SONN Patentanwälte – IP Attorneys

UPC Central Division: Amendment of the Patent

A request to amend the patent in suit that covers both claims challenged by the revocation action and claims not challenged is (only) inadmissible with respect to the latter claims. In a situation where the patent in suit is not fully contested, the patent proprietor is entitled to request amendments...

On the adaptation of the description to the claims

The requirement that the claims are to be supported by the description does not necessarily mean that all the "embodiments" of the description of a patent application have to be covered by the (independent) claims, i.e. that all the embodiments must fall within the scope...

Prohibition of reformatio in peius in the case of undisclosed disclaimers

The conditions of G 1/99 for permissible exceptions from the prohibition of reformatio in peius also apply if the impermissible amendment is an undisclosed disclaimer (EPO BoA 10 February 2021, T 2277/18).

Lack of clarity of an auxiliary request

The general admissibility of auxiliary request in appeal proceedings for the purpose of maintaining a limited form of the patent has already been affirmed by the Vienna Appeal Court