The enlarged board of appeal (EBA) of the European patent office effectively ended the possibility of poisonous priority. The EBA held that entitlement to partial priority may not be refused for a claim encompassing alternative subject-matter by virtue of generic expressions (generic “OR” claims) if the priority document discloses part of that subject matter in…

Although it did not admit a broader claim 1, an EPO board of appeal allowed an auxiliary request wherein claim 1 as granted was replaced by a combination of independent claims from different first instance requests. This combination was admitted because the first instance department had had the opportunity to decide on both claims in…

The Board of Appeal found that the examining division had committed a substantial procedural violation by raising tentative patentability objections rather than completing an improperly justified incomplete search. Thus tentative examination had improperly been used as a condition for completing the search, rather than completing the search first and examining later. This forced the applicant…

An EPO board of appeal decided that it had the discretion to admit a late filed document, even though the opposition division had exercised its discretion not to admit the document. In this respect the board diverged from T 2102/08. The board held that it may be confronted with additional facts (submissions) and different circumstances…

An EPO board held that, during opposition proceedings, copies of complaints about file specific issues sent by a party to EPO departments other than the opposition division, as well as the responses to these complaints, should be sent to the other party. The other party also needs to be notified of complaints about the work…

An EPO board held that observations filed by third parties during inter partes appeal must be disregarded by the board, unless they concern amendments during opposition or appeal, in which case the board has discretion whether or not to consider the observations in the examination of the amendments. Also when a party to the appeal…

The Board of Appeal held that “Biogen insufficiency”, the situation in which the full extent of the monopoly claimed exceeds the technical contribution to the art, is not a distinct ground for invalidity from “classical insufficiency”. Further, the fact that a skilled person is not able to carry out the invention without using the disclosed…

In a decision to refund an additional search fee, an EPO board rejected a determination of non-unity based on a priori technical differences, which determined different problems solved by different dependent claims without determining patentability with respect to the available prior art found for the independent claim. Instead, lack of unity should be decided based…