5 Recent Interesting Decisions of the EPO Boards of Appeal

The following recent decisions caught our eye as being interesting or illustrating policy points at the EPO.

1. T1142/12 concerns denial of the applicant’s request by the Examining Division to have oral proceedings in Munich rather than in The Hague. The Board found that this was not part of the Examining Division’s decision and could therefore not be subject to appeal, and nor could it be referred to the Enlarged Board. The outcome is as expected and is a reminder that what is appealable is tied to whether the issue is, or can be, the subject of a decision  

2. T2599/11 concerns whether the patent proprietor can file a broader request in appeal than was decided upon by the Opposition. The Board decided that in this case the broader request could be filed. The fact that such an outcome is possible shows there is some flexibility in the Boards’ increasingly strict approach on accepting claim requests.

3. T67/11 concerns inventive step of a new antibody. The applicant limited the claims to antibodies with specific sequence changes. These were found to be inventive because the skilled person would not know which changes in sequence would be disruptive and which would be beneficial. Unpredictability can be the basis of inventive step, but then it usually requires the claims to be narrow.

4. T1293/11 has some interesting comments on the language used to claim a transgenic plant. The Examining Division had not accepted ‘…transformed with vector X…wherein expression of X gives activity Y’, arguing that it covered transformation of non-functional sequences and also covered plants where the activity was gained by other means. However the Board disagreed and allowed the applicant’s definition of the transgenic plant.

5. In T1100/10 an appellant (rather ambitiously) challenged the Board’s actions in not accepting claim requests by arguing that the Rules of Procedure of the Boards of Appeal did not have legal basis because they had been drafted by the Presidium rather than the Administrative Council. However the Board did not accept the argument because they said it was sufficient that the Administrative Council had approved the Rules.

You may also wish to see related articles 10 Points on the Ethics and Morality of Patents in Europe and Top 10 Tips For Success In EPO Appeals on Biotech Cases.