List of successful petitions for review under Article 112a of the European Patent Convention

Last updated

As of October 2022, nine petitions for review under Article 112a EPC have been successful, i.e. held allowable by the Enlarged Board of Appeal of the European Patent Office (EPO). These allowable petitions for review are listed below in chronological order of the dates when the decisions were issued.

Contents

Background

Under the European Patent Convention (EPC), a petition for review is a request to the Enlarged Board of Appeal of the European Patent Office (EPO) to review a decision of a board of appeal. The procedure was introduced in Article 112a EPC when the EPC was revised in 2000, to form the so-called "EPC 2000". [1] A petition for review can essentially only be based on a fundamental procedural defect. [1] Its purpose is not to obtain a reconsideration of the application of substantive law, such as points relating to patentability. [1] [2] The petition is a restricted form of judicial review, limited to examining serious errors of procedure which might have been committed by the Legal or Technical Boards of Appeal, prejudicing the right to a fair hearing of one or more appellants. [3] Before the entry into force of the EPC 2000 in December 2007, it was not possible for a party who did not have his requests granted in an appeal to challenge the final decision of the Legal or Technical Board of Appeal on any grounds. [4]

List

R 7/09 of 22 July 2009

R 7/09 [5] was a petition for review of T 27/07 [6] and is the very first case in which a petition for review was successful since the institution of the procedure. In that case, the Enlarged Board of Appeal held that a violation of the right to be heard (a right guaranteed by Article 113(1) EPC) occurred during the underlying appeal proceedings, because the Board of Appeal apparently failed to forward the appellant's statement of grounds of appeal to the petitioner. The petitioner was therefore unaware of the grounds for the Board's decision until receiving the actual decision. The fact that the appellant's statement of grounds of appeal could have been obtained from the electronic public file by the petitioner or its representative was not considered material, because a party has the right to receive communications through the channels provided by law. [7]

R 3/10 of 29 September 2011

In case T 136/09 reviewed by the Enlarged Board in R 3/10, [8] novelty of the main request had been discussed during the oral proceedings before the Technical Board, after which, "when (...) closing the debate, the Chairman [of the Board] indicated that the Board would decide on patentability". [9] Inventive step had, however, not been discussed. Nevertheless, the Board then decided that the main request did not comply with Article 56 EPC (inventive step), depriving the petitioner (the patent proprietor) from an opportunity to be heard on inventive step of the main request. The Enlarged Board considered this to be a violation of the petitioner right's to be heard, [10] which arose from a misunderstanding between the Board and the petitioner. The Board apparently thought, when closing the debate, that the parties did not wish to make any submission orally on inventive step (beyond the parties' written submissions), whereas the petitioner apparently thought that they still would have an opportunity to present their arguments in that respect. The Enlarged Board set aside the decision of the Board to give an opportunity to the petitioner to be heard on inventive step. [11]

R 21/11 of 15 June 2012

R 15/11 of 13 May 2013

R 16/13 of 8 December 2014

R 2/14 of 22 April 2016

R 2/14 [12] concerned decision T 1627/09 [13] where Board 3.3.08 had held that the patent under consideration violated Articles 83 and 100(b) EPC because, even though each of the steps of recloning could be performed by a skilled person, the combination of all the necessary steps created an undue burden on the skilled person trying to perform the invention. The Enlarged Board held that the decision under review did not mention the sequence of facts or arguments that had led the Board to the conclusion that the combination of steps imposed an undue burden on the skilled person. The petition for review was consequently held allowable.

R 3/15 of 28 November 2017

R 4/17 of 29 January 2018

R 5/19 of 15 March 2021

See also

Related Research Articles

The patentability of software, computer programs and computer-implemented inventions under the European Patent Convention (EPC) is the extent to which subject matter in these fields is patentable under the Convention on the Grant of European Patents of October 5, 1973. The subject also includes the question of whether European patents granted by the European Patent Office (EPO) in these fields (sometimes called "software patents") are regarded as valid by national courts.

In patent law, industrial design law, and trademark law, a priority right or right of priority is a time-limited right, triggered by the first filing of an application for a patent, an industrial design or a trademark respectively. The priority right allows the claimant to file a subsequent application in another country for the same invention, design, or trademark effective as of the date of filing the first application. When filing the subsequent application, the applicant must claim the priority of the first application in order to make use of the right of priority. The right of priority belongs to the applicant or his successor in title.

The EPC 2000 or European Patent Convention 2000 is the version of the European Patent Convention (EPC) as revised by the Act Revising the Convention on the Grant of European Patents signed in Munich on November 29, 2000. On June 28, 2001, the Administrative Council of the European Patent Organisation adopted the final new text of the EPC 2000. The EPC 2000 entered into force on December 13, 2007.

The European Patent Convention (EPC), the multilateral treaty instituting the legal system according to which European patents are granted, contains provisions allowing a party to appeal a decision issued by a first instance department of the European Patent Office (EPO). For instance, a decision of an Examining Division refusing to grant a European patent application may be appealed by the applicant. The appeal procedure before the European Patent Office is under the responsibility of its Boards of Appeal, which are institutionally independent within the EPO.

The opposition procedure before the European Patent Office (EPO) is a post-grant, contentious, inter partes, administrative procedure intended to allow any European patent to be centrally opposed. European patents granted by the EPO under the European Patent Convention (EPC) may be opposed by any person from the public. This happens often when some prior art was not found during the grant procedure, but was only known by third parties.

In patent law, a disclaimer are words identifying, in a claim, subject-matter that is not claimed or another writing disclaiming rights ostensibly protected by the patent. By extension, a disclaimer may also mean the amendment consisting in introducing a negative limitation in an existing claim, i.e. "an amendment to a claim resulting in the incorporation therein of a 'negative' technical feature, typically excluding from a general feature specific embodiments or areas". The allowability of disclaimers is subject to particular conditions, which may vary widely from one jurisdiction to another.

<span class="mw-page-title-main">Representation before the European Patent Office</span>

The European Patent Convention (EPC), the multilateral treaty providing the legal system according to which European patents are granted, contains provisions regarding whether a natural or juristic person needs to be represented in proceedings before the European Patent Office (EPO).

G 1/03 and G 2/03 are two decisions of the Enlarged Board of Appeal of the European Patent Office (EPO), which were both issued on April 8, 2004.

T 641/00, also known as Two identities/COMVIK, is a decision of a Technical Board of Appeal of the European Patent Office (EPO), issued on September 26, 2002. It is a landmark decision regarding the patentable subject matter requirement and inventive step under the European Patent Convention (EPC). More generally, it is a significant decision regarding the patentability of business methods and computer-implemented inventions under the EPC.

<span class="mw-page-title-main">Grant procedure before the European Patent Office</span>

The grant procedure before the European Patent Office (EPO) is an ex parte, administrative procedure, which includes the filing of a European patent application, the examination of formalities, the establishment of a search report, the publication of the application, its substantive examination, and the grant of a patent, or the refusal of the application, in accordance with the legal provisions of the European Patent Convention (EPC). The grant procedure is carried out by the EPO under the supervision of the Administrative Council of the European Patent Organisation. The patents granted in accordance with the EPC are called European patents.

Article 123 of the European Patent Convention (EPC) relates to the amendments under the EPC, i.e. the amendments to a European patent application or patent, and notably the conditions under which they are allowable. In particular, Article 123(2) EPC prohibits adding subject-matter going beyond the content of the application as filed, while Article 123(3) EPC prohibits an extension of the scope of protection by amendment after grant. In addition, Rule 80 EPC limits the types of amendments that can be done during opposition proceedings before the European Patent Office (EPO), and Rule 139 EPC relates to the correction of errors in documents filed with the EPO.

Under the European Patent Convention (EPC), European patents shall be granted for inventions which inter alia involve an inventive step. The central legal provision explaining what this means, i.e. the central legal provision relating to the inventive step under the EPC, is Article 56 EPC. That is, an invention, having regard to the state of the art, must not be obvious to a person skilled in the art. The Boards of Appeal of the European Patent Office (EPO) have developed an approach, called the "problem-and-solution approach", to assess whether an invention involves an inventive step.

Under case number G 3/08, the Enlarged Board of Appeal of the EPO issued on May 12, 2010 an opinion in response to questions referred to it by the President of the European Patent Office (EPO), Alison Brimelow, on October 22, 2008. The questions subject of the referral related to the patentability of programs for computers under the European Patent Convention (EPC) and were, according to the President of the EPO, of fundamental importance as they related to the definition of "the limits of patentability in the field of computing." In a 55-page long opinion, the Enlarged Board of Appeal considered the referral to be inadmissible because no divergent decisions had been identified in the referral.

Under the European Patent Convention (EPC), a petition for review is a request to the Enlarged Board of Appeal of the European Patent Office (EPO) to review a decision of a board of appeal. The procedure was introduced in Article 112a EPC when the EPC was revised in 2000, to form the so-called "EPC 2000". A petition for review can essentially only be based on a fundamental procedural defect. Its purpose is not to obtain a reconsideration of the application of substantive law, such as points relating to patentability. The petition is a restricted form of judicial review, limited to examining serious errors of procedure which might have been committed by the Legal or Technical Boards of Appeal, prejudicing the right to a fair hearing of one or more appellants. Before the entry into force of the EPC 2000 in December 2007, it was not possible for a party who did not have his requests granted in an appeal to challenge the final decision of the Legal or Technical Board of Appeal on any grounds.

Art. 23 1/15, Art. 23 2/15 and Art. 23 1/16 are three related cases decided by the Enlarged Board of Appeal of the European Patent Office concerning the removal from office of Patrick Corcoran, a member of the Boards of Appeal, who had been previously suspended by the Administrative Council of the European Patent Organisation. According to Article 23(1) EPC, members of the Boards of Appeal may only be removed from office by the Administrative Council on a proposal from the Enlarged Board of Appeal. Two cases were successively initiated by the Administrative Council, but the Enlarged Board eventually dismissed both of them. In the third case initiated by the Administrative Council, the Enlarged Board decided not to propose the removal from office of Corcoran.

G 2/19 is a decision issued by the Enlarged Board of Appeal of the European Patent Office (EPO) on 16 July 2019, which deals with three legal questions, the third relating to whether oral proceedings before the EPO Boards of Appeal may be held in Haar in the Munich district rather than in Munich per se, when a party objects to the oral proceedings being held in Haar. In July 2019, the Enlarged Board of Appeal decided that oral proceedings before the Boards of Appeal may be held in Haar without infringing Article 113(1) EPC and Article 116(1) EPC.

G 1/21 is a decision issued on 16 July 2021 by the Enlarged Board of Appeal of the European Patent Office (EPO) regarding the legality of holding oral proceedings at the EPO by videoconference without the consent of the parties. Namely, the Enlarged Board of Appeal held that "[d]uring a general emergency impairing the parties' possibilities to attend in-person oral proceedings at the EPO premises, the conduct of oral proceedings before the boards of appeal in the form of a videoconference is compatible with the EPC even if not all of the parties to the proceedings have given their consent to the conduct of oral proceedings in the form of a videoconference." The reasoning in the written decision further indicates that, if a party so requests, oral proceedings must be held in person at the EPO premises, except in absolutely exceptional cases.

G 1/12 is a decision issued on 30 April 2014 by the Enlarged Board of Appeal of the European Patent Office (EPO), holding that an appellant's identity in a notice of appeal can be corrected under Rule 101(2) EPC, provided the requirements of Rule 101(1) EPC are met. The Enlarged Board of Appeal also held that an appellant's identity can be corrected under Rule 139 EPC, first sentence, under the conditions established by the case law of the Boards of Appeal.

G 4/95 is a decision issued on 19 February 1996 by the Enlarged Board of Appeal of the European Patent Office (EPO). The decision deals with oral submissions by an accompanying person in opposition or opposition appeal proceedings, and more specifically the extent and the circumstances under which an accompanying person or similar may add to the authorized representative's submissions during oral proceedings. The Enlarged Board of Appeal held that an accompanying person may be allowed to make oral submissions in relation to either legal or technical issues provided that the authorized representative maintains overall control at all times and "under the overall discretionary control of the EPO".

References

  1. 1 2 3 Julian Cockbain, Petitions for review of European Patent Office (EPO) Appeal Board decisions by the EPO Enlarged Board of Appeal, Journal of Intellectual Property Law & Practice (2009) 4 (12): 876-892. doi : 10.1093/jiplp/jpp168.
  2. ↑ "Frequently asked questions about the revised European Patent Convention (EPC 2000)". European Patent Office. question 14. Archived from the original on 14 October 2009. Retrieved 1 January 2018.
  3. ↑ Basic proposal for the revision of the EPC, MR/2/00
  4. ↑ "G 0001/97 (Request with a view to revision) of 10.12.1999". December 10, 1999. Retrieved 2020-03-15.
  5. ↑ "R 0007/09 () of 22.7.2009". European Patent Office. Retrieved 29 July 2018.
  6. ↑ "T 0027/07 () of 20.2.2009". European Patent Office. Retrieved 29 July 2018.
  7. ↑ "Europäisches Patentübereinkommen – Erster erfolgreicher Antrag auf Überprüfung gemäß Art. 112a EPÜ" [European Patent Convention - First successful petition for review under Art. 112a EPC]. GRUR Int : 875. 2009.
  8. ↑ "R 0003/10 (Right to be heard in oral proceedings/SALMON BRANDS AS) of 29.9.2011". European Patent Office. Retrieved 29 July 2018.
  9. ↑ R 3/10, reasons 2.1.
  10. ↑ Legal Research Service for the Boards of Appeal, European Patent Office, Case Law of the Boards of Appeal of the EPO (9th edition, July 2019), v.b.4.3.19 : "Successful petitions under Article 112a(2)(c) EPC"
  11. ↑ R 3/10, reasons 2.16.
  12. ↑ "R 0002/14 (Fundamental violation of the right to be heard) of 22.4.2016". European Patent Office. Retrieved 29 July 2018.
  13. ↑ "T 1627/09 (Desaturases/WASHINGTON) of 10.10.2013". European Patent Office. Retrieved 29 July 2018.
This page is based on this Wikipedia article
Text is available under the CC BY-SA 4.0 license; additional terms may apply.
Images, videos and audio are available under their respective licenses.