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Can a basic patent be amended under Art. 138.3 EPC to overcome a nullity action brought against its SPC?

The messy case law from the Court of Justice of the European Union (“CJEU”) on supplementary protection certificates (“SPC”) that protect “combinations” of pharmaceutical products has left many patentees that relied in good faith on the criteria laid down by the CJEU in the judgment of 16 September 1999, Case C-392/97 (“Farmitalia”) with patents whose claims are not totally aligned with the new criteria laid down in the judgment of 24 November 2011, Case C-322/10 (“Medeva”), and the ensuing saga. Readers will remember that in Farmitalia the CJEU responded that it was not for the CJEU but for national courts to determine whether or not a product is protected by the basic patent. This was cohe [...]

Can the clarity of amended claims be challenged in an unrestricted manner in opposition proceedings? – T 373/12 refers four questions to the Enlarged Board of Appeal

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.

T 1764/09, EPO (Appeals Court), 9 January 2014

The board held that a document of speculative nature could not objectively be considered as a realistic starting point or the most promising springboard towards the claimed invention: the document was no more than a speculative review of what might be potentially feasible in the future and no concrete realization of the claimed type of product was described therein.

The full summary of this case has been published on Kluwer IP Law.

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T 1553/13 – New Referral to the Enlarged Board of Appeal of the EPO

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?”

Intermediate Generalisations – How far can you go where?

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 [...]

T2075/11, European Patent Office (Appeals Court)

The Board of Appeal used its discretionary power to declare inadmissible an appeal based on the claims as granted after the proprietor had only defended amended claims before the opposition division. Even if this should not be construed as abandonment of the claims as granted, the request should not be admitted for reasons of procedural economy, because it would require the board to take a first instance decision. The proprietor had lost its right to a decision on the claims as granted by amending the claims to circumvent an objection by the opposition division.

A full summary of this case has been published on Kluwer IP Law.

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