EPO – The scope of application of the prohibition of double patenting

Posted: August 8th, 2018

EPO, Technical Board of Appeal 3.3.01, decision of September 5, 2017 in case T 2563/11 – Double patenting The application in suit had been refused because the set of claims contained 2 claims which were identical to 2 claims contained in the patent granted on its parent application. The applicant submitted that the Examining Division […]


EPO – The right of priorities – an overview of recent EPO case law

Posted: May 25th, 2018

The right of priorities: Recent developments in EPO case law, by dr. Rudolf Teschemacher, Bardehle Pagenberg Recent decisions passed by three different instances of the EPO have significant effects on the patentability of inventions under European patent law. All of them concerned the validity of patents to be assessed in opposition proceedings. Applicants should be […]


NL – Ono v. Pfizer

Posted: March 1st, 2018

Ono Pharmaceutical Co. Limited v. Pfizer Inc., Interlocutory Judge District Court The Hague, 27 February 2018, Case no. ECLI:NL:RBDHA:2018:2284 Ono filed a European patent application EP ‘517 A1 entitled: ‘Immunopotentiating compositions comprising anti-PD-L1 antibodies’. After the rejection of Pfizer’s third party observations at the EPO, Pfizer lodged proceedings at the German Verwaltungsgericht in Munich claiming […]


EPO – Principle of partial priorities applied to the assessment of what is the first application from which priority can be claimed

Posted: January 24th, 2018

EPO, Technical Board of Appeal 3.3.07, decision of November 9, 2017 in case T 282/17 – Coated tablets/JOHNSON & JOHNSON In its decision G 1/15 (OJ EPO 2017, A82), the Enlarged Board of Appeal of the EPO had decided that a generically defined claim may enjoy partial priority from a first application disclosing an alternative […]


EPO – EBA decides on undisclosed and disclosed disclaimers

Posted: December 20th, 2017

EPO, Enlarged Board of Appeal, decision of December 18, 2017 in case G 1/16 – Disclaimer III, to be published in OJ EPO In its decision T 437/14 (OJ EPO 2017, A50), Technical Board of Appeal 3.3.09 had referred 3 questions to the Enlarged Board of Appeal (EBA) concerning the proper standard to be applied […]


EPO – European patent for Raltegravir revoked

Posted: October 12th, 2017

EPO, Technical Board of Appeal 3.3.01, T 1150/15, decision of October 11, 2017 – Merck & Co., Inc. v. SHIONOGI & CO., LTD The grant of a compulsory license under § 24 of the German Patent Act was a legal instrument of hardly any relevance over many decades. Only once, the Federal Patent Court (BPatG) […]


EPO – Biological inventions / Administrative Council overrules the EBA

Posted: July 3rd, 2017

Biological inventions – protection of the products of essentially biological processes – Administrative Council overrules the Enlarged Board of Appeal – Decision CA/D 6/17 In its decision G 2/12 – Broccoli II (OJ EPO 2016, A27), the Enlarged Board of Appeal decided that product claims directed to plants or plant material are not excluded from […]


EPO – EPO issues statement on plant and animal patents

Posted: June 30th, 2017

EPO clarifies practice in the area of plant and animal patents, EPO Statement, 29 June 2017 “On a proposal of the European Patent Office its Administrative Council took a decision to amend the relevant Regulations in order to exclude from patentability plants and animals exclusively obtained by an essentially biological breeding process. “The proposal from […]


EPO – Exercise of the right of priority by the successor in title – requirements of a valid transfer

Posted: March 28th, 2017

European Patent Office, Technical Board of Appeal 3.2.05, T 577/11, decision of April 14, 2016, not to be published in OJ EPO – Entitlement to priority Headnotes 1 and 2 of the reported decision deal with the procedural aspect of admitting new submissions in second oral proceedings, headnotes 3 and 4 read as follows: 3. […]


EPO – EBA decides on partial priorities and toxic divisionals – G 1/15

Posted: November 30th, 2016

EPO, Enlarged Board of Appeal, decision of November 29, 2016 in case G 1/15, to be published in OJ EPO In its decision T 557/13, Technical Board of Appeal 3.3.06 had referred 5 questions to the EBA concerning partial priorities and toxic divisional applications. The first and most fundamental point of law was related to […]