      Case Number: T 713/02, OJ EPO 2006, 267, Applicant:
        Avecia Biotechnology Inc., Headword:
        Phosphoramidites/AVECIA, Date: 12.04.05.................................151
        8.      Case Number: T 39/03, OJ EPO 2006, 362, Applicant:
        ASTROPOWER Inc., Date: 26.08.05 ............................................151
        9.      Case Number: T 190/03, OJ EPO 2006, ***....................151
        10.     Case Number: T 315/03, OJ EPO 2006, 15, Patentee: The
        President and Fellows of Harvard College, Headword: Transgenic
        animals/HARVARD, Date: 06.07.04 .............................................152
        11.     Case Number: T 1020/03, OJ EPO 2006, ***, Applicant:
        GENENTECH, INC., Headword: Method of administration of
        IGF-I/GENENTECH INC., Date: 29.10.04 .................................152
        12.     Case Number: T 388/04, OJ EPO 2006, ***, Applicant:
        Pitney Bowes, Inc., Headword: Undeliverable mail/PITNEY
        BOWES, Date: 22.03.06..................................................................152
        13.     Case Number: T 474/04, OJ EPO 2006, 129, Patentee:
        ALTHIN MEDICAL, INC., Headword: Declaration in lieu of an
        oath/ALTHIN MEDICAL, Date: 30.06.05....................................153
        14.     Case Number: T 1040/04, OJ EPO 2006, ***, Patentee:
        Unilin Beheer B.V., Headword: Floor covering/UNILIN, Date:
        23.03.06 .............................................................................................153
        15.     Case Number: T 1374/04, OJ EPO 2006, ***, Applicant:
        Wisconsin Alumni Research Foundation, Headword: Stem
        cells/WARF, Date: 07.04.06............................................................153


                                                                                    Page 8 of 154
       I. PATENTABILITY                                            outwardly apparent link between cause and effect was
                                                                   recognised and disclosed.

            A. Patentable inventions                               Reproducibility also required the possibility of repeating the
                                                                   invention. A technical teaching was reproducible only if, on
1.           Technical nature of the invention                     the basis of the information in the application, the skilled
                                                                   person could, theoretically, perform it as often as he wished
     2005                                                          with essentially constant success.
In the case before the board in T 659/04 the examining
division held that the claimed record medium having a signal       In T 619/02 (OJ EPO 2007, ***), the board concluded that
recorded thereon in accordance with an undisputedly new            human perception phenomena cannot be qualified as being
modulation method was nevertheless not new. The board              of a technical nature. It emphasised that the prerequisite of
considered that the examining division’s conclusion might          technical character inherent in the EPC cannot be
have been based on the view that N-bit data was information        considered to be fulfilled by an invention, as claimed, which,
and that such a record medium was "defined solely by the           although possibly encompassing technical embodiments,
content of the information" in the sense of the Guidelines C-      also encompasses ways of implementing it that do not qualify
IV, 2.3.7. In the judgment of the board, however, defining a       as technical.
record medium as having data recorded thereon by the
undisputedly new and inventive modulation method taught in         The technical character of an invention is an inherent
the application resulted in a new and inventive record             attribute independent of the actual contribution of the
medium. It was distinguishable from prior art records by the       invention to the state of the art and consequently the
pattern or format of the data on it and by the technical effect    potential of a claimed method to solve a problem of a
this format achieved in terms of enhanced recording density        technical nature should be discernible from the aspects of
without impairment of the stability of the readout process.        the method actually claimed (see also p. 32).
                                                                     2004
In T 914/02 the board stated that having technical character       In T 531/03, the patent in suit related to a system for
was an implicit requirement of the EPC to be met by an             generating a printed discount certificate in a retail store.
invention within the meaning of Article 52(1) EPC (see eg T        Technical Board of Appeal 3.4.3 confirmed the principles set
931/95, OJ EPO 2001, 441, headnote 1). In the present              out in T 641/00 and stated that, in the assessment of
case, the claimed method was based on technical                    inventive step, features relating to a non-invention within the
considerations to the extent that it concerned the designing       meaning of Article 52(2) EPC ("non-technical features") could
of a technical object (ie an optimised loading of the core of a    not support the presence of inventive step. The patentee
nuclear reactor) lay in the field of technology in general, and    submitted that the invention at issue required a combination
involved scientific considerations in respect of the reactivity    of a technical and a non-technical inventive step, and that the
of the fuel bundles and its impact on cycle energy and             skilled persons would therefore consist of a team of a
constraints such as the shutdown margin.                           "nontechnical person" plus a technical person. The board
                                                                   rejected this approach and stated that an attempt to take
The involvement of technical considerations, however, was          account of the contribution of both non-technical and
not sufficient for a method which might exclusively be carried     technical aspects on an equal footing in the assessment of
out mentally to have technical character. In fact, other non-      inventive step would be inconsistent with the EPC, since
inventions listed in Article 52(2) EPC, such as scientific         such an approach would attribute the presence of an
theories, but also computer programs, typically involved           inventive step to features which the EPC excluded from the
technical considerations. Technical character could be             definition of an invention.
provided through the technical implementation of the method,
resulting in the method providing a tangible, technical effect,
                                                                     2003
such as the provision of a physical entity as the resulting        Recent decisions have developed principles for assessing
product, or a non-abstract activity, such as through the use of    whether or not an invention has technical character (see also
technical means.                                                   the decisions in section C.1, "Inventive step", discussing the
                                                                   problem and solution approach when the invention consists
In T 748/03 the board held that the criterion of the purposive     of a mixture of technical and non-technical features).
exploitation of the effect of objectively identifiable and
measurable natural forces as a condition for the technical         Already in T 641/00 (OJ EPO 2003, 352) the board held that
character of an invention for the purposes of patent law           an invention consisting of a mixture of technical and non-
could, in the light of Article 83 EPC, be defined more clearly     technical features and having technical character as a whole
as follows: the technical character of an invention was            was to be assessed with respect to the requirement of
closely linked with the requirement of reproducibility under       inventive step by taking account of only those features which
Article 83 EPC. A person skilled in the art had to be able,        contributed to that technical character. Features making no
using the means proposed, to achieve repeatedly the result         such contribution could not support the presence of inventive
specified as the aim of the disclosed teaching.                    step.
Reproducibility of an invention required, first of all, a causal
link between the technical instructions and the desired result.    In T 244/00 the invention concerned a remote-control
Rule 27(1)(c) EPC gave form to that condition by requiring         apparatus in the field of audio-visual systems, where the
that the claimed invention be disclosed in such terms that the     particular cursor key of the invention allowed direct cursor
technical problem and its solution could be understood.            jumps along slanting lines in diagonal directions, which
However, the requirement of a causal link did not mean that        seemed prima facie to facilitate the selection of menu items.
the inventor had to grasp the scientific basis for the teaching
according to the invention. Rather, it sufficed that the

                                                Page 9 of 154
The board held that the number of useful directions for cursor       In T 424/03 the board concurred with the appellant in
movement was basically a question of the graphic design of           considering the claimed method as an invention within the
the menu. As a rule, the graphic design of menus was                 meaning of Article 52(1) EPC. Claim 1 related to a method
practically free of technical constraints, thus allowing any         implemented in a computer system. T 258/03 (OJ EPO 2004,
desired artwork to be implemented. That meant that the               575, "Hitachi") stated that a method using technical means
arrangement of the menu items on the screen, if it was not           was an invention within the meaning of Article 52(1) EPC. A
exceptionally determined by technical considerations, was            computer system including a memory (clipboard) was a
not a technical aspect of a menu-driven control system. Nor          technical means, and consequently the claimed method had
was it a technical aspect as to along which lines and in how         technical character in accordance with established case law.
many directions the user wished to move the cursor from one
item to another. The practical use of menus was the concern          Moreover, the board emphasised that a method implemented
of the artist designing the menu or of the end user of the           in a computer system represented a sequence of steps
system, but not genuinely a problem with which the skilled           actually performed and achieving an effect, and not a
person, in his function as technical expert, was confronted.         sequence of computer-executable instructions (ie a computer
Since the technical contribution which the claimed invention         program) which just had the potential of achieving such an
provided to the prior art did not amount to more than making         effect when loaded into, and run on, a computer. Thus, the
simple and, from a technical point of view, straightforward          board held that the claim category of a
considerations, the invention did not involve an inventive step      computerimplemented method was distinguished from that of
(see also I.C.1.).                                                   a computer program. Even though a method, in particular a
  2002                                                               method of operating a computer, might be put into practice
In T 641/00 (OJ EPO 2003, 352), the board held that an               with the help of a computer program, a claim relating to such
invention consisting of a mixture of technical and                   a method did not claim a computer program in the category
nontechnical features and having technical character as a            of a computer program. Hence, in the present case, claim 1
whole was to be assessed with respect to the requirement of          could not relate to a computer program as such.
inventive step by only taking account of those features which
contributed to that technical character. Features making no          The board also considered that the claimed method steps
such contribution could not support the presence of inventive        contributed to the technical character of the invention. These
step. The board referred to T 158/97, where a modification of        steps solved a technical problem by technical means in that
a known device not related to any technical function was held        functional data structures (clipboard formats) were used
incapable of contributing to inventive step (see also T 72/95,       independently of any cognitive content (see T 1194/97, OJ
T 157/97 and T 176/97). In T 27/97 the board (in a different         EPO 2000, 525) in order to enhance the internal operation of
composition) ignored, in assessing inventive step, a feature         a computer system with a view to facilitating the exchange of
distinguishing the claimed subject-matter from the prior art         data among various application programs. The claimed steps
for lack of any established technical effect causally related to     thus provided a general purpose computer with a further
this feature (T 641/00 is further discussed under Chapter            functionality – the computer assisted the user in transferring
D.4.1).                                                              non-file data into files.

In T 1001/99 the board followed the conclusion drawn in              Claim 5 was directed to a computer readable medium having
decision T 931/95 (OJ 2001, 441) that the EPC provides no            computer executable instructions (ie a computer program) on
basis for a partial consideration of the claims. In fact, it noted   it to cause the computer system to perform the claimed
that there was no basis for distinguishing between the               method. The board found that the subject-matter of claim 5
subject-matter of a claim to be examined as to whether it was        had technical character since it related to a computer-
an invention and another subject-matter of the same claim to         readable medium, ie a technical product involving a carrier
be examined for the other substantive requirements of Article        (see T 258/03 – "Hitachi " cited above). Moreover, the
52(1) EPC, ie novelty, inventive step and susceptibility for         computer executable instructions had the potential of
industrial application. In all cases it was the entire claim,        achieving the above-mentioned further technical effect of
including all its features, whether known or unknown,                enhancing the internal operation of the computer, which went
technical or non-technical, which had to be taken as a basis         beyond the elementary interaction of any hardware and
for examination. Thus, the examination as to an exclusion            software of data processing (see T 1173/97, OJ EPO 1999,
from patentability, by reference to Article 52(2), had to be         609). The computer program recorded on the medium was
based on the subject-matter of the claim as a whole, rather          therefore not considered to be a computer program as such,
than on the contribution which the subject-matter claimed            and thus also contributed to the technical character of the
added to the known art even if this subject-matter was               claimed subject-matter.
considered as a whole, as further set out in the Guidelines, to        2004
determine whether the subject-matter as a whole related to           In T 258/03 (OJ EPO 2004, 575), claim 1 was directed to an
an invention within the meaning of Article 52(1) EPC.                automatic auction method executed in a server computer. In
Pursuant to Article 52(3) EPC this could only be denied if the       claim 3 a "computerised auction apparatus" comprising a
claimed subject-matter related to non-technical                      server computer was defined, and in claim 4 a computer
subjectmatter, for example to a method for performing mental         program for carrying out an auction. The features of the
acts or other items listed in Article 52(2) EPC, ”as such”           claims were closely related and in substance based on the
which meant that it was limited to this subject-matter, eg a         same method steps. The auction started with a preliminary
mental act, without involving technical aspects, for example         exchange of databetween the client computers and the
required technical considerations, implied technical effects or      server computer in order to collect bids from the participants.
a technical problem solved.                                          Each bid comprised two prices, a desired price and a
1.1 Computer-implemented inventions                                  maximum price in competitive state. After this initial phase,
                                                                     the auction was conducted automatically and the bidders did
  2005                                                               not need to follow the auction on-line. An auction price was

                                                Page 10 of 154
set and successively lowered (a "Dutch auction") until it
reached the level of the highest bid or bids as determined by       In T 125/01 the board held that a pure software
the desired price. In the event of several identical bids, the      enhancement with no changes to the hardware could
price was increased until only the bidder who offered the           constitute an invention within the meaning of the EPC if the
highest maximum price was left.                                     modified software made a technical contribution to the
                                                                    invention and therefore could not be isolated "as such". The
Board of Appeal 3.5.1 concluded that, in general, a method          invention concerned a module for controlling a
involving technical means was an invention within the               communication device, preferably a car radio, and differed
meaning of Article 52(1) EPC (distinguished from T 931/95,          from the closest prior art only in respect of the program
OJ EPO 2001, 441). What was important in relation to                loaded, which was intended to make the control module
"inventions" within the meaning of Article 52(1) EPC was the        easier to adapt and thus flexible in use, with a view to
presence of technical character, which could be inferred from       allowing additional technical device functions to be added
the physical features of an entity or the nature of an activity     and/or making the device easier to operate. In the board’s
or could be conferred on a non-technical activity by the use        view, even the problem description showed technical
of technical means. (see also I.D.1.)                               aspects, as it would certainly be viewed as technical in
  2003                                                              conjunction with a hardware interface. The board also felt
In T 49/99 the invention concerned a method for modelling a         that the appropriate restructuring of a control program to that
physical system in a computer, wherein abstract objects and         end also made a technical contribution to the invention, by
their attributes were derived from the physical elements and        analogy with the redesign of a hardware control device (eg in
their characteristics, and all objects, attributes and              terms of electrical circuits or mechanical elements).
relationships were stored in tables with relational database        However, the patent in suit then failed to meet the inventive
technology.                                                         step requirement, as the claimed program structure
                                                                    (combining all operating states in a single easily adaptable
The board held that information modelling was a formalised          table) was deemed obvious in the prevailing circumstances.
process carried out by a system engineer or a similar skilled
person in a first stage of software development for                 In T 1177/97 claim 1 was directed to a method for translation
systematically gathering data about the physical system to          between natural languages; accordingly, it used various
be modelled or simulated and to provide, as it were, a real-        linguistic terms and involved linguistic aspects of the
world model of the system on paper. The board stressed that         translation process. The board raised the question whether
although information modelling embodied useful concepts             such linguistic concepts and methods could form part of a
and methods in developing complex software systems, it was          technical invention at all. It referred to EPO case law which
as such an intellectual activity having all the traits typical of   provided various examples showing that even the automation
non-technical branches of knowledge and thus being closely          of such methods did not make good a lack of technical
analogous to the non-inventions listed under Article 52(2)(a)       character (eg T 52/85). On the other hand, coded information
and (c) EPC. Thus in the assessment of inventive step it            had been considered, on a case-by-case basis, as a
should be treated like any other human activity in a non-           patentable entity, eg T 163/85 (OJ EPO 1990, 379), T
technical field, which was, as such, not an invention for the       1194/97 (OJ EPO 2000, 525) and T 769/92 (OJ EPO 1995,
purposes of Article 52(1) EPC. Only the purposive use of            525). The board confirmed that in accordance with this case
information modelling in the context of a solution to a             law it seemed to be common ground that the use of a piece
technical problem, as was for example the case for the              of information in a technical system, or its usability for that
preferred embodiment relating to the control and                    purpose, could confer a technical character on the
management of technical processes in a power system,                information itself, in that it reflected the properties of the
could contribute to the technical character of an invention.        technical system, for instance by being specifically formatted
                                                                    and/or processed. Such information, when used in or
The claimed invention, however, was not restricted to power         processed by the technical system, could be part of a
systems; as expressly indicated in the description, the             technical solution to a technical problem and form the basis
invention could be applied to various "physical systems",           for a technical contribution of the invention to the prior art.
which was actually a term including any real-world system,
even business and administrative organisations. In the light        In so far as technical character was concerned, the board
of the broad meaning of the expression "physical system",           stressed that it should be irrelevant that the piece of
information modelling had to be construed as an abstract            information was used or processed by a conventional
nontechnical activity. The technical part of the claimed            computer, or any other conventional information processing
method related to the technical implementation of an abstract       apparatus, since the circumstance that such an apparatus
information model on a computer system. In addition to steps        had become a conventional article for everyday use did not
of abstract information modelling, claim 1 included features        deprive it of its technical character, just as a hammer still had
of a computerised database system, thus addressing                  to be regarded as a technical tool even though its use had
technical aspects, which rendered the method, at least in           been known for millennia. The board thus came to the
principle, a patentable invention. Expressions like "objects        conclusion that information and methods related to linguistics
are stored in tables with relational database technology"           could in principle assume a technical character if they were
referred to technical functions and data structures actually        used in a computer system and formed part of a technical
stored in hardware somewhere in the computer and thus               problem solution. Implementing a function on a computer
belonged to the technical part of such a database system.           system always involved technical considerations, at least
                                                                    implicitly, and meant in substance that the functionality of a
In summary, the claim features were either non-technical or,        technical system was increased. The implementation of the
as far as they concerned technical aspects of the invention,        information and methods related to linguistics as a
were to be regarded as obvious in the light of the                  computerised translation process similarly required technical
implementation example given in a cited textbook.                   considerations and thus provided a technical aspect to per se

                                               Page 11 of 154
non-technical things such as dictionaries, word matching or       bleaching composition. Whether the claimed product was
the translation of compound expressions into a                    novel or not was, in this case, irrelevant for the purposes of
corresponding meaning. Features or aspects of the method          evaluating patentability (see eg T 931/95, OJ EPO 2001,
which reflected only peculiarities of the field of linguistics,   441, point 6 of the reasons for the decision).
however, had to be ignored in assessing inventive step. In
the case in point, the technical differences which established    The board also noted that its conclusion confirmed what is
the novelty of the claimed process were not inventive since       set out in the Guidelines for Examination in the EPO. Section
they originated from a non-technical constraint to the            C-IV, 2.2 specifies that exclusion from patentability under
technical problem, the implementation of which was obvious        Article 52(2) EPC applies only to the extent to which the
(see also I.C.1).                                                 application relates to the excluded subject-matter as such
1.1          Methods for doing business                           (which was not so in the case at hand) and that the content
                                                                  of the claim should be considered as a whole in order to
  2005                                                            decide whether the claimed subject-matter has a technical
In T 388/04 (OJ EPO 2006, ***), Board 3.5.02 held that the        character. Furthermore, section C-IV, 2.3, which concerns
extent to which subject-matter or activities are excluded from    the presentation of information, deals with claims directed to
patentability under Article 52(2) and (3) EPC is notionally       the presentation of information as such or with claims
distinct from, and may be considered independently of the         directed to a process or a product (apparatus) for presenting
question of inventive step. Therefore, the board felt free to     information and not with a claim, such as the one at issue,
assess the extent to which the claimed method was excluded        which is directed to two separate entities, a physical product
from patentability before any examination of inventive step.      and information which has no technical effect on the claimed
                                                                  physical product.
In the case in point the application related to a method for
responding to mail returned to a sender as undeliverable. No      2.         Medical methods
technical means were described in the application at all. The
board referred to T 258/03 – "Hitachi " which stated that         2.1         Therapeutic methods
activities falling within the notion of a non-invention as such     2001
would typically represent purely abstract concepts devoid of      In T 789/96 (OJ EPO 2002, 364) the board first noted that a
any technical implications.                                       method involving the use of a device having an effect on the
                                                                  heart is in principle a method of treatment by therapy, but in
It took the view that subjectmatter or activities excluded from   the case at issue the claimed method was directed not to
patentability under Article 52(2) and 52(3) EPC remain so         cardiac stimulation but to ”controlling stimulation energy in a
even where they imply the possibility of making use of            pacemaker”. In other words, it was designed to optimise a
unspecified technical means.                                      pacemaker’s energy consumption. It referred to decision T
  2002                                                            245/87 (OJ EPO 1989, 171, Reasons point 3.2.3) where it
In T 767/99 the board observed that the established               was held that ”A method ... does not fall within the scope of
jurisprudence of the EPO Boards of Appeal had construed           the first sentence of Article 52(4) EPC if there is no functional
Article 52(2) and (3) EPC to mean that the fact that a            link and hence no physical causality between its constituent
measure may have been derived from or inspired by an              steps carried out in relation to a therapy device and the
insight originating in an activity which was per se excluded      therapeutic effect produced on the body by that device”.
from protection – be it a discovery, a mathematical method, a
mental act or a method of doing business – did not imply that     The board also noted that the fact that the method as per
a claim including the material expression or embodiment of        claim 1 defined a capture parameter, a reference value and a
such a measure in its specific practical application in the       capture threshold does not make it a therapeutic method.
solution of a technical problem was a claim to the excluded       These parameters are actually determined by a program
activity as such; cf decision T 208/84 Vicom OJ EPO 1987,         contained in the pacemaker. In this connection, T 426/89 (OJ
14, Headnote I.                                                   EPO 1992, 172, Reasons point 3.2) held that ”The
                                                                  programming of a pacemaker is no more than an act
In considering the issue of inventive step, the board             performed on an apparatus. And although that act can be
confirmed that the skills exercised in solving the problem        performed by a doctor in the exercise of his professional
addressed by this invention were those of a person skilled in     skills, it does not constitute direct treatment by therapy of the
the art of mail sorting, not those of a manager or                human body” (original board’s emphasis).
businessman. Hence, in the judgment of the board, the
apparatus and method claimed should be regarded as a              The board noted that it should also be pointed out that in the
(potentially patentable) invention within the meaning of          method as per claim 1 the parameters defined by the
Article 52(1) EPC and not as a method for doing business as       pacemaker are not used to regulate the amplitude, the
such within the meaning of Article 52(2)(c) and (3) EPC.          stimulation frequency or any other value acting directly on
1.2          Presentation of Information                          the heart; there is therefore no corresponding functional
                                                                  link. On the contrary, in the method claimed, the capture
  2004                                                            parameter was used exclusively to minimise the energy
In T 553/02, the board concluded that a claim directed to a       needed for cardiac stimulation; it influences the therapeutic
product comprising a composition of matter (in this case a        effect of that stimulation neither positively nor negatively. The
bleaching composition) and to instructions for use of the         board thus noted that the case at issue differed completely
product, where the instructions had no technical effect on the    from the facts underlying T 82/93 (OJ EPO 1996, 274,
product, was not excluded from patentability under Article        Reasons point 1.5).
52(2) EPC since the claim had a technical meaning and
defined the technical features necessary for the definition of    The board concluded that a method applied to the human or
the claimed subject-matter, ie a product comprising a             animal body involving the use of a pacemaker with a

                                               Page 12 of 154
therapeutic effect is not a therapy within the meaning of          of a person or animal. The method fell into that category of
Article 52(4) EPC if the invention consists in refining said       methods which includes tattooing and piercing, for example,
method but the refinement does not have the effect of              whose only possible object is to beautify the human or
preventing or treating a pathological condition. Therefore, the    animal body and which are used by enterprises such as
claimed method had no therapeutic effect on the body and           cosmetic salons and beauty parlours which are part of
was thus not excluded by Article 52(4) EPC.                        industry within the meaning of Article 57 EPC. These
2.2          Surgical methods                                      methods are fundamentally different from those methods
                                                                   which, although they can be used to beautify the human or
  2005                                                             animal body, may also be used to restore the physical
In T 1172/03 the appellant was of the opinion that the             integrity of the body, such as a method of breast
limitation of the wording of the claims to a cosmetic method       enlargement by surgery (following a cancer operation, for
could avoid the exclusion from patentability established by        example) or a correction of the shape of the nose (after a car
Article 52(4) EPC and referred to the jurisprudence in the         accident, for example).
field of the patentability of compounds and chemical               2.2.1.         Allowability of claims under Article 52(4)
substances, and especially to decision T 144/83 (OJ EPO
                                                                                  EPC
1986, 301).
                                                                      2001
The board considered that a claim must be judged for the           In T 775/97 the applicants submitted a claim directed to the
purpose of Article 52(4) EPC on the basis of substantive and       use of a (known) device for the manufacture of a device,
not of formal aspects of the claim (T 775/97). As stated in        which use involved a surgical method step; they submitted a
decision T 1077/93, the exclusion under Article 52(4) EPC          further claim directed to a device defined by a construction
could not be simply avoided by a wording of the claims             only arrived at in the human or animal body following a
defining the method as a cosmetic method in a formal way, if       surgical method step.
in substance the method was a therapeutic one (see point
3.1.2 of the reasons). It followed that, applying the criteria     The board observed that such claims were actually directed
used by the boards for the cosmetic use of substances,             to a surgical method. The use of a known material as, so to
patentability of a surgical method claimed as a cosmetic           say, starting material for a medical activity, was quite
method had to be excluded if the cosmetic use was not              different from the use of a known composition for
expressed as a technical feature inherent in the claimed           manufacturing a medicament, which was an industrial
method, but only expressed in the claim as a mere intention        process. Thus, as regards the exclusion under Article 52(4)
of the applicant (see also G 2/88, OJ EPO 1990, 93, where a        EPC, no analogy could be drawn between the use of
feature which was only reflected in the mind of the person         materials or devices in a surgical method and the second
carrying out the claimed invention was considered to be a          medical use of substances or compositions patentable with
subjective, non-technical feature which was not relevant for       the claim format allowed by G 5/83. Therefore, the board
the assessment of patentability).                                  held that no European patent could be granted with claims
  2004                                                             directed to a new and even possibly inventive way of using
In T 383/03 (OJ EPO 2005, 159) the EPO first-instance              materials or devices, in particular endoprotheses, involving
department referred to decisions T 182/90 (OJ EPO 1994,            treatment by surgery. This was equally true for product
641) and T 1077/93 and stated that medical treatments also         claims defined by a construction only arrived at in the human
encompass treatments by surgery for non-curative purposes          or animal body following a surgical method step.
such as cosmetic treatments. The application was                   2.3          Diagnostic method
accordingly refused under Article 52(4) EPC.
                                                                      2002
The board noted that although it was clear from the                In T 807/98 the board observed that implantable heart-assist
jurisprudence of the boards of appeal that methods of              devices were designed to detect heart dysfunctions by
treatment which are not directed to improving or maintaining       analysing current heart activity and to administer specific
the health of a human being or an animal may be patentable,        therapy automatically, without the intervention of a doctor.
the case was not so clear where the treatment involves             Such devices typically worked by recording the heart rate as
manual and/or instrumental procedures (treatment by                a function of time (measurement), comparing it to predefined
surgery). It was therefore necessary to examine whether            criteria (anamnesis), identifying a manifest dysfunction such
Article 52(4) EPC intended to exclude from patentability this      as ventricular tachycardia or ventricular fibrillation (diagnosis)
type of intervention as such or whether a therapeutic effect       and delivering a stimulation pulse or a defibrillation shock
plays a decisive role in determining which interventions are       (therapy).
excluded from patentability as stated for example in decision
T 329/94 (OJ EPO 1998, 241, point 5 of the reasons).               Claim 1 of the contested patent defined a process for
                                                                   detecting a series of abnormal dysfunctionconditioned events
The board came to the conclusion that the intention of the         among a multiplicity of normal events in an
legislator was that only those treatments by therapy or            electrophysiological signal, a process that included step (a),
surgery are excluded from patentability which are suitable for     which involved a defined threshold value, and step (d), which
or potentially suitable for maintaining or restoring the health,   involved a defined theoretical value. Defining both the
the physical integrity, and the physical well-being of a human     threshold value and the theoretical value required a doctor’s
being or an animal and to prevent diseases.                        knowledge of the particular patient and of heart function and
                                                                   could only be carried out under a doctor’s instructions. The
In the case at issue, the board stated that although the           board therefore found that the process according to claim 1
method involved an intentional physical intervention on the        involved essential steps that had to be performed by
body, it was clearly not potentially suitable for maintaining or   medically trained personnel or under medical supervision
restoring the health, physical integrity, or physical well-being

                                               Page 13 of 154
and that it satisfied all the criteria for a diagnostic method     term "diagnostic methods practised on the human or animal
within the meaning of T 385/86 (OJ EPO 1988, 308).                 body" within the meaning of Article 52(4) EPC. The point of
                                                                   law referred to the Enlarged Board of Appeal was decided in
The board stressed that in T 385/86 it was denied that a           G 1/04 (OJ EPO 2006, 334) as follows:
diagnostic method was involved, as in that case no
comparison was made between the test data and normal               The Enlarged Board of Appeal found that, according to the
values and no significant deviation (symptom) was recorded,        established jurisprudence of the EPO, it was accepted that
and T 385/86 also involved determining a quantitative value        the method steps to be carried out when making a diagnosis
(temperature or pH value, point 3.4). In the present case,         as part of the medical treatment of humans or the veterinary
however, the quantitative values were processed to form            treatment of animals for curative purposes included: (i) the
signal AS, which represented the qualitative information as to     examination phase involving the collection of data, (ii) the
whether or not an arrhythmia was present. The list of criteria     comparison of these data with standard values, (iii) the
in T 385/86 needed to be extended because a diagnosis was          finding of any significant deviation, ie a symptom, during the
not only a specific positive identification of a disease, but      comparison, and (iv) the attribution of the deviation to a
also the negative finding that a particular disease could be       particular clinical picture, ie the deductive medical or
ruled out. The board noted that the apparatus was capable of       veterinary decision phase. In the judgment of the Enlarged
generating an output signal AS as soon as an abnormal              Board of Appeal, there was no reason to deviate from this
condition was present. Conversely, it did not generate signal      jurisprudence.
AS if no abnormal condition was present. The absence of
signal AS definitely ruled out the presence of an arrhythmia,      However, the question to be answered in this context was
and that too the board deemed to be a diagnosis. The very          whether the diagnostic methods referred to in Article 52(4)
fact that the claimed process was capable of ruling out the        EPC comprised only the deductive medical or veterinary
presence of an arrhythmia, ie a heart dysfunction, was a           decision phase consisting in attributing the detected
decisive criterion for the involvement of a diagnostic method.     deviation to a particular clinical picture, ie the diagnosis for
   2001                                                            curative purposes stricto sensu, or whether they were also
In T 964/99 (OJ EPO 2002, 4) the board held that Article           meant to include one or more of the preceding steps
52(4) EPC was meant to exclude from patent protection all          concerned with examination, data gathering and comparison.
methods practised on the human or animal body which relate
to diagnosis or which are of value for the purposes of             (a) Diagnosis stricto sensu The Enlarged Board of Appeal
diagnosis. The board found that the taking of a body sample        pointed out that the diagnostic methods referred to in Article
for the purpose of a medical examination belongs to a              52(4) EPC included the method step concerned with the
fundamental diagnostic activity, regardless of the technical       deductive medical or veterinary decision phase, ie the
means used. Thus, the claimed step of sampling a substance         diagnosis stricto sensu was a purely intellectual exercise. As
related to diagnosis constituted in this context an essential      the deductive medical or veterinary decision phase,
diagnostic measure practised on the living human or animal         diagnosis for curative purposes in itself was an intellectual
body. The board noted that it was immaterial that the claimed      exercise, unless, as a result of developments in the field of
methods could be performed by the patient himself and that         diagnostic technology, a device capable of reaching
their execution would not have a significant impact on the         diagnostic conclusions could be used. As an intellectual
body or involve a serious health risk. What was decisive was       exercise, pursuant to Article 52(2) EPC, the deductive
the fact that all method claims on file comprised the step of      decision phase was not regarded as an invention within the
taking a body sample for the purpose of diagnosis and that         meaning of Article 52(1) EPC, whereas the method carried
such a step was to be regarded as an essential activity            out by the device might well be an invention within the
pertaining to diagnosis and practised on the living body.          meaning of this provision. Since the diagnostic methods
                                                                   referred to in Article 52(4) EPC were inventions within the
The board noted that the appellant’s view that the case law        meaning of Article 52(1) EPC, it followed that, in a situation
on diagnostic methods had consistently adopted a restrictive       where the deductive medical or veterinary decision phase
interpretation of T 385/86 was not correct (see for instance T     was a purely intellectual exercise, ie a step of a non-technical
329/94 and T 655/92). The board pointed out that the               nature, such a method must necessarily further include
restrictive interpretation of the patent exemption for             preceding steps of a technical nature in order to satisfy the
diagnostic methods adopted by T 385/86 amounted to setting         requirements of Article 52(1) EPC. The subjectmatter of a
a different standard for diagnostic methods than that              claim including technical and non-technical features might
established for methods of surgery or therapy, the latter          satisfy the requirements of Article 52(1) EPC if the non-
being excluded from patent protection if they comprised only       technical features interacted with the technical features to
a single step of a surgical or therapeutic nature (see for         bring about a technical effect (see T 603/89, OJ EPO 1992,
instance T 35/99 (OJ EPO 2000, 447) and T 82/93 (OJ EPO            230).
1996, 274)). In the board’s view, the expression ”diagnostic
methods practised on the human or animal body” in Article          (b) Scope of the exclusion The scope of the exclusion from
52(4) EPC should not be considered to relate to methods            patentability under Article 52(4) EPC in respect of diagnostic
containing all the steps involved in reaching a medical            methods was to be interpreted narrowly. Thus, for the
diagnosis.                                                         subjectmatter of a claim relating to a diagnostic method
                                                                   practised on the human or animal body to fall under the
2.3.1.         Opinion G 1/04 of the Enlarged Board of             prohibition of Article 52(4) EPC, the claim must (in view of
               Appeal                                              Article 84 EPC) include the feature pertaining to the
   2005                                                            diagnosis for curative purposes as a purely intellectual
                                                                   exercise representing the deductive medical or veterinary
The President of the EPO, making use of his power under
                                                                   decision phase, as well as the features relating to (i) the
Article 112(1)(b) EPC, made a referral to the Enlarged Board
                                                                   preceding steps which were constitutive for making the
of Appeal on points of law relating to the interpretation of the

                                                 Page 14 of 154
diagnosis, and (ii) the specific interactions with the human or   purchase the device in question in order to be entitled to
animal body which occurred when carrying out those of the         carry out such a method. In cases where the same
said preceding steps which were of a technical nature.            diagnostic conclusions could be reached by a method not
                                                                  including the use of the device, those carrying it out would
(c) Intermediate findings The Enlarged Board of Appeal            not be inhibited by the patent. Therefore, medical or
stated that intermediate findings of diagnostic relevance must    veterinary practitioners could not be considered to be
not be confused with diagnosis for curative purposes stricto      hampered by the existence of such a patent.
sensu, which consisted in attributing the detected deviation      2.3.2.         Interpreting the notion of "diagnostic
to a particular clinical picture. It followed that a method for                  methods" – referral by the President of the
obtaining such results or findings did not constitute a
sufficient basis for denying patentability by virtue of Article
                                                                                 EPO to the Enlarged Board of Appeal
52(4) EPC. To decide otherwise would give rise to such a            2003
broad interpretation of the scope of the exclusion from           Under Article 52(4), first sentence, EPC diagnostic methods,
patentability under Article 52(4) EPC in respect of diagnostic    along with "methods for treatment of the human or animal
methods that it could hardly be reconciled with the               body by surgery or therapy", are not regarded as inventions
requirement of legal certainty.                                   susceptible of industrial application within the meaning of
                                                                  Articles 52(1) and 57 EPC, even if they intrinsically comply
(d) An activity having a diagnostic character may not depend      with the latter article. According to Article 52(4), second
on who is involved. The Enlarged Board of Appeal also held        sentence, EPC this legal fiction does not apply to products, in
that the wording of Article 52(4) EPC was unequivocal in that     particular substances or compositions, for use in any of these
the exclusion related only to the method, and not to the          methods.
person carrying out themethod. Whether or not a method
was a diagnostic method within the meaning of Article 52(4)       Pursuant to Article 112(1)(b) EPC, the President of the EPO
EPC should depend neither on the participation of a medical       has referred points of law relating to the interpretation of the
or veterinary practitioner, through being present or bearing      expression "diagnostic methods practised on the human or
the responsibility, nor on the fact that all method steps could   animal body" within the meaning of Article 52(4) EPC to the
also, or only, be practised by medical or non-medical support     Enlarged Board of Appeal. The case is pending as G 1/04
staff, the patient himself or herself or an automated system.     (OJ EPO 2004, 229).
Moreover, no distinction was to be made in this context
between essential method steps having a diagnostic                According to its wording, Article 112(1)(b) EPC may be
character and non-essential method steps lacking it.              applied if "two Boards of Appeal have given different
                                                                  decisions on [a] question". In the case at issue the divergent
(e) The criterion "practised on the human or animal body"         decisions T 385/86 (OJ EPO 1988, 308) and T 964/99
Article 52(4) EPC required that, to be excluded from patent       originate from the same technical board of appeal.
protection, diagnostic methods had to be practised on the         Nevertheless, they are to be construed as divergent
human or animal body. The Enlarged Board of Appeal held           decisions within the meaning of Article 112(1)(b) EPC for
that in a diagnostic method under Article 52(4) EPC, the          reasons of legal certainty and clarity. Thus a referral by the
method steps of a technical nature belonging to the               President appears necessary, regardless of the fact that the
preceding steps which were constitutive for making the            differing approaches were adopted by the same board of
diagnosis for curative purposes stricto sensu must satisfy the    appeal in terms of the business distribution scheme.
criterion "practised on the human or animal body".
                                                                  In each decision the technical board in question worked on
It could be inferred from the fact that Article 52(4) EPC         the assumption that the policy behind the exclusion of the
further referred to methods of surgery and therapy that these     methods referred to in Article 52(4) EPC from patent
diagnostic methods served curative purposes and were thus         protection was that those who carry out such methods as
meant to be practised on the living human or animal body.         part of the medical treatment of humans or animals should
The criterion "practised on the human or animal body" was to      not be inhibited by patents (see T 385/86, point 3.2 of the
be considered only in respect of method steps of a                reasons; T 964/99, point 3.1 of the reasons). In applying this
technical nature. Thus, it did not apply to diagnosis for         policy, however, the two boards differed in the breadth of
curative purposes stricto sensu, ie the deductive decision        their interpretation of the expression "diagnostic methods
phase, which as a purely intellectual exercise could not be       practised on the human or animal body" within the meaning
practised on the human or animal body.                            of Article 52(4) EPC.

Article 52(4) EPC did not require a specific type and intensity   The questions referred are as follows:
of interaction with the human or animal body; a preceding
step of a technical nature thus satisfied the criterion           1(a) Are "diagnostic methods practised on the human or
"practised on the human or animal body" if its performance        animal body" within the meaning of Article 52(4) EPC
implied any interaction with the human or animal body,            (hereinafter: "diagnostic methods") only those methods
necessitating the presence of the latter.                         containing all the procedural steps to be carried out when
                                                                  making a medical diagnosis, ie the examination phase
Further, the grant of a European patent in respect of a           involving the collection of relevant data, the comparison of
diagnostic method which included preceding method steps of        the examination data thus obtained with the standard values,
a technical nature carried out by a device did not                the finding of any significant deviation (a symptom) during
contravene Article 52(4) EPC, because the performance of          that comparison and, finally, the attribution of the deviation to
the respective method steps did not satisfy the criterion         a particular clinical picture (the deductive medical decision
"practised on the human or animal body". However, in the          phase), or
event of patent protection, it would normally be sufficient to

                                               Page 15 of 154
1(b) is a claimed method a "diagnostic method" even if it            was therefore remitted to the Examining Division for further
contains only one procedural step that can be used for               prosecution.
diagnostic purposes or relates to the diagnosis?
                                                                     A patent was finally granted and 17 oppositions were filed
2. If the answer to 1(b) is in the affirmative: Does the claimed     based in particular on Article 53(a) and (b) EPC, as
method have to be usable exclusively for diagnostic                  exploitation of the invention would be contrary to morality and
purposes or relate exclusively to the diagnosis? According to        "ordre public" and some of the claims were to animal
which criteria is this to be assessed?                               varieties. It was maintained in amended form with
                                                                     independent claims directed to rodents. Appeals were filed
3(a) Is a claimed method a "diagnostic method" if                    against this decision by several of the opponents. These
                                                                     came before the board in T 315/03. Its findings concerning
(i) it contains at least one procedural step considered as           morality under Article 53(a) EPC and the non-patentability of
essential for a "diagnostic method" and requiring the                animal varieties under Article 53(b) EPC are summarised
presence of a physician (Alternative 1), or                          below.

(ii) it does not require the presence of a physician, but            2.          Inventions contrary to "ordre public" or
presupposes that a physician bears the responsibility                            morality
(Alternative 2), or
                                                                          2005
(iii) all procedural steps can also or only be practised by          The patent application at issue in T 606/03 related to a
medical or technical support staff, the patient himself or an        transgenic mouse. Following T 315/03 (OJ EPO 2006, 15)
automated system (Alternative 3)?                                    the board considered whether Rule 23d(d) EPC applied. The
                                                                     claim of the main request extended to a mouse for which the
3(b) If the participation of a physician (by being present or by     modification in genetic identity resulted in a mutated
bearing the responsibility) is decisive, does the physician          phenotype. It was not disputed that in instances where the
have to participate in the procedural step practised on the          mutated gene was an essential one, the mutated mouse
body, or does he only have to participate in any procedural          would suffer. The patent application explained how
step considered as essential for a diagnostic method?                conditional mutations were useful to validate the utility of
                                                                     genes and their products as target for drug development.
4. Does the requirement "practised on the human or animal            Mouse mutants obtained with the gene trap technology
body" mean that the procedural steps take place in direct            would "sometimes" disclose the biological significance of a
contact with the body and that only such steps practised             particular gene. The board found it clear from this statement
directly on the body can provide a method with the character         that not all mutated mice would be of medical benefit, let
of a diagnostic method, or is it sufficient if at least one of the   alone substantial medical benefit, because the benefit to be
procedural steps is practised directly on the body?                  expected would, more often than not, depend on previous
                                                                     research having established the role of the targeted gene in
                                                                     a given pathology. The board thus concluded that the claim
            B. Exceptions to patentability                           encompassed mice with a change in genetic identity for
                                                                     which no balance was struck between likely suffering and
1.           Introduction                                            likely substantial medical benefit to man or animal. The
     2004                                                            claimed subject-matter thus fell within the category of
                                                                     exceptions to patentability pursuant to Article 53(a) EPC and
The patent at issue in T 315/03 (OJ EPO 2005, ***)
                                                                     Rule 23d(d) EPC.
concerned, in particular, transgenic animals having an
increased probability of developing cancer. The application
                                                                     However, the mice carrying the gene trap construct
had initially been refused by the Examining Division on the
                                                                     according to one of the auxiliary requests were not affected
grounds of Article 53(b) EPC, which prevents the patenting of
                                                                     in their metabolism and the exploitation of the claimed
animal varieties, and of insufficiency of disclosure under
                                                                     invention therefore did not imply suffering. The Rule 23d(d)
Article 83 EPC, since it could not be assumed that the only
                                                                     EPC test therefore did not apply. Although it was true that the
examples in the application, namely mice, could be extended
                                                                     mice which could be "derived" from these claimed mice by
to all other animals. Article 53(a) EPC, which excludes
                                                                     acquisition and expression of the recombinase gene would
patents for inventions the publication or exploitation of which
                                                                     be mutated mice and that some of them would be likely to
would be contrary to "ordre public" or morality, was also
                                                                     suffer, these subsequent mice were not claimed and
considered. However, it was concluded that patent law was
                                                                     therefore did not fall within the invention and were thus
not appropriate for solving the potential problems thereby
                                                                     outside the board’s power of investigation. For the same
raised.
                                                                     reason, the test enunciated in T 19/90 (OJ EPO 1990, 476)
                                                                     as confirmed by T 315/03, and involving a careful weighing
The applicant appealed against that decision and, in T 19/90         up of the suffering of animals and possible risks to the
(OJ EPO 1990, 476), it was held that Article 53(b) EPC               environment on the one hand and the invention’s usefulness
applied to certain categories of animals but not to animals as       to humankind on the other, did not apply.
such; and that, in the absence of serious doubts
substantiated by verifiable facts, there was no reason to                 2004
refuse the application under Article 83 EPC on the ground            On 1 September 1999, new Rules 23b to 23e EPC
that it involved an extrapolation from mice to mammals in            concerning biotechnological inventions came into force. In T
general. As regards Article 53(a) EPC, the board expressed           315/03 the board held that these Rules applied to cases such
the view that in cases such as this of genetic manipulation of       as the one at issue which was pending on the date when, as
animals by the insertion of an activated oncogene, there             provided for by the legislator, those Rules took effect.
were compelling reasons to consider this Article. The case

                                                 Page 16 of 154
Rule 23d EPC specifies that European patents shall not be           arising thereafter might be taken into account provided it was
granted under Article 53(a) EPC for four categories of              directed to the position at that date.
biotechnological inventions. The board decided that a case
falling within one of these categories had ipso facto to be         The board found that claims directed to rodents failed the
denied a patent under Article 53(a) EPC and there would be          Rule 23d(d) EPC test and had therefore to be refused under
no need to consider that Article further. However, a case           Article 53(a) EPC, as the patent disclosed a likelihood of
which did not fall within one of those categories had still to be   animal suffering but not a likelihood of medical benefit when
considered further under Article 53(a) EPC. Thus, in cases          applying the invention to this generic class of animals. The
falling within it, Rule 23d EPC inserted an objection under         same conclusion would have been reached under a "real"
Article 53(a) EPC (a "Rule 23d type" Article 53(a) EPC              Article 53(a) EPC assessment. However, both tests were
objection), which, depending on the facts and thus on the           satisfied when the invention was restricted to mice.
outcome of the test, might be either additional or alternative           2002
to an objection under Article 53(a) EPC itself (a "real" Article    The patent in suit in T 272/95 of 23 October 2002 concerned
53(a) EPC objection) as developed by the case law. This
                                                                    ”Molecular cloning and characterization of a further gene
latter objection required an assessment as to whether or not
                                                                    sequence coding for human relaxin”. In the opposition
exploitation of the invention would be contrary to morality or      proceedings, the opposition division had decided that an
"ordre public".                                                     invention concerning a human gene did not constitute an
                                                                    exception to patentability because it would not be universally
One of the four categories under Rule 23d EPC (para. (d))
                                                                    regarded as outrageous.
provides that European patents shall not be granted in
respect of processes for modifying the genetic identity of
                                                                    On appeal by the opponents, the board considered the new
animals which are likely to cause them suffering without any        Rule 23e(2) EPC. This rule defined which biological material
substantial medical benefit to man or animal, and also
                                                                    originating from the human body was patentable (”an
animals resulting from such processes. The board rejected
                                                                    element isolated from the human body or otherwise
submissions that this Rule was ultra vires or inconsistent
                                                                    produced by means of a technical process, including the
either with the principle of narrow construction of exclusions
                                                                    sequence or partial sequence of a gene ...., even if the
or with the previous law.
                                                                    structure of that element is identical to that of a natural
                                                                    element”). Having regard to Article 164(2) EPC, the board
Furthermore, this "Rule 23d(d) EPC" test required only three
                                                                    then had to examine whether or not the new rules insofar as
matters to be considered: animal suffering, medical benefit         they related to Article 53(a) EPC were in conformity with that
and the necessary correspondence between the two in terms
                                                                    article. Following G 1/98 (OJ EPO 2000, 111), the board
of the animals in question. The level of proof was the same
                                                                    adopted the view that the rules related to the articles were to
for both animal suffering and substantial medical benefit,
                                                                    be only interpretative. They only gave a more detailed
namely a likelihood.
                                                                    interpretation of the meaning of Article 53 EPC as intended
                                                                    from its inception, and hence were applicable to cases
In the assessment of a "real" Article 53(a) EPC objection, no       already pending before their introduction.
single definition of morality based on eg economic or
religious principles represented an accepted standard in            It thus followed from the text of the rule itself that the subject-
European culture. Opinion poll evidence was of very limited
                                                                    matter was not to be considered an exception to patentability
value for the reasons given in T 356/93 (OJ EPO 1995, 545),
                                                                    under Article 53(a) EPC (ie inventions contrary to ”ordre
where many drawbacks were identified, ranging from the
                                                                    public” or morality).
type and the number of questions posed within one poll,
through the size and representative nature of the cross-
section of the population polled, to the manner of                  3.          Patentability of animals and animal varieties
interpretation of the results obtained.                                  2004
                                                                    Concerning the patentability of animals, it was held in T
The board held that, in animal manipulation cases, the test in      315/03 that, in an assessment under Article 53(b) EPC, the
T 19/90 was appropriate. This differed in several respects          principle enunciated in G 1/98 (OJ 2000, 111) concerning
from the test in Rule 23d(d) EPC, most importantly by               plants and "plant varieties" should also be followed in the
allowing matters other than animal suffering and medical            case of animals. This meant that a patent should not be
benefit to be taken into account. Whereas the Rule 23d(d)           granted for a single animal variety (or species or race,
EPC test only required a likelihood of animal suffering,            depending on which language text of the EPC is used) but
however minor, and a likelihood of medical benefit, the T           could be granted if varieties might fall within the scope of its
19/90 test required a "careful weighing up" of the matters to       claims.
be balanced. This clearly allowed an appraisal of animal
suffering, of environmental risks and of the feasibility of using   The definition of animal variety (or species or race) by
non-animal alternatives. A wider range of benefits to mankind       reference to taxonomical rank would be consistent with the
than the substantial medical benefit found in Rule 23d(d)           position in relation to plant varieties and also in the interest of
EPC could also be considered. Since the T 19/90 test was            legal certainty. It would allow assessment under Article 53(b)
"mainly" the basis of assessment, further arguments as to           EPC as interpreted by Rule 23c(b) EPC to be made by
the appropriate standard of morality or "ordre public" could        considering whether the technical feasibility of the invention
additionally be considered, but all arguments had to be             was not confined to a particular animal variety (or species or
supported by evidence.                                              race).
Assessment of both a "Rule 23d type" and a "real" Article           The board further pointed out that the different terms used in
53(a) EPC objection was to be made as of the filing or              each official language were inconsistent and denoted
priority date of the patent or application in suit. Evidence        different taxonomical categories. Thus strict compliance with

                                               Page 17 of 154
Article 177(1) EPC (which provides that the three texts of the     and submitted evidence from three different libraries in the
EPC are equally authentic) would lead to the absurd result         Netherlands, including the opponent’s, that the copy of
that the outcome of an Article 53(b) EPC objection would           document (D1) present in those libraries had not reached
depend on the language of the case, with German having the         them until after the priority date of the patent in suit.
highest taxonomic order "species" ("Tierarten") and thereby
offering the widest objection.                                     The board noted that the strength of the presumption in
                                                                   favour of the accuracy of a "Received" date marking
The board did not agree with the assertion of some of the          appearing on the copy of a journal in a library as evidence of
opponent appellants that the transgenic mice of the patent         the actual date when the journal was made available to the
were a new species because they inherited one particular           public would depend on the library routine used. The board
characteristic, namely an increased probability of developing      did not accept a handwritten date on the cover of a journal in
tumours. This was not enough to create a new species when          view of other evidence. Thus document (D1) did not form
the possible "starting material" might be any of a whole           prior art pursuant to Article 54(2) EPC.
genus of animals, namely all mice.
                                                                   In T 315/02 the board said that a patent application not yet
Nor could the board agree that a process which included            published in its country of origin could form part of the state
genetic manipulation could be "an essentially biological           of the art within the meaning of Article 54(2) EPC if it was
process", the latter being defined in Rule 23b(5) EPC as           accessible to the public as a priority document for a
consisting "entirely of natural phenomena such as crossing         published European application (Article 128(4) EPC).
or selection".                                                       2001
                                                                   An invention can be patented only if it is new. The first step in
The board therefore held that Article 53(b) EPC did not            assessing novelty is to define the prior art, the relevant part
exclude the patentability of the claims amended to                 of that art, and the content of that relevant art. The next is to
encompass only mice and maintained the patent on that              compare the invention with the prior art as thus defined, and
basis.                                                             see whether the invention differs from it. If it does, the
     2002                                                          invention is novel.
See Under “Inventions contrary to "ordre public" or                1.1.1.         Publication
morality” – 2002 above.
                                                                     2005
                                                                   In T 267/03 it was ruled that binoculars depicted
            C. Novelty                                             photographically in a book on binoculars, with the
                                                                   manufacturer’s name and an approximate date of
1.           Defining the State of the Art                         manufacture ("ca. 1960") far earlier than the date of filing of
                                                                   the patent in suit, constituted prior art for that patent in
     2001                                                          respect of the binoculars’ internal structure (see point 2.1 of
Under Article 54(2) EPC, the state of the art comprises            the reasons, see also p. 70).
everything made available to the public by means of a written        2002
or oral description, by use, or in any other way, before the
                                                                   In T 328/00 the potentially novelty destroying document was
date of filing (or priority) of the European patent application.
                                                                   a booklet containing the programming and operating
According to the boards’ case law, an invention is ”available”
                                                                   instructions of the claimed system. The booklet bore the
if it is possible in theory to become aware of it (T 444/88),
                                                                   imprint ”January 80” (twelve years before the priority date) on
irrespective of how it was made available and of whether, in
                                                                   its front page and the heading ”software code from
the case of prior use, there are good reasons for analysing
                                                                   November 1980” on its last page. A booklet containing the
the composition of the product (G 1/92, OJ EPO 1993, 27).
                                                                   programming and operating instructions of a device and
Nor does it matter whether, by that date, a member of the
                                                                   having the characteristics of this document was usually
public actually had apprised himself of the document, or at
                                                                   addressed to the users that had purchased the device. Other
least knew that it was available (T 381/87, OJ EPO 1990,
                                                                   documents gave indications that the system disclosed in the
213). The issues arising in this connection vary depending on
                                                                   booklet was intended to be freely available on the market.]
how the art was made available.
1.1           Availability to the public                           The board therefore considered it reasonable to assume that
     2003                                                          the booklet had been drawn up twelve years before the
                                                                   priority date, had been issued for public use, and had been
Under Article 54(2) EPC, the state of the art comprises
                                                                   made available to the public within the twelve-year period.
everything made available to the public by means of a written
or oral description, by use, or in any other way, before the
                                                                   Since the contention of confidentiality had not been proven
filing or priority date of the European patent application.
                                                                   by the appellant/ patent proprietor, the board considered that
                                                                   the booklet had been made available to the public before the
In T 1030/00 the board held that document (1) was to be
                                                                   priority date of the patent in suit and was therefore comprised
treated as made available to the public for the purposes of
                                                                   in the state of the art.
Article 54(2) EPC, as Article 54(2) EPC did not require that a
written description be made available free of charge for it to     1.1.2.          Publication - Diploma thesis
be considered to be made available to the public.                    2001
                                                                   In T 314/99, it was undisputed that the diploma thesis arrived
In T 1137/97 document (D1) had already been cited in the
                                                                   in the archive of the Chemistry Department Library of the
search report from the EPO. It was argued in the opposition
                                                                   University of Hamburg some time towards the end of the
that it had been inadequately considered during examination.
                                                                   year 1981 and thus before the priority date (6 June 1983).
In response the patentee challenged its being prior art at all,

                                               Page 18 of 154
                                                                  invention to have been "made available to the public" within
However, in the board’s judgment the diploma thesis did not       the meaning of Article 54(2) EPC before the relevant filing
by its mere arrival in the archive become publicly available,     date, information equivalent to the claimed invention must
since that did not mean it was as of that point in time           have been accessible to a skilled person.
catalogued or otherwise prepared for the public to acquire
knowledge of it, and because without such means of                In the case at issue the board held that, contrary to the
information the public would remain unaware of its existence.     opinion of the opposition division in the decision under
1.1.3.        Lecture                                             appeal, it was possible to establish prior public use by
                                                                  showing that a certain process was used over a stated period
  2001                                                            before the priority date for making a certain product and that
In T 1212/97, the opponent submitted that the invention was       there existed a possibility for a stated class of individuals, eg
made available to the public by a lecture given some days         visitors, who were under no obligation of secrecy or
before the priority date to an audience of some hundred to        confidentiality, to have direct and unambiguous access to
two hundred persons. The question to resolve was whether          any particular information regarding this process. If this was
there was any safe and satisfactory evidence as to the            the case, there was no need to show that a specific named
information content of what was made available to the public      individual saw the process in operation on a specific day.
by the lecture.
                                                                  The board observed that, in accordance with the principles
The board held that the content of the lecture was not a          set out in G 1/92 (OJ EPO 1993, 277), it was the fact that
matter which was capable of being put beyond reasonable           direct, unlimited and unambiguous access to any particular
doubt by any evidence of the lecturer alone. The lecturer’s       information regarding the manufacturing processes known
evidence can be taken as defining the maximum amount of           per se was possible, which made these processes available
knowledge that may have been conveyed to the audience,            to the public within the meaning of Article 54(2) EPC,
but cannot be relied on to establish even what minimum of         whether or not there was any reason to look or ask for such
new knowledge was necessarily conveyed to the audience.           information.
Evidence of the lecturer’s intentions or impression as to what    1.1.5.         Obligation to maintain secrecy
was conveyed to the audience cannot even be treated as
making out a prima facie case that such information was             2004
actually made available to the public, certainly as regards       In T 50/02 the appellant disputed in the appeal proceedings
information which would have been new to the audience.            that document (2) was prior art under Article 54(2) EPC, in
Account must be taken of the fact that a lecture is               substance on the ground that this document was not
ephemeral, so that the manner or speed of presentation may        available to all interested parties and that any party having
affect the comprehensibility of a lecture. Even an audio or       gained knowledge of the information contained therein was
video tape recording made of the lecture unless itself publicly   obliged by a contractual agreement to keep the said
available would have to be treated with caution if several        information secret. Decision T 300/86, cited by the appellant,
hearings or viewings are necessary to extract all information.    stated that "if access to a document is deliberately restricted
Information appearing in each of the contemporary written         to certain persons it is by that token not available to the
notes made at the lecture by at least two members of the          public, even if the group of persons able to gain knowledge
audience can usually be regarded as sufficient, whereas           of the content of the document is large" (cf. point 2.5 of the
information in the notes of a single member of the audience       reasons) and that the preconditions for public availability
might be inadequate as reflecting the thoughts of the listener    were that "(i) all the interested parties must have the
rather than solely the content of the lecture. If the lecturer    opportunity of gaining knowledge of the content of the
read his lecture from a typescript or manuscript, or the          document, (ii) however unrestricted by contractual or other
lecturer wrote up his lecture subsequently, and the lecture       legal restrictions on use or dissemination of the information
was subsequently published in this form as part of the            therein. Otherwise the document has not been made
proceedings, then the written version might be taken as           available to the public" (cf. point 2.1 of the reasons).
some evidence of the contents of the lecture, though with
some caution as there would be no guarantee that a script         The board considered in the present case that only the first
was completely and comprehensibly read, or that a write-up        precondition was acceptable, but that the second
was not amplified. Most useful would be a handout given to        requirement was too broadly formulated, and not justified by
the public at the lecture, containing a summary of the most       the phrase "made available to the public" in Article 54(2)
important parts of the lecture and copies of the slides shown.    EPC. This board held that it was enough for all interested
                                                                  parties to have an opportunity of gaining knowledge of the
None of these types of evidence were available in this case.      content of the document for their own purposes, even if they
The board was also forced to the conclusion that there was        do not have a right to disseminate it to third parties, provided
no safe and satisfactory evidence that the information            these third parties would be able to obtain knowledge of the
content of the lecture could be treated as having been made       content of the document by purchasing it for themselves.
publicly available. The lecture was undoubtedly given, but
insofar as its information content went beyond what was           The board saw the essence of the requirement in Article 54
already known in the art, the board was not satisfied of this     EPC "being made available to the public" as the information
on the balance of probabilities, let alone beyond reasonable      being available to any interested person, who having once
doubt.                                                            obtained the information should then be free to exploit the
1.1.4.        Prior Use                                           information for his own purposes in an industrial application.
                                                                  It was not necessary that this information be supplied free of
  2004                                                            charge, or that the recipient should be entitled to disseminate
In T 947/99 the board noted that it was well-established in       it to all and sundry, provided others could obtain the
the case law of the boards of appeal that for a claimed           information for themselves from the original source.

                                              Page 19 of 154
                                                                  be said to have been made available to the public, provided
In T 1081/01 the board held that information provided subject     the person did not breach that obligation.
to a confidentiality agreement did not become available to
the public merely by reason of the expiry of the obligation to    If the obligation to maintain secrecy stems from an express
keep it confidential. Some separate act of making it available    agreement that has been observed, the information has not
to the public would be needed. This conclusion was in             been made available to the public. Less clear cut are cases
agreement with the conclusion reached in decision T 842/91        of tacit secrecy agreements, or where the obligation to
(cf. point 2.1 of the reasons), where permission to publish a     maintain secrecy stems from the circumstances.
text was considered merely as permission to make the text
available to the public, and not as actually making the text      In T 1022/99 the board held that the sale of an object to a
available to the public.                                          single customer who was not obliged to maintain secrecy
                                                                  rendered the invention public, whatever its subsequent use,
In T 906/01 the alleged public prior use case referred to a       ie whether it was to be made publicly available or
surgery conducted by Dr F. that concerned the implantation        incorporated into a prototype which would normally be kept
of a correction device into a patient. There remained some        secret until it went into mass production.
doubt as to the I. Spinal System which was really implanted.
                                                                  In T 478/99 a public prior use was alleged in the form of
The board considered that a device having an investigational      demonstrations made at two big companies in order to show
status, being implanted and tested within the restricted area     prototypes of the claimed masks with the purpose of
of a hospital, under the responsibility of a surgeon operating    disseminating the invention among potential clients.
within the framework of an investigator’s agreement provided
with a clause of confidentiality, had to be regarded as a         During the proceedings it could not be proven that a
prototype device. Usually the development and testing             confidentiality agreement existed.
phases of such products or devices were necessarily
surrounded by secrecy as long as said products or devices         The board held that the mere absence of an explicit request
had not been approved and commercialised (see T 818/93,           for confidentiality was not sufficient for concluding with
point 4.1 of the reasons). Therefore, even without the            certainty that there was no confidentiality at the
production of more specific evidence on behalf of the             demonstrations because secrecy may result from ethical
respondent, the board was of the opinion that the clinical        conduct of the employees of big companies. Consequently,
tests performed on the I. Spinal System under the conduct         the board considered the alleged public prior use not to be
and responsibility of Dr F. conferred on the overall operation    proven and thus not to be comprised in the state of the art.
an implicit obligation of confidentiality which had to be
extended to the whole team involved in said operation.            In case T 838/97 the invention was presented orally at a
Therefore neither the fact that the I. Spinal System was          conference attended by about 100 of the most renowned
received and prepared by hospital staff, nor the fact that it     experts in the respective technical field including also the
was visible for the hospital staff during the operation, was      closest scientific and possibly commercial rivals.
suitable to prove that the I. Spinal System was accessible to
the public. Furthermore, it was assumed that the operating        The participants were explicitly instructed that information
room was not accessible for other persons than the operation      presented at the conference was not to be used without the
team, and that the device was implanted at least partly under     specific authorisation of the individual who made the
the patient’s skin and, therefore, not immediately visible from   contribution, whether in formal presentation or in discussion.
the outside.
                                                                  In the board’s judgment, since the purpose of the conference
The board followed T 152/03, point 3.4 of the reasons, not        was to encourage free, informal and open discussion
published, that in this field there was a prima facie             exclusively on the latest developments among scientists from
assumption that any person involved in a medical process is       various institutions and laboratories, the restrictions which
obliged to maintain confidentiality, given the need for patient   the participants were invited to accept upon registration could
confidentiality and the need to protect the development and       not be narrowly interpreted, but had to be understood as
testing of prototype devices, and that any evidence proving       meaning that any information presented at the conference
the contrary was important and had to be produced as soon         amounted to a private communication from the individual
as possible.                                                      making the contribution and was presented with the
  2002                                                            restriction that such information was not for public use.
Presenting the product in writing                                 Neither could the argument that the scientists had expressed
                                                                  their personal belief that the said restriction did not prohibit
In T 151/99 the board held that, in general, it appeared highly   participants from further disclosing information learned at that
plausible that a paper submitted to obtain an academic            conference change the boards conclusion as the
degree (in this case a master’s thesis) was not confidential,     circumstances of this alleged further dissemination were not
and that became a virtual certainty if the paper was referred     specified.
to in published scientific work. If the reference was in a
document published before the priority date of the patent in      For this reason, the board considered that the presentation at
suit, it could be assumed that the paper had also been made       the conference amounted to a private communication within
available to the public before that date.                         a closed circle of persons bound by a confidentiality
  2001                                                            agreement, and thus was not to be considered to be part of
                                                                  the state of the art.
If the person able to gain knowledge of the invention was
under an obligation to maintain secrecy, the invention cannot



                                               Page 20 of 154
2.          Issues of proof                                        and unambiguously disclosed in a patent document. So if
                                                                   there is reasonable doubt as to the outcome of a disclosure,
     2003                                                          a novelty objection based on the document in question must
In T 55/01 the respondent had argued that only a complete          be rejected.
chain of proof would suffice to establish that the manual of a
television formed prior art. The board agreed that the             In T 231/01 the examining division relied on the probability
evidence adduced by the appellant did not form a complete          and likelihood that the parameters of the articles known from
chain of proof of a sale and noted that, in cases where only       the submitted document if measured would fall within the
one party had access to information about an alleged public        claimed ranges.
prior use, the case law had tended towards expecting that
the public prior use be proved beyond any reasonable doubt         The board could not follow this line of argumentation,
("up to the hilt"), answering the typical questions "What?",       because the criterion for assessing novelty is not based on
"When?", "Where?", "How?" and "To whom?", since the                likelihood, but on identity of technical information between
other party was reduced to merely pointing out                     the content of the prior art disclosure and the subject-matter
inconsistencies or gaps in the chain of evidence; see T            claimed.
472/92, point 3.1 of the reasons (OJ EPO 1998, 161).
However, the case law had taken into account that cases of
mass-produced consumer goods which were widely
                                                                   3.          Determining the content of the relevant prior
advertised and offered for sale to customers who often                         art
remained anonymous might require different treatment; see               2001
T 241/99, point 4.2 of the reasons. Indeed, to demand a            After establishing what information forms the state of the art,
complete chain of proof in such cases would make it                the next step is to determine its technical content and
unreasonably complicated for a party to successfully rely on       whether that content is apparent.
a sale or an offer for sale to prove public availability.
                                                                   The consistent view in the case law is that for an invention to
The board observed that televisions were mass-produced             lack novelty its subject-matter must be clearly and directly
consumer products which were rapidly distributed to the            derivable from the prior art (see eg T 465/92, OJ EPO 1996,
market without any obligation of confidentiality. It found that    32; T 511/92) and all its features – not just the essential ones
according to general experience it seemed highly implausible       – must be known from the prior art (T 411/98). The
that such goods, whilst being mass-produced, accumulated           disclosure is determined by what knowledge and
at some hidden location. It held that under these                  understanding can and may be expected from the average
circumstances no further evidence was necessary to prove           skilled person in the technical field in question (T 164/92, OJ
that televisions were actually sold to specified customers and     EPO 1995, 305 Corr. OJ EPO 1995, 387; T 582/93).
that the handbook accompanying them was made available
to the public in a period of about four months between their       Determining the information content means interpreting what
established production date and the priority date of the           the state of the art comprises. The boards have laid down
patent in suit, thereby taking into account the fact that events   certain principles to be observed in this process.
on the mass market such as the appearance of new
television products were readily accessible to everybody, in       3.1          General rules of interpretation
particular to competitors, who would normally observe the               2003
market carefully. Hence, the balance of probabilities was the      In T 410/99 the board noted that according to established
applicable standard of proof in cases such as this, as distinct    case law a prior art disclosure was novelty-destroying if it
from T 472/92 (see point 4.1 of the reasons).                      directly and unambiguously disclosed the subject-matter in
2.1          Standard of proof                                     question and also took account of a skilled person’s common
                                                                   general knowledge at the publication date of the cited
     2005                                                          document in the case of prior art cited under Article 54(2)
In T 665/00, the board held that the evidence submitted had        EPC, or at the priority date of the cited document in the case
to be assessed in accordance with the principle of                 of an Article 54(3) EPC document (see for example T 511/92,
"unfettered consideration of the evidence". Moreover, the          point 2.2 of the reasons). Moreover, a prior art disclosure had
same principles of taking evidence applied to all the facts        to be read giving the information it contained the meaning
and arguments relied on in support of all the grounds of           that a skilled person would have given it at its publication
opposition, including public prior use (see, to that effect, T     date and disregarding information which would be
270/90, OJ EPO 1993, 725, point 2.1 of the reasons).               understood by a skilled person to be wrong; however, any
However, the board pointed out that the exercise of this           teaching which would not be recognised as wrong by a
unfettered discretion meant that varying standards of              skilled person had to be accepted as prior art (see T 412/91,
strictness could be applied in evaluating the evidence. Thus,      point 4.6 of the reasons).
where an issue of fact was being decided on the balance of
probabilities, the more serious the issue and its                  In the case at issue, the appellant had submitted that a
consequences for the fate of the patent, the more convincing       skilled person could have considered that additional steps
the evidence had to be (T 750/94, OJ EPO 1998, 32, point 4         were involved in the process of prior art document (9) but not
of the reasons). In particular, if the board’s decision on         described in this citation and that there were therefore other
whether to revoke the patent depended on that issue of fact,       possible interpretations of its text. Therefore the claimed
the available evidence would have to be examined very              subject-matter was not directly and unambiguously derivable
critically and strictly (see also p. 62).                          from the teaching of that document, such as was found for
     2001                                                          example in T 464/94, not published in OJ EPO, point 16 of
In T 1029/96, the board held that it has to be beyond doubt –      the reasons. The board found, however, that in the present
not merely probable – that claimed subjectmatter was directly      case there was no evidence or reason for considering the

                                               Page 21 of 154
explicit teaching of document (9) as incomplete or wrong            In the present case, the independent claim of the prior-art
since it clearly described all process steps and the influence      document defines a concept which is more general than the
of each process step upon the quality of the product thereby        rear-mounted mower-conditioner described in the description
obtained. Moreover, its teaching, unlike the situation in T         and the drawings (ie a concept embracing both a
464/94, did not raise any doubt about the results obtained by       frontmounted and a rear-mounted mowerconditioner) but
the claimed process as mentioned in the text; therefore its         does not disclose any particular example of this general
teaching could not be considered either hypothetical or             concept (ie does not disclose either a front-mounted or a
contrary to the common general knowledge in the relevant            rear-mounted mower-conditioner).
technical field. Since therefore the facts of the case were
distinguished from those underlying T 464/94, the latter could      Therefore, the information content of the patent in suit must
not be applied to the present case. The board concluded that        be considered novel with respect to the information content
document (9) directly and unambiguously disclosed all the           of this document.
features of the process of claim 1 and that the subject-matter
of claim 1 thus lacked novelty.                                     In T 1080/99 (OJ EPO 2002, ***) the board held that in view
                                                                    of its legal nature and intended purpose, a Japanese patent
In T 4/00 the board found that for novelty to be destroyed for      abstract in English is a publication intended to reflect the
the claimed ranges of the components of the gas mixture, the        technical content of the corresponding Japanese patent
skilled reader should be able to derive directly and                application for the purpose of quick prima facie information of
unambiguously from a particular part of a graph at least one        the public, as is the purpose of any kind of abstract or
specific gas mixture composition relevant for the claimed           summary of technical subject-matter.
ranges. However, the description of the prior art document
noted that these graphs were approximate contour lines of           Hence, the contents of such abstracts are to be interpreted
equal weld penetration, established on the basis of                 and possibly re-evaluated in the light of the original
measurements of the weld penetration depth obtained in              document if the latter is available. Indeed, if an abstract
tests with a number of gas mixtures. Thus the graphs                appears to add something to the original document then this
themselves did not represent measured values. Further, the          points to an error in the abstract, or at least to an error in its
board observed that the means by which the graphs had               interpretation.
been established were not mentioned in the prior art                3.2          Taking equivalents into account
document. It therefore held that the points of a graph in a
diagram in a prior art document did not represent a                    2002
disclosure of the corresponding values read from the scales         In T 652/01 the appellant/opponent was of the opinion that
of the diagram if the accuracy of the graph in the diagram          although the relevant prior-art document did not explicitly
could not be established.                                           mention a particular feature, that feature could be derived
   2001                                                             from the document by applying the teaching of the document
In T 60/99, the subject-matter of claim 1 of the patent in suit     mutatis mutandis. The appellant had referred to T 952/92 (OJ
differed from the machine referred to in the description and        EPO 1995, 755), which in its first headnote stated that
the drawings of the relevant prior art in that the frame of the     ”availability” in the sense of Article 54(2) EPC involved not
agricultural machine for connecting the mowing unit to the          only availability of the disclosure but also availability of
hitch is at the front side of a tractor, whereas in the prior art   information accessible and derivable from the disclosure.
the frame was at the rear side of a tractor.
                                                                    The term ”derivable”, if used in isolation, could inter alia be
The appellant/opponent held that the fact that the drawings         interpreted as ”capable of being obtained or drawn as a
and the description of the prior-art document referred only to      conclusion, deduction or inference” (Oxford English
a specific embodiment concerning a rear-mounted machine             Dictionary), which would suggest that ”derivable equivalents”
did not imply that the information content of the document          were included.
excluded front-mounted machines.
                                                                    However, the board held that when reading the cited phrase
In the board’s judgment, the independent claim of a patent          from T 952/92 in the context of the present decision, it was
document normally represents a generalisation of what is            clear that the term ”derivable” had been employed in the
described in detail in the description by referring to the          sense of ”obtainable by chemical analysis of a sample” and
drawings. The definition of the extent of protection is given by    that it was used with the same restriction as expressed in
formulating a concept covering not only the specific                opinion G 1/92 (OJ EPO 1993, 277), namely that it must be
embodiment described in detail in the description but also          ”directly and unambiguously derivable”.
other specific embodiments, which may differ from the item          3.3          Taking drawings into account
described in detail in the document but each having all the
features of the concept defined by the claim.                          2002
                                                                    In T 4/00 it was held that points of a graph in a diagram in a
However, the scope of the claim and its information content         prior art document did not represent a disclosure of the
must be distinguished from one another. The information             corresponding values read from the scales of the diagram if
content of the claim relates to the totality of features which      the accuracy of the graph in the diagram could not be
are common to a plurality of individual items and thus permit       established.
all these individual items to be conceptually embraced and          3.4          Taking examples into account
the concepts to be distinguished from one another (intension
of the concept). The scope of the claim relates to the totality        2005
of the individual items having all the features of the concept      In T 1049/99 the board noted that according to Article 54(2)
(extension of the concept).                                         EPC the state of the art comprised "everything made
                                                                    available to the public by means of a written or oral

                                                 Page 22 of 154
description, by use, or in any other way, before the date of      spring, while the wiper arm claimed in the patent in suit
filing of the European patent application". In the case of a      featured a tension spring.
"written description" open to public inspection, what is made
available is all the information contained in that description.   The board held that the invention claimed had to differ from
In some cases, the information contained in the written           the prior art in at least one technical feature, regardless of
description, such as teaching on ways of carrying out a           whether that feature was essential to the invention claimed.
process, also provides access to other information
necessarily resulting from the application of that teaching       The board deemed that the subject matter of the claim was
(see for example: T 12/81, OJ EPO 1982, 296, points 7 to 10       new compared with the prior art.
of the reasons; T 124/87, EPOR 1989, 33; and T 303/86,            4.1.1.         Generic disclosure
EPOR 1989, 95, see also on page 29 and 48).
3.5          Common general knowledge                                  2001
                                                                  In T 427/00, claims 1 and 2, respectively, were for devices in
     2004                                                         which a gas channel and the flange plate facing the engine
In T 890/02 (OJ EPO 2005, ***) the applicant had equated a        block were made by cut-free pressing of the flange plate
search in the EMBL database to a search in the Chemical           starting material and by cut-free deformation of a thin steel
Abstracts database. The board noted however that a search         plate.
in the Chemical Abstracts database, as acknowledged in the
case law, embraced virtually the complete prior art and           In prior-art document E1, making the gas channel and the
represented much more than what the skilled person was            opening involved necessitated a drilling and milling
supposed to have as common general knowledge (cf. T               operation. E1 said nothing about making the flat surface on
206/83, point 6). It was evident from the content of the EMBL     the side of the engine block.
database as regards DNA sequences that this database was
different from the Chemical Abstracts database or other           The appellant (opponent) argued that E1 anticipated the
bibliographic databases such as Biological Abstracts,             patented process, because it offered a selection of specific
EMBASE, etc. These bibliographic databases are intended to        manufacturing processes from amongst all those suitable,
summarise the complete disclosure of a scientific publication,    and the skilled person would seriously have considered that
conference, etc. by elaboration of an abstract and the            selection.
provision of several searchable fields (descriptors). Due to
the amount and the quality of their information, it is usually    The board took the view that E1 left open how these
necessary to have a sophisticated search strategy for             elements were to be made. It was a ”negative” disclosure
achieving the desired data. It is not sufficient to query a       which did not give enough information to disclose a certain
bibliographic database with an enzyme name or an EC               range explicitly. The possible processes for manufacturing
number alone, as the number of results obtained will be too       the channel and surface were not a ”range” in the sense of a
great to look at and useful information will not be available     selection invention; they were undefined and unlimited in
without further limitation by an additional query. Moreover,      number, and could at best be summarised under a general
the kind of information retrieved – the content of the abstract   heading like ”manufacturing processes”.
– could not be anticipated before the search had actually
been made and it is usually, by its nature, incomplete or         So the present case involved the selection not of a specific
insufficient, so as to require consultation of the original       range within a broad known one but of a specific process
publication. Thus, contrary to the EMBL database, where a         within a broader concept. But the boards’ case law held that
straight query (enzyme name or EC number) usually                 the disclosure of a general concept did not normally destroy
produces a reasonable number of results with clear                the novelty of specific examples covered by the concept.
information (nucleotide sequences), in the bibliographic          4.2          Interpretation of claims
databases neither the required (search strategy) query nor
the results (abstracts) were clear and straightforward.                2003
                                                                  In T 31/01 the board held that if the wording of an
The board held that, whilst not being stricto sensu               independent claim, in keeping with the description, clearly
encyclopaedias or handbooks, databases (a) which are              indicated that the claimed measuring device was attached in
known to the skilled person as the right source for obtaining     a particular way to the part being measured, the technical
the required information, (b) from which this information may     features of the claim which defined the attachment method
be retrieved without undue burden and (c) which provide it in     had to be duly taken into account when assessing the
a straightforward and unambiguous manner without the need         patentability of the claimed subjectmatter with regard to the
for further elaboration represent common general knowledge        latest prior art.
as defined in the case law.
                                                                  5.          Chemical inventions and selection inventions
4.          Ascertaining differences
                                                                       2004
     2001                                                         In T 380/01 the board observed that in the field of chemistry
Once the prior art has been established and its content           in general, and in particular of chemical operations, a multi-
determined, the final step is to ascertain whether the            step process or method is intrinsically characterised by the
invention in question differs from it.                            fact that each step preceding the final one produces at least
4.1          Distinguishing features                              one "intermediate product" – whereby this expression might
                                                                  indicate any kind of product including a byproduct or some
     2002                                                         form of energy or some kind of order in matter – which is
In T 42/01 the document constituting the closest prior art        then used in the subsequent step, so as to form a continuous
described a windscreen wiper arm equipped with a torsion          chain starting from the initial starting material(s) and ending

                                              Page 23 of 154
with the product(s) of the last step. In the present case the       concrete technical context concerned" (point 4.15(ii) of the
board found that two washing methods (of culinary utensils)         reasons). Therefore the question of whether the degree of
having no technical bearing on each other cannot form a             purity for the polylactide required in claim 1 provided a new
single multi-step process (ie a "technical whole") even             element over the prior art had to be assessed in the concrete
though they are linguistically linked together in a claim. If one   technical context concerned.
of these methods forms already part of the state of the art,
then the subject-matter of the claim does not satisfy the           The board concluded in this case that the methods of
requirements of Articles 52(1) and 54 EPC.                          purification described in document D2 – which had to be
5.1          Novelty of chemical compounds and groups of            regarded as the relevant "conventional purification
                                                                    processes" in the concrete technical context concerned –
             compounds
                                                                    would not succeed in providing the required degree of purity.
5.1.1.         Novelty of enantiomers                               Nor was there any ground for concluding that other
  2002                                                              "conventional" methods of purification would be capable of
                                                                    delivering the required degree of purity either. The board
In T 786/00 the arguments submitted by the respondent
                                                                    thus decided that there was a new element in the feature of a
(opponent) with respect to T 990/96 (OJ EPO 1998, 489)
                                                                    defined level of purity as set out in claim 1.
were not convincing, since that decision could not be applied
to the present case. T 990/96 dealt with the novelty of low           2002
molecular organic compounds in the field of preparative             A composition including a solvent having a purity greater
organic chemistry. It maintained that it was common practice        than 99% was considered by the Board in T 112/00 new over
in this field to purify a particular compound obtained in a         a prior art composition with such a solvent the purity of which
particular manufacturing process according to the prevailing        was not specified.
needs and requirements and that, since conventional                 5.2          Selection of parameter ranges
purification methods were within the common general
knowledge in the field, a document disclosing a low                   2004
molecular compound and its manufacture normally made this           For the assessment of novelty in the chemical field it is often
compound available in all desired grades of purity, ie the          necessary to assess the novelty of products or processes
purity level was not an essential feature for the definition of     defined by parameter ranges as against known products or
the organic compound. In contrast to T 990/96, the present          processes characterised by wider or overlapping parameter
case related to a process for the manufacture of polymers           ranges.
having specific properties (ie resistance to boiling water)         5.2.1.         Overlapping ranges
characterised by the use of organic compounds having a
required purity as starting components. In other words, the           2004
purity level of the starting components was an essential            In T 594/01 the main request and the first auxiliary request
technical feature of the process, which could only be carried       claimed processes for the preparation of ethylene glycols
out in the required range of purity but not in all available        whereby the processes were to be performed with less than
grades of purity of the starting materials. In the board’s view,    0.1 wt% of carbon dioxide in the reaction mixture. The board
there was a fundamental difference between the purity               had to decide whether there was an overlap between that
requirements presumed to exist for the isolation of a final         carbon dioxide range and the carbon dioxide value of 0.1
product, and those for the starting materials used in a             wt% disclosed in example No. 4 of a document which
preparative process. By contrast, in T 990/96 the concern           described a method of preparation of ethylene glycol
with starting materials was the precise opposite, in that it        ("document 1").
concerned a mixture of stereo isomers which could be
separated by fractional crystallisation so that the product         The board stated that it was common general knowledge that
resolved into two optically pure enantiomers with the aim of        every experimental measurement in quantitative analytical
achieving an ultimate degree of purity. In that connection, the     chemistry as well as any result of any physical measurement
concern of the skilled person had to be presumed to be the          cannot be dissociated from the margin of uncertainty
use of the most impure starting materials possible consistent       attached to the measurement.
with the aim of obtaining a sufficient yield of product, which
itself could be further purified. Consequently, the general         Normally, the uncertainty of a measured experimental value
statements in T 990/96 concerning the purity of final products      is irrelevant for the assessment of novelty. However, when a
could not be applied directly to starting materials or, hence,      specific experimental value is disclosed in an example of
to the present case.                                                prior art, seeking to distinguish the claimed subject-matter
                                                                    therefrom only in terms of an upper limit to be required to be
5.1.2.         Achieving a higher degree of purity
                                                                    "lower than" the experimental value must fail as the claimed
  2003                                                              subject matter is still not distinguishable from the prior art
The issue in T 803/01 was the novelty of a pharmaceutical           within the margin of experimental error. Therefore, the
composition which differed from prior-art compositions only in      carbon dioxide range defined in the main and first auxiliary
the degree of purity of one of its components.                      requests, namely "lower than 0.1 wt%", did not distinguish it
                                                                    from the experimental carbon dioxide concentration of 0.1
In the board’s view each and every purification method,             wt% disclosed in example No. 4 of document 1.
provided it was "conventional" but regardless of the extent of
purification sought, was presumed to be automatically               The board applied the same reasoning to the second and
available to the public, and that in a fully enabling way, so as    third auxiliary requests which claimed processes for the
to amount to an effective novelty-destroying disclosure.            preparation of alkylene glycols whereby the processes were
                                                                    to be performed with less than 0.01 wt% of carbon dioxide in
As stated in T 100/00 in this connection, the term                  the reaction mixture. Example No. 2 of document 1 disclosed
"conventional" could only mean "conventional in view of the         a method of preparation of propylene glycol which involved

                                                Page 24 of 154
0.01 wt% of carbon dioxide in the reaction mixture. The             thus being concerned with the same composition (interferon-
claims failed for lack of novelty. In T 929/00 the board            β2) for treating the same disease (cancer/ tumor), the board
distinguished the situation in the present case, where an           had to decide whether the medical uses claimed by the
area of overlap could only be constructed by a combination          applicant represented further and different therapeutic uses.
of several selections from a plurality of lists, from a situation   The board observed that the claimed invention relied upon a
where the claimed subjectmatter represents a single                 different technical effect from the one disclosed in document
selection – of a sub-range – within a prior art. The latter         (D1), which taught an indirect effect of interferon-β2 on
situation was considered in cases T 198/84 (OJ EPO 1985,            cancer cells.
209), T 279/89 and T 891/97.
                                                                    However, for an application to be construed as a further use
The board noted that the concentration ranges of certain            or "further medical use"/"further therapeutic application", this
component types in the patent in suit seemingly overlapped          new technical effect would have to lead to a truly new
with the respective ranges of the corresponding generic             industrial/ commercial application (G 5/83, OJ EPO 1985, 64)
types disclosed in a prior art document. However, this did not      arising from eg the opening of a new field of application, the
directly and unambiguously lead to a range of overlap of the        healing of a different pathology/clinical situation, the creation
compositions concerned. To end up at the alleged overlap in         of a distinct group or subgroup of subjects (either end-users
respect of the compositions, a combination of a plurality of        or patients) or the new use had to involve new physical
selections within the concentration ranges and within the           means/measures for its practice. Applying these standards,
generic definitions of the components disclosed in the prior        the board concluded that the technical effect relied upon in
art document was required. The board decided that the               the claimed invention identified a new clinical situation,
specific combination of the selections in the present case          namely one in which it could be preferable to target the
was not necessarily implied in the generic definition of the        cancer cells themselves, not lymphoid cells or the immune
detergent composition of the prior art document and that this       system as in document (D1). Since a new clinical frame was
document was thus not novelty destroying.                           not separable, as an abstract concept, from a patient
                                                                    suffering under it, it had to be concluded that this new clinical
6.         Novelty of use                                           situation also identified a new sub-group of subjects being
                                                                    treated.
6.1         First medical use
   2002                                                             In T 485/99, prior art document (1) had already disclosed the
In T 1031/00 claim 1 was directed to the first medical use of       use for immunostimulation of the composition underlying
(–) amlodipine, namely the treatment of hypertension. The           claim 1 of the patent in suit. The only new feature of claim 1
examining division had concluded that the use of (–)                was the fact that the intake of the diet was preoperative. In
amlodipine in the treatment of hypertension had been at least       the opinion of the board, it needed to be investigated whether
implicitly disclosed, and had decided to refuse the application     the pre-operative therapy as defined in the claim could be
as not meeting the requirements of Article 54 EPC. For              distinguished from the therapy disclosed in document (1) by
novelty purposes it had therefore to be established whether         a different medical (physiological) effect due to this pre-
or not a medical use had already been disclosed in the              operative administration and thus whether it related to a
available prior art for (–) amlodipine.                             functional feature leading to the therapeutic indication in the
                                                                    sense of G 5/83 (OJ EPO 1985, 64) or not. If it did not, the
The board found that, in spite of the numerous examples in          use defined in such a way might restrict the medical
the description, only one dealt with hypertension but without       practitioner’s freedom when treating his patients (see T
going further than in vitro experiments. Thus the description       56/97). Pre- or post-operative administration of the diet would
provided no further evidence or data showing the actual             then constitute methods for treatment of the human body and
antihypertensive effect of the (–) isomer of amlodipine in          could thus not be regarded as patentable inventions under
humans or animals than did the prior art. The board                 Article 52(4) EPC. The appellant had argued that the group
observed that, in the absence, in the patent application as         of patients treated with the preoperative diet could be
originally filed, of any data providing additional technical        distinguished from those treated with the post-operative diet.
information in relation to the actual treatment of hypertension     In the board’s opinion, the question raised was whether the
in humans or animals compared with the disclosure in the            physiological status of the patients caused by the pre-
prior art document (3), it had to be concluded that the             operative diet was different. The board concluded that this
subject-matter of the patent application was anticipated by         could not be established at present.
the disclosure in that document; in other words, document (3)         2002
disclosed the same medical use as the application at issue.         In T 584/97 the board held that what was factually claimed
The subject-matter of the patent in suit did not contain any        was the use of nicotine for the manufacture of a medicament,
technical information concerning the claimed therapeutic            without any further specified medical indication. The board
treatment going beyond that in document (3).                        noted that provided nicotine had never been disclosed before
6.2          Second (further) medical use                           in relation to therapy, such subjectmatter could have been
                                                                    claimed under Article 54(5) EPC as a medicament (first
   2004                                                             medical indication). In this case, however, that was not
In case T 836/01, claims 1 and 2 of the patent in suit were         possible in view of the disclosure in document (1) [document
directed to the use of human interferon-β2for preparing a           (1) describes a medicament containing nicotine as the
medicament for influencing tumor/ cancer cell growth and            therapeutical active agent], and it was not the form of claim
differentiation. Document (D1) disclosed the use of                 chosen by the appellant. The appellant had in fact worded its
interferon-β2 for the purpose of activating mature lymphoid         claim in the form suggested by the Enlarged Board of Appeal
cells exerting cytolytic T-cell activity on cancer cells or to      when more particularly considering the second medical
stimulate the immune system of patients undergoing                  indication (see G 5/83, point 9, OJ EPO 1985, 64), ie in
chemotherapy. Document (D1) and the claimed invention               cases in which the medicament resulting from the claimed

                                                 Page 25 of 154
use did not differ in any way from a known medicament. The        therapeutic use, would allow a further medical use claim in
Enlarged Board had held that, provided the medicament was         the approved format, irrespective of in what detail the use
for a specified new and inventive application, ”the required      was specified, subject to the use being novel and inventive.
novelty for the medicament which forms the subject-matter of      The phrase "manufacture of a medicament for a specified
the [second medical use] claim is derived from the new            new and inventive therapeutic application" used by the
pharmaceutical use” (G 5/83, points 21 to 23). In the case at     Enlarged Board of Appeal merely indicated that the
issue, the board could not see any such new pharmaceutical        application was restricted in some way to make it novel and
use over document (1).                                            inventive over the known therapy using such composition.
                                                                  According to the board, if the subject-matter of the claim
The board noted that, according to the case law formed by         avoids the method of treatment by therapy prohibited in
subsequent decisions of the boards of appeal, the concept of      Article 52(4), first sentence, EPC as will be the case for a
second medical indication had been extended to cover              claim in the approved "Swiss" form, compliance with this
particular situations. For example, the treatment of the same     provision does not need to be considered further, and
disease with the same compound could also represent a             certainly not for imposing restrictions on the breadth of the
novel therapeutic application if performed on a new group of      claim.
subjects which was distinguished from the former group (eg
T 19/86, OJ EPO 1989, 25). The board noted that the               The board argued that there was no interference with the
desired effect was mainly achieved when the patients to be        freedom of the physician because the patent proprietor would
treated were substantially non-smoking patients for whom          have a remedy only against the maker of, or dealer in the
the problem linked with the toxicity associated with              composition. The fact that the marketing of pharmaceuticals
administering nicotine arose. Claim 1 was, however, not           was tightly controlled within the contracting states by the
restricted to such a group of subjects. Accordingly, this         relevant control authorities meant that for most
aspect could not be taken into consideration in assessing the     pharmaceuticals it could be established for what therapeutic
novelty of claim 1. In the claimed use, no process step           treatment(s) they were marketed. Allowing second medical
beyond the mere use of nicotine was mentioned and the only        use patents served to increase the possibilities of someone
effect of this use remained the known therapeutic effect.         undertaking the necessary research.
6.2.1.        Formulation of claims
                                                                  For these reasons, the board interpreted decision G 5/83 (OJ
  2001                                                            EPO 1985, 64) as allowing Swiss form claims directed to the
In T 4/98 (OJ EPO 2002, 139) the independent claims were          use of a composition for manufacturing a medicament for a
drawn up in the form of ”Swiss-type” claims. The board had        specified new and inventive therapeutic application, where
difficulties however in accepting the opposition division’s       the novelty of the application might lie only in the dose to be
opinion that these claims reflected in fact a second (further)    used or the manner of application.
medical use and that some particular features in the claims       6.2.3.         Novelty of the new therapeutic application –
constituted a specified therapeutic application from which                       difference in the prescribed regimen of two
novelty for the claims could be derived in accordance with
the principles of decision G 5/83 (OJ EPO 1985, 64). The
                                                                                 drugs
board held that in accordance with the principles in G 5/83         2001
and subsequent case law, the concept of second or further         In T 56/97 the alleged invention was based on the finding or
medical use can only be applied to claims to the use of           discovery that, by orally administering thiazide diuretics in a
substances or compositions for the preparation of a               certain dosage regimen or low unit dosage amount,
medicament intended for use in a method referred to in            antihypertensive activity could be achieved in patients
Article 52(4) EPC. It noted that the concept of ”therapy” or      without inducing effective diuresis. Claim 1 was in the
”therapeutic application” includes treatment of a particular      conventional ”second (further) medical use” format.
illness or disease with a specified chemical substance or
composition in a specified human or animal subject in need        The board could not agree with the opposition division’s view
of such treatment and that in the absence of the identification   that the patent in suit claimed an invention that was new in
of at least (i) the illness or disease to be treated or the       terms of Article 54 EPC as understood in decision G 5/83 or
ailment to be cured or (ii) the nature of the therapeutic         the case law developed by the boards of appeal in this
compound used for treating or curing the disease or (iii) the     respect. The board held that all that had been discovered
subject to be treated, a mere process feature could not be        was that, if thiazide diuretics were administered in sufficiently
construed as specifying a particular method of treatment or       low dosage units, their diuretic effect would be to a certain
therapeutic application within the meaning of Article 52(4)       extent less (see ”insufficient to achieve effective diuresis”) or
EPC (see Reasons, paragraphs 8.1 and 8.2). Thus the board         even possibly absent, while the antihypertensive activity
came to the conclusion that the subject- matter of the            remains. Even assuming that this was not known in the state
independent claims was accordingly to be understood as            of the art, it could only be regarded, in the board’s judgment,
relating to a non-therapeutic technical activity (process).       as an additional item of knowledge about the known
6.2.2.        Novelty of a therapeutical application              therapeutic application of thiazide diuretics for the treatment
                                                                  of hypertension to alleviate and cure the symptoms and
  2004                                                            complaints of hypertension in an human or animal subject in
In T 1020/03 the claims were directed to the use of insulin-      need of it, but could not in itself confer novelty on this known
like growth factor-I in the preparation of a medicament for       therapeutic application. For the acknowledgment of novelty,
administering to a mammal in a specific discontinuous             such a finding or discovery would be required to lead to a
administration pattern. Analysing decision G 5/83 (OJ EPO         specified new therapeutic application or purpose. That not
1985, 64) the board found that any use to which Article 52(4),    being the case here, the board could not see how claim 1
first sentence, EPC applied in circumstances where the            could be construed as relating to a second or further medical
composition had already been suggested for some

                                              Page 26 of 154
use. The above considerations led to the question whether or         suit. However, the board pointed out that the reasoning of G
not claim 1 was compatible with Article 52(4) EPC.                   2/88 (OJ EPO 1990, 93) did not apply as claim 1 was not
                                                                     directed to the new use of a known compound, but to the use
The board held that determination of the best individual             of a known compound in the manufacture of an agent. This
treatment schedule, in particular the prescribing and                kind of claim was considered by the Enlarged Board of
modification of drug dosage regimens used for administering          Appeal in decision G 5/83 to be notionally novel for the
a particular medicament, so as to comply with the specific           special case only where the intended purpose of the
needs of a patient and to achieve the desired result of the          manufacture of the agent was for this agent then to be used
treatment in an individual patient, calls first and foremost for     for the treatment of the human or animal body by surgery or
the exercise by a medical practitioner of his professional skill     therapy or in a diagnostic method.
in curing, preventing or alleviating the symptoms of suffering       6.3.2.          New use functional feature in a known
and illness. Such activities are typical of the noncommercial
                                                                                     process
and non-industrial medical activities which Article 52(4) EPC
intends should remain free from restraint. The board noted it             2005
had difficulty in seeing claim 1 as more than an unsuccessful        In T 1049/99 the board took the view that the criteria set out
attempt to obtain protection for a method of therapeutic             in decisions G 2/88 and G 6/88 (OJ EPO 1990, 93 and 114)
treatment of the human or animal body by couching it in the          could not simply be transferred to process claims. The board
form of a ”Swiss-type claim” (see also decision T 317/95 of          pointed out that, according to those decisions, a new
26 February 1999, not published in OJ EPO).                          purpose related to a new technical effect could render novel
6.3          Second (further) non-medical use                        the claimed use of a product already known, even though the
                                                                     means of realisation making it possible to achieve the new
   2004                                                              purpose was identical to the known means of realisation,
In T 977/02 the claim in suit was directed not to a device per       given that a use claim in reality defined the use of a particular
se but to use of a specific component (an electric machine           physical entity to achieve an effect. The board distinguished
carcase) to attain a technical effect (to facilitate the recycling   this situation from that of a process claim which defined the
of the electric machine). The board observed that, in this           use of a particular physical entity to achieve a product and,
regard, the situation was similar to those considered in G           therefore, fell within the scope of Article 64(2) EPC. An
2/88 (OJ EPO 1990, 93) and G 6/88 (OJ EPO 1990, 114).                extension of the criteria set out in the decisions of the
These decisions had indicated that the attaining of this             Enlarged Board referred to above would result in protection
technical effect should be considered a functional technical         of a product obtained by a process already known on the
feature. Applying G 2/88 and G 6/88, therefore, the board            basis of the new effect discovered in the process itself, even
held that a claim to the use of a component having a specific        though that process was identical to that already known (see
property (material that can be crushed into fragments) for a         also p. 26 and 48).
specific purpose (to facilitate the recycling of an electric
machine) stated in the said claim and based on a technical           In T 1092/01 the claimed subject-matter consisted of a
effect described in the patent (flow of the material that can be     process with technical features encompassing those
crushed into fragments through the turns of the winding              disclosed in prior art documents D2 and D3, but which was
during recycling) should be interpreted as comprising a              applied for a use not disclosed in these documents
functional technical feature by virtue of that technical effect.     (isolmerization of lutein to zeaxanthin). In more general
According to the board, this was still valid when, as in the         terms, claim 1 related to a known process with which a
present case, the technical effect was attained only in special      previously unknown technical effect was achieved (yet which
circumstances (when the electric machine was recycled).              might have inherently taken place in the course of carrying
The board also held that the choice of the specific material         the process). The board applied the rationale of G 2/88 (OJ
for manufacture of the carcase covered by the use defined            EPO 1990, 93) where the claim related to the use of a known
by the claim in suit constituted a novel selection.                  compound which was based on a previously unknown
6.3.1.         Novelty of a Swiss-type claim                         technical effect of the known compound. Thus, according to
                                                                     the board, the question was whether novelty could rely on a
   2005                                                              new effect which was brought about by known means.
In T 292/04, claim 1 of the patent referred to the use of a
haloperoxidase in the manufacture of an antimicrobiological          The board concluded from G 2/88 that, if the newly
agent and was drawn up in the form of a Swiss-type claim.            discovered effect led the skilled person to a new activity
The agent was intended for use in methods which are                  which was not connected with the known means before, such
referred to in Article 52(4) EPC, but also in methods not            an effect could confer novelty on a claim which was directed
referred to in this article. One such use was its application as     to the new activity, ie a use or a process. If this was not so,
a contact lens formulation. The board emphasised that, in            novelty could not be acknowledged.
accordance with the principles of decision G 5/83 (OJ EPO
1985, 64), claim 1, as far as it referred to the use of a
haloperoxidase in the manufacture of an antimicrobial agent
                                                                                 D. Inventive step
for use in a method falling outside the provisions of Article
52(4) EPC could not derive novelty and inventive step from           1.           Treatment of non-technical aspects
the allegedly newly discovered technical effect of selectively
killing pathogenic bacteria. Rather the claim, which was not
                                                                          2003
restricted to a therapeutic use of the manufactured agent,           Some decisions (especially from Electricity Board 3.5.1) have
had to be understood as referring to a process for the               developed principles as to how to apply the problem and
manufacture of a liquid antimicrobial agent. The appellants          solution approach when the invention consists of a mixture of
had argued that the prior art documents did not disclose this        technical and non-technical features.
newly discovered technical effect described in the patent in

                                                Page 27 of 154
According to Article 56 EPC, an invention is to be considered       2.          Problem and solution approach
to involve an inventive step if, having regard to the state of
the art, it is not obvious to a person skilled in the art. In T          2005
1177/97 the board held that this legal definition of inventive      According to the boards’ case law, although the problem and
step was usually applied by using the problem and solution          solution approach is not mandatory, its correct application
approach, which required analysis of the invention in terms of      facilitates the objective assessment of inventive step. The
a technical solution to a technical problem. Since both the         correct use of the problem and solution approach rules out
solution and the problem solved by an invention had to be of        an ex post facto analysis which inadmissibly makes use of
a technical nature, the problem and solution approach might         knowledge of the invention (T 564/89, T 645/92, T 795/93, T
raise questions when the invention comprised non-technical          730/96 and T 631/00).
aspects or elements. Such difficulties were to be resolved by            2002
taking due care to define the technical field to which the          The board in T 967/97 offered fundamental observations on
invention belonged, the scope of technical expertise and            the ”problem and solution approach”, saying that it was
skills expected to be applied by the technical person in that       essentially based on actual knowledge of technical problems
particular technical field, and the correct formulation of the      and ways to solve them technically that the skilled person
technical problem actually solved. In T 641/00 (OJ EPO              would, at the priority date, be expected to possess
2003, 352) the same board had already held that an                  objectively, ie without being aware of the patent application
invention consisting of a mixture of technical and non-             and the invention that it concerned.
technical features and having technical character as a whole
was to be assessed with respect to the requirement of               If the skilled person had a choice of several workable
inventive step by taking account of all those features which        solutions that might suggest the invention, the rationale of
contributed to that technical character. Features of the            the problem and solution approach required that the
invention which did not form part of the technical solution to      invention be assessed relative to all these possible solutions
the technical problem had to be disregarded in the                  before any decision confirming inventive step was taken.
assessment of inventive step.
                                                                    To deny inventive step, no special grounds had to be given
Information and methods related to linguistics may thus in          for a preselection of prior-art citations, even if several
principle assume technical character if they are used in a          workable solutions were available to the skilled person; the
computer system and form part of a technical problem                statement of grounds merely served to show that the
solution. Features or aspects of the claimed method which           invention was obvious to the skilled person from the prior art
reflect only peculiarities of the field of linguistics, however,    in relation to (at least) one of these solutions.
must be ignored in assessing inventive step.
                                                                    3.          Assessment of technical effect
In the case in point, the technical differences which
established the novelty of the claimed process were not                  2002
inventive since they originated from a nontechnical constraint      In T 258/97 the invention related to an image communication
to the technical problem, the implementation of which was           apparatus. The claimed subject-matter differed from the prior
obvious (see also I.A.1.1).                                         art in that the apparatus comprised ”setting means,
                                                                    responsive to an input from a user or from service personnel,
In T 244/00 the appeal concerned a remote-control                   to set a predetermined number of destinations per group” for
apparatus in the field of audio-visual systems. The invention       defining the dialling and redialling scheme, and ”control
was distinguished from the prior art system only in that at         means” for executing the specific dialling and redialling
least four switches (of the cursor key) were operable in single     process. Inherent in these features were an abstract
or pair wise action in at least six directions and allowed direct   algorithm for manually defining a scheme for looping through
cursor jumps along slanting lines in diagonal directions. The       a group of numbers and its technical implementation by
board stated that the graphic design of menus was, as a rule,       means of the setting and control means.
not a technical aspect of a menu-driven control system. Nor
was the practical use of such menus genuinely a problem             Referring to T 27/97, the Board stated that an abstract
with which the skilled person, in his function as a technical       algorithm was relevant to inventive step only if a technical
expert, was confronted. For the purpose of the problem and          effect could be established which was causally linked to the
solution approach, the problem had to be a technical problem        algorithm, such that the technical effect provided a
which the skilled person in the particular technical field might    contribution to the solution of a technical problem and
have been asked to solve at the priority date. The board            thereby conferred a ”technical character” on the algorithm.
therefore concluded that in the case at issue the technical
problem had to be formulated in a more limited way than on          In the case in point, changing the dialling and redialling
the basis of the alleged advantages of moving a cursor              sequence by manually setting the number of destinations per
diagonally over the TV screen. The actual technical problem         group physically changed the operation of the apparatus and
resided in providing an appropriate cursor key enabling the         thus indisputably caused a physical effect. It was doubtful,
user to move the cursor in six or more such directions (see         however, whether changing the sequence had any technical
also I.A.1).                                                        effect, ie a physical effect which was purposively used in the
                                                                    solution of a technical problem. The board held that the
In T 1121/02 another board of appeal (Mechanics Board               assessment of inventive step could only be based on the
3.2.4) referred to T 931/95 (OJ EPO 2001, 441) and T                elements and aspects of the invention in respect of which a
641/00 (OJ EPO 2003, 352) and confirmed that features               technical effect could be established. Whether an invention
making no contribution to technical character could not             caused a technical effect was essentially a question of fact.
support the presence of an inventive step.                          While the EPO had a duty to determine such facts in
                                                                    examination proceedings, the onus was upon the applicant to

                                                 Page 28 of 154
co-operate in determining them, in particular in the event of          promising and appropriate starting point for the assessment
doubt. The invention as claimed was not patentable for lack            of inventive step.
of inventive step.
                                                                       In T 1019/99 the board noted that any document that is state
4.          Closest prior art                                          of the art under Article 54(2) EPC may be a candidate for the
                                                                       closest prior art; the state of the art is everything made
4.1          Determination of closest prior art                        available to the public. The jurisprudence acknowledges,
   2002                                                                however, some cases where a document may not be a
In T 835/00 the board referred to T 686/91, according to               realistic starting point because it either relates to outdated
which a prior art disclosure not mentioning a technical                technology, and/or is associated with such well-known
problem which was at least related to that derivable from the          disadvantages that the skilled person would not even
patent in suit did not normally qualify as the closest prior art,      consider trying to improve on it. In the present case, the
however many technical features it had in common with the              appellant argued additionally that the document did not
claimed subjectmatter. In the case before the board,                   receive any attention after its publication.
document 1, which the opposition division considered the
closest prior art, did not mention any of the problem aspects          The board did not judge that a document, published only five
addressed by the claimed invention. As a consequence, a                years before the priority date of the patent, in any way
technical problem was created which was unrelated to the               represented outdated technology, even in a fast-moving area
actual disclosure of D1 but whose solution was then found to           such as digital image processing. Concerning the status of
be obvious in the light of the disclosure of D2.                       the document as an isolated document, the board agreed
                                                                       with the respondent that there may be various unknown
In the board’s judgment, it was a fatal defect that a prior art        technical or economic reasons preventing an otherwise
disclosure from which no relevant technical problem could be           promising approach from being adopted rapidly after its early
formulated without inappropriate hindsight had been chosen             publication. However, a period of five years does not appear
as a starting point for the application of the problem and             to be excessive, in particular taking into account the time
solution approach, because without such hindsight any                  needed actually to implement and evaluate the prior-art
attempt to establish a logical chain of considerations which           teaching.
might lead to the claimed invention inevitably ran into                4.4          Assessment of the disclosure of the closest
difficulties at the start, for want of a relevant identifiable goal                 prior art
or object. If the relevant problem was not derivable from the
alleged closest prior art, the measures for its solution were a          2004
fortiori not derivable. In other words, the invention was not          In T 970/00 the board stated that in the assessment of
obvious in the light of such art.                                      inventive step according to the problem-solution approach
                                                                       knowledge of the invention and its effects is not only
4.2           Process claims
                                                                       inevitable by the very nature of the assessment, but also
   2005                                                                necessary, in particular when proceeding to the identification
In T 1285/01 the board commented on the issue of                       of the closest prior art and to the determination of the
ascertaining the closest prior art for process claims.                 technical contribution achieved by the invention over the prior
Referring to the case law (T 641/89, T 20/94 and T 713/97), it         art. However, as repeatedly stressed by the boards of
pointed out that in the case of inventions concerning a                appeal, the primary purpose of the problem-solution
special process for use with a particular chemical substance           approach is the objective assessment of inventive step and
having necessarily specific characteristics, determining the           consequently any ex post facto analysis, and in particular
closest prior art must involve above all considering only              any conclusion going beyond what the skilled person would
those documents which described a generically                          have objectively inferred, without the benefit of hindsight
corresponding process for using precisely this particular              knowledge of the invention, from the prior art is of necessity
chemical substance with its specific characteristics. This             at variance with a proper application of the problem solution
accurately and objectively reflected the actual situation in           approach. This applies also to the determination of the
which the skilled person found himself on the priority date of         technical contribution of the invention to the prior art.
the contested patent.                                                  Accordingly, the determination of the technical contribution
                                                                       achieved by the invention over the closest state of the art
4.3           Selection of most promising starting point               requires an objective and technically meaningful and
   2004                                                                consistent comparison of the claimed combination of
In T 211/01 the board confirmed the established case law               structural and functional features with the technical
that the starting point for the assessment of inventive step           information conveyed to the skilled person by the closest
should be one which is at least "promising", in the sense that         state of the art.
there was some probability of a skilled person arriving at the
claimed invention. It stated that quite apart from the fact that       Any attempt to interpret the disclosure of the closest prior art
a skilled person would normally not consider an obviously              so as to distort or misrepresent, based on hindsight
defective disclosure at all, it would be in particular artificial to   knowledge of the invention, the proper technical teaching of
select such defective disclosure as a starting point for               the disclosure in such a way that it artificially meets specific
evaluating inventive step, when there exists other prior art           features recited in the claim under consideration must
which is not doubted with regard to its disclosure but is also         therefore fail, especially as this would risk unfairly and
directed to the same purpose or effect as the patent in suit.          tendentiously concealing the technical contribution of the
                                                                       invention and prejudice the subsequent objective
Thus, a document which is obviously defective as would be              determination of the technical problem solved by the claimed
readily recognised by those skilled in the art when trying to          invention.
reproduce its disclosure cannot be taken as the most                   4.5          Old prior art documents as closest prior art

                                                  Page 29 of 154
     2002                                                          modification, which had therefore to be regarded as an
In T 113/00 the board pointed out that even old prior art          obvious measure to solve the stated problem.
could be grounds for an inventive step objection, as the state     5.1          Treatment of non-technical aspects
of the art comprised ”everything made available to the public
... before the date of filing”. Subject-matter previously             2002
published in identical form could not be patented, even if         In T 641/00 (OJ EPO 2003, 352) the patent in suit related to
resurrecting known matter constituted a surprise at the date       a method in a digital mobile telephone system of the GSM
of filing. The same applied to subject-matter that, seen           type in which a subscriber identity module (SIM card) was
objectively, was derived from known matter by obvious              allocated at least two identities which were selectively
modifications. Resurrecting very old teaching (in the present      activated by the user in order to distribute the costs between
case 31 years old) with an obvious modification did not make       private and service calls.
known subject-matter inventive.
                                                                   The board held that an invention consisting of a mixture of
In the further decision T 479/00, however, the board did not       technical and non-technical features and having technical
regard a 65-year-old document as a realistic starting point for    character as a whole was to be assessed with respect to the
the evaluation of inventive step. The issue of inventive step      requirement of inventive step by only taking account of those
should be considered from the point of view of the skilled         features which contributed to that technical character.
person at the priority date of the patent. It was unrealistic to   Features making no such contribution could not support the
assume that, without hindsight, somebody of average skill in       presence of inventive step. The board referred to T 158/97,
the art of colouring ceramic articles in 1994 would have had       where a modification of a known device not related to any
the intention to improve a technique which had not received        technical function was held incapable of contributing to
any attention during the previous 65 years. Furthermore, the       inventive step (see also T 72/95, T 157/97 and T 176/97). In
teaching of this document published in 1929 had never been         T 27/97 the board (in a different composition), in assessing
put into practice on a commercial scale.                           inventive step, had disregarded a feature distinguishing the
                                                                   claimed subject-matter from the prior art for lack of any
                                                                   established technical effect causally related to that feature.
5.          Technical problem
     2005                                                          Furthermore, the board considered the formulation of the
In T 1329/04 the board stated that the definition of an            technical problem in a case where an invention consisted of
invention as being a contribution to the art, ie as solving a      a mixture of technical and non-technical features. Although
technical problem and not merely presenting one, required          the technical problem to be solved should not be formulated
that it be at least made plausible by the disclosure in the        to contain pointers to the solution or partially anticipate it, the
application that its teaching did indeed solve the problem it      board was of the opinion that this principle applied only to
purported to solve. Therefore, even if supplementary post-         those aspects of the subjectmatter claimed which contributed
published evidence might in the proper circumstances also          to the technical character of the invention and hence were
be taken into consideration, it could not serve as the sole        part of the technical solution. The mere fact that a feature
basis for establishing that the application did indeed solve       appeared in the claim did not automatically exclude it from
the problem it purported to solve. In T 1306/04 the board          appearing in the formulation of the problem. Where the claim
confirmed decision T 1329/04 relating to the unsuitability,        referred to an aim to be achieved in a non-technical field, that
when assessing inventive step, of taking postpublished             aim could legitimately appear in the formulation of the
documents into consideration if the effect taught in these         problem that was to be solved, in particular as a constraint
documents was not at least made plausible in the patent            that had to be met.
application per se.
     2004                                                          The board referred to its decision T 1053/98, where it
                                                                   considered it necessary to formulate the technical problem in
In T 357/02 the disputed patent related to a process for
                                                                   such a way that there was no possibility of an inventive step
transitioning between incompatible polymerisation catalysts.
                                                                   being involved by purely nontechnical features. Such a
The technical problem had to be reformulated in a less
                                                                   formulation of the problem could refer to the non-technical
ambitious manner and could be seen in the provision of an
                                                                   aspect of the invention as a given framework within which the
alternative method for the transition between two processes
                                                                   technical problem was posed. Similarly, in T 931/95 the
using two different catalysts, incompatible with each other.
                                                                   board had proceeded on the assumption that the skilled
The solution found differed from the closest prior art (D1)
                                                                   person had knowledge of the non-technical method so that
only in that a Ti, Zr or Hf metallocene was used as a second
                                                                   only the technical aspects of the apparatus were taken into
catalyst.
                                                                   account in assessing inventive step.
The board stated that it followed from the minimalist
                                                                   In the present case (T 641/00), the object of the invention as
character of the technical problem objectively arising from
                                                                   stated in the patent specification was to eliminate
the closest prior art, which can only be formulated as a
                                                                   inconvenience caused by distributing costs for service and
modification of that state of the art (modification of the
                                                                   private calls or among different users. That object had to be
transition process of D1), regardless of a success or failure
                                                                   reformulated to arrive at the technical problem of
of the measures applied, that almost any modification of the       implementing the GSM system in such a way as to allow
latter process might be regarded as a feasible alternative by
                                                                   user selectable discrimination between calls for different
the person skilled in the relevant art, and therefore obvious,
                                                                   purposes or by different users.
since each corresponding solution would be equally useful
(or useless).                                                      5.2          Alleged advantages
                                                                   According to the boards’ case law, alleged advantages to
In the board’s view, merely using Ti, Zr or Hf metallocene as      which the patentee/applicant merely refers, without offering
the second catalyst, amounted to no more than such a

                                               Page 30 of 154
sufficient evidence to support the comparison with the           improvement had to be disregarded in defining the technical
closest prior art, cannot be taken into consideration in         problem underlying the claimed invention. Therefore,
determining the problem underlying the invention and             reformulation of the technical problem in less ambitious
therefore in assessing inventive step (see T 20/81, OJ EPO       terms was necessary (see also II.B.1.2.1).
1982, 217, T 181/82, OJ EPO 1984, 401, T 124/84, T                  2002
152/93, T 912/94, T 284/96, T 325/97, T 1051/97).                Under board of appeal case law, the definition of the
                                                                 technical problem to be solved should normally start from the
In T 355/97 the patent in suit related to an improved            technical problem actually described in the patent in suit in
hydrogenation process for preparing 4-aminophenol. The           relation to the closest prior art indicated there. It is not
stated technical problem was to improve the performance          appropriate to consider another problem which objectively
index of the preparation process without loss of selectivity.    existed unless it transpires that an incorrect state of the art
But the patent proprietor failed to show that the invention      was used or that the technical problem disclosed has in fact
actually achieved any such improvement. Citing the above         not been solved or has not been correctly defined for some
case law, the board held that in the absence of sufficient       reason (T 495/91, T 881/92).
evidence of the alleged advantages, the technical problem
had to be reformulated. Objectively, it could only be seen as    In T 400/98 the technical problem addressed in the patent in
providing a further method for preparing 4-aminophenol.          suit had to be reformulated because the technical problem
5.3          Reformulation of the problem                        described in the patent in suit had not been credibly solved.
  2003
In T 1188/00 the problem as reformulated by the patent
                                                                 6.          Skilled person
proprietor had not been accepted as a basis for assessing        6.1          Definition of the skilled person
inventive step because the proprietor had not provided
credible evidence that this problem, being more ambitious
                                                                    2003
than the original version, had been solved in respect of all     The identification of the skilled person needs careful
the claimed subject-matter and thus constituted a problem        consideration. He will be an expert in a technical field. If the
applicable to all such subject-matter.                           technical problem concerns a computer implementation of a
                                                                 business, actuarial or accountancy system, he will be
The board found that the requirement that a problem should       someone skilled in data processing, and not merely a
be applicable to the whole scope of the claim arose partly       businessman, actuary or accountant (T 641/00, OJ EPO
from the cause-and-effect relationship between the problem       2003, 352).
underlying an invention and its solution and partly from the
principle that claimed subject-matter could be said to involve   In T 493/01 the invention related to a protective antigen
an inventive step based on a specific technical effect only if   potentially useful in a vaccine against whooping cough. In T
that effect could be achieved across the whole scope of the      455/91 (OJ EPO 1995, 684) the skilled person in the field of
claim. Only so could sufficient account be taken of the          biotechnology had already been defined as being cautious
generally accepted legal principle that the extent of the        and conservative. The board said this did not mean he would
patent monopoly should correspond to and be justified by the     refrain from considering information because it did not
technical contribution to the art (T 939/92, OJ EPO 1996,        concern the mainstream of research in his field of
309; T 409/91, OJ EPO 1994, 653; and T 435/91, OJ EPO            specialisation or because it applied only to some parts of the
1995, 188).                                                      world. His skill and knowledge were not geographically
                                                                 limited; in fact he would have a global point of view. Thus if,
Hence a reformulation relating to an effect first alleged in     as in the case in point, a pathogen constituted a known
appeal proceedings (a more ambitious problem) could not be       threat in some restricted parts of the world, the skilled person
used to substantiate inventive step unless it was made           would not refrain from taking prior knowledge about that
credible that the alleged effect could be achieved across the    pathogen into consideration or from using it as a basis for his
whole scope of the claim. The burden of proof for this lay       activities.
with the proprietor.                                                2002
                                                                 With regard to the definition of the skilled person, the board
In T 134/00 the alleged technical problem lay in the             in T 26/98 summarised the following principles which are
achievement of an unexpected improvement based on a              generally applied by the boards of appeal:
synergistic effect by the use of a component which was
known to have no effect by itself. The board found that in       – if the problem prompts the skilled person to seek its
these circumstances the required supporting evidence             solution in another technical field, the specialist in that field is
should have been so comprehensive that the data shown in         the person qualified to solve the problem
such evidence could be reasonably extrapolated across the
whole scope of the claim. Instead, the available experimental    – the skilled person can be expected to look for suggestions
evidence supported the presence of an effect only for a          in neighbouring fields if the same or similar problems arise in
specific combination and not for all the possible combinations   such fields
of components encompassed by claim 1. The appellant had
moreover simply submitted that it was its belief that the same   – the skilled person can be expected to look for suggestions
effect would be achieved with the other embodiments              in a general technical field if he is aware of such fields
covered by claim 1. The board held that such an
unsupported statement could not discharge the appellant          – in advanced technical fields the competent ”skilled person”
from its burden of proving that the effect used to define the    could be taken to be a team of experts from the relevant
underlying technical problem was displayed by all claimed        technical branches
compositions. The board concluded that the alleged

                                              Page 31 of 154
– solutions of general technical problems in non-specific            while remaining non-toxic to cells, it is enough to perform
(general) fields are considered to be part of the general            well-known, routinely carried-out in vitro tests of viral
technical knowledge.                                                 infectivity; so it is rather a ”try and see” approach which
                                                                     applies.
In the present case, the board did not consider the field of
electrochemical generators to be a neighbouring field of             8.         Proof of inventive step
iontophoresis because, though both fields relied on
electrochemical processes, such processes had substantially          8.1         Treatment of non-technical aspects
different purposes and applications and, consequently, had             2004
to satisfy different requirements.                                   During the year under review, several decisions by the
6.2          Relevant content of a patent publication                boards of appeal, especially Technical Board of Appeal
                                                                     3.5.1, were concerned with the assessment of inventive step
     2003                                                            in cases where the invention consists of a mix of technical
In T 632/02 the board held that when considering inventive           and non-technical features. Only a few of these decisions will
step, the relevant content of a patent publication had to be         be discussed here. Further remarks on the treatment of non-
assessed from the point of view of the skilled person seeking        technical aspects can be found inter alia in T 214/01 (in
to solve the technical problem as defined vis-_-vis the closest      relation to the problem- solution approach), T 113/02 and T
prior art, at the filing date of the European patent in suit,        172/03 (the term "state of the art" in Article 54 EPC should
irrespective of the point of view of the author or drafter of that   be understood as "state of technology").
patent publication. Consequently, what was within the main
claim of that patent publication did not take precedence over        In T 258/03 (OJ EPO 2004, 575), the board followed T
the disclosure in the description.                                   641/00 (OJ EPO 2003, 352) and held, with respect to the
                                                                     requirement of an inventive step, that the invention is to be
The board stated that this conclusion was also in line with the      assessed by taking account only of those features which
case law of the boards of appeal. In T 4/83 (OJ EPO 1983,            contribute to a technical character. The overall aim of the
498) the board had stated that any information in a patent           claimed method to identify the successful bidder for a
specification which conveyed a technical teaching to the             product offered for sale at an auction was not regarded as
skilled person belonged to the content of the disclosure,            having technical character by the board. The appellant had
irrespective of whether or not it fell within the scope of the       argued that the technical effect resided in overcoming the
claims or what purpose it served. Similarly, all the                 problem in the prior art of delays in propagation of
embodiments in a published patent specification which                information between the bidders and the server. The solution
offered a suggestion to the skilled person for solving the           to this problem consisted of adapting the known auction
problem he was confronted with had to be taken into                  method such that it could be performed automatically. The
consideration, even where those embodiments were not                 board concluded that method steps consisting of
particularly emphasised (T 24/81, OJ EPO1983, 133).                  modifications to a business scheme (the rules of the auction)
                                                                     aimed at circumventing a technical problem rather than
7.          Expectation of success, especially in genetic            solving it by technical means cannot contribute to the
            engineering or biotechnology cases                       technical character of the subjectmatter claimed. The
                                                                     invention was regarded by the board as a mere automation
     2002                                                            of the non-technical activity of performing a Dutch auction in
In T 111/00 the board did not adopt the ”reasonable                  the absence of bidders and thus as limited to instructing the
expectation of success” approach as developed in board of            server computer to apply the given conditions and perform
appeal case law starting from T 296/93 (OJ EPO 1995, 627).           any necessary calculations. This was considered by the
It noted that this approach was intended to take into account        board to be routine programming well within the reach of the
the complexity inherent in some recombinant DNA                      skilled person.
techniques, which might jeopardise the final outcome of
experiments making use of them. In the present case, the             In T 643/00 Board of Appeal 3.5.1 applied the problem and
skilled person would have considered the cloning of human            solution approach according to which an invention is to be
cDNA as a matter of routine since the necessary probe was            understood as a technical solution to a technical problem,
available from document 1 and no problems were                       assessed by the person skilled in the relevant field of
encountered.                                                         technology in the light of the prior art (T 641/00, OJ EPO
     2001                                                            2003, 352).
In several decisions in the field of genetic engineering the
board asked whether in the cases in point it was obvious for         The objective technical problem solved was seen in providing
the skilled person to try a suggested approach, route or             a technical tool for efficient search, retrieval and evaluation of
method with a reasonable expectation of success. In T                images stored in an image processing apparatus. The board
296/93 (OJ EPO 1995, 627) the board added that inventive             stated that it is true that non-technical aspects might be
step is not denied on the sole basis that a project is obvious       found in the design and the use of an interface through which
to try but rather in cases where there is a reasonable               the user interacts with a system (T 244/00). Presenting
expectation of success that the said project can be put into         information through user interface, if the only relevant effect
practice. In T 91/98 this approach to inventive step did not         of the presentation relates to the visually attractive nature of
apply. The board stated that the rationale behind this               the graphic design or artwork, does not have technical
approach is that one may easily conceive of inventions to be         character.
made by genetic engineering, yet realising them may cause
problems in view of difficulties known or experienced when           However, an arrangement of menu items (or images) on a
starting the project. Here, to find out whether derivatives of       screen may be determined by technical considerations. Such
azidothymidine have an activity against human retroviruses           considerations may aim at enabling the user to manage a

                                                Page 32 of 154
technical task, such as searching and retrieving images           EPC (T 931/95, OJ EPO 2001, 441; T 914/02). In T 914/02
stored in an image processing apparatus, in a more efficient      the board stated that the involvement of technical
or faster manner, even if an evaluation by the user on a          considerations was not sufficient for a method which might
mental level is involved. Although such evaluation per se         exclusively be carried out mentally to have technical
does not fall within the meaning of "invention" pursuant to       character.
Article 52 EPC, the mere fact that mental activities are
involved does not necessarily qualify subjectmatter as non-       In T 388/04 (OJ EPO 2006, ***), Board of Appeal 3.5.02 held
technical since any technical solutions in the end aim at         that the extent to which subject-matter or activities were
providing tools which serve, assist or replace human              excluded from patentability under
activities of different kinds, including mental ones.
                                                                  Article 52(2) and (3) EPC was notionally distinct from, and
In T 531/03 the patent in suit related to a system for            could be considered independently of the question of
generating a printed discount certificate in a retail store.      inventive step.
Technical Board of Appeal 3.4.3 confirmed the principles set
                                                                  8.1.2.         Identifying technical features
out in T 641/00 and stated that, in the assessment of
inventive step, features relating to a non-invention within the     2005
meaning of Article 52(2) EPC (so-called "non-technical            In T 531/03, the patent in suit related to a system for
features") cannot support the presence of inventive step. The     generating a printed discount certificate in a retail store.
patentee argued that the present invention required a             Technical Board of Appeal 3.4.03 confirmed T 641/00 (OJ
combination of a technical and a non-technical inventive          EPO 2003, 352) and stated that, in the assessment of
step, and the skilled persons would therefore consist of a        inventive step, features relating to a non-invention within the
team of a "non-technical person" plus a technical person.         meaning of Article 52(2) EPC ("non-technical features") could
The board rejected this approach and stated that an attempt       not support the presence of inventive step. The patentee
to take into account the contribution of non-technical and        submitted that the invention at issue required a combination
technical aspects on an equal footing in the assessment of        of a technical and a non-technical inventive step, and that the
inventive step would not be in conformity with the EPC, since     skilled persons would therefore consist of a team of a
the presence of inventive step would in such an approach be       "nontechnical person" plus a technical person. The board
attributed to features which are defined in the EPC as not        rejected this approach and stated that an attempt to take into
being an invention.                                               account the contribution of non-technical and technical
                                                                  aspects on an equal footing in the assessment of inventive
In T 951/02 claim 1 of the application related to a combined      step would not be in conformity with the EPC, since the
games and gambling device. The device differed from the           presence of inventive step would in such an approach be
closest prior art only in that a games system and a gambling      attributed to features which are defined in the EPC as not
system were able to be operated simultaneously, whereas           being an invention.
only gambling systems were offered with the known device in
document 3.                                                       In T 1001/02 the characterising feature principally involved a
                                                                  design element intended to harmonise and enhance the
The board held that, according to the statement of the            appearance of the whole radiator. The board consequently
problem in the application, the aim of the invention was to       took the view that this feature could not be regarded as
provide a games device offering a player particular               technical and therefore left it out of account in its assessment
inducements to play, thus preventing the player from starting     of inventive step.
to become bored. No objective technical problem was
identifiable in this wording, however. To arrive at the           In T 619/02 (OJ EPO 2007, ***) the main and the first
objective technical problem, the aforementioned nontechnical      auxiliary request did not constitute an invention within the
problem stated in the application had to be reformulated to       meaning of Article 52(1) EPC. The second auxiliary request
indicate the aim of achieving enhanced flexibility in terms of    defined a method of making a perfumed product comprising
the possible games systems of the known games device.             perfuming with an odour, the odour being selected following
                                                                  a procedure in which the (unperfumed) product itself or
The board held, however, that the replacement of one of the       alternatively other desired attribute was used as target.
existing gambling systems on the device known from                Board of Appeal 3.4.02 stated that the claim was directed to
document 3 by a games system did not involve an inventive         the manufacture of a perfumed product and required
step, since a device for gambling possesses per se all the        imparting the selected odour to the product, and hence
technical requirements for the operation of a game. The           defined a process or activity that was technical by its very
requisite modifications to the gambling device were therefore     nature and pertained to the general technical field of
limited to the adaptation of the control program to the new       perfumery. The board confirmed T 641/00 and T 172/03 that
games system. Such modifications to the control program of        the assessment of inventive step according to the problem
the device are within the scope of normal practice for an         and solution approach was fundamentally of a technical
expert and cannot therefore constitute an inventive step.         nature and accordingly the presence of an inventive step
8.1.1.        Technical character                                 could only be established on the basis of the technical
                                                                  aspects of both the distinguishing features of, and the effects
  2005                                                            achieved by the claimed invention over the closest state of
Some decisions by the boards of appeal were concerned             the art.
with the assessment of inventive step in cases where the
invention consisted of a mix of technical and non-technical       The board stated that the claimed method differed from the
features. Having technical character is an implicit               closest state of the art in that the odour had been selected
requirement of the EPC which an invention has to meet in          following a certain selection procedure. However, neither the
order to be an invention within the meaning of Article 52(1)      selection procedure nor the resulting selected odour were of

                                              Page 33 of 154
a technical nature. The board concluded that if, apart from a      schemes of information processing as set out for example in
possibly commercially promising but purely aesthetic or            the present method claims. Regarding the fact that the
emotional and therefore technically arbitrary effect, the          technical features of the apparatus claimed are functionally
distinguishing features of an invention over the closest state     defined by precisely those steps of information processing
of the art do not, in the context of the claimed invention,        which form part of the knowledge of the skilled person and
perform any technical function or achieve any technical            that the application of computer systems in the economic
effect, no specific objective problem of a technical nature can    sector has already been a general phenomenon at the
be considered to be solved by the invention (see also p. 17).      priority date (filing date) of the application, it must be
8.1.3.         Technical problem                                   concluded that the claimed subject-matter does not involve
                                                                   an inventive step (Article 56 EPC).
  2005                                                             8.3         Combination of documents
In T 125/04 the board cited T 244/00, stating that, in general,
the task of designing diagrams was non-technical. This was           2005
so even if the diagrams arguably conveyed information in a         In T 302/02 the board stated that if an invention consisted of
way which a viewer might intuitively regard as particularly        a new combination of features taken from different technical
appealing, lucid or logical.                                       areas, a discussion as to whether or not it was obvious would
                                                                   normally involve at least as many documents as technical
In T 49/04 the application related to a method and an              areas combined in it. The board adopted the approach taken
apparatus for enhancing the presentation of a text in a            in T 552/89 according to which a technical problem might be
natural language on a (computer) display. Technical Board of       made up of "individual problems". The number of individual
Appeal 3.4.03 followed T 643/00 rather than T 125/04               problems obviously depended on the degree of detail in the
(Technical Board of Appeal 3.5.01, albeit with a different         claim under consideration and the cited decision did not
composition) and stated that technical aspects could not be        suggest that beyond a certain number the presence of an
ruled out in the design and use of a graphic interface.            inventive step might be taken for granted. On the contrary, it
Furthermore, the presentation of natural language text on a        was considered obvious to try to solve the individual
display in a manner which improved readability, enabling           problems as long as the corresponding solutions were
users to perform their task more efficiently, related to how, ie   "merely aggregated together" in the claim.
by what physical arrangement of the text, cognitive content        8.4         Chemical inventions
was conveyed to the reader and could thus be considered as
contributing to a technical solution to a technical problem.         2003
                                                                   In T 588/99 the subject-matter of claim 1 was a liquid
In T 318/03 the invention related to a method for allocating       aqueous detergent composition comprising a protease and a
optimum operating parameters, in particular operating              peptide trifluorylmethyl ketone (PTK) acting as reversible
frequencies. The objective problem posed in the application        inhibitor for that protease. The technical problem to be solved
was to indicate a method for allocating radio frequencies in a     with respect to the state of the art was defined as that of
radio network having cells of differing sizes with a view to       providing other reversible protease inhibitors which were
reducing the extent to which signals are subject to                effective and suitable for use in an aqueous liquid detergent
interference from other transmitters’ signals. Technical Board     composition.
of Appeal 3.5.03 found that this was a technical problem. The
claimed method influenced the resulting physical radiation         The detergent compositions according to claim 1 differ from
field and thus solved the problem by technical means.              those of document 1 (D1) in that they contain other peptide
8.2          Mixture of technical and non-technical                type reversible inhibitors (PTRIs) than those disclosed in D1.
             features                                              D1 teaches explicitly that any microbial serine protease
                                                                   inhibitors may be used in these prior art detergent
  2001                                                             compositions. Therefore the board found that the disclosure
In T 931/95 (OJ EPO 2001, 441) the first auxiliary request         of this document per se made it obvious for the skilled
sought protection for an apparatus for controlling a pension       person to solve the posed technical problem by replacing the
benefits program and system. The board arrived at the              explicitly specified microbial serine protease inhibitors of
conclusion that although the subject-matter of the auxiliary       these prior art detergent compositions with any other
request might be considered to represent an invention within       compound known to be a PTRI of that enzyme. The
the meaning of Article 52(1) EPC, it did not involve an            disclosure of D1 expressly directed the skilled person to
inventive step. In the decision under appeal the closest prior     search for further known and suitable PTRIs among those
art was identified as the ”existing private pension plans” and     disclosed in publications precisely in the fields of
it was held that it would not be possible to understand from       biochemistry and medicine.
the application any technical problem or contribution
provided by the claimed subject-matter to the prior art. The       Thus, in the particular situation where a document explicitly
board confirmed that the improvement envisaged by the              defines any compound having a certain activity as a suitable
invention according to the application was an essentially          component of a detergent composition and urges the skilled
economic one, ie lay in the field of economy, which therefore      person to look for such compounds in publications of other
could not contribute to inventive step. The regime of              technical fields such as biochemistry and medicine, it
patentable subject-matter is only entered with programming         requires no inventive activity to solve the technical problem
of a computer system for carrying out the invention. The           of providing an alternative to the compositions disclosed in
assessment of inventive step has thus to be carried out from       such prior art by replacing the explicitly specified compounds
the point of view of a software developer or application           having the given activity with any other such compounds
programmer, as the appropriate person skilled in the art,          which may be found by exploring the other technical fields.
having the knowledge of the concept and structure of the           8.4.1.        Broad claims
improved pension benefits system and of the underlying

                                               Page 34 of 154
  2001                                                            In T 496/02 the board summarised the jurisprudence on
In T 942/98 the problem as per the application was the            comparative tests, which says that an effect demonstrated by
preparation of improved selective herbicides. According to        means of a comparative test can be regarded as an
the boards’ case law, a technical problem can be taken into       indication of inventive step; "the only tests suitable for this
account for assessing inventive step only if it can be            are those which are concerned with the structural closeness
regarded as successfully solved, ie if it is credible that        to the invention, because it is only here that the factor of
essentially all claimed compounds have the alleged improved       unexpectedness is to be sought" (T 181/82; OJ EPO 1984,
selective herbicidal effect (see T 939/92, OJ EPO 1996,           401). The onus of proof may be discharged by submitting
309).                                                             comparative tests with newly prepared variants of the closest
                                                                  state of the art making identical the features common with
This requirement reflects the generally accepted principle        the invention in order to have a variant lying closer to the
that the scope of the exclusive right conferred by a patent       invention so that the advantageous effect attributable to the
should correspond to, and be justified by, the technical          distinguishing features of the invention is thereby more
contribution it makes to the art. For that reason the board       clearly demonstrated. It may be necessary for this purpose to
could not agree with the applicant that in the present case he    modify the comparative elements in such a way that the
merely had to show an improved effect at the direct interface     newly prepared variant being compared with the subject-
between prior art and the application in order to demonstrate,    matter of the patent differs from the invention only in respect
without providing further details, that such an improvement       of this distinguishing feature (see T 35/85, T 197/86, OJ EPO
applied without qualification for the entire breadth of the       1989, 371, T 40/89).
claim. The appellant’s position, in the board’s view,
amounted to allowing the applicant to decide how broad a          According to T 1213/03 it is for the applicant/patentee to
claim could be, whether or not an improvement in the effect       furnish evidence of an improved effect of the subjectmatter of
of all the compounds claimed was actually credible.               a claim, which was asserted but not mentioned in the
                                                                  application as filed, in the whole of the claimed area vis-à-vis
8.5          Disclaimer                                           the closest prior art (see also T 355/97 and T 197/86). In the
  2003                                                            case in question, the comparative tests submitted failed to
In G 1/03 and G 2/03 (OJ EPO 2004, 413 and 448) the               prove that the bleaching effect had been optimised in the
Enlarged Board held that a disclaimer which was or became         whole of the claimed area.
relevant for the assessment of inventive step or sufficiency of     2003
disclosure added subject-matter contrary to Article 123(2)        In T 308/99 the claimed use was based on a thoroughly
EPC (see also II.B.1.2.1, III.A.1.2 and IV.2.1).                  obvious property of known substances. The slightly
8.6          Analogy process/Envisageable product                 enhanced effects associated with the claimed use in
                                                                  comparison with substances used in prior art emerged from
  2003                                                            obvious tests. The board confirmed the case law that
In T 803/01 the objective technical problem to be solved was      enhanced effects could not be adduced as evidence of
to be seen in the provision of a pharmaceutical composition       inventive step if they emerged from obvious tests (T 296/87,
which overcame the disadvantages of the prior art. This           OJ EPO 1990, 195).
problem was credibly solved by the provision of a                 8.8          Part-invention obvious – lack of unity
pharmaceutical composition in which one component, ie the
polylactide, had a desired degree of purity. The board held         2001
that the purity of a product would depend on the purification     In T 314/99 the three different embodiments which were
process for the product concerned, so that the assessment of      covered by claim 1 did not belong to the same single general
inventive step of a product defined in terms of its purity was    inventive concept (Article 82 EPC). According to G 1/91 (OJ
inseparably linked to the purification process itself. This       EPO 1992, 253) lack of unity is not an issue in opposition (or
applied even if the process characteristics were not features     opposition appeal) proceedings. In the case in point the
of the product claim.                                             board stated that the consequence of this conceptual lack of
                                                                  unity is that different aspects of the problem apply to the
The board referred to the similar situation described in T        three embodiments and that where conceptual non-unity
595/90 (OJ EPO 1994, 695), where the subject-matter of the        arises between different embodiments covered by a claim,
product claim had concerned only a known desideratum.             this may necessitate the formulation of corresponding partial
That decision had held that a product which could be              problems, the respective solutions of which must be
envisaged as such with all characteristics determining its        assessed separately for inventive step. With respect to the
identity together with its properties in use, ie an otherwise     requirements of Article 56 EPC the inventiveness of the
obvious entity, might nevertheless become non-obvious and         subject-matter of a claim must be denied as a whole in the
claimable as such if there was no known way or applicable         event that only one of its embodiments is obvious. Since
(analogy) method in the art to make it and if the claimed         embodiment 2 had been found to be obvious, it followed that
methods for its preparation were therefore the first to achieve   claim 1 did not meet the requirements of that Article.
this in an inventive manner. The board concluded that,            8.9          Examples of the recognition of inventive step
therefore, by analogy with T 595/90, the decisive question in
the case in point was whether the polylactide in the claimed        2003
degree of purity was achievable at the priority date of the       In T 785/99 the invention related to a substrate for a
application in suit or whether there was an obvious way           semiconductor device consisting of a layer of ceramic
leading to it. The conclusion was that the claimed subject-       material onto which a copper plate was directly bonded
matter involved an inventive step (see also I.B.4 and II.B.5).    (DBOC substrate). The problem to be solved related to
8.7          Comparative tests                                    improving the thermal conductance of the DBOC substrate.
                                                                  The board held that a skilled person would not consider
  2005                                                            replacing a pure alumina with zirconia-doped alumina (ZDA),

                                              Page 35 of 154
since ZDA had lower thermal conductivity than alumina. The          for the unobvious nature of the technical contribution to the
problem of improving the thermal conductance of the DBOC            art made by the claimed invention. If however the prizes
substrate was solved only when the skilled person                   were awarded for the product’s life-enhancing nature, or for
recognised that the increased mechanical strength of the            the appellants’ high standard of research, or for a high level
ZDA ceramic allowed for the reduction of the ceramic layer’s        of sales, then, for all that any of those reasons might well be
thickness.                                                          prize-worthy, the prizes could have no significance in the
                                                                    context of inventive step. The board concluded that the
Under the prevailing circumstances, it was not obvious to           evidence did not show that the "prizes and praises" had
recognise that a material property (here mechanical                 resulted from the claimed inventive step.
strength), which in itself was not directly related to the            2004
problem to be solved (improving thermal conductance), might         In T 779/02 the board indicated that a prejudice could be
lead to its solution.                                               proved by the fact that the closest prior art and the invention
                                                                    were separated by a long period of time (in this case over 16
9.         Denial of inventive step                                 years) during which the only solutions pursued led away from
9.1         Choice of one of several obvious solutions              the invention and only after which the solution provided by
                                                                    the invention became acceptable to experts in the field.
  2002                                                              10.2         Comparative tests
Applying one of the possible solutions which were available
to the skilled person requires no particular skills and hence         2004
does not involve an inventive step (T 400/98).                      In T 702/99 the board stated that in cases concerning
9.2          Several obvious steps                                  products such as cosmetics, in which applicants or patentees
                                                                    seek to establish that their inventions have an improved
  2002                                                              "feel" over the prior art, or opponents seek to deny such an
If the technical problem that the skilled person has set            improved "feel", it is common for one or more parties to file
himself to solve brings him to the solution step by step, with      evidence of comparative tests conducted by a number of
each individual step being obvious to him in terms of what he       persons. It is essential for such tests to be made under
has achieved so far and what remains for him to do, the             conditions which ensure maximum objectivity on the part of
solution is obvious to the skilled person on the basis of the       those conducting the tests and who may be required at a
prior art, even if two or more such steps are required, and it      later date to give evidence in proceedings. Such tests are
does not involve an inventive step (T 623/97).                      often carried out by employees of a party. The use of
                                                                    employees may not be objectionable per se as long as the
10.        Secondary indicia in determining inventive               test conditions are designed to ensure that the employees
           step                                                     are not biased by prior knowledge of either the products
                                                                    under test or of their employer’s expectation of the result of
  2002                                                              their tests. It is always desirable that such tests can be
In T 915/00 the board held that commercial implementation,          shown to be "blind" and that they have been conducted in the
licensing and the recognition of the inventor’s merits by the       strictest conditions; that the testers have had no part in the
scientific community constituted further convincing secondary       making of the claimed invention or research leading up to the
indicia for the presence of inventive step.                         invention or the patenting procedure.
10.1         Prejudice in the art
                                                                    The presentation of such evidence must also be accurate but
  2005                                                              the format of the presentation is of secondary importance – a
In T 1212/01 the patent related to pyrazolopyrimidinones for        carefully prepared report and/or table may convey as much
the treatment of impotence (Viagra). The patentee referred to       information as a large number of statements from the testers.
some thirty scientific articles to demonstrate the existence of
a technical prejudice whereby drugs which lowered blood
pressure were a cause of impotence rather than a form of
treatment for that condition. The board, however, stated that                E. The requirement of industrial
the contents of such a selection from the prior art could not                applicability under Article 57 EPC
be considered per se as creating a technical prejudice
against oral treatment of male erectile dysfunction. Such a           2005
prejudice could only be established by proving that, in             In T 870/04 the key question for the assessment of
relation to the technical solution, a relatively widespread error   compliance with the requirements of the EPC was whether
or misapprehension about the technical invention existed            the invention as disclosed in the application was "susceptible
among skilled workers in the relevant field before the priority     of industrial application". The board noted that the case law
date of the patent in suit. The prejudice must be widely or         indicated that the notion of "industry" had to be interpreted
universally held by experts in the relevant field. This was not     broadly to include all manufacturing, extracting and
the situation in the present case.                                  processing activities of enterprises that were carried out
                                                                    continuously, independently and for financial (commercial)
The board added that establishing commercial success as             gain (cf. eg T 144/83 OJ EPO 1986, 301, see point 5 of the
an indication of inventive step required two evidentiary steps      reasons). The requirement of Article 57 EPC that the
– first, to show that there had been commercial success and,        invention "can be made or used" in at least one field of
second, to show that such success resulted from the claimed         industrial activity emphasised that a "practical" application of
invention and not from one or more other causes. Viagra had         the invention had to be disclosed. Merely because a
been the subject of various awards and praise in various            substance (here: a polypeptide) could be produced in some
journals. The board stated that the prizes would have been          ways did not necessarily mean that this requirement was
significant if awarded by persons who understood patent law

                                               Page 36 of 154
fulfilled, unless there was also some profitable use for which      possible objectives that might or might not be achievable by
the substance could be employed.                                    carrying out further research with the tool as described was
                                                                    not sufficient for fulfilment of the requirement of industrial
The board also noted that biotechnological inventions were          applicability. The purpose of granting a patent was not to
quite often concerned with substances found in nature (eg a         reserve an unexplored field of research for an applicant.
protein, a DNA sequence, etc.). In cases where the structure
and function of the substance was elucidated and means              1.           Notion of “industrial application”
were provided for extracting it or producing it in large
amounts, industrial applicability existed in relation to the             2001
possibility of exploiting the information and technical means       In T 541/96 the board noted that according to Article 52(1)
disclosed in order to manufacture the substance and use it          EPC a European patent could be granted for an invention
for some function related to its natural one or for some other      which was, inter alia, susceptible of industrial application.
previously unknown (now disclosed) function or as a starting        This concept was related to the obligation on an applicant to
material for making useful analogs or derivatives with some         give a sufficient description of the invention, as required by
improved features. If a function was well known to be               Article 83 EPC. An invention or an application for a patent for
essential for human health, then the identification of the          an alleged invention which would not comply with the
substance having this function would immediately suggest a          generally accepted laws of physics would be incompatible
practical application in the case of a disease or condition         with the requirements of Article 57 EPC and Article 83 EPC
caused by a deficiency, as was the case, for example, for           because it could not be used and therefore lacked industrial
insulin, human growth hormone or erythropoietin. In such            application. The description would moreover be insufficient to
cases, an adequate description would ensure in accordance           the extent that the applicant would not be able to describe
with the requirements of Article 57 EPC that "the invention         how it could be made to work.
can be made or used in industry".
                                                                    The board went on to observe that the EPC did not prevent
In cases where a substance, naturally occurring in the              the patentability of ”revolutionary” inventions. However,
human body, was identified, and possibly also structurally          Article 83 EPC made the amount of information required for a
characterised and made available through some method, but           sufficient disclosure of an invention somewhat dependent on
either its function was not known or it was complex and             the actual ”nature” of the invention. If the latter lay in a well-
incompletely understood, and no disease or condition had            known technical field and was based on generally accepted
yet been identified as being attributable to an excess or           theories, the description did not need to comprise many
deficiency of the substance, and no other practical use was         specific technical details which would anyway be implicit to a
suggested for the substance, then industrial applicability          skilled person. However, if the invention seemed, at least at
could not be acknowledged.                                          first, to offend against the generally accepted laws of physics
                                                                    and established theories, the disclosure should be detailed
While the jurisprudence had tended to be generous to                enough to prove to a skilled person conversant with
applicants, there had to be a borderline between what could         mainstream science and technology that the invention was
be accepted, and what could only be categorised as an               indeed feasible (ie susceptible of industrial application). This
interesting research result which per se did not yet allow a        implied, inter alia, the provision of all the data which the
practical industrial application to be identified. Even though      skilled person would need to carry out the claimed invention,
research results might be a scientific achievement of               since such a person, not being able to derive such data from
considerable merit, they were not necessarily an invention          any generally accepted theory, could not be expected to
which could be applied industrially. In the case at issue, while    implement the teaching of the invention just by trial and error.
the claimed BDP1 polypeptide was described as a substance
found in the human body and as having unique properties,            In the case at issue, the gist of the invention consisted in
the question arose whether any disclosure or suggestion had         inducing nuclear fusion between light nuclei and heavy
been made as to how these properties of BDP1 might be               unstable nuclei at low temperature by means of an electric
exploited.                                                          field. The appellant had provided neither experimental
                                                                    evidence nor any firm theoretical basis which would enable
The board observed that no doubt existed that a BDP1                the skilled person to assess the viability of the invention; the
polypeptide could be "made and used" as a further tool, in          description was essentially based on general statements and
addition to the many already available in the art, for exploring    speculations which were not apt to provide a clear and
the complex cellular signal transduction pathways and their         exhaustive technical teaching. Thus, it was irrelevant to
implications in the regulation of cellular processes and,           consider whether the fusion reactions referred to in the
possibly, disease states. But the whole burden was left to the      description might be theoretically possible, or whether they
reader to guess or find a way to exploit it in industry by          might indeed occur under certain conditions.
carrying out work in search of some practical application
geared to financial gain, without any confidence that any                  II. CONDITIONS TO BE MET BY
practical application existed. The board considered that no
such suggestion could be derived from the application itself               AN APPLICATION
or from the prior art.

In the board’s judgment, although the application at issue
                                                                                A. Sufficiency of disclosure
described a product (a polypeptide), means and methods for
making it, and its prospective use thereof for basic science        1.           Parts of the application relevant for assessing
activities, it identified no practical way of exploiting it in at                sufficiency of disclosure
least one field of industrial activity. In this respect, it was
considered that a vague and speculative indication of
                                                                         2004

                                                Page 37 of 154
In T 566/02 the board regarded the absence of the aspect           would be difficult for the board to distinguish between
ratio as a feature of the claim as immaterial to the question of   genuine misunderstanding and wilful misinterpretation.
sufficiency of disclosure, since the ratio was indicated in the      2003
description. The fact that no improvement of the cutting           If the only embodiment disclosed with concrete details in a
properties might be achieved for certain values of the aspect      patent is not disclosed in a manner sufficiently complete for
ratio had no impact on the issue of sufficiency of disclosure      the claimed invention (in the case in point a railway traction
since the claim did not require that improved cutting              unit with a liquid-nitrogen-cooled superconductive
properties be achieved.                                            transformer) to be carried out by a skilled person on the date
                                                                   of priority with respect to the fundamental scope of the
In T 1011/01 the board cited T 226/85 (OJ EPO 1988, 336),          invention, it is of no significance in terms of sufficiency of
which states that "substantially any embodiment of the             disclosure whether a variant (in the case in point a railway
invention, as defined in the broadest claim, must be capable       vehicle with a liquid-helium cooled transformer) could have
of being realised on the basis of the disclosure". This implied    been carried out on the relevant date of filing if the variant,
in particular that an objection of insufficiency could be raised   although covered by the wording of the patent claim, does
against the subject-matter of any claim, independent or            not fall within the fundamental scope of the claimed invention
dependent (cf. Rule 29(3) EPC). From a legal point of view, it     with regard to the teaching of the patent due to a lack of
was therefore irrelevant whether or not the feature objected       comparable technical success (T 1173/00, OJ EPO 2004,
to was essential or to what degree the scope of protection         16).
conferred by the patent depended on the claim in question.
     2002                                                          The board went on to state that if an invention was
The description is an essential part of the patent specification   insufficiently disclosed, it was of no relevance whether it was
for the purpose of understanding and being able to carry out       objectively impossible to provide the missing information on
the invention in accordance with Article 83 EPC. Hence parts       the date of priority, ie whether nobody could have achieved
of the description cannot be replaced by a mere reference to       the intended and claimed technical effect. The decisive issue
a publication under Article 93 EPC, even if this might save on     was whether the invention was disclosed in a manner
translation costs (T 276/99).                                      sufficiently complete for it to be carried out by an average
                                                                   skilled person on the date of priority, with knowledge of the
2.          Knowledge of skilled person relevant for               patent and on the basis of that person’s common general
            assessing sufficiency of disclosure                    knowledge.

     2004                                                          In T 866/00 the board found that an Article 83 EPC objection
In T 327/02 the board recalled that insufficiency of disclosure    concerning the absence of any detailed indication of the use
could not be invoked on the basis of information which was         envisaged for the claimed products could not succeed.
not explicitly set out in the specification but was within the
common general knowledge and abilities of the person               According to the examining division, an invention fulfilled the
skilled in the art.                                                requirements of Article 83 EPC if the skilled person was not
     2001                                                          only capable of preparing the claimed compounds but also
Following T 737/90, the board in T 429/96 confirmed that a         knew how they were to be used. The board did not share this
document incorporated by reference into the text of a              view, finding that Article 83 EPC merely required the
European patent application had to become available to the         invention to be sufficiently disclosed.
public at the latest on the publication date and not on the
filing date of the European patent application, in order to be     In T 515/00 the board pointed out that an invention could not
taken into account for the purposes of Article 83 EPC.             be considered irreproducible merely because a claim
                                                                   encompassed a hypothetical embodiment which lay outside
                                                                   the breadth of the claim as determined by the Protocol on the
3.          Clarity and completeness of disclosure                 Interpretation of Article 69 EPC and which could not be
     2004                                                          reproduced.
The invention which was the subject of T 569/02 referred to
coated abrasive material and a method of making the same.          When measuring the viscosity or the clarity of liquid
The appellant had argued insufficiency mainly on the basis         detergent compositions, the skilled person can rely on
that the claims at issue did not specify certain features which    general technical knowledge in respect of measuring
were necessary to obtain the results desired by the invention      methods, apparatus and temperatures suitable to meet his
across the whole scope of the claims. The board held,              needs. Varying results obtained when using different
however, that it was clear that these features would depend        methods or conditions do not necessarily disable the skilled
upon the intended use and the skilled person would have no         person from carrying out the invention (T 960/98).
difficulty selecting the appropriate values depending upon the       2002
use. Nor had the respondent offered evidence to the                If the disclosure of a patent in suit is limited to products
contrary.                                                          which, when prepared by the method according to the
                                                                   invention, are characterised by distinctive parameters, a
The appellant/opponent in T 135/01 also argued that the            claim which does not stipulate these parameters a priori
invention could not be performed across the full range of the      encompasses embodiments which are not obtainable by the
claims. However, the board found that this view was based          method disclosed. Such a disclosure of a single way of
on an erroneous representation of an effect of the invention       performing the invention will be considered sufficient only if it
by the appellant. The fact that the appellant might have           enables a skilled person to carry out the invention within the
misunderstood the working of the invention could not, in           whole ambit of the claim. If this is not the case, the claim
fairness, be regarded as an indicium of insufficiency, since it


                                               Page 38 of 154
does not meet the requirements of Articles 83 and 100(b)           Confirming decision T 172/99 the board in T 1288/01 pointed
EPC (T 517/98).                                                    out that, in the case of claimed subject-matter relying on a
     2001                                                          newly formulated and, hence, unfamiliar parameter to define
In T 1212/97 claim 1 of the patent in suit related to a method     the solution of a technical problem by which a relevant effect
for preparing chimeric immunoglobulin to be carried out in a       is achieved, the patentee was under a particular obligation to
prokaryotic or an eukaryotic cell culture whereby the Igs were     disclose all the information necessary to reliably define the
recovered from the host cell culture. According to the board,      new parameter. He had to define the new parameter not only
general common knowledge on the cloning and expression             (i) in a formally correct and complete manner such that its
of any genes in any mammalian cells was given, but no              value could be obtained by a person skilled in the art without
example of how to produce a chimeric Ig in a eukaryotic host       undue burden, but also (ii) in a manner which reliably
cell culture. The board found that the claimed process was         retained the validity of the parameter for the solution of the
not enabled for the category of mammalian cells in general,        technical problem for the application or patent in suit as a
and that the skilled person would still be faced with the          whole in the sense that the values routinely obtained would
problems of expressing chimeric heavy chains in the same           not be such that the claimed subject-matter covered variants
expression system as for the light chain and recovering Ig         incapable of providing the relevant effect.
fragments therefrom, problems for the solution of which he or
she would find no guidance, either in the patent in suit or the    In T 143/02 the board had to decide whether or not the
state of the art.                                                  invention was disclosed in a manner sufficiently clear and
                                                                   complete for it to be carried out by a person skilled in the art
The board considered that the patent in suit disclosed the         in the absence of an indication of the method used to
production of non-chimeric Ig chains in E. coli in the form of     determine the specific surface area of the pigment at issue.
inclusion bodies. Functional Igs were recovered by                 The board confirmed and differentiated decision T 225/93. It
solubilising and folding the insoluble material. No mention        held that, in the present case, the person skilled in the art
was made of the possibility of producing a functional Ig,          would assume that it was most likely that a certain method
directly or indirectly. The board thus concluded that the co-      was used. This assumption could be tested in the light of the
expression and recovery of functional Igs directly from the        information given in the examples of the patent in suit. In
bacterial cells or by secretion could not be achieved in the       contrast, in T 225/93 there was no information in the patent
absence of any technical information in the patent in suit.        in suit which would have enabled the skilled person to
                                                                   determine which method should be used without undue
The appellants argued that the method used to produce the          burden.
chimeric interspecies Igs was not important because the              2003
concept of making such Igs was new and inventive and the           Wrongly citing a method of measuring an essential product
principle set out in T 292/85 should be applied, that an           parameter may constitute insufficient disclosure of the
invention is sufficiently disclosed if at least one way of         product (T 1250/01).
carrying it out is sufficiently disclosed.
                                                                   In the case in point, the measurements were taken using the
The board disagreed that this principle applied, as no way         method described in document D23 and not in D22 as
was clearly indicated enabling the skilled person to perform       indicated in the patent in suit. D23 was not mentioned in the
the invention in the broad area claimed. The requirements of       patent and furthermore, as a company-internal document,
Article 83 EPC were therefore not complied with.                   was not even generally accessible. The patent specification
                                                                   gave no indication of any alternative method, so the skilled
4.          Reproducibility without undue burden                   person was offered no teaching as to how to reproduce the
                                                                   claimed products.
     2004
In T 769/02 the board differentiated between two types of          The board therefore deemed it impossible for the skilled
invention. One type of invention was characterised by effect-      person to be able without undue burden to vary the process
related functional features used to "round up" the definition of   parameters in order to obtain a particular combination of
the claimed subject-matter in order to limit a feature (eg         properties.
component) to those of its meanings which belonged to the
invention if a characterisation of this feature could not be       In T 792/00 the board stated that, for sufficiency of
made (or would be too narrow) by directly measurable               disclosure, it had to be satisfied firstly that the patent
objective attributes. In this situation the skilled person         specification certainly put the skilled person in possession of
depended on a reliable and practically feasible method in          at least one way of putting the claimed invention into
order to ascertain the exact scope of the claimed subject-         practice, and secondly that the skilled person could put the
matter (cf. T 226/85 (OJ EPO 1988, 336)).                          invention into practice over the whole scope of the claim. If
                                                                   the board was not satisfied on the first point that one way
With the other type of invention there was no need to resort       existed, the second point did not need to be considered.
to experiments to assess the exact scope of the claimed
subject-matter, because the invention was unambiguously            The board went on to say that sufficiency of disclosure could
characterised by directly measurable structural component          not be acknowledged if, for an invention which went against
characteristics which allowed their reduction to practice in an    prevailing technical opinion, the patentee had failed to give
objective fashion. In this situation the necessity to carry out    even a single reproducible example. It would amount to
chemical and physical measurements to find varieties               undue burden for the cautious and conservative skilled
meeting the characteristics of the claim did not amount to an      person to have to do research of his own to establish
undue burden.                                                      whether the invention could be put into practice in some
                                                                   circumstances, not specifically described in the patent, when


                                               Page 39 of 154
prevailing technical opinion suggested the outcome would be            used to treat disease Y was enough to ensure sufficiency of
failure.                                                               disclosure in relation to a claim to a pharmaceutical. It was a
                                                                       requirement that the patent provide some information in the
In the patent, the only example was explicitly described as a          form of, for example, experimental tests, to show that the
hypothetical experimental protocol, and the experiment had             claimed compound had a direct effect on a metabolic
clearly not actually been carried out. The board found that if         mechanism specifically involved in the disease, this
the patent contained only one example with a hypothetical              mechanism being either known from the prior art or
experimental protocol and if this example was to be relied on          demonstrated in the patent per se.
to show sufficiency, then the burden of proof lay with the
patentee to show that in practice this protocol worked as              The board held that showing a pharmaceutical effect in vitro
stated. Evidence that a variation of the protocol worked was           might be sufficient if, for the skilled person, this observed
unlikely to be enough.                                                 effect directly and unambiguously reflected such a
                                                                       therapeutic application (T 241/95, OJ EPO 2001, 103; see
5.          Biotechnology                                              also T 158/96). Once this evidence was available from the
                                                                       patent application, then post-published evidence might be
5.1          Clarity and completeness of disclosure                    taken into account, but only to back up the findings in the
If the subject-matter of a claim can be made to work in                patent application.
numerous ways in the manner described, under the case law
of the boards of appeal Article 83 EPC has not been                    The invention at issue in T 579/01 referred to cytoplasmic
interpreted as requiring the claim to be limited to exclude            male sterile plants of the Compositae family, the "cytoplasm
certain other only hypothetically conceivable embodiments              of which is provided with mitochondria comprising DNA
which might also fall under the claims. It would be different if       which at least partially originates from a different species of
there were some verifiable facts that raised serious doubts            the Compositae family, and which is the carrier of stably
on the enabling character of the patent (T 36/00, following T          expressable cytoplasmic male sterility (CMS), whose cells
19/90, OJ EPO 1990, 476).                                              comprise species-specific chloroplasts and nuclear genome
5.1.1.         Reproducibility without undue burden                    which are normal for the vegetable plant". The respondent
                                                                       argued that it represented an undue burden for the skilled
   2004                                                                person to establish whether a plant exhibited "stably
Claim 6 of the request at issue in T 609/02 related to the use         expressable CMS" and to select a plant exhibiting "stably
of a steroid hormone which failed to promote transcriptional           expressable CMS". The board, however, found that by
activation of certain genes, for the preparation of a                  teaching that one had to select a plant which was
pharmaceutical for the treatment of specified diseases, said           "phenotypically cytoplasmic male sterile", illustrating the
hormone being identified by the method according to the                phenotype to be selected in figures and providing instructions
previous claims.                                                       for selecting these plants from the regenerants by analysis of
                                                                       mitochondrial, chloroplast and genomic DNA, the patentee
The board pointed out that the patent specification provided           had provided sufficient information.
no evidence at all relating to the invention in claim 6, either in
respect of the steroid hormone or its impact on the diseases           The board admitted that obtaining 100% pure CMS plants
specified. Indeed the patent specification was not concerned           according to the claims at issue was a question of chance.
with giving a technical basis to what was claimed.                     However, the prior art techniques had merely yielded (also
                                                                       by chance) a 98% pure unstable CMS plant, ie whose
Post-published evidence was provided showing that such                 progeny still had 1.9%fertile flowers and unstable mt DNA
steroid hormones were later structurally identified and that           after the fourth backcrossing. The decisive question
they did indeed have the claimed effect. However, the board            consequently was whether or not the patent in suit provided
emphasised that sufficiency of disclosure had to be satisfied          the technical information/means necessary for increasing the
at the effective date of the patent.                                   selective pressure from 98% pure CMS plants (by chance)
                                                                       towards 100% pure CMS plants (by chance). According to
The board recalled that where a therapeutic application was            the board, the answer was in the affirmative.
claimed in the Swiss claim format allowed by the Enlarged
Board of Appeal in its decision G 5/83 (OJ EPO 1985, 64),              6.          The relationship between Article 83 EPC and
attaining the claimed therapeutic effect was a functional                          Article 84 EPC
technical feature of the claim (G 2/88 and G 6/88, OJ EPO
1993, 93 and 114, T 158/96). As a consequence, unless this             6.1          Article 83 EPC and support from the
was already known to the skilled person at the priority date,                       description
the application had to disclose the suitability of the product to           2001
be manufactured for the claimed therapeutic application.
                                                                       In T 5/99 the patent in suit disclosed two inconsistent
                                                                       definitions of a parameter. The appellant and opponent had,
According to the board, the patent system took account of
                                                                       by means of the ground of opposition under Article 100(b)
the intrinsic difficulties for a compound to be officially certified
                                                                       EPC, indirectly pointed out a lack of clarity as to the definition
as a drug by not requiring an absolute proof that the
                                                                       of this parameter. The board referred to T 127/85 (OJ EPO
compound had been approved as a drug before it could be
                                                                       1989, 271) and found the objection admissible, as the lack of
claimed as such. The boards of appeal had accepted that, for
                                                                       clarity was not directly a problem with respect to Article 84
a therapeutic application to be sufficiently disclosed, it was
                                                                       EPC, but above all with respect to Article 100(b) EPC, which
not always necessary that results of applying the claimed
                                                                       required the European patent to disclose the invention in a
composition in clinical trials, or at least to animals, had been
                                                                       manner sufficiently clear and complete for it to be carried out
reported. However, this did not mean that a simple verbal
                                                                       by a person skilled in the art. Moreover, according to Article
statement in a patent specification that compound X might be
                                                                       100(b) EPC, it was the European patent as a whole (apart

                                                  Page 40 of 154
from the abstract according to Article 85 EPC) which was to        board pointed out that the case underlying decision T 665/90
be considered, and this article, as well as the rest of the        referred to a chemical process. The competent board had
EPC, did not give a greater weight to any part of the patent       found that, as proof that an invention had been insufficiently
as far as the disclosure of the invention was concerned.           disclosed, it was required that the attempt to repeat it must
Thus, even if the claim as such gave a clear definition of the     fail despite following the conditions given in the examples.
parameter, it had only to be considered as an element of the       This requirement was not fulfilled where the patented
whole disclosure of the patent.                                    process was repeated under conditions covered by the
                                                                   claim but differing in many respects from those applying in
The board in T 1055/98 also saw no reason to deviate from T        the contested patent’s example.
127/85 (OJ EPO 1989, 271), or from the case law
establishing that, where claims have been amended during           However, the claim at issue before the board in the present
opposition proceedings, the opposition division and the board      case referred to a product, namely a pharmaceutical
have in principle the power to deal with the issues of lack of     composition. The method of preparation was not reflected in
clarity and support by the description only if they arise out of   the claim and the claim encompassed all products having the
the amendments made to the claims (T 301/87 (OJ EPO                technical characterising feature indicated in the claim,
1990, 335), T 472/88).                                             irrespective of their method of production.
6.2          Article 83 EPC and clarity of claims                    2004
                                                                   In T 890/02 (OJ EPO 2005, ***) the board confirmed the
     2004                                                          established case law, which required that for an objection of
The argument that the skilled person would not know                insufficiency of disclosure to be successful there had to be
whether he was working within the forbidden area of a claim        serious doubts, substantiated by verifiable facts. In its
was an argument rather associated with the scope of the            preliminary opinion, the board had raised doubts about the
claim (ie Article 84 EPC), than with sufficiency of disclosure     suitability of the use of HPPD enzymes other than that
(cf. also T 943/00) (T 326/02).                                    derived from the genus exemplified in the application. In the
     2001                                                          course of the oral proceedings, however, the applicant had
To the extent that the requirements of Article 84 EPC can          submitted a document showing that the constant for the
only be fulfilled, in relation to a claim which is characterised   HPPD enzyme substrate in question was of the same order
by a functional feature defining a result to be achieved, if the   for the genus exemplified as for the mammalian enzymes.
feature is such that a person skilled in the art can, without      Moreover, there was evidence on file showing that the HPPD
exceeding his normal knowledge and skills, not only                enzyme from a second genus could be used to perform the
understand it, but also without undue burden implement it,         invention in tobacco plants.
the former requirement (understanding) is one of clarity and
the latter (implementing) is one of support, both in the sense     In T 356/01 the board again stated that the burden of proof
of Article 84 EPC. Furthermore, the latter requirement,            lay with the appellant opponents (cf. eg T 418/91, T 989/97).
viewed in relation to the disclosure as a whole, is highly         It recalled that the mere fact that the claim at issue was
relevant to the question of sufficiency, in the sense of Article   broad, and in particular that the claimed process
83 EPC (following T 409/91, OJ EPO 1994, 653) (T 713/98).          encompassed a number of variants going beyond the
                                                                   specific examples and the preferred embodiments disclosed
7.          Relationship between sufficiency of disclosure         in the description of the patent, was not in itself a ground for
            and inventive step                                     considering the patent as not complying with the
                                                                   requirements of sufficiency of disclosure (cf. T 743/97).
     2004
In T 566/02 the respondent (opponent of the patent in suit)        The board also held that, by specifying seven isolated
argued that the disclosure of the invention was insufficient       polythiol compounds which allegedly did not permit the
because the cutting tool covered by claim 1 did not show           desired technical effect to be obtained, the appellants did not
improved properties over a comparative example in a cutting        prima facie discharge their burden of proof in establishing
test contained in the description, so that the skilled person      that the skilled person would not be able to obtain
would be unable to determine from the usual cutting tests          substantially all embodiments falling within the ambit of the
whether he would get an improved cutting tool when working         claimed invention or that he could do so only with undue
within the scope of claim 1. The board held that this was an       burden. Neither did the appellants substantiate their
issue of inventive step, not sufficiency of disclosure, since      allegation by technical arguments or verifiable facts,
the relevant claim was not restricted to cutting inserts having    especially experimental evidence. Nor was the statement of
improved properties in the cutting test.                           the appellants involving only isolated, specific polythiol
                                                                   compounds sufficient to dispute enabling disclosure in view
Similarly, the question as to whether or not an alleged            of the detailed information given in the patent, disclosing
technical effect, which was not part of the definition of the      classes of compounds and specific compounds suitable for
claimed activities but rather underlay the problem to be           carrying out the claimed process.
solved, was obtained in all the situations covered by the            2003
claims, might properly arise under Article 56 EPC, not under       In T 1023/00 the board referred to T 541/96, in which it had
Article 83 EPC (T 778/99, following T 939/92).                     been held that if an invention seemed, at least at first, to
                                                                   offend against the generally accepted laws of physics and
8.          Evidence                                               established theories, the disclosure should be detailed
                                                                   enough to prove to a skilled person conversant with
     2005                                                          mainstream science and technology that the invention was
In T 1241/03 the board distinguished T 665/90, which               indeed feasible.
required comparative examples to be carried out in strict
adherence with the conditions given in the patent in suit. The

                                               Page 41 of 154
The board thus concluded that in the case at issue, where          1.         1. Clarity
the invention (a method of creating and using a stable
                                                                   1.1          Principles governing the text of claims
plasma inside a solid) was in apparent contradiction with
established theories, it was not sufficient for meeting the        1.1.1.         General principles
requirements of Article 83 EPC merely to present a theory            2005
which showed the possibility of forming a plasma inside a
                                                                   In T 1074/00, the subject-matter of the claim at issue was
solid without providing experimental evidence that (i) such a
                                                                   defined inter alia by its capability of "hybridizing under
plasma was actually produced; and (ii) the plasma could be
                                                                   stringent conditions" to a certain DNA sequence. The
produced using the means disclosed in the application in
                                                                   appellant had maintained that this was not clear for the
suit. The onus of proof was also on the appellant to show
                                                                   skilled person since the reference document did not give an
that the different uses disclosed in the application in suit
                                                                   unambiguous definition and different sets of stringent
were not merely speculative but feasible. The appellant had
                                                                   conditions existed. The board, however, emphasised that the
failed to provide any evidence supporting the alleged
                                                                   question to be asked in the context of Article 84 EPC was not
feasibility. The application in suit thus did not meet the
                                                                   whether the claim was clear in absolute terms, but whether it
requirements of Article 83 EPC.
                                                                   was sufficiently clear, having regard to the particular nature
                                                                   of the subject-matter. It observed that the term "hybridisation
Similarly, in T 751/00, the board reminded the parties that
                                                                   under stringent conditions" was well-known in the art of
when arguing that the disclosure was insufficient, the onus of
                                                                   genetic engineering and had been used in patent practice for
proof was on the opponents to show that the invention could
                                                                   numerous years as a quasi-structural feature for defining
not be carried out. Mere assumptions were not sufficient to
                                                                   DNA claims. The board found that, although different
lead to a conclusion of lack of reproducibility (following T
                                                                   experimental protocols might be applied for assessing
16/87, OJ EPO 1992, 212, and T 19/90, OJ EPO 1990, 476;
                                                                   hybridisation under stringent conditions, this did not mean
see also T 748/00 and T 499/00).
                                                                   that these protocols would lead to different results as far as
  2001                                                             the detected nucleotide sequence was concerned. Moreover,
Following well-established case law (T 182/89 (OJ EPO              it had to be taken into account that the present claim defined
1991, 391)), the board in T 998/97 confirmed that the burden       its subject-matter also by a further functional feature relating
of proof that there is insufficiency under Article 83 EPC lies     to the biological activity. Uncertainty about the protection
with the opponent. Merely to allege that ”a nearly unlimited       conferred could be caused by the existence of different
number of compounds” had to be tested and that, in carrying        experimental protocols only if there were DNA sequences
out the test according to the patent in suit ”failures” were the   which fulfilled this further functional feature requirement and
rule and ”successes” the exception, did not, in the absence        which, when subject to different experimental conditions, led
of any evidence in support of these allegations, discharge the     to ambiguous results. However, no concrete evidence in this
burden of proof. See also T 465/97.                                respect had been submitted by the appellant.
                                                                     2004
         B. Claims                                                 In T 687/00 the preamble of claim1 of the main request
                                                                   related inter alia to a "Plastic sealing sheet with appreciably
  2001                                                             better biaxial extensibility than conventional sheet". The
According to T 910/98, decisions G 2/88 (OJ EPO 1990, 93)          board held that this part-feature conveyed a mere
and G 6/88 (OJ EPO 1990, 114) related exclusively to the           desideratum which made no intrinsic technical contribution to
use of a known substance for a hitherto unknown purpose.           the subject-matter of the claim. Furthermore, the impugned
True, a ”use” could also be regarded as a kind of method,          feature described an objective to be achieved over the prior
because it was an activity. But such an activity did not as a      art and therefore concerned the central problem addressed
rule lead to a new product. The claim in the patent in suit,       by the inventor of the application at issue. A subjective
however, was directed not to a use for a hitherto unknown          problem of this kind could alter in the course of the
technical effect of a known product, but to a technical method     procedure. The board emphasised that the statement of the
of manufacture. However, such a method was not novel               problem belonged, as usual, in the description and not in the
merely because it identified a quality – hitherto unknown in       claim.
the art but occurring anyway, without changing the method –
in the product thus manufactured. Given G 6/88, the claimed        The preamble of claim 2 of the application in T 363/99
subject-matter would be novel only if it also taught a new         contained a reference to a German patent specification. The
technical use made possible by the inherent quality.               board considered this to be a violation of Article 84, second
                                                                   sentence, EPC since it was impossible to establish the scope
The board also considered the principles laid down in G 1/92       of the matter for which protection was sought without
(OJ EPO 1993, 277): that a product and its chemical                consulting the reference document mentioned. The fact that
composition were prior art if they was available to the public     the indication of the publication number of the reference
and could be analysed and reproduced by the skilled person,        document provided the most concise definition of the matter
irrespective of whether or not particular reasons could be         for which protection was sought (Article 84 EPC) was
identified for doing so. That too showed that a known product      irrelevant by comparison. When formulating a patent claim,
did not become novel merely through identifying a hitherto         the form that was objectively more precise always had to be
unknown but inherent quality.                                      chosen (see T 68/85, OJ EPO 1987, 228, point 8.4.2 of the
                                                                   reasons).
In view of this, the present case differed from the
circumstances underlying G 2/88 and G 6/88. The principles
                                                                     2003
laid down in those decisions therefore did not apply to the        Compliance with the clarity requirement of Article 84 EPC is
method claim in suit.                                              not dependent on the time required to establish whether a
                                                                   given compound is covered by the product claim. The clarity
                                                                   requirement is not a basis for objecting to the complexity of a

                                               Page 42 of 154
claim, as complexity is not tantamount to lack of clarity. The     feature as to be included in the independent claim. The same
simplicity of an individual claim is not a criterion for the       applied to a feature relating to a method step of a non-
granting of a patent under the EPC. Clarity within the             technical nature belonging to the preceding steps which were
meaning of Article 84 EPC merely requires the claims to            constitutive for making the diagnosis for curative purposes.
define the subject-matter for which protection is sought           As regards in particular the non- technical feature pertaining
clearly and unambiguously for the skilled person, if               to diagnosis for curative purposes, it was to be included as
necessary in the light of the description (T 1020/98, OJ EPO       an essential feature in the respective independent claim if its
2003, 533).                                                        essentialness was unambiguously inferable from the
                                                                   respective European patent application or European patent
The board observed in T 550/01 that the opposition division        as a whole. This was the case if the application or patent in
had been correct in its observation that examination in            question disclosed a method for obtaining findings of
respect of Article 83 EPC started with an attempt to identify      diagnostic relevance which allowed the attribution of the
the invention as claimed. If, however, this attempt was found      detected deviation to a particular clinical picture.
not to succeed, the real issue was lack of clarity.
  2002                                                             In T 818/03 the board considered that a method claim which
In T 49/99 the board held that since clarity was a claim           did not state sufficiently clearly the steps by which a
requirement, a clarity deficiency in the claim wording was not     particular result was achieved might still be considered clear
rectified by the fact that the description and the drawings        provided the result to be achieved was clearly defined, and a
would help the reader to understand the technical subject-         claim which defined a method of achieving some less than
matter that the claim was intended to define.                      clearly defined result might also still be considered clear
                                                                   provided the steps that needed to be taken to achieve that
In T 260/01 the board maintained that it was not necessary         result were sufficiently clearly defined. However, a claim
for an independent claim to give a full account of all the         must be considered to lack clarity if, as here, it set out
intellectual steps required to implement its teaching. Under       insufficiently clearly both the necessary parameters of the
established case law it was sufficient that the claim indicated    method and the relevant characteristic features of the result.
the technical measures that were essential to achieve the
desired result. The relative ranking of individual process         In T 914/02 the claimed method aimed at identifying optimum
parameters was subordinate to the overall ”control                 fuel bundle loading arrangements in a nuclear reactor core. It
philosophy” and could clearly be omitted from an                   consisted of a series of steps which might be purely abstract,
independent claim, provided that the claim’s control               as at no stage was the use of any technical means implied.
philosophy was not indeterminate and speculative.                  The appellant sought to derive from the alleged sheer
                                                                   complexity of the proposed solution an implied use of
1.1.2.         Indication of all essential features                technical means, in particular a computer. The board found
  2005                                                             no such alleged mentally irresolvable complexity.
In G 1/04 (OJ EPO 2006, 334) the Enlarged Board recalled           Furthermore, according to the board, it was doubtful as a
that Article 84 EPC required the claims to define the subject-     matter of principle whether complexity could be used to
matter for which patent protection was sought, and that they       disqualify an activity as a mental activity. Rather, it would
must be clear. An independent claim within the meaning of          appear generally that if computer means were indeed
Rule 29 EPC should explicitly specify all of the essential         indispensable, they should be included in the claim as an
features needed to define the invention, and the meaning of        essential feature of the invention (see also p. 15).
these features should be clear for the person skilled in the art     2003
from the wording of the claim alone. The same should apply         Article 84, second sentence, EPC requires claims to be clear.
mutatis mutandis in respect of a claim relating to the subject-    According to established case law, this is to be construed as
matter excluded from patent protection under Article 52(4)         meaning that a claim not only has to be comprehensible from
EPC. These requirements served the overriding purpose of           a technical point of view, but must also clearly define the
legal certainty.                                                   object of the invention, ie indicate all its essential features.
                                                                   The features that are to be regarded as essential are those
The Enlarged Board took the view that a diagnostic method          which are needed to solve the problem underlying the
within the meaning of Article 52(4) EPC had an inherent and        application (T 844/02 following T 32/82, OJ EPO 1984, 354).
inescapable multi-step nature. If diagnosis as the deductive         2002
medical or veterinary decision phase was a purely intellectual     In T 141/00 independent claim 1 concerned a process for
exercise, the feature pertaining to the diagnosis for curative     coating spectacle lenses in a vacuum unit, characterised
purposes and the features relating to the preceding steps          among other things in that the lenses were delivered
which were constitutive for making the diagnosis represented       continuously or quasi-continuously on a transport mechanism
the essential features of a diagnostic method within the           to a straight-through vacuum unit.
meaning of Article 52(4) EPC. Thus, in order to satisfy the
requirements of Article 84 EPC, an independent claim               One of the appellants maintained that this claim did not meet
relating to such a method must include these features.             the requirements of Article 84 EPC because the term
                                                                   ”continuously or quasicontinuously”, lacking specific details
The essential features necessary for clearly and completely        of the speed or rate at which the lenses were delivered to the
defining a particular invention were for the most part of a        vacuum unit, was unclear and did not define the correlation
technical nature. But, if a non-technical feature was to be        with the other stages of the process.
regarded as constitutive for defining the invention, it must
likewise be included as an essential feature in the                The board’s assumption was that to satisfy the clarity
independent claim. Thus, although diagnosis stricto sensu          requirement it was not necessary to specify all the details
was a purely intellectual exercise unless it was carried out by    and specific data of the process, but only the features
a device, the feature pertaining to it was such an essential

                                               Page 43 of 154
essential to carry out the invention. The speed at which the         single independent claim with dependent claims as
lenses were delivered to the vacuum unit was important only          necessary.
in terms of the efficiency of the process and thus was not an
essential feature. The absence of this information did not           Finally, the board emphasised that, when an objection under
detract from the clarity of the claim.                               Rule 29(2) EPC arose, the burden of proof was shifted onto
1.1.3.         Interpretation of terms                               the applicant, ie it was up to the applicant to argue
                                                                     convincingly why additional independent claims could be
  2001                                                               maintained.
In T 226/98 the board held that the feature ”as a
pharmaceutical product” for defining a pharmaceutical                In T 659/03 the board had to decide whether the two
standard of purity in a claim related to a product as such           contentious independent claims in the same category were
(here, famotidine form ”B”) rendered said claim unclear in the       covered by the exception in Rule 29(2)(c) EPC, that is to say,
absence of a generally accepted quantitative definition for          whether they represented alternative solutions to the problem
the purported standard of purity. Nor could this expression be       addressed by the appellant. The board affirmed that this was
considered to be a commonly accepted functional feature as           the case, since the independent claims each contained all
no clear definition could be derived therefrom. As purity            the features required to solve the problem addressed.
standards were likely to change with time for a number of              2003
reasons (eg new manufacturing processes, new or improved             The disputed claim before the board in T 952/99 contained
analytical tools, change of criteria for obtaining a marketing       two different aspects of a use claim: on the one hand it
authorisation), it remained obscure what was considered to           defined the use of a particular physical entity to achieve an
be the required product quality when defined by the feature          "effect", and on the other it defined its use to produce a
”as a pharmaceutical product”.                                       product. Although a use claim normally falls into either one
1.1.4.         Categories of claim – Rule 29(2)                      category or the other, the board found that such a clear
                                                                     distinction was not possible in this case. The claim contained
  2004                                                               both application and process features and there was a
EPC In case T 56/01 each of the appellant’s requests in the          technical affinity between the additional process step and the
appeal contained three independent claims of the same                "core" of the invention. Both the application and process
category: one claim to a broadband communications module             features were thus technical features of the invention, so that
and two claims to a signal transport system. Hence, the              their combination did not contravene Rule 29(1) EPC, the
board had to discuss compliance with the amended Rule                relevant criterion for assessing the extent to which the
29(2) EPC, which stipulates that a European patent                   combination of a "use" claim and technical process features
application may contain more than one independent claim in           was allowable from the point of view of clarity.
the same category only if the subject-matter of the
application involves one of the following: (a) a plurality of        The board drew a distinction with T 796/91, in which it had
interrelated products; (b) different uses of a product or            been held that the heterogeneous combination of process
apparatus; (c) alternative solutions to a particular problem,        features and application features rendered the claim
where it is not appropriate to cover these alternatives by a         fundamentally unclear. That case had concerned the
single claim.                                                        combination of a process claim and a use claim with no
                                                                     process claim at all. In contrast to the case before the board,
The board concluded from the preparatory documents that              the process features had apparently had no affinity to the
condition (a), in spite of the distinction made between              application features, which had made it impossible to
products and apparatus in the opening part of the Rule, also         subsume the two different types of technical feature under
applied to apparatus claims. Nevertheless, the board did not         one claim.
consider that condition (a) was met by the two claims for the          2001
signal transport system because they were not interrelated.          Including in a device claim ”for carrying out a process” a
The board inferred from the examples in an early proposal to         reference back to an earlier claim did not alter the fact that it
the Administrative Council for the amendment of Rule 29(2)           was an independent (nonprocess) claim; rather, it limited the
EPC that interrelated products were meant to be different            claimed device to being suitable to carry out the process
objects that complement each other, or somehow work                  referred to (T 1017/98).
together. However, in the present case, the two different
claims to the signal transport system were for essentially the       1.1.5.         Interpretation of claims
same object.                                                           2001
                                                                     The skilled person when considering a claim should rule out
The board defined the "alternative solutions" under Rule             interpretations which are illogical or which do not make
29(2)(c) EPC as different or even mutually exclusive                 technical sense. He should try, with synthetical propensity ie
possibilities. The claims at issue, however, related to one          building up rather than tearing down, to arrive at an
and the same solution with slightly different wording and level      interpretation of the claim which is technically sensible and
of detail. Moreover, even alternative solutions were only            takes into account the whole disclosure of the patent (Article
allowed under the condition that "it is not appropriate to cover     69 EPC). The patent must be construed by a mind willing to
these alternatives by a single claim". The board concluded           understand, not a mind desirous of misunderstanding (T
from the preparatory documents that "not appropriate" meant          190/99).
"not possible or not practical". The intention was that, if it was
possible to cover alternative solutions by a single claim, then      Where a quality is expressed in a claim as being within a
the applicant should do so. In the case at issue, given the          numerical range, either the method for measuring that quality
overlap and similarities in the features of the claims, the          must be general knowledge, so that no explicit description is
board held that it would have been entirely appropriate to           needed, or a method for measuring it needs to be identified.
cover the subject-matter of the signal transport system by a

                                                Page 44 of 154
However, where the claim specifies that a quality must be         claim containing a disclaimer had to meet the requirements
absent, this implies that this quality cannot be detected by      of clarity and conciseness of Article 84 EPC. This means that
the methods which are common in the art for measuring it, so      a disclaimer is not allowable if the necessary limitation can
that the indication of a specific method is not necessary (T      be expressed in simpler terms in positive, originally disclosed
1012/98).                                                         features in accordance with Rule 29(1), first sentence, EPC.
1.1.6.         Functional features – Standard tests               In addition, a plurality of disclaimers may lead to a claim
                                                                  drafting which puts an unreasonable burden on the public to
  2005                                                            find out what is protected and what is not. A balance has to
In T 151/01 the product claim at issue was intended to be         be struck between the interest of the applicant in obtaining
restricted vis-à-vis the prior art embodiments by a functional    adequate protection and the interest of the public in
feature, namely that the amount of the ingredient present in      determining the scope of protection with reasonable effort.
the composition must be a "therapeutic amount". The board
had no doubt that the skilled person was perfectly able in        In the interest of the transparency of the patent, it should be
most cases to decide whether a certain amount of a given          clear from the specification that there is an undisclosed
non-steroidal anti-inflammatory agent had a therapeutic           disclaimer and why it has been introduced. The excluded
effect or not. However, it pointed out that, in order to          prior art should be indicated in the description in accordance
establish the lower limit of the therapeutic amount for a given   with Rule 27(1)(b) EPC, and the relation between the prior
non-steroidal anti-inflammatory agent, in other words, in         art and the disclaimer should be shown.
order to clearly establish the scope of protection of the
claims, a standard test was required, since the result would      (b) Novelty and inventive step
strongly depend on the experimental method used. As there
was no such test in the description or known to the skilled       According to the Enlarged Board in G 1/03 and G 2/03 (OJ
person, the board concluded that the claim did not fulfil the     EPO 2004, 413 and 448), a disclaimer may be allowable in
requirement of Article 84 EPC.                                    order to:
1.2           Exceptions to the principle
                                                                  – restore novelty by delimiting a claim against the state of the
1.2.1.         Disclaimers                                        art under Article 54(3) and (4) EPC
  2005
To justify the exclusion expressed by the formulation "non-       – restore novelty by delimiting a claim against an accidental
                                                                  anticipation under Article 54(2) EPC
therapeutic use" at the beginning of the disputed claim, the
appellant in T 67/02 had cited G 1/03 and G 2/03 (OJ EPO
                                                                  – disclaim subject-matter which, under Articles 52 to 57 EPC,
2004, 413 and 448), which had ruled that disclaimers were
                                                                  is excluded from patentability for non-technical reasons.
admissible for subject-matter not patentable under Articles
52 to 57 EPC. However, the board found that in the present
case it was not possible to identify a clear distinction          However, the Enlarged Board disagreed with the view that,
between cosmetic use and therapeutic treatment. The board         starting from the premise that a disclaimer is always a mere
therefore took the view that the exclusion rendered the           waiver of part of the invention, it may be used for any
                                                                  purpose, ie also for excluding non-working embodiments.
claimed subject matter unclear.
                                                                  The Enlarged Board held that a claim comprising non-
  2004                                                            working embodiments might have different consequences,
In T 161/02 the claim at issue included a disclaimer              depending on the circumstances.
incorporated by way of amendment, which read as follows:
"... by means other than contacting plant cell material with a    According to the Enlarged Board, where there is a large
transformation solution comprising exogenous DNA which            number of conceivable alternatives and the specification
does not contain parts or all of the T-DNA border sequences       contains sufficient information on the relevant criteria for
of an Agrobacterium Ti plasmid and a membrane permeating          finding appropriate alternatives over the claimed range with
agent in the presence of an electric current ...". The board      reasonable effort, the inclusion of nonworking embodiments
pointed out that this disclaimer combined features which          is of no harm. Therefore, a disclaimer is neither necessary
arose from two different documents of prior art, the              nor appropriate.
combination of these features resulting in a disclaimer that
corresponded neither to the disclosure of the first nor to that   If this is not the case and there is a lack of reproducibility of
of the second document, and which – as acknowledged by            the claimed invention, this may become relevant under the
the appellant – did not make any technical sense. The board       requirements of inventive step or sufficiency of disclosure.
held that such a disclaimer not only did not meet the             The determining date for fulfilling the latter requirement has
requirements of Article 123(2) EPC but also rendered the          to be the date of filing or priority, and deficiencies in this
claim unclear within the meaning of Article 84 EPC, as it did     respect cannot be remedied during the proceedings before
not allow the public to find out what was protected and what      the EPO (overruling T 170/87 and T 313/86).
was not protected.
  2003                                                            In T 134/00 the claim at issue related to a fuel oil composition
For a full discussion of G 1/03 and G 2/03 (OJ EPO 2004,          consisting of a middle distillate fuel oil and an additive
413 and 448) refer to "Amendments – 1.2 Disclaimer" below.        composition. It required the additive composition to comprise
                                                                  at least the components of given types (i) and (ii), but it could
(a) General                                                       also comprise other additive components.

In G 1/03 and G 2/03 (OJ EPO 2004, 413 and 448),                  The claim also contained a disclaimer excluding a specific
concerning the allowability of disclaimers under Article 123(2)   combination only as component (i) and not from the total fuel
EPC, the Enlarged Board of Appeal held inter alia that a          composition. The board therefore concluded that the

                                              Page 45 of 154
disclaimer did not exclude the presence of the two specified           In T 274/98 the appellant/opponent had raised a lack-of-
components in the total fuel composition.                              clarity objection to the term ”products sensitive to oxidation”
1.2.2.          Admissibility of disclaimers                           appearing in one of the claims.

   2001                                                                The board’s opinion was that, to satisfy the clarity
According to T 56/97, although an insertion of an exclusion in         requirement in a claim concerning cosmetic or
claims in the form of a disclaimer may in certain cases be             pharmaceutical compositions characterised by a plurality of
acceptable, this is always an exceptional step. According to           ingredients, the group of ingredients according to the claim
the established case law of the boards of appeal, the                  had to be defined in such a way that the skilled person could
introduction of a disclaimer is only acceptable if all the             clearly distinguish ingredients that belonged to the claimed
requirements derived from Article 123(2) EPC are strictly              group from those that did not.
met. These requirements are based on the legal principle
underlying Article 123(2) EPC, namely that an applicant is             In the context of a claim relating to a cosmetic or
not allowed to improve his position, by adding subject-matter          pharmaceutical composition containing fatty bodies, the term
not disclosed in the application as filed or removing subject-         ”products sensitive to oxidation” referred to products which,
matter from the application as filed, so as to give himself an         at ambient temperature, were degraded in the presence of
unwarranted advantage over, or damage the legal security               oxygen. In that light the disputed term was perfectly clear.
of, third parties relying on the content of the original
application.                                                           The appellant failed to supply evidence that in the given
                                                                       context some products would be susceptible to oxidation in
In T 323/97 (OJ EPO 2002, 476), it was held that an                    some conditions and not in others. Hence there was no
amendment to a patent by the introduction of a ”negative”              ambiguity, and the claim was clear.
technical feature into a claim resulting in the exclusion of
certain embodiments was, regardless of the name                        2.          Conciseness
”disclaimer”, nonetheless an amendment governed by Article
123(2) EPC and Article 123(3) EPC.                                          2003
                                                                       A Markush formula is the concisest means of defining a class
By way of obiter dictum, the board added that the practice of          of chemical compounds in a claim (T 1020/98). The
permitting disclaimers having no support in the application as         examining division had held that "formulating claims in a
filed to make a claimed subject-matter novel by delimiting it          style that makes routine tasks in substantive examination
against an accidental anticipation could not be maintained in          unnecessarily difficult" was a contravention of Article 84
the light of the Enlarged Board of Appeal’s opinion G 2/98             EPC. However, there is no legal basis in the EPC for a
(OJ EPO 2001, 413).                                                    request to restrict the content of an independent claim so that
                                                                       substantive examination can be carried out with greater ease
Furthermore, any amendment of a claim not having support               and less effort. Furthermore, under the EPC, making the
in the application as filed and aiming at distancing the               examining division’s work easier is not a prerequisite for
claimed subject-matter further from the state of the art, in           starting substantive examination of a patent application.
particular by way of a disclaimer, contravened Article 123(2)
EPC.                                                                   3.          Claims supported by the description
1.2.3.          Broad claims – unspecified features                         2003
   2004                                                                Although a claim must not be interpreted in a way which is
In case T 194/99 the examining division had considered that            illogical or does not make sense, the description cannot be
claim 1 lacked clarity, inter alia because it defined a medical        used to give a different meaning to a claim feature which in
laser apparatus, in particular its bandwidth, as a function of         itself imparts a clear, credible technical teaching to the skilled
absorption characteristics of a photosensitizer to be used             reader. This also applies if the feature has not been initially
with the apparatus. Since the photosensitizer was not part of          disclosed in the form appearing in the claim (T 1018/02).
the claimed subject-matter, the structural limitations resulting
from the wording of the claim were not considered to be                In T 295/02 the board found that an inconsistency between a
clear.                                                                 claim and the provisional description was not a valid reason
                                                                       to refuse the application if the inconsistency arose from an
However, the board stated that it was possible in a claim for          amendment, if it was apparent that the text of the description
a first entity to define certain characteristics of that entity as a   was not intended by the applicant to form the agreed basis of
function of characteristics of a second entity employed when           any decision, especially one concerning its consistency with
using the first entity. As such, there was no need for the             the amended claims, and if the appellant was prepared to
claim to be directed to the combination of the first and the           adapt the description to conform to a definite allowable set of
second entity (T 455/92). According to the board, a                    claims.
prerequisite was, however, that the second entity and its
relevant characteristics as such, not their exact values, were         4.          Claims supported by the description
unambiguously identified in the claims. The board pointed
out that a claim drafted in this manner might be appropriate                2002
in cases in which a specification in the claim of the exact            In T 568/97 the claims of the patent in suit defined the
values of certain characteristics would unduly limit the               physiological effect to be achieved by a sufficiently high
subject-matter of the claim.                                           concentration of vasoactive intestinal polypeptide and/or
                                                                       prostaglandins as active agents in a pharmaceutical
   2002                                                                composition for transurethral administration. Neither
                                                                       individual values nor ranges of the amounts of vasoactive


                                                  Page 46 of 154
intestinal polypeptide and/or prostaglandins to be               If a feature was formulated using the words ”consisting of a
administered via intracorporeal injection or via the urethra     major amount of ...”, it appeared prima facie that the feature
were disclosed in the patent. Furthermore, it was impossible     lacked clarity since it did not unequivocally distinguish
to find out without undue burden the physiologically effective   between what was and was not claimed.
amounts as claimed merely on the basis of common general         5.3          Relevance of Article 69 EPC
knowledge.
                                                                   2004
The board held that the description of the patent lacked         In T 932/99 claim 1 was directed to a product per se. The
support within the meaning of Article 84 EPC as to the           claim defined only the structure of a membrane as such,
amount of vasoactive intestinal polypeptide and/or               independently from its installation in an apparatus for gas
prostaglandins required to achieve a physiologically effective   separation. The board pointed out that, for this reason, the
dose when administered via the urethra. The functional           indication in the claim "capable of separating oxygen from
feature not only had to be such that the skilled person could    oxygen-containing gaseous mixture" merely served the
understand it; he also had to be able to implement it.           purpose of defining a capability of the claimed membrane,
                                                                 without imparting any limitations on any actual use of the
In T 317/99 the wording of the claim was comprehensible          structure claimed. Furthermore, it found that claim 1 did not
and coherent. However, a condition present in the claim,         specify that the porous layer having the smallest pore size
although literally supported by the description, was not met     was contiguous to the dense layer. Hence, those missing
by the examples in the description. Hence the examples did       features could not be read into claim 1.
not fall within the scope of the claim.
                                                                 The respondents had argued that, if claim 1 was interpreted
According to the board, the fact that one part of a claim was    in the light of the description, those limitations would be
not in agreement with one part of the description was not        apparent. However, the board held that a distinction had to
always enough to justify an objection under Article 84 EPC. If   be drawn between, on the one hand, the fact that it might be
the claim was comprehensible and logical, it sufficed that       necessary to take into account any explicit definition as given
there was support for all the elements of the claim in the       in the description for interpreting a claim’s term and, on the
description.                                                     other hand, the attempt to use Article 69 EPC as a basis for
                                                                 reading limitations derived from the description into claims in
5.         Interpretation of claims                              order to avoid objections based on lack of novelty or
                                                                 inventive step. The latter approach to interpretation, whereby
5.1          General                                             features mentioned only in the description were read into
  2003                                                           claim 1 as necessary limitations, was incompatible with the
If the wording of an independent claim, in keeping with the      EPC (T 1208/97, point 4 of the reasons).
description, clearly indicates that the claimed measuring
device is attached in a particular way to the part being         T 373/01 took the same line. The board held that the wording
measured, the technical features of the claim which define       of the claims encompassed not only the correction scheme
the attachment method must be duly taken into account            represented in Figure 3 of the patent but also further possible
when assessing the patentability of the claimed subject-         correction schemes. Since these were covered by the literal
matter with regard to the latest state of the art (T 31/01).     meaning of the wording and also made technical sense,
                                                                 according to established case law the description could not
5.2          Meaning of terms                                    be used to interpret the claims more narrowly (see T
  2004                                                           1018/02, point 3.8 of the reasons; T 396/01, point 2.3 of the
In T 405/00 the board considered that, according to the          reasons).
language conventional for patent claims in the field of
                                                                 In T 412/02 the claim at issue contained as a feature the
chemistry, the wording "composition comprising a persalt"
defined exclusively the mandatory presence of at least one       mathematical relationship between melt tension and melt
of the specific chemical compounds belonging to the group of     flow rate of the claimed copolymer. The board emphasised
persalts. Accordingly, the claimed subject-matter was            that the clarity and the support requirements under Article 84
completely open to further component( s), ie also in respect     EPC implied that the claims must be clear in themselves
of the possible presence of further compound(s) belonging to     when being read with normal skills, but not including any
the same group. The appellants argued that a narrower            knowledge derived from the description of the patent
interpretation of this expression would be suggested to the      application (cf. T 988/02, point 3.3.1 of the reasons).
skilled reader of the patent in suit by the portions of the
description defining the persalt ingredient. The board,          The board held that the unambiguous characterisation in a
however, pointed out that these portions did not amount to       claim of a product by parameters or by a mathematical
the unambiguous disclosure of the exclusive presence of          relation between parameters necessarily required that each
only one persalt.                                                parameter could be clearly and reliably determined. In the
                                                                 board’s view, it followed that the knowledge of the method
  2002                                                           and conditions of determination of the parameter was
In T 425/98 the board held that if a claim related to a          necessary for the unambiguous definition of the parameters
composition characterised by several components, for the         and, as a consequence, for the unambiguous definition of a
clarity requirement to be met the groups of components had       mathematical relation between them. Thus, in order to allow
to be defined in such a way that the claimed compositions        the matter for which protection was sought to be defined, it
could be unambiguously distinguished from those not falling      had to be clear from the claim itself when being read by the
under the claim.                                                 person skilled in the art exactly how the parameters should
                                                                 be determined. This would, as a rule, imply that the method
                                                                 of determination and the conditions of measurement which

                                              Page 47 of 154
might have an influence on the value of the parameter should        board had to deal with the burden of proof. The respondent
be indicated in the claim, either expressly or, if appropriate,     (opponent) had raised an objection of lack of novelty which
by way of reference to the description according to Rule            was based on the disclosure in an example in a prior art
29(6) EPC. Such indication would only become superfluous if         document. The board observed that the validity of this
it could be shown that the skilled person would know from           objection rested exclusively on the validity of certain
the outset which method and conditions to employ.                   assumptions made by the respondent with respect to
5.4          Use of description and drawings                        parameters of the product disclosed in prior art. In such a
                                                                    case, the concept of balance of probabilities could not be
     2005                                                           applied for the assessment of the validity of each
In the case T 1156/01 the clarity of claims 1 to 19 had been        assumption; it had to cede to a stricter criterion close to
objected to by the Examining Division because the subject-          absolute conviction. In other words, there should be a degree
matter of the claims included an unusual parameter, namely          of certainty which is beyond reasonable doubt.
the strength of the non-woven fabric as defined on page 13          6.1           Requirement that the claimed product must be
of the application. The board agreed that if the invention was
                                                                                  patentable
characterised by parameters, the method of and means for
measurement should appear completely in the claim itself,                2005
whenever this is reasonable, or by reference to the                 In T 394/03 the board ruled that improved product quality
description in accordance with Rule 29(6) EPC, if the method        achieved by means of a process did not generally constitute,
is so long that it would impair the conciseness of the claim.       in a product-by-process claim, a structural feature giving rise
The introduction into the claim of such a definition for the        to novelty or inventive step. In the present case, a decorated
determination of a parameter would only be superfluous              ceramic product was claimed which differed from known
where it could be shown that the skilled person would know          products of this type only by virtue of its better quality, which
from the outset which method and conditions to employ               had been achieved by means of the process according to the
because, for instance, this methodology was the                     invention (see also p. 102).
methodology commonly used in the technical field, or all the             2003
methodologies known in the relevant technical field for
                                                                    In the case before the board in T 803/01, the examining
determining this parameter would yield the same result within
                                                                    division had argued that, following T 205/83 (OJ EPO 1985,
the appropriate limit of measurement accuracy (T 412/02).
                                                                    363), it was not allowable to define a chemical product by
                                                                    parameters not inherent in the product but attributable to the
In T 992/02, the board, whilst noting the general principle that
                                                                    presence of certain impurities, and hence it had objected
the claims must be clear per se, took the view that the non-
                                                                    under Article 84 EPC to the claim parameters relating to the
inclusion in the claim of the method whereby one of the
                                                                    degree of purity.
parameters characterising the composition claimed (level of
formation of volatiles) could be measured was justified in the
                                                                    The board noted that there was no statement whatsoever in
light of the requirement under Article 84 EPC that the claims       T 205/83 which prohibited the presence of parameters
be concise. It considered that such a conclusion could be           relating to impurities in a claim for reasons of clarity. The
reached in the case in hand because the method was clearly          statement relied on by the examining division had been
identified in the description and did not give rise to any          made in relation to the assessment of novelty. The
ambiguity.
                                                                    examining division’s finding that the definition of a chemical
                                                                    product by parameters not inherent in the chemical product
In T 56/04 the board pointed out that a claim containing an
                                                                    was not allowable in view of Article 84 EPC was unjustified in
unclear technical feature prevented its subject-matter from         going beyond the finding of the case law relied upon.
being identified beyond doubt. That was particularly the case
if the unclear feature was meant to delimit the claimed             The parameters relating to the purity of the polylactides were
subject-matter from the state of the art. The board therefore
                                                                    technical features in line with Rule 29(1) EPC. This was
took the view that a vague or unclear term which was used
                                                                    considered to be a relevant criterion for assessing the extent
in the claim and a precise definition which was to be found
                                                                    to which the use of purity parameters in a product claim was
only in the description could be allowed only in exceptional
                                                                    allowable from the point of view of clarity (G 2/88, OJ EPO
cases to delimit the claimed subject-matter from the state of       1990, 93).
the art. Such an exception pursuant – mutatis mutandis – to
Rule 29(6) EPC exists if the precise definition – for whatever
reason – cannot be incorporated into the claim, and the                         C. Unity of invention
precise definition of the vague or unclear term is
unambiguously and directly identifiable by a skilled person         1.           Criteria for determining lack of unity
from the description. In T 56/04 the board said that an
exception was not involved. The specific value of                        2004
"approximately 1 mm" disclosed in the description could have        In W 17/03 the ISA had considered that the absence of
been incorporated into the claim itself instead of "slightly less   common technical features and an allegedly different
than ...".                                                          problem solved would be sufficient to demonstrate lack of
                                                                    unity between groups of inventions. The board suggested
6.          Product-by-process claims                               that the ISA’s approach to the determination of the problem
                                                                    appeared to stem from the belief that what was required was
     2004                                                           the same analysis as that used to determine the problem
In T 564/02 the board applied established case law saying           when using the problem and solution approach to evaluate
that process features can only contribute to the novelty of a       inventive step, possibly because differences and problems
product claim insofar as they give rise to a distinct and           are involved in both situations.
identifiable characteristic of the product. In this context, the

                                                Page 48 of 154
The board stated that it was not convinced that the                  InW 9/03 the board considered whether the common
investigation of technical relationships for unity with the aid of   problem underlying the claims could establish unity between
common problems underlying the inventions is necessarily             the different inventions. The board held that a common
the same as the analysis that is used to determine the               problem could establish the unity of different inventions only
problem when using the problem and solution approach to              under certain conditions, for example in the case of a
evaluate inventive step. The board gave the following                problem invention. That was not the situation in the case at
reasons:                                                             issue, however. According to the applicant, the common
                                                                     problem was considered that of providing a more secure,
1. The evaluation of unity involves comparing problems               faster and easier connection setup. The board started from
solved (or effects achieved) by different claims, whereas the        the assumption that the person skilled in the relevant art
evaluation of inventive step is carried out on a single claim.       would normally consider this problem. The common problem
As a result, when examining unity, the problems solved by            was therefore so broadly formulated that it was "itself already
different claims must be considered in the light of each other       known or could be recognised as generally desirable or
and cannot be determined in isolation in an absolute sense.          obvious" (seeW 6/90, OJ EPO 1991, 438); as a result, unity
                                                                     could not thereby be established.
2. In the evaluation of inventive step, the idea is to define a
problem based on the distinguishing features that is                 4.          Plurality of inventions and further search fees
essentially as narrow as possible, but not involving elements
of the solution. On the other hand, in the evaluation of unity,           2004
these restrictions do not apply, since the overall object is to      In W 26/03 the ISA had not grouped an invention first
find out what the claims involved have in common, ie if the          mentioned in the claims as first invention and had not
respective inventions are so linked as to form a single              prepared an international search report on it. Instead, an
general inventive concept.                                           invention contained in claims 7 to 17 (in part) and 22 to 49 (in
                                                                     part) was defined as the first invention, was searched and
Thus, the specific problems solved by the different inventions       the ISA concluded that the application contained 127
with respect to the closest prior art may need gradual               inventions.
refinement, in particular generalisation starting from the
problem directly solved, to find out whether or not there is a       The board noted that the ISA, pursuant to Article 17(3)(a),
common denominator that still distinguishes the inventions           second sentence, PCT, has the legal obligation to search in
from said prior art.                                                 return for the search fee paid for the first invention, ie the
                                                                     invention first mentioned in the claims, and it could ask for
2.          Basis for lack of unity assessment                       the payment of additional fees only for searching further
                                                                     inventions contained in the application. It followed therefrom
2.1          Assessment of lack of unity in examination              that the justification for asking for the payment of additional
             proceedings                                             fees had to be based on the finding that there are further
     2001                                                            inventions which are non-unitary a priori or a posteriori in
                                                                     comparison with the invention first mentioned in the claim.
In J 24/96 (OJ EPO 2001, 434) the appellant raised the issue
                                                                     The board stated that this requirement was not a formality
of whether, in its decision, the examining division should
                                                                     but an important procedural requirement which is intended to
have dealt with the alleged incompleteness of the partial
                                                                     prevent the ISA from choosing arbitrarily which invention to
search report. The board held that within the framework of
                                                                     search. It was up to the applicant to determine by the way
Rule 46 EPC it is the task of the examining divisions (and the
                                                                     and the order in which he drafts the claims which invention is
boards of appeal) to examine whether communications of the
                                                                     in the context of the search to be regarded as the core of his
Search Divisions under Rule 46(1) EPC asking for further
                                                                     application and should therefore form the starting point for
search fees were justified. Rule 46(2) EPC does not,
                                                                     any search to be made. The ISA had stated that the lack of
however, refer to any acts of the Search Divisions other than
                                                                     clarity/conciseness of the invention first mentioned in the
communications issued under Rule 46(1) EPC. It was
                                                                     claims made a meaningful search over the whole of the
therefore not necessary for an examining division to deal in a
                                                                     claimed scope impossible. The board noted, however, that
decision under Rule 46(2) EPC with other objections raised
                                                                     the ISA had implicitly recognised that a meaningful search of
by the applicants in connection with the search such as for
                                                                     parts of subject-matter contained in claim 1 could have been
example the objection that the partial search report was not
                                                                     made. The board decided that even where the international
drawn up in accordance with the Guidelines. To avoid any
                                                                     application contained obscurities, making it impossible to
misunderstanding, the board observed that the examination
                                                                     arrive at a reasonable conclusion as to the scope of the
divisions of course have the possibility of arranging for an
                                                                     claimed invention, the ISA should make a meaningful search
additional search to be performed, if they consider a search
                                                                     to the extent that this is possible. In the present case, the
report delivered by the Search Division incomplete. The
                                                                     fees paid under protest were reimbursed together with the
board made clear that this had nothing to do with a formal
                                                                     protest fee.
decision issued under Rule 46(2) EPC concerning refund of
further search fees upon request.                                         2003
                                                                     Under Rule 46(2) EPC, any further search fee which has
3.          The single general inventive concept                     been paid under Rule 46(1) EPC is to be refunded if, during
                                                                     the examination of the European patent application by the
     2004                                                            examining division, the applicant requests a refund and the
When deciding on unity of invention, it is mandatory under           examining division finds that the communication referred to in
Rule 13.1 PCT to determine whether or not a group of                 Rule 46(1) EPC was not justified.
inventions claimed in an international application forms a
single general inventive concept.                                    In T 188/00 the appellant had requested a refund of the
                                                                     further search fee paid in response to a communication from

                                                Page 49 of 154
the search division under Rule 46(1) EPC. The board noted          property of a sample disclosed only in an individual example
that under Rule 46(2) EPC the examining division had to            could be relevant to the generality of the claimed
review the finding of the search division that the claims as       subjectmatter, separately from and irrespectively of the other
filed lacked unity of invention. In other words, a review of the   parameters inherent to the same sample. The situation in this
finding of lack of unity of invention had to be carried out        case was different from the case in T 201/83 (OJ EPO 1984,
having regard only to the facts presented by the search            481). In T 201/83 an amendment was allowed on the basis of
division in its communication under Rule 46(1) EPC. Since in       a particular value described in a specific example, provided
most cases objections against lack of unity of invention were      the skilled person could readily have recognised that value
raised having regard to the prior art (a posteriori unity          as not so closely associated with the other features of the
objections), this meant that the examining division had to         example as to determine the effect of that embodiment of the
base its review solely on the documents cited in the partial       invention as a whole in a unique manner and to a significant
search report and on the specification of the different            degree (point 12 of the reasons). In T 1146/01, however, the
inventions drawn up by the search division, while taking into      board stated that formulating a new range on the basis of
account any arguments which the applicant might have               individual values taken from selected examples, which were
submitted in support of his request for a refund.                  not at all directly related to each other, meant that the reader
                                                                   was confronted with new information not directly derivable
The board observed that in the analogous procedure under           from the text of the application as originally filed.
the PCT, a review of the justification for the invitation to pay
additional fees resulting from a finding of lack of unity was      In T 653/03, the original term "diesel engine" in claim 1 was
provided for in Rule 40.2(c) and (e) and Rule 68.3(c) and (e)      replaced by the term "combustion engine". Thus the
PCT, the protest procedure. The boards of appeal had ruled         suitability of the claimed method was generalised to any type
that these reviews had to be based exclusively on the              of combustion engine. The board decided that the treatment
reasons given in the invitation to pay, having regard to the       of exhaust gas in the original application was always related
facts and arguments submitted by the applicants (see W             to a diesel engine, and it could not be inferred by the skilled
4/93, OJ EPO 1994, 939, points 2.1 and 2.2 of the reasons).        person that the subject-matter of the granted patent
                                                                   extended to a method which was suitable for any type of
In the case at issue, however, the examining division had          combustion engine. The technical contribution was that the
reasoned that the claims as filed lacked unity of invention a      amended method was suitable for any type of combustion
posteriori, as a consequence of the finding that claim 1 as        engine, whereas in the original form it was suitable only for a
filed lacked an inventive step having regard to documents D1       diesel engine. The generalisation was not allowable.
and D4, where the latter document was not cited in the
partial search report. Thus the examining division did not         With regard to isolation and extraction of combined features,
review the finding of lack of unity of invention within the        T 25/03 first recalled that according to the established case
meaning of Rule 46(2) EPC, but carried out a fresh                 law of the boards of appeal, if a claim was restricted to a
examination on the basis of a new document D4. The board           preferred embodiment, it was normally not admissible under
therefore held that the decision to refuse the refund of a         Article 123(2) EPC to extract isolated features from a set of
further search fee had to be set aside for formal reasons          features which had originally been disclosed in combination
alone and that the appellant’s request for a refund of a           for that embodiment. That kind of amendment would only be
further search fee under Rule 46(2) EPC was justified.             justified in the absence of any clearly recognisable functional
                                                                   or structural relationship among said features (see for
                                                                   example T 1067/97, point 2.1.3 of the reasons). In the case
       III. AMENDMENTS                                             at issue the board concluded that since claim 1 resulted from
                                                                   the extraction of isolated steps from the specific combination
         A. Article 123(2) EPC                                     disclosed as essential in the embodiment of Figure 4, and
                                                                   since the appellant had not referred to other parts of the
                                                                   application as filed that could support the proposed
1.         Content of the application as originally filed          amendment, and no such parts had been identified by the
1.1         General issues                                         board, claim 1 as amended in accordance with the first
                                                                   auxiliary request did not meet the requirements of Article
  2005                                                             123(2) EPC.
As pointed out in T 860/00 (point 1.1 of the reasons), the
disclosure implicit in the patent application – ie what any        In T 1241/03, in view of the general disclosure of the
person skilled in the art would consider necessarily implied       application as filed, the reference in a claim to a combination
by the patent application as a whole (eg in view of basic          of compounds in specific concentrations, explicitly disclosed
scientific laws) – is relevant for the requirements of Article     in different passages of the application, was not considered
123(2) EPC.                                                        by the board to be an amendment of the patent which
                                                                   extended beyond the content of the application as originally
In T 3/03 the board decided that an amendment consisting in        filed (point 7 of the reasons; see also p. 39).
the generalisation of an effect obtained for particular
embodiments was not admissible. In the case in point, the
                                                                     2004
results obtained for particular embodiments could not be           In T 658/03 the granted patent contained two sets of claims,
generalised since the particular circumstances of use,             namely claims 1 to 14 for the contracting states AT, BE, ES,
including the type of additive used, determined whether or         FI, SE and claims 1 to 10 for the contracting states DE, FR,
not filterability was improved.                                    GB, IT, respectively.

The board in T 1146/01 had to answer the question of               During prosecution of the case before the opposition division,
whether one measurement of a selected characteristic or            amended sets of claims were filed by the proprietor, by way
                                                                   of a main request (filed on 18 July 2001). The main request

                                                Page 50 of 154
was based on a single set of claims 1 to 10 valid for all            Although the earlier decision had dealt with the question of
contracting states, whereby these claims corresponded to             entitlement to priority, the present board took the view that
granted claims 1 to 10 for the contracting states DE, FR, GB         the conclusion reached in it might also apply when the
and IT.                                                              allowability of amendments in the light of Article 123(2) EPC
                                                                     was examined.
The board pointed out in a communication accompanying the
summons to oral proceedings that the claims then on file             Since the required standard of correspondence with an
represented an amendment with respect to the contracting             earlier document – the application as originally filed in the
states AT, BE, ES, FI, SE and, as far as these contracting           one case and the priority document in the other – was the
states were concerned, were open to a full examination. The          same, ie explicit or implicit disclosure, the board concluded
board stated that any change of attribution of claimed               that the findings of T 301/87 could be applied to the present
subject-matter in an application or patent having different          situation.
(sets of) claims for different contracting states, to a
contracting state under which this subject-matter was not            Thus the disclosure in the application as originally filed of the
previously subsumed, amounted to an amendment in the                 deposition of the recombinant bacteriophage Lgt11-P3 was
sense of Article 123 EPC. Such an amendment was subject,             not considered to be a basis within the requirements of
in principle, to full examination as to its conformity with the      Article 123(2) EPC for the disclosure of a DNA sequence
requirements of the EPC.                                             designated as "the P3 coding sequence" which was allegedly
                                                                     contained in that bacteriophage, but which as such was not
After examination the board came to the conclusion that the          disclosed in the application as originally filed.
subject-matter of claim 1 of the main request and, by the
same token, that of claims 2 to 10, did not meet the                 Concerning the content of the application as originally filed,
requirements of Article 123(2) EPC as far as the contracting         the board in T 1018/02 stated that although a claim was not
states AT, BE, ES, FI and SE were concerned. Since,                  to be interpreted in a way which was illogical or did not make
furthermore, the board could only decide on a request in its         sense, the description could not be used to give a different
entirety, the appellant’s main request, ie maintenance of the        meaning to a claim feature which in itself imparted a clear,
patent on the basis of claims 1 to 10 filed on 18 July 2001 for      credible technical teaching to the skilled reader. That also
all contracting states, was refused.                                 applied if the feature had not initially been disclosed in the
                                                                     form appearing in the claim (point 3.8 of the reasons).
According to Article 123(2) EPC, a European patent
application or a European patent may not be amended in               Dealing with the allowability of amendments in T 81/03, the
such a way that it contains subject matter which extends             board detailed why it considered that the facts of the case
beyond the content of the application as filed. In T 500/01 the      dealt with in T 1149/97 (OJ EPO 2000, 259) differed from
board stated that a claim, the wording of which was                  those of the present case, contrary to the allegation of a
essentially identical to a claim as originally filed, could          substantive cut-off effect of the grant of a European patent
nevertheless contravene the requirements of Article 123(2)           made by the opponents. It further stressed in reply to the
EPC, if it contained a feature whose definition was amended          opponents’ second line of argument that Article 69 EPC and
in the description in a non-allowable way. The specific              its Protocol were to be applied in proceedings before the
definition of a feature, which according to the description was      EPO whenever it was necessary to determine the protection
an overriding requirement of the claimed invention, was              conferred (see for example G 2/88, OJ EPO 1990, 93, point
applied by a skilled reader to interpret this feature whenever       3.3 of the reasons). Equivalence considerations obviously
it was mentioned in the patent.                                      often played a prominent role in national infringement
                                                                     proceedings, and although equivalents were not mentioned
Since in this case the definition had no basis in the                in the EPC at present, they would be in the Protocol on
application as filed, claim 1 did not meet the requirements of       Article 69 in the revised Convention, EPC 2000 (see Special
Article 123(2) EPC.                                                  edition No. 1 of OJ EPO 2003, 73). Nevertheless, in spite of
   2003                                                              the indisputable importance of the concept of equivalence for
The appeal in T 1228/01 lay from the examining division’s            the determination of the scope of protection, if the opponents
decision to refuse the European patent application entitled          had been right in their allegations, it would never be possible
"Method of preparation and use for zona pellucida antigens           to amend a claim during opposition proceedings – although
and antibodies for sterilization and contraception" because it       this was provided for in the EPC – since the addition of any
contained subject-matter which extended beyond the content           new feature to some extent necessarily reduced the weight
of the application as filed, contrary to Article 123(2) EPC.         of the features in the claim as granted. This was particularly
                                                                     true when the subject-matter of the granted claim was not
The appellants inferred that the reference to a deposited            new, the situation in which amendments were most called
phage in a claim, whose correct deposit was mentioned in             for. For that reason the argument could not be accepted. The
the application as originally filed, was an implicit disclosure of   board thus found that the general, abstract concern that the
a part of a nucleotide sequence contained in the phage,              addition of a feature to a claim after grant led to an extended
although the sequence was not disclosed per se.                      scope of protection because the resulting combination of
                                                                     features might give rise to a different evaluation of
The board in T 301/87 had taken the view that if an entity           equivalents in infringement proceedings was not in itself a
itself was disclosed to the skilled person, this did not             sufficient reason for not allowing the addition of limiting
necessarily mean that a component part was also disclosed            features under Article 123(3) EPC.
for the purpose of priority if this could not be envisaged
directly and unambiguously as such and required                      The board agreed with the patent proprietor that there was
considerable investigation to reveal its identity.                   no basis in the EPC for the idea that amendments after grant
                                                                     had to be based on subject-matter contained in the patent

                                                Page 51 of 154
specification. The wording of Article 123(2) EPC was               (OJ EPO 1994, 541) had to be met, namely that the limitation
unambiguous. It was Article 123(3) EPC which was intended          did not involve a technical contribution to the subject-matter
to protect the interests of third parties, as pointed out by the   of the claimed invention and did not provide an unwarranted
Enlarged Board in G 1/93 (OJ EPO 1994, 541, point 9 of the         advantage. Since the claimed peel strength led to a technical
reasons).                                                          contribution of the claimed subject matter, the question
                                                                   whether or not the limiting feature created an inventive
In the board’s view it followed that amendments to a               selection could be left unanswered.
European patent could be based on the whole reservoir of             2002
features originally disclosed in the corresponding application,    The opposition division revoked the patent under Article
provided that Article 123(3) EPC was not infringed by such         102(1) EPC. On appeal the board, in case T 592/99, noted
amendments, due account being taken of the stipulations of         that, the feature as originally disclosed having been replaced
Article 69(1) EPC.                                                 by the feature objected to under Article 100(c) EPC, the
  2002                                                             claim as such related to different products. The board
In T 714/00 the board said that extracting an isolated feature     concluded that in keeping with ”Order 1” of decision G 1/93
from an originally disclosed combination and using it to           (OJ EPC 1994, 541) the patent in suit contained subject-
delimit claimed subjectmatter could only be allowable in           matter which extended beyond the content of the application
connection with Article 123(2) EPC if that feature was not         as filed which was prohibited by Article 123(2) EPC. Thus,
inextricably linked with further features of that combination.     the patent could not be maintained unamended, because the
1.2          Technical contribution                                ground for opposition under Article 100(c) EPC prejudiced
                                                                   the maintenance of the patent. On the other hand, the board
1.2.1.        Addition or deletion of a feature                    observed that it could not be amended since deleting the
  2004                                                             limiting subject-matter from the claims would extend the
In T 1004/01 the opposition division decided that the              protection conferred, which is prohibited by Article 123(3)
requirements of Article 123(2) EPC were not fulfilled. In          EPC.
particular the feature specifying that the peel strength be "at
least 24 grams", which value was only disclosed in a specific      The board observed that in the case of a product claim
example, was associated with a multiplicity of further features    concerning a composition defined by its components and
of said example and could not be detached from said further        their relative amounts given in terms of ranges, it could not
features.                                                          be accepted that such ranges, which constitute essential
                                                                   features, do not provide a technical contribution to the
The question arose before the board of appeal as to whether        subject-matter of the claimed invention, as suggested by the
or not there was a basis in the application as originally filed    appellant. Any amendment to the ranges must have the
for a peel strength "of at least 24 grams" to define the           effect of modifying the claimed subject-matter, and thus also
claimed laminate. According to the application as filed, the       provide a technical contribution. If the newly claimed limited
peel strength of the laminate was defined by an open-ended         range were although unsupported, allowed, any subsequent
                                                                   selection invention based on this new range would have to
range as an essential feature of the invention. In the general
                                                                   be refused as not novel, which would otherwise not
description and the claims there was no further mention of
any preferred peel strength range.                                 necessarily be the case. To allow this would, of course, give
                                                                   an unwarranted advantage to the patentee, contrary to the
According to the board, the examples of the application as         purpose of Article 123(2) EPC. In the view of the board, this
filed only illustrated specific laminates which were prepared      is exactly what was meant in the ”typical example” given in
from specific polymer blends and a specific non-woven web          point 16. of the decision G 1/93 ”where the limiting feature is
                                                                   creating an inventive selection not disclosed in the
by using specific lamination conditions and provided specific
                                                                   application as filed or otherwise derivable therefrom”
values of the peel strength. Thus, the exemplified laminates
                                                                   (emphasis added). Obviously, in the quoted text, such an
and the peel strength thereof were disclosed only in a
concrete technical context, without providing any preference       ”inventive selection” could not mean anything other than a
for a peel strength of at least 24 grams. Nor was any such         potential (inventive) selection. Therefore, the new feature
preference given in the description, which could justify the       constitutes added subject-matter.
lower limit.
                                                                   The board noted that the respondents could not be
                                                                   requested to demonstrate the potential character of the
Since, however, a peel strength of 24 grams was disclosed,
                                                                   selection without making, or preventing themselves from
the question arose under which conditions such an
                                                                   making, a further selection invention. Thus, the burden of
exemplified feature could form the basis for a new range as
                                                                   proof could not reasonably be shifted to them, as demanded
claimed. The peel strength of 24 grams could not be
                                                                   by the appellant.
detached from the exemplified laminates to form a basis for a
generalised lower limit of the claimed peel strength range         1.2.2.         Creation of new parameters
without taking into consideration the other particulars closely      2003
associated therewith. It followed that the claimed subject-
                                                                   Consequently, the added feature could not be regarded as a
matter in all requests could not be directly and
                                                                   mere limitation of the protection. The board in T 931/00
unambiguously derived from the application as filed.
                                                                   stated that although figures in examples might, under specific
                                                                   conditions, be used to limit a range which was already
As to the technical contribution, the board said that the
                                                                   present in the original application, they could not be used to
amended feature involved an interaction with the other
                                                                   define an entirely new relationship between parameters
features, ie a technical contribution to the invention, and did
                                                                   which had never been linked before. Such arbitrary new links
not provide a mere limitation of scope. Furthermore, the
                                                                   between existing parameters introduced new matter, contrary
board pointed out that the general criteria of decision G 1/93


                                               Page 52 of 154
to the requirements of Article 123(2) and 100(c) EPC (points        making the disclaimer. The board pointed out that the
2.1 and 2.2 of the reasons).                                        Guidelines were not rules of law. When introducing the
1.3          Combining two elements from two groups                 disclaimer into claim 1 as granted, the appellant referred to
                                                                    the Guidelines C-VI, 5.8b. Even so, the board explained that
             which were not originally disclosed
                                                                    at the time when the disclaimer was introduced, the
  2001                                                              appellant, considering the relevant case law, could not
In T 727/00 the board held that the combination –                   expect that a disclaimer which was relevant for the
unsupported in the application as filed – of one item from          assessment of inventive step and changed the technical
each of two lists of features meant that although the               information in the application as filed would be allowable.
application might conceptually comprise the claimed subject-
matter it did not disclose it in this particular individual form.   The appellant’s position that transitional provisions should be
For that reason alone, claim 1 of the main request was not          provided for in G 1/03 for those applicants who had relied in
supported by the description.                                       good faith on the previous EPO patent practice at the time
                                                                    when making the disclaimer failed also, as explained by the
1.4          Amendments going beyond specifically                   board.
             disclosed combinations of meanings of
             residues                                               The principles laid down in G 1/03 were to be applied to the
  2001                                                              present case. Since the disclosure in D1 could not be
According to the boards’ consistent case law, the guiding           considered as accidental within the meaning of the decision
principle is that deleting meanings of residues must not lead       G 1/03, the disclaimer was not allowable under Article 123(2)
to the selection, in the respective lists, of a particular          EPC. Decision T 14/01 concerned the allowability of a
combination of single, specific but originally undisclosed          disclaimer aiming at removing an overlap with a prior art in
meanings of residues (see T 615/95, Reasons 6, T 859/94,            view of the decision G 1/03.
Reasons 2.4.3, both unpublished).
                                                                    According to the board in this case, the allegation that a
In T 942/98, precisely this had occurred: by deleting all other     teaching extracted from a prior art led away from the
meanings, residues X1, X2 and R5 had been narrowed down             invention implied that the skilled person had taken this prior
to a single meaning, leading to a combination of specific           art into consideration. For an anticipation to be accidental it
meanings of residues not disclosed in the application as filed.     was instead necessary that the skilled person would have
Consequently, claim 1 as filed did not in itself provide            never taken it into consideration.
adequate support for claim 1 as amended.
                                                                    The board then decided that the prior art in question was not
1.5          Subsequent addition of details                         accidental in the sense of G 1/03, and that the disclaimer
1.5.1.        Disclaimer                                            was not admissible.
  2004                                                                2003
                                                                    On 8 April 2004, the Enlarged Board ruled on referrals G
In T 500/00 the amendment was a disclaimer introduced by
                                                                    1/03 and G 2/03 concerning disclaimers and established the
the appellant into claim 1 during the examining proceedings
                                                                    criteria to be taken into account. Consequently, no earlier
in response to an objection of lack of novelty based on
                                                                    decisions taken by technical boards in the year under review
document D1 of the prior art. The question arose as to the
                                                                    will be reported in the present special edition.
requirements under which such a disclaimer might be
allowable.
                                                                    The questions referred to the Enlarged Board in G 1/03 and
                                                                    G 2/03 (OJ EPO 2004, 413 and 448) were answered as
According to G 1/03, a disclaimer may be allowable in order
                                                                    follows:
to restore novelty by delimiting a claim against an accidental
anticipation under Article 54(2) EPC; thus, the question arose
                                                                    1. An amendment to a claim by the introduction of a
as to whether or not the disclosure of D1 was accidental.
                                                                    disclaimer may not be refused under Article 123(2) EPC for
                                                                    the sole reason that neither the disclaimer nor the subject-
In the present case, the claimed solution showed an overlap
                                                                    matter excluded by it from the scope of the claim have a
with the teaching of D1. D1 and the application in suit
                                                                    basis in the application as filed.
concerned the same technical field, had, except for the
disclaimed component, identical compositions and related to
                                                                    2. The following criteria are to be applied for assessing the
the same purpose of sufficient curing. Moreover, the same
                                                                    allowability of a disclaimer which is not disclosed in the
technical problem underlay both the patent in suit and D1.
                                                                    application as filed:
Since the skilled person would consider D1 as suitable prior
art to make the invention, confirmed by the reference to D1 in
                                                                    2.1 A disclaimer may be allowable in order to:
the original application, the disclosure of D1 could not be
considered as being accidental within the meaning of G 1/03.
                                                                    – restore novelty by delimiting a claim against state of the art
Furthermore, since D1 related to the same technical effect as
                                                                    under Article 54(3) and (4) EPC;
the patent in suit, and since its starting polymers to be cured
were structurally identical to those used in the claimed
                                                                    – restore novelty by delimiting a claim against an accidental
process, D1 could be considered as a suitable starting point
                                                                    anticipation under Article 54(2) EPC; an anticipation is
for assessing inventive step.
                                                                    accidental if it is so unrelated to and remote from the claimed
                                                                    invention that the person skilled in the art would never have
The appellant argued that the disclaimer had been made in
                                                                    taken it into consideration when making the invention; and
good faith according to the Guidelines and in accordance
with the practice of the boards of appeal at the time when


                                                Page 53 of 154
– disclaim subject-matter which, under Articles 52 to 57 EPC,
is excluded from patentability for non-technical reasons.           (c) Is it of relevance whether the disclaimer is needed to
                                                                    make the claimed subject-matter novel over the prior art?
2.2 A disclaimer should not remove more than is necessary
either to restore novelty or to disclaim subject-matter             (d) Is the criterion applicable that the disclosure must be
excluded from patentability for non-technical reasons.              accidental, as established by prior jurisprudence, and, if yes,
                                                                    when is a disclosure to be regarded as being accidental, or
2.3 A disclaimer which is or becomes relevant for the
assessment of inventive step or sufficiency of disclosure           (e) is the approach to be applied that a disclaimer which is
presents an extention not allowable according to Article            confined to disclaiming the prior art and has not been
123(2) EPC.                                                         disclosed in the application as filed is allowable under Article
                                                                    123(2) EPC, but that the examination of the subject-matter
2.4 A claim containing a disclaimer must meet the                   claimed for the presence of an inventive step has then to be
requirements of clarity and conciseness of Article 84 EPC.          carried out as if the disclaimer did not exist?

(Also refer to II.B. Claims: 1.2.1 Admissibility of disclaimers)    The case is now pending as G 1/03.
  2002
In T 351/98, issued after T 323/97, the board noted that,           In T 525/99 (OJ EPO 2003, 452), issued after T 351/98, the
according to the established case law on disclaimers                board came to the conclusion that disclaimers based solely
(Reasons 11, in particular citing T 982/94), where an overlap       on an Article 54(3) EPC prior art document were not grounds
occurred between the prior art and the claimed subject-             for an objection under Article 123(2) EPC. Established case
matter, specific prior art could be excluded by disclaimer to       law on this point giving a clear answer, the board held that no
establish novelty even in the absence of support for the            referral to the Enlarged Board of Appeal was necessary,
excluded matter in the application as filed. Where, as in this      even though the parties had made it aware of the pending
case, this prior art was formed by third-party patent               case T 507/99 and the possibility of a referral.
applications which were prior art only by virtue of the
deeming provision of Article 54(3) EPC, so that the later           In T 451/99 (OJ EPO 2003, 334), citing in particular T 351/98
applicant could not know of their contents and so could not         and T 525/99, the board referred the following questions to
formulate his claims as originally filed to avoid their contents,   the Enlarged Board of Appeal:
it seemed justifiable on a balanced interpretation of the EPC
to allow the later applicant to limit his claims to what was        Is the introduction into a claim of a disclaimer not supported
novel over the Article 54(3) EPC prior art by means of a            by the application as filed admissible, and therefore the claim
disclaimer. In this situation, an overliteral insistence on a       allowable under Article 123(2) EPC, when the purpose of the
precise basis in the original disclosure for the purposes of        disclaimer is to meet a lackof- novelty objection pursuant to
Article 123(2) EPC would have the effect of extending the           Article 54(3) EPC? If yes, what are the criteria to be applied
deemed publication provisions of Article 54(3) EPC to matter        in assessing the admissibility of the disclaimer?
which was not disclosed in the earlier applications. The
board was aware that decisions of other boards of appeal (in        The case is pending as G 2/03.
particular T 323/97 of 17 September 2001) published since it        1.5.2.         Disclaimer not based upon application as
came to its decision on the claims in this case had expressed                      filed
a different view on the allowability of disclaimers; but in the
case of Article 54(3) EPC prior art this board still considered        2001
the view taken above the more appropriate interpretation of         In G 1/93 (OJ EPO 1994, 541) the Enlarged Board held that
the Convention (Reasons 45).                                        a feature which has not been disclosed in the application as
                                                                    filed but which has been added to the application during
The board in T 507/99 (OJ EPO 2003, 225), issued after T            examination and which, without providing a technical
351/98, referred the following questions to the Enlarged            contribution to the subject-matter of the claimed invention,
Board of Appeal:                                                    merely limits the protection conferred by the patent as
                                                                    granted by excluding protection for part of the subject-matter
1. Is an amendment to a claim by the introduction of a              of the claimed invention as covered by the application as
disclaimer unallowable under Article 123(2) EPC for the sole        filed, is not to be considered as subject-matter which extends
reason that neither the disclaimer nor the subject-matter           beyond the content of the application as filed within the
excluded by it from the scope of the claim have a basis in the      meaning of Article 123(2) EPC.
application as filed?
                                                                    In T 934/97, the board held that adding disclaimers infringed
2. If the answer to question 1 is no, which criteria are to be      Article 123(2) EPC unless stringent requirements, set out
applied in order to determine whether or not a disclaimer is        inter alia in T 13/97 (2.3), T 596/96 (2.2), T 863/96 (3.2) and
allowable?                                                          T 893/93, were met. In the board’s view, the conditions to be
                                                                    fulfilled before a disclaimer could be admitted were as
(a) In particular, is it of relevance whether the claim is to be    follows:
delimited against a state of the art according to Article 54(3)
EPC or against a state of the art according to Article 54(2)        (i) there had to be novelty-destroying prior art, and the
EPC?                                                                disclaimer had to be precisely formulated on the basis of that
                                                                    art and limit the invention against it
(b) Is it necessary that the subjectmatter excluded by the
disclaimer be strictly confined to that disclosed in a particular   (ii) said art had to be accidental anticipation
piece of prior art?

                                                Page 54 of 154
(iii) the art excluded had to be outside that to be considered        invention. However, that was not decisive for accepting D1
when assessing inventive step. A further condition was laid           as an accidental anticipation. The board concluded that D1
down in G 1/93, Reasons 9:                                            related to the same general technical field as that of the
                                                                      subject-matter of claim 10 and was not from a technical point
(iv) ”With regard to Article 123(2) EPC, the underlying idea is       of view so unrelated and remote that the person skilled in the
clearly that an applicant shall not be allowed to improve his         art would never have taken it into consideration when
position by adding subject-matter not disclosed in the                working on the invention (see G 1/03, OJ EPO 2004, 413,
application as filed, which would give him an unwarranted             point 2.2.2 of the reasons). Thus the disclosure of D1 could
advantage and could be damaging to the legal security of              not be considered to constitute an accidental anticipation.
third parties relying on the content of the original application”     Therefore the disclaimer in claim 10 did not fulfil the
(see also T 1146/98).                                                 conditions required to render it admissible.

In case T 323/97 (OJ EPO 2002, 476), the board held that an           In T 1050/99 the respondent (patentee) disputed the fact that
amendment to a patent by the introduction of a ”negative”             decision G 1/03 applied to his case, arguing that as the
technical feature into a claim resulting in the exclusion of          feature in question (earlier disclaimer reformulated as an
certain embodiments (ie by the incorporation into the claim of        "exclusion" feature) related to subject-matter which was
a so-called disclaimer) was, regardless of the name                   "disclosed" in the application as filed, the amendment
”disclaimer”, none the less an amendment governed by                  derived therefrom was to be regarded as a mere "waiver" of
Articles 123(2) and (3) EPC (point 2.2 of the Reasons for the         part of the disclosed invention rather than as a disclaimer.
decision). This meant – as far as the requirements of Article         Consequently, in his view, the criteria applying to
123(2) EPC were concerned – that the amended claim must               "undisclosed" disclaimers as set out in G 1/03 did not apply.
find support in the application as filed, a requirement which         In the board’s view there was no doubt that the amendment
was mandatory for the allowability of the amended patent or           "with the exclusion of..." answered to the definition of a
patent application as explained in G 3/89 (point 1.3 of the           disclaimer. Moreover, there was a basis in the application for
Reasons).                                                             the subject-matter which was excluded in the claim.
1.6          Disclosure in drawings                                   However, that subject-matter was presented as a part of the
                                                                      invention, not as an area that was to be excluded or
   2005                                                               avoided. In that sense, the disclaimer was in fact an
In T 23/02, the board said that although the claims as                "undisclosed" disclaimer because there was no disclosure
originally filed contained no reference to a method of                in the application as filed of the disclaimer per se. Dismissing
measurement for the average particle diameter, that did not           the respondent’s arguments regarding the interpretation of
mean that any method could be used to determine that                  point 2 of the order of G 1/03, the board concluded that the
parameter. If anything, the claims raised doubts as to how            ruling of G 1/03, which dealt with the allowability of
the average particle diameter had to be determined, in                disclaimers not disclosed in the application as filed, was fully
particular because the skilled person would be aware of the           applicable to the present case. T 1102/00 likewise
fact that the method of measurement was of a decisive                 considered the definition of a disclaimer. In its decision, the
nature in particle size analysis. Therefore the skilled person        opposition division had held that the disclaimer correctly
would use the description and drawings when deciding how              excluded the novelty-destroying matter disclosed in the prior
the average particle diameter was to be measured, and                 art. The board observed that the opposition division had
would come to the conclusion that when properly interpreted           apparently not examined the question of whether the
in the light of the original description, the claims as originally    disclaimer had a basis in the application as filed, that
filed already contained restrictions as to the method of              question being decisive for the criteria to be applied in
measurement for the average particle diameter of the various          assessing its allowability. The board was not convinced that
particles. Furthermore, the method of measurement for the             the passage in the application as filed cited by the appellant
average particle diameter did provide a technical contribution        provided a basis for the disclaimer at issue. Even if it were
because it affected the actual value of that parameter.               acknowledged that the subject-matter defined by the
1.7          Disclaimers: decisions applying the criteria             expression "lignées cellulaires de mammifères" (as in the
                                                                      disclaimer) corresponded exactly to that defined by the
             established by G 1/03 and G 2/03
                                                                      expression "cultures de cellules de mammifères" (as in the
   2005                                                               application), it could not be inferred from the disclosure
In T 1049/99 the board concluded that contrary to what the            of the application as filed that the applicant intended to
respondent (proprietor) claimed, the skilled person would             exclude such subject-matter from the scope of protection
have taken the teaching of document D21 into consideration            sought. Thus the board came to the conclusion that the
when working on the invention in search of a solution to the          disclaimer had no basis in the application as filed. It then
technical problem defined by the respondent, using                    applied the criteria established by G 1/03 to be applied in
appropriate and relevant means to resolve his problem in the          assessing the allowability of a disclaimer which was not
same technical field as that of the patent in suit. Moreover,         disclosed in an application as filed.
contrary to the respondent’s conclusions at the hearing, the
board stressed that the fact that a document was difficult to         In T 970/02, the board acknowledged the fact that the
find in published prior art or was difficult for the skilled person   "negative" feature was introduced in order to establish
to access was not sufficient to justify the conclusion that it        novelty with respect to E3, and that this document as closest
constituted an accidental anticipation (see also on p. 26 and         prior art was also of relevance in respect of inventive step. In
29).                                                                  the board’s view, however, since the amendment and the
                                                                      alleged "disclaimer" were clearly supported by the original
In T 217/03, on the issue of whether document D1 was an               disclosure the conditions set out in G 1/03 did not apply to
accidental anticipation, the board stated that D1 did not deal        the case in point.
explicitly with the technical problem underlying the claimed

                                                 Page 55 of 154
In T 285/03 the board found that the interpretation offered by       both technically sensible, neither of them was directly and
the appellant amounted to a disclaimer although it was not           unambiguously derivable from the general disclosure of the
phrased in the usual form. However, that disclaimer was not          application as filed. Consequently, claim 1 of the main
based on a particular prior art disclosure, whether accidental       request extended beyond the overall teaching of the
or not, but tried to delimit the claim against any potential prior   application as originally filed.
art disclosure, contrary to the principles set out in G 1/03. T         2004
747/00 relates to the condition set by G 1/03 (Order 2.2) that       In accordance with the established jurisprudence of the
a disclaimer should not remove more than is necessary                boards of appeal, the relevant question to be decided in
either to restore novelty or to disclaim subject-matter              assessing whether an amendment adds subject-matter
excluded from patentability for non-technical reasons. The           extending beyond the content of the application as filed is
board concluded that since, in the absence of a novelty              whether the proposed amendments were directly and
destroying disclosure, the disclaimer removed subject-matter         unambiguously derivable from the application as filed.
without any need to do so, that disclaimer necessarily
removed more than was necessary to restore novelty, which            3.1           The "novelty test"
was not allowable.                                                      2003
                                                                     In T 433/01 the board’s view was that the second auxiliary
In T 10/01 the scope of the disclaimer was broader than was          request would in all probability also have failed to meet the
necessary to restore novelty. The board nevertheless                 requirements of Article 123(2) EPC because it did not satisfy
referred to point 3 of the reasons of G 1/03, saying that it         the criterion derived from T 201/83 (OJ EPO 1984, 481, point
could also be inferred from that decision that a disclaimer          12 of the reasons) that for a generalisation based on a value
that was broader than strictly necessary to restore novelty          described in an example to be admissible, that value had to
might be allowed, depending on the circumstances of the              be manifestly independent of the other features of the
case, if that proved necessary to prevent any lack of clarity in     example in terms of the relevant technical properties (T
the claim that might otherwise result. However, in the case at       433/01, point 5.2.4 of the reasons).
issue there was no apparent justification for the disclaimer
being broader than the disclosure in document (1).                   3.2           Deducibility of amendments from the
                                                                                   application as filed
In T 739/01, applying G 1/03, the board stated that with                2004
respect to the admissibility of disclaimers, it did not matter if
                                                                     In the board’s view in T 686/99 the application as filed
the skilled person found reasons in the relevant prior art
                                                                     disclosed in an undifferentiated way different categories of
document that make him believe that the particular novelty
                                                                     base oils without any pointer regarding the selection of one
destroying embodiment in the context of the citation
                                                                     particular category thereof. Priority was not given to ester oils
appeared accidental. As long as the document in which this
                                                                     from the original host of equivalent base oils.
embodiment was set out related to the same technical field
as the alleged invention, the anticipation was related and not
                                                                     Therefore the board came to the conclusion that combining
remote. Accordingly claim 1 of the main request in this case
                                                                     in claim 1 a base oil mandatorily comprising ester oils with
contravened Article 123(2) EPC.
                                                                     the hydrofluorocarbons listed in claim 1 resulted from a
                                                                     multiple selection within two lists of alternative features,
2.          Divisional applications                                  namely of ester oils from the list of base oils and of
     2004                                                            hydrofluorocarbons from the list of refrigerants, thereby
In T 402/00 the board confirmed that, in case of a divisional        generating a fresh particular combination. The content of the
application, the requirement of Article 76(1) EPC is to be           application as filed must not be considered to be a reservoir
satisfied separately from and supplementary to that of Article       from which individual features pertaining to separate sections
123(2) EPC. While the former ensures that a divisional               could be combined in order to artificially create a particular
application does not extend beyond the content of the earlier        combination. In the absence of any pointer to that particular
parent application, the latter ensures that, once the                combination, this combined selection of features did not, for
provisions of Article 76(1) EPC have been met, the divisional        the person skilled in the art, emerge clearly and
application may not be amended after its filing in such a way        unambiguously from the content of the application as filed.
that it contains subject-matter extending beyond the content
of the divisional application as filed. In order to determine        In T 962/98 the appellant argued that the claimed subject-
whether or not the divisional application offends against the        matter derived from Example 1D and the content of the
provisions of Article 76(1) EPC, in accordance with the              application as originally filed. In particular, tests carried out
established jurisprudence it has to be examined whether              on the composition of Example 1D showed that the "four
technical information has been introduced into that divisional       surfactants" could be applied in a more general context,
application which a skilled person would not have objectively        present claim 1 being, furthermore, consistent with the
and unambiguously derived from the earlier parent                    description.
application as filed (see also T 423/03).
                                                                     The board did not exclude that there might exist situations
                                                                     where some characteristics taken from a working example
                                                                     may be combined with other features disclosed in a more
3.          "Tests" for the allowability of an amendment             general context without necessarily creating an objectionable
     2005                                                            intermediate generalisation. However, under Article 123(2)
In T 1067/02 the board came to the conclusion that the               EPC, such an intermediate generalisation was only
unclear nature of the amendment introduced upon grant in             admissible if the skilled person could recognise without any
claim 1 as filed, ie the introduction of the term "complete",        doubt from the application as filed that those characteristics
allowed two different interpretations and, although they were        were not closely related to the other characteristics of the
                                                                     working example and applied directly and unambiguously to

                                                Page 56 of 154
the more general context. In other words, in order to be                       B. Article 123(3) EPC
acceptable, this intermediate generalisation must be the
result of unambiguous information that a skilled person would
draw from the review of the example and the content of the         1.           General issues
application as filed.                                                   2004
                                                                   In T 241/02 in the board’s view neither the fact that the
In the present case it was, in the board’s view, not possible      appellant (proprietor of the patent) approved the text of the
to conclude without any doubt whether or not those four            patent in suit, nor considerations with respect to legal
surfactants either could be singled out of the composition of      certainty added to the requirements relating to amendments
Example 1D and used with other carriers or were only               in Rule 57a or Article 123(2) EPC. The grant of a patent
adapted to the specific composition disclosed in Example 1D.       therefore did not necessarily constitute a final and automatic
The skilled reader was given no guidance, either in Example        cut-off point excluding any reinsertion of deleted subject-
1D itself, or in the more general description as to which          matter (in the present case reinsertion of portions of the
components of Example 1D should be retained unchanged,             description relating to the process claimed).
and which could be varied at will. This situation of doubt was
in contradiction with the requirement that an amendment be         The said reinsertion complied in this case both with Rule 57a
directly and unambiguously derivable from the application as       and Article 123(2) EPC. It remained therefore for the board to
filed. Nor could this conclusion be rebutted by the tests          examine whether the requested reinsertion satisfied Article
carried out on the composition of Example 1D. Contrary to          123(3) EPC.
the appellant’s submissions, in order to assess whether an
amendment complies with the requirements of Article 123(2)         The opposition division concluded on the basis of decision T
EPC, the question was neither whether or not a skilled             1149/97 (OJ EPO 2000, 259) that reinsertion would not be
person could design other compositions in view of the              possible, since it would contravene Article 123(3) EPC, but
directions given by the tests nor whether or not the amended       without referring to any specific parts or making any
subject matter was consistent with the description.                connection between parts to be reinstated and any concrete
  2001                                                             conclusion as to how the product claims would be extended
In deciding on the admissibility of the newly submitted            in contravention of Article 123(3) EPC.
documents of the patent in suit the board of appeal noted in
T 925/98 that according to the respondent, the range 30% to        The board decided that, in contrast to the situation in T
50% given in claim 1 infringed Article 123(2) EPC, since such      1149/97, in the present case the appellant deleted too much
a range was not disclosed in the originally filed documents of     of the description, overlooking the relevance of parts of it to
the patent in suit, which only disclose a general range of 30%     these remaining claims. According to the board, T 1149/97
to 60% and a preferred range of 35% to 50%.                        did not lay down a strict rule. It required that an examination
                                                                   of a request for reinsertion had to be carried out with a view
The board held however that according to the established           to establishing whether or not Article 123(3) EPC, on the
jurisprudence of the boards of appeal, in the case of such a       facts of each case, was indeed infringed.
disclosure of both a general and a preferred range a
combination of the preferred disclosed narrower range and          Since the requested reinsertion had to be examined in detail,
one of the part-ranges lying within the disclosed overall          in the present case the opposition division’s decision was not
range on either side of the narrower range is unequivocally        sufficient to reject the reinsertion as a whole. Since at this
derivable from the original disclosure of the patent in suit and   point it was uncertain which parts of the requested
thus supported by it (see T 2/81, OJ EPO 1982, 394, point 3;       reinsertion still might offend one or more requirements of the
T 201/83, OJ EPO 1984, 481; and also T 53/82, T 571/89, T          EPC and the further patentability criteria had not yet been
656/92, T 522/96 and T 947/96, not published, but which all        examined in the opposition proceedings, the board decided
refer to T 2/81). Thus, claiming a range from 30–50% did not       to remit the case for further prosecution.
contravene Article 123(2) EPC. In the present case, further,
graphs indicated that the claimed range was in fact the most       In accordance with the established case law of the boards of
efficient one.                                                     appeal the legal notion "protection conferred" in Article
                                                                   123(3) EPC refers to the totality of protection established by
In case T 329/99 the board stated that a clear distinction         the claims as granted and not necessarily to the scope of
must be made between the questions of whether a particular         protection within the wording of each single claim as granted.
embodiment was disclosed by an application, be it explicitly       Under Article 123(3) EPC, the patentee is generally allowed
or implicitly, or/and whether this embodiment was merely           to redraft, amend or delete the features of some or all claims
rendered obvious by the application’s disclosure (see T            and is not bound to specific terms used in the claims as
823/96 of 28 January 1997, not published in the OJ EPO,            granted as long as the new wording of the claims does not
Reasons 4). A particular technical embodiment might be             extent the scope of protection conferred as a whole by the
rendered obvious on the basis of the content of an                 patent as granted (and does not violate the requirements
application as filed without, however, belonging to its explicit   under Article 123(2) EPC). Thus, in the board’s view in T
or implicit disclosure and, therefore, without serving as a        579/01, in order to assess any amendment under Article
valid basis for amendments complying with the requirements         123(3) EPC after grant, it is necessary to decide whether or
of Article 123(2) EPC.                                             not the totality of the claims before amendment in
                                                                   comparison with the totality of the claims after amendment
                                                                   extends the protection conferred.

                                                                   In the present case, independent claim 1 and dependent
                                                                   claims 2 to 6 of the new main request were directed to a


                                               Page 57 of 154
"vegetable plant", while the respective claims as granted            granted claim was not so clear in its technical meaning in the
were directed to a "cell in a vegetable plant".                      given context that it could be used to determine the extent of
                                                                     protection without interpretation by reference to the
The board held that in the understanding of the skilled              description and the drawings of the patent; (b) it was quite
person the term "a cell of a plant", not being qualified as          clear from the description and the drawings of the patent and
"isolated", includes various physiological and morphological         also from the examination procedure up to grant that the
states of such a cell, including both differentiated and             further embodiment belonged to the invention and that it had
undifferentiated states. The cells in the different states in        never been intended to exclude it from the protection
which they exist in a (developing) plant fall within the             conferred by the patent. In T 749/03, having regard to claim 1
protection conferred by the claim to the "cell of a vegetable        alone, the features relating to the second (transmission)
plant" as granted and the protection conferred by such claim         grating were perfectly clear in their technical meaning.
also extends to such cells in a plant. Furthermore, the              However, in combination with claim 5 they would only make
biological notion "cells of a plant" encompasses such                sense if reference were made to the description and
differentiated cells which are morphologically and functionally      drawings. Therefore requirement (a) was met. Further, there
organised to constitute a plant. This implies that also              could be no doubt that the applicant had not waived that
morphologically and functionally organised aggregates of             embodiment. Hence requirement (b) was also met.
plant cells, eg plants, fall within the protection conferred by
the granted claim to a "cell of a plant".                            3.           Change of category

The board also decided that any plant as subject-matter of
                                                                          2005
                                                                     T 1206/01 of 23 September 2004, in point 4.2 of the reasons,
claim 1 of the new main request falls within the protection
                                                                     clearly pointed out that according to the established case law
conferred by a claim to "a cell of a plant" and, finally, that the
"plant" now claimed was characterised by the same genetic            of the boards of appeal a product claim conferred protection
features as those listed in the granted claim to "a cell of a        on the claimed product, regardless of the process or method
plant".                                                              by which it was prepared. Therefore a change of category
                                                                     from a granted product claim to a process claim restricted to
                                                                     one or more methods of preparing the product did not extend
The board concluded, taking into account also the legislative
                                                                     the protection thereby conferred.
developments in Europe in respect of the legal protection of
biotechnological inventions (namely Articles 8.1 and 9 of
Directive 98/44/EC), that the amendment of the "cell of a
plant" claim to a "plant" claim was not contrary to the                          C. Relationship between Article
requirement of Article 123(3) EPC.
                                                                                 123(2) and 123(3) EPC
     2003
The board in T 1052/01 took the view that deleting examples               2005
given in claim 1 as granted ("valve, restrictor, etc.") for a        To illustrate the approach applied in a typical case
generalised feature ("hydraulic functional unit") did not            concerning the relationship between Article 123(2) and (3)
extend the protection conferred, as these examples were              EPC we can cite T 942/01, where in point 1.5.2 of the
embraced by the generalised feature which determined the             reasons it was stated that it was a principle in patent law (see
extent of the protection conferred                                   for example G 1/93, OJ EPO 1994, 541, point 11 of the
                                                                     reasons) that a patent could not be maintained unamended
2.          Correction of errors                                     in opposition procedure if a violation of Article 123(2) EPC
                                                                     had occurred during the examination procedure. In the case
     2005                                                            in point the respondents, during the opposition procedure,
In T 749/03 the respondent/proprietor had made reference to          had correctly objected under Article 123(2) EPC to the
T 190/99, which in points 2.3 and 2.4 discussed the                  deletion of the feature in question, and the appellant had
possibility of amending a granted claim to replace an                consequently reacted by cancelling the deletion, ie by
inaccurate technical statement, which was evidently                  reintroducing the deleted feature into claim 1. Such a
inconsistent with the totality of the disclosure of the patent,      cancellation of unallowable amendments during the
with an accurate statement of the technical features.                opposition proceedings was normally possible under the
According to that decision, the skilled person, when                 provisions of the EPC, except where the unallowable
considering a claim, should rule out interpretations which           amendment was a "limiting extension", so that its
were illogical or did not make technical sense. It appeared          cancellation would extend the protection conferred by the
that in T 749/03 a similar situation arose – claim 5 as              patent and therefore contravene the requirements of Article
originally filed would, if taken alone, not make technical           123(3) EPC (G 1/93, headnote I). Such a situation was the
sense, and even the simple addition of its features to the           basis for T 1149/97 (points 6.1.13 and 6.1.14 of the reasons),
features of claim 1 would result in an inadequately defined          which had been cited by the respondents. However, that
apparatus. However, by taking into account the whole                 decision did not apply to the case at issue (T 942/01), which
disclosure of the patent the skilled person might arrive at a        dealt with an unallowable extension only.
technically sensible interpretation of the claim.
                                                                     Board of Appeal 3.4.2 has recently noted in T 335/03 of 26
In that context reference was also made to T 371/88, which           July 2005 (point 3 of the reasons) that, according to G 1/93
concerned the admissibility of amending a granted claim to           (points 6 and 14 of the reasons), there is no basis in the EPC
replace a restrictive term with a less restrictive term. The         for providing a claim with a footnote to the following effect:
board in that case had ruled that such replacement was               "This feature is the subject of an inadmissible extension. No
permissible under Article 123(3) EPC if examination of the           rights may be derived from this feature"; in other words, in
extent of protection conferred by the granted claim resulted         cases of conflict between Article 123(2) and Article 123(3)
in the following conclusions: (a) the restrictive term in the        the footnote solution is inadmissible.

                                                 Page 58 of 154
     2001                                                             was not met here. This theoretical possibility of escaping
In T 553/99 the conflict between Article 123(2) and (3) EPC           from the Article 123(2) and (3) trap was thus ruled out even if
was solved by the addition of a further feature which was             the appellant’s conclusion was right that the passage
properly disclosed and rendered the undisclosed feature               "cooling at room temperature" merely excluded protection for
inessential. Indeed following G 1/93, the board stated in T           part of the subject-matter of the claimed invention as covered
553/99 that if a claim as granted contained an undisclosed,           by the application.
limiting feature in contravention of Article 123(2) EPC it could
be maintained in the claim without violating Article 123(2)                       D. Rule 88 EPC, second sentence
EPC provided that a further limiting feature was added to the
claim which further feature was properly disclosed in the
                                                                      1.           Relation to Article 123(2) EPC
application as filed, and deprived the undisclosed feature of
all technical contribution to the subject-matter of the claimed            2002
invention.                                                            In T 438/99 the appellant/opponent’s contention was that the
                                                                      description had been amended impermissibly by deletion of
1.          Cases of conflict                                         the phrase ”in the (111) direction”, no matter which
                                                                      alternative form of the offered correction was taken into
     2003                                                             account: deletion with replacement by ”in the (110) direction”
T 657/01 provided a recent example of the inescapable                 (main request) or simple deletion (ie without replacement:
Article 123(2) and (3) EPC trap. The invention in this case           first and second auxiliary requests).
concerned a process for obtaining granular forms of additives
for organic polymers. In the main request the relevant                The board recalled the criteria set out in G 11/91 (OJ EPO
passage after amendment read as follows: "... cooling the             1993, 125), concerning the relationship between Rule 88,
extrudate at room temperature and cutting it into pellets ...".       second sentence, EPC and Article 123(2) EPC, to be applied
                                                                      when assessing whether a correction was of a strictly
The main arguments of the respondents/ opponents were the             declaratory nature and thus did not infringe the prohibition of
following: the feature "cooling at room temperature" in claim         extension under Article 123(2) EPC. The board concluded
1 of all requests went beyond the content of the application          that the first precondition (Reasons 3.1) to be met by the
as filed. However, this feature could not be deleted because          corrective amendment was fulfilled.
it was already comprised in the granted version of claim 1,
with the consequence that its removal would result in an              As to the second precondition (Reasons 3.2), that it should
extension of the granted scope, contrary to Article 123(3)            be immediately evident that nothing else would have been
EPC.                                                                  intended than what was offered as the correction, the board
                                                                      judged this to be quite implausible, especially with regard to
On the basis of the arguments of the appellant and the                the offered correction of deletion without replacement. In the
respondents, the board decided that since the passage                 board’s judgment, the doubt as to the likelihood that the
provided a technical contribution to the claimed subject-             drafter of the application as filed while writing ”in the (111)
matter it could not, in application of the conclusions drawn in       direction” intended not to refer to any direction whatever,
G 1/93 (OJ EPO 1994, 541, point 16 of the reasons), be                which would be the effect of the proposed corrective
considered not to extend beyond the content of the                    amendment, was so great as to border on certainty. The fact
application as filed. Nor could this scopelimiting passage be         that a term or phrase could not be interpreted or construed
deleted or replaced by another feature disclosed in the               because it was unresolvably ambiguous did not necessarily
application without contravention of Article 123(3) EPC (G            mean that its deletion was a permissible amendment under
1/93, point 13 of the reasons).                                       Article 123(2) EPC; there remained a residual clear meaning
                                                                      in the ambiguous term, eg, as in the present case, that a
Indeed, according to the board, the appellant’s assertion that        specific direction was taught, and suppressing that fact
to the skilled person the terms "cooling at room temperature"         resulted in a different technical teaching. In the unamended
and "cooling to room temperature" meant the same and that             text the reader was taught that the direction was significant;
for this reason the term "cooling at room temperature" was            in the proposed amended text the reader was taught, at least
not objectionable under Article 123(2) EPC was at variance            implicitly, that the direction was not significant.
with the ordinary meaning of the two prepositions "at" and
"to" in the present context. "Cooling at room temperature"            Hence the board concluded that the second precondition was
clearly and unambiguously related to the thermal conditions           not met by the offered correction of deletion of (111) without
under which the extrudate was cooled, whereas "cooling to             replacement (other than consequential grammatical
room temperature" described the final temperature of the              amendment) in accordance with the respondent’s first and
cooled extrudate, ie after its exposure to the cooling                second auxiliary requests.
environment.
                                                                      Since all the respondent/proprietor’s requests ultimately
Also, the appellant’s alternative argument that the added             involved amendments to the application or patent which were
term "cooling at room temperature" in accordance with G               not permissible under Article 123(2) EPC, they were all
1/93 could remain in claim 1 because it did not provide a             refused.
technical contribution to the claim’s subject-matter failed
because the temperature at which the extrudate was cooled
was clearly a technical feature of the claimed process, albeit                    E. Divisional applications
not necessarily essential for its overall technical feasibility. It
followed that the condition of a missing technical contribution       1.           Subject-matter of a divisional application
set out in G 1/93 on whose basis added matter could be
considered as not extending beyond the application as filed                2005

                                                 Page 59 of 154
The filing of a divisional application is governed by Article 76    requirement of Article 76(1), second sentence, EPC. G 3/06
EPC which stipulates in paragraph 1, second sentence, that          concerns the question whether a patent granted on a
a divisional application "may be filed only in respect of           divisional application having the same deficiency could be
subject-matter which does not extend beyond the content of          amended in order to overcome the ground of opposition
the earlier application as filed". Thus, in the case of a           under Article 100(c) EPC. Case G 1/06 concerns the
divisional application, the requirement of Article 76(1) EPC is     question how the requirements of Article 76(1) EPC are to be
to be satisfied separately from and supplementary to that of        interpreted in the case of a sequence of divisional
Article 123(2) EPC.                                                 applications, each divided from its predecessor.

While Article 76(1) EPC requires a divisional application not       In T 39/03 (OJ EPO 2006, 362) the board was well aware
to extend beyond the content of the earlier application, Article    that, where a divisional application offends against the
123(2) EPC stipulates that, once the provisions of Article          provisions of Article 76(1) EPC, it is the established practice
76(1) EPC have been met, the divisional application may not         of the EPO to allow the applicant at any later stage of the
be amended after filing in such a way that it contains subject-     examining procedure to make amendments which bring it
matter extending beyond the content of the divisional               into line with Article 76(1) EPC, and to consider the corrected
application as filed (T 402/00, T 423/03).                          application, provided it also satisfies Article 123(2) EPC with
                                                                    regard to its version as filed, as a valid divisional application
In order to determine whether or not the divisional application     filed on the date of filing of the earlier application and having
offends against the provisions of Article 76(1) EPC, it has to      the benefit of any right of priority (see Guidelines A.IV, 1.2.1
be established whether technical information has been               and 1.2.2, C-VI, 9.1.4 to 9.1.6). The board, however, had
introduced into that divisional application which a skilled         strong reservations as to the correctness of this practice in
person would not have objectively and unambiguously                 the light of the recent case law regarding the treatment of
derived from the earlier application as filed (T 402/00, T          divisional applications filed as divisional applications of
423/03). In T 90/03 the board referred to the ruling in T           earlier divisional applications, and concerning the provisions
797/02 that the invention or group of inventions defined in the     of Rule 25(1) EPC setting a time limit for the filing of
claims of a divisional determines the content of the                divisional applications.
divisional application per se.
                                                                    The board therefore referred the following questions to the
Article 100(c) EPC provides that, if the patent is granted on a     Enlarged Board of Appeal:
divisional application, the European patent may not be
amended in such a way that it contains subject-matter which         (1) Can a divisional application which does not meet the
extends "beyond the content of the earlier application as           requirements of Article 76(1) EPC because, at its actual filing
filed". In T 643/02 the board stated that Article 100(c) EPC        date, it extends beyond the content of the earlier application,
did not include a definition of the term "earlier application       be amended later in order to make it a valid divisional
as filed", which may be either the parent application or the        application?
grandparent application as filed, eg in the case of a divisional
application from a divisional application. In this case,            (2) If the answer to question (1) is yes, is this still possible
however, the European patent in suit was accorded the same          when the earlier application is no longer pending?
filing date (20 September 1989) and date of priority (21
September 1988) as the grandparent application. Article             (3) If the answer to question (2) is yes, are there any further
76(1) EPC provides that, if the divisional application does not     limitations of substance to this possibility beyond those
extend beyond the content of the earlier application as filed,      imposed by Article 76(1) and 123(2) EPC? Can the corrected
it is deemed to have been filed on the date of filing of the        divisional application in particular be directed to aspects of
earlier application and has the benefit of any right to priority.   the earlier application not encompassed by those to which
In the light of this article, the "earlier application" to which    the divisional as filed had been directed?
Article 100(c) EPC refers is the application whose date of
filing is claimed in the divisional application upon which the      By decision T 1040/04 (OJ EPO 2006, ***), Technical Board
patent in suit is based (with the corresponding priority right).    of Appeal 3.2.03 has referred the following point of law to the
Accordingly, "the content of the earlier application as filed",     Enlarged Board of Appeal: Can a patent which has been
beyond which according to Article 100(c) EPC the subject-           granted on a divisional application which did not meet the
matter of the European patent may not extend as a result of         requirements of Article 76(1) EPC because at its actual date
amendments, is that of the grandparent application as filed.        of filing it extended beyond the content of the earlier
                                                                    application be amended during opposition proceedings in
2.          Validity of divisional applications                     order to overcome the ground of opposition under Article
                                                                    100(c) EPC and thereby fulfil said requirements?
     2005
Three currently pending cases (T 39/03, pending under Ref.          By decision T 1409/05 (OJ EPO 2006, ***), Technical Board
No. G 1/05, T 1409/05 pending under Ref. No. G 1/06, T              of Appeal 3.4.03 has referred the following points of law to
1040/04 pending under Ref. No. G 3/06) before the Enlarged          the Enlarged Board of Appeal:
Board of Appeal concern questions with regard to validity of
divisional applications. Having regard to Article 8 of its Rules    (1) In the case of a sequence of applications consisting of a
of Procedure, the Enlarged Board of Appeal has decided to           root (originating) application followed by divisional
consider the points of law referred to it in consolidated           applications, each divided from its predecessor, is it a
proceedings. Case G 1/05 concerns the question whether a            necessary and sufficient condition for a divisional
divisional application, which at its filing date extended           application of that sequence to comply with Article 76(1),
beyond the content of the earlier application as filed, can still   second sentence, EPC, that anything disclosed in that
be amended during examination in order to meet the                  divisional application be directly, unambiguously and

                                                Page 60 of 154
separately derivable from what is disclosed in each of the         receiver, was not entitled to the claimed priority date, but only
preceding applications as filed?                                   to the filing date.
                                                                      2001
(2) If the above condition is not sufficient, does said            Under Article 87(1) EPC, a European patent application
sentence impose the additional requirement                         enjoys the priority of an earlier application only if it is for the
                                                                   same invention.
(a) that the subject-matter of the claims of said divisional be
nested within the subject-matter of the claims of its divisional   In opinion G 2/98 (OJ EPO 2001, 413) the Enlarged Board of
predecessors?                                                      Appeal addressed the whole concept of ”the same invention”
                                                                   in Article 87(1) EPC. In recent years, boards have applied
Or                                                                 different yardsticks to assess identity of invention between a
                                                                   previous and subsequent application. One was to check
(b) that all the divisional predecessors of said divisional        whether all the features of the invention claimed in the
comply with Article 76(1) EPC?                                     European patent application were disclosed in the priority
                                                                   document (”novelty test”). In T 311/93 and T 77/97 in
       IV. PRIORITY                                                particular, boards looking at the validity of priority claims
                                                                   continued to apply the criterion of at least implicit disclosure
                                                                   used for the disclosure test under Article 123(2) EPC. Other
            A. Priority right of the applicant                     decisions however followed the principle, developed in
            or his successor in title                              ”Snackfood” (T 73/88, OJ EPO 1992, 557), that adding
                                                                   nonessential features which merely limited the scope of
     2005                                                          protection did not invalidate the priority claim. T 73/88 had
In T 5/05 the board stressed that only European applications       held that the priority right was not lost if a claim in the
filed by the applicant himself or by his successor in title were   subsequent application contained a feature which, although
relevant for the fulfilment of the requirement derived from        not disclosed in the earlier application, merely limited the
Article 87(4) EPC that the application giving rise to a priority   patent’s scope compared with the disclosure in the priority
right must be the first application. The inventor was not          document – provided the additional feature did not change
relevant. Applications filed by various applicants figured         the character and nature of the invention.
alongside one another as state of the art within the meaning
of Article 54(2) or (3) EPC. The board also rejected the           In G 2/98 the Enlarged Board of Appeal, ruling on points of
respondent’s argument that the economic aspect was                 law referred by the President regarding the interpretation of
relevant to the requirements relating to priority and that the     Article 87(1) EPC, first considered whether interpreting ”the
two wholly-owned subsidiaries of the same parent company           same invention” narrowly was consistent with the relevant
were not independent of each other in view of their                Paris Convention and EPC provisions. A narrow
association through the parent. Legal acts were in principle       interpretation means that the subject-matter of a claim which
attributable to the (legal) person who had performed them.         defines the invention in a European patent application – ie
Exceptions to this needed a legal basis, which did not exist in    the specific combination of features in that claim – has to be
the law relating to priority.                                      at least implicitly disclosed in the application whose priority is
                                                                   claimed. The Enlarged Board held that a broad interpretation,
1.           Interpretation of the concept of ”the same            distinguishing between those technical features which related
             invention” referred to in Article 87(1) EPC           to the function and effect of the invention and those which did
                                                                   not – with the result that an invention could still be
     2002                                                          considered ”the same” even if a feature were amended,
In T 744/99 the appellant had argued that claim 8 was not          deleted or added – was inappropriate and inconducive to
entitled to priority because the British patent application from   proper exercise of priority rights. To ensure a practice fully
which priority was claimed did not disclose a receiver. The        consistent inter alia with equal treatment for applicants and
respondent was of the opinion that, according to G 2/98 (OJ        third parties, legal certainty and the principles for assessing
EPO 2001, 413), common general knowledge should be                 novelty and inventive step, ”the same invention” had to be
taken into account and that in the patent in suit the general      interpreted narrowly and in a manner equating it to ”the same
principles for the construction of a suitable receiver formed      subjectmatter” in Article 87(4) EPC. This interpretation was
part of that common general knowledge.                             underpinned by the Paris Convention and the EPC, and was
                                                                   entirely consistent with opinion G 3/93 (OJ EPO 1995, 18).
The board noted that the requirement for the subject-matter,       The Enlarged Board therefore ruled as follows on the points
given of a claim to be derivable ”directly and unambiguously,      of law referred to it:
using common general knowledge from the previous
application as a whole” in accordance with opinion G 2/98,         The requirement for claiming priority of ”the same invention”,
such subject-matter could not be novel with respect to the         referred to in Article 87(1) EPC, means that priority of a
disclosure of the priority document. The application of            previous application in respect of a claim in a European
common general knowledge could only serve to interpret the         patent application in accordance with Article 88 EPC is to be
meaning of a technical disclosure and place it in context; it      acknowledged only if the skilled person can derive the
could not be used to complete an otherwise incomplete              subject-matter of the claim directly and unambiguously, using
technical disclosure.                                              common general knowledge, from the previous application
                                                                   as a whole.
Thus the board concluded that, since the priority document
only disclosed a new signal protocol without any disclosure        In T 647/97 the appellant/opponent submitted that the patent
of a suitable receiver, claim 8, which was directed to such a      in suit was concerned with two different inventions solving
                                                                   two different problems, and that only the first invention, which

                                                Page 61 of 154
was solved by non-fluid compositions, was entitled to the first       application. The board accepted that the latter’s reference to
priority. The board stated that the invention or subject-matter       the channel as ”filled with air” did not in itself mean that it
of a previous application is to be considered the same as that        was enclosed. However, under Article 88(4) EPC the
of a subsequent application if the disclosure of both                 previous application’s documents had to be considered as a
applications is the same. This not only requires that the             whole, and the reference therefore had to be seen together
solution to a given problem is the same, but also that the            with the other information on this matter which the skilled
problem itself is the same in both applications. As far as the        person would derive from the application. A skilled person
solution was concerned (ie the features of the main claim)            considering the priority application documents as a whole
the board accepted the respondent’s analysis showing that             would conclude, without further information, that the channel
the previous application, as a whole, disclosed the                   would be enclosed on all sides. Any other interpretation
combination of each feature of the compositions according to          would be purely speculative and not supported by the
claim 1 of the patent in suit. The board then examined                application.
whether this a priori identity of solution was corroborated by
the fact that the problems were the same. The proper
definition of the problem to be solved in the priority document
                                                                                B. Multiple exercise of the right
as understood by the skilled person reading the document                        of priority for one contracting
with his common general knowledge in the art at its filing                      state
date was decisive to that end.
                                                                         2005
The board noted that the priority document only mentioned             Two recent decisions contradict the position taken on the
solid and gel copolymer compositions for providing a                  exhaustion of priority in T 998/99. In T 15/01 (OJ EPO 2006,
sustained-release composition for treating periodontal                153) the board pointed out that, with respect to the issue of
disease (first problem), but was silent about any fluid or liquid     exhaustion of priority, the wording of Article 87(1) EPC
compositions. The skilled person would moreover not                   appeared to be open to different interpretations. Since the
consider fluid and liquid compositions as a suitable solution         EPC constituted a special agreement within the meaning of
for the problem addressed in the priority document. It is only        Article 19 of the Paris Convention, this provision was not
disclosed in the contested patent that the fluid and liquid           intended to contravene the basic priority principles of this
compositions surprisingly transform into a near solid phase           Convention. The right of priority was generally regarded as
and would therefore be suitable for treating difficult to reach       one of the cornerstones of the Paris Convention. Its basic
areas of periodontal cavities (second problem). It constituted        purpose was to safeguard, for a limited period, the interests
therefore a second invention involving a different problem            of a patent applicant in his endeavour to obtain international
and a different solution. As the priority document was                protection for his invention, thereby alleviating the negative
completely silent about this surprising property and about the        consequences of the principle of territoriality. The Paris
problem solved by the fluid and liquid compositions, the              Convention in its present version explicitly recognised the
board was satisfied that the patent in suit, which concerned          possibility of claiming multiple and partial priorities and
two different inventions, was only entitled to a partial priority,    guaranteed the right to divide patent applications while
ie for the first invention.                                           preserving the benefit of the right of priority for the divisional
                                                                      application as well (principles also recognised in Articles
2.          Disclosure of the essential features in the               76(1), second sentence, and 88(2) and (3) EPC). In the light
            priority document                                         of the above, the board considered that the priority provisions
                                                                      contained in the Paris Convention had to be construed in a
     2001                                                             manner which ensured that the general purpose they served,
In T 903/97 it depended on the validity of the first priority right   namely to assist the applicant in obtaining international
claimed whether or not intermediate document C which                  protection for his invention, was fulfilled as far as possible.
originated from the appellant and contained relevant subject-         Furthermore, the board examined more closely the
matter had to be taken into account as prior art pursuant to          circumstances under which the issue of exhaustion might
Article 54 (2) EPC.                                                   arise (splitting up of the subject-matter of the priority
                                                                      application to avoid non-unity objections; filing of a deficient
The main issue concerned the fact that in the patent in suit          subsequent application and remedying it by means of a
the modulus of elasticity of the peelable layer did not exceed        second filing; combination of the originally disclosed subject-
300 kg/mm2 whereas in the priority document P1 such upper             matter with further improvements and additional
limit was not explicitly disclosed; rather P1 explicitly referred     embodiments developed during the priority period) and
to an upper limit not exceeding 100 kg/mm2. The question              analysed the interests involved. It concluded that the same
therefore arose whether or not there was an implicit                  priority right might be validly claimed in more than one
disclosure in P1 for said modification, whereby pursuant to           European patent application; there was no exhaustion of
Article 88(4) EPC the priority document as a whole had to be          priority rights (see also p. 96, 101).
considered. The board stated there were neither explicit nor
implicit indications in P1 that the upper limit may be extended       In T 5/05 the board again confirmed that neither the EPC nor
beyond said value of 100 kg/mm2 and came to the conclusion            the Paris Convention contained any indication that the right
that an upper limit of 300 kg/mm2 had not been implicitly             of priority constituted an exception which therefore had to be
disclosed in P1. Therefore, the first priority right was not valid    interpreted narrowly and thus allowed the right of priority to
and document C had to be considered under Article 54(2)               be exercised only once for one contracting state.
EPC.

At issue in T 289/00 was whether the feature in claim 1,
namely that a channel was enclosed on all sides, was
directly and unambiguously disclosed in the priority

                                                 Page 62 of 154
            C. Applications giving rise to a
                                                                    The board recalled point 4 of the reasons of G 2/98 (OJ EPO
            right of priority                                       2001, 413), according to which it follows from Article 4H of
                                                                    the Paris Convention that "priority for a claim, ie an ’element
1.           TRIPS Agreement                                        of the invention’ within the meaning of Article 4H of the Paris
                                                                    Convention, is to be acknowledged, if the subject-matter of
     2003                                                           the claim is specifically disclosed be it explicitly or implicitly in
In J 9/98 and J 10/98 (OJ EPO 2003, 184) the Legal Board of         the application documents relating to the disclosure, in
Appeal referred the following point of law to the Enlarged          particular, in the form of a claim or in the form of an
Board of Appeal: "Is the applicant of a European patent             embodiment or example specified in the description of the
application, which was originally filed as a Euro-PCT               application whose priority is claimed." Although T 201/83 (OJ
application, entitled in view of the TRIPS Agreement to claim       EPO 1984, 481) is concerned with the original disclosure of
priority from a previous first filing in a State which was,         quantitative ranges of values within the meaning of Article
neither at the filing date of the previous application nor at the   123(2) EPC, the board considered the decision to be relevant
filing date of the Euro-PCT application, a member of the            to the question of rightful priority claims. According to this
Paris Convention for the Protection of Industrial Property, but     case law, an amendment of a range in a claim is allowable
was, at the filing date of the previous first filing, a member of   on the basis of a particular value described in a specific
the WTO/TRIPS Agreement?"                                           example, provided the skilled man could have readily
                                                                    recognised this value as not so closely associated with the
In G 2/02 and G 3/02 (OJ EPO 2004, 483) the Enlarged                other features of the example as to determine the effect of
Board decided that the TRIPS Agreement did not entitle the          that embodiment of the invention as a whole in a unique
applicant for a European patent to claim priority from a first      manner and to a significant degree. Applying the above case
filing in a state which was not at the relevant dates a member      law, the board held that the claimed priority was validly
of the Paris Convention but was a member of the                     claimed. The board had already established, in the context of
WTO/TRIPS Agreement.                                                Article 123(2) EPC, that the phrase "approximately 6 to 10"
                                                                    explicitly disclosed the number six. A range between the
            D. Identity of invention                                value 3 disclosed as preferred in Example 2 and the lowest
                                                                    value of the "range" already mentioned in the priority
     2004                                                           document for the upper limit value (at least one nucleotide
In several decisions the boards considered the application of       and a maximum of 6 to 10 nucleotides) was to be considered
the principles developed in G 2/98 (OJ EPO 2001, 413). The          disclosed by the original application.
three decisions below were concerned, in particular, with the
interpretation of the concept of "the same invention", with the     The invention at issue in T 30/01 concerned an apparatus for
disclosure in the earlier application and with the                  optical imaging and measurement. The board rejected the
reproducibility of that disclosure.                                 appellant’s argument relating to an implicit disclosure in the
                                                                    priority document of two possible implementations of the
All three decisions recalled that, according to G 2/98 (OJ          teaching of the document, noting that its description
EPO 2001, 413), the requirement for claiming priority of "the       unmistakeably indicated the provision of the light steering
same invention", referred to in Article 87(1) EPC, meant that       means "in the sample arm". In the absence of any other
priority of a previous application in respect of a claim in a       express disclosure pointing to other alternative
European patent application in accordance with Article 88           arrangements, this precise disclosure deprived of support the
EPC is to be acknowledged only if the skilled person can            appellant’s construction of the disclosure as implicitly
derive the subject matter of the claim directly and                 disclosing the provision of the light steering means in and
unambiguously, using common general knowledge, from the             outside the probe as two complementary alternative
previous application as a whole.                                    implementations – let alone as disclosing any specific one of
                                                                    these two alternatives by way of "implicit disclosure" by
1.           Disclosure in the earlier application of the           reference to common general knowledge (T 823/96, T
             invention claimed in the subsequent                    744/99 and T 818/00).
             application
                                                                    The board also pointed out that the appellant’s contention
     2004                                                           was at variance with the criterion consistently applied by the
The invention in T 423/01 concerned a method for analysing          boards of appeal that a generic disclosure implicitly
length polymorphisms in simple or cryptically simple DNA            encompassing two or more alternative embodiments can
regions. The priority document contained a definition of the        generally not give rise to a right of priority in respect of a
simple DNA sequences analysed according to the invention.           specific one of the embodiments that is neither explicitly nor
According to this definition, these sequences incorporate           implicitly disclosed (T 61/85), the latter criterion being a
short DNA motifs repeated in tandem repeats and containing          particular form of the "disclosure test" laid down in G 2/98
at least one nucleotide and a maximum of approximately 6 to         (OJ EPO 2001, 413) and constituting the logical corollary of
10 nucleotides. Example 2, which was identical to Example 2         the established principle – confirmed in opinion G 2/98 (see
in the application, described the detection of length               also T 744/99) – that no right to priority can be acknowledged
polymorphisms of a DNA sequence containing a trinucleotide          for an invention that is regarded as novel over the disclosure
sequence as repeating unit. According to claim 1 of the             of the corresponding priority document.
patent in suit, the DNA sequences in the invention
incorporated repeating units of between three and six               2.          Amendments and disclaimers
nucleotides. The respondents objected that the claimed
upper limit, in particular, could not be found in the original           2005
documents.

                                               Page 63 of 154
In T 923/00 the application as filed and the priority document       5.          The concept of "the same invention" referred
were in essence identical. The board emphasised that any                         to in Article 87(1) EPC
conclusion in favour of or against the amendments’
allowability under Article 123(2) EPC would also apply in                 2003
favour of or against the applicant’s entitlement to the claimed      In T 351/01 the board referred to G 2/98 (OJ EPO 2001,
priority, and dealt with both issues jointly.                        413), in which it had been stated that: "the concept of the
                                                                     same invention must be given a narrow or strict interpretation
3.          Priority and disclaimer                                  equating it with the concept of the same subjectmatter ... An
                                                                     extensive or broad interpretation ... making a distinction
     2003                                                            between technical features which are related to the function
As has been stated in G 2/98 (OJ EPO 2001, 413), the                 and effect of the invention and technical features which are
extent of the right to priority is determined by, and at the         not, with the possible consequence that a claimed invention
same time limited to, what is disclosed in the priority              is considered to remain the same even though a feature is
application.                                                         modified ... is inappropriate and prejudicial to a proper
                                                                     exercise of priority rights."
In G 1/03 and G 2/03 (OJ EPO 2004, 413 and 448) the
Enlarged Board held that in order to avoid any                       In the case at issue, a polynucleotide which was the subject-
inconsistencies, the disclosure as the basis for the right to        matter of claim 1 was characterised both in structural terms
priority under Article 87(1) EPC and as the basis for                (as defined in Figure 2) and by its function ("encoding a
amendments in an application under Article 123(2) EPC had            biologically active tissue factor protein which induces
to be interpreted in the same way. That meant that a                 coagulation"). Priority documents I and II disclosed a
disclaimer, not providing a technical contribution as outlined,      polynucleotide having the same function but having a
which was allowable during the prosecution of a European             different structure from that of the polynucleotide of claim 1.
patent application did not change the identity of the invention
within the meaning of Article 87(1) EPC. Therefore its               Hence the subject-matter of claim 1 could not be seen as the
introduction was allowable also when drafting and filing the         same subjectmatter as that disclosed in the priority
European patent application without affecting the right to           documents.
priority from the first application, which did not contain the
disclaimer.                                                          In T 515/00 the board referred to G 2/98 (OJ EPO 2001,
                                                                     413), where in point 8.3 of the reasons the Enlarged Board
4.          Definitions of limits                                    had warned against an approach whereby a distinction was
                                                                     made between technical features which were related to the
     2005                                                            function and the effect of the invention and technical features
In T 201/99 the cited priority applications disclosed, in            which were not. Priority could not be acknowledged if a
respect of the mean residence time of the material in the            feature was modified or deleted, or a further feature was
granulator/densifier, either the range "from about 1-6               added.
minutes" (claim 1 of both priorities) or, for all the examples, a
specific residence time of "about 3 minutes". In contrast,           The board noted that a claim passed the priority test if its
claim 1 of the granted patent claimed a mean residence time          subject-matter could be derived from the previous application
of "1-10 minutes". The appellant had argued that the upper           as a whole. It followed that comparing the claim with the
limit of "6 minutes" was not disclosed in the cited priorities as    corresponding claim of the previous application was not a
a cut-off value (ie as possibly related to the function of the       valid approach to performing the "priority test". The priority
invention and its effect) and thus constituted a feature which       test was basically a disclosure test in which the skilled reader
might be modified without changing the nature of the                 could use common general knowledge. If, in the description
invention.                                                           of the previous application, a distinction was made between
                                                                     features that were essential for the performance of the
This argument was not accepted by the board, which held              invention and features which were not, the latter could be
that, even if for the sake of argument the range of "about 1 to      deleted from the subject-matter of a claim without losing the
6 minutes" given in the priority applications was interpreted        right to priority.
as an open range extending far beyond "6 minutes", the
value of "10 minutes" as well as, for instance, the range from       6.          Enabling disclosure in the priority document
above 6 minutes up to 10 minutes still constituted selections
not disclosed in the priority applications. It followed that for a        2004
skilled person applying his common general knowledge the             In T 843/03 the board pointed out that the priority document
value of "10 minutes", at least, was not derivable directly and      had to provide an enabling disclosure (cf. eg T 81/87, OJ
unambiguously from the prior applications.                           EPO 1990, 250, point 8 of the reasons; T 193/95, point 3.1 of
                                                                     the reasons). This was well within the concept of "the same
In T 250/02 the board found that the subject-matter of a claim       invention" of Article 87(1) EPC as an incomplete technical
for a herbal essential oil in which the total amount of              disclosure could not be seen as being "the same" as a
carvacrol and thymol was at least 55%, and preferably 70%,           complete one.
by weight of the said essential oil could not be derived
directly and unambiguously from a priority document                  The board recalled that it has been established in a number
disclosing a herbal oil containing "thymol and carvacrol in          of board of appeal decisions that sufficiency of disclosure
levels of 55% to 65%".                                               presupposes that the skilled person is able to obtain
                                                                     substantially all embodiments falling within the ambit of the
                                                                     claims and that he/she, in order to reach this goal, may not
                                                                     be confronted with undue burden. In the case at issue, the


                                                Page 64 of 154
priority document consequently had to contain an enabling          answered in accordance with national law. The board came
disclosure as to the production of the specific virus-like         to the conclusion that the respondent had failed to prove that
particles (VLPs) claimed.                                          it was the successor in title for the two Italian utility model
                                                                   applications from which it claimed priority. Consequently, no
The examining division had rejected the application for lack       priority rights existed for the patent in suit.
of novelty, as in its view the first priority document was not
enabling for the production of the claimed VLP comprising
human papilloma virus-16 (HPV-16) L1 capsid protein.
                                                                               D. First application in a Paris
However, based on previous case law on the requirement of                      Convention Country
Article 83 EPC (T 19/90, OJ EPO 1990, 476) and on the
novelty requirement (T 464/94) the board concluded that,
                                                                        2005
when an applicant provided a technical disclosure and prima        In T 449/04, in order to establish whether the application
facie evidence as to certain technical elements in an              whose priority was claimed was the "first application" within
application, it was the EPO which had the burden of proof          the meaning of Article 87(1) EPC, the board had to compare
when judging that something was not shown. According to            the subjectmatter of this application with the subject-matter of
the appellant, four particles shown in an electron micrograph      the earlier application D1 (Article 87(4) EPC). In its
forming part of the priority document represented HPV type         assessment the board followed the interpretation of Article 87
16 VLPs which were the result of a procedure disclosed in          EPC given in Opinion G 2/98 (OJ EPO 2001, 413) of the
the priority document with respect to HPV-11 VLPs. The             Enlarged Board of Appeal which states firstly that the
board held that the examining division had not taken the           concept of the "same invention" in Article 87(1) EPC had to
legally appropriate approach when deciding to the                  be narrowly or strictly interpreted, and secondly, that the
disadvantage of the applicant with the reason that "... no         description of the invention of the earlier publication had to
absolute fact can be deduced from figure 7 as to whether it        be considered as a whole.
shows correctly formed HPV 16 particles or not". The board
did not see full proof of such facts as a requirement within       The application whose priority was claimed had lowered the
the framework of the EPC and could not see any serious             cobalt-content of the steel as compared to D1 without
doubts of the examining division substantiated by verifiable       adversely affecting the mechanical properties, thus solving
facts. When examining whether or not the claimed subject-          the problem of providing a maraging steel which is low in the
matter of the first priority document was enabling as required     production costs. Given the fact that D1 dissuaded from
by case law, the board came to the conclusion that a skilled       providing a maraging steel with this lowered cobalt content,
person at the filing date of the first priority document was not   the invention disclosed in D1 was not the "same invention"
confronted with undue burden when putting into practice the        as the one disclosed in the application whose priority was
claimed invention according to this document.                      claimed. Yet, at the same time, the earlier application D1
                                                                   included a comparative example, the composition of which
                                                                   fell within the elemental ranges of the maraging steel claimed
7.          Validity of priority claims                            in the present application as well as the application whose
     2003                                                          priority was claimed, which led the examining division to the
In T 998/99 (OJ EPO 2005,***) yet to be confirmed by other         conclusion that the subject-matter at issue was already
appeal board decisions, the board noted that Article 87(1)         contained in D1.
EPC made no provision for multiple filings in the same
country within the priority period for the same subject-matter     However, the board emphasised that the "same invention"
and hence the same invention in conjunction with the same          considered in Article 87(1) EPC did not encompass the
priority document. As derogations had to be interpreted            comparative examples which were clearly and definitely
strictly, only the first filing could validly claim priority.      excluded from the scope of the invention in the earlier
                                                                   application D1. Having regard to the strict and narrow
Neither Article 4.G(1) of the Paris Convention nor its             interpretation of the term "the same invention" pursuant to
equivalent in the EPC (Article 76(1), second sentence)             Article 87(1) EPC, this term was focused on what constituted
allowed a divisional application to give rise to a right of        the elements of the invention. In its arguments the board
priority with effects going back to the date of filing of the      referred also to T 693/97, where it was concluded that, when
initial application.                                               a sole invention was described in the priority document, the
                                                                   subject-matter of the comparative example could not be
8.          Priority                                               considered as another invention included in that document
                                                                   upon which a priority right could be based.
8.1          Entitlement of applicant
     2003                                                                      E. Multiple priorities for one
In T 1008/96 the board stated that from the wording of Article                 claim
87(1) EPC it was clear that the right to claim priority
belonged to the applicant or his successors in title. In the
case in point, the European patent application resulting in the    1.           Prior use and right of priority
patent in suit and the two Italian utility model applications           2005
from which priority was claimed had been filed by different        In T 665/00, there was a quite unusual relationship between
persons. Hence the question of succession in title arose.          the prior use claimed by the applicant, the invention
                                                                   disclosed in the priority document and the subject-matter of
The board held that succession in title had to be proven to its
                                                                   the disputed claims which can be summarised as follows:
satisfaction. It was a general principle of procedural law that
any party claiming a right had to be able to show that it was      (a) the alleged prior use took place between the priority date
entitled to that right (see J 19/87). This question had to be      and the filing date of the disputed patent,

                                                 Page 65 of 154
                                                                   sent because of a formal error and should therefore be
(b) the subject-matter of that prior use was described in the      considered invalid. On 30 August 2002 the second
priority document,                                                 interlocutory decision of the opposition division was issued
                                                                   as announced, and the parties filed an appeal against that
(c) the subject-matter of the prior use fell within the scope of   decision.
the claims of the disputed patent, but
                                                                   The board of appeal decided that the formalities officer’s
(d) the priority document did not necessarily describe all the     communication of 4 July 2002 was not capable of creating
subject-matters claimed.                                           significant legitimate expectations casting doubt on the legal
                                                                   effect of the decision of 10 May 2002 with the result that the
In those specific circumstances, the question arose whether        decision was to be considered null and void. According to the
the alleged prior use might be prejudicial to the novelty of the   applicable principle of the protection of legitimate
claims, even though it was described in the priority               expectations, however, the parties cannot be deemed to
document. The board observed that, under Article 88(3)             have failed to comply with the time limit for filing a notice of
EPC, the right of priority covered only those elements of the      appeal (Article 108 EPC). After all, they would undoubtedly
patent application included in the application whose priority      have contested the decision of 10 May 2002 in due time if
was claimed. Different elements of a patent application could      the opposition division had not sent the letter of 4 July 2002
have different priority dates.                                     within the unexpired time limit for entering an appeal.

In G 2/98 (OJ EPO 2001, 413, point 6.7 of the reasons), the        In T 830/03 a written decision dated 2 April 2003 was notified
Enlarged Board of Appeal had stated that the approach of           to the parties after the oral proceedings before an opposition
recognising different priority dates also applied to a claim       division. A second written decision was issued on 2 July
using a generic term or formula, provided that the use of          2003 together with a communication which suggested that
such a term or formula gave rise to the claiming of a limited      the communication of 2 April 2003 was superseded. The
number of clearly defined alternative subject-matters.             opponent filed a notice of appeal outside the period of four
Applying that case law to the case in hand, the board              months after the date of the notification of the first written
concluded that, of the different alternatives contained in claim   decision but within the time limit after the date of notification
10 of the disputed patent (relating to a powder containing         of the second written decision.
hollow microspheres the specific mass of which was
described by the generic term "less than 0.1 g/cm3"), the          The board held that the only legally valid written decision was
non-compacted powders containing "Expancel DE"                     the written decision dated 2 April 2003. However, the
microspheres were covered by the claimed date of priority.         appellant/opponent had been misled by the formalities
According to the board, the prior use claimed, which took          officer’s communication which had declared the first written
place after the date of priority and involved a product            decision to be "only a draft" and to be "superseded" by the
containing the same "Expancel DE" microspheres, could not          second written decision. The board held that in application of
therefore destroy the novelty of powders containing those          the principle of the protection of legitimate expectations the
microspheres according to claim 10 of the disputed patent,         appeal was deemed to have been filed in time.
since they were covered by the date of priority.
                                                                   In T 466/03 the board of appeal decided that, after the legally
                                                                   valid notification of a decision, the opposition division was no
       V. RULES COMMON TO ALL                                      longer authorised, even where that decision was flawed, to
       PROCEEDINGS                                                 amend it (beyond the correction of errors under Rule 89
                                                                   EPC) or to set it aside and thus to pre-empt any appeal
                                                                   proceedings which the parties were entitled to instigate.
            A. The principle of the protection                     According to the principle of the protection of legitimate
            of legitimate expectations                             expectations, however, the parties could not be deemed to
                                                                   have failed to comply with the time limit for filing the notice of
                                                                   appeal. The notice of appeal filed in due time and
1.           General issues                                        challenging the second, legally invalid decision should
     2005                                                          therefore be treated as if it had been received within the time
                                                                   limit for filing a notice of appeal against the first decision.
The Legal Board of Appeal suggested in J 17/04 that it was
the EPO’s responsibility to provide forms which catered for        The scope of the applicability of the principle of the protection
all procedural possibilities in a clear and unambiguous            of legitimate expectations was the issue in decision J 13/03.
manner. In the case in point the applicant was allowed to rely     In this case the Legal Board of Appeal decided that under
on a possible interpretation of the text of the EPO form in        Article 48(2) PCT and Article 150(3) EPC the principle of the
accordance with the principle of the protection of legitimate      protection of legitimate expectations has to apply to acts
expectations even if another interpretation was more current       performed by other authorities concerned in the Euro- PCT
(see also p. 105 and 112).                                         proceedings during the international phase such as the US
     2004                                                          Patent Office acting as receiving Office or as International
                                                                   Preliminary Examining Authority. However, in the present
Several cases dealt with an attempt by the EPO to correct a
                                                                   case no breach of the principle of the protection of legitimate
decision that had already been issued and sent to the
                                                                   expectations was found.
parties.
                                                                   The board noted that, generally, the complexity of the Euro-
In T 1081/02 the opposition division formalities officer sent
                                                                   PCT proceedings before the EPO did not per se justify the
the parties an informal letter dated 4 July 2002 informing
                                                                   application of the principle of the protection of legitimate
them that the decision notified on 10 May 2002 had been

                                                Page 66 of 154
expectations because the responsibility to be informed about         the relevant stage of the proceedings and that the user was
the proceedings lay with the applicants who wished to                in a position to correct it within the time limit.
proceed under the EPC. Otherwise every time limit could be
circumvented by referring to this complexity.                        As regards the first condition, the required handling of the
     2002                                                            case by the receiving Offices was defined, in the present
If the Office provides a professional representative with            circumstances, by Article 11(2)(a) PCT in combination with
incorrect information on the basis of which he concludes that        Rules 20.4(a) and 20.6 PCT. The only deficiency of the
the relevant legal provisions – in this case Article 122 EPC –       present international application was that it was not in a
are no longer applicable, this is not a violation of the principle   prescribed language. In the board’s view, such a deficiency
of the protection of legitimate expectations. If he does not         was immediately and readily identifiable by the receiving
realise the information is incorrect, he is guilty of                Office on the face of the application in the course of the
fundamentally inexcusable ignorance of the law; if he has            Article 11(1) PCT check. The appellant could in good faith
realised it is incorrect, he has not been misled (J 5/02).           expect a warning.
     2001                                                            In case T 296/96, only 50% of the appeal fee was paid
The principle of protection of legitimate expectations in            before the expiry of the time limit under Article 108 EPC, first
proceedings before the EPO implies that measures taken by            sentence. However, since the formalities officer invited the
the EPO should not violate the reasonable expectations of            appellant to pay the remainder of the appeal fee and
parties in such proceedings.                                         accepted its subsequent payment without comment, the
                                                                     appellant could assume in all good faith that the appeal was
In T 1029/00, before the time limit expired the patentee had         deemed to have been filed (Article 108 EPC, second
paid the appeal fee, giving the number of his European               sentence) and that, as a consequence, it was not necessary
patent application but making the payment at the German              to file an application for restitutio in integrum. The appellant
Patent and Trade Mark Office (DPMA) by mistake. He                   should thus have been invited by the EPO to file an
argued that he had thought that payment at the DPMA                  application for restitutio in integrum before the expiry of the
counted as compliance with the time limit, adding that the           one-year time limit under Article 122(2) EPC, third sentence.
EPO never gave bank account details on its correspondence.           Since there was no such invitation, the appellant, who was
The application number he had given should have led the              misled by the action of the formalities officer, must, in
DPMA to forward his payment to the EPO, which could then             accordance with the principle of the protection of legitimate
have received it in due time.                                        expectations, be treated as having paid the appeal fee in
                                                                     time. The appeal was thus deemed to have been filed.
The board, whilst noting that EPO proceedings were of
course governed by principles of good faith, found that the
appellant could hardly cite the lack of bank account
                                                                     3.          Electronic filing of documents
information on EPO correspondence as the reason for                       2005
making an incorrect cash payment. Neither the EPC nor its            The Notice from the EPO dated 3 December 2003
implementing regulations required ”automatic” provision of           concerning the electronic filing of documents within the
this information, whether on all correspondence generally or         meaning of Rule 36 EPC, which was published in the OJ
in certain specific cases. Applicants had to ascertain it for        EPO 2003, 609, states that the electronic filing of documents
themselves, just as they had to familiarise themselves with          is not admissible in opposition and appeal proceedings. In
the EPO’s procedural rules and regulations, or find out the          the ex parte case T 991/04 the appellant had filed the notice
address when they first contacted the EPO. The Office had            of appeal together with the grounds of appeal not by regular
created, for all applicants, a number of simple ways of finding      mail or faxed letter but by using the technical means of the
out its bank and giro accounts: they could enquire by letter or      epoline® system provided for by the EPO for filing documents
telephone, call in at the information office, visit the EPO          relating to a European patent application. The board held
website, or consult the monthly Official Journal. The                that the appeal did not comply with the formal requirement
appellant in question, being legally represented, could also         "filed in writing" in Article 108 EPC, but that it was deemed
have asked his lawyer for more information.                          admissible on the basis of the principle of good faith. The
                                                                     board stated that applicants could expect to be informed by
2.          Obligation to draw attention to easily                   the EPO about the use of the correct administrative channels
            remediable deficiencies                                  for filing documents with the EPO and, if they made a readily
                                                                     identifiable mistake, to be warned accordingly. This principle
     2001                                                            applied in particular with regard to the newly introduced
In case J 3/00, the appellant, a Swedish company, filed an           epoline® system because it was well-known that mistakes
international patent application at the EPO as receiving             were more likely under the new system (see also p. 89). In
Office under the PCT (RO/EPO). By mistake the description            the ex parte case T 781/04 the board also stated that an
and the claims were filed in Swedish, a language which the           appeal filed via electronic means did not comply with the
RO/EPO did not accept under Rule 12.1(a) PCT for filing of           requirement of Article 108 EPC that an appeal must be filed
international applications.                                          in writing. However, the appellant, who had filed the appeal
                                                                     via electronic means (epoline ®), had been misled into
The board pointed out that according to the consistent               believing that the appeal had been duly filed. Therefore the
jurisprudence of the boards of appeal as confirmed by G              principle of good faith demanded that the appellant’s error be
2/97, the protection of legitimate expectations required the         rectifiable and the appropriate remedy would be to allow the
EPO to warn the applicant of any loss of rights if such a            appellant’s request for restitutio in integrum. The board
warning could be expected in all good faith. This                    distinguished the facts of the case from T 514/05 (OJ EPO
presupposed that the deficiency could be readily identified          2006, ***) where the formalities officer had noted that the
within the framework of the normal handling of the case at           appeal had been filed electronically, had informed the party

                                                Page 67 of 154
that this was not permitted and advised the party to file the             2002
appeal in the normal way before expiry of the deadline. No           The decisions of the European Patent Office may only be
reaction had been received from the appellant. The board in          based on grounds or evidence on which the parties
T 514/05 held that the appeal was deemed not to have been            concerned have had an opportunity to present their
filed (see also p. 106).                                             comments (Article 113(1) EPC).

4.           Departure from previous case law and the                1.          The general principle
             principle of legitimate expectations
                                                                          2005
     2005                                                            In T 402/01 of 21 February 2005 the board noted that the
In the Notice from the EPO dated 2 November 2005                     right to a fair hearing comprises the right to be heard,
concerning divisional applications (OJ EPO 2005, 606) the            explicitly required by Article 113(1) EPC, and the general
EPO informed the public that, until the Enlarged Board of            principle of equal treatment of parties, implied by Article
Appeal has issued its decision in case G 1/05, all                   113(1) EPC in combination with Article 125 EPC. The board
proceedings before EPO first-instance departments                    held that both aspects were satisfied in the case. Both
(examining and opposition divisions) in which the decision           parties have had ample time to consider the new aspects of
depends entirely on the Enlarged Board’s decision will be            the case which had been filed with the grounds of appeal and
suspended. Cases before the boards of appeal may also be             thus over three years before the oral proceedings.
stayed. An example of a case which has been stayed                   Concerning equal treatment, the board held that neither party
pending the outcome of G 1/05 is T 242/06.                           was unfairly disadvantaged if the board was to decide the
                                                                     case based on the new documents as both the appellant and
In T 739/05, however, the board saw no reason to suspend             the respondent had been limited to arguing the new case in
the further prosecution and the final decision of the case until     front of one instance, ie in appeal proceedings (see also p.
a decision of the Enlarged Board of Appeal was issued on an          107).
important point of law which might be of importance for the               2004
case under consideration. The board held that the decision of
                                                                     In T 604/01 the board stated with reference to case T 508/01
the Enlarged Board of Appeal could not affect the outcome of
the case because of the principle of the protection of               that the right of a party to argue its case implied not only the
                                                                     right to formally present comments but also the right to have
legitimate expectations relating to pending cases. Where
                                                                     these comments duly considered by the opposition division.
existing long-standing practice laid down in publications of
                                                                     In T 508/01 the board had stated that the opportunity to
the European Patent Office is overruled by a new decision,
consistent case law allows the applicants of pending cases a         present comments guaranteed by Article 113(1) EPC was a
transitional period during which they may rely on the previous       core value of the examination procedure which not only
practice until the modifying decision is made available to the       comprised the right to present comments, but also the right
                                                                     to have those comments duly considered.
public.
     2004                                                            2.          Definition of “grounds”
In T 500/00 the board decided that a single decision of a
board of appeal cannot create a legitimate expectation that it            2002
will be followed in future, even if it is cited in the Guidelines.   In T 375/00 the appellant considered his right to be heard to
Consequently, the principle of good faith cannot be invoked          have been violated on the basis that the problem mentioned
against the application of the principles concerning the             by the opposition division in its decision was different to that
allowability of disclaimers laid down in G 1/03 (OJ EPO 2004,        discussed in the preceding proceedings.
413) to pending cases.
                                                                     The board held that the appellant’s right to be heard had not
In T 740/98 the appellant submitted that the disclaimer had          been violated, because the definition of the objective problem
been allowed by the examining division in conformity with the        was part of the arguments, not part of the grounds as
Guidelines for Examination (1994) and the then established           specified in Article 113(1) EPC.
jurisprudence of the boards of appeal. Consequently the
standards set out in the subsequent decision G 1/03 (OJ              In T 587/02 the examining division had refused the
EPO 2004, 413) could not be applied, since this would offend         application for lack of inventive step. During the proceedings,
against the principle of good faith and the protection of the        the examining division’s only comment concerning inventive
legitimate expectations of the users of the EPO. The board           step was in a communication drawing attention to the IPER
noted that the legal system established under the EPC does           drawn up by the USPTO and asserting that: ”The
not treat either the Guidelines or established jurisprudence         deficiencies mentioned in that report give rise to objections
as binding. Thus, any principle of the protection of legitimate      under the corresponding provisions of the EPC.”
expectations cannot be based on earlier Guidelines or
jurisprudence. The board held that the standards set out in G        The applicant appealed on the ground that the impugned
1/03 are applicable to this case.                                    decision violated the right to be heard because the first
                                                                     substantiated objection under the EPC was contained in the
            B. Right to be heard                                     decision to refuse the application.

     2004                                                            The board saw no fundamental objection to citing an IPER
Under Article 113(1) EPC the decisions of the EPO may only           from an International Preliminary Examining Authority other
be based on grounds or evidence on which the parties                 than the EPO, provided that it constituted a reasoned
concerned have had an opportunity to present their                   statement as required by Rule 51(3) EPC, using language
comments.                                                            corresponding to that of the EPC. In the case of an inventive
                                                                     step objection, that would require a logical chain of reasoning

                                                Page 68 of 154
which could be understood and, if appropriate, answered by          proceedings, setting out the objections, if any, and asking the
the applicant.                                                      appellant whether or not it wishes, within a fixed period of
                                                                    time, to present its comments or modify its request(s).
Since the IPER in this case did not fulfil these requirements,      Otherwise any final decision would come as a surprise to the
the board held that the applicant’s right to be heard had been      appellant, which is contrary to the principle of good faith and
violated and ordered reimbursement of the appeal fee.               fair hearing established by Article 113(1) EPC. The board
                                                                    followed in this respect the jurisprudence developed in
3.          Right to be heard and the timing of decisions           decisions T 892/92 (OJ EPO 1994, 664) and T 120/96 for
                                                                    opposition procedures, which, however, is equally applicable
     2005                                                           to examination procedures because the right to be heard is
In T 966/02, the opponent had filed two notices of opposition       an essential procedural principle governing both procedures.
in due form and time. The opposition division held that the
second set of pleadings did not constitute a notice of              4.          Right to be heard in oral proceedings
opposition but was merely a supplement to the first
opposition and that the subject-matter of claim 1 was not new            2004
as compared with document D1, which was only submitted              In T 1183/01 oral proceedings had been cancelled by the
with the second set of pleadings (notice of opposition). The        board following notification that the appellant would not be
board held that this finding infringed Article 113(1) EPC           represented. The board stated that it had not overlooked the
because the opposition division had given its decision              unconditional request for oral proceedings filed by one of the
without first asking the appellant (patent proprietor) to           respondents. Since the present decision was in favour of this
comment on the issue of novelty and inventive step and              party, its right to be heard was not violated by cancelling the
without informing it that the material submitted with the           oral proceedings.
second notice of opposition, in particular D1, was to be taken      4.1          Non-appearance at oral proceedings and the
into account in assessing novelty. In the case in hand, it was
                                                                                 right to be heard
clear that the patent proprietor regarded both notices of
opposition as inadmissible and thus felt that there was no               2003
sense in commenting on the facts until the situation had been       In T 191/98 the board dealt with the question of whether the
clarified. The appellant (patent proprietor) could not have         respondent (proprietor), who had not attended the oral
foreseen that the opposition division would give a final            proceedings, had been given sufficient opportunity to present
decision without first clarifying the procedural situation and      comments on the introduction of the late-filed document D10,
giving it an opportunity to comment on the facts in the             the interpretation of the disclosure of D10 and the reasons
clarified situation, and it came as a complete surprise to it       leading to the decision for revocation. The respondent had
that it did so (see also p. 93).                                    had more than two years’ prior knowledge of the possible
3.1          Opposition procedure                                   admission of D10 into the appeal proceedings and had been
                                                                    informed by the board that D10 was to be discussed at the
     2004                                                           oral proceedings. The appellant considered D10 to be
In T 1081/02 the board of appeal decided that the principle of      noveltydestroying. The board did not follow the appellant’s
the right to be heard had been violated since the opposition        line of argument, but it decided that the subject-matter of
division, after inviting the patent proprietor to file within two   claim 1 as granted lacked inventive step when starting from
months the documents considered necessary to maintain the           the prior art disclosed in D10, and it revoked the patent.
patent, did not wait until this time limit had expired but issued
an interlocutory decision prior to its expiry. The board held       The board referred to G 4/92 (OJ EPO 1994, 149), according
that Article 113(1) EPC, according to its wording, did not          to which new arguments based on evidence previously
apply directly to the facts of the case at issue, because it        notified to a party who does not appear at oral proceedings
merely states that a decision may only be based on grounds          may in principle be used to support the reasons for the
or evidence on which the parties concerned have had an              decision. The board considered that the respondent, when
opportunity to present their comments. The board held,              informing it of its non-appearance, should have expected that
however, that according to its spirit Article 113(1) EPC also       it would decide in substance on the patent in its granted
applied if a party is denied the opportunity to speak, as it        form, taking into account any piece of evidence filed by the
were, because a decision is issued before expiry of a period        appellant and arguments based on that evidence, including
granted to the party for the presentation of its comments.          the possibility that the line of argument based on a particular
3.2          Examination procedure                                  piece of evidence would be further developed during the oral
                                                                    proceedings.
     2004
In T 849/03 the board decided that a decision should not            Three decisions of the boards referred to the new Article
catch the parties unawares. In the examination procedure the        11(3) of the Rules of Procedure of the Boards of Appeal
right to be heard is therefore violated not only in the event of    (RPBA, OJ EPO 2003, 61), which entered into force on 1
failure to inform the applicant beforehand of the reasons           May 2003. According to Article 11(3) RPBA, "the Board shall
forming the basis of a rejection but also if, at the time the       not be obliged to delay any step in the proceedings, including
decision is issued, the applicant had no reason to expect           its decision, by reason only of the absence at the oral
such a decision.                                                    proceedings of any party duly summoned who may then be
                                                                    treated as relying only on its written case". In T 706/00 the
In the ex parte case T 922/02 the board of appeal stated that       board observed that this new RPBA provision superseded
the provisions of Article 113(1) EPC are only complied with,        the findings of G 4/92 (OJ EPO 1994, 149).
in a case where the decision is taken after remittal for further
prosecution, if the notification and invitation is made after the   In T 979/02 (ex parte), two days before the oral proceedings
remittal, typically by announcing the resumption of the             the appellants had informed the board that they would not

                                                Page 69 of 154
attend. On the afternoon of the same day they filed a single        ambiguous, and the examining division ought to have
amended set of claims for the appeal board to consider in           established what the applicant really wanted. This also
their absence. The board referred to the ex parte case T            constituted a substantial procedural violation.
70/98 and to Article 11(3) RPBA. In T 70/98 the appellants
had announced on the day before the oral proceedings that           As the board in T 706/00 pointed out, Article 113(2) EPC is a
they would not attend and had then filed a new auxiliary            consequence of the generally accepted principle of "ne ultra
request. The board in that case had concluded that the              petita", according to which a party cannot be granted
appellants had waived the opportunity of discussing their           something that it has not requested. Thus the patent office
case and, if necessary, of filing further amendments to             cannot depart from the request that has been made. It can
overcome any objections during the oral proceedings. In the         only grant or deny the request; it cannot grant more, less or
present case the board stated, for reasons of procedural            even something different. Unless a grantable text too is
economy, that it had no reasonable alternative other than to        submitted, at least auxiliarily, only the request in full can be
decide on the admissibility of the request by using the             denied (see T 186/83, G 9/92, OJ EPO 1993, 591 and G
criterion of whether the documents of the request would be          4/93, OJ EPO 1994, 875).
prima facie clearly allowable under the EPC. The board
concluded that both the description and the claims taken            In the case in point the situation was that only one request
alone prima facie revealed a number of formal deficiencies          from the appellants (proprietors) had been submitted to the
and decided not to admit the late-filed request. The appeal         opposition division, namely that the opposition be rejected,
was dismissed (see also VI.D.9.1.1).                                which was tantamount to maintaining the patent in suit. As
                                                                    the opposition division held that the subject-matter of claim 1
In T 986/00 (OJ EPO 2003, 554), in a communication                  as granted was not inventive, in keeping with Article 113(2)
accompanying the summons to oral proceedings, the                   EPC it had no alternative to revoking the patent in full.
respondent proprietor had been warned that he should be
prepared to amend the description and the dependent claims
at the oral proceedings, should the board decide to maintain
                                                                                C. Oral proceedings
the patent in amended form on the basis of one of the
auxiliary requests. Furthermore, it had been indicated that         1.           Right to oral proceedings
any written submission should be filed at the latest one            1.1           Telephone consultation
month before the oral proceedings. However, the proprietor
chose not to be represented at the oral proceedings and,                 2004
despite the warning, did not file any further amendments to         In T 1141/03 the board noted that a consultation by
the patent in suit.                                                 telephone had taken place prior to the oral hearing and that
                                                                    there were conflicting declarations as to what was said
According to Article 113(2) EPC, the board has to decide            during that consultation. The board stated that telephone
upon the patent only in the text submitted, or agreed, by the       conversations were not provided for in the EPC and did not,
proprietor. Furthermore, according to Article 11(1) and (3)         as such, form part of the formal procedure before the Office.
RPBA, a case should normally be ready for decision at the           The board thus did not consider it necessary to conduct a
conclusion of oral proceedings and the parties should               detailed investigation seeking to clarify what was said in the
provide all relevant information and documents before the           above-mentioned telephone consultation.
hearing. The board held that a proprietor who chose not to
be represented at oral proceedings should ensure that he            2.           Oral proceedings before the Receiving Section
has filed all amendments he wishes to be considered before
the oral proceedings. According to the board, this was all the           2004
more so in the case at issue, since the proprietor had been         In ex parte decision J 17/03 the board of appeal decided that
expressly warned about the possible necessity of amending           the refusal of oral proceedings before the Receiving Section
the claims and the description. The board concluded that it         did not amount to a procedural violation. Since a decision
could therefore take the decision without further ado, and it       confirming a loss of right or refusing a requested
revoked the patent.                                                 reestablishment of rights is not to be equated with the refusal
                                                                    of an application, the Receiving Section had a discretion in
                                                                    dealing with the appellant’s request for oral proceedings.
5.          Article 113(2) EPC
                                                                    While the discretion foreseen in Article 116(2) EPC was not
     2003                                                           without limits and had to be exercised in the light of
Article 113(2) EPC requires the EPO to remain faithful to the       recognised procedural principles such as the right to be
text submitted or agreed by the patent proprietor.                  heard set out in Article 113(1) EPC, the Receiving Section
                                                                    had given the appellant ample opportunity to present its
In T 355/03 the board had to examine whether the applicant          case, as several letters and communications had been
had validly approved the granted text of the patent. It cited       exchanged and a consultation by telephone had taken place.
established case law to the effect that declarations of
approval of the text intended for grant were valid only if it was   3.           Request for oral proceedings
clear which text the applicant had approved. For reasons of
legal certainty, any declarations regarding procedure had to
                                                                    3.1           Further oral proceedings
be unambiguous, particularly – given their consequences –                2001
declarations terminating the proceedings; ambiguous                 In T 298/97 (OJ EPO 2002, 83) concerning the appellant’s
declarations were ineffective (see J 11/94, OJ EPO 1995,            request for further oral proceedings before any decision on
596; J 29/95, OJ EPO 1996, 489). In the case in point it was        admissibility, the board observed that as a matter of law, the
unclear which text the applicant actually wished to have as         right to oral proceedings was not to two oral proceedings on
the basis for grant. Thus his procedural declarations were          the same subject (see Article 116(1) EPC, second sentence).

                                               Page 70 of 154
Any further oral proceedings on the issue of admissibility        The board cited case law to the effect that any party
would therefore be a matter for the board’s discretion. The       summoned to oral proceedings had an obligation to give as
appellant had ample time and opportunity for over three           much notice as possible of a decision not to attend. This
years to prepare and present its arguments and indeed was,        applied to any party so summoned, whether or not it had
at its own request, given the further opportunity following the   requested oral proceedings, and it had to apply with
oral proceedings to submit evidence on the very issues            particular force to a party which had made such a request
raised at the oral proceedings. However, since the appellant      (see T 653/91 and T 930/92, OJ EPO 1996, 191). The board
was not able to overcome its own inadmissibility difficulty, no   held that for such a party to announce shortly before the
further proceedings, whether written or oral, were required.      appointed date that it might or might not attend while
An opportunity for clarification having been given and no         maintaining its request could only be an abuse of procedure.
issue requiring further proceedings having resulted, the          Whether a party which was guilty of such an abuse should
request was refused.                                              then have the benefit of the protection for absent parties as
                                                                  envisaged in G 4/92 (OJ EPO 1994, 149) had to be open to
4.          Postponing the date for oral proceedings              doubt.

     2005                                                         In the case in point, the decision against the appellant was
The Notice of the Vice-Presidents Directorates-General 2          given in his absence. The board stated that since the
and 3 dated 1 September 2000 concerning oral proceedings          decision was based only on facts and evidence already put
before the EPO (OJ EPO 2000, 456) stipulates that every           forward during the written proceedings, the appellant’s right
request for fixing another date for oral proceedings should       to be heard under Article 113(1) EPC within the meaning of
contain a statement why another representative cannot             opinion G 4/92 had not been violated.
substitute the representative prevented from attending the          2001
oral proceedings.                                                 In T 917/95 the board held that a patentee who, in inter
                                                                  partes proceedings, filed a new claim but no amended
In T 1067/03 the respondent’s representative requested that
                                                                  description and failed to attend the oral proceedings could
the oral proceedings be postponed because of a prior
                                                                  not rely on the board’s postponing its ruling simply to permit
appointment for a medical operation. The representative said
                                                                  amendment of the description, even if the new claim was
that his client was opposed to a change of representative on
                                                                  grantable.
the grounds that, in addition to the appeal in question, a
further opposition and a patent infringement case were            6.2          Right to present comments and non-
pending which together formed an intricate ensemble. In the                    attendance of a party by choice
board’s opinion, these circumstances justified postponing the       2001
oral proceedings.
                                                                  In the ex-parte case T 70/98, the appellant announced on the
     2002                                                         day before the oral proceedings that it would not attend
In T 664/00 the appellant/patent proprietor had requested an      (nearly four years after having requested oral proceedings)
adjournment of oral proceedings in order to allow them to be      and then filed a new auxiliary request. The board held that
attended by an expert from the United States, which would         this amounted to an abuse of procedure and accordingly
not have been possible on the date appointed by the board         disregarded the request as inadmissible.
since this was a public holiday in the USA.
                                                                  7.         Preparation and conduct of oral proceedings
The board rejected the request for the following reason.
National holidays in individual contracting states are not        7.1         Fixing or postponing the date for oral
recognised by the EPO for practical reasons. To allow for                     proceedings
national holidays in non-contracting states throughout the
world would be even less practical. To allow for such
                                                                    2004
holidays in just one country would discriminate against           In J 4/03 the board held that the desire of an applicant to file
parties from other states.                                        unspecified new evidence at an unspecified future date could
                                                                  not amount to a serious reason for postponing oral
                                                                  proceedings. Even in ex parte proceedings the appellant
5.          No postponement of the decision                       must attempt to file any facts or evidence he wishes to rely
     2005                                                         on before the set date of oral proceedings so that the board
Postponing the decision of the board of appeal to allow the       can exercise its discretion under Article 114(2) EPC whether
filing of a divisional application runs against the public        to admit the further evidence or not, on the basis of the
interest in having the matter decided as expeditiously as         relevant material.
possible (T 1184/03). See also on page 74.
                                                                  In addition, the desire of the appellant himself to be present
                                                                  at oral proceedings does not in itself amount to a serious
6.          Non-appearance at oral proceedings
                                                                  ground for postponing the oral proceedings to a date at
6.1          Obligation to give notice if not attending oral      which the appellant can be present, in the absence of other
             proceedings                                          special circumstances. The present appeal against the
                                                                  decision of the first instance turned essentially on how the
     2003                                                         law was to be applied to facts which were not in dispute, and
In T 692/00 the appellant (proprietor), who had requested         so the presence or absence of a party which is duly
oral proceedings, sent a fax to the board and the respondent      represented in the proceedings should have no impact on the
only four days before the appointed date indicating that he       course of the proceedings or the final decision.
might or might not attend the oral proceedings.
                                                                    2001

                                              Page 71 of 154
In T 1080/99 (OJ EPO 2002, ***) the board had made clear
in a letter sent almost three months before appointed oral        In T 64/02 the board referred to the case law under which the
proceedings that a request by a party for postponement of         opposition division’s discretion to disregard submissions filed
the oral proceedings, did not meet all the requirements of the    too late also covered amended claims presented after the
”Notice of the Vice-President Directorates- General 2 and 3       final date fixed under Rule 71a EPC. Rule 71a(2) EPC thus
dated 1 September 2000 concerning oral proceedings before         also applied to the belated submission of amended patent
the EPO”, OJ EPO 2000, 456 (”Notice”). The party, instead         claims in an auxiliary request, even if those claims had not
of attempting to supplement their original request as soon as     been requested in the summons (see also p. 108).
possible, chose to react to the board’s letter only one week         2004
before the appointed oral proceedings. The board held that it     In T 401/02 the board of appeal did not admit into the
must be considered that the additional reasons and evidence       proceedings the appellant’s amended claims which were
for the request for postponement and the fixing of a new date     presented for the first time at the oral proceedings even
for oral proceedings were received too late and that these        though the factual position had not changed. The admission
reasons could therefore not be accepted (reasons 2.1 to 2.3).     of new requests on the basis of amended patent claims
                                                                  which are submitted by the patent proprietor only at the oral
Nevertheless the board made some remarks having regard            proceedings despite a final date having been set in the
to the substance of the party’s late filed reasons. Among         summons for the submission of such requests is distinctly
them the board took the view that a ”series of business           limited in opposition appeal proceedings by Rule 71a(2) EPC
engagements” was not a reason falling within point 2.3 of the     and the case law that has evolved on this provision. The
”Notice”, since business engagements were directly                board held that the admission of the request would normally
governed and planned by the office of the patent agent or the     have to be refused if the board or one of the parties to the
representative and were not normally affected by ”external        appeal proceedings could not be expected to study the
forces” within the meaning of point 2.3 of the ”Notice”.          amended claims without postponement of the oral
Moreover according to point 2.4 of the ”Notice”, ”excessive       proceedings. The effect of the surprising last-minute
work pressure” was normally not acceptable as a ground for        submission was that the claims submitted could not be
postponement of oral proceedings. The board concluded that        studied properly and that the proceedings would be unduly
the late filed additional reasons were also insufficient within   delayed. Such action ultimately disrupted the proper conduct
the terms of the ”Notice”.                                        of the proceedings and unfairly placed the other parties at a
                                                                  disadvantage.
In T 693/95 the board decided that it had waited patiently for
two years to give the appellants (opponents) time to find a
                                                                     2003
legal representative of their choice. This they had failed to     In T 681/02 the board espoused the position adopted in T
do.                                                               1105/98 that Rule 71a(2) EPC gave it the discretion to
                                                                  disregard amended claims that the proprietor only submitted
After such a long delay there was no valid reason for             at the oral proceedings, particularly if the facts of the case
postponing oral proceedings; for reasons of equity, the board     had remained the same and further investigation was
was obliged to take into account not only the appellants’         necessary to assess the lack of patentability alleged as
interests but also those of the respondent and the public,        ground of opposition (see Case Law of the Boards of Appeal,
which had an interest in knowing as soon as possible the          4th edition 2001, p. 280).
exact extent of the protection conferred by the contested            2001
patent.                                                           In T 452/96 the board emphasised that fixing a time limit
7.2          Curtailment of notice in the summons                 under Rule 71a EPC was not to be taken as an invitation to
                                                                  submit further evidence and therefore had no impact on the
  2004                                                            power to disregard late-filed documents. With its finding that
In T 772/03 the summons to oral proceedings did not comply        the newly filed documents were less relevant than the
with the requirement to give at least two months’ notice. The     material already in the proceedings at the time in question,
board observed that the onus of proving that an agreement         the opposition division had acted in accordance with the
for a shorter notice period was reached lies with the             principles established by the case law.
examining division as the party making the claim. The board
noted that the minutes of the oral proceedings did not prove      In T 1105/98 the board ruled that Rule 71a(2) EPC was
that the representative agreed to a shorter period of notice,     applicable to proceedings before the boards of appeal.
and that the file contained no evidence that the
representative and the examining division ever discussed a        In the case in question, the patent proprietor’s auxiliary
shorter notice period.                                            request with amended claims was presented at the start of
7.3          Interpretation and application of Rule 71a           the oral proceedings, ie after expiry of the time limit set in the
                                                                  summons to oral proceedings. The respondent (opponent)
             EPC
                                                                  argued that the auxiliary request should be refused as out of
  2005                                                            time.
Rule 71a EPC stipulates inter alia that, when the EPO issues
the summons to oral proceedings, a final date for making          The board examined whether the auxiliary request could be
written submissions in preparation for the oral proceedings       refused as out of time on the basis of Rule 71a(2) EPC, and
must be fixed. New facts and evidence submitted after this        decided that the latter provision also applied to the late
date need not be considered, unless admitted on the               submission of amended claims by way of an auxiliary
grounds that the subject of the proceedings has changed.          request, even if the summons to oral proceedings had not
The same is true for applicants or patentees invited under        contained an invitation to submit them. If the patent
Rule 71a(2) EPC to submit documents which meet the                proprietor only submitted amended claims at the oral
requirements of the EPC.                                          proceedings, the board could use its discretion to disregard

                                              Page 72 of 154
them, particularly if the facts of the case had remained the     parties the time they need to study the furnished copy and to
same and further investigation was necessary to assess the       give the parties time to discuss the matter with their advisers.
lack of patentability alleged as ground of opposition.           Any objections can then be raised and considered at the oral
7.4         Computer generated presentations in oral             proceedings before the presentation is given, and a decision
                                                                 can be made if need be.
            proceedings
  2004                                                           This was the procedure followed in the present case. The
In T 1110/03 (OJ EPO 2005, 302) the board of appeal              presentation was allowed because the other side’s
considered the objection of the appellant/proprietor to the      representative had given his express consent.
manner in which one of the opponents was permitted to            7.5          Taking of minutes
argue his case at oral proceedings before the opposition
division by means of an hour long computer generated                2004
slideshow presentation containing many complex slides. The       In T 1063/02 the patent proprietor requested the opposition
board concurred with the view expressed in decision T            division to correct the minutes of the oral proceedings. The
1122/01 that there was a danger of a degree of unfairness        division decided to maintain the version of the minutes
creeping in in the unrestricted use of computer generated        without amendment, and the patent proprietor therefore filed
slideshow presentations in oral proceedings. The sheer           an appeal against the opposition division’s decision.
quantity and concentration of visual material could alter the
quality of the presentation in such a way as to depart from      The board dismissed the appeal. Under Rule 76(3) EPC, the
the basic purpose of the oral proceedings, namely to give the    minutes of oral proceedings are to be authenticated by the
parties an opportunity to present the main points of their       employee who drew them up and by the employee who
arguments orally.                                                conducted the oral proceedings. In opposition proceedings,
                                                                 the drawing-up of minutes does not seem to fall within the
In contrast to an oral presentation, in a presentation of pre-   competence of the opposition division itself. There is
prepared graphic material the balance is subtly shifted in       therefore no certainty that the minutes of oral proceedings or
favour of the presenter. This potential unfairness could be      any amendment thereof constitute a legal act falling within
mitigated by providing the other parties and the division or     the competence of one of the bodies referred to in Article
board with copies of the material to be presented in good        21(1) EPC. There is therefore likewise no certainty that the
time before the oral proceedings. In the present case the        board is competent under Article 106(1) and/or Article 111
case was remitted to the opposition division on other grounds    EPC. In any event, the board held that it could not order the
and the board noted that this would give the appellant/          amendment of the minutes of oral proceedings unless they
proprietor a first instance hearing of his considered response   manifestly and definitely differed from the actual course of
to the computer controlled slideshow presentation.               the proceedings. That was not the case here.
                                                                    2001
In T 1122/01 the board of appeal also had to decide on the       In case T 642/97, the board cited basic principles regarding
admissibility, during the oral proceedings, of a Power- Point    minutes, which according Rule 76 EPC should contain ”the
presentation which did not communicate any new facts.            essentials of the oral proceedings ... and the relevant
                                                                 statements by the parties...”. It stressed that this provision
The board explained that a PowerPoint presentation is            did not require that the minutes reflect the full arguments of
essentially a written presentation of information, thus          the parties. It was within the discretion of the minute-writer
enabling a party to present written arguments in addition to     what he considers ”essential” or ”relevant”. Whereas it was
its oral statements. It could also be a way of introducing new   required that the minutes contain the requests or similarly
means of evidence, or it could lead to a completely new and      important procedural statements, most of the arguments
unexpected presentation of the case by a party. There is         concerning patentability are normally apparent from the
therefore a risk of the other parties being caught unawares      previous written submissions or from the facts and
by this, of new procedural issues being raised, and of the       submissions in the written decision and need not be
oral proceedings becoming protracted. If no restrictions are     contained in the minutes. Nevertheless, if a party was of the
placed on the inclusion of PowerPoint presentations in oral      opinion that the minutes were incomplete or wrong since
proceedings, there is also the risk of such proceedings          essential submissions were not reflected at all in the file it
becoming "PowerPoint battles" in which the parties or their      might request the opposition division to correct the minutes
representatives try to win their arguments with increasingly     to preserve its rights. In absence of such a request, the
impressive presentations.                                        allegation of a substantial procedural violation could not be
                                                                 justified.
The board drew attention to the practice of the boards of
appeal whereby the use of visual aids such as drawings on        In case T 740/00, the appellant in its letter of 23 November
flip charts or preprepared diagrams and summaries are            1999 informed the opposition division of its opinion that the
usually admitted, provided that the board and the other          minutes sent on 20 October 1999 did not reflect the actual
parties receive copies where appropriate and provided that, if   conduct of the proceedings. However, the appellant did not
the visual aids are suspected of being more than just aids,      explicitly request a correction of the minutes, instead it relied
the other parties have the opportunity to raise appropriate      on the decision to reflect the situation as it thought it had
objections. The principles applied to such aids should also      occurred. The opposition division apparently did not consider
apply to PowerPoint presentations. A party wishing to use        this letter to constitute a request for correction of the minutes.
such a presentation should announce this intention early         Instead of examining whether the minutes actually fulfilled
enough before the oral proceedings and should send both          the requirements of Rule 76(1) EPC and then deciding
the board and the other parties a copy (either in electronic     whether or not to correct them, the opposition division argued
form, for example on a diskette, or as a paper printout). This   in essence that the minutes were correct because the
should be done early enough to give both the board and the       minutes said so. The board considered such a reasoning

                                              Page 73 of 154
circular and thus as not fulfilling the requirements of Rule      time limit of two months according to Article 8(4) RFEES. As
68(2) EPC, which required decisions of the European Patent        the appellant paid the requested surcharge in due time and
Office to be reasoned. This constituted a procedural              had previously filed evidence that payment of the sixth
violation.                                                        renewal fee had been effected, all requirements of Article
                                                                  8(3) RFEES had been fulfilled.
         D. Time limits
                                                                  2.           Interruption in the delivery of mail
  2003
The board in J 15/02 stated that the time limits under Rule
                                                                       2004
25(2), second sentence, and Rule 85a EPC respectively did         In J 14/03 the board confirmed that evidence of a disruption
not form one integrated period, even if, according to G 3/91      within the meaning of Rule 85(2) EPC provided by the
(OJ EPO 1993, 8), the two time limits were closely linked,        appellant can lead to a retrospective extension of time in a
because the benefit of an extension under Rule 85a EPC            particular case, as occurred in J 11/88, if this evidence, had it
was available only if the prescribed surcharge was paid           been known at the time, would have been such as to warrant
together with the due designation fees. In view of G 4/98 (OJ     a Presidential statement under Rule 85(2) EPC. However,
EPO 2001, 131, 147) and the different requirements for            the board found that in that case the quality of evidence was
compliance with the two time limits, the wording of Article       quite different from the case at issue, in which the only
4(1) of the Council’s decision ("Rules 15(2) and 25(2) as         evidence of interruption was that of newspaper articles. The
amended shall apply to all European patent applications in        board considered this evidence inconclusive as the articles
respect of which, on 1 March 2000, the designation fees           reported not only a number of problems caused by adverse
have not been validly paid and the time limit under existing      weather and unofficial strikes, but also measures to deal with
Rules 15(2) and 25(2) for paying them has not yet expired")       such conditions.
could not be interpreted as a time limit which included an
extension under Rule 85a(2) EPC (see also J 9/02).                            E. Re-establishment of rights
1.         Calculation of time limits                             1.           General issues
1.1         Time limit pursuant to Article 86(1) and (2)               2003
            EPC – establishment of non-observance of the          In T 552/02 the appellants (proprietors) asserted that the
            time limit under Article 8(4) RFEES                   respondents should not be a party to the proceedings with
  2001                                                            respect to the application for re-establishment. They
In J 20/00 neither the sixth renewal fee nor the additional fee   essentially based this assertion on a passage in the
according to Article 86(2) EPC had been entered in a bank         Guidelines for examination, Part E, Chapter VIII, 2.2.7, which
account held by the EPO in due time. The question then            reads as follows: "… The grounds for the decision need only
arose whether Article 8(3) RFEES (together with Article 8 (4)     be stated if the application is disallowed. This also applies in
RFEES) was applicable since it referred to the observance of      opposition proceedings since the opponents are not involved
a ”period” for payment.                                           in the procedure for reestablishment of rights". They further
                                                                  held that Article 15(2) RPBA obliged the board to state its
The board noted that is true that the expression ”period” in      grounds if it gave a different interpretation of the Convention
Article 8 RFEES at first sight could be understood as             to that provided for in the Guidelines.
meaning a time limit in the sense of a period of a certain
duration which begins on a first and ends on a later (”last”)     On the latter point the board said (a) that the members of the
day, whereas renewal fees are due on a specific single day,       board were not bound by any instructions and had only to
namely on the last day of the month containing the                comply with the provisions of the Convention, which meant
anniversary of the date of filing of the European patent          the board was not bound by the Guidelines, and (b) that
application (Rule 37(1) EPC, first sentence). However, this       Article 15(2) RPBA did not oblige the board to state grounds
was not convincing in view of the definition of periods given     for deviating from the Guidelines but simply stipulated that it
in Rule 83(1) EPC. More relevant, in fact decisive, was the       should "state the grounds for its action if it consider[ed] that
fact that in effect the due date marks the last day of a long     [its] decision [would] be more readily understood in the light
period (one year and one day – Rule 37(1) EPC, first and          of such grounds". Regarding the appeal procedure the board
second sentence in conjunction) during which a renewal fee        observed that under Article 107 EPC other parties (here the
can be validly paid (without additional fee). The board           respondents/ opponents) to proceedings (in this case
concluded that Article 8(3) and (4) RFEES apply equally to        opposition) adversely affected by a decision were parties to
the payment of renewal fees in respect of which one of the        the appeal proceedings as of right.
conditions set out in Article 8(3)(a) RFEES has been fulfilled
on or before the due date. This provision also covers             According to the board, the response to be given to the
situations where the payment order was given later than ten       application for re-establishment was of the utmost
days before the relevant point in time.                           importance for the respondents, as it affected the actual
                                                                  admissibility of the appeal and hence the reviewability of the
The board also found that the nonobservance of the time           opposition division’s decision to revoke the patent in suit.
limit and an ensuing loss of rights connected to it cannot be     From this the board deduced that it would be a breach of
established, as long as the request mentioned in Article 8(4)     Article 113(1) EPC to take a decision concerning the
RFEES has not been issued by the Office and the time limit        interests not only of the appellants but also of the
specified therein has not expired. As the examining division      respondents without giving the latter an opportunity to
failed to do so, the board was empowered pursuant to Article      present comments.
111(1) EPC (cf. T 842/90, not published in OJ EPO) to set a


                                              Page 74 of 154
On the merits, the board granted the application for re-              time which is predetermined from the outset. The Board
establishment (professional representative not obliged to             argued that this definition was corroborated by the provisions
monitor simple repetitive tasks such as mail handling by              of Article 120(a) and Rule 83(1) EPC.
secretary – no reason to doubt secretary’s ability or word –
isolated mistake by secretary – doctor’s certificate treated in       Time limits in the EPC have two conceptual elements: (1) a
confidence by board and excluded from file inspection – Rule          period of time determined in years, months or days, and (2) a
93(d) EPC)                                                            relevant date, which serves as the starting date of the time
                                                                      limit, and from which the period of time is counted. Time
2.          Applicability of re-establishment of rights               restrictions imposed on applicants by the EPC, but not
            under Article 122(1) EPC                                  having these conceptual elements cannot be regarded as
                                                                      time limits for the purposes of Article 122 EPC (J 18/04, OJ
     2003                                                             EPO 2006 ***). See also on page 74.
According to Article 122(1) EPC, a request for re-                         2004
establishment of rights is admissible only if the applicant has       In J 24/03 (OJ EPO 2004, 544) the board had to deal with
been unable to observe a time limit vis-_-vis the European            the question of whether Rule 25(1) EPC imposes a time limit
Patent Office.                                                        (for filing a divisional application) within the meaning of
                                                                      Article 122(1) EPC. With reference to J 3/83 and the
In J 24/03 (OJ EPO 2004, ***) the appellant argued that he            principles of procedural law generally recognised in the
had missed the time limit for filing a divisional application         contracting states, the board pointed out that a time limit
provided for by Rule 25(1) EPC, whereas the Receiving                 involves a period of fixed length for accomplishing a
Section held that this rule did not provide a time limit for filing   procedural act. It held that, in procedural law, the fact that a
a divisional application and that therefore Article 122 EPC           conditional act can only be accomplished before a particular
could not be applied to the case.                                     set of circumstances foreseen by legal provisions occurs
                                                                      (condition), was conceptually different from a set period of
The question therefore was whether Rule 25(1) EPC                     time imposed for doing an act (time limit). The board
imposed a time limit for filing a divisional application within       concluded that Rule 25(1) did not impose any time limit but
the meaning of Article 122(1) EPC.                                    rather set a condition, namely that the earlier European
                                                                      patent application was pending. The communication of the
The board stressed that Article 122 EPC was a procedural              day of publication to the applicant could not be regarded as
provision, and its wording was to be understood as an expert          an implicit imposition of a time limit.
in procedural law would understand it. Article 122 EPC was
applicable only if Rule 25(1) EPC imposed a time limit, ie if it
                                                                           2002
provided a period of a fixed length for accomplishing a               Article 122 EPC cannot apply to divisional applications
procedural act.                                                       because the legal provisions dealing with divisional
                                                                      applications do not contain any time limit which, in case of
In order to fulfil the provisions of Rule 25(1) EPC, the              noncompliance, would lead to a loss of rights.
divisional application should have been filed before
publication of the mention of grant, because after that time          Not every ”time limit”, ”time limitation” or ”time restriction”
the necessary condition for filing a divisional application, ie       under the EPC is also a time limit pursuant to Article 122
that the earlier application is still pending, is not fulfilled.      EPC. According to J 21/96, Rule 25(1) EPC does not lay
                                                                      down a time limit within the meaning of Article 122 but merely
In procedural law, the fact that a conditional act can only be        identifies a point in the grant procedure after which a
accomplished before a particular set of circumstances                 divisional application may no longer be filed. This decision
foreseen by a legal provision occurs (condition) is                   was taken when the former version of Rule 25(1) was in
conceptually different from a set period of time imposed for          force, but can be applied to the case in suit as well, as only
performing an act (time limit), because in the first case the         the defined point in time has been changed, from the time of
duration of the period in which the act should be completed is        approval of the text according to Rule 51(4) EPC to the
determined by the occurrence of the condition itself, whereas         moment when the earlier application is no longer pending (J
in the second case it is pre-determined from the outset.              10/01).

The result of the board’s analysis of Rule 25(1) EPC was that         3.          Admissibility of applications for re-
the rule does not impose any time limit for filing a divisional                   establishment of rights
application, but rather sets a condition, namely that the             3.1           Department competent to decide upon the
earlier European patent application is pending. Therefore, no
time limit within the meaning of Article 122 EPC is imposed
                                                                                    application
by Rule 25(1) EPC.                                                         2004
                                                                      In T 808/03, the board held that the decision by a formalities
The board came to the conclusion that Article 122 EPC was             officer acting on behalf of the examining division and granting
not applicable to the filing of a divisional application because      restitutio in integrum for a late filed notice of appeal was ultra
no time limit for filing a divisional application was provided for    vires and consequently null and void. It pointed out that the
in the EPC (see also J 10/01).                                        department competent to decide whether a notice of appeal
2.1          The meaning of "time limit"                              meets the requirements of the EPC was the board of appeal.
                                                                      While this competence in relation to admissibility of an
     2005                                                             appeal was subject to the exception of Article 109(1) EPC,
In line with previous case law and especially J 24/03, in J           this provision conferred only the limited power to set aside
3/04 the Board makes a distinction between a condition and            uno actu the department’s own decision if the appeal was
a time limit. Accordingly a time limit is defined as a period of

                                                 Page 75 of 154
considered admissible and well founded. There is no power         unobserved time limit" in the third sentence of Article 122(2)
to decide that an appeal is not admissible.                       EPC should be construed to mean "within one year of the
3.2          Time limits for filing an application for re-        applicant having knowledge of the unobserved time limit".
             establishment under Article 122(2) EPC
                                                                  As the board pointed out, this interpretation would appear to
3.2.1.         Two month time limit from the removal of the       make the starting point for calculating the two-month period
               cause of non-compliance                            referred to in the first and second sentences of Article 122(2)
                                                                  EPC the same as that for calculating the one-year time limit
  2005                                                            referred to in the third sentence.
In T 812/04 the board held that the person to be taken into
account for the purposes of establishing the point in time        This interpretation would thus, according to the board,
when the appellant was no longer prevented from carrying          deprive the third sentence of Article 122(2) EPC of any
out an unperformed act is the representative duly appointed       function, as of necessity something done within two months
under Rules 81(1) and 101(6) EPC (see also p. 88).                of a particular date would have been done within one year of
                                                                  that date. Such a reading, in the board’s view, was contrary
In T 32/04 the board considered that in the absence of a duly     to the normal rules of interpretation.
registered transfer of the application, the person responsible
for the purpose of the Office remained the applicant or his       Furthermore, the appellant did not argue that the
representative.                                                   circumstances of the case were such as to require an
                                                                  interruption of proceedings pursuant to Rule 90 EPC, and
Hence an alleged assignment of the application to a third         where Rule 90 EPC did not apply, the third sentence of
party in the absence of such a registration was "res inter        Article 122(2) EPC had to be applied as it stood.
alios acta", ie outside the ambit of the legal relationship
between the applicant and the Office.                             The appeal thus failed, the application for re-establishment
  2004                                                            being inadmissible because it had been filed outside the one-
The fee for re-establishment of rights is payable within the      year time limit under Article 122(2) EPC.
same time limit as that stipulated by Article 122(2) EPC for        2002
the filing of an application for re-establishment (J 18/03).      In J 12/98 the request for re-establishment of rights was filed
                                                                  after the one-year time limit provided for in Article 122(2)
In J 27/01 the board decided that persons absent from their       EPC.
residence for a lengthy period are obliged to ensure that
legally important documents are forwarded to them so that         The appellant was of the opinion that the words ”within one
they can note their contents within a time limit appropriate to   year of the unobserved time limit” [not the actual wording] in
the technology available in the particular case. The obstacle     Article 122(2) EPC should be read as if they said ”within one
to completion of the omitted act was therefore overcome on        year of the applicant having knowledge of the unobserved
the date on which the individual applicant could have noted       time limit”. This interpretation would appear to make the
the content of the Office communication under Rule 69(1)          starting point for calculating the two-month period referred to
EPC if he had had it duly forwarded to him.                       in the first and second sentences of Article 122(2) the same
  2001                                                            as that for calculating the one-year time limit of the third
In T 428/98 the appellant had requested re-establishment (in      sentence.
the time limit for filing the grounds of appeal) within a two-
month period as from the Registry’s communication,                The board confirmed the established case law and made
calculated using Rule 78(3) EPC. The board held that the          clear that these were separate requirements, and that the
date of removal of the cause of noncompliance under Article       one-year period was calculated in relation to the expiry of the
122(2) EPC was a question of fact, namely the point in time       unobserved time limit, irrespective of the applicant’s state of
up to which the appellant was actually prevented from             knowledge.
performing the omitted act. Therefore, for EPO                    3.3          Filing and substantiation of the application
communications, that date could not be determined using the
                                                                               under Article 122(2) and (3) EPC
legal fiction of deemed notification under Rule 78 EPC.
                                                                    2004
If an EPO communication notified an applicant that he had         In J 18/98 the examining division had refused the applicant’s
missed a time limit, the cause of his failure to complete the     application for restitutio in integrum. An appeal was filed
omitted act within the meaning of Article 122(2) EPC was          against that decision. From the established case law on
removed on the date he actually received the                      Article 122(3) EPC the board concluded that facts submitted
communication, provided said failure was due purely to his        only with the statement of grounds of appeal could not be
previous unawareness that the act had not been completed.         taken into account, since the function of appeal proceedings
Deemed notification under Rule 78(3) EPC as in force up to        was only to give a judicial decision upon the correctness of
31.12.1998 (now Rule 78(2) EPC) did not affect the date of        an earlier decision of the first instance department (T 34/90,
removal of the cause of noncompliance, even if this worked        OJ EPO 1992, 454).
against the applicant.
3.2.2.         One-year time limit under Article 122(2) EPC       On the basis of the submission to be taken into account, the
                                                                  board decided that the applicant had not complied with his
  2003                                                            burden of allegation and proof. The vague statement that the
In J 12/98 the critical issue for discussion was the              assistant had been carefully trained and, during random
interpretation of Article 122(2), third sentence, EPC. The        checks, had proved to be knowledgeable and careful was not
appellant’s chief argument on appeal appeared to be that the      adequate, since no further details had been given of the
words "within the year immediately following the expiry of the

                                               Page 76 of 154
selection conditions, of the training and checking, or of the     Concerning the assessment of "all due care", the board in T
office’s mode of operation.                                       283/01 pointed out that the applicant’s system was not
                                                                  properly designed to handle the appeal in question, involving
4.          Time limits excluded from re-establishment            partial responsibility of an external representative. The
            under Article 122(5) EPC                              deviation from the normal way of filing and prosecuting an
                                                                  appeal had been the applicant’s deliberate decision in the
4.1          PCT time limits excluded under Article 122(5)        particular circumstances of the case. The failure to take note
             EPC                                                  of the time limit for filing the statement of grounds of appeal
     2004                                                         had been a consequence of that deviation. The board could
                                                                  not, therefore, agree with the applicant’s submission that the
In J 13/03 the board refused the appellant’s request for the
                                                                  failure to meet the time limit for filing the statement of
question of whether Article 122(5) EPC applied to PCT
                                                                  grounds had been caused by circumstances for which
applications on entry into the regional phase to be referred
                                                                  neither the applicant nor his representative was responsible.
again to the Enlarged Board of Appeal for review. It did not
                                                                  On the contrary, the board held that taking all due care
accept the arguments of the appellant, who invoked the
                                                                  required by the circumstances of the case should have
complexity of the procedure and the economic
                                                                  implied installing an individual control mechanism, offering a
consequences for the applicant, who would inevitably lose
                                                                  realistic possibility of detecting and correcting the failure to
his patent rights, as the PCT application had already been
                                                                  note and calculate the time limit for filing the statement of
published in the relevant phase of the procedure. The board
                                                                  grounds. However, it was clear from the facts submitted by
held that these considerations had no relevance with respect
                                                                  the appellant that no such measures had been taken. Hence
to the reasoning of the decisions of the Enlarged Board of
                                                                  the requirement of "due care" stipulated by Article 122(1)
Appeal in G 3/91 (OJ EPO 1993, 8) and G 5/93 (OJ EPO
                                                                  EPC had not been met, and the application for re-
1994, 447), which was based on the identical legal nature
                                                                  establishment of rights could not succeed.
and procedural function of the time limits under Rule
104b(1)(b) EPC in conjunction with Articles 157(2)(b) and         5.2          Persons required to exercise due care
158(2) EPC and those provided for in Articles 78(2) and             2004
79(2) EPC. Aspects and facts not relating to the legal nature
                                                                  Referring to the required standard in exercising due care, the
of the time limits were not decisive points.
                                                                  board decided in T 832/99 that a technical employee working
                                                                  in a firm of patent attorneys was not an assistant but was
In J 1/03 the appellant had requested that restitutio be
                                                                  carrying out de facto the work of a patent attorney. This
granted into the time limit under Rule 4.9(b)(ii) PCT. Invoking
                                                                  meant that the same strict requirements for due care would
the reasoning of G 3/91, the appealed decision had held that
                                                                  have to be applied to the technical employee as were applied
re-establishment was excluded under Article 122(5) EPC,
                                                                  to the appellant and the appellant’s representative.
since the provision in the EPC which most closely
corresponded to the time limit under Rule 4.9 PCT was the         5.2.1.         Due care on the part of the professional
time limit under Article 79(2) EPC. The board, however,                          representative
pointed out that actually there was no time limit in the EPC
which corresponded to the time limit under Rule 4.9(b)(ii)
                                                                    2004
PCT. Thus, there was no identical time limit under the PCT        In J 1/03 the board emphasised the paramount importance of
within the meaning of G 3/91 but only a comparable one. The       the designation of receiving Offices and the difficulty or even
board refrained from a final decision on the application of       impossibility, in many cases, of correcting wrong or missing
Article 122(5) EPC to the case at issue, as re-establishment      designations. Consequently, the benchmark for what "all due
could not be granted on the merits of the case.                   care" meant in those cases, was very high. Likewise the
                                                                  check of the content of the international application on the
                                                                  basis of the "Notification of Receipt of Record Copy" issued
5.          Merit of applications for re-establishment of         by the International Bureau had to be made very carefully.
            rights
5.1           Due care                                            In T 719/03 the board did not accept the appellant’s
                                                                  argument that the failure to comply with the time limit had
5.1.1.         A satisfactory system for monitoring time
                                                                  been an isolated mistake by the qualified secretary who had
               limits                                             noted on the cover page of the revocation decision only the
     2004                                                         time limit for appeal but not also the time limit for filing the
In T 677/02 the board decided that a large enterprise had not     statement of grounds of appeal. The board held that the
exercised all the due care required by the circumstances if,      appellant’s representative had himself failed to exercise due
when the representative actually responsible was on short         care, since the contested decision had been shown to him
time working, no deputy had been designated to crosscheck         twice without his noticing the incompleteness of the note
the input of time limits into the system for monitoring time      concerning the mandatory time limit that had to be
limits.                                                           monitored. The board took the view that, with careful
                                                                  handling of a dossier involving statutory time limits, the
In T 808/03 the board held that the condition of "an isolated     representative was so often faced with the time limits to be
mistake by a usually reliable person" was not met in the          observed that compliance with the time limit was ensured.
present case, as the responsible person had made a second         5.3          Monitoring time limits
mistake when processing the reminder of a system for
monitoring time limits.                                             2005
                                                                  In T 489/04 the board did not recognise the installation of a
5.1.2.         Due care – exceptional circumstances               new computer system as an extraordinary circumstance. On
     2003                                                         the contrary, it considered the resulting burden on employees


                                               Page 77 of 154
as foreseeable and containable, had appropriate measures          proceedings immediately subsequent to the moment at which
been taken in good time.                                          their relevance became apparent had been considered as
                                                                  occurring in due time.
In J 11/03 the Board endorsed the case law according to
which the organisational requirements for an efficient system     In the present case, the board found that the appellant
for monitoring time limits can differ. The size and type of       (opponent) could not foresee before the filing of such
company and the number of time limits to be monitored must        amended claims that the respondent (patent proprietor)
be taken into consideration. In contrast to a big company with    would actually limit the claimed matter. The board came to
its own patent department, a control mechanism in a small         the conclusion that the disputed document was not filed late,
company, in which the staff are normally reliable and work        but in due time. Accordingly, the opposition division had been
efficiently and independently, can in certain circumstances       wrong to exercise its discretionary power pursuant to Article
be regarded as dispensable (see T 166/87).                        114(2) EPC in respect of this document, as that provision
5.4           Due care on the part of the professional            applied only to facts and evidence filed late.
              representative
                                                                  2.          Consideration of late submissions
     2005
In J 19/04 the Board confirmed that a professional                     2004
representative is not obliged to pay renewal fees on his          According to T 569/02 one month before the oral
client’s behalf if he has received no instructions to do so.      proceedings before the board the appellant/patentee filed the
However, the representative’s conduct has to be assessed          results of comparative tests with the teaching of document
according to the extent to which he has done all that is          D4. As a reason for filing the evidence at this stage the
necessary to ascertain the client’s true wishes. It is not the    appellant explained that he had considered that document
number of (unanswered) reminders that is decisive, but when       D1 was the most relevant document and it was only on
those reminders were sent in relation to the date on which        receipt of the provisional opinion of the board that he realised
the time limit expired, how the reminders were formulated         that the board considered that document D4 might be the
and what the representative’s duties were in relation to the      closest prior art.
client.
                                                                  The board could not accept this argument. In the grounds for
5.5           Due care in using mail delivery services            opposition the opponent had argued lack of inventive step
     2001                                                         based on document D4 as the closest prior art. In the
In T 777/98 (OJ EPO 2001, 509) the board held that a party        appealed decision the opposition division considered
who argued, in support of a request for re-establishment, that    document D4 to be the closest prior art. It was therefore quite
a document received late by the EPO had taken longer than         clear to the appellant from a very early stage of both the
normal to arrive had to show that it would normally have got      opposition and the appeal proceedings that document D4
there in time using the kind of mail delivery service actually    could be considered the closest prior art. The provisional
chosen. The board did not deal with the question of whether       opinion of the board merely reflected the views of the board
a party who relies on the normal delivery service has acted       at that time and did not particularly take an unexpected turn.
with due care.                                                    The opinion could not be considered as indicating for the first
                                                                  time any importance of document D4. A party to oral
                                                                  proceedings had to be prepared that arguments by others
            F. Late submission                                    might convince the board. A communication from the board
                                                                  was therefore not necessary for a party to react with regard
1.           The meaning of “late”                                to a specific issue.
     2002                                                         Furthermore, in the board’s view, comparative tests normally
In T 502/98 the board recalled that not only the facts and the    required careful consideration by the other party including
evidence submitted by the opponent within the nine-month          discussions with technical experts who could not be
period for filing an opposition were ”filed in due time”, but     expected to be immediately available. It might also be
also any which were submitted by the patent proprietor within     necessary for the other party to repeat the tests or perform
the four months given for replying to the grounds of              other tests themselves. It was quite clear that it was not
oppositions.                                                      reasonable for the other party to do this within the short time
                                                                  available. The board did not consider the relevance of the
The filing of facts and evidence within subsequent periods of     tests to play a role since even relevant evidence of this type
time could also be in ”due time” if it occurred in accordance     should not be filed at such a late stage in the proceedings.
with the principle of procedural economy and hence if the         Moreover, in the case of comparative tests the relevance
filing party had observed a fair degree of procedural             could only be established when the other party had had an
vigilance. The board stated that this might be the case if, for   opportunity to repeat the tests. No good reason was given
example, certain facts or evidence became relevant only           why the oral proceedings should be postponed, which would
after a party had submitted an unforeseeable amendment to         be necessary if the tests were admitted. The board decided
the claims, or a new experimental test report, or had for the     therefore to exercise its discretion under Article 114(2) EPC
first time challenged the existence of common general             not to admit the test results into the proceedings.
knowledge undisputed up to that moment.
                                                                       2001
                                                                  In T 609/99 a document was introduced by the opponent
In such cases, a diligent party normally had no reason, let
                                                                  subsequent to the summons to oral proceedings before the
alone obligation, to search for, retrieve and file such facts
                                                                  opposition division. The latter took the view that this
and evidence before such action of the other party, which
                                                                  document had not been submitted in due time and
was why their prompt filing within the phases of the
                                                                  disregarded it pursuant to Article 114(2) EPC. The board

                                               Page 78 of 154
took the document into account leaving open the question           3.1.1.         Procedural abuse in the case of public prior
whether or not the document was submitted in due time and                         use
despite the proprietor’s objection to its admission.
                                                                      2004
The board held in fact that this document did not extend the       In T 947/99 all the three allegations (a), (b) and (c) of public
legal and factual framework of the appeal according to the         prior uses were filed well outside the nine-month period for
principles defined in decisions G 9/91 and G 10/91. Since the      opposition at different stages of the opposition ((a)) or
document not admitted at first instance was again relied on in     opposition appeal proceedings ((b) and (c)). It was thus, in
support of the same argument on appeal, the board took it          the board’s view, beyond doubt that all prior use allegations
into account despite the proprietor’s objection to its             had to be regarded as late-filed within the meaning of Article
admission and without any implication that it was prima facie      114(2) EPC, whether "late" was taken to mean after the end
highly relevant as defined in T 1002/92, ie that it was highly     of the opposition period or after the end of the opposition
likely to prejudice maintenance of the patent.                     proceedings. The board summarised the criteria drawn up by
                                                                   the established jurisprudence of the boards of appeal in
3.          Exercising discretion over admitting late              considering the admissibility of late-filed submissions (point
                                                                   3.2 of the reasons).
            submissions
     2005                                                          As to the circumstances surrounding the late allegation of
In T 267/03 the board decided that a late submission not           public prior use (a), the appellant/opponent submitted that in
admitted by the opposition division was not to be admitted by      the course of parallel legal proceedings before the Patents
the board if the opposition division had correctly exercised its   Court in London it had first become aware, during a meeting
discretionary power under Article 114(2) EPC.                      on 17 May 1999, of the possibility that there might have been
     2004                                                          prior public use. According to the appellant, an attempt was
                                                                   made to introduce the objection based on prior use as soon
In J 14/03 the appellant produced no arguments or evidence
                                                                   as possible into the proceedings before the opposition
at all in relation to the substance of the matter at issue,
                                                                   division. This was done exactly one month later, ie about one
namely the late receipt of the application documents and the
                                                                   month in advance of the oral proceedings held before the
resulting loss of the claimed priority.
                                                                   opposition division on 20 July 1999. The opposition division
                                                                   decided to disregard this prior use allegation for having been
That during the first instance proceedings the appellant took
                                                                   filed too late and also for being insufficiently substantiated. In
none of the steps one would normally expect to have been
                                                                   the board’s judgment, a very clear explanation and sound
taken was underlined, in the board’s view, by the fact that, in
                                                                   reasons had been given by the appellant as to why in the
the appeal proceedings, evidence and arguments as to the
                                                                   present case the allegation of public prior use (a) was filed
substance of the case were provided. Despite having been
                                                                   when it was and why this could not have been done earlier. It
alerted in the board’s communication to the possibility of a
                                                                   followed that, in the board’s view, the late filing of the prior
finding of inadmissibility and to the fact that all the relevant
                                                                   use allegation (a) could not be considered to be deliberate
evidence filed on appeal was late-filed evidence, the
                                                                   and did not represent an abuse of the proceedings.
appellant neither made a request for the late-filed evidence
to be admitted, nor made a request for remittal to the first
                                                                   As to the circumstances why (b) and (c) were raised for the
instance in view of the late-filed evidence, nor offered any
                                                                   first time in the statement setting out the grounds of appeal,
explanation for the late filing of evidence.
                                                                   the appellant essentially explained that the expert opinion
                                                                   dated 15 June 1999 for (a) led the appellant/ opponent to
Both the lateness of production of the new evidence, and the
                                                                   investigate other products available in the relevant market
possibility that it could have been obtained and filed during
                                                                   before the priority date. It was only in the course of this
the first instance proceedings, was underlined by the several
                                                                   investigation that it became aware in October 1999 of the
statements made by the appellant during those proceedings.
                                                                   possibility that there might have been the above-mentioned
                                                                   two further public prior uses (b) and (c). Since at that stage
The only results of inquiries which were produced were
                                                                   the decision of the first instance had already been issued,
documents which were all readily available or obtainable well
                                                                   they could not have been drawn to the attention of the
before the request for a decision was made. The board could
                                                                   opposition division but only to the board’s attention in the
accordingly only find that there was no reason for the late
                                                                   statement of the grounds of appeal. In the board’s judgment,
filing of this evidence. Turning to consider whether the new
                                                                   there was prima facie no reason to doubt that the appellant
evidence should be admitted in order to make an otherwise
                                                                   was correct when it asserted that, in the circumstances of
inadmissible appeal admissible, the board found it difficult to
                                                                   this case, it could not have filed the allegations of public prior
identify any factor in support of the appellant. The board
                                                                   use (b) and (c) before the appeal was lodged and the
could find no reason for a more generous exercise of its
                                                                   statement of the grounds of appeal was filed so that it was
discretion, namely to admit the new evidence solely in order
                                                                   established that no abuse of the procedure had occurred.
to save the admissibility of the appeal.
                                                                   The board had also ensured that the respondent had
                                                                   sufficient time to consider them and, as appropriate, reply
The board’s communication also raised questions about the
                                                                   with evidence of its own.
admissibility of the appeal, late-filed evidence and possible
remittal – all matters the appellant would have to deal with
                                                                   For (a), as well as (b) and (c), the board further stated that
before allowability of the appeal could be considered. No
                                                                   declarations were considered and found by the board to be
attempt was made to comment on the board’s observations
                                                                   sufficiently relevant to establish prima facie cases of public
on those questions. Finally, the board noted the request was
                                                                   prior use. The board decided to take all three into account.
for an initial extension of two months, but no reason was
given why two more months might not be sufficient, nor how            2001
long might be sought in total.

                                               Page 79 of 154
In T 864/99 the board decided to disregard a belated               the closest prior art. In accordance with Article 10b(3) RPBA,
submission concerning an alleged prior use because in fact         such facts and evidence may not in principle be admitted into
the prior use stemmed from the appellant/opponent’s own            the proceedings because their admission would lead to an
activities and the appellant did not file the new evidence until   adjournment of the proceedings.
ten months after the filing of the original statement of
grounds of appeal and seven months after the respondent’s          However, an exception to the above principle is justified if the
counterstatement without having good reasons for doing so.         patent proprietor agrees to the admission of the fresh
                                                                   material. The board in T 874/03 stipulated that, as
Furthermore, the appellant did not present a coherent and          emphasised by the Enlarged Board in G 9/91 (OJ EPO 1993,
consistent picture of how the alleged public prior use took        409, point 17 of the reasons), it might in some cases be in
place.                                                             the patent proprietor’s own interest that such facts and
3.2          Examination as to relevance                           evidence were not excluded from consideration in the
                                                                   centralised procedure before the EPO. It pointed out that
3.2.1.        Examination as to relevance – General                such fresh material had to be prima facie highly relevant in
              principles                                           order to be admitted into the proceedings exceptionally with
  2005                                                             the agreement of the patent proprietor.
In T 874/03, citing Article 10b RPBA, the board said that a
document filed shortly before, or during, the oral proceedings     The above criteria set out by the Enlarged Board in G 9/91
before the board could not in principle be admitted into the       concern the admissibility of a fresh ground for opposition.
proceedings if its admission would lead to an adjournment of       However, they are also generally applicable to the
the proceedings.                                                   admissibility of latefiled facts and evidence submitted in
                                                                   support of a ground for opposition (see also T 1002/92, point
However, such late-filed material may exceptionally be             3.2 of the reasons). In the case in point, both of the criteria
admitted if there are prima facie strong reasons to believe        set out in G 9/91 which apply to the admissibility of late-filed
                                                                   material were met: (i) the late-filed material was prima facie
that it would prejudice the maintenance of the European
patent in whole or in part and if the patent proprietor agrees     highly relevant, and (ii) the patent proprietor had agreed to its
to its admission. In such cases the decision to admit such         admission into the proceedings.
late-filed material may in principle lead to an apportionment      3.2.3.         Procedural abuse in the case of public prior
of costs to the detriment of the late-filing party.                               use
  2003                                                               2005
In T 214/01 the board decided to admit documents D3, D5,           On the issue of documents relating to prior use submitted
D6 and D7, which had been filed by the opponent on the             during appeal proceedings, the board in T 508/00 ruled that
"final date" within the meaning of Rule 71a EPC in                 poor communications within a company or a group of
preparation for the oral proceedings before the opposition         subsidiary companies did not constitute adequate and
division.                                                          acceptable grounds for allowing the late submission of
                                                                   evidence concerning alleged prior use.
Since the appellant (opponent) in the statement of grounds
had questioned the opposition division’s choice not to admit         2002
all these documents into the proceedings, the board took the       In T 481/99 the board said that the principle that late filed
opportunity to note that, although Article 114(2) EPC gave an      facts, evidence and related arguments should only
opposition division discretion not to consider evidence not        exceptionally be admitted into the proceedings by the
submitted in due time, the division was obliged to give            opposition division (see for example G 9/91, OJ EPO, 1993,
reasons for its decision not to consider such evidence if the      408, T 1002/92, OJ EPO 1995, 605) did not imply that a late
opponent – as in the case in point – remained of the view          filed allegation of a prior use, which would be relevant if
that it was relevant. It was not acceptable that (relevant)        proven, was to be automatically disregarded on the ground
pieces of evidence filed outside the opposition period (in this    that the new facts first needed to be established by taking
case documents D6 and D7) were not mentioned at all in the         evidence. However, if the submissions and/or documents
decision under appeal. Since the minutes of the oral               relating to the late allegation of a prior use showed
proceedings were also silent on those documents, there was         inconsistencies or even contradictions, the deciding body
no evidence on file that the opposition division had actually      was entitled to disregard the alleged prior use pursuant to
taken note of them.                                                Article 114(2) EPC without further inquiries (Reasons 5.2).
                                                                   The board saw no reason to deviate from the opposition
  2002                                                             division’s decision to disregard the disputed alleged prior
The board in T 718/98 decided that a party’s introduction, at      use, as it had correctly exercised its discretionary power.
a very late stage of the proceedings, of evidence which could
have been filed much earlier, as a strategic measure to            In T 380/00 the appellant/opponent in the statement of the
improve its own case against the opposing party, amounted          grounds of appeal for the first time relied on the non-
to an abuse of procedural rights and was therefore rejected        confidential disclosure of technical features of the invention
independently of the possible relevance of the evidence.           by an engineer during a job interview. In support of this
3.2.2.         Examination as to relevance with regard to G        argument, the appellant filed a statutory declaration by the
               9/91 and G 10/91                                    engineer and a series of drawings which were allegedly
                                                                   produced during the interview.
  2005
In T 874/03 the board, considering a prior-art document D4         The board stated notably that the statutory declaration did
and an English translation of it which were first filed at the     not identify the persons present at the interview and that the
oral proceedings before the board, acknowledged that it was        technical drawings were marked confidential. It further
immediately apparent that this fresh material might represent      considered that the respondent (patentee) had convincingly

                                               Page 80 of 154
submitted that according to standard practice the persons           regarded as a late submission whose admission was a
present at the interview on behalf of the prospective               matter for the discretionary power of the board pursuant to
employer would have felt bound by an at least implicit              Article 114(2) EPC.
obligation of confidentiality, and the appellant did not provide
any evidence to the contrary in the statement of the grounds        In the board’s judgment, D4 was sufficiently relevant in
of appeal.                                                          relation to the issue of inventive step for it to be admitted into
                                                                    opposition appeal proceedings despite being submitted late.
The board ultimately considered that the alleged public prior
use by this engineer was too poorly substantiated to justify        The case was remitted to the department of first instance.
further investigation of the matter, which incidentally would       3.2.5.         Examination as to relevance and abuse of
have entailed the case being remitted. The late submissions                        procedure
were therefore disregarded.
3.2.4.         Examination as to relevance and justified late          2003
               submission                                           In T 135/98 the board first recalled in detail the well-
                                                                    established case law on late-filed evidence (point 2 of the
  2005                                                              reasons).
In T 692/04, an experimental report was submitted by the
appellant six weeks prior to the oral proceedings before the        In the case in point, oral proceedings were appointed when
board. When trying to justify the late filing of this               the appellant (proprietor) sought a postponement of the oral
experimental report, the appellant submitted that it was            proceedings in order to allow the preparation and filing of
indeed its intention from the very beginning of the appeal          further evidence in the form of independently conducted
procedure to submit comparative data in support of its              experiments. The appellant acknowledged the request to be
argumentation of lack of inventive step. It further submitted it    unusual, but said the evidence was "vital to a fair
was the conjunction between the long delay for obtaining the        assessment of patentability". The board acceded to the
consent of its parent company and what it regarded as the           appellant’s request in part by allowing a postponement.
surprisingly short delay between the filing of its statement of
grounds of appeal and the date for the oral proceedings             The issue of lateness was exacerbated by the fact that the
before the board which explained the submission of the              evidence eventually filed was not the evidence for which the
experimental report only six weeks before the oral                  appellant had sought an adjournment. The appellant gave no
proceedings. These arguments were in the board’s view not           reason for the late submission of the evidence he eventually
convincing.                                                         produced other than an explanation for the non-production of
                                                                    the evidence he had intended to but did not produce. As the
Firstly, because the board was unable to find in the                respondents argued, the evidence actually filed late was
statement of grounds of appeal filed by the appellant any           evidence the appellant could have produced earlier.
explicit or implicit indication which could have suggested that
the Appellant intended to file experimental data in the course      In the board’s judgment, the lateness of evidence could not
of the appeal proceedings. Furthermore, it would have been          be excused if no attempt was made to show why the actual
in any case up to the appellant to ask for a postponement of        evidence in question was not produced at an earlier date.
the oral proceedings before the board in order to enable it to
carry out its comparative experiments. The board could only         The real reason for the late filing of the evidence was, as was
state, however, that such a request was never presented.            clear beyond doubt, that the appellant had intended to file
While the presentation of these tests only six weeks before         different evidence but then found he could not obtain the
the oral proceedings jeopardised the purpose of the oral            necessary equipment in time to conduct the planned
proceedings, namely to make a case ready for decision at            experiments, and thus had apparently had to satisfy himself
the conclusion of the oral proceedings, and the right of the        with alternative evidence which could be produced in time.
respondent to file a detailed counterstatement, the board           However, in the board’s judgement this did not alter the fact
further noted that the evidential weight of these tests was in      that the evidence actually filed could have been prepared
any case prima facie highly questionable.                           and filed much earlier and was therefore insufficient to justify
                                                                    the lateness.
Consequently, the experimental report submitted by the
appellant was excluded from the proceedings under Article           The respondents understandably objected to the fact that the
114(2) EPC for lateness and lack of relevance.                      appellant, having secured an adjournment of the oral
  2002                                                              proceedings to conduct such experiments and having
In T 736/99 the prior art document D4 was submitted two             discovered soon after that these experiments could not be
years and eight months after expiry of the term set by Article      conducted within the extension of time it had obtained, did
108 EPC.                                                            not inform the board (and thereby the respondents) until the
                                                                    very end of that extension that evidence of a quite different
As the appellant/opponent accepted unreservedly, a change           character would be produced. The board largely agreed with
of professional representative was not an objective excuse          them. While there might have been no deliberate intention to
for delay. The board did acknowledge that the fact that the         mislead, the effect was beyond doubt to take the
amendment to claim 1 was such as to imply a shift of priority       respondents by surprise when such surprise could have
date was not something which was flagged in the decision            been prevented.
under appeal. Nevertheless, legally the opponent had
received constructive notice of the priority shift in the           The appellant had been under a duty to inform the board of
decision under appeal, and a first submission of intermediate       his change of plan. It had been unfair for the appellant to
prior art in reaction to it after expiry of the four-month period   remain silent for four months, knowing that he would be filing
for filing the statement of grounds of appeal had to be             evidence the other parties and the board did not expect and

                                                Page 81 of 154
that he would not be able to comply with a direction of the        the oral proceedings, no new facts and evidence had been
board given in response to his own adjournment request. It         submitted. Document DE had been cited and analysed in the
had to be remembered that any postponement of oral                 notice of opposition, so its content did not constitute new
proceedings granted in favour of an appellant acted as an          facts.
extension of the suspensive effect of an appeal and thus, in
the case of an appealing patentee, of the time during which        The board could also see no justification for the opposition
respondent opponents risked an allegation of infringement if       division not having admitted new arguments presented at the
they worked an invention which had already been found              oral proceedings in the exercise of their discretion under
unpatentable by the opposition division. In the                    Article 114(2) EPC. This provision, as worded in all three
circumstances, the appellant’s behaviour had been an abuse         languages, was also concerned with facts and evidence
of procedure.                                                      which were introduced late, but not with arguments
                                                                   (”Tatsachen und Beweismittel” in the German text and ”faits
In T 446/00, in which large numbers of requests had been           et preuves” in the French text). In its opinion G 4/92 (OJ EPO
filed, in some cases very late in the proceedings and one of       1994, 149) the Enlarged Board defined ”new arguments” as
the late requests containing a claim specifically abandoned        being not new grounds or evidence, ”but reasons based on
by the appellant proprietor earlier in the proceedings, the        the facts and evidence” (see point 10 of the reasons).
board identified various forms of behaviour as abuses of
procedure. It stated that it was an abuse of procedure not to      Therefore in the Board’s view arguments introduced late
comply with a procedural direction of the board requiring a        could not be excluded under Article 114(2) EPC.
party to take a certain step or steps. This applied not only to
a mandatory direction but also to a direction which had effect     5.          Remittal to the department of first instance
only if a party elected to respond to an opinion of the board
expressed in a communication (see points 4.2.1 to 4.2.6 and             2005
4.5.2 of the reasons).                                             In T 736/01 the board said that since it was not the function
                                                                   of an appeal to examine and decide upon a fresh case
It was also an abuse of procedure for a party to adopt an          resulting from the newly submitted and admitted prior art
unequivocal position on an issue and subsequently to depart        (see T 26/88, OJ EPO 1991, 30, point 12, and T 611/90,
from that position without explanation. This applied               points 3 and 4 of the reasons), it would exercise its discretion
particularly in contested inter partes proceedings, in which       under Article 111(1) EPC and remit the case to the
another party was entitled to rely on that position as part of     opposition division.
the case it had to meet, but could also apply in uncontested
inter partes and ex parte proceedings in which the board and       In T 361/03 the board admitted into the proceedings a
the public had to be able to rely on the applicant’s or            document submitted by the appellant/opponent one month
proprietor’s statement as to what was sought as part of a          before the oral proceedings. This had, however, the
monopoly (see points 4.1.1, 4.1.2 and 4.5.3 of the reasons).       concomitant effect of fundamentally altering the factual
                                                                   framework of the case under appeal compared with that
The board also stated that it was the duty of any party to         upon which the opposition division’s decision had been
proceedings, whether ex parte or inter partes, to make its         based and with which the respondent/ proprietor was
own case and to formulate its own requests, and it was             prepared to deal. The board therefore judged that remittal to
therefore an abuse of procedure to file requests subject to        the department of first instance for further prosecution as
conditions to be met by the board, or to take any other step       requested by the respondent/proprietor and not opposed by
in the proceedings which amounted to asking the board to           the appellant/opponent was justified. This had the twofold
make the party’s case or to formulate its requests (see points     purpose of allowing this fresh case to be examined at two
4.3 and 4.5.4 of the reasons).                                     levels of jurisdiction and of giving the respondent/proprietor a
                                                                   reasonable opportunity to consider possible fallback
4.          Late-filed arguments                                   amendments and possible evidence that could be produced
                                                                   in defence of such amended requests.
     2005                                                               2001
Decision T 604/01 (point 6.1 ff of the reasons) once more          In T 111/98 during the appeal proceedings a respondent
concerns itself with the interpretation of the expression          introduced a new document. The board admitted the
"facts". According to the board, facts in the legal sense are to   document into the proceedings. In response to the late filing
be understood as the circumstances and incidents of a case,        of the document, the appellant considered it necessary to
looked at apart from their legal bearing. In the case in point     amend the claims and requested the case to be remitted to
the board decided that the appellant’s submission at the oral      the first instance. Since the board felt that this new document
proceedings should have been considered merely as                  was not likely to play a decisive role for the issue of inventive
arguments.                                                         step of the claims it decided not to remit the case to the first
     2002                                                          instance department. Amendment of the claims in response
In T 131/01 (OJ EPO 2003, 115) the board had to point out          to the citation of a new document during appeal proceedings
that the only possible new submissions to be disregarded if        is not as such a sufficient reason to remit the case to the
not submitted in due time were those set out in Rule 71a(1)        department of first instance. The remittal of the case remains
EPC, namely ”new facts and evidence”.                              in the discretion of the board.

It followed that new relevant arguments in respect of              In T 611/00 the appellant relied on the same grounds of
previously submitted facts presented after the time indicated      opposition as it did at first instance but it based its appeal on
in the summons had to be taken into account by the                 completely new evidence.
opposition division under that provision. Indeed in this case,
according to the board, as was apparent from the minutes of

                                               Page 82 of 154
The board held that in order to admit this new evidence it has      The board took the view that pure cash payments were not
to balance two demands of public interest, that of procedural       the same as payment enclosures (which might include cash),
fairness and that of preventing unwarranted monopolies.             because they were not delivered as mail. They were more
                                                                    like documents brought by hand, which under Article 1(4) of
If the board finds that the documents should be taken into          the 1989 agreement could not be accepted by the DPMA for
account, it must ensure that the respondent receives fair           the EPO.
procedural treatment in the further conduct of the case. The
request that the case be remitted to the first instance must        In the case before the board in T 270/00 the appellant
therefore be allowed.                                               declared the automatic debit order from its deposit account to
                                                                    be ”unconditionally revoked” only after the appeal fee had
6.           Apportionment of costs                                 already been debited. The board found that this had no legal
                                                                    consequence regarding the admissibility of the appeal, citing
     2005                                                           point 13 of Annex A.1 to the Arrangements for deposit
The board in T 874/03 ruled that when late filing of facts and      accounts (OJ EPO 1999, Supplement to No. 2/99, page 13,
evidence necessitated remitting the case to the department          OJ EPO 2000, 62): ”debits cannot be revoked in respect of
of first instance, the costs of any oral proceedings in the         fees whose decisive payment date precedes the date on
appeal proceedings were normally to be borne by the party           which the revocation was received”. The valid payment of the
responsible for the late filing. The filing of document D4 for      appeal fee was a matter of fact, which could not be undone
the first time during the oral proceedings, and its subsequent      and which was not at the disposal of the appellant.
admission into the proceedings, would inevitably increase the
costs to be incurred by the appellant (patent proprietor) in        2.           Date of payment
defending his patent, compared with the normal costs he
would have incurred if D4 had been filed in due time. As                 2001
explained in point 4 of the reasons, such late submission was       In the case before the board in J 13/98, a cheque
not justified by a change in the subject of the proceedings.        despatched by private courier did not arrive at the EPO until
Therefore it was equitable in the present case that the             after expiry of the relevant time limit. The board stressed that
expenses (travelling and accommodation costs for the                the use of private couriers to despatch letters containing
appellant’s two participants) incurred by the appellant (not        cheques could not be considered, in the year in question
acting through a professional representative) in connection         (1997), as equivalent to the use of the postal services. It was
with the oral proceedings in the appeal should be borne by          not until 1999 that the courier in question was recognised as
the respondent (see also p. 70).                                    a delivery service equivalent to the postal service (see
                                                                    Decision of the President of the EPO dated 11 December
                                                                    1998 (OJ EPO 1999, 45)). However, this provision could not
            G. Rules relating to fees                               have retroactive effect – the principle of ”tempus regit actum”
                                                                    had to be applied.
1.           Payment of fee
     2003                                                           3.           Small amount lacking
In T 79/01 less than half of the appeal fee had been paid. In            2002
the light of established case law, the board disagreed with         In T 343/02 it was held that overlooking an underpayment of
the earlier decision in T 152/82 (OJ EPO 1984, 301),                the appeal fee of less than two per cent was justified
according to which the EPO had to execute a debit order in          pursuant to Article 9(1), last sentence, RRF if this
accordance with what was plainly the substance of that              underpayment was due to the unexpected deduction of bank
order, even though the amount specified in it was incorrect.        charges from the correct amount paid by cheque into the
The board pointed out that the appeal procedure was a               euro account of the EPO in a country not having adopted the
judicial procedure (G 9/91, OJ EPO 1993, 408; G 8/91, OJ            euro system.
EPO 1993, 346; G 1/99, OJ EPO 2001, 381). This implied
that the general principles of court procedure applied, such        As the notice of appeal referred to details of payment of the
as, in inter partes proceedings, the principle of impartiality or   appeal fee and more than 98% of the appeal fee was paid in
equal treatment of parties to the proceedings. The EPO              due time, clear indications had been given within the
could not therefore debit a different, much higher amount for       meaning of G 2/97 (OJ EPO 1999, 123) that payment of the
the payment of the appeal fee without violating this principle.     appeal fee was intended, so that the principle of good faith
     2001                                                           obliged the EPO to notify the appellants if there was
In T 1029/00 the appellant had shown that before expiry of          sufficient time to react before expiry of the period for
the time limit he had paid the appeal fee, in cash, at the          payment.
German Patent and Trade Mark Office (DPMA) in Munich,
instead of the European Patent Office (EPO).
                                                                                H. Divisional applications
The board ruled that the two offices’ administrative
agreement of 29 June 1981 concerning procedure on receipt           1.           General procedural questions
of documents and payments (OJ EPO 1981, 381), as
amended on 13 October 1989 (OJ EPO 1991, 187), covered
                                                                         2005
                                                                    In T 1184/03 the appellant requested, in the oral
only those forms of postal delivery actually specified in the
agreement. It could not be interpreted more broadly; nothing        proceedings, that delivery of the decision be postponed with
                                                                    a view to filing a divisional application. The board stated that
in the EPC permitted the adoption of further-reaching rules.
                                                                    the case was ready to be decided at the oral proceedings.
                                                                    Postponing the decision of the board to allow the filing of a
                                                                    divisional application would run counter to the public interest

                                                Page 83 of 154
in having the matter decided as expeditiously as possible,        normal time limit for payment of designation fees for the
because the matter ready to be finally decided by this board      parent application. The Board confirmed G 4/98 (OJ EPO
would be pending again.                                           2001, 131), in which it was held that only such states aswere
                                                                  already designated in the parent application could be
2.          Rule 25(1) EPC – Legal position after 2               designated in a divisional application, or, in the event that the
            January 2002                                          designation fee for the parent application had not been paid,
                                                                  those for which the normal period for payment of the
     2005                                                         designation fee had not yet expired. After expiry of that
In J 18/04 (OJ EPO 2006, ***) the Board added that the term       period, the provisional designation of any other contracting
"pending ... patent application" in Rule 25(1) EPC did not        states was deemed to be withdrawn and the right to
establish a time limit, but rather a substantive requirement      designate further states was lost. Moreover, no right to valid
which had to be fulfilled at the point when a divisional          designation of new states in the divisional application could
application was filed. A board had no power to exempt an          be derived from the fact that an appeal was pending against
applicant from compliance with this substantive requirement.      a notification of a loss of rights under Rule 69(2) EPC in
No substantive rights were established in a divisional            relation to the parent application. The divisional application
application before the actual filing date of the divisional       could therefore claim territorial validity only for Italy.
application. Substantive rights which were lost in the parent
application could not be re-established in the divisional                     I. Procedural steps
application by applying Article 122 EPC (see also p. 68).

In J 28/03 (OJ EPO 2005, 597) the Legal Board of Appeal           1.           General principles
confirmed that an application was pending up to (but not               2003
including) the date on which the European Patent Bulletin
                                                                  There is a general interest in the reliability of procedural
mentioned the grant of the European patent, or until the date
                                                                  declarations of the parties. This applies, in particular, to
on which the application was refused, withdrawn or deemed
                                                                  declarations which open a new procedure. Someone who
withdrawn; if notice of appeal was filed against the decision
                                                                  performs the prescribed acts acquires the status and the
to refuse, a divisional application could still be filed while
                                                                  procedural rights of a party, eg as applicant, opponent or
appeal proceedings were under way (see Notice of the Office
                                                                  appellant. This effect arises with the date of completion of the
dated 9 January 2002, OJ EPO 2002, 112).
                                                                  necessary requirements. Periods thereafter, during which it
                                                                  remained unclear whether or not the procedure had actually
The logical idea behind the Notice of the Office concerning
                                                                  started, would be in conflict with legal certainty. The
the amendments of Rule 25(1) EPC, which stated that only
                                                                  significance of the relevant time limits laid down in the EPC
an appeal against a refusal of the patent application would
                                                                  would be weakened if procedural declarations were allowed
allow the filing of a divisional application, was to enable a
                                                                  to be negated on the basis of instructions which were not yet
party to file a divisional application independently of the
                                                                  known to the representative when acting vis-_-vis the EPO.
outcome of the appeal, in other words even if the refusal of
the "parent application" were to be confirmed by the board of
                                                                  In the case in point (T 309/03, OJ EPO 2004, 91), the
appeal the divisional application would have its own and
                                                                  representative had filed a notice of appeal before becoming
independent examining procedure.
                                                                  aware of the applicant’s instruction that he did not wish to
                                                                  appeal.
On the other hand, an appeal against a decision granting a
patent and resulting in publication of the grant of the patent         2001
would be expected to be inadmissible under Article 107, first     In G 3/99 (OJ EPO 2002, 347) the Enlarged Board of Appeal
sentence, EPC and should therefore not enable the applicant       held that the legal personality of a named entity under the
to file a divisional application even during the appeal           EPC is decided on the same basis as before national courts,
procedure. This could also be understood as a means of            namely the capacity to sue or to be sued in its own name and
preventing abusive appeals based on artificial construction of    on its own account.
pending "parent applications". Thus, the status of a divisional
application filed while an appeal was pending against the         2.           Admissibility of main and auxiliary requests
decision to grant a patent pursuant to the parent application
depended on the outcome of that appeal. Therefore, the                 2005
department of first instance could not decide on the question     Following T 382/96, the board in T 455/03 found that the
whether the divisional application had been validly filed until   EPC entrusts the boards of appeal only with the power to
the decision of the board of appeal on the appeal was taken       consider and to decide on a specific text of the claims
(see also p. 100).                                                submitted to it while it is up to the appealing proprietor to
                                                                  formulate on its own any text of the claims he wishes a
                                                                  patent to be granted with. An amorphous request not
3.          Designation of contracting states in a                specifying the wording of the claims sought but leaving it to
            divisional application                                the board to identify and to speculate on the intended text of
     2005                                                         the claims is not consistent with the requirements of the EPC
According to Article 76(2) EPC, the European divisional           and amounts to an abuse of procedure.
application shall not designate contracting states which were
not designated in the earlier application.                        The board went on to state that no party could expect, in
                                                                  particular in inter partes proceedings, that the board provide
In J 1/05 the applicant had paid the designation fee only in      procedural assistance by, in effect, taking on the role of a
respect of Italy and did not file the divisional application      party and choosing the appropriate moment in the
designating all the EPC contracting states until after the        proceedings for the submission of a further request seeking


                                              Page 84 of 154
to overcome the deficiencies and by indicating this moment            1.           Abandonment of subject-matter of the
to that party (see also p. 108).                                                   application or patent
2.1          Opposition procedure                                     1.1           Abandonment without substantive effect
   2001                                                                    2001
In T 740/00 the board held that it is the procedural obligation       In T 168/99 in the course of the opposition proceedings, the
of the opposition division to establish the requests of the           patentee filed revised claims ”to replace all the claims at
parties, the order in which they are to be dealt with, and to         present on file”. In appeal proceedings he reintroduced the
deal with these requests in the established order.                    withdrawn main request which had not been considered by
                                                                      the opposition division. The respondent objected that the
A subsequent request can only be considered as having                 appellant voluntarily abandoned these claims in the course of
been agreed to by the patent proprietor when the preceding            the opposition proceedings and should not be permitted to
requests have been dismissed. Only thus can the                       reintroduce them. Moreover, the function of appeal
requirements of Article 113(2) EPC be observed.                       proceedings was to give a judicial decision upon the
                                                                      correctness of the decision taken by the first instance and
          J. Withdrawal of application and                            since no decision was taken on the granted claims no appeal
                                                                      could be based on them.
          surrender of patent
   2005                                                               The board stated that an action taken in opposition
In J 14/04 the Legal Board agreed with J 10/87 that the               proceedings by the proprietor of a patent before the
public interest lay in being able to rely on information officially   opposition division has issued any comments on the
published by the EPO. However, the Board took the view that           relevance of the grounds for opposition should be prima facie
the Register of European Patents constituted an official              considered as a mere proposal directed to the opponent and
                                                                      made with a view to reaching with him an early agreement on
publication, and as, at the time of the request for withdrawal,
                                                                      a form of the patent acceptable to both parties.
access to the Register was freely offered to the public on the
internet, the request for withdrawal was available to the
                                                                      The wording of the withdrawal of the claims used by the
public on the date the Register indicated the request for
withdrawal was recorded. It was of no relevance whether the           patentee did not contain any wording either stating or
file was actually consulted on this date. Nor did the Board           implying that the subject-matter of the granted claims was
                                                                      being abandoned.
consider that Article 122(6) EPC could apply mutatis
mutandis to cases of correction under Rule 88 EPC.
                                                                      The board therefore admitted the claim in the proceedings.
Referring inter alia to J 14/04, the Legal Board agreed in J
25/03 (OJ EPO 2006, 395) that an entry of a withdrawal of a                       K. Law of evidence
patent application in the Register of European Patents
amounted to a notification to the public as well as a                 1.           Admissible evidence
publication in the European Patent Bulletin. The Legal Board
further went on to state that a request for retraction of a letter         2001
of withdrawal of a patent application was no longer possible if       In T 71/99, the patent had been revoked at the end of the
the withdrawal had been mentioned in the Register of                  oral proceedings before the opposition division. The
European Patents at the time its retraction was applied for if,       appellant/patentee’s objections to the contested decision
in the circumstances of the case, even after a file inspection        were based exclusively on allegations relating to the conduct
there would not have been any reason for a third party to             of the oral proceedings before the opposition division. The
suspect, at the time of the official notification to the public,      minutes of the proceedings by the division did not provide a
that the withdrawal could be erroneous and later retracted            full account. To show the board what had actually happened,
(see also p. 87).                                                     the respondent submitted part of a copy of a report of the
                                                                      proceedings dictated by his representative on the day they
In J 19/03 the Legal Board found that under Rule 88, first            were held.
sentence, EPC, it is not sufficient to prove that a divergence
has occurred between the true intention of the applicant and          The appellant argued that this document should not be
the declaration filed by its representative; rather it is             admitted; it had been submitted late, one month prior to the
additionally required that this divergence was caused by an           oral proceedings before the board. The board however took
error of the person who was competent to make the decision            the view that the report submitted by the respondent was
on the procedural act before the EPO. Therefore, as a rule,           much more explicit; it was only two pages long and was not
in cases where the party is represented by a professional             difficult to understand. Moreover, the appellant himself had
representative the error pursuant to Rule 88 EPC must be an           not seriously challenged the accuracy of the facts it reported.
error of the representative in expressing his own intentions.         Under these circumstances, the board saw no reason not to
Thus, relying by mistake on the capacity and the reliability of       admit the document, and informed the parties accordingly at
the person in charge who was allegedly handling the patent            an early stage in the proceedings.
application under his supervision was not, in the Board’s
view, decisive because this person was not competent and              In T 311/01 the appellant (opponent) had offered witness
authorised to file any declaration with the EPO for and on            testimony on the skilled person’s knowledge and
behalf of the appellant and was therefore not a person whose          understanding of D1. The board considered this an
error could be considered under Rule 88 EPC.                          admissible form of evidence under Article 117(1) EPC, where
                                                                      there was a need to clarify matters potentially material to the
                                                                      decision and of which the witness had personal knowledge.


                                                 Page 85 of 154
But the testimony had been offered as evidence not of               inventive step over the prior use evidenced in a declaration
specific facts but of the knowledge and ideas of skilled            submitted in lieu of evidence on oath. Since fundamental
persons in the technical field concerned. So the appellant          assertions made in the declaration had been contested, the
was offering experts, not witnesses. That, however, was not         author was offered as a witness.
necessary; the board itself was expert enough, at least on
the features and advantages described inter alia in                 Although the appellant (patentee) had consistently
documents D1 to D3 and D5. The further question arising             demanded that the author be heard, the opposition division
could be answered from document D6, with no need for                decided not to summon him as a witness, even though he
further evidence. So it was not necessary to hear the               was available. The board held that this had handicapped the
”witnesses” proposed.                                               appellant in its defence against what turned out to be the
1.1          Hearing of witnesses                                   decisive piece of evidence. The appellant had effectively
                                                                    been prevented from having considered its evidence that the
  2005                                                              prior use had not taken place in the way alleged by the
In T 374/02 the board clarified that the EPC required clear         respondent. This was all the more inappropriate since the
requests with regard to testimonies a party wished witnesses        prior use was the respondent’s own and the evidence
to give, since the responsible department of the EPO had to         therefore largely lay "within the power and knowledge of the
issue a decision regarding the taking of oral evidence (see         opponent". Thus, the opposition division had infringed the
Article 117(1)(d) and Rule 72(1) EPC). The party had to             appellant’s right to be heard, which constituted a substantial
indicate the factual details that it wanted to be proven by the     procedural violation justifying the remittal of the case to the
oral evidence requested. In this case, the appellant had            department of first instance.
solely asked in his letter for the board’s opinion about the
presence of three persons during the oral proceedings and           The board thus made clear that, as a rule, if assertions made
mentioned that one of them "can make a further statement"           in an unsworn witness declaration remain contested, a
without explicitly offering the mentioned persons as                request from a party to hear the witness must be granted
witnesses. Even if the mention of the above persons could           before these assertions are made the basis of a decision
have been considered an implicit offer of witnesses, the            against the contesting party. The principle of free evaluation
board was of the opinion that it did not need to hear them,         of evidence applying in the proceedings before the EPO
because this "implicit offer of witnesses" did not specify what     could not be a justification for refusing a relevant and
should be able to persuade the board to evaluate differently        appropriate offer of evidence. Free evaluation of evidence
the evidence already existing in the file and because               means that there are no firm rules according to which certain
witnesses were meant to corroborate the facts for which they        types of evidence are, or are not, convincing. It does not
were expected to be heard, not to fill in gaps in the facts and     mean that the deciding body could choose the evidence
arguments brought forward by the party in support of its            which it considered sufficient for finding the truth but that
case. The lack of an indication of the facts which were to be       there were no firm rules according to which certain types of
proven by testimonies of the three persons mentioned meant          evidence were, or were not, convincing.
that the necessary conditions for the hearing of witnesses did      1.3          Expert opinions
not exist in the present case.
                                                                    In T 375/00 the appellant had offered expert opinion on a
In T 324/03 the appellant (opponent) had nominated three            number of matters as evidence, wishing the board to find and
witnesses to give evidence in support of his allegation that        appoint an expert under Article 117(1)(e) EPC to support
prior use of the patent at issue (cutting tool inserts) had taken   aspects of his case. In general, the expert was expected to
place but the board rejected the request for hearing these          testify on issues concerning the cited documents and the
witnesses. In this case, the board considered it appropriate        prior use cutter.
to start from the hypothesis that inserts of type 229 as shown
in the drawing D8 as alleged by the appellant were effectively      The issues related to the technical interpretation of
made available to the public before the priority date of the        documents and to consideration of how the cutter might
patent in suit, and only if the alleged prior use was found         work. In the board’s opinion, an expert was only necessary
pertinent as to its subject-matter to investigate whether it        when a board did not consider itself in a position to decide
could be established as fact, for example by hearing the            upon a matter without technical assistance. As boards
witnesses offered by the appellant. However, in the absence         included two technically qualified members, such cases
of any precise information or data in the submitted                 would be rare and would occur only in special circumstances.
documents, the allegations of the appellant had to be               Such circumstances did not obtain in the case at issue,
regarded as unsubstantiated. As a consequence, the                  which was a relatively simple mechanical case. Moreover, it
appellant’s offer to hear witnesses for proving the allegations     was open to the appellant himself to actively seek the
made became irrelevant for the board’s decision.                    necessary evidence, and he had not done so. If a board were
                                                                    to be active in seeking experts to help the case of a party, it
1.2          Declarations in lieu of evidence on oath               might be open to accusations of partiality. It was therefore
  2005                                                              neither necessary nor desirable for the board to obtain the
The EPO accepts declarations in lieu of a testimony given           evidence of an expert in this case.
under oath as evidence. These are written statements
intended to avoid the need to hear the undersigning person          2.          Evaluation of evidence
as a witness and it is therefore superfluous to confirm the
context of these statements by hearing such persons (see T
                                                                         2004
674/91).                                                            The EPC does not stipulate ,when evidence is taken, how
                                                                    the outcome of the taking of that evidence is to be appraised.
The opposition division revoked the patent in suit in T 474/04      The principle of the free evaluation of the evidence applies.
(OJ EPO 2006, 129) because the invention did not involve an         The body having to make the decision therefore decides


                                               Page 86 of 154
whether or not an allegation is fact on the basis of the whole     The presentation of such evidence must also be accurate but
content of the evidence taken and the proceedings, to its          the format of the presentation is of secondary importance – a
own satisfaction and unrestricted by any statutory rules of        carefully prepared report and/or table may convey as much
appraisal. No general rules for the evaluation of evidence         information as a large number of statements from the testers.
have been established in the case law either; what amounts         However, in cases where a report and/or table is used, a
to sufficient evidence has instead been made on a case-by-         statement (either within the report or a separate witness
case basis.                                                        statement) from the organiser of the tests detailing the test
                                                                   conditions as well as the results can only assist in assessing
In T 1110/03 (OJ EPO 2005, 302) the board stated that,             the objective value of the test evidence (point 4 of the
when evaluating evidence, it is necessary to distinguish           reasons).
between a document which is alleged to be part of the state
of the art within the meaning of Article 54(2) EPC, in the         Furthermore, the board raised doubts about the reliability of
sense that the document itself is alleged to represent an          the "sworn statements" submitted in the present case (point
instance of what has been made available to the public             8 of the reasons). The fact that all the witnesses were
before the priority date of the opposed patent, and a              employees of the patent proprietor, the identical wording of
document which is not itself part of the state of the art, but     the statements, indicating that the individual witnesses
which is submitted as evidence of the state of the art or in       played no part in the preparation of their statements, and the
substantiation of any other allegation of fact relevant to         same date of signature of all the statements, also
issues of novelty and inventive step.                              demonstrating their "production line" nature, were regarded –
                                                                   among other features of the clearly "signed" but not "sworn"
In the first situation, a document is direct evidence of the       statements – as undermining their probative value.
state of the art; its status as state of the art cannot normally
be challenged except on authenticity. In the second situation,     Hence, the board had no hesitation in finding that the
a document is also evidence albeit indirect; it provides a         respondent’s latest tests, as presented, were wholly
basis for an inference about, eg the state of the art, common      unreliable evidence which must be disregarded.
general knowledge in the art, issues of interpretation or
technical prejudice etc. – an inference which is subject to        In J 10/04 the Receiving Section had questioned the
challenge as to its plausibility. Only a document of the first     credibility of a sworn statement. Considering the sworn
kind can be disregarded on the sole ground that it is post-        statement to have been based on personal impressions
published. Documents of the second kind do not stand or fall       which are subjective and not always reliable particularly
by their publication date even on issues of novelty and            regarding a routine task, the Receiving Section had not
inventive step. Disregarding indirect evidence would deprive       invited the witness to hear her personally.
the party of a basic legal procedural right generally
recognised in the contracting states and enshrined in Articles     The Legal Board did not share that view and stated that the
117(1) and 113(1) EPC (points 2.1 to 2.4 of the reasons).          Receiving Section should have heard the witness personally
                                                                   in order to be able to evaluate her credibility. The board
In the case T 702/99 the board made extensive remarks with         evaluated sworn statements as a form of evidence with a
regard to the probative value of test evidence. It noted that it   high probative value especially if it is given with the
is essential that comparative tests, conducted by a number of      awareness that wilful false statements are punishable by fine
persons as evidence for or against qualities such as an            or imprisonment or both under the applicable law. Strong
improved "feel" of a product (eg cosmetics), be made under         reasons are therefore necessary to disregard this kind of
conditions which ensure maximum objectivity on the part of         evidence. These reasons could be a set of circumstances
those conducting the tests and who may be required at a            which make the statement very unlikely so that the credibility
later date to give evidence in proceedings. Since such             of the witness would become decisive. The credibility of a
evidence is opinion evidence and thus inherently subjective,       person can only be evaluated by oral evidence. The
its value lies in the number of similar or same opinions and       credibility of witnesses cannot be impugned merely because
the tribunal faced with such evidence will seek to judge the       they had a business relationship with a party. The fact also
objective value of a number of subjective opinions. Parties to     that the statement is based on personal impressions of the
proceedings should adopt the same standards in the                 witness cannot be a reason to disregard it, because evidence
preparation of such test evidence as they should in the            is often based on the personal recollection of a person. If
preparation of experimental evidence. While the use of             evidence based on personal impression was not credible per
independent persons would naturally tend to carry more             se, evidence via witnesses could never be credible.
weight, the use of employees may not be objectionable per            2001
se as long as the test conditions are designed to ensure that,     If a party fails to submit available evidence when asked by
just as if independent persons were used, the employees are        the board to do so, this may be taken as an indication that
not biased by prior knowledge of either the products under         possibly the evidence does not support his arguments (T
test or of their employer’s expectation of the result of their     428/98, Reasons 3.6).
tests. It is always desirable that such tests can be shown to
be "blind"; that the testers have had no part in the making of     In T 151/99, in the board’s judgment, in general, it would
the claimed invention or research leading up to the invention      appear highly plausible that a paper submitted to obtain an
or the patenting procedure; and that the tests have been           academic degree (here: a master’s thesis) was not
conducted in the strictest conditions – for example that no-       confidential. This became a virtual certainty if the paper was
one has given any or all of the testers any advance                referred to in published scientific work. If the reference was in
information, that each tester performs his or her test in the      a document published before the priority date of the patent in
absence of the other testers, and that their opinions are          suit then it could be assumed that said paper was also made
accurately recorded (points 2 to 3 of the reasons).                available to the public before said date.


                                               Page 87 of 154
In T 314/99 concerning the availability to the public of             secondhand and thus highly unreliable piece of evidence.
document D6, it was not disputed by the patentee that D6             However, the second item of evidence, while very general as
(Diplomarbeit) did in fact arrive in the archive of the Library of   to the date of death, did at least provide a year of death and
the University before the relevant priority date. However in         could thus be said to establish that, at least on the balance of
the Board’s judgment, D6 did not by its mere arrival in the          probability, the opponent had still been alive when the appeal
archive of the Chemistry Department Library of the University        was filed.
become publicly available.
                                                                     As to the question whether the two daughters of the
The ”logbook” produced in evidence was a handwritten note            deceased inherited all the rights of the appeal jointly or not,
book in which the diploma degree papers received in the              the available evidence demonstrated inconsistencies in the
archive were entered by the librarians. The ”logbook” itself         crucial matter of the identity of the heirs. In the board’s view,
was not an official publication of the library but essentially an    the evidence provided suffered not only from inconsistencies
internal document of the library staff. After closer                 but also from a significant lack of credibility. The board
examination of the annotations in the logbook, the board said        therefore reached the conclusion that the necessary legal
that it could not be concluded with certainty that the relevant      requirement – namely that there must be sufficient evidence
entries were actually made before the relevant priority date         of an heir or heirs – had quite simply not been fulfilled. There
and it could not be ruled out that they were added at a later        was accordingly no one who could continue the appeal,
time, when for one reason or another the time frame became           which therefore had to lapse (see also p. 91).
relevant. Since, furthermore, the annotations were all
evidently made either by the librarian herself (who was also a       3.          Standard of proof
witness in this case) or under her direct supervision, the
evidence of the ”logbook”, insofar as it related to a date on             2002
which a particular entry was actually made, must be                  In T 291/97 the appellant had contended in the statement of
regarded as ex post facto re-construction originating from the       grounds of appeal that the publication of document (1) had
witness herself.                                                     occurred in consequence of an evident abuse within the
                                                                     meaning of Article 55(1)(a) EPC, and thus document (1) was
In the absence of further submissions or evidence to refute          not prior art citable against the claims at issue.
these arguments, the board could come to no other
conclusion than that the evidence of the annotated ”logbook”         The board decided that the above publication was to be
was unsafe. In particular, it could not be regarded as having        taken into consideration for the application of Article 54 EPC.
sufficient probative value to discharge the opponents’ onus of       It observed in its decision that the finding of an evident abuse
proof to establish the date of availability to the public of D6      under Article 55(1)(a) EPC was a serious matter. An abuse
through its entry in the ”logbook”. The board noted that             was not lightly to be presumed. The standard of proof was
opponents failed to corroborate their contentions by the             identified by the words ”evident abuse” (German
production of witnesses who inspected the ”logbook” (eg              ”offensichtlicher Missbrauch”, French ”un abus évident”) as
students in preparation of their theses or the author of D6          being high: the case had to be clear-cut, and a doubtful case
himself) although one would expect that such witnesses               would not be resolved in favour of the applicant. The
would exist and could be traced.                                     evidence filed in the case at issue did not meet the standard
2.1          Issues of probative value                               that the board would consider appropriate, in particular in
                                                                     that virtually every declaration filed contained serious mis-
   2005                                                              statements that had subsequently been corrected, or the
The opponent having died, the board had to decide in T               indicated mis-statements had not been relied on. That the
74/00 whether the evidence had shown that an heir or heirs           errors had been corrected or not relied on was
had succeeded to the right of the opponent to appeal or to           commendable, but left unresolved the problem of whether
the appeal itself. In the board’s view, the best evidence which      any part of such a statement could be relied on at all. The
could be provided was evidence of the relevant law of                board also pointed out that in proceedings before the
succession (here Japanese law) as applied to the facts of the        European Patent Office it had to be possible to rely on the
case in hand and, in particular, by way of opinion from a            written evidence as having been checked with the facts: if in
Japanese lawyer; the mere filing of copies of a party’s              some instances that turned out not to be so, the party who
correspondence with his instructing Japanese attorneys               put it forward risked its evidence being disregarded as
could not serve as substitute because such correspondence            unreliable as a whole.
was not evidence per se.
                                                                     The issue under appeal in case T 1200/01 was whether an
In this case the board considered two issues of fact, namely         opposition of the appellant against the patent could be
the date of the opponent’s death and the issue of                    deemed to have been filed. According to Article 99(1) EPC,
succession.                                                          last sentence, this was only the case if the opposition fee has
                                                                     been paid within the opposition period. However, in the case
As to the first one, there were two items of evidence – the          at issue no trace of a notice of opposition nor of a voucher for
statement in a letter from the representative’s instructing          payment of the opposition fee allegedly filed by the appellant
Japanese patent attorneys that they had no knowledge that            had been found within the Office.
she had died before the filing date of the appeal; and the
information, appearing from the notice of appeal that she had        The board noted that concerning the standard of proof to be
died during 2002. While the board shared the respondent’s            applied for establishing the receipt of documents not found
surprise that more precise information had not been                  within the EPO, it is the established jurisprudence of the
provided, these two items of evidence were at least regarded         Boards of Appeal that, even if proof to this effect can seldom
as consistent. The board saw in the first item (the statement        lead to absolute certainty, it must at least show to a high
that the opponent was "not known to be dead") a vague,               degree of probability that the alleged filing took place (T

                                                Page 88 of 154
128/87, OJ EPO 1989, 406). It also noted that in some               submitting the allegation had not only the burden of
previous cases it was accepted that this standard was met if        reproducing the earlier disclosure in such a way as to
there were concrete traces of the item sought which, even if        demonstrate the alleged inevitable outcome, but also the
they did not show it for certain, indicated a high probability of   burden of showing convincingly that if any significant
the lost document having once been in the Office (see               deviation from the conditions specified in the earlier
decisions T 243/86 and T 69/86). Nevertheless, any other            disclosure had occurred, that deviation was not material to
means of giving evidence, such as witness testimony, could          the outcome (see T 396/89, points 4.5 and 4.7 of the
equally be considered in this context. It has to be recalled        reasons).
that proceedings before the EPO follow the principle of the         3.2          Prior use
free evaluation of evidence. Laying down firm rules of
evidence defining the extent to which certain types of                2003
evidence were or were not convincing would conflict with this       In T 12/00 the respondents had contended that, according to
principle (G 3/97, OJ EPO 1999, 245, point 5 of the reasons).       established case law, an opponent alleging prior public use
The evaluation of evidence normally should answer the               had to prove his case "up to the hilt" in order to establish a
question of what, on the basis of all available evidence, is        degree of certainty beyond all reasonable doubt.
more likely than not to have happened (see eg T 750/94, OJ
EPO 1998, 32, point 4 of the reasons).                              The board observed that in the decisions cited by the
                                                                    respondents (T 472/92, OJ EPO 1998, 161, and T 97/94, OJ
The board pointed out that under the EPC, the critical event        EPO 1998, 467) the boards had indeed applied a very strict
for compliance with a time limit is the date of receipt of an       criterion as a standard of proof in the particular cases of prior
item at the EPO for which receipt the filing party bears the        public use then under decision, namely that the opponent
responsibility (T 702/89, OJ EPO 1994, 472, point 2.2 of the        had to prove his case "up to the hilt". However, as explained
reasons), it follows that the burden of proof that filing has       in T 472/92, the reason for applying this criterion was that the
been effected falls on this party. The impossibility of             opponent had been involved in the prior use and that in such
furnishing proof of a higher probability that an item was filed     cases practically all the evidence in support of the alleged
than that it was not filed, must therefore go against the party     prior public use lay within the power and knowledge of the
doing the filing (T 128/87, points 7 and 8 of the reasons). In      opponent. In that case the board had ruled that in the given
the case at issue the board held that the evaluation of the         situation the standard of proof used in objections under
evidence referred to above did not allow the conclusion that        Article 100 EPC, ie the balance of probability, should
there was a higher degree of probability that the alleged filing    exceptionally not be applied. The same strict criterion
took place than that it did not take place.                         justified by alleged prior public use by the opponent had
  2001                                                              been applied in T 97/94, point 5.1 of the reasons.
In T 838/97 the board pointed out that there must be no
doubt that the prior disclosure, as read by the skilled person,     The board noted that the appeal case before it differed from
unambiguously corresponded in all its technical features to         the above cases in that the material on the basis of which
the subject-matter as claimed.                                      prior public use was claimed originated from a third party
                                                                    which was not related to the appellants’ company. Although it
In T 91/98 the respondent (opponent) challenged inventive           would still be the task of the party alleging prior public use to
step on the basis of, in particular, document (8) which was an      furnish sufficient proof, it could be expected that, in a case in
                                                                    which third parties were involved, in principle both parties
entry of the Lexis- Nexis data base. It did not provide any
evidence as to when this information was entered into the           could collect evidence in order to prove their views.
data bank, ie as to when it was made available to the public.       Therefore, in the opinion of the board, for assessing the
Neither could the date of availability be taken as the date         standard of proof to be applied in such a case it would
mentioned in the heading of the entry (3 September 1985) as         appear more appropriate to apply the principle of the balance
this latter date could not be equated to the distribution date of   of probability. In that respect reference was made to T
the information and was not even necessarily correct.               254/98, where with reference to the question of prior public
                                                                    use by a third party the board had ruled in point 2.7 of the
                                                                    reasons: "A party cannot relieve itself of the burden of
After detailed evaluation of the declarations and affidavit filed
by the respondent, in the board’s judgment the date at which        providing counter-evidence for facts it alleges simply by
the information contained in document (8) was made                  referring to the abovementioned decision (ie T 472/92) and
available to the public could not be unambiguously defined.         stating that all the evidence is within the power of its
                                                                    adversary, without bringing proof that not he but only the
3.1          Content of a disclosure                                Respondent was able to collect the evidence in support of
  2003                                                              the respective contention."
In T 204/00 the board observed that, according to                   3.3          Claiming a valid priority
established case law, the standard of proof to be applied in
establishing the inevitable outcome of a prior art disclosure
                                                                      2003
for the purpose of assessing novelty should be much stricter        In T 1056/01 the board pointed out that because of the
than the balance of probabilities (see in this respect T            crucial effect a valid priority date had on patentability
793/93, point 2.1 of the reasons, and T 396/89, points 4.3 to       (limitation of the state of the art to be taken into account for
4.7 of the reasons).                                                the assessment of novelty and inventive step – Article 89
                                                                    EPC, Article 4.D Paris Convention), the date of filing of the
The board held that this was particularly so in the                 application whose priority was claimed had to be proven in a
circumstances of the case at issue, where the inevitable            formal way, namely by a certificate issued by the authority
result alleged by the appellant was in contradiction with the       which had received that application (Rule 38(3) EPC, cf.
explicit disclosure of the prior art document D1 and the            Article 4.D(3) Paris Convention). Even if no such formal proof
results obtained by the respondent. In addition, the party          was prescribed for the timely withdrawal of a previous

                                                Page 89 of 154
application pursuant to Article 87(4) EPC (cf. Article 4.C(4)      variation of the protocol worked was unlikely to be enough
Paris Convention), it appeared appropriate to require an           (points 9 to 11 of the reasons).
equally high standard of proof, for once there existed a
previous application concerning the same invention both            The board pointed out that the general rule was that the
dates were equally relevant for establishing the validity of the   person who asserted something positive had the burden of
claimed priority. However, in the case at issue, the timely        proof (cf. the Latin legal tags "Affirmanti incumbit probatio"
withdrawal of the UK application for the purposes of Article       and "Ei incumbit probatio qui dicit non qui negat"). Thus if a
87(4) EPC could not be established. This fact operated to the      patentee asserted that an example in a patent worked as
detriment of the appellant, because she carried the relevant       stated, and an opponent denied that, it was up to the
burden of proof. Unlike facts barring patentability (see for       patentee to provide proof. However, if the example contained
example T 219/83 cited by the appellant), timely withdrawal        a complete experimental protocol and the patentee affirmed
of a previous application was a positive precondition for          that the results reported had been obtained, a board was
claiming a valid priority from a subsequent application for the    likely to accept that the patentee had done enough to shift
same invention. Hence, the date of (effect of the) withdrawal      the burden of proof to the opponent to provide a repeat of the
was a fact which could act in the applicant’s favour, and she      experiment to show that it did not, in fact, work as stated.
had relied on it just as she had relied on the filing date (and    Finally, however, the board had to be satisfied, considering
the content) of the subsequent UK application. Application of      all the evidence, that the example worked as stated. It was
the principle that the burden of proof for a particular fact was   also observed that in the special situation where an opponent
to be borne by the party alleging it was even more justified in    accepted that the invention could be carried out as stated in
this situation, where the alleged fact was a purposive act by      the examples, but alleged that there were other
the appellant’s representative. For these reasons it was held      circumstances where something falling under the claim could
that the priority claim of the patent was invalid because,         not be carried out, boards of appeal would then normally
under the terms of Article 87(4) EPC, the UK patent                expect the opponent to provide concrete evidence of that (cf.
application could not be considered to be the first application    the Latin legal tag "Qui excipit, probare debet, quod
for the purpose of claiming priority.                              excipitur": he who raises an objection should prove it).
                                                                   4.3          "Product-by-process" features
4.          Burden of proof
                                                                     2003
     2001                                                          In T 713/01 the appellant had denied the existence of an
In T 254/98 the appellant (patentee) provided no proof for the     "enabling" disclosure in D2 of polymers prepared in the
contention that it was not within its power to obtain counter-     presence of a solubilised lithium pyrrolidide initiator by
evidence from the firm in question. The board pointed out          reference to T 124/87 (OJ EPO 1989, 491) and T 206/83 (OJ
that a party could not relieve itself of the burden of providing   EPO 1987, 5), according to which the criterion for a prior art
counter-evidence for facts it alleged by simply referring to T     disclosure to be novelty-destroying was that the claimed
472/92 and stating that all the evidence was within the power      subject-matter could be directly and unequivocally inferred
of its adversary, without bringing proof that not he but only      from an enabling disclosure in it.
the respondent was able to collect the evidence in support of
the respective contention.                                         The board held that in proceedings before the examining
4.1          Advantageous effects                                  division the burden of proof for an allegedly distinguishing
                                                                   "product-by-process" feature lay with the applicant (cf. T
     2003                                                          205/83, OJ EPO 1985, 363, point 3.2.1 of the reasons; T
In T 97/00 the respondent had alleged that it was up to the        279/84, points 4.1 and 4.2 of the reasons). It held that the
appellant to demonstrate that increased activity, improved         appellant’s arguments were irrelevant, and that the same
stability and higher selectivity to C5+ hydrocarbons were not      applied to the question whether lack of novelty could be
obtained over the whole claimed scope.                             decided on the basis of the mere probability of an
                                                                   anticipatory disclosure addressed in T 464/94 and T 727/95
The board however held that, according to established case         (OJ EPO 2001, 1).
law, each of the parties to the proceedings carried the
                                                                   4.4          Shifting the burden of proof
separate burden of proof for any fact they alleged (see T
355/97, point 2.5.1 of the reasons). Therefore, in the case at       2004
issue, the burden of proof for showing that the claimed            In inter partes proceedings the burden of proof rests primarily
method led to the alleged and unsupported advantageous             upon the opponent. However, as the board stated in T
effects mentioned in the patent in suit rested with the            131/03, when the latter has established a strong presumption
respondent patentee. In the absence of any corroborating           that unusual parameters as used to define the claimed
evidence that these advantageous effects were obtained, the        subject-matter are inherently disclosed in the prior art, the
allegation in the patent in suit of increased activity, improved   patent proprietor cannot merely claim the benefit of the
stability and higher selectivity was unsubstantiated and           doubt. It is incumbent upon to him to contribute in
consequently such alleged effects were not to be taken into        establishing to which extent such parameters, which he
account in assessing inventive step.                               freely chose to use in the definition of his invention, actually
4.2          Hypothetical experimental protocol                    distinguish the claimed subject-matter from the prior art
                                                                   (points 2.3 to 2.8 of the reasons).
     2003                                                            2003
In T 792/00 the board found that if the patent contained only      In T 499/00 the board stressed that, according to established
an example with a hypothetical experimental protocol, and if       case law, each party carried the burden of proof for the facts
this example was to be relied on for showing sufficiency, then     it alleged; but it transpired that the Article 83 EPC objections
the burden of proof lay with the patentee to show that in
                                                                   raised by the respondents and in the contested decision
practice this protocol worked as stated. Evidence that a
                                                                   were all based either on unconvincing arguments (non-

                                               Page 90 of 154
comparable examples) or on unproven assertions.                    the appellant and, second, that the signatory of the impugned
Consequently, the allegations made by the respondents and          pleadings of 28 January 2002 was entitled to act before the
in the contested decision had never been proven.                   European Patent Office and held the appropriate
                                                                   authorisation for this purpose. Messrs R. and D., legal
The board felt that the burden of proof could not be reversed      practitioners and members of a partnership, are indeed
to rest with the appellants in the prevailing circumstances,       members of the Paris Bar, and the names of both appear on
where – as opposed to the situation in T 585/92 – the patent       the list of professional representatives before the EPO. They
had been revoked by the opposition division not on the             are therefore both entitled to act in one capacity or the other
strength of a real failure to disclose the information needed to   before the EPO under Article 134(1) and (7) EPC.
reproduce the claimed subject-matter, but for reasons that
the board elsewhere deemed erroneous. In the case in point,        The board held that a decision on the legality, in France, of
the burden of proof could not be shifted to the patentee           simultaneously exercising the profession of barrister and
because revocation could not, in the board’s view, be              acting as a professional representative before the EPO fell
pronounced solely in the light of the arguments and factors        solely within the jurisdiction of French professional and
put forward by the opponents (see also T 954/93). The same         judicial bodies. It was therefore neither for the present board
principle applied to the appellants, but it could not be invoked   nor for the Enlarged Board to determine this question since,
against them because their arguments and assertions, liable        first, the alleged violation had not in any way been proven
to be confuted in that respect, had nothing to do with the         and, second, in the headings of the pleadings submitted by
reasons for the decision in the case in point.                     the opponent there was no mention of any plurality of offices
     2001                                                          but rather only of the signatory’s status as legal practitioner,
In T 596/99 the board observed the following: While it was         together with his qualifications and other positions. As
legitimate for an opponent to attack a patent by pointing at an    matters stood, the opponent’s representative had not violated
allegedly erroneous appreciation of the evidence by the            any provision of the EPC, which alone governed the present
examining division, in opposition proceedings, the burden of       case. The pleadings of 28 January 2002 were therefore
proof nevertheless remained with the opponent. In the              declared admissible.
present case the appellant/patent proprietor therefore rightly       2002
stressed that, even if the respondent/opponent was                 In J 18/99 the main issue was whether or not the appellant, a
successful in its effort to cast serious doubt on the              legal practitioner (abogado) qualified in Spain and having his
persuasiveness of the appellant’s evidence, this would not         place of business in Spain, was entitled under Article 134(7)
justify the conclusion that the invention failed to solve the      EPC to undertake professional representation of third parties
existing technical problem, but only that the evidence was         in proceedings before the European Patent Office. A further
inappropriate. For the respondent to actually prove that the       issue concerned the registration of the appellant as a legal
subject-matter of claim 1 was unable to solve said problem it      practitioner under Article 134(7) EPC.
would have been necessary to submit convincing
counterevidence. In summary, the board found that the              The board concluded that for the application of Article 134(7)
respondent’s arguments were not sufficient to discharge its        EPC all that was significant was that a legal practitioner
burden of proof.                                                   qualified in a contracting state was – as such – entitled,
                                                                   within that state, to act as a representative in patent matters.
                                                                   The EPC did not distinguish for this purpose between
            L. Representation                                      entitlement to act as a ”simple” representative or as a
                                                                   ”professional” representative of clients (reference being
1.           Legal practitioners entitled to act as                made to the ”travaux préparatoires”).
             professional representative under Article
             134(7) EPC                                            Following the examination of national provisions and
                                                                   conclusions drawn by the OHIM (Communication No. 2/96 of
1.1           Introduction
                                                                   its President of 22 March 1996, point 1), the board concluded
     2004                                                          that under the present Spanish law any legal practitioner
In T 643/01 the appellant (patent proprietor) contended in         qualified in Spain and having his place of business in Spain
particular that the opponent’s reply of 28 January 2002 was        was entitled to represent clients before the Spanish Patent
inadmissible on the ground that it had been signed by Mr R.,       and Trademark Office in patent matters if he presented an
who was a legal practitioner and member of the Paris Bar but       authorisation from the party.
who was allegedly unable to show that he possessed an
authorisation conforming to the requirements of Rule 101(1)        Thus Spanish legal practitioners appeared to meet the
EPC. The appellant requested that, if the signatory                conditions of Article 134(7) EPC and were therefore entitled
concerned was relying on his official status as a professional     to undertake representation in proceedings established by
representative before the European Patent Office, the board        the EPC to the same extent as before the Spanish Patent
should find that French law prohibits such a plurality of          and Trademark Office.
offices, since the exercise of the profession of barrister could
not suitably be simultaneously combined with that of               On the registration issue, the board noted that the appellant
industrial property attorney. In the appellant’s view, these       had requested registration as a legal practitioner entitled to
provisions should be transposed into the law of the EPC. The       act in proceedings established by the EPC in accordance
appellant requested that, if the board had any doubts about        with Article 134(7) EPC without filing a signed authorisation,
this prohibition, this question should at least be referred to     whereas according to the practice of the Legal Division legal
the Enlarged Board of Appeal.                                      practitioners were registered only if they had filed a signed
                                                                   authorisation from a party. Thus, the board remitted the case
The board of appeal in this case held, first, that there was no    to the Legal Division with the order to register the appellant,
reason for a referral to the Enlarged Board as requested by        provided that he filed the signed authorisation.

                                               Page 91 of 154
2.          Authorisations for appointment of a                     without filing an authorisation, there was no evidence on file
            representative                                          that Mr G. obtained the power to give sub-authorisations.
2.1           General authorizations                                In the board’s view, the issue of whether or not a board
     2003                                                           considers a representative as authorised by a party is a
In J 9/99 (OJ EPO 2004, 309) the board decided that the             matter of proof including a free evaluation of the evidence
Legal Division had authority to check the authorisation of a        and overall circumstances of an individual case. To define an
representative named in a general authorisation and to issue        appropriate standard of proof with respect to a
a formal decision to reject the registration of a general           representative’s authorisation, the board took account of the
authorisation. A decision not to register a general                 purposes of requiring an authorisation. The filed evidence
authorisation can only be issued in respect of a request from       including an email by the general counsel of respondent 01
a party to the proceedings within the meaning of Rule 101(2)        showed that respondent 01 indeed wanted to be represented
EPC, ie either an authorising or an authorised party.               by Mr U. who had acted on the opposing side (for a further
                                                                    respondent whose opposition had been held inadmissible)
2.2          Sub-authorisations                                     and, thus, in the interest of respondent 01. Mr U.’s request
     2004                                                           on behalf of respondent 01 was identical with the original
In T 382/03, professional representative Mr E. of the               request of this opponent, ie to have the revocation of the
association of professional representatives UDL representing        patent confirmed. No new request was submitted by Mr U.
respondent 01 informed the board by fax that "we shall be           which might have created an additional, potentially unreliable
represented by Mr U., Professional representative". In the          obligation of respondent 01. The board decided to consider
appellant’s opinion, Mr U. (not a member of the association         Mr U. as being sub-authorised to represent respondent 01 at
UDL) was not authorised to represent respondent 01. There           the oral proceedings.
was no evidence on file as to whether the opponent’s initial
representative, Mr G. (from the association UDL), was               3.          Representation by a common representative
entitled to give sub-authorisations.
                                                                         2001
By reference to Rule 101(1) EPC, Article 10(2)(a) EPC and           In G 3/99 (OJ EPO 2002, 347) the Enlarged Board of Appeal
the decision of the President of the EPO dated 19 July 1991         dealt with the question of admissibility of joint oppositions
on the filing of authorisations (OJ EPO 9/1991, 489), the           and joint appeals. In this decision it was made it clear that an
board said first that Mr G. would have been required to             opposition filed in common, apart from the fact that it is filed
submit an authorisation from opponent 01 only if the EPO            by more than one person, is as much a single opposition as
had raised doubts as to Mr G.’s entitlement to act; that was        an opposition filed by only one person. Consequently, the
not the case.                                                       common opponents are obliged to act in common through
                                                                    their duly determined common representative. In an
Moreover, other professional representatives of the same            opposition filed in common, there must in all cases be a
association (ie the association UDL) were allowed to act on         common representative (Article 133(4) EPC and Rule 100
behalf of opponent 01 without filing authorisations. That           EPC) and only that common representative is entitled to act
conclusion derives from Article 1(2) of the President’s             in the opposition proceedings on behalf of all the common
decision. According to this Article, a different situation may      opponents taken as a whole.
arise where a new representative is appointed to act on
behalf of a party which was represented by a representative         It was further noted that an individual common opponent not
from a different association: if the EPO is not notified that the   being the common representative, or a subgroup of the
previous representative’s authorisation has terminated, the         group who filed the opposition in common, but without their
new representative must file an individual authorisation or a       common representative, is not allowed to act or intervene on
reference to a general authorisation already on file.               his own or on behalf of one or more or all of the other
                                                                    individuals (cf. however below). Thus, only the common
In the present case, previous representative Mr E. from the         representative is entitled to sign the filed documents (Rule
association UDL filed a fax to announce that Mr U., who was         100 EPC and Rule 36(3) EPC), the signature of other
not a member of this association, would appear for                  individuals not being required. At any stage of the procedure,
respondent 01 at the oral proceedings before the board. Mr          be it the opposition or the appeal procedure, it may also
E. did not notify the board that his association’s authorisation    happen that the joint member who is the common
was terminating. Hence, that was a situation where the said         representative intends to withdraw from being a joint
President’s decision required the new representative, Mr U.,        member, ie to withdraw from the proceedings. In such
to prove that he was authorised to act on behalf of                 circumstances, he must notify his decision to the EPO with
respondent 01.                                                      the procedural consequence that, for the determination of a
                                                                    new common representative, the provisions of Rule 100(1)
As Mr U. did not refer to a general authorisation from              EPC have to be applied for the opposition procedure by
respondent 01, proof of an individual authorisation had to be       virtue of the last sentence of this Rule and, for the
provided to the board. In principle, that was possible by filing    subsequent appeal procedure, by virtue of Rule 66(1) EPC.
a direct individual authorisation from opponent 01, or by filing
a sub-authorisation from an authorised representative who           It could also occur that the common representative ceases to
was entitled to sub-authorise a third representative. In view       act in the procedure without the EPO being informed thereof.
of the sub-authorisation by the association UDL submitted by        In both cases, the other joint members must take the
Mr U. at the oral proceedings, the only issue remaining was         appropriate action to continue the procedure in due time and
whether or not UDL was entitled to give such                        to inform the EPO of the new common representative if
subauthorisation. As Mr G. filed the notice of opposition 01        determined. However, there is no practical need to
                                                                    acknowledge the validity of procedural acts of a joint member

                                                Page 92 of 154
who is not the common representative. Since a procedural          professional representative wished to delegate most or all of
act performed by a non-entitled person is treated by the EPO      the presentation of a party’s case to someone who was not a
in the same way as a missing signature (see T 665/89), each       professional representative.
joint member or any other person acting on his behalf can
perform such an act to avoid missing a time limit, provided       To save time, the board in the case at issue decided on a
the deficiency is remedied within a further time limit set by     pragmatic approach and allowed the professional
the board in the communication under Rule 36(3) EPC               representative’s colleague to make submissions, but only
notified to the common representative and sent for                after the representative had given an express assurance that
information to the non-entitled person who performed the act.     she took full responsibility for such submissions.
The deficiency can be remedied if the procedural act is             2002
signed by the common representative. If, for whatever             During the oral proceedings in T 899/97 the appellant
reason, this person ceases to be a joint member, the              (opponent) requested that a technical expert be allowed to
signature must be given by a new common representative            speak in order to explain the physical phenomena that
determined pursuant to Rule 100 EPC.                              occurred when a prior art separator was used. Pointing out
                                                                  that the relevant letter from the appellant had reached it only
The question of the validity of an appeal filed by a person       two weeks before the oral proceedings, and referring to G
who is not the common representative named under Rule             4/95 (OJ EPO 1996, 412) and T 334/94, the respondent
100(1) EPC in the notice of opposition is dealt with in the       requested that this technical expert be refused permission to
chapter on “Appeal procedure”.                                    speak.

4.          Oral submissions by an accompanying person            The board considered the particular circumstances of the
     2005                                                         case, ie:
In T 475/01 the board, exercising its discretion under the
                                                                  – that no time limit for making further submissions had been
EPC and taking account of the criteria established by the         set by the board with the summons to oral proceedings
Enlarged Board of Appeal (see G 4/95, OJ EPO 1996, 412),
allowed oral submissions by the persons accompanying both
                                                                  – that the respondent (patent proprietor), although he had
parties at the oral proceedings. Unlike the respondent, the
                                                                  had two weeks’ notice of the technical expert’s appearance
board took the view that neither the EPC nor the above            at the oral proceedings, had not taken any immediate action
Enlarged Board decision could be held to imply that a party       in this respect, but merely objected against his hearing at the
that represented itself in proceedings was to be treated          beginning of the oral proceedings
differently to a professional representative in respect of oral
submissions by accompanying persons.
                                                                  – that the respondent, when referring to the criteria (ii) and
                                                                  (iii) mentioned in headnote 2(b) of decision G 4/95, had not
In T 1212/02 the appellant did not consent to a colleague of
                                                                  indicated any specific preparatory measure that had been
the representative of the respondent (opponent) making            rendered impossible or hindered by the relatively late
submissions before the board during oral proceedings. While       presentation of this technical expert
the representative herself was authorised to act as a
professional representative within the meaning of Article 134     – that this technical expert was one of the authors of the test
EPC, the same was not true of her colleague, even though
                                                                  report (R2) filed by the appellant with the statement of
he too worked in the patent department of the same firm, the
                                                                  grounds, that the board had raised some questions on this
respondent’s holding company, and was familiar with the
                                                                  specific technical issue in the annex to the summons to oral
case in point. The appellant/patentee observed that no            proceedings, and that these technical issues had already
provision had yet been made under Article 133(3) EPC to           been discussed before the first instance.
allow employees of one legal person to represent another
legal person. The respondent’s representative argued that
                                                                  With this in mind the board held that the request to hear the
her colleague’s participation in the oral proceedings had
                                                                  technical expert had been submitted sufficiently in advance
been announced in advance in keeping with Enlarged Board
                                                                  of the oral proceedings by the appellant, and that the
decision G 4/95 (OJ EPO 1996, 412), and she took full
                                                                  respondent had been able ”to properly prepare” himself ”in
responsibility for it.                                            relation to the oral submissions” by this technical expert,
                                                                  including explanations concerning the physical phenomena
The board in the present case held the positions of both          occurring in prior art separators as tested in R2, in the sense
parties to be justified and considered that the ratio decidendi
                                                                  of G 4/95. This view could not be altered by the fact that
here unintentionally led to inconsistent results. As the
                                                                  another board, in a different case (T 334/94) and without a
appellant had argued, it was true that no legal provision had
                                                                  specific justification (obiter dictum), had considered a period
been made for the representation of one company to be             of one month to represent a minimum for naming a technical
undertaken by an employee of another company connected            expert to be heard at oral proceedings. Consequently, there
with the former company. It was also true that it was a matter    was no need to establish whether or not ”exceptional
for the board’s discretion to allow a person who was not the      circumstances” as referred to in G 4/95 had prevailed. Hence
professional representative authorised for the case in point to
                                                                  the board authorised the technical expert to speak on
make oral submissions on legal or technical issues before
                                                                  specific issues related to the functioning of the prior art.
the board, provided the criteria established in G 4/95 were
met. The origin of the inconsistency was evidently that
representatives and accompanying persons had normally
been regarded as separate and well defined categories of
participants in oral proceedings and that objections could be
raised only in cases like the one in point in which the

                                              Page 93 of 154
            M. Decisions of EPO departments                        "In respect of opposition proceedings there may be
                                                                   arguments in favour of letting the Opposition Division itself
                                                                   consider and decide upon such matters by means of an
1.           Composition of opposition divisions                   interlocutory decision allowing separate appeal. This would
     2004                                                          have the advantage of making it possible to have this
In T 900/02 a member of the opposition division took               procedural matter settled before a decision on the substance
employment with the respondent’s representative’s firm after       is taken" (point 4 of the reasons). According to the board, it
the oral proceedings; however, no offer to the parties of new      could be inferred from this that there was no principle
oral proceedings was made. The board pointed out that the          prohibiting an opposition division from deciding itself on an
case law of the boards of appeal showed it to be well-             allegation of partiality made against it (see G 5/91, point 4 of
established that a signed written decision issued after oral       the reasons). The board found that the order in G 5/91 in fact
proceedings should be the decision of those members of the         left it open whether the decision on the opposition division’s
first instance who conducted the oral proceedings and no-          partiality necessarily had to be taken before its final or
one else. The case law also showed that a change of                interlocutory decision on the substance. The board held that,
composition of an opposition division between oral                 although the Enlarged Board had, in the above obiter dictum,
proceedings and the issue of a written decision should be          considered it advantageous for the procedural matter to be
avoided and, if that was not possible, parties should be           settled before a decision on the substance was taken, it
offered new oral proceedings in the event of a change (see T       could not be inferred from the order in G 5/91 that it was
862/98, paragraphs 2.1 to 2.3).                                    forbidden in principle to decide on that matter together with
                                                                   the decision on the substance. The board therefore
     2003                                                          concluded that the opposition division had not committed any
In the case at issue in T 838/02, the composition of the           procedural error in the case in hand by deciding itself, as part
opposition division had been contrary to Article 19(2), second     of the contested decision, on the allegation that it would be
sentence, EPC. The board noted that, in such a situation,          impartial.
previous decisions of the boards of appeal had set aside the
contested decision immediately, as in T 939/91. In T 251/88,       In T 190/03 (OJ EPO 2006, ***) the proprietor’s objections
however, the board had asked the applicant/ appellant              and arguments involved a rather complex combination of
whether he invoked the procedural violation before deciding        possible sources of partiality. The board noted that the
on the remittal of the case. The present board noted that it       various objections mentioned above did not fit in neatly under
preferred the latter approach. It observed that it might be in     the possible reasons for partiality given in Article 24 EPC,
the legitimate interest of the parties in an individual case to    which specifies only a few reasons and leaves open other
proceed and to come to a final decision as quickly as              possible reasons, in particular by using the formulation "for
possible. A remittal implied a substantial delay, even if the      any other reason" in paragraph 2. There was thus a need to
case was treated with priority by the department of first          explore the nature of partiality in more detail in order to
instance. The board therefore considered it appropriate to         derive criteria for judging it.
give the parties an opportunity to comment before deciding
on the question of remittal. Since the appellant had               The board observed that there were two distinct aspects of
requested remittal and the respondents had not objected, the       partiality involved in the proprietor’s objections and the
conclusion was that remittal had to be ordered in the              situations envisaged by Article 24 EPC. Firstly, partiality for
absence of any special reasons for doing otherwise (Article        subjective reasons, ie an actual partiality on the part of the
10 RPBA).                                                          member, for example due to a personal interest or a dislike
                                                                   of a party. Secondly, a suspicion or appearance that there is
The appellant had further requested that an entirely new           partiality, which would be derived by an "objective observer"
opposition division be appointed. The board observed that          from a particular action of a member, or an assumed
the appellant’s stated reason had been that he did not wish        response to a proprietor’s action. Thus, the board noted that
to be placed at a possible disadvantage by the involvement         the existence of partiality had to be determined on the basis
of the other members of the initially appointed division. He       of the following two tests:
had not, however, indicated any specific reason why he
suspected partiality, which would have justified an objection      Firstly, a "subjective" test requiring proof of actual partiality of
to those members on the basis of the general principle of law      the member concerned. Secondly, an "objective" test where
whereby nobody should decide a case in respect of which a          the deciding board judges whether any circumstances of the
party may have good reasons to assume partiality (G 5/91,          case give rise to an objectively justified fear of partiality.
OJ EPO 1992, 617, reasons 3). The board found no reason
to go into further detail in that respect, since the appointment   Actual partiality was an internal characteristic of the member
of the members of a division in an individual case was part of     himself and its presence was clearly objectionable because it
the allocation of duties within the departments of first           went against the principle of a fair trial. However, suspicion
instance and hence an administrative function which was the        and appearances were not enough to show actual partiality.
primary competence of the director responsible (see T 71/99,       This was because it was a fundamental duty of a member
point 4 of the reasons), subject to review by the boards of        acting in a judicial capacity to take decisions objectively and
appeal as to whether the requirement of impartiality had           not be swayed by personal interest or other peoples’
been fulfilled (G 5/91, point 5 of the reasons).                   comments or actions. Indeed, this principle was explicitly
                                                                   contained in the solemn declaration taken by members of the
2.           Suspected partiality                                  boards of appeal at the time of their inauguration. Thus,
                                                                   personal impartiality of a member was to be presumed until
     2005                                                          there was proof to the contrary.
In T 479/04, the board observed that the decision in G 5/91
(OJ EPO 1992, 617) stated the following as an obiter dictum:


                                               Page 94 of 154
On the other hand, the appearance of partiality involved              partiality or bias could be sufficient to invalidate a first
external aspects and reflects, regardless of whether the              instance decision (see "Case Law of the Boards of Appeal of
member was actually biased or not, the confidence that the            the European Patent Office", 4th edition 2001, page 378).
board inspires in the public; as the old adage goes – "Justice        This reflected a basic principle of procedural law in the
must not only be done; it must be seen to be done" (see also          contracting states of the EPC (cf. Article 125 EPC), namely
T 900/02, point 4 of the reasons) since this aspect of                that all the members of a tribunal had to be above any
partiality related to appearances it did not need to be proved        suspicion of bias. Although often referred to as the rule
in the same way as actual partiality, but the circumstances           against bias (or sometimes as a rule of natural justice), it was
had to be judged to see whether they gave rise to an                  important to note that, in the majority of cases in which it was
objectively justified fear of partiality. This essentially            invoked, no actual bias or partiality was established and all
corresponded to the "objective" and "reasonable" grounds              that occurred was an inference that one or more persons in a
identified above in the case law of the EPO. The board found          decision-making capacity might have had reasons to favour a
that the above was in line with generally acknowledged                particular party.
procedural principles in the contracting states, eg the
jurisprudence of the European Court of Human Rights (see              The board noted that in G 5/91 (OJ EPO 1992, 617) the
point 10 of the reasons).                                             Enlarged Board held that the question whether or not an
                                                                      objection of suspected partiality was justified could only be
Applying the above tests to the case at issue, the board              considered in the particular circumstances of each individual
came to the following conclusions: the board held that not            case. The board considered the appellant’s objection in the
admitting amended claims, regardless of whether the board             form of a question: can justice be seen to have been done in
had correctly used its power or discretion to do so, would not        the circumstances of the present case, namely when a
give rise to an objectively justified fear of partiality. It also     member of the opposition division took employment with the
held that at the beginning of an appeal case where a properly         respondent’s representative before the written decision was
constituted board had not performed a procedural step, there          issued? The board found that nothing untoward actually
were generally no circumstances that gave rise to an                  happened in the case at issue; it stated that a suspicion of
objectively justified fear of partiality. Finally, it held that the   partiality inevitably had to arise, however, if a member of an
mere fact that the member concerned gave reasons and                  opposition division, or any other first instance body, first
explanations of the reasons, which go beyond the facts, in            solicits and then accepts employment with a firm in which a
response to an invitation under Article 3(2) RPBA did not             partner or other employee was conducting a case pending
give rise to an objectively justified fear of partiality under the    before that member.
objective test.
   2004                                                               3.         Form of decisions
In T 611/01 the board found that a substantial procedural             3.1         General issues
violation had occurred and decided that only a remittal could
ensure the case was given the procedurally correct treatment            2004
which had previously been denied. The board considered                In T 830/03, after a written reasoned decision was notified to
that the new examination proceedings should be conducted              the parties, the formalities officer informed the parties that
by a differently composed examining division, that is, by a           the written decision "was only a draft". He explained that this
division of three newmembers. Such an orderwas typically              was recognisable from the reasons, and a second written
made when there was a question of possible bias against a             decision intended to supersede the first written decision was
party and the board emphasised that it was not the case               issued by the EPO.
here. However, a differently composed first instance could
also be appropriate when a party would have reasonable                The board noted that the need for legal certainty required a
grounds for feeling it might not otherwise have a fair re-            presumption of validity in favour of a written decision which
hearing, as occurred in T 433/93, OJ 1997, 509 (see                   was notified to the parties by an opposition division in
reasons, paragraph 2) or where, as in T 628/95 of 13 May              accordance with the formal requirements of the Convention,
1996, remittal to a differently composed first instance was           in particular Rules 68 to 70 EPC. Once the decision was
ordered ipso facto on the board concluding that the first             pronounced and the (first) written decision, in the case at
instance decision was null and void.                                  issue, notified to the parties, the opposition division was
                                                                      bound by it even if it considered its decision not to "have any
The board noted that the appellant had requested a different          legal effect" (see T 371/92, OJ EPO 1995, 324). The
composition but, even in the absence of such a request, it            decision could be set aside only by the second instance on
would have so directed because, after grave procedural                the condition that an allowable appeal was filed under Article
irregularities, it was important to ensure as far as possible         106 EPC. With the filing of the first notice of appeal, the
that there should not be any ground for dissatisfaction with          power to deal with the issues involved in this case passed
the conduct of the further proceedings, such as might well be         from the department of first instance to the appeal instance
the case if the same examining division was again to refuse           (devolutive effect of the appeal). This remained true even if
the application even after impeccably conducted                       the first written decision contained certain irregularities which
proceedings. In the circumstances, and bearing in mind that           might have been detectable by the parties. The fact that the
someone not a member of the particular examining division             first written decision did not contain any text under the
could have been responsible for or at least involved in the           paragraph heading "5. Prior use" was also not sufficient to
procedural violation, such an order was also fairer for the           deprive the decision as a whole of its presumption of validity.
members of the examining division who took the decision
under appeal.                                                         Therefore, in the judgment of the board, the written decision,
                                                                      which was notified to the parties by the opposition division in
In T 900/02 the board observed that it was well-established           accordance with the formal requirements of the Convention,
in the case law of the boards of appeal that a suspicion of           in particular Rules 68 to 70 EPC, constituted the only legally

                                                 Page 95 of 154
valid written decision. All actions carried out by the                EPC, and that failure amounted to a substantial procedural
opposition division after the notification of the decision, and a     violation.
fortiori after the filing of the first appeal, were ultra vires and
had thus no legal effect.                                             In T 966/99 the board held that the appellant’s first auxiliary
3.2          Reasons for the decision                                 request, according to which the written decision should
                                                                      provide reasoning as to why the withdrawn main request
   2004                                                               might not be allowable, had to be rejected.
In T 897/03 the board held that a decision that leaves it to the
appeal board and the appellant to speculate as to which of            The board made a number of observations in its decision. It
the reasons given by the examining division in different              observed that Rule 66(2) EPC in combination with Article
communications might have been decisive for the refusal of            113(2) EPC meant that the decision dealing with revocation
the application could not be considered to meet the                   or maintenance of the patent needed to include reasons only
requirements of Rule 68(2) EPC.                                       in respect of those of the patentee’s requests concerning the
                                                                      text of the patent that were still pending. As soon as a
The decision under appeal did not contain any specific                request was withdrawn by the patentee, there was no longer
reasons, but merely referred to various communications                a procedural basis for the board to consider and decide upon
issued by the examining division. Due to the numerous                 it. Further, Article 113(2) EPC gave the patentee the
objections raised with respect to different sets of claims and        exclusive right to file requests relating to the text of the
the partly inconsistent reasoning given in the                        patent; therefore such requests by parties to the proceedings
communications referred to in the decision, the decisive              other than the patentee were not admissible. Accordingly, the
reasons for the refusal of the application remained unclear           board could not include reasons in the decision in respect of
both to the board and to the appellant. The board found that          such texts if submitted by the appellant/opponent. Moreover,
this was at odds with the well established principle that, for a      it followed from Article 107 EPC, as underlined by the
decision to be reasoned within the meaning of Rule 68(2)              Enlarged Board in G 9/91 (OJ EPO 1993, 408, point 18 of
EPC, it must be self-contained, ie it must include all and each       the reasons), that the inter partes appeal procedure aimed to
of the facts, evidence and arguments that are essential to the        give the losing party the opportunity to challenge the decision
decision, and the chain of reasoning in the decision must be          of the opposition division on its merits. When the decision
complete (see T 652/97 and T 278/00, OJ EPO 2003, 546).               under appeal was set aside as a consequence of the
                                                                      withdrawal of the main request, the appellant was no longer
In T 963/02 the board stated that, if a decision is merely            adversely affected by the maintenance of the European
reasoned by a reference to a preceding communication, the             patent in accordance with that request.
requirement of Rule 68(2), first sentence, EPC is only met if         3.2.1.         Compliance with the requirements of Rule
the communication referred to fulfils, itself, the above defined                     68(2) EPC
conditions. The decisive reasons for refusal had to be clear
from the reference, for the party and for the board of appeal.           2002
This applies, in particular, if reference was made to more            In T 70/02 the board found that by simply stating ”no
than one preceding communication, dealing with a number of            convincing arguments have been found in your letter” in
issues, and possibly having as basis different sets of claims.        response to letters in which the objections put forward were
The decision under appeal must not leave it to the board and          exhaustively discussed by the applicant, the examining
the appellant to speculate as to which of the reasons given in        division had adopted an unfair attitude, leaving the applicant
preceding communications might be essential to the decision           without any indication as to why his arguments had not been
to refuse the application (see T 897/03, point 3 et seq. of the       found convincing, so that he had been unable to react
reasons).                                                             against the conclusions of the examining division.
   2003
In T 278/00 (OJ EPO 2003, 546) the board noted that while             In accordance with Rule 68(2) EPC, decisions of the
the tenor of the decision under appeal was unambiguous,               European Patent Office which are open to appeal must be
namely that the application at issue lacked inventive step            reasoned. In this respect the board accepted that reasoning
pursuant to Article 56 EPC and unity pursuant to Article 82           did not mean that all the arguments submitted should be
EPC, it was established case law that Rule 68(2) EPC                  dealt with in detail, but it was a general principle of good faith
required the decision to contain, in logical sequence, those          and fair proceedings that reasoned decisions should contain,
arguments which justified the tenor.                                  in addition to the logical chain of facts and reasons on which
                                                                      they were based, at least some motivation on crucial points
In the board’s view, the reasoning of a decision under appeal         of dispute in this line of argumentation in so far as this was
must be taken as it stands. It held that the requirements of          not already apparent from other reasons given, in order to
Rule 68(2) EPC could not be construed in such a way that, in          give the party concerned a fair idea of why his submissions
spite of the presence of unintelligible and therefore deficient       were not considered convincing and to enable him to base
reasoning, it was up to the board or the appellant to                 his grounds of appeal on relevant issues.
speculate as to what might be the intended meaning of it.
The board had to be in a position to assess on the basis of           4.         Reasoned decision
the reasoning given in the decision under appeal whether the          4.1         Decision on the state of the file
conclusion drawn by the first instance was justified or not.
That requirement was not satisfied when the board was                    2005
unable to decide which of the various inconsistent findings           In T 1356/05 (also T 1360/05) the applicant requested a
indicated in and justifying the decision under appeal were            decision on the state of the file. The board held that such a
correct and which were false. The board held that an EPO              request was not to be construed as a waiver of the right to a
decision open to appeal which was based on such deficient             fully reasoned first instance decision, even in the light of the
reasoning was not "reasoned" in the sense of Rule 68(2)               suggested procedure in the guidelines (Guidelines E-X, 4.4;

                                                 Page 96 of 154
cf. also T 1309/05, point 3.7 of the reasons). The board           description. However, the text of the communication did not
stated that quite apart from the fact that no provision of the     take into account the intention of the examining division to
guidelines could override an article or rule of the EPC, such      omit pages 41 to 44 of the description. The appeal was
as Rule 68(2) (T 861/02, point 5. of the reasons), it noted that   against the decision of the examining division to refuse the
the quoted passage in the guidelines did not discuss in detail     request of the appellant for correction of errors under Rule 89
the procedure to be followed if such a request was presented       EPC. He had requested the issuance of a corrected patent
during oral proceedings, and it was not at all apparent that       specification.
the suggested procedure was to be applied under such
circumstances. On the contrary, it appeared rather to              The board held that a correction under Rule 89 EPC was not
concern the situation where an applicant relied only on the        possible, because the non-inclusion of pages 41 to 44 of the
written procedure. The term "state of the file" implied that all   description was due to the discretion of the examining
relevant facts and arguments were already on file – ie they        division and not to any error. The board held that because
exist in a written form – which could hardly be the case           the EPC does not provide for any possibility to amend or
immediately following oral proceedings if, as in the present       revoke a patent once granted – except as a result of an
case, oral arguments had been made.                                opposition procedure – and because the patent proprietor is
                                                                   not allowed to file a notice of opposition against his own
5.         Correction of errors in decisions                       patent, it was very important to check the decision and
                                                                   documents. The appellant had the opportunity to check the
5.1         Competence to correct a decision under Rule            documents as a complete set. The board held that the EPO
            89 EPC                                                 complies with the requirements of Rule 51(4) EPC not only in
  2004                                                             communicating the text on form 2004 but also enclosing a
In T 226/02 during opposition proceedings the respondent           complete set of the relevant documents. The text on form
had requested a correction to the description of the patent as     2004 indicates explicitly that ”a copy of the relevant
granted under Rule 88 EPC. The tenor of the written                documents is enclosed”. The enclosed documents also form
decision, which was signed by the members of the opposition        a relevant part of the communication. It was therefore not
division, was that the opposition was rejected. The written        sufficient to check only whether the documents enclosed
grounds for the decision included a section at the end under       were the documents following references in the
the rubric "Decision". In this section it was indicated that the   communication, but to check also the contents of relevant
opposition was rejected and that the description of the patent     documents.
was amended according to Rule 89 EPC.                              5.3          Allowability of a request for correction under
                                                                                Rule 89 EPC
The board considered that the opposition division had acted
ultra vires in taking a decision under Rule 89 EPC to correct           2001
a decision of the examining division. The board held that only     In decisions of the EPO, only linguistic errors, errors of
the body which had taken a decision was entitled to correct        transcription and obvious mistakes may be corrected (Rule
that decision to the form which the body had intended the          89 EPC).
decision should take. Thus, only the examining division was
entitled to correct its own decision.                              In T 367/96 the board noted that according to decision G
                                                                   1/97 (OJ EPO 2000, 322), point 3(c) of the Reasons, Rule 89
  2001                                                             EPC should be limited to its narrow wording. Accordingly,
In J 16/99 the board held that when correction of the priority     Rule 89 EPC only allows for correction of formal errors in the
date of a granted patent is requested, there may be a case         written text of the decision notified to the parties in
for correction under Rule 89 EPC of the EPO’s decision to          accordance with Rule 68 EPC. Rule 89 EPC does not
grant. The board found that Rule 89 EPC was applicable             however pave the way to reexamination of the factual or
since, being applicable to ”errors of transcription and obvious    legal issues on which a decision was based, nor to reversal
mistakes” in ”decisions of the European Patent Office”, it         of any conclusion derived by the deciding body from a
allowed correction of errors in inter alia decisions to grant      consideration of these issues.
without the limiting requirement of pending proceedings.

The board also found that the formalities officer who made         6.          Duties not entrusted to formalities officers
the decision under appeal had no authority to make a                    2004
decision under Rule 89 EPC. Such decisions had to be made          In T 808/03 the purported decision to grant restitutio in
by the examining division (see G 8/95, OJ EPO 1996, 481,           integrum in relation to the filing of the notice of appeal was
Reasons, paragraph 3.4), and are not one of the category of        made by a formalities officer acting on behalf of the
decisions which could be delegated to formalities officers         examining division pursuant to Rule 9(3) EPC and the Notice
(see the Notice at OJ EPO 1984, 317 as revised by the              of the Vice-President of Directorate- General 2 dated 28 April
further Notice at OJ EPO 1989, 178 – the version applicable        1989 (OJ EPO 1999, 504). Item 11 of the Notice of the Vice-
at the time of the decision under appeal – and again revised,      President of Directorate- General 2 dated 28 April 1989
with no effect on the point at issue here, by the Notice at OJ     entrusted formalities officers with "Decisions as to
EPO 1999, 504).                                                    applications under Article 122(4) EPC, where the application
5.2          Errors in the printed version of the European         can be dealt with without further taking of evidence under
             patent specification                                  Rule 72 EPC". Article 122(4) EPC, which vests jurisdiction
                                                                   for deciding on applications for restitutio in integrum,
  2001                                                             provides that: "The department competent to decide on the
In T 55/00 the examining division had sent a communication         omitted act shall decide on the application."
under Rule 51(4) EPC to the representative of the appellant.
The enclosed documents contained only pages 1 to 40 of the


                                               Page 97 of 154
The board noted that the omitted act was the filing of a notice           2004
of appeal and the department competent to decide whether             In T 126/04 the board held that the persons referred to in
an appeal was admissible and thus inter alia whether a               Article 14(2) EPC must, pursuant to Article 14(4) in
notice of appeal meets the requirements of the EPC is the            conjunction with Rule 1(1) and Rule 6(2) EPC, file a
EPO board of appeal (Rule 65(1) EPC); cf. T 949/94 of 24             translation in one of the official languages of the European
March 1995, at point A.1 and T 473/91 OJ EPO 1993, 630.              Patent Office within one month of the filing of the document
This competence in relation to admissibility of an appeal was,       or, where appropriate, by the end of the appeal period. The
however, subject to an exception, since Article 109(1) EPC           board did not follow T 323/87 with respect to the legal
empowers the department of first instance in ex parte                consequence of the failure to comply with the time limit. The
proceedings to set aside its own decision if it considers an         board held that the only possible interpretation of the
appeal to be "admissible and well-founded".                          reference in Rule 65(1) EPC to Rule 1(1) EPC, which itself
                                                                     referred to Article 14(4) EPC, was that Rule 65(1) EPC
The board observed that this was not full jurisdiction to            determined the legal consequence of the failure to file a
decide whether an appeal was admissible; there was no                translation of the notice of appeal as required by Article 14(4)
power to decide that an appeal was not admissible, nor was           EPC. The legal consequence was therefore the
there power to decide that an appeal was admissible but not          inadmissibility of the appeal. It was not a case of conflict
well-founded. There was only the limited power to set aside          within the meaning of Article 164(2) EPC, since Rule 65(1)
uno actu a department’s own decision if the appeal was               EPC was a lex specialis.
considered admissible and well-founded. Moreover, the
board found that, even if it were considered that the
examining division, acting under the limited jurisdiction over       2.          Inspection of files
admissibility vested in it by Article 109(1) EPC, qualified as            2004
"the department competent to decide on" the due filing of a          In T 379/01 the board stressed that the provisions
notice of appeal within the meaning of Article 122(4) EPC,           concerning the exclusion of documents from file inspection
this power would not be susceptible of being split and               stipulated exceptions from the principle of public inspection
partially entrusted to a formalities officer for "decision"          of files pursuant to Article 128(4) EPC, thus requiring a
pursuant to item11 of the notice of the Vice-President of DG         narrow construction of these provisions. In particular if a key
2 referred to above. For these reasons it was decided that           document relating to a fundamental issue in an inter partes
the purported decision of the department of first instance to        case, such as contested admissibility of an opposition, was
allow the request for restitutio in integrum be declared null        concerned, a strict standard had to be applied.
and void.
                                                                     Pursuant to the decision of the President of the EPO dated 7
            N. Other procedural questions                            September 2001 concerning documents excluded from file
                                                                     inspection (OJ EPO 2001, 458), documents must be
                                                                     excluded from file inspection at the reasoned request of a
1.           Language privilege                                      party only if their inspection would be prejudicial to the
     2005                                                            legitimate personal or economic interests of natural or legal
Until the Revised EPC 2000 enters into force, an application         persons. The board held that, in view of the public interest in
filed in an official language of a contracting state other than      accessing evidence relevant for deciding a case, a merely
English, French or German, eg in the Finnish language, does          abstract prejudice to hypothetical personal or economic
not produce the result provided for in Article 80 EPC, ie no         interests was not a sufficient bar. The party requesting such
date of filing is attributed, if the other conditions provided for   exclusion should rather show that public access to certain
in Article 14(2) EPC, namely the applicant having its                documents would be prejudicial to specific and concrete
residence or principal place of business within the territory or     personal or economic interests.
being a national of that (same) contracting state (here:
Finland), are not fulfilled (J 6/05).                                In the case at issue, the board rejected the argument that it
                                                                     would violate the personal rights of an association and its
In J 36/03 the Board held that the examination fee should be         members if the "Vereinssatzung" were open to file inspection
reduced if the request for examination was filed in an               without any restriction.
authorised non-official language, even in cases where the                 2001
application was transferred, before the examination fee was          In the case before the board in T 1101/99, the opponent
paid, to an applicant who was not one of the persons referred        (appellant) requested inspection of the files under Article 128
to in Article 14(2) EPC.                                             EPC in respect of documents arising from the international
                                                                     preliminary examination. The appellant’s request was not
In T 126/04 the board did not follow T 323/87 with respect to        directed to the IPEA but to the EPO acting, after grant of the
the legal consequence of failure to comply with the time limit       patent, outside its PCT functions. A formalities officer acting
for filing a translation in an official language. It held that the   for the opposition division rejected the request for inspection
only possible interpretation of the reference in Rule 65(1)          of the file.
EPC to Rule 1(1) EPC, which itself referred to Article 14(4)
EPC, was that Rule 65(1) EPC determined the legal                    The board noted that the term ”granting of inspection” set out
consequence of failure to file a translation of the notice of        in the Notice of the Vice-President of DG 2 of the EPO
appeal as required by Article 14(4) EPC. The legal                   concerning entrusting formalities officers with duties normally
consequence was therefore the inadmissibility of the                 the responsibility of the opposition divisions of the EPO
appeal. It was not a case of conflict within the meaning of          (dated 28 April 1999, p.13, OJ EPO 1999, 506) apparently
Article 164(2) EPC, since Rule 65(1) EPC was a lex                   defined only a positive decision, whereas in the decision
specialis.                                                           under appeal the request for inspection was rejected. The
                                                                     board found that there was no justification for interpreting the

                                                 Page 98 of 154
delegation of duties beyond its actual wording such that it         By its appeal in case J 10/02 the appellant challenged the
would also cover the rejection of requests for file inspection.     decision of the Legal Division to maintain its decision to
The board observed that, in the vast majority of cases, the         suspend grant proceedings under Rule 13(1) EPC. It
inspection of files is a routine task, since the files of           submitted that the Legal Division was mistaken in its
published applications are open to inspection without               conclusion that the Court of Rome had jurisdiction. It further
restriction. Thus inspection can normally be granted. Rule          argued that the suspensive effect brought about by Article
9(3) EPC allowed the delegation of duties and served the            106(1) EPC was not a matter of discretion. In the case where
purpose of relieving the examining and opposition divisions         an appeal was lodged against a decision to suspend grant
of duties not calling for legal or technical expertise. In the      proceedings, the provision of Rule 13 EPC appeared to be in
case at issue, however, the rejection of a request for              conflict with the provisions of Article 106(1) EPC.
inspection of files required examination of the circumstances
of the individual case and, possibly, interpretation of the         Concerning the question of jurisdiction, the Board recalled
relevant provisions or evaluation of conflicting interests. Such    that according to Articles 7 and 9(2) of the Protocol on
cases typically fell outside the scope of Rule 9(3) EPC.            Recognition the EPO cannot examine the national procedural
                                                                    law to be applied in proceedings concerning the right to the
3.          Register of Patents                                     grant of a European patent (see also J 36/97). Concerning
                                                                    the argument based on Article 106(1) EPC, the Board
     2005                                                           pointed out that the suspensive effect of an appeal served to
An entry in the Register of European Patents recording the          provide an appellant with provisional legal protection in the
withdrawal of a patent application fulfils the same function as     sense that no action should be taken to implement the
a publication in the European Patent Bulletin in that it            decision of the first instance in order not to deprive the
amounts to a notification to the public (J 25/03, OJ EPO            appeal of its purpose. However, if the grant proceedings
2006, 395; see also J 14/04 and J 12/03).                           were continued and the appellant arrived at a definitive end
3.1.1.         Transfer                                             to the grant proceedings in its favour, this would be more
                                                                    than the appellant could achieve if it succeeded with the
     2002                                                           appeal under consideration.
In J 12/00 the board summarised the preconditions for                 2004
registering a transfer of a European patent application as          In J 6/03 the board had to decide whether proceedings
follows:                                                            against the applicant initiated before a Canadian court for the
                                                                    purposes of seeking judgment that the third party was
– a request of an interested party (Rule 20(1) EPC)                 entitled to the grant of the European patent could be a
                                                                    ground for suspension of proceedings under Rule 13 EPC.
– the production of documents satisfying the European               The board pointed out that Rule 13 EPC had to be
Patent Office that the transfer has taken place (Rule 20(1)         considered as an implementing provision to Article 61(1)
EPC)                                                                EPC. Thus, Rule 13 EPC was expected to apply in the same
                                                                    area and under the same conditions and restrictions as
– the payment of an administrative fee (Rule 20(2) EPC).            Article 61(1) EPC.
The case at issue concerned an invention by an employee,            The board addressed in particular the question whether the
whose rights to the patent had allegedly been automatically         exclusivity of the jurisdiction provided for by the "Protocol on
transferred to the employer. Documents were produced                Jurisdiction and the Recognition of Decisions in Respect of
specifying the obligation, but, according to the board, these       the Right to the Grant of a European Patent" extended to an
only created the obligation to assign rights but did not            obligation for the contracting states to respect this exclusivity
constitute the assignment itself. Moreover, certain inventions      in national recognition proceedings. It held that this question
were exempt from the obligation to transfer.                        had to be considered separately for each single forum
                                                                    prescribed by Articles 2 to 6 of the Protocol. The tendency of
Other documents produced concerned registrations in                 the board was to reject the view that Article 6 of the Protocol
different countries on the basis of documents other than            was to be interpreted in such a way that international
assignment documents. The board stressed that the specific          jurisdiction of courts of third States should not be recognised
requirements of the EPC defined what was required for the           by the contracting states. Yet it did not finally decide this
registration of a transfer of rights before the EPO, so there       question because in its view a restrictive application of Rule
was no point in showing what might or might not be sufficient       13 EPC was required for other reasons.
for another patent office in cases of the transfer of rights. The
legal situation under the EPC, for example, which required          The board pointed out that the system under Articles 60 and
proof that a transfer had taken place, was completely               61 with Rules 13 to 16 EPC was governed on the one hand
different from that under the Canadian Patent Act, which            by the requirement to find a balance between the interests of
contained an explicit provision accepting a change in               both the applicant and the claimant and on the other hand to
ownership even in cases where no assignment document as             provide for proceedings which can be dealt with by the EPO
such had been provided.                                             within a reasonable period of time without particular
                                                                    knowledge of national law and furthermore with a high
On the facts before it, the board concluded that none of the        degree of legal certainty for the parties and for the public.
presented documents was of such a kind as to convince it            Bearing in mind this balance of interests, the board saw no
that a transfer had taken place.                                    convincing reasons why the preliminary protection for a
                                                                    person entitled under Rule 13 EPC could cover proceedings
4.          Suspension of proceedings                               other than such which lead to the final protection under
     2005                                                           Article 61(1) EPC. Consistently, Rule 13(1) EPC referred to
                                                                    proceedings which resulted directly, ie generally and

                                               Page 99 of 154
automatically, in decisions mentioned in Article 61(1) EPC.      under German law was not made until the fee had been paid;
This was not the case for decisions of courts of third States,   the plaintiff’s payment of the fee also demonstrated the
as special recognition proceedings and/or registration           seriousness of his intention to take legal action against the
proceedings had to be prosecuted to obtain recognition.          defendant. Thus it would be easy to cause the applicant
                                                                 undue difficulties by simply filing a document identified as a
In J 33/03 the patent (application) was the subject of           complaint. This was largely avoided by linking entitlement
entitlement proceedings. The Legal Division refused the          proceedings in Germany to the time provided for under
applicant’s request to continue the grant procedure pursuant     German law, ie the time when the complaint was pending.
to Rule 13(3) EPC, preferring instead to suspend the grant
procedure under Rule 13(1) EPC at the request of the third       5.           Notifications
party. The board, exercising its discretion under Rule 13(3)
EPC in conjunction with Article 111(1) EPC, emphasised that           2005
it was neither competent nor qualified to decide which party     In T 812/04, the board pointed out that Rule 101(6) EPC, in
the European application might belong to, or even which          conjunction with Rule 81(1) EPC, clearly indicated that, until
outcome of the entitlement proceedings might be more likely.     the termination of an authorisation had been communicated
The board only had to evaluate the impact of a further           to the Office, the latter was obliged to notify communications,
suspension or the continuation of the grant proceedings on       decisions or other documents to the duly appointed
each of the parties.                                             representative and that these notifications alone would have
                                                                 valid effects. The fact that the appellant had filed the notice
The board took into account, among other things, the fact        of appeal himself imposed no obligation on the Registry of
that the European patent at issue was virtually ready for        the boards of appeal to enquire about the legal status of
grant. The aim of Rule 13 EPC was to prevent an                  relations between the applicant (client) and the duly
unauthorised applicant from impairing a true proprietor’s        appointed representative or to send the documents and
position by amending the application without its consent.        communications subsequently to the client direct (see also p.
Since this was no longer possible at this stage of               68).
proceedings, the board held that this point could not be
weighed in favour of the third party. In so much as the          In its decision J 5/04, the Board made it clear that the initial
applicant could nevertheless deprive the third party of any      designation of a representative at the time when the
title to the disputed patent by withdrawing the application or   international application had been filed with a receiving Office
by abandoning any patent granted thereon, the applicant had      other than the EPO (in this case INPI) did not meet the
undertaken during the oral proceedings before the board          requirements for the valid designation of the representative
neither to withdraw the application nor to abandon any such      for the regional phase before the EPO.
patent. The board further considered the potential length of
entitlement proceedings and the fact that, even if the           6.           Unity of the European patent application
applicant should eventually win the entitlement case, it could
claim damages in certain member states for a limited prior            2004
period only. In addition, the board found that the entitlement   In J 2/01 (OJ EPO 2005, 88) the board had to deal with a
proceedings were started late. On the facts of the case the      divisional application filed only in the name of one of the two
board ordered the grant proceedings to be continued.             joint applicants for the parent application. The board pointed
  2002                                                           out that a consequence of the unity requirement under Article
                                                                 118 EPC was that, when two or more persons filed an
The appellants in J 7/00 had brought an action against the
                                                                 application in common, they could not acquire a procedural
filers of the European patent application to have the
                                                                 status different from that of a single applicant, because
application transferred to themselves, and had then applied
                                                                 otherwise each of them could perform different and
to have grant proceedings suspended under Rule 13 EPC
                                                                 contradictory procedural acts, including the filing of different
until the entitlement issue had been settled. The Legal
                                                                 versions of the patent to be granted. Therefore, joint
Division stayed the grant proceedings as from the date on        applicants only acquired the procedural status of one
which the European Patent Office received a letter from the      applicant in common, ie they constituted a single party in the
appellants providing proof that entitlement proceedings were     legal sense and they held the rights and obligations derived
pending. The appellants considered themselves adversely          from this procedural status jointly in respect of the
affected by the decision because it linked the suspension not
                                                                 application. The legal fiction in Article 60(3) EPC applied to
to the earlier date on which the complaint was received at the
                                                                 the joint applicants in common.
regional court, but to the date when it was served on the
patent proprietors as opposing party.
                                                                             O. Interpretation of the EPC
The board held that national law determined when and how
legally relevant civil proceedings were opened in a                   2005
contracting state. Under the Code of Civil Procedure in          In T 991/04 the board noted that as Rule 65 EPC in its
Germany, entitlement proceedings opened when the                 present wording was also part of the very first version of the
complaint was served. Merely filing a complaint had lesser       European Patent Convention, the validity of Rule 65(2),
effects and did not establish a legal relationship between the   second sentence, EPC, could not be seriously questioned by
parties.                                                         a reference to the principle laid down in Article 164(2) EPC
                                                                 that in the case of conflict between the provisions of this
While it was right to seek speedy suspension of grant            Convention and those of the Implementing Regulations, the
proceedings in order to protect third parties involved in        provisions of this Convention shall prevail. The fact that
proceedings for transfer of the patent application, the          requirements stipulated by an Article of the EPC need to be
applicant too deserved protection against hasty or even          specified by the Implementing Regulations did not create a
arbitrary actions by third parties. Service of a complaint       case of conflict. As the Convention itself does not define the

                                              Page 100 of 154
requirements establishing the admissibility of an appeal, Rule       In G 2/02 and G 3/02 (OJ EPO 2004, 483) the question of
65 EPC specifies these requirements in an authentic way.             law referred to the Enlarged Board concerned inter alia the
The board stated that the Diplomatic Conference as the               issue of whether the provisions of the TRIPS Agreement
legislator of the European patent system drafted the first           could be applied in the context of the EPC, either in view of
versions of the EPC and the Implementing Rules as a legal            existing obligations of EPC contracting states, or directly.
unity which should be read in a consistent way. In this regard
the Implementing Regulations have the function of an                 The Enlarged Board held that TRIPS provisions, like
authentic interpretation of the Convention (see also p. 64).         decisions of the European and International Courts of Justice
  2004                                                               and national decisions, were elements to be taken into
In G 2/02 and G 3/02 (OJ EPO 2004, 483) some issues on               consideration by the boards of appeal but were not binding
provisions of the EPC which admitted of different                    on them. While it was legitimate for the boards to use the
interpretations required consideration by the Enlarged Board,        TRIPS Agreement as a means of interpreting EPC provisions
namely, the provisions of the EPC concerning the recognition         which admitted of different interpretations, specific TRIPS
of priority from India and the TRIPS Agreement. The                  provisions could not justify ignoring express and
Enlarged Board held that the TRIPS Agreement did not                 unambiguous EPC provisions. That would be tantamount to
entitle the applicant for a European patent application to           usurping the role of the legislator.
claim priority from a first filing in a State which was not at the
relevant dates a member of the Paris Convention but was a            The Enlarged Board concluded that there was no legal basis
member of the WTO/TRIPS Agreement. The Enlarged Board                for the EPO to apply the TRIPS Agreement. Hence it was not
noted that neither the European Patent Organisation nor the          necessary to consider the question of the direct effect of
EPO was a Member of the WTO/TRIPS Agreement; there                   TRIPS. In the case in point, the law to be applied by the
was no provision in either instrument to allow their adherence       boards of appeal was governed by the provisions of the EPC
thereto. As a formal matter, general multilateral treaties           alone. The Enlarged Board noted that the European Patent
containing rules of general (conventional) law, such as the          Organisation as a public international organisation had an
TRIPS Agreement, were a source of international law for the          internal legal system of its own (judgment of the High Court
Contracting Parties and for no one else.                             of England and Wales (the Patents Court) in re Lenzing AG’s
                                                                     European Patent (UK) [1997] R.P.C. 245, at 264). The EPC
The Enlarged Board held that TRIPS provisions, like                  provided an autonomous legal system for the granting of
decisions of the European and International Courts of Justice        European patents. In legal terms, neither the legislation of
and national decisions, were elements to be taken into               the contracting states nor the international conventions
consideration by the boards of appeal but were not binding           signed by them were part of that autonomous legal system.
on them. Whereas it was legitimate for the boards of appeal
to use the TRIPS Agreement as a means to interpret                   Within the framework of the system established by the EPC,
provisions of the EPC which admit of different interpretations,      legislative power rested with the contracting states alone and
specific provisions of TRIPS could not justify ignoring              was exercised by either an intergovernmental conference
express and unambiguous provisions of the EPC. To do so              (Article 172 EPC) or the Administrative Council (Article 33
would usurp the role of the legislator. This was confirmed by        EPC). The EPO was not itself party to the WTO and the
the fact that the legislator of EPC 2000 found it necessary to       TRIPS Agreement. Thus the obligations deriving from the
revise Article 87 EPC in order to implement the TRIPS                TRIPS Agreement did not bind the EPO directly but only
Agreement.                                                           such EPC contracting states as were members of the WTO
                                                                     and the TRIPS Agreement. In that connection, it was
The Enlarged Board explained that the European Patent                irrelevant whether some or all of the contracting states were
Organisation as a public international organisation had an           party to the TRIPS Agreement.
internal legal system of its own (judgment of the High Court
of England and Wales (the Patents Court) in re Lenzing AG’s          In T 98/00 the board held that Article 69(1) EPC did not deal
European Patent (UK) [1997] R.P.C. 245, at 264). The EPC             with the issue of amendments, which was regulated by
provides an autonomous legal system for the granting of              Article 123 EPC. The provisions of Article 69(1) EPC were
European patents. In legal terms, neither the legislation of         primarily intended to be applied by the courts responsible for
the contracting states nor the international conventions             deciding on infringement cases, and thus they were not
signed by them were part of this autonomous legal system.            designed to be a substitute for the requirements of Article
Within the framework of the system established by the EPC,           123(3) EPC.
legislative power rests with the contracting states alone and
is exercised by either an intergovernmental conference               1.          Interpretation of Article 87 EPC in the light of
(Article 172 EPC) or the Administrative Council (Article 33                      TRIPS – directly binding effect and self-
EPC). The EPO was not itself party to the WTO and the                            executing character of TRIPS provisions
TRIPS Agreement. Thus, the obligations deriving from the
TRIPS Agreement did not bind the EPO directly but only                    2002
such contracting states of the EPC as were members of the            In J 9/98 and J 10/98 (OJ EPO 2003, 184) the following
WTO and the TRIPS Agreement. In this connection, it was              question was referred to the Enlarged Board of Appeal: ”Is
irrelevant whether some or all of the contracting states of the      the applicant of a European patent application, which was
EPO were party to the TRIPS Agreement. Even if all of them           originally filed as a Euro-PCT application, entitled in view of
had become members of the TRIPS Agreement on 1                       the TRIPS Agreement to claim priority from a previous first
January 1995, so that no problems of reciprocity under the           filing in a State which was, neither at the filing date of the
Indian patent law would have arisen, a notification under            previous application nor at the filing date of the Euro-PCT
Article 87(5) EPC would still have been required.                    application, a member of the Paris Convention for the
  2003                                                               Protection of Industrial Property, but was, at the filing date of


                                               Page 101 of 154
the previous first filing, a member of the WTO/TRIPS              accordance of a date of filing required that the description
Agreement?”                                                       and the patent claim(s) be in the same (permitted) language.

The referring board stated that by use of the broad term ”in      As an auxiliary claim, the appellant sought to establish a right
view of the TRIPS Agreement”, the wording of the question         to have the date of submission of the original (multilingual)
covered all legal aspects pursuant to which the TRIPS             documents recognised as the date of filing on the basis that
Agreement could have an impact on the answer to be given,         approximately half a year had passed before it was informed
whether by using the TRIPS Agreement as a tool for                of the deficiencies in its application documents under Rule 39
interpretation of Article 87 EPC or, as the appellant had         EPC. Moreover, the communication under Rule 42
submitted, by taking into account any obligations of such         (specifying the time limit for identifying the inventor) had
EPC Contracting States as are parties to the TRIPS                already been issued, which, according to Article 91(1) EPC,
Agreement.                                                        presupposed that the European patent application had been
                                                                  accorded a date of filing. The board found that the EPC did
The cases are pending as G 2/02 and G 3/02.                       not prescribe any period within which the Office had to
                                                                  conduct the examination provided for in Article 90 EPC and,
2.           Responsibility for a European patent                 where appropriate, issue a communication under Rule 39
             application                                          EPC, despite the applicant’s interest – which was obvious
                                                                  even to the legislature – in being informed as quickly as
     2001                                                         possible of any circumstances precluding the accordance of
In J 5/01 the applicant had requested correction of the           a date of filing. In this case, therefore, the mere fact that for
number of the second priority application. The request for        several months no objection was made to the description
correction under Rule 88 EPC was rejected by a decision of        filed on 11 December 2001 on the ground that it was drafted
the Receiving Section.                                            in two languages could not constitute a reasonable basis for
                                                                  the appellant’s expectation that the documents filed at that
The board found that said decision of the Receiving Section       time would be regarded as fulfilling all the requirements of
was taken after the applicant had indicated under Article         Article 80 EPC and that the abovementioned date would
96(1) EPC that he wished to proceed further with the              therefore be accorded as the date of filing. Furthermore, the
application, at which point in time the examining division        employees of the appellant responsible for the application
became responsible for the examination of the application         were aware that the description was drafted in two languages
and the Receiving Section ceased to be responsible (Article       because they had drafted it in this way, whereas the Office
16 EPC in conjunction with Article 18(1) EPC). The board          could only ascertain this by examining each page of the
held that the wording of Article 16 EPC and Article 18 EPC        description.
as they stand leaves no room for an interpretation according
to which the responsibility for a European patent application     2.         Application Documents
could be split between Receiving Section and examining
division. The board observed that a clear and mutually            2.1         Filing of application documents
exclusive allocation of this responsibility in the Convention       2005
prevails over considerations of procedural or cost economy        In J 13/04, the Board observed that, under Article 78(2) EPC,
(contrary to decision J 8/82). Thus, relying on the point in      the filing and search fees must be paid within one month of
time at which a request for correction was made rather than       filing the European patent application. Consequently, in the
on the two acts mentioned in Article 16 EPC (request for          case in hand, the relevant date for fixing the period for
examination or indication under Article 96(1) EPC) would be       payment of these fees was neither that on which the
contra legem.                                                     application was forwarded to the EPO nor that on which the
                                                                  receipt under Rule 24(2) EPC was issued but only the date
       VI. PROCEEDINGS BEFORE                                     on which the application was received by the competent
                                                                  national authority in accordance with Article 75(1) EPC,
       THE EPO                                                    provided that date was also the date of filing under Article 80
                                                                  EPC (see Bossung in Münchner Gemeinschaftskommentar,
            A. Preliminary and formalities                        vol. 8, 1986, Article 78 EPC, margin number 222).
                                                                    2004
            Examination                                           In J 13/04, the board observed that, under Article 78(2) EPC,
                                                                  the filing and search fees must be paid within one month of
1.           Accordance of a date of filing                       the filing of the European patent application. Consequently,
1.1           Language of the filed documents                     the time limit for payment of these fees in the case at hand
                                                                  could not be determined on the basis of either the date on
     2004                                                         which the application was forwarded to the Office or the date
In J 22/03, the Legal Board of Appeal referred to its decision    on which the receipt was issued under Rule 24(2) EPC but
in J 18/96 and explained that, under Article 80(d) EPC, the       rather only on the basis of the date on which the application
documents filed must contain a description and one or more        within the meaning of Article 75(1) EPC was received by the
claims in one of the languages referred to in Article 14(1) and   competent national authority, provided that the date of that
(2) EPC, in order for a date of filing to be accorded. The        filing was also the date of filing within the meaning of Article
second sentence of Article 14(1) EPC stated that European         80 EPC (see Bossung in Münchener
patent applications must be filed in one of the official          Gemeinschaftskommentar, 8th edition 1986, Article 78 EPC,
languages. The principle that applications are to be              point 222).
monolingual could therefore clearly be inferred from that         2.2          Extent of competence of the Receiving Section
provision. Since Article 80(d) referred to that provision,


                                             Page 102 of 154
  2004                                                            5.3), Rule 88, first sentence, EPC in no way compels the
In J 13/02, the board took the view that the fact that the 2000   EPO to permit the correction of errors of any kind at any
versions of Articles 16 to 18 EPC were already applicable in      time. All three texts of this rule (”können” – ”may” –
accordance with Article 6 of the Revision Act did not alter the   ”peuvent”) give the EPO the authority to permit certain types
fact that the Receiving Section’s competence comes to an          of correction at its discretion, which also means that
end once a valid request for examination has been made            corrections can be made dependent on conditions or may not
with the result that the examining division must examine          be allowed with regard to other, compelling principles of the
whether the application meets the requirements of the EPC         Convention. Thus, for instance the Legal Board recognised a
(Article 94(1) in conjunction with Articles 96(2) and 97(1) and   need for a time limitation for the allowability of a correction of
(2) EPC – point 2.8 of the reasons for the decision).             designations only up to the date of the mention of the
                                                                  international publication in the European Patent Bulletin. In
  2001                                                            decision J 27/96 (not published in OJ EPO) the Board stated
In J 5/01, the Receiving Section had issued a decision by         that a correction by addition of a designation did not mean –
which the applicant’s request to correct the number of the        despite its ab initio effect – that the applicant was reinstated
second priority application was rejected, stating under point 5   into the procedural phase where designations could be made
of the Reasons for the decision: ”Since at the time of filing     and fees paid, meaning that the whole procedure of that
the Rule 88 request the present application was still under       phase became available to the applicant again. The Legal
the responsibility of the Receiving Section, the present          Board stressed that correction of a mistake is an isolated
decision has been made by and under the responsibility of         procedural measure and not a case of re-establishment into
the Receiving Section”.                                           a defined procedural phase as a whole (point 3.2, last
                                                                  paragraph).
The Legal Board found that said decision was taken after the
applicant had indicated under Article 96(1) EPC that he           The board held that the so-called retrospective effect of a
wished to proceed further with the application, at which point    correction under Rule 88 EPC did not cancel previous
in time the examining division became responsible for the         procedural events, but only caused the document corrected
examination of the application and the Receiving Section          to be considered from the time of correction and for the
ceased to be responsible (Article 16 EPC in conjunction with      future as filed ab initio in the corrected version. Correction
Article 18(1) EPC). The board held that the wording of Article    under Rule 88 EPC did not reverse the effect of decisions
16 EPC and Article 18 EPC as they stand leaves no room for        already taken on the basis of the uncorrected document and
an interpretation according to which the responsibility for a     did not re-open a procedural phase already terminated or a
European patent application could be split between                time limit already expired. In other words, a procedural loss
Receiving Section and examining division. The clear and           of right only indirectly caused by the incorrect document
mutually exclusive allocation of this responsibility in the       would not be remedied by a later correction of the document
Convention prevails over considerations of procedural or cost     pursuant to Rule 88 EPC. This principle also characterises
economy (contrary to decision J 8/82), Thus, relying on the       the functional and essential difference between a correction
point in time at which a request for correction was made          under Rule 88 EPC on the one hand and restitutio in
rather than on the two acts mentioned in Article 16 EPC           integrum pursuant to Article 122 EPC on the other hand.
(request for examination or indication under Article 96(1)
EPC) would be contra legem.
                                                                  4.         Divisional applications
The board pointed out that corrections under Rule 88 EPC          4.1         General aspects
are not a matter which forms part of the examination on filing
or of the examination as to formal requirements (Articles 90
                                                                    2003
and 91 EPC). Rather, the wish or the need for a correction        In T 1177/00 (see also T 1176/00) the appellant/opponent
may arise at any time grant procedure and even afterwards,        had requested that the proceedings be stayed until the
eg during opposition proceedings; thus neither the nature of      parent case had been finally settled. The board stated that
the issue nor the specific tasks of the two bodies in question    the earlier (parent) application did not have procedural
suggest leaving responsibility for deciding on corrections        priority. Apart from being deemed to have the filing date and
under Rule 88 EPC (first sentence – for corrections               priority date of the earlier application and having to meet the
necessitating a technical examination see decision J 4/85,        requirements of Article 76 EPC, a divisional application was
OJ EPO 1986, 205) with the Receiving Section.                     an application like any other; in particular, it did not have a
                                                                  subordinate procedural status.
3.         Designation of states                                  4.2          Designation of states in a divisional
                                                                               application
3.1         Correction of designation of states in Euro-
            PCT applications                                        2004
                                                                  According to Article 76(2) EPC, the European divisional
  2002                                                            application must not designate contracting states which were
In J 3/01 the Legal Board of Appeal reminded that correction      not designated in the earlier application.
under Rule 88, first sentence, EPC is allowable in case of
linguistic errors, errors of transcription and mistakes in any    In J 40/03 the appellant asked to designate Sweden in a
document filed with the European Patent Office. There is          divisional application filed after the time limit for payment of
ample jurisprudence of the Boards of Appeal with respect to       designation fees on the parent application had expired. The
omitted designations of States and to omitted priority claims     appellant argued that Sweden, having been designated in
according to which Rule 88 EPC also applies to erroneous          the parent, was not a state which was "not designated",
omissions in documents filed with the EPO (eg J 6/91, OJ          therefore it could be validly designated in the divisional.
1994, 349). However, the Board noted that, pursuant to the
established case law of the Boards of Appeal (J 6/91, point

                                             Page 103 of 154
The board confirmed the established case law (J 25/88, OJ           stated that the examining division’s decision to grant a patent
EPO 1989, 486; J 19/96; G 4/98, OJ EPO 2001, 131) and               does not take effect on the date on which the decision-
summarised that the designations of a parent application, all       making process is completed, but on the date on which the
or some of which may be designated in a divisional                  European Patent Bulletin mentions the grant. In the interim
application, are those in the parent at the time of filing the      period, ie between the decision to grant the patent and the
divisional. If the time limit for paying the designation fees for   publication of the mention of the grant, the application is
the parent has not expired, there will be complete identity of      deemed to be still pending before the EPO. Once the grant of
potential designations since all the deemed precautionary           the patent has been mentioned, the earlier procedure is
designations of the parent will be available to the divisional.     terminated and the application is no longer pending.
However, if that time limit has expired and designation fees
have been paid for fewer states than those originally               Thus, the date after which the applicant is no longer allowed
designated in the parent, then the divisional may only              to file a divisional application is that on which the European
designate some or all of those states which remain                  Patent Bulletin mentions the grant of the earlier patent
designated in the parent; other states formerly designated in       because on that date the patent is deemed to be outside the
the parent are deemed withdrawn by virtue of Article 91(4)          EPO’s jurisdiction, and a divisional application could not be
EPC, and thus deemed never to have had the benefit of any           filed on the same date because the application is definitively
provisional protection by virtue of Article 67(4) EPC. Article      removed from the EPO’s sphere.
76(2) EPC should be interpreted as "all states validly                 2003
designated in the parent may also be designated in the
                                                                    In J 15/02 the board dealt with the issue of the application of
divisional".
                                                                    Article 4(1) of the Administrative Council’s decision of 13
4.3          Divisional application in the name of not all          October 1999 as a transitional provision with respect to Rule
             the applicants for the parent application              25(2) EPC. It stated that the time limits under Rule 25(2),
                                                                    second sentence, and Rule 85a EPC respectively did not
   2004                                                             form one integrated period, even if, according to G 3/91 (OJ
In J 2/01 (OJ EPO 2005, 88) the Legal Board had to deal             EPO 1993, 8), the two time limits were closely linked,
with the question as to whether, in the case of more than one       because the benefit of an extension under Rule 85a EPC
registered applicant for a European patent application, the         was available only if the prescribed surcharge was paid
right to file a divisional application under Article 76 EPC         together with the due designation fees (see also V.C.).
belongs only to the registered applicants for the earlier
application jointly and not to one of them alone. The board         4.6           Retrospective application of the latest version
held that joint applicants only acquire the procedural status of                  of Rule 25(1) EPC
one applicant in common, ie they constitute a single party in       In J 4/99 the Legal Board of Appeal held that the latest
the legal sense. Therefore, where an application (the "earlier      version of Rule 25(1) EPC, according to which the applicant
application") has been filed jointly by two or more applicants      may file a divisional application relating to any pending
and the requirements of Article 61 or Rule 20(3) EPC have           European patent application, could not be applied
not been met, the right to file a divisional application in         retrospectively. Rule 25(1) EPC entered into force on 2
respect of the earlier applications under Article 76 EPC is         January 2002.
only available to the registered applicants for the earlier
                                                                    4.7           Division of a divisional application
application jointly and not to one of them alone or to fewer
than all of them (see also V. J. 4).                                   2004
4.4          Identity of the applicant                              In T 1158/01 (OJ EPO 2005, 110) the board affirmed the
                                                                    admissibility, in principle, of divisionals from divisionals,
   2002                                                             which was also expressly advocated by the contracting
In J 17/97 and J 18/97 the representative had filed the parent      states during the preparatory work on the EPC 2000.
application in the name of Int. Inc., but the divisional
application in the name of S.medica. Due to the different           The board held that there is in principle no difficulty in
identities of the applicants, the Receiving Section had             applying Article 76 EPC mutatis mutandis to the examination
refused to treat the application as a divisional application. In    of divisionals from divisionals, since the earlier application
its decisions, the Legal Board did not allow the request for        out of which the second-generation divisional was divided is
correction to replace the name of the applicant of the              then the first-generation divisional. If the first-generation
divisional application with the name of the applicant of the        divisional itself is a valid divisional of the parent application, it
parent application pursuant to Rule 88 EPC because the              inherits the latter’s date of filing, which then under Article
appellant had not proved that the divisional application had        76(1) EPC also applies to the second-generation divisional.
been filed in error by S.medica and should have been filed by
Int. Inc. Rule 88 EPC may not be used to enable a person to         If, however, the first-generation divisional is not a valid
give effect to a change of mind or to subsequent                    divisional of the parent application within the meaning of
development of plans.                                               Article 76 EPC, it cannot itself be deemed to have been filed
4.5          Interpretation of Rule 25(1) EPC                       on the date of filing of the parent. Nor does the EPC provide
                                                                    for it to be accorded any other date of filing, in particular the
   2004                                                             date on which it was actually filed, and as a result it also
According to Rule 25(1) EPC, the applicant may file a               cannot transfer a date of filing to the second-generation
divisional application relating to any pending earlier              divisional. Hence in that case the second-generation
European patent application. In J 7/04 the Legal Board did          divisional is not a valid divisional application either. The
not share the applicant’s view that a divisional application        board referred to T 904/97 and T 555/00 and held that, when
may be filed at the latest on the date of the publication of the    the validity of a second-generation divisional application is
mention of the grant of the parent application. The board           examined, the validity of the first-generation divisional must
referred to J 7/96 (OJ EPO 1999, 443) and J 10/01 and               also be examined. If the subject matter of the first-generation

                                               Page 104 of 154
divisional does not comply with Article 76(1), the second-           Since both the European divisional application on which the
generation divisional derived therefrom is likewise invalid.         patent in suit is based and the parent application are deemed
                                                                     to have been filed on the date of filing of the grandparent
Also in decisions T 720/02 and T 797/02 (identical reasoning)        application under Article 76(1) EPC, not only the patent in
Board of Appeal 3.4.2 confirmed that it had no reservations          suit but also the parent application must comply with Article
of principle as to the admissibility of the filing of an             76(1) EPC. Hence subject-matter contained in the patent in
application divided out of an earlier divisional application.        suit must be disclosed in both the parent application as filed
                                                                     and the grandparent application as filed. It follows that if the
In the present instance the appellant filed the parent               patent in suit contains subject-matter which extends beyond
application as a divisional application which comprised the          the content of the parent application as filed and/or the
same description as the grandparent application, together            grandparent application as filed, the patent in suit must be
with substantially amended claims. The appellant submitted           revoked.
that it was the whole description of the parent application
which should be taken into account to determine the content          Since non-compliance with Article 76(1) EPC constitutes a
of this application. Since the description of the parent             ground for revocation of a European patent under Articles
application, which was substantially the same as that of the         100(c), second alternative, and 102(1) EPC, it further follows
grandparent application, comprised several indications               that the EPC does not provide for the possibility of
showing that the omitted features at issue here were not             determining any effective filing date from which the patent in
mandatory, the subject-matter of claim 1 could not possibly          suit may profit, and of assessing novelty and inventive step in
extend beyond the content of the parent application.                 respect of prior art published before that date if the patent
                                                                     contains subject-matter which extends beyond the content of
The board did not concur with the appellant’s view. It stated        the parent application as filed and/or the grandparent
that for reasons of convenience it is indeed common practice         application as filed. The board referred to the divergent
to allow applicants who file a divisional application to file with   findings in T 904/97, reasons 4.
the divisional substantially the same description as that of the
parent application and to adapt it to the claims only during         In T 904/97 the board had held that the parent application did
further prosecution of the divisional, where required.               not meet the requirement of Article 76(1) EPC with respect to
Applicants cannot however be allowed thereby to benefit by           the grandparent application, and that it therefore could not
using obvious inconsistencies between the claims and                 validly benefit from the latter’s filing and priority dates.
description of a divisional application as filed to extend           Neither, in consequence, could it have transferred any such
unduly the definition of the subject-matter which they actually      nonexistent benefits to any subsequent divisional application.
divided out of the earlier application and made the subject-         Furthermore, the board had stated that since both the
matter of the divisional.                                            divisional application for which the patent in suit had been
                                                                     granted and the parent application comprised subjectmatter
It was the board’s view that the invention or group of               extending beyond the content of the grandparent application
inventions defined in the claims of the parent application as        as originally filed, the earliest possible filing date from which
divided out of the grandparent application determines the            the patent in suit could benefit was the actual filing date of
essential content of the parent application. To meet the             the parent application (16 July 1991). Consequently, the
requirements of Article 76 EPC any further divisional                publication of the grandparent application (7 October 1987)
applications divided out of the parent application must be           belonged to the prior art under Article 54(2) EPC.
directed to objects encompassed by such invention or group           4.8          Subject-matter of divisional applications
of inventions.
                                                                       2002
To allow subject-matter from a grandparent application               According to Article 100(c) EPC, a patent granted on a
(which is no longer pending), which was reproduced in the            divisional application may be opposed on the ground that its
description of a parent divisional application but not               subject-matter extends ”beyond the content of the earlier
encompassed by the invention actually divided out of the             [parent] application as filed”. Similar wording is used in
grandparent application, to be further divided out of that           Articles 76(1) and 123(2) EPC, which exclude the addition of
parent application at a later date would be to allow                 new matter during examination.
applicants, by the mere filing of recurrent cascading
divisional applications, to leave the public completely              In T 701/97 the board summarised the principles to be
uncertain during most of the life of a patent as to how much         applied in such cases and stated that the idea underlying
of the subject-matter of the original patent application might       these provisions was that an applicant should not be allowed
still be claimed.                                                    to improve his position by adding subject-matter not
  2003                                                               disclosed in the original application, which would give him an
T 555/00 and T 904/97 both deal with questions concerning            unwarranted advantage by obtaining patent protection for
the division of a divisional application.                            something he had not properly disclosed and maybe not
                                                                     even invented at the filing date of the application, and could
In T 555/00 the board stated that a European divisional              be damaging to the legal security of third parties relying on
application of a pending European patent application, ie the         the content of the original application (G 1/93, OJ EPO 1994,
parent application, which itself was filed as a European             541).
divisional application of a then pending European patent
application, ie the grandparent application, did not as such         The board stated that an amendment had to be regarded as
contravene the requirements of Article 76 EPC and Rule 25            introducing subject-matter extending beyond the content of
EPC.                                                                 the original application if the overall change in the content of
                                                                     the application resulted in the skilled person being presented
                                                                     with information which was not clearly and unambiguously

                                               Page 105 of 154
presented in the original application, even when account was        in time. While this requirement was quite distinct from that of
taken of matter which was implicit to a person skilled in the       payment of the examination fee, there was no prescribed
art (T 688/99, T 383/88). The criteria to be used when              form of words for a request for examination which could be
comparing a claimed invention to the subject-matter                 contained in the same document as a debit order or other
disclosed in an earlier document allegedly disclosing the           payment instruction. To qualify as a request for examination,
same invention had recently been defined again in G 2/98            in the circumstances of the case the only reasonable
(OJ EPO 2001, 413).                                                 interpretation of the text filed with the Office had to be that
                                                                    the applicant thereby wanted to inform the Office that he
Where, as in the case in suit, an independent claim present         wished to have the application examined pursuant to Article
in the parent application as originally filed had been              94 EPC.
amended by addition of features restricting the scope of the
claim and taken from a number of parts of the original              2.         Substantive examination of the application
application which were not clearly related, it was not
sufficient that all the individual added features were disclosed    2.1         Amendments relating to unsearched subject-
in the original application. Rather, the combination of                         matter
features in question had to be clearly and unambiguously              2004
derivable from the document by a skilled person using               Rule 86(4) EPC, which was introduced with effect from 1
common general knowledge. Hence multiple limitations                June 1995, was intended to prevent amendments of the
generating specific subjectmatter not derivable from the            application which circumvent the principle that a search fee
original application could not be allowed.                          must always be paid for an invention presented for
                                                                    examination. Rule 86(4) EPC stops applicants switching to
5.           Correction of priority declarations                    unsearched subject matter in the reply to a communication
     2005                                                           from the examining division and makes means available for
                                                                    the EPO to react when different subject-matter is claimed not
In T 713/02 (OJ EPO 2006, 267), the board held that even
                                                                    simultaneously but in sequence as is the case when the
where the formalities officer allowed a request for correction
                                                                    applicant drops the existing claims and replaces them with
of priority data, the matter was not thereby decided in the
                                                                    originally non-unitary subject-matter extracted from the
applicant’s favour in binding form prior to the decision
                                                                    description. See in this connection the "Preparatory
terminating the granting procedure and was, thus, open to
                                                                    document" relating to the new Rule 86(4) EPC, the document
review by the board of appeal. The board found no reason to
                                                                    CA/12/94 Rev. 1 of 17 October 1994, "Amendment of the the
assume that the official letter, in which the formalities officer
                                                                    Rules relating to Fees", pages 16 and 17, and the Notice of 1
stated that the requested correction was allowed, constituted
                                                                    June 1995 published in OJ EPO 1995, pages 409 and
a formal (interlocutory) decision; nor did this statement for
                                                                    particularly 420, 421 concerning the introduction of the new
objective reasons qualify as such a decision whose content –
                                                                    Rule 86(4) EPC (T 274/03).
the addition of a further priority by way of correction pursuant
to Rule 88 EPC – was res judicata; nor was there any basis
                                                                    In T 274/03 the board noted that it was clear that post-search
for construing such an effect on the principle of legitimate
                                                                    "switching" of subject-matter clearly implied a significant
expectations or good faith. It followed that, irrespective of
                                                                    change in the nature of the subjectmatter being claimed
whether the formalities officer acted ultra vires (as the
                                                                    which was not normally comparable to the addition of
examining division held) or not, the question of whether in
                                                                    features taken from the description to further define an
the present case the further priority was validly claimed was
                                                                    element that was already a feature of the original main claim.
open to review by the board of appeal exercising the power
                                                                    The board was of the opinion that an amendment amounting
conferred on it by Article 111(1) EPC.
                                                                    to the restriction of an original main claim by including
                                                                    complementary features from the original description into the
Moreover, the board held that the examination of a request
                                                                    claim represented an admissible reaction of an applicant vis-
for correction of priority data after the publication of the
                                                                    à-vis an objection against the patentability of the unamended
application was not to be restricted to that portion of the facts
                                                                    claim and did not constitute an abuse of the system of the
and circumstances which in a decision of a board of appeal
                                                                    nature which Rule 86(4) EPC was introduced to prevent (T
in another case were considered not to preclude the
                                                                    377/01, point 3.1, and T 708/00, point 17). This type of
correction. Therefore, in the present case, it could not be
                                                                    amendment should not therefore in general be judged as
ignored that the requested correction by addition of an earlier
                                                                    contravening the requirements of the rule, even though an
priority date would eliminate from the state of the art
                                                                    additional search could be required. In this context it was to
pursuant to Article 54(2) EPC a highly relevant document,
                                                                    be observed that the implicit finding of lack of unity between
which the applicant had previously de facto accepted as
                                                                    the originally claimed and later claimed subject-matter, which
comprised in that state of the art (see also p. 105).
                                                                    was a prerequisite for an objection under Rule 86(4) EPC,
                                                                    had, with amendments of the type under consideration here,
            B. Examination procedure                                to be a posteriori. The Guidelines for Examination in the EPO
                                                                    made it clear however that this form of objection to lack of
1.           Request for examination                                unity should be the exception, with benefit of the doubt being
                                                                    given to the applicant (see C-III, 7.7).
     2002                                                             2003
In J 4/00 the board held that a request for examination under       Rule 86(4) EPC reads as follows: "Amended claims may not
Article 94 EPC required, over and above payment of the              relate to unsearched subject-matter which does not combine
examination fee, that the underlying intention of an applicant      with the originally claimed invention or group of inventions to
that his application should proceed to examination was              form a single general inventive concept." This rule provides
manifested in a written statement made by the applicant or          for the situation arising when amended claims relating to
his representative addressed to the Office and received there

                                               Page 106 of 154
unsearched subject-matter have been filed in response to the       In T 1181/04 (OJ EPO 2005, 312) the applicant (appellant)
examiner’s first communication. It makes it clear that             filed an appeal against the communication under Rule 51(4)
amendments cannot be allowed if the principle that an              EPC issued by the examining division refusing the main
invention will not be examined unless a search fee has been        request and the first auxiliary request (Rule 51 EPC had
paid has been circumvented.                                        been amended by the Administrative Council with effect from
                                                                   1 July 2002).
In T 708/00 (OJ EPO 2004, 160) the application had been
refused by the examining division, principally on the grounds      The board noted that the communication under Rule 51(4)
that the new claims were not allowable under Rule 86(4)            EPC from the examining division gave the appellant the
EPC. The board pointed out that Rule 86(4) EPC did not             impression that no possibility was available to him other than
apply when the applicant had not paid the search fee in            to pay and accept the proposed text or not to pay and lose
respect of a non-unitary invention relating to the originally      the application. This impression was even stronger because
filed claims in spite of being invited to do so under Rule 46(1)   reasons for turning down the higher-ranking requests were
EPC. In that case, the application could not be examined           also contained in the document and no indication was given
further, and a divisional application would have to be filed if    as to how to proceed if the appellant wished to maintain
protection were sought (see G 2/92, OJ EPO 1993, 591).             these higher-ranking requests. The board observed that,
Under Rule 86(4) EPC, amended claims could only be                 where approval is not given, this also has a legal
refused if the subject-matter of the claims filed originally and   consequence, namely the refusal of the application in
that of the amended claims was such that, had all the claims       accordance with Article 97(1) EPC. The legal consequence
originally been filed together, a further search fee would have    of the non-existence of the applicant’s approval was not the
been payable – on top of the search fees payable in respect        same as that foreseen for the failure to pay the fees or to file
of the claims actually filed at the outset – in respect of the     the translation. In the former case the application is refused,
amended claims, relating to a different invention within the       whereas in the latter it is deemed to be withdrawn. The board
meaning of Rule 46(1) EPC (see also T 319/96, point 8 of the       noted that the fact that an applicant’s disapproval of the text
reasons, and T 631/97 (OJ EPO 2001, 13), point 3.9.1 of the        proposed for grant has special legal consequences makes it
reasons).                                                          necessary to ensure also that disapproval is clearly
                                                                   established by the examining division.
The board noted that a subsequent amendment to limit the
subject-matter of the main claim by additional features            The board noted that the communication sent to the
disclosed in the application as filed did not generally affect     applicant reflected an EPO practice that did not provide for a
the notion of unity of invention under either Rule 86(4) or        procedure to be followed in the event that the applicant did
Rule 46(1) EPC. It was normal for an applicant to make such        not agree with the version proposed by the examining
an amendment in response to an objection to the                    division. The board found that this practice was not justified
patentability of the subject-matter in unlimited form. This        by the EPC. Under Article 97(2)(a) EPC the examining
allowed the applicant to overcome the objection in                 division should establish whether the applicant approves the
accordance with Article 123(1) EPC.                                text in which the patent is to be granted and a procedure with
                                                                   this aim should be provided for in the Implementing
In T 353/03 the examining division had stated in its decision      Regulations. A formal decision could only be taken at the end
of refusal that the new feature in claim 1 had not been            of a formal procedure. The applicant’s approval of the text
searched and that, for that reason, the application was            proposed for grant by the examining division was an
refused according to Article 97(1) in conjunction with Rule        essential and crucial element in the grant procedure and its
86(4) EPC.                                                         existence or non-existence needs to be formally ascertained.
                                                                   Further, the applicant should be given the opportunity to
The board observed that the ground for refusal under Rule          express his disapproval of the text proposed for grant by the
86(4) EPC had been raised in the appealed decision for the         examining division with a communication under Rule 51(4)
first time with respect to the subjectmatter of claim 1            EPC and to obtain an appealable decision refusing his
underlying the decision. The applicant had thus had no             requests.
opportunity to present his comments before the decision was
issued. That contravened the applicant’s rights as laid down       In T 1255/04 (OJ EPO 2005, 424) the board followed
in Article 113(1) EPC and amounted to a substantial                decision T 1181/04. The board held that, in cases where
procedural violation.                                              there is a request considered allowable on which a Rule
                                                                   51(4) EPC communication is to be sent, but there are also
The board found that in its decision the examining division        disallowed higher-ranking requests, the communication
had not taken into account the fact that Rule 86(4) EPC            under Rule 51(4) EPC is deficient if it is not accompanied by
mentioned another condition which also had to be fulfilled for     reasons why the higher-ranking requests are not allowed.
amended claims to be rejected, namely that the unsearched          The Rule 51(4) EPC communication should, in addition,
subject-matter did not combine with the originally claimed         expressly mention the option of maintaining the disallowed
invention to form a single general inventive concept (lack of      requests, thus reminding the applicant and the examining
unity). There was no discussion in the appealed decision as        division of the possibility for the applicant of asking for a
to why the subject-matter of new claim 1 was not in unity with     written appealable decision on these higher-ranking
original claim 1. The board came to the conclusion that the        requests.
appealed decision was not reasoned within the meaning of
Rule 68(2) EPC.                                                    The board noted, furthermore, that if the applicant
                                                                   maintained a still pending higher-ranking request discussed
2.2          Communication under Rule 51(4) EPC
                                                                   at the oral proceedings before the examining division, that
  2004                                                             request could not be refused under Rule 86(3) EPC. A
                                                                   decision which merely stated that the application was refused

                                              Page 107 of 154
because there was no version approved by the applicant            communication, so as to ensure that the examination
within the meaning of Article 113(2) EPC on which a patent        procedure is brought to a conclusion in as few actions as
could be granted would be inadequately reasoned because it        possible (cf. then applicable Guidelines Part C, Chapter VI,
did not give the substantive reasons why what the applicant       point 4.7). From this and the text of point 4.12, the board saw
approved was not in conformity with the patentability             the purpose of the then applicable Guidelines as being to
requirements of the EPC.                                          give an applicant an opportunity to avoid the situation of
2.3          Issuance of a further communication under            having a negative decision merely on the ground of there
                                                                  being no text agreed to by the applicant.
             Article 113(1) EPC
  2004                                                            In T 849/03 the board held that the guaranteed right to be
In T 268/00 the appellant alleged that a substantial              heard was one of the most important procedural rights of the
procedural violation occurred because "in its decision the        parties in all proceedings before the EPO. One particular
examining division seriously erred in that it relied on           outcome of the principle embodied in Article 113(1) EPC,
arguments which were not only scientifically incorrect but on     whereby decisions may only be based on grounds or
which the applicants had been given no opportunity to             evidence on which the parties concerned have had an
comment".                                                         opportunity to present their comments, is that no party should
                                                                  be caught unawares by a decision. In the examination
The board noted that, before the decision under appeal was        procedure the right to be heard is therefore violated not only
taken, the examining division had uncontestedly                   in the event of failure to inform the applicant beforehand of
communicated to the appellant in detail the facts, the            the reasons forming the basis of a rejection but also if, at the
evidence and the reasons resulting in the finding of lack of      time the decision is issued, the applicant had no reason to
inventive step. The appealed decision of the first instance       expect such a decision.
was based on that evidence and those grounds                           2002
communicated beforehand to the appellant thereby satisfying       In T 587/02 the applicant (appellant) had appealed on the
the appellant’s right to be heard as required by Article 113(1)   ground that the impugned decision violated the right to be
EPC. The board pointed out that the right to be heard             heard (Article 113(1) EPC) because the first substantiated
pursuant to Article 113(1) EPC only disqualifies fresh            objection under the EPC was contained in the decision to
evidence and grounds to take a decision on that basis, while      refuse the application.
the use of a fresh argument, here of a particular technical
view, in a decision still based on grounds communicated           The board observed that in T 275/99 it had been held that
beforehand was not precluded. Hence the technical                 Article 113(1) EPC could be met by the incorporation, by way
argument in the decision under appeal addressed by the            of reference, of an IPER in an official communication from an
appellant, whether being indeed fresh or not, did not violate     examining division, and it found no objection to citing an
any of the appellant’s rights. As to the technical substance of   IPER from an International Preliminary Examining Authority
that argument, the appellant might neither agree with the         other than the EPO, provided that it constituted a reasoned
finding of the examining division nor with the technical          statement as required by Rule 51(3) EPC, using language
argument given, but a divergence of views between the             corresponding to that of the EPC; in the case of an inventive
examining division and the appellant on the substantive issue     step objection that would require a logical chain of reasoning
of inventive step did not amount to a procedural violation.       which could be understood and, if appropriate, answered by
                                                                  the applicant.
In T 497/02 the appellant, relying on the then applicable
Guidelines for Examination in the EPO, Part C, Chapter VI,        The board noted that the communication preceding the
point 4.12, had complained that he was sent no written            decision drew attention to the IPER drawn up by the USPTO
communication prior to the oral proceedings giving the            and found it necessary to consider the wording of the IPER
reasons for the refusal under Rule 86(3) EPC, nor any prior       to see whether the objections giving rise to refusal and their
telephone indication, and that this amounted to a violation of    basis in the EPC could be identified. In the board’s view the
his rights under Article 113(1) EPC.                              IPER failed to meet this test, and it also observed that the
                                                                  refusal of the application after one action implied that the
The board noted that Article 113(1) EPC merely requires           appellant had made no real effort to deal with the examining
applicants to be afforded the opportunity to present their        division’s objections (see Guidelines, Part C, Chapter VI,
comments on the grounds on which the European Patent              paragraph 2.5, and decision T 802/97). Given that the
Office bases its decision: the Article does not require a         appellant had deleted claims 1 to 11 and had presented
written communication nor does it specify how much time           arguments even though no clear case to be answered had
applicants should be afforded to consider and present their       been made, that was patently not the case.
comments. An applicant cannot expect to amend his claim
request(s) a bare month before the date set for oral              3.          Entry into force of a decision to grant a
proceedings, and still before the oral proceedings be sent a
written communication or given a telephone notification                       European patent
indicating that the examining division proposes to exercise its        2004
discretion under Rule 86(3) EPC against the admission of the      In J 23/03 the appellant requested that the designation
new request(s), and the reasons for this. The applicant must      country GR incorrectly marked with a cross be corrected to
expect to have to deal with any problems with such late           GB. After a considerable exchange of correspondence, the
requests at the oral proceedings.                                 examining division refused the request for correction on the
                                                                  ground that, from the date of publication of the patent, public
The board observed that the purpose of Rule 86(3) EPC was         interest in the reliability of the published information overrode
to give the examining division the discretion to refuse           the patent proprietor’s interest in a correction, especially as
amendments to the claims not made in answer to the first          he had had several opportunities to check the designation

                                             Page 108 of 154
information in the course of the proceedings, namely after         opposition is not freely disposable, as defined in G 4/88 (OJ
the notification of forms 2004 and 2005.                           EPO 1989, 480) considered together with G 3/97 (OJ EPO
                                                                   1999, 245). This exception should be narrowly interpreted
The board stated that Rule 88 EPC does not contain an              and precludes an opponent parent company from being
explicit reference to a time limit and that a request for          recognised, in the event of the sale of a subsidiary that has
correction can therefore be submitted at any stage of the          always been entitled itself to file oppositions, as having the
patent grant procedure (see also J 6/02, point 4 of the            right to transfer its opponent status, by contrast to an
reasons). This also applies to the correction of incorrect         opponent who sells a commercial department that is an
designation information in the application documents as            inseparable part of the opposition but is not itself entitled to
requested by the appellant. The board nevertheless found           file oppositions (points 2.1.5(c) and 2.1.5(f) of the reasons).
that the appellant’s request for correction of the designation
information in the application documents had been submitted        Thus, opponent status can only be transferred together with
to the EPO only on 29 April 2002. Mention of the grant of his      the assignment of part of the commercial activity of an
patent had appeared in the Patent Bulletin over a month            opponent with sole legal authority where the transferred
before that date. Under Article 97(4) EPC, mention of the          company division or department does not have that status
patent grant leads to the grant of the patent taking effect and    and therefore lacks legal personality. This does not apply in
to the patent grant proceedings being concluded. At the time       the present case where, even though the transferred
that the appellant submitted his request for correction,           company was a wholly owned subsidiary of the parent
therefore, the proceedings were no longer pending (see J           company, it was still entitled to act on its own behalf in
7/96 printed in OJ EP0 1999, 433/456 and J 42/92).                 opposition, having full legal authority – a feature of legal
                                                                   personality (point 2.1.5(f) of the reasons).
The board held that the pendency of patent grant
proceedings was, however, a requirement for the submission         Considering this restrictive interpretation in respect of the
of an admissible request for correction because after that         transferability of opponent status, a further board
date the bundle of European patents granted under a single         acknowledged in T 1091/02 (OJ EPO 2005, 14) the need to
system divides into national patents which are then no longer      refer a new question to the Enlarged Board of Appeal. In the
administered by the European Patent Office but by the              absence of explicit provisions relating to the substantive and
appropriate national offices.                                      formal requirements for the transfer of opponent status in the
                                                                   EPC the board felt obliged to examine whether the
                                                                   requirements as developed by the previous case law should
         C. Opposition procedure                                   be applied in the present case, where the original opponent
                                                                   sold and assigned to a third person all the shares of a legally
1.         Special features of the opposition procedure            independent entity to the business of which the opposition
1.1         Transfer of opponent status                            related.
  2004                                                             In view of the divergent solutions adopted by the boards of
The Enlarged Board of Appeal has already considered the            appeal with regard to both substantive and formal
transfer of opponent status in its opinion G 4/88 (OJ EPO          requirements for the transfer of opponent status, the board
1989, 480). There it noted that the EPC implicitly                 saw the need to refer the following questions to the Enlarged
acknowledged the transmission of the opposition to the             Board of Appeal:
opponent’s heirs and that, by analogy, the opposition could
be transmitted to the opponent’s universal successor in law        1. (a) Can opponent status be freely transferred?
(Rule 60(2) EPC). The Enlarged Board held that the status of
party in opposition proceedings could be transferred to a          1. (b) If question 1(a) is answered in the negative: Can a
third party together with the business assets or business          legal person who was a 100%-owned subsidiary of the
enterprise in the interests of which the opposition was filed.     opponent when the opposition was filed and who carries on
The later case law also started from the assumption that           the business to which the opposed patent relates acquire
opponent status was not freely transferable and called for the     opponent status if all its shares are assigned by the
new opponent to provide proof of a proper transfer in order to     opponent to another company and if the persons involved in
obtain opponent status (see Case Law of the Boards of              the transaction agree to the transfer of the opposition?
Appeal of the European Patent Office, 4th edition 2001, 460).
                                                                   2. If question 1(a) or (b) is answered in the affirmative:
In T 711/99 (OJ EPO 2004, 550) the board emphasised that
the rationale for the principle of non-disposability of an         (a) Which formal requirements have to be fulfilled before the
opposition relates to the nature of the opposition procedure       transfer of opponent status can be accepted? In particular, is
and its aim to allow the general public to challenge the           it necessary to submit full documentary evidence proving the
validity of a patent. This procedure is intended to be             alleged facts?
straightforward and swift, and not involve considering what
private interest a party might have vis-àvis third parties, such   (b) Is an appeal filed by an alleged new opponent
as in connection with the transfer of opponent status, since,      inadmissible if the above formal requirements are not
in view of its function and resources, the EPO is not the most     complied with before expiry of the time limit for filing the
appropriate body to deal with these issues (point 2.1.5(f) of      notice of appeal?
the reasons).
                                                                   3. If question 1(a) and (b) is answered in the negative:
Opponent status may be transferred to a singular successor
when a commercial department is sold, but this is an               Is an appeal admissible if, although filed on behalf of a
exception to the general principle in law whereby an               person not entitled to appeal, the notice of appeal contains

                                              Page 109 of 154
an auxiliary request that the appeal be considered filed on          2005
behalf of a person entitled to appeal?                             Article 105 EPC is a special provision on the intervention of
                                                                   the assumed infringer in opposition proceedings. Under that
The questions referred to the Enlarged Board of Appeal are         article, an assumed infringer may, subject to certain
answered in G 2/04 (OJ EPO 2005, ***) as follows:                  conditions, intervene in already pending opposition
                                                                   proceedings. If the assumed infringer meets the conditions,
I. (a) The status as an opponent cannot be freely transferred.     in particular payment of the opposition fee, the intervention
                                                                   will be treated as an opposition in accordance with Article
(b) A legal person who was a subsidiary of the opponent            105(2) EPC. The intervener thus acquires the status of
when the opposition was filed and who carries on the               opponent.
business to which the opposed patent relates cannot acquire
the status as opponent if all its shares are assigned to           In G 3/04 (OJ EPO 2006, 118), which was concerned with
another company.                                                   the question whether a third party who had intervened during
                                                                   appeal proceedings could continue those proceedings after
II. If, when filing an appeal, there is a justifiable legal        the sole appeal had been withdrawn, the Enlarged Board
uncertainty as to how the law is to be interpreted in respect      commented in detail on various aspects of intervention. It
of the question of who the correct party to the proceedings is,    concluded, inter alia, that the valid intervener only acquired
it is legitimate that the appeal is filed in the name of the       the status of an opponent, irrespective of whether the
person whom the person acting considers, according to his          intervention occurred during the proceedings before the
interpretation, to be the correct party, and at the same time,     opposition division or at the appeal stage. In either case his
as an auxiliary request, in the name of a different person who     rights and obligations were the same as those of other
might, according to another possible interpretation, also be       opponents. For opposition proceedings in particular, this
considered the correct party to the proceedings.                   meant that an intervener in proceedings before the
1.2          Transfer of opponent status in the event of           opposition division, where all the opponents had withdrawn
             death                                                 their oppositions, could continue the proceedings alone and,
                                                                   if need be, file an appeal, since he had the same status as
  2005                                                             an opponent under Article 99 EPC (point 10 of the reasons
The transmission of the opposition to the opponent’s heirs is      for the decision; with respect to intervention in opposition
acknowledged implicitly in Rule 60(2) EPC which stipulates         appeal proceedings, see p. 102 ff).
that, in the event of the death or legal incapacity of an
opponent, the opposition proceedings may be continued by
                                                                   2.         Admissibility of opposition
the EPO of its own motion, even without the participation of
the heirs or legal representatives (G 4/88, OJ EPO 1989,           2.1         Competence to decide
480).                                                                2002
                                                                   In G 1/02 (OJ EPO 2003, 165) the Enlarged Board of Appeal
In T 74/00, however, the value of Rule 60(2) EPC lay not so
                                                                   considered whether a formalities officer was competent to
much in the question whether or not proceedings should
                                                                   decide on the consequences of late payment of the
continue in the event of an opponent’s death as in the fact
                                                                   opposition fee.
that in this provision the EPC recognised that, in that event,
the late opponent’s heirs could participate in any further
                                                                   In the cases ruled on in T 295/01 (OJ EPO 2002, 251) and T
opposition proceedings. Unlike transfers between both legal
                                                                   1062/99, the opposition fee had not been paid within the time
and/or natural persons, where the opposition is transferable
                                                                   limit laid down in Article 99(1) EPC. In each case the
together with business assets, an opposition could pass from
                                                                   contested decision had been taken by a formalities officer.
a deceased opponent to his or her heirs without any
requirement that it be accompanied by any particular assets
                                                                   In T 295/01, Board of Appeal 3.3.4 held that point 6 of the
of the deceased. A deceased opponent’s heir or heirs could
                                                                   notice of the Vice-President DG 2, dated 28 April 1999,
only be ascertained by reference to the particular national
                                                                   concerning the entrustment to formalities officers of certain
laws of succession applicable to the estate of the deceased
                                                                   duties normally the responsibility of the opposition division
opponent, meaning that the person or persons seeking to
                                                                   (OJ EPO 1999, 506), hereinafter referred to as ”the notice of
establish that they had the right to succeed to an opposition
                                                                   28 April 1999”, conflicted with provisions of a higher level, ie
had to produce satisfactory evidence. If more than one heir
                                                                   Rules 9(3) and 56(1) EPC. It therefore found that
of the deceased opponent was established, the relevant
                                                                   competence to decide on the inadmissibility of the notice of
national law could be decisive. Thus if, for example, the
                                                                   opposition lay with the opposition division and could not be
evidence showed that under the relevant national law a
                                                                   entrusted to a formalities officer.
deceased opponent had left different assets to different
persons, such that only one or more specified persons out of
                                                                   The board in T 1062/99, on the other hand, ruled that it made
a larger number were identifiable as inheriting the opposition,
                                                                   no difference that the contested decision had been taken by
then logically only that person or those persons could be the
                                                                   the formalities officer on the opposition division’s behalf. It
heir or heirs for the purpose of the opposition. In any case,
                                                                   saw the provisions of the notice of 28 April 1999, the validity
as with other multiple opponents (see below), all persons
                                                                   of which it did not question, as providing the legal basis for
identifiable as heirs inheriting the opposition had at all times
                                                                   this delegation of powers.
to be ascertainable and act through a common
representative, and the EPO had to be informed if any of
                                                                   Taking the view that the two boards’ decisions were
them ceased for any reason to be a member of the multiple
                                                                   divergent, the President asked the Enlarged Board of Appeal
opponent (see also p. 80).
                                                                   to consider whether points 4 and 6 of the notice of 28 April
1.3          Intervention of the assumed infringer


                                              Page 110 of 154
1999 conflicted with provisions of a higher level (see OJ EPO      to an opposition filed by a single natural person, by a single
2002, 466).                                                        legal person or by a single body equivalent to a legal person
                                                                   by virtue of the law governing it.
The Enlarged Board found that the provisions of the notices
of the Vice- President DG 2 were valid on the basis of Rule        Thus, an opposition filed in common by two or more persons,
9(3) EPC, under which formalities officers could be entrusted      which otherwise meets the requirements of Article 99 EPC
with duties falling to the examining and opposition divisions      and Rules 1 and 55 EPC, is admissible on payment of only
and involving no technical or legal difficulties. It therefore     one opposition fee.
concluded that points 4 and 6 of the notice of 28 April 1999
did not conflict with provisions of a higher level.                The Enlarged Board pointed out that in an opposition filed in
  2001                                                             common, there must in all cases be a common
Under Rule 56(1) EPC, oppositions are to be rejected as            representative (Article 133(4) EPC and Rule 100 EPC) and
inadmissible inter alia if the opposition division notes that      only that common representative is entitled to act in the
they do not comply with Article 99(1) EPC (which also              opposition proceedings on behalf of all the common
specifies the time limit for filing them).                         opponents taken as a whole. In order to safeguard the rights
                                                                   of the patent proprietor and in the interests of procedural
In T 295/01 (OJ EPO 2002, 251) the board ruled that this           efficiency, it has to be clear throughout the procedure who
meant that competence for deciding that an opposition was          belongs to the group of common opponents or common
inadmissible lay with the opposition division, and could not       appellants. If either a common opponent or appellant
be delegated to a formalities officer.                             (including the common representative) intends to withdraw
                                                                   from the proceedings, the EPO must be notified accordingly
Since point 6 of the Notice of the Vice-President of               by the common representative or by a new common
Directorate- General 2 concerning the ”entrustment to              representative determined under Rule 100(1) EPC in order
formalities officers of certain duties normally the                for the withdrawal to take effect.
responsibility of the opposition divisions of the EPO” (OJ         2.3          Formal requirements for an opposition
EPO 1999, 506) conflicted with provisions of a higher level
(Rule 9(3) EPC and Rule 56(1) EPC), the latter prevailed by          2002
analogy with Article 164(2) EPC.                                   Under Rule 55(b) EPC, the notice of opposition must inter
                                                                   alia contain the number of the patent, the name of the
2.2          Admissibility of joint oppositions                    proprietor and the title of the invention. In T 335/00 and T
  2001                                                             336/00 the Rule 55(b) EPC requirements were not strictly
In T 272/95 (OJ EPO 1999, 590) the board had referred a            fulfilled. Among other things, the title of the invention was
question to the Enlarged Board concerning the admissibility        missing, and the opposition was directed to the application.
of an opposition if it is filed jointly by two or more persons     The board nonetheless deemed the opposition admissible
and only one opposition fee is paid.                               because the contested patent was identifiable uniquely and
                                                                   fairly easily on the basis of the specified publication number.
The Enlarged Board stated in its decision G 3/99 (OJ EPO           Even the mistake of opposing an application and the
2002, 347) that cases relating to common opponents (third          omission of the title did not seem serious enough to the
parties acting in common in filing notice of opposition),          board to make the opposition inadmissible.
paying only one opposition fee are regularly encountered and       2.4          Partial admissibility
dealt with before the opposition division.
                                                                     2002
This is not only true for the oncomouse case cited by the          In T 653/99 the opposition division had concluded that the
referring board, but also for several oppositions filed in         arguments put forward by the opponent under Article 100(b)
common over many years by, for instance, Unilever PLC and          EPC did not comply with the requirements of Rule 55(c) EPC
Unilever NV, which, notwithstanding the similarity of their        and thus that the opposition was partially inadmissible, ie
company names, are two different persons. These                    that it was inadmissible insofar as the ground of appeal
oppositions have been considered to be admissible on the           under Article 100(b) EPC was concerned. The board,
basis of Rule 100(1) EPC. However in T 543/99 it was               however, held that nowhere in the EPC was there any basis
decided that these companies, ie Unilever PCL and Unilever         for the concept of partial admissibility of oppositions. The
NV considered as ”related companies”, should each have             concept of ”inadmissibility” was only applicable to the notice
paid an opposition fee when they filed an opposition.              of opposition as a whole. The fulfilment of the requirements
                                                                   of Rule 55(c) EPC in respect of one of the grounds of
The Enlarged Board dealt with the interpretation to be given       opposition was enough to render the opposition as a whole
to the wording ”any person” in Article 99 EPC. It stated that      admissible (see also T 212/97 and T 65/00).
as regards an opposition filed in common by a plurality of         2.5          Insufficient substantiation
persons, each of the common opponents must be either a
natural person, or a legal person, or a body equivalent to a         2004
legal person by virtue of the law governing it, or a               In T 511/02 the question was raised as to whether the
combination thereof. It follows from Rule 100(1) EPC that          appellant (opponent) had fulfilled its duty of substantiation
several persons acting in common in filing a notice of             pursuant to Article 99(1) and Rule 55(c) EPC, that is to say,
opposition are filing only one opposition and from Article         had given an adequate indication of the relevant facts and
99(1) EPC that only one opposition fee must be paid in due         evidence intended to support the alleged ground for
time in order for the opposition to be deemed to have been         revocation. The board considered the content of the notice of
filed. The payment of the opposition fee is linked to the filing   opposition, noting that the appellant had cited therein fitting
of one opposition and not to the number of persons who file        instructions and instructions for use and installation and had
the opposition. There is no procedural difference with respect     indicated their publication date. Fitting and installation

                                               Page 111 of 154
instructions do not generally bear a publication date but a        was doubtful whether an opposition had been filed on behalf
coded or uncoded printing date, and are not therefore              of a body which enjoyed legal personality in its own right or
"published" in the true sense of the word but are made             on behalf of several natural persons acting in common, the
available to the public by being distributed with the product to   opponents (here a UK partnership) should be invited to
be fitted or installed. In the board’s view, therefore, the term   establish that the body was a legal person or an equivalent
"publication date" used by the appellant was at the very least     thereto. If this was not established, the opposition was to be
misleading. The citations in the case at issue likewise did not    considered as having been filed on behalf of the several
indicate when and how the cited instructions had been made         natural persons as common opponents. In that case the
available to the public. Since this factor was crucial to the      opponents still had to furnish the names and addresses of
establishment of whether the citations formed part of the          the partners in order to comply with Rule 55, sub-paragraph
prior art and thus whether they could actually be cited            (a), EPC. If this information was not received within a period
against the patent, no adequate indication had been given of       specified by the board, the opposition had to be rejected as
the relevant facts and evidence.                                   inadmissible under Rule 56(2) EPC, irrespective of whether
2.6          Entitlement to file an opposition                     or not such information would have been sufficient to prevent
                                                                   rejection under Rule 56(1) EPC.
2.6.1.        Double filing of opposition by the same
              person – Admissibility of the material in the        Similarly, in T 315/03 (OJ EPO 2005, 246 – headnote), the
              second opposition                                    board followed the decision of the Enlarged Board in G 3/99,
                                                                   adding that, while admissibility of an opposition by multiple
  2005                                                             opponents had to be kept under review throughout the
In T 966/02, the same opponent had filed two oppositions to        proceedings, parties could not expect the opposition division
the contested patent under Article 100(a) EPC, only the            or board to do this alone. It was clear that the board had
second of which cited the document D1 on which the                 neither the resources nor the knowledge of the relevant laws
opposition division based its decision. In the board’s view,       of all the contracting states necessary to police the
however, the question in this case was less whether the            composition of, and the legal status of all members of,
second opposition was admissible than whether the material         multiple opponents. Once prima facie admissibility was
in the second opposition was admissible. It was questionable       acknowledged, it had to be up to the party or parties seeking
whether the opposition division had even been competent to         to challenge admissibility to make a case of inadmissibility
use the document cited in the second opposition. The               (points 2.1 and 2.9 of the reasons). However, the board saw
board stated that, irrespective of whether or not the second       no reason in the present case to question the legal status of
opposition filed had to be regarded as admissible, the first       the multiple opponents, the respondent not having pointed to
opposition had been filed in due form and time and was             any evidence which suggested the legal status of the various
therefore admissible, and opposition proceedings had been          persons in question was other than the opposition division
initiated as a result. If the second opposition also had to be     held. If the respondent wished to challenge those
regarded as admissible, the department of first instance was       conclusions, it was incumbent on it to produce or point to
obliged to take account of the material it cited. However, if it   some evidence to question such conclusions – for example
had to be regarded as inadmissible, the department of first        evidence from official registers or the results of enquiries
instance was competent, under the rule on examination of its       showing that a legal person never or no longer existed, or
own motion in Article 114(1) EPC, to take account of the           evidence that under the relevant national law a legal person
material cited in the inadmissible opposition if (i) another       does not have the status found by the opposition division.
admissible opposition had been filed and (ii) there was
reason to do so because the material was relevant. Both            With regard to changes over time in the composition of a
conditions were met in the case in hand. There was therefore       multiple opponent, the board agreed with the respondent that
no need to decide whether the second opposition was                the absence over eleven and a half years of any notification
admissible, since the department of first instance, in any         concerning the 1 200 members of opponent 6 ("opposition
event, was competent to take account of both document D1           club") could in itself be considered an indication that the
and any other relevant material cited in the second set of         "clear throughout" condition had not been complied with
pleadings (see also p. 66).                                        (point 2.4 of the reasons). On the other hand, the fact that
2.6.2.         Admissibility of a joint opposition – Legal         certain opponents only came into being for the purpose of
               status and composition of a multiple opponent       filing opposition to one patent could not in itself be an
                                                                   objection to admissibility; an opponent’s motive or lack of
  2005                                                             motive was irrelevant (see G 3/97, OJ EPO 1999, 245).
The Enlarged Board has already held as follows in the past         Similarly, it appeared to the board to be wholly irrelevant that
on the issue of joint oppositions by several opponents: in         an opponent, whether individual or multiple, could be
order to safeguard the rights of the patent proprietor and in      supported by others. Such supporters clearly could not take
the interests of procedural efficiency, it has to be clear         any part in the proceedings and could not affect its outcome.
throughout the procedure who belongs to the group of               In relation to any proceedings there were likely to be
common opponents or common appellants. If either a                 nonparties who wanted to see a particular party succeed (for
common opponent or appellant (including the common                 example, employees or shareholders of a company which
representative) intends to withdraw from the proceedings, the      was a party). If some opponents – as in this case – made
EPO must be notified accordingly by the common                     varying reference to their supporters in the belief that this
representative or by a new common representative                   might influence the result, then that was of course incorrect.
determined under Rule 100(1) EPC in order for the                  However, support for a party could not per se be a reason to
withdrawal to take effect (G 3/99, OJ EPO 2002, 347).              challenge admissibility (point 2.6 of the reasons).
Referring to that case law in its interlocutory decision in T      2.7          Oppositions based on public prior use
482/02 of 9 February 2005, the board stated that, where it           2002

                                              Page 112 of 154
The issue the board had to resolve in T 241/99 was whether,         interpretive effort, specific enough to allow a person skilled in
in the event of a purported sale to a small closed group of         the art to form a reasoned opinion of whether the line of
customers, it was sufficient to indicate the buyers in the form     reasoning on which the opponent apparently (logically) relies
”customers X, Y, Z...” The board referred to case law under         is correct (”convincing”) or not (ie wrong).
which a single proven sale without obligation to maintain
secrecy was sufficient to render the article sold available to      3.          Legal and factual framework of opposition –
the public within the meaning of Article 54(2) EPC (T 482/89,                   meaning of "fresh grounds for opposition"
OJ EPO 1992, 646). In such cases, however, the
requirements of Rule 55(c) EPC were met only if the name                 2004
and address of the sole buyer were indicated within the             In the view of the board, as laid down in T 135/01, the mere
opposition period. The board therefore did not consider the         observation in the course of an opposition procedure,
encoded customer details in the computer printout (list of          whether by a party or the opposition division, that the
customer numbers) to be an indication of the customers’             subject-matter of a claim is new having regard to the prior art
identity.                                                           does not mean that lack of novelty is thereby introduced as a
                                                                    ground for opposition. Thus an assessment of inventive step
The board further deemed that even the two witnesses called         generally begins with a determination of the point of novelty,
to prove the correctness of the computer printout were only         which implies a finding that the subjectmatter of the claim is
likely to be able to say something about the circumstances in       new. Treating such a routine affirmation of novelty as
which it was generated. As, in the interests of legal certainty,    introducing the opposition ground of lack of novelty would be
it had to be possible to decide on the admissibility of an          tantamount to including the latter ground as an invariant
opposition on the basis of the file as it stood at the end of the   concomitant of the opposition ground of lack of inventive step
nine-month opposition period, it was too much to ask of the         contrary to decision G 7/95 (OJ EPO 1996, 626). In
patent proprietor and the opposition division that a called         particular, the present board saw, as a requirement for
witness had to be heard first in order to find out whether he       affirming that lack of novelty was in substance raised in the
personally knew anything at all about the circumstances of          opposition procedure as a ground for opposition, the
the sale that might be evidence of availability to the public.      presence of a contention, by a party to the proceedings or
The board therefore dismissed the opposition as                     by a third party presenting observations pursuant to Article
inadmissible.                                                       115 EPC or by the opposition division, to the effect that the
2.8          Legitimate interest                                    subject-matter of a claim was not new having regard to
                                                                    some specific prior art (point 2 of the reasons).
  2001
In T 9/00 (OJ EPO 2002, 275) (re transfer of opposition see         In T 520/01 the board stated that, where a ground of
also page 73) the board pointed out that repeated filing of an      opposition, here insufficiency, was expressly not maintained
opposition by the same person could be objected to for lack         in opposition oral proceedings by the only party which had
of legitimate interest. It ruled that a (legal) person who filed    relied on the ground, and the opposition division did not deal
two different notices of opposition to the same granted patent      with the ground in their decision, the re-introduction of the
acquired party status as opponent only once, even if both           ground in appeal proceedings constitutes a fresh ground
notices complied with the requirements of Article 99(1) and         which, following opinion G 10/91 (OJ EPO 1993, 420) by
Rule 55 EPC. Both gave lack of novelty and inventive step as        analogy, requires the permission of the proprietor.
the grounds of opposition. Since the later opposition did not
entail any change in the legal situation in the opposition          Even if, read strictly on its wording, G 10/91 does not apply
proceedings compared to the earlier one, the board                  to withdrawn grounds which were originally sufficiently
dismissed it as inadmissible for lack of a general legitimate       substantiated, the board found it necessary to consider an
interest. Nor could such an interest be inferred from the fact      analogous application of the said opinion in the present case
that the later opposition was assigned to a different part of a     with regard to its general approach towards matter not
company to the earlier opposition and only that part of the         examined at first instance being (re-)introduced at the appeal
company was being transferred to a third party.                     stage. One important factor was the procedural results which
2.9          Substantiation of the grounds of opposition –          could ensue. One likely effect would be that the case would
                                                                    have to be remitted to the first instance and the patentee
             sufficiency of the notice of opposition
                                                                    would find himself again in exactly the same position as at
  2001                                                              the start of the original oral proceedings before the
The purpose of the third requirement of Rule 55(c) EPC is to        opposition division. The present board considered that such
ensure that the notice of opposition contains a sufficient          a possibility was not in accordance with the view expressed
indication of the relevant facts, evidence and arguments for        in opinion G 10/91 that the patentee should not face
the reasoning and merits of the opponent’s case in relation to      unforeseeable complications at a very late stage in the
the grounds of opposition relied upon to be properly                proceedings. Such a possibility would be an unreasonable
understood by the opposition division and the patentee, on          burden on the patentee and an open door to abuse (point 1.9
the assumption of course that both are reasonably skilled in        of the reasons).
the art to which the opposed patent relates (T 222/85, OJ
EPO 1988, 128 and T 925/91, OJ EPO 1995, 469).                      4.          New ground of opposition – opportunity to
                                                                                present comments
In T 934/99 the board stated that Rule 55(c) EPC, however,
does not imply the requirement of a logical line of reasoning            2003
in the sense that the arguments brought forward in the notice       It is established case law of the EPO’s boards of appeal, in
of opposition must be cogent or convincing. Rather, the             keeping with the principles set out by the Enlarged Board in
criterion is whether the arguments presented are relevant           G 9/91 (OJ EPO 1993, 408) and G 10/91 (OJ EPO 1993,
and, where necessary as the result of a reasonable                  420), that the introduction of a new ground of opposition at a

                                               Page 113 of 154
late stage during the first-instance opposition proceedings is    substantive examination of the case would be required in
admissible only in exceptional cases, for example if it is        such a case, and any short delay caused by making the
prima facie prejudicial to the maintenance of the patent.         necessary amendments was then of little weight, compared
                                                                  to the importance to the applicant of obtaining a valid patent
In T 1164/00 notice of opposition had been filed by the           in such designated states.
respondent only on the grounds of Article 100(a) EPC. The
opposition division informed the appellant during oral            In this case, the board made clear that the general purpose
proceedings of its intention to introduce a new ground of         of Rule 57a EPC was to allow amendments only where they
opposition based on Article 83 EPC by virtue of Article 114(1)    were made to overcome an objection against the validity of
EPC and explained to the appellant the reasoning on which         the European patent. It followed from the reference to Rule
this ground was allegedly based.                                  87 EPC that, within the framework of the centralised
                                                                  opposition procedure before the EPO, amendments were
The board found that the opposition division was in principle     also to be allowed where the patentee intended to overcome
entitled to introduce a new ground of opposition even at such     a possible ground of invalidity which only existed in respect
a late stage of the proceedings, since, in its view, it was       of a particular contracting state.
apparent that the patent in suit did not comply with the
requirements of Article 83 EPC. However, the annex to the         Thus, Rule 57a EPC was not infringed by the formulation of a
summons to oral proceedings did not contain any indication        separate set of claims for a contracting state in which, due to
of the opposition division’s intention to introduce a new         a reservation made under Article 167(2)(a) EPC, certain
ground of opposition, and the appellant was made aware of         product claims as granted would be considered invalid or
the factual and legal reasons supporting the introduction of      ineffective (point 21 of the reasons, see also p. 59).
this new ground for the first time during oral proceedings.       5.2          Substantive examination of amendments
The board found that the appellant had not been notified in
writing as early as possible and, not having been informed             2005
beforehand of the factual and legal reasons, had been taken       When amendments are made during opposition proceedings,
by surprise and had not had a fair opportunity during oral        Article 102(3) EPC requires consideration as to whether the
proceedings to prepare a proper defence against this new          amendments introduce any contravention of any requirement
objection. Under the circumstances of the case, the               of the Convention, including Article 84 EPC. It has already
opposition division should have adjourned the oral                been held in the case law of the boards of appeal that Article
proceedings in order to give the appellant sufficient time, in    102(3) EPC does not allow objections to be based upon
accordance with Article 113 EPC, to prepare a suitable            Article 84 EPC, if such objections do not arise out of the
defence against the new objections (see also T 433/93, OJ         amendments made (T 301/87, OJ EPO 1990, 335; see also
EPO 1997, 509, and T 817/93). Since this requirement had          T 367/96).
not been complied with, the opposition division had
committed a substantial procedural violation in rejecting the     In T 853/02 the patent at issue concerned a milking system
main and the first auxiliary request on the grounds of the        for mammals. The respondent argued that the amended
objections raised for the first time during oral proceedings.     disclaimer, in so far as it attempted to exclude two-way
                                                                  valves, was not supported by the description of the patent in
5.         Amendments during opposition proceedings               so far as this passage contemplated using a two-way valve
                                                                  as a variable pressure source. The board, however,
5.1         Admissibility of amendments                           considered that this objection did not directly relate to the
  2005                                                            amended disclaimer because it could have also been raised
Rule 57a EPC provides that, without prejudice to Rule 87          for the unamended disclaimer which also referred to the
EPC, the description, claims and drawings may be amended          terms "without using a two-way valve pulsator". In other
during the opposition proceedings, provided that the              words, this objection did not concern the amendments that
amendments are occasioned by grounds for opposition               led to claim 1 of the main request but claim 1 of the patent as
specified in Article 100 EPC, even if the respective ground       granted. Therefore, this objection represented an attempt to
has not been invoked by the opponent.                             raise an objection under Article 84 EPC to a feature already
                                                                  present in claim 1 of the patent as granted. Since Article 84
In T 15/01 (OJ EPO 2006, 153), the appellant had justified        EPC was not a ground of opposition, the board considered
the filing of separate claims for Spain and Greece on the         this objection as being inadmissible (point 3.1 of the
grounds that a number of claims as granted might be               reasons).
ineffective in Spain and Greece since the reservations made
by both contracting states under Article 167(2)(a) EPC were       6.          Withdrawal of opposition
still in force on the date of filing the application. The board        2003
held that, although the EPC did not contain an explicit
                                                                  During opposition proceedings in T 283/02 the opponents
provision for the corresponding situation where an applicant
                                                                  had announced that they were withdrawing their opposition.
or proprietor wished to take into account the reservation
                                                                  They had then filed an appeal against the opposition
made by an EPC contracting state under Article 167(2)(a)
                                                                  division’s decision to discontinue the opposition proceedings
EPC, it had been the established practice of the EPO from
                                                                  and to reject the request for rectification of the opponents’
the very beginning to accept the filing of separate sets of
                                                                  withdrawal of opposition and the request for continuation of
claims for such contracting states. This practice was
                                                                  opposition proceedings by the EPO of its own motion. The
confirmed in decision G 7/93 (OJ EPO 1994, 775), in which
                                                                  board noted that withdrawal of opposition was a definitive
the Enlarged Board of Appeal regarded such situations as an
                                                                  procedural declaration which took away the opponent’s
exceptional case in which amendments might be appropriate
                                                                  status as an active party to the proceedings. Such a
at a very late stage of the examination procedure. In the
                                                                  declaration did not require the agreement of either the
Enlarged Board’s view, it was possible that no further

                                             Page 114 of 154
opposition division or the proprietor. It took effect as soon as   not be subsumed under one of the opposition grounds had to
it was received by the Office.                                     be left out of consideration.

Moreover, the fact that the opposition division could have         9.          Amendments – filing additional independent
decided to continue the opposition proceedings under Rule                      claims
60(2) EPC had no impact on this effect. In that situation too
the opponent would not be a party to the proceedings (see T             2003
789/89, OJ EPO 1994, 482). The decision whether or not to          According to Rule 57a EPC the claims of a granted patent
continue the proceedings rested with the opposition division.      may be amended, provided that the amendments are
                                                                   occasioned by grounds for opposition specified in Article 100
7.          Right to be heard – EPO communications                 EPC, even if the respective ground has not been invoked by
            inviting a party to ”take note”, and sufficient        the opponent.
            time to submit a response
                                                                   In T 181/02 the single independent claim had been replaced
     2001                                                          by two new independent claims. The board stated that in a
EPO communications to ”take note” are not the same as              case where a patentee had amended or wanted to amend a
opposition division invitations to comment under Article           single independent claim in order to avoid objections based
101(2) EPC. In the year under review, T 914/98 considered          on grounds for opposition (Article 100 EPC), and thereby to
how long a party should be given to respond to them.               avoid the revocation of the patent involved, it was normally
                                                                   sufficient for the patentee to remain with a single
The board summarised in its decision that in T 275/89 (OJ          independent claim solely by modifying the granted claim
EPO 1992, 126) and T 494/95 the respective board                   once, ie by adding one or more features to the granted single
considered that a sufficient time to be given to a party for       independent claim. In normal cases such an amendment had
filing an adequate response was a minimum of one month. In         to be considered as necessary and appropriate to try to avoid
T 263/93 it was held that the opposition division should have      the revocation of the patent involved. Adding a second
waited at least two months before issuing a decision, unless       independent claim was in normal cases not needed to avoid
there were exceptional circumstances in which a shorter            revocation of the patent on the basis of the unmodified or
period of time was acceptable.                                     modified granted single independent claim, and furthermore
                                                                   did not do anything to help avoid revocation. Such an
In the case in point the board stated that the seventeen-day       amendment could therefore not be considered as being
period which elapsed between the appellants receiving the          necessary and appropriate to try to avoid revocation of the
reply of the respondents and the handing over of the decision      patent, or as an attempt to respond to an objection under
to the EPO internal postal service was manifestly too short to     Article 100 EPC (see also T 610/95).
give the appellants an adequate opportunity for comment.
The respondents had suggested that the appellants should           Only in exceptional cases can the replacement of a granted
have informed the opposition division within this period that a    single independent claim by two or more independent claims
substantive reply would be forthcoming. The board did not          be occasioned by a ground for opposition, for example in
agree as having regard to the case law the appellants could        cases where a granted independent claim covers two
not reasonably have expected a decision to be issued so            specific embodiments. In such a case it has already been
quickly.                                                           regarded as admissible under Rule 57a EPC to file two
                                                                   independent claims, each protecting one of these two
8.          Admissibility of opposition – substantiation of        embodiments (see T 223/97).
            the grounds of opposition
                                                                   Such a situation may also arise if two granted dependent
     2003                                                          claims (eg claims 2 and 3) are linked in parallel to a single
In T 521/00 the board had to assess whether the alleged            independent claim (claim 1). Then the filing of two
opposition ground of insufficient disclosure pursuant to           independent claims (eg including the features of claims 1 and
Article 100(b) EPC had been substantiated in the notice of         2, and 1 and 3) may be possible (moreover thereby
opposition.                                                        decreasing the number of claims).

The appellant had referred to T 65/00, point 2.1.3 of the          In the case at issue, the board saw no reason why it should
reasons, where it was stated that for an opposition to be          require two independent claims to overcome an objection
admissible it was sufficient that the arguments were such          based on Article 100 EPC.
that an arguable case was established, it being irrelevant
whether the arguments brought forward by the opponent              In T 937/00 the board made some observations concerning
referred to Article 84 or 83 EPC. The board admitted that this     the filing of multiple independent claims in response to an
statement would cover the case under consideration, but            opposition, the admissibility of subsequent amendments and
could not concur with it. According to the board, the mere         the conduct of the opposition procedure in such cases. In
establishment of an arguable case would not comply with            response to the opposition the patentee had filed two
Rule 55(c) EPC, which required that an indication of the           separate sets of claims, these sets respectively comprising
facts, evidence and arguments be presented in support of           eighteen and twentyone independent claims.
the alleged opposition grounds. This provision should not be
undermined by lowering its requirements even more, as the          The board referred to G 1/91 (OJ EPO 1992, 253), in which
Enlarged Board had stressed its significance in G 9/91 (OJ         the Enlarged Board had established that unity of invention
EPO 1993, 408) and G 10/91 (OJ EPO 1993, 420). The                 did not come under the requirements which a European
board therefore preferred to follow T 134/88, where in point 3     patent must meet. Accordingly, the board saw no objection of
of the reasons it had been found that allegations which could      principle to a patentee amending his claims in response to an

                                               Page 115 of 154
opposition so that they comprised several independent              10.        Surrender or lapse of a European patent
claims directed to different objects originally covered by a
single generic claim of a given category, when such a claim          2003
could not be maintained.                                           In T 386/01 it was observed that it was established EPO
                                                                   practice to revoke a patent without further examination of the
However, the board noted that the filing of multiple               opposition if a proprietor stated in opposition proceedings
independent claims directed to different inventions might          that he no longer approved the text in which the patent was
unduly complicate and delay the opposition procedure, in           granted or if the proprietor himself requested that the patent
particular when this filing was followed by a series of further    be revoked (see Legal Advice from the EPO No. 11/82, OJ
amendments. An efficient and possibly complete examination         EPO 1982, 57; T 73/84, OJ EPO 1985, 241; T 186/84, OJ
of the opposition might for instance become virtually              EPO 1986, 79; T 264/86). However, it was not possible for
impossible if subsequent amendments were proposed in a             the proprietor to terminate opposition proceedings by telling
piecemeal way rather than addressing all the objections            the EPO that he was surrendering the European patent,
raised by the other party as soon as these objections arose,       since that was not provided for in the EPC (T 73/84; T
if they manifestly gave rise to new issues, in particular when     123/85, OJ EPO 1989, 336). The Enlarged Board too in G
they introduced new claims which did not result from any           1/90 (OJ EPO 1991, 275) had made it clear that once a
combination of the claims in the granted version or if they        patent had been granted the proprietor could no longer
introduced features for which there was no unambiguous             surrender it by informing the EPO. At that stage in the
support in the application documents as originally filed.          proceedings notices of surrender had to be addressed to the
                                                                   national authorities of the designated contracting states.
The opposition division, which in the interest both of the
parties concerned and of the public had a duty to conduct          In some cases, though, a notice of surrender could be
proceedings in an efficient manner, should therefore in such       interpreted as an unambiguous request by the proprietor in
cases be particularly careful not to admit any subsequent          opposition or appeal proceedings that the patent be revoked;
amendment which was not clearly appropriate and necessary          but then in particular there had to be no doubt that the
having regard to the particular circumstances of a given           proprietor was seeking the effects of revocation under Article
case.                                                              68 EPC, ie the cancelling of the effects of the European
                                                                   patent application and the resulting patent as from the outset
The board was well aware that strict application of the above      (T 237/86, OJ EPO 1988, 261; T 186/84; T 347/90).
principles might considerably reduce the appellant’s flexibility
in responding to the grounds of opposition invoked by the          If there was any doubt over the intended scope of a notice of
respondent. In the case at issue, however, taking into             surrender in opposition proceedings because it could not be
consideration the exceptionally high number of independent         unambiguously construed as a request for revocation, then
claims introduced at the opposition stage and also the facts       according to the Guidelines for examination, D-VIII, 1.2.5, it
that the granted patent was based on no fewer than fourteen        was up to the competent department to make sure that such
priority applications and that the subject-matter of the only      a request was really what was wanted.
two generic independent claims as granted lacked novelty in
view of one of the appellant’s own earlier patent applications,    In the case in point, the notice of surrender addressed to the
such a reduction of flexibility did not appear to be unduly        EPO could not be construed unambiguously and without
unfair in the circumstances.                                       doubt from the overall context as a request by the proprietor
                                                                   for revocation of the patent in opposition proceedings.
Concerning the conduct of the opposition procedure, the
board noted that the opposition division in its decision had       11.        Transfer of opposition
dealt only with the first of the twentyone or eighteen
independent claims filed by the patentee in response to the
                                                                     2001
notice of opposition for the respective two groups of              Regarding assignment of party status, in G 4/88 (OJ EPO
designated contracting states. The questions of the                1989, 480) the Enlarged Board of Appeal ruled that the
allowability of all the other claims and of the patentability of   opponent’s procedural status could be transmitted to his
their subject-matter thus remained entirely open.                  heirs, as implicitly acknowledged in Rule 60(2) EPC, and
                                                                   accordingly could be assumed by his universal successor in
If, in the same way, each of the other independent claims          title. As part of the opponent’s business, an opposition
considered unallowable by the opposition division resulted in      pending before the EPO could be transferred or assigned to
a decision dealing with that claim only, and possibly in a         a third party along with the rest of that part of the business.
subsequent appeal procedure, complete examination of all
the independent claims could take a totally unacceptable           In T 799/97 the opponent went bankrupt during first-instance
amount of time and resources for the instances of the EPO.         opposition proceedings. The representative wanted to
Therefore, in the particular circumstances where multiple          continue the proceedings with company D, which had
independent claims directed to different inventions were filed     acquired the bankrupt firm. The opposition division refused
in response to an opposition, the opposition procedure             this request on the grounds that the purchase contract
should be conducted with the aim of arriving at a decision         showed that not all the opponent’s assets had been
dealing with as many of the claims and different inventions        transferred; certain items and liabilities were not covered.
as was reasonably possible. That decision could then be            The board however concluded that opponent status had
reviewed in a single appeal procedure, thus avoiding an            indeed been transferred to company D. Unlike T 659/92 (OJ
unending succession of appeals, remittals to the first             EPO 1995, 519), where only various industrial property rights
instance and further prosecutions.                                 had been transferred, here the entire firm had been taken
                                                                   over. This automatically included the part of the business to
                                                                   which the opposition related. In the board’s view, there was


                                                Page 116 of 154
nothing in either G 4/88 (OJ EPO 1989, 480) or T 659/92 to
indicate that opponent status was transferred only in case of      In its reasons the board took the view that, although a reply
an unqualified transfer of all receivables and liabilities.        from appellant II to the announcement by appellant I that
                                                                   experts would attend the oral proceedings would not have
In T 9/00 (OJ EPO, 2002, 275) (re legitimate interest see          been possible within the time limit set by the board, a
also page 70), company H filed two oppositions (on                 "response" to the aforementioned announcement should
21.11.1998 and 16.03.1999) against the same patent, each           have followed immediately and not shortly before the
differing in wording and content from the other. Company H         appointed date for oral proceedings. At this late stage, it was
said this was because it was opposing for two separate parts       plausible that the representative of appellant I had made
of its business (cosmetics and chemistry). The chemistry part      arrangements for the trip to Munich and a hotel reservation,
was transferred to company C after the opposition had been         which could not be cancelled without a financial loss (point
filed.                                                             3.1.2 of the reasons).
                                                                   12.1.1.        Late submissions of documents and/or
The board ruled that, if the same person filed a double
                                                                                  requests
opposition, a general legitimate interest for the later one
could not be inferred from the fact that it was assigned to a        2005
different part of a company to the earlier one and only that       According to the constant case law of the boards of appeal,
part of the company was being transferred to a third party. If     where facts and evidence supporting the opposition are
an opposition was allocated to two different parts of a            submitted at a late stage in the proceedings and another
business, opponent status could be transferred to a third          party incurs considerably higher costs as a result, a different
party only by transferring both parts of the business or the       apportionment of the costs may be ordered for reasons of
whole firm.                                                        equity.

12.        Apportionment of costs                                  In T 507/03 the opposition division had regarded the claimed
                                                                   invention to be patentable over the documents cited by the
  2002                                                             opponent. As a reaction to the reasons given in the
In T 1059/98, with regard to the respondent’s request for          impugned decision, the opponent (appellant) filed a new set
apportionment of costs, the board stated that no request had       of documents in the appeal proceedings, thus after the nine-
been made before the opposition division for apportionment         month period for filing opposition. Refusing the request for a
of the costs incurred in connection with the oral proceedings      different apportionment of costs due to the late filing, the
held before that first instance, and the opposition division had   board argued that, according to Article 108 and Rule 65
not considered and decided upon such matter in the decision        EPC, a statement of grounds of appeal had to identify the
under appeal. Article 21(1) EPC provided that a board of           extent to which amendment or cancellation of the decision
appeal could only examine appeals from decisions of EPO            was requested. This, however, did not forbid a losing
first-instance departments. That clearly meant, in the             opponent to file new pieces of prior art if it was felt that they
circumstances of the case, that the board could not examine        could counter the reasons given in the appealed decision.
and decide upon a request for apportionment of costs               Further, the new documents were all easily understandable
incurred as a result of oral proceedings before the opposition     and had not caused an unreasonable amount of extra work
division if that request was presented for the first time before   such as to justify departure from the normal rule that each
the board of appeal and thus no decision had been taken on         party meets its own costs pursuant to Article 104 EPC.
it by the first instance. Thus the board was not competent to
consider and decide upon this request, so the respondent’s         In T 554/01, the applicant submitted a number of documents
request for apportionment of costs was rejected.                   following the negative decision taken by the opposition
12.1         Equity of Apportionment of costs                      division. The board held that the mere fact that certain
                                                                   documents had been submitted at a late stage did not justify
  2004                                                             a finding that there had been an abuse on the part of the
Under Article 104(1), in principle each party meets its own        applicant, especially where they had been submitted as a
costs. A departure from this principle is allowable only in        result of a legitimate desire to supplement the line of
special circumstances, for example if there is wrongful            argument which had been unsuccessful before the
conduct, in which case one of the parties is ordered to bear       department of first instance. Moreover, the respondents had
the costs for reasons of equity. Oral proceedings appointed        not shown that they had incurred additional costs as a result
by the EPO are only cancelled and reappointed at the               of the documents’ introduction into the proceedings.
request of one of the parties if the party concerned can give
serious reasons to justify the appointment of a new date.          In T 1182/01 the board’s decision to remit the case
                                                                   immediately to the department of first instance meant that the
In T 42/99, appellant I announced, as early as one month           late filing of documents by the respondent had not incurred
prior to oral proceedings, that experts would attend the oral      any undue cost burden in relation to the present appeal.
proceedings. Only shortly before the appointed date for oral       Accordingly the board did not see any reason of equity to
proceedings appellant II then submitted a request that             order a different apportionment of costs in relation to these
statements by an expert be admitted at the oral proceedings.       proceedings. The question of costs in subsequent
Appellant II also requested the postponement of the oral           proceedings before the opposition division and possible
proceedings so that its expert had enough time for                 further appeal proceedings was left for consideration by the
preparation. The board decided to postpone the appointed           opposition division and board of appeal concerned.
date to enable both appellants to attend the oral proceedings        2003
accompanied by experts. In doing so, the board also
regarded it as equitable to order a different apportionment of     In T 1137/97 a relevant document which had been belatedly
costs.                                                             introduced was admitted into the proceedings. The board,
                                                                   however, considered the belated submission to have caused

                                              Page 117 of 154
unnecessary costs to be incurred and thus deemed it                 12.1.2.        Request for oral proceedings withdrawn
equitable to make an apportionment of costs in favour of the
respondent/ patentee. The board itself, exercising its                2003
discretion under Article 111(1) EPC, awarded a fixed sum of         Article 104(1) EPC provides that each party to the
EUR 2 500 to avoid the need for an exact investigation of the       proceedings must as a rule bear his own costs. To depart
amount, which would be more burdensome for the parties.             from this principle requires special circumstances, such as
                                                                    improper behaviour, which make it equitable to award costs
In T 937/00 the board noted that all the requests presented         against one of the parties. According to Article 116(1) EPC it
by the appellant in writing in advance of the oral proceedings      is a genuine right of any party to request oral proceedings if
were clearly inadmissible and their filing could hardly be          he considers them to be necessary. Moreover, the board in T
considered as appropriate in the circumstances of the case,         91/99 observed that there was nothing in the EPC to prevent
in which the appellant had chosen to file an exceptionally          a party from withdrawing a request for oral proceedings at
high number of independent claims in response to the notice         any stage of the procedure. Therefore, the fact that an
of opposition: he had presented amended independent                 appellant withdrew his request for oral proceedings was not
claims 2, 5, 29 and 69 at the appeal stage only, having filed       culpable conduct as such and could not be a factor in
no fewer than six different versions of the claims during the       assessing the reasons of equity under Article 104(1) EPC.
opposition procedure, and independent claims 5 and 58 had
in effect countered the limitations brought to independent          However, the fact that the appellant had filed notice that he
claims 2 and 29. Then, at the very end of the oral                  would not attend the oral proceedings only two working days
proceedings, he had still filed a third auxiliary request by        before the date set for oral proceedings could constitute
which all the claims which had been contested in the appeal         negligent or wilful conduct which had to be considered under
procedure were simply abandoned, leaving the board with no          Article 104(1) EPC. Consequently, in cases where a party
other choice than either to remit the case to the first instance,   delayed his decision not to attend oral proceedings or the
since none of the remaining claims had ever been                    communication of this decision to the board, an
considered by the opposition division, or to reject this            apportionment of costs in favour of the other party could be
auxiliary request as late-filed. Had the board rejected the         justified in so far as the costs had been directly caused by
appellant’s third auxiliary request, the appeal would have          the fact that the notice had not been filed in appropriate time
been dismissed and the revocation of the patent would have          before the oral proceedings. However, in the case in point,
become final. The board having eventually decided to admit          the board considered that there was no culpable conduct on
the appellant’s late-filed third auxiliary request and to remit     the part of the appellant which could provide for an
the case to the first instance, it deemed it appropriate for        apportionment of costs under Article 104(1) EPC.
reasons of equity to order an apportionment of the costs of         12.1.3.        One of the parties does not appear at the oral
the oral proceedings such that the appellant bore fifty percent                    proceedings
of the costs incurred by the respondent for attending the oral
proceedings, ie of the travel expenses and of the                     2004
remuneration for one day of his representative.                     In T 435/02 both the appellant and the respondent had
                                                                    formerly filed an auxiliary request for oral proceedings. At the
The board in T 514/01 was unable to grant the request of the        time the respondent filed its request for oral proceedings it
appellants (opponents) to set aside the cost apportionment          wished to attend them in order to ensure that the board
decision, according to which the appellants were to bear the        would not overturn the decision under appeal without the
costs of the first oral proceedings. The board held that the        respondent having the opportunity to present its case orally.
second oral proceedings in the opposition procedure had
been caused solely by the appellants’ late submission               When, in reply to the appellant’s announcement that it would
concerning public prior use during the first oral proceedings.      not be represented at the oral proceedings, the respondent
This prior use was alleged in conjunction with documents            announced that it also would not attend, it stated that its
filed during the first oral proceedings of which the opponents      attendance at the "oral hearing" would have been "merely to
had already been aware before the first oral proceedings.           rebut statements/arguments made by the Patentee during
                                                                    these Proceedings". Although the board expressly informed
The late allegation of public prior use during the first oral       the parties that the oral proceedings would take place as
proceedings before the opposition division had given rise to        planned, the respondent failed to attend.
additional costs because second oral proceedings before the
opposition division had been needed to investigate the              The respondent requested a different apportionment of costs
alleged public prior use. Hence the award of costs made in          because the appellant withdrew its request for oral
the contested decision was equitable.                               proceedings so late that the respondent had incurred costs
                                                                    which no longer could be recovered. The board refused the
The respondents’ request for the award of costs was to be           respondent’s request on the grounds that, contrary to the
rejected as inadmissible. The respondents were adversely            respondent’s allegation, its non-attendance was not in
affected by the appealed decision only to the extent that the       response to the appellant’s decision not to be present but the
cost award they had requested had not been made. If the             result of a choice not to utilise the opportunity which it had
respondents had appealed against the apportionment of               requested to present its case orally.
costs, the appeal would have been inadmissible under Article        12.1.4.        Withdrawal of the appeal
106(4) EPC. In the case in point the respondents had filed no
such appeal, having filed the request for award of costs as a         2005
party to the proceedings under Article 107, second sentence,        In T 674/03, the opponent withdrew its appeal nine days
EPC and as a party to appeal proceedings which had no               before the date set for the oral proceedings. The board held
more extensive rights than would have been the case if that         that the exercise of an absolute procedural right did not, in
party itself had appealed.                                          principle, constitute abuse. There was no evidence that the

                                               Page 118 of 154
opponent had at any time acted in such an improper or               procedural requirements, which have to be reviewed to the
negligent manner that a different apportionment of the costs        satisfaction of all concerned at all times, including in the
was justified, especially where the costs for which                 appeal procedure, the issuance of a decision on costs by the
reimbursement was sought were such as were usually                  Office did not necessarily mean that the decision also had to
incurred by a party in defending its interests in appeal            be reviewed by the Office. The review of a decision at a
proceedings.                                                        higher level of jurisdiction requires, after all, an appeal by
12.1.5.        Failure of a party to appear at oral                 one of the parties.
               proceedings                                          12.1.7.        Cases of alleged abuse of procedure or abuse
                                                                                   of oral proceedings
  2005
All parties summoned to appear at oral proceedings are                2003
obliged, for reasons of equity, to inform the EPO as soon as        In the board’s view in T 952/00, the equity requirement was a
they know that they will not appear. In T 937/04 the appellant      matter for the body hearing the case to decide at its
and patent proprietor informed the board by fax sent only to        discretion in the light of the facts. It was to be seen as the
the EPO and not to the other parties on Friday, 17 February         compensation one party owed another as a result of his
2006, after business hours, at 16.27 hrs, that he would not         negligence or culpable irresponsibility, or a wrongful act
attend the oral proceedings. Reasons to justify the filing of       carried out with intent to cause the other party harm and
this information at such a late stage were not provided. The        leading to damage requiring that party to request oral
other parties were thus informed by the registrar of the board      proceedings or the taking of evidence which would otherwise
on Monday, 20 February 2006, ie one working day before the          have been unnecessary. The wrongful act, whether
oral proceedings, that the appellant would not attend them.         intentional or simply the result of culpable negligence, had to
The board stated that the appellant, by informing solely the        be judged in relation to what the normal behaviour of an
EPO and not the other parties, had failed to exercise all due       ordinarily diligent party would have been. It also had to be
care required and concluded that, for reasons of equity, an         clearly and obviously the direct cause of the costs which
apportionment of costs should be accorded in favour of the          should not have been incurred. In the case in point, it was
respondent.                                                         important to compare the evidence given by the opposing
12.1.6.        Procedural requirements                              party at first instance with the additional evidence he had had
                                                                    to give at the appeal stage, bearing in mind the evidence to
  2004                                                              the contrary given by the patent proprietor at both instances.
Under Article 104(2), second sentence, EPC the fixing of the
costs by the opposition division registry may be reviewed by        It was therefore the board’s task to establish whether, in the
a decision of the opposition division on a request filed within     successive statements made by the proprietor and placed on
the period laid down in the Implementing Regulations. Rule          file, he had expressed himself in terms that went beyond
63(3), first sentence, EPC states that this period is one           those that could legitimately be expected of a proprietor
month after the date of notification of the awarding of costs.      defending his patent, in particular by concealing all or part of
According to the same provision, the request must be filed in       the truth in the face of evidence of prior use of the invention’s
writing, stating the reasons on which it is based.                  subject-matter, or even by alleging facts subsequently
Furthermore, the request is not deemed to be filed until the        revealed to be contrary to the truth. The board found that the
fee for the awarding of costs has been paid (Rule 63(3),            statements made by the proprietor on the accuracy of the
second sentence, EPC). The requirements are thus                    opponent’s allegations during successive discussions had
essentially equivalent to those for an appeal.                      varied considerably over time, whereas the opponent’s
                                                                    allegations had remained consistent.
In T 668/99 the question was raised as to whether the
prohibition on reformatio in peius also applies if the              Following an in-depth assessment of the different statements
proceedings are not referred to a higher level of jurisdiction      and the misleading statement, the board was convinced that
but are continued within the same level of jurisdiction, as is      without these false statements the opposition division would
the case with a legal remedy against the fixing of the costs        not have been so receptive to the patentee’s arguments in
by the opposition division registry. The board recalled that an     respect of the alleged confidentiality of these other probable
appeal and a request for an opposition division decision have       prior uses, such confidentiality making no sense when the
far more similarities (suspensive and devolutive effect) than       doors were freely available elsewhere, so that the opponent
differences, and so the position of the sole requester is           would not have been required to go to the expense of
comparable to that of the sole appellant. The board was             gathering further evidence as it had had to in the appeal at
therefore satisfied that the prohibition on reformatio in peius     issue. The patentee had continued this behaviour in the
must also be applicable to a request under Article 104(2),          appeal proceedings.
second sentence, EPC (point 3 of the reasons).
                                                                    The opponent’s request for an apportionment of costs in
The lack of finality of the decision on costs was also asserted     respect of the costs incurred by the appellant (opponent)
in the same case. The board took the view that the                  during the taking of evidence after notification of the first-
opposition division’s decision on costs had become final            instance decision was therefore to be granted. The request
upon expiry of the time limit for filing a notice of appeal owing   of the respondent (patentee) for an apportionment of costs
to the absence of any appeal against the decision. It held          due to the late filing of evidence during the appeal
that there was