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EPO’s Enlarged Board clears up clarity

On 24 March, 2015, the Enlarged Board of Appeal of the EPO, the final judicial arbiter of the interpretation of the European Patent Convention, issued Decision G 3/14 addressing the question of when, and to what extent, clarity objections could be raised by a party challenging the validity of a patent through the EPO’s Opposition procedure. The Decision concludes that granted claims, including combinations of independent claims and their proper dependent claims, cannot be formally challenged for a lack of clarity. Rather, a formal objection of lack of clarity can only be made when the substance of a granted claim, dependent or independent, is changed by an amendment to that claim, and then [...]

The decision „Schleifprodukt“ of the German Federal Court of Justice – a step towards harmonisation with the EPO practice?

The judgement “Schleifprodukt” rendered by the German Federal Court of Justice on 25 November 2014 could be seen as a step towards harmonisation with the EPO because the court carried out the test for the admissibility of claim amendments by assessing whether the feature combination of the amended claim in its entirety represents a technical teaching which is identifiable from the original application as being suitable for achieving the effects of the invention.

What happened to/in Summer 2014 in Germany?

To the extent that summer 2014 existed at all in central Europe, experts agree that it is now definitely over. There is some controversy whether we ever had summer in Germany this year, but at least it was proven that life without air conditioning is possible.

Meanwhile, the Munich IP Community is busily preparing for Oktoberfest starting tomorrow. So while we are all still sober, time for a litte summary on the latest developments in the case law of the German Federal Court of Justice (FCJ) in “Summer” 2014.

In one decision (X ZR 36/13), the FCJ took the opportunity to explain its current thinking on the scope of equivalence a bit further. In the decision under appeal, the Higher Regional C [...]

T 1843/09: the EPO clarifies the scope of the prohibition of reformatio in peius

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.

T248/12, European Patent Office (Appeals Court), 5 March 2013

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.

Click here for the full text of this case.

A summary of this case will be posted on http://www.Kluweriplaw.com

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Plasma Torch / Agilent, European Patent Office (EPO Board of Appeal), 25 February 2013

An amendment of independent patent claim 1 during prosecution introduced a new feature. According to the Examining Division this led to the combinations of features of dependent claims 2-4 to extend beyond the disclosure of the application as filed (Art. 123(2) EPC). The Board of Appeal held that the focus of the Examining Division was disproportionally directed to the structure of the claims as filed and did not uphold the ED’s decision, because the disclosure directly and unambiguously referred to a variation of but not an alternative to the embodiment disclosed in the application as filed.

Click here for the full text of this case.

A summary of this case will be posted on http://www.Klu [...]

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