Oppositions (and then appeals of the opposition decisions) are a mainstay of the work of the EPO, allowing third party scrutiny of granted patents prior, and often in place of, litigation. The process can also be a safe means of testing the litigation water as, with only a few exceptions, no estoppel is generated through these EPO proceedings.
The requirement to amend the description of a European patent application so that its scope of disclosure matches that of the claims is a particular requirement of EPO practice and there is debate within the EPO as to whether such description amendments should be required before allowance. As part of this ongoing debate, the Board of Appeal in T56/21 has proposed a referral to the Enlarged Board of Appeal on this issue.
A recent Decision, T1482/21, from the Board of Appeal of the EPO considered whether a decision to re-establish a patent application can be challenged during Opposition proceedings at the EPO.
Following the Enlarged Board of Appeal decision G 2/21 (“plausibility”) earlier this year, the referring Board has issued its preliminary opinion on how to take EPO appeal no. T 116/18 forwards. It is clear the Board is uncertain how G 2/21 is to be applied, noting several interpretations of that decision seem feasible. Thus, new case law appears to be needed to help those using the European patent system understand the circumstances under which post-filed data can be relied upon by a patent proprietor in the assessment of inventive step.
This recent decision from the Boards of Appeal follows clear guidance from G1/21 that in-person proceedings should remain the default over ViCo proceedings, contradicting both the EPO’s digital first strategy and previous Boards of Appeal decisions implementing G1/21.
The EPO “10-day rule” has for a long time effectively acted as a grace period during which certain responses can be timely filed after the deadline calculated from the face of an official communication only. However, the EPO are abolishing the 10-day rule and for deadlines set after 1 November 2023 this effective extension will not apply. Therefore, it is important that applicants and their representatives, who commonly rely on the grace period offered by the 10-day rule, recognise and remember that this option will not be available to them after 1 November 2023.
A recent EPO Board of Appeal decision has dismissed the common test for novelty of a subrange and has instead proposed that the so-called “gold standard” test should be used. Under the gold standard novelty test, a claimed subrange is considered novel simply if there is no direct and unambiguous disclosure of the claimed subrange – regardless of whether the subrange is “sufficiently far removed” from any range in the prior art.
Any party to appeal proceedings adversely affected by the decision of the Board of Appeal can file a Petition for Review of the decision by the Enlarged Board of Appeal. However, such petitions may only be filed on the grounds that: (i) the composition of the board was not correct, (ii) a fundamental violation of the right to be heard occurred (iii) a fundamental procedural defect occurred (iv) a criminal act had an impact on the decision. Historically, the success rate of Petitions for Review at the EPO has not been high, falling at around 5%. That said, November saw the granting of the 10th Petition for Review. Read on to get a flavour of what it takes to succeed.