SONN Patentanwälte – IP Attorneys

Discretion of the opposition division in selecting the closest prior art

It is not possible to determine in general terms how many starting points an opposition division must take into account when examining inventive step as the fictitious closest prior art in the "problem-solution approach". The answer to this question depends on circumstances of the individual case, in...

Burden of proof when claiming priority

If, during the application or opposition proceedings, the applicant or patent proprietor introduced some differences regarding the definition of a certain chemical compound in a claim with respect to the definition in the priority application, and, despite these differences, asserts that the priority...

"Gold standard" in novelty testing of a subfield selected from a larger field is sufficient

The practice so far according to which a sub-range selected from a larger numerical range of the prior art is considered to be novel if (a) the selected sub-range is narrow compared to the known range and (b) the selected sub-range has a sufficient distance from specific examples disclosed in the prior...

Patients in clinical trial are not members of the public

The clinical trials were carried out in accordance with the EMEA Guidelines for Good Clinical Practice. These guidelines explicitly require adherence to the prescribed protocol and assurance of drug accountability. This implies that the patients who decided to participate in the trials agreed, following...

Pending requests must be decided on

The refusal of a Board of Appeal to decide on a pending request is a fundamental procedural defect within the meaning of Art 112a(2)(d) EPC. In such a case, the decision of the Board of Appeal is to be set aside and the case is to be remitted to the Board of Appeal (EPO-EBoA 22/11/2022, R 3/22).

On the adaptation of the description to the claims

The requirement that the claims are to be supported by the description does not necessarily mean that all the "embodiments" of the description of a patent application have to be covered by the (independent) claims, i.e. that all the embodiments must fall within the scope of those claims (EPO Board of...

Negatively defined claim features need to be interpreted narrowly when examining novelty

When examining novelty, the normal rule of claim interpretation of reading a feature specified in a claim in its broadest technically meaningful sense corresponds to determining the broadest scope encompassed by the subject-matter being claimed according to a technically sensible reading. In the case...

Also the deletion of a claim constitutes an amendment

The principle according to which any amendments to a party’s appeal case made after notification of a summons to oral proceedings shall not be taken into account (unless the party concerned has shown valid reasons that there are exceptional circumstances) also applies to the mere deletion of a claim...

Examination of the admissibility of the objection may be subject to the prohibition of reformatio in peius

If the opponent is the sole appellant against an interlocutory decision maintaining a patent in amended form, an objection of the patent proprietor (as respondent) related to the inadmissibility of the opposition is subject to the principle of the prohibition of reformatio in peius. In such a procedural...

Is the underside of a bicycle saddle visible during normal use?

Component parts of complex products are also amenable to design protection, provided that they are visible during normal use (in German, the expression “intended use” is used) and the visible features meet the requirements of novelty and individual character. In some cases, however, it may be unclear...