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.
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 [...]
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 [...]
Reports that say there’s — that something hasn’t happened are always interesting to me, because as we know, there are known knowns; there are things that we know that we know. We also know there are known unknowns; that is to say we know there are some things we do not know. But there are also unknown unknowns, the ones we don’t know we don’t know.
Donald Rumsfeld, United States Secretary of Defense, 1975-1977 and 2001-2006
According to Article 89 of the Agreement on a Unified Patent Court (UPCA), the Agreement is set up to enter into force on one of three dates, whichever is the latest. The first date provided in the Agreement was 1 January 2014. As we all know, it did not h [...]
The recent decision T 1843/09 clarifies that the exception to the prohibition of reformatio in peius set out in G 1/99 in order to overcome an objection under Article 123(2) EPC is not the only exception. According to the Technical Board of Appeal, exceptions to this principle are a matter of equity in order to protect a non-appealing Proprietor against procedural discrimination in circumstances where the prohibition of reformatio in peius would impair the legitimate defence of its patent.
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 [...]