SONN Patentanwälte – IP Attorneys

1. EPO: Uniform Claim Construction and the Limits of Using the Description

   In this decision, the Board of Appeal addresses the principles of uniform claim construction, drawing on the landmark decision G 1/24 of the Enlarged Board of Appeal of the European Patent Office. The description and drawings must be used to interpret the patent claims not only when assessing patentability...

2. State of the art, Inventive step, Enlarged Board of Appeal, Reproducibility and sufficiency of disclosure, EPC

   In this decision, the Board of Appeal addresses the implications of the landmark decision G 1/23 of the Enlarged Board of Appeal. The Enlarged Board's decision does not exclude the selection of a product that is commercially available but not reproducible by third parties as the closest state of...

3. EPA - Enlarged Board of Appeal: No continuation of the proceedings by an intervener following withdrawal of the appeal

   Following the withdrawal of all appeals, opposition appeal proceedings cannot be continued with a third party who has intervened in the proceedings under Art. 105 EPC as an alleged infringer. The intervener does not acquire the status of an appellant corresponding to that of a person entitled to...

4. Referral to the EPO Enlarged Board on the status of an intervener

   May an appeal proceed after all appeals have been withdrawn solely with a third party who has intervened in the appeal proceedings as an alleged infringer? In particular, can that intervener acquire the standing of an appellant, i.e. that of a person entitled to appeal within the meaning of Article...

5. Participation in a decision of the EBoA does not constitute grounds for exclusion

   Article 24(3) EPC: The fact that a member of the Enlarged Board of Appeal (EBoA) took part in an EBoA decision which was relevant for the present decision (and which ex lege may only address questions of law) does not constitute grounds for excluding that EBoA member from reviewing the present decision...

6. 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...

7. Exclusion and objection against members of the Enlarged Board of Appeal

   The fact that a judge has expressed an opinion on a legal issue that is to be decided upon in a case is not in itself and not always a ground for suspicion of partiality (see also G 3/08 and G 2/08). However, the direct involvement in the passage of legislation, which is closely relates to the referred...

8. Referral to the Enlarged Board of Appeal

   Is the conduct of oral proceedings in the form of a videoconference compatible with the right to oral proceedings as enshrined in Article 116(1) EPC if not all of the parties to the proceedings have given their consent to the conduct of oral proceedings in the form of a videoconference (EPA BoA 12...

9. Computer-implemented simulations are patentable under certain conditions

   In the context of assessing inventive step, a computer-implemented simulation of a technical system or process that is claimed as such can solve a technical problem by producing a technical effect going beyond the simulation’s implementation on a computer. For that assessment it is not a sufficient...