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EPO Boards of Appeal – Year in Review (Finnegan seminar)

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epologoIPcopy was fortunate enough to attend Finnegan’s Year in Review seminar at the Old Hall in Lincoln’s Inn. An overview of decisions of the EPO Boards of Appeal from the last year or so was provided during the seminar. The cases covered related to Admissibility, Partial Priorities, Added Matter and a couple of other slightly unusual cases.

Admissibility

The cases discussed on the issue of admissibility highlighted the importance of actually appealing the decision of the lower instance division. In this respect the reader is also encouraged to read our review of Christopher Rennie-Smith’s recent talk at Keltie which touched on the same subject.

In T2532/11 the patent had been revoked in front of the Opposition Division. The appeal made no reference to the decision under appeal and the appeal requests comprised further limiting amendments. The appeal was rejected as being inadmissible.

In T0935/12 the patent was revoked in Opposition on the basis of a feature from the dependent claims that had been added to claim 1. In appeal the feature of this dependent claim was deleted from claim 1 and new amendments were proposed. Again the Board of Appeal found the request inadmissible.

Priorities

The issue of toxic divisionals and toxic priorities has been around for a while. The seminar briefly touched on T0571/10 in which a divisional application had been held to not be entitled to priority because the subject matter of the claims had been broadened between the filing of the priority application and the subsequent (parent) EP patent application. The parent was then found to be toxic to the divisional application. On appeal, claim 1 was regarded as actually comprising two alternatives: the first part related to the priority disclosure and the second part to the remaining disclosure. Under this “construction” of the claim, the priority issue had no effect on the divisional application. More on this elegant way of carving up a claim can be found in this IPKat article.

Claim carving was not however on the menu in T0557/13 which on the face of it had a similar situation between the priority application and the subsequent EP patent applications. However, in this case the presence of divergent case law was highlighted and the case has been referred to the Enlarged Board of Appeal. No formal questions are available yet though the case file on the Register does highlight some possible referral questions.

Added Matter

In T0287/11 a limitation to claim 1 of the granted patent was actually held to constitute a broadening amendment. A further amendment to the limitation was required to bring the claim into conformity with Article 123(3) EPC.

Bit ‘n Pieces

A few other cases of interest were highlighted in this section of the Finnegan review including:

T2117/13 in which the appellant starting faxing their grounds of appeal a mere two minutes before the midnight deadline on the final day of the appeal period. The fax transmission did not complete until 00:16 (i.e. 16 minutes after the deadline). The lateness of the documents was regarded as “truly minimal” and the full grounds of appeal were held admissible.

T0280/11. What’s the largest number of requests you’ve ever filed at the EPO on a case? Five? Ten? More? Well, you’re almost certainly going to come up short in comparison to this case in which – wait for it – 685 requests were filed and considered, 454 of which were filed just three days before the hearing and a few more were actually submitted during the hearing! An attempt to file a further request late in the afternoon of the hearing was turned down however! Those EPO Examiners eh! So inflexible!

Mark Richardson March 2015


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