SONN Patentanwälte – IP Attorneys

No inventive step where the embodiment is worsened

The mere fact that the claimed subject-matter excludes a technical feature disclosed in the closest prior art as essential or advantageous for achieving a technical effect cannot in itself establish an inventive step. Where that exclusion is the sole difference from the closest prior art, it must...

Technical contribution to the invention in the presence of measurement data

The two standards of proof traditionally relied upon by the EPO Boards of Appeal – the “balance of probabilities” and the “beyond reasonable doubt” tests – can be applied in straightforward cases. However, this binary approach may prove excessively formalistic and over-simplified in more complex...

Starting point for assessing inventive step

A disclosure within a prior art document can only be considered to represent a suitable starting point for assessing inventive step if the skilled person would have realistically started from it. An important consideration in this assessment generally is whether this disclosure aims at the same or...

EPO case law: Strict requirements regarding the obligation to substantiate in the appeal

In the case of cumulative lines of argument that build on each other, a complete presentation of the reasons, as Article 108 EPC and Article 12 RPBA have always demanded, requires the presentation of all facts, which only together support the alleged legal result (here: publicity of prior use...

EPO case law: Requirements regarding public prior use

According to the decision in G 1/92 of the EBA, the chemical composition of a product belongs to the state of the art if the product itself is accessible to the public and can be analysed and reproduced by a person skilled in the art. Point 1.4 of the reasons for the decision of this decision...

EPO case law: In opposition appeal proceedings, the principle of production of evidence applies

The publication date of a citation prior to the priority date may permissibly be contested by the patent proprietor if there are contradictory indications of the publication date (in the specific case in relation to a thesis which is dated considerably prior to the priority date but bears a library...

EPO case law: Delayed in-house searches

If the opponent asserts a public prior use in the opposition proceedings at a late stage, there are good reasons not to differentiate in the admission decision between whether the opponent has conceded deliberately holding back this piece of prior art or whether he claims not to have searched...

State of the Art and Bifurcation

According to German Patent Law the courts are bound by the grant of a patent by the respective Patent Office. In consequence thereof they cannot hold a patent as null and void: an action for declaration of non-infringement cannot be based on the lack of patentability of the patent. However, a...