Hands-on commentary on UPC decisions, key developments in IP law, and news from SONN.
Jun 1, 2026
A single technical feature not disclosed in the state of the art is sufficient to confer novelty on a claim, regardless of its technical effect. In this assessment, the concept of 'photographic' novelty applies, so to…
Read more →The patent in suit relates to arrangements in wireless networks. In particular, it relates to a method and a device for high-speed processing of protocol headers in an intermediate and/or destination node of a…
Read more →Product-by-process claims are characterized by the fact that the technical content of the invention does not regularly consist in the process as such, but in the technical properties that are conferred on the product by…
Read more →An impermissible extension ("added matter") exists if the granted claim comprises subject matter that goes beyond the content of the original application. In order to determine whether an impermissible extension exists,…
Read more →As a general principle for the interpretation of patent claims, so-called "means-plus-function" features are to be understood as any embodiment capable of performing the function in question (UPC 14. 2. 2025, CoA…
Read more →Sep 4, 2025
The interpretation of a patent claim is a legal question. Therefore, the court cannot delegate the judicial task of claim interpretation to an expert, but must interpret the claim independently. The skilled person is a…
Read more →May 17, 2024
The principle of primacy of the claims seems to exclude the use of the description and drawings for limiting the claims in proceedings before the EPO (in contradiction to patent infringement proceedings before the UPC…
Read more →Feb 29, 2024
Rule 262.1 (b) of the Rules of Procedure of the Unified Patent Court: The applicant made the request on behalf of an anonymous third party who was interested in the patent at issue and its legal validity (or lack…
Read more →Rule 13 of the Rules of Procedure of the Unified Patent Court: Upon filing the statement of claim, no annexes were submitted. Instead, the statement of claim contains references indicating the intention to submit…
Read more →Article 33.4 Agreement on a Unified Patent Court: The requesting party and defendant in the main proceedings is requesting at the central division that the revocation action be rejected as inadmissible, since the…
Read more →Rule 7.1 of the Rules of Procedure of the Unified Patent Court: In a proceeding with German as the language of the proceedings, the local division Munich, in accordance with Rule 7.1 Rules of Procedure, has determined…
Read more →Rule 211.1 and Rule 212.3 of the Rules of Procedure of the Unified Patent Court: The patent at issue protects a combination structure of bicycle frame and motor hub. The contested embodiment has been available for test…
Read more →Rule 17.3 of the Rules of Procedure of the Unified Patent Court: If the action involves a patent having more than one classification, the Registry assigns the action in accordance with Rule 345.3 Rules of Procedure to…
Read more →Rule 192 of the Rules of Procedure of the Unified Patent Court: During the International Textile Fair ITMA, which took place from June 8 to June 14, 2023, in Rho, Italy, the patent proprietor and applicant discovered…
Read more →Nov 29, 2022
A request for non-admission of a particular document, which was first made at the oral proceedings before the Board of Appeal, may constitute an amendment of the submission, the admissibility of which must in turn be…
Read more →Nov 19, 2022
Art 12 Par 2 of the Rules of Procedure of the Boards of Appeal (RPBA) does not contain any restriction according to which each party may only refer in the appeal to those matters of the preliminary proceedings which it…
Read more →Nov 9, 2022
In order to substantiate an objection in the appeal proceedings which the Opposition Division did not consider convincing, it is necessary to provide specific reasons why the finding and the reasoning in the decision…
Read more →Oct 30, 2022
Improved patient compliance to a pharmaceutical formulation cannot be used to establish an overall technical effect if it is the result of a "broken technical chain", namely an alleged chain of technical effects…
Read more →Only natural persons can be named as inventors in an application. (EPO Board of Appeal 21 December, 2021, J 8/20, Designation of inventor/DABUS).
Read more →Oct 10, 2022
Under the Rules of Procedure of the Boards of Appeal (RPBA), which have been in force since January 1, 2020, it is the duty of the parties to present their submissions in the proceedings in such a timely manner that the…
Read more →Sep 30, 2022
The principle of the prohibition of reformatio in peius is not applicable where a case is to be remitted to a division in a new composition because of a suspicion of partiality (EPO Board of Appeal 1 April, 2022, T…
Read more →Sep 20, 2022
Statements in the description contradicting the plain claim wording may cast doubts as to the intended meaning of this. (Only) under such circumstances, an objection under Article 84 EPC has to be raised (EPO Board of…
Read more →Feb 4, 2022
The computer simulation of physical processes has found its way into wide areas of the economy. The decision G 1/19 now clarified the question under which conditions such a simulation can be patented. An article by our…
Read more →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).
Read more →Not only in ex parte–, but also in inter partes appeal proceedings, a board is allowed to introduce new ex officio common general knowledge without evidence of such knowledge which prejudices maintenance of the patent,…
Read more →Jul 28, 2021
If the European Patent Office issues a promise or statement on how to act in a given area (in this case: general extensions of time limits due to the COVID 19 pandemic), the principle of legitimate expectations requires…
Read more →Jul 21, 2021
There is no provision in the EPC establishing any legal primacy of the clean version of a document over the annotated version. In the event of discrepancies between the two versions, it is therefore not a priori clear…
Read more →Jul 14, 2021
Claims in patent applications typically involve generalisations which inherently include an aspect of speculation. Patent applications in the field of medicine represent in this respect no exception. The approaches…
Read more →In the context of assessing inventive step, a computer-implemented simulation of a technical system or process that is claimed as such can solve a technical problem by producing a technical effect going beyond the…
Read more →Im Rahmen der Beurteilung der erfinderischen Tätigkeit wird eine computerimplementierte Simulation eines technischen Systems, die als solche beansprucht wird, als eine technische Aufgabe lösend angesehen, sofern sie…
Read more →Mar 30, 2021
In a recent decision (133R138/19w), the Vienna Higher Regional Court deals with the correct application of the problem-solution approach in the assessment of inventive step. The starting point was a dispute between…
Read more →Nov 17, 2020
With the decision 133 R 99/19k of the Higher Regional Court of Vienna dated January 21, 2020, the first instance revocation of the patent E 303 802 (Austrian part of EP 1 439 829 B1) was confirmed. In short, the…
Read more →The mere general reference to the COVID-19 pandemic and the associated health risks when traveling within Germany to the Boards of Appeal in Munich is not sufficient (in June 2020) to justify the fixing of a new date…
Read more →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…
Read more →Oct 26, 2020
The "weather" is not a technical system that the skilled person can improve, or even simulate with the purpose of trying to improve it. It is a physical system that can be modelled in the sense of showing how it works.…
Read more →Oct 19, 2020
The notional business person might come up with an abstract idea (in this case: avoiding the customer having to provide PIN and account information to the merchant). However, if the invention requires a new…
Read more →A new attack on inventive step which is launched in response to and by using documents filed by the patent proprietor with his response to the notice of opposition are not per se to be considered late-filed. It may be…
Read more →New arguments, which are submitted at a late stage, shall in principle be admitted into the proceedings (in confirmation of decision T 1914/12). However, the board has the discretion not to admit late-filed objections…
Read more →Requests can be withdrawn explicitly or implicitly. An implicit withdrawal exists if it is clear from the circumstances that a request is not pursued further. If requests, which were initially filed in appeal…
Read more →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…
Read more →If a claim is directed to a known compound or composition for use in a therapeutic method of treatment or prevention of a disease, and the claim specifies that the subject to be treated displays a clearly defined and…
Read more →Oct 28, 2019
A party requesting the exclusion of certain documents from inspection under Art 128(4) EPC may not successfully rely on the provisions of the GDPR because it is not binding on the European Patent Organisation (EPO BoA…
Read more →Oct 14, 2019
A device defined by a feature which can only be generated by a surgical or therapeutic step (here: an implantable device for desynchronizing the activity of pathologically active brain areas comprising means for…
Read more →The appalent's request not to admit the declaration of an expert, since the latter is bound by an NDA and is therefore not entitled to make statements on the experiments he made, cannot be granted: In order to comply…
Read more →Rule 71(5) of the EPC Implementing Regulations, according to which the payment of the required fees and the filing of the required translations of the claims shall be deemed to constitute agreement with the…
Read more →In principle, in procedure before the EPO, each party meets its own costs. Under Art 104(1) EPC and Art 16(1)(c) RPBA, however, the BoA may, on request and on grounds of equity, order a different apportionment of costs…
Read more →May 31, 2019
In decisions G 2/12 and G 2/13, the EBA of the EPO concluded that the scope of application of the term "essentially biological processes for the breeding of plants" in Art 53 lit b EPC is interpreted to the effect that…
Read more →A claim defining a compound as having a certain purity lacks novelty over a prior-art disclosure describing the same compound only if the prior art discloses the claimed purity at least implicitly, for example by way of…
Read more →In connection with generic "OR" claims within the meaning of the decision on partial priorities G 1/15, the right of a partial priority can be transferred independently of the generic priority right. However, such a…
Read more →Art 125 EPC: It does not seem to be categorically ruled out that there may be a situation in which an applicant has a legitimate interest in the grant of a second patent with the same effective date for the same claimed…
Read more →Art 114(2) EPC: Arguments submitted in appeal proceedings are admissible in any event, provided that they are based on facts already in the proceedings, even if they are put forward for the first time at a late stage of…
Read more →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…
Read more →Art 117 EPC: Expert evidence should assist the BoA in matters which lie outside the expertise of its members. An expert opinion of a former board member, which was submitted as expert evidence with regard to the…
Read more →In the context of a method it is important to differentiate between different types of stated purpose, namely those that define the application or use of a method, and those that define an effect arising from the steps…
Read more →Aug 1, 2018
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…
Read more →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,…
Read more →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…
Read more →Jun 6, 2018
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…
Read more →For reasons of consistency, the rationale of decision G 1/15 (concept of partial priority) must also apply in the context of deciding whether an application from which priority is claimed is thefirst applicationwithin…
Read more →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…
Read more →May 16, 2018
The text on the basis of which the application is granted or the patent is maintained in a decision or an interlocutory decision must be the one submitted or approved by the applicant or patent proprietor within the…
Read more →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…
Read more →Whether an opponent can be regarded as a legal entity in an ongoing opposition appeal proceedings and can validly act in these proceedings is a matter of the national law of the state where the opponent is incorporated…
Read more →Apr 25, 2018
In order to assess whether a claim amended by the introduction of an undisclosed disclaimer is allowable under Art 123(2) EPC, the disclaimer must meet one of the criteria set out in point 2.1 of decision G 1/03. The…
Read more →Pursuant to Art. 13 RPBA, it is at the discretion of the BoA whether auxiliary requests are admitted to the proceedings after the statement of grounds of appeal or after the reply. Since, in the preliminary opinion…
Read more →Mar 14, 2018
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…
Read more →An interpretation of a patent claim mutually agreed upon by the parties to the proceedings is not binding on the BoA. The principle of disposition is not to be understood in such a way that the parties to the…
Read more →The essentiality test developed in decision T 331/87 on the question of whether the subject matter of the claim extends beyond the content of the application as originally filed when replacing or deleting a claim…
Read more →The burden of proof for legally valid priority succession lies with the applicant/patent holder. Evidence is subject to the BoA's free evaluation, whereby "beyond reasonable doubt" (and not "balance of probabilities")…
Read more →Jan 13, 2017
Late last year two partners of our office,Daniel AlgeandGeorg Heger, were being interviewed by the business magazine "Forbes Austria" illuminating the professional work of patent attorneys, services for start-ups and…
Read more →Dec 30, 2016
In each of the contracting states (currently 38) of the European Patent Convention (EPC) a European patent has the same legal status as a national patent granted by that state. However, to put the European patent into…
Read more →In a recent decision the Vienna Court of Appeals provides a fundamental new interpretation of the relevant procedural provisions in opposition proceedings. Contrary to settled case law the Vienna Court of Appeals finds…
Read more →Jul 21, 2016
News that British sculptor Anish Kapoor had obtained "exclusive rights" on the colour VantaBlack® - the "blackest black" - caused quite a stir in the media early this year. Patenting colours - is this even possible? Yet…
Read more →Austria has since decades a dual system for judging patent infringement like Germany: infringement itself is the realm of the Commercial Courts (or Penal Courts) while nullity of the underlying patent can only be stated…
Read more →Jan 1, 2015
Article 10 of the Enforcement Directive (Directive 2004/48/EC) provides corrective measures to be taken with regard to goods that have been found to infringe an intellectual property right. Those measures shall…
Read more →Nov 1, 2014
Since the reform of IP proceedings 2014, all appeals from the Austrian Patent Office are to be prosecuted before the Upper Provincial Court in Vienna (OLG Wien) with a further appeal to the Austrian Supreme Court (OGH).…
Read more →Oct 1, 2014
Austrian Patent Law accepts the ownership of patents (and other IP rights) of several natural and/or legal persons as co-owners principally but refers to general civil law all questions concerning the rights of the…
Read more →Mar 1, 2014
The Austrian Supreme Court (OGH 4 Ob 140/13m) had to deal with the question whether the offer for sale at international expositions in foreign countries (Germany, Turkey) is an infringement of an Austrian patent. The…
Read more →Oct 1, 2013
In a recent decision, the Austrian Supreme Court has confirmed its previous case law on the calculation of remunerations for employee inventions. Austrian patent law provides little guidance with respect to the…
Read more →Sep 1, 2013
In a recent decision, the Austrian Patent Appeal Board had to decide on the question whether an internet disclosure was proven to be published before the priority date of the patent in suit. In this decision, the Patent…
Read more →Apr 1, 2013
The Austrian Supreme Court (8 ObA 45/12v of 24 Jan. 2013) has recently given us some enlightment on which basis the remuneration due to an employee for his invention is to be calculated. In an action for a declaratory…
Read more →Oct 1, 2012
Employees have the obligation under Austrian Law to communicate their service inventions to the employer "without delay". They have on the other hand the right to file themselves patent applications for their…
Read more →Ex Officio-Examination of Austrian Nullity Department after Withdrawal of Request for Nullification of a Patent in Appeal Proceedings In Austria, patents may be revoked by a request for revocation to the Nullity…
Read more →Mar 1, 2012
In a recent decision the Austrian Supreme Court had to decide on the professional liability of an attorney-at-law due to malpractice in a utility model infringement action. The claimant argued that due to miscounselling…
Read more →Memantine, a drug developed by Merz back in the 1960s, had been on the market in Germany even before September 1, 1976, when it was authorised on the basis of Article 3(7) of the AMG 1976 on the basis of transitional…
Read more →There are countries, e.g. the United States, where it is common to file a declaratory action with the courts solely based on the ground that the IP right of the defendant is invalid. This is not possible in Austria,…
Read more →The Austrian Parliament has enacted the Budget Framework Act shortly before the end of the year. Part of the Budget Framework Act was also an amendment to the Patent Office Fees Act. As part of this change, the…
Read more →Oct 1, 2010
In a recent decision the Austrian Supreme Court has handed down a judgment that may answer some burning questions on patent infringement proceedings. The case concerned a patent for a transdermal patch for…
Read more →On 15 July 2010, the Government of the Republic of Serbia (RS) deposited its instrument of accession to the European Patent Convention (EPC). The EPC will accordingly enter into force for Serbia on 1 October 2010. The…
Read more →Aug 1, 2010
This case (17 Ob 35/09k - 2 February 2010) concerned the infringement of a "Swiss-type" claim: "The use of an isoflavone phyto-oestrogen extract of soy or clover, for the manufacture of a medicament for administration…
Read more →Jun 1, 2010
The differences between various jurisdictions how and to what extent the prosecution history can be used lateron in infringement and revocation actions for construing the patent in suit are immense. Sofar, Austrian…
Read more →May 1, 2010
In proceedings for preliminary injunctions claimants recently try to rely on amended claims which are - as opposed to the granted claims - limited based on a disclosure only included in the specification. Is such a…
Read more →May 1, 2010
End of December 2009, the Austrian Parliament enacted a significant Amendment to the Patent and Trade Mark Acts. The "Innovation Protection Amendment 2010" provided abolishment of annuities for the first five years for…
Read more →On 11 February 2010, the Government of the Republic of Albania (AL) deposited its instrument of accession to the European Patent Convention (EPC). The EPC will accordingly enter into force for Albania on 1 May 2010. The…
Read more →Feb 1, 2010
As already reported in the March 2007 issue, in the author's opinion Austria has not fully implemented Art. 10 of the Enforcement Directive. In particular, Austrian law does not provide for a measure to recall…
Read more →Feb 1, 2010
The Austrian rules on remuneration for invention made by employees are in several aspects quite different to those in Germany. Two of them are highlighted here. In Austria, the employer is free to decide whether he…
Read more →Amendment of the Patent Office Fees Act In Austria, an amendment regarding the official fees to be paid at the Patent Office has come into force on January 1, 2010; this amendment particularly concerns patents and…
Read more →On 13 February 2009, the President of the European Patent Office and Montenegro's Minister for Economic Development signed an agreement on the extension of European patents (extension agreement). This agreement enters…
Read more →Aug 1, 2009
The European Directive on the legal protection of biotechnological inventions 98/44/EC was transformed into national law on 10 June 2005. The Austrian Parliament has connected the establishment of a special monitoring…
Read more →On 21 April 2009, the Government of the Republic of San Marino (SM) deposited its instrument of accession to the European Patent Convention (EPC). The EPC will accordingly enter into force for San Marino on 1 July 2009.…
Read more →Already in 2008, the fee structure of the European Patent Office was changed. On April 1, 2009, a new fee structure will become effective as concerns European patent applications (European divisional applications…
Read more →
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