G 0009/91 - Power to examine - #1

Citation rank: 1
No. of citations: 709

The most-cited decision of a Board of Appeal ever, G 9/91, is concerned with the question of whether Opposition Divisions and Appeal Boards have power to examine parts of the patent (i.e., claims), which were not attacked in the initial Notice of Opposition.

G 9/91 was decided by the Enlarged Board in consolidated proceedings with G 10/01. The latter decision looked at a related problem, namely at the question whether Opposition Divisions and Appeal Boards have power to examine Grounds of Opposition (Art. 100(a)-100(c) EPC), which where not raised by opponents within the 9 months opposition period (a brief summary of G 10/91 can be found here).

The claims underlying the referral in G 9/91 were directed to certain anhydride polymers, certain imide polymers, as well as to processes for preparing them. Only the claims relating to the anhydride polymers (not the ones to the imide polymers) were attacked by the opponent. Upon appeal, however, the opponent/appellant also raised objections against the originally non-attacked imide polymer claims. The patentee then offered to dispose of the appeal by deleting Claims 9-11 relating to anhydride polymers. He argued that the Board should not express any opinion on the unopposed Claims 1-8 relating to imide polymers, because this would entail an ex officio examination contrary to Art. 114(1) EPC as interpreted in case T 9/87.

Hence, the question whether an Opposition Division or an Appeal Board had the power to examine originally unopposed claims arose. This question was considered an important point of law within the meaning of Article 112(1)(a) EPC by the Technical Board. It thus referred the following questions to the Enlarged Board of Appeal (G 9/91):

1. Is the power of an Opposition Division or, by reason of Rule 66(1) EPC[1973], of a Board of Appeal to examine and decide on the maintenance of a European patent under Articles 101 and 102 EPC[1973] dependent upon the extent to which the patent is opposed in the notice of opposition pursuant to Rule 55(c) EPC[1973]?

2. If the answer to the first question should be affirmative, are there any exceptions to such dependence?

When approaching these questions, the Enlarged Board found it important to note that the opposition procedure under the EPC is a post-grant procedure.They stated:

"It is inherent in any post-grant opposition procedure that the patent office cannot take any action in respect of a granted patent, however clear it may have become after grant that the patent is invalid, unless initiated by an admissible opposition. If no opposition is filed, the patent can only be attacked in revocation proceedings before a national court. In other words: the competence of the patent office to deal with the patent depends on the action taken by the opponent." (point 3 of the reasons)

The Enlarged Board also took into account that it was a requirement for filing admissible oppositions, that the Notice of Opposition contains, i.a., a statement of the extent to which the European patent is opposed (R. 55(c) EPC1973, now R. 76(2)(c)). The Enlarged Board considered that Rule 55(c) only made sense if it was

"... interpreted as having the double function of governing (together with other provisions) the admissibility of the opposition and of establishing at the same time the legal and factual framework, within which the substantive examination of the opposition in principle shall be conducted." (point 6 of the reasons)

The Enlarged Board also considered the previous case law on the issue. They generally agreed with what was said in T 9/87. The requirements of R. 55(c) EPC1973 to specify the extent to which the patent is opposed within the opposition time limit would be pointless if later on other parts of the patent than those so opposed could freely be drawn into the proceedings (point 10 of the reasons). This would also be contrary to the basic concept of post-grant opposition under the EPC (ibid.).

The Enlarged Board concluded that question 1, above, had to be answered in the affirmative: An Opposition Division or Appeal Board cannot examine unopposed claims which were not attacked during the opposition period. With one exception, though: With reference to T 293/88, the Enlarged Board held that the subject-matter of a dependent claim may be examined as to patentability, if the dependent claim depends from an independent claim which falls in opposition or appeal, provided that the dependent claim's validity is prima facie in doubt on the basis of already available information. The Enlarged Board considered that such dependent subject-matters had to be considered as being implicitly covered by the statement under Rule 55(c) EPC1973.

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Headnote:

The power of an Opposition Division or a Board of Appeal to examine and decide on the maintenance of a European patent under Articles 101 and 102 EPC depends upon the extent to which the patent is opposed in the notice of opposition pursuant to Rule 55(c) EPC. However, subject-matters of claims depending on an independent claim, which falls in opposition or appeal proceedings, may be examined as to their patentability even if they have not been explicitly opposed, provided their validity is prima facie in doubt on the basis of already available information.

The full text of the decision can be accessed here.

Quotes from 10 decisions citing G 9/91 can be found here. 

G 0010/91 - Examination of opposition-appeals - #2

Citation rank: 2
No. of citations: 665

G 10/91 (in consolidated proceedings with G 9/01) is concerned with the character and nature of the opposition and opposition-appeal proceedings. Both G decisions defined powers of Opposition Divisions and Appeal Boards to examine the case. While G 9/91 was concerned with the question of which parts (i.e., which claims) of the contested patent may be examined, G 10/91 looked at the Grounds of Opposition, as provided in Art. 100(a)-(c) EPC, which may be considered by the Opposition Division or Board.

In the underlying case leading to the referral (T 580/89), only certain claims of the opposed patent were actually opposed (namely, under Art. 100(a) EPC). Other claims were not attacked. Also, no other Grounds of Opposition than Art. 100(a) was raised. Upon appeal, however, the opponent then also raised objections against the originally non-attacked claims. Furthermore, in the course of the appeal proceedings a third party filed observations under Art. 115 EPC, submitting that the subject-matter relating to all claims was not patentable due to lack of novelty and inventive step.

In this situation the the question arose whether the originally non-attacked claims may be examined by the Board, despite the fact that the original opposition did not concern these claims. The Board found that this the question was an important point of law within the meaning of Article 112(1)(a) EPC. It thus referred the following questions to the Enlarged Board of Appeal (reference number G 9/91):

1. Is the power of an Opposition Division or, by reason of Rule 66(1) EPC, of a Board of Appeal to examine and decide on the maintenance of a European patent under Articles 101 and 102 EPC dependent upon the extent to which the patent is opposed in the notice of opposition pursuant to Rule 55(c) EPC?

2. If the answer to the first question should be affirmative, are there any exceptions to such dependence?

At that stage, the President of the EPO, making use of his power under Article 112(1)(b) EPC, referred the following question to the Enlarged Board of Appeal (reference number G 10/91):

Is the Opposition Division in the examination of the opposition obliged to consider all the grounds for opposition referred to in Article 100 EPC or is this examination restricted to the grounds referred to by the opponent in his statement of grounds of opposition?

The Enlarged Board of Appeal considered that the questions referred by the Technical Board and by the President concerned related issues, and should therefore be treated in consolidated proceedings. Hence, the Facts and Submissions, as well as the Reasons for the Decision in G 9/91 and G 10/91 are the same. The orders of the respective decisions, however, relate to the specific questions referred to the Enlarged Board in the respective case.

In deciding case G 10/91, the Enlarged Board first noted that the questions referred to in G 9/91 and G 10/91 were, although related, in fact rather different: The question of which parts of the patent can be examined (G 9/91) concerned the formal competence of the Opposition Division/Appeal Boards to examine, whereas the question referred in G 10/91 related to the procedural principles applicable in the respective procedures (point 12 of the reasons).

Regarding the question which Grounds for Opposition may be examined (G 10/91), the case law was divergent. For example, in T 493/88 it was held that Art. 101 and 102 EPC1973 (now Art. 101 EPC) clearly referred to all Grounds for Opposition and does not limit the scope of examination by the Opposition Division. T 182/89, on the other hand, held that Art. 114 EPC (ex officio examination) should not be interpreted as requiring an Opposition Division or Appeal Board to examine Grounds of Opposition that were not raised by opponents within the 9 months opposition time limit.

The Enlarged Board found that the approach taken in T 182/89 was more in line with the concept of post-grant opposition proceedings, as present under the EPC. They also mentioned "procedural expediency" as a positive side effect (point 14 of the reasons). Ultimately, they decided that Opposition Divisions and Appeal Boards were not required to examine Grounds of Opposition not raised in the Notice of Oppostion.

A crucial point to be decided was, however, whether an Opposition Division/Board may examine such Grounds, i.e., whether Art. 114(1) EPC empowers an Opposition Division or Appeal Board to examine Grounds for Opposion not raised in the Notice of Opposition.

In this regard, the Enlarged Board noted that it was common practice before the EPC that the principle of ex officio examination also applied in opposition proceedings (point 16 of the reasons). This was also refleted in the traveaux preparatoires (BR 87/71, point 9). The Enlarged Board found that there was no reason to change the established practice. The current practice helped avoiding maintenance of patents in opposition which were invalid.

The Enlarged Board thus stated:

"[A]n Opposition Division may, in application of Article 114(1) EPC, of its own motion raise a ground for opposition not covered by the statement pursuant to Rule 55(c) EPC or consider such a ground raised by the opponent (or referred to by a third party under Article 115 EPC) after the expiry of the time limit laid down in Article 99 (1) EPC. At the same time, the Enlarged Board would like to emphasise that the consideration of grounds not properly covered by the statement pursuant to Rule 55(c) EPC, as an exception to the principle established by the Board in paragraph 6 above, should only take place before the Opposition Division in cases where, prima facie, there are clear reasons to believe that such grounds are relevant and would in whole or in part prejudice the maintenance of the European patent." (point 16 of the reasons)

In appeal proceedings, this did not apply. The Enlarged Board stated that appeal proceedings were a judicial review procedure and thus less investigative by nature. Therefore, Art. 114(1) EPC (ex officio examination) should be applied in a more restrictive manner. Grounds of Opposition not raised in the initial Notice of Oppostion may not be examined by Appeal Boards. The Enlarged Board allowed one exception, however: "volenti non fit injuria" (latin: "to a willing person, injury is not done"). Hence, fresh Grounds may be examined by a Board in appeal proceedings, if the proprietor agrees. Otherwise, if the patentee does not agree to the introduction of a fresh ground for opposition, such a ground may not be dealt with in substance in the decision of the Board of Appeal at all. Only the fact that the question has been raised may be mentioned (point 18 of the reasons).

Finally, the Enlarged Board confirmed that the above restrictions to the examination of Grounds for Opposition only apply to the claims as granted. Any amendment introduced during the opposition or appeal proceedings must be fully examined as to its compatibility with the requirements of the EPC, e.g., also with regard to the provisions of Article 123(2) and (3) EPC (point 19 of the reasons).

Remark: See G 3/14 for examination of clarity objections in opposition and opposition-appeal proceedings. A brief summary of G 3/14 can be found here.

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Headnote:

1. An Opposition Division or a Board of Appeal is not obliged to consider all the grounds for opposition referred to in Article 100 EPC, going beyond the grounds covered by the statement under Rule 55(c) EPC.

2. In principle, the Opposition Division shall examine only such grounds for opposition which have been properly submitted and substantiated in accordance with Article 99(1) in conjunction with Rule 55(c) EPC. Exceptionally, the Opposition Division may in application of Article 114(1) EPC consider other grounds for opposition which, prima facie, in whole or in part would seem to prejudice the maintenance of the European patent.

3. Fresh grounds for opposition may be considered in appeal proceedings only with the approval of the patentee.

The full text of G 10/91 can be found here.

Quotes from 10 decisions citing G 10/91 can be found here.

G 0002/88 - Second non-medical indication / "Friction-reducing additive"- #3

Citation rank: 3
No. of citations: 368

G 2/88 ("Friction reducing additive") and G 6/88 ("Plant growth regulating agent") both looked at changes in the claim category from product claim (specifically: compound or composition) to use claim, namely the use of the compound or composition for a particular purpose.

A Technical Board of Appeal in T 59/87 referred the question to the Enlarged Board of Appeal whether a patent with claims directed to a "compound" and to a "composition including such compound" can be amended during opposition proceedings so that the claims are directed to the "use of that compound in a composition" for a particular purpose, without extending the scope of protection (Art. 123(3) EPC).

The Enlarged Board found that, upon proper interpretation of Art. 123(3) EPC, and taking into account the "absolute" protection that a product claim confers, a change in category from product to use of the product does not normally extend the scope of protection. Art. 123(3) would thus not be infringed.

T 59/87 also referred another question to the Enlarged Board, namely whether novelty can be acknowldedged of a claim claiming the use of a known compound for a particular purpose over prior art disclosing the same use of the same compound, but for a different purpose. Specifically T 59/87 asked:

"Is a claim to the use of a compound for a particular non-medical purpose novel for the purpose of Article 54 EPC, having regard to a prior publication which discloses the use of that compound for a different non-medical purpose, so that the only novel feature in the claim is the purpose for which the compound is used?"

The answer to this question is by no means self-evident. For example, in case T 231/85 (referred to in G 2/88) the  claims in question related to the "Use of (certain compounds) ... for controlling fungi and for preventive fungus control" - and the application contained teaching as to how to carry this out so as to achieve this effect. A prior art document described the use of the same compounds for influencing plant growth. In both the application in suit and the prior art, the respective treatments were carried out in the same way (so the means of realisation was the same). The sole difference between the claim and the prior art was the purpose for which the claimed use was carried out. The purpose - as was argued by a party T 231/85 - is subjective and in principle merely a mental activity. It should not, according to the party, count as a technical feature of the claim. The Enlarged Board, however, decided differently. 

The Enlarged Board found that the different purpose of the claimed use establishes novelty over such prior art. In other words, a claim to the use of the compound for the particular purpose defined in the claim, which use is based on a technical effect described in the patent, is to be interpreted as including that technical effect as a functional technical feature. Hence prior art disclosing the same use of a compound, but for obtaining a different purpose, then such prior art is not novelty-destroying for the "second non-medical use" claim.

Remark: G 2/88 and G 6/88 are consistent with the earlier G 1/83, G 5/83 and G 6/83, which established similar principles for claims directed to second medical indications. The latter decisions held that the stated purpose of making a medicament recited in a "Swiss-type" claim establishes novelty over prior art disclosing the same medicament, but not disclosing the claimed medical indication (i.e., disease to be treated). See here for a brief summary of G 5/83.

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Headnote:

1. A change of category of granted claims in opposition proceedings is not open to objection under Article 123(3) EPC, if it does not result in extension of the protection conferred by the claims as a whole, when they are interpreted in accordance with Article 69 EPC and its Protocol. In this context, the national laws of the Contracting States relating to infringement should not be considered.

2. An amendment of granted claims directed to "a compound" and to "a composition including such compound", so that the amended claims are directed to "the use of that compound in a composition" for a particular purpose, is not open to objection under Article 123(3) EPC.

3. A claim to the use of a known compound for a particular purpose, which is based on a technical effect which is described in the patent, should be interpreted as including that technical effect as a functional technical feature, and is accordingly not open to objection under Article 54(1) EPC provided that such technical feature has not previously been made available to the public.

The full text of the decision can be found here.

G 0001/03 - "Undisclosed" disclaimers - #4

Citation rank: 4
No. of citations: 308

G 1/03 (together with G 2/03) defined under which conditions "undisclosed disclaimers" (i.e., disclaimers disclaiming subject matter where neither the disclaimer nor the subject-matter excluded by it have a basis in the application as filed) can be introduced into a claim without extending subject matter under Art. 123(2).

Prior to G 1/03 established case law allowed - under certain circumstances - disclaimers having no basis in the application as filed. This case law had been called into question in T 323/97, which held that the introduction of a negative feature into a claim resulting in the exclusion of certain embodiments was, regardless of the name "disclaimer", nonetheless an amendment governed by Article 123(2) and (3) EPC.

In particular the chemical industry had often relied on undisclosed disclaimers to establish novelty of their broad Markush-type claims over prior art that they had previously been unaware of; be it because the prior art was post-published under Art. 54(3), or be it because the prior art document was "accidental", e.g., from a far remote technical field.

The Enlarged Board looked into the situation concerning post-published Art. 54(3) documents. Considering the legislative history of Art. 54(3) they noted that the fathers of the EPC opted for the more restrictive "whole contents approach" rather than for the less stringent "prior claim approach", under which "hole contents approach" the whole content of a post-published 54(4) document is taken into account, rather than only its claims (point 2.1.1 of the reasons). They considered that the legislator tried to limit the detrimental effect of post-published 54(3) documents by making them only relevant with respect to novelty, not relevant with respect to inventive step (Art. 56, second sentence).

In line with this approach of limiting the negative effect of post-published prior art on subsequent patent applications (and patents), the Enlarged Board allowed the disclaiming of parts of the originally claimed scope, if the excluded subject matter was disclosed in a 54(3) document. This was justified as follows:

"Such a disclaimer, only excluding subject-matter for legal reasons, is required to give effect to Article 54(3) EPC and has no bearing on the technical information in the application. It is, therefore, not in contradiction to Article 123(2) EPC. Applied in this sense, the term disclaimer is justified also in its literal meaning. An invention comprising different specific embodiments or groups thereof has been disclosed in the application as filed, a part of which is excluded from the requested protection, ie no longer claimed. The remaining subject-matter is not modified by the disclaimer." (point 2.1.3 of the reasons)

For related reasons, the Enlarged Board also found it appropriate to allow undisclosed disclaimers in the case of "accidental anticipations" (an anticipation is accidental if it is so unrelated to and remote from the claimed invention that the person skilled in the art would never have taken it into consideration when making the invention, see Headnote II.1). Since the applicant could not have been aware of the accidentally anticipating document, it would be appropriate to allow him to disclaim the accidentally disclosed subject matter, so as to make his claim new over the accidentally anticipating document (point 2.2 of the reasons).

Finally, the Enlarged Board found it appropriate to also allow undisclosed disclaimers in cases where a claim includes subject matter which is excluded from patentability under Art. 52-57 for non-technical reasons. The reasoning here was that a foreign applicant, who files a first application in his country (where certain subject matter, such as medical methods, is possibly not excluded from patentability) cannot be expected to know or to study the substantive patentability requirements of all countries in which he/she may later wish to claim the priority of his first application. The Enlarged Board stated:

"... the applicant cannot be expected to check the substantive patent law of all possible states before filing the application and to introduce appropriate limitations in order to cope with any exclusions which he might later face in the respective states. Extending the requirement of sufficient disclosure to limitations merely disclaiming subject-matter not eligible for patent protection would seriously impede the long-established systems of obtaining patent protection in an international framework." (point 2.4.3 of the reasons)

The Enlarged Board went on to defined the manner in which undisclosed disclaimers must be formulated. They stated that a disclaimer must not remove more than is necessary to restore novelty or to disclaim subject-matter excluded from patentability under Art. 52-57 for non-technical reasons (Headnote II.2). Furthermore, a undisclosed disclaimer must not become relevant for the assessment of inventive step or sufficiency of disclosure, because then it would infringe Art. 123(2) EPC (Headnote II.3). Finally, the amended claim containing the disclaimer must meet the requirements of clarity and conciseness of Article 84 EPC (Headnote II.4).

 Remark: G 1/03 established a stable set of rules regarding the admissibility of undisclosed disclaimers. This stable system was called into question later, when G 2/10 (dealing with so-called "disclosed disclaimers") was published. Some Boards of Appeal have interpreted G 2/10 in such a manner as to impose additional requirements on the admissibility of undisclosed disclaimers (i.e., on top of the requirements expressed in G 1/03). In particular, some Boards found that the "remaining subject matter test" of G 2/10 should also be applied to undisclosed disclaimers. However, G 1/16 recently re-established the old order by clarifying that the requirements expressed in G 1/03 are the only ones to be applied to undisclosed disclaimers.

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Headnote:

I. An amendment to a claim by the introduction of a disclaimer may not be refused under Article 123(2) EPC for the sole reason that neither the disclaimer nor the subject-matter excluded by it from the scope of the claim have a basis in the application as filed.

II. The following criteria are to be applied for assessing the allowability of a disclaimer which is not disclosed in the application as filed:

II.1 A disclaimer may be allowable in order to:
- restore novelty by delimiting a claim against state of the art under Article 54(3) and (4) EPC;
- restore novelty by delimiting a claim against an accidental anticipation under Article 54(2) EPC; an anticipation is accidental if it is so unrelated to and remote from the claimed invention that the person skilled in the art would never have taken it into consideration when making the invention; and
- disclaim subject-matter which, under Articles 52 to 57 EPC, is excluded from patentability for non-technical reasons.

II.2 A disclaimer should not remove more than is necessary either to restore novelty or to disclaim subject-matter excluded from patentability for non-technical reasons.

II.3 A disclaimer which is or becomes relevant for the assessment of inventive step or sufficiency of disclosure adds subject-matter contrary to Article 123(2) EPC.

II.4 A claim containing a disclaimer must meet the requirements of clarity and conciseness of Article 84 EPC.

The full text of the decision can be found here.

T 0641/00 - Mix of technical an non-technical features / "Comvik" - #5

Citation rank: 5
No. of citations: 258

The "Comvik" decision (T 641/00) is concerned with the question of how to deal with claims containing a mix of technical and non-technical features.

The underlying invention in this opposition-appeal case related to the control of subscriber identities in a GSM mobile phone system, wherein at least two subscriber identities are selectively usable under one subscriber identity module (SIM), and wherein the selective activation of the subscriber identity is used for distributing the costs for service and private calls or among different users.

The Technical Board had to decide whether the claimed invention was inventive.

The Board firstly noted that it is generally legitimate to have a mix of technical and non-technical features within one claim, even if the technical was not the dominating part of the invention (point 4 of the reasons).

The Board also recalled that the problem-solution-approach is based on the technical character of the invention, e.g., the problem solved by the invention must be a technical one (point 5 of the reasons). The Board cited earlier case law (T 158/97, T 72/95, T 157/97, T 176/97, T 27/97) and confirmed that the approach taken in these decisions to ignore non-technical features when assessing inventive step was entirely consistent with the general requirement under the EPC that an invention must have technical character. This led to the conclusion that an invention in the sense of Article 52 EPC can only be made up of those features which contribute to said technical character (point 6 of the reasons).

Although it was accepted that the formulation of the problem should normally not contain any pointer to its solution provided by the claim, the Board found that this principle only applies to the technical features of the claim. They stated:

"Merely because some feature appears in the claim does not automatically exclude it from appearing in the formulation of the problem. In particular where the claim refers to an aim to be achieved in a non-technical field, this aim may legitimately appear in the formulation of the problem as part of the framework of the technical problem that is to be solved, in particular as a constraint that has to be met."

Such non-technical constraints which can be used in the formulation of the technical problem are referred to as a "requirement specification" in the current Guidelines (2018) G-VII, 5.4.2.1.

In the specific case, the Board found that the distinguishing features requiring that "at least two identities are selectively usable", and "the selective activation being used for distributing the costs for service and private calls or among different users" were no technical features, as they merely defined a financial or administrative concept. These features were thus to be ignored when assessing inventive step.

As a result, the claim was considered lacking inventive step and the proprietor's appeal was dismissed.

Remark: The manner in which the EPO examines claims containing a mix of technical and non-technical features is described in Chapter G-VII, 5.4 of the current Guidelines (2018), including four illustrative examples.

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Headnote:

none

The full text of the decision can be found here.

G 0001/93 - Limiting feature / The "inescapable trap" - #6

Citation rank: 6
No. of citations: 258

G 1/93 deals with the conflicting requirements of Art. 123(2) and (3), and with the harsh consequences that an undetected violation of Art. 123(2) during examination can have on the patentee.

Art. 123(2) holds that a patent application or patent may not be amended in such a way that it includes subject matter which goes beyond the content of the application as filed. Art. 123(3), on the other hand, holds that a patent may not be amended such that its scope of protection is extended.

In the underlying case, the applicant filed, upon prosecution, amended claims which included a limiting feature going beyond the content of the original application. The Examining Division failed to spot this. Hence a patent was granted despite a violation of Art. 123(2). The patent was opposed and the opponent raised, i.a., the ground of Art. 100(c) (extension of subject matter). The Opposition Division accepted that submission and revoked the patent. The proprietor appealed against that decision.

Upon appeal, the Technical Board considered the principal relationship between paragraphs 2 and 3 of Article 123 EPC. They noted that in such cases where an unallowed amendment is made in examination by introduction of an undisclosed limiting feature, but a patent was nevertheless granted on the amended claim, such limiting feature could in principle not be removed in opposition without violating Art. 123(3). The Technical Board found this situation somewhat unsatisfactory, because was a rather harsh consequence of an error, which was - after all - also not spotted by the Examining Division. The Board thus referred the following question to the Enlarged Board of Appeals:

 "If a European patent as granted contains subject-matter which extends beyond the content of the application as filed and also limits the scope of protection conferred by the claims, is it possible during the opposition proceedings to maintain the patent in view of paragraphs 2 and 3 of Article 123 EPC?"

The Enlarged Board looked a previous case law regarding this matter. They noted that insofar as in these cases the Boards of Appeal have found support in the original applications for replacing added undisclosed technical features by other features without violating Article 123(3) EPC, they seem to be uncontroversial. They also found that it was never disputed that an added undisclosed feature without any technical meaning may be deleted from a claim without violating Article 123(3) EPC. The situation addressed the referred question (where the added feature had technical meaning, i.e., a limiting character), however, was still not fully clarified by case law.

The Enlarged Board found that both Art. 123(2) and 123(3) have mandatory character and that paragraphs 2 and 3 of Article 123 EPC are mutually independent of each other. They stated:

"Thus, if a limiting feature is considered to fall under Article 123(2) EPC, it cannot be maintained in the patent in view of Article 100(c) EPC, nor can it be removed from the claims without violating Article 123(3) EPC. Only if the added feature can be replaced by another feature disclosed in the application as filed without violating Article 123(3) EPC, can the patent be maintained (in amended form). [...] In this sense, it must be admitted that Article 123(2) in combination with Article 123(3) EPC can operate rather harshly against an applicant, who runs the risk of being caught in an inescapable trap and losing everything by amending his application, even if the amendment is limiting the scope of protection." (point 14 of the reasons)

In some cases, however, where the undisclosed feature (while having a limiting effect on the scope of the claim) makes no technical contribution to the invention, the Enlarged Board found that the limiting feature may remain in the claim without infringing Art. 123(3). They stated:

"If such added feature, although limiting the scope of protection conferred by the patent, has to be considered as providing a technical contribution to the subject-matter of the claimed invention, it would, in the view of the Enlarged Board, give an unwarranted advantage to the patentee contrary to the above purpose of Article 123(2) EPC. Consequently, such feature would constitute added subject-matter within the meaning of that provision. A typical example of this seems to be the case, where the limiting feature is creating an inventive selection not disclosed in the application as filed or otherwise derivable therefrom. If, on the other hand, the feature in question merely excludes protection for part of the subject- matter of the claimed invention as covered by the application as filed, the adding of such feature cannot reasonably be considered to give any unwarranted advantage to the applicant. Nor does it adversely affect the interests of third parties (cf. paragraph 12 above). In the view of the Enlarged Board, such feature is, on a proper interpretation of Article 123(2) EPC, therefore not to be considered as subject-matter extending beyond the content of the application as filed within the meaning of that provision. It follows that a patent containing such a feature in the claims can be maintained without violating Article 123(2) EPC or giving rise to a ground for opposition under Article 100(c) EPC. The feature being maintained in the claims, there can be no violation of Article 123(3) EPC either." (point 16 of the reasons)

In other words, the Enlarged Board confirmed that an "inescapable trap" generally exists between Art. 123(2) and (3), but that in cases where the violating feature makes no technical contribution to the invention, an inescapable trap situation is not present.

Remark: G 1/93 in principle distinguishes between technical features, which make a technical contribution and those which do not. This concept has later been used by the Enlarged Board in G 1/03, G 2/03 when considering admissibility of undisclosed disclaimers (see here for a brief summary of G 2/03).

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Headnote:

1. If a European patent as granted contains subject-matter which extends beyond the content of the application as filed within the meaning of Article 123(2) EPC and which also limits the scope of protection conferred by the patent, such patent cannot be maintained in opposition proceedings unamended, because the ground for opposition under Article 100(c) EPC prejudices the maintenance of the patent. Nor can it be amended by deleting such limiting subject-matter from the claims, because such amendment would extend the protection conferred, which is prohibited by Article 123(3) EPC. Such a patent can, therefore, only be maintained if there is a basis in the application as filed for replacing such subject-matter without violating Article 123(3) EPC.

2. A feature which has not been disclosed in the application as filed but which has been added to the application during examination and which, without providing a technical contribution to the subject-matter of the claimed invention, merely limits the protection conferred by the patent as granted by excluding protection for part of the subject-matter of the claimed invention as covered by the application as filed, is not to be considered as subject-matter which extends beyond the content of the application as filed within the meaning of Article 123(2) EPC. The ground for opposition under Article 100(c) EPC therefore does not prejudice the maintenance of a European patent which includes such a feature.

The full text of G 1/93 can be found here.

G 0009/92 - "Non-appealing party" - #7

Citation rank: 7
No. of citations: 254

G 9/92 (in consolidated proceedings with G 4/93, see same review here) looked at the consequences of the "principle of party disposition" on inter partes opposition-appeal proceedings.

Two Boards of Appeal referred questions to the Enlarged Board of Appeal under Art. 112(1)(a) EPC. The questions arose from three appeal cases, all of which were concerned with an appeal against the decision of an oppositon division to maintain the patent in amended form according to Art. 101(3)(a) EPC. In one case the proprietor was the sole appellant, in another case only the opponent appealed. In the third case both parties appealed.

The Technical Boards referred the question whether a Board of Appeal, in proceedings before it, could put the sole appellant in a worse position than if it had not appealed, or whether there should be prohibition of reformatio in peius (Latin: "change for the worse"). Specifically, they asked the Enlarged Board:

"Can the Board of Appeal amend a contested decision to the Appellant's disadvantage? -   If so, to what extent?"

The Enlarged Board pointed out that the proceedings before the EPO are generally goverened by the principle of party disposition, i.e., that the parties define the extent of the proceedings through their intial requests. This principle is also known as the principle of "ne ultra petita" (Latin: "not beyond the request").

The Enlarged Board mentioned that decisions G 9/91 and G 10/91 already clarified that the principle of party disposition applies to opposition and opposition-appeal proceedings before the EPO (see G 9/92, points 3 and 4 of the reasons). The principle of ex officio examination (Art. 114(1) EPC), on the other hand, found little application in appeal proceedings (points 4 and 5 of the reasons).

Under the principle of party disposition, in opposition-appeal cases in which the patent is maintained in amended form, the appeal of the proprietor, who is the sole appellant, can only be understood as a request of the proprietor-appellant to maintain its patent in unamended form, or at least with a scope somewhere between that of the patent upheld in opposition and the scope as granted. In any case, the proprietor's appeal cannot be interpreted as being a request to further limit the appellant's patent. Therefore, the Enlarged Board in G 9/92 found that it would be against the principle of party disposition to limit a patent to less than the scope maintained in opposition, if the proprietor is the sole appellant (see Headnote I).

Where the opponent is the sole appellant, the situation is the opposite. It would be against the principle of party disposition, if an Appeal Board broadened the scope of the patent (e.g., maintained the patent as granted). This would certainly be against the opponent/sole appellant's initial request. The proprietor is thus primarily restricted to defending the patent in the form in which it was maintained by the Opposition Division (see Headnote II).

If both, the proprietor and the opponent, appeal against the decision to uphold the patent in amended form, the principle of party disposition clearly can no longer be fully observed. This is impossible, because of the parties' initial requests are contradicting. In this situation, an Appeal Board is free to broaden or lessen the scope of the patent as mainteined by the opposition division all the way from maintenance as granted to revocation in full.

Remark: G 1/99 ("Reformatio in peius") later took a closer look at the situation in which the opponent is the sole appellant (Headnote II, below). G 1/99 exceptionally allowed broadening of the scope of the claims (beyond the scope of the claims maintained in opposition, but within the limits of Art. 123(3)) in the case where the proprietor would otherwise lose its patent because of a Art. 123(2) infringement which occurred during the opposition stage. The cautious wording "may be rejected as inadmissible by the Board of Appeal if they are neither appropriate nor necessary" in Headnote II, below, was thus interpreted as as allowing certain exceptions. See here for a brief summary of G 1/99.

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Headnote:

I. If the patent proprietor is the sole appellant against an interlocutory decision maintaining a patent in amended form, neither the Board of Appeal nor the non-appealing opponent as a party to the proceedings as of right under Article 107, second sentence, EPC, may challenge the maintenance of the patent as amended in accordance with the interlocutory decision.

II. If the opponent is the sole appellant against an interlocutory decision maintaining a patent in amended form, the patent proprietor is primarily restricted during the appeal proceedings to defending the patent in the form in which it was maintained by the Opposition Division in its interlocutory decision. Amendments proposed by the patent proprietor as a party to the proceedings as of right under Article 107, second sentence, EPC, may be rejected as inadmissible by the Board of Appeal if they are neither appropriate nor necessary.

The full text of the decision can be found here.

G 0002/98 - "The same invention" - #8

Citation rank: 8
No. of citations: 240

Decision G 2/98 answered the question which requirements have to be met in order for a priority claim (Art. 87 EPC) to be valid.

The relevance of G 2/98, however, goes beyond the question of priority. The key requirement for validly claiming priority, i.e., "direct and unambiguous disclosure" has then been applied to other important aspects of the EPC procedure, namely in the assessment of novelty (Art. 54), and admissibility of amendments (Art. 123(2)).

The main question that was referred to the Enlarged Board in G 2/98 was whether the requirement of the "same invention" in Article 87(1) EPC means that "the extent of the right to priority derivable from a priority application for a later application is determined by, and at the same time limited to, what is at least implicitly disclosed in the priority application". The case law of the Boards of Appeal had not been entirely consistent on this question.

The Enlarged Board looked, i.a., at Articles 4F and 4H of the Paris Convention, which is an independent, separate set of priority rules, which rules, however, should be interpreted in the same manner as the priority rules of the EPC (because the latter constitutes, according to its preamble, a special agreement within the meaning of Article 19 of the Paris Convention).

The Enlarged Board finally concluded:

"[A]ccording to that analysis, a narrow or strict interpretation of the concept of "the same invention", equating it to the concept of "the same subject-matter" referred to in Article 87(4) EPC (cf. point 2 supra), is necessary to ensure a proper exercise of priority rights in full conformity inter alia with the principles of equal treatment of the applicant and third parties (cf. point 8.1 supra) and legal certainty (cf. point 8.3 supra) and with the requirement of consistency with regard to the assessment of novelty and inventive step (cf. point 8.1 supra). [...] It means that priority of a previous application in respect of a claim in a European patent application in accordance with Article 88 EPC is to be acknowledged only if the person skilled in the art can derive the subject-matter of the claim directly and unambiguously, using common general knowledge, from the previous application as a whole." (point 9 of the reasons, emphasis added)

As mentioned above, the same strict standard is nowadays applied in the assessment of novelty over a prior art document, and in the assessment of admissibility of amendments.

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Headnote:

The requirement for claiming priority of "the same invention", referred to in Article 87(1) EPC, means that priority of a previous application in respect of a claim in a European patent application in accordance with Article 88 EPC is to be acknowledged only if the skilled person can derive the subject-matter of the claim directly and unambiguously, using common general knowledge, from the previous application as a whole.

The full text of the decision can be found here.