SONN Patentanwälte – IP Attorneys

Correction of inconsistencies between claims and description in opposition proceedings

In application of the decision of the Enlarged Board of Appeal G 3/14, an objection under Article 84 EPC that a claim is not supported by the description is open to examination in opposition or opposition appeal proceedings only when, and then only to the extent that, the lack of support has been...

Discretion of the opposition division in selecting the closest prior art

It is not possible to determine in general terms how many starting points an opposition division must take into account when examining inventive step as the fictitious closest prior art in the "problem-solution approach". The answer to this question depends on circumstances...

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).

Verifiability of the free evaluation of evidence

With regard to the evaluation of the relevant facts by the Opposition Division, it must be considered that the principle of free evaluation of evidence is recognized to apply before the EPO, which must also impact the review in appeal proceedings. To the extent that there is no error in the application...

EPO case law: No negative burden of proof in the statement of opposition

According to the rules on the burden of proof applicable under the EPC, each party has to present and prove the facts that are favourable to it – the principle of "negativa non sunt probanda" applies. Accordingly, the prior use of handing over an item to a buyer must be presented and proven by...

EPO Case law: Inadmissibility of anticipated assessment of evidence

Art 113(1) EPC: It is the opponent's responsibility to present all facts relevant to an alleged prior use and to offer suitable evidence (pursuant to Art 117(1) EPC inter alia documents, objects of inspection and witnesses). If witnesses are only to confirm the facts previously submitted, the...

EPO case law: Admissibility of Requests in Appeal Proceedings

According to Art 12 para 4 RPBA, the entire statement of grounds of appeal must be taken into account if and insofar as it relates to the case under appeal and is sufficiently substantiated. Under this provision, however, the Board is also authorised not to admit requests which could have already...

EPO case law: Legal Effect of Decisions of the Board of Appeal

Decisions of the BoA become legally binding as soon as issued ("res iudicata"); from this it follows that the rights of the parties and of the persons which are in a legal relationship with the parties with regard to a matter on which a court has made a legally binding decision have been finally...

EPO case law: Postal Delivery: negativa non sunt probanda

Although the letters and communications to the party to the proceedings were available to the public by way of electronic file inspection, parties to the proceedings must be able to rely on the EPO complying with the relevant provisions of the EPC regarding postal delivery. At least in order to...

EPO case law: If the opponent fails to respond, he acquiesces

For an opponent not to be adversely affected, the case law demands that the opponent has agreed to the maintenance of the patent in the corresponding version. As it follows from the context of the procedural provisions of the EPC, an opponent wishing to oppose the grant of a patent must state...