10 Points from EPO Case Law in 2013

These cases were mentioned at a CIPA event on 27 November 2013.

1.  There are presently 5 pending referrals to the Enlarged Board: G1/11 (jurisdiction of the Legal and Technical Boards of Appeal), G1/12 (Correction of Appellant name), G2/12 (plant breeding (Tomatoes II)), G1/13 (party status) and G2/13 (plant breeding (Broccoli II)). No G decisions issued in 2013.  The number of Petitions for Review continued to decrease following a peak in 2010/11.

2.  There has been another successful Petition for Review by the Enlarged Board, R15/11.  The Petitioner argued that the clarity objection on which the appeal was decided had never been raised.  The Enlarged Board agreed that violation of the petitioner’s rights under Article 113(1) EPC had occurred as clarity had not previously been raised.

3.  There are pending referrals to the Enlarged Board on the tomato (G2/12) and broccoli (G2/13) cases. These concern whether Article 53(b) EPC excludes patentability for products which are the result of essentially biological processes (i.e. a breeding program).  Previous Enlarged Board decisions G2/07 and G1/08 had found the method claims relating to producing a broccoli or tomato by breeding were directed to an essentially biological process and thus not patentable subject matter.

4.  Interestingly, in T15/10 a claim to a method of selecting an avian by testing for a fishy taint in eggs (by a genetic test) and using the information for ‘breeding considerations’ was held to be patentable since the none of the claims was actually directed to a method of producing an avian, and so they could not cover an essentially biological process.

5.  In T1670/07 the Board decided that a method of planning shopping trips using a mobile device was not technical and in its reasoning referred to the ‘technical leakage fallacy’, ‘the broken technical chain fallacy’ and the ‘nontechnical prejudice fallacy’.

6.   In T2619/11 the Board took a lenient view of added matter saying that the application is directed to a technical audience rather than a philologist or logician.

7.  T1961/09 concerned intervention proceedings where intervention happened just before Oral Proceedings in Appeal.  That can sometimes cause the case to go back to first instance to deal with new objections from the intervener. In this case the Oral Proceedings went ahead, but the intervener agreed not to make submissions on novelty and to withdraw the clarity objection.  This was tactically correct as the patent was revoked. [This item was corrected after the original posting]

8.  In T1799/08 the Board had to decide how to deal with evidence from the Patentee which was not contested by the Opponent that did not appear at the Oral Proceedings.  The Board decided it was not its job to substitute for the Opponent and the patent was found valid in amended form.

9.  In T1351/10 the Patentee had not maintained the original claim 1 as a request at first instance in Opposition.  The Board did not allow it to be introduced into the Appeal proceedings.  This was not helped by the fact that the original claim 1 was only filed as a request a month before the Appeal Oral Proceedings.

10.  Similarly in T2075/11 the patentee amended the Main Request to narrow claim 1.  That was rejected at first instance, and the Board refused to allow the claims as granted to be introduced into the Appeal proceedings as a request, as the Patentee’s own actions had led to the claims as granted not being part of the first instance decision that was being appealed.

You may also wish to see related articles Top 10 Tips for Success in the EPO Appeals on Biotech Cases and Tips for Opposition Success.