sixth edition of the Case Law of the Boards of Appeal

1129 Pages·2010·7.73 MB·English

Case Law
of the Boards of Appeal
of the European Patent
Office
Sixth Edition
July 2010
edited by:

Legal Research Service
for the Boards of Appeal

Department 3.0.30
European Patent Office

Munich
Headquarters
80298 Munich
GERMANY
Tel. [phone]

The Hague
Postbus 5818
2280 HV Rijswijk
NETHERLANDS
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Berlin
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GERMANY
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Published by:
European Patent Office
Directorate-General 3 (Appeals) Vienna
Directorate 3.0 Postfach 90
Legal Research and Administration 1031 Vienna
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Printed by:
Druckerei Ferdinand Berger & Söhne
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Printed in Austria
© 2010 European Patent Office
ISBN 798-3-89605-101-6 www.epo.org
Foreword
Foreword to the sixth edition
Foreword
Over more than thirty years, the Boards of Appeal of the European Patent Office have
developed a substantial body of case law on the European Patent Convention. Since the
first decision handed down in March 1979, the Boards of Appeal have settled more than
28 000 cases. In addition more than 90 decisions or opinions of the Enlarged Board of
Appeal have clarified legal points of fundamental importance in order to ensure uniform
application of the law.
The sixth edition of the "Case Law of the Boards of Appeal of the European Patent
Office" incorporates decisions written by the end of 2009. It also takes account of a
number of important decisions issued in the first two months of 2010. The book follows
the same general pattern as in the previous editions, dividing the case law into topics
and illustrating each by short summaries of selected decisions. The chapters have been
fully revised and updated in the light of the EPC 2000 revision.
The purpose of this book is to help users of the European patent system identify the
decisions they need. No summary, however careful, can replace study of the actual
decision. All of the decisions handed down since 1979 can be consulted in full and free
of charge on the EPO website (www.epo.org). They can be accessed via the reference
number or via search terms. They are also available on the "ESPACE Legal" DVD, which
is published twice a year.
I wish to take this opportunity to thank the members of our Legal Research department,
who, with great commitment, have undertaken a revision of the text, harmonised and
updated the comprehensive index and table of cases in the three official languages. My
thanks also go to the EPO Language Service, without whose co-operation and hard work
simultaneous publication in the three official languages would not have been possible.
Lastly, I wish to thank all the other EPO staff who have helped produce the present
publication.
This latest report on the case law of the EPO boards of appeal will provide useful and
comprehensive information for everyone concerned with European patent law. Readers
are also referred to the annual "Board of Appeal Case Law" Special Editions to the EPO
Official Journal.
I am certain that all those who read the report will find it very useful.

Peter Messerli
Chairman of the Enlarged Board of Appeal
Vice-President Directorate-General 3
III

Table of contents
TABLE OF CONTENTS
I. PATENTABILITY 1
A. Patentable inventions 1
B. Exceptions to patentability 36
C. Novelty 63
D. Inventive step 162
E. The requirement of industrial applicability under Article 57 EPC 223
II. CONDITIONS TO BE MET BY AN APPLICATION 229
A. Sufficiency of disclosure 229
B. Claims 251
C. Unity of invention 292
III. AMENDMENTS 315
A. Article 123(2) EPC 315
B. Article 123(3) EPC 355
C. Relationship between Article 123(2) and Article 123(3) EPC 366
D. Rule 139 EPC 369
E. Standard of proof for allowing amendments and corrections 373
IV. DIVISIONAL APPLICATIONS 375
V. PRIORITY 397
A. Applications giving rise to a right of priority - General issues 397
B. Identity of invention 400
C. First application 417
D. Partial and multiple priorities 420
VI. RULES COMMON TO ALL PROCEEDINGS BEFORE THE EPO 425
A. The principle of the protection of legitimate expectations 425
B. Right to be heard 438
C. Oral proceedings 453
D. Time limits, further processing and interruption of proceedings 478
E. Re-establishment of rights 490
F. Rules relating to Fees 533
G. Procedural steps 537
H. Law of evidence 544
I. Representation 571
J. Decisions of EPO departments 590
K. Other procedural questions 625
V
Table of contents
L. Interpretation of the EPC 638
M. Right to a European patent 643
VII. PROCEEDINGS BEFORE THE EPO 645
A. Preliminary and formalities examination 645
B. Examination procedure 658
C. Special features of opposition and appeal proceedings 700
D. Opposition procedure 763
E. Appeal procedure 821
VIII. PROCEEDINGS BEFORE THE DISCIPLINARY BOARD OF APPEAL 931
IX. THE EPO ACTING AS A PCT AUTHORITY 945
A. Competence of the boards of appeal in protest proceedings under the
PCT 945
B. The EPO as designated or elected Office 946
X. INSTITUTIONAL MATTERS 951

VI
Table of contents
DETAILED TABLE OF CONTENTS
FOREWORD TO THE SIXTH EDITION III
READER'S GUIDE XXXV
1. Abbreviations XXXV
2. Citations XXXVI
3. Case numbers XXXVI
HEADNOTE OF OPINION G 3/08 XXXVII
I. PATENTABILITY 1
A. Patentable inventions 1
1. Patent protection for technical inventions 1
1.1. Technical character of an invention 1
1.2. Separate and independent patentability requirements 3
1.3. Absolute and relative patentability requirements 3
1.4. Examination of subject-matter or activities under Article 52 EPC 4
1.4.1 Examination independent of the contribution of the invention 4
1.4.2 Technical considerations 5
1.5. Inventions with technical and non-technical subject-matter 8
1.6. Assessment of the invention as a whole 9
2. Non-inventions under Article 52(2) and (3) EPC 10
2.1. Introduction 10
2.2. Discoveries, scientific theories and mathematical methods 12
2.2.1 Discoveries and scientific theories 12
2.2.2 Mathematical methods 13
2.3. Aesthetic creations 15
2.4. Computer-implemented inventions 16
2.4.1 General issues 16
2.4.2 Exclusion of computer programs "as such" 18
2.4.3 Claims for a computer program product 18
2.4.4 Technical character and programs for computers 20
2.4.5 Programming a computer 23
2.4.6 Control and operating programs 24
2.5. Schemes, rules and methods for performing mental acts, playing games
or doing business 25
2.5.1 Methods for doing business 25
2.5.2 Methods for performing mental acts 28
2.5.3 Word-processing 30
VII
Table of contents
2.6. Presentation of information 33
B. Exceptions to patentability 36
1. Introduction 36
2. Breaches of "ordre public" or morality 37
3. Patentability of biological inventions 42
3.1. Plants and plant varieties 42
3.2. Animals and animal species 44
3.3. Essentially biological processes 45
3.4. Microbiological processes and the products thereof 48
4. Medical methods 49
4.1. Introduction 49
4.2. Methods for treatment by surgery or therapy and diagnostic methods 51
4.2.1 General approach 51
4.2.2 Involvement of practitioner 51
4.3. Surgical methods - G 1/07 51
4.3.1 Towards a new concept of "treatment by surgery" 51
4.3.2 One surgical step in a multi-step method 52
4.3.3 Treatment by surgery not limited to surgery for a therapeutic purpose 53
4.3.4 Avoiding the exclusion of methods of treatment by surgery from patent
protection under Article 53(c) EPC 54
4.3.5 Data obtained during surgery 55
4.4. Therapeutic methods 55
4.4.1 Meaning of "therapy" 55
4.4.2 Methods with both therapeutic and non-therapeutic indications 57
4.5. Diagnostic methods - G 1/04 60
4.5.1 What constitutes "diagnostic methods" 60
4.5.2 Involvement of practitioner 61
4.5.3 The criterion "practised on the human or animal body" 61
4.5.4 Clarity of a claim relating to diagnostic methods 62
4.5.5 Scope of the exclusion 62
4.5.6 Intermediate findings of diagnostic relevance 63
4.6. Case law applying the principles developed in G 1/04 63
C. Novelty 63
1. Defining the state of the art 64
1.1. Relevant point in time 64
1.2. European prior rights 65
1.3. PCT applications as state of the art 65
1.4. In-house knowledge not published before the priority date 66
1.5. Definition of "common general knowledge" 66
1.6. Excluded national prior rights 68
1.7. Article 55 EPC 68
1.8. Availability to the public 69
1.8.1 Publication 70
VIII
Table of contents
1.8.2 Brochures 72
1.8.3 Lectures 73
1.8.4 Abstracts of documents 73
1.8.5 Repetition of oral disclosures 74
1.8.6 Prior use 74
1.8.7 Biological material 75
1.8.8 The concept of "the public" 75
1.8.9 Obligation to maintain secrecy 77
1.9. Issues of proof 86
1.9.1 Nature of the evidence 86
1.9.2 Burden of proof 86
1.9.3 Standard of proof 88
1.9.4 Information retrieved from the internet: proof of the date of availability 91
1.9.5 Obligation of the EPO to examine of its own motion 92
2. Determining the content of the relevant prior art 92
2.1. General rules of interpretation 93
2.2. Combinations within a prior art document 96
2.3. Taking implicit features into account 97
2.4. Taking intrinsic features into account 99
2.5. Taking equivalents into account 99
2.6. Taking drawings into account 100
2.7. Taking examples into account 101
2.8. Assessment of prior use 102
2.9. Broad claims 105
2.10. Deficiencies and mistakes in a disclosure 105
2.11. Accidental disclosure 106
2.12. Reproducibility of the content of the disclosure 107
3. Ascertaining differences 109
3.1. Comparing each individual item from the prior art 109
3.2. Distinguishing features 111
3.2.1 Difference in wording 111
3.2.2 Differences in values 112
3.2.3 Difference in composition 113
3.2.4 Inevitably obtained products 114
3.2.5 Functional features 114
3.2.6 Generic disclosure 115
3.2.7 Product claim with process features 116
3.2.8 Distinguishing features which are non-technical or involve no technical
features 116
4. Chemical inventions and selection inventions 117
4.1. Novelty of chemical compounds and groups of compounds 118
4.1.1 Anticipation of certain compounds 119
4.1.2 Novelty of groups of substances 122
4.1.3 Novelty of enantiomers 124
4.1.4 Achieving a higher degree of purity 125
4.2. Selection of parameter ranges 127
4.2.1 Selection from a broad range 127
IX
Table of contents
4.2.2 Overlapping ranges 129
4.2.3 Multiple selection 131
4.3. Subject-matter group 133
5. Novelty of use 133
5.1. First medical use 133
5.1.1 Introduction 133
5.1.2 Scope of a purpose-related product claim 134
5.1.3 Protection of a preparation in the form of a "kit-of-parts" 135
5.1.4 Further technical information as compared with the state of the art 136
5.2. Second (or further) medical use 136
5.2.1 Introduction 136
5.2.2 Formulation of claims under the EPC 1973 138
5.2.3 Formulation of claims under Article 54(5) EPC 141
5.2.4 Novelty of the therapeutic application 144
5.3. Second (or further) non-medical use 152
5.3.1 Novelty criteria for use claims and process claims containing a purpose
feature 152
5.3.2 Statement of purpose in non-medical use claims in view of Article 52(4)
EPC 1973 160
5.3.3 Novelty criteria for product claims with purpose characteristics 161
D. Inventive step 162
1. Introduction 162
2. Problem and solution approach 162
3. Closest prior art 163
3.1. Determination of closest prior art in general 163
3.2. Same purpose or effect 164
3.3. Similarity of the technical problem 165
3.4. Most promising springboard 166
3.5. Selection of most promising starting point 166
3.6. Improvement of a production process for a known product 168
3.7. Old prior art documents as closest prior art 168
4. Technical problem 170
4.1. Determination of the technical problem 170
4.2. Alleged advantages 170
4.3. Formulation of the technical problem 171
4.3.1 No pointers to the solution 171
4.3.2 Problem formulated in the patent application as starting point 171
4.3.3 Formulation of partial problems - lack of unity 172
4.4. Reformulation of the technical problem 172
4.5. Alternative solution to a known problem 175
4.6. Solving a technical problem - post-published documents 175
5. "Could-would approach" and ex post facto analysis 176
6. Expectation of success, especially in the field of genetic engineering and
biotechnology 177
7. Skilled person 180
X