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Will the “Inescapable Trap” of Article 123 (2) and (3) EPC Catch German Parts of European Patents?

by Dr. Simon Klopschinski

Under EPO case law there is the “inescapable trap” of Article 123 (2) and (3) EPC. The German Federal Court of Justice decided in the “Winkelmesseinrichtung” case that the “inescapable trap” does not apply to German national patents. In recent time different nullity boards of the German Federal Patent Court have issued conflicting decisions on the question of whether the Federal Court of Justice’s reasoning in “Winkelmesseinrichtung” also applies to German parts of European patents.

Under EPO case law a European patent has to be revoked when its claims contain a feature which is not disclosed in the original application (Article 123 (2) EPC) and th [...]

“Que le pouvoir arrête le pouvoir” – From Montesquieu to Battistelli

Charles de Secondat, Baron de Montesquieu knew it all as early as 1748: “Experience teaches that every human being who has the power tends to abuse it. Therefore, it is necessary that the power sets limits to the power. There are three things in every state authority: the legislature, the executive and the judiciary. There is no freedom, if they are not separated from each other.”

Okay, why should a French President in 2014 bother about what one of his learned countrymen wrote in a book in the baroque times? Perhaps because it still matters. On 3 December 2014 the President of the EPO had one member of the Boards of Appeal escorted out of the Office by his “Investigation Unit” and imposed a “ [...]

New “PCT Direct” Service of the EPO – an opportunity for PCT applicants at the EPO to comment on objections raised by the EPO in an earlier search

Under the new PCT Direct initiative announced in the Official Journal, it will, from 1 November 2014, be possible to respond to objections raised by the EPO against the priority application on filing the international application. This significantly streamlines the process of applying for an international application, and essentially gives the applicant an extra opportunity in the International Phase to overcome objections already raised by the EPO against the priority application, by submitting arguments or modifications with the international application.

Public Prior Use of a Pharmaceutical Preparation (T 2458/09)

Although more than 20 years have passed since the Enlarged Board of Appeal issued its decision G 1/92, there is still little case law which provides guidance on how to establish the structure and properties of a particular medicament in a manner so as to be able to rely on the same as a piece of prior art in opposition proceedings.

In G 1/92, the Enlarged Board rejected the notion of T 93/89 that the ingredients of a commercially available product are not made available to the public unless there is reason for experts to investigate its composition by chemical analysis, and it held that the chemical composition of a product is state of the art when the product as such is available to the pub [...]

Legitimate interest in obtaining a Judgment on infringement from a national Court persists even after patent has been revoked by EPO

As the readers well know, the European Patent Convention (“EPC”) system allows the validity of European patents to be challenged through two different routes: (i) oppositions filed before the European Patent Office (“EPO”); and (ii) revocation actions filed before national Courts. This system, which has its advantages, has disadvantages as well. For example, it may result in a waste of the time, money and other resources invested into litigating before a national Court if, when the proceedings before the national Court are at an advanced stage, the train that is running in parallel before the EPO leads the patent to the revocation station.

In countries where Judges have discretion to decide [...]

Step by Step towards Inventive Step – Determining the Closest Prior Art comes first (R 5/13 et al.)

In the oral proceedings held in the EPO appeal case T 1760/11 the Board of Appeal (BoA) 3.3.01 selected one single closest prior art (CPA) document for the inventive step assessment and then denied the opponents the opportunity to present inventive step attacks starting from other CPAs. Petitions for review under Article 112a EPC were filed. The BoA’s denial did not constitute a violation of the right to be heard, said the Enlarged Board of Appeal (EBA) in the decisions R 5/13 and (identical) R 9/13 to R13/13.

The underlying Case of T 1760/11

The issue under discussion was the assessment of inventive step. The Opposition Division had earlier revoked the patent inter alia for lack of inventiv [...]

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