EPO – No general ban on double patenting, T 307/03 (OJ EPO 2009, 422) not followed, internal priority: patent may be granted on application identical to the patent granted on priority application

Posted: April 29th, 2010

EPO, Technical Board of Appeal 3.3.02, 27 April 2010, Decision No. T 1423/07, not to be published in OJ, – Cyclic Amine derivative/BOEHRINGER INGELHEIM VETMEDICA GmbH
The applicant filed a first European application on which a patent was granted. Claiming the priority of the first application, he filed a second European application which was refused by the Examining Division on the grounds that the claims on file were identical to the claims granted in the first application from which priority was claimed. Reference was made to the Guidelines for Examination according to which patents in the name of the same applicant must not contain claims of substantially identical scope.


EPO – Convention on Biological Diversity and the exception to patentability for inventions which are contrary to “ordre public” or morality

Posted: April 22nd, 2010

EPO, Opposition Division, decision dated 20 April 2010, revoking European patent 1 429 795 (open to appeal)
European patent 1 429 795 is directed to a method for producing an extract from Pelargonium sidoides and/or Pelargonium reniforme, characterized by subjecting the roots of the plants to certain steps in order to obtain the extract. The description mentions that Pelargonium sidoides has been traditionally used in Southern Africa as a medicament for a long time.


EU/EPO/DE – Recent relevant cases

Posted: April 21st, 2010

A set of recent relevant EU, EPO and German cases, head notes and summaries in English (listed below) has been added to the blog. The posts are published on the date of the judgment. With thanks to Tilman Müller-Stoy, Bardehle Pagenberg
New cases


EPO – R9/09 – Petition for review rejected as clearly inadmissible because objection to procedural effect was not raised during appeal proceedings as required by Rule 106 EPC

Posted: April 1st, 2010

EPO, Enlarged Board of Appeal, 22 March 2010, Case No R 9/09
This petition for review concerns decision T71/06 dismissing the appeal of the patent proprietor against the decision of the Opposition Division revoking to revoke its patent. The petition for review was filed on the grounds of Article 112a(2) (c) and (d), i.e. “fundamental violation of the right to be heard” and “any other fundamental procedural defect defined in the Implementing Regulations”


EPO – No-show at oral proceedings before Board of Appeal in order to save costs may turn out to be expensive

Posted: March 31st, 2010

EPO, Technical Board of Appeal 3.2.03, 18 November 2009, Decision No. T 212/07, not to be published in OJ, – Ancon CCL Limited (appellant/opponent) v. Normteq B.V. (respondent/patentee)
In a considerable number of cases, parties summoned to oral proceedings before the EPO do not appear. This is not only detrimental to the efficiency of the work of the EPO but may also cause superfluous costs for the adversary. Whereas, as a rule, each party has to bear its own costs, the departments of the EPO may, for reasons of equity order a different apportionment of costs.


EPO – Important amendments to the procedural provisions of the EPC enter into force on April 1, 2010

Posted: March 23rd, 2010

In March 2009, the Administrative Council of the EPO amended the Implementing Regulations to the European Patent Convention (EPC). The amended Rules enter into force on April 1, 2010 and are part of the “raising the bar initiative” of the EPO. Reported by Rudolf Teschemacher, Bardehle & Pagenberg. Divisional applications The first group of amendments […]


EPO – Benoît Battistelli (France) elected EPO President

Posted: March 2nd, 2010

In June 2009, the Administrative Council of the European Patent Organisation initiated proceedings for the election of Ms Brimelow’s successor as President of the European Patent Office. Four candidates fulfilled the formal requirements for an application but in the following regular meetings of the Council none of the candidates was able to collect the necessary […]


EPO – Enlarged Board of Appeal decides on dosage regime – Swiss-type claims no longer available

Posted: February 22nd, 2010

EPO, Enlarged Board of Appeal, 19 February 2010, Decision No. G 02/08 – Dosage regime/ABBOT RESPIRATORY
The Enlarged Board of Appeal (EBA) answered the questions referred to it in T 1319/04 (OJ EPO 2009, 36) as follows:
Question 1:
Where it is already known to use a medicament to treat an illness


EPO – G 04/08 Enlarged Board / Language of Proceedings

Posted: February 19th, 2010

EPO, Enlarged Board of Appeal, 16 February 2010, Decision No. G 04/08
If an international PCT application has been filed and published in one of the official EPO languages, it is not possible to


EPO – G1/07 Enlarged Board decides on “methods for surgery” exception ex Art. 53(c) EPC

Posted: February 17th, 2010

The EPO Enlarged Board of Appeal handed down its long awaited decision relating to the interpretation of the exclusion for patentability under article 53(c) EPC “method for treatment of the human or animal body by surgery”. Questions were asked to the Enlarged Board in a case about a medical imaging method, whereby a contrast agent was injected into the heart. The referring Board questioned whether this essentially diagnostic method involving a step consisting in a physical intervention was nevertheless excluded from patentability. This question was answered