SONN Patentanwälte – IP Attorneys

  1. UPC Court of Appeal: Assessing sufficient disclosure

    Sufficiency of Disclosure under Art 138 Abs 1 lit i.c.w. Art 83 EPC has to be examined on the basis of the patent as a whole, thus on the basis of the claims, description and drawings, from the perspective of the skilled person with his common general knowledge at the filing or priority date. The...

  2. UPC Local Division: Second Medical Use - Validity

    To benefit from the deemed novelty under Article 54(5) EPC, claims for a second medical use must relate to a specific use in a method under Article 53(c) EPC. The only reason why such claims can be patentable lies in the novelty (and inventive step) of the new use. With regard to inventive step,...

  3. UPC Local Division: Inventive Step

    To assess whether an invention is to be considered obvious in view of the state of the art, the problem-solution approach developed by the EPO should be applied as a priority – as far as possible – in order to increase legal certainty and further align the case law of the UPC with that of the EPO...

  4. No inventive step where the embodiment is worsened

    The mere fact that the claimed subject-matter excludes a technical feature disclosed in the closest prior art as essential or advantageous for achieving a technical effect cannot in itself establish an inventive step. Where that exclusion is the sole difference from the closest prior art, it must...

  5. EPO-BoA: Technical contribution to the invention in the presence of measurement data

    The mere generation of additional data from data obtained by measurements performed on the human body does not (departing from Board of Appeal decision T 2681/16 and the Guidelines for Examination in the EPO) make a technical contribution to the invention (EPO Board of Appeal, 26 July 2024,

  6. 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...

  7. 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...

  8. 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...

  9. 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...

  10. 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...

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