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EPO – News from the Enlarged Board of Appeal of the EPO

Posted: July 21st, 2010

EPO – News from the Enlarged Board of Appeal of the EPO (Oral proceedings in cases G 2/07 and G 1/08 and two new referrals to the EBA) reported by Rudolf Teschemacher, Bardehle & Pagenberg

EPO, Enlarged Board of Appeal
Oral proceedings in cases G 2/07/BROCCOLI and G 1/08/TOMATOES

The oral proceedings were accompanied by protests outside the EPO-building of groups opposed to patents in the field of plants. The public interest in the cases is also illustrated by some 130 amicus curiae briefs filed in consolidated proceedings G 2/07 and G 1/08.

The points of law referred to the Enlarged Board of Appeal in decisions T 83/05 (OJ EPO 2007, 644) and T 1242/06 (OJ EPO 2008, 523) concern the scope of the exclusion from patentability for essentially biological processes for the production of plants in Art 53 b) EPC. Previous case law held that the question whether or not a process is to be considered “essentially biological” within the meaning of this provision has to be assessed on the basis of the invention as a whole taking into account the totality of human intervention and its impact on the result achieved. In 1999, a provision implementing Art. 2 (2) of the EU Biotechnology Directive was introduced into the Implementing Regulations to the EPC. Rule 26 (5) EPC stipulates that a process for the production of plants is essentially biological if it consists entirely of natural phenomena such as crossing or selection.


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In the opposition appeal proceedings underlying the referrals, different interpretations of Rule 26 (5) were suggested. The patentees took the position that any non-biological step in a multi-step process was appropriate to bring the claimed subject-matter outside the scope of the exclusion. On the contrary, the opponents were of the opinion that Rule 26 (5) EPC is to be interpreted as a confirmation of previous EPO case law, with the consequence that a trivial human intervention does not prevent the exclusion from being applied. The consequence of the different positions is clear from the Broccoli case. The referring Board was of the opinion that the choice of the starting material for the claimed breeding steps was non-obvious whereas the use of known marking technology for the selection step was trivial. Thus, according to previous case law the process as a whole was excluded from patent protection.

The decision may be expected by the end of the year. The EBA is on slippery slope. It has to find a balance between leaving Art. 53 b) EPC it’s meaning and respecting the wording of Rule 26 (5) EPC.


EPO, Enlarged Board of Appeal – new referral announced
Technical Board of Appeal 3.3.08, T 1068/07 decision of concerning European patent  0 981 646

In case T 1068/07, the patent has been opposed on the grounds of added subject-matter (Art. 123 (2) EPC). In the oral proceedings of June 30, 2010, the Board has decided to refer the following point of law to the Enlarged Board of Appeal:

“Does a disclaimer infringe Article 123 (2) EPC if its subject-matter was disclosed as an embodiment of the invention in the application as filed.”

A series of decisions starting with T 1102/00 of June 1, 2004 (not in OJ EPO) has held that an amendment as indicated in the above point of law is not allowable since it does not fulfil the criteria established in the Disclaimer decisions of the Enlarged Board of Appeal G 1/03 and G 2/03 (OJ EPO 2004, 413, 448). This practice drastically restricts the possibilities of limiting a claim if a disclosed embodiment turns out not to be patentable. Such a prohibition of limitation seems to be unknown in national practice. Two decisions of Boards of Appeals came to the contrary conclusion stating that the Disclaimer decisions of the Enlarged Board of Appeal are only concerned with situations in which neither the disclaimer nor the subject-matter excluded by it have a basis in the application as filed (T 1139/00 of February 10, 2005 and T 1107/06 of December 3, 2008, both not in OJ EPO. See also Napp Pharmaceutical Holdings Ltd. V. Ratiopharm, Court of Appeal (England and Wales), [2009] EWCA Civ. 252).

A file number of the Enlarged Board of Appeal is not available until the written and reasoned referring decision is issued by the referring Board.

EPO, Enlarged Board of Appeal – new referral
G 1/10 – Correction of grant decision after initiation of opposition proceedings
Technical Board of Appeal 3.5.03, decision T 1145/09 of June 17, 2010

In case T 1145/09 the patent was opposed on the grounds of added subject-matter. The proprietor submitted that the term alleged to be added matter was introduced by a typographical error when the claims were amended and requested that the error be corrected. The Opposition Division decided to stay the proceedings and to refer the proprietor’s request for correction of the decision to grant to the Examining Division. The opponent appealed and the Board of Appeal decided to refer the following points of law to the Enlarged Board of Appeal:

“1. Is a patent proprietor’s request for correction of the grant decision under Rule 140 EPC which was filed after the initiation of opposition proceedings admissible? In particular, should the absence of a time limit in Rule 140 EPC be interpreted such that a correction under Rule 140 EPC of errors in decisions can be made at any time?

2. If such a request is considered to be admissible, does the examining division have to decide on this request in ex parte proceedings in a binding manner so that the opposition division is precluded from examining whether the correction decision amounts to an unallowable amendment of a granted patent?”

The referring decision raises complex legal questions concerning the concurring competence of Examining Division and Opposition Division after grant of the patent. Whereas it seems that only the Examining Division can correct its own decision (G 6/95, OJ EPO 1996, 649), the opponent cannot be excluded from the assessment whether or not an amendment amounts to added subject-matter. This has to apply to an amendment based on a correction in the same way as to any other amendment resulting from grant procedure.

Read the decision (in English) here

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