SONN Patentanwälte – IP Attorneys

  1. EPO: Subject-matter not originally disclosed

    Marc Keschmann achieved a complete revocation of the patent in suit for our client before the EPO Opposition Division and was also successful in the appeal proceedings before the EPO Board of Appeal.

    The...

  2. EPO: Remittal to the opposition division ex officio

    The discretionary decision under Article 111(1) EPC to remit a case or not is to be taken ex officio, at any time during the appeal proceedings. It is not dependent on any request by a party. A request for remittal made by a party is therefore not subject to the provisions of Art 12 and 13 RPBA....

  3. EPO: Failure to achieve the technical effect at the edge of the scope of the claim non detrimental

    1. Where a single composition at the edge of the scope of the claim and whose ingredients are contained in amounts at the end-values of the claimed ranges, does not achieve a technical effect relevant for the assessment of inventive step, the inclusion of that non-working composition within the...

  4. EPO: Remittal for further examination of auxiliary requests not dealt with at first instance

    Pursuant to Article 111(1) EPC, the Board of Appeal either acts within the competence of the department which issued the decision or remits the case to the department of first instance for further decision. According to Article 11 of the Rules of Procedure of the Boards of Appeal (RPBA), a Board...

  5. No interpretation of claim features clear by themselves in the light of the description

    The principle of primacy of the claims seems to exclude the use of the description and drawings for limiting the claims in proceedings before the EPO (in contradiction to patent infringement proceedings before the UPC or national courts) if an interpretation of the claim in the light of common general...

  6. Late request for non-admission of means of evidence

    A request for non-admission of a particular document, which was first made at the oral proceedings before the Board of Appeal, may constitute an amendment of the submission, the admissibility of which must in turn be examined under Art 13 par 2 RPBA (EPO Board of Appeal 2 February, 2022,

  7. Opponent in appeal procedures not limited to matters raised by itself

    Art 12 Par 2 of the Rules of Procedure of the Boards of Appeal (RPBA) does not contain any restriction according to which each party may only refer in the appeal to those matters of the preliminary proceedings which it has itself "admissibly raised" there. Therefore, it appears legitimate to refer...

  8. On the obligation to substantiate an objection

    In order to substantiate an objection in the appeal proceedings which the Opposition Division did not consider convincing, it is necessary to provide specific reasons why the finding and the reasoning in the decision under appeal is supposedly incorrect with regard to this objection. As a rule, in...

  9. No inventive step in case of „broken technical chain“

    Improved patient compliance to a pharmaceutical formulation cannot be used to establish an overall technical effect if it is the result of a "broken technical chain", namely an alleged chain of technical effects starting with information provided to a patient which is then broken by the patient's...

  10. An artificial intelligence (AI) cannot be named as an inventor

    Only natural persons can be named as inventors in an application. (EPO Board of Appeal 21 December, 2021, J 8/20, Designation of inventor/DABUS).

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