David Rogers

Pendency of international patent applications and Rule 36(1) EPC

The Legal Board of Appeal had to determine whether an international patent application that did not fulfil the requirements of Article 22 of the Patent Cooperation Treaty (PCT) for entering the European phase could be considered to be a pending European patent application under Rule 36(1) EPC. This was of interest to the applicant as he wished to file a European divisional patent application. The Board found that a Euro-PCT application that had not entered the European phase is not a pending earlier European application in the sense of Rule 36(1) EPC, and thus that no European divisional patent application could be filed.

European Patent Office, Enlarged Board of Appeal, rejects referral on software patents

The Enlarged Board of Appeal (‘EBA’) found that none of the questions submitted to it by the President of the EPO were admissible. Nevertheless the EBA took the opportunity to consider in depth the notion of ‘different decisions’ that is at the base of a referral to the EBA; and the role of the Boards in the EPC system.

EPO decision on ‘All due care’ and exclusive reliance on computer calculated time-limits

This decision considers whether reliance upon a hitherto entirely reliable computer system for calculating time limits, without any subsequent check by the representative or his staff of the correctness of the calculated time limit, meets the standard of ‘all due care’ under Article 122 EPC restitutio in integrum.

EPO decision on computer-implemented inventions and the treatment of non-technical aspects

This decision considers how to treat non-technical features in an assessment of inventive step in the field of computer-implemented inventions.

Abstracts as part of contents of patent applications

This decision by the EPO Board confirms that the text of an abstract as filed cannot be used to overcome Article 123(2) EPC problems.

EPO rules on amendment of claims that narrow scope can infringe Article 123(2) EPC

During opposition proceedings, the proprietor filed a main request that contained claims that were narrower in scope than the claims as granted. The opposition division revoked the patent and this main request became the main request in the proprietors appeal. The main request was found by the EPO Board of Appeal to infringe Article 123(2) EPC as the narrower claims changed the meaning of the examples given in the description.

Lack of clarity as a ground in opposition proceedings

This case concerns whether the opponent can raise clarity objections under Article 84 of the European Patent Convention to those parts of the claims that were not amended in the new request. In addition, the case considers the admissibility of a new request (that is, new claims) filed for the first time in oral proceedings before the Board.

Can you maintain a patent as granted after seeking maintenance of the patent in a more limited form

This case concerns whether an appellant-patentee from a decision of the Opposition Division can, before the Board of Appeal, have as a Main Request the maintenance of the patent as granted even though the Main Request before the Opposition Division was for the claims in a more limited form.

Added patent subject matter by deleting from description

This case concerns the unusual situation where the amendment of the description during the opposition proceedings by deleting some examples lead to a changed meaning of claim 1 which amounted to an extension of the patent beyond the content of the application as originally filed.

EPO decision on exclusion of methods of business research from patentability, requirement of technical character of an invention

This case concerns the exclusion of business research methods from patentability and the fact that, even though claims can consist of a mixture of technical and non-technical features, novelty and inventive step can only be based on technical features.