SONN Patentanwälte – IP Attorneys

  1. 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...

  2. On the obviousness of non-technical features

    According to the Comvik approach, the non-technical features of a claim may be incorporated into a goal to be achieved in a non-technical field. Subsequently, the approach invokes what might be described as the legal fiction that this goal, including the claimed non-technical...

  3. 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...

  4. Starting point for assessing inventive step

    A disclosure within a prior art document can only be considered to represent a suitable starting point for assessing inventive step if the skilled person would have realistically started from it. An important consideration in this assessment generally is whether this disclosure aims at the same or...

  5. Referrals to the Enlarged Board of Appeal

    If for acknowledgement of inventive step the patent proprietor relies on a technical effect and has submitted evidence, such as experimental data, to prove such an effect, this evidence not having been public before the filing date of the patent in suit and having been filed after that date (“post-published...

  6. No legal primacy of the clean version of documents

    There is no provision in the EPC establishing any legal primacy of the clean version of a document over the annotated version. In the event of discrepancies between the two versions, it is therefore not a priori clear which version is to be binding (EPO BoA 11 November 2020, T...

  7. Patent claims are allowed to be speculative to a certain extent

    Claims in patent applications typically involve generalisations which inherently include an aspect of speculation. Patent applications in the field of medicine represent in this respect no exception. The approaches developed in the jurisprudence of the Boards of Appeal of the EPO for the assessment...

  8. 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...

  10. Change of scenery

    With the decision 133 R 99/19k of the Higher Regional Court of Vienna dated January 21, 2020, the first instance revocation of the patent E 303 802 (Austrian part of EP 1 439 829 B1) was confirmed. In short, the proceedings concerned inventive step and the question of whether the use of a galenic...
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