Highlights EPO Case Law 2018

Highlights of the EPO Case Law 2018

Based on the online publication date (old decisions being republished or late published are not included).

• T 1063/18 concluding that new Rule 28(2) EPC (excluding plants exclusively obtained by means of an essentially biological process) is void under Art.164(2) EPC as being in conflict with Art. 53(b) EPC; however, the written decision was yet not published in 2018 (notice).
• T 1914/12 suggesting that the Boards do not have the power to hold late filed arguments inadmissible. However, whether this will change the Board's practice remains to be seen, in particular, because new attacks can also be treated as new evidence (T 0221/13) or as new facts (T 0392/16).
• T 1280/14 concluding that if there is a large number of divergent auxiliary requests, restricting to only a few of them can be an inadmissible change of a party's case. 
• On the plausibility front: a patent for a blockbuster medicine was revoked for lack of plausibility (T 1868/16; Everolimus), the same happened to a patent for a depression treatment medicine (T2571/12) and a patent application for an Alzheimer medicine (T 2500/12); though another patent for Alzheimer treatment survived a plausibility attack (T1255/11). A curiosity is T 1045/13 about plausibility for a patent application based on "single patient studies". 
• About expert opinions of former Board members on legal matters: these are not desired (T 0156/15): "if a Board were swayed on such a matter by the fact that submissions had been made by a former board member, however eminent that person might be, it would attach undue weight to the individual making the argument rather than focus on the argument itself".

• T 2101/12 about an automated business method and concluding that  Article 54(2) EPC does not exclude non-technical disclosures from the prior art (although it is not clear to me why the Board in T2101/12 did not simply apply the Comvik approach).
• T 0282/12 applying partial priority to the "first application" requirement. Of interest is also T 0969/14 concluding that a priority right can also be transferred in part for certain subject-matter only. 
• Of interest is also T 0239/16 where a clinical trial hand-out document killed the patent. The legal requirement of transparency and informed consent for clinical trials is rather difficult to reconcile with the absolute 'state of the art' for novelty and inventive step under the EPC.
• T 2057/12 about inventive step (or not) of transferring a teaching to a different technical field, and how to identify the closest prior art in such cases (a two-way test is proposed, both from the technical field of the claimed invention and from the different technical field of the prior art document).
• R 8/17 suggesting that the Board does not need to deal with all inventive step attacks presented by the Opponent in the written procedure if these attacks are not discussed during the oral proceedings.
• One successful petition for review, R 4/17, wherein the petitioner was respondent in appeal and there was no proof that it had received the EPO's notification of the Notice of appeal or Statement of grounds.