SONN Patentanwälte – IP Attorneys

UPC decision: Contents of the statement of claim of an infringement action

Rule 13 of the Rules of Procedure of the Unified Patent Court: Upon filing the statement of claim, no annexes were submitted. Instead, the statement of claim contains references indicating the intention to submit annexes as soon as electronic delivery to the defendant is possible....

Discretion of the opposition division in selecting the closest prior art

It is not possible to determine in general terms how many starting points an opposition division must take into account when examining inventive step as the fictitious closest prior art in the "problem-solution approach". The answer to this question depends on circumstances...

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...

Decisions need to be reasoned

The requirement in R 111 (2) EPC of a decision being reasoned is not met if the decision merely contains statements that at best give rise to speculation about what the deciding body might have intended to express. Such a decision constitutes a substantial violation of the right to be heard and must...

Oral proceedings by videoconference without consent of all parties

During a general emergency (here: COVID-19 pandemic) impairing the parties' possibilities to attend in-person oral proceedings at the EPO premises, the conduct of oral proceedings before the Board of Appeal in the form of a videoconference is compatible with the EPC even if not all of the parties...

Infringement of the right to be heard by the threat of refusal

A statement such as "the next procedural step will be the summons to oral proceedings during which the application will be refused" made before a final decision to refuse a patent application may infringe a party’s right to be heard and thus may lead to a substantial procedural violation (EPO...

EPO case law: Infringement of the right to be heard

The text on the basis of which the application is granted or the patent is maintained in a decision or an interlocutory decision must be the one submitted or approved by the applicant or patent proprietor within the meaning of Article 113(2) EPC. Even if the applicant or patent proprietor has...