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No more 10 days :(


Overview of notification and time-limit calculation rules before and after 1 November 2023


Application of the transitional provision

Today, amended Rules 126(2)/127(2)/131(2) EPC entered into force, abandoning the 10-day legal fiction for deemed notification as applicable for time limits triggered by a notification, and replacing it by the date of dispatch and a compensation for late receipt (similar as in PCT Rule 80.6).

See:

G 1/22 and G 2/22 decided - Competence of EPO to assess whether a party is entitled to priority & possible implicit agreement of a transfer of priority

Yesterday, a Press Communiqué was published as the Enlarged Board had issued its decision in consolidated cases G 1/22 and G 2/22 and the decision became available in the register, and today on the Recent Decisions page.  The Enlarged Board concluded, in the order, that:

"I. The European Patent Office is competent to assess whether a party is entitled to claim priority under Article 87(1) EPC. There is a rebuttable presumption under the autonomous law of the EPC that the applicant claiming priority in accordance with Article 88(1) EPC and the corresponding Implementing Regulations is entitled to claim priority." 
"II. The rebuttable presumption also applies in situations where the European patent application derives from a PCT application and/or where the priority applicant(s) are not identical with the subsequent applicant(s). In a situation where a PCT application is jointly filed by parties A and B, (i) designating party A for one or more designated States and party B for one or more other designated States, and (ii) claiming priority from an earlier patent application designating party A as the applicant, the joint filing implies an agreement between parties A and B allowing party B to rely on the priority, unless there are substantial factual indications to the contrary."

New referral to the Enlarged Board by T 0438/19 - is product on the market prior art if undue burden to analyse composition? (G 1/13)

 T 0438/19 of 27-06-2023 referred the following questions to the Enlarged Board of Appeal for decision:

1. Is a product put on the market before the date of filing of a European patent application to be excluded from the state of the art within the meaning of Article 54(2) EPC for the sole reason that its composition or internal structure could not be analysed and reproduced without undue burden by the skilled person before that date?

2. If the answer to question 1 is no, is technical information about said product which was made available to the public before the filing date (e.g. by publication of technical brochure, non-patent or patent literature) state of the art within the meaning of Article 54(2) EPC, irrespective of whether the composition or internal structure of the product could be analysed and reproduced without undue burden by the skilled person before that date?

3. If the answer to question 1 is yes or the answer to question 2 is no, which criteria are to be applied in order to determine whether or not the composition or internal structure of the product could be analysed and reproduced without undue burden within the meaning of opinion G 1/92? In particular, is it required that the composition and internal structure of the product be fully analysable and identically reproducible?

The decision discusses alleged conflicting or at least diverging application of G 1/92, as well as G 1/92 itself, in detail. The reasons from the decision are cited below (no changes made except for highlighting in color).

The referral is pending under G 1/23 "solar cell".

T 2432/19 - Right to oral proceedings in form of a videoconference (no)

In the present opposition appeal case, the Board issued a summons to oral proceedings in Haar. The appellant (patent proprietor) requested that the oral proceedings be held by videoconference. No reasons were given for this request. The Board then issued a communication containing its provisional opinion. The parties were also informed that if the Board found it appropriate to do so, the oral proceedings might be held by videoconference. The parties were also asked to inform the Board if they wished to invoke any reasons against holding the oral proceedings by videoconference, for the case that the Board decided to use that format. The appellant repeated its request for oral proceedings by videoconference and stated that it knew of no reason why the oral proceedings could not be held by videoconference. The respondent invoked no reasons against holding oral proceedings by videoconference, but requested that the Board inform the parties as soon as possible if it decided to hold the oral proceedings by videoconference. Oral proceedings took place on the 25 April 2023 in person at the premises of the EPO in Haar. The Board argued that: 1. although the order of G 1/21 refers to an emergency situation, it follows from the ratio decidendi of this decision that in-person oral proceedings can only be denied under very limited conditions, even in a situation of general emergency such as a pandemic; 2. due to the fact that videoconferences, at least with current technology, can only provide a suboptimal form of communication, parties have a right to the optimum format for oral proceedings, i.e. in-person oral proceedings, that can only be denied under very limited conditions; and 3. e contrario it also follows from the reasons underlying the Enlarged Board's decision, that parties cannot force Boards to conduct videoconferences instead of in-person oral proceedings.

BREAKING NEWS: G 2/21 decision is out - Plausibility

Today, the Boards of Appeal have published the News message shown below (no changes made, except emphasis added):

Press Communiqué of 23 March 2023 on decision G 2/21 of the Enlarged Board of Appeal

23 March 2023

Background

The Enlarged Board of Appeal is the highest judicial authority under the European Patent Convention (EPC). Its main task is to ensure the uniform application of the EPC.

Technical Board of Appeal 3.3.02 referred questions on the principle of free evaluation of evidence and the notion of "plausibility" in the context of inventive step to the Enlarged Board of Appeal. With regard to the latter, the referring board identified three different lines of case law (see interlocutory decision T 116/18, Reasons 13.4-13.6).

T 2303/19 - In person oral proceedings are for now (no Covid-19 related travel restrictions) the optimum format as expressed in decision G 1/21


In the present opposition appeal case, the parties were summoned to attend oral proceedings at the EPO premises. The appellant requested that the oral proceedings take place by videoconference. The respondent did not consent to this request and suggested a mixed mode format. The Board decided to hold the oral proceedings in person, as at the relevant time there were no Covid-19 related travel restrictions which would impair the parties' possibilities to attend in person oral proceedings at the EPO premises, and that in person oral proceedings are for now the optimum format as expressed in decision G 1/21 (see here).

T 2194/19 - The "invention" is not necessarily and always to be equated with the "invention claimed", not required that all described "embodiments" must fall within the scope of the amended independent claims

In the present case, the examining division regarded several  paragraphs of the description to be at odds with independent claim 1, as amended.  The examining division equated the term "embodiment" with subject-matter that has to fall "within the scope of the invention as defined by the claims", and concluded that the description so adapted was not in conformity with the independent claims, contrary to Rule 42(1)(c) EPC, because the term "embodiment" was used in parts of the description that describe subject-matter that was not part of the subject-matter of these independent claims. Moreover, the examining division held that the "invention" must always be the "invention claimed" and the "invention" was defined by the independent claimws. The Board did not agree and held:
1) the EPC does not define that “the "invention" is necessarily and always to be equated with the "invention claimed"”, 
2) concluding from Art. 84 EPC that "embodiments" of the description of a patent application have to be within the scope of the (independent) claim cannot be derived from the EPC and can also also not be derived from the jurisprudence of the Boards of Appeal, and 
3) in particular Rule 42(1)(c) EPC cannot be the legal basis for establishing such a general and broad requirement for an adaptation of the description to the claims. It is simply not what this provision says.”
Herein, the Board deviates from the strict practice that the first instance nowadays applies as well as from Guidelines (2022) F-IV, 4.3. The Board does however not address the Guidelines, although that could have been expected in view of Art. 20(2) RPBA2020. Also, the Board hardly addresses the case law that the EPO considers to support the “delete all non-covered embodiments" approach that is used by the drafters of the Guidelines, and as a consequences do not discuss whether a referral to the Enlarged Board would be necessary acc Art. 20(1) RPBA2020. Note that the Board also does not mention T 1989/18 of 16.12.2021 that concluded that, as a general rule, not is not required to bring the description in line with (amended) claims intended for grant.