Case law - Mercer notes Flashcards
G1/92 (product not available to public in display case)
- The chemical composition of a
product is state of the art when the product as such is available to the public and can be analysed and
reproduced by the skilled person,
irrespective of whether or not
particular reasons can be identified
for analysing the composition. - The same principle applies
mutatis mutandis to any other
product.
G10/91 (adding a ground of opposition outside the 9 month deadline)
- An Opposition Division or a Board
of Appeal is not obliged to consider all
the grounds for opposition referred to
in Article 100 EPC, going beyond the
grounds covered by the statement
under Rule 55(c) EPC. - In principle, the Opposition
Division shall examine only such
grounds for opposition which have
been properly submitted and
substantiated in accordance with Article 99(1) in conjunction with Rule
55(c) EPC. Exceptionally, the
Opposition Division may in
application of Article 114(1) EPC
consider other grounds for opposition
which, prima facie, in whole or in part
would seem to prejudice the
maintenance of the European patent. - Fresh grounds for opposition may
be considered in appeal proceedings
only with the approval of the patentee.
G3/89 or G11/91 (priority document not basis for Rule 88 correction)
- The parts of a European patent
application or of a European patent
relating to the disclosure (the
description, claims and drawings)
may be corrected under Rule 88,
second sentence, EPC only within the
limits of what a skilled person would
derive directly and unambiguously,
using common general knowledge,
and seen objectively and relative to
the date of filing, from the whole of
these documents as filed. Such a
correction is of a strictly declaratory
nature and thus does not infringe the
prohibition of extension under Article
123(2) EPC. - Evidence of what was common
general knowledge on the date of
filing may be furnished in connection
with an admissible request for
correction in any suitable form.
G3/97 - strawmen
1(a): An opposition is not inadmissible
purely because the person named as
opponent according to Rule 55(a) EPC
is acting on behalf of a third party.
1(b): Such an opposition is, however,
inadmissible if the involvement of the
opponent is to be regarded as
circumventing the law by abuse of
process.
1(c): Such a circumvention of the law
arises, in particular, if - see decision
G4/97 - straw men
1(a): An opposition is not
inadmissible purely because the
person named as opponent
according to Rule 55(a) EPC is
acting on behalf of a third party.
pros and cons of joint oppositions (G3/99)
I. An opposition filed in common by two or more persons, which otherwise meets the requirements of Article 99 EPC and Rules 1 and 55 EPC, is admissible on payment of only one opposition fee.
II. If the opposing party consists of a plurality of persons, an appeal must be filed by the common representative under Rule 100 EPC. Where the appeal is filed by a non-entitled person, the Board of Appeal shall consider it not to be duly signed and consequently invite the common representative to sign it within a given time limit. The non-entitled person who filed the appeal shall be informed of this invitation. If the previous common representative is no longer participating in the proceedings, a new common representative shall be determined pursuant to Rule 100 EPC.
III. In order to safeguard the rights of the patent proprietor and in the interests of procedural efficiency, it has to be clear throughout the procedure who belongs to the group of common opponents or common appellants. If either a common opponent or appellant (including the common representative) intends to withdraw from the proceedings, the EPO shall be notified accordingly by the common representative or by a new common representative determined under Rule 100(1) EPC in order for the withdrawal to take effect.
G2/99 the basic date for the period specified in Art55
For the calculation of the six-month
period referred to in Article 55(1)
EPC, the relevant date is the date of
the actual filing of the European
patent application; the date of
priority is not to be taken account of
in calculating this period.
G4/98 - effect of non-payment of designation fees
I. Without prejudice to Article 67(4)
EPC, the designation of a contracting
state party to the EPC in a European
patent application does not retroactively lose its legal effect and is not
deemed never to have taken place if
the relevant designation fee has not
been paid within the applicable time
limit.
II. The deemed withdrawal of the designation of a contracting state provided for in Article 91(4) EPC takes
effect upon expiry of the time limits
mentioned in Article 79(2), Rules
15(2), 25(2) and 107(1) EPC, as applicable, and not upon expiry of the
period of grace provided by Rule 85a
EPC.
Priority test G2/98
The requirement for claiming priority
of ”the same invention”, referred to
in Article 87(1) EPC, means that
priority of a previous application in
respect of a claim in a European
patent application in accordance with
Article 88 EPC is to be acknowledged
only if the skilled person can derive
the subject-matter of the claim
directly and unambiguously, using
common general knowledge, from
the previous application as a whole.
Allowability of disclaimers G2/10
The question referred to the Enlarged Board of Appeal is answered as follows:
1a. An amendment to a claim by the introduction of a disclaimer disclaiming from it subject-matter disclosed in the application as filed infringes Article 123(2) EPC if the subject-matter remaining in the claim after the introduction of the disclaimer is not, be it explicitly or implicitly, directly and unambiguously disclosed to the skilled person using common general knowledge, in the application as filed.
1b. Determining whether or not that is the case requires a technical assessment of the overall technical circumstances of the individual case under consideration, taking into account the nature and extent of the disclosure in the application as filed, the nature and extent of the disclaimed subject-matter and its relationship with the subject-matter remaining in the claim after the amendment.
Status of priority based on WTO countries G03/02
The TRIPs Agreement does not entitle the applicant for a European patent application to 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 member of the WTO/TRIPs Agreement.
patentability of in vivo diagnostic methods G1/04
I. In order that the subject-matter of a claim relating to a diagnostic method practised on the human or animal body falls under the prohibition of Article 52(4) EPC, the claim is to include the features relating to:
(i) the diagnosis for curative purposes stricto sensu representing the deductive medical or veterinary decision phase as a purely intellectual exercise,
(ii) the preceding steps which are constitutive for making that diagnosis, and
(iii) the specific interactions with the human or animal body which occur when carrying those out among these preceding steps which are of a technical nature.
II. Whether or not a method is a diagnostic method within the meaning of Article 52(4) EPC may neither depend on the participation of a medical or veterinary practitioner, by being present or by bearing the responsibility, nor on the fact that all method steps can also, or only, be practised by medical or technical support staff, the patient himself or herself or an automated system. Moreover, no distinction is to be made in this context between essential method steps having diagnostic character and non-essential method steps lacking it.
III. In a diagnostic method under Article 52(4) EPC, the method steps of a technical nature belonging to the preceding steps which are constitutive for making the diagnosis for curative purposes stricto sensu must satisfy the criterion “practised on the human or animal body”.
IV. Article 52(4) EPC does not require a specific type and intensity of interaction with the human or animal body; a preceding step of a technical nature thus satisfies the criterion “practised on the human or animal body” if its performance implies any interaction with the human or animal body, necessitating the presence of the latter.
G1/06 - sequence of divisionals
In the case of a sequence of applications consisting of a root (originating) application followed by divisional applications, each divided from its predecessor, it is a necessary and sufficient condition for a divisional application of that sequence to comply with Article 76(1), second sentence, EPC that anything disclosed in that divisional application be directly and unambiguously derivable from what is disclosed in each of the preceding applications as filed.
application is formally pending 1/09
In the case where no appeal is filed, a European Patent application which has been refused by a decision of the Examining Division is thereafter still pending within the meaning of Rule 25 EPC 1973 (Rule 36(1) EPC) until the expiry of the time limit for filing a notice of appeal.
essentially biological processes G1/08
The questions of law referred to the Enlarged Board of Appeal are answered as follows:
- A non-microbiological process for the production of plants which contains or consists of the steps of sexually crossing the whole genomes of plants and of subsequently selecting plants is in principle excluded from patentability as being “essentially biological” within the meaning of Article 53(b) EPC.
- Such a process does not escape the exclusion of Article 53(b) EPC merely because it contains, as a further step or as part of any of the steps of crossing and selection, a step of a technical nature which serves to enable or assist the performance of the steps of sexually crossing the whole genomes of plants or of subsequently selecting plants.
- If, however, such a process contains within the steps of sexually crossing and selecting an additional step of a technical nature, which step by itself introduces a trait into the genome or modifies a trait in the genome of the plant produced, so that the introduction or modification of that trait is not the result of the mixing of the genes of the plants chosen for sexual crossing, then the process is not excluded from patentability under Article 53(b) EPC.
- In the context of examining whether such a process is excluded from patentability as being “essentially biological” within the meaning of Article 53(b) EPC, it is not relevant whether a step of a technical nature is a new or known measure, whether it is trivial or a fundamental alteration of a known process, whether it does or could occur in nature or whether the essence of the invention lies in it.
