SONN Patentanwälte – IP Attorneys

  1. 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...

  2. 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...

  3. 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).

  4. Necessity of a timely response

    Under the Rules of Procedure of the Boards of Appeal (RPBA), which have been in force since January 1, 2020, it is the duty of the parties to present their submissions in the proceedings in such a timely manner that the Board of Appeal can already take them into account when drafting the summons....

  5. Prohibition of reformatio in peius (“change for the worse”) not applicable in case of partiality of a division

    The principle of the prohibition of reformatio in peius is not applicable where a case is to be remitted to a division in a new composition because of a suspicion of partiality (EPO Board of Appeal 1 April, 2022,

  6. Amendments of the description according to amended claims

    Statements in the description contradicting the plain claim wording may cast doubts as to the intended meaning of this. (Only) under such circumstances, an objection under Article 84 EPC has to be raised (EPO Board of Appeal 17 March, 2022,

  7. The patentability of computer simulations before the European Patent Office

    The computer simulation of physical processes has found its way into wide areas of the economy. The decision G 1/19 now clarified the question under which conditions such a simulation can be patented. An article...

  8. Prohibition of reformatio in peius in the case of undisclosed disclaimers

    The conditions of G 1/99 for permissible exceptions from the prohibition of reformatio in peius also apply if the impermissible amendment is an undisclosed disclaimer (EPO BoA 10 February 2021, T 2277/18).

  9. Common general knowledge may be introduced ex officio

    Not only in ex parte–, but also in inter partes appeal proceedings, a board is allowed to introduce new ex officio common general knowledge without evidence of such knowledge which prejudices maintenance of the patent, to the extent that the board is knowledgeable in the respective technical field...

  10. The principle of legitimate expectation also applies to extensions of time due to COVID-19

    If the European Patent Office issues a promise or statement on how to act in a given area (in this case: general extensions of time limits due to the COVID 19 pandemic), the principle of legitimate expectations requires that promise or statement to be honoured unless there is good reason not to do...

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