In decision T 373/12 of 2 April 2014 the Enlarged Board has been asked to decide on the extent to which the clarity of claims amended during opposition proceedings and opposition appeal proceedings can be challenged when the amendments are based on dependent claims as granted.
a) The applicant is not obliged to limit the protective scope to explicitly described embodiments, but may make certain generalisations to cover the entire invention.
b) Whether a claim containing generalisations is enabled depends on whether the protective scope extends beyond the most generalized teaching solving the underlying problem.
c) Functionally describing a group of compounds is not precluded by the fact that such wording encompasses not only compounds already known in the art or disclosed in the specification, but also compounds that may be provided in the future; even if their provision requires inventive activity.
The EPO Board of Appeal 3.2.06 decided on 20 February 2014 to refer the following question to the Enlarged Board of Appeal:
“Is an appeal inadmissible or not deemed to have been filed, if both the notice of appeal had been filed and the fee for appeal had been paid after the expiry of the appeal term pursuant to Art. 108, 1st sentence EPC?”
In our previous blog Opting out and Opting in we discussed some of the questions regarding the transitional regime under the Unified Patent Court Agreement (UPCA). Due to its importance and ambiguity this provision continues to be a source of considerable controversy, so much so that the Preparatory Committee, which is tasked with preparing the establishment of the court, issued an Interpretative Note on January 29, 2014.
The Interpretative Note addresses the substantive law to be applied by the national courts once the UPCA has entered into force. As it also acknowledges, the Note has merely persuasive authority. The national courts will have to decide which law to apply. The Note is there [...]
Article 123 (2) EPC and corresponding national provisions prohibit an applicant or patentee from amending a patent application or patent such that its subject-matter extends beyond the content of the application as originally filed. The statute is the same throughout Europe, but the practice is not always so. An issue where the Case Law of the EPO and the national courts seems to increasingly diverge is the admissibility of intermediate generalisations.
What are intermediate generalisations? Imagine the following exemplary situation: An EP application has a broad claim 1 consisting of features A, B and C. The application further contains several working examples which are directed to various [...]
The later finding of the biological relationships underlying the activity of a drug does not constitute a new teaching for technical action if the indication, the dosage and the way of using the drug coincide with an the prior disclosed use of a drug for the treatment of a disease (confirmed by FCJ 9 June 2011 – X ZR 68/08, GRUR 2011, 999 – “Memantine”). The selection of a value within a known range does not render an invention patentable, unless for special circumstances (e.g. the dosage instruction achieves a particular technical effect vis à vis the prior art).