2 Jan 2018

EPO case law 2017 highlights

What did 2017 bring us from the Boards? Some highlights.


  • G 1/16 about disclaimers:  for 'undisclosed' disclaimers the proper test is whether the criteria of G 1/03 are fulfilled, and for 'disclosed' disclaimers the proper test is the gold standard disclosure test of G 2/10. 
  • A successful petition for review, R 3/15.
  • T 1852/13 abolished the "essentiality"  test as decisive for Article 123(2) EPC compliance of amendments that remove features from a claim. The holding that the "essentiality test" can not overrule the "gold standard" test, was followed expressly  in T 0046/15 [2.8.1] and T 1472/15 [2.3] and T 2095/12, [2.7] (all three of Board 3.2.04). 
  • T 1138/12 wherein the Board did not admit a request to maintain the patent on the basis of any of the claims as granted that were considered allowable by the Board.
  • T 0577/11  and T 1201/14 about transfer of priority. T 0577/11: an assignment of priority must be valid at the date of filing the later application. A later succession in title is not sufficient. T 1201/14 adds that this is the case even if retroactive assignment is possible under national law. 
  • T 0488/16 (Dasatinib I) and T 0950/13 (Dasatinib II) about plausibility at the EPO. The Board held in Dasatinib I that it is "a conditio sine qua non" that it is shown that the technical problem underlying the invention was at least plausibly solved at the filing date. This requires technical evidence if the effect is "neither self-evident nor predictable or based on a conclusive theoretical concept". Dasatinib II is interesting in particular for the Board's dealing with plausibility of dependent claim 2. 
  • J 0012/16 about transfer of a patent application. "The mention of the grant should not be published during the period for filing an appeal against a rejection of a request for transfer of the application." For some reason, this post attracts a lot of traffic on this blog. 
  • T 0988/14 about the need for opponents to present inventive step attacks early, even if novelty is still to be decided on by the Board. "In particular, it is not justified to wait for the Board to come to a conclusion on novelty, [] for amending the Opponent's case."
  • T 1463/11 (CardinalCommerce) about the "notional business person"  under the Comvik approach to inventive step. 
  • T 2598/12 finding that there is no time bar to the requirement that a request filed during appeal proceedings must be properly substantiated. Unsubstantiated requests were likewise not admitted in T 2077/13, and T 1120/12.

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