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 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.
Different views from the EPO and Germany on the same case
Functional features in patent claims may provide protection not only for specific embodiments disclosed in the patent specification, but also for undisclosed (future) embodiments. A classic example is a claim of the format “An inhibitor of protein P for the treatment of a disease X” or variants thereof in the second medical use claim format. Patentees naturally love such claims, competitors usually reject them as excessively broad and examiners commonly approach them at least with skepticism. Do such claims “reach through” to the use of compounds that have yet to be discovered or invented by others, or do they [...]
The Board vacated reversed a decision that deletion of drawings amounted to an extension of protection. The opposition Opposition division Division had revoked the patent with the argument that the amendment generally had an impact on the extent of protection conferred by the European patent because the drawings would be used to resolve ambiguities in the claims. The Board reversed because the impugned decision failed to identify any such ambiguity.
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While the preparations for the future EU Patent Package are ongoing, it may be useful to familiarize oneself somewhat with some of the key options that the new patent system will offer to its users if and when it has been enacted.
According to Art. 3 UPCA the future Unified Patent Court (UPC) will have jurisdiction not only with regard to European patents with unitary effect, but also with regard to traditional European patents (“bundle patents”) and/or applications and SPCs, even if granted before the Unified Patent Court Agreement (UPCA) enters into force. The jurisdiction is not all-comprising, but is limited by the types of action for which the UPC has competence according to the UPC [...]
The Board observed that it could not be understood that the “technical relevance” criterion, proposed by another board in T 1906/11 for judging extension of subject matter, defines a new standard for judging amendments with respect to Article 123(2) in the case of intermediate generalizations. Instead, the Board had to decide whether the technical information inferred by the skilled person was new having regard to the content of the original application as filed.
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