Case Law

of the Boards of Appeal

of the European Patent Office

Fifth Edition
December 2006

edited by:

Albert Ballester Rodès

Sabine Demangue
Christos Dimopoulos
Barbara Dobrucki
Jane Osbeldiston
Chryssoula Pentheroudakis
Yvonne Podbielski
Jérôme Serre

Legal Research Service

for the Boards of Appeal

Department 3.0.30
 European Patent Office

Munich
Headquarters
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GERMANY
Tel. +49 (0)89 2399-0
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Published by: Fax +49 (0)30 25901-840
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© 2006 European Patent Office
ISBN 3-89605-084-2 www.epo.org
The editors wish to thank the Language Service for the translation of the texts, Michèle
Meurice, Eva Schumacher and Gwilym Williams as well as Cécile Foucher, Margarete
Hinkelmann and Zoltan Kocsis for their valuable support.
 Foreword

Foreword to the fifth edition

Over a period of twenty-seven years (the first decision of a Board of Appeal was handed
down in March 1979), a substantial body of case law on the European Patent
Convention has developed. The Boards of Appeal have settled more than 21 000 cases.
85 decisions or opinions of the Enlarged Board of Appeal have clarified legal points of
fundamental importance in order to ensure uniform application of the law.
The fifth edition of the "Case Law of the Boards of Appeal of the European Patent Office"
incorporates decisions up to the end of 2005. In addition, the most important decisions
issued in the first half of 2006 have been taken into account. The book follows the same
general pattern as in the previous editions: dividing the case law into topics and
illustrating each by short summaries of selected decisions. The chapters have been
thoroughly revised, to give a full picture of the actual case law whilst keeping the
publication to a manageable size.
The purpose of this book is to help users of the European Patent system identify the
decisions they need. No summary, however careful, can replace study of the actual
decision. All the decisions handed down since 1980 are available free of charge on the
EPO's Internet site (www.european-patent-office.org). They can be accessed via the
reference number or via search terms. They are also available on the ESPACE LEGAL
CD-ROM (or DVD), which is published twice a year.
I am grateful to the members of our Legal Research department, who, with great
commitment, have undertaken a revision of the text, harmonised and updated the
comprehensive index and table of cases in the three official languages. My thanks also
go to the EPO Language Service, without whose co-operation simultaneous publication
in the three official languages would not have been possible. Lastly, I wish to thank all
the other EPO staff who have helped produce the present publication.
This latest report on the case law of the EPO boards of appeal will provide information
for everyone concerned with European patent law and should be read in conjunction with
the annual "Board of Appeal Case Law" Special Editions to the EPO Official Journal.
I am certain that all those who read the report will find it useful.

Peter Messerli
Chairman of the Enlarged Board of Appeal
Vice-President Directorate-General 3

I
 Table of contents

TABLE OF CONTENTS

FOREWORD TO THE FIFTH EDITION I

READER'S GUIDE XXXI

1. Abbreviations XXXI
2. Citations XXXII
3. Case numbers XXXII

REFERRALS TO THE ENLARGED BOARD OF APPEAL XXXIII

I. PATENTABILITY 1

A. Patentable inventions 1

1. Technical nature of an invention 1

1.1. Computer-implemented inventions 3
1.2. Word-processing 9
1.3. Presentations of information 11
1.4. Schemes, rules and methods for performing mental acts,
playing games or doing business 14
1.4.1 Methods for doing business 15
1.4.2 Methods for performing mental acts 18
1.5. Aesthetic creations 19
2. Medical methods 20
2.1. Introduction 20
2.2. Allowability of claims under Article 52(4) EPC 21
2.2.1 General remarks 21
2.2.2 Nature of the method claim 21
2.2.3 Features for curative purposes 23
2.2.4 Medical character of the excluded methods 25
2.2.5 The exclusion of industrial applicability under Article
52(4) EPC 26
2.3. Therapeutic methods 27
2.3.1 Meaning of "therapy" 27
2.3.2 Methods with both therapeutic and non-therapeutic
indications 29
2.4. Surgical methods 32
2.5. Diagnostic methods 34
2.5.1 Interpreting the notion of "diagnostic methods" 34

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2.5.2 Opinion G 1/04 of the Enlarged Board of Appeal 35

2.6. Products for use in medical methods 37

B. Exceptions to patentability 37

1. Introduction 37
2. Inventions contrary to "ordre public" 39
3. Patentability of plants and plant varieties 42
4. Patentability of animals and animal varieties 43
5. Essentially biological processes 44
6. Microbiological processes and the products thereof 45

C. Novelty 46

1. Defining the state of the art 47

1.1. Relevant point in time 47
1.2. European prior rights 47
1.3. PCT applications as state of the art 48
1.4. In-house knowledge not published before the priority date 48
1.5. Definition of "common general knowledge" 48
1.6. Excluded national prior rights 50
1.7. Article 55 EPC 50
1.8. Availability to the public 51
1.8.1 Publication 51
1.8.2 Lecture 54
1.8.3 Abstracts of documents 54
1.8.4 Repetition of oral disclosures 55
1.8.5 Prior use 55
1.8.6 Biological material 56
1.8.7 The concept of "the public" 56
1.8.8 Obligation to maintain secrecy 58
1.9. Issues of proof 64
1.9.1 Nature of the evidence 64
1.9.2 Burden of proof 64
1.9.3 Standard of proof 65
1.9.4 Obligation of the EPO to examine of its own motion 67
2. Determining the content of the relevant prior art 67
2.1. General rules of interpretation 67
2.2. Combinations within a prior art document 70
2.3. Taking implicit features into account 71
2.4. Taking intrinsic features into account 73
2.5. Taking equivalents into account 73
2.6. Taking drawings into account 74

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2.7. Taking examples into account 74

2.8. Assessment of prior uses 75
2.9. Broad claims 78
2.10. Deficiencies and mistakes in a disclosure 79
2.11. Accidental disclosure 80
2.12. Reproducibility of the content of the disclosure 80
3. Ascertaining differences 82
3.1. Comparing each individual item from the prior art 82
3.2. Distinguishing features 83
3.2.1 Difference in wording 84
3.2.2 Differences in values 84
3.2.3 Difference in composition 85
3.2.4 Inevitably obtained products 86
3.2.5 Functional features 86
3.2.6 Generic disclosure 87
3.2.7 Product claim with process features 87
4. Chemical inventions and selection inventions 87
4.1. Novelty of chemical compounds and groups of compounds 88
4.1.1 Anticipation of certain compounds 89
4.1.2 Novelty of groups of substances 92
4.1.3 Novelty of enantiomers 93
4.1.4 Achieving a higher degree of purity 94
4.2. Selection of parameter ranges 96
4.2.1 Selection from a broad range 96
4.2.2 Overlapping ranges 97
4.2.3 Multiple selection 99
4.3. Subject-matter group 101
5. Novelty of use 101
5.1. First medical use 101
5.1.1 Introduction 101
5.1.2 Scope of a purpose-related product claim 102
5.1.3 Protection of a preparation in the form of a "kit-of-parts" 103
5.1.4 Further technical information as compared with the
state of the art 104
5.2. Second (or further) medical use 104
5.2.1 Formulation of claims 104
5.2.2 Novelty of the therapeutic application 107
5.3. Second (or further) non-medical use 113
5.3.1 Novelty criteria for use claims and process claims
containing a purpose feature 113
5.3.2 Statement of purpose in non-medical use claims in
view of Article 52(4) EPC 119

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5.3.3 Novelty criteria for product claims with purpose

characteristics 119

D. Inventive step 120

1. Introduction 120
2. Problem and solution approach 120
3. Closest prior art 121
3.1. Determination of closest prior art in general 121
3.2. Same purpose or effect 122
3.3. Similarity of the technical problem 122
3.4. Most promising springboard 123
3.5. Selection of most promising starting point 124
3.6. Improvement of a production process for a known product 125
3.7. Old prior art documents as closest prior art 125
4. Technical problem 126
4.1. Determination of the technical problem 126
4.2. Alleged advantages 127
4.3. Formulation of the technical problem 128
4.3.1 No pointers to the solution 128
4.3.2 Problem formulated in the patent application as starting
point 128
4.3.3 Formulation of partial problems - lack of unity 129
4.4. Reformulation of the technical problem 129
4.5. Alternative solution to a known problem 131
5. "Could-would approach" and ex post facto analysis 131
6. Expectation of success, especially in the field of genetic engineering
and biotechnology 132
7. Skilled person 135
7.1. Definition of the skilled person 135
7.1.1 Definition 135
7.1.2 Competent skilled person - group of people as "skilled
person" 136
7.1.3 Definition of the person skilled in the art in the field of
biotechnology 136
7.1.4 Identification of the skilled person in the case of
computer-implemented inventions 138
7.2. Neighbouring field 138
7.3. Skilled person - level of knowledge 139
7.4. Everyday items from a different technical field 140
8. Assessment of inventive step 141
8.1. Treatment of technical and non-technical features 141

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8.1.1 Technical character of the invention 141

8.1.2 Problem and solution approach 142
8.1.3 Identifying technical features 143
8.1.4 Assessment of technical effect 144
8.1.5 Formulation of the technical problem 146
8.2. Combination invention 147
8.2.1 Existence of a combination invention 147
8.2.2 Partial problems 148
8.3. Technical disclosure in a prior art document 149
8.4. Features not contributing to the solution of the problem 149
8.5. Foreseeable disadvantageous or technically non-functional
modifications 149
8.6. Substitution of materials - analogous use 150
8.7. Combination of documents 151
8.8. Chemical inventions 151
8.8.1 Structural similarity 151
8.8.2 Broad claims 152
8.8.3 Intermediate products 153
8.9. Equivalents 154
8.10. Problem inventions 154
8.11. New use of a known measure 155
8.12. Obvious new use 156
8.13. Need to improve properties 156
8.14. Disclaimer 157
8.15. Optimisation of parameters 157
8.16. Small improvement in commercially used process 158
8.17. Evidence of inventive step in the field of medicine 158
8.18. Analogy process - envisageable product 158
8.19. Examples on the denial of inventive step 159
8.19.1 Reversal of procedural steps 159
8.19.2 Purposive selection 159
8.19.3 Automation 160
8.19.4 Routine experiments 160
8.19.5 Simplification of complicated technology 160
8.19.6 Choice of one of several obvious solutions 160
8.19.7 Several obvious steps 161
9. Secondary indicia in the assessment of inventive step 161
9.1. General issues 161
9.2. Technical prejudice 161
9.3. Age of documents - time factor 163
9.4. Satisfaction of a long-felt need 163
9.5. Commercial success 164
9.6. Simple solution 165

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9.7. Surprising effect - bonus effect 166

9.8. Comparative tests 167

E. The requirement of industrial applicability under Article 57 EPC 168

1. Notion of "industrial application" 168

2. Indicia in determining industrial applicability 171
2.1. Methods applied in the private and personal sphere 171
2.2. Possibility of services offered by an enterprise 172
2.3. Other criteria - formulation of claims 172

II. CONDITIONS TO BE MET BY AN APPLICATION 173

A. Sufficiency of disclosure 173

1. Parts of the application relevant for assessing sufficiency of

disclosure 173
2. Knowledge of skilled person relevant for assessing sufficiency of
disclosure 173
3. Clarity and completeness of disclosure 175
4. Reproducibility without undue burden 177
5. The requirement of sufficiency of disclosure in the biotechnology
field 178
5.1. Clarity and completeness of disclosure 178
5.1.1 The extent to which the invention must be reproducible 178
5.1.2 Reproducibility without undue burden 179
5.2. Deposit of living material 181
5.2.1 Substantive law questions 181
5.2.2 Procedural law questions 182
6. The relationship between Article 83 and Article 84 EPC 183
6.1. Article 83 EPC and support from the description 183
6.2. Article 83 EPC and clarity of claims 184
7. Evidence 185

B. Claims 185

1. Clarity 186
1.1. Principles governing the text of claims 186
1.1.1 General 186
1.1.2 Reference to the description or drawings 188
1.1.3 Indication of all essential features 189
1.1.4 Clarity of broad claims 191

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1.1.5 Principles in connection with categories of claim 192

1.2. Exceptions to the principles 193
1.2.1 Disclaimers 193
1.2.2 Functional features 196
1.2.3 Unspecified features and relative qualities 198
2. Conciseness 199
2.1. General 199
2.2. Rule 29(2) EPC 200
3. Form of the claims 201
3.1. One-part or two-part claim 202
3.2. Particular issues in connection with two-part claims 202
4. Claims supported by the description 203
5. Interpretation of claims 205
5.1. General 205
5.2. Meaning of terms 206
5.3. Using description and drawings to interpret the claims 206
5.3.1 Use in the examination of the conditions for
patentability 207
5.3.2 Use in the examination relating to the requirements of
Article 123 EPC 208
5.3.3 Use in the examination relating to the clarity
requirement pursuant to Article 84 EPC 208
5.3.4 Scope of protection not defined with regard to
infringement 210
6. Product-by-process claims 211
6.1. Introduction 211
6.2. Requirement that the claimed product must be patentable 211
6.3. Requirement that the claimed product cannot be described in
any other way 213
6.4. Combination of product and process features 213
6.5. Extension of protection conferred by product-by-process
claims 213
7. Claims fees 214

C. Unity of invention 215

1. Introduction 215
2. Unity in the context of different types of claims 215
2.1. Plurality of independent claims 215
2.2. Dependent claims 217
2.3. Intermediate products 217
3. Assessing lack of unity of invention 218

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3.1. General approach - content of claims 218

3.2. Assessment of lack of unity by the International Searching
Authority (ISA) 219
3.3. Assessment of lack of unity in examination proceedings 220
3.3.1 Lack of unity raised at different stages of the procedure 221
3.3.2 Assessment of requests for refund of further search
fees (Rule 46(2) EPC) 221
3.4. No assessment of lack of unity in opposition proceedings 222
4. Criteria for determining lack of unity 223
4.1. Determination of the technical problem 223
4.2. Examination as to novelty and inventive step 223
5. The single general inventive concept 225
5.1. General 225
5.2. Inventive character of the single general concept 227
5.3. Unity of single claims defining alternatives ("Markush claims") 229
6. Plurality of inventions and further search fees 231
6.1. Consequences of non-payment of a further search fee 231
6.2. Dispensing with further search fee 233
6.3. Further invitations to pay additional search fees 233

III. AMENDMENTS - DIVISIONAL APPLICATIONS 235

A. Article 123(2) EPC 235

1. Content of the application as originally filed 235

1.1. General issues 235
1.2. Technical contribution - addition or deletion of a feature 242
1.3. Disclosure in drawings 246
1.4. Cross-references 248
1.5. Errors in the disclosure 249
1.5.1 Calculation errors 249
1.5.2 Incorrect structural formula 249
1.5.3 Amendment based on errors 249
1.5.4 Elimination of contradictions 250
1.6. Subsequent addition of details 251
1.6.1 Amendments in the description of the prior art 251
1.6.2 Subsequent addition of effects 252
1.6.3 Disclaimers 252
2. "Tests" for the assessing allowability of an amendment 259
2.1. Deducibility of amendments from the application as filed
directly and unambiguously 259
2.2. The "is it essential" test 263

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2.3. The "novelty test" 265

B. Article 123(3) EPC 266

1. General issues 266

2. Generalisation of a feature 269
3. Transposition of features 270
4. Change of claim category 270

C. Relationship between Article 123(2) and Article 123(3) EPC 274

1. Cases of conflict 274

2. Decision G 1/93 of the Enlarged Board of Appeal 275
3. Resolving the conflict in exceptional cases 276

D. Rule 88, second sentence, EPC 277

1. Relation to Article 123(2) EPC 277

2. Obviousness of the error and the correction 278

E. Standard of proof for allowing amendments and corrections 280

F. Divisional applications 281

1. Subject-matter of a divisional application 281

1.1. General principles 281
1.2. Validity of divisional applications 282
1.3. Amendments to divisional applications 283
1.4. Individual cases 284
2. Division of a divisional application 285
3. Double patenting 287

IV. PRIORITY 289

A. Applications giving rise to a right of priority 289

1. Application filed in or for a state party to the Paris Convention 289

2. Priority right of the applicant or his successor in title 289
3. National deposit of industrial design 290
4. Postdating of the previous application 290
5. Multiple exercise of the right of priority for one contracting state 290

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B. Identity of invention 291

1. Disclosure in the earlier application of the invention claimed in the

subsequent application 292
1.1. Basic considerations in the interpretation of "the same
invention" 292
1.2. Amendments and disclaimers 293
1.3. Disclosure in the previous application as a whole 293
1.4. Reference to common general knowledge 294
1.5. Explicit or implicit disclosure of the "essential" features in the
priority document 295
1.5.1 General 295
1.5.2 Cases of non-disclosure of an essential feature 295
1.5.3 Example of disclosure of essential features of an
invention 296
1.6. Solution of the same problem 297
1.7. Error margins and definitions of limits 297
1.8. Selection from generic disclosure 298
2. Claiming the invention disclosed in the earlier application in the
subsequent application 299
2.1. Implicit features of the technical teaching of the subsequent
application 299
2.2. Features missing with respect to the earlier application 300
2.2.1 Omission of non-essential features 300
2.2.2 Omission of indispensable features 300
3. Enabling disclosure in the priority document 301

C. First application in a Paris Convention country 303

D. Partial and multiple priorities 305

1. Publications during the priority interval 305

2. Different priorities for different parts of a European patent
application 305
3. Multiple priorities for one claim 306

V. RIGHT TO A EUROPEAN PATENT 309

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VI. RULES COMMON TO ALL PROCEEDINGS BEFORE THE

EPO 311

A. The principle of the protection of legitimate expectations 311

1. General issues 311

1.1. Sources of legitimate expectations 311
1.2. Examples of the legitimate expectations principle 312
1.3. Limits of the legitimate expectations principle 313
1.4. The requirement of proof 314
2. Obligation to draw attention to easily remediable deficiencies 315
2.1. Examples of the obligation to draw attention to easily
remediable deficiencies 315
2.2. Electronic filing of documents 317
2.3. Limits of the obligation to draw attention to easily remediable
deficiencies 317
3. Courtesy services performed by the EPO 318
4. Principle of legitimate expectations where the previous case law is
departed from 319
4.1. General 319
4.2. Point in time from which a new decision which deviates from
existing practice becomes generally applicable 320

B. Right to be heard 322

1. The general principle 322

1.1. The definition of "grounds or evidence" 322
1.2. Some examples of the principle 323
1.3. Limits of the principle 323
1.4. Right to be heard and the timing of decisions 324
2. Right to be heard in oral proceedings 325
2.1. Right to oral proceedings 325
2.2. Introduction of a new claim, relevant document or new
argument 326
2.2.1 Cases where new claims or relevant documents were
introduced 326
2.2.2 Cases where no new claims, relevant documents or
new arguments were introduced 327
2.3. Changes after oral proceedings 328
3. Non-appearance at oral proceedings and the right to be heard 328
3.1. Non-appearance at oral proceedings - case law concerning
G 4/92 328

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3.2. Non-appearance at oral hearings before the boards of appeal 331

4. Article 113(2) EPC 331
4.1. The requirement of a text agreed by the applicant 332
4.2. Cases where the EPO is uncertain or mistaken about the
approval of the text 332

C. Oral proceedings 333

1. Right to oral proceedings 333

1.1. The general principle 333
1.2. Oral proceedings before the Receiving Section 334
1.3. Examples of the principle 334
2. Request for oral proceedings 335
2.1. Wording of request 335
2.1.1 Wording constituting a request 335
2.1.2 Wording not constituting a request 336
2.2. Withdrawal of request 336
2.3. Further oral proceedings before the same department 337
2.4. Auxiliary request for oral proceedings 338
2.5. Request for oral proceedings in further prosecution
proceedings 339
3. Non-appearance at oral proceedings 339
3.1. Right to present comments and non-attendance of a party by
choice 339
3.2. Obligation to give notice if not attending oral proceedings 339
4. Preparation and conduct of oral proceedings 340
4.1. Fixing or postponing the date for oral proceedings 340
4.1.1 Unavailability of a party, representative or expert 341
4.1.2 New evidence 342
4.1.3 Proceedings before a national court 342
4.2. Curtailment of notice in the summons 342
4.3. Communication under Article 11(1) RPBA 343
4.4. Interpretation and application of Rule 71a EPC 343
4.4.1 Examination and opposition proceedings 344
4.4.2 Appeal proceedings 345
4.5. Computer-generated presentations 346
4.6. Taking of minutes 346
4.7. Costs 347
4.7.1 Apportionment of costs 347
4.7.2 Interpreting costs during oral proceedings 347

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D. Time limits, further processing and interruption of proceedings 348

1. Calculation of time limits 348

1.1. Calculation of time limits under Rule 83 EPC 348
1.2. Extension of time limits ipso jure on account of public holidays
or technical failures 349
1.2.1 Public holiday in one of the filing locations under Rule
85(1) EPC 349
1.2.2 Interruption in the delivery of mail 349
1.3. Statutory periods of grace and the fiction of observance of a
time limit for fee payments 350
1.3.1 Additional period for renewal fees under Article
86(2) EPC 350
1.3.2 Period of grace for payment of fees under Rule
85a EPC 350
1.3.3 Fiction of fee payment in due time pursuant to Article
8(3) and (4) RRF 351
2. Extension of time limits on request and further processing 352
2.1. Relevant criteria when time limits are extended 352
2.2. Further processing under Art. 121 EPC 352
3. Interruption of proceedings (Rule 90 EPC) 353
3.1. Application of Rule 90 EPC by the EPO of its own motion 353
3.2. Concept of legal incapacity (Rule 90(1)(a) and (c) EPC) 353
3.3. Determining legal incapacity of the applicant or patent
proprietor for the purpose of Rule 90(1)(a) EPC 354
3.4. Determining legal incapacity of the representative for the
purpose of Rule 90(1)(c) EPC 354
3.5. Legal incapacity of a representative from outside the
contracting states 355
3.6. Interruption of proceedings because of insolvency (Rule
90(1)(b) EPC) 356
3.7. Consequences of interruption of proceedings (Rule
90(4) EPC) 357

E. Re-establishment of rights 357

1. Applicability of re-establishment of rights (Article 122(1) EPC) 357

1.1. The meaning of "time limit" 357
1.2. Loss of rights as a direct consequence by virtue of the EPC 358
1.3. Omission of acts by applicant 359
2. Admissibility of applications for re-establishment of rights 360
2.1. Department competent to decide upon the application 360

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2.1.1 When the fee for grant and the printing fee have not
been paid or the translation has not been filed 360
2.1.2 When no reply has been received to a communication
under Article 96(2) EPC 360
2.1.3 When a renewal fee has not been paid 361
2.1.4 When a notice of appeal or statement of grounds of
appeal has not been filed 361
2.1.5 When a protest under Rule 40.2 PCT has not been filed 362
2.2. Time limits for filing an application for re-establishment (Article
122(2) EPC) 362
2.2.1 Two-month time limit from the removal of the cause of
non-compliance 362
2.2.2 One-year time limit following the expiry of the
unobserved time limit 365
2.3. Making good the omitted act 366
2.4. Filing and substantiation of the application (Article 122(2) and
(3) EPC) 366
2.5. Correction of deficiencies in the application for re-
establishment 368
3. Time limits excluded from re-establishment under Article
122(5) EPC 368
3.1. General issues 368
3.2. PCT time limits excluded under Article 122(5) EPC 369
4. Article 48(2)(a) PCT 371
5. Parties to proceedings 372
6. Merit of applications for re-establishment of rights 372
6.1. Inability to observe a time limit 372
6.1.1 Financial difficulties 372
6.1.2 Tactical considerations 373
6.2. General comments on due care 374
6.2.1 Exceptional circumstances 374
6.2.2 Isolated mistake within a satisfactory system for
monitoring time limits 375
6.3. Persons required to exercise due care; requirements
regarding due care 378
6.3.1 Due care on the part of the applicant 378
6.3.2 Due care on the part of the professional representative 379
6.3.3 Due care on the part of a non-authorised representative 382
6.3.4 Due care in dealing with assistants 383
6.3.5 Due care in using mail delivery services 386
7. Rights of use under Article 122(6) EPC 387
8. Restitutio in integrum - Interruption of proceedings 387

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9. Interrelation between Article 122 EPC and Rule 85(2) EPC 388
10. Principle of proportionality 388

F. Late submission 388

1. The meaning of "late" - delaying the proceedings 389

2. Consideration of late submissions 390
3. Exercising discretion over admitting late submissions 392
3.1. Examination as to relevance 392
3.1.1 General 392
3.1.2 Examination as to relevance with regard to G 9/91 and
G 10/91 393
3.1.3 Examination as to relevance and abuse of procedure 394
3.1.4 Procedural abuse in the case of public prior use 396
3.1.5 Examination as to relevance and justified late
submission 399
4. Late submission and the right to be heard 400
5. Late-filed arguments 401
6. Documents cited in the patent or the search report 402
7. Remittal to the department of first instance 403
7.1. General 403
7.2. Patent in jeopardy 404
7.3. New facts 405
8. Apportionment of costs 405

G. Divisional applications 406

1. Procedural questions 406

1.1. Introduction 406
1.2. Rule 25(1) EPC 407
1.2.1 General 407
1.2.2 Filing period 407
1.3. Designation of contracting states in a divisional application 409
1.4. Right to file a divisional application 410
1.5. Correction of errors 410

H. Rules relating to Fees 411

1. Payment of fee 411

1.1. Incorrect debit orders 411
1.2. Designation fees 411
1.3. Indication of purpose of payment 412

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1.4. Methods of paying 412

2. Date of payment 412
3. Small amount lacking 413

I. Procedural steps 414

1. General principles 414

2. Signatures 415
3. Main and auxiliary requests 415
3.1. Admissibility 415
3.2. Examination procedure 415
3.3. Opposition procedure 416
4. Maintenance in the case of prior European rights 416

J. Withdrawal of application and surrender of patent 417

1. Withdrawal of patent application as a whole 417

2. Surrender of patent as a whole 418
3. Abandonment of parts of an application or patent 419
3.1. Abandonment with substantive effect 419
3.2. Abandonment without substantive effect 420
3.2.1 Examination proceedings 420
3.2.2 Opposition proceedings 420
3.3. Non-payment of further search fees in the case of lack of unity 422
3.4. Non-payment of claims fees 422

K. Law of evidence 423

1. Introduction and definitions 423

2. Admissibility of evidence 424
2.1. No definitive itemisation of admissible evidence 424
2.2. Hearing parties, witnesses and experts 424
2.3. Unsworn witness declarations (affidavits) 426
2.4. Other evidence 427
3. Procedure for the taking of evidence 427
3.1. Competent departments 427
3.2. Time frame 427
3.3. Taking of evidence - scope 427
3.4. Keeping of evidence 428
4. Evaluation of evidence 428
4.1. Principle of unfettered consideration of evidence 428
4.2. Probative value of evidence - individual cases 429

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 Table of contents

4.2.1 Evidence sufficient 429

4.2.2 Evidence insufficient 430
4.3. "Balance of probabilities" and standard of proof - case groups 433
4.3.1 Prior use 433
4.3.2 Content of a disclosure 434
4.3.3 Amendments 435
4.3.4 Claiming a valid priority 435
4.3.5 Abusive conduct 435
4.3.6 Procedural issues 436
4.3.7 Disciplinary matters 437
5. Burden of proof 437
5.1. Apportioning the burden of proof 437
5.1.1 General 437
5.1.2 Individual cases 438
5.2. Shifting of the burden of proof 440

L. Representation 441

1. Professional representatives 441

1.1. List of professional representatives (Article 134(1) EPC) 441
1.2. Duty of persons without residence nor place of business within
a contracting state to be represented by a professional
representative 442
1.3. Professional representatives during the transitional period 442
1.4. Procedural steps performed by a person other than the
professional representative 443
2. Legal practitioners entitled to act as professional representative 443
2.1. Introduction 443
2.2. Register of legal practitioners 444
2.3. Qualifying conditions according to Article 134(7) EPC 445
3. Appointment of a common professional representative (Rule 100
EPC) 446
4. Authorisations for appointment of a representative 447
4.1. Filing of the authorisation 447
4.2. General authorisations 448
4.3. Sub-authorisations 449
4.4. Authorisation of an association of representatives 449
5. Oral submissions by an accompanying person 450
5.1. General 450
5.2. Oral submissions by former members of the boards of appeal 453
5.3. Oral submissions by qualified patent lawyers of non-EPC
contracting states 454

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Table of contents

6. Distinction between presentation of facts and evidence and

presentation of arguments 454

M. Decisions of EPO departments 455

1. Right to a decision 455

2. Composition of the competent departments of first instance 456
2.1. Examining division 456
2.2. Opposition division 456
3. Suspected partiality 458
3.1. General principles 458
3.2. Individual cases 459
3.2.1 Members of the examining and opposition divisions 459
3.2.2 Members of the boards of appeal 461
4. Date of decision 463
4.1. Entry into force of decisions 463
4.2. Completion of the internal decision-making process 463
5. Form of decisions 464
5.1. General issues 464
5.2. Inconsistency between oral and written decisions 466
5.3. Reasons for the decision 466
5.3.1 Reason for main and auxiliary requests 466
5.3.2 Compliance with the requirements of Rule 68(2) EPC 467
5.3.3 Non-compliance with the requirements of Rule
68(2) EPC 467
5.4. Signatures on a decision 470
6. Correction of errors in decisions 471
6.1. General issues 471
6.2. Errors in the printed version of the European patent
specification 473
6.3. Competence to correct a decision under Rule 89 EPC 474
7. Principles for the exercise of discretion 475
8. Legal status of the Guidelines for Examination in the EPO 476
9. Duties not entrusted to formalities officers 477
10. Jurisdiction 478

N. Other procedural questions 478

1. Language privilege 478

2. Inspection of files 480
3. Register of Patents 481

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 Table of contents

3.1. General 481

3.2. Registration of licences 481
3.3. Transfer 481
4. Suspension of proceedings under Rule 13(1) EPC 482
4.1. Rule 13(1) EPC 482
4.1.1 General 482
4.1.2 Opening of proceedings before a national court 483
4.2. Rule 13(3) EPC 484
5. Notifications 484
6. Unity of the European patent application 486

O. Interpretation of the EPC 486

1. The Vienna Convention on the Law of Treaties 486

2. Agreement on Trade-related Aspects of Intellectual Property Rights
(TRIPS) 487
2.1. The requirement for the judicial review of decisions 487
2.2. Interpretation of Article 87 EPC in the light of TRIPS 488
3. Interpretation of the various language texts of the EPC (Article 177
EPC) 488
4. Interpretation of the EPC by the boards of appeal 489
4.1. Decisions of the Administrative Council concerning a question
of interpretation 489
4.2. Taking national decisions into account 489
4.3. Implementing Regulations 490
5. Allocation of responsibilities in the EPC 490

VII. PROCEEDINGS BEFORE THE EPO 491

A. Preliminary and formalities examination 491

1. Accordance of a date of filing - language of the filed documents 491

2. Application documents 492
2.1. Filing of application documents 492
2.2. Subsequent filing of drawings 493
2.3. Replacing the invention 493
2.4. Extent of competence of the Receiving Section 494
3. Identity of the applicant 495
4. Designation of states 496
4.1. Article 79(2) EPC (old version) 496
4.2. Article 79(2) EPC (current version) 496

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Table of contents

4.3. Effect of non-payment of designation fees 497

4.4. Correction of designation of states in Euro-PCT applications 498
5. Correction of priority declarations 499
6. Filing of priority documents 502
7. Applicability of Article 110(3) EPC 502
8. Publication of the application 502

B. Examination procedure 503

1. Request for examination 503

2. Procedure stage prior to substantive examination 504
2.1. Communication under Article 96(1) EPC and Rule 51(1) EPC 504
2.2. Amendments after receipt of the European search report (Rule
86(2) EPC) 504
2.3. Failure to reply to the communication pursuant to Article
96(1) EPC (Article 96(3) EPC) 505
3. Substantive examination of the application 505
3.1. First and further communications pursuant to Article
96(2) EPC and Rule 51(2) EPC 505
3.2. Contents of a communication according to Article 96(2) EPC
and Rule 51(3) EPC 507
3.3. Amendments after receipt of the first communication (Rule
86(3) EPC) 508
3.4. Admissibility of amendments after reply to the first
communication 508
3.5. Amendments relating to unsearched subject-matter 509
3.6. Issuance of a further communication under Article 113(1) EPC 512
3.7. Informal communications 516
3.7.1 Telephone conversations 516
3.7.2 Interviews 516
3.8. Failure to reply to the communication pursuant to Article
96(2) EPC 518
3.9. Refusal of a European patent application (Article 97(1) EPC) 518
3.10. Amendments filed before the boards of appeal 519
4. Examination proceedings after issue of the Rule 51(4) EPC
communication 520
4.1. Introduction 520
4.2. Approval of the text by the applicant 520
4.2.1 Clear and unambiguous approval according to R. 51(4)
EPC (earlier version) 520
4.2.2 Rule 51(4) EPC communication refusing main and first
auxiliary requests (2002 version) 521

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 Table of contents

4.3. Article 113(2) EPC 522

4.4. Amendments filed in reply to a communication under Rule
51(4) EPC 523
4.5. Re-opening examination after approval of the text for grant 525
4.6. Examination after remittal for further prosecution 525
4.7. Late amendments under new Rule 51(6) EPC communication 526
4.8. Amendment after completion of the examination procedure 528
5. Consolidation of proceedings 528
6. Entry into force of a decision to grant a European patent 529
7. Errors in the Patent Bulletin 530
8. Metric or SI units 531

C. Opposition procedure 531

1. Legal nature of opposition proceedings 531

1.1. Introduction 531
1.2. Independent procedure 531
1.3. Contentious proceedings 531
1.4. Principle of ex officio examination 532
1.5. Principle of impartiality 533
2. Right to be heard in opposition proceedings 533
2.1. Opportunity to make comments and principle of equal rights 533
2.2. Invitation to file observations under Article 101(2) EPC 534
2.2.1 "As often as necessary" 534
2.2.2 Limitation of the parties' observations to the "necessary
and expedient" 535
2.3. Communication and invitation to file observations under
Rule 58(4) EPC 536
2.4. EPO communications to "take note" and sufficient time to
submit a response 536
2.5. Opportunity to comment - case groups 538
2.5.1 Opportunity to comment on new grounds of opposition 538
2.5.2 Opportunity to comment on uncontested claims 539
2.5.3 Opportunity to comment on provisional opinions of the
opposition division 539
2.5.4 Opportunity to comment where the opposition is
rejected as inadmissible 540
2.5.5 Opportunity to comment after remittal to the department
of first instance 540
3. Special features of the opposition procedure 541
3.1. Transfer of opponent status 541
3.2. Impact of withdrawal of opposition on proceedings before the
EPO 543

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Table of contents

3.2.1 Withdrawal of opposition during opposition proceedings 543

3.2.2 Withdrawal of opposition during appeal proceedings 544
3.3. Continuation of opposition proceedings in the event of
surrender or lapse of a European patent 545
3.4. Acceleration of proceedings in the case of pending
infringement proceedings 546
3.5. Intervention of an alleged infringer 546
4. Examination of admissibility of opposition 548
4.1. Examination of admissibility by the EPO of its own motion 548
4.2. Competence to decide on inadmissibility 549
4.3. Formal requirements for opposition and filing in due time 549
4.3.1 Fundamentals 549
4.3.2 Designating the opponent 550
4.3.3 Title of the invention 550
4.3.4 Payment of the opposition fee 551
4.3.5 Other requirements 551
4.4. Entitlement to file an opposition 551
4.4.1 General conditions 551
4.4.2 No personal interest of the opponent - double filing of
opposition by the same person 552
4.4.3 Opposition by the patent proprietor 553
4.4.4 Opposition on behalf of a third party - straw man 553
4.4.5 Admissibility of a joint opposition - multiple opponents 554
4.5. Substantiation of the opposition 556
4.5.1 Required content of the notice of opposition 556
4.5.2 Case groups 558
4.5.3 Opposition based on public prior use 561
5. Substantive examination of the opposition 562
5.1. Introduction 562
5.2. Examination of the legal framework of the opposition 563
5.2.1 Extent to which the European patent is opposed 563
5.2.2 Grounds on which the opposition is based 565
5.3. Examination of the factual framework of the opposition 568
6. Amendments in opposition proceedings 569
6.1. Admissibility of amendments 569
6.1.1 General 569
6.1.2 Filing date of amendments 570
6.1.3 Filing additional dependent and independent claims 571
6.1.4 Amendments intended to remedy a lack of clarity 573
6.2. Substantive examination in case of amendments 575
6.3. Additional search 576
7. Decisions of the opposition division 576
7.1. Revocation of a European patent by way of a decision 576

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 Table of contents

7.2. Interlocutory decisions 577

7.2.1 General 577
7.2.2 Maintenance of the European patent as amended 577
8. Apportionment of costs 578
8.1. Principle that each party must bear its own costs 578
8.2. Equity of a different apportionment of costs – case groups 579
8.2.1 Late submission of documents and/or requests 579
8.2.2 Request for oral proceedings withdrawn or
postponement requested 584
8.2.3 Appeal or opposition withdrawn 585
8.2.4 Failure of a party to appear at the oral proceedings 585
8.2.5 Cases of alleged abuse of procedure or abuse of oral
proceedings 588
8.3. Apportionable costs 590
8.4. Fixing of costs 591
8.5. Procedural aspects 592
8.5.1 Filing a request for apportionment of costs 592
8.5.2 Competence issues 592
8.5.3 Appeal solely against the decision on costs
inadmissible 593

D. Appeal procedure 593

1. Legal character of appeal procedure 593

2. Suspensive effect of the appeal 594
3. Devolutive effect of the appeal 595
4. Language of the proceedings 595
5. Procedural status of the parties 596
5.1. Parties to appeal proceedings 596
5.2. Transfer of party status 597
5.2.1 Opponent 597
5.2.2 Patent proprietor 597
5.3. Rights of parties under Article 107 EPC 598
5.4. Intervention 599
5.4.1 Admissibility of intervention 599
5.4.2 Intervener's rights 600
5.5. Observations by third parties 600
6. Extent of scrutiny 601
6.1. Binding effect of requests - no reformatio in peius 601
6.2. Subject-matter under examination 604
6.3. Patentability requirements under examination 606
6.3.1 In opposition appeal proceedings 606
6.3.2 Ex parte proceedings 609

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Table of contents

6.4. Facts under examination - applying Article 114 EPC in appeal

proceedings 610
6.5. Arguments under examination 611
6.6. Review of first-instance discretionary decisions 611
7. Filing and admissibility of the appeal 611
7.1. Appealable decisions 612
7.1.1 Departments 612
7.1.2 Decisions 612
7.1.3 Interlocutory decisions 613
7.1.4 Appeals against decisions of the boards of appeal 613
7.2. Board competent to hear a case 614
7.3. Entitlement to appeal 614
7.3.1 Formal aspects 614
7.3.2 Party adversely affected 615
7.4. Form and time limit of appeal 618
7.4.1 Form and content of notice of appeal 619
7.4.2 Appeal filed within the time limit 620
7.4.3 Payment of appeal fee 621
7.5. Statement of grounds of appeal 621
7.5.1 General principles 621
7.5.2 Exceptions to these principles 622
7.5.3 Change of circumstances after delivery of the decision 624
7.5.4 Reference to an earlier submission 625
7.5.5 References to other documents 625
8. Conclusion of the decision-making process 626
8.1. Closure of the substantive debate 626
8.2. Decision taken as the file stands 626
8.3. Proceedings after delivery of the decision 626
8.4. Interlocutory decisions of a board 627
9. Remittal to the department of first instance 627
10. Binding effect 629
10.1. General principles 629
10.2. Type of remittal 631
10.2.1 Remittal only for adaptation of the description 631
10.2.2 Remittal for the continuation of proceedings 631
11. Termination of appeal proceedings 632
11.1. Withdrawal of the appeal 632
11.2. Withdrawal of the opposition during appeal proceedings 634
11.3. Request for revocation of a patent 634
11.4. Patent expired in all designated states 635
12. Interlocutory revision 635
12.1. General 636

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 Table of contents

12.2. Reimbursement of appeal fee 636

12.3. Substantial procedural violation 637
13. Referral to the Enlarged Board of Appeal 637
13.1. Ensuring uniform application of the law 638
13.2. Important points of law 638
13.3. Suspension of first-instance proceedings following referral to
Enlarged Board 639
14. Filing of amended claims in appeal proceedings 640
14.1. Admissibility of filing amended claims in appeal proceedings 640
14.2. Criteria for taking amendments to claims into consideration 641
14.2.1 Time of filing 643
14.2.2 Difficulty of examination 645
14.2.3 Reasons for late filing 646
14.3. Amended claims not admitted with divisional applications
pending 649
14.4. Remittal to the department of first instance because of
substantial amendments to claims 649
15. Reimbursement of appeal fees 650
15.1. General issues 650
15.2. Allowability of the appeal 651
15.3. Fairness 651
15.3.1 Reimbursement held to be equitable 652
15.3.2 Reimbursement held not to be equitable 652
15.4. Substantial procedural violation 653
15.4.1 Definition 654
15.4.2 Request for oral proceedings 654
15.4.3 Right to be heard 655
15.4.4 Inadequate reasons given in the decision at first
instance 657
15.4.5 Error of judgment by a department of first instance 659
15.4.6 Miscellaneous other cases 660
15.5. Interlocutory revision 662

VIII. PROCEEDINGS BEFORE THE DISCIPLINARY BOARD OF

APPEAL 665
1. Introduction 665
2. European qualifying examination 666
2.1. Conditions for enrolment 666
2.2. Examination conditions 668
2.3. Marking the answer papers 669
2.4. Borderline cases 670

XXVII
Table of contents

2.5. Substantiation of EQE decisions 670

2.6. Appeals against decisions of the Examination Board and the
Examination Secretariat 671
2.6.1 Competence of the board of appeal 671
2.6.2 Objective review of the marks awarded 671
2.6.3 Legitimate interest 672
2.6.4 Duties of the Examination Board 673
3. Disciplinary matters 673
3.1. Disciplinary measures 673
3.2. Appealability of decisions in disciplinary matters 674
4. Code of Professional Conduct 674
4.1. General professional obligations 674
4.2. Professional secrecy 675
4.3. Advertising 675

IX. THE EPO ACTING AS A PCT AUTHORITY 677

A. Introduction 677

1. Structure of the EPC provisions relating to international applications

under the PCT since 1 March 2000 677
2. Time limits for the European phase entry of an international
application (Rule 107(1) EPC) 677

B. Competence of the boards of appeal in proceedings under the

PCT 677

1. The changing role of the boards of appeal 677

2. The role of the boards of appeal prior to the introduction of EPC
2000 677

C. The EPO acting as ISA and IPEA 679

1. PCT guidelines binding on the ISA and IPEA 679

2. Protest procedure: the new provisions 680
3. Protest procedure: the EPO acting as ISA 681
3.1. Substantiation of invitation 681
3.2. Substantiation of protest 683
3.3. Review of protests 684
3.3.1 The review of protests by a review panel 684
3.3.2 Review of protest by a board 685
3.4. Missed time limit for filing the protest 687

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 Table of contents

4. Protest procedure: the EPO acting as IPEA 687

4.1. General issues 687
4.2. Substantiation of invitation 688
4.3. Substantiation of protest 689
4.4. Composition of a review panel 690
4.5. Review of protests 691
4.6. Additional fees - partial reimbursement 692

D. The EPO as designated or elected Office 692

X. INSTITUTIONAL MATTERS 697

1. Administrative Agreement with the German Patent Office 697
2. Power under Article 23(4) EPC to amend the RPBA 698
3. Extension Ordinances on the extension of European patents 698
4. Referrals to the Court of Justice of the European Communities
under the EC Treaty - legal status of the EPO boards of appeal 700

TABLE OF CASES 701

Decisions of the Disciplinary Board 701
Decisions and opinions of the Enlarged Board of Appeal 701
Decisions of the Legal Board of Appeal 702
Decisions of the technical boards of appeal 705
PCT Protests 728

INDEX OF CITED PROVISIONS 729

1. European Patent Convention 729
2. Implementing Regulations to the EPC 731
3. Rules relating to Fees 733
4. Patent Cooperation Treaty (articles and rules) 733
PCT Articles 733
PCT Rules 733
5. Regulation on the European qualifying examination for professional
representatives 734
6. Regulation on discipline for professional representatives 734
7. Rules of Procedure of the Boards of Appeal 734

XXIX
Table of contents

CROSS-REFERENCE LIST EPC 1973 - EPC 2000 735

GENERAL INDEX 743

XXX
 Reader's Guide

Reader's Guide
1. Abbreviations
Art. Article
BlfPMZ Blatt für Patent-, Muster- und Zeichenwesen (German periodical)
Budapest Treaty Budapest Treaty on the International Recognition of the Deposit of
Microorganisms
CAFC US Court of Appeal for the Federal Circuit
cf. compare
Corr. Corrigendum
DBA Disciplinary Board of Appeal
DG Directorate General of the European Patent Office
DPMA German Patent Office
EC European Community
ed. edition
eg for example
EPC European Patent Convention
epi European Patent Institute (Institute of Professional Representatives
before the European Patent Office)
EPO European Patent Office
EQE European Qualifying Examination
et seq. and the following
GRUR Zeitschrift für gewerblichen Rechtsschutz und Urheberrecht
(German periodical)
Guidelines Guidelines for Examination in the European Patent Office
ie that is
IPEA International Preliminary Examining Authority
IPER International Preliminary Examination Report
IRB International Patent Institute
IRPI French Institute for Research into Intellectual Property
ISA International Searching Authority
ISPE Guidelines International Search and Preliminary Examination Guidelines
no. number
OJ Official Journal of the European Patent Office
Paris Convention Paris Convention for the Protection of Industrial Property
PCT Patent Cooperation Treaty
R. Rule
RDR Regulation on Discipline for Professional Representatives
REE Regulation on the European Qualifying Examination for Professional
Representatives
rev. revised
RPBA Rule of Procedures of the Boards of Appeal
RRF Rules relating to Fees
TRIPS Agreement on Trade-related Aspects of Intellectual Property Rights
UPOV International Union for the Protection of New Varieties of Plants
USPTO United States Patent and Trademark Office
WIPO World Intellectual Property Organization

XXXI
Reader's Guide

2. Citations
(a) The articles and rules of the EPC referred to are in the version valid at the time the
decision was given.
(b) The Official Journal of the EPO is cited as OJ, followed by the year of publication and
page number (eg OJ 1993, 408).
(c) If a decision of a board of appeal has been published in the OJ the reference is
given.
If a decision has not been published in the OJ, normally only the case number is cited.
In the table of cases, the bibliographic data of all cited decisions (ie reference number,
the board which took the decision, the date of the decision, and - where applicable - the
citation in the OJ) are listed.

3. Case numbers
The case numbers comprise a letter followed by a sequence of numbers:
G Decisions of the Enlarged Board
J Decisions of the Legal Board
T Decisions of a Technical Board
W Decisions of a Technical Board on protests under R. 40.2 or 68.3 PCT
D Decisions of the Disciplinary Board

The number before the oblique is a serial number, allocated by chronological order of
receipt in DG 3. The two numbers after the oblique indicate the year of receipt of the
appeal in DG3.

XXXII
 Referrals to the Enlarged Board of Appeal

REFERRALS TO THE ENLARGED BOARD OF APPEAL

Referrals by boards of appeal

By decision T 39/03 dated 26 August 2005, Technical Board of Appeal 3.4.02 has
referred the following points of law to the Enlarged Board of Appeal under Art. 112(1)(a)
EPC:
(1) Can a divisional application which does not meet the requirements of Art. 76(1) EPC
because, at its actual filing date, it extends beyond the content of the earlier EPA Form
3030 06.03 application, be amended later in order to make it a valid divisional
application?
(2) If the answer to question (1) is yes, is this still possible when the earlier application is
no longer pending?
(3) If the answer to question (2) is yes, are there any further limitations of substance to
this possibility beyond those imposed by Art. 76(1) and 123(2) EPC? Can the corrected
divisional application in particular be directed to aspects of the earlier application not
encompassed by those to which the divisional as filed had been directed?
The case is pending under Ref. No. G 1/05.

By interlocutory decision T 1409/05 dated 30 March 2006, Technical Board of Appeal

3.4.03 has referred the following points of law to the Enlarged Board of Appeal under
Art. 112(1)(a) EPC:
(1) In the case of a sequence of applications consisting of a root (originating) application
followed by divisional applications, each divided from its predecessor, is it a necessary
and sufficient condition for a divisional application of that sequence to comply with
Art. 76(1), second sentence, EPC that anything disclosed in that divisional application be
directly, unambiguously and separately derivable from what is disclosed in each of the
preceding applications as filed?
(2) If the above condition is not sufficient, does said sentence impose the additional
requirement (a) that the subject-matter of the claims of said divisional be nested within
the subject-matter of the claims of its divisional predecessors or (b) that all the divisional
predecessors of said divisional comply with Art. 76(1) EPC?
The case is pending under Ref. No. G 1/06.

By interlocutory decision T 1374/04 dated 7 April 2006, Technical Board of Appeal 3.3.08
has referred the following points of law to the Enlarged Board of Appeal following
Art. 112(1)(a) EPC :
(1) Does R. 23d(c) EPC apply to an application filed before the entry into force of the
rule?

XXXIII
Referrals to the Enlarged Board of Appeal

(2) If the answer to question 1 is yes, does R. 23d(c) EPC forbid the patenting of claims
directed to products (here: human embryonic stem cell cultures) which - as described in
the application - at the filing date could be prepared exclusively by a method which
necessarily involved the destruction of the human embryos from which the said products
are derived, if the said method is not part of the claims?
(3) If the answer to question 1 or 2 is no, does Art. 53(a) EPC forbid patenting such
claims?
(4) In the context of questions 2 and 3, is it of relevance that after the filing date the
same products could be obtained without having to recur to a method necessarily
involving the destruction of human embryos (here: eg derivation from available human
embryonic cell lines)?
The case is pending under Ref. No. G 2/06.

By decision T 1040/04 dated 23 March 2006, Technical Board of Appeal 3.2.03 has
referred the following point of law to the Enlarged Board of Appeal under Art. 112(1)(a)
EPC:
Can a patent which has been granted on a divisional application which did not meet the
requirements of Art. 76(1) EPC because at its actual date of filing it extended beyond the
content of the earlier application, be amended during opposition proceedings in order to
overcome the ground of opposition under Art. 100(c) EPC and thereby fulfil said
requirements ?
The case is pending under Ref. No. G 3/06.

XXXIV
 I.A.1. Technical nature of an invention

I. PATENTABILITY
Art. 52(1) EPC states the four essential pre-conditions for the grant of a European
patent. The application must relate to an invention which is novel, involves an inventive
step and is susceptible to industrial application.
A. Patentable inventions
Patentable inventions

The EPC does not expressly define what an invention is. Art. 52(2) EPC contains,
however, a non-exhaustive list of subject-matter or activities which shall not be regarded
as inventions within the meaning of paragraph 1. According to this article, excluded from
patentability are in particular discoveries, scientific theories and mathematical methods;
aesthetic creations; schemes, rules and methods for performing mental acts, playing
games or doing business, and programs for computers and finally presentations of
information. The subject-matter or activities on this list are not patentable only if the
European patent application or patent relates to them as such (Art. 52(3) EPC).
Art. 52(4) EPC provides that methods for treatment of the human or animal body by
surgery or therapy and diagnostic methods practised on the human or animal body shall
not be regarded as inventions which are susceptible of industrial application.
1. Technical nature of an invention
I.A.1. Technical nature of an invention

The EPC does not expressly define what an invention is, however it has been part of the
European legal tradition that patent protection should be reserved for technical creations.
According to the case law of the boards of appeal the use of the term "invention" in
Art. 52(1) EPC in conjunction with the so-called "exclusion provisions" of Art. 52(2)
and (3) EPC, which mention subject-matter that in particular shall not be regarded as
inventions within the meaning of paragraph 1, is understood as implying a requirement of
technical character or technicality which is to be fulfilled by an invention as claimed in
order to be patentable. Thus an invention may be an invention within the meaning of
Art. 52(1) EPC if for example a technical effect is achieved by the invention or if technical
considerations are required to carry out the invention. The term "invention" is to be
construed as "subject-matter having technical character" (T 931/95, OJ 2001, 441;
T 258/03, OJ 2004, 575; T 619/02, OJ 2007, ***). The subject-matter for which protection
is sought must therefore have a technical character in order to be regarded as
patentable. In particular, this requirement is not met if the patent application or the patent
relates to mathematical methods, rules and methods for performing mental acts or doing
business, presentation of information or computer programs as such (see Art. 52(2) and
(3) EPC).
In order to assess whether the claimed subject-matter is an invention within the meaning
of Art. 52(1) EPC, the boards of appeal have applied in the earlier jurisprudence the so-
called contribution approach according to which an invention has a technical character
if it provides a technical contribution to the state of the art in a field not excluded from
patentability under Art. 52(2) EPC. (T 121/85, T 38/86, OJ 1990, 384; T 95/86, T 603/89,
OJ 1992, 230; T 71/91, T 236/91, T 833/91, T 77/92).
More recent decisions, however, considered this approach not to be appropriate to
assess whether or not an invention has technical character. In T 931/95 (OJ 2001, 441)
the board stated that there was no basis in the EPC for distinguishing between new
features of an invention and features of that invention which are known from the prior art

1
Patentable inventions

when examining whether the invention concerned may be considered to be an invention

within the meaning of Art. 52(1) EPC. Thus there was no basis in the EPC for applying
the so-called contribution approach for this purpose. Indeed, this approach confused the
requirement of "invention" with the requirements of "novelty" and "inventive step”.
Already in T 1173/97 (OJ 1999, 609) it was held that determining the technical
contribution an invention achieved with respect to the prior art was more appropriate for
the purpose of examining novelty and inventive step than for deciding on possible
exclusion under Art. 52(2) and (3) EPC. In T 1001/99 the board followed the conclusion
drawn in decision T 931/95 (OJ 2001, 441) and noted that in all cases it was the entire
claim, including all its features, whether known or unknown, technical or non-technical,
which had to be taken as a basis for examination.
According to T 931/95 (OJ 2001, 441) an apparatus constituting a physical entity or
concrete product, suitable for performing or supporting an economic activity, is an
invention within the meaning of Art. 52(1) EPC (confirmed in T 258/03). However, the
board pointed out in T 258/03 (OJ 2004, 575) that the reasoning above was independent
of the category of the claim. Contrary to T 931/95 (see Headnote 2) the board concluded
that, in general, a method involving technical means is an invention within the meaning
of Art. 52(1) EPC.
In T 424/03 the board added that the claim category of a computer-implemented method
is distinguished from that of a computer program. Even though a method, in particular a
method of operating a computer, may be put into practice with the help of a computer
program, a claim relating to such a method does not claim a computer program in the
category of a computer program.
In T 258/03 (OJ 2004, 575) the board stated with regard to the concept of "invention"
within the meaning of Art. 52(1) EPC that what mattered was the presence of technical
character which could be implied by the physical features of an entity or the nature of an
activity, or could be conferred to a non-technical activity by the use of technical means.
In particular, the Board held that the latter could not be considered to be a non-invention
as such within the meaning of Art. 52(2) and (3) EPC. Hence, in the Board's view,
activities falling within the notion of a non-invention "as such" would typically represent
purely abstract concepts devoid of any technical implications.
In T 914/02 the board stated that the involvement of technical considerations was not
sufficient for a method which might exclusively be carried out mentally to have technical
character.
In T 388/04 (OJ 2007, 21) the board held that the extent to which subject-matter or
activities are excluded from patentability under Art. 52(2) and (3) EPC is notionally
distinct from, and may be considered independently of the question of inventive step.
The board referred to T 258/03 (see above) which stated that activities falling within the
notion of a non-invention as such would typically represent purely abstract concepts
devoid of any technical implications. It took the view that subject-matter or activities
excluded from patentability under Art. 52(2) and (3) EPC remain so even where they
imply the possibility of making use of unspecified technical means.
In T 748/03 the board held that the criterion of the purposive exploitation of the effect of
objectively identifiable and measurable natural forces as a condition for the technical
character of an invention for the purposes of patent law could, in the light of Art. 83 EPC,
be defined more clearly as follows: the technical character of an invention was closely

2
 I.A.1. Technical nature of an invention

linked with the requirement of reproducibility under Art. 83 EPC. A person skilled in the
art had to be able, using the means proposed, to achieve repeatedly the result specified
as the aim of the disclosed teaching. Reproducibility of an invention required, first of all,
a causal link between the technical instructions and the desired result. R. 27(1)(c) EPC
gave form to that condition by requiring that the claimed invention be disclosed in such
terms that the technical problem and its solution could be understood. However, the
requirement of a causal link did not mean that the inventor had to grasp the scientific
basis for the teaching according to the invention. Rather, it sufficed that the outwardly
apparent link between cause and effect was recognised and disclosed.
In T 619/02 (OJ 2007, ***), the board concluded that human perception phenomena
cannot be qualified as being of a technical nature. It emphasised that the prerequisite of
technical character inherent in the EPC cannot be considered to be fulfilled by an
invention, as claimed, which, although possibly encompassing technical embodiments,
also encompasses ways of implementing it that do not qualify as technical. The technical
character of an invention is an inherent attribute independent of the actual contribution of
the invention to the state of the art and consequently the potential of a claimed method to
solve a problem of a technical nature should be discernible from the aspects of the
method actually claimed (T 931/95, OJ 2001, 441; T 258/03).
For further information on this subject, see under "Assessment of inventive step",
Chapter I.D.8.1.
1.1. Computer-implemented inventions
The Guidelines C-IV, 2.3.6 (June 2005 version) use the term “computer-implemented
inventions” to indicate claims which involve computers, computer networks or other
conventional programmable apparatus whereby prima facie the novel features of the
claimed invention are realised by means of a program or programs. The non-patentability
of computer programs as such does not preclude the patenting of computer-
implemented inventions. If the claimed subject-matter has a technical character it is not
excluded from patentability by the provisions of Art. 52(2) and (3) EPC.
Under the EPC there are two basic kinds of patent claims: claims to a physical entity
(product, apparatus) and claims to an activity (process, use). Even after the criticism of
the "contribution approach" to the assessment of the technicality of an invention, the
case law starting with T 208/84 (OJ 1987, 14) remains the basis for EPO practice with
regard to computer-implemented inventions.
T 208/84 (OJ 1987, 14) set out the principles governing the patentability of computer-
related inventions. Even if the idea underlying an invention may be considered to reside
in a mathematical method, a claim directed to a technical process in which the method is
used does not seek protection for the mathematical method as such. A claim directed to
a technical process carried out under the control of a program (whether by means of
hardware or software) cannot be regarded as relating to a computer program as such. A
claim which can be considered as being directed to a computer set up to operate in
accordance with a specified program (whether by means of hardware or software) for
controlling or carrying out a technical process cannot be regarded as relating to a
computer program as such.
The next leading case, decision T 26/86 (OJ 1988, 19), examined whether an X-ray
apparatus incorporating a data processing unit operating in accordance with a routine

3
Patentable inventions

was patentable. The board considered that the claim related neither to a computer
program on its own and divorced from any technical application, nor to a computer
program in the form of a recording on a data carrier, nor to a known, general purpose
computer in combination with a computer program. It found instead that the routine in
accordance with which the X-ray apparatus operated produced a technical effect, ie it
controlled the X-ray tubes so that, by establishing a certain parameter priority, optimum
exposure was combined with adequate protection against overloading of the X-ray tubes.
The invention was therefore patentable irrespective of whether or not the X-ray
apparatus without this computer program formed part of the state of the art. The board
held that an invention must be assessed as a whole. If it made use of both technical and
non-technical means, the use of non-technical means did not detract from the technical
character of the overall teaching. The EPC does not prohibit the patenting of inventions
consisting of a mix of technical and non-technical elements. The board therefore
regarded it as unnecessary to weigh up the technical and non-technical features in a
claim in order to decide whether it related to a computer program as such. If the
invention defined in the claim used technical means, its patentability was not ruled out by
Art. 52(2)(c) and (3) EPC and it could be protected if it met the requirements of Art. 52 to
57 EPC.
In T 209/91 the board upheld the principle formulated in T 26/86 (OJ 1988, 19) that the
patentability of an invention making use of both technical and non-technical features
could not be ruled out a priori. A claim must be assessed as a whole; the fact that it
included non-technical features did not detract from the technical character of the overall
teaching, provided these features also helped to bring about the technical effect.
In T 6/83 (OJ 1990, 5) the board found that an invention relating to the co-ordination and
control of the internal communication between programs and data files held at different
processors in a data processing system having a plurality of interconnected data
processors in a telecommunications network, the features of which were not concerned
with the nature of the data and the way in which a particular application program
operated on them, was to be regarded as solving a problem which was essentially
technical. The control program was therefore comparable to the conventional operating
programs required for any computer to coordinate its internal basic functions and thereby
permit the running of a number of programs for specific applications. Such an invention
was to be regarded as solving a problem which was essentially technical and thus an
invention within the meaning of Art. 52(1) EPC.
In T 158/88 (OJ 1991, 566) the board stated that a method for the display of characters
(eg Arabic characters) in a particular preset shape chosen from several possible
character shapes did not in essence describe a technical method of operating a data
processing system and its visual display unit, but an idea for a program. A computer
program did not become part of a technical operating method if the teaching claimed was
confined to changing data and did not trigger any effect over and above mere data
processing. When examining whether the method in question served to solve a technical
problem which could make the program defined in the claim patentable as part of a
teaching on technical operations, the board came to the conclusion that where the data
to be processed according to a claimed method represented neither operating
parameters nor a device, nor had a physical or technical effect on the way the device
worked, and no technical problem was solved by the claimed method, the invention
defined in the claim did not make use of any technical means and in accordance with

4
 I.A.1. Technical nature of an invention

Art. 52(2)(c) and (3) EPC could not be regarded as a patentable invention within the
meaning of Art. 52(1) EPC.
In T 769/92 (OJ 1995, 525) the board held that an invention comprising functional
features implemented by software (computer programs) was not excluded from
patentability under Art. 52(2)(c) and (3) EPC if technical considerations concerning
particulars of the solution of the problem the invention solved were required in order to
carry out that same invention. Such technical considerations lent a technical nature to
the invention in that they implied a technical problem to be solved by (implicit) technical
features. An invention of this kind was considered not to pertain to a computer program
as such under Art. 52(3) EPC. As stated in the decision, non-exclusion from patentability
can not be destroyed by an additional feature which as such would itself be excluded.
In T 59/93 the board held that methods comprising excluded features, but nevertheless
solving a technical problem and bringing about technical effects, were to be considered
as making a technical contribution to the art.
In T 953/94, claim 1 of the main request related to a method of generating with a digital
computer a data analysis of the cyclical behaviour of a curve represented by a plurality of
plots relating two parameters to one another. The board held that such a method could
not be regarded as a patentable invention, because an analysis of the cyclical behaviour
of a curve was clearly a mathematical method excluded as such from patentability. The
reference to a digital computer only had the effect of indicating that the claimed method
was carried out with the aid of a computer, ie a programmable general-purpose
computer, functioning under the control of a program excluded as such from
patentability. The fact that the description disclosed examples in both non-technical and
technical fields confirmed that the problem solved by the claimed mathematical method
was independent of any field of application and could thus lie, in the case at issue, only
in the mathematical and not in a technical field.
Claims constitute a special case to computer program products, such as computer
programs stored on a data carrier. In T 1173/97 (OJ 1999, 609) and T 935/97 the board
of appeal examined the patentability of computer program products. The claims rejected
by the examining division were directed, i. a., to computer program products directly
loadable into the internal memory of a digital computer or stored on a computer usable
medium or to a computer readable medium, having a program recorded thereon. The
board pointed out that the only relevant source of substantive patent law was the EPC.
The board started from the assumption that for an invention to be patentable under the
EPC it had to have a technical character. Programs for computers could be considered
as patentable inventions if they had a technical character. Their technical character could
not however be acknowledged for the sole reason that programs caused physical
modifications of the hardware (eg electrical currents) deriving from the execution of the
program instructions. A technical character might however be found in further effects
deriving from the execution by the hardware of the instructions given by the computer
program - where these further effects had a technical character or where they caused
the software to solve a technical problem, an invention which brought about such an
effect might be considered an invention, which could, in principle, be the subject-matter
of a patent.
However, every computer program product only produced and showed in physical reality
an effect if the program concerned was made to run on a computer. The computer

5
Patentable inventions

program product itself only possessed the "potential" to produce also a "further"
technical effect. As the board saw no good reason for distinguishing between a direct
technical effect and the potential to produce a technical effect it held that a computer
program product having this potential to cause a predetermined further technical effect
was, in principle, not excluded from patentability under Art. 52(2) and (3) EPC. Thus, a
computer program claimed by itself was not excluded from patentability if the program,
when running on a computer or loaded into a computer, brought about, or was capable
of bringing about, a technical effect which went beyond the "normal" physical interactions
between the program (software) and the computer (hardware) on which it was run.
In T 513/98 the invention addressed the problem of making it possible to use the mailer
stations having computer controllable databases interconnected, by a communication
link, with a computerized central data station in a more efficient and economical manner.
The problem arose in the use of a system which was technical per se and thus not
excluded from patentability (Art. 52(2) and (3) EPC). Even if the new features of the
system did not change the hardware of the known system, the required software
changes would nevertheless cause the system to be technically different with respect to
the dividing, storing and transmitting of mail handling data. Moreover, the board pointed
out that, although these changes might be essentially inspired by methods for doing
business, they nevertheless involved technical considerations relating to the field of
mailing, such as the overall operation of the interconnected system, the provision of
storage area for mail handling categories, the prevention of unauthorized access to the
categories and the transmission of information from these categories. Therefore, these
features had to be considered as technical features in the meaning of R. 29(1) EPC
which contributed to solving a problem arising in mailing systems and which for these
reasons, could not be disregarded when judging inventive step (see also T 769/92,
OJ 1995, 525; T 1173/97, OJ 1999, 609).
In T 49/99 the invention concerned a method for modelling a physical system in a
computer, wherein abstract objects and their attributes were derived from the physical
elements and their characteristics, and all objects, attributes and relationships were
stored in tables with relational database technology. The board held that information
modelling was a formalised process carried out by a system engineer or a similar skilled
person in a first stage of software development for systematically gathering data about
the physical system to be modelled or simulated and to provide, as it were, a real-world
model of the system on paper. The board stressed that although information modelling
embodied useful concepts and methods in developing complex software systems, it was
as such an intellectual activity having all the traits typical of non-technical branches of
knowledge and thus being closely analogous to the non-inventions listed under
Art. 52(2)(a) and (c) EPC. Thus in the assessment of inventive step it should be treated
like any other human activity in a non-technical field, which was, as such, not an
invention for the purposes of Art. 52(1) EPC. Only the purposive use of information
modelling in the context of a solution to a technical problem, as was for example the
case for the preferred embodiment relating to the control and management of technical
processes in a power system, could contribute to the technical character of an invention.
In T 125/01 the board held that a pure software enhancement with no changes to the
hardware could constitute an invention within the meaning of the EPC if the modified
software made a technical contribution to the invention and therefore could not be
isolated as such. The invention concerned a module for controlling a communication

6
 I.A.1. Technical nature of an invention

device, preferably a car radio, and differed from the closest prior art only in respect of the
program loaded, which was intended to make the control module easier to adapt and
thus flexible in use, with a view to allowing additional technical device functions to be
added and/or making the device easier to operate. In the board's view, even the problem
description showed technical aspects, as it would certainly be viewed as technical in
conjunction with a hardware interface. The board also felt that the appropriate
restructuring of a control program to that end also made a technical contribution to the
invention, by analogy with the redesign of a hardware control device (eg in terms of
electrical circuits or mechanical elements).
In T 1177/97 claim 1 was directed to a method for translation between natural
languages; accordingly, it used various linguistic terms and involved linguistic aspects of
the translation process. The board raised the question whether such linguistic concepts
and methods could form part of a technical invention at all. It referred to EPO case law
which provided various examples showing that even the automation of such methods did
not make good a lack of technical character (eg T 52/85). On the other hand, coded
information had been considered, on a case-by-case basis, as a patentable entity, i.a.
T 163/85 (OJ 1990, 379), T 1194/97 (OJ 2000, 525) and T 769/92 (OJ 1995, 525). The
board confirmed that in accordance with this case law it seemed to be common ground
that the use of a piece of information in a technical system, or its usability for that
purpose, could confer a technical character on the information itself, in that it reflected
the properties of the technical system, for instance by being specifically formatted and/or
processed. When used in or processed by the technical system, such information could
be part of a technical solution to a technical problem and thus form the basis for a
technical contribution of the invention to the prior art.
In so far as technical character was concerned, the board stressed that it should be
irrelevant that the piece of information was used or processed by a conventional
computer, or any other conventional information processing apparatus, since the
circumstance that such an apparatus had become a conventional article for everyday
use did not deprive it of its technical character, just as a hammer still had to be regarded
as a technical tool even though its use had been known for millennia. The board thus
came to the conclusion that information and methods related to linguistics could in
principle assume a technical character if they were used in a computer system and
formed part of a technical problem solution. Implementing a function on a computer
system always involved technical considerations, at least implicitly, and meant in
substance that the functionality of a technical system was increased. The implementation
of the information and methods related to linguistics as a computerised translation
process similarly required technical considerations and thus provided a technical aspect
to per se non-technical things such as dictionaries, word matching or the translation of
compound expressions into a corresponding meaning. Features or aspects of the
method which reflected only peculiarities of the field of linguistics, however, had to be
ignored in assessing inventive step.
In T 258/03 (OJ 2004, 575), the board held that, in general, a method involving technical
means was an invention within the meaning of Art. 52(1) EPC. What was important in
relation to "inventions" within the meaning of Art. 52(1) EPC was the presence of
technical character, which could be inferred from the physical features of an entity or the
nature of an activity or could be conferred on a non-technical activity by the use of
technical means. In the case before the board, claim 1 was directed to an automatic

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Patentable inventions

auction method executed in a server computer. In claim 3 a “computerised auction

apparatus” comprising a server computer was defined, and in claim 4 a computer
program for carrying out an auction. The features of the claims were closely related and
in substance based on the same method steps. The auction started with a preliminary
exchange of data between the client computers and the server computer in order to
collect bids from the participants. Each bid comprised two prices, a desired price and a
maximum price in competitive state. After this initial phase, the auction was conducted
automatically and the bidders did not need to follow the auction on-line. An auction price
was set and successively lowered (a "Dutch auction") until it reached the level of the
highest bid or bids as determined by the desired price. In the event of several identical
bids, the price was increased until only the bidder who offered the highest maximum
price was left.
In T 424/03 claim 1 related to a method implemented in a computer system. A computer
system including a memory (clipboard) was a technical means, and consequently the
claimed method had technical character in accordance with established case law.
Moreover, the board emphasised that a method implemented in a computer system
represented a sequence of steps actually performed and achieving an effect, and not a
sequence of computer-executable instructions (ie a computer program) which just had
the potential of achieving such an effect when loaded into, and run on, a computer. The
board held that the claim category of a computer-implemented method was distinguished
from that of a computer program. Even though a method, in particular a method of
operating a computer, might be put into practice with the help of a computer program, a
claim relating to such a method did not claim a computer program in the category of a
computer program. Hence, in the present case, claim 1 could not relate to a computer
program as such.
The board also considered that the claimed method steps contributed to the technical
character of the invention. These steps solved a technical problem by technical means in
that functional data structures (clipboard formats) were used independently of any
cognitive content (cf. T 1194/97, OJ 2000, 525) in order to enhance the internal
operation of a computer system with a view to facilitating the exchange of data among
various application programs. The claimed steps thus provided a general purpose
computer with a further functionality - the computer assisted the user in transferring non-
file data into files.
In the same case claim 5 was directed to a computer-readable medium having
computer-executable instructions (ie a computer program) on it to cause the computer
system to perform the claimed method. The board found that the subject-matter of claim
5 had technical character since it related to a computer-readable medium, ie a technical
product involving a carrier (see T 258/03, OJ 2004, 575). Moreover, the computer-
executable instructions had the potential of achieving the above-mentioned further
technical effect of enhancing the internal operation of the computer, which went beyond
the elementary interaction of any hardware and software of data processing (T 1173/97,
OJ 1999, 609). The computer program recorded on the medium was therefore not
considered to be a computer program as such, and thus also contributed to the technical
character of the claimed subject-matter.

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 I.A.1. Technical nature of an invention

1.2. Word-processing
Decision T 115/85 (OJ 1990, 30) related to a method for displaying one of a set of
predetermined messages comprising a phrase made up of a number of words, each
message indicating a specific event which might occur in the input-output device of a
word processing system which also included a keyboard, a display and a memory.
The board observed that giving visual indications automatically about conditions
prevailing in an apparatus or a system was basically a technical problem. The application
proposed a solution to such a technical problem involving the use of a computer program
and certain tables stored in a memory. It adopted the principle laid down in decision
T 208/84 (see Chapter I.A.1.1): an invention which would be patentable in accordance
with conventional patentability criteria should not be excluded from protection by the
mere fact that for its implementation modern technical means in the form of a computer
program are used. However, it did not follow from this that conversely a computer
program could under all circumstances be considered as constituting technical means. In
the case in question the subject-matter of the claim, phrased in functional terms, was not
barred from protection by Art. 52(2)(c) and (3) EPC.
In T 22/85 (OJ 1990, 12) the same board had to decide on the patentability of a method
for automatically abstracting and storing an input document in an information storage
and retrieval system and a corresponding method for retrieving a document from the
system. The board observed that the described method fell within the category of
activities defined in Art. 52(2)(c) EPC. It considered that the mere setting out of the
sequence of steps necessary to perform the activity in terms of functions or functional
means to be realised with the aid of conventional computer hardware elements did not
import any technical considerations and could therefore neither lend a technical
character to the activity nor to the claimed subject-matter considered as a whole, any
more than solving a mathematical equation could be regarded as a technical activity
when a conventional calculation machine is used.
In T 38/86 (OJ 1990, 384) the board first of all had to assess the patentability of a
method for automatically detecting and replacing linguistic expressions which exceeded
a predetermined level of understanding in a list of linguistic expressions. The board was
of the opinion that a person who wished to carry out such a task using his skills and
judgment would perform purely mental acts within the meaning of Art. 52(2)(c) EPC; the
schemes, rules and methods used in performing such mental acts are not inventions
within the meaning of Art. 52(1) EPC. The board stated that the use of technical means
for carrying out a method, partly or entirely without human intervention, which, if
performed by a human being, would require him to perform mental acts, may, having
regard to Art. 52(3) EPC, render such a method a technical process or method and thus
an invention within the meaning of Art. 52(1) EPC. Since patentability is excluded only to
the extent to which the patent application relates to excluded subject-matter or activities
as such, it appeared to be the intention of the EPC to permit patenting in those cases in
which the invention involves a contribution to the art in a field not excluded from
patentability. In the case in point this condition was not satisfied: once the steps of the
method for performing the mental acts in question had been defined, the implementation
of the technical means to be used in those steps involved no more than the
straightforward application of conventional techniques and had therefore to be
considered obvious to a person skilled in the Art. In the case of a claim for an apparatus
(here, a word processing system) for carrying out a method which did not specify any

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Patentable inventions

technical features beyond those already comprised in a claim pertaining to said method
and furthermore did not define the apparatus in terms of its physical structure, but only in
functional terms corresponding to the steps of that method, the board stated that the
claimed apparatus did not contribute anything more to the art than the method. Thus, in
spite of the fact that the claim was formulated in a different category, in such cases, if the
method was excluded from patentability, so was the apparatus.
Decision T 38/86 was confirmed by decision T 121/85. The claims related to word
processing carried out by a word processing system including a processor controlled by
a computer program. The board concluded that nothing in the disclosure pointed to a
contribution, such as a program, going beyond the fields of linguistics and computer
functioning directly derived from the linguistic rules to be applied (the applicant had
claimed software solutions to the linguistic problem of checking the spelling of a word).
Thus the claim was excluded from patentability under Art. 52(2)(c) and (3) EPC.
In T 95/86 the applicant had claimed a method of text editing. The board found the
activity of editing a text to be principally concerned with its linguistic and layout features.
The editing of a text as such - even performed with the aid of a machine - therefore fell
within the category of schemes, rules and methods for performing mental acts which
under Art. 52(2)(c) and (3) EPC are not patentable. The board took the view that the
mere setting out of the sequence of steps necessary to perform an activity - excluded as
such from patentability - did not import any technical considerations, even if those steps
were described as functions or functional means to be implemented with the aid of
conventional computer hardware elements.
In T 110/90 (OJ 1994, 557) the invention was for a method of transforming a first editable
document form prepared using a batch word processing system into a second editable
document form for use on an interactive or batch word processing system. Following
T 163/85 (OJ 1990, 379) the board found that control items (eg printer control items)
included in a text represented in the form of digital data were characteristic of the word-
processing system in which they occurred in that they were characteristic of the technical
internal working of that system. Such control items therefore represented technical
features of the word-processing system in which they occurred. Consequently,
transforming control items which represented technical features belonging to one word-
processing system into those belonging to another word-processing system constituted a
method of a technical nature.
In T 71/91 the board considered the patentability of an electronic document system
consisting of a plurality of processors or workstations which received and transmitted
documents in the form of a data stream. The data represented both the contents of a
document and information on the kind of processing to be performed relative to it. If a
processor detected processing information which it was not capable of performing, that
information was not merely ignored but was stored in a memory and retrieved when the
data stream was transmitted to another processor. The data stream was thus
reconstituted and the transmitted data was substantially the same as the received data,
no information having been lost. The board held, following T 38/86 (OJ 1990, 384), that it
was clear that the claimed subject-matter made a contribution to the art in a field not
excluded from patentability. The board also pointed out that in an analogous case,
T 110/90 (OJ 1994, 557), the "control of hardware such as a printer" was held not to be
excluded under Art. 52(2)(c) EPC since it was not concerned with "the linguistic meaning

10
 I.A.1. Technical nature of an invention

of words of the text". Similarly, in the case before the board, the data to be processed
was also distinct from the content of the document itself.
The interrelationship of excluded and non-excluded features was considered in T 236/91.
Following T 208/84 (OJ 1987, 14), T 38/86 (OJ 1990, 384) and T 26/86 (OJ 1988, 19),
the board reiterated that while the EPC does not prohibit the patenting of inventions
consisting of a mix of excluded and non-excluded features, and since patentability is
excluded only to the extent to which the patent application relates to excluded subject-
matter or activities as such, it appeared to be the intention of the EPC to permit patenting
(only) in those cases in which the invention involved a contribution to the art in a field not
excluded from patentability.
Applying this to the present case, the board found that even after the claimed computer
had been found not to be obvious, it had still to be decided whether or not a technical
contribution to the art had been made by the non-obvious feature or features of that
computer. The gist of the claimed invention, in the board's view, could be seen in the fact
that a sentence in natural language was parsed not only after it had been entered
completely into the computer, but, on the contrary, step by step after each word or
phrase had been entered, and that depending on the result of this parsing, a new menu
presenting only a selection, namely, a selection which could not be predefined by the
designer of the computer, of possible continuations of the sentence was created. In this
sense, the internal working of the computer as claimed was not conventional and should,
in the opinion of the board, be regarded as a technical effect.
1.3. Presentations of information
A presentation of information defined solely by the content of the information is not
patentable. This applies whether the claim is directed to the presentation of the
information per se or to processes and apparatus for presenting information. If, however,
the presentation of information, as distinct from the information content, has new
technical features, there could be patentable subject-matter in the information carrier or
in the process or apparatus for presenting the information (see Guidelines C-IV, 2.3.7 -
June 2005 version).
In T 163/85 (OJ 1990, 379), regarding a colour television signal characterised by
technical features of the system in which it occurred, the board considered it appropriate
to distinguish between two kinds of information when discussing its presentation;
according to this distinction, a TV system solely characterised by the information per se,
eg moving pictures modulated on a standard TV signal, might fall under the exclusion of
Art. 52(2)(d) and (3) EPC, but not a TV signal defined in terms which inherently
comprised the technical features of the TV system in which it occurred; as the list of
exclusions from patentability summed up in Art. 52(2) EPC (in conjunction with
Art. 52(3) EPC) was not exhaustive in view of the phrase "in particular", the exclusion
might arguably be generalised to subject-matter which was essentially abstract in
character, non-physical and therefore not characterised by technical features within the
meaning of R. 29(1) EPC.
In T 603/89 (OJ 1992, 230) the invention consisted of an apparatus for and a method of
learning how to play a keyboard instrument, with numbers corresponding to notes on a
sheet of music appearing on the keys too. The technical feature claimed was the
marking of the keys. Patentability was ruled out by Art. 52(2)(c) and (d) EPC. Since the
key markings were merely known technical features, the contribution made by the

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Patentable inventions

claimed invention to the working of the teaching apparatus lay solely in the content of the
information displayed, not in the apparatus itself. The invention was not based on a
technical problem, but on an improvement to a teaching method, which was equivalent to
an improvement to a method for performing mental acts.
In T 833/91 the board stated that all the different matters or activities listed in
Art. 52(2) EPC seemed to have in common the fact that they implied something non-
technical and, secondly, that from Art. 52(3) EPC it would appear to be the EPC's
intention to permit patenting (only) in those cases in which the invention involves some
contribution to the art in a field not excluded from patentability. The board thus concluded
that, in accordance with the consistent case law of the Boards of Appeal, it could be said
that the technical contribution to the art rendering a claimed invention an invention within
the meaning of Art. 52(1) EPC and thus patentable, might lie either in the problem
underlying, and solved by, the claimed invention, or in the means constituting the
solution of the underlying problem, or in the effects achieved in the solution of the
underlying problem. In the case in point the claimed invention concerned the designing
or developing of application (or user) programs for computers, ie it addressed a program
designer or programmer. The board pointed out that programs for computers as such
were expressly excluded from patentability and a programmer's activity would involve
performing mental acts and therefore also fell within the exclusions under
Art. 52(2)(c) EPC. Furthermore, displaying data was presentation of information and thus
excluded by Art. 52(2)(d) EPC. The board held that the contribution to the state of the art
made by the invention was not technical, that the subject-matter did not make any
contribution to the art in a field not excluded from patentability and was not therefore to
be regarded as an "invention" within the meaning of Art. 52(1) EPC.
In T 77/92, the invention concerned a method of selecting, in emergency situations, the
correct patient treatment values, namely drug dosage, defibrillation technique energy
and/or apparatus size. The method comprised measuring the body length of the
emergency patient using a particular tape and rapidly selecting the said correct patient
treatment values without the exercise of clinical expertise, calculation or reference to
other data sources. The particular tape used had increments of heel-to-crown length,
each increment bearing indications of the correct treatment value appropriate to that
increment and predetermined by a co-relation between the measured heel-to-crown
height of a patient and a correct treatment value. According to the established case law,
for an invention not to be excluded from patentability, the board had to consider in the
present case whether the subject-matter claimed, which had to be assessed as a whole,
was technical in character or provided a technical contribution to the prior art, i.e. a
contribution in a field not excluded from patentability. After having defined the prior art,
the board concluded that the decision under appeal did not adequately evaluate the
co-relation between the heel-to-crown length of a patient and each of the treatment
values provided on the measuring tape. This co-relation between the measured length
and the information on the tape measure resulted in the tape used in the claimed
methods becoming a new gauge for directly measuring the patient treatment values, just
as an altimeter is obtained merely by replacing the scale of a pressure gauge with a
scale indicating altitude. Such a new gauge for directly measuring the patient treatment
values was clearly technical in character.
Further to T 115/85 (OJ 1990, 30) the board ruled in T 362/90 that automatic visual
display of the conditions prevailing or desirable in an apparatus or system was basically

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 I.A.1. Technical nature of an invention

a technical problem. A claim directed to a device displaying (especially in heavy goods

vehicles) both the gear in use and (by evaluating signals about engine performance) the
best gear to be in was not unpatentable under Art. 52(2)(d) EPC even if it did involve
non-technical features relating to the presentation of information.
T 115/85 (see above) has been taken into consideration by the board in T 790/92, where
it was held that displaying messages indicating a specific event which might occur in the
device in a processing system was basically a technical problem because it involved the
internal functioning of a device. In the present case, however, the board stated that it
was not such a "technical" event or condition concerning the functioning of a device and
therefore posing a technical problem which would give rise to a message, but a
discrepancy between the information presented by the chart and the information the
chart was normally intended to present. The board held that such a discrepancy between
normal and modified presentations of information could not be considered as being of a
technical nature.
In T 887/92 one of the objects of the invention was to render the usual HELP facility
provided with many computer programs more user-friendly. The claimed method
involved the steps of (1) determining what commands were valid as the next command
by an analysis of the current state of the process task being performed by the system at
the time the help request was issued, (2) displaying a help panel containing only these
commands, (3) positioning a "selection" cursor to the line of a displayed command, and
(4) executing the command selected by pressing the "enter" key. The board held that
giving visual indications automatically about conditions prevailing in an apparatus or
system was basically a technical problem. Thus, the displaying of only valid commands
in the help panel had technical character because it clearly reflected the status or
condition of the system. The computer program on which step (1) relied was considered
to constitute a technical means for carrying out the invention.
In T 599/93 a configuration for simultaneously displaying several images on one
(computer) screen was claimed. The screen was divided into four sections, for example
by means of one horizontal and one vertical demarcation line. The size of the sections
could be altered by moving a setting mark located at the intersection of the demarcation
lines. The surfaces of the setting mark located inside the windows could each be
selected separately to indicate particular contents of the window concerned, eg by a
change of colour, even if the window in question was not, or not fully, visible at the time.
The board was of the view that imparting information on events in a screen window by
changing the colour of the relevant surface of the setting mark was not of a technical
nature (no information was given for example on the operating status of the claimed
configuration), but merely drew the user's attention to particular contents of the relevant
images and thus served to present information within the meaning of Art. 52(2)(d) EPC.
This feature could not therefore contribute to inventive step.
In T 1194/97 (OJ 2000, 525) the patent application concerned a two-part picture retrieval
system comprising a record carrier and a read device, ie two separate but cooperative
articles which may be sold separately, but each of which was specially adapted to
implement complementary aspects of the same inventive idea. Claim 1 was directed to
the system while claim 4 sought to protect the record carrier per se. In accordance with a
standard claiming practice with inventions of this kind - colloquially referred to as "bow
and arrow" or "plug and socket" inventions - the record carrier of claim 4 was specified
as being "for use in the system as claimed in claim 1". The examining division had

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Patentable inventions

interpreted claim 4 as specifying a known record carrier having data stored thereon, said
data having no unambiguous technical function, and had concluded, with reference to
Art. 52(2)(d) EPC, that "for the purposes of assessing the technical merits of the record
carrier, what is stored on the record carrier is effectively a mere presentation of
information". The board regarded the examining division's interpretation of claim 4 as a
misconstruction of the effect of the "for use" phrase. It pointed out that, on a proper
construction of this phrase the record carrier of claim 4 had technical functional
features - line numbers, coded picture lines and addresses and synchronisations - which
were adapted to cooperate with corresponding means in the read device to provide a
picture retrieval system (see also T 643/00).
Applying and extending the ratio decidendi of T 163/85 by analogy, the board held that
the record carrier of claim 4 was not excluded by Art. 52(2)(d) and (3) EPC, since it had
functional data recorded thereon, in particular a data structure of picture line
synchronisations, line numbers and addresses. In order to lend additional support to its
view in relation to a data structure product, the board also referred to decision T 1173/97
(OJ 1999, 609) and, in particular, to the observation made in that decision at point 9.4 of
the reasons to the effect that the predetermined potential technical effect of a program
recorded on a carrier could endow such a product with technical character sufficient to
overcome the exclusions under Art. 52(2) and (3) EPC.
In T 553/02, the board concluded that a claim directed to a product comprising a
composition of matter (in this case a bleaching composition) and to instructions for use of
the product, where the instructions had no technical effect on the product, was not
excluded from patentability under Art. 52(2) EPC since the claim had a technical
meaning and defined the technical features necessary for the definition of the claimed
subject-matter, ie a product comprising a bleaching composition. Whether the claimed
product was novel or not was, in this case, irrelevant for the purposes of evaluating
patentability (see eg T 931/95, OJ 2001, 441).
In T 659/04 the examining division held that the claimed record medium having a signal
recorded thereon in accordance with an undisputedly new modulation method was
nevertheless not new. The board considered that the examining division's conclusion
might have been based on the view that N-bit data was information and that such a
record medium was "defined solely by the content of the information" within the meaning
of the Guidelines C-IV, 2.3.7 (June 2005 version). In the judgment of the board, however,
defining a record medium as having data recorded thereon by the undisputedly new and
inventive modulation method taught in the application resulted in a new and inventive
record medium. It was distinguishable from prior art records by the pattern or format of
the data on it and by the technical effect this format achieved in terms of enhanced
recording density without impairment of the stability of the readout process.
1.4. Schemes, rules and methods for performing mental acts, playing games or
doing business
The following refers to subject-matters with an abstract or intellectual character. If the
claimed subject-matter specifies an apparatus or technical process for carrying out at
least some part of the scheme, that scheme and the apparatus or process have to be
examined as a whole. In particular, if the claim specifies computers, computer networks
or other conventional programmable apparatus, or a program for carrying out at least

14
 I.A.1. Technical nature of an invention

some steps of a scheme, it is to be examined as a computer-implemented invention (see

Guidelines, C-IV, 2.3.5 - June 2005 version).
1.4.1 Methods for doing business
Pure business methods as such are not patentable (Art. 52(2) and (3) EPC, see
T 931/95, OJ 2001, 441).
In T 854/90 (OJ 1993, 669), a computer manufacturer applied to patent a method for
operating an electronic self-service machine (eg cash dispenser which could be
accessed using any machine-readable card. A prospective user first had to insert such a
card to enable its identification data to be stored; he then keyed in credit information
about himself on to an "electronic application form", thereby permitting a decision to be
taken on whether to authorise him as a user. Once authorised, he could access the
system using that same card. The board ruled that this was not patentable - parts of the
method claimed were merely instructions for using the machine, and although technical
components were used, this did not alter the fact that what was being claimed was a
method for doing business as such.
In T 636/88 claim 1 was for a method of distributing material transported in bulk by ship:
on the quayside a weighing and bagging apparatus was mounted which could be
shipped in standard containers and was used to unload and bag the material before
moving on to the next port. The other claims were directed to the bagging apparatus
itself. The board however took the view that the method claimed clearly did have
technical character, involving as it did the use of technical equipment (bagging
apparatus) to achieve a technical end (the production of sealed, weighted bags of the
material in question).
In T 769/92 (OJ 1995, 525) the applicant claimed a computer system for plural types of
independent management including at least financial and inventory management and a
method for operating said system. Data for the various types of management which
could be performed independently from each other with this system could be inputted
using a single "transfer slip", in the form of an image displayed on the screen of the
display unit of the computer system, for example.
Although financial and inventory management would generally fall under "doing
business", the board held that the invention was not excluded from patentability under
Art. 52(2)(c) and (3) EPC. In its view the particular kinds of management mentioned were
not decisive; the fact that they were of different "specific" types to be performed
"independently" of each other was found to be important. The application contained the
teaching to provide, in the memory unit of the computer system, certain files and
processing means for storing and further processing the data entered and causing the
processing unit to perform these functions. The implementation of this teaching required
the application of technical considerations. In the board's view the non-exclusion from
patentability also applied to inventions where technical considerations were applied
concerning particulars of their implementation. The very need for such technical
considerations implied the occurrence of an at least implicit technical problem to be
solved and at least implicit technical features solving this problem.
Furthermore, the provision of the single transfer slip required the application of technical
considerations. This "user interface" implied that, in effect, independent financial and
inventory management systems were combined by a common input device allowing data

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Patentable inventions

entered for use in one of the said systems also to be used, if required, in the other
system. The implementation of such an interface in the claimed computer system was
not merely an act of programming, but rather concerned a stage of activities involving
technical considerations to be carried out before programming could start. However, it
was established board of appeal practice to allow patentability for a mix of technical and
non-technical features.
In T 1002/92 (OJ 1995, 605), a system was claimed for determining the queue sequence
for serving customers at a plurality of service points. The system gave the customer the
possibility of selecting one particular service point; it comprised, in particular, a turn-
number allocating unit, terminals for each service point, an information unit which
indicated the particular turn-number and the particular free service point to the customer.
The board held that the wording of the claim left no doubt that protection was sought for
a three-dimensional object with certain capacities - the claim defined a technical item
clearly belonging to the category of an apparatus with constructional components which
were characterised in terms of their functions. Summarising, the board took the view that
the claim was directed to an apparatus which comprised, inter alia, computer hardware
operating according to a particular computer program. The program-determined output
signal of the hardware was used for an automatic control of the operation of another
system component (the information unit) and thus solved a problem which was
completely of a technical nature. Moreover, the fact that one of the practical applications
of the system concerned the service of customers via "business equipment" did not
mean that the claimed subject matter must be equated with a method for doing business
as such.
In T 931/95 (OJ 2001, 441) the board addressed the patentability of inventions relating to
business methods. It reaffirmed that Art. 52(2) and (3) EPC were to be understood as
implying a "requirement of technical character" or "technicality" which is to be fulfilled by
an invention as claimed in order to be patentable. Thus an invention may be an invention
within the meaning of Art. 52(1) EPC if, for example, a technical effect is achieved by the
invention or if technical considerations are required to carry out the invention. The board
also referred to T 1173/97 (OJ 1999, 609) where it had decided that a computer program
product that had technical character was not a computer program as such and was,
therefore, not excluded from patentability but represented a patentable invention.
In the present case, claim 1 of the main request was directed to a method for controlling
a pension benefits program by administering at least one subscriber employer account.
The board stated that if the method was technical or, in other words, had a technical
character, it still might be a method for doing business, but not a method for doing
business as such. However, all the features of claim 1, ie the individual steps defining
the claimed method, were steps of processing and producing information having purely
administrative, actuarial and/or financial character. Processing and producing such
information were typical steps of business and economic methods. Thus the invention as
claimed did not go beyond a method of doing business as such and was excluded from
patentability under Art. 52(2)(c) EPC in conjunction with Art. 52(3) EPC.
The board added that the individual steps defining the claimed method amounted to no
more than the general teaching to use data processing means for processing or
providing information of purely administrative, actuarial and/or financial character, the
purpose of each single step and of the method as a whole being a purely economic one.

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 I.A.1. Technical nature of an invention

Using technical means for a purely non-technical purpose and/or for processing purely
non-technical information did not necessarily confer technical character to any such
individual steps of use or to the method as a whole. The mere occurrence of technical
features in a claim did not turn the subject-matter of the claim into an invention within the
meaning of Art. 52(1) EPC.
In the present case the board reviewed several other decisions including T 208/84
(OJ 1987, 14) pointing out that the then claimed method for digitally processing images
was considered to be a technical process essentially for the reason that it was carried
out on a physical entity. The method produced a technical result by applying particular
digital image processing methods for example for enhancing and restoring images. In
T 769/92 (OJ 1995, 525) the method for operating a general-purpose computer
management system had technical character because it implied a need for technical
considerations when carrying out that invention. A technical invention could not lose its
technical character, because it was used for a non-technical purpose like, eg, financial
management. The purpose of such a method and of its individual steps remained a
technical one, namely operating a technical system and in T 1002/92 (OJ 1995, 605) the
system for determining the queue sequence for serving customers at a plurality of
service points was decided to be a three-dimensional apparatus and, therefore, clearly
technical in nature.
With respect to an apparatus for controlling a pension benefits system, the board held
that a computer system suitably programmed for use in particular field, even if that was
the field of business and economy had the character of a concrete apparatus. An
apparatus constituting a physical entity or concrete product suitable for performing or
supporting an economic activity, was an invention within the meaning of Art. 52(1) EPC.
In T 27/97 the appellant (opponent) interpreted the claim to mean that its subject-matter,
despite the statement that a method for use in electronic systems was involved, was
confined to purely intellectual methods and thus excluded by Art. 52(2)(c) EPC. The
board disagreed, ruling that according to claim 1 the application claimed a method, for
use in electronic systems, of encrypting or decrypting a message (represented in the
form of a digital word using RSA-type public-key algorithms). So the invention was
clearly a method in the computer and telecommunications field and thus not excluded
under Art. 52(2) and (3) EPC even if based on an abstract algorithm or mathematical
method.
In T 767/99 the board observed that the established case law of the boards of appeal of
the EPO had construed Art. 52(2) and (3) EPC to mean that the fact that a measure may
have been derived from or inspired by an insight originating in an activity which was per
se excluded from protection - be it a discovery, a mathematical method, a mental act or a
method of doing business - did not imply that a claim including the material expression or
embodiment of such a measure in its specific practical application in the solution of a
technical problem was a claim to the excluded activity as such (cf. T 208/84, OJ 1987,
14).
In considering the issue of inventive step, the board confirmed that the skills exercised in
solving the problem addressed by this invention were those of a person skilled in the art
of mail sorting, not those of a manager or businessman. Hence, in the judgment of the
board, the apparatus and method claimed should be regarded as a (potentially

17
Patentable inventions

patentable) invention within the meaning of Art. 52(1) EPC and not as a method for doing
business as such within the meaning of Art. 52(2)(c) and (3) EPC.
In T 388/04 (OJ 2007, 21), the board held that the extent to which subject-matter or
activities are excluded from patentability under Art. 52(2) and (3) EPC is notionally
distinct from, and may be considered independently of the question of inventive step.
Therefore, the board felt free to assess the extent to which the claimed method was
excluded from patentability before any examination of inventive step. In the case in point
the application related to a method for responding to mail returned to a sender as
undeliverable. No technical means were described in the application at all. The board
referred to T 258/03 (OJ 2004, 575) which stated that activities falling within the notion of
a non-invention as such would typically represent purely abstract concepts devoid of any
technical implications. It took the view that subject-matter or activities excluded from
patentability under Art. 52(2) and (3) EPC remain so even where they imply the
possibility of making use of unspecified technical means.
1.4.2 Methods for performing mental acts
T 51/84 (OJ 1986, 226) concerned a process for protecting sound-recording carriers
against counterfeiting by applying a coded distinctive mark. The board held that this
process came under the heading of matter excluded from patentability by Art. 52(2)(c)
and (3) EPC because the claim focused solely on procedural steps which could be
carried out by a person in whatever way he chose, and did not indicate or presuppose
technical means for carrying them out.
In T 204/93, the claimed invention related to the art of generating "concrete" software
programs (ie those written in a particular programming language). These "concrete"
software programs were generated from supplied "generic" specifications, which were
program components or modules written in a more generally usable language, so they
had to be "translated" before insertion into the "concrete" program. The principle of using
named program modules, stored elsewhere, in a computer program to be generated,
resembled, except for the level of language used, the well-known calling-up of stored
sub-routines in main programs. As far as the claimed subject-matter was concerned, the
board did not dispute that it would improve the efficiency of the programmer. However,
this did not mean that the computer would work in an essentially new way from a
technical point of view.
Computer programs were not patentable irrespective of their content, ie even if that
content happened to be such as to make it useful, when run, for controlling a technical
process. Similarly, a programmer's activity of programming, would, as a mental act, not
be patentable, irrespective of whether the resulting program could be used to control a
technical process; finally, automating that activity, in a way which did not involve any
unconventional means, would not render that programming method patentable either,
irrespective of the content of the resulting program.
In T 453/91 the product claim directed to a VLSI-chip was held novel and inventive. The
method also claimed for physical VLSI-chip design, however, was rejected because
these claims only referred to the individual steps of designing such a chip and therefore
could be interpreted as merely delivering a "design" in the form of an image of something
which did not exist in the real world and which might or might not become a real object.
The result of the method would not necessarily be a "physical entity" in the sense of
decision T 208/84 (OJ 1987, 14). The board, however, allowed method claims which

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 I.A.1. Technical nature of an invention

contained not only the steps of chip designing but also the feature "materially producing
the chip so designed". This claim was considered to be clearly restricted to a process of
manufacturing a real (physical) object having technical features and thus to a technical
process.
In T 914/02 the board stated that having technical character was an implicit requirement
of the EPC to be met by an invention within the meaning of Art. 52(1) EPC.The
involvement of technical considerations, however, was not sufficient for a method which
might exclusively be carried out mentally to have technical character. In fact, other non-
inventions listed in Art. 52(2) EPC, such as scientific theories, but also computer
programs, typically involved technical considerations. Technical character could be
provided through the technical implementation of the method, resulting in the method
providing a tangible, technical effect, such as the provision of a physical entity as the
resulting product, or a non-abstract activity, such as through the use of technical means.
In T 125/04 the board cited T 244/00, stating that, in general, the task of designing
diagrams was non-technical. This was so even if the diagrams arguably conveyed
information in a way which a viewer might intuitively regard as particularly appealing,
lucid or logical.
In T 49/04 the application related to a method and an apparatus for enhancing the
presentation of a text in a natural language on a (computer) display. Technical Board of
Appeal 3.4.03 followed T 643/00 rather than T 125/04 (both decisions by the Technical
Board 3.5.01, albeit with a different composition) and stated that technical aspects could
not be ruled out in the design and use of a graphic interface. Furthermore, the
presentation of natural language text on a display in a manner which improved
readability, enabling users to perform their task more efficiently, related to how, ie by
what physical arrangement of the text, cognitive content was conveyed to the reader and
could thus be considered as contributing to a technical solution to a technical problem.
1.5. Aesthetic creations
An aesthetic creation relates by definition to an article (e.g. a painting or sculpture)
having aspects which are other than technical and the appreciation of which is
essentially subjective. The aesthetic effect itself is not patentable, neither in a product
nor a process claim. Nevertheless, if an aesthetic effect is obtained by a technical
structure or other technical means, although the aesthetic effect itself is not patentable,
the means of obtaining it may be.
In T 686/90 the board was called upon to decide whether the feature "work of art in the
style of stained glass" meant that it was excluded from patentability under
Art. 52(2)(b) EPC. The board held that functional information referring to general
aesthetic creations did not define an aesthetic creation as such, at least provided that
and insofar as such information adequately identified technical features of the subject-
matter of the claim. Since an aesthetic creation (not formally specified) as the stated
purpose, together with the other features, adequately defined a technical subject-matter
in the claim, there was no aesthetic creation as such. For this reason there could be no
objection to the claim under Art. 52(2)(b) EPC on the basis of Art. 52(3) EPC.
In T 962/91, on the other hand, the board held that the practical problem underlying the
invention - as disclosed - involved concealing irregularities occurring in the outer region
and detracting from the appearance of the information carrier by means of matting in

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Patentable inventions

such a way that these so-called errors were not apparent to the observer. The board
agreed with the examining division that errors of this kind in no way impair the technical
operation of the information carrier. This meant that the use of the matting as claimed for
the purpose of concealing errors was not designed to solve a technical problem but was
confined to the attainment of an aesthetic effect.
In decision T 119/88 (OJ 1990, 395) the subject-matter of the application in question
related to a flexible disk jacket made of a plastic sheet presenting to the outside world a
surface colour of a certain minimum light intensity. The board first of all stated that the
feature of having a specific colour as such did not constitute a technical feature
indicating that an object or device was entirely or partly covered by that colour; however,
the board did not rule out the possibility that this did not hold in all circumstances. The
feature taken by itself might not seem to reveal any technical aspect, but its technical or
non-technical character could be decided by the effect it brought about after being added
to an object which did not comprise the feature before. In the case in point, the board
concluded that the alleged resistance to fingerprints was a purely aesthetic effect which
contributed nothing technical to the invention concerned (Art. 52(2)(b) EPC) and the
advantage of easy classification by colour represented a non-technical effect in the form
of a presentation of information. As such it was excluded from patentability under
Art. 52(2)(d) and (3) EPC.
2. Medical methods
I.A.2. Medical methods

2.1. Introduction
Art. 52(4) EPC states that methods for treatment of the human or animal body by surgery
or therapy and diagnostic methods practised on the human or animal body are not to be
regarded as inventions which are susceptible of industrial application. The wording of
Art. 52(4) EPC implicitly recognises that such methods are susceptible of industrial
application as a matter of reality, but provides that they "shall not be regarded as"
inventions which are susceptible of industrial application, by way of legal fiction. In other
words, with regard to the particular methods defined in Art. 52(4) EPC, the provision of
Art. 52(4) EPC takes precedence over Art. 57 EPC (T 116/85, OJ 1989, 13).
The methods set out in Art. 52(4) EPC are excluded from patentability as a matter of
policy. This exclusion is not a new provision under the EPC. Before the EPC came into
force, such methods were excluded from patentability under the national laws of many
European countries. The policy behind the exclusion of such methods was clearly to
ensure that those who carry out such methods as part of the medical treatment of
humans or the veterinary treatment of animals should not be inhibited by patents (see
T 116/85, OJ 1989, 13; T 82/93, OJ 1996, 274).
In G 1/04 (OJ 2006, 334) the Enlarged Board of Appeal held that whilst the legislator had
chosen the legal fiction of lack of industrial applicability, the exclusion from patentability
of the above-mentioned methods under Art. 52(4) EPC seemed actually to be based on
socio-ethical and public health considerations. Medical and veterinary practitioners
should be free to take the action they considered suited to diagnosing illnesses by
means of investigative methods. Consequently, the policy behind the legal fiction
referred to above appeared to be aimed at ensuring that those who carry out diagnostic
methods as part of the medical treatment of humans or veterinary treatment of animals
were not inhibited by patents (see T 116/85).

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 I.A.2. Medical methods

In the case of the referrals to the Enlarged Board concerning the patentability of a
second medical use three (almost) identical decisions were rendered in the three official
languages of the EPO - G 1/83 in German, G 5/83 in English and G 6/83 in French. Thus
no translations were required. According to G 5/83 (OJ 1985, 64) the intention of Art.
52(4) EPC was only to prevent non-commercial and non-industrial medical and
veterinary activities from being restrained by patent rights (see T 245/87, OJ 1989, 171).
In T 385/86 (OJ 1988, 308) the board stated that Art. 52(4), first sentence, EPC
represented an exception to the general obligation to patent inventions. Like any
exclusion clause, Art. 52(4), first sentence, EPC, had to be narrowly construed (see
also G 1/04, OJ 2006, 334), and should not apply to treatments which were not
therapeutic in character (see T 144/83, OJ 1986, 301), or did not constitute a surgical or
diagnostic method - a fact underscored by the statement in the second sentence that the
exclusion from patentability did not apply to products for use in such methods.
2.2. Allowability of claims under Article 52(4) EPC
2.2.1 General remarks
The recent case law of the boards of appeal concerning inventions excluded by
Art. 52(4) EPC has made it clear that the exclusion of one feature under Art. 52(4) EPC
is sufficient to exclude the whole claim from patentability. It is important to draw a clear
distinction between this principle and the established case law under
Art. 52(2) and (3) EPC concerning the patentability of a mix of technical and non-
technical features because the reasons for exclusion from patentability of medical
methods and of the subject-matter under Art. 52(2) and (3) EPC are different. Art. 52(4)
EPC prevents the methods specified from being patented, even though otherwise they
might be considered as inventions susceptible of industrial application as required by Art.
52(1) EPC. By way of contrast, Art. 52(2) and (3) EPC is based on the assumption that
only technical inventions can be protected by patents and, consequently, excludes
subject-matter and activities without technical character (see T 116/85, OJ 1989, 13;
T 769/92, OJ 1995, 525).
To answer the question whether a method claim is allowable under Art. 52(4) EPC, it is
necessary to ascertain, according to the jurisprudence of the boards of appeal, whether
none of the steps of the method fall under the prohibition of Art. 52(4) EPC (T 820/92,
OJ 1995, 113) or in other words, whether there is any disclosure of a method falling
under the prohibition of the said provision. If so, such a method cannot be subject-matter
or part of the subject-matter covered by a method claim (T 438/91). A claim is not
allowable if it includes at least one feature defining a physical activity or action which
constitutes a method for treatment of the human body by therapy (T 82/93, OJ 1996,
274). Here, the purpose of the claimed subject-matter and inevitable effect of the feature
under consideration is the most relevant criterion (T 329/94, OJ 1998, 241).
2.2.2 Nature of the method claim
In T 820/92 (OJ 1995, 113) a claimed invention consisting of a contraceptive method
involving a concurrent therapeutic step was refused by the examining division on the
grounds that the claims did not comply with the requirements of Art. 57 EPC. In an
official communication pursuant to Art. 110(2) EPC the board stated that consideration
had to be given to the question of whether the combination of a contraceptive method
with a therapeutic method was excluded from patentability under Art. 52(4) EPC. The
appellant argued that therapy was not the subject of the claims, and that in particular the

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Patentable inventions

method claims were directed to the prevention of pregnancy and not to a therapeutic
application, so that no exclusion under Art. 52(4) EPC should apply.
The board observed that while the treatment of the female mammal with a given effective
amount of an LHRH composition was carried out to produce the desired contraceptive
effect, the concurrent treatment with the oestrogenic and progestational steroids was
carried out not to produce any contraceptive effect but as a prophylactic treatment to
avoid the consequences for health which would otherwise occur as a result of the use of
the LHRH composition. The latter step, therefore, was a treatment by therapy within the
meaning of Art. 52(4) EPC. The board noted that in the case of a method involving the
administration of two or more substances, the question for the purposes of Art. 52(4)
EPC was not whether the main or even the only reason for carrying out the whole of the
claimed method was non-therapeutic. Rather, a method claim fell under the prohibition of
Art. 52(4) EPC merely if the purpose of the administration of one of the substances was
a treatment by therapy, and the administration of this substance was a feature of the
claim (see also T 1077/93).
In T 82/93 (OJ 1996, 274) the board, after making it clear that claims including both
features relating to physical activities and features relating to physical entities were also
possible, held that under Art. 52(4) EPC a claim was not allowable if it included at least
one feature defining a physical activity or action (eg a method step) which constituted a
"method for treatment of the human body by therapy".
In T 789/96 (OJ 2002, 364) the board noted that a method involving the use of a device
having an effect on the heart was in principle a method of treatment by therapy, but in
the case at issue the claimed method was directed not to cardiac stimulation but to
"controlling stimulation energy in a pacemaker". In other words, it was designed to
optimise a pacemaker's energy consumption. The board held that a method applied to
the human or animal body involving the use of a pacemaker with a therapeutic effect was
not a therapy within the meaning of Art. 52(4) EPC if the invention consisted in refining
the said method but the refinement did not have the effect of preventing or treating a
pathological condition. Therefore, the claimed method had no therapeutic effect on the
body and was thus not excluded by Art. 52(4) EPC.
In T 182/90 (OJ 1994, 641), method claims were allowed even though one step of the
method included a surgical step on a living animal. But they were allowed on the basis
that the method used in that case consciously ended in the laboratory animal's death,
and this prevented the surgical step from being considered unpatentable treatment by
surgery. The board stated that normally the presence of a surgical step in a multi-step
method for treatment on the human or animal body confers a surgical character on that
method, which would bring it within the prohibition of Art. 52(4) EPC.
In T 385/86 (OJ 1988, 308) the board held that the only diagnostic methods to be
excluded from patent protection were those whose results immediately made it possible
to decide on a particular course of medical treatment. This meant that to answer the
question whether a method was a diagnostic method for the purposes of Art. 52(4), first
sentence, EPC, it was necessary to ascertain whether the method claimed contained all
the steps involved in reaching a medical diagnosis. Methods providing only interim
results were thus not diagnostic methods within the meaning of Art. 52(4), first sentence
EPC even if they could be utilised in making a diagnosis.

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 I.A.2. Medical methods

In G 1/04 (OJ 2006, 334) the Enlarged Board of Appeal pointed out that the surgical or
therapeutic nature of a method claim can perfectly be established by a single method
step without contravening Art. 84 EPC. Diagnostic methods, however, differed in this
respect from the methods of surgery and therapy. The method steps to be carried out
prior to making a diagnosis as an intellectual exercise were related to examination, data
gathering and comparison. If only one of the preceding steps which were constitutive for
making such a diagnosis was lacking, there was no diagnostic method, but at best a
method of data acquisition or data processing that could be used in a diagnostic method
(see T 385/86). It followed that, whilst the surgical or therapeutic nature of a method
claim could be achieved by a single method step, several method steps were required to
define a diagnostic method within the meaning of Art. 52(4) EPC due to the inherent
and inescapable multi-step nature of such a method. Consequently, the restrictive
interpretation of the patent exemption for diagnostic methods adopted by decision
T 385/86 did not amount to setting a different standard for diagnostic methods than that
established for methods of surgery or therapy, as had been asserted in decision
T 964/99.
2.2.3 Features for curative purposes
In G 1/04 (OJ 2006, 334) the Enlarged Board of Appeal referred to the well-established
jurisprudence of the EPO in respect of Art. 84 EPC, which required that, in order to be
patentable, an independent claim must recite all the essential features which were
necessary for clearly and completely defining a particular invention. These features were
for the most part of a technical nature. But, if a non-technical feature was to be regarded
as constitutive for defining the invention, it must likewise be included as an essential
feature in the independent claim. Thus, although diagnosis stricto sensu was a purely
intellectual exercise unless it was carried out by a device, the feature pertaining to it was
such an essential feature to be included in the independent claim. The same applied to a
feature relating to a method step of a non-technical nature belonging to the preceding
steps which were constitutive for making the diagnosis for curative purposes. As regards
in particular the non-technical feature pertaining to diagnosis for curative purposes, it
was to be included as an essential feature in the respective independent claim if its
essentialness was unambiguously inferable from the respective European patent
application or European patent as a whole.
In T 82/93 (OJ 1996, 274) the opponent had argued that the claimed method was a
method of treating the human body by therapy, which, pursuant to Art. 52(4) EPC, was to
be regarded as not susceptible of industrial application and therefore not patentable. The
opposition division in its decision rejected this objection on the grounds that the defined
method of operating a pacer included steps which necessarily implied that an algorithm
was implemented in the pacer and used to control the pacing rate. Since such control of
the pacing rate was "a technical operation performed on a technical object", the
opposition division held that the claimed method could not be considered as a method
for treatment of the human body by therapy within the meaning of Art. 52(4) EPC, and
that it was a method which was susceptible of industrial application within the meaning of
Art. 57 EPC. The board noted that whether or not the claim included features directed to
"a technical operation performed on a technical object" was legally irrelevant to the
application of Art. 52(4) EPC. In fact, a claim could contain nothing but technical features
directed to a technical operation performed on a technical object and a subsequent
technical operation performed on a human or animal body, but such a claim would be

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Patentable inventions

unallowable under Art. 52(4) EPC if it defined a method for treatment of such a body by
therapy or surgery.
In T 245/87 (OJ 1989, 171) claim 1 sought protection inter alia for a method in which an
electrically conductive liquid containing a drug such as insulin was introduced into the
body through the pump of an implantable device for controlled drug administration. The
application was refused by the examining division on the basis of Art. 52(4) EPC. The
board held that the steps described in claim 1, even when applied to an implanted device
for controlled drug administration, only involved measuring the volume of the drug
solution flowing into the body per unit of time. The flow itself was not affected. These
steps might therefore be performed without any medical knowledge and had no
therapeutic effect whatsoever in themselves. The doctor was in no way hindered in
exercising his professional skills, ie preventing, curing or alleviating illness. The board
ruled that a method did not fall within the scope of Art. 52(4), first sentence, EPC, if there
was no functional relationship, and hence no physical causality, between operations
effected using a therapeutic apparatus and the therapeutic effect produced on the
organism by that apparatus.
In T 329/94 (OJ 1998, 241) the object of claim 12 was principally a method for facilitating
sustained venous blood flow to a blood extraction point located in the vein of a human
upper limb by alerting the blood donor to help in maintaining the desired blood flow
through a selective automated tactile stimulus. The board firstly noted that in the light of
established EPO practice it was appropriate to refuse protection for a blood extraction
method considered per se, since otherwise a large part of medical activities would be
hampered. However, it made it clear that in determining whether the features under
consideration constituted a medical method, the purpose of the claimed subject-matter
was to be defined in accordance with the patent application, as understood in the light of
the description and drawings (Art. 69 EPC and its Protocol). In the board's view, it
mattered little whether the measure was performed by a medical practitioner or another
person having medical knowledge or under the supervision of such a person (see also
T 24/91, OJ 1995, 512). This sole criterion was not sufficient to decide whether the
method step was objectionable under Art. 52(4) EPC, though the medical competence of
the practitioner could be, at first sight, a useful indication. Much more important was the
purpose and inevitable effect of the feature under consideration. The board observed
that if the claimed subject-matter was actually confined to operating an apparatus for
performing a method with the technical aim of facilitating blood flow towards a blood
extraction point, the operating method had no therapeutic purpose or effect and,
therefore, was not excluded from patentability.
In deciding the case, the board observed that method claim 12 relating to operating a
blood extraction assist apparatus conferred protection which was already covered by the
scope of the device claim 1 directed to said apparatus; thus its subject-mater was
covered by the exception provided for in Art. 52(4), second sentence, EPC. Should,
nevertheless, claim 12 be regarded as a plain method claim, the object of this claim was
merely to give the donor an order, in the form of a stimulus, to operate the apparatus, so
as to facilitate blood flow through the blood extraction point. The method did not produce
any therapeutic or prophylactic effect on the donor himself, that is, with a view to
maintaining or restoring his health by preventing or curing diseases. It was of merely
technical nature, with the sole aim of improving the efficiency of taking blood from a

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 I.A.2. Medical methods

donor. Claim 12 therefore did not fall within the ambit of subject-matter excluded under
Art. 52(4) EPC .
2.2.4 Medical character of the excluded methods
As seen above, whether a measure was performed by a medical practitioner or another
person having medical knowledge or under the supervision of such a person is not
sufficient to decide whether the method step is objectionable under Art. 52(4) EPC (see
T 24/91, OJ 1995, 512; T 329/94, OJ 1998, 241). The medical competence of the
practitioner could, however, be a useful indication.
In G 1/04 (OJ 2006, 334) the Enlarged Board of Appeal held that the qualification of an
activity as having a diagnostic character might not depend on who was involved. The
wording of Art. 52(4) EPC was unequivocal in that the exclusion related only to the
method, and not to the person carrying out the method. To allow the grant of a European
patent to depend on the involvement of such a person would therefore introduce legal
uncertainty into the patent granting procedure. Thus, whether or not a method was a
diagnostic method within the meaning of Art. 52(4) EPC should depend neither on the
participation of a medical or veterinary practitioner, through being present or bearing the
responsibility, nor on the fact that all method steps could also, or only, be practised by
medical or non-medical support staff, the patient himself or herself or an automated
system.
In T 385/86 (OJ 1988, 308) the board examined whether the claims defined methods
which could not be considered susceptible of industrial application because they could
only be carried out by a doctor in the exercise of his healing skills. The board came to
the conclusion that a person skilled in nuclear spin resonance spectroscopy could
implement the measures claimed in a commercial laboratory environment without
specialist medical knowledge or skills. The board found that the various steps for which
protection was sought did not include any measures having the character of medical
treatment or requiring a doctor to carry them out. In fact it was a technician who, using
the method claimed, was able, quite independently, to produce a working basis for the
doctor's subsequent activity of diagnosis.
In T 400/87 the board observed that the effects of the continuous static magnetic field
and the magnetic gradient fields which were applied according to claim 1 did not, as far
as was known, have any harmful side-effects on living matter. The claimed method could
therefore be implemented without specialist medical knowledge or skills.
In T 426/89 (OJ 1992, 172) the board came to the conclusion that Art. 52(4) EPC did not
prejudice the patentability of claims relating to a product, namely a pacemaker for
arresting a tachycardia. The board could not agree with the appellants' argument that
enforcement of the rights ensuing from these claims could hinder a doctor from
programming a legitimately acquired freely programmable pacemaker so as to perform
the claimed steps of the method and could thus restrict him inadmissibly in the exercise
of his professional skills. The programming of a pacemaker was no more than an act
performed on an apparatus. And although that act could be performed by a doctor in the
exercise of his professional skills, it did not constitute direct treatment by therapy of the
human or animal body, which alone was excepted from patentability by Art. 52(4) EPC.
Equally, every valid patent for a product for the treatment by therapy of the human or
animal body could prejudice the manufacture of this product by a doctor without

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Patentable inventions

automatically constituting an inadmissible restriction on the exercise of his professional

skills.
In T 24/91 (OJ 1995, 512) the board considered whether or not the claimed invention,
involving a process for re-profiling the anterior curvature of a synthetic lenticule, secured
to the cornea of the human eye for correcting vision, by ablating (ie removing) with a
laser portions of said lenticule, represented a method for treatment of the human body by
surgery or therapy within the meaning of Art. 52(4), first sentence, EPC. The board
stated that a method for treatment of the human body could normally be said to fall within
the exclusion of Art. 52(4), first sentence, EPC, at least in those cases where, in view of
the health risk connected with such a treatment, it had to be performed by, or under the
supervision of a physician. The board noted that the claimed process was and had to be
carried out by the ophthalmologist or ophthalmic surgeon himself, or at least under his
supervision, so that the claimed process did fall under the exclusion of Art. 52(4) EPC.
Directing the laser beam to the lenticule bore the serious risk of damaging the
neighbouring tissue of the eye, and the physician was bound to exercise extreme care
both during the medical treatment and during the use of medical-technical apparatus and
was responsible for the surveillance of his medical and non-medical staff. The board
further stated that securing the lenticule to the cornea of the eye, was a real implant, in
contrast to, for example, an arm or leg prosthesis. Therefore, the claimed process
represented a treatment by therapy.
In T 655/92 (OJ 1998, 17) the board stated that the patentability of a diagnostic method
depended on the nature of the diagnostic method itself. Thus, it was legitimate not to
derive the character of a medical diagnostic activity from its diagnostic purpose when
such a method comprised steps which as a whole were non-medical (see eg T 385/86,
OJ 1988, 308). However, the diagnostic character of a process, within the meaning of
Art. 52(4) EPC, could be recognised in that such a process for which protection was
sought did include essential steps which were to be implemented by medical staff or
under the responsibility of a doctor (see also T 469/94).
2.2.5 The exclusion of industrial applicability under Article 52(4) EPC
The methods set out in Art. 52(4) EPC are excluded from patentability, even though such
methods are capable of being applied industrially, as a matter of policy. In contrast, the
subject-matters which are set out in Art. 52(2) EPC are excluded primarily because they
have traditionally been regarded within national patent laws as more in the nature of
ideas than industrial manufactures The difference in wording between paragraphs (2)
and (4) of Art. 52 EPC results from the nature of the subject-matters that are being
excluded from patentability in the respective paragraphs (T 116/85, OJ 1989, 13).
In T 116/85 (OJ 1989, 13) the board held that under the proper interpretation of Articles
52 and 57 EPC in their context, even though the therapeutic treatment of animals is
commonly an aspect of agriculture, and agricultural methods in general are potentially
patentable subject-matter, nevertheless the particular methods of treatment of animals
defined in Art. 52(4) EPC are excluded from patentability. For the particular methods of
treatment of animals defined in Art. 52(4) EPC, the prohibition against patentability set
out in Art. 52(4) EPC takes precedence over Art. 57 EPC. If a claimed method requires
the treatment of an animal body by therapy, it is a method which falls within the
prohibition on patentability set out in Art. 52(4) EPC. It is not possible as a matter of law
to draw a distinction between such a method as carried out by a farmer and the same

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 I.A.2. Medical methods

method as carried out by a veterinarian, and to say that the method when carried out by
a farmer is an industrial activity and therefore patentable under Art. 57 EPC, and when
carried out by a veterinarian is a therapeutic treatment not patentable under
Art. 52(4) EPC. Nor is it possible as a matter of law to distinguish between the use of
such a method for the treatment of ectoparasites and endoparasites.
In T 1165/97 the board examined whether the exclusion of industrial applicability under
Art. 52(4) EPC applied in a method of using a vaginal discharge collector. The board
came to the conclusion that the mere placement in and collection of the discharge device
in the vaginal canal of a female, even if performed by a medically trained person or a
doctor, was not a method of treatment of the human or animal body by surgery or
therapy. A prerequisite therefor was the act of surgery or the curative or preventive
treatment of illness or the alleviation of the symptoms of pain and suffering, which was
not the case with the method of the invention. Neither was there the necessity of
particular medical skills in positioning and removing the discharge collector, as these
actions were identical to the placement and removal of a contraceptive device such as a
pessary, which is performed by women themselves. Neither was there a case of a
diagnostic method practised on the human or animal body, since that exclusion only
applies to diagnostic methods of which the results make it directly possible to decide on
a particular course of medical treatment. To fall under this exclusion the method claimed
should contain all the steps involved in reaching a medical diagnosis.
2.3. Therapeutic methods
2.3.1 Meaning of "therapy"
The first definition of the term was given in T 144/83 (OJ 1986, 301). According to this
decision therapy relates to the treatment of a disease in general or to a curative
treatment in the narrow sense as well as the alleviation of the symptoms of pain and
suffering.
It is established case law that a prophylactic treatment, aimed at maintaining health by
preventing ill effects that would otherwise arise, amounts to a method for treatment by
therapy as referred to in Art. 52(4) EPC, and that therapy is not limited to treatments
which restore health by curing diseases which have already arisen (see eg, G 5/83,
OJ 1985, 64). Both prophylactic and curative methods of treating disease are covered by
the word therapy, since both are directed to the maintenance or restoration of health
(T 19/86, OJ 1989, 24; T 290/86, OJ 1992, 414; T 438/91, T 820/92, OJ 1995, 113).
In T 81/84 (OJ 1988, 207) the question arose whether or not the character of menstrual
discomfort manifesting itself for instance in intense headaches and other painful
symptoms was such that its treatment should fall under the category of therapeutic
treatment. The board found that the concept of therapy should not be confined
narrowly. There were many chemical agents which were used by physicians to relieve
pain, discomfort and incapacity. Although at least some of such and similar experiences
might have been caused by natural circumstances (eg menstruation, pregnancy or age,
etc.) or by a reaction to situations in the human environment (eg atmospheric conditions
provoking tiredness, headaches, etc.), these overlapped with and were often
indistinguishable from symptoms of a disease or an injury. The board noted that It would
be impossible and undesirable to distinguish between basic and symptomatic therapy, ie
healing or cure and mere relief. The use of medicaments might be called for whenever
the human body was suffering from a disease, illness, pain or discomfort or incapacity,

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Patentable inventions

and the administration thereof could provide or contribute to either full or partial healing,
or relief or restoration of fitness. The board concluded that irrespective of the origin of
pain, discomfort or incapacity, its relief, by the administration of an appropriate agent,
was to be construed as therapy or therapeutic use within the meaning of Art. 52(4) EPC.
In T 24/91 (OJ 1995, 512) the board observed that the term "therapy" was not restricted
to curing a disease and removing its causes. Rather, this term covered any treatment
which was designed to cure, alleviate, remove or lessen the symptoms of, or prevent or
reduce the possibility of contracting any disorder or malfunction of the human or animal
body. The board found that the claimed process removed, by treatment of the patient's
eye, the symptoms of myopia, hyperopia and astigmatism and was therefore a
therapeutic treatment.
According to decision T 774/89 the purpose of therapy was invariably to restore the
organism from a pathological to its original condition, or to prevent pathology in the first
place whereas a non-therapeutic improvement of performance took as its starting point a
normal state (to be defined).
In T 469/94 the board observed that the patentability of the subject matter depended on
the nature of the treatment. The question at issue was whether increasing the
acetylcholine level in the brain and tissue and thereby reducing the perception of fatigue
in a person about to participate in major exercise or having completed major exercise
counts as therapeutic or non-therapeutic treatment of the human body. The board noted
that the condition of fatigue induced by the performance of exercises was a transitory
physiological condition caused by natural circumstances and removable by simple rest.
Simple training was generally known to retard the perception of fatigue. Pain or serious
suffering did not appear to be manifestations of fatigue, which therefore was not
comparable with the pathological state typical of a disease or an injury. The board
observed that the treatment for reducing the perception of fatigue was not even
comparable with the relief of pain, discomfort and incapacity (see above T 81/84,
OJ 1988, 207).
In T 74/93 (OJ 1995, 712) the claimed invention related to alicyclic compounds and their
contraceptive use. The product claims and a claim for the process of preparation of a
contraceptive composition by formulating the claimed compounds with a non-toxic carrier
were not objected to. However, the application was refused by the examining division
because claim 5, which was directed to the use of a contraceptive composition (eg a
cream) comprising these compounds for applying to the cervix of a female capable of
conception, was not susceptible of industrial application as required by Art. 57 EPC in so
far as the compound was to be applied to the cervix of a human female.
The board took the view that a method of contraception was not excluded per se from
patentability under the aspects of industrial application as stipulated in Art. 57 as well as
in 52(4), first sentence, EPC. Pregnancy was not an illness and therefore its prevention
was not in general therapy according to Art. 52(4) EPC (for a specific case see T 820/92,
OJ 1995, 113). It seems to have been widely accepted in the contracting states that such
methods may be susceptible of industrial application. However, it was not sufficient for
such methods to be susceptible of industrial application in general. Rather, the invention
as claimed in the specific case had to fulfil the requirement of Art. 57 EPC (see Chapter
"The requirement of industrial applicability under Art. 57 EPC").

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 I.A.2. Medical methods

In T 241/95 (OJ 2001, 103) the board held that the selective occupation of a hormon
receptor could not be considered as a therapeutic application; the discovery that a
substance selectively binds the serotonin receptor, even if representing an important
piece of scientific knowledge, still needs to find a practical application as a defined, real
treatment of any pathological condition to make a technical contribution to the art and to
be considered as an invention eligible for patent protection.
2.3.2 Methods with both therapeutic and non-therapeutic indications
Whether or not a claimed invention is excluded from patentability under Art. 52(4) EPC
may depend upon the wording of the claim in question.
In T 820/92 (OJ 1995, 113) the board had to decide whether a claimed non-therapeutic
treatment comprising a patentable step and an inevitable therapeutic step was non-
patentable in its entirety by virtue of Art. 52(4) EPC. It was stated however that exclusion
from patentability under Art. 52(4) EPC could not be prevented by a purely formal
rewording of the claim to qualify the purpose of the process, in its indivisible entirety, as
non-therapeutic. A further, different consideration has been made by the boards of
appeal, that is, whether the non-therapeutic effect according to the application in
question is distinguishable from the therapeutic effect or, on the contrary, whether it is
inextricably linked to said therapeutic effect. In the latter situation, the claim would
necessarily include a therapeutic treatment as well and would be excluded from
patentability in its entirety by virtue of Art. 52(4) EPC as already set out in equivalent
cases such as decisions T 290/86 (OJ 1992, 414), T 780/89 (OJ 1993, 440) or
T 1077/93.
(a) Inevitable and inextricably linked therapeutic effect of the claimed method
In T 116/85 (OJ 1989, 13) the board observed that the method at issue, when applied to
individual animals, had the nature of veterinary treatment; when applied to herds of
animals it also had the nature of an industrial activity. The board went on to say that
there was no doubt that the rearing of livestock such as herds of pigs was a farming
activity, and that farming was in the broad sense a part of agriculture and therefore in
turn an industrial activity for the purposes of the EPC. Thus it was easy, as such, to draw
a distinction between individual veterinary treatment on the one hand and large-scale
treatment activities normally carried out by a farmer on the other hand - as was put
forward by the appellant. Nevertheless, if the method defined in the claims covered both
forms of activity, the drawing of such a distinction would not help the appellant's case.
The board made it clear that any therapeutical treatment of a farm animal could also be
considered as an industrial activity, in so far as farming was clearly an industrial activity,
and the medical treatment of disease in both individual farm animals and herds of farm
animals was intended to increase the efficiency of such industrial activity. To prevent the
death of a farmyard pig from disease by a medical treatment, or to cure it of a disease by
such a treatment and thus to increase its yield of meat, was in each case both an
industrial activity and a therapeutic treatment. It was therefore clear that the therapeutic
treatment of animals was commonly an aspect of agriculture. The board held that a
claimed method was excluded from patentability within the meaning of Art. 52(4) EPC, if
it rendered the therapeutic treatment of animals necessary, even though the therapeutic
treatment of animals was commonly an aspect of agriculture, and agricultural methods
were in general potentially patentable subject-matter. Here, the board, however, did not
consider it possible as a matter of law to draw a distinction between such a method as

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Patentable inventions

carried out by a farmer and the same method when carried out by a veterinarian, and to
say that the method, when carried out by a farmer, was an industrial activity and, when
carried out by a veterinarian, was a therapeutic treatment not patentable under
Art. 52(4) EPC.
According to T 780/89 (OJ 1993, 440) the secondary effect of a therapeutic treatment did
not render it patentable. The claim in question related to a method of general
immunostimulation for animals. The applicant argued, inter alia, that this served to
increase meat production and that the method was therefore not being used as a means
of therapy. However, the board regarded the effect of increasing meat production as a
consequence of the improvement in the animals' health. Moreover, the general
stimulation of the immune system was integrally linked to the specific prophylactic
function of safeguarding against particular infections.
In T 438/91 the patentee contended that the main purpose of the claimed process was to
increase the weight of the animals which effect was separable from the effect of
prevention or cure of scours. This latter was merely a beneficial side effect. It was
necessary to decide whether or not a method for breeding domestic animals in claims 1
and 2 related to a therapeutic or prophylactic treatment. The board noted that two effects
were observed as a result of the breeding method claimed: (a) the remedying of scours
and, (b) a weight increase in the animals being bred. The board found that, in the light of
the patent disclosure, the two effects were linked by the single action of feeding the
animals, and that the intention was to obtain both effects at the same time in animals
suffering from scours (treatment by therapy) and to prevent the latter complaint in those
animals which did not already have it (treatment by prophylaxis). In conclusion, the board
was of the opinion that the subject-matter of claims 1 and 2 related to a therapeutic or
prophylactic treatment of domestic animals and thus fell within the prohibition on
patentability set out in Art. 52(4) EPC.
In T 290/86 (OJ 1992, 414) no method claim was considered allowable because the
disclosed method of eliminating plaque inevitably had the therapeutic effect of preventing
caries and periodontal disease; it therefore fell under the prohibition of Art. 52(4) EPC
irrespective of the fact that the removal of plaque could also have the cosmetic effect of
improving the appearance of the teeth. The board took the view that whether or not a
claimed invention was excluded from patentability under Art. 52(4) EPC depended in
particular on the wording of the claim in question. If the claimed invention was not
directed solely to a cosmetic effect, but was also necessarily defining a treatment of
the human body by therapy as well, such a claim was excluded from patentability
(distinguished from the decision in T 144/83, OJ 1986, 301). The board held that if the
claimed use of a chemical product inevitably always had a therapeutic effect as well
as a cosmetic effect the invention as claimed necessarily defined a treatment of the
human body by therapy and was not patentable.
In T 1077/93 the opposition division had concluded that the claimed invention was not a
non-patentable therapeutic method within the meaning of Art. 52(4) EPC, but a cosmetic
treatment. Claims 1 and 11 related to the use of the cupric complex of 3,5-Diisopropyl
salicylic acid (referred to in the following as CuDIPS) as a cosmetic product or in a
cosmetic composition, and to a cosmetic treatment process, based on the use of this
complex, for the protection of the human epidermis. The purpose of the patented
composition was to protect the human epidermis against ultraviolet radiation: notably, to
reduce the intensity of erythema, recognised as the most spectacular form of damage to

30
 I.A.2. Medical methods

the skin by sunlight, and of skin-level cellular changes such as the formation of
degenerated and necrotised keratinocytes, generally known by the term "sunburn cells
(SBC)". The appellant lodged an appeal against this decision of the opposition division.
In its ruling, the board cited the point, already explored in T 820/92 (OJ 1995, 113) (see
above), that exclusion from patentability under Art. 52(4) EPC could not be prevented by
a purely formal rewording of the claim to qualify the purpose of the process, in its
indivisible entirety, as non-therapeutic. The board took the view that the examination as
to patentability of claims 1 and 11 necessitated an examination of the mechanism by
which CuDIPS acted, and of the relationship between all its effects. The board concluded
that at least part of the protective effect did not derive from a simple filtering at the level
of the skin surface, but rather from an interaction with the cellular mechanisms in the
epidermis, with the purpose of preventing a pathological state (erythema); therefore the
process had a genuine therapeutic effect.
(b) Therapeutic and non-therapeutic effects distinguishable
In T 144/83 (OJ 1986, 301) the board accepted the patentability of a claim worded in
such a way that it clearly sought protection for a method of treating the human body for
cosmetic purposes but not for the therapeutic application which was also possible. The
board pointed out that the language of the claim in question clearly covers a method of
cosmetic use and is unrelated to the therapy of a human or animal body in the ordinary
sense. This was because loss of weight, like gain of weight, is normally not dictated as a
desirable effect by medical considerations at all. On the facts of the case, the board
considered that it might be difficult to distinguish between loss of weight to improve
bodily appearance (cosmetic treatment) and loss of weight to treat obesity (therapeutic
treatment), but that this should not be allowed to work to the disadvantage of an
applicant who, according to the wording of his claim, sought patent protection for
cosmetic treatment but not for the therapeutic treatment as such. Therefore, the board
held that the fact that a chemical product had both a cosmetic and a therapeutic effect
when used to treat the human or animal body did not render the cosmetic treatment
unpatentable. Art. 52(4) EPC was to be construed narrowly so that it did not
disadvantage an applicant seeking patent protection for the cosmetic treatment only.
In T 36/83 (OJ 1986, 295) the description expressly disclosed two very different
properties of a compound used in the treatment of comedones, ie its anti-bacterial and
its hygienic action. The application showed that pharmaceutical and cosmetic
preparations could have very similar, if not identical, forms. The distinction was clearly
set out in the description as filed. The board decided that the cosmetic application of a
product which also had a therapeutic use was patentable, since the applicants had only
claimed in respect of "use as a cosmetic product". The use of the term "cosmetic" was
held to be sufficiently precise, although the cosmetic treatment according to the
application might also incidentally involve a medical treatment.
In T 584/88 claim 1 was directed to the use of a substance to manufacture a means for
the treatment by therapy of unhealthy snoring, and claim 15 to the use of the substance
against irritating snoring. Claim 1, by describing the snoring as "damaging to health",
ensured that it only covered use of the substance to manufacture means serving to treat
symptoms of morbidity. Claim 15 covered only irritating as opposed to morbid snoring;
this use could not therefore be considered a method for treatment by therapy. The board
allowed both claims: snoring was generally considered irritating rather than morbid, but
some medical specialists had warned that frequent loud snoring was unhealthy. If so,

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Patentable inventions

then combating snoring was a preventive (prophylactic) method for treatment by therapy;
otherwise it was more comparable with cosmetic treatment of the human body. The
dividing line between irritating and unhealthy snoring was difficult to draw. The board,
following T 36/83 (OJ 1986, 295) and T 144/83 (OJ 1986, 301), therefore decided to
allow both types of claim together.
In T 774/89, cited above under Chapter I.A.2.3.1, the board accepted the patentability of
using a medication to increase milk production in cows, because it was evident that the
success of the treatment did not depend on the animals' state of health, and the insertion
in the claim of the term "non-therapeutic" served as a disclaimer, excluding the
therapeutic effects of the medication.
In T 469/94 it had to be ascertained whether the non-therapeutic effect according to the
application at issue was distinguishable from the therapeutic effect of choline. The board
found that the two effects of choline were not inseparably linked or correlated but, on the
contrary, were readily distinguishable because they involved groups of persons (or
patients) undoubtedly distinct. The one consisted of patients known to have a muscular
disease, muscular injury or epilepsy, whereas the second comprised healthy persons
who would receive no therapeutic benefit from the treatment. Moreover, the times
necessary for appreciating the different effects (days for the therapeutic effect and
minutes or hours for the non-therapeutic effect) would appear to be so different that no
unwanted overlap of the treatment could occur. Therefore, the board held that the claim
in question was directed to a non-therapeutic method.
2.4. Surgical methods
In T 182/90 (OJ 1994, 641) the application at issue related to a method for measuring
the blood flow of a laboratory animal. The method comprised steps clearly representing
surgical treatment and the step of sacrificing the animal involved. The board stated that
the presence of a surgical step in a multi-step method for treatment of the human or
animal body would normally confer a surgical character on that method. In this case,
however, it took the view that the method, which consciously ended in the laboratory
animal's death, could not be regarded as a method for the treatment of an animal by
surgery.
The board pointed out that when interpreting Art. 52(4) EPC, it is decisive to know what
is to be understood, in the medical and legal usage of the language, by the expression
"treatment of the human or animal body by surgery". The board observed that the term
"surgery" appears to be inconsistent with the fact that in today's medical and legal
linguistic usage, the non-curative treatments such as cosmetic treatment, the termination
of pregnancy, castration, sterilisation, artificial insemination, embryo transplants,
treatments for experimental and research purposes and the removal of organs, skin or
bone marrow from a living donor are, if carried out by surgery, regarded as surgical
treatments. The board observed that the term "treatment by surgery" had undergone a
change in meaning insofar as it nowadays may also comprise particular treatments
which are not directed to the health of the human or animal body. In the board's view,
however, the semantic change in the terminology could not extend so far that the
opposite of the original meaning fell within its scope: a method involving the deliberate
killing of a laboratory animal was not in the nature of a method of surgical treatment. It
was noted that the Guidelines C-IV, 4.2.1 (June 2005 version) stated that the term
"surgery" defined the nature of the treatment rather than its purpose. The board,

32
 I.A.2. Medical methods

however, observed that this might not be true in all cases. The board held that a method
which included a surgical step practised on a living animal and the additional step of
sacrificing the animal, which step was necessary to carry out the method, could not be
regarded in its entirety as a method for treatment of an animal by surgery within the
meaning of Art. 52(4) EPC (see T 329/94, OJ 1998, 241).
In T 35/99 (OJ 2000, 447) the board held that, in contrast to procedures whose end
result was the death of the living being "under treatment", either deliberately or
incidentally (eg the slaughter of animals or methods for measuring biological functions of
an animal which comprised the sacrificing of said animal, cf. T 182/90, OJ 1994, 641),
those physical interventions on the human or animal body which, whatever their specific
purpose, gave priority to maintaining the life or health of the body on which they were
performed, were "in their nature" methods for treatment by surgery within the meaning of
Art. 52(4) EPC. The terms "treatment" and "surgery" in Art. 52(4) EPC could not be
considered as constituting two distinct requirements for the exclusion provided therein.
The exclusion encompassed any surgical activity, irrespective of whether it was carried
out alone or in combination with other medical or non-medical measures.
In T 775/97 the applicants submitted a claim directed to the use of a (known) device for
the manufacture of a device, which use involved a surgical method step; they submitted
a further claim directed to a device defined by a construction only arrived at in the human
or animal body following a surgical method step.
The board observed that such claims were actually directed to a surgical method. The
use of a known material as, so to say, starting material for a medical activity, was quite
different from the use of a known composition for manufacturing a medicament, which
was an industrial process. Thus, as regards the exclusion under Art. 52(4) EPC, no
analogy could be drawn between the use of materials or devices in a surgical method
and the second medical use of substances or compositions patentable with the claim
format allowed by G 5/83 (OJ 1985, 64). Therefore, the board held that no European
patent could be granted with claims directed to a new and even possibly inventive way of
using materials or devices, in particular endoprotheses, involving treatment by surgery.
This was equally true for product claims defined by a construction only arrived at in the
human or animal body following a surgical method step.
In T 383/03 (OJ 2005, 159) the EPO department of first instance referred to decisions
T 182/90 (OJ 1994, 641) and T 1077/93 and stated that medical treatments also
encompassed treatments by surgery for non-curative purposes such as cosmetic
treatments. The application was accordingly refused under Art. 52(4) EPC. The board
noted that, although it was clear from the jurisprudence of the boards of appeal that
methods of treatment which were not directed to improving or maintaining the health of a
human being or an animal might be patentable, the case was not so clear where the
treatment involved manual and/or instrumental procedures (treatment by surgery). It was
therefore necessary to examine whether Art. 52(4) EPC was intended to exclude from
patentability this type of intervention as such or whether a therapeutic effect played a
decisive role in determining which interventions are excluded from patentability as stated
for example in decision T 329/94 (OJ 1998, 241).
The board came to the conclusion that the intention of the legislator was that only those
treatments by therapy or surgery were excluded from patentability which were suitable

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Patentable inventions

for or potentially suitable for maintaining or restoring the health, the physical integrity,
and the physical well-being of a human being or an animal and for preventing diseases.
In the case at issue, the board stated that although the method involved an intentional
physical intervention on the body, it was clearly not potentially suitable for maintaining or
restoring the health, physical integrity, or physical well-being of a person or animal. The
method fell into that category of methods which included tattooing and piercing, for
example, whose only possible object was to beautify the human or animal body and
which were used by enterprises such as cosmetic salons and beauty parlours which
were part of industry within the meaning of Art. 57 EPC. These methods were
fundamentally different from those methods which, although they could be used to
beautify the human or animal body, might also be used to restore the physical integrity of
the body, such as a method of breast enlargement by surgery (following a cancer
operation, for example) or a correction of the shape of the nose (after a car accident, for
example).
In T 1172/03 the appellant was of the opinion that the limitation of the wording of the
claims to a cosmetic method could avoid the exclusion from patentability established by
Art. 52(4) EPC and referred to the jurisprudence in the field of the patentability of
compounds and chemical substances, and especially to decision T 144/83 (OJ 1986,
301).
The board considered that a claim must be judged for the purpose of Art. 52(4) EPC on
the basis of substantive and not of formal aspects of the claim (T 775/97). As stated in
decision T 1077/93, the exclusion under Art. 52(4) EPC could not be simply avoided by a
wording of the claims defining the method as a cosmetic method in a formal way, if in
substance the method was a therapeutic one. It followed that, applying the criteria used
by the boards for the cosmetic use of substances, patentability of a surgical method
claimed as a cosmetic method had to be excluded if the cosmetic use was not expressed
as a technical feature inherent in the claimed method, but only expressed in the claim as
a mere intention of the applicant (see also G 2/88, OJ 1990, 93, where a feature which
was only reflected in the mind of the person carrying out the claimed invention was
considered to be a subjective, non-technical feature which was not relevant for the
assessment of patentability).
2.5. Diagnostic methods
2.5.1 Interpreting the notion of "diagnostic methods"
Under Art. 52(4) EPC diagnostic methods practised on the human or animal body are
also excluded from patentability.
Decision T 385/86 (OJ 1988, 308) had held that the only methods to be excluded from
patent protection as diagnostic methods were those whose result immediately made it
possible to decide on a particular course of medical treatment. That, in turn, was only the
case if the claimed method contained all steps involved in reaching a medical diagnosis,
viz. examination, recording any significant deviation from the normal value, and
attributing that deviation to a particular clinical picture. That meant that methods
providing only interim results were not diagnostic methods, even if the results could be
utilised in making a diagnosis. The consequence of such a narrow interpretation was that
methods not containing all the steps involved in making a medical diagnosis were not
excluded from patentability under Art. 52(4) EPC.

34
 I.A.2. Medical methods

Departing from the interpretation set out in T 385/86, the board held in T 964/99 (OJ
2002, 4) that the expression "diagnostic methods practised on the human or animal
body" should not be considered to relate only to methods containing all the steps
involved in reaching a medical diagnosis. Art. 52(4) EPC was meant to exclude from
patent protection all methods practised on the human or animal body which related to
diagnosis or were of value for the purpose of diagnosis. Consequently, all that was
needed to justify exclusion under Art. 52(4) EPC was that the claimed method comprised
one step which served diagnostic purposes or related to diagnosis and was to be
regarded as an essential activity pertaining to diagnosis and practised on the living
human or animal body. In T 964/99 the board noted that the requirement in T 385/86
that, for a method to be diagnostic, it had to contain all the steps involved in reaching a
medical diagnosis amounted to setting a different standard for diagnostic methods than
for methods of surgery or therapy, the latter being excluded from patent protection if they
comprised only one single step of a surgical or therapeutic nature (for further information
see Case Law of the Boards of Appeal, 4th edition, 2001, Chapter I.A.2.5).
2.5.2 Opinion G 1/04 of the Enlarged Board of Appeal
The President of the EPO, making use of his power under Art. 112(1)(b) EPC, made a
referral to the Enlarged Board of Appeal on points of law relating to the interpretation of
the term "diagnostic methods practised on the human or animal body" within the
meaning of Art. 52(4) EPC. The points of law referred to the Enlarged Board of Appeal
were decided in G 1/04 (OJ 2006, 334) as follows:
The Enlarged Board of Appeal found that, according to the established jurisprudence of
the EPO, it was accepted that the method steps to be carried out when making a
diagnosis as part of the medical treatment of humans or the veterinary treatment of
animals for curative purposes included: (i) the examination phase involving the collection
of data, (ii) the comparison of these data with standard values, (iii) the finding of any
significant deviation, ie a symptom, during the comparison, and (iv) the attribution of the
deviation to a particular clinical picture, ie the deductive medical or veterinary decision
phase. In the judgment of the Enlarged Board of Appeal, there was no reason to deviate
from this jurisprudence.
However, the question to be answered in this context was whether the diagnostic
methods referred to in Art. 52(4) EPC comprised only the deductive medical or veterinary
decision phase consisting in attributing the detected deviation to a particular clinical
picture, ie the diagnosis for curative purposes stricto sensu, or whether they were also
meant to include one or more of the preceding steps concerned with examination, data
gathering and comparison.
(a) Diagnosis stricto sensu
The Enlarged Board of Appeal pointed out that the diagnostic methods referred to in
Art. 52(4) EPC included the method step concerned with the deductive medical or
veterinary decision phase, ie the diagnosis stricto sensu was a purely intellectual
exercise. As the deductive medical or veterinary decision phase, diagnosis for curative
purposes in itself was an intellectual exercise, unless, as a result of developments in the
field of diagnostic technology, a device capable of reaching diagnostic conclusions could
be used. As an intellectual exercise, pursuant to Art. 52(2) EPC, the deductive decision
phase was not regarded as an invention within the meaning of Art. 52(1) EPC, whereas
the method carried out by the device might well be an invention within the meaning of

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Patentable inventions

this provision. Since the diagnostic methods referred to in Art. 52(4) EPC were
inventions within the meaning of Art. 52(1) EPC, it followed that, in a situation where the
deductive medical or veterinary decision phase was a purely intellectual exercise, ie a
step of a non-technical nature, such a method must necessarily further include preceding
steps of a technical nature in order to satisfy the requirements of Art. 52(1) EPC. The
subject-matter of a claim including technical and non-technical features might satisfy the
requirements of Art. 52(1) EPC if the non-technical features interacted with the technical
features to bring about a technical effect (see T 603/89, OJ 1992, 230).
(b) Scope of the exclusion
The scope of the exclusion from patentability under Art. 52(4) EPC in respect of
diagnostic methods was to be interpreted narrowly. Thus, for the subject-matter of a
claim relating to a diagnostic method practised on the human or animal body to fall under
the prohibition of Art. 52(4) EPC, the claim must - in view of Art. 84 EPC - include the
feature pertaining to the diagnosis for curative purposes as a purely intellectual exercise
representing the deductive medical or veterinary decision phase, as well as the features
relating to (i) the preceding steps which were constitutive for making the diagnosis, and
(ii) the specific interactions with the human or animal body which occurred when carrying
out those of the said preceding steps which were of a technical nature.
(c) Intermediate findings
The Enlarged Board of Appeal stated that intermediate findings of diagnostic relevance
must not be confounded with diagnosis for curative purposes stricto sensu, which
consisted in attributing the detected deviation to a particular clinical picture. It followed
that a method for obtaining such results or findings did not constitute a sufficient basis for
denying patentability by virtue of Art. 52(4) EPC. To decide otherwise would give rise to
such a broad interpretation of the scope of the exclusion from patentability under
Art. 52(4) EPC - with regard to diagnostic methods - that it could hardly be reconciled
with the requirement of legal certainty.
(d) An activity having a diagnostic character may not depend on who is involved
The Enlarged Board of Appeal also held that the wording of Art. 52(4) EPC was
unequivocal in that the exclusion related only to the method, and not to the person
carrying out the method. Whether or not a method was a diagnostic method within the
meaning of Art. 52(4) EPC should depend neither on the participation of a medical or
veterinary practitioner through being present or bearing the responsibility; nor on the fact
that all method steps could also, or only, be practised by medical or non-medical support
staff, the patient himself or herself or an automated system. Moreover, no distinction
was to be made in this context between essential method steps having a diagnostic
character and non-essential method steps lacking it.
(e) The criterion "practised on the human or animal body"
Art. 52(4) EPC required that, to be excluded from patent protection, diagnostic methods
had to be practised on the human or animal body. The Enlarged Board of Appeal held
that in a diagnostic method under Art. 52(4) EPC, the method steps of a technical
nature belonging to the preceding steps which were constitutive for making the
diagnosis for curative purposes stricto sensu must satisfy the criterion "practised on the
human or animal body".

36
 I.B.1. Introduction

It could be inferred from the fact that Art. 52(4) EPC further referred to methods of
surgery and therapy that these diagnostic methods served curative purposes and were
thus meant to be practised on the living human or animal body. The criterion "practised
on the human or animal body" was to be considered only in respect of method steps of a
technical nature. Thus, it did not apply to diagnosis for curative purposes stricto sensu, ie
the deductive decision phase, which as a purely intellectual exercise could not be
practised on the human or animal body.
Art. 52(4) EPC did not require a specific type and intensity of interaction with the human
or animal body; a preceding step of a technical nature thus satisfied the criterion
"practised on the human or animal body" if its performance implied any interaction with
the human or animal body, necessitating the presence of the latter.
Further, the grant of a European patent in respect of a diagnostic method which included
preceding method steps of a technical nature carried out by a device did not contravene
Art. 52(4) EPC, because the performance of the respective method steps did not satisfy
the criterion "practised on the human or animal body". However, in the event of patent
protection, it would normally be sufficient to purchase the device in question in order to
be entitled to carry out such a method. In cases where the same diagnostic conclusions
could be reached by a method not including the use of the device, those carrying it out
would not be inhibited by the patent. Therefore, medical or veterinary practitioners could
not be considered to be hampered by the existence of such a patent.
2.6. Products for use in medical methods
Art. 52(4) EPC expressly allows the patenting of products for use in methods for the
treatment of the human or animal body by surgery or therapy and in diagnostic methods.
In T 712/93 the claim at issue was concerned with an apparatus for use as the socket
portion of a prosthetic ball and socket joint. The respondent argued in the oral
proceedings before the board of appeal that the claim did not comply with Art. 52(4)
EPC, since these claims contained a method step for treatment of the human body by
surgery which step depended on the professional decision by a surgeon. It contended
that a claim was not allowable if it included at least one feature defining a physical
activity or action which constituted a method for treatment of the human body. The board
noted that the claim was directed to an apparatus, which was defined partly by functional
features. This way of defining the scope of protection was allowable in so far as it had
met the conditions under the EPC and was necessary in order to give the applicant
adequate protection. The board found that the fact that some features were functional
did not in itself transform the claim into a method claim. Consequently the claim complied
with Art. 52(4) EPC.
B. Exceptions to patentability
Exceptions to patentability

1. Introduction
I.B.1. Introduction

Art. 53 EPC defines the exceptions to patentability as follows:

(a) inventions the publication or exploitation of which would be contrary to 'ordre public'
or morality, provided that the exploitation shall not be deemed to be so contrary merely
because it is prohibited by law or regulation in some or all of the Contracting States; and

37
Exceptions to patentability

(b) plant or animal varieties or essentially biological processes for the production of
plants or animals; this provision does not apply to microbiological processes or the
products thereof.
R. 23b to 23e EPC concerning biotechnological inventions came into force on 1.9.1999
(OJ 1999, 437). These give guidance on the definition of certain terms and provide that
the relevant provisions of the EPC shall be applied and interpreted in accordance with
the provisions of these Rules. According to T 315/03 (OJ 2006, 15) these Rules apply to
cases still pending on the date when, as provided for by the legislator, the Rules took
effect. Directive 98/44/EC dates 6.7.1998 (OJ 1999, 101) on the legal protection of
biotechnological inventions shall also be used as a supplementary means of
interpretation.
The case law indicates that any exceptions to patentability must be narrowly construed.
In respect of Art. 53(a) EPC, see T 356/93 (OJ 1995, 545) and T 866/01; in respect of
Art. 53(b) EPC, see T 320/87 (OJ 1990, 71), T 19/90 (OJ 1990, 476) and T 315/03
(OJ 2006, 15). In T 19/90 it was also stated that the object and purpose of the law (ratio
legis) was not merely a matter of the legislators' intention at the time when the law was
adopted, but also of their presumed intention in the light of changes in circumstances
which had taken place since then.
Living matter is not generally excluded from patentability under the EPC.
It was held in T 356/93 (OJ 1995, 545) that seeds and plants per se should not constitute
an exception to patentability under Art. 53(a) EPC merely because they represented
'living' matter, or on the ground that plant genetic resources should remain the 'common
heritage of mankind'.
Referring to Art. 53(b) EPC, the board in T 49/83 (OJ 1984, 112) stated that no general
exclusion of inventions in the sphere of animate nature could be inferred from the EPC.
According to T 19/90 (OJ 1990, 476), the exception to patentability under Art. 53(b) EPC
applies to certain categories of animals but not to animals as such. The Enlarged Board
stated in G 1/98 (OJ 2000, 111) that a claim wherein specific plant varieties are not
individually claimed is not excluded from patentability under Art. 53(b) EPC, even though
it may embrace plant varieties.
The patent at issue in T 315/03 (OJ 2006, 15) concerned in particular, transgenic
animals having an increased probability of developing cancer. The application had
initially been refused by the Examining Division on the grounds of Art. 53(b) EPC, which
prevents the patenting of animal varieties, and of insufficiency of disclosure under
Art. 83 EPC, since it could not be assumed that the only examples in the application,
namely mice, could be extended to all other animals. Art. 53(a) EPC, which excludes
patents for inventions the publication or exploitation of which would be contrary to "ordre
public" or morality, was also considered. However, it was concluded that patent law was
not appropriate for resolving the potential problems thereby raised.
The applicant appealed against that decision and, in T 19/90 (OJ 1990, 476), it was held
that Art. 53(b) EPC applied to certain categories of animals but not to animals as such;
and that, in the absence of serious doubts substantiated by verifiable facts, there was no
reason to refuse the application under Art. 83 EPC on the ground that it involved an
extrapolation from mice to mammals in general. As regards Art. 53(a) EPC, the board
expressed the view that in cases such as this of genetic manipulation of animals by the

38
 I.B.2. Inventions contrary to "ordre public"

insertion of an activated oncogene, there were compelling reasons to consider this

Article. The case was therefore remitted to the Examining Division for further
prosecution.
A patent was finally granted and 17 oppositions were filed against it based in particular
on Art. 53(a) and (b) EPC, as exploitation of the invention would be contrary to morality
and "ordre public" and some of the claims were to animal varieties. It was maintained in
amended form with independent claims directed to rodents. Appeals were filed against
this decision by several of the opponents. These came before the board in T 315/03. Its
findings concerning morality and "ordre public" under Art. 53(a) EPC and the non-
patentability of animal varieties under Art. 53(b) EPC are summarised under the relevant
chapter headings below.
2. Inventions contrary to "ordre public"
I.B.2. Inventions contrary to "ordre public"

In T 315/03 (OJ 2006, 15) the board held that R. 23b to 23e EPC, concerning
biotechnological inventions, applied to cases such as the one at issue which was
pending on the date when, as provided for by the legislator, those Rules took effect
(1.9.1999).
R. 23d EPC specifies that European patents shall not be granted under Art. 53(a) EPC
for four categories of biotechnological inventions. The board decided that a case falling
within one of these categories had ipso facto to be denied a patent under Art. 53(a) EPC
and there would be no need to consider that article further. However, a case which did
not fall within one of those categories had still to be considered further under
Art. 53(a) EPC. Thus, in cases falling within it, R. 23d EPC inserted an objection under
Art. 53(a) EPC (a "R. 23d type" Art. 53(a) EPC objection), which, depending on the facts
and thus on the outcome of the test, might be either additional or alternative to an
objection under Art. 53(a) EPC itself (a "real" Art. 53(a) EPC objection) as developed by
the case law. This latter objection required an assessment as to whether or not
exploitation of the invention would be contrary to morality or "ordre public".
One of the four categories under R. 23d EPC provides that European patents shall not
be granted in respect of processes for modifying the genetic identity of animals which are
likely to cause them suffering without any substantial medical benefit to man or animal,
and also animals resulting from such processes. The board rejected submissions that
this Rule was ultra vires or inconsistent either with the principle of narrow construction of
exclusions or with the previous law.
Furthermore, this test according to R. 23d(d) EPC required only three matters to be
considered: animal suffering, medical benefit and the necessary correspondence
between the two in terms of the animals in question. The level of proof was the same for
both animal suffering and substantial medical benefit, namely a likelihood.
In the assessment of a "real" Art. 53(a) EPC objection, no single definition of morality
based on e.g. economic or religious principles represented an accepted standard in
European culture. Opinion poll evidence was of very limited value for the reasons given
in T 356/93 (OJ 1995, 545), where many drawbacks were identified, ranging from the
type and the number of questions posed within one poll, through the size and
representative nature of the cross-section of the population polled, to the manner of
interpretation of the results obtained.

39
Exceptions to patentability

The board held that, in animal manipulation cases, the test in T 19/90 (OJ 1990, 476)
was appropriate. This differed in several respects from the test in R. 23d(d) EPC, most
importantly by allowing matters other than animal suffering and medical benefit to be
taken into account. Whereas the R. 23d(d) EPC test only required a likelihood of animal
suffering, however minor, and a likelihood of medical benefit, the test in the present
decision required a "careful weighing up" of the matters to be balanced. This clearly
allowed an appraisal of animal suffering, of environmental risks and of the feasibility of
using non-animal alternatives. A wider range of benefits to mankind than the substantial
medical benefit found in R. 23d(d) EPC could also be considered. Since the test in the
said decision was "mainly" the basis of assessment, further arguments as to the
appropriate standard of morality or "ordre public" could additionally be considered, but all
arguments had to be supported by evidence.
Assessment of both a "R. 23d type" and a "real" Art. 53(a) EPC objection was to be
made as of the filing or priority date of the patent or application in suit. Evidence arising
thereafter might be taken into account provided it was directed to the position at that
date.
The board found that claims directed to rodents failed the R. 23d(d) EPC test and had
therefore to be refused under Art. 53(a) EPC, as the patent disclosed a likelihood of
animal suffering but not a likelihood of medical benefit when applying the invention to this
generic class of animals. The same conclusion would have been reached under a "real"
Art. 53(a) EPC assessment. However, both tests were satisfied when the invention was
restricted to mice.
The patent in suit in T 272/95 (OJ 1999, 590) concerned "Molecular cloning and
characterization of a further gene sequence coding for human relaxin". In the opposition
proceedings, the Opposition Division decided that an invention concerning a human
gene did not constitute an exception to patentability because it would not be universally
regarded as outrageous.
On appeal by the opponents, the board considered the new R. 23e(2) EPC. This Rule
defined which biological material originating from the human body might be patented
("an element isolated from the human body or otherwise produced by means of a
technical process including the sequence or partial sequence of a gene [...], even if the
structure of that element is identical to that of a natural element"). Having regard to
Art. 164(2) EPC, the board then had to examine whether or not the new rules insofar as
they related to Art. 53(a) EPC were in conformity with that Article. Following G 1/98 (OJ
2000, 111), the board adopted the view that the rules related to the articles were to be
only interpretative. They only gave a more detailed interpretation of the meaning of
Art. 53 EPC as intended from its inception, and hence were applicable to cases already
pending before their introduction.
It thus followed from the text of the Rule itself that the subject-matter was not to be
considered as an exception to patentability under Art. 53(a) EPC (ie inventions contrary
to "ordre public" or morality).
The issue of morality had previously been raised in T 356/93 (OJ 1995, 545), this time in
connection with plants. The object of the invention was plants and seeds resistant to a
particular class of herbicides so that they could be selectively protected against weeds
and fungal diseases. This was achieved by stably integrating into the genome of the
plants a heterologous DNA encoding a protein capable of inactivating or neutralising the

40
 I.B.2. Inventions contrary to "ordre public"

herbicides. The patent was opposed under Art. 53(a) EPC, in particular on the grounds
that the exploitation of the invention was likely to cause serious damage to the
environment.
The board acknowledged that it might be difficult to judge whether or not a claimed
subject-matter was contrary to "ordre public" or morality, but that nonetheless, the
provisions of Art. 53(a) EPC could not be disregarded. Each particular case had to be
considered on its merits.
The board defined the concept of "ordre public" as covering the protection of public
security and the physical integrity of individuals as part of society. It also encompassed
the protection of the environment. Accordingly, inventions the exploitation of which was
likely to seriously prejudice the environment were to be excluded from patentability as
being contrary to "ordre public".
The concept of morality was related to the belief that some behaviour was right and
acceptable whereas other behaviour was wrong, this belief being founded on the totality
of the accepted norms which were deeply rooted in a particular culture. For the purposes
of the EPC, the culture in question was the culture inherent in European society and
civilisation. Accordingly, inventions the exploitation of which was not in conformity with
the conventionally accepted standards of conduct pertaining to this culture were to be
excluded from patentability as being contrary to morality.
Thus, the question to be decided in respect of Art. 53(a) EPC was whether the
exploitation of any of the claimed subject-matter was likely to seriously prejudice the
environment or whether it related to a misuse or destructive use of plant biotechnological
techniques.
In the view of the board, the revocation of a patent under Art. 53(a) EPC on the grounds
that the exploitation of the invention would seriously prejudice the environment
presupposed that the threat to the environment be sufficiently substantiated at the time
the decision to revoke the patent was taken by the EPO.
In the specific case the board held that, although the documents submitted by the
appellant (opponent) provided evidence of possible hazards from the application of
genetic engineering techniques to plants, they did not lead to the definite conclusion that
the exploitation of any of the claimed subject-matter would seriously prejudice the
environment.
Moreover, the board found that none of the claims related to subject-matter which could
lead to a misuse or destructive use of plant biotechnological techniques because they
concerned activities (production of plants and seeds, protection of plants from weeds or
fungal diseases) and products (plant cells, plants, seeds) which could not be considered
to be wrong as such in the light of the conventionally accepted standards of conduct of
European culture. Plant biotechnology per se could not be regarded as being more
contrary to public morality than traditional selective breeding.
For these reasons, the board concluded that Art. 53(a) EPC did not constitute a bar to
patentability in this particular case.
See further T 475/01 on this issue. See also referral T 1374/04, page XXXIII,
(OJ 2007, ***) pending under G 2/06.

41
Exceptions to patentability

3. Patentability of plants and plant varieties

I.B.3. Patentability of plants and plant varieties

According to Art. 53(b) EPC, a patent shall not be granted if the claimed subject-matter is
directed to plant varieties. In the absence of the identification of a specific plant variety in
a product claim, the subject-matter of the claimed invention is not directed to a plant
variety or varieties within the meaning of Art. 53(b) EPC. Thus, a patent shall not be
granted for a single plant variety but can be granted if varieties may fall within the scope
of the claims. If plant varieties are individually claimed, they are not patentable,
irrespective of how they were made (G 1/98, OJ 2000, 111). The term 'plant variety' is
now defined in R. 23b(4) EPC as:
"any plant grouping within a single botanical taxon of the lowest known rank, which
grouping, irrespective of whether the conditions for the grant of a plant variety are fully
met, can be:
(a) defined by the expression of the characteristics that results from a given genotype or
combination of genotypes,
(b) distinguished from any other plant grouping by the expression of at least one of the
said characteristics, and
(c) considered as a unit with regard to its suitability for being propagated unchanged."
The Enlarged Board came to the conclusion in G 1/98 that a correct interpretation of
Art. 53(b) EPC does not exclude the granting of patents for transgenic plants, where
specific plant varieties are not identified, even if the claims embraced inter alia plant
varieties. The Enlarged Board took the view that Art. 53(b) EPC defined the borderline
between patent protection and plant variety protection. The extent of the exclusion for
patents was the obverse of the availability of plant variety rights. Since plant variety
rights were only granted for specific plant varieties and not for technical teachings which
could be implemented in an indefinite number of plant varieties, it was not sufficient for
the exclusion from patent protection in Art. 53(b) EPC to apply that one or more plant
varieties were embraced or might be embraced by the claims of the patent application.
The Enlarged Board further held that Art. 64(2) EPC should not be taken into
consideration when a claim to a process for the production of a plant variety is examined,
in conformity with the established case law according to which the protection conferred
by a process patent is extended to the products obtained directly by the process, even if
the products are not patentable per se (see Chapters II.B.6.1 and 6.2).
Finally, the Enlarged Board held that the exception to patentability in Art. 53(b), first half-
sentence, EPC, applies to plant varieties irrespective of the way in which they were
produced. Therefore, plant varieties containing genes introduced into an ancestral plant
by recombinant gene technology are excluded from patentability. The underlying reason
for this is that the exclusion in Art. 53(b) EPC was made to serve the purpose of
excluding from patentability subject-matter which is eligible for protection under the plant
breeders' rights system. It does not make any difference for the requirements under the
UPOV Convention or under the Regulation on Plant Variety Rights, whether a variety is
obtained by traditional breeding techniques or genetic engineering. This meant that the
term 'plant variety' was appropriate for defining the borderline between patent protection
and plant breeders' rights protection irrespective of the origin of the variety. The
argument that the legislator of the EPC did not envisage the possibility of genetically

42
 I.B.4. Patentability of animals and animal varieties

modified plant varieties and for this reason could not have had the intention of excluding
them from patentability could not be accepted - laws are not restricted in their application
to situations known to the legislator (see also T 475/01).
The earlier decisions on this issue are now mainly of historical interest:
T 49/83 (OJ 1984, 112) first defined the term 'plant varieties' as a multiplicity of plants
which were largely the same in their characteristics and remained the same within
specific tolerances after every propagation cycle. Following on from this, the board in
T 320/87 (OJ 1990, 71) concluded that hybrid seed and plants, lacking stability in some
trait of the whole generation population, could not be classified as plant varieties within
the meaning of Art. 53(b) EPC.
In T 356/93 (OJ 1995, 545) the board held that plant cells as such, which modern
technology allows to culture much like bacteria and yeasts, could not be considered to
fall under the definition of a plant or of a plant variety. This was confirmed by G 1/98 (see
above), which stated that plant cells should be treated like micro organisms.
However, the board's conclusion in T 356/93 that a product claim which embraced within
its subject-matter “plant varieties” was not patentable under Art. 53(b), first half-
sentence, EPC, was overruled by G 1/98.
4. Patentability of animals and animal varieties
I.B.4. Patentability of animals and animal varieties

The board of appeal has asserted the general principle that the exception to patentability
under Art. 53(b) EPC applies to certain categories of animals, but not to animals as such
(T 19/90, OJ 1990, 476).
In interpreting the term "animal varieties" the board in this decision emphasised the
narrow interpretation to be given to the provisions of Art. 53(b) EPC. Bearing in mind that
for animals - unlike plant varieties - no other industrial property right was available, the
board decided that the exception to patentability under Art. 53(b) EPC applied to certain
categories of animals but not to animals as such. It thus constituted no bar to
patentability for subject-matter which was not covered by any of the terms “animal
varieties", “races animales” or “Tierarten”.
In the same decision the board stated that under Art. 53(b) EPC, the general principle of
patentability contained in Art. 52(1) EPC was restored for inventions involving
microbiological processes and the products of such processes. The bar on patenting
under Art. 53(b), first half-sentence, EPC, does not extend to the products of a micro-
biological process which are patentable under Art. 53(b), second half-sentence, EPC.
Thus patents were held to be grantable for animals produced by a microbiological
process, although this term was not defined.
Concerning the patentability of animals, it was held in T 315/03 (OJ 2006, 15) that, in an
assessment under Art. 53(b) EPC, the principle enunciated in G 1/98 (OJ 2000, 111)
concerning plants and "plant varieties" should also be followed in the case of animals.
This meant that a patent should not be granted for a single animal variety (or species or
race, depending on which language text of the EPC is used) but could be granted if
varieties might fall within the scope of its claims.
The definition of animal variety (or species or race) by reference to taxonomical rank
would be consistent with the position in relation to plant varieties and also in the interest

43
Exceptions to patentability

of legal certainty. It would allow assessment under Art. 53(b) EPC as interpreted by
R. 23c(b) EPC to be made by considering whether the technical feasibility of the
invention was not confined to a particular animal variety (or species or race).
The board further pointed out that the different terms used in each official language were
inconsistent and denoted different taxonomical categories. Thus strict compliance with
Art. 177(1) EPC - which provides that the three texts of the EPC are equally authentic -
would lead to the absurd result that the outcome of an Art. 53(b) EPC objection would
depend on the language of the case, with German having the highest taxonomic order
"species" ("Tierarten") and thereby offering the widest objection.
The board did not agree with the assertion of some of the opponent appellants that the
transgenic mice of the patent were a new species because they inherited one particular
characteristic, namely an increased probability of developing tumours. This was not
enough to create a new species when the possible "starting material" might be any of a
whole genus of animals, namely all mice.
Nor could the board agree that a process which included genetic manipulation could be
"an essentially biological process", the latter being defined in R. 23b(5) EPC as
consisting "entirely of natural phenomena such as crossing or selection".
The board therefore held that Art. 53(b) EPC did not exclude the patentability of the
claims amended to encompass only mice and maintained the patent on that basis.
5. Essentially biological processes
I.B.5. Essentially biological processes

Processes for the production of plants or animals are not patentable if they are
essentially biological processes. Non-essentially biological processes, on the other hand,
are patentable.
According to decision T 320/87 (OJ 1990, 71), whether or not a (non-microbiological)
process was to be considered as "essentially biological" within the meaning of
Art. 53(b) EPC had to be judged on the basis of the essence of the invention, taking into
account the totality of human intervention and its impact on the result achieved. The
necessity for human intervention alone was not a sufficient criterion for its not being
“essentially biological”. Human interference might only mean that the process was not a
“purely biological” process, without contributing anything beyond a trivial level. It was
further not a matter simply of whether such intervention was of a quantitative or
qualitative character.
In this particular case, it was concluded that the claimed processes for the preparation of
hybrid plants did not constitute an exception to patentability because they represented
an essential modification of known biological and classical breeders' processes, and the
efficiency and high yield associated with the product showed important technological
character.
In T 19/90 (OJ 1990, 476) the board agreed that the process claims for the production of
transgenic non-human mammals through chromosomal incorporation of an activated
oncogene sequence into the genome of the non-human mammal did not involve an
"essentially biological process" within the meaning of Art. 53(b) EPC. The product claim
for the genetically-manipulated animal included descendants not directly genetically
manipulated themselves but produced by the essentially biological process of sexual
reproduction. The board held that this was a product claim defined in terms of the

44
 I.B.6. Microbiological processes and the products thereof

process by which it was produced and that a product-by-process claim remains a

product claim irrespective of the process it refers to.
In T 315/03 (OJ 2006, 15) the board found that a process which included genetic
manipulation could not be "an essentially biological process", the latter being defined in
R. 23b(5) EPC as consisting "entirely of natural phenomena such as crossing or
selection".
In T 356/93 (OJ 1995, 545) the board had to decide on a process for producing plants
which comprised transforming plant cells or tissue with recombinant DNA and
subsequently regenerating and replicating the plants or seeds. Following T 320/87 (OJ
1990, 71), the board held that the process as a whole was not "essentially biological"
within the meaning of Art. 53(b) EPC, because the transformation step, regardless of
whether or not its performance depended on chance, was an essential technical step
which had a decisive impact on the desired final result and could not occur without
human intervention.
The Implementing Regulations have been amended since these decisions were handed
down. New R. 23b(5) EPC now states that a process for the production of plants or
animals is essentially biological if it consists entirely of natural phenomena such as
crossing or selection.
6. Microbiological processes and the products thereof
I.B.6. Microbiological processes and the products thereof

In T 356/93 (OJ 1995, 545) the board referred to T 19/90 (OJ 1990, 476), which held that
animal varieties were patentable if they were the product of a microbiological process
within the meaning of Art. 53(b), second half-sentence, EPC, and concluded that this
principle applied mutatis mutandis to plant varieties. The board then defined the term
"micro-organism" as including not only bacteria and yeasts, but also fungi, algae,
protozoa and human, animal and plant cells, ie all generally unicellular organisms with
dimensions beneath the limits of vision which can be propagated and manipulated in a
laboratory, including plasmids and viruses.
Accordingly, the board interpreted the term "microbiological" as qualifying technical
activities in which direct use was made of micro-organisms. These included not only
traditional fermentation and biotransformation processes, but also the manipulation of
micro-organisms by genetic engineering or fusion techniques, the production or
modification of products in recombinant systems, etc., ie briefly all activities in which an
integrated use is made of biochemical and microbiological techniques, including genetic
and chemical engineering techniques, in order to exploit the capacities of microbes and
cultured cells.
The board thus defined the concept of "microbiological processes" under Art. 53(b) EPC
as processes in which micro-organisms are used to make or modify products or in which
new micro-organisms are developed for specific uses. The concept of "the products
thereof" encompassed, in the board's view, products which were made or modified by
micro-organisms as well as new micro-organisms as such.
Although the Enlarged Board confirmed in G 1/98 (OJ 2000, 111) the above definition of
"micro organism", it went on to say that processes of genetic engineering are not
identical with microbiological processes. The term microbiological processes in
Art. 53(b) EPC was used as synonymous with processes using micro-organisms.

45
Novelty

Micro-organisms are different from the parts of living beings used for the genetic
modification of plants. To treat genetically-modified plants as products of microbiological
processes within the meaning of Art. 53(b), second half-sentence, EPC, would disregard
the purpose of the exclusion of plant varieties in Art. 53(b) EPC, ie excluding from
patentability subject-matter which was eligible for protection under the plant breeders'
rights system. Therefore, the Enlarged Board took the view that it did not make any
difference for the requirements under the UPOV Convention or under the Regulation on
Plant Variety Rights, how a variety was obtained. Whether a plant variety was the result
of traditional breeding techniques, or whether genetic engineering was used to obtain a
distinct plant grouping, did not matter. This meant that the term "plant variety" was
appropriate for defining the borderline between patent protection and plant breeders'
rights protection irrespective of the origin of the variety.
Examining the patentability of the then claimed plant grouping, in T 356/93 the board
also addressed the issue whether multi-step processes for producing plants which
include at least one microbiological process step (eg the transformation of cells with
recombinant DNA) as a whole could be considered to represent "microbiological
processes" within the meaning of Art. 53(b), second half-sentence, EPC, and whether,
owing to this, the products of such processes (eg plants) might be regarded as being
"the products thereof" for the purposes of this provision.
The board held that "technical processes including a microbiological step" could not
simply be equated with "microbiological processes". Nor could the resulting final
products of such a process (eg plant varieties) be defined as "products of a
microbiological process" within the meaning of the said provision.
The particular plant claimed was produced by a multi-step process which, in addition to
the initial microbiological process step of transforming plant cells or tissue with
recombinant DNA, comprised the step of regenerating plants from the transformed plant
cells or tissue and the step of reproducing the plant material. The board held that the
plant was not the product of a microbiological process. Although the initial
microbiological process step undoubtedly had a decisive impact on the final result
because by virtue of this step the plant acquired its characterising feature which was
transmitted throughout generations, the claimed plant was not merely the result of this
(microbiological) initial step. The subsequent steps of regenerating and reproducing the
plants had an important added value and contributed, although in a different manner, to
the final result as well.
The board therefore concluded that, regardless of the decisive impact that the
microbiological process step had on the final result, the multi-step process whereby the
claimed plant was produced was not a microbiological process within the meaning of
Art. 53(b), second half-sentence, EPC, and that, accordingly, such a plant could not be
considered to be “the product of a microbiological process”.
R. 23b(6) EPC defines a “microbiological process” as any process involving or performed
upon or resulting in microbiological material. The boards have not yet issued a decision
interpreting this definition.
C. Novelty
Novelty

An invention can be patented only if it is new. An invention shall be considered to be new

if it does not form part of the state of the art. The purpose of Art. 54(1) EPC is to prevent

46
 I.C.1. Defining the state of the art

the state of the art being patented again (T 12/81, OJ 1982, 296; T 198/84, OJ 1985,
209).
The first step in deciding whether an invention is new is to define the prior art, the
relevant part of that art, and the content of that relevant art. The next is to compare the
invention with the prior art thus defined, and see whether the invention differs from it. If it
does, the invention is novel.
1. Defining the state of the art
I.C.1. Defining the state of the art

Under Art. 54(2) EPC, the state of the art comprises everything made available to the
public by means of a written or oral description, by use, or in any other way, before the
filing or priority date of the European patent application.
1.1. Relevant point in time
An application with the same filing or priority date as the application to be examined is
not part of the state of the art (see T 123/82).
According to the boards' established case law, the prior art's content is to be interpreted
in the manner in which it would have been understood by the skilled person at the time it
was made available. In particular, for ascertaining the disclosure of a document forming
part of the state of the art within the meaning of Art. 54(2) EPC, the relevant date is that
of publication. Interpreting a document using knowledge which only became available to
the relevant experts between the publication date of the cited prior art and the filing or
priority date of the application to be examined or the patent in dispute is an inventive-
step issue, not a novelty one (see T 205/91, T 965/92, T 590/94). In T 74/90 the board
did however consider how a skilled person would have understood a citation on the filing
date of the patent in suit. It concluded that this disclosure did not comprise a possible
interpretation which, because of technical prejudice, such a person would have
considered unperformable on the filing date.
1.2. European prior rights
Under Art. 54(3) and (4) EPC the state of the art comprises the content of other
European applications filed earlier than, but published under Art. 93 EPC on or after the
date of filing of the application being examined, to the extent that the earlier and later
applications validly (R. 23a EPC) designate the same state or states.
In J 5/81 (OJ 1982, 155) the board held that a published European patent application
became part of the state of the art under Art. 54(3) EPC, with retroactive effect as from
its filing date or priority date, for assessing applications filed after that filing date or
priority date but prior to its publication, but that this should only apply if such a "prior
application" was still in existence at the time of publication.
In T 447/92 the whole contents of an earlier document within the meaning of Art. 54(3)
and (4) EPC had to be considered as forming part of the state of the art as far as novelty
was concerned. The board pointed out that the boards of appeal had consistently applied
a very restrictive interpretation of disclosure in order to reduce the risk of self-collision.
To do otherwise would, in the board's view, undesirably undermine the exclusion from
consideration of documents within the meaning of Art. 54(3) EPC when deciding whether
there had been an inventive step under Art. 56, second sentence, EPC.

47
Novelty

1.3. PCT applications as state of the art

An international application not yet published and for which the EPO is a designated
Office is considered as comprised in the state of the art in accordance with
Art. 54(3) EPC ie with effect from its filing or priority date, as soon as it has been filed at
the EPO in an official language and the national fee has been paid (Art. 158(2) and
(3) EPC).
In T 404/93 the European patent application was limited to the contracting states Italy
(IT), Netherlands (NL) and Sweden (SE) in view of an earlier international application,
published after the filing date of the former. The board noted that the earlier
PCT application had mentioned several EPC contracting states, including IT, NL and SE,
as being designated for a European patent. However, when the earlier application had
entered the European phase, no designation fees had been paid for IT, NL and SE.
Accordingly, the board found that the earlier international application was not comprised
in the state of the art under Art. 54(3) EPC for IT, NL and SE (see also T 623/93).
In T 622/91 the respondent (patent proprietor) requested that the decision under appeal
be set aside and the patent maintained for all designated contracting states. Two earlier
international applications and the European patent had designated the contracting state
France (FR). The board noted that the requirements of Art. 158(2) EPC were fulfilled,
and considered the international applications as comprised in the state of the art relevant
to the patent in suit in accordance with Art. 54(3) and Art. 158(1) EPC. The board went
on to examine claim 1 of the main request and found that the earlier application was
novelty-destroying in so far as the same contracting state FR was designated.
1.4. In-house knowledge not published before the priority date
In T 1001/98 the board did not consider it appropriate either for itself or for the examining
division to base an assessment of substantive patentability (novelty and inventive step)
upon subject-matter not identified as forming part of the state of the art within the
meaning of Art. 54(2) EPC. That was consistent with a number of previous decisions of
the boards of appeal (such as T 654/92). In view of the appellant's declaration that the
arrangement of figures 7(a) and 7(b) of the patent application was in-house knowledge
not published before the priority date of the patent and given that the European search
report did not reveal any corresponding document, the board reached the conclusion that
the arrangement concerned could not be treated as being comprised in the state of the
art within the meaning of Art. 54(2) EPC. It therefore did not consider this arrangement
relevant to substantive patentability. By the same token, the reasoning in the examining
division's decision, to the extent that it relied on that arrangement, could not be followed.
1.5. Definition of "common general knowledge"
In T 890/02 (OJ 2005, 497) the board dealt with the definition of the common general
knowledge. It noted that the common general knowledge of the person skilled in the art
had been defined by the boards of appeal as being normally represented by
encyclopaedias, textbooks, dictionaries and handbooks on the subject in question (see
inter alia T 766/91, T 206/83, OJ 1987, 5; T 234/93). In several cases, however, and by
way of exception, patent specifications and scientific publications had also been
considered to form part of the common general knowledge. In particular, special
considerations prevailed when a field of research was so new that technical knowledge
was not yet available from textbooks (see T 51/87 OJ 1991, 177; T 772/89).

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It went on to state that in all those cases the boards had acknowledged that the skilled
person did not have the entire technology readily accessible, and that they had identified
three important aspects - common to all cases - for correctly assessing the common
general knowledge of the person skilled in the art.
First, the skills of such a person included not only having knowledge of particular basic
prior art but also knowing where to find such information, be it in a collection of relevant
studies (see T 676/94), a scientific publication or a patent specification (see T 51/87 and
T 772/89).
Second, it could not be expected that, in order to identify this common general
knowledge, the skilled person would carry out a comprehensive search of the literature
covering virtually the whole state of the art. No undue effort in the way of such a search
could be required of the person skilled in the art (see T 171/84, OJ 1986, 95; T 206/83;
T 676/94).
Third, the information found had to be unambiguous and usable in a direct and
straightforward manner without doubts or further investigation (see T 206/83).
These three aspects actually corresponded to the classical steps of (a) picking the right
reference book (handbook, encyclopaedia, etc.) from the bookshelf in the library,
(b) looking at the appropriate entry without any significant effort, and (c) getting the
correct information or unambiguous data that could be used without further
investigation.
It followed that for each case the common general knowledge of the skilled person
working in a particular technical field had to be decided on its own merits, based on the
facts and evidence of the case.
In the case at issue the applicant had equated a search in the EMBL database to a
search in the Chemical Abstracts database. The board noted however that the Chemical
Abstracts database, as acknowledged in the case law, embraced virtually the entire prior
art and represented much more than what the skilled person was supposed to have as
common general knowledge (see T 206/83). It was evident from the content of the EMBL
database with regard to DNA sequences that that database was different from the
Chemical Abstracts database or other bibliographic databases such as Biological
Abstracts, EMBASE, etc. Those bibliographic databases aimed to summarise the
complete disclosure of a scientific publication, conference, etc. by supplying an abstract
and providing several searchable fields (descriptors). Owing to the amount and the
quality of their information, it was usually necessary to have a sophisticated search
strategy for finding the desired data. It was not sufficient to query a bibliographic
database with an enzyme name or an EC number alone, as the number of results
obtained would be too great to look at and useful information would not be available
without further limitation by an additional query. Moreover, the kind of information
retrieved - the content of the abstract - could not be anticipated before the search had
actually been made, and it was usually, by its nature, incomplete or insufficient and
consequently required consultation of the original publication. Thus, in contrast to the
EMBL database, in which a straight query (enzyme name or EC number) usually
produced a reasonable number of results with clear information (nucleotide sequences),
in the bibliographic databases neither the required search strategy (query) nor the results
(abstracts) were clear and straightforward.

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Hence the board held that whilst not being stricto sensu encyclopaedias or handbooks,
databases (a) which were known to the skilled person as the right source for obtaining
the required information, (b) from which that information could be retrieved without undue
burden, and (c) which provided it in a straightforward and unambiguous manner without
need for further investigation represented the common general knowledge as defined in
the case law.
1.6. Excluded national prior rights
In T 550/88 (OJ 1992, 117) the board made it clear that, on the proper interpretation of
Art. 54(3) EPC, prior national rights were not comprised in the state of the art. As to the
references to Part VIII of the EPC made by the appellants, the board found that they
rather confirmed that the effect of a prior national right upon a European patent was a
matter purely for national law, whereas the effect of a prior European application upon a
European patent was specifically provided for in Art. 54(3) EPC (which might also be a
ground for revocation under national laws by virtue of Art. 138(1)(a) EPC). In other
words, the combined effect of Articles 138(1) and 139 EPC was to provide an additional
possible ground for revocation under national laws based upon the existence of a prior
national right, which was not available under Art. 54 EPC.
In the board's view, it was clear that the wording of Art. 54(3) EPC was intended
deliberately to exclude national applications from having the prior art effect therein stated
in respect of a European patent. At the time the EPC had entered into force it had still
been uncertain whether the national laws of contracting states would include the same
prior right effect as set out in Art. 54(3) EPC. Even now, the national law in Switzerland
provided for a different prior right effect ("prior claim") from that set out in Art. 54(3) EPC
("whole contents"). The omission of prior national rights from Art. 54(3) EPC had been
made in the context of such international uncertainty. The board went on to note that if
Art. 54(3) EPC were to include prior national rights, the result would be a legal
inconsistency particularly as far as Switzerland was concerned, having regard to
Art. 139(2) EPC - in an opposition to a European patent before the EPO in which a
national prior right was relied upon under Art. 54(3) EPC, the conflict would be resolved
in accordance with the "whole contents" system of Art. 54(3) EPC, whereas in revocation
proceedings under national law in Switzerland in respect of the European patent the
same conflict would be resolved pursuant to Art. 139(2) EPC in accordance with the prior
claim system (Art. 7a Swiss Federal Patent Act).
1.7. Article 55 EPC
Art. 55 EPC specifies two instances in which a prior disclosure of the invention is not to
be taken into consideration as part of the state of the art under Art. 54 EPC; if it was due
to, or in consequence of (a) an evident abuse in relation to the applicant or his legal
predecessor, or (b) the fact that the applicant or his legal predecessor had displayed the
invention at an official international exhibition.
In joined cases G 3/98 (OJ 2001, 62) and G 2/99 (OJ 2001, 83), the Enlarged Board
ruled that for calculating the six-month period under Art. 55(1) EPC the relevant date is
that of the actual filing of the European patent application, not the priority date.
In T 173/83 (OJ 1987, 465) the board ruled that there would be evident abuse within the
meaning of Art. 55(1)(a) EPC if it emerged clearly and unquestionably that a third party
had not been authorised to communicate to other persons the information received. Thus

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there was abuse not only when there was the intention to harm, but also when a third
party acted in such a way as to risk causing harm to the inventor, or when this third party
failed to honour the declaration of mutual trust linking him to the inventor.
In T 585/92 (OJ 1996, 129) a patent application had been filed in Brazil on 14.7.1976
and originally claimed priority from several GB applications, the earliest having a filing
date of 15.7.1975. Under Brazilian patent law, it would have been due for publication on
16.8.1977. However, the applicant abandoned all the claimed priorities, which ought to
have delayed the publication for a further twelve months. Notwithstanding this
abandonment of priority, the application was erroneously published before the priority
date of the patent in suit. The board found that where a patent application was published
early by a government agency as a result of an error, this was not of necessity an abuse
in relation to the applicant within the meaning of Art. 55(1)(a) EPC, however unfortunate
and detrimental its consequences might turn out to be. In order to determine whether
there was an abuse in the sense of Art. 55(1)(a) EPC, the state of mind of the "abuser"
was of importance. The published Brazilian application was considered to form part of
the state of the art.
In T 436/92 the board found that deliberate intention to harm the other party would
constitute evident abuse, as probably also would knowledge of the possibility of harm
resulting from a planned breach of such confidentiality. The state of mind of the "abuser"
was of central importance (confirming T 585/92). The board held that the appellant had
not proven, on the balance of probability, that the publications had occurred in violation
of the tacitly agreed confidentiality. In other words, the publication was not an evident
abuse within the meaning of Art. 55(1) EPC.
1.8. Availability to the public
The state of the art comprises what has been made available to the public.
Board of appeal case law has it that the theoretical possibility of having access to
information renders it available to the public (T 444/88), whatever the means by which
the invention was made accessible, and - in the case of prior use - irrespective of
whether there were particular reasons for analysing the product (G 1/92, OJ 1993, 27).
This decision supersedes T 93/89 (OJ 1992, 718), T 114/90 and T 62/87 on this point. It
is not relevant, as a matter of law, whether on that date a member of the public actually
saw the document or knew that it was available (T 381/87, OJ 1990, 213).
Particular problems may arise, depending on how the information is made available.
1.8.1 Publication
In T 611/95 a research institute known in the field was in possession of a report
anticipating the invention, which anyone could view at the institute or order from it on
request. Two papers published prior to the priority date referred to this report and
indicated where it could be obtained.
In the board's view, the report was therefore publicly available. As far as availability to
the public was concerned, the institute was not to be equated with a library, but the
information in the documents had indicated to experts in the field that anyone could
inspect or order the report there. It was thus available to the public.

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In T 842/91 the subject-matter of the claimed invention was included in a book to be

published. Shortly before the priority date, the patent proprietor gave permission to the
publisher to disclose the contents of the book as follows "[...] I hereby grant the book's
publisher unrestricted rights of publication and waive any claims arising therefrom".
Moreover, the opponent claimed that as a seminar including the subject-matter had been
given shortly after the priority date, it was possible that the article had been distributed
before the priority date. The board held that although the patent proprietor had clearly
given the publisher permission to make the claimed subject-matter available to the
public, this could not of itself amount to actually making it available. Nor could it be
assumed merely from the permission given or the date of the seminar that copies had in
fact been made available before the priority date.
In T 37/96 the board had to decide on the public availability of some prior-art documents.
Two of them were typical company papers.
The board held that unlike scientific or technical journals, such papers could not be
assumed to have automatically made their way into the public domain. On the contrary,
whether they had indeed been available to the public on a given date depended on the
particular circumstances and the evidence available.
T 877/98 raised the question whether a German patent had become publicly available
upon notification of the grant decision if the application had not been published
previously.
The board took the view that the patent had not become available until publication of
grant in the patent bulletin; only from that point on was the file open for inspection. It thus
endorsed the view of the German Federal Patents Court (decision of 23.12.1994,
4W(pat)41/94, BlfPMZ 1995, 324).
In T 165/96, technical information about a feature of the invention had been disclosed,
prior to the date of filing of the European patent application in question, in an insert in a
minor small-ads newspaper (circulation: 24, 000) distributed in the suburbs of
Copenhagen.
The patent proprietor argued that in view of the newspaper's limited circulation and
readership ("man on the street" in suburban Copenhagen) the information in question
had effectively remained confidential and could not be regarded as forming part of the
state of the art within the meaning of Art. 54(2) EPC; the document should therefore not
be admitted in the appeal proceedings. He also felt that scientific or technical information
published before filing in a non-technical or non-scientific context outside the scope of
the state of the art concerned, and with no references or distinguishing features enabling
it to be found again afterwards, should not be regarded as directly available to the public
without undue burden as per G 1/92 (OJ 1993, 27).
The board ruled that, pace the patentee, publication in such a manner fulfilled the
necessary and sufficient conditions for citing a disclosure against the patent. Information
was "available" once people could theoretically become aware of it. A publication did not
have to fulfil any specific criteria of form or layout in order to qualify as a citable
disclosure.
On the "undue burden" argument, the board noted that the patentee's interpretation
would introduce into the consideration of novelty precisely that subjective element which

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in G 1/92 the Enlarged Board had sought to exclude. That argument was therefore not
valid.
In T 314/99 it was undisputed that the diploma thesis arrived in the archive of the
Chemistry Department Library of the University of Hamburg before the priority date.
However, in the board's judgment the diploma thesis did not by its mere arrival in the
archive become publicly available, since that did not mean it was as of that point in time
catalogued or otherwise prepared for the public to acquire knowledge of it, and because
without such means of information the public would remain unaware of its existence.
In T 328/00 the potentially novelty-destroying document was a booklet containing the
programming and operating instructions of the claimed system. The booklet bore the
imprint "January 80" (twelve years before the priority date) on its front page and the
heading "software code from November 1980" on its last page. A booklet containing the
programming and operating instructions of a device and having the characteristics of this
document was usually addressed to the users that had purchased the device. Other
documents gave indications that the system disclosed in the booklet was intended to be
freely available on the market.
The board held it was reasonable to assume that the booklet had been drawn up twelve
years before the priority date, had been issued for public use, and had been made
available to the public within the twelve-year period.
In T 1030/00 the board held that Art. 54(2) EPC did not require that a written description
be made available free of charge for it to be considered to be made available to the
public.
In T 1137/97 document D1 had already been cited in the search report from the EPO. It
was argued in the opposition that it had been inadequately considered during
examination. In response the patentee challenged its being prior art at all, and submitted
evidence from three different libraries in the Netherlands, including the opponent's, that
the copy of document D1 present in those libraries had not reached them until after the
priority date of the patent in suit.
The board noted that the strength of the presumption in favour of the accuracy of a
"Received" date marking appearing on the copy of a journal in a library as evidence of
the actual date when the journal was made available to the public would depend on the
library routine used. The board did not accept a handwritten date on the cover of a
journal in view of other evidence. Thus document D1 did not form prior art pursuant to
Art. 54(2) EPC.
In T 315/02 the board said that a patent application not yet published in its country of
origin could form part of the state of the art within the meaning of Art. 54(2) EPC if it was
accessible to the public as a priority document for a published European application
(Art. 128(4) EPC).
In T 267/03 it was ruled that binoculars depicted photographically in a book on
binoculars, with the manufacturer's name and an approximate date of manufacture ("ca.
1960") far earlier than the date of filing of the patent in suit, constituted prior art for that
patent in respect of the binoculars' internal structure.

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1.8.2 Lecture
In T 1212/97 the opponent had submitted that the invention was made available to the
public by a lecture given some days before the priority date to an audience of some
hundred to two hundred persons. The question to resolve was whether there was any
safe and satisfactory evidence as to the information content of what was made available
to the public by the lecture.
The board held that the content of the lecture was not a matter which was capable of
being put beyond reasonable doubt by any evidence of the lecturer alone. The lecturer's
evidence could be taken as defining the maximum amount of knowledge that may have
been conveyed to the audience, but could not be relied on to establish even what
minimum of new knowledge was necessarily conveyed to the audience. Evidence of the
lecturer's intentions or impression as to what was conveyed to the audience could not
even be treated as making out a prima facie case that such information was actually
made available to the public, certainly in terms of information that would have been new
to the audience. Account had to be taken of the fact that a lecture was ephemeral, so
that the manner or speed of presentation might affect its comprehensibility. Even an
audio or video tape recording made of the lecture, unless themselves publicly available,
would have to be treated with caution if several hearings or viewings were necessary to
extract all information. Information appearing in each of the contemporary written notes
made at the lecture by at least two members of the audience could usually be regarded
as sufficient, whereas information in the notes of a single member of the audience might
be inadequate as reflecting the thoughts of the listener rather than solely the content of
the lecture. If the lecturer read his lecture from a typescript or manuscript, or the lecturer
wrote up his lecture subsequently, and the lecture was subsequently published in that
form as part of the proceedings, then the written version might be taken as some
evidence of the contents of the lecture, though with some caution as there would be no
guarantee that a script was completely and comprehensibly read, or that a write-up was
not amplified. Most useful would be a handout given to the public at the lecture,
containing a summary of the most important parts of the lecture and copies of the slides
shown.
None of those types of evidence were available in this case. The board was also forced
to the conclusion that there was no safe and satisfactory evidence that the information
content of the lecture could be treated as having been made publicly available. The
lecture had undoubtedly been given, but insofar as its information content went beyond
what was already known in the art, the board was not satisfied of this on the balance of
probabilities, let alone beyond reasonable doubt.
1.8.3 Abstracts of documents
In T 160/92 (OJ 1995, 35) the appellant objected to the fact that the examining division
had based its judgment on whether the claimed subject-matter involved an inventive step
on an abstract of a Japanese patent document without introducing the original
document and citing specific passages from it. With respect to the question of citability of
an abstract, the board held that the teaching of a previously published abstract of a
Japanese patent document, considered per se without its corresponding original
document, formed prima facie part of the prior art and might be legitimately cited as such
if nothing on the file pointed to its invalidity. The party intending to contest the validity of
said teaching on the basis of the original document's teaching had the burden of proof.

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As to whether or not citing the abstract, without the original document from which it was
taken, was permissible or constituted a procedural violation, the board noted that it had
to be considered whether the statement based on such an abstract alone could be
regarded as reasoned within the meaning of R. 51(3) and R. 68(2) EPC. In the case in
question, the abstract provided certain information and, for the skilled reader, there was
no indication that such information was invalid. The examining division's line of
reasoning was complete and understandable.
In T 243/96, it was established that the abstract of a document on whose basis the
application in suit was refused is an independent part of the prior art in its own right.
However, in view of the inadequacy of this disclosure, and the divergent views on how
the abstract should be interpreted, the board decided to introduce the full document into
the appeal proceedings in the form of its English translation, it being understood that the
full document took precedence over the abstract.
1.8.4 Repetition of oral disclosures
Where a written disclosure was published which was based on an oral disclosure at a
public conference held some years earlier, it could not as a rule be assumed that the
written disclosure was identical to the oral disclosure. Additional circumstances had to be
put forward and proven to justify that conclusion (T 153/88). In T 86/95, the board
assumed that the disclosures were identical since it was highly unlikely that the speaker
would have passed over such a salient feature at the conference.
In T 348/94 the board confirmed that a written publication allegedly based on a paper
previously read at a public meeting held some time earlier (in this case ten months)
could not be assumed to be identical to what was orally disclosed, and might contain
additional information. As to the extent of the oral disclosure, the burden of proof
remained with the opponent.
1.8.5 Prior use
In T 84/83 a new type of wide-angle mirror had been fitted to a motor vehicle for
demonstration purposes for at least six months. The board held this to constitute prior
public use as during such a time the vehicle could be expected to be parked on public
highways and hence open to inspection by third parties.
In T 245/88 several vaporisers had been installed in a fenced-off area of a shipyard. The
public did not have unrestricted access to this area. The board was of the view that the
vaporisers had not been made available to the public.
In T 327/92 the patentee claimed an expanded film laminate characterised by the feature
that it be expanded by monoaxially drawing it. The product of the process of a citation
comprised a laminate which was stretched in one direction and then, within a short time,
further stretched at right angles to this direction; in this process a monoaxially stretched
laminate existed, at least, for 60 seconds. The board held that the intermediate product
which existed only for some 60 seconds before being further processed destroyed the
novelty of the patentee's claim because it met all technical characteristics required by the
claim. It allowed, however, a claim directed to a not yet disclosed use of the monoaxially
stretched laminate.
In T 947/99 the board held that, contrary to the opinion of the opposition division in the
decision under appeal, it was possible to establish prior public use by showing that a

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certain process was used over a stated period before the priority date for making a
certain product and that there existed a possibility for a stated class of individuals, eg
visitors, who were under no obligation of secrecy or confidentiality, to have direct and
unambiguous access to any particular information regarding that process. If that was the
case, there was no need to show that a specific named individual saw the process in
operation on a specific day.
The board observed that, in accordance with the principles set out in G 1/92 (OJ 1993,
277), it was the fact that direct, unlimited and unambiguous access to any particular
information regarding the manufacturing processes known per se was possible which
made these processes available to the public within the meaning of Art. 54(2) EPC,
whether or not there was any reason to look or ask for such information.
For the preconditions for claiming prior use, see Chapters "Opposition procedure" and
"Law of evidence".
1.8.6 Biological material
In the field of microbiology, in T 576/91, the board conceded that an unwritten rule may
exist within the scientific community whereby biological material referred to in a scientific
publication can be freely exchanged. However, this does not amount to an obligation, so
that any biological material which is the subject of a publication can be considered as
being publicly available. The board further stated that if contractual obligations between
parties resulted in access to biological material being deliberately restricted to a group of
persons bound either by a research contract or a licence, it could not be concluded that
this material had been made "available to the public" under the terms of Art. 54(2) EPC.
In T 128/92 the board stated that for a complex biochemical to be made available to the
public, the minimum that would seem to be required for publication was a notice to those
in the field that samples of the biochemical could be obtained on request, and clear
evidence of exactly what the biochemical was.
1.8.7 The concept of "the public"
Over the years, the boards have arrived at a clear definition of "the public". Information is
said to be "available" to the public if only a single member of the public is in a position to
gain access to it and understand it, and if there is no obligation to maintain secrecy
(T 1081/01).
(a) Sale to a single customer
In T 482/89 (OJ 1992, 646) the board said that a single sale was sufficient to render the
article sold available to the public within the meaning of Art. 54(2) EPC provided the
buyer was not bound by an obligation to maintain secrecy. It was not necessary to prove
that others also had knowledge of the relevant article (see also T 327/91, T 301/94 and
T 462/91).
The sale of an object to a single customer who is not obliged to maintain secrecy renders
the invention public, even where the object is to be used in a prototype, which is itself to
be kept confidential until it is mass-produced (T 1022/99).
(b) Article 54(2) EPC does not necessarily refer to the skilled person
The boards mostly decide that information has been made public even if the sale was
made to a person not skilled in the art (see T 953/90, T 969/90).

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In T 809/95 the patentee justified its position on non-disclosure essentially on the ground
that the test persons were not skilled in the art. It cited T 877/90. The board noted that
the latter decision dealt with information made public by oral disclosure at a lecture.
Public disclosure was there linked to the condition that the audience had to include
skilled persons capable of understanding the lecture. Such considerations seem
appropriate to an oral disclosure but are not transferable to the case of information made
public by making an article available for free use, because Art. 54(2) EPC only uses the
term "public" and makes no reference to "skilled persons". In the case in point, however,
it was to be noted for the sake of completeness that all the essential features of the
distributed Alpla bottle were identifiable by purely external observation and that no
technical knowledge was needed to identify the interaction between the bottom and body
fold lines when the bottle was pressed flat.
The word "public" in Art. 54(2) EPC does not necessarily refer to the man in the street
according to T 877/90 and T 406/92 - a disclosure before a skilled person makes it
"public" in the sense that the skilled person is able to understand the disclosure and is
potentially able to distribute it further to other skilled members of the public (see also
T 838/97).
(c) A limited circle of people
Another argument sometimes used is that information was given only to a limited circle
of people and was therefore not publicly available.
In the opinion of the boards the information is publicly available where it was made
available to a limited circle of people (T 877/90 - congress; T 228/91 - course; T 292/93 -
demonstration for potential customers conducted on the premises of a company with
close links to the opponent).
In T 877/90 an oral disclosure was regarded as made available to the public if, at the
relevant date, it was possible for members of the public to gain knowledge of the content
of the disclosure and there was no bar of confidentiality restricting the use or
dissemination of such knowledge. It was plausible that the meetings in question were not
open to everybody, because only certain persons were invited to participate. Those,
however, were not subject to a secrecy agreement. So the oral disclosure of the
meetings was freely available to the public. Everything that was said at the meetings was
therefore made available to the public.
In T 300/86, in the opinion of the board, a written description was to be regarded as
made available to the public if, at the relevant date, it was possible for members of the
public to gain knowledge of the content of the document and there was no bar of
confidentiality restricting the use or dissemination of such knowledge. This is in
agreement with the Guidelines C-IV, 5.1 (June 2005 version). The group of persons to
be taken into account as the public within the meaning of Art. 54(2) EPC is naturally
defined by the circle of persons to whom the content of the document may be of interest.
All the interested parties must have the opportunity of gaining knowledge of the content
of the document, however unrestricted by contractual or other legal restrictions on use or
dissemination of the information therein. Otherwise the document has not been made
available to the public.
In T 1081/01 the board noted that it was also part of the case law, as stated in T 300/86
(see above) and affirmed in this respect by T 50/02, that for a document to be

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considered as being made available to the public all the interested parties must have an
opportunity of gaining knowledge of the content of the document. Those two strands of
jurisprudence could only be reconciled on the basis that it was critical to show that the
person(s) to whom the information was made available could at the time of the
information being made available be treated as a member or members of the public, and
thus representative of all interested persons.
The board observed that if at the time of receipt of the information the recipient was in
some special relationship to the donor of the information, he could not be treated as a
member of the public, and the information could not be regarded as published for the
purpose of Art. 54 EPC. Even if this special relationship were later to cease, so that the
recipient was now free to pass on the information, the mere cessation of the special
relationship did not make the information available to anyone else.
In T 398/90 a marine engine installed in a ship was held to have been known to the
engine room crew and hence to have been made available to the public.
In T 1085/92 the board ruled that a company's own staff could not normally be equated
with "the public" within the meaning of Art. 54(2) EPC.
In T 165/96 the board held that "the public" within the meaning of Art. 54(2) EPC did not
presuppose a minimum number of people or specific educational qualifications; the
residents of a Copenhagen suburb sufficed.
1.8.8 Obligation to maintain secrecy
If the person who was able to gain knowledge of the invention was under an obligation to
maintain secrecy, the invention cannot be said to have been made available to the
public, provided the person did not breach that obligation.
In T 1081/01 the board held that information provided subject to a confidentiality
agreement did not become available to the public merely by reason of the expiry of the
obligation to keep it confidential. Some separate act of making it available to the public
would be needed. This conclusion was in agreement with the conclusion reached in
T 842/91, where permission to publish a text was considered merely as permission to
make the text available to the public, and not as actually making the text available to the
public.
If the obligation to maintain secrecy stems from an express agreement that has been
observed, the information has not been made available to the public. Less clear cut are
cases of tacit secrecy agreements, or where the obligation to maintain secrecy stems
from the circumstances. There is considerable case law on this point.
(a) Distribution of prospectuses, technical descriptions etc
In T 173/83 (OJ 1987, 465) and T 958/91 the board held that a technical description sent
out to clients could not be regarded as secret information.
(b) Displaying the invention
T 87/90 dealt with a case where there had been unrestricted access to a sheetfed offset
printing press featuring an integrated coating unit awaiting delivery to a customer in the
assembly shop of the manufacturer. The invention related to the coating unit. The press
was noticed by chance by another client inspecting a press ordered for his company.

58
 I.C.1. Defining the state of the art

Although he was not given a working demonstration of the coating unit, all the details
were explained to him. In the light of experience the board took the line that a company's
commercial interest in obtaining follow-up orders outweighed any considerations of
secrecy and that this therefore amounted to prior public use.
In T 1085/92 a brush holder had been manufactured by a third party on behalf of the
appellants on the basis of drawings provided by the appellants and then fitted in an
assembly line owned by the appellants to which visitors to the company had had access.
It could not be ascertained whether in this case there had been an express secrecy
agreement, although a note did exist prohibiting the release of the drawings. The board
took the view that where such contractual relations and development agreements existed
a secrecy agreement could be assumed to exist. Fitting the device in the assembly line
did not make the invention evident to visitors, so anticipatory prior public use could not
be said to exist (see also T 365/93).
(c) Sub-contracting
In T 830/90 (OJ 1994, 713) the actions constituting prior use were based on meetings
between the shipyard commissioned to build a new ship and two rival sub-contractors,
namely the patent proprietors and the opponents. The meetings involved the submission
of quotations to the shipyard. The drawings shown during the meeting bore clearly visible
stamps referring to Sections 18-20 of the German law prohibiting unfair competition and
Section 823 of the German Civil Code (liability for damages on the grounds of actionable
tort). The witnesses had stated that for them confidentiality had been a matter of course.
Faced with these facts the board took the view that a confidentiality agreement had - at
least implicitly - been reached. This was perfectly sufficient. Furthermore, in line with
general experience, it had to be assumed that such an agreement would be observed at
least as long as there was a common concern for secrecy. Such concern would last at
least for the period required to safeguard the interests of the business partners. These
interests might, for example, include the co-operation phase in which there was still no
protection in law, or in which there was still joint further development of the new
mechanism.
In T 799/91 the opponents asserted that the subject-matter claimed had been in prior
public use in that its manufacture had been "sub-contracted out" to a third company.
According to the board the third company was not simply any third party because the
opponents' decision to place an order was based on a relationship of trust. The board
therefore saw no indication of there having been prior public use, nor could the claim
have been substantiated by the testimony of any witness.
(d) Demonstrating products for presentation purposes
In T 634/91 the claimed prior public use consisted of the presentation of a circular saw at
an opponent's place of business during a meeting between the patent proprietor and a
potential buyer. Without elucidating further, but referring to the decision in T 830/90
(OJ 1994, 713), the board held that such talks constituted a tacit understanding to
maintain secrecy.
In T 292/93, the board ruled that a demonstration conducted for a small group of
potential customers on the premises of a company with close links to the opponent was
inconsistent with the existence of an obligation to maintain secrecy.

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Novelty

In case T 478/99 a demonstration was made by two potential clients. It could not be
proven that a confidentiality agreement existed. The board held that the sole absence of
an explicit request of confidentiality was not sufficient for concluding that there was no
confidentiality because secrecy may result from an ethical conduct of the employees of
big companies like the two clients in question. Consequently, the board considered the
alleged public prior use not to be proven.
In T 823/93, the opponent had sold a company a packaging apparatus with
characteristics similar to the patented apparatus. Delivery had been made after the
patent's date of priority, but the apparatus had been presented to the company's
employees prior to that date. The packaging apparatus had been developed on the basis
of an order from the client. The order did not relate to a finished product but to a complex
system needing to be adapted to the purchaser's requirements. The apparatus had been
developed as the solution to a specific technical problem envisaged by the client himself.
The question was whether the client had required the employees to whom the apparatus
had been presented to treat the presentation as confidential.
According to the board, the development of a new apparatus is usually kept secret from
competitors. In the case at issue, the development of the apparatus had to be regarded
as the result of co-operation between the opponent and the client. The board therefore
took the view that, on the basis of these facts, it could be assumed that none of the
parties had an interest in disclosing any information about the apparatus and it was likely
that the technical reports exchanged between the parties were tacitly required to be
treated as confidential. The board also held that the general conditions of business,
which had become the conditions of contract and required the plans, designs and other
documents to be handled confidentially, also extended to verbal information and details
given during the presentation of the apparatus. In these circumstances, the board
decided that the employees to whom the apparatus had been presented could not be
considered as members of the public within the meaning of Art. 54(2) EPC.
(e) Presenting the product in writing
In T 887/90, the alleged prior public use hinged on the submission of two quotations,
each of which had involved a series of technical discussions with the potential
customers. The quotations had not been for finished products, but for systems requiring
adjustments to the clients' requirements. The drawings, without which the quotations
would have been meaningless, bore clear references to Section 18 of the German law
prohibiting unfair competition which had been noted by the clients.
The board took the line that an obligation to maintain secrecy was clear from the
circumstances. The recipients of the quotations had no discernible reason for passing on
the contents of the quotation to third parties and hence for choosing to ignore the
references on the drawings. Simply to claim that no mention had been made of any
obligation to maintain secrecy was insufficient to invalidate the assumption that there had
been an implicit agreement to maintain secrecy. Nor was the fact that sales
representatives had also been present enough to prove the contrary.
In T 541/92 a sub-contractor had given sketches of a device to their client. In the board's
view this constituted an obligation to maintain secrecy. It was standard practice for
clients and their subcontractors to keep their projects secret, and allegations to the
contrary required convincing proof.

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 I.C.1. Defining the state of the art

In T 1076/93 the opponents had, without there having been an explicit agreement to
maintain secrecy, offered an apparatus which caused the subject-matter of the invention
to lack novelty and had provided drawings to a weapons manufacturer. The board held
that the prior use did not cause lack of novelty because a variety of circumstances
pointed to there having been an obligation to maintain secrecy. According to the board
discretion was generally acknowledged to be the rule on the premises of such
companies. The business contacts between the opponents and the weapons
manufacturer were restricted to specific individuals. Furthermore, aside from the
discretion commonly observed in this branch of industry, almost all the papers used by
staff at the company in question bore warnings about the need for confidentiality. It had
been demonstrated that this company did not as a matter of principle allow the details of
quotations to be passed on to third parties.
In T 818/93 the relevant prior art document was a declaration made by the inventor
before the USPTO, plus exhibits 1 and 4 mentioned therein. Several companies had
been contacted in an (unsuccessful) attempt to interest them in developing and funding
research into the intraluminal graft outlined in exhibit 1. Exhibit 4 had been sent to the
inventor's superior, a professor at the University of Texas Health Science Center at San
Antonio, after which discussions had been held with him and a research assistant at this
university with a view to obtaining the necessary equipment for carrying out the research
and fabrication and for testing the graft. In the board's judgment, all these steps and
approaches had been taken within the context of business relationships which were
necessary to bring the project to a successful conclusion. Such negotiations were
confidential by nature in view of the comparable interests of the parties involved and
implied a secrecy agreement. In the board's view and contrary to the respondent's
assertion, a written agreement was not necessary to rule out any involvement of a third
party so that, in the case at issue, implicit confidentiality had not been breached by the
meetings and negotiations prior to the filing date of the contested patent.
In T 480/95 the document relied upon by the opposition division as a prepublication
decisive for the evaluation of inventive step was a letter from the opponent to a customer
written in connection with a contractual relationship between the two firms. In this letter
the opponent gave advice as to the way in which a certain programmed memory solved
specific processing problems. The board considered this letter to be a typical example of
correspondence between contracting firms, which was confidential by its very nature.
(f) Making available for test purposes
A product made available for test purposes is to be treated as confidential. Sale of the
product in a limited quantity is regarded as sale for test purposes, if the product is
normally sold in large quantities (see T 221/91, T 267/91 and T 782/92).
In T 602/91 the opponents had conducted an experiment using the respondent’s (patent
proprietor’s) invention before the priority date at which at least two employees of the
appellant company had been present. That there had been no express confidentiality
agreement was undisputed. Nor, in the board's view, had there been any tacit agreement
either, as the two parties had not concluded a development agreement or entered into
any other contractual relations that would indicate either of them having had any
particular interest in a secrecy agreement. Furthermore, a single case of co-operation
between a manufacturer and a potential end-user of the product was not sufficient to
assume that a tacit confidentiality agreement had been entered into. Good relations

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Novelty

alone were not enough for a tacit agreement to develop, particularly as in this case the
appellants had a financial interest in disclosing the invention to the respondent’s
competitors.
In case T 809/95 the granted patent was inter alia for a plastic bottle whose special
features related to its foldability. One of the opponents alleged two cases of prior use.
One of these had occurred in connection with a "market test" performed by a market
research company on behalf of the third party to gauge the market for such bottles. The
patent proprietor claimed that both prior uses had been subject to confidentiality rules.
As far as the prior use through market research was concerned, the board held that the
very fact that the third party had chosen a test variant allowing the test participants to
take the bottles home indicated that it attached no particular value to confidentiality in the
patent sense. Nor was there any circumstantial obligation to maintain secrecy since the
market research institute did not employ or have a business relationship with the test
persons. Allowing the bottles to be taken home and used freely was rather evidence
against any obligation to maintain confidentiality.
In T 1054/92 the opponent had alleged and proved that the claimed invention, an
absorbent structure for diapers, had been tested in public tests carried out by several
hundred members of the public at several places in the USA over several weeks. The
appellant (patent proprietor) had admitted not being certain that the tests were
confidential but he was of the opinion that it was up to the respondent to prove "without
doubt" that there was no bar of confidentiality. In the absence of such proof, the board
should find on the balance of probabilities that the tests were confidential. The board was
convinced in the light of common experience that it was very unlikely that these tests had
been kept confidential, particularly since some of the used diapers had not been returned
to the appellant. The board confirmed, contrary to the opinion of the appellant, that the
burden of proof for the existence of a secrecy agreement lay with the patent proprietor.
Since he could not prove the existence of secrecy agreements with the participants in
these tests, the board found that they were not confidential.
(g) Conferences
In T 739/92 an oral description of the invention had been given in a conference. The
question was whether the participants at this conference were bound to secrecy and
could therefore not be seen as the public within the meaning of Art. 54(2) EPC. The list
of participants showed that the conference was open to every specialist active in the
relevant field. The participants were not prohibited from disseminating oral information
from the conference, or from publishing information from it provided that they omitted any
reference to the conference. Recording the lectures on tape, etc. and photographing
slide material were prohibited. Guests were not permitted to attend the conference
lectures and discussions. The board held that under these conditions the participants at
this conference were to be regarded as normal members of the public since there was
no secrecy agreement. In contrast to the situation in T 300/86, the participants were
neither licensees of the organisers nor subject to a blanket contractual prohibition from
communicating the information they obtained to third parties.
In T 202/97 the board held that a draft standard sent together with an agenda to the
members of an international standards working party as part of the preparations for a
meeting on standards was not normally confidential and was thus available to the public.
Even though only a particular group of persons had been invited to take part in the

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 I.C.1. Defining the state of the art

meeting on standards, it was the task of a standards committee to draw up proposals for
standards which had been agreed on on as broad a basis as possible with the experts in
the field, and which were based on the current state of developments. This task
precluded any obligation to maintain confidentiality.
In T 838/97 the invention was presented orally at a conference attended by about 100 of
the most renowned experts in the respective technical field including potential rivals. The
participants were explicitly instructed that information presented at the conference was
not to be used without the specific authorisation of the individual who made the
contribution. The board considered that the participants were bound by a confidentiality
agreement and thus the invention was not to be considered to be part of the state of the
art.
(h) Joint venture agreement
In T 472/92 (OJ 1998, 161) the board ruled that the existence of a joint venture
agreement implied an obligation to maintain secrecy.
(i) Paper submitted to obtain an academic degree
In T 151/99 the board held that, in general, it appeared highly plausible that a paper
submitted to obtain an academic degree (in this case a master's thesis) was not
confidential, and that became a virtual certainty if the paper was referred to in published
scientific work. If the reference was in a document published before the priority date of
the patent in suit, it could be assumed that the paper had also been made available to
the public before that date.
(j) Medical field
In T 906/01 the alleged public prior use related to surgery conducted by Dr F. and
concerned the implantation of a correction device into a patient. There remained some
doubt as to the I. Spinal System which was really implanted.
The board considered that a device having an investigational status, being implanted
and tested within the restricted area of a hospital, under the responsibility of a surgeon
operating within the framework of an investigator's agreement provided with a clause of
confidentiality, had to be regarded as a prototype device. Usually the development and
testing phases of such products or devices were necessarily surrounded by secrecy as
long as said products or devices had not been approved and commercialised (see
T 818/93). Therefore, even without the production of more specific evidence on behalf of
the respondent, the board was of the opinion that the clinical tests performed on the
I. Spinal System under the conduct and responsibility of Dr F. conferred on the operation
as a whole an implicit obligation of confidentiality which had to be extended to the whole
team involved in that operation. Therefore neither the fact that the I. Spinal System was
received and prepared by hospital staff, nor the fact that it was visible to the hospital staff
during the operation, was suitable to prove that the I. Spinal System was accessible to
the public. Furthermore, it was assumed that the operating room was not accessible to
persons other than the operation team, and that the device was implanted at least partly
under the patient's skin and, therefore, not immediately visible from the outside.
The board followed the reasoning of T 152/03 that in this field there was a prima facie
assumption that any person involved in a medical process was obliged to maintain
confidentiality, given the need for patient confidentiality and the need to protect the

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development and testing of prototype devices, and that any evidence proving the
contrary was important and had to be produced as soon as possible.
1.9. Issues of proof
1.9.1 Nature of the evidence
In T 611/97 the appellant/opponent had listed various gun alignment systems which he
alleged had been made available to the public in various ways (through being advertised,
manufactured or sold, or through the distribution of catalogues).
The board stated that it was immediately obvious that a variety of actions, eg describing
the system in a catalogue and selling it, usually meant that a different product was made
available to the public. A person skilled in the art could, for example, dismantle and
analyse a system which had been made unrestrictedly available to the public by being
sold in order to obtain technical information not necessarily contained in the catalogue.
The alleged availability of a product based on the distribution of catalogues and the
alleged sale of a system described in such catalogues therefore represented different
cases of availability, each of which had to be proved separately.
1.9.2 Burden of proof
Where lack of novelty is alleged, the burden of proof invariably lies with the party
claiming that the information in question was made available to the public before the
relevant date (see, for example T 193/84, T 73/86, T 162/87, T 293/87, T 381/87,
OJ 1990, 213; T 245/88 and T 82/90).
According to T 766/91 and T 919/97, evidence of general technical knowledge need be
submitted only if the latter’s existence is disputed.
In T 743/89, however, the board applied the principle of prima facie evidence. Here, it
had been proved that a leaflet disclosing the invention had been printed seven months
before the date of priority, but it was uncertain when the leaflet had been distributed. The
board took the view that, although the date of distribution could no longer be ascertained,
it was reasonable in any event to assume that distribution had occurred within the seven-
month period. The respondents contended that this was not the case, but the board
considered this assertion to be so lacking in plausibility that it placed the onus of proof on
the respondents.
In the decisions T 73/86, T 162/87, T 293/87, T 708/89, T 82/90, T 600/90, T 267/91,
T 782/92 and T 34/94 the boards assumed that all the circumstances surrounding prior
use must be proved by the party raising the objection.
In T 326/93, the board held that in assessing public prior use the burden of proof lay with
the opponent, who had to show, on the balance of probabilities, firstly that the invention
had been publicly demonstrated before the priority date and secondly that the skilled
person would have drawn the necessary teaching from the demonstration (see also
T 472/92, OJ 1998, 161; T 750/94, OJ 1998, 32; T 848/94).
Ruling on an objection of prior public use in T 221/91 the board took the line that it was
for the patent proprietors to prove the existence of an obligation to maintain secrecy
when the opponents had proved that the invention had been made available to the public
and the patent proprietors had claimed the existence of a secrecy agreement (see also
T 969/90 and T 1054/92).

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 I.C.1. Defining the state of the art

In T 901/95 the board decided that merely claiming that generating equipment was
installed into ships at three different shipyards and thus available to the public was not
enough to demonstrate its obvious prior use. Shipyards were normally considered
restricted areas and thus not open to the general public. This applied all the more to
installations built into ships in the yards. Nor could the possibility be excluded that
shipyards' business partners might secure their common interests through explicit or tacit
secrecy agreements, in the absence of other protection. In the case in point, it was also
questionable whether the relevant process steps and the functional arrangement of the
switching means were apparent from merely looking at built-in apparatus; nor was it
certain when the generating installations had become operational.
Both parties dispensed with oral proceedings and no witnesses were heard; the board
did not in these circumstances consider the alleged public prior use.
In T 887/90 the obligation to maintain secrecy was derived from the circumstances. In
this case the board's view was that the onus for proving the contrary lay entirely with the
opponents. (similarly T 541/92; see also Chapter "Law of evidence").
1.9.3 Standard of proof
In T 48/96 the board stated that, in order to prove the allegation that a particular
apparatus described in a catalogue had been available to the public before the priority
date, it was not sufficient to show that the catalogue had been published on time,
because a mere indication in a catalogue did not constitute absolute proof that the
described product had in fact been available to anybody.
In T 77/94, the board decided that the argument that a publicity notice's date of issue
was necessarily immediately after its date of printing (because such notices were only
produced in order to be issued) was merely a supposition which required confirmation; in
reality, things were often different.
In T 729/91, one relevant document was an issue of a monthly periodical, intended for
hoteliers and caterers and which could be bought in South Africa. In accordance with the
evidence brought forward in the case, a copy of this periodical was received by a
particular library on 9.8.1984, ie before the priority date (13.8.1984) of the patent in suit.
The librarian stated that publications were "generally available to the public as of the
date of receipt". There was no absolute certainty that this was the case with the
publication in question. The board was of the opinion that the EPO must decide what
happened having regard to the available evidence on the balance of probabilities, ie it
must decide what was more likely than not to have happened. In the present case, it
was, in the board's view, clearly much more likely that the publication was available to
the public as from the date of receipt. In the absence of evidence to the contrary, the
board accepted that what in fact happened was what the librarian stated would
"generally" happen. So the publication was considered to have been made available to
the public before the priority date.
In T 1029/96 the board held that it had to be beyond doubt - not merely probable - that
claimed subject-matter was directly and unambiguously disclosed in a patent document.
So if there is reasonable doubt as to the outcome of a disclosure, a novelty objection
based on the document in question has to be rejected.

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Novelty

In T 231/01 the examining division had relied on the probability and likelihood that the
parameters of the articles known from the submitted document if measured would fall
within the claimed ranges.
The board could not follow this line of argument, because the criteria for assessing
novelty are not based on likelihood, but on identity of technical information between the
content of the prior art disclosure and the subject-matter claimed.
In T 55/01 the respondent had argued that only a complete chain of proof would suffice
to establish that the manual of a television formed prior art. The board agreed that the
evidence adduced by the appellant did not form a complete chain of proof of a sale and
noted that, in cases where only one party had access to information about an alleged
public prior use, the case law had tended towards expecting that the public prior use be
proved beyond any reasonable doubt ("up to the hilt"), answering the typical questions
"What?", "When?", "Where?", "How?" and "To whom?", since the other party was
reduced to merely pointing out inconsistencies or gaps in the chain of evidence; see
T 472/92 (OJ 1998, 161). However, the case law had taken into account that cases of
mass-produced consumer goods which were widely advertised and offered for sale to
customers who often remained anonymous might require different treatment; see
T 241/99. Indeed, to demand a complete chain of proof in such cases would make it
unreasonably complicated for a party to successfully rely on a sale or an offer for sale to
prove public availability.
The board observed that televisions were mass-produced consumer products which
were rapidly distributed to the market without any obligation of confidentiality. It found
that according to general experience it seemed highly implausible that such goods, whilst
being mass-produced, accumulated at some hidden location. It held that under these
circumstances no further evidence was necessary to prove that televisions were actually
sold to specified customers and that the handbook accompanying them was made
available to the public in a period of about four months between their established
production date and the priority date of the patent in suit, thereby taking into account the
fact that events on the mass market such as the appearance of new television products
were readily accessible to everybody, in particular to competitors, who would normally
observe the market carefully. Hence, the balance of probabilities was the applicable
standard of proof in cases such as this, as distinct from T 472/92.
In T 665/00, the board held that the evidence submitted had to be assessed in
accordance with the principle of "unfettered consideration of the evidence". Moreover,
the same principles of taking evidence applied to all the facts and arguments relied on in
support of all the grounds of opposition, including public prior use (see, to that effect,
T 270/90, OJ 1993, 725). However, the board pointed out that the exercise of this
unfettered discretion meant that varying standards of strictness could be applied in
evaluating the evidence. Thus, where an issue of fact was being decided on the balance
of probabilities, the more serious the issue and its consequences for the fate of the
patent, the more convincing the evidence had to be (T 750/94, OJ 1998, 32). In
particular, if the board's decision on whether to revoke the patent depended on that issue
of fact, the available evidence would have to be examined very critically and strictly.
For more details regarding proof in connection with public prior use, see also Chapter
"Law of evidence".

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 I.C.2. Determining the content of the relevant prior art

1.9.4 Obligation of the EPO to examine of its own motion

A number of cases of alleged prior use called upon the boards to define the extent of the
EPO's obligation under Art. 114 EPC to examine of its own motion. In these cases either
the opposition had been withdrawn at the appeals stage and establishing prior public use
had proved difficult, or the alleged prior use had not been substantiated.
In T 129/88 (OJ 1993, 598) the board took the view that the EPO's obligation to examine
matters of its own motion did not extend as far as investigating an allegation of prior
public use, where the party formerly making the allegation had withdrawn from
proceedings, and it was difficult to establish the facts without its co-operation (see also
T 830/90, OJ 1994, 713; T 887/90, T 420/91).
In T 582/90 the board ruled that an objection of prior public use had to be examined if it
appeared to be relevant, even if it had not been sufficiently substantiated.
2. Determining the content of the relevant prior art
I.C.2. Determining the content of the relevant prior art

After establishing what information forms the state of the art, the next step is to
determine its technical content and whether that content is apparent.
The consistent view in the case law is that for an invention to lack novelty its subject-
matter must be clearly and directly derivable from the prior art (see eg T 465/92,
OJ 1996, 32; T 511/92) and all its features - not just the essential ones - must be known
from the prior art (T 411/98). The disclosure is determined by what knowledge and
understanding can and may be expected of the average skilled person in the technical
field in question (T 164/92, OJ 1995, 305, Corr. 387; T 582/93).
Determining the information content means interpreting what the state of the art
comprises. The boards have laid down certain principles to be observed in this process.
2.1. General rules of interpretation
In T 600/95, the board held that the interpretation of the technical disclosure contained in
a given document does not normally depend on the purpose it serves, be it as
representing state of the art, priority document or the application as filed.
In T 312/94, the board held that it was a general legal rule for the interpretation of any
document, in particular a patent application or patent, in order to determine its true
meaning and thus its content and disclosure, that no part of such a document should be
construed in isolation from the remainder of the document: on the contrary, each part of
such a document had to be construed in the context of the contents of the document
as a whole. Thus, even though a part of a document appeared to have a particular
meaning when interpreted literally and in isolation from the remainder of the document,
the true meaning of that part of the document could be different having regard to the
remainder of the document.
In T 969/92 the board decided that in order to determine what had been made available
to the public, not only the main claim but also the remainder of a patent document had
to be carefully considered for guidance as to what had really been taught in the prior
document, ie its real express and implicit information content.
In T 158/96, in the examining division's opinion the use of the compound "sertraline" for
the manufacture of a medicament to treat obsessive-compulsive disorder (OCD) was not

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novel with regard to a document disclosing that sertraline was undergoing clinical trials
for OCD shortly before the priority date. The examining division stressed that, for the
purposes of patent disclosure, it was common practice to accept any pharmacological
test as the disclosure of a medical use, as long as this test was commonly accepted as
an indicator of potential therapeutic utility.
The board did not share the examining division's conclusion in the case at issue. For a
prior-art document to be recognised as prejudicial to the novelty of a claimed
subject-matter, the information conveyed by this document could not be interpreted on
the basis of rules, which, though normally valid, did not necessarily apply to the specific
situation and therefore might lead to speculative conclusions.
The information in a citation that a medicament was undergoing a clinical phase
evaluation for a specific therapeutic application was not prejudicial to the novelty of a
claim directed to the same therapeutic application of the same medicament if such
information was plausibly contradicted by the circumstances and if the content of said
citation did not allow any conclusion to be drawn with regard to the actual existence of a
therapeutic effect or any pharmacological effect which directly and unambiguously
underlay the claimed therapeutic application.
In T 943/93 the board held that a hypothetical possibility of operating within the
claimed region per se was legally not sufficient to deprive this region of novelty,
particularly if the skilled person had no technical motive and thus no practical necessity
to work within this region.
In T 378/94 the board ruled that facts which could be inferred from a source of
information only by a process that could be described as "obverse inference" were not
immediately recognisable. A subject-matter could be regarded as having been disclosed
by a specific information source only if it could be directly and unambiguously inferred
from that source. The board also found that other embodiments too came under the
general concept mentioned above. It then went on to explain the relationship between
the scope of protection of the claims and their disclosure. The board was of the opinion
that the scope of protection of a patent claim giving the technical features of an
invention, which claim consisted of one or several concepts serving mostly to generalise
one or several specific examples disclosed in the description and drawings, could not be
equated with the disclosure resulting directly from the wording of that claim. The scope of
protection was connected with the extent of the concept or concepts defined in the claim,
ie with the totality of every individual subject-matter showing all the features of such
concept(s), whereas the disclosure was connected with the content of such concept(s),
ie with the totality of features that made it possible to group together at an intellectual
level each individual subject-matter. If a claim dealt with general concepts, it disclosed
only these general concepts and not all the specific examples that came under these
general concepts.
Decisive for novelty in T 464/94 was a citation disclosing a preliminary test to transform
plant protoplasts with selective markers. The opposition division had considered it
probable that this document anticipated the patent in dispute.
In the board's view, it was not justifiable to decide whether a document was prejudicial to
novelty on the basis of probability. When a patent was revoked for lack of novelty, the
department concerned had to be sure, having taken all the facts and arguments put
forward during the proceedings into consideration, that the revocation was justified. If in

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doubt, further evidence had to be adduced otherwise the patent could not be revoked for
lack of novelty.
In T 233/90 the board took the view that in a case where a document comprised in the
state of the art under Art. 54(3) EPC referred to "a usual manner" of preparing a
product, it was permissible to use documents of reference such as handbooks,
encyclopaedias or dictionaries in order to determine what the skilled person would have
understood by such a reference on the effective date of the prior document.
In T 60/99 the subject-matter of claim 1 of the patent in suit differed from the machine
referred to in the description and the drawings of the relevant prior art in that the frame of
the agricultural machine for connecting the mowing unit to the hitch was at the front side
of a tractor, whereas in the prior art the frame was at the rear side of a tractor.
The appellant/opponent held that the fact that the drawings and the description of the
prior art document referred only to a specific embodiment concerning a rear-mounted
machine did not imply that the information content of the document excluded front-
mounted machines.
In the board's judgment, the independent claim of a patent document normally
represents a generalisation of what is described in detail in the description by referring to
the drawings. The definition of the extent of protection is given by formulating a concept
covering not only the specific embodiment described in detail in the description but also
other specific embodiments, which may differ from the item described in detail in the
document but each having all the features of the concept defined by the claim.
However, the scope of the claim and its information content must be distinguished from
one another. The information content of the claim relates to the totality of features which
are common to a plurality of individual items and thus permit all these individual items to
be conceptually embraced and the concepts to be distinguished from one another (the
intension or internal content of the concept). The scope of the claim relates to the totality
of the individual items having all the features of the concept (the extension or external
range of the concept).
In the case in point, the independent claim of the prior art document defines a concept
which is more general than the rear-mounted mower-conditioner described in the
description and the drawings (ie a concept embracing both a front-mounted and a rear-
mounted mower-conditioner) but does not disclose any particular example of this general
concept (ie does not disclose either a front-mounted or a rear-mounted mower-
conditioner). Therefore the information content of the patent in suit must be considered
novel with respect to the information content of this document.
In T 1080/99 (OJ 2002, 568) the board held that in view of its legal nature and intended
purpose, a Japanese patent abstract in English was a publication intended to reflect the
technical content of the corresponding Japanese patent application for the purpose of
quick prima facie information of the public, as was the purpose of any kind of abstract or
summary of technical subject-matter. Hence the contents of such abstracts were to be
interpreted and possibly re-evaluated in the light of the original document if the latter was
available. Indeed, if an abstract appeared to add something to the original document,
that pointed to an error in the abstract, or at least to an error in its interpretation.

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In T 410/99 the board noted that, according to established case law, a prior art
disclosure was novelty-destroying if it directly and unambiguously disclosed the subject-
matter in question as well as took account of a skilled person's common general
knowledge whether at the publication date of the cited document in the case of prior art
cited under Art. 54(2) EPC or at the priority date of the cited document in case of a
document pursuant to Art. 54(3) EPC (see eg T 511/92). Moreover, a prior art disclosure
had to be read giving the information it contained the meaning that a skilled person
would have given it at its publication date and disregarding information which would be
understood by a skilled person to be wrong; however, any teaching which would not be
recognised as wrong by a skilled person had to be accepted as prior art (see T 412/91).
In the case at issue, the appellant had submitted that a skilled person could have
considered that additional steps were involved in the process of prior art document (9)
but not described in this citation and that there were therefore other possible
interpretations of its text. Therefore the claimed subject-matter was not directly and
unambiguously derivable from the teaching of that document, such as was found for
example in T 464/94. The board found, however, that in the present case there was no
evidence or reason for considering the explicit teaching of document (9) as incomplete or
wrong since it clearly described all process steps and the influence of each process step
upon the quality of the product thereby obtained. Moreover, its teaching, unlike the
situation in T 464/94, did not raise any doubt about the results obtained by the claimed
process as mentioned in the text; therefore its teaching could not be considered either
hypothetical or contrary to the common general knowledge in the relevant technical field.
Since therefore the facts of the case were distinguished from those underlying T 464/94,
the latter could not be applied to the present case. The board concluded that document
(9) directly and unambiguously disclosed all the features of the process of claim 1 and
that the subject-matter of claim 1 thus lacked novelty.
In T 4/00 the board found that for novelty to be destroyed for the claimed ranges of the
components of the gas mixture, the skilled reader should be able to derive directly and
unambiguously from a particular part of a graph at least one specific gas mixture
composition relevant for the claimed ranges. However, the description of the prior art
document noted that these graphs were approximate contour lines of equal weld
penetration, established on the basis of measurements of the weld penetration depth
obtained in tests with a number of gas mixtures. Thus the graphs themselves did not
represent measured values. Further, the board observed that the means by which the
graphs had been established were not mentioned in the prior art document. It therefore
held that the points of a graph in a diagram in a prior art document did not represent a
disclosure of the corresponding values read from the scales of the diagram if the
accuracy of the graph in the diagram could not be established.
2.2. Combinations within a prior art document
In T 305/87 (OJ 1991, 429) the board considered it expedient to state that in order to
assess novelty it was not sufficient to limit oneself to the contents of a single document
taken as a whole but rather it was necessary to consider separately each entity
described therein. The subject-matter of the patent under appeal was a shear. The
opponents maintained that the features, taken as a whole, of two shears which were
disclosed in a catalogue, had to be regarded as a single state of the art because those
shears were described in one and the same technical context and in one and the same
document. They argued that, when taken as a whole, this set of known features

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anticipated the invention. The board, however, made it clear that it was not permissible
to combine separate items belonging to different embodiments described in one and
the same document merely because they were disclosed in that one document, unless of
course such combination had been specifically suggested there. The two shears known
from the catalogue were therefore definitely two separate entities forming two
independent bases for comparison which ought to be considered in isolation when
assessing novelty, and it was not admissible to piece together artificially a more relevant
state of the art from features belonging to one or both of these entities, even if they were
both disclosed in one and the same document (see T 901/90, T 931/92 and T 739/93).
In T 332/87 the board held that when examining novelty, different passages of one
document might be combined provided that there were no reasons which would prevent
a skilled person from making such a combination. In general, the technical teaching of
examples might be combined with that disclosed elsewhere in the same document, eg
in the description of a patent document, provided that the example concerned was
indeed representative of or in line with the general technical teaching disclosed in the
respective document. In the case at issue, the board concluded that a particular
composition in an example was not in agreement with the general technical teaching of
the prior art document and that in view of this discrepancy the skilled person would not
have combined the said disclosure with this example.
In T 42/92 it was explained, in accordance with the boards' established case law, that a
prepublished patent specification formed part of the state of the art under Art. 54(2) EPC
only as regards those elements which the person skilled in the relevant art would
incontestably infer from the document as a whole. The disclosure of a prior-art patent
specification did not however cover combinations of individual features arising from
reference back to the claims if those features were claimed separately for patent-law
considerations and combining them was not supported by the description, or even - as
here - was at odds with the embodiments described.
In view of the objection as to lack of novelty, the question to be answered in decision
T 610/95 was whether or not the proposed solution in the patent was derivable directly
and unambiguously from the disclosure of citation (2), which contained cross-
references to the entire content of three patent specifications without giving priority to
any of these references. Each of these references offered a plurality of different options
for preparing pressure-sensitive layers of medical dressings.
The board held that, under these circumstances, it could not be said that the use of the
specific product acting as pressure-sensitive material in the claimed invention was
directly and unambiguously derivable from the wholly general reference to the three
different prior documents quoted in citation (2) and had therefore already been made
available to the public.
2.3. Taking implicit features into account
In T 6/80 (OJ 1981, 434) the board found that where a further functional attribute of an
element of a device disclosed in a document was immediately apparent to a person
skilled in the art reading the document, such attribute formed part of the state of the art
with regard to that device.
Any prior-art disclosure is novelty-destroying if the subject-matter claimed can be
inferred directly and unequivocally from that disclosure, including features which for the

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skilled person are implicit in what is explicitly disclosed (see T 677/91, T 465/92,
OJ 1996, 32; T 511/92).
In T 666/89 (OJ 1993, 495) the term "available" clearly went beyond literal or
diagrammatical description, and implied the communication, express or implicit, of
technical information by other means as well. One example of the available information
content of a document extending beyond this literal descriptive or diagrammatical
content was the case where the carrying out of a process, specifically or literally
described in a prior art document, inevitably resulted in a product not so described. In
such a case, the board stated, the prior art document would deprive a claim covering
such a product of novelty. It was thus content, express and implied, rather than mere
form, that was decisive for the issue of novelty in general, and "selection" novelty in
particular (see T 793/93).
In T 518/91 the board held that the logical interpretation by a skilled person of technical
facts explicitly stated in a prior document - in particular the definition beyond the explicit
disclosure of the document of features of the prior art described in general terms - was
not part of the technical teaching implicitly derivable from the document, which the skilled
person would automatically infer, if it contradicted other explicit technical information in
the otherwise consistent overall disclosure of the document.
In T 624/91 it was held that exact disclosures for alloy compositions in the state of
the art had to be interpreted as average or nominal values within a small range in view of
known fluctuations in reproducibility and in analytical results, unless there was evidence
available to the contrary. The board pointed out that whenever a metallurgist aimed at
producing an alloy in accordance with a given nominal composition, the composition of
the final product would deviate somewhat from this target or even be undefined within
certain narrow limits. The metallurgical production process was not ideally reproducible
and the actual composition of different batches aiming at the same nominal composition
would be spread over a certain area around this target. Consequently, the nominal
composition of a cited alloy not only disclosed the composition as a specific point which
nobody would be able to realise in practice, but also a certain range around this average
or nominal composition into which the majority of the analyses of those alloys fell which
had been prepared aiming at the nominal composition and using the care usual in this art
when producing and analysing an alloy.
In T 71/93 it was held that a feature not explicitly mentioned in a prior art document, even
though generally known to help overcome a drawback usual in the same technical field,
could not be considered implicitly disclosed if it were not directly derivable from the prior
art document that the drawback was considered unacceptable and/or if other solutions
were proposed for overcoming the drawback.
In T 572/88 and T 763/89 the boards warned against using the concept of "implicit prior
description" in such a way that considerations relevant to the evaluation of inventive step
were transferred to the assessment of novelty. A fair assessment of an invention's
patentability called for a clear distinction between novelty and inventive step. In decision
T 763/89, for example, the opponent could not claim "implicit prior description" for a
material with exactly three layers, as claimed in the disputed patent, on the grounds that
a skilled person, aware of the considerable outlay required for further sub-layers and the
limited improvement in the quality of the image they bring, would have understood the
wording of the claim, which set no upper limit for the number of layers, to be virtually

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synonymous with "two or three layers". To do so would be to adduce a typical criterion

for the evaluation of inventive step.
In T 71/93 the board held that an "implicit prior description" of a feature could not be
based on the grounds that a person skilled in the art would have been aware of some
disadvantages and of the lack of other forms of improvement related to a feature, since
this was a criterion for the evaluation of inventive step.
2.4. Taking intrinsic features into account
In T 59/87 (OJ 1991, 561) the respondent had contended that a particular document
inherently disclosed the claimed invention and was therefore destructive of novelty.
However, the board stressed that in G 2/88 (OJ 1990, 93, Corr. 469) it was emphasised
that the question to be decided was what had been made available to the public, not
what might have been inherent in what was made available to the public. Furthermore,
when considering how far the teaching in a written description also made the inevitable
result of carrying out such teaching available to the public, in each case "a line must be
drawn between what is in fact made available and what remains hidden or otherwise has
not been made available". Thus, the board decided that whether a previously
undisclosed technical effect, which in fact inevitably occurred when a previously
disclosed technical teaching in a written description was carried out, had been made
available to the public by reason of the teaching in the written description was a question
of fact which had to be decided in the context of each individual case.
G 1/92 (OJ 1993, 277) further stipulated that a commercially available product did not
per se implicitly disclose anything beyond its composition or internal structure. Other
characteristics, which were only revealed when the product was exposed to interaction
with specifically chosen outside conditions in order to provide a particular effect or result,
or to discover potential results or capabilities, therefore pointed beyond the product per
se as they were dependent on deliberate choices being made and thus could not be
considered as already having been made available to the public.
Further to this decision, the board held in T 977/93 (OJ 2001, 84) that a product made
available to the public was not reproducible within the meaning of G 1/92, and thus did
not belong to the state of the art, if the skilled person could not establish identity of the
reproduced product with the commercially available one because the intrinsic and
extrinsic features of the product were not accessible and there was a high probability of
variation upon reproduction.
2.5. Taking equivalents into account
The case law of the boards of appeal is based on a narrow concept of novelty, ie the
disclosure of a prior document does not include equivalents of the features which are
explicitly or implicitly disclosed; equivalents can only be taken into account when it
comes to considering inventive step (see T 517/90). This narrow concept of novelty,
which excludes equivalents, is of particular importance for the application of
Art. 54(3) EPC. In T 167/84 (OJ 1987, 369) the board commented that conflicting
applications within the meaning of Art. 54(3) EPC were included in the state of the art
solely from the point of view of novelty, but were considered in the light of their "whole
contents". In order to mitigate the harsh effects of the "whole contents approach", its
application was confined to novelty (see Art. 56, second sentence, EPC). Further, in
order to reduce the risk of "self-collision", it had always been considered justified to

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adopt a strict approach to novelty. For this reason, Guidelines C-IV, 7.2 (June 2005
version) expressly stated that "when considering novelty, it is not correct to interpret the
teaching of a document as embracing well-known equivalents which are not disclosed in
the document; this is a matter of obviousness". Accordingly, the board held that the
"whole contents" of an earlier document did not also comprise features which were
equivalents of features in the later document (see also T 928/93).
In T 652/01 the appellant/opponent was of the opinion that although the relevant prior-art
document did not explicitly mention a particular feature, that feature could be derived
from the document by applying the document's teaching mutatis mutandis. The appellant
had referred to T 952/92 (OJ 1995, 755), which in its first headnote stated that
"availability" in the sense of Art. 54(2) EPC involved not only availability of the disclosure
but also availability of information accessible and derivable from the disclosure.
The term "derivable", if used in isolation, could inter alia be interpreted as "capable of
being obtained or drawn as a conclusion, deduction or inference" (Oxford English
Dictionary), which would suggest that "derivable equivalents" were included.
However, the board held that when reading the cited phrase from T 952/92 in the context
of the present decision, it was clear that the term "derivable" had been employed in the
sense of "obtainable by chemical analysis of a sample" and that it was used with the
same restriction as expressed in opinion G 1/92 (OJ 1993, 277), namely that it had to be
"directly and unambiguously derivable".
2.6. Taking drawings into account
In T 896/92 the board emphasised that in accordance with T 169/83 (OJ 1985, 193)
further conditions were required as to the disclosure of a feature shown solely in a
drawing. In this respect, not only should the structure of the feature be shown sufficiently
clearly in the drawing, but also the technical function achieved should be derivable (see
also T 241/88).
In T 204/83 (OJ 1985, 310) the board held that features shown solely in a drawing
formed part of the state of the art when a person skilled in that art was able, in the
absence of any other description, to derive a technical teaching from them. Dimensions
obtained merely by measuring a diagrammatic representation in a document did not,
however, form part of the disclosure (see T 857/91 and T 272/92).
In T 56/87 (OJ 1990, 188) the board held that a technical feature which was derived from
or based on dimensions obtained from a diagrammatic representation and which
technically contradicted the teaching of the description, did not form part of the
disclosure of a document.
2.7. Taking examples into account
In T 12/81 (OJ 1982, 296) the board held that the teaching of a cited document was not
confined to the detailed information given in the examples of how the invention was
carried out but embraced any information in the claims and description enabling a person
skilled in the art to carry out the invention (see also T 562/90). In T 424/86 the board
stated that the disclosure of a document was not to be construed only on the basis of the
examples thereof; rather, the entire document had to be taken into consideration (see
also T 373/95). In T 68/93 the board stated that it was not allowable to take a particular
example out of context. In T 12/90, the board decided that the disclosure in a prior

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document likely to affect the novelty of a claim was not necessarily limited to the specific
working examples but also comprised any reproducible technical teaching described in
the document (see also T 247/91 and T 658/91).
In T 290/86 (OJ 1992, 414) the board decided that what was "made available to the
public" by specific detailed examples included in a document was not necessarily limited
to the exact details of such specific examples but depended in each case upon the
technical teaching which was "made available" to a skilled reader. The amendment of a
claim by including a disclaimer in respect of such specific detailed examples could not
render the claim novel.
In T 365/89 the board held that Art. 54(1) EPC did not require that a technical teaching
had to be disclosed in detail, eg by working examples. Thus, the presence or absence of
such more detailed information did not influence the answer to the question whether or
not the relevant disclosure in a particular document belonged to the state of the art.
In T 666/89 (OJ 1993, 495) the respondent argued that the examples of a particular prior
art document lay outside the scope of a particular claim and that the generic disclosure
therein could not be held to be an anticipation of this claim. As a result, only the
examples of a document should be regarded as state of the art. The board stated that
the respondent had ignored the established jurisprudence of the boards of appeal,
according to which it was necessary to consider the whole content of a citation when
deciding the question of novelty. In applying this principle, the evaluation was therefore
not to be confined merely to a comparison of the claimed subject-matter with the
examples of a citation, but had to extend to all the information contained in the earlier
document.
In T 1049/99 the board noted that according to Art. 54(2) EPC the state of the art
comprised "everything made available to the public by means of a written or oral
description, by use, or in any other way, before the date of filing of the European patent
application". In the case of a "written description" open to public inspection, what is made
available is all the information contained in that description. In some cases, the
information contained in the written description, such as teaching on ways of carrying out
a process, also provides access to other information necessarily resulting from the
application of that teaching (T 12/81, OJ 1982, 296; T 124/87, OJ 1989, 491; T 303/86).
2.8. Assessment of prior uses
Several decisions have concerned the information content of prior uses.
In T 245/88 two vaporisers had been installed in a fenced-off area of a shipyard. As far
as the opportunity to view these vaporisers from outside the fence was concerned, the
board was not convinced that a person skilled in the art, without the knowledge of the
subject-matter claimed in the contested patent, would have recognised the teaching it
contained and the problem it sought to solve, or that he would have detected the claimed
spacing ratio among the many dimensions and dimension ratios which could be derived
from a multi-tube vaporiser.
In T 363/90 a machine fitted with a sheet feeder corresponding to the claimed invention
had been exhibited and demonstrated at trade fairs. The board concluded that, under the
circumstances, it was impossible for the skilled person to recognise - or to infer on the
basis of further information - the technical features and the functions of the exhibited

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sheet feeder to an extent which would have enabled him to copy its design, let alone
develop it further (see also T 461/88, OJ 1993, 295).
In T 87/90 the features and functions of a press that had been open to view were ruled to
have been made available to the public because full details of the press had been given
and information material distributed.
In T 208/88 (OJ 1992, 22) the board held that an effect (in this case, growth regulation)
not previously described, but actually occurring during the execution of a known teaching
(in this case, use as a fungicide) and intended as the basis of a use invention, had in any
event not been made available to the public if it was not revealed so clearly during such
execution as to disclose the invention's essential character, at least potentially, to an
unlimited number of skilled persons.
In many cases the ability to recognise a technical teaching such as the internal structure
or composition of a product in prior use presupposes analysis of the product embodying
this technical teaching. Whether it is technically feasible to analyse a product that is
available on the open market is an issue that the boards have considered on a number
of occasions.
In T 461/88 (OJ 1993, 295) the board ruled that a control program stored on a microchip
had not been made available to the public if the analysis of the program would require an
expenditure of effort on a scale which could only be reckoned in man-years and if, for
economic reasons, it was highly improbable that the sole purchaser of the machine
controlled by the program had carried out such an analysis (see also the similar ruling in
T 969/90 obiter dictum).
In T 390/88 the board rejected the argument that a film had not been made available to
the public because its existence had only been announced at a press conference three
weeks before the priority date, and hence it would have been impossible in that short
time for a person skilled in the art to determine the film's composition.
In T 406/86 (OJ 1989, 302) the composition of a product that had been commercially
available before the priority date was held to have become part of the state of the art
because it could be analysed without undue burden. In T 969/90 and T 953/90 the board
had ruled that the internal structure of a product in prior use had been made available to
the public because a skilled person relying on the normal means of investigation
available to him would have been able to analyse the product.
In G 1/92 (OJ 1993, 277) already mentioned above the Enlarged Board of Appeal held:
"Where it is possible for the skilled person to discover the composition or the internal
structure of the product and to reproduce it without undue burden, then both the product
and its composition or internal structure become state of the art."
In T 952/92 (OJ 1995, 755) the board held that prior use of a product provided access to
what the skilled person would be able to ascertain from that product by means of known
analytical techniques. Whether such an analysis could be performed without undue
burden was irrelevant to the question of whether the composition of a product had been
made available to the public. In giving its reasons the board stated that the original
English of G 1/92 (OJ 1993, 277) was not entirely clear in terms of grammar, since the
phrase "without undue burden" could qualify just the reproduction of the product, or both
the discovery of its composition or internal structure and its reproduction. The reference

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to "without undue burden" was not strictly necessary in order to provide an answer to the
referred questions and could not therefore have been intended to alter or add to the
existing law concerning what constitutes "the state of the art". Reproducing a product
"without undue burden" was a problem associated with Art. 83 EPC. Furthermore, to
apply the concept of "undue burden" would introduce a subjective element into the
determination of novelty, something which the Enlarged Board had specifically sought to
reject in G 1/92.
A further question considered by the board was whether, if the composition of a product
in prior use was to be "made available", a complete analysis of such product had to be
possible, so that, as submitted by the patent proprietor, such product could have been
exactly reproduced. In the board's view, a claimed invention was anticipated by the prior
use of the product, if an analysis of a product using available analytical techniques was
such as to inform the skilled person of an embodiment of the product which fell within the
claim of the patent.
In T 472/92, the problem to be solved by the subject-matter of the patent in suit was the
provision of a laminate suitable for the fabrication of sleeves which could be heat-shrunk
onto bottles, where the outer surface of the laminate should have a good printability. This
problem was solved, according to the patent in suit, by the use of polystyrene. A further
element of the solution was the manufacture of the two layer laminate by coextrusion.
The appellant/opponent contended that coextruded polystyrene laminates had been
delivered to a customer and that a skilled person would have been aware of their good
printability and encouraged to replace, in the laminates known in the state of the art, the
ethylene polymer composition based non-cellular layer by a non-foam layer made of
polystyrene. The board referred to G 1/92 and concluded that the printability
characteristic of the material was not a property that became available to the public by
their mere delivery, since this was clearly an extrinsic characteristic requiring interaction
with specifically chosen outside conditions. Thus, such characteristic could not be
considered as already having been made available to the public (see also T 267/92).
In case T 301/94, the patent concerned green glass bottles with a high filtering power for
ultraviolet light and having a defined composition. It was proved that bottles with the
claimed characteristics had been sold and delivered by the respondents (opponents) to a
customer before the priority date. The appellants contended that the bottles produced of
glass of said composition by the respondents had not been made available to the public,
inter alia for the following reasons:
(1) the sulphide concentration of the glass was a secret or a "hidden" feature within the
meaning of decisions G 1/92 (OJ 1993, 277) and G 2/88 (OJ 1990, 93), since it was not
common general knowledge at the priority date that a green glass having a high UV
absorption might contain a very low amount of sulphides. Thus, when analysing such a
glass the skilled person would not have paid attention to the sulphide concentration, high
sulphide concentrations being known only in connection with amber glass;
(2) a skilled person would not have been able on the basis of what was generally known
on the priority date to reproduce the green glass without undue burden because a
tremendous number of experiments would have been necessary to find out the
temperature and the reducing conditions leading to the desired optical properties by
continuous production in an industrial plant.

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The board held that the optical parameters represented intrinsic characteristics of the
glass composition and not characteristics depending on a particular use or application of
the glass. The situation considered by the Enlarged Board in decision G 2/88 was
different from that of the case at issue, since it concerned a claim relating to a new use
of a known compound reflecting a newly discovered technical effect and not a claim to
the compound itself. It was the new technical effect which constituted a hidden or secret
feature, not the composition itself or one component thereof. Furthermore, the board
held that the appellants in fact introduced an additional requirement for the chemical
composition to be available to the public, ie that the skilled person should be able to
recognize a priori, on the basis of the common general knowledge at the priority date,
which components the commercially available product might contain and in which
amounts. Such an additional requirement would not be in agreement with the essence of
opinion G 1/92, where only analysability and reproducibility of the commercially available
product were required for its chemical composition to be state of the art. Furthermore,
the board held that the skilled person would have been able to reproduce the green
glass without undue burden and that this was sufficient to meet the requirement of
reproducibility set out in G 1/92. What was required in G 1/92 was not that continuous
production on an industrial scale be possible without undue burden, but that a skilled
person be able to prepare the product without undue burden on the basis of his general
technical knowledge and knowing the composition or internal structure of the product,
whatever the scale of production (laboratory, pilot or industrial scale).
In T 515/98 the invention related to an epilation device. The proceedings involved inter
alia a claim of prior use.
The board ruled that any prior use had to be considered as a whole, just as parts of a
prior-art document could not be taken out of context so as to arrive at different technical
information from its teaching as a whole. Here too, certain components regarded as
essential to a device's basic design for normal use as intended by the manufacturer
could not be omitted.
In the present case, the prior-use epilation device - as even the appellant/opponent
conceded - exhibited all the features of claim 1 only if certain essential components were
omitted, thus changing the kinematics of its operating elements.
In the board's view, the appellant thus implicitly acknowledged that the device as
marketed was not identical with that according to the invention; what was identical with
the latter was a modified version, newly constructed using only some of the original
components, so that the epilation elements in the two versions differed as regards both
structure and kinematics. Since, in order to move from the prior-use device to the one
according to the invention, the skilled person had to perform several acts (dismantling
the marketed device, omitting components, partial reconstruction) which would not arise
from normal use of the device on sale, the subject-matter of claim 1 was not directly and
unambiguously derivable from the prior teaching.
2.9. Broad claims
In T 607/93 the board decided that when novelty and inventive step were being
assessed, there was no reason for using the description to interpret an excessively
broad claim more narrowly if it was a question not of understanding concepts that
required explanation but rather of examining an excessively broad request in relation to
the state of the art.

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 I.C.2. Determining the content of the relevant prior art

2.10. Deficiencies and mistakes in a disclosure

Mistakes in a document do not in themselves constitute prior art such as to prevent grant
of a patent.
In T 77/87 (OJ 1990, 280) the abstract published in the journal "Chemical Abstracts" did
not correctly reproduce the original paper. The board stated that the original document
was the primary source of what had been made available as a technical teaching. Where
there was a substantial inconsistency between the original document and its abstract, it
was clearly the disclosure of the original document that had to prevail. The disclosure in
the original document provided the strongest evidence as to what had been made
available to the skilled person. When it was clear from related, contemporaneously
available evidence that the literal disclosure of a document was erroneous and did not
represent the intended technical reality, such an erroneous disclosure should not be
considered part of the state of the art.
In T 591/90 a prior document again contained mistakes. The board distinguished this
case from T 77/87 (OJ 1990, 280), which had concerned a special case, and took the
view that a document normally formed part of the prior art even if its disclosure was
deficient. In evaluating such a disclosure it was to be assumed however that the skilled
reader was mainly "interested in technical reality". Using his general technical knowledge
and consulting the reference literature, he could see at once that the information in
question was not correct. It could be assumed that a skilled person would try to correct
recognisable errors, but not that he would take the deficient disclosure as pointing the
way towards a solution to an existing technical problem.
In T 412/91 the board took the view, having regard to Art. 54 EPC, that the incorrect
teaching of document (1) was not comprised in the state of the art. It stated that, in
principle, what constituted the disclosure of a prior art document was governed not
merely by the words actually used in its disclosure, but also by what the publication
revealed to the skilled person as a matter of technical reality. If a statement was plainly
wrong, whether because of its inherent improbability or because other material showed
that it was wrong, then - although published - it did not form part of the state of the art.
Conversely, if the skilled person could not see the statement was wrong, then it did form
part of the prior art.
In T 89/87 the board found that "0.005 mm" (= 5 µm) was a misprint contained in the
prior document and that only "0.0005 mm" (= 0.5 µm) was correct. The board stated that
the correction was such that the skilled reader would be expected to make it as a matter
of course.
In T 230/01 the board noted that in Art. 54(2) EPC "the state of the art" was clearly and
unambiguously defined as "everything made available to the public by means of a written
or oral description, by use, or in any other way, before the date of filing of the European
patent application". A document normally forms part of the state of the art, even if its
disclosure is deficient, unless it can unequivocally be proven that the disclosure of the
document is not enabling, or that the literal disclosure of the document is manifestly
erroneous and does not represent the intended technical reality. Such a non-enabling or
erroneous disclosure should then not be considered part of the state of the art (T 77/87,
OJ 1990, 280; T 591/90).

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2.11. Accidental disclosure

In T 161/82 (OJ 1984, 551) the board found that the prior art document was concerned
with the solution of a problem totally different from that stated in the application at issue
and concluded that in cases where an anticipation was of a chance nature, in that what
was disclosed in a prior document could accidentally fall within the wording of a claim to
be examined for novelty without there being a common technical problem, a particularly
careful comparison had to be made between what could fairly be considered to fall within
the wording of the claim and what was effectively shown in the document (see also
T 986/91).
In T 601/92 a radial ventilator was claimed, characterised in that the ventilator wheels
were mounted on the ventilator shaft and offset against each other in such a way that the
spokes of one ventilator wheel, viewed in the direction of the axle, were arranged
opposite the gaps between the spokes of the other ventilator wheel. The prior art
comprised fans, during the assembly of which no attention was paid to the angle of
rotation of the spokes of the two ventilator wheels in relation to each other. The
probability that such fans, which coincidentally had the spoke arrangement claimed, had
been sold was extremely high. The board held that this was evidence of an anticipatory
prior use of the claimed product, stating that in the case of anticipation of a chance
nature where there was no common technical problem, particular care had to be taken
when considering what could be deemed to be part of the claim and what was derived
from the prior publication. In contrast to T 161/82 (OJ 1984, 551), in which the claimed
subject-matter was also structurally the same as the prior subject-matter, but had a
different function, there was no recognisable difference in function in this case. T 208/88
(OJ 1992, 22) was not comparable since in the present case a product was claimed and
not a new possible use for a known substance based on a previously unknown effect or
function of that substance. The auxiliary request related to a process for manufacturing
low-noise radial ventilators, characterised in that the ventilator wheels were
systematically mounted on the ventilator shaft and offset against each other in such a
way that the spokes of one ventilator wheel, viewed in the direction of the axle, were
arranged opposite the gaps between the spokes of the other ventilator wheel. In the
board's view this claim was clearly delimited from the prior art by the feature
"systematically". This feature clearly referred to a procedural step and could acquire
significance as a substantial distinguishing feature vis-à-vis the prior art only within a
process claim. The fact that the claim for a manufacturing process contained
predominantly product features was a logical consequence of the close connection
between product and process and did not prevent the claim from being allowed.
In T 608/96, the board ruled that a disclosure was "accidentally novelty-destroying" if it
would not be considered by the skilled person faced with the problem underlying the
application or patent, whether because it belonged to a distant technical field or because
its subject-matter suggested it would not help solve the problem. This also meant that a
disclosure was "accidentally novelty-destroying" only if completely irrelevant for
assessing inventive step.
2.12. Reproducibility of the content of the disclosure
A disclosure is novelty-destroying only if the teaching it contains is reproducible.
In T 206/83 (OJ 1987, 5), in particular, it was found that a document (in this case a co-
pending European application) did not effectively disclose a chemical compound, even

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 I.C.2. Determining the content of the relevant prior art

though it stated the structure and the steps by which it was produced, if the skilled
person was unable to find out from the document or from common general knowledge
how to obtain the required starting materials or intermediates. Information which could
only be obtained after a comprehensive search was not to be regarded as part of
common general knowledge. This need for an enabling disclosure was also in conformity
with the principle expressed in Art. 83 EPC for patent applications which had,
accordingly, to "disclose the invention in a manner sufficiently clear and complete for it to
be carried out by a person skilled in the art". The requirements as to the sufficiency of
the disclosure were, therefore, identical in all these instances.
For selection inventions the requirement of a reproducible disclosure also plays a
significant role. In T 26/85 (OJ 1990, 22) the board pointed out that anything comprised
in the state of the art could only be regarded as having been made available to the public
in so far as the information given to the person skilled in the art was sufficient to enable
him to practise the technical teaching which was the subject of the disclosure, taking into
account also the general knowledge in the field to be expected of him. In this particular
case, the ranges of a certain parameter as defined in the claim fell within the broader
ranges stated for the same parameter in a prior art document. According to the above-
mentioned conclusion, the board considered that a realistic approach when assessing
the novelty of the invention under examination over the prior art in a case where
overlapping ranges of a certain parameter existed would be to consider whether the
person skilled in the art would, in the light of the technical facts, seriously contemplate
applying the technical teachings of the prior art document in the range of overlap; if it
could be fairly assumed that this would be the case, it had to be concluded that no
novelty existed. Such was not the case in the matter under consideration, since there
existed in the prior art a reasoned statement clearly dissuading the person skilled in the
art from using the range under a certain value, and the range of overlaps was under this
value; the claimed range was therefore considered novel.
In T 447/92 the board held that the cited document did not disclose when or how far a
movable piece in the claimed invention (an air circuit breaker) moved, or the way in
which it worked to prevent the spring-back of a lever. No relative movement was
described or shown in the drawings and it was a matter of conjecture as to the manner in
which the relevant parts co-operated. The board found that it might have been obvious to
a skilled person that the notch could co-operate with the shaft in the manner defined in
the claims of the patent in suit, but that this only meant that the disclosure took him close
enough to do the rest himself. It did not mean that the document took the skilled person
all the way to the present invention. Thus, the features of the air circuit breaker according
to claim 1 of the application were not unambiguously derivable from the drawings of an
earlier European patent application.
In T 310/88 the board of appeal had to consider a discrepancy between what actually
happened in practice when carrying out a technical teaching in a prior document
according to the letter of its description, and what this prior document said would
happen. According to the description in the prior document a particular component was
not present, whereas the presence of this component was essential for the later
invention. However, in practice, when following the teaching of the prior document
literally, this component would be present. The board held that the invention was novel
over the prior document because the latter did not contain a sufficiently clear teaching for
that conclusion not to be reached. The skilled person, by following the document's

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teaching, was led in a direction clearly pointing him away from the claimed subject-
matter because it stated that the composition obtained did not comprise a component
contained in the claimed compound. The subject-matter was new even if by reproducing
the examples described in the prior document a skilled person would inevitably obtain a
composition corresponding to the composition claimed and comprising the specific
component. According to the board, the teaching of the prior document had to be
interpreted as meaning that further steps would be needed to eliminate the additional
component.
In T 491/99, the board held that an earlier patent using terminology which at first sight
was suggestive of the product invention claimed was not in fact a prejudicial disclosure if
a skilled person could actually make the product in question only later, from the process
and machine described for the first time in the European patent in suit.
3. Ascertaining differences
I.C.3. Ascertaining differences

Once the state of the art has been established using the criteria described above, and its
content has been determined, the final step is to ascertain whether the invention in
question differs from the prior art.
3.1. Comparing each individual item from the prior art
When the invention is compared for novelty purposes with the state of the art as
determined applying the criteria described above, this must be done only on the basis of
each element of prior art taken as a whole (see T 153/85, OJ 1988, 1; T 124/87,
OJ 1989, 491; T 233/90, T 904/91).
If however there is a specific reference in one prior document (the "primary document")
to a second prior document, when construing the primary document (ie determining what
it means to the skilled person) the presence of such a specific reference may necessitate
part or all of the disclosure of the second document being considered as part of the
disclosure of the primary document (see T 153/85, OJ 1988, 1; T 645/91, T 942/91,
T 422/92, T 239/94).
In T 291/85 (OJ 1988, 302) the board noted that the disclosure in a prior publication
always included not only what it presented as the teaching of the invention but also what
it referred to as the prior art. In the board's view, however, when examining for novelty,
to read into an account of the state of the art couched in very general terms specific
details of the inventive teaching of the same document was permissible only where a
person skilled in the art would in fact have made this combination when reading this
document. This would, for instance, be the case if a source were to be cited for the prior
art described and a specific, relevant disclosure could be derived from the original
document, or if the description of the prior art referred directly to the appropriate passage
in the description of the invention. Combining a specific feature from the description with
the general description of the prior art in this way might in certain circumstances be
obvious to a skilled person merely in the light of his general technical knowledge. In the
absence of such or similar circumstances, however, one could not, in the board's view,
assume that a skilled person would necessarily have derived from the document a
teaching based on a combination of this kind. Thus, the board concluded that if a citation
gave detailed information about a further development of a prior art described only in
very general terms without quoting a specific source, it was not permissible in examining
for novelty to combine these general statements with the specific statements made

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solely in order to explain the said development unless a person skilled in the art would
have made the combination when reading the citation.
In T 288/90 the appellants contended that the alleged invention lacked novelty on the
basis of a document (I), read either on its own or in association with a document (12)
treated as being representative of the general technical knowledge of the skilled reader
of document (I). The board regarded document (12) per se as fairly representative of the
general technical knowledge available at the relevant time, as it was published only
fifteen months before the application date of document (I). The board observed that,
although for the purposes of assessing novelty it was not normally legitimate to read two
documents together, nevertheless, when interpreting a single document, it was
necessary to read it having the general technical knowledge in mind, and for this
purpose to look at representative technical literature as an aid to the correct
interpretation of any particular term of art encountered.
In T 866/93 the board had to decide whether the invention was anticipated by document
(1). The section of document (1) relating to the prior art which the invention sought to
improve on made reference to counter document (16) which was not cited in the
descriptive part of the claimed invention.
The board held that, whilst the actual contents of a document (the "primary" document)
might encompass the contents of another document (the "secondary" document), any
reference in the primary document to the secondary document nevertheless had to be
made in the appropriate context.
In decision T 56/87 (OJ 1990, 188) the board emphasised that the technical disclosure in
a document should be considered in its entirety, as it would be by a person skilled in the
art, and that there could be no justification for arbitrarily isolating parts of the document in
order to derive therefrom an item of technical information which would be distinct from or
even contradict the integral teaching of the document. Therefore, the board considered
that a particular feature relating to the positioning of the outer electrodes of a
transmission ion chamber, in such a way that they partially lay in the shadow of a
collimator, for implementing a process for correcting alignment errors of a divergent
beam of rays, was not disclosed in a prior art document which, however, contained a
figure in which such positioning could be identified. The reason was that the figure in
question was obviously a schematic illustration showing neither the proportions nor the
dimensions of the actual apparatus. In order to be able to interpret it correctly, the skilled
technician therefore had to refer to the other figures and to the written description of the
document; he would have deduced from the latter, however, that the outer electrodes
should be positioned entirely in the radiation field, and not partially in the shadow of the
collimators, as set out in the claims examined (see T 332/87, T 441/91 and T 657/92).
In T 31/01 the board held that if the wording of an independent claim, in keeping with the
description, clearly indicated that the claimed measuring device was attached in a
particular way to the part being measured, the technical features of the claim which
defined the attachment method had to be duly taken into account when assessing the
patentability of the claimed subject-matter with regard to the latest prior art.
3.2. Distinguishing features
In T 4/83 (OJ 1983, 498) the board held that when examining for novelty, it should be
taken into consideration that any information in a patent specification which conveyed to

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the person skilled in the art a technical teaching, belonged to the content of the
disclosure irrespective of whether or not it fell within the scope of the claims or what
purpose it served.
3.2.1 Difference in wording
In T 114/86 (OJ 1987, 485) the board held that a mere difference in wording was
insufficient to establish novelty (see T 12/81, OJ 1982, 296; T 198/84, OJ 1985, 209;
T 248/85, OJ 1986, 261). In T 565/90 the appellant submitted that only preferred ranges
or examples amounted to a technical disclosure destructive of novelty, and that generic
ones could not anticipate the more specific teaching of the patent in dispute. The board
did not agree and confirmed earlier case law that the definition of an invention which
differed from the prior art only in its wording was insufficient to establish novelty. The
board stated that what had to be established was whether or not the state of the art
made the subject-matter of the invention available to the skilled person in the form of a
technical teaching.
In T 917/94 the board stated that incorporation of a technical feature which is redundant
because it does not change the claimed subject-matter does not impart novelty to known
subject-matter.
In T 826/94 the board was of the opinion that a claimed measuring device, which showed
all the constructive features of a known measuring device and differed from the latter
only in name, ie in the dimensions to be measured, was novel within the meaning of
Art. 54 EPC if it was only at the level of abstract thought, when the basic principles of the
two measuring devices were compared with each other, that the conclusion could be
drawn that the two measuring instruments were of the same type.
In T 870/95 it was decided that the general term "base" used in the citations was
novelty-destroying of the more specific one "permanganate in aqueous solution" if it were
shown that in the light of the skilled person's general technical knowledge the former
could only be understood to mean the latter.
In T 79/96, an extract from a handbook (D1) disclosed all the features of the claim 1 of
the patent in issue apart from the use of a "countercurrent gas/gravity classifier". Thus,
with respect to novelty it only had to be decided whether a vibrating fluidized bed with an
upwards gas flow through the bed of particles as described in D1 should be regarded as
a countercurrent gas/gravity classifier. The definition of a countercurrent gas/gravity
classifier was given in an extract from another standard handbook on chemical
technology (D3). The proprietor of the patent was of the opinion that the definition given
in D3 was too broad and that a person skilled in the art would not consider a fluidized
bed, being a rather inefficient classifier, as a countercurrent gas/gravity classifier.
The board did not share this view. It held that when assessing novelty of the claimed
subject-matter an expression in a claim should be given its broadest technically sensible
meaning. On that basis, any gas/gravity classifier, including a fluidized bed, satisfied the
classification requirements of the claim 1 of the patent on issue. The subject-matter
therefore lacked novelty over D1.
3.2.2 Differences in values
In T 686/96 claim 1 related to a composition with a feature (iv) requiring a perspex®
abrasion value (PAV) in the range from about 12 to about 20 PAV. A prior art document

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disclosed in example 2 a composition having features (i) to (iii) of claim 1. With respect to
novelty it had to be decided whether the known composition also had an abrasion value
as required by feature (iv) of claim 1. The board established that the abrasion value of
the known composition was somewhat below the lower value indicated in feature (iv) of
the claim. Since the lower limit in the claim 1 was defined as "about 12", some
interpretation was necessary. The board held that, when deciding on the novelty of the
subject-matter of a claim, the broadest technically meaningful interpretation of a claim
should be taken into account. In the board's view the scope of claim 1 was to be
construed to mean that the indicated lower limit corresponded to the value disclosed in
the prior art. Claim 1 was then considered to lack novelty.
In T 262/96, regarding the issue of novelty, the appellant/opponent contended that the
ZN40 material was commercially available before the priority date and that these
products had the composition, microstructure and properties indicated in claim 1 of the
patent in suit. The silica content of this sample of ZN40 material was lower than the
lower limit of 0.05 wt% stated in claim 1 of the patent in suit. The appellant's argument
that the difference between the said numerical values was only 0.007, and thus not
significant, was not convincing for the board. As the silica content of this ZN40 material
was itself relatively low, this difference represented in fact 16%. A difference of 16% in
the silica content was sufficient to distinguish two products from each other if such low
silica contents could be determined with sufficient accuracy by the method of
measurement used. The appellant did not provide information about the standard
deviation or the degree of accuracy of the method used. Instead, he argued at the oral
proceedings that the value of 0.043. wt% was in fact lower than the actual value since
the analysis was effected on the sintered body and such an analysis was more
problematic than an analysis performed on the starting powder because of the additional
components formed during sintering. In the board's view the fact that an analysis might
be more difficult on the sintered product did not mean that the result of the analysis was
necessarily too low. Furthermore, the appellant's affirmation that the silica content
measured in the sintered body was lower than the actual value was not supported by
evidence and was contested by the respondent. If it were to be assumed for the sake of
argument that the value given for ZN40 was too low, then the appellant would still have
had to prove that the actual value lay within the claimed range of 0.05 to 0.5 wt%.
Evidence to this effect was not provided by the appellant, although the burden of proof
rested with him. In these circumstances, the board considered that, in the absence of
evidence to the contrary, the silica content disclosed lay outside the claimed range and
would not destroy the novelty of the claimed ceramic bodies.
3.2.3 Difference in composition
In T 80/96 (OJ 2000, 50), claim 3 of the main request read as follows: "Preparation
containing L-carnitine in the form of tablets, capsules, powders or granules, in particular
for external application, characterised in that it contains L-carnitine-L-tartrate with an
auxiliary substance or auxiliary substances and, possibly, one or more further active
agents." An acqueous solution of the claimed tartrate compound was described in the
prior art. The board held that, in the case of an active agent which was known as such to
be water-soluble, it was clear to a person skilled in the art that describing and claiming
the active agent as a solution did not add to or change the definition of that active agent.
Without further specification, the mere characterisation of a solvent or diluent as liquid or

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solid in a claim did not change the assessment of the novelty of the subject-matter of the
claim.
Analogously, in a claim directed to a preparation of a known structurally defined active
agent with at least one auxiliary substance, in which the feature "with an auxiliary
substance or auxiliary substances" meant that something was added to the active agent,
the admixture of an unspecified auxiliary substance could not, in view of the unlimited
number of substances which might enter into consideration, be deemed a substantive
and distinctive addition to the active agent, unless this feature, which was necessary if
novelty was to be recognised, was specified in such a way that a person skilled in the art
could recognise what it was that should be added to the active agent. The claim was
therefore not new.
3.2.4 Inevitably obtained products
In T 270/97 the claimed product was considered by the opposition division and the
respondent/opponent as anticipated by the agent produced and inevitably obtained by
repeating examples 1 and 2 of a prior-art document.
The board however found that the method disclosed in the text of example 2 implied a
way of acting not envisaged in the method according to the patent in suit. The parties'
attempts to show that the particles obtained according to example 2 were, or were not,
identical to the products of the patent in suit, produced highly contradictory results.
Therefore the board could only conclude that depending on experimental conditions not
disclosed in example 2 different products might be obtained. Thus the claimed product
was not inevitably obtained by following the method of example 2. As to example 1, the
board found that it did not disclose an essential feature of the method of making the
product of the patent in suit. Under these circumstances, it was not tenable to argue that
the product according to the patent in suit was the inevitable result of repeating
example 1.
3.2.5 Functional features
Likewise, in T 500/89 it could only be seen from the disclosure considered in its entirety
that the prior art document did not cause lack of novelty, because the method
constituting the closest prior art differed from the claimed method in one functional
characteristic. The disputed patent related to a method for the production of
photographic material by the simultaneous application of several layers of fluid
photographic coating materials. Although the document cited in support of the opposition
listed the numerical ranges for layer thickness, viscosity, coating speed, etc. used in the
method claimed, the latter was nevertheless held to be new because the cited document
described the choice of these numerical ranges as leading to intermixing between two
particular layers. The contested patent was to be assessed according to a different
criterion because it described the application of the layers as being "substantially free
from intermixing". The "intermixing" described as an objective in the citation was not
merely a stated purpose not constituting one of the technical features of the method
described, but a functional feature - a criterion, in effect - forming an essential element of
the teaching set out in this publication.

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 I.C.4. Chemical inventions and selection inventions

3.2.6 Generic disclosure

In T 651/91 the board cited the Guidelines C-IV, 7.4 (June 2005 version) with approval,
confirming that a generic disclosure did not normally take away the novelty of any
specific example falling within that disclosure. The board further added that a disclosure
could be generic even where it only left open the choice between two alternatives. In
T 508/91 the board, citing the Guidelines C-IV, 7.4 (June 2005 version), held that, on the
other hand, the prior disclosure of the subset "vegetables" took away the novelty of the
wider set "fruits and plants".
In T 427/00 the appellant (opponent) argued that E1 anticipated the patented process,
because it offered a selection of specific manufacturing processes from amongst all
those suitable, and the skilled person would seriously have considered that selection.
The board took the view that E1 left open how the elements involved were to be made. It
was a "negative" disclosure which did not give enough information to disclose a certain
range explicitly. The possible processes for manufacturing the channel and surface were
not a "range" in the sense of a selection invention; they were undefined and unlimited in
number, and could at best be summarised under a general heading such as
"manufacturing processes".
So the case involved the selection not of a specific range within a broad known one but
of a specific process within a broader concept; but the boards' case law held that the
disclosure of a general concept did not normally destroy the novelty of specific examples
covered by the concept.
3.2.7 Product claim with process features
In T 815/93 and T 141/93, the claims comprised both product features and features for a
process for manufacturing the product. In both cases, only the process features
distinguished the invention from the prior art. Following the case law on the novelty of
product-by-process claims, the board found that process features not previously
described could establish the novelty of the claimed product only if they caused it to have
different properties from the products previously described. Neither the patent proprietor
in the first case nor the applicant in the second case could demonstrate this.
4. Chemical inventions and selection inventions
I.C.4. Chemical inventions and selection inventions

The state of the art often includes documents containing technical teachings described in
general terms; these teachings in turn subsume a number of more specialised technical
teachings. In assessing the novelty of subject-matter that can be subsumed under a
general term in the state of the art, the question arises whether the general term makes
the claimed matter fully or partially accessible to the public. In other words, it has to be
established whether the general term used in the citation discloses the subject-matter
defined by the special term in the claim. The prior-art disclosure needs to be identified
especially carefully in such cases. General terms of this kind occur particularly frequently
in the chemical literature, which is why the relevant case law usually relates to this field.
There are two types of case here:
(a) assessing the novelty of chemical substances and groups of substances in respect of
general formulae (Markush formulae) under which they fall (see below, Chapter I.C.4.1),
and

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(b) assessing the novelty of products or processes defined by parameter ranges as

against known products or processes characterised by wider or overlapping parameter
ranges (see below, Chapter I.C.4.2).
These types differ mainly in technical terms, but the same patent-law principles apply to
both. For this reason the boards of appeal have always been able to adopt the same
approach to questions of this nature.
4.1. Novelty of chemical compounds and groups of compounds
T 12/81 (OJ 1982, 296), a decision of fundamental importance with regard to novelty in
the field of chemistry, is referred to time and again in the case law of the boards of
appeal. It states that the teaching of a cited document is not confined to the detailed
information given in the examples of how the invention is carried out, but embraces any
information in the claims and description enabling a person skilled in the art to carry out
the invention. If a product cannot be defined by a sufficiently accurate generic formula,
it is permissible to make the definition more precise by additional product parameters
such as melting point, hydrophilic properties, NMR coupling constant or the method of
preparation (product-by-process claims). From this it necessarily follows that patent
documents using such definitions will be prejudicial to the novelty of later applications
claiming the same substance defined in a different and perhaps more precise way.
Decision T 12/81 related to such a case. Summarising, the board stated that in the case
of one of a number of chemical substances described by its structural formula in a prior
publication, the particular stereo-specific configuration of the substance - though not
explicitly mentioned - was disclosed in a manner which was prejudicial to novelty, if it
proved to be the inevitable but undetected result of one of a number of processes
adequately described in the prior publication by the indication of the starting compound
and the process.
The applicant argued that the novelty of the claimed product was based on a selection.
The starting substance was chosen from a list of 20 compounds and combined with one
of the five alternative process variants. The board did not share this view, but used the
opportunity to comment on this argument and develop criteria for selection inventions
that have frequently been adopted in later decisions:
- A substance selection can come about if an unmentioned compound or group of
compounds having a formula covered by the state of the art is found, in the absence of
any information as to the starting substance or substances. The subject-matter in the
case in question, however, did not involve a selection of that kind in an area which,
although marked out by the state of the art, was nonetheless virgin territory.
- However, the disclosure by description in a cited document of the starting substance
as well as the reaction process is always prejudicial to novelty because those data
unalterably establish the end product.
- If, on the other hand, two classes of starting substances are required to prepare the
end products, and examples of individual entities in each class are given in two lists of
some length, then a substance resulting from the reaction of a specific pair from the
two lists can nevertheless be regarded for patent purposes as a selection and hence
as new.

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The board held that a combination of starting substances and process variants, however,
was quite a different matter from a combination of two starting substances, and thus not
comparable. At its simplest, if the starting substances were regarded as fragments of the
end product, then every conceivable combination of a given starting substance in the first
list with any starting substance in a separate second list of additionally required starting
substances involved a true substantive modification of the first starting substance, since
in every combination it was supplemented by a different fragment of the second starting
substance to become a different end product. Each end product was thus the result of
two variable parameters.
However, combining a given starting substance from a list of such substances with one
of the given methods of preparation did not result in a real substance alteration of the
starting substance but only an "identical" alteration. In the case in question, for example,
no matter which of the processes described in detail was used, the end product was
always the particular starting substance's hydrogenation product, which differed from the
starting substance itself only in that it contained two additional hydrogen atoms. The
process parameter was thus - seen in terms of the end product - not a variable
parameter that would result in an immense widening of the range of possibilities, so that
precisely in this case the end product was not the result of two variable parameters.
4.1.1 Anticipation of certain compounds
(a) Definition of a substance by its structural formula or other parameters
In T 12/81 (OJ 1982, 296; see above, Chapter I.C.4.1) the board stated that it is
permissible to make the definition of a chemical substance more precise by additional
product parameters such as melting point, hydrophilic properties, NMR coupling constant
or product-by-process claims if it cannot be defined by a sufficiently accurate generic
formula. From this it necessarily follows that patent documents using such definitions
will be prejudicial to the novelty of later applications claiming the same substance
defined in a different and perhaps more precise way.
In T 352/93 it was decided that a claim for an ionic compound (salt) that was defined only
by structural parameters, ie the structural formulae of the cation and anion of the
compound, was not novel over prior art disclosing an aqueous solution that contained a
base corresponding to the cation and an acid corresponding to the anion.
In T 767/95 the patent related to purified interleukin-1 having a specified molecular
weight, a specified pI and a specified amino acid sequence. The appellant/opponent
could not show that the substance disclosed in prior art document (1) and the claimed
interleukin-1 were the same protein. The board stated (a) that there were differences as
to the molecular weight, (b) that a comparison between the pI's of the substance
described in document (1) and the claimed substance was not possible under the given
circumstances, and (c) that document (1) suggested a mixture of proteins. The
semipurified nature of the preparation of document (1) was confirmed by statements in
the scientific literature. There was thus a blockage preventing the skilled person from
sequencing the material of document (1). Regardless of whether it arose from the
semipurified nature of these preparations or from the process yielding only traces of the
protein, this blockage prevented the teaching of document (1) from making available to
the public a protein having the amino acid sequence specified in the patent in suit. In
conclusion, since there was no evidence before the board that the material of

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document (1) exhibited the features of claim 1 of the patent in suit, this document did not
affect the novelty of the purified interleukin-1.
(b) Selection of starting substances from different lists
In T 401/94 the board again adopted one of the criteria for selection inventions laid down
in decision T 12/81 (OJ 1982, 296), namely, that if two classes of starting substances
were required to prepare the end products, and examples of individual entities in each
class were given in two lists of some length, the substance resulting from the reaction of
a specific pair from the two lists could be regarded for patent purposes as a selection
and, hence, as new. The board applied the above criterion to the case in question and
stated that although T 12/81 concerned the synthesis of a chemical product, and the
case in question involved the preparation of a mixture, the claimed subject-matter was
defined on the basis of two chemical entities, each of which had been selected from a list
of compounds. Hence the criteria defined in T 12/81 were applicable here too. By
analogy, the board held that in this case the claimed composition had to be viewed as a
selection, and therefore as novel, as it corresponded to a specific combination of
constituents, each of which had been selected from a relatively long list. The board
therefore concluded that there had been no implicit disclosure of the mixture of these
constituents.
In T 427/86, the prior document described a process of synthesis characterised on the
one hand by the starting substances and on the other by the catalytic system comprising
the metal constituent and the catalytic promoter; taking into account the number of
alternatives in the list of metal constituents and the list of promoters in this document, it
could contain 36 different catalytic systems. The claimed invention sought to improve the
operation of the catalytic system. It involved the selection of a very small number of
alternatives (one and two respectively) from the list of metal constituents and list of
promoters according to the prior document, the combination of which was not mentioned
anywhere in the latter. The board was of the opinion that a substance resulting from the
reaction of a specific pair from the two long lists was for patent purposes a selection and
could be regarded as new because this specific combination chosen from the wide range
of possibilities had not been disclosed by the citation. The board added furthermore that,
in view of the earlier decision T 198/84 (see Chapter I.C.4.2.1), an objective reading of
the prior art document suggested constituents of the catalytic system different from the
claimed ones. Therefore, the claimed components were not implicitly disclosed. The
board concluded that the condition of novelty had been satisfied.
In T 366/96 the patent related to a detergent composition comprising a peroxidase,
hydrogen peroxide, and a surfactant. Prior art document (12) disclosed a detergent
composition comprising surfactants, enzymes and a bleaching agent. In the list of
suitable enzymes, peroxidases were mentioned. The list of suitable bleaching agents
comprised, inter alia, inorganic peroxide.
The board found that document (12) taught a detergent composition comprising a
peroxidase and a bleaching agent. As was generally known in the art, peroxidases acted
on hydrogen peroxide as a substrate. This implied that, if the presence of peroxidases
was specified, there would also be the simultaneous presence of hydrogen peroxide. In
other words, even if one were to accept for the sake of argument that in document (12)
the peroxidase on the one hand was enumerated in one list (i.e. that of the enzymes)
and the hydrogen peroxide was mentioned in another list (i.e. that of the bleaching

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agents), to arrive at the compositions of the patent in suit would not require a "twofold"
selection from two lists which could render the resulting combination of features novel.
On the contrary, as soon as a person skilled in the art contemplated a detergent
composition containing peroxidase, he or she must also contemplate the hydrogen
peroxide precursors also disclosed in document (12) in order to ensure the supply of the
necessary peroxidase substrate hydrogen peroxide. This was not comparable to a
"twofold" selection which could render a resulting combination novel if compelling
technical necessities made a particular second component mandatory as soon as the
first component was chosen.
(c) Selection on the basis of a general formula
Prior-art disclosure is also of key importance here. In T 181/82 (OJ 1984, 401) the board
confirmed that the products of processes which were the inevitable result of a prior
description of the starting materials and the process applied thereto belonged to the
state of the art. This was true even if one of the two reactants manifested itself as a
chemical entity (C1 alkyl bromide) from a group of generically defined compounds (C1 -
C4 alkyl bromides). The board took the view that the description of the reaction of a
certain starting material with C1 to C 4 alkyl bromides disclosed only the C1-substituted
product, and was not prepared to recognise the disclosure of a particular butyl
substituent on the grounds that four isomeric butyl radicals existed.
In T 7/86 (OJ 1988, 381) the board also based its reasoning on T 12/81 (OJ 1982, 296),
stating that the principle that a substance resulting from the reaction of a specific pair
from two lists could nevertheless be regarded as new was applicable not only for starting
substances in chemical reactions but also for polysubstituted chemical substances
where the individual substituents had to be selected from two or more lists of some
length, such as in the case in question.
Following on from T 181/82 (OJ 1984, 401) it was stated in T 7/86 that if a class of
chemical compounds precisely defined only in structural terms (by a chemical reaction),
and with only one generically defined substituent, did not represent a prior disclosure of
all the theoretical compounds encompassed by an arbitrary choice of a substituent
definition, this clearly also had to be the case for a group of chemical substances, the
general formula of which had two variable groups. Therefore, a class of chemical
compounds defined only by a general structural formula having at least two variable
groups did not specifically disclose each of the individual compounds which would result
from the combination of all possible variants within such groups.
In T 258/91 the case concerned a selection from two lists of starting compounds. The
compound (formula VI) cited as taking away novelty from the patent in suit differed from
the claimed compound (formula I) by the methyl residue on the amino group in the 4-
position. In the board's judgment, the information in the cited document was not sufficient
to disclose the compound of formula I to the skilled person in the form of a concrete,
reproducible technical teaching. The board found that the cited document did not contain
any teaching involving the modification of the compound, which was mentioned only by
way of example. What was being taught was merely the preparation of a class of
compounds and not of a specific, individual compound.
In T 658/91 the board held that the case law did not suggest that a chemical compound
was deemed to be specifically disclosed only if that compound was mentioned by name
or even described in an example. On the contrary, it was sufficient if the compound could

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be unambiguously identified as envisaged in individualised form in the document in

question, since the purpose of Art. 54(2) EPC was to exclude the state of the art from
patentability.
4.1.2 Novelty of groups of substances
The case law on the novelty of generically defined compounds and particular examples
of these was summarised in decision T 12/90. The board had to consider the novelty of a
vast family of chemical compounds defined by a general structural formula, where the
prior art also disclosed a vast family likewise defined by a general structural formula, the
two families having a large number of products in common.
The board pointed out that a distinction had to be drawn between two situations:
(a) If the subject-matter of the invention was a particular compound, whereas the prior art
disclosed a family of compounds defined by a general structural formula including this
particular compound but not describing it explicitly, the invention had to be considered
novel (see T 7/86, T 85/87, T 133/92).
(b) If, with the same prior art, the subject-matter of the invention was a second family of
compounds partially covering the first, the invention was not new (see T 124/87).
As regards case (a) the board said: "That case is not comparable with the present one in
which a distinction must be drawn between the novelty of a group of substances defined
by a general formula and a second group of substances partially covering the first and
defined by another general formula, because the concept of individualisation naturally
only applies to the structural definition of a single compound, not a collection of
compounds".
Case (b) was extensively discussed in T 124/87 (OJ 1989, 491). This decision dealt with
the problem of assessing the novelty of a class of compounds defined by parameters
within numerical ranges. The patent in suit claimed a class of compounds defined by
parameters within numerical ranges while the prior document disclosed a process by
which a class of compounds could be prepared - comprising those claimed in the patent
in suit - having the combination of parameters required by the main claim of the latter.
In that particular case, the example specifically described in the prior document did not
disclose the preparation of any particular compounds within the class defined in the
claims of the disputed patent. However, it had been accepted by the patentee that a
skilled man would have no difficulty in preparing such compounds within the class
defined by the claims of the disputed patent using the process described in the said prior
document, in combination with his common general knowledge, so that the disclosure of
the prior document had to be regarded as not only limited to the particular compounds
whose preparation was described in the examples, but also as comprising the general
class of compounds made available to the skilled man in that technical teaching, even
though only certain compounds within this class were described as having been
prepared. Since the compounds as defined in the claims of the disputed patent formed a
major part of this general class, they formed part of the state of the art and therefore
lacked novelty.
In T 133/92 the question to be answered in examining novelty was whether the selection
of the alkyl group as defined in claim 1 of the disputed patent had been made available
to the public within the meaning of Art. 54 EPC with regard to the disclosure of a prior

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document. By citing T 666/89 (OJ 1993, 495), the respondents (patent proprietors)
contended that the legally correct approach for deciding selection novelty was identical
or very similar to that employed in determining obviousness. In particular, they argued
that in cases of overlapping ranges of compounds, a claim to a narrower range as
compared with a broader prior art range was always selectively novel if it could be
demonstrated that the narrow range was inventive over the broader range. However, the
board observed that in the case cited the board had repeatedly emphasised that
selection novelty was not different from any other type of novelty under Articles 52
and 54 EPC, so that the proper approach was to consider availability in the light of a
particular document. Thus the board found that a claimed group of compounds,
essentially resulting from omitting those parts of a larger group of compounds which a
skilled person would have immediately considered as being less interesting than the rest,
could not be selectively novel. In addition, in the board's opinion, a skilled person would,
having regard to these considerations, have seriously contemplated applying the
technical teaching of this prior art document in the range of overlap.
4.1.3 Novelty of enantiomers
According to decision T 296/87 (OJ 1990, 195), the description of racemates did not
anticipate the novelty of the spatial configurations contained in them; racemates were
described in the state of the art by means of expert interpretation of the structural
formulae and scientific terms; as a result of the asymmetric carbon atom contained in the
formula the substances concerned might occur in a plurality of conceivable spatial
configurations (D and L enantiomers), but the latter were not by themselves revealed
thereby in an individualised form. That methods exist to separate the racemate into
enantiomers was something that should only be considered with respect to inventive
step.
In T 1048/92 the board observed that the fact that the disclosure of the prior document
did not embrace more than two possible steric configurations did not take away the
novelty of the specific one which was claimed in the application, because there was no
unambiguous technical teaching directed to that configuration. The novelty of such an
individual chemical configuration could only be denied if there was an unambiguous
disclosure of this very configuration in the form of a technical teaching. It was thus not
sufficient that the configuration in question belonged conceptually to a disclosed class of
possible configurations without any pointer to the individual member.
In T 1046/97 the claim was directed to a specific pure enantiomer. The examining
division found that prior art document (B) disclosed a compound of the same formula as
the one claimed by the applicant but without giving any information on its stereochemical
configuration. However, in document (B) it was also stated that "all optically active forms
of the compounds described therein were enclosed in the teaching thereof." Since it
belonged to the skilled person's general knowledge to identify such mixtures and to
separate them, in the examining division's view the claimed enantiomer was not novel.
The board saw no reason to believe that a skilled person would not combine the
disclosure of that compound with the reference to the racemic, meso and optically-active
forms. However, it was established case law of the boards of appeal that the novelty of
an individual chemical compound could only be denied if there was a direct and
unambiguous prior disclosure of this very compound in the form of a technical teaching
(see T 181/82, OJ 1984, 401; T 296/87, OJ 1990, 195). It was thus not sufficient for

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denying novelty that the claimed enantiomer belonged conceptually to the group of
possible optically-active forms mentioned in document (B) unless there was a pointer to
the individual member of the group at stake. Thus, the claimed specific enantiomer being
incontestably neither a racemate nor a meso form, the assessment of novelty crystallised
on the question, whether it was directly and unambiguously derivable from the disclosure
of the compound when combined with the reference to the optically active forms.
The board held that the term "optically-active forms" was to be interpreted as embracing
any stereochemical form of the compounds disclosed in document (B), independently of
whether such property was obtained by a pure stereochemical isomer or by any mixture
of such isomers. Since document (B) provided no information about any specific
stereochemical form this disclosure must be regarded as undifferentiated, with the effect
that the reference to "all optically active forms of the compounds described therein" could
not be equated to an individualised disclosure of a specific enantiomer. The board thus
held that the specific configuration of the claimed enantiomer was not directly and
unambiguously derivable from the teaching of document (B) and that novelty had not
been destroyed.
4.1.4 Achieving a higher degree of purity
In T 990/96 (OJ 1998, 489), it had to be examined whether the feature in dispute, which
in fact represented a specific degree of chemical purity (in particular diastereomeric
purity), constituted a "new element" imparting novelty to the claimed subject-matter.
The board stated that it was common general knowledge that any chemical compound
obtained by a chemical reaction would normally contain impurities for various reasons
and that it was not possible for thermodynamical reasons to obtain a compound which
was - in the strict sense - completely pure, ie totally free of any impurity. It was,
therefore, common practice for a person skilled in the art of preparative organic
chemistry to (further) purify a compound obtained in a particular chemical manufacturing
process according to the prevailing needs and requirements. Conventional methods for
the purification of low molecular organic reaction products, which could normally be
successfully applied in purification steps, were within the common general knowledge. It
followed that, in general, a document disclosing a low molecular chemical compound and
its manufacture made this compound available to the public within the meaning of
Art. 54 EPC in all grades of purity as desired by a person skilled in the art.
Exceptional situations might exist which could justify a different conclusion. For example,
there could be a situation where it was proved on the balance of probability that all prior
attempts to achieve a particular degree of purity by conventional purification processes
had failed.
In T 728/98 (OJ 2001, 319), the applicant (appellant) argued that the situation was such
an exceptional one as mentioned in T 990/96. The claimed pharmaceutical composition
differed from the state of the art because the particularly high purity level of the
compound it contained could not be achieved by conventional methods.
The board found, however, that the applicant, who bore the burden of proving this
allegation, had not provided the necessary evidence. In fact, the prior-art teaching
yielded significant, even if small, quantities of the substantially pure compound using
conventional purification methods. The general rule therefore applied that achieving a

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particularly high level of purity of a known compound was not a feature to be regarded as
imparting novelty to such a product over the prior art.
In T 786/00 the arguments submitted by the respondent (opponent) with respect to
T 990/96 (OJ 1998, 489) were not convincing, since that decision could not be applied to
the present case. In contrast to T 990/96, the present case related to a process for the
manufacture of polymers having specific properties (ie resistance to boiling water),
characterised by the use of organic compounds having a required purity as starting
components. In other words, the purity level of the starting components was an essential
technical feature of the process, which could only be carried out in the required range of
purity but not in all available grades of purity of the starting materials. In the board's view,
there was a fundamental difference between the purity requirements presumed to exist
for the isolation of a final product, and those for the starting materials used in a
preparative process. By contrast, in T 990/96 the concern with starting materials was the
precise opposite, in that it involved a mixture of stereo isomers which could be separated
by fractional crystallisation so that the product resolved into two optically pure
enantiomers with the aim of achieving an ultimate degree of purity. In that connection,
the concern of the skilled person had to be presumed to be the use of the most impure
starting materials possible consistent with the aim of obtaining a sufficient yield of
product, which itself could be further purified. Consequently, the general statements in
T 990/96 concerning the purity of final products could not be applied directly to starting
materials or, hence, to the present case.
In T 112/00 the board considered a composition including a solvent having a purity
greater than 99% to be new over a prior art composition containing such a solvent whose
purity was not specified. The board stated that the claimed composition could be
considered as a final product and the solvent as the starting material. As in T 786/00,
novelty would be established by the defined purity of the starting material.
The issue in T 803/01 was the novelty of a pharmaceutical composition which differed
from prior-art compositions only in the degree of purity of one of its components. In the
board's view each and every purification method, provided it was "conventional" but
regardless of the extent of purification sought, was presumed to be automatically
available to the public, and that in a fully enabling way, so as to amount to an effective
novelty-destroying disclosure. As stated in T 100/00 in this respect, the term
"conventional" could only mean "conventional in view of the concrete technical context
concerned". Therefore the question of whether the degree of purity for the polylactide
required in claim 1 provided a new element over the prior art had to be assessed in the
concrete technical context concerned.
The board concluded in this case that the methods of purification described in document
D2 - which had to be regarded as the relevant "conventional purification processes" in
the concrete technical context concerned - would not succeed in providing the required
degree of purity. Nor was there any ground for concluding that other "conventional"
methods of purification would be capable of delivering the required degree of purity
either. The board thus decided that there was a new element in the feature of a defined
level of purity as set out in claim 1.

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4.2. Selection of parameter ranges

4.2.1 Selection from a broad range
The principles applied by the boards of appeal as part of their established case law on
the novelty of selection inventions were developed in particular in T 198/84 (OJ 1985,
209). They are summarised briefly in T 279/89, according to which a selection of a sub-
range of numerical values from a broader range is new when each of the following
criteria is satisfied:
(a) the selected sub-range should be narrow;
(b) the selected sub-range should be sufficiently far removed from the known range
illustrated by means of examples;
(c) the selected area should not provide an arbitrary specimen from the prior art, ie not a
mere embodiment of the prior description, but another invention (purposive selection).
The three postulates for the novelty of a selected sub-range are based on the premise
that novelty is an absolute concept. It is therefore not sufficient merely for the wording of
the definition of an invention to be different. What has to be established in the
examination as to novelty is whether the state of the art is such as to make the subject-
matter of the invention available to the skilled person in a technical teaching (T 198/84,
OJ 1985, 209; see also T 12/81, OJ 1982, 296; T 181/82, OJ 1984, 401; T 17/85,
OJ 1986, 406).
With reference to the third criterion, the board in T 198/84 was of the opinion that this
view of novelty really entailed more than just a formal delimitation vis-à-vis the state of
the art. There would be delimitation only in respect of the wording of the definition of the
invention, but not in respect of its content, if the selection were arbitrary, ie if the selected
range only had the same properties and capabilities as the whole range, so that what
had been selected was only an arbitrary specimen from the prior art. This was not the
case if the effect of the selection, eg a substantial improvement in yield, occurred in all
probability only within the selected range, but not over the whole known range (purposive
selection).
To prevent misunderstanding, the board emphasised, following T 12/81 (OJ 1982, 296),
that a sub-range singled out of a larger range was new not by virtue of a newly
discovered effect occurring within it, but had to be new per se. An effect of this kind was
not therefore a prerequisite for novelty; in view of the technical disparity, however, it
permitted the inference that what was involved was not an arbitrarily chosen specimen
from the prior art, ie not a mere embodiment of the prior description, but another
invention (purposive selection).
In T 17/85 (OJ 1986, 406) the novelty of the claimed range was denied because the
preferred numerical range in a citation in part anticipated the range claimed in the
application. A claimed range could not be regarded as novel, at least in cases where the
values in the examples given in the citation lay just outside the claimed range and taught
the skilled person that it was possible to use the whole of this range.
In T 247/91, in deciding the question of the novelty of an invention, the board
emphasised that consideration had to be given not only to the examples but also to
whether the disclosure of a prior art document as a whole was such as to make available

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to the skilled person as a technical teaching the subject-matter for which protection was
sought. The board stated that it was accepted by the appellant (patent proprietor) that a
skilled reader of the cited document had no reason to exclude the range of 85 to 115°C
claimed in the patent in suit when carrying out the invention disclosed in the citation. The
teaching of the cited document was clearly not limited to the use of the exemplified
temperatures, but extended to the whole described temperature range of 80 to 170°
which had been made available to the skilled person as a technical teaching. The
subject-matter of the patent in suit lacked novelty.
In T 406/94 the board found that the percentage range cited in the prior art, although
numerically close to the claimed range, could not be adduced to anticipate the subject-
matter claimed because the percentage cited in the prior art was based on different
starting materials.
In T 209/94, although the temperature ranges of pyrolysing steps to be carried out for
preparing fibres overlapped ("greater than about 1600°C" according to the invention and
"from 900 to 1800" according to the prior art document), the functional limitation of the
pyrolysing step established by the statement introduced into claims 1 and 2 of the
application at issue - "for a period of time sufficient to reduce oxygen and/or nitrogen
content of the fibres to below about 0.5% by weight" - distinguished the claimed process
from the process according to the prior art document. Indeed, the board concluded from
the latter document that the presence of nitrogen (and boron) in the fibres in certain
amounts was essential for their temperature stability. Since this improved thermal
stability of the fibres was the very object of the invention disclosed in the prior art, fibres
which would not have met this requirement could not have been considered to be within
the teaching of this document. This meant, by implication, that fibres having a nitrogen
and/or oxygen content which was too low to produce the desired thermal stability were
not within the scope of the invention disclosed in the prior art: the lowest value disclosed
in the prior art document was 3.89%, whereas according to the application at issue the
maximum amount permitted was 0.5%.
In T 610/96 the patentee/respondent claimed a magnetoresistive material comprising
magnetic and non-magnetic metallic thin film layers. The board found that the claimed
ranges defining the composition of these layers must be considered as a narrow
selection of the generic disclosure of prior art document D10, which did not overlap with
the sub-ranges preferred in D10 and which further selected a specific non-magnetic layer
among a group of possible layers. This selection also was sufficiently far removed from
the specific examples of D10. Furthermore, the claimed material showed different
characteristics of the magnetoresistance change, so that the specific sub-range was not
simply an arbitrary part of the generic disclosure of D10, but was of a different nature
and therefore novel. The criteria for selection inventions set out in T 279/89 were thus
satisfied. Moreover, since a passage of D10 might be seen as a statement dissuading
the skilled person from applying the concept of D10 in the sub-range of the contested
patent, the person skilled in the art would not seriously contemplate applying the
teaching of D10 in this range (see T 26/85, OJ 1990, 22).
4.2.2 Overlapping ranges
In decision T 666/89 (OJ 1993, 495) the board gave a ruling on novelty assessment in
cases of overlapping numerical ranges. The patent related in particular to a shampoo
comprising 8-25% anionic surfactant and 0.001-0.1% cationic polymer. In an earlier

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patent application a shampoo composition had been disclosed containing 5-25% anionic
surfactant and 0.1-5.0% cationic polymer.
The board held that the composition was not new. In the board's view, there was no
fundamental difference between examining novelty in situations of so-called "overlap" or
"selection", and in doing so in other situations, although it might be helpful, in order to
verify a preliminary conclusion of a novelty examination in cases of overlap, to
investigate whether or not a particular technical effect was associated with the narrow
range in question. It needed to be stressed, however, that such a particular effect was
neither a prerequisite for novelty nor could it as such confer novelty; its existence could
merely serve to confirm a finding of novelty already achieved. The term "available" in
Art. 54(2) EPC clearly went beyond literal or diagrammatical description, and implied the
communication, express or implicit, of technical information by other means as well.
Thus it was clear that matter that was hidden, not in the sense of being deliberately
concealed but rather in the sense of being reconditely submerged in a document, would
not have been "made available" in the above sense. In the case of overlapping ranges of
physical parameters between a claim and a prior art disclosure, what would often help to
determine what was "hidden" as opposed to what had been made available was whether
or not a skilled person would find it difficult to carry out the prior art teaching in the range
of overlap. A similar approach was to consider whether a person skilled in the art would,
in the light of all the technical facts at his disposal, "seriously contemplate" applying the
technical teaching of the prior art document in the range of overlap.
Realising that the concept of "seriously contemplating" moving from a broad to a narrow
(overlapping) range seemed akin to one of the concepts used by the boards for
assessing inventive step, namely, whether the notional addressee "would have tried,
with reasonable expectation of success", to bridge the technical gap between a particular
piece of prior art and a claim whose inventiveness was in question, the board added that
its novelty concept was fundamentally different from this "inventive-step concept"
because, in order to establish anticipation, there could not be a gap of the above kind.
Novelty was carefully analysed on the basis of comparable considerations in T 366/90
and T 565/90.
Decision T 26/85 (OJ 1990, 22) suggested, as a specific test for determining whether a
technical teaching had been made available to the public, posing the question whether
the person skilled in the art would in the light of the technical facts seriously
contemplate applying the technical teaching of the prior art document in the range of
overlap. If it could be fairly assumed that he would do so, it had to be concluded that no
novelty existed. This formulation of the question was adopted inter alia in T 279/89,
T 666/89, T 255/91 (OJ 1993, 318), T 369/91 of 7.10.1992, T 631/92 and T 660/93.
In T 751/94 the board regarded it as clear that the method according to the cited
document was not to be carried out in the overlapping range, and consequently novelty
was not destroyed by the overlap. In addition, the combination of parameters in the
claimed invention was not disclosed in, and was not clearly derivable from, the cited
document.
In T 240/95 the appellant had argued that 0.5 to 60 minutes would not include 60
minutes as such inclusion would have to be worded "0.5 up to and including 60 minutes."
The board held that, in accordance with established case law, disclosure of a range was

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considered to be an explicit disclosure of the end values (see also Guidelines C-IV,
7.7 (iii) - June 2005 version).
In T 594/01 the main request and the first auxiliary request claimed processes for the
preparation of ethylene glycols whereby the processes were to be performed with less
than 0.1 wt% of carbon dioxide in the reaction mixture. The board had to decide whether
there was an overlap between that carbon dioxide range and the carbon dioxide value of
0.1 wt% disclosed in example No. 4 of a document which described a method of
preparation of ethylene glycol ("document 1").
The board stated that it was common general knowledge that every experimental
measurement in quantitative analytical chemistry as well as any result of any physical
measurement cannot be dissociated from the margin of uncertainty attached to the
measurement. Normally, the uncertainty of a measured experimental value is irrelevant
for the assessment of novelty. However, when a specific experimental value is disclosed
in an example of prior art, seeking to distinguish the claimed subject-matter therefrom
only in terms of an upper limit to be required to be "lower than" the experimental value
must fail as the claimed subject matter is still not distinguishable from the prior art within
the margin of experimental error. Therefore, the carbon dioxide range defined in the
main and first auxiliary requests, namely "lower than 0.1 wt%", did not distinguish it from
the experimental carbon dioxide concentration of 0.1 wt% disclosed in example No. 4 of
document (1).
The board applied the same reasoning to the second and third auxiliary requests which
claimed processes for the preparation of alkylene glycols whereby the processes were to
be performed with less than 0.01 wt% of carbon dioxide in the reaction mixture. Example
No. 2 of document (1) disclosed a method of preparation of propylene glycol which
involved 0.01 wt% of carbon dioxide in the reaction mixture. The claims failed for lack of
novelty.
4.2.3 Multiple selection
In T 245/91 the appellants (patent proprietors) contested the respondent's lack of novelty
objection in the light of the disclosure in a prior document and contended that the
subject-matter of claim 1 amounted to the purposeful selection of a small area from the
very broad disclosure in the said document. The board observed that most of the ranges
in claim 1 of the patent in suit could be obtained by narrowing down the ranges
according to the cited document by approximately 25 to 80% and restricting them to their
central portion, and that in a situation like this, where several ranges of parameters were
to be considered, a careful comparison had to be carried out in order to assess whether
or not the subject-matter of the claimed invention was available to the skilled person. Any
obviousness considerations were to be strictly avoided. Referring to T 666/89 (OJ 1993,
495), the board emphasised that under the EPC novelty had to be decided by reference
to the total information content of a cited prior art document. In the board's judgment, the
combination of the relevant features would not have been seriously contemplated by the
skilled reader and was not made available to him, because the said features were not
prominent in the cited document and did not therefore lend themselves to an
unambiguous, implicit disclosure. A further point to consider was the number of
parameters used to define the claimed subject-matter, since each of the ethylene
polymers was characterised by several parameters. The board held that even if most of
the ranges for these parameters corresponded to a more or less central portion of the

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range limiting the corresponding parameter in the composition according to the cited
document, because of the number of parameters involved, which exceeded ten, the
scope of the claimed blends was in reality quite narrow with regard to the breadth of the
definition of the known composition. This was also the reason why the argument that
there had been an implicit description of this narrow selection in the prior document was
not accepted.
In case T 653/93, the appellant (applicant), whose application had been refused by the
examining division, argued that the process of claim 1 was novel as it referred to a
combination of three process features with selected ranges and product features with
specific limits, a combination not disclosed in the prior art document.
The board of appeal emphasised that in such situations the question of novelty could not
be answered by contemplating the ranges of the various parameters separately. This
would, in the board's judgment, be an artificial and unjustified approach, since it was not
the specified ranges of the three parameters or their agglomeration that formed the
subject-matter of claim 1, but the group of processes defined by the combination of these
ranges, which was rather small when compared with the group of processes disclosed in
the prior art document.
Thus the claimed group of processes, characterised by the combination of three specific
process parameters, was not explicitly disclosed in the prior art document and therefore
could be said to result from a "multiple (ie threefold) selection". The person skilled in the
art, when applying the teaching of the prior art document, would not have had any
reason to concentrate on the combination of the sub-ranges as defined in claim 1, eg
because the omitted parts of the ranges disclosed in the prior art document could be
recognised as of lesser interest. Since there was no indication to this effect, the
"combined selection" did not emerge from the prior art document as being implicitly
disclosed for the skilled person.
The novelty of the technical teaching of claim 1 was corroborated by experimental
evidence showing that the products resulting from the claimed processes could not have
been obtained by processes which were close to but nevertheless outside the range of
the processes claimed. Moreover, the combination of properties of the products obtained
by the claimed processes was not the inevitable result of the process disclosed in the
prior art document but was obtained only by a particular combination of process
parameters. It followed that the subject-matter of claim 1 was not considered as having
been disclosed in the prior art document.
In T 65/96, there was no mention in prior art document D2 of a rubber-reinforced
copolymer having the combined features forming the solution of the technical problem
addressed in the opposed patent. The board pointed out that the argument of the
appellant (opponent) that all the relevant parameters had been mentioned "within a few
lines" was irrelevant, because the location within the document of a disclosure did not in
itself suffice to show the true contextual relationship of the parameters, let alone
establish that they were disclosed in combination, as required by the solution of the
technical problem. In any case, one of the parameters was referred to in a quite separate
section of the disclosure.
Furthermore, closer examination of D2 showed that the parameters of amount of rubber
and particle size of rubber were merely disclosed as independent ranges without any
indication as to how, or indeed whether, they might vary in relation to one another. Whilst

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it was conceded by the respondent at the oral proceedings that D2 disclosed ranges
partly overlapping with those defined in the solution of the technical problem, the latter
required the simultaneous fulfilment of three values of the same parameters.
The board came to the conclusion that the claimed solution was not arbitrary since it
solved a specific technical problem compared with the products according to D2. Hence,
the claimed solution, to the extent that it overlapped at all with the general disclosure of
D2, represented a narrow selection therefrom and fulfilled all the requirements of a true
selection (see T 198/84, OJ 1985, 209).
4.3. Subject-matter group
T 763/89 looked at selection from a generically defined group of multilayer materials. The
patent related to a reversal colour photographic material comprising three layers having
differing colour sensitivity, each layer comprising a further three layers having the same
colour sensitivity but differing photographic sensitivity. The closest prior art consisted of a
reversal material with "at least two" layers. The opponent had argued that the multilayer
materials disclosed by this prior art also included the three-layer material claimed,
therefore causing lack of novelty. The board, however, held that it was new: although "at
least two" was synonymous with a multilayer material and set the lower limit in the form
of a double-layer material (the description related to any multilayer material without
specifying an upper limit for the number of possible layers), the only theoretical examples
given for such multilayer materials were double-layer materials. Nor did the documents
cited in support of the opposition as much as hint at a three-layer material. It might
appear logical for a three-layer material to form part of the group of multilayer materials
in the cited documents, but this did not mean that it was thereby disclosed. On the
contrary, it was a new material forming part of this group and selected from it.
The board gave this ruling in the context of previous case law on selection inventions
involving chemical substances. This had laid down that a technical teaching was
prejudicial to novelty if it disclosed a substance in individualised form, ie one clearly
distinguishable from structurally similar substances. This principle for assessing the
novelty of individuals as distinct from a group could be applied to things such as the
photographic material in question, which was clearly distinguishable from other things
forming part of the same generically described group.
5. Novelty of use
I.C.5. Novelty of use

5.1. First medical use

5.1.1 Introduction
Methods for the surgical or therapeutical treatment of the human or animal body and
diagnostic methods practised on the human or animal body ("medical methods") are not
regarded as inventions susceptible of industrial application (see Art. 52(4), first
sentence, EPC). Art. 54(5) EPC provides that the general rules of law relating to novelty
(Art. 54(1) to (4) EPC) do not exclude the patentability of any substance or composition,
comprised in the state of the art, for use in a method referred to in Art. 52(4) EPC,
provided that its use for any method referred to in that paragraph is not comprised in the
state of the art. Thus in addition to the general concept of novelty (Art. 54(1) to (4) EPC)
this article introduces, in respect of substances and compounds used in surgical and

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therapeutic treatment and in diagnostic processes carried out on humans and animals, a
special concept of novelty unknown in other technical fields (T 128/82, OJ 1984, 164).
For the first medical use of a known substance, Art. 54(5) EPC provides a particular form
of claim (purpose-related product claim). In G 5/83 (OJ 1985, 64) the Enlarged Board
observed that the inventor of a "first medical indication" could obtain purpose-limited
product protection for a known substance or composition, without having to restrict
himself to the substance or composition when in a form technically adapted to a
specified therapeutic purpose. The appropriate protection for him was, therefore, in its
broadest form, a purpose-limited product claim. No problem arose over its susceptibility
of industrial application, within the meaning of Art. 57 EPC.
5.1.2 Scope of a purpose-related product claim
In T 128/82 (OJ 1984, 164) the board considered the question of a first medical
indication (first medical use of a known substance) with regard to the breadth of the
purpose-related product claim. The examining division had refused the application on the
grounds that it failed to fulfil the requirements of Articles 52(4) and 54(5) EPC as the
claims were not limited to the specific therapeutic use of the known compounds as first
discovered. The board had to consider whether the broad version of the claims was
allowable having regard to Art. 54(5) EPC and, in particular, whether the EPC offered a
basis for a limited statement of therapeutic purpose susceptible of narrow interpretation.
In the opinion of the board the EPC neither prohibited nor required an unlimited
statement of purpose. It held that Art. 54(5) EPC permitted a purpose-limited substance
claim stating a general therapeutic purpose and found that where a known compound
was for the first time proposed and claimed for use in therapy, the fact that a specific use
was disclosed in the specification did not in itself call for a restriction of the purpose-
limited product claim to that use (see also T 43/82 and T 36/83, OJ 1986, 295). The
board further observed that the practice of the EPO hitherto had shown that substance
and medical preparation claims for therapeutically active compounds not limited to
specific indications were allowed, even though as a rule only certain specific activities
were stipulated. As a general rule, this practice concerned new compounds. In the
board's judgment, it could not be inferred from the EPC that compounds, which -
although previously known - were still patentable under Art. 54(5) EPC, were in principle
to be treated differently. If an inventor was granted absolute protection in respect of a
new chemical compound for use in therapy, the principle of equal treatment would also
require an inventor, who for the first time made a known compound available for therapy,
to be correspondingly rewarded for his service with a purpose-limited substance claim
under Art. 54(5) EPC covering the whole field of therapy. Any other treatment would
only be justified were Art. 54(5) EPC to forbid outright a broad scope of protection. The
fact that Art. 54(5) EPC did not contain any requirement that protection should be broad
was not in itself a reason for refusing to grant such protection. As a general rule, the
usual practice as it related to new compounds should be followed. On the other hand,
the mere fact that there were no instructions concerning all and any possible specific
therapeutic applications did not justify limiting the scope to the therapeutic application
actually mentioned. This would not be in keeping with general EPO practice concerning
therapeutically active compounds.
The board noted that under Art. 54(5) EPC a compound which was known but not used
therapeutically was to be regarded as novel. Novelty, however, was not only destroyed
by the fact that the same specific therapeutic effect was already known in the art, but

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suffered also from the disclosure of any other specific therapeutic application. The
disclosure of any specific effect, therefore, always had the same consequences as far as
novelty was concerned - which in turn made it fair to regard as admissible a broad
statement of purpose covering all and any specific indications.
5.1.3 Protection of a preparation in the form of a "kit-of-parts"
In T 9/81 (OJ 1983, 372) the board held that combined preparations the individual
components of which represented known therapeutic agents might be protected in a
formulation corresponding to Art. 54(5) EPC even when claimed as a kit-of-parts,
providing those components formed a functional unity (true combination through a
purpose-directed application. Claim 1, which was drawn up in the form stipulated in
Art. 54(5) EPC, referred to a combined preparation containing an oxazaphosphorin
cytostatic agent and the sodium salt of 2-mercapto-ethane-sulphonic acid as therapeutic
active ingredients. The first-mentioned component of the product was known, and the
second was a known mucolytic agent. According to the documentary prior art available
to the board, the two active ingredients had never been used together for a new joint
effect and were unknown as a composition. The active ingredients which were
administered preferably at the same time according to the invention did not therefore
represent a mere aggregate of known agents, but a new combination with the surprising,
valuable property that the severe side-effects to be expected when administering the
cytostatic agents were absent as a result of the detoxifying effect of the sodium 2-
mercapto-ethane-sulphonate.
Claim 1 referred to a product which was limited to simultaneous, separate or sequential
use in cytostatic therapy. In the board's judgment, it followed from this indication of
purpose that the components were no longer necessarily present as a union, eg in
composition, since the components would not otherwise be available for separate or
sequential application. The board stated that as a kit-of-parts, however, it was not
necessarily a true combination in view of the physical separation of the individual
components. The mere loose association of known components did not in itself turn
them into a functional unity in which a necessary and direct interaction between the
components was a precondition for the purposive use (eg lock and key, match and
striking surface, two-component adhesive). Although the components in the claimed
combination did not enter into such direct interaction with each other, the indication of
purpose for the combined therapy might re-establish the unity of the product as a
functional amalgamation of its two components, if it represented a genuine restriction to
the specified application. In so far as the components could not attain the advantageous
effect according to the invention independently of each other, the joint effect justified the
unity of the combined product as a result of the limitation by the indication of purpose of
the area of protection of the claim under the conditions laid down in Art. 54(5) EPC, even
if the components were presented side-by-side and not as a union. Since the individual
components of the combined product in the present claims had themselves known
therapeutic applications, these claims, by expressly including the separate presentation
of those components, were indeed to be regarded as limited to the joint use of the
combined products, so that the individual applications according to the state of the art
were excluded.

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5.1.4 Further technical information as compared with the state of the art
In T 1031/00 claim 1 was directed to the first medical use of (-) amlodipine, namely the
treatment of hypertension. However, the prior art document already showed the ability of
(-) amlodipine to inhibit calcium ion influx into rat aorta tissue in vitro as indicative of its
effectiveness in the treatment of hypertension. It also disclosed that amlodipine was then
undergoing phase III clinical trials for hypertension.
The board found that, in spite of the numerous examples in the description of the patent
application, only one dealt with hypertension but without going further than in vitro
experiments. Thus the description provided no further evidence or data showing the
actual antihypertensive effect of the (-) isomer of amlodipine in humans or animals than
did the prior art. The board observed that, in the absence, in the patent application as
originally filed, of any data providing additional technical information in relation to the
actual treatment of hypertension in humans or animals compared with the disclosure in
the prior art document (3), it had to be concluded that the subject-matter of the patent
application was anticipated by the disclosure in that document; in other words,
document (3) disclosed the same medical use as the application at issue.
5.2. Second (or further) medical use
5.2.1 Formulation of claims
(a) Use of a substance or composition for the manufacture of a medicament
The question of law which was referred to the Enlarged Board in G 5/83 (OJ 1985, 64)
(see also G 1/83, OJ 1985, 60 and G 6/83, OJ 1985, 67) arose essentially because of
the particular exclusion from patentability in relation to "methods for treatment of the
human or animal body" set out in Art. 52(4), first sentence, EPC, and the exception to
the novelty requirement set out in Art. 54(5) EPC. In the field of medical or veterinary
inventions, the normal type of use claim is prohibited by Art. 52(4) EPC, but
Art. 54(5) EPC expressly provides for an exception to the general rules governing
novelty (Art. 54(1) to (4) EPC) in respect of the first medical or veterinary use of a
substance or composition, by allowing a claim to the substances or compositions for that
use.
The Enlarged Board did not accept claims directed to the use of a known substance X
for the treatment of disease Y, because such a claim would relate to a medical method
which was not patentable under Art. 52(4) EPC. However, it allowed claims of the type
"use of substance X for the manufacture of a medicament for therapeutic
application Y" (so-called Swiss-type claim). The Enlarged Board derived the novelty of
such claims from their sole new feature, that is the new pharmaceutical use of that
known substance. The Enlarged Board found that no intention to exclude second (and
further) medical indications generally from patent protection could be deduced from the
terms of the EPC. As a result, the Enlarged Board considered that it was legitimate in
principle to allow claims directed to the use of a substance or composition for the
manufacture of a medicament for a specified new and inventive therapeutic application,
even where the process of manufacture as such did not differ from known processes
using the same active ingredient.

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(b) Process for the manufacture of a medicament

In T 51/93 the board found that document (4) anticipated process claim 1 put forward in
the set of claims for Austria (AT), Spain (ES) and Greece (GR), as the novelty of the
intended use of the product could only be taken into account as a technical feature
limiting the claim where the claim took the form of a use claim as approved in decision
G 5/83. The use claim as approved in decision G 5/83 emphasised that the intended use
was a technical feature to be taken into account in assessing novelty, and which limited
the claim. The board stated that normally, however, in a claim to a "Process for making X
for use Y comprising the steps [...]" the process claim was interpreted as covering the
particular process of making X irrespective of whether that X was to be used for use Y or
not. Thus, in such a process claim the wording "for use Y" was intended not as a
distinguishing technical feature but merely as an illustration of what X could be used
for. Consequently the board considered that in the process claim 1 for AT, GR and ES
the words "for use in the treatment by subcutaneous administration [...]" were to be
treated in accordance with common practice for process claims as merely illustrative and
not as a restrictive technical feature capable of establishing novelty. The board further
stated that, for the purpose of assessing novelty in EPO proceedings, the interpretation
to be given to a claim had to be the same irrespective of the contracting states for which
the claim was put forward. The fact that the contracting states AT, ES and GR had, for a
time, laws restricting claimable subject-matter, could not, where the prior art was the
same for all designated states, lead to a claim being interpreted as novel and allowable
for these states if it was not also novel and allowable for all other contracting states.
Thus the fact that process claim 1 was put forward only for AT, ES and GR did not assist
the appellant.
In T 893/90, however, a board of appeal had come to a different conclusion. The claims
were formulated as method claims, namely as a method of producing a pharmaceutical
composition for controlling bleeding in non-haemophilic mammals characterised by
admixing the two components in functionally defined amounts and proportions. In the
board's judgment, the said claims did not substantially differ in their formulation from
use claims, ie from claims directed to the use of the mixture of the two components in
functionally defined amounts and proportions for the stated purpose, namely for
producing a pharmaceutical composition for controlling bleeding in non-haemophilic
mammals. In this respect, it was also observed that, according to claim 1, the mixture
excluded other physiologically active materials; thus, the said mixture was well-defined in
terms of its components. The board concluded that the claims were thus in accordance
with established EPO case law that claims are allowable directed to the use of a
substance or composition for the manufacture of a medicament for a specified new and
inventive therapeutic application, even if the process of manufacture as such does not
differ from known processes using the same active ingredient(s) (see G 5/83, OJ 1985,
64).
In T 958/94 (OJ 1997, 242), the examining division had refused the claims for Greece
and Spain on the grounds that because they were directed to a process rather than an
application or use they were not in the "second medical indication" form stipulated by the
Enlarged Board of Appeal in G 5/83 (OJ 1985, 64). The examining division had taken the
view that the novelty of "the use of a substance for the manufacture of a medicament"
was linked to formal requirements and that given the order of decision G 5/83 on the
protection of the second medical indication, only use claims - not process ones -

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fulfilled those requirements. The appellant (applicant) had filed an appeal against that
decision, requesting that the decision to refuse the application be set aside.
The board noted that Enlarged Board decisions G 1/83, G 5/83 and G 6/83 made no
mention of requirements of form or category governing claims directed to a
medicament's second therapeutic indication. In the board's view the French wording
"revendications ayant pour objet" used in decision G 6/83 (OJ 1985, 67) referred not to
the formal aspect of the category of a claim but rather to its substance, ie the definition of
the claimed invention in terms of its essential features. Parallel decisions G 1/83 (OJ
1985, 60) and G 5/83 (OJ 1985, 64) in German and English used the words
"Patentansprüche gerichtet auf" and "claims directed to" rather than "Gegenstand" or
"subject-matter", which also showed that the determining factor was not the wording or
category chosen for the claim but its substance, namely the technical feature which
formed the essence of the invention claimed (use of the substance in question). This
interpretation was confirmed by the reasons for decisions in G 1/83, G 5/83 and G 6/83.
In point 11 of the reasons for decision G 5/83 (first paragraph) the Enlarged Board held
that an invention relating to an activity could be claimed either as the application or use
of a thing for a stated purpose (eg to achieve a technical result) or as a method or
process to achieve the same result using the same thing, depending on the applicant's
preference. Either type of claim also involved a sequence of steps giving rise to the final
effect. In terms of use, therefore, there was no difference of substance. This general rule
also applied in the field of therapy. There was no discernible substantive difference
between a claim for the use of a substance or composition for the treatment of the
human or animal body by therapy and a claim directed to a method of treatment of the
human or animal body by therapy. The sole difference was in the wording, as was
emphasised by the Enlarged Board in point 13 of the reasons for decision G 5/83. Thus,
manufacturing a medicament did indeed involve a sequence of common and obligatory
steps, irrespective of the form of the claims which circumscribed its manufacture, and
whether the claims were for the "application of a substance to obtain a medicament
intended for a new therapeutic use" or for a "process to obtain a medicament intended
for the new application, characterised in that the substance is used". Although the active
substance per se, the medicament and the process for its manufacture were already
known, the Enlarged Board in decisions G 1/83, G 5/83 and G 6/83 allowed a claim for
preparing the medicament for the new therapeutic indication and directed to the
substance's use in manufacturing the medicament intended for that new therapeutic
indication. In the same conditions - ie where the active substance, the medicament and
the process for its manufacture all lacked novelty - it would therefore be unjustified to
regard a claim of the type "method for manufacturing the medicament intended for the
new therapeutic indication" as not patentable, given that a claim for the use of a
substance to manufacture a medicament intended for a new therapeutic use and a claim
for a method of manufacturing the medicament intended for the new use and
characterised in that the same substance was used were substantively equivalent.
This decision endorses the approach already outlined in T 893/90. This approach was
also confirmed in the decisions on this issue which followed (T 853/94, T 532/96,
T 1076/00, indirectly also in T 825/94).

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(c) Further issues relating to claim formulation and construction

In T 570/92 the board allowed a claim which took the form of a claim to a second medical
use of a known substance and referred to a substance which had not previously been
described in concrete terms. In line with G 5/83, what was claimed was the use of that
substance for the manufacture of a long-lasting medicament for the oral treatment of
hypertension, to be administered once or twice daily. The latter feature, concerning the
administration of the medicament, did not lead to exclusion from patentability under
Art. 52(4) EPC. The wording used served not to indicate to the doctor the frequency of
administration actually intended when treating an individual patient, but merely to convey
the teaching that the success of the treatment was assured if the medicament was
administered not more than twice a day (for features concerning the administration
regimen, see also Chapter I.C.5.2.2.(b)).
In T 143/94 (OJ 1996, 430) the board found that a claim directed to the use of a substance
or composition for the production of a medicament for a therapeutic application did not
conflict with Art. 52(4) or 57 EPC (see above G 5/83); this was true irrespective of what
purpose the claim served (protection of a first medical use of a substance or composition,
or protection of a further medical use). Accordingly, prior evidence of a further medical
use was not required for this form of claim to be included in a patent application.
In T 138/95 the Swiss type claim format was admitted for the manufacture of a medical
device.
In T 4/98 (OJ 2002, 139) the independent claims were drawn up in the form of "Swiss
type" claims. However, the feature considered by the opposition division to be a
specified new therapeutic application related to the administration of an unspecified
therapeutic compound in liposome-entrapped form, in an amount which was at least
three (or ten) times the therapeutically effective amount of the said unspecified
therapeutic compound, to treat an unspecified illness or disease in an unidentified
subject. The board held that in accordance with the principles in G 5/83 (OJ 1985, 64)
and subsequent case law, the concept of second or further medical use can only be
applied to claims to the use of substances or compositions for the preparation of a
medicament intended for use in a method referred to in Art. 52(4) EPC. It noted that the
concept of "therapy" or "therapeutic application" includes treatment of a particular illness
or disease with a specified chemical substance or composition in a specified human or
animal subject in need of such treatment and that in the absence of the identification of
at least (i) the illness or disease to be treated or the ailment to be cured or (ii) the
nature of the therapeutic compound used for treating or curing the disease or (iii) the
subject to be treated, a mere process feature could not be construed as specifying a
particular method of treatment or therapeutic application within the meaning of Art. 52(4)
EPC. Thus the board came to the conclusion that the subject-matter of the independent
claims was accordingly to be understood as relating to a non-therapeutic technical
activity (process). The "three times dosage" feature could then only be construed as one
of the process features characterising the claimed process (see also T 1020/03 below,
where the "therapy" definition in T 4/98 was questioned).
5.2.2 Novelty of the therapeutic application
(a) New therapeutic application based on the group of subjects to be treated
The board of appeal applied the principles of decision G 5/83 (OJ 1985, 64) in case
T 19/86 (OJ 1989, 25). It had to decide whether the application of a known medicament

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for the prophylactic treatment of the same disease in an immunologically different

population of animals of the same species could be considered a new therapeutic
application from which novelty for the claims could be derived. According to decision
T 19/86 the question of whether a new therapeutic use was in accordance with decision
G 5/83 should not be answered exclusively on the basis of the ailment to be cured but
also on the basis of the subject (in the case in question, the new group of pigs) to be
treated. A therapeutic application was incomplete if the subject to be treated was not
identified; only a disclosure of both the disease and the subject to be treated
represented a complete technical teaching. The proposal according to the application to
protect animals which could not hitherto be protected from the disease in question, by
intranasally administering to them a known serum, could not be considered disclosed in
the prior art and therefore constituted a novel therapeutic application in accordance with
the above-mentioned decision of the Enlarged Board (see also T 893/90).
In T 233/96 the board held that if the use of a compound was known in the treatment or
diagnosis of a disease of a particular group of subjects, the treatment or diagnosis of the
same disease with the same compound could nevertheless represent a novel
therapeutic or diagnostic application, provided that it is carried out on a new group of
subjects which is distinguished from the former by its physiological or pathological
status (T 19/86, OJ 1989, 25; T 893/90). This does not apply, however if the group
chosen overlaps with the group previously treated or the choice of the novel group is
arbitrary which means that no functional relationship does exist between the particular
physiological or pathological status of this group of subjects (here humans who are
unable to exercise adequately) and the therapeutic or pharmacological effect achieved.
In the case T 836/01 claim 1 and 2 of the patent in suit were directed to the use of
human interferon-ß2 for preparing a medicament for influencing tumor/cancer cell growth
and differentiation. Document (D1) disclosed the use of interferon-ß2 for the purpose of
activating mature lymphoid cells exerting cytolytic T cell activity on cancer cells or to
stimulate the immune system of patients undergoing chemotherapy. Document (D1) and
the claimed invention thus being concerned with the same composition (interferon-ß2) for
treating the same disease (cancer/tumor), the board had to decide whether the medical
uses claimed by the applicant represented further and different therapeutic uses. The
board observed that the claimed invention relied upon a different technical effect from
the one disclosed document (D1), which taught an indirect effect of interferon-ß2 on
cancer cells.
However, for an application to be construed as a further use or “further medical
use”/“further therapeutic application” this new technical effect would have to lead to a
truly new industrial/commercial application (G 5/83, OJ 1985, 64) arising from eg the
opening of a new field of application, the healing of a different pathology/clinical situation,
the creation of a distinct group or sub-group of subjects (either end-users or patients) or
the new use had to involve new physical means/measures for its practice. Applying
these standards, the board concluded that the technical effect relied upon in the claimed
invention identified a new clinical situation, namely one in which it could be preferable
to target the cancer cells themselves, not lymphoid cells or the immune system as in
document (D1). Since a new clinical frame was not separable, as an abstract concept,
from a patient suffering under it, it had to be concluded that this new clinical situation
also identified a new sub-group of subjects being treated.

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In T 485/99 prior art document (1) had already disclosed the use for immunostimulation
of the composition underlying claim 1 of the patent in suit. The only new feature of claim
1 was the fact that the intake of the immunostimulatory diet was pre-operative. In the
opinion of the board it needed to be investigated whether the pre-operative therapy as
defined in the claim could be distinguished from the therapy disclosed in document (1) by
a different medical (physiological) effect due to this pre-operative administration and thus
whether it related to a functional feature leading to the therapeutic indication in the sense
of G 5/83 (OJ 1985, 64; see Chapter I.C.5.2.1(b)) or not. If it did not, the use defined in
such a way might restrict the medical practitioner’s freedom when treating his patients
(see T 56/97). Pre- or post-operative administration of the diet would then constitute
methods for treatment of the human body and could thus not be regarded as patentable
inventions under Art. 52(4) EPC. The appellant had argued that the group of patients
treated with the pre-operative diet could be distinguished from those treated with the
post-operative diet. In the board’s opinion, the question raised was whether the
physiological status of the patients caused by the pre-operative diet was different.
The board concluded that this could not be established at present.
For further decisions on the novelty of a therapy in the light of its application to a different
group of subjects, see also T 893/90, T 885/91, T 51/93, T 584/97, T 486/01. However,
see also T 1020/03 below, which takes a new approach to the concept of new "therapy".
(b) Difference in the prescribed administration regimen
In T 317/95 the issue of novelty concerned both the question of whether the mere
difference in the course of the administration of two drugs (ie the prescribed regimen)
could indeed confer novelty on claim 10, and the objections to this claim which appeared
to imply the issue of patentability under the terms of Art. 52(4) EPC. The invention
involved the treatment of exactly the same category of patients by separately
administering to them the same two commercial drugs in the same concentration,
dosage and formulation for the treatment of the same illness or disease, with the sole
exception that the prescribed regimen for this treatment was slightly modified (BNS and
cimetidine were administered to the patient within five minutes of each other).
The board observed that in G 5/83 (OJ 1985, 64) the Enlarged Board had stated that it
was the purpose of the exclusion of medical treatments from patentability according to
Art. 52(4) EPC to free from restraint non commercial and non industrial medical and
veterinary activities. The board did not question the appellants' submission that the
pharmaceutical industry was engaged in optimising the use of drugs and medicaments
by investigating the optimum regimen for their administration to achieve the maximum
possible therapeutic effect. However, the board pointed out that determination of the best
individual treatment schedule, in particular the prescribing and modification of drug
regimens used for administering a particular medicament, so as to comply with the
specific needs of a patient, appeared to be part of the typical activities and duties of
the doctor in attendance in exercising his professional skills of curing, preventing or
alleviating the symptoms of suffering and illness. These were typical non commercial and
non industrial medical activities which Art. 52(4) EPC intended to free from restraint. The
board found that before the priority date of the contested patent, the medical practitioner
was aware of the possibility of treating gastrointestinal disorders using the particular
combination of drugs defined in claim 10. He was similarly in a position to prescribe an
effective regimen for treating each patient according to his or her individual needs. It
therefore appeared questionable to the board whether the feature at issue could indeed

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be considered to represent a further medical indication from which novelty could be

derived on the basis of the principles set out in decision G 5/83. In any case, inventive
step was lacking.
In T 56/97 the alleged invention was based on the finding or discovery that, by orally
administering thiazide diuretics in a certain dosage regimen or low unit dosage amount,
antihypertensive activity could be achieved in patients without inducing effective diuresis.
Claim 1 was in the conventional "second (further) medical use" format.
The board held that all that had been discovered was that, if thiazide diuretics were
administered in sufficiently low dosage units, their diuretic effect would be to a certain
extent less (see "insufficient to achieve effective diuresis") or even possibly absent, while
the antihypertensive activity remains. Even assuming that this was not known in the state
of the art, it could only be regarded, in the board's judgment, as an additional item of
knowledge about the known therapeutic application of thiazide diuretics for the
treatment of hypertension to alleviate and cure the symptoms and complaints of
hypertension in an human or animal subject in need of it, but could not in itself confer
novelty on this known therapeutic application. For the acknowledgment of novelty, such
a finding or discovery would be required to lead to a specified new therapeutic
application or purpose. That not being the case here, the board could not see how
claim 1 could be construed as relating to a second or further medical use.
The above considerations led to the question whether or not claim 1 was compatible with
Art. 52(4) EPC. The board held that determination of the best individual treatment
schedule, in particular the prescribing and modification of drug dosage regimens used for
administering a particular medicament, so as to comply with the specific needs of a
patient and to achieve the desired result of the treatment in an individual patient, calls
first and foremost for the exercise by a medical practitioner of his professional skill in
curing preventing or alleviating the symptoms of suffering and illness. Such activities are
typical of the non-commercial and non-industrial medical activities which Art. 52(4)
EPC intends should remain free from restraint. The case was finally decided on the basis
of the lack of novelty or non-compliance with Art. 123(2) EPC of the various requests, so
that no final decision on the above issues was necessary.
In T 584/97 and T 485/99 (see above, Chapter I.C.5.2.2(a)) a similar view was taken on
the issue of whether a feature relating merely to the prescription of a specific drug
regimen for known medical treatments represents a further medical indication from which
novelty can be derived.
In T 1020/03 the claims were directed to the use of insulin-like growth factor-I in the
preparation of a medicament for administering to a mammal in a specific discontinuous
administration pattern. Analysing decision G 5/83 (OJ 1985, 64) the board found that any
use to which Art. 52(4), first sentence, EPC applied, in circumstances where the
composition had already been suggested for some therapeutic use, would allow a further
medical use claim in the approved format, irrespective of the amount of detail in which
the use was specified, subject to the use being novel and inventive. The phrase
"manufacture of a medicament for a specified new and inventive therapeutic application"
used by the Enlarged Board of Appeal merely indicated that the application was
restricted in some way to make it novel and inventive over the known therapy using such
composition. According to the board, if the subject-matter of the claim avoided the
method of treatment by therapy prohibited in Art. 52(4), first sentence, EPC as would be

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the case for a claim in the approved "Swiss" form, compliance with this provision did not
need to be considered further, and certainly not for imposing restrictions on the breadth
of the claim.
The board argued that there was no interference with the freedom of the physician
because the patent proprietor would have a remedy only against the maker of, or dealer
in the composition. The fact that the marketing of pharmaceuticals was tightly controlled
within the contracting states by the relevant control authorities meant that for most
pharmaceuticals it could be established for what therapeutic treatment(s) they were
marketed. Allowing second medical use patents served to increase the possibilities of
someone undertaking the necessary research.
For these reasons, the board interpreted decision G 5/83 (OJ 1985, 64) as allowing
Swiss form claims directed to the use of a composition for manufacturing a medicament
for a specified new and inventive therapeutic application, where the novelty of the
application might lie only in the dose to be used or the manner of application.
(c) Novelty based on the difference in the mode of administration
In T 51/93 a European patent application relating to the use of human HCG for the
manufacture of a medicament for subcutaneous administration was refused by the
examining division because prior art document D(1) implicitly disclosed the
subcutaneous administration, and because the subcutaneous administration of HCG was
an obvious alternative to intramuscular administration. D(4) (cited by the board)
disclosed vials for injection containing HCG and diluent, obtained by mixing HCG with a
carrier and/or diluent. The only difference between the invention as claimed and the
disclosure of D(4) was that the claim was directed to an intended method of
subcutaneous administration. The claim was drafted in the form approved in decision
G 5/83 for claims where the novelty was solely that of the intended use, so the only
question was whether a difference in the mode of administration of a medicament could
be treated as a new therapeutic use. The board, relying on T 290/86, observed that the
mode of administration might be a critical factor in a medical treatment and no reason
could be seen for any a priori bar to relying on this difference when distinguishing over
the prior art. Rather, patentability should be treated as depending only on whether this
modification was in fact novel and inventive. Thus, it was possible to acknowledge
novelty over D(4) (see T 143/94, OJ 1996, 430).
(d) Novelty based on the different technical effect
In decision T 290/86 (OJ 1992, 414) the board had to give a ruling on the novelty of a
claim drawn up in the form of a second medical use. The claim's subject-matter was the
use of a lanthanum salt for the preparation of a composition intended to remove dental
plaque (according to the patent proprietor, plaque removal had the effect of preventing
caries). The closest prior art disclosed compositions comprising salts containing various
elements, including lanthanum, to depress the solubility of tooth enamel in organic acids,
and thus to inhibit tooth decay. The board considered the claimed invention new. The
grounds for its decision were as follows: "When a prior document and a claimed
invention are both concerned with a similar treatment of the human body for the same
therapeutic purpose, the claimed invention represents a further medical indication as
compared to the prior document within the meaning of decision G 5/83 if it is based upon
a different technical effect which is both new and inventive over the disclosure of the
prior document". In this case the technical effect considered new was the removal of

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dental plaque, whereas the prior art only disclosed the depression of enamel solubility in
organic acids (see also T 542/96 and T 509/04). In T 384/03, however, the board
distinguished the case from T 290/86 in so far as both effects at issue - increase of
ocular blood flow and lowering of intraocular pressure - would simultaneously intervene
when the described treatment took place. In contrast, the two technical effects shown in
decision T 290/86 were distinct and independent of each other.
(e) Statement of purpose of surgical use for a known instrument
In T 227/91 (OJ 1994, 491) the board held that the purpose of a surgical use alone could
not render novel the subject-matter of a claim relating to the use of the components of a
known instrument for its manufacture, ie assembly. The claim under consideration
related to the use for intercepting a laser beam of substrate means and coating means in
the manufacture of a laser surgical instrument. The indication of the purpose, ie
intercepting the laser beam, was a characteristic of the surgical use of the instrument
and did not affect the structure or composition of the entity itself. This kind of functional
reference could not normally impart novelty to an otherwise known article unless the
function implied a necessary modification of the article itself. The only exceptions so far
recognised are based on Art. 54(5) EPC and on a new therapy for a known medicament
whose manufacture is also characterised by the new use of the product (ie second or
further therapeutic indication - G 5/83). However, a surgical use of an instrument is not
analogous to a therapeutic use in the above-mentioned cases, since the instrument is
not consumed in the application and could be repeatedly used for the same or even for
other purposes as well.
(f) Discovery of a previously unknown property of a compound underlying the known
effect
In T 254/93 (OJ 1998, 285) an application relating to the use of a retinoid compound in
association with the use of corticosteroids in the prevention of skin atrophy was refused
by the examining division.
The board noted that it was a basic consideration in G 2/88 (OJ 1990, 93) that the
recognition or discovery of a previously unknown property of a compound, such property
providing a new technical effect, could involve a valuable and inventive contribution to
the art. This was apparently the reason why the Enlarged Board of Appeal accepted that
the use related to such a property could be regarded as a technical feature appropriate
for establishing novelty. The board stated that it had no difficulty in accepting that the
prevention of skin atrophy had to be regarded as a pharmaceutical feature and, following
the conclusions of the Enlarged Board of Appeal, that the effect underlying this feature
was not made available to the public in written form by any of the cited literature.
Nevertheless, the question arose whether, in the case at issue, this effect was a
technical effect within the meaning of decisions G 2/88 and G 6/88 (OJ 1990, 114),
which was necessary to establish novelty, under Art. 54(1) EPC, of the claimed subject-
matter over the prior art. Although it concerned a specific aspect of the known use, the
use specified in claim 1 (prevention of skin atrophy) was not finally different from the
known use (treatment of dermatoses). The board observed that when a second medical
indication was claimed in relation with the use of a constituent in the preparation of a
known composition and the final effect was apparent in using the known composition
for the known purpose, a technical problem could be seen neither in the obtention of
the final effect nor in the preparation of the composition. The only remaining question

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could be the explanation of the phenomenon underlying the treatment according to the
known process. However, the mere explanation of an effect obtained when using a
compound in a known composition, even if the explanation related to a pharmaceutical
effect which was not known to be due to that compound in the known composition, could
not confer novelty on a known process if the skilled person was already aware of the
occurrence of the desired effect when applying the known process (see also T 669/01).
Similarly, in T 486/01 the physiological effects highlighted by the patent proprietor were
only regarded as additional items of knowledge about a further mechanism of action
underlying the known therapeutic application.
5.3. Second (or further) non-medical use
5.3.1 Novelty criteria for use claims and process claims containing a purpose feature
(a) General issues decided in the decision of the Enlarged Board of Appeal
In general, the EPC allows both method claims and use claims, but whether any activity
is claimed as a method of carrying out the activity (setting out a sequence of steps) or as
the use of a thing for a stated purpose (the sequence of steps being implied) is a matter
of preference. For the Enlarged Board of Appeal there is no difference of substance
(G 5/83, OJ 1985, 64).
Two referrals to the Enlarged Board raised the general issue of novelty of a second non-
medical use which was not connected with the specific problems of use claims in the
medical field.
In the non-medical field use claims are admissible and not subject to special conditions.
In T 231/85 (OJ 1989, 74) the board had to judge the novelty of a second non-medical
use in a special constellation. It held that the fact that a substance was known could not
preclude the novelty of a hitherto unknown use of that substance, even if the new use did
not require any technical realisation other than that for a previously known use of the
same substance. In the case in question the known use was use as a growth regulator
and the new one, now claimed by the applicant, use as a fungicide. The technical
realisation was in both cases the spraying of useful plants.
Later, the same board, with a different composition, referred to the Enlarged Board the
question whether a claim for the use of a compound for a particular non-medical purpose
was novel under Art. 54 EPC having regard to a prior publication which disclosed the use
of that compound for a different non-medical purpose, so that the only novel feature in
the claims was the purpose for which the compound was used. The specific problem in
these cases was that the previously disclosed use of the substance, although specifically
stated to be for another purpose, would inherently comprise the use as claimed in the
new application (T 59/87, OJ 1988, 347; T 208/88 of 20.7.1988).
In decisions G 2/88 (OJ 1990, 93) and G 6/88 (OJ 1990, 114), the Enlarged Board stated
that the patentability of a second non-medical use of a product was already recognised
in principle in G 5/83 (OJ 1985, 64) which concerned the second medical use of a
substance. However, in that earlier decision the exclusion from patentability of
therapeutic and diagnostic methods had caused the Enlarged Board to allow only a
special type of claim. These specific difficulties did not arise in the non-medical field;
there the question was of a general nature, concerned primarily with the question of
interpretation of Art. 54(1) and Art. 54(2) EPC. In G 2/88 and G 6/88, therefore, it was

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pointed out that a claimed invention lacked novelty unless it included at least one
essential technical feature which distinguished it from the state of the art. A basic initial
consideration, when deciding upon the novelty of a claim, was therefore to analyse it in
order to determine its technical features. The Enlarged Board took the view that the
proper interpretation of a claim whose wording clearly defined a new use of a known
compound would normally be such that the attaining of a new technical effect on which
the new use was based was a technical feature of the claimed invention. Thus, where
the particular technical effect underlying such use was described in the patent, the
proper interpretation of that claim would require a functional feature to be implicitly
contained in the claim as a technical feature - eg the compound actually achieved the
particular effect.
Referring to the facts of T 231/85 (see above) as an example, the Enlarged Board
explained that the claim directed to the use of a substance (known as a growth regulator)
as a fungicide implicitly included a functional technical feature, namely that the said
substance when used in accordance with the described means of realisation in fact
achieved the effect (ie performed the function) of controlling fungus. The claim should
not be interpreted literally as only including by way of technical features "the substance"
and "the means of realisation of the claimed purpose", but should in appropriate cases
be interpreted as also including as a technical feature the function of achieving that
purpose, because that was the technical result. When determining novelty the decisive
question of what had been made available to the public was one of fact in each case. A
line had to be drawn between what was in fact made available and what remained
hidden or had not otherwise been made available. In that connection the distinction
between lack of novelty and lack of inventive step also had to be emphasised:
information equivalent to a claimed invention may be "made available" (lack of novelty),
or it may not have been made available but is obvious (novel, but lack of inventive step),
or was not made available and is not obvious (novel and inventive). Thus, in particular,
what is hidden may still be obvious. Under Art. 54(2) EPC the question was not what
might have been "inherent" in what was previously made available to the public under
the EPC. Under the EPC, the hidden or secret use, because it had not been made
available to the public, was not a ground of objection to the validity of a European patent.
In that respect, the provisions of the EPC might differ from the earlier national laws of
some contracting states, and even from the current national laws of some non-
contracting states. Thus, the question of "inherency" did not arise as such under Art. 54
EPC. Any vested right derived from prior use of an invention was a matter of national
law.
The Enlarged Board thus concluded that with respect to a claim to a new use of a known
compound, such new use might reflect a newly discovered technical effect described in
the patent. The attaining of such a technical effect should then be considered as a
functional technical feature of the claim (eg the achievement in a particular context of
that technical effect). Had that technical feature not previously been made available to
the public by any of the means set out in Art. 54(2) EPC, then the claimed invention was
novel, even though such technical effect might have inherently taken place in the course
of carrying out what had previously been made available to the public. The final
decisions in cases T 59/87 (OJ 1991, 561) and T 208/88 (OJ 1992, 22) both held that the
claimed use inventions were novel and inventive.

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(b) Non-therapeutic treatment of animals

In decision T 582/88 the board applied the principles set out in decision G 2/88 in slightly
different circumstances. The invention's subject-matter was a method of non-therapeutic
treatment of animals for the purpose of improving their milk production and comprising
oral administration of a propionate-increasing amount of glycopeptide antibiotics. In the
board's view the technical effect produced by the invention - in this case an improvement
in milk production - was new and had to be construed as a new technical feature
sufficient to make the invention novel. The claim's subject-matter was a method of non-
therapeutic treatment of animals, not - as in decision G 2/88 - use of a known product to
achieve a new effect.
(c) Non-therapeutic use distinguishable from the known therapeutic use
In T 469/94 a European patent application on the basis of a set of claims directed to the
protection of the second medical indication of choline or a choline derivative was refused
by the examining division because it considered that the known treatment with choline of
muscle diseases and hardness was equivalent to or even a synonym for the treatment
for reducing muscle fatigue which was claimed in the application in suit. In response to a
communication from the board, the appellant filed a new set of claims having the form of
the protection of the second non therapeutic use of a product.
Examining the case, the board concluded that the ability of choline to reduce the
perception of fatigue had not been made available to the public. The first use of choline,
in the therapeutic field, was known from two prior art documents. The board held that an
independent invention could be based on the newly discovered effect if such an effect
led to a new technical application which was clearly distinguishable from the previous
known application. The prior art documents did indeed describe the use of choline on
groups of patients having manifest diseases: either epilepsy or muscle diseases and
injuries. Likewise in the case of the prophylactic use of choline envisaged in a prior art
document for muscle rheumatism or muscle troubles arising from thyroidal diseases, the
prophylaxis did not appear to mean the prevention of the disease itself, but simply the
prevention of the acute phase of a chronic disease. The board observed that fatigue
arising from major exercise was not of a pathological nature, and that the performance
itself of major exercise appeared to be quite incompatible with the situations envisaged
in the prior art documents, specifically that of muscle injuries. The non-therapeutic use of
choline according to the invention was therefore independent of, and distinguishable
from, the known therapeutic use because it was directed to a distinct group of
persons. The subject-matter of the claim at issue was therefore found to be novel.
(d) Novelty of a Swiss-type claim
In T 292/04, claim 1 of the patent referred to the use of a haloperoxidase in the
manufacture of an antimicrobiological agent and was drawn up in the form of a Swiss-
type claim. The agent was intended for use in methods which are referred to in
Art. 52 (4) EPC, but also in methods not referred to in this article. One such use was its
application as a contact lens formulation. The board emphasised that, in accordance with
the principles of decision G 5/83 (OJ 1985, 64), claim 1, as far as it referred to the use of
a haloperoxidase in the manufacture of an antimicrobial agent for use in a method falling
outside the provisions of Art. 52(4) EPC could not derive novelty and inventive step from
the allegedly newly discovered technical effect of selectively killing pathogenic bacteria.
Rather the claim, which was not restricted to a therapeutic use of the manufactured

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agent, had to be understood as referring to a process for the manufacture of a liquid

antimicrobial agent. The appellants had argued that the prior art documents did not
disclose this newly discovered technical effect described in the patent in suit. However,
the Board pointed out that the reasoning of G 2/88 (OJ 1990, 93) did not apply as claim 1
was not directed to the new use of a known compound, but to the use of a known
compound in the manufacture of an agent. This kind of claim was considered by the
Enlarged Board of Appeal in decision G 5/83 to be notionally novel only in a special
case; namely where the intended purpose of the manufacture of the agent was the use
of this agent in the treatment of the human or animal body by surgery or therapy or in a
diagnostic method.
(e) New use of functional feature in a known process
In T 848/93 the application claimed a process which differed from the prior art only in its
use (remelting instead of vapour phase soldering). The examining division had
understood the claim to mean that the process claimed was suitable for the use
described, and had considered that it lacked novelty because the process known in the
prior art was also suitable for that use, even if this was not expressly stated.
The board did not agree - if a claim concerned eg an apparatus which differed from a
known apparatus only as regards the use indicated, then the use was not an apparatus
feature. This meant that the two pieces of apparatus were identical in terms of structure.
If the known apparatus was suitable for the claimed use, the application lacked novelty. If
the claim was directed to an object, a substance or a composition, the same applied. If
however the claim was for a process, the situation was not comparable. In such a case,
the use feature was a functional process feature comparable in category with the other
features (steps) of the process. The teaching of T 69/85 or of the Guidelines C-III, 4.8
(June 2005 version) was therefore not applicable to the present case.
In T 1049/99 the board took the view that the criteria set out in decisions G 2/88 and
G 6/88 (OJ 1990, 93 and 114) could not simply be transferred to process claims. The
board pointed out that, according to those decisions, a new purpose related to a new
technical effect could render novel the claimed use of a product already known, even
though the means of realisation making it possible to achieve the new purpose was
identical to the known means of realisation, given that a use claim in reality defined the
use of a particular physical entity to achieve an effect. The board distinguished this
situation from that of a process claim which defined the use of a particular physical entity
to achieve a product and, therefore, fell within the scope of Art. 64(2) EPC. An extension
of the criteria set out in the decisions of the Enlarged Board referred to above would
result in protection of a product obtained by a process already known on the basis of the
new effect discovered in the process itself, even though that process was identical to that
already known (see also T 910/98).
In T 1092/01 the claimed subject-matter consisted of a process with technical features
encompassing those disclosed in prior art documents D2 and D3, but which was applied
for a use not disclosed in these documents (isolmerization of lutein to zeaxanthin). In
more general terms, claim 1 related to a known process with which a previously
unknown technical effect was achieved (yet which might have inherently occurred in the
course of carrying out the process). The board applied the rationale of G 2/88 (OJ 1990,
93) where the claim related to the use of a known compound which use was based on a
previously unknown technical effect of the known compound. Thus, according to the

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board, the question was whether a new effect which was brought about by known means
could be found novel. The board concluded from G 2/88 that, if the newly discovered
effect led the skilled person to a new activity which was not connected with the means
known before, such an effect could confer novelty on a claim which was directed to the
new activity, i.e a use or a process. If this was not so, novelty could not be
acknowledged.
(f) Claim directed to the use of a known process for a particular purpose
In T 210/93 the originally claimed process for the production of a rubber product was
held not to be novel by the examining division because the claimed temperature range
was already disclosed in D1. With reference to G 2/88 and G 6/88, the applicants
thereupon claimed the use of this known process for the purpose of preparing the rubber
product having a certain maximum ratio of constituent X. They argued that in the
absence of a disclosure of this mole ratio in D1, this constituted a "specific technical
purpose of achieving the previously unknown chemical structural arrangement". The
board observed that decisions G 2/88 and G 6/88 related to claims to the use of a known
compound for a particular purpose, in contrast to the appellants' claim, which was
directed to the use of a known process for a particular purpose, the purpose being the
preparation of a particular product naturally resulting from such process. In the board's
view, the use of a process for the purpose of preparing its product(s) could be said
to be nothing but that very same process, and the scope of protection appeared to be the
same for a claim to the process as such and a claim to such use.
(g) Discovery of new properties/technical effects underlying the known use
In T 958/90 the board mentioned that a known effect could not be novel for the sole
reason that the patent provided the information that it was present to a hitherto unknown
extent.
In T 279/93 a claim directed to the use of a first compound in a process for preparing a
second compound was revoked by the opposition division for lack of novelty. In
particular, the claims were directed to the use of the alkanolamines for reducing the
formation of isomelamine impurities. According to the appellant, this purpose, even if it
might have been inherently attained by following the teaching of a prior art document,
should have rendered the subject matter of the claims novel, since, in application of the
reasoning in decision G 2/88 (OJ 1990, 93), inherency did not destroy the novelty of the
new use, which had to be regarded as a functional technical feature of the claims.
In the board's judgment, the use of a compound in a process for preparing another
compound in order to reduce the formation of impurities was not necessarily a functional
technical feature in the sense of decision G 2/88, and did not therefore in all
circumstances confer novelty on the subject matter of a claim containing it. The facts of
the case at issue differed significantly from those underlying decision G 2/88, since the
claim did not appear to contain any new technical effect or technical purpose in the
sense required by that decision. In the board's view, noticing that an old product had the
property of containing fewer isomelamine impurities was a mere discovery. To convert
this into a patentable invention, and to show the characteristics of a new technical effect,
the use referred to in the claim would have to be some new use of the product which
exploited the discovery that the isomelamine impurities were low for some new technical
purpose. However, the patent in suit disclosed no such new use; it did not teach the
skilled person to do something which would not have been done without knowing the

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content of the patent. The patent merely gave the person skilled in the art reasons for
preferring one known product over other known ones for the uses for which it had
already been suggested.
In T 892/94 (OJ 2000, 1) the board noted that according to G 2/88 (OJ 1990, 93), novelty
within the meaning of Art. 54(1) EPC could be acknowledged for a claim directed to the
use of a known substance for a hitherto unknown, ie new, non medical purpose reflecting
a newly discovered technical effect. However, a newly discovered technical effect did not
confer novelty on a claim directed to the use of a known substance for a known non
medical purpose if the newly discovered technical effect already underlay the known
use of the known substance.
The disclosure in citation (1) was, in the board's judgment, prejudicial to the novelty of
the claim in question. It was immaterial for the purposes of prejudice to novelty that the
actual technical effect exhibited by "aromatic esters" in deodorising compositions was
not described in the cited document. The ex post facto discovery that the deodorising
effect of "aromatic esters" when used as an active ingredient in deodorising products
could result from their capability of inhibiting esterase-producing micro organisms might
possibly be regarded as a (potentially surprising) piece of knowledge about the known
use or application of such esters but could not confer novelty on a claim, since the latter
would require that the newly discovered effect indeed ended in a new technical
application or use of the "aromatic esters" which was not necessarily correlated with the
known application or use and could be clearly distinguished therefrom.
In T 706/95 the board held that the discovery that the same known means led to an
additional effect when they are used for the same known purpose (ie known use) of
reducing the concentration of nitrogen oxides in the same effluent could not confer
novelty to this known use (see also T 934/04).
In T 189/95 the board ruled that a new property of a substance, ie a new technical effect,
did not necessarily signal or give rise to a new use for that substance. For example, the
new property might merely explain the mechanism behind the use already
described in the prior art, as in T 892/94 (OJ 2000, 1). Here again the board ruled that
discovering a new property or activity did not in itself render novel a claim for the use of a
known substance for a known non-medical use, if the discovery only showed what
formed the basis of the known use of the known substance.
On the issue of the discovery of a previously unknown property of a compound
underlying a known use, see further T 1073/96, referring to T 254/93 (OJ 1998, 285). By
contrast, it was found that there was a new use, eg in T 319/98, T 952/99, T 966/00,
T 326/02 and T 1090/02.
(h) Use of a substance to achieve a technical effect only attained in special
circumstances
In T 977/02 the claim in suit was directed not to a device per se but to use of a specific
component (an electric machine carcase) to attain a technical effect (to facilitate the
recycling of the electric machine). Applying G 2/88 (OJ 1990, 93) and G 6/88 (OJ 1990,
114), the board held that a claim to the use of a component having a specific property
(material that can be crushed into fragments) for a specific purpose (to facilitate the
recycling of an electric machine) stated in the said claim and based on a technical effect
described in the patent (flow of the material that can be crushed into fragments through

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the turns of the winding during recycling) should be interpreted as comprising a

functional technical feature by virtue of that technical effect. According to the board, this
was still valid when, as in the present case, the technical effect was attained only in
special circumstances (when the electric machine was recycled). The board also held
that the choice of the specific material for manufacture of the carcase covered by the use
defined by the claim in suit constituted a novel selection.
5.3.2 Statement of purpose in non-medical use claims in view of Article 52(4) EPC
In T 36/83 (OJ 1986, 295) the board stated that having discovered for the first time the
surprising properties of a chemical product already known in the state of the art and
having shown those properties in various uses, the applicant had the right to have those
uses protected. In the particular case the uses were presented in the description as two
methods: a method of medical treatment and a method of non-medical treatment. Under
Art. 52(4) EPC a method of medical treatment was not patentable but a product for use
in that method certainly was. Claims 1 to 7 had been worded accordingly. The method of
non-medical treatment was one falling within the general field of patentable inventions.
There could be no objection to the patentability of either use or method claims in general
(see G 5/83, OJ 1985, 64). The applicants had chosen the phrase "use as a cosmetic
product of thenoyl peroxide". The board considered that this form of claim was
acceptable in the case in suit. The board noted that when considering the exclusions
from patentability under Art. 52(4) EPC the wording of the claim was important. In
reaching this conclusion the board held the use of the word "cosmetic" in the context of
that application to be sufficiently precise to exclude therapeutic uses, without the need
for a specific disclaimer of such uses.
5.3.3 Novelty criteria for product claims with purpose characteristics
In T 215/84 the board held that the discovery that the known equipment might be used in
a new manner could not render the entity itself novel.
In T 523/89 a particular prior art document disclosed a container having all the structural
features defined in claim 1 of the contested patent. Hence, the only outstanding issue
was the fact that D1 nowhere indicated that the container disclosed therein was intended
to be used for ice-cream. The board noted that the question of anticipation of a claim to
an article for a particular use was dealt with in the Guidelines C-III, 4.8 and C-IV, 7.6
(June 2005 version), from which it was clear that, with the exception of medical uses of
known substances, the indication of intended use was only to be seen as limiting to the
extent that the article had to be suitable for that use. In other words, disclosure of an
equivalent article without an indication of the particular use claimed - although the article
was nevertheless suitable for it - would cause lack of novelty of a claim to the article for
that particular use. The board saw no reason to disagree with this general principle of
interpretation laid down in the Guidelines.
In decisions T 303/90 and T 401/90 the main claims related to a contraceptive
composition comprising known pharmaceutical compounds. The board was of the
opinion that the composition as claimed could not be considered novel and the added
word "contraceptive" did not change the product claim into a use claim. Only in the case
of first medical use could the addition of a purpose characteristic render a product
claim new, if the product as such was known in other technical fields (see also
T 1200/03).

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In T 15/91 the board ruled that, according to board of appeal case law, the discovery that
known apparatus could be used in a manner not hitherto described did not substantiate
the novelty of that apparatus if the hitherto unknown use did not require any modification
to the technical design of the known apparatus (see T 523/89).
In T 637/92 the board held that, according to established case law, the statement of
purpose of a claimed device (or product) was to be interpreted as meaning that the
device was suitable for the stated purpose and that a known device that served
another purpose but otherwise possessed all the features listed in the patent claim was
not prejudicial to the novelty of the subject-matter of the claim if the known device was
unsuitable for the purpose referred to in the claim (see Guidelines C-III, 4.8 - June 2005
version - and T 287/86). In the case in question, however, these conditions had not been
met since the device known from the citation did not possess one of the features of
claim 1.
D. Inventive step
Inventive step

1. Introduction
I.D.1. Introduction

An invention is considered to involve an inventive step if, having regard to the state of
the art, it is not obvious to a person skilled in the art (Art. 56, first sentence, EPC).
The "state of the art" for the purposes of considering inventive step is as defined in
Art. 54(2) EPC; it does not include later published European applications referred to in
Art. 54(3) EPC. Such earlier applications are part of the state of the art only when
considering novelty and not when considering inventive step (for full details see
Guidelines C-IV, 6.1 and 9 - June 2005 version).
Technical progress is not a requirement for patentability under the EPC. Therefore,
technical progress shown in comparison with marketed products as an alleged support
for inventive step cannot be a substitute for the demonstration of inventive step with
regard to the relevant closest state of the art (see T 181/82, OJ 1984, 401; T 164/83,
OJ 1987, 149; T 317/88, T 385/94).
The extent of the monopoly conferred by a patent should correspond to and be justified
by the technical contribution to the art. This general principle of law, applied in T 409/91
(OJ 1994, 653) and T 435/91 (OJ 1995, 188) (albeit to determine the scope of protection
justified under Art. 83 and Art. 84 EPC), also applies to decisions under Art. 56 EPC,
because everything covered by a legally valid claim has to be inventive. Otherwise the
claim has to be amended, by deleting anything obvious to ensure that the monopoly is
justified (T 939/92, OJ 1996, 309; T 930/94, T 795/93, T 714/97).
2. Problem and solution approach
I.D.2. Problem and solution approach

To assess inventive step, the boards normally apply the "problem and solution
approach". This consists essentially of (a) identifying the "closest prior art", (b) assessing
the technical results (or effects) achieved by the claimed invention when compared with
the "closest state of the art" established, (c) defining the technical problem to be solved
as the object of the invention to achieve these results, and (d) examining whether or not
a skilled person, having regard to the state of the art within the meaning of
Art. 54(2) EPC, would have suggested the claimed technical features in order to obtain
the results achieved by the claimed invention (see also Guidelines, C-IV, 9.8 - June 2005
version). The boards frequently cite R. 27(1)(c) EPC as the basis for the problem and

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solution approach. R. 27(1)(c) EPC requires that the invention be disclosed in such
terms that the technical problem (even if not expressly stated as such) and its solution
can be understood. Problem and solution are thus component parts of any technical
invention. The problem and solution approach was primarily developed to ensure
objective assessment of inventive step and avoid ex post facto analysis of the prior art.
According to board of appeal case law (see T 1/80, OJ 1981, 206; T 20/81, OJ 1982,
217; T 24/81, OJ 1983, 133; T 248/85, OJ 1986, 261), the assessment of inventive step
has to be based on the objective, not subjective, achievement of the inventor. By starting
out from the objectively prevailing state of the art, the technical problem is to be
determined on the basis of objective criteria and consideration given to whether or not
the disclosed solution was obvious to the skilled person. Although the problem and
solution approach is not mandatory, its correct application facilitates the objective
assessment of inventive step. The correct use of the problem and solution approach
rules out an ex post facto analysis which inadmissibly makes use of knowledge of the
invention (T 564/89, T 645/92, T 795/93, T 730/96 and T 631/00). In principle, therefore,
the problem/solution approach is to be used; however, if exceptionally some other
method is adopted, the reasons for departing from this generally approved approach
should be stated.
In T 967/97 the board stated that the problem and solution approach was essentially
based on actual knowledge of technical problems and ways to solve them technically
that the skilled person would, at the priority date, be expected to possess objectively, ie
without being aware of the patent application and the invention that it concerned. If the
skilled person had a choice of several workable solutions that might suggest the
invention, the rationale of the problem and solution approach required that the invention
be assessed relative to all these possible solutions before any decision confirming
inventive step was taken. To deny inventive step, no special grounds had to be given for
a pre-selection of prior-art citations, even if several workable solutions were available to
the skilled person; the statement of grounds merely served to show that the invention
was obvious to the skilled person from the prior art in relation to (at least) one of these
solutions (see also T 558/00, T 970/00, T 172/03, T 323/03) .
In T 465/92 (OJ 1996, 32) the board did not take the problem and solution approach
when assessing inventive step, and said this was merely one possible approach, with
advantages and drawbacks. This however is a one-off decision.
3. Closest prior art
I.D.3. Closest prior art

3.1. Determination of closest prior art in general

In accordance with the problem and solution approach, the boards have developed
certain criteria for identifying the closest prior art to be treated as a starting point. After
the relevant prior art has been identified, careful consideration must be given to the
question whether, in the case concerned, the skilled person, taking into account all the
available information on the technical context of the claimed invention, would have had
good reason to take this prior art as the starting point for further development. The
boards have repeatedly pointed out that the closest prior art for assessing inventive step
is normally a prior art document disclosing subject-matter conceived for the same
purpose or aiming at the same objective as the claimed invention and having the most
relevant technical features in common, i.e. requiring the minimum of structural

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modifications (T 606/89, T 686/91, T 834/91, T 482/92, T 298/93, T 380/93, T 59/96,

T 730/96, T 650/01). A further criterion for the selection of the most promising starting
point is the similarity of technical problem (see T 495/91, T 570/91, T 439/92, T 989/93,
T 1203/97, T 263/99). The determination of the closest prior art is therefore an objective
and not a subjective exercise. It is made on the basis of the notional skilled man's
objective comparison of the subject-matter, objectives and features of the various items
of prior art leading to the identification of one such item as the closest (T 1212/01). The
prior art has to be assessed from the point of view of the skilled person on the priority
date applicable (T 24/81, OJ 1983, 133; T 772/94, T 971/95).
3.2. Same purpose or effect
In selecting the closest prior art, the first consideration is that it must be directed to the
same purpose or effect as the invention. Otherwise, it cannot lead the skilled person in
an obvious way to the claimed invention. According to T 606/89 the closest prior art for
the purpose of objectively assessing inventive step was generally that which
corresponded to a similar use requiring the minimum of structural and functional
modifications (see T 574/88, T 834/91, T 897/92, T 380/93, T 1040/93 and T 795/93). In
T 273/92 the board of appeal confirmed the established case law of the boards
according to which a document could not qualify as the closest prior art to an invention
merely because of similarity in the composition of the products; its suitability for the
desired use of the invention also had to be described (see also T 327/92). According to
T 506/95, the closest prior art was therefore that most suitable for the purpose claimed
by the invention, not that superficially showing structural similarities with the solution as
claimed. Ideally that purpose or objective should be something already mentioned in the
prior art document as a goal worth achieving (T 298/93, T 859/03).The aim was that the
assessment process should start from a situation as close as possible in reality to that
encountered by the inventor. If it was not clear from this criterion what the closest prior
art was, the problem and solution approach should be repeated taking possible
alternative starting points (T 710/97).
In T 176/89 the board concluded that the closest prior art was two documents in
combination with each other. It found that exceptionally the two documents had to be
read in conjunction; they had the same patentee, largely the same inventors, and clearly
related to the same set of tests. As a rule, however, when assessing inventive step, two
documents should not be combined if in the circumstances their teaching is clearly
contradictory (see also T 487/95).
3.3. Similarity of the technical problem
A document serving as the starting point for evaluating the inventive merits of an
invention should relate to the same or a similar technical problem or, at least, to the
same or a closely related technical field as the patent in suit (T 989/93, T 1203/97,
T 263/99).
In T 439/92 (dividing wall for a corner or circular shower) the board pointed out that
although there was freedom in the choice of the starting point on which an objection of
lack of inventive step was based, there were certain criteria that should be adhered to if
the prior art chosen was to be the closest. One such criterion was the problem already
stated in the patent. Clearly in many cases it was reasonable for there to be a link
between this problem and the prior art chosen as being closest (T 495/91, T 570/91).

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In T 325/93 the application related to an epoxy resin dispersion which provided a cured
resin with improved impact resistance. The board stated that the problem addressed by
the application was neither derivable nor indeed recognisable from the disclosure of D2
relating to compositions having a low coefficient of friction and which, according to the
department of first instance and the appellant, represented the closest prior art. As early
as T 686/91, another board had observed that a document not mentioning a technical
problem which is at least related to that derivable from the patent specification does not
normally qualify as the closest prior art for inventive step purposes, however many
technical features it may have in common with the subject-matter of the patent
concerned (see also T 410/93, T 708/96, T 59/96, T 979/00 and T 496/02). In T 644/97
the board concluded that a technical problem arising from a "closest prior art" disclosure
which was irrelevant to the claimed subject-matter (in the sense that it did not mention a
problem that was at least related to that derivable from the patent specification) had a
form such that its solution could practically never be obvious, because any attempt by
the skilled person to establish a chain of considerations leading in an obvious way to the
claimed subject-matter was bound to fail. It followed that the respective claimed subject-
matter was non-obvious in the light of such art (see also T 792/97 and T 599/03).
In T 835/00 D1, which the opposition division considered the closest prior art, did not
mention any of the problem aspects addressed by the claimed invention. As a
consequence, a technical problem was created which was unrelated to the actual
disclosure of D1 but whose solution was then found to be obvious in the light of the
disclosure of D2. The board referred to T 686/91 and stated that it was a fatal defect that
a prior art disclosure from which no relevant technical problem could be formulated
without inappropriate hindsight had been chosen as a starting point for the application of
the problem and solution approach, because without such hindsight any attempt to
establish a logical chain of considerations which might lead to the claimed invention
inevitably ran into difficulties at the start, for want of a relevant identifiable goal or object.
If the relevant problem was not derivable from the alleged closest prior art, the measures
for its solution were a fortiori not derivable. In other words, the invention was not obvious
in the light of such art.
3.4. Most promising springboard
T 254/86 (OJ 1989, 115) described the objectively closest prior art as the "most
promising springboard” towards the invention which was available to the skilled person
(see also T 282/90, T 70/95, T 644/97).
Where several cited documents all belonged to the same technical field as the claimed
invention, the closest prior art was the one which on the filing date would most easily
have enabled the skilled person to make the invention (T 656/90).
According to T 870/96 when trying to evaluate a skilled person's capabilities and
behaviour in the problem and solution approach, as closest prior art a "bridgehead"
position should be selected, which said skilled person would have realistically taken
under the "circumstances" of the claimed invention insofar as these circumstances can
be retrieved in one item of the prior art. Consequently, among these "circumstances",
aspects such as the designation of the subject matter of the invention, the formulation of
the original problem and the intended use and the effects to be obtained should
generally be given more weight than the maximum number of identical technical features
(see also T 66/97).

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3.5. Selection of most promising starting point

Some decisions explained how to ascertain the closest prior art which constituted the
easiest route for the skilled man to arrive at the claimed solution or the most promising
starting point for an obvious development leading to the claimed invention. The starting
point for the assessment of inventive step should be one which is at least "promising", in
the sense that there was some probability of a skilled person arriving at the claimed
invention.
In T 211/01 the board stated that quite apart from the fact that a skilled person would
normally not consider an obviously defective disclosure at all, it would in particular be
artificial to select a defective disclosure as a starting point for evaluating inventive step,
when there exists other prior art which is not doubted with regard to its disclosure but is
also directed to the same purpose or effect as the patent in suit. Thus, a document which
is so obviously defective as to be readily recognised as such by those skilled in the art
when trying to reproduce its disclosure cannot be taken as the most promising and
appropriate starting point for the assessment of inventive step.
In T 570/91 the board emphasised that although a person skilled in the art was
completely free in choosing a starting point, he would of course be bound afterwards by
that choice. If, for instance, the skilled person preferred and decided to start from a
specific compressor piston, he could further develop that piston but at the end of that
development the normal result would still be a compressor piston and not an internal
combustion engine piston. In T 439/92 it was explained that a conscious choice of
starting point, made in the knowledge of the respective benefits and drawbacks of the
various types concerned, not only determined the subject-matter serving as a starting
point but also defined the framework for further development, ie a further development
within this particular type. A change of type during the further development of the
consciously chosen type, to another type, which was previously known but had not been
chosen, could then only be seen as the result of an ex-post-facto analysis (see also
T 1040/93, T 35/95, T 739/95, T 255/03). It is unlikely, and normally not obvious, for the
invention type originally chosen to be changed during development (T 817/94). A
generically different document cannot normally be considered as a realistic starting point
for the assessment of inventive step (T 870/96, T 1105/92, T 464/98).
In T 487/95 the board chose a military protective helmet as the closest prior art, pointing
out however that this did not mean that documents describing protective helmets of a
different kind (such as workers' safety helmets) could not be said to form part of the
knowledge of a person skilled in the art. In this case, adopting the problem and solution
approach, the information contained in the patent which related to a known military
protective helmet (D9) represented the primary source of information, ie the most
promising point of departure, from which the skilled person would attempt to arrive at the
claimed subject-matter. The other documents could however represent important
secondary sources of information (in this case: workers' safety helmets) from which the
skilled practitioner could obtain indications and suggestions with regard to the problem
being addressed.
However, when applying these principles, care must be taken to avoid an ex-post-facto-
approach. A skilled person endeavouring to arrive at a simple construction is unlikely to
begin by using prior art relating to an exceptional embodiment with a complex
mechanism, and then to omit this mechanism from the invention (T 871/94).

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3.6. Improvement of a production process for a known product

With a prior art not directed to the same purpose as starting point, any attempt to
establish a logical chain of thought which could lead to the claimed invention, inevitably
gets stuck from the outset. In particular, where the background to the invention lies in
difficulties encountered in known processes for preparing known compounds. Where the
invention concerned improving a process to manufacture a known chemical compound,
then the closest prior art was confined to documents describing that compound and its
manufacture. Comparison with these alone would show whether an improvement had
been achieved which could thus be taken into account in formulating the problem the
invention sought to solve (T 641/89, T 961/96, T 713/97, T 948/01, T 833/02, T 339/03).
In the case of inventions concerning a special process for use with a particular chemical
substance having necessarily specific characteristics, determining the closest prior art
must involve above all considering only those documents which describe a generically
corresponding process for using precisely this particular chemical substance with its
specific characteristics (T 1285/01, T 354/03). This accurately and objectively reflects the
actual situation in which the skilled person found himself on the priority date of the
contested patent (T 793/97).
The above considerations regarding the closest prior art also apply to production
processes for subject-matter other than a chemical compound. In T 325/97 the patent
related to a method for manufacturing a device for controlled delivery of nicotine from an
adhesive reservoir. Also in T 373/94 the board applied the principles and conclusions
laid down in T 641/89 where the invention related to the improvement of a manufacturing
process for prefilled plastic syringes.
3.7. Old prior art documents as closest prior art
Some decisions concerned determining the closest art by taking old prior publications as
a realistic starting point for identifying the technical problem to be solved. In principle,
any document that is state of the art under Art. 54(2) EPC may be a candidate for the
closest prior art. The jurisprudence acknowledges, however, some cases where a
document may not be a realistic starting point because it either relates to outdated
technology, and/or is associated with such well known disadvantages that the skilled
person would not even consider trying to improve on it.
In T 1019/99 the board did not judge that a document, published only five years before
the priority date of the patent, in any way represented outdated technology, even in a
fast moving area such as digital image processing. With regard to the status of the
document as an isolated document and the fact that it did not receive any attention after
its publication, the board agreed with the respondent that there may be various unknown
technical or economic reasons preventing an otherwise promising approach from being
adopted rapidly after its early publication. However, a period of five years does not
appear to be excessive, in particular taking into account the time needed actually to
implement and evaluate the prior art teaching.
In T 334/92 the board held that a document that had been disregarded for more than 20
years by those skilled in the art, had never been used during that period as a basis for
further development, was moreover completely silent about the extent of the indicated
activity and, finally, did not even mention, let alone discuss, the relevant state of the art,
so that the skilled person was not in a position to recognise any technical advantage of
these compounds in respect of that state of the art, did not represent the closest state of

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the art and could not therefore be used to define a realistic technical problem. However,
in T 964/92, filed as a divisional application to T 334/92, the board held that the same
document could be considered as a realistic starting point for the determination of the
relevant technical problem. The board stated that in T 334/92 the technical problem that
was solved should be seen as the provision of further chemical compounds which were
more active in the treatment of angina pectoris than the known compounds and less
toxic. In contrast, in T 964/92 the skilled person set out to seek no more than alternatives
to known compounds described as medicaments for treating angina pectoris. Therefore,
the board held that the skilled person would consider any compound or group of
compounds belonging to the state of the art, and known to have the desired activity, as a
suitable starting point. In such a case the length of time for which this document had
been available to the public was irrelevant.
In T 1000/92 the board did not agree to the selection of document (1) as the closest state
of the art because the disadvantages of the process described in document (1), which
had been published about 30 years before the priority date of the application, were so
evident and well known that a skilled person would not have tried to improve and
develop such an old process (see also T 616/93).
In the further decision T 479/00 the board did not regard a 65-year-old document as a
realistic starting point for the evaluation of inventive step. It was unrealistic to assume
that, without hindsight, somebody of average skill in the art of colouring ceramic articles
in 1994 would have had the intention to improve a technique which had not received any
attention during the previous 65 years. Furthermore, the teaching of this document,
published in 1929, had never been put into practice on a commercial scale.
In T 153/97 it was stated that there was no plausible reason why the skilled person
should have disregarded a document only because the publication date lay 30 years in
the past.
T 69/94 also pointed out that Art. 54(2) EPC defined the state of the art as comprising
everything made available to the public, clearly without any time restriction. Thus a
document which related to an antiquated technology no longer used in industry
comprising a teaching disapproved by those skilled in the art at the filing date of the
patent in suit could not simply be disregarded as the closest prior art only because of its
publication date about 20 years before the filing date of the application documents.
In T 113/00 the board pointed out that resurrecting very old teaching (in the present case
31 years old) with an obvious modification did not make known subject-matter inventive.
4. Technical problem
I.D.4. Technical problem

4.1. Determination of the technical problem

R. 27(1)(c) EPC stipulates that an application's description must "disclose the invention,
as claimed, in such terms that the technical problem (even if not expressly stated as
such) and its solution can be understood, and state any advantageous effect of the
invention with reference to the background art". As long ago as T 26/81 (OJ 1982, 211),
R. 27(1)(c) EPC was recognised as clearly binding. The boards' case law, and correct
application of the problem and solution approach (see T 1/80, OJ 1981, 206; T 24/81,
OJ 1983, 133), show that objective criteria must be used to determine the technical
problem, ie the problem which can be seen to have been actually solved in the light of

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the closest prior art which may be different from the prior art which was at the disposal of
the inventor (T 576/95). These objective criteria may be concretely defined by assessing
the technical progress made in the subject-matter of the application against the closest
prior art (T 20/81, OJ 1982, 217; T 910/90). A comparison of the problem indicated in the
application with that indicated in a prior document must avoid an unduly abstract
approach far removed from the practical thinking of the person skilled in the art (T 5/81,
OJ 1982, 249).
In identifying the problem it is not permissible to draw on knowledge acquired only after
the date of filing or priority. According to T 268/89 (OJ 1994, 50) the non-effectiveness of
a prior art apparatus or method recognised or alleged only after the priority or filing date
could not be drawn on in formulating the problem, particularly where that problem was
adduced in support of inventive step in a "problem invention" (see T 2/83, OJ 1984, 265).
Inventive step had to be assessed on the basis of the skilled person's knowledge before
the priority or filing date (see also T 365/89).
In T 1329/04 the board stated that the definition of an invention as being a contribution to
the art, ie as solving a technical problem and not merely putting forward one, requires
that it is at least made plausible by the disclosure in the application that its teaching
solves indeed the problem it purports to solve. Therefore, even if supplementary post-
published evidence may in the proper circumstances also be taken into consideration, it
may not serve as the sole basis to establish that the application solves indeed the
problem it purports to solve.
In T 931/95 (OJ 2001, 441), the board denied the presence of an inventive step since the
objective problem was not of a technical character. The board stated that the
improvement envisaged by the invention according to the application was an essentially
economic one i.e. lay in the field of economics, which, therefore could not contribute to
inventive step (see also T 1053/98).
4.2. Alleged advantages
According to the boards' case law, alleged advantages to which the patent proprietor/
applicant merely refers, without offering sufficient evidence to support the comparison
with the closest prior art, cannot be taken into consideration in determining the problem
underlying the invention and therefore in assessing inventive step (see T 20/81,
OJ 1982, 217; T 181/82, OJ 1984, 401; T 124/84, T 152/93, T 912/94, T 284/96,
T 325/97, T 1051/97).
In T 355/97 the patent related to an improved hydrogenation process for preparing
4-aminophenol. The technical problem as indicated in the patent in suit consisted of
improving the performance index of the preparation process without loss of selectivity.
The patent proprietor, however, did not demonstrate properly that the purported
advantages, ie improvement of the performance index without loss of selectivety, of the
claimed invention had successfully been achieved. The board referred to the above
mentioned jurisprudence and held that, since the alleged advantages lacked the required
adequate support, the technical problem needed reformulation. Therefore, the objective
problem could only be seen as merely providing a further method for preparing
4-aminophenol (see also T 1213/03).

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4.3. Formulation of the technical problem

4.3.1 No pointers to the solution
According to decisions T 229/85 (OJ 1987, 237) and T 99/85 (OJ 1987, 413) the
technical problem addressed by an invention had to be formulated in such a way that it
did not contain pointers to the solution or partially anticipate the solution, since including
part of a solution offered by an invention in the statement of the problem necessarily had
to result in an ex post facto view being taken of inventive step when the state of the art
was assessed in terms of that problem (T 322/86, T 184/89, T 289/91, OJ 1994, 649;
T 957/92, T 422/93, OJ 1997, 24; T 986/96, T 313/97, T 799/02).
In T 1019/99 the board added that this approach constrains the specificity of the
formulation. However, there is also a constraint on the amount that the formulation can
"back off" from this specificity, i.e. a constraint on the generality of the problem. The
problem can be no more general than the disclosure of the prior art allows. Otherwise, a
problem could be formulated so generally as to circumvent indications in a prior art
document towards the claimed solution. Thus the correct procedure for formulating the
problem is to choose a problem based on the technical effect of exactly those features
distinguishing the claim from the prior art that is as specific as possible without
containing elements or pointers to the solution.
In T 910/90 the board stated that, when assessing the objective problem, the closest
prior art and any technical advance achieved by the characterising features of the
invention had to be taken into account. In so doing, it was not important whether this
problem had already been mentioned in the closest prior art; what mattered was what
the skilled person objectively recognised as the problem when comparing the closest
prior art with the invention.
4.3.2 Problem formulated in the patent application as starting point
Furthermore it had to be considered that an objective definition of the problem to be
solved by the invention should normally start from the problem described in the
contested patent. Only if examination showed that the problem disclosed had not been
solved or if inappropriate prior art were used to define the problem, was it necessary to
investigate which other problem objectively existed. The definition of artificial and
technically unrealistic problems was to be avoided (see T 246/91, T 495/91, T 731/91,
T 741/91, T 334/92, T 881/92, T 380/93, T 813/93, T 68/95, T 644/97, T 747/97 and
T 946/00). This legal principle is also applicable to ex parte proceedings (T 881/92,
T 882/92, T 884/92). In T 419/93 it was added that, when determining the problem, the
statements relating thereto in the application should be examined for correctness with
regard to the prior art and for their de facto relevance to the claimed features of the
solution. Only if the problem described in the application did not meet prior art
requirements and/or was not solved in accordance with the features of the invention,
should it be adapted to the prior art and/or actual technical success. In this connection,
T 800/91 emphasised that in any event the formulated problem should be one which the
skilled person knowing only the prior art would wish to solve. It should not be
tendentiously formulated in a way that unfairly directed development towards the claimed
solution. In T 400/98, the technical problem set out in the patent at issue had to be
reformulated because it had not been credibly solved.

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4.3.3 Formulation of partial problems - lack of unity

In T 314/99 the three different embodiments which were covered by claim 1 did not
belong to the same single general inventive concept (Art. 82 EPC). According to G 1/91
(OJ 1992, 253) lack of unity is not an issue in opposition (or opposition appeal)
proceedings. In the case in point the board stated that the consequence of this
conceptual lack of unity is that different aspects of the problem apply to the three
embodiments and that where conceptual non-unity arises between different
embodiments covered by a claim, this may necessitate the formulation of corresponding
partial problems, the respective solutions of which must be assessed separately for
inventive step. With respect to the requirements of Art. 56 EPC the inventiveness of the
subject-matter of a claim must be denied as a whole in the event that only one of its
embodiments is obvious.
4.4. Reformulation of the technical problem
It is established case law that an applicant or patentee may restate the specific problem
set out in the description if in particular the objective assessment of inventive step draws
on newly introduced prior art which is closer to the invention than that cited in the original
application or granted patent. To this end, the technical effects achieved by the claimed
invention when compared with the (new) closest prior art are assessed to define the new
objective technical problem. In T 184/82 (OJ 1984, 261) the board said that "regarding
the effect of the invention" reformulation of the problem could be allowed "provided the
skilled man could recognise the same as implied or related to the problem initially
suggested". The problem may thus be restated to meet a less ambitious objective (see
also T 106/91, T 339/96, T 767/02). It was also ruled in T 13/84 (OJ 1986, 253) that a
reformulation of the problem was not precluded by Art. 123(2) EPC if the problem could
be deduced by the skilled person from the application as filed when considered in the
light of the closest prior art (T 469/90, T 530/90, T 547/90, T 375/93, T 687/94,
T 845/02). In T 818/93 the board added that it sufficed if the reformulated problem could
be deduced later by comparing the application with the closest art. Since features from
the drawings might be incorporated into the claims, and also into the description in
support of the claims (T 169/83, OJ 1985, 193), those features' effects and advantages
might also be used as a basis for reformulating the problem, provided this problem could
clearly be deduced from the above comparison. T 162/86 (OJ 1988, 452) added that it
should still be possible in appeal proceedings to define the original problem more
precisely, within the limits of the original description.
According to T 39/93 (OJ 1997, 134), the technical problem as originally presented in the
application or patent in suit, which was to be regarded as the "subjective" technical
problem, might require reformulation on the basis of objectively more relevant elements
originally not taken into account by the applicant or patentee. This reformulation defined
the "objective" technical problem. The latter represented the problem ultimately
remaining, ie the technical effect achieved by the subject-matter (features) as defined in
the claim.
In T 564/89 the appellant submitted that any amendment of the technical problem had to
be in line with Art. 123(2) EPC. The board stated that this article was not concerned with
the issue of whether or not an objectively reformulated technical problem could be used
in the course of the so-called problem-solution approach. Art. 123(2) EPC would only

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come into play if an amended technical problem were incorporated into the description
itself.
In T 732/89 the respondent submitted that the "hot/wet" performance of the claimed
composites, although admittedly better than that of the control composition,
corresponded to a completely new effect which could not be incorporated into the
technical problem without contravening Art. 123(2) EPC. The board did not follow this
line of argumentation and referred to T 184/82 (OJ 1984, 261) where a redefinition of the
problem regarding the effect of an invention was allowed provided that the skilled person
could recognise the same as implied or related to the problem initially suggested. In the
case in point the board took the demonstrated effect into account in the formulation of
the technical problem and stated that in determining which effect was crucial and which
was merely accidental (the so-called "bonus effect"), a realistic approach had to be
taken, considering the relative technical and practical importance of those effects in the
circumstances of a given case (see also T 227/89).
In T 440/91 the board pointed out that R. 27 EPC did not rule out the possibility of
additional advantages - not themselves mentioned in the application as filed but relating
to a mentioned field of use - being furnished subsequently in support of patentability for
the purposes of Art. 52(1) EPC, as such advantages did not alter the character of the
invention. Thus, the character of the invention was not altered if the technical problem
specified in the application as filed was supplemented by such advantages, since the
skilled person might consider them on account of their close technical relationship to the
original problem (see also T 1062/93). The board made a distinction with regard to the
situation in T 386/89 and T 344/89, where there was no such technical relationship. In
T 386/89 the board had found that the solution to the technical problem derivable from
the application as filed was in no way associated with a technical effect subsequently
invoked. This additional effect had thus not been taken into consideration. The alleged
effect of a described feature could not be taken into account when determining the
problem underlying the invention for the purpose of assessing inventive step, if it could
not be deduced by the skilled person from the application as filed considered in relation
to the closest prior art. Similarly in T 344/89, the board had refused to take account of a
subsequently invoked technical effect on the grounds that to do so would have altered
the character of the invention (T 532/00, T 845/02).
In T 1188/00 the board found that a reformulation relating to an effect first alleged in
appeal proceedings (a more ambitious problem) could not be used to substantiate
inventive step unless it was plausibly demonstrated that the alleged effect could be
achieved across the whole scope of the claim. The burden of proof for this lay with the
proprietor.
In T 134/00 the available experimental evidence supported the presence of an effect only
for a specific combination and not for all the possible combinations of components
encompassed by claim 1. The board concluded that the alleged improvement had to be
disregarded in defining the technical problem underlying the claimed invention.
Therefore, reformulation of the technical problem in less ambitious terms was necessary.
In T 357/02 the technical problem had to be reformulated in a less ambitious manner. In
the board's view it followed from the minimalist character of the technical problem
objectively arising from the closest prior art, which can only be formulated as a
modification of that state of the art, regardless of a success or failure of the measures

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 I.D.5. "Could-would approach" and ex post facto analysis

applied, that almost any modification of the latter process might be regarded as a
feasible alternative by the person skilled in the relevant art, and therefore obvious, since
each corresponding solution would be equally useful (or useless).
Another aspect was described in T 155/85 (OJ 1988, 87). According to this decision, it
was not acceptable to rely on an effect which had previously been described as
undesirable and of no value by the applicant, to present it suddenly as possibly
representing an advantage from another point of view, and thereby to imply that the
technical problem and the considerations for the inventive step should take this reversal
into account. A redefinition of the technical problem should not contradict earlier
statements in the application about the general purpose and character of the invention
(see also T 115/89).
4.5. Alternative solution to a known problem
In T 92/92 the board noted that Art. 56 EPC did not require that the problem to be solved
should be novel in itself. The fact that the underlying problem of the patent had already
been solved by the prior art does not necessarily require redefinition of the problem for
the assessment of inventive step, if the subject-matter of the patent represented an
alternative solution to this problem. In this context the board referred in particular to
decision T 495/91. In this case too, the problem stated in the patent specification had
already been solved. The problem to be objectively solved was the provision of an
alternative process and of apparatus which made it possible to produce a floor covering
with specific properties by simple and low-cost means (see also T 780/94, T 1074/93,
T 323/03).
According to T 588/93, for an inventive step to be present, it was not necessary to show
improvement - substantial or gradual - over the prior art. Thus an earlier solution to a
given technical problem did not preclude later attempts to solve the same problem in
another, non-obvious way.
5. "Could-would approach" and ex post facto analysis
I.D.5. "Could-would approach" and ex post facto analysis

Many decisions of the Boards of appeal warn against an ex post facto approach when
assessing inventive step (see also the Guidelines C-IV, 9.9 - June 2005 version). This
applies especially to inventions which at first sight seem obvious, to combination
inventions and where the proposed solution is supposedly "simple". Correct application
of the problem and solution approach avoids this inadmissible ex post facto analysis
which draws on knowledge of the invention (T 24/81, OJ 1983, 133; T 564/89, T 645/92,
T 795/93).
When assessing inventive step, an interpretation of the prior art documents as influenced
by the problem solved by the invention while the problem was neither mentioned or even
suggested must be avoided, such an approach being merely the result of an a posteriori
analysis (T 5/81, OJ 1982, 249; T 63/97, T 170/97, T 414/98).
In T 970/00 the board stated that any ex post facto analysis, and in particular any
conclusion going beyond what the skilled person would have objectively inferred, without
the benefit of hindsight knowledge of the invention, from the prior art is of necessity at
variance with a proper application of the problem-solution approach. This applies also to
the determination of the technical contribution of the invention to the prior art.
Accordingly, the determination of the technical contribution achieved by the invention

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over the closest state of the art requires an objective and technically meaningful and
consistent comparison of the claimed combination of structural and functional features
with the technical information conveyed to the skilled person by the closest state of the
art. Any attempt to interpret the disclosure of the closest prior art so as to distort or
misrepresent, based on hindsight knowledge of the invention, the proper technical
teaching of the disclosure in such a way that it artificially meets specific features recited
in the claim under consideration must therefore fail, especially as this would risk unfairly
and tendentiously concealing the technical contribution of the invention and prejudice the
subsequent objective determination of the technical problem solved by the claimed
invention.
It is the boards' established case law that the question is not whether the skilled person
could have carried out the invention, but whether he would have done so in the hope of
solving the underlying technical problem or in the expectation of some improvement or
advantage - the so-called "could-would approach" (T 2/83, OJ 1984, 265; T 90/84,
T 7/86, OJ 1988, 381; T 200/94, T 885/97). So the point is not whether the skilled person
could have arrived at the invention by modifying the prior art, but rather whether, in
expectation of the advantages actually achieved (ie in the light of the technical problem
addressed), he would have done so because of promptings in the prior art (T 219/87,
T 455/94, T 414/98).
It has been held that once an invention existed, it could often be shown that the skilled
person could have made it by combining different elements in the prior art, but such
arguments had to be disregarded as the product of ex post facto analysis (T 564/89).
According to T 939/92 (OJ 1996, 309), the answer to the question what a skilled person
would have done depended in large measure on the technical result he had set out to
achieve. In other words, the notional "person skilled in the art" was assumed to act not
out of idle curiosity but rather with a specific technical purpose in mind.
Technical feasibility and the absence of obstacles were only necessary requirements
for reproducibility but were not sufficient to render obvious what was actually
achievable for the skilled person (T 61/90). The fact that the inherent properties of a
technical means were known to the skilled person, so that he had the intellectual
possibility to apply this means in a conventional device, merely established the
possibility of using such technical means in such a manner, ie that the skilled person
could have used it. However, if it was to be established that such intellectual possibility
was also a technical measure which it was obvious for the skilled person to use, it was
necessary to show that there was a recognisable pointer in the state of the art to
combine the known means and conventional device for achieving the intended technical
aim, ie that the skilled person would have made such a combination. The existence of
such a technical reason was dependent on the known properties not only of the means
but also of those of the device (T 203/93 and T 280/95).
6. Expectation of success, especially in the field of genetic engineering and
biotechnology
I.D.6. Expectation of success, genetic engineering and biotechnology

In accordance with the case law of the boards of appeal, a course of action could be
considered obvious within the meaning of Art. 56 EPC if the skilled person would have
carried it out in expectation of some improvement or advantage (T 2/83, OJ 1984, 265).

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 I.D.6. Expectation of success, genetic engineering and biotechnology

In other words, obviousness was not only at hand when the results were clearly
predictable but also when there was a reasonable expectation of success (T 149/93).
In some decisions in the field of genetic engineering the board asked whether in the
cases in point it was obvious for the skilled person to try a suggested approach, route or
method with a reasonable expectation of success (T 60/89, OJ 1992, 268). For more
about biotechnological inventions and the definition of the skilled person, see
Chapter I.D.7.1.3.
In T 296/93 the board held that, in relation to inventive step, the fact that other persons
or teams were working contemporaneously on the same project might suggest that it
was "obvious to try" or that it was an interesting area to explore, but it did not necessarily
imply that there was a "reasonable expectation of success". A reasonable expectation
of success should not be confused with the understandable "hope to succeed"; it
implied the ability of the skilled person to predict rationally, on the basis of the knowledge
existing before a research project was started, the successful conclusion of the said
project within acceptable time limits. The more unexplored a technical field of research
was, the more difficult it was to make predictions about its successful conclusion and,
consequently, the lower the expectation of success (T 694/92, OJ 1997, 408). According
to T 207/94 (OJ 1999, 273), the "hope to succeed" was merely the expression of a wish,
whereas a "reasonable expectation of success" presupposed scientific appraisal of
available facts.
In T 187/93 it was stated that even if it was obvious for the skilled person to try an
experiment, it was not necessarily true that this person would have any reasonable
expectation of success when embarking on it.
In T 223/92 the board said that in 1981, given the state of the art at that time, the skilled
person would have opted for DNA-recombination technology only if relying, eg, on his
own good luck and inventiveness to overcome the known (and as yet unknown)
problems involved, which would have caused the average skilled person to expect to fail.
In T 91/98 the board did not adopt the "reasonable expectation of success" approach as
developed in board of appeal case law starting from T 296/93 (OJ 1995, 627). The board
stated that the rationale behind this approach is that one may easily conceive of
inventions to be made by genetic engineering, yet realising them may cause problems in
view of difficulties known or experienced when starting the project. Here, to find out
whether derivatives of azidothymidine have an activity against human retroviruses while
remaining non toxic to cells, it is enough to perform well-known, routinely carried-out in
vitro tests of viral infectivity so it is rather a "try and see" approach which applies.
In T 111/00 the board noted that this approach was intended in particular to take into
account the complexity inherent in some recombinant DNA techniques, which might
jeopardise the final outcome of experiments making use of them. In the present case, the
skilled person would have considered the cloning of human cDNA as a matter of routine
since the necessary probe was available from document 1 and no problems were
encountered.
In the light of the closest prior art the board saw the technical problem to be solved in
T 886/91 in the exact identification and characterisation of DNA sequences of HVB
genome subtype adyw. The board pointed out that the situation in T 886/91 could not be
compared with the one in T 223/92 and T 500/91, where production of a partially known

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protein in a recombinant-DNA system was achieved and considered inventive on the

basis of the fact that in the specific circumstances of the cases there was no realistic
expectation of success. In the case in point the closest prior art had already disclosed
the cloning and expression of the HBV genome subtype adyw. The identification and
characterisation of the claimed specific sequences of the same genome involved for the
skilled person nothing more than the performance of experimental work by routine
means in connection with the normal practice of filling gaps in knowledge by application
of existing knowledge.
In T 923/92 (OJ 1996, 564) the board had to decide whether the skilled person would
have attempted, with reasonable expectation of success, to produce cDNA coding for
human t-PA, or whether in this instance he would have known from his technical
knowledge, before even embarking on the research, that he would be able to complete
his project within acceptable time. The board bore in mind that, as stated in T 816/90,
"even when it is possible to theoretically conceive a straightforward approach to solve a
specific technical problem, the skilled person might be confronted with unexpected
difficulties when trying to put the conceived strategy into practice". The board stated that,
although hoping to succeed, the skilled person embarking on this project would have
known that its successful conclusion depended not only on technical skill in putting into
practice the sequence of precise steps of the theoretical experimental protocol, but to a
large extent also on the ability to take the right decisions along the way whenever a
difficult experimental situation so required. Under these circumstances, it could not be
said that the skilled person had a reasonable expectation of success.
In T 386/94 (OJ 1996, 658), again citing T 816/90, the board ruled that in gene
technology inventive step could not be acknowledged if, at the priority date, a skilled
person could expect to perform the cloning and expression of a gene in a fairly
straightforward manner, and the cloning, although requiring much work, did not pose
such problems as to prove that the expectation of success was ill-founded.
Where the expression of a cloned DNA in a chosen foreign host constituted the subject-
matter of the claimed invention, the question whether a reasonable expectation of
success existed or not could be evaluated only by taking into account real difficulties
relating to that step. Thus, in order to be considered, any allegation that features
jeopardised a reasonable expectation of success had to be based on technical facts
(T 207/94, OJ 1999, 273).
In T 737/96 the board was of the opinion that it was not appropriate to attempt to
evaluate the expectation of success of a random technique such as mutagenesis where
results depended on chance events. This was because the skilled person knew that,
unless a specific selection method could be developed, which was not the case in the
patent in suit, perseverance and chance played a key role in achieving success, as no
form of control could be exerted over the mutation events. Under these circumstances,
as in a lottery game, the expectation of success always ranged irrationally from nil to
high, so it could not be evaluated in a rational manner based on technical facts. This was
at variance with technical situations in which more predictable methods were relied upon
to solve a particular problem, such as methods of genetic engineering like cloning or
expressing a DNA sequence. In such situations, it was often possible to make rational
predictions about the likelihood of success, and "reasonable expectation of success" was
then a meaningful and reliable criterion for assessing inventive step (see also T 694/92,
OJ 1997, 408).

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 I.D.7. Skilled person

Decisions T 455/91, T 412/93, T 915/93, T 63/94, T 856/94 and T 948/01 also consider
this topic.
7. Skilled person
I.D.7. Skilled person

7.1. Definition of the skilled person

7.1.1 Definition
According to the boards' case law, the person skilled in the art should be presumed to
be an ordinary practitioner aware of what was common general knowledge in the art at
the relevant date (average skilled person). He should also be presumed to have had
access to everything in the state of the art, in particular the documents cited in the
search report, and to have had at his disposal the normal means and capacity for routine
work and experimentation (Guidelines C-IV, 9.6 - June 2005 version). The skilled person
will be an expert in a technical field (T 641/00, OJ 2003, 352). T 39/93 (OJ 1997, 134)
explained that whilst generally accepted definitions of the notional "person skilled in the
art" did not always use identical language to define the qualities of such a person, they
had one thing in common, namely that none of them suggested he was possessed of
any inventive capability. It was the presence of such capability in the inventor which set
him apart from the notional skilled person.
With regard to the definition of the skilled person, the board in T 26/98 summarised the
following principles which are generally applied by the boards of appeal: if the problem
prompts the skilled person to seek its solution in another technical field, the specialist in
that field is the person qualified to solve the problem. The assessment of whether the
solution involves an inventive step must therefore be based on that specialist's
knowledge and ability" (see crucial decision T 32/81, OJ 1982, 225; T 141/87, T 604/89,
T 321/92). The skilled person can be expected to look for suggestions in neighbouring
fields if the same or similar problems arise in such fields. The skilled person can be
expected to look for suggestions in a general technical field if he is aware of such fields.
In advanced technical fields the competent "skilled person" could be taken to be a team
of experts from the relevant technical branches. Solutions of general technical problems
in non-specific (general) fields are considered to be part of the general technical
knowledge.
According to T 422/93 (OJ 1997, 25), when examining for inventive step using the
"problem and solution approach", the starting point for defining the appropriate skilled
person was the technical problem to be solved on the basis of what the prior art
disclosed, irrespective of any other definition of the skilled person suggested in the
contested patent. Since the technical problem addressed by an invention had to be so
formulated as not to anticipate the solution, the skilled person to be considered could not
be the appropriate expert in the technical field to which the proposed solution belonged if
this technical field was different to the one considered when formulating the technical
problem. Nor did the appropriate skilled person's basic knowledge include that of a
specialist in the different technical field to which the proposed solution belonged if the
closest prior art gave no indication that the solution was to be sought in this other
technical field.

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7.1.2 Competent skilled person - group of people as "skilled person"

Sometimes the "skilled person" may be a group of people, such as a research or
production team. For the purposes of Art. 56 EPC the person skilled in the art is normally
not assumed to be aware of patent or technical literature in a remote technical field. In
appropriate circumstances, however, the knowledge of a team consisting of persons
having different areas of expertise can be taken into account (T 141/87, T 99/89). This
would be the case in particular if an expert in one particular field was appropriate for
solving one part of the problem, while for another part one would need to look to another
expert in a different area (T 986/96).
Thus, the board stated, for example, in T 424/90 that in real life the semiconductor expert
would consult a plasma specialist if his problem concerned providing a technical
improvement to an ion-generating plasma apparatus. In T 99/89 too, the board took the
view that "competent skilled person" could be taken to mean a team of two or possibly
more experts from the relevant branches.
In T 164/92 (OJ 1995, 305) it was observed that sometimes the average skilled person in
electronics, particularly if he did not have an adequate knowledge of programming
languages himself, might be expected to consult a computer programmer if a publication
contained sufficient indications that further details of the facts described therein were to
be found in a program listing attached as an annex thereto.
Further comments on the concept of the "team of experts" are to be found in the
following decisions: T 57/86, T 222/86 (in advanced laser technology, the "skilled
person" as a production team of three experts in physics, electronics and chemistry
respectively), T 141/87, T 460/87, T 295/88, T 825/93, T 2/94, T 402/95 and T 986/96
(team consisting of a first expert in the field of mail processing and a second expert
acquainted with information in the field of weighing).
7.1.3 Definition of the person skilled in the art in the field of biotechnology
The person skilled in the art in the field of biotechnology is well defined by the case law
of the boards of appeal. His attitude is considered to be conservative. He would never go
against an established prejudice, nor try to enter unpredictable areas nor take
incalculable risks. The notional skilled person would perform a transfer of technology
from a neighbouring field to his specific field of interest, if this transfer involved routine
experimental work comprising only routine trials (T 455/91, OJ 1995, 684; T 500/91,
T 387/94, T 441/93, T 1102/00).
In T 60/89 (OJ 1992, 268) the board took the view that the skilled person in genetic
engineering in 1978 could not be defined as a Nobel prize winner, even if a number of
scientists working in this field at that time actually were awarded that prize. Rather he
should be assumed to be a scientist (or team of scientists) working as a teacher or
researcher in the laboratories which made the transition from molecular genetics to
genetic engineering at that time.
This case law was confirmed in T 500/91 - "BIOGEN II". The board ruled that the
average skilled person - who might also be a team of specialists in the relevant field -
operated at a practical level, and the technical development which might normally be
expected of him did not include solving technical problems through scientific research.

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From the notional skilled person nothing more can be expected than the carrying out of
experimental work by routine means within the framework of the normal practice of filling
gaps in knowledge by the application of existing knowledge (T 886/91, T 223/92,
T 530/95, T 791/96).
It had to be assumed that the average skilled person would not engage in creative
thinking (T 500/91). Yet he or she could be expected to react in a way common to all
skilled persons at any time, namely that an assumption or hypothesis about a possible
obstacle to the successful realisation of a project must always be based on facts. Thus,
in the board's view, an absence of evidence that a given feature might be an obstacle to
carrying out an invention would not be taken as an indication that this invention could not
be achieved, nor that it could (T 207/94, OJ 1999, 273).
In T 223/92 the board had to consider the knowledge and capabilities of the notional
skilled person in the field of genetic engineering as at October 1981, more than one year
later than was the case in T 500/91. By this time, a considerably greater number of
genes had been made the subject of cloning and expressing methods, and skills and
experience in this technical field were developing rapidly. The knowledge of the notional
person skilled in the art had to be considered as that of a team of appropriate specialists
who knew all the difficulties still to be expected when considering the cloning of a new
gene. However, the skilled person had to be assumed to lack the inventive imagination
to solve problems for which routine methods of solution did not already exist.
In T 412/93 the patent related to the production of erythropoietin. The parties agreed that
in this particular case the skilled person should be treated as a team of three, composed
of one PhD researcher with several years' experience in the aspect of gene technology
or biochemistry under consideration, assisted by two laboratory technicians fully
acquainted with the known techniques relevant to that aspect. The composition of the
team might vary depending on the knowledge and skills required by the particular aspect
dealt with.
In T 455/91 (OJ 1995, 684) the board set out considerations on the skilled person's likely
attitude to possible changes, modifications or adjustments in known products (eg a
plasmid) or procedures (eg an experimental protocol). Its aim was to answer, objectively
and avoiding any ex post facto analysis, the question whether it would be obvious to the
skilled person to make given changes in a structure or procedure. The skilled person in
this field was well aware that even a small structural change in a product (eg a vector,
protein, or DNA sequence) or procedure (eg a purification process) could produce
dramatic functional changes. He would therefore adopt a conservative attitude. For
example, he would neither go against an established prejudice, nor venture into
"sacrosanct" or unpredictable areas, nor take incalculable risks. However, within the
normal design procedures, he would readily seek appropriate, manifest changes,
modifications or adjustments involving little trouble or work and no or only calculable
risks, especially to obtain a handier or more convenient product or simplify a procedure.
If on the other hand he would expect to have to perform scientific research rather than
routine work in order to transfer a technology previously set up in one field of research
(method of transforming Saccharomyces cerevisiae whole cells) to a neighbouring field
(method of transforming Kluyveromyces whole cells), then inventive step could be
acknowledged (T 441/93).

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In T 493/01 the invention related to a protective antigen potentially useful in a vaccine

against whooping cough. In T 455/91 (OJ 1995, 684) the skilled person in the field of
biotechnology had already been defined as being cautious and conservative. The board
said this did not mean he would refrain from considering information because it did not
concern the mainstream of research in his field of specialisation or because it applied
only to some parts of the world. His skill and knowledge were not geographically limited;
in fact he would have a global point of view. Thus if, as in the case in point, a pathogen
constituted a known threat in some restricted parts of the world, the skilled person would
not refrain from taking prior knowledge about that pathogen into consideration or from
using it as a basis for his activities.
7.1.4 Identification of the skilled person in the case of computer-implemented
inventions
In T 641/00 (OJ 2003, 352) the board stated that the identification of the skilled person
needs careful consideration. He will be an expert in a technical field. If the technical
problem concerns a computer implementation of a business, actuarial or accountancy
system, he will be someone skilled in data processing, and not merely a businessman,
actuary or accountant (T 172/03).
7.2. Neighbouring field
Two landmark decisions, T 176/84 (OJ 1986, 50) and T 195/84 (OJ 1986, 121)
addressed in detail the problem of the relevant technical field, ie the question of the
extent to which neighbouring areas beyond the specific field of the application might be
taken into consideration when assessing inventive step. According to T 176/84, when
examining for inventive step, a skilled person would, as well as considering the state of
the art in the specific technical field of the application, look for suggestions in
neighbouring fields or a broader general technical field if the same or similar problems
arose, and if he could be expected to be aware of such general fields. T 195/84 added
that the state of the art also had to include prior art in a non-specific (general) field
dealing with the solution of any general technical problem which the application solved in
its specific field. Such solutions of general technical problems in non-specific (general)
fields had to be viewed as forming part of the general technical knowledge which a priori
was to be attributed to those skilled persons versed in any specific technical field. These
principles were applied in a large number of decisions.
In T 560/89 (OJ 1992, 725) the board took the view that the skilled person would also
draw on prior art in other fields which were neither neighbouring nor broader general
fields, if prompted to do so because the materials used were related or because of public
debate about a technical problem common to both fields. Expanding on this, T 955/90
added that in practice the person skilled in a broader general field would also draw on
the narrower, more specialised field of the known main application of the general
technology in search of a solution to a problem lying outside the special application of
that technology (T 379/96).
According to T 454/87 a skilled person specialising in a particular technical field (gas
chro-matography equipment) would in the course of his normal professional activity also
observe developments in equipment used in a related technical field (absorption spectral
analysis).

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In T 891/91 the board stated that a skilled person in the field of lenses for ophthalmic
use, confronted with the technical problem of adhesion and abrasion resistance of a
coating made on a surface of the lens, would also refer to the state of the art in the more
general field of coated plastic sheets in which the same problems of adhesion and
abrasion resistance of the coating arose and of which he was aware.
In T 767/89, regarding carpets, the board ruled that wigs were neither a neighbouring
technical field nor a broader general one which included the former field. So wigs were
not a related technical field in which the person skilled in carpets would have been
prompted to seek solutions. The two inventions addressed different problems; the user
requirements were not comparable.
Because of the differing security risks, a skilled person could not be expected to search
in the field of bulk-goods packaging for ideas for the design of a closure for a means of
conveying money (T 675/92).
Further comments on the concept of relevant field are to be found in several other
decisions, including the following: T 277/90 (in dentistry, moulding technology and
prosthodontics are neighbouring technical fields), T 358/90 (discharging the content of a
portable toilet did not lead the skilled person to the field of filling a tank of a chain saw by
means of a special kind of container), T 1037/92 (a person skilled in the art of making
fuse links for programmable ROMs would also have consulted the documentation in the
field of ultraminiaturised integrated switches), T 838/95 (the pharmaceutical and
cosmetic fields were immediate neighbours), T 26/98 (the board did not consider the field
of electrochemical generators to be a neighbouring field of iontophoresis because,
though both fields relied on electrochemical processes, such processes had substantially
different purposes and applications and, consequently, had to satisfy different
requirements), T 365/87, T 443/90, T 47/91, T 244/91 and T 189/92.
On a different aspect, with regard to the applicant's reference to a remote state of the art,
the board gave the following ruling in T 28/87 (OJ 1989, 383): If reference is made in the
introduction to the description of an application or a patent to a state of the art which
cannot objectively be classified as a relevant field, that state of the art cannot in the
course of examination for patentability be rated to the applicant's or proprietor's
disadvantage as a neighbouring field merely on account of that reference.
7.3. Skilled person - level of knowledge
The same level of skill has to be applied when, for the same invention, the two questions
of sufficient disclosure and inventive step have to be considered (T 60/89, OJ 1992, 268;
T 373/94). T 694/92 (OJ 1997, 408) added that although the same level of skill is applied
for both Art. 56 and Art. 83 EPC, the two starting points differ: for inventive step
purposes, the skilled man knows only the prior art; for sufficiency of disclosure, he knows
the prior art and the disclosed invention.
According to T 426/88 (OJ 1992, 427) a book providing general teaching in a general
technical field covering the invention's specific technical field was part of the general
knowledge of a specialist in that specific technical field. When books, representing
common general knowledge, described a basic general technical theory or methodology
and exemplified the same with specific applications in certain technical fields only, these
did not limit the general scope and relevance of such disclosures so as to exclude
possible applications in other fields. The appellant had argued that the book, written in

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German, was not a general reference book consulted by experts in that field in Great
Britain. The board, however, adhered to the definition of the state of the art given in
Art. 54 EPC, according to which no account was taken of the location at which the skilled
person exercised his profession.
In T 766/91 the board summarised the normally accepted view that common general
knowledge was represented by basic handbooks and textbooks on the subject in
question. It was knowledge that an experienced person in this field was expected to
have, or at least to be aware of to the extent that he knew he could look it up in a
handbook if he needed it. Statements in such works were used as convenient references
to show what was common knowledge. The information as such did not as a rule
become such knowledge through publication in a given handbook or textbook; rather by
the time it appeared in such works it was already generally known. For this reason,
publication in an encyclopaedia, say, could normally be taken as proof that the
information was not only known but was common general knowledge. The assertion that
something was part of the common general knowledge therefore needed only to be
substantiated if challenged by another party or the EPO (T 234/93, T 590/94, T 671/94,
T 438/97).
In T 378/93 the board confirmed this case law, adding that the same applied to articles in
scientific periodicals addressed primarily to qualified professionals and enjoying
worldwide repute.
In T 939/92 (OJ 1996, 309) it was explained that the state of the art could also perfectly
well reside solely in the relevant common general knowledge, which, in turn, need not
necessarily be in writing, ie in textbooks or the like, but might simply be a part of the
unwritten "mental furniture" of the average skilled person. In the case of any dispute,
however, the extent of the relevant common general knowledge had to be proven, eg by
documentary or oral evidence.
Numerous publications in the specialist press over a fairly short time, reporting on
meetings and research in a particularly active field of technology, could reflect common
general knowledge in this field at that time (T 537/90).
In T 632/91 the board stated that evidence which did not comprise a comparison of the
claimed subject-matter with the state of the art might nevertheless rebut a prima facie
assumption that there existed some common general knowledge which would have
allowed the skilled person to disregard structural differences of chemical compounds.
7.4. Everyday items from a different technical field
In T 1043/98 the patent concerned an inflatable gas-bag for a vehicle restraint system,
one part being club-shaped and the other generally butterfly-shaped. The edges of the
two parts were sewn together along a continuous seam. According to the appellant, the
skilled person would immediately arrive at the claimed gas-bag from his knowledge of
tennis-ball or baseball construction. This raised the issue of the application of features or
solutions drawn from another technical field but which could be considered "everyday
items".
In T 397/87 the board had already pointed out that there was no obvious reason why a
skilled person trying to solve a non-trivial problem should have been led to the claimed
process by simple examples from everyday life which were unrelated to the problem in

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question. In T 349/96, too, the board was unable to see why the fact that different
transport containers are used for beer bottles in an everyday context should prompt a
skilled person to invent a spinning/winding machine combination with an integrated
transport system even if the many citations from the relevant technical field were unable
to do this (see also T 234/91).
In T 234/96, however, the board concurred with the examining division's view that the
skilled person dealing with the practicalities of motorising a dispenser drawer for washing
powder had in mind as a model the disc tray of a CD player with push-button
electromotor operation which at the time of filing the application was familiar to anyone
and which therefore suggested the subject-matter of claim 1. In the board's view, the fact
that washing machines and CD players were intrinsically different items serving different
purposes did not suffice to prevent the skilled person concerned with the construction of
washing machines from taking into consideration the basic principle of automatic tray
operation in CD players when designing a dispenser drawer for washing powder.
From a comparison of the above-mentioned decisions, the board in T 1043/98 concluded
that the relevance of such items for inventive step depended very much on the
circumstances of the individual case. It agreed that persons skilled in developing the
gas-bags in question would include tennis or baseball players. It could not however
share the appellant's view that to solve the problem addressed by the invention the
skilled person would draw on what he might know about tennis-ball or baseball
construction. The main reason was that the gas-bag was not intended to be spherical in
shape. It was therefore unlikely that the skilled person would take as his starting point an
object which was the epitome of a sphere (see T 477/96, where the board also
concluded that everyday experience was not relevant to the technical field of the
invention).
8. Assessment of inventive step
I.D.8. Assessment of inventive step

8.1. Treatment of technical and non-technical features

8.1.1 Technical character of the invention
Several decisions by the boards of appeal, especially Technical Board of Appeal 3.5.01,
were concerned with the assessment of inventive step in cases where the invention
consists of a mix of technical and non-technical features. Having technical character is
an implicit requirement of the EPC to be met by an invention in order to be an invention
within the meaning of Art. 52(1)EPC. In the revised edition of the EPC (EPC 2000),
technical character was formulated as an explicit requirement. The legal definition of
Art. 56 EPC is to be put into context with the remaining patentability requirements of
Art. 52 to 57 EPC, these articles implying the general principles that patents shall be
available for inventions in all fields of technology and that technical character is a sine
qua non for an invention in the sense of the EPC (T 931/95, OJ 2001, 441; T 935/97,
T 1173/97, OJ 1999, 609; T 641/00, OJ 2003, 352; T 914/02).
On this approach it is legitimate to have a mix of technical and "non-technical" features
(ie features relating to non-inventions within the meaning of Art. 52(2) EPC) appearing in
a claim, even if the non-technical features should form a dominating part (T 26/86,
OJ 1988, 19; T 769/92, OJ 1995, 525; T 641/00, OJ 2003, 352 and T 531/03).

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In T 1173/97 (OJ 1999, 609) it was stated that a computer program product is not
excluded from patentability under Art. 52(2) and (3) EPC if, when it is run on a computer,
it produces a further technical effect which goes beyond the "normal" physical
interactions between program (software) and computer (hardware). In T 424/03 the
board stated that a computer-readable medium is a technical product and, thus, has
technical character.
According to T 931/95 (OJ 2001, 441) an apparatus constituting a physical entity or
concrete product, suitable for performing or supporting an economic activity, is an
invention within the meaning of Art. 52(1) EPC (confirmed in T 258/03). However, the
board pointed out in T 258/03 (OJ 2004, 575) that the reasoning above was independent
of the category of the claim. Contrary to T 931/95 (see headnote 2) the board concluded
that, in general, a method involving technical means is an invention within the meaning
of Art. 52(1) EPC. In T 424/03 the board added that the claim category of a computer-
implemented method is distinguished from that of a computer program.
In T 258/03 (OJ 2004, 575) the board stated with regard to the concept of "invention"
within the meaning of Art. 52(1) EPC that what mattered was the presence of technical
character which could be implied by the physical features of an entity or the nature of an
activity, or could be conferred to a non-technical activity by the use of technical means.
In T 914/02 the board stated that the involvement of technical considerations was not
sufficient for a method which might exclusively be carried out mentally to have technical
character. In T 388/04 (OJ 2007, 21), Board of Appeal 3.5.02 held that the extent to
which subject-matter or activities are excluded from patentability under Art. 52(2) and
(3) EPC is notionally distinct from, and may be considered independently of the question
of inventive step.
8.1.2 Problem and solution approach
The boards of appeal use the problem and solution approach to determine whether an
inventive step is involved. This requires analysis of the invention in terms of a technical
solution to a technical problem. Since both the solution and the problem solved by an
invention have to be of a technical nature, the problem and solution approach might raise
questions when the invention comprises non-technical aspects or elements. Such
difficulties are to be resolved by taking due care to define the technical field to which the
invention belongs, the scope of technical expertise and skills expected to be applied by
the technical person in that particular technical field, and the correct formulation of the
technical problem actually solved (T 1177/97). In T 641/00 (OJ 2003, 352), Technical
Board of Appeal 3.5.01 had already held that, as a matter of principle, an invention
consisting of a mixture of technical and non-technical features and having technical
character as a whole was to be assessed with respect to the requirement of inventive
step by taking account of all those features which contributed to that technical character.
Features of the invention which did not form part of the technical solution to the technical
problem had to be disregarded in the assessment of inventive step. In T 531/03
Technical Board of Appeal 3.4.03 confirmed the principles set out in T 641/00 and stated
that, in the assessment of inventive step, features relating to a non-invention within the
meaning of Art. 52(2) EPC (so-called "non-technical features") could not support the
presence of inventive step. In T 619/02 (OJ 2007, ***), the board confirmed T 641/00 and
T 172/03 that the assessment of inventive step according to the problem and solution
approach was fundamentally of a technical nature and accordingly, the presence of an

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inventive step could only be established on the basis of the technical aspects of both the
distinguishing features of, and the effects achieved by the claimed invention over the
closest state of the art.
Also in T 1121/02 Technical Board of Appeal 3.2.04 referred to T 931/95 (OJ 2001, 441)
and T 641/00 (OJ 2003, 352) and confirmed that features making no contribution to
technical character could not support the presence of an inventive step. In T 258/03
(OJ 2004, 575), the board held that the invention was to be assessed by taking account
only of those features which contributed to a technical character. The features that made
a technical contribution therefore need to be determined. Finally, the identification of the
skilled person may also needed careful consideration. The skilled person will be an
expert in a technical field (T 641/00). In T 172/03 it was held that the term "state of the
art" in Art. 54 EPC should be understood as "state of technology". The term "everything"
in Art. 54(2) EPC was to be understood as concerning the kind of information which was
relevant to some field of technology. It follows that anything which was not related to any
technological field or field from which, because of its informational character, a skilled
person would expect to derive any technically relevant information, did not belong to the
state of the art to be considered in the context of Articles 54 and 56 EPC.
8.1.3 Identifying technical features
Unless stated otherwise, the case law referred to in the following chapters in respect of
inventions consisting of a mixture of technical and non-technical features has been
developed by the Technical Board of Appeal 3.5.01.
In T 931/95 (OJ 2001, 441) the first auxiliary request sought protection for an apparatus
for controlling a pension benefits program and system. The board arrived at the
conclusion that the improvement envisaged by the invention according to the application
was an essentially economic one, ie lay in the field of economy, which therefore could
not contribute to inventive step. The regime of patentable subject-matter was only
entered with programming of a computer system for carrying out the invention. The
assessment of inventive step had thus to be carried out from the point of view of a
software developer or application programmer, as the appropriate person skilled in the
art, having the knowledge of the concept and structure of the improved pension benefits
system and of the underlying schemes of information processing. Regarding the fact that
the technical features of the apparatus claimed were functionally defined by precisely
those steps of information processing which formed part of the knowledge of the skilled
person and that the application of computer systems in the economic sector had already
been a general phenomenon at the priority date (filing date) of the application, it had to
be concluded that the claimed subject-matter did not involve an inventive step.
In the crucial decision T 641/00 (OJ 2003, 352) the patent in suit related to a method in a
digital mobile telephone system of the GSM type in which a subscriber identity module
(SIM card) was allocated at least two identities which were selectively activated by the
user in order to distribute the costs between private and service calls. The board held
that an invention consisting of a mixture of technical and non-technical features and
having technical character as a whole was to be assessed with respect to the
requirement of inventive step by only taking account of those features which contributed
to that technical character. Features making no such contribution could not support the
presence of inventive step. The board referred to T 158/97, where a modification of a

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known device not related to any technical function had been held incapable of
contributing to inventive step (see also T 72/95, T 157/97 and T 176/97).
In T 27/97 the board, in assessing inventive step, had disregarded a feature
distinguishing the claimed subject-matter from the prior art for lack of any established
technical effect causally related to that feature.
In T 1001/02 the characterising feature principally involved a design element intended to
harmonise and enhance the appearance of the whole radiator. Technical Board of
Appeal 3.2.03 took the view that this feature could consequently not be regarded as a
technical feature and therefore left it out of account in its assessment of inventive step.
In T 531/03, the patent in suit related to a system for generating a printed discount
certificate in a retail store. Technical Board of Appeal 3.4.03 stated that, in the
assessment of inventive step, features relating to a non-invention within the meaning of
Art. 52(2) EPC ("non-technical features") could not support the presence of inventive
step. The patentee submitted that the invention at issue required a combination of a
technical and a non-technical inventive step, and that the skilled persons would therefore
consist of a team of a "non-technical person" plus a technical person. The board rejected
this approach and stated that an attempt to take into account the contribution of non-
technical and technical aspects on an equal footing in the assessment of inventive step
would be inconsistent with the EPC, since the presence of inventive step would in such
an approach be attributed to features which are defined in the EPC as not being an
invention.
In T 619/02 (OJ 2007, ***) the main and the first auxiliary request did not constitute an
invention within the meaning of Art. 52(1) EPC. The second auxiliary request defined a
method of making a perfumed product comprising perfuming with an odour, the odour
being selected following a procedure in which the (unperfumed) product itself or
alternatively other desired attribute was used as target. Board of Appeal 3.4.02 stated
that the claim was directed to the manufacture of a perfumed product and required
imparting the selected odour to the product, and hence defined a process or activity that
was technical by its very nature and pertained to the general technical field of perfumery.
The board confirmed that the presence of an inventive step could only be established on
the basis of the technical aspects of both the distinguishing features of, and the effects
achieved by the claimed invention over the closest state of the art.
The board stated that the claimed method differed from the closest state of the art in that
the odour had been selected following a certain selection procedure. However, neither
the selection procedure nor the resulting selected odour were of a technical nature. The
board concluded that if, apart from a possibly commercially promising but purely
aesthetic or emotional and therefore technically arbitrary effect, the distinguishing
features of an invention over the closest state of the art do not, in the context of the
claimed invention, perform any technical function or achieve any technical effect, no
specific objective problem of a technical nature can be considered to be solved by the
invention
8.1.4 Assessment of technical effect
In T 258/97 the invention related to an image communication apparatus. The board
referred to T 27/97, where it was stated that an abstract algorithm was relevant to
inventive step only if a technical effect could be established which was causally linked to

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the algorithm, such that the technical effect provided a contribution to the solution of a
technical problem and thereby conferred a "technical character" on the algorithm.
Therefore, the board ruled that an assessment of inventive step could only be based on
those elements and aspects of the invention in respect of which a technical effect could
be established. Whether an invention caused a technical effect was essentially a
question of fact.
In T 643/00 the board stated that an arrangement of menu items (or images) on a screen
might be determined by technical considerations. Such considerations might be intended
to enable the user to manage a technical task, such as searching and retrieving images
stored in an image processing apparatus, in a more efficient or faster manner, even if an
evaluation by the user on a mental level was involved. Although such evaluation per se
did not fall within the meaning of "invention" pursuant to Art. 52 EPC, the mere fact that
mental activities were involved did not necessarily qualify subject-matter as non-
technical since any technical solutions in the end were intended to provide tools which
served, assisted or replaced human activities of different kinds, including mental ones.
The board referred to T 1177/97 where it was stated that the use of a piece of
information in a technical system, or its usability for this purpose, may confer a technical
character on the information itself in that it reflects the properties of the technical system,
for instance by being specifically formatted or processed. Additionally, the board referred
to T 1194/97 where Board 3.5.02 stated that functional data (line numbers, coded picture
lines, addresses and synchronisations) recorded on a record carrier to be used in a
picture retrieval system were to be distinguished from the cognitive content encoded.
Even if the overall information could be interpreted in an infinite number of different ways
in other technical or human contexts, this did not detract from its technical function in the
relevant context of the claimed invention (see also T 424/03).
In T 1121/02 the application related to an electric fencing element characterised in that
said fencing element had along its surface contrasting markings which were deterrent to
an animal. Board 3.2.04 stated that the contrasting markings were not technical features.
The markings were said to be such as to resemble the warning patterning of another
animal, but this was not a technical effect. Therefore the contrasting marking had no
significance when assessing inventive step.
In T 258/03 (OJ 2004, 575) the overall aim of the claimed method - to identify the
successful bidder for a product offered for sale at an auction - was not regarded as
having technical character by the board. The appellant had argued that the technical
effect resided in overcoming the problem in the prior art of delays in the propagation of
information between bidders and the server. The solution to this problem consisted in
adapting the known auction method such that it could be performed automatically. The
board concluded that method steps consisting in modifications to a business scheme
(the rules of the auction) aimed at circumventing a technical problem rather than solving
it by technical means could not contribute to the technical character of the subject-matter
claimed. The invention was regarded by the board as a mere automation of the non-
technical activity of performing a Dutch auction in the absence of bidders and thus as
limited to instructing the server computer to apply the given conditions and perform any
necessary calculations. This was considered by the board to be routine programming
well within the reach of the skilled person.

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8.1.5 Formulation of the technical problem

In T 641/00 (OJ 2003, 352) the board considered the formulation of the technical
problem. Although the technical problem to be solved should not be formulated to
contain pointers to the solution or partially anticipate it, merely because some feature
appeared in the claim did not automatically exclude it from appearing in the formulation
of the problem. In particular where the claim referred to an aim to be achieved in a non-
technical field, this aim might legitimately appear in the formulation of the problem as
part of the framework of the technical problem that was to be solved in order to avoid,
that a non-technical contribution would be taken into account when assessing inventive
step. The board referred to its decision T 1053/98, where it had considered it necessary
to formulate the technical problem in such a way that there was no possibility of an
inventive step being involved by purely non-technical features. Such a formulation of the
problem could refer to the non-technical aspect of the invention as a given framework
within which the technical problem was posed. In the present case, the object of the
invention as stated in the patent specification was to eliminate inconveniences caused by
distributing costs for service and private calls or among different users. That object had
to be reformulated to arrive at the technical problem of implementing the GSM system in
such a way as to allow user-selectable discrimination between calls for different
purposes or by different users.
In T 1177/97 the board held that information and methods relating to linguistics might in
principle assume technical character if they were used in a computer system and formed
part of a technical problem solution. Features or aspects of the claimed method which
reflected only peculiarities of the field of linguistics, however, must be ignored in
assessing inventive step. In the case in point, the technical differences which established
the novelty of the claimed process were not inventive since they originated from a non-
technical constraint to the technical problem, the implementation of which was obvious
In T 244/00 the appeal concerned a remote-control apparatus in the field of audio-visual
systems. The invention was distinguished from the prior art system only in that at least
four switches (of the cursor key) were operable in single or pair wise action in at least six
directions and allowed direct cursor jumps along slanting lines in diagonal directions. The
board stated that the graphic design of menus was, as a rule, not a technical aspect of a
menu-driven control system. Nor was the practical use of such menus genuinely a
problem with which the skilled person, in his function as a technical expert, was
confronted. For the purpose of the problem and solution approach, the problem had to
be a technical problem which the skilled person in the particular technical field might
have been asked to solve at the priority date. The board therefore concluded that in the
case at issue the technical problem had to be formulated in a more limited way than on
the basis of the alleged advantages of moving a cursor diagonally over the TV screen.
The actual technical problem resided in providing an appropriate cursor key enabling the
user to move the cursor in six or more such directions.
In T 951/02 claim 1 of the application related to a combined games and gambling device.
Technical Board of Appeal 3.4.03 held that, according to the statement of the problem in
the application, the aim of the invention was to provide a games device offering a player
particular inducements to play, thus preventing the player from starting to become bored.
No objective technical problem was identifiable in this wording, however. To arrive at the
objective technical problem, the aforementioned non-technical problem stated in the
application had to be reformulated to indicate the aim of achieving enhanced flexibility in

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terms of the possible games systems of the known games device. The board held,
however, that the replacement of one of the existing gambling systems in the device by a
games system did not involve an inventive step, since a device for gambling possesses
per se all the technical requirements for the operation of a game. The requisite
modifications to the gambling device were therefore limited to the adaptation of the
control program to the new games system. Such modifications to the control program of
the device were within the scope of normal practice for an expert.
In T 318/03 the invention related to a method for allocating optimum operating
parameters, in particular operating frequencies. The objective problem posed in the
application was to indicate a method for allocating radio frequencies in a radio network
having cells of differing sizes with a view to reducing the extent to which signals are
subject to interference from other transmitters' signals. Technical Board of Appeal 3.5.03
established that this was a technical problem. The claimed method influences the
resulting physical radiation field and thus solves the problem by technical means.
8.2. Combination invention
8.2.1 Existence of a combination invention
In assessing the inventive step involved in an invention based on a combination of
features, consideration must be given to whether or not the state of the art was such as
to suggest to a skilled person precisely the combination of features claimed. The fact that
an individual feature or a number of features were known does not conclusively show the
obviousness of a combination (T 37/85, OJ 1988, 86; T 656/93, T 666/93, T 1018/96).
The question is not whether the skilled person, with access to the entire prior art, could
have made the combination according to the invention, but whether he actually would
have done so in expectation of an improvement (see T 2/83, OJ 1984, 265; T 713/93,
T 223/94, T 406/98). When assessing inventive step in a combination invention the
decisive criterion is not whether individual elements of the combination were known and
obvious from prior art, but whether the state of the art would lead a skilled person to this
particular overall combination of (possibly already known) features. Were this not so, it
would be impossible for a combination consisting exclusively of known individual
features to involve an inventive step (T 388/89, T 717/90, T 869/96).
A mere aggregation of features must be distinguished from a combination invention.
The existence of a combination invention requires that the relationship between the
features or groups of features be one of functional reciprocity or that they show a
combinative effect beyond the sum of their individual effects (see also Chapter I.D.8.2.2).
In T 406/98 the board found that as a rule, particularly when large numbers of citations
were involved, it was necessary to ask why the skilled person would consider
documents in that specific combination, and whether, not knowing the invention, he
had reason to do so. In this case, a complete solution to the problem required deliberate
selection from a large number of citations.
In T 55/93 the appellant's argument, according to which the alleged invention should
have been regarded as a mere aggregation of solutions of two independent partial
problems which were not interrelated, was not accepted by the board. In the case in
point, not only could the primary problem underlying the contested patent neither be
found nor be derived from the prior art documents, but also the claimed features

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complemented each other. The board stated that the features were functionally linked
together, which was the actual characteristic of a combination invention. It was wrong to
select, on the basis of a plurality of partial problems to be solved, the respective
constructional means used in the apparatus combination, or the steps of the method
worded in terms of functional features, which by working together provided a solution to
the problem taken as a whole. The non-obviousness of a combination claim turned on
the simultaneous application of all its features (T 175/84, OJ 1989, 71). A combination
effect was also acknowledged in T 120/88, T 731/94, T 434/95 and T 897/95.
8.2.2 Partial problems
In patent law terms, the existence of a combination of features, ie of a combination
invention, is to be viewed differently from the mere existence of partial problems, ie of an
aggregation of features. According to current case law, partial problems exist if the
features or sets of features of a claim are a mere aggregation of these features or sets
of features which are not functionally interdependent, ie do not mutually influence
each other to achieve a technical success over and above the sum of their respective
individual effects, in contrast to what is assumed in the case of a combination of features
(T 389/86, OJ 1988, 87; T 387/87, T 294/90, T 363/94). Also to be borne in mind is that
solutions to partial problems in differing technical fields must be assessed on the basis of
the knowledge and expertise of the person skilled in the art where the solution is found
(T 32/81, OJ 1982, 225; T 324/94).
In T 389/86 (OJ 1988, 87) the relationship between the two groups of features was not
one of functional reciprocity. The board ruled that in such circumstances no combinative
effect could be advanced in support of inventive step; rather the question was whether
each group, taken singly, was obviously derivable from the prior art. For the subject-
matter of the claim to be inventive, it sufficed if one of these groups was (T 345/90,
T 701/91).
Also in T 130/89 (OJ 1991, 514) the technical problem intended to be solved by the
claimed invention consisted of two technically independent partial problems, each solved
independently by one of the claimed subject-matter's features. The board held that the
independence of the claimed subject-matter's features (each producing a different effect)
meant that in assessing inventive step two closest states of the art had to be considered
to enable each of the two partial problems to be defined. It concluded that since each of
the partial problems was solved by means which merely performed their known
functions, each partial solution was obvious and the invention thus lacked inventiveness.
In T 597/93 the board again saw no inventive step in combining the claim's two features -
both known per se - since they related to the solving of two entirely separate partial
problems. It cited T 687/94 which held that in such cases the solutions could be
assessed separately against the prior art (see also T 315/88 and T 65/90).
In T 711/96 the board found that characterising features (a) and (b) functioned
completely independently of each other; there was no functional interplay (combination)
between them. Although the setting for one value (eg spread) could indirectly affect that
for the other (eg quantity), in that spread and quantity could both be adjusted upwards to
maintain constant distribution, the two features were not directly related. In other words,
the characterising features did not necessarily influence each other, although they could
do. The board therefore assessed the inventive step of the two features separately, and
concluded that both partial problems were obvious.

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In T 410/91 the board of appeal stated that no inventive step was involved since,
although all the measures in claim 1 contributed to an increase in the efficiency of the
plant, that contribution was based on known, different individual effects which resulted in
these measures being executed in a manner expected by the skilled person. The
subject-matter of claim 1 therefore involved the stringing-together of known measures
which displayed their characteristic effects; no synergistic effect based on a combination
of the individual measures was discernible in the sense of a mutual influence on their
respective operation (see also T 144/85, T 141/87, T 407/91).
8.3. Technical disclosure in a prior art document
In line with the established case law of the boards of appeal, when investigating
inventive step it should be borne in mind that the technical disclosure in a prior art
document should be considered in its entirety, as it would be done by a person skilled in
the art and that it is not justified arbitrarily to isolate parts of such document from their
context in order to derive from them technical information which would be distinct from
the integral teaching of the document (T 56/87, OJ 1990, 188; T 768/90, T 223/94,
T 115/96, T 717/96, T 414/98). According to T 95/90, different parts of text in a
document can be combined if there is nothing to stop the skilled person from doing so.
8.4. Features not contributing to the solution of the problem
According to the established case law of the boards of appeal, features which do not
contribute to the solution of the problem set in the description are not to be considered in
assessing the inventive step of a combination of features (T 37/82, OJ 1984, 71).
According to this decision, in assessing the inventive step of a combination of features,
consideration had to be given to a feature only if the applicant had provided evidence
that it contributed, either independently or in conjunction with one or more of the other
features, to the solution of the problem set in the description (see also T 65/87, T 144/90,
T 206/91, T 574/92, T 226/94, T 912/94, T 15/97, T 471/98, T 442/02). Therefore, only
those claimed features are to be considered which contribute causally to the solution of
the problem (T 285/91). In T 294/89 the board stated that the additional feature provided
no surprising advantage and did not make any contribution to solving the problem
indicated. Hence, the said additional feature was not relevant for assessing the inventive
step of the combination of features claimed.
In T 589/95 the terms of the solution of the technical problem extended into an area of
use where it had been admitted that the relevant problem was known not to arise in
practice. The board stated that, for such an area, the features of the solution did not
contribute to the solution of the technical problem and could not be taken into account in
the assessment of inventive step.
8.5. Foreseeable disadvantageous or technically non-functional modifications
In some decisions the subject-matter was found not to involve an inventive step, when
the invention was the result of a foreseeable disadvantageous modification of the closest
prior art (T 119/82, OJ 1984, 217; T 155/85, OJ 1988, 87; T 939/92, OJ 1996, 309;
T 72/95).
The board in T 119/82 (OJ 1984, 217) had already found that disadvantageous
modifications did not involve an inventive step if the skilled person could clearly predict

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these disadvantages, if his assessment was correct and if these predictable

disadvantages were not compensated by any unexpected technical advantage.
With reference to T 119/82, Board 3.3.05 held in T 72/95, T 157/97, T 176/97 and
T 158/97 that similar considerations applied to technically non-functional modifications.
An inventive step could not be claimed on the basis of a non-functional modification of a
known device. If a known device was modified by adding a feature which had no
technical function, this modification could not be inventive. However, the board was
obliged to assess the existence of a technical function alleged to be relevant to inventive
step. The board was aware of T 1027/93, in which another board had observed (obiter
dictum) that the EPC does not require that an invention, to be patentable, must entail any
useful effect, and that the apparent futility of a given modus operandi could rather be
said to render it completely non-obvious. The board emphasised that the concept of
"invention" implied a technical character. Technically non-functional modifications were
therefore irrelevant to inventive step, even if the skilled person would never think of such
a modification. A parallel could be drawn here with a new design based on a known
technical concept. The new design might be a surprise and thus "not obvious" for
professional designers. Nevertheless if the modifications had no technical relevance and
were, from a technical point of view, arbitrary, the new design was not patentable and did
not involve an inventive step.
8.6. Substitution of materials - analogous use
According to T 21/81 (OJ 1983, 15), a skilled person's selecting from the materials
known to him as suitable for a certain purpose the one which was the most appropriate
had to be regarded as forming part of his normal activities. The skilled person should
therefore be at liberty, within the constraints of standard technical progress, to use
alternative means known by him to have the same effect (T 324/94). In T 410/92 the
board also held that using higher-quality materials in the design of single-phase
synchronous motors with a double-pole permanent-magnet rotor was obvious. The
appellants had argued that the skilled person using the superior materials available to
him would be confronted with baffling starting problems. The board however concluded
that the skilled person's encountering known problems when using newly developed
materials would not deter him from using them in order to achieve specific, desired
improvements, particularly since the means of overcoming such problems could be
derived from the prior art.
The headnote in T 192/82 (OJ 1984, 415) read as follows: If an article is known as a
combination or mixture of components fulfilling known functions, the generation and
application of an improved novel component for the same purpose may be patentable as
such and also as an improved article incorporating the same. If the component in
question forms, on the other hand, part of the state of the art together with its relevant
properties, the incorporation thereof in the same article will be obvious in view of its
predictable beneficial effect ("analogous substitution").
In this connection the board also established in T 130/89 (OJ 1991, 514) that the use of
a known material on the basis of its known properties and in a known manner to obtain a
known effect in a new combination was not normally inventive ("similar use"). Exceptions
to this principle might be allowed in special cases, eg where a selection brought
unexpected advantages, a known prejudice was overcome or unforeseen difficulties
were encountered, such as the need to alter another component.

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Following these decisions, the board summed up in T 213/87 that, in the absence of any
unexpected effect, the mere substitution of an element by another known for its relevant
properties to provide that known effect could not be regarded as patentable.
8.7. Combination of documents
It would not be obvious to a skilled person to combine an isolated, very old document (ie
50 year old document), which had not given rise to a trend in the art and whose teaching
ran counter to the present trend, with the document reflecting the closest state of the art
(T 261/87, T 366/89, T 404/90).
In T 745/92 the board pointed out that the disclosure of two prior documents - even if
they were classified under the same IPC classification - could only be combined so as to
result in a finding of lack of inventive step if such combination would have been obvious
to a skilled person seeking to solve the problem underlying the claimed invention
(T 104/95, T 395/00).
In T 552/89 the board confirmed that, when assessing inventive step, it was not
permissible to combine the teachings of different documents within the state of the art in
order to establish the obviousness of a claimed invention, unless it would have been
obvious for the skilled person to do so at the time of filing. When a problem defined by
reference to the closest prior art as disclosed in a primary document consisted of
individual problems, board of appeal case law stated that the skilled person could be
expected to take account of solutions to the individual problems proposed in different
secondary documents in the same or neighbouring technical fields. Thus, the teachings
of secondary documents might be combined with the disclosure of the closest prior art if
such secondary documents provided solutions to specific individual problems forming
part of the objective problem in progressing from the closest prior art, in particular when
such individual solutions were merely aggregated together in the claimed invention.
In T 302/02 the board added that if an invention consisted of a new combination of
features taken from different technical areas, a discussion whether or not it was obvious
would normally involve at least as many documents as technical areas combined in it.
The board adopted the approach taken in T 552/89 according to which a technical
problem might be formed of "individual problems". The number of individual problems
obviously depended on the degree of detail of the claim under consideration and the
cited decision did not suggest that beyond a certain number the presence of an inventive
step might be taken for granted. On the contrary, it was said to be obvious to try to solve
the individual problems as long as the corresponding solutions were "merely aggregated
together" in the claim.
8.8. Chemical inventions
8.8.1 Structural similarity
To deny inventive step for novel chemical compounds because of their structural
similarity to known chemical compounds amounted to an allegation that a skilled person
would have reasonably expected the same or similar usefulness of both the known and
the novel compounds as the means for solving the technical problem underlying the
application in question. Such an expectation would be justified, if the skilled person
knew, be it from common general knowledge or from some specific disclosure, that the
existing structural differences of the chemical compounds concerned were so small that

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they would have no essential bearing on those properties, which were important for
solving the said technical problem and could be disregarded (T 852/91).
In T 643/96 the board held that the concept of bioisosterism did form part of the common
general knowledge of those skilled in the art, but that it had to be applied with caution
when deciding upon inventive step. In the field of drug design, any structural modification
of a pharmacologically active compound was, in the absence of an established
correlation between structural features and activity, expected a priori to disturb the
pharmacological activity profile of the initial structure. This also held true for an alleged
case of bioisosterism, which was one option of a structure-activity relationship, as long
as it was not an established case of bioisosterism (see also T 548/91). In T 643/96 it was
held that, when deciding upon inventive step in relation to pharmacologically active
compounds, what was essential was not whether a particular substructure of a chemical
compound was replaced by another known isosteric one, but whether information was
available on the impact of such a replacement on the pharmacological activity profile of
the specific (group of) compound(s) concerned (see also T 467/94, T 156/95).
In T 930/94 the board held that knowledge of the fact that one specific member of a class
of chemical compounds did not lead to the effect achieved by several other members of
this class, did not, without additional indications, mean that such an effect could be
attributed to all the compounds in this group. In such circumstances, the effect in point
did not lead to a recognition of the existence of a technical concept that could be
generalised (T 641/97, T209/98, T 853/03).
In T 989/93 the board stated that, in the absence of the appropriate common general
knowledge, no conclusions are possible on the basis of the known properties of one
group of chemical compounds (here: benzene derivatives) regarding the properties of a
different group of chemical compounds (here: naphthalene derivatives).
8.8.2 Broad claims
Art. 56 EPC requires the claimed invention, ie the proposed technical solution for a given
technical problem, not to be obvious to a skilled person from the state of the art. If the
inventive step of a claimed invention is based on a given technical effect, the latter
should, in principle, be achievable over the whole area claimed (T 939/92, OJ 1996, 309;
T 694/92, OJ 1997, 408; T 583/93, OJ 1996, 496).
T 939/92 (OJ 1996, 309) contained fundamental rulings on broad claims in the field of
chemistry. The board held that in view of the state of the art the technical problem which
the patent in suit addressed was provision of further chemical compounds with herbicidal
activity. It was necessary for all the claimed compounds to possess this activity. The
question as to whether or not such a technical effect was achieved by all the chemical
compounds covered by such a claim might properly arise under Art. 56 EPC was posed,
if this technical effect turned out to be the sole reason for the alleged inventiveness of
these compounds. The appellants' submission that the test results contained in the
description showed that some of the claimed compounds were indeed herbicidally active
could not be regarded as sufficient evidence to lead to the inference that substantially all
the claimed compounds possessed this activity. In such a case the burden of proof
rested with the appellants. The requirements of Art. 56 EPC had not therefore been met
(T 268/00, T 1188/00, T 320/01, T 1064/01, T 924/02).

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Following T 939/92 (OJ 1996, 309), the board stated in T 668/94 that the technical
problem could only be taken into account in the assessment of inventive step if it could
be accepted as having been successfully solved, ie if it were credible that substantially
all claimed compounds possessed the plant growth regulating activity. When only some
and not substantially all claimed compounds exhibited a particular technical effect, the
conclusion had to be that the invention as broadly defined in the independent claim was
not a solution to the technical problem of achieving the given technical effect, with the
consequence that the alleged technical effect of some of the claimed compounds was to
be disregarded when determining the objective problem underlying the invention and
thus when assessing inventive step.
In T 942/98 the problem as per the application was the preparation of improved selective
herbicides. The board referred to the above mentioned case law and did not agree with
the applicant that in the present case he merely had to show an improved effect at the
direct interface between prior art and the application in order to demonstrate, without
providing further details, that such an improvement applied without qualification for the
entire breadth of the claim. The appellant's position, in the board's view, amounted to
allowing the applicant to decide how broad a claim could be, whether or not an
improvement in the effect of all the compounds claimed was actually credible.
8.8.3 Intermediate products
In key decision T 22/82 (OJ 1982, 341) the board ruled that the preparation of new
intermediates for a surprisingly advantageous complete process for the preparation of
known and desired end products was inventive.
Again in T 163/84 (OJ 1987, 301) intermediate chemical products were held to be
patentable on the grounds that their further processing to the known end products
involved an inventive step. The board however held that a new chemical intermediate did
not become inventive merely because it was prepared in the course of an inventive multi-
stage process and was further processed to a known end product; there had to be other
factors as well, such as that the process for preparing the new intermediate had enabled
it to be prepared for the first time and had done so inventively and other methods of
preparing it had appeared to be ruled out.
In T 648/88 (OJ 1991, 292) the board disagreed with the view expressed in T 163/84,
pursuing instead the line taken in T 22/82. An intermediate intended for the preparation
of a known end product was deemed to be inventive if its preparation took place in
connection with inventive preparation or inventive further processing or in the course of
an inventive complete process.
In T 1239/01 the board confirmed that an intermediate intended for the preparation of a
known end product is deemed to be inventive if its preparation took place in the course
of an inventive complete process.
In T 65/82 (OJ 1983, 327) it was explained that new intermediates which take part in
(non-inventive) analogy processes for sequent products (i.e. end products or
intermediates of various kinds), must - in order to qualify as intermediates - provide a
structural contribution to the subsequent products. Even where this condition is met,
such intermediates are not thereby unconditionally inventive, i.e. not without taking the
state of the art into consideration. As state of the art in relation to intermediates there are
two different areas to be taken into account. One is the "close-to-the-intermediate" state

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of the art. These are all compounds identified from their chemical composition as lying
close to the intermediates. On the other hand the "close-to-the-product" state of the art
must also be taken into account, i.e. those compounds identified from their chemical
composition as lying close to the subsequent products.
In T 18/88 (OJ 1992, 107) the applicants had argued that the insecticidal activity of the
known end products was significantly superior to that of another known insecticide with a
similar structure; this was sufficient to establish an inventive step for the intermediate
products, even if the end products were not novel and/or inventive. The board, referring
to T 65/82 (OJ 1983, 327), rejected the applicants' argument on the following grounds:
claimed intermediates must themselves be based on an inventive step to be patentable.
Whether, under certain circumstances, new and inventive subsequent products might
support an inventive step of intermediates was not the question here, because the
subsequent products in this case were either not novel or not inventive. The superior
effect of subsequent products which were neither novel nor inventive was not sufficient
to render the intermediates inventive (T 697/96, T 51/98).
8.9. Equivalents
According to established board of appeal case law, equivalents which are not disclosed
in a published document must not be considered in assessing novelty as this properly
belongs to the examination for inventive step (see T 167/84, OJ 1987, 369; T 446/88,
T 517/90; cf. also Guidelines C-IV, 7.2 - June 2005 version). In T 697/92, the board dealt
with the concept of "equivalent means", according to which two means were equivalent
if, despite having different embodiments, they fulfilled the same function with regard to
the same result. Both means performed the same function if they shared the same basic
idea, ie if they applied the same principle in the same way. The result was the totality of
the technical effects produced by the means. In order to be considered as equivalents,
the means had to achieve the same kind and quality of result. A means was thus not
equivalent if, because of its different embodiment, it led to a result of the same kind but
of a different quality or degree of effectiveness. The result did not necessarily even have
to be better; it was sufficient for it to be different, since it was not the result itself which
was patentable but the means by which it was achieved (cf. T 818/93, T 929/02).
8.10. Problem inventions
The discovery of an unrecognised problem may in certain circumstances give rise to
patentable subject-matter in spite of the fact that the claimed solution is retrospectively
trivial and in itself obvious (see T 2/83, OJ 1984, 265; T 225/84). The posing of a new
problem did not represent a contribution to the inventive merits of the solution if it could
have been posed by the average person skilled in the art (T 109/82, OJ 1984, 473). It
also had to be taken into consideration that it was the normal task of the skilled person to
be constantly occupied with the elimination of deficiencies, the overcoming of drawbacks
and the achievement of improvements of known devices and/or products (see T 15/81,
OJ 1982, 2; T 195/84, OJ 1986, 121). In T 532/88 the board confirmed the established
principle that to address a problem simply by looking for ways of overcoming difficulties
arising in the course of routine work did not constitute inventiveness. Following this case
law, the boards held in T 630/92, T 798/92, T 578/92, T 610/95 and T 805/97 that the
posing of the problem could not confer any inventive merit on the claimed subject-matter.
Inventive step was however acknowledged in T 135/94 and T 540/93 (pet doors) on the
ground (also) that the posing of the problem was not obvious.

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In T 971/92 the board emphasised that the appreciation of conventional technical

problems which formed the basis of the normal activities of the notional person skilled in
the art, such as the removal of shortcomings, the optimisation of parameters or the
saving of energy or time, could not involve an inventive step. The appreciation of a
technical problem could thus only contribute to the inventive step in very exceptional
circumstances. However, if an applicant nevertheless wished to rely on an assertion that
the inventive activity resided in the recognition of a technical problem to which the
solution was admittedly obvious, then the minimum requirement to be met was that this
technical problem be clearly and unambiguously disclosed in the application as filed
(T 43/97).
In T 566/91 the invention related to a soft nystatin pastille formulation for treatment of
candidiasis in the oral cavity. In the case in point the board did not agree with the
submission by the appellants that the technical problem underlying the contested patent
consisted in the unrecognised problem of poor patient compliance, as the average skilled
person could have posed that problem where - as in that particular case - one
necessarily came to light when an object or product was used. Consequently, a problem
which amounted to no more than noticing obvious non-compliance with an obvious
desideratum in a given situation, namely poor patient compliance using nystatin
formulation as a result of the unpleasant taste of the active substance, could not be
retained as the actual problem to be solved.
8.11. New use of a known measure
When determining inventive step in the case of a new use of a known measure, the
boards of appeal examine whether or not the problem which has been solved with a
known measure in a known case differs from the problem posed in the case to be
decided. If this examination reveals that there is no fundamental difference between the
two problems, it can in principle be concluded that there is no inventive step if the known
measure is adopted (see in particular T 39/82, OJ 1982, 419; T 142/84, OJ 1987, 112;
T 332/90, T 485/91, T 25/97). In T 39/82 (OJ 1982, 419) the board stated that it could not
be considered obvious for the skilled person to use a known measure in a different
context since the problems differed fundamentally from one another.
Referring to T 39/82 (OJ 1982, 419) the board confirmed in T 818/93 that in a
combination invention all the features might be known per se - the invention resided in
the way the features were interrelated, both structurally and functionally. In assessing the
inventive step of the combination in question it was therefore of no consequence that a
suitable structure was already known, provided its use and application in the conditions,
and circumstances disclosed in the patent were not suggested by the cited prior art.
In T 741/92 the invention involved the new use of a known means, namely a particular
mesh structure. In the case of such inventions the board took the view that it was of little
importance that the means was known per se if new properties and purposes came into
play in its use. The known means was used in the invention to obtain a result not
previously known or obvious.
Summing up in T 301/90, the board held that it was a generally accepted principle in the
assessment of inventive step that, whereas the use of a known measure to achieve a
known result on the basis of the expected inherent effect was not normally inventive, the
indication of a new and non-obvious technical result, which could be achieved through
these known effects (for application to the field of chemistry, see T 4/83, OJ 1983, 498

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and to the field of physics, see T 39/82, OJ 1982, 419) might nevertheless convert the
use of this known measure into a new and non-obvious tool for solving a new technical
problem. It might thus represent an enrichment of the art and imply an inventive step
(see T 1096/92, T 238/93).
In T 590/90 the respondents argued that both the measures taken that distinguished the
technical teaching of the contested patent from that of document 1 were already part of
the prior art, and their application to the process described in document 1 was obvious.
However, the board held that the application of a measure known as such, contrary to
warnings given in several documents, was not obvious. Since this measure involved an
inventive step, the overall process of claim 1 encompassing that measure likewise
involved an inventive step: the modification of a known process by two measures, at
least one of which was not obvious, rendered the entire process inventive.
8.12. Obvious new use
In T 112/92 (OJ 1994, 192) document (1), as the closest prior art, referred to the use of
glucomannan as a thickener for an ungelled processed food product, but did not mention
its function as a stabiliser. The board applied the principles set out in T 59/87 (OJ 1991,
561) to the present case and stated that even if glucomannan did act as an emulsion
stabiliser in preparing the product in accordance with document (1), this use would have
been a hidden use. It came to the conclusion that the use of a substance as a stabiliser
for emulsions, if not inextricably linked with its use as a thickening agent, was at least
very closely related. The board held that it would have been obvious for the skilled
person, knowing that glucomannan was effective as a thickening agent for emulsions, at
least to try to find out if it was also effective as a stabiliser. Although T 59/87 had found
that a claim to an inherent but hidden later use of a known substance could be novel, the
subject-matter of such a claim would still lack inventive step if the prior art indicated a
well-established link between the earlier and later uses (see also T 544/94).
8.13. Need to improve properties
In its headnote to T 57/84 (OJ 1987, 53) the board stated: If a product is required to
manifest a particular property (in this case a highly fungicidal effect) under various
conditions, the superiority of the invention will depend on whether or not that property is
improved under all conditions liable to be encountered in practice and particularly under
the various conditions evolved in order to test it (in this case exposure to water and
wind). If comparative tests are cited in support of that superiority, it is their combined
results that have to be considered. The decisive factor is whether the invention
outperforms the substance used for comparison in the tests as a whole (in this case,
results in the need to use a significantly lower concentration of the pollutant substance),
even if the substance used for comparison proves better in one of the tests.
Following T 57/84, it was stated in T 254/86 (OJ 1989, 115) that an invention which
relied on a substantial and surprising improvement of a particular property did not also
need to show advantages over the prior art with regard to other properties relevant to its
use, provided the latter were maintained at a reasonable level so that the improvement
was not completely offset by disadvantages in other respects to an unacceptable degree
or in a manner which contradicted the disclosure of the invention fundamentally (see also
T 155/85, OJ 1988, 87). It was thus not necessary for there to be an improvement in
every respect (T 302/87, T 470/90).

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In T 155/85 (OJ 1988, 87) it was further pointed out that subject-matter falling structurally
between two particular embodiments of cited disclosure and displaying, in all relevant
respects, effects substantially between those known for the same embodiments, lacked
inventive step in the absence of other considerations.
8.14. Disclaimer
In G 1/03 and G 2/03 (OJ 2004, 413 and 448), the Enlarged Board of Appeal dealt with
the allowability of "undisclosed disclaimers", i.e. "negative features" which have no basis
in the application as filed. The Enlarged Board held that a disclaimer which was or
became relevant for the assessment of inventive step or sufficiency of disclosure added
subject-matter contrary to Art. 123(2) EPC (T 1028/02).
For further information on disclaimers, see Chapters II.B.1.2.1 and III.A.1.6.3.
8.15. Optimisation of parameters
In key decision T 36/82 (OJ 1983, 269), the board stated that inventive step was not
considered to be constituted by efforts directed at the concurrent optimisation of two
parameters of a particular device by the simultaneous solution of two equations which
were known per se and respectively expressed those parameters as functions of certain
dimensions of the device. The fact that it had proved possible to find a range of values
for the dimensions in question which provided an acceptable compromise between the
two parameters could not be considered surprising where there were indications in the
prior art suggesting that favourable results might be obtained by the method of
calculation applied.
In T 263/86 the invention related to a spectacle lens with an astigmatic effect. The board
of appeal pointed out that the relationship between residual astigmatism, focussing error
and frequency response could be assumed to be known by a spectacles expert. The
board therefore saw the quality formula as merely the result of simultaneous optimisation
of a number of lens properties which led to a compromise lying within the skilled person's
discretion. However, such compromises in the case of a parameter optimisation were not
deemed to be surprising and their discovery was thus not considered to involve an
inventive step.
In a number of other decisions, all of which referred to T 36/82 (OJ 1983, 269) the
subject-matter was found not to involve an inventive step, particularly when the problem
addressed was to find a suitable compromise between different parameters (T 38/87,
T 54/87, T 655/93 and T 118/94). In T 410/87 the board stated that it was part of the
activities deemed normal for the skilled person to optimise a physical dimension in such
a way as to reach an acceptable compromise, serving the intended purpose, between
two effects which were contingent in opposing ways on this dimension (see also
T 409/90, OJ 1993, 40; T 660/91, T 218/96, T 395/96, T 660/00).
In T 73/85 the board stated that the very fact that the problem of improving the property
in question was solved not - as was normal - by means of a specific change in structural
parameters but by amending process parameters had in fact to be considered surprising.
In this case it did not matter that the individual reaction conditions claimed in the
disputed patent were known per se; more important was whether the skilled person, in
expectation of the sought-after optimisation had suggested, or - in the absence of

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possible predictions - had tried as a matter of priority, the combination of measures

known per se claimed.
In T 500/89 the board established that the fact that individual parameter areas taken per
se were known did not imply that it was obvious to combine them specifically to solve the
problem according to the contested patent. The combination of the individual parameter
areas was not the result of merely routine optimisation of the process according to
document 1, as there was nothing in said document to suggest this combination.
8.16. Small improvement in commercially used process
In T 38/84 (OJ 1984, 368) the board of appeal pointed out that the achievement of a
numerically small improvement in a process commercially used on a large scale (here
enhanced yield of 0.5%) represented a worthwhile technical problem which should not
be disregarded in assessing the inventive step of its solution as claimed (see also
T 466/88 and T 332/90). In T 155/85 (OJ 1988, 87) the board added that it was correct to
say that even small improvements in yield or other industrial characteristics could mean
a very relevant improvement in large-scale production, but the improvement had to be
significant and therefore above margins of error and normal fluctuations in the field in
consequence of other parameters. In T 286/93 the invention related to a process for
manufacturing wrapping paper and board. The results for the process had shown that
the machine speed and the mechanical quality of the paper obtained had improved by
some 3 % vis-à-vis a process in which the order in which aluminium polychloride and
cationic starch were added had been reversed. Since a process of this kind was
obviously intended for the production of paper on an industrial scale, even a small
improvement had to be regarded as significant.
8.17. Evidence of inventive step in the field of medicine
In T 619/94 the board held that features that were known or obvious in the field of
sandblasting could not automatically be transferred to the medical field without
considering the particular situation in the latter field, since in the case in point the
consistency of the human tissue to be removed by abrasion was different from that of the
material normally removed by sandblasting.
In T 913/94 the invention relates to the use of a specific agent in the preparation of a
medicament against gastritis. In the board's view, though gastritis and ulcer are distinct
diseases, they have common aspects in relation to their causative factors. In the case in
point the board investigated, whether, an anti-ulcer medicament would also have been
expected to be active against gastritis. It arrived at the conclusion that if the
manifestations of the second more serious disease (ulcer) are known to run through the
manifestations of the first disease, and this assumption reliably substantiated was not
confuted, then the activity of a medicament against the more serious disease would
already strongly suggest an effect also against the less serious one. Thus, said agent is
known for the treatment of experimentally induced ulcer; its use for the preparation of a
medicament for the treatment of gastritis does not involve any inventive merit.
8.18. Analogy process - envisageable product
The effect of a process manifests itself in the result, ie in the product in chemical cases,
together with its internal characteristics and the consequences of its history of origin, eg
quality, yield and economic value. It is well established that analogy processes are

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patentable insofar as they provide a novel and inventive product. This is because all the
features of the analogy process can only be derived from an effect which is as yet
unknown and unsuspected (problem invention). If, on the other hand, the effect is wholly
or partially known, eg the product is old or is a novel modification of an old structural
part, the invention, ie the process or the intermediate therefore, should not merely
consist of features which are already necessarily and readily derivable from the known
part of the effect in an obvious manner having regard to the state of the art (T 119/82,
OJ 1984, 217; see also T 65/82, OJ 1983, 327).
According to T 2/83 (OJ 1984, 265), so-called analogy processes in chemistry are only
claimable if the problem, ie the need to produce certain patentable products as their
effect, is not yet within the state of the art.
T 595/90 (OJ 1994, 695) was concerned with the inventiveness of a product which could
be envisaged as such but for which no known method of manufacture existed.
Accordingly, a product which could be envisaged as such with all characteristics
determining its identity including its properties in use, ie an otherwise obvious entity,
might nevertheless become non-obvious and claimable as such if there was no known
way or applicable (analogous) method in the art for making it and the claimed methods
for its preparation were therefore the first to achieve this and do so in an inventive
manner (T 268/98, T 441/02).
In T 803/01 the board concluded that by analogy with T 595/90, the decisive question in
the case in point was whether the polylactide in the claimed degree of purity was
achievable at the priority date of the application in suit or whether there was an obvious
way leading to it. But as this was not the case, the board concluded that the claimed
subject-matter involved an inventive step.
In T 233/93 the combination of properties defining the claimed products had been a
desideratum which the skilled community had striven to achieve. These properties,
however had been considered to be irreconcilable. The board stated that such a desired
product, which may appear obvious per se, may be considered non-obvious and be
claimable as such, if there is no known method in the art to make it and the claimed
methods for its preparation are the first to produce it and do so in an inventive manner
(T 1195/00).
8.19. Examples on the denial of inventive step
8.19.1 Reversal of procedural steps
The mere reversal of procedural steps in the production of component parts could not
provide justification for inventive step (T 1/81, OJ 1981, 439).
8.19.2 Purposive selection
If, for a particular application of a known process, the skilled person could obviously use
a material generally available on the market and suitable for the purpose, and was also
highly likely to use it for reasons irrespective of its characteristics, such use should not
be considered as inventive on account of those characteristics alone. It stood to reason
that if carrying out such a step was itself already obvious for other reasons, the natural
choice of the particular means on the market-place was devoid of mental or practical
effort, or of "purposive selection", in the absence of anything to the contrary (T 513/90,
OJ 1994, 154; see also T 659/00).

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8.19.3 Automation
In T 775/90 the board ruled that mere automation of functions previously performed by
human operators was in line with the general trend in technology and thus could not be
considered inventive (T 1175/02).
The mere idea of executing process steps automatically, eg replacing manual operation
by automatic operation, was a normal aim of the skilled person (T 234/96).
8.19.4 Routine experiments
According to the boards' case law enhanced effects could not be adduced as evidence
of inventive step if they emerged from obvious tests (T 296/87, OJ 1990, 195; T 432/98,
T 926/00, T 393/01).
In T 308/99 the claimed use was based on a thoroughly obvious property of known
substances. The slightly enhanced effects associated with the claimed use in
comparison with substances used in prior art emerged from obvious tests.
Work involving mere routine experiments, such as merely conventional trial-and-error
experimentation without employing skills beyond common general knowledge, lacked
inventive step (T 455/91, OJ 1995, 684; T 104/92).
In T 253/92 the subject-matter of claim 1 related to a process for the manufacture of a
permanent-magnet alloy. In the board's view a skilled person would have regarded it as
obvious to try out a variety of alloys known from the prior art to be of similar composition
to those of the better examples and to measure their magnetic properties.
8.19.5 Simplification of complicated technology
In T 61/88 the board indicated that in the face of an optimal but sophisticated solution to
a technical problem the skilled person could not be denied the capacity to recognise that
less complicated alternatives generally achieved less perfect results and consequently to
envisage such alternatives, at least in situations in which the advantages of decreased
complexity could reasonably be expected to outweigh the resulting loss of performance
(T 817/94).
In T 505/96 the board concluded that the simplification of complicated technology in
situations in which advantages of decreased complexity could reasonably be expected to
outweigh the resulting loss of performance must be considered to be part of the normal
work of the person skilled in the art.
8.19.6 Choice of one of several obvious solutions
In T 400/98 the board stated that applying one of the possible solutions which were
available to the skilled person requires no particular skills and hence does not involve an
inventive step (T 107/02).
In T 588/99 the board stated that in the particular situation where a document explicitly
defines any compound having a certain activity as a suitable component of a detergent
composition and urges the skilled person to look for such compounds in publications of
other technical fields such as biochemistry and medicine, it requires no inventive activity
to solve the technical problem of providing an alternative to the compositions disclosed in
such prior art by replacing the explicitly specified compounds having the given activity

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with any other such compounds which may be found by exploring the other technical
fields.
8.19.7 Several obvious steps
If the technical problem that the skilled person has set himself to solve brings him to the
solution step by step, with each individual step being obvious to him in terms of what he
has achieved so far and what remains for him to do, the solution is obvious to the skilled
person on the basis of the prior art, even if two or more such steps are required, and it
does not involve an inventive step (T 623/97; cf. also T 911/98, T 558/00).
9. Secondary indicia in the assessment of inventive step
I.D.9. Secondary indicia in the assessment of inventive step

9.1. General issues

According to established case law, a mere investigation for indications of the presence of
inventive step is no substitute for the technically skilled assessment of the invention vis-
à-vis the state of the art pursuant to Art. 56 EPC. Where such indications are present,
the overall picture of the state of the art and consideration of all significant factors may
show that inventive step is involved but this need not necessarily always be the case
(see T 24/81, OJ 1983, 133 and T 55/86). Secondary indicia of this kind are only of
importance in cases of doubt, ie when objective evaluation of the prior art teachings has
yet to provide a clear picture (T 645/94, T 284/96, T 71/98, T 323/99, T 877/99). Indicia
are merely auxiliary considerations in the assessment of inventive step (T 1072/92,
T 351/93).
In T 754/89 - "EPILADY" the board detailed its reasons for ruling that an inventive step
was involved. Although factors such as commercial success, the overcoming of
prejudice, the age of the documents cited, the cost of advertising and the creation of a
new market segment, the satisfaction of a long-standing need, the existence of imitations
and forms of infringement had received considerable attention, particularly in the parties'
written submissions, the technical facts of the case were such that secondary indications
of inventive step had lost any relevance.
In T 915/00 the board held that commercial implementation, licensing and the recognition
of the inventor's merits by the scientific community constituted further convincing
secondary indicia for the presence of inventive step.
9.2. Technical prejudice
According to the case law of the boards of appeal (see T 119/82, OJ 1984, 217;
T 48/86), inventiveness can sometimes be established by demonstrating that a known
prejudice, ie a widely held but incorrect opinion of a technical fact, needs to be
overcome. In such cases, the burden is on the patentee (or patent applicant) to
demonstrate, for example by reference to suitable technical literature, that the alleged
prejudice really existed (T 60/82, T 631/89, T 695/90, T 1212/01).
A prejudice in any particular field relates to an opinion or preconceived idea widely or
universally held by experts in that field. The existence of such prejudice is normally
demonstrated by reference to the literature or to encyclopaedias published before the
priority date. The prejudice must have existed at the priority date, any prejudice which
might have developed later is of no concern in the judgment of inventive step (T 341/94,
T 531/95 and T 452/96).

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Generally speaking, prejudice cannot be demonstrated by a statement in a single patent

specification, since the technical information in a patent specification or a scientific article
might be based on special premises or on the personal view of the author. However, this
principle does not apply to explanations in a standard work or textbook representing
common expert knowledge in the field concerned (T 19/81, OJ 1982, 51; T 104/83,
T 321/87, T 392/88, T 601/88, T 519/89, T 453/92, T 900/95, T 1212/01). In T 515/91 the
board regarded "ABC Naturwissenschaft und Technik" as a standard work (see also
T 461/92, T 152/93). In T 943/92 the existence of a prejudice was supported by a
specialist book which reflected the technical knowledge in the special field of the
contested patent. This book did not contain the opinion of just one specialist author, but
that of experts in the field, as it had resulted from the collaboration of "numerous
recognised scientists, technicians and practicians as well as associations and institutes".
General critical remarks in one textbook were not sufficient for substantiating an alleged
prejudice, if a plurality of prior art documents pointed to the opposite (T 134/93).
Generally established board of appeal case law is very strict on recognising the
existence of a prejudice. A solution put forward as overcoming a prejudice must clash
with the prevailing teaching of experts in the field, ie their unanimous experience and
notions, rather than merely citing its rejection by individual specialists or firms (T 62/82,
T 410/87, T 500/88, T 74/90, T 943/92, T 531/95 and T 793/97). The fact that a
disadvantage is accepted or the prejudice simply ignored does not mean that a prejudice
has been overcome (T 69/83, OJ 1984, 357; T 262/87, T 862/91).
In T 1212/01 the patent related to pyrazolopyrimidinones for the treatment of impotence
(Viagra). The patentee referred to some thirty scientific articles in order to demonstrate
the existence of a technical prejudice that drugs lowering blood pressure were a cause of
impotence rather than a form of treatment for that condition. The board, however, stated
that the contents of such a selection from the prior art could not be considered per se as
creating a technical prejudice against oral treatment of male erectile dysfunction. Such a
prejudice could only be established by proving that, in relation to the technical solution, a
relatively widespread error or misapprehension about the technical invention existed
among skilled workers in the relevant field before the priority date of the patent in suit.
The prejudice must be widely or universally held by experts in the relevant field. This was
not the situation in the present case.
In T 550/97 the respondent (patent proprietor) had argued that, years after the invention,
technically less advanced solutions had been filed for and marketed as a means of
integrating different mobile radio networks. However, the board did not consider the fact
that arguably less advanced solutions had been developed later to be evidence of
inventive step, as there was no reason to assume that later development was
attributable to a technical prejudice which the present invention had needed to
overcome.
In T 347/92 the board pointed out that the finding of a relatively small operating window
in an area which, according to the teaching of the most recent publications, was
considered inaccessible, could not be considered obvious to a person skilled in the art.
One form of secondary indicia in the nature of a "technical prejudice" is a development
of the art in a different direction (T 24/81, OJ 1983, 133; T 650/90, T 330/92).
In T 872/98 the board pointed out that the presence of secondary indicia might also be
attested by the fact that a competitor had, shortly after the priority date, filed a patent

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application with the German Patent Office in which the invention took an entirely different
direction to the European application.
In T 779/02 the board indicated that a prejudice could be proved by the fact that the
closest prior art and the invention were separated by a long period of time (in this case
over 16 years) during which the only solutions pursued led away from the invention and
only after which the solution provided by the invention became acceptable to experts in
the field.
9.3. Age of documents - time factor
The age of documents known long before the filing date might only be an indication of
inventive step if a need for the solution of an unsolved problem had existed for the whole
time between the date of the documents and that of the invention (T 79/82 and
T 295/94). Nevertheless, the long period of time to be considered was not the period that
had elapsed between the publication of a document and the filing of the European patent
application disclosing the teaching of that document, but that between the time the
problem became apparent and the date of filing of the European patent application
providing a solution (T 478/91).
A period of 23 years between the publication date of the document deemed to be the
closest prior art and the priority date of the contested patent in an economically
significant and frequently studied field could normally be viewed as an indication of the
presence of inventive step (T 273/92). In T 203/93 and T 795/93 a period of 11 years
was considered to be an indication in support of inventive step, in T 986/92 a period of
70 years, in T 478/91 80 years and in T 626/96 60 years (see also T 774/89, T 540/92,
T 957/92, T 697/94, T 322/95, T 255/97, T 970/97, T 6/02).
In T 330/92 the documents reflecting the general knowledge available to experts in the
field of the application (injection mould technology for cashcard holders) had been
published at least 17 years before the filing date of the contested patent. The board of
appeal pointed out that the elements which could have led to the feature combination of
claim 1 had thus long been known in the prior art. Nevertheless the experts had for all
this time been "blind" to these findings. Nor had other applicants in the same field made
use of the knowledge in question.
In T 1077/92 the board faced the unusual situation of a problem and its ready solution
having co-existed for 100 years in general, and more recently in a field of intensive
research, and still the seemingly obvious step had not been taken. The board concluded
that, as no other explanation could be found, this must have been because inventive
insight was needed (T 617/91).
In T 123/97 the failure to adopt an obvious solution to the technical problem underlying
the patent in suit may have resulted from a variety of causes: for example there may
have been a commercial reason for not adopting this new technique, because the old
technique was found satisfactory by the clients and could also be improved, thus
avoiding considerable investment costs involved in the adoption of a new technique on
an industrial scale.
9.4. Satisfaction of a long-felt need
The fact that the state of the art has been inactive over a long period prior to the
invention may be an indication that an inventive step is involved if during that time an

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urgent need for improvement has demonstrably existed (see T 109/82, OJ 1984, 473;
T 555/91, T 699/91). This indication is closely linked to the positive indications of the time
factor and age of the cited document.
In T 605/91 the board stated that it was not sufficient if only one individual skilled person
discovered a "long-felt need". Only if various and repeated attempts to deal with the
relevant disadvantages could be identified would such a long-felt need appear to have
persisted.
In T 1014/92 the board did not accept the appellant's further argument, that the long
period of time (about 35 years) for which documents (1) and (2) had been available to
the public without having been combined was in itself cogent evidence that there was no
obvious connection between them. The board held that this conclusion might only be
drawn if evidence relating to time were corroborated by other evidence, such as long-felt
want.
Where a process had been performed successfully on a commercial scale for more than
20 years in spite of economic disadvantages associated with it, and the claimed
invention provided a solution to the technical problem of avoiding such economic
disadvantages, this supported a finding of inventive step (T 271/84, OJ 1987, 405).
9.5. Commercial success
In principle, commercial success alone is not to be regarded as indicative of inventive
step. The following requirements must first be met a long-felt need must have been
fulfilled, and the commercial success must derive from the technical features of the
invention and not from other influences (eg selling techniques or advertising).
In T 110/92 the board did not dispute that the heating assembly according to claim 1
might have been a commercial success. However, such a commercial success alone,
with the technically relevant examination of the claimed subject-matter leading to a
negative result, could not be regarded as forming the basis for an indication of inventive
step even if the board were convinced that the success derived from technical features
of the heating assembly and not from other causes such as those of a commercial nature
(cf. T 5/91, T 219/90, T 373/94).
In T 478/91 too, commercial success was not regarded as indicative of inventive step.
The board pointed out that it was well known that the commercial success of a product
could just as easily be due to factors other than its properties, in particular more
streamlined manufacture, a market monopoly, advertising campaigns or efficient selling
technique (cf. T 270/84, T 257/91, T 712/92).
In T 1212/01 the patent related to pyrazolopyrimidinones for the treatment of impotence
(Viagra). The board stated to establish commercial success as an indicia of inventive
step required two evidentiary steps- first, to show that there had been commercial
success and, second, to show that such success resulted from the claimed invention and
not from one or more other causes. Viagra had been the subject of various awards and
praise in various journals. The board stated that the prizes would have been significant if
awarded by persons who understand patent law for the unobvious nature of the technical
contribution to the art made by the claimed invention. If however the prizes were
awarded for the product's life-enhancing nature, or for the appellants' high standard of
research, or for a high level of sales, then, for all that any of those reasons might well be

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prize-worthy, the prizes can have no significance in the context of inventive step. The
board arrived to the conclusion that the evidence did not establish that the "prizes and
praises" resulted from the claimed inventive step.
In T 677/91 the board took the commercial success of the claimed invention into
consideration and stated that it would have been wrong to ignore the practical impact
that the invention had made in its own field since the priority date. For example, in
several passages of a textbook reference was made to the fact that the various
advantages of the claimed invention had brought in a new era in this special field. The
board concluded that it was difficult to reconcile the contents of such passages with the
idea that the claimed invention was a matter of mere routine development and thus held
that the invention involved an inventive step.
In T 626/96 the invention had likewise achieved great commercial success and gained
widespread recognition in a number of countries. Furthermore, the success was
achieved in a very short space of time, so that there seemed to be a pressing
commercial need for this simple solution. Furthermore, the success was directly
attributable to the structure of the product claimed and was not due to marketing
techniques or advertising skills.
Efforts undertaken by market competitors to obtain rights of joint use are a
subsidiary instance of an indication of commercial success and may result in a decision
in support of the presence of inventive step, but need not necessarily do so. In T 351/93
the board stated that the latter applied particularly where a technical and expert
assessment of the invention in the light of the prior art led, according to the problem-
solution approach, to the conclusion that the existence of inventive step had to be
denied.
The case was slightly different in T 812/92: the situation might arise where, shortly
before the filing date of the contested patent, one of the patent proprietor's
competitors offered a customer a technical apparatus without reducing to practice the
advantageous technical solution according to the invention. This might be an indication
that an inventive step was involved.
9.6. Simple solution
In a technical field of commercial importance to which considerable attention is directed
the simplicity of a proposed solution may indicate inventive step. The difficulty of
developing a simple solution without sacrificing quality may therefore indicate inventive
step (T 106/84, OJ 1985, 132; T 229/85, OJ 1987, 237; T 9/86, OJ 1988, 12; T 29/87,
T 44/87, T 528/89, T 73/95). This did however presuppose the absence in the prior art of
anything that hinted at the proposed solution (T 712/92).
In T 234/91 it was pointed out that experience in structural engineering showed that with
the same or even an improved effect - in the case in point an increase in reliability - it
was often much more difficult to identify and achieve a simple solution than complicated
embodiments. In view of the large number of solutions suggested in the technical
literature, the board came to the conclusion that the improvement achieved by the simple
structural measure suggested in the contested patent had not been obvious (see also
T 330/87).

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Inventive step

In T 349/95 the subject-matter at issue related to a simple form of a simple device, a

device which, however, had brought about a surprising major functional improvement. In
the board's view, this surprising improvement and the fact that the prior art gave no clear
hint of the solution constituted evidence of the inventiveness of the claimed solution.
A different aspect was dealt with in T 113/82 (OJ 1984, 10). In order to proceed from the
known art to the invention, a series of steps needed to be taken. The board stated that
this could be considered as an indicator of the presence of inventiveness, particularly in
a case where the last decisive step had neither been proved to be known from the prior
art nor was derivable therefrom, although this last step might at first sight seem to be a
very simple one (see also T 315/87, T 508/88, T 424/89, T 394/90).
9.7. Surprising effect - bonus effect
An effect which may be said to be unexpected can be regarded as an indication of
inventive step (T 181/82, OJ 1984, 401). However, certain preconditions have to be met.
In T 21/81 (OJ 1983, 15) the board considered that if, having regard to the state of the
art, it would already have been obvious for a skilled person to arrive at something falling
within the terms of a claim, because an advantageous effect could be expected to result
from the combination of the teachings of the prior art documents, such claim lacked
inventive step, irrespective of the circumstance that an extra effect (possibly unforeseen)
was obtained (see T 365/86, T 350/87, T 226/88). This case law was also confirmed in
T 69/83 (OJ 1984, 357). Where, because of an essential part of the technical problem
being addressed, the state of the art obliged a skilled person to adopt a certain solution,
that solution was not automatically rendered inventive by the fact that it also
unexpectedly solved part of the problem. Therefore, an unexpected bonus effect does
not confer inventiveness on an obvious solution (T 231/97).
Furthermore, in T 192/82 (OJ 1984, 415) the board stated that the skilled person had to
be free to employ the best means already available for his purposes, although the use of
means leading to some expected improvements might well be patentable in relying on an
additional effect, provided this involved a choice from a multiplicity of possibilities. The
lack of alternatives in this respect might therefore create a "one-way-street" situation
leading to predictable advantages which remained obvious in spite of the existence of
some unexpected "bonus" effect. The board also pointed out in T 506/92 that an
additional effect achieved inevitably by the skilled person on the basis of an obvious
measure without any effort on his part simply represented a bonus under EPO case law
which could not substantiate inventive step, even as a surprising effect (see also
T 766/92, T 431/93, T 703/93, T 681/94, T 985/98, T 794/01).
The board in T 936/96 held that, once a realistic technical problem had been defined and
once it had been established that a particular solution to such a problem would have
been envisaged by a skilled person in the light of the relevant state of the art, that
solution could not be said to involve an inventive step, and this assessment was not
altered by the fact that the claimed invention inherently also solved further technical
problems. In the case in point the claimed surprising effect could not be regarded as an
indication of the presence of an inventive step.
In T 227/89 the board stated that in determining which effect was crucial and which was
merely accidental (the so-called "bonus effect"), a realistic approach had to be taken,
considering the relative technical and practical importance of those effects in the
circumstances of a given case (cf. also T 732/89 and T 729/90). When assessing

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chemical substances for inventive step, it is often their surprising properties that are
considered (see in this connection T 20/83, OJ 1983, 419).
In T 848/94 the solution of the existing technical problem required a combination of
measures that was not suggested by the prior art in such a manner that it would have
been adopted by the person skilled in the art. Therefore, the person skilled in the art was
not in a "one-way-situation".
In T 154/87 it was pointed out that the achievement of a surprising effect was no
precondition for the existence of inventive step. All that was necessary was to ascertain
that the respective subject-matter could not be derived by the skilled person in an
obvious manner from the available prior art (T 426/92, T 164/94, T 960/95, T 524/97).
In T 551/89 the board stated that an effect which was to be expected as the result of an
obvious measure could not contribute to recognition of the required inventive step, even
if the scale of this effect was surprising to the skilled person. In this case an effect whose
scale surpassed the skilled person's hopes merely represented a bonus effect following
inevitably from the use of an obvious measure and obtained by the skilled person without
any inventive effort on his part (T 506/92, T 882/94).
In T 240/93 the application related to an apparatus for the surgical treatment of tissues
by hyperthermia, equipped with heat protection means. The application was refused by
the examining division, which considered the short treatment duration of one hour and
further advantages resulting from the use of cooling means to be extra (bonus) effects.
The board, however, stated that in the case in point the objective problem underlying the
invention was to provide an apparatus for the effective therapeutic treatment of benign
prostate hyperplasia in a short period of time. In view of the many considerable practical
advantages of a single one-hour hyperthermia session for a patient, such a short
treatment duration could not be dismissed as a mere "bonus" effect, but was crucial to
the invention and the basis of the objective problem.
9.8. Comparative tests
According to the established jurisprudence, a surprising effect demonstrated in a
comparative test can be taken as an indication of inventive step. If comparative tests are
chosen to demonstrate an inventive step on the basis of an improved effect, the nature
of the comparison with the closest state of the art must be such that the said effect is
convincingly shown to have its origin in the distinguishing feature of the invention
(T 197/86, OJ 1989, 371) and alleged but unsupported advantages cannot be taken into
consideration in respect of the determination of the problem underlying the application
(see also Chapter I.D.4.2; T 20/81, OJ 1982, 217; T 561/94).
In T 197/86 (OJ 1989, 371) the board supplemented the principles laid down in earlier
decision T 181/82 (OJ 1984, 401), according to which, where comparative tests were
submitted as evidence of an unexpected effect, there had to be the closest possible
structural approximation in a comparable type of use to the subject-matter claimed. In
the case in point the respondent (proprietor of the patent) strengthened support for his
claim by voluntarily providing comparisons with variants which, although not expressly
belonging to the prior art, differed from the claimed subject-matter only by the
distinguishing feature of the invention. The board summarised its position by stating, that
in cases where comparative tests were chosen to demonstrate an inventive step with an
improved effect over a claimed area, the nature of the comparison with the closest state

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The requirement of industrial applicability under Article 57 EPC

of the art had to be such that the effect was convincingly shown to have its origin in the
distinguishing feature of the invention. For this purpose it might be necessary to modify
the elements of comparison so that they differed only by such a distinguishing feature
(T 292/92, T 412/94, T 819/96, T 133/01, T 369/02, T 668/02).
Already in T 35/85 the board stated that an applicant or patentee may discharge his onus
of proof by voluntarily submitting comparative tests with newly prepared variants of the
closest state of the art identifying the features common with the invention in order to
have a variant lying closer to the invention so that the advantageous effect attributable to
the distinguishing feature is thereby more clearly demonstrated (T 40/89, T 191/97,
T 496/02).
It is for the applicant/patentee to furnish evidence of an improved effect of the subject-
matter of a claim, which has been asserted, but was not mentioned in the application as
filed, in the whole of the claimed area vis-à-vis the closest prior art (T 355/97,
T 1213/03).
In T 390/88 the board addressed the question of the circumstances under which the
production of comparative examples was unnecessary. In the above-mentioned earlier
cases the invention had been obvious prima facie because the products, although novel,
were very close structurally to the prior art products. The case in point was different.
Here, the board said that the production of comparative examples was not essential to
establish inventiveness, as the invention had not been obvious from the outset
(T 656/91).
In T 702/99 the board stated that in cases concerning products such as cosmetics, in
which applicants or patentees seek to establish that their inventions have an improved
"feel" over the prior art, or opponents seek to deny such an improved "feel", it is common
for one or more parties to file evidence of comparative tests conducted by a number of
persons. It is essential for such tests to be made under conditions which ensure
maximum objectivity on the part of those conducting the tests and who may be required
at a later date to give evidence in proceedings. It is always desirable that such tests can
be shown to be "blind" and that they have been conducted in the strictest conditions; that
the testers have had no part in the making of the claimed invention or research leading
up to the invention or the patenting procedure.
In T 172/90 the comparative examples produced did not constitute suitable evidence of
inventive step. The board said that the products adduced as a basis of comparison were
commercially available and had evidently been selected at random. Technical progress
shown in comparison with products of this kind could not be a substitute for the
demonstration of inventive step with regard to the closest prior art (see also T 164/83,
OJ 1987, 149; T 730/96).
E. The requirement of industrial applicability under Article 57 EPC
The requirement of industrial applicability under Article 57 EPC

1. Notion of "industrial application"

I.E.1. Notion of "industrial application"

Art. 57 EPC provides that "An invention shall be considered as susceptible of industrial
application if it can be made or used in any kind of industry, including agriculture". This
Article defines and explains the nature of the requirement in Art. 52(1) EPC that the
subject-matter has to be "susceptible of industrial application". In particular, this Article
makes it quite clear that, under the EPC, agriculture is a kind of industry, and that

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agricultural methods are therefore, in general, methods which are susceptible of

industrial application (T 116/85, OJ 1989, 13).
In T 144/83 (OJ 1986, 301) the board stated that under Art. 57 EPC an invention was to
be considered as susceptible of industrial application if it could be made or used in any
kind of industry. Enterprises in the cosmetic field - such as cosmetic salons and beauty
parlours - were part of industry within the meaning of Art. 57 EPC, since the notion of
"industry" implied that an activity was carried out continuously, independently and for
financial gain. A board had already decided that the professional use of such inventions
in a cosmetic salon was an industrial application within the meaning of Art. 57 EPC. In
T 36/83 (OJ 1986, 295) the board also found that the professional use of the invention in
a beauty parlour was an industrial application within the meaning of Art. 57 EPC.
In T 204/93 the board held that commercial use excluded from patentability under
Art. 52(2)(c) and (3) EPC (in so far as it was not construed as a method for doing
business) was a feature which might be understood to fall under the requirement that an
invention had to be susceptible of industrial application (Art. 52(1) EPC), ie that it could
be made or used in any kind of industry (Art. 57 EPC); reference was made in particular
to the German word "gewerblich" in that provision of the Convention. The board noted
that it was not disputed that computer programs could be exploited commercially. The
exclusions from patentability defined in Art. 52(2) and (3) EPC did not in any way refer to
the requirement in Art. 52(1) EPC of "industrial application" but to the requirement in that
Article that the subject-matter claimed had to be an "invention". The exclusions in
Art. 52(2) and (3) EPC were generally understood to have in common that the excluded
matters lacked technicality but not that they could not be made or used, eg traded.
In T 953/94 the board stated that as the Convention showed (Art. 52(1) EPC), the
requirement (defined in Art. 52(2) and (3) EPC) of claimed subject-matter being an
"invention" was distinct from the requirement (defined in Art. 57 EPC) of the claimed
invention being "susceptible of industrial application". Even though the former
requirement might, cum grano salis, be equated with a requirement for a "technical"
contribution, this was not the same as a requirement for "industrial" applicability; at least
in this context, the terms "technical" and "industrial" were not synonyms. In Art. 57 EPC,
the meaning of "industrial" was evidently intended to cover commercial applications; this
was made clear, for instance, by the German version ("gewerblich"). In the context of
Art. 52(2) EPC, this was clearly not the case for the meaning of "technical". This was
because, in the context of "controlling a [...] process", the adjective "industrial" should,
other than in the context of Art. 57 EPC, be understood to relate only to technical
processes usually occurring in "industry" (this latter term in its present context being
understood in the narrower sense of what in German would be called "Industrie") and
thus not as including "commercial", or even "financial", applications.
In T 541/96 the board noted that according to Art. 52(1) EPC a European patent could be
granted for an invention which was, inter alia, susceptible of industrial application. This
concept was related to the obligation on an applicant to give a sufficient description of
the invention, as required by Art. 83 EPC. An invention or an application for a patent for
an alleged invention which would not comply with the generally accepted laws of physics
would be incompatible with the requirements of Articles 57 and 83 EPC because it could
not be used and therefore lacked industrial application. The description would moreover
be insufficient to the extent that the applicant would not be able to describe how it could
be made to work.

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The board went on to observe that the EPC did not prevent the patentability of
"revolutionary" inventions. However, Art. 83 EPC made the amount of information
required for a sufficient disclosure of an invention somewhat dependent on the actual
"nature" of the invention. If the latter lay in a well-known technical field and was based on
generally accepted theories, the description did not need to comprise many specific
technical details which would anyway be implicit to a skilled person. However, if the
invention seemed, at least at first, to offend against the generally accepted laws of
physics and established theories, the disclosure should be detailed enough to prove to a
skilled person conversant with mainstream science and technology that the invention
was indeed feasible (ie susceptible of industrial application). This implied, inter alia, the
provision of all the data which the skilled person would need to carry out the claimed
invention, since such a person, not being able to derive such data from any generally
accepted theory, could not be expected to implement the teaching of the invention just
by trial and error.
In the case at issue, the gist of the invention consisted in inducing nuclear fusion
between light nuclei and heavy unstable nuclei at low temperature by means of an
electric field. The appellant had provided neither experimental evidence nor any firm
theoretical basis which would enable the skilled person to assess the viability of the
invention; the description was essentially based on general statements and speculations
which were not apt to provide a clear and exhaustive technical teaching, Thus, it was
irrelevant to consider whether the fusion reactions referred to in the description might be
theoretically possible, or whether they might indeed occur under certain conditions.
In T 718/96 the board ruled that although disclosure objections could be raised under
Art. 57 EPC, on the grounds that an invention which could not be carried out was not
susceptible of industrial application, they should rather be based whether on Art. 83 or
on Art. 100(b) EPC which specifically related to the performability of inventions.
In T 870/04 the key question for the assessment of compliance with the requirements of
the EPC was whether the invention as disclosed in the application was "susceptible of
industrial application". The board noted that the case law indicated that the notion of
"industry" had to be interpreted broadly to include all manufacturing, extracting and
processing activities of enterprises that were carried out continuously, independently and
for financial (commercial) gain (see eg T 144/83, OJ 1986, 301). The requirement of
Art. 57 EPC that the invention "can be made or used" in at least one field of industrial
activity emphasised that a "practical" application of the invention had to be disclosed.
Merely because a substance (here: a polypeptide) could be produced in some ways did
not necessarily mean that this requirement was fulfilled, unless there was also some
profitable use for which the substance could be employed.
The board also noted that biotechnological inventions were quite often concerned with
substances found in nature (eg a protein, a DNA sequence, etc.). In cases where the
structure and function of the substance was elucidated and means were provided for
extracting it or producing it in large amounts, industrial applicability existed in relation to
the possibility of exploiting the information and technical means disclosed in order to
manufacture the substance and use it for some function related to its natural one or for
some other previously unknown (now disclosed) function or as a starting material for
making useful analogs or derivatives with some improved features. If a function was well
known to be essential for human health, then the identification of the substance having
this function would immediately suggest a practical application in the case of a disease

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or condition caused by a deficiency, as was the case, for example, for insulin, human
growth hormone or erythropoietin. In such cases, an adequate description would ensure
in accordance with the requirements of Art. 57 EPC that "the invention can be made or
used in industry".
In cases where a substance, naturally occurring in the human body, was identified, and
possibly also structurally characterised and made available through some method, but
either its function was not known or it was complex and incompletely understood, and no
disease or condition had yet been identified as being attributable to an excess or
deficiency of the substance, and no other practical use was suggested for the substance,
then industrial applicability could not be acknowledged. While the jurisprudence had
tended to be generous to applicants, there had to be a borderline between what could be
accepted, and what could only be categorised as an interesting research result which per
se did not yet allow a practical industrial application to be identified. Even though
research results might be a scientific achievement of considerable merit, they were not
necessarily an invention which could be applied industrially. In the case at issue, while
the claimed BDP1 polypeptide was described as a substance found in the human body
and as having unique properties, the question arose whether any disclosure or
suggestion had been made as to how these properties of BDP1 might be exploited.
The board observed that no doubt existed that a BDP1 polypeptide could be "made and
used" as a further tool, in addition to the many already available in the art, for exploring
the complex cellular signal transduction pathways and their implications in the regulation
of cellular processes and, possibly, disease states. But the whole burden was left to the
reader to guess or find a way to exploit it in industry by carrying out work in search of
some practical application geared to financial gain, without any confidence that any
practical application existed. The board considered that no such suggestion could be
derived from the application itself or from the prior art.
In the board's judgment, although the application at issue described a product (a
polypeptide), means and methods for making it, and its prospective use thereof for basic
science activities, it identified no practical way of exploiting it in at least one field of
industrial activity. In this respect, it was considered that a vague and speculative
indication of possible objectives that might or might not be achievable by carrying out
further research with the tool as described was not sufficient for fulfilment of the
requirement of industrial applicability. The purpose of granting a patent was not to
reserve an unexplored field of research for an applicant.
2. Indicia in determining industrial applicability
I.E.2. Indicia in determining industrial applicability

2.1. Methods applied in the private and personal sphere

In T 74/93 (OJ 1995, 712) the application was refused by the examining division because
claim 5, which was directed to the use of a contraceptive composition (eg a cream) for
applying to the cervix of a female capable of conception, was not susceptible of industrial
application as required by Art. 57 EPC in so far as the compound was to be applied to
the cervix of a human female. The appellant had argued essentially that many inventions
in the field of daily needs were used privately and their patentability should not be
restricted.
The board noted that since "industry" in the field of industrial property was widely
understood in its broadest sense (Art. 1(3) Paris Convention), such a liberal

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interpretation could also apply to Art. 57 EPC. However, the board stated that in
determining the borderline between industrial activities, in which the effects of patents
had to be respected, and private and personal activities, which should not be adversely
affected by the exercise of these rights, the board took into consideration the fact that
Art. 57 EPC might be regarded as an expression of the general idea that any natural
person had the right to have his or her privacy respected. The core of this right was not
to be taken away from anybody. Therefore the fact that for some women contraception
was connected with professional activities did not give an act, which was in essence
private and personal, an industrial character. The board noted that this did not apply to
contraception in general, but to the specific type of application of a composition as
claimed in claim 5.
The board was unable to ascertain any field of industrial application for the direct use
defined in claim 5, for which the requirement of Art. 57 EPC had to be met. The question
as to whether it would be sufficient for an industrial application to be expected in future
could be left unanswered. Even if the board were to accept the appellant's position in this
respect, it would not be sufficient simply to make an unsubstantiated allegation to this
effect. Without any specific indication the board was not in a position to accept that the
requirement of Art. 57 EPC was fulfilled.
2.2. Possibility of services offered by an enterprise
In T 1165/97 the board held that a method of using a vaginal discharge collector and
disposing of the collector after a single use could be considered susceptible of industrial
application if it was imaginable that these steps were carried out as a paid service and
were not exclusively dependent for their execution on the instructions of the woman in
question. The board noted that, for the purposes of Art. 57 EPC, what was relevant was
the possibility that such a service might be offered by an enterprise. In that case, the
board decided in the affirmative, pointing out that - in contrast to the case in T 74/93 - the
service was not one satisfying only the strictly personal needs of the woman in question.
Collecting a sample could be caused by external reasons, eg on the advice of a medical
practitioner to have such a sample taken for further diagnosis.
2.3. Other criteria - formulation of claims
In G 5/83 (OJ 1985, 64), claims directed to substances or compositions for use in any
methods for treatment of the human or animal body were unquestionably directed to
inventions which were susceptible of industrial application within the meaning of
Art. 52(1) EPC. This was not only expressly made clear in Art. 52(4), last sentence, EPC,
but could also be inferred from the definition of "susceptible of industrial application" in
Art. 57 EPC, namely that the invention "can be made or used in any kind of industry,
including agriculture". The last sentence of Art. 52(4) EPC appeared to be a statement of
the obvious, stemming from an abundance of caution.
In T 80/96 (OJ 2000, 50), the board found that the use of a substance to make a new
pharmaceutical product without delimitation to an indication did not contravene the
requirements of Art. 57 EPC in conjunction with Art. 52(1) EPC. In the board's view, the
requirement for clarity of the claims (Art. 84 EPC) likewise did not mean that a claim for a
process for preparing a particular product could not be drafted in the form of a use claim.
No other meaning could be given to the individual process steps (see T 279/93).

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 II.A.1. Assessment of sufficiency of disclosure

II. CONDITIONS TO BE MET BY AN APPLICATION

A. Sufficiency of disclosure
Sufficiency of disclosure

Art. 83 EPC stipulates that the application must disclose the invention in a manner
sufficiently clear and complete for it to be carried out by a person skilled in the art.
1. Parts of the application relevant for assessing sufficiency of disclosure
II.A.1. Assessment of sufficiency of disclosure

It has been consistent case law of the boards of appeal since at least T 14/83 (OJ 1984,
105) that sufficiency of disclosure within the meaning of Art. 83 EPC must be assessed
on the basis of the application as a whole - including the description and claims - (see
also T 169/83, OJ 1985, 193) and not of the claims alone (see eg T 202/83, T 179/87 of
16.1.1990, T 435/89, T 82/90, T 126/91).
In T 32/84 (OJ 1986, 9) it was pointed out that the fact that certain elements of an
invention essential to its operation were not referred to explicitly either in the claims, or in
the relevant portion of the description nor shown in the drawing of the invention as
claimed did not necessarily mean that the application did not disclose the invention in a
manner sufficiently clear and complete for it to be carried out by a person skilled in the
art as required by Art. 83 EPC. In the case in question, a person skilled in the art could
have put the invention into practice by applying a principle disclosed in the description
which showed as essential to the invention an element shown not in the figure illustrating
the invention as claimed, but in another figure in the application. This, however, only
applied if he did not make use of additional teachings and no inventive step was
involved.
In T 1011/01 the board cited T 226/85 (OJ 1988, 336), which states that substantially any
embodiment of the invention, as defined in the broadest claim, must be capable of being
realised on the basis of the disclosure. This implied in particular that an objection of
insufficiency could be raised against the subject-matter of any claim, independent or
dependent (cf. R. 29(3) EPC). From a legal point of view it was therefore irrelevant
whether or not the feature objected to was essential or to what degree the scope of
protection conferred by the patent depended on the claim in question.
2. Knowledge of skilled person relevant for assessing sufficiency of
disclosure
II.A.2. Knowledge of skilled person relevant for assessing sufficiency of disclosure

(a) The disclosure is aimed at the skilled person

The skilled person may use his common general knowledge to supplement the
information contained in the application (T 206/83, OJ 1987, 5; T 32/85, T 51/87,
OJ 1991, 177; T 212/88, OJ 1992, 28; T 580/88, T 772/89, T 231/92, T 818/97). He may
even recognise and rectify errors in the description on the basis of such knowledge
(T 206/83, OJ 1987, 5; T 171/84, OJ 1986, 95; T 226/85, OJ 1988, 336). Textbooks and
general technical literature form part of the common general knowledge (T 171/84,
T 51/87, T 580/88, T 772/89). However, information which can only be obtained after a
comprehensive search is not to be regarded as part of the common general knowledge
(T 206/83, T 654/90).
Patent specifications cannot normally contribute to the sufficiency of the disclosure
unless they are available to the skilled reader of the patent in question (T 171/84,
OJ 1986, 95). By way of exception, however, patent specifications and scientific

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publications may be considered to form part of the common general knowledge where
the invention is in a field of research so new that the relevant technical knowledge is not
yet available from textbooks (T 51/87, OJ 1991, 177; T 772/89, T 676/94).
Finally, the same level of skill has to be applied when, for the same invention, the two
questions of sufficient disclosure and inventive step are being considered (T 60/89,
OJ 1992, 268; T 694/92, T 187/93, T 412/93).
(b) References may also enable the skilled person to carry out an invention
For example, features not mentioned in the application documents themselves but in a
document to which they refer may be incorporated into a patent claim if they
unequivocally form part of the invention for which protection is sought. However, all the
essential structural features thus disclosed which belong together must be incorporated
into the claim; it is not permissible to single out a particular one (T 6/84, OJ 1985, 238).
Where an invention relates to the improvement of prior art originally cited in the
description of the invention, a feature described in broad terms in the cited document but
not mentioned expressly in the invention is sufficiently disclosed if it is realised in the
examples of the invention in the form of an embodiment also mentioned in the reference
document (T 288/84, OJ 1986, 128).
An invention is also sufficiently disclosed if reference is made to another document in the
patent specification and the original description, and the skilled person can obtain from
this cross-reference the information required to reproduce the invention but not disclosed
in so many words in the description itself (T 267/91, T 611/89). This applies irrespective
of the language in which it is drafted (see T 920/92, where the document referred to was
in Japanese).
However, where the reference document was possibly short-lived advertising material,
the applicant was wise to incorporate the published information explicitly rather than by
mere reference (T 211/83).
In T 737/90 it was explicitly stated that a reference to another document can only be
taken into account if the document referred to can be unambiguously identified and the
relevant addressees have ready access to it. This depends solely on the facts of the
case. Following T 737/90, the board in T 429/96 confirmed that a document incorporated
by reference into the text of a European patent application had to become available to
the public at the latest on the publication date and not on the filing date of the
European patent application, in order to be taken into account for the purposes of
Art. 83 EPC.
However, in T 276/99 it was stated that the description is an essential part of the patent
specification for the purpose of understanding and being able to carry out the invention
and that something which is critical for the understanding of the invention should
therefore appear in the patent specification and not be incorporated by reference to an
A-publication. Where a reference in the description is to published prior art, a mere
reference may be sufficient as such prior publication will not normally relate to the
essence of the invention. However, even in such a situation it may be necessary that for
ease of consultation some prior published information should appear explicitly in the
patent specification (approving T 211/83).

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In T 156/91 the board expressed doubts about the sufficiency of disclosure of an

invention that could be carried out only with products whose method of manufacture was
not disclosed but which were commercially available, although their availability was not
guaranteed for any identifiable period. Since the process lacked inventive step, however,
the board did not ultimately have to resolve the question of reproducibility.
3. Clarity and completeness of disclosure
II.A.3. Clarity and completeness of disclosure

It must be possible to reproduce a claimed step using the original application documents
without any inventive effort over and above the ordinary skills of a practitioner (T 10/86).
Where an applicant did not furnish details of the production process in the description in
order to prevent the invention from being copied easily and the missing information could
not be supplied from the general knowledge of a person skilled in the art, the invention
was held to be insufficiently disclosed (T 219/85, OJ 1986, 376).
An invention is in principle sufficiently disclosed if at least one way is clearly indicated
enabling the person skilled in the art to carry out the invention. If this is the case, the
non-availability of some particular variants of a functionally defined component feature of
the invention is immaterial to sufficiency as long as there are suitable variants known to
the skilled person through the disclosure or common general knowledge which provide
the same effect for the invention (T 292/85, OJ 1989, 275). This has been confirmed by
many decisions: T 81/87 (OJ 1990, 250), T 301/87 (OJ 1990, 335), T 212/88
(OJ 1992, 28), T 238/88 (OJ 1992, 709), T 60/89 (OJ 1992, 268), T 182/89
(OJ 1991, 391), T 19/90 (OJ 1990, 476), T 740/90, T 456/91 and T 242/92.
However, fulfilling the requirement of R. 27(1)(e) EPC that the description shall describe
in detail at least one way of carrying out the invention claimed, does not automatically
mean that the application as filed is sufficiently disclosed in accordance with Art.
83 EPC. This has to be decided by appraising the information contained in the examples
as well as other parts of the description in the light of the skilled person's common
general knowledge at the relevant date (T 322/93). However, where the requirements of
Art. 83 EPC are fulfilled, it follows that there is at least one way of carrying out the
invention disclosed in accordance with R. 27(1)(e) EPC (T 561/96). In this decision, the
fact that the examining division, despite an objection under Art. 83 EPC, nevertheless
acknowledged novelty and inventive step, indicated to the board that the invention was
unambiguously understandable for a skilled person and thus sufficiently disclosed.
Moreover, the disclosure of one way of performing an invention is only sufficient if it
allows the invention to be performed in the whole range claimed rather than only in
some members of the claimed class to be obtained (T 409/91, OJ 1994, 653; T 435/91,
OJ 1995, 188; T 172/99 and T 1288/01). This was considered a question of fact.
Sufficiency of disclosure thus presupposes that the skilled person is able to obtain
substantially all embodiments falling within the ambit of the claims. This was also the
view taken by the board in decisions T 19/90 (OJ 1990, 476), T 242/92, T 418/91,
T 548/91, T 659/93, T 435/91 (OJ 1995, 188) and T 923/92 (OJ 1996, 564). More
technical details and more than one example may be necessary in order to support
claims of a broad scope (T 612/92, T 694/92, OJ 1997, 408; T 187/93). This must be
decided on a case-by-case basis. The board must also be satisfied firstly that the patent
specification put the skilled person in possession of at least one way of putting the
claimed invention into practice, and secondly that the skilled person could put the
invention into practice over the whole scope of the claim. If the board was not satisfied

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on the first point that one way existed, the second point did not need to be considered
(T 792/00).
According to T 517/98, if the disclosure of a patent in suit is limited to products which,
when prepared by the method according to the invention, are characterised by distinctive
parameters, then a claim which does not stipulate these parameters a priori
encompasses embodiments which are not obtainable by the method disclosed. Such
disclosure of a single way of performing the invention will only be considered sufficient if
it enables a person skilled in the art to carry out the invention within the whole ambit of
the claim. If this is not the case, the claim does not meet the requirements of Articles 83
and 100(b) EPC.
In T 281/86 (OJ 1989, 202), it was held that there is no requirement under Art. 83 EPC
according to which a specifically described example of a process must be exactly
repeatable. Variations in the constitution of an agent used in a process are immaterial to
the sufficiency of the disclosure provided the claimed process reliably leads to the
desired products. As long as the description of the process is sufficiently clear and
complete, ie the claimed process can be put into practice without undue burden by the
skilled person taking his general knowledge into consideration, there is no deficiency in
this respect. See also T 292/85 (OJ 1989, 275); T 299/86 (OJ 1988, 88); T 181/87,
T 212/88 (OJ 1992, 28); T 182/89 (OJ 1991, 391) and T 19/90 (OJ 1990, 476).
In T 449/90, the board considered that the requirements of Art. 83 EPC had been
satisfied where the claimed degree of inactivation (“substantially') of the Aids virus could
be demonstrated with sufficient certainty. Complete inactivation of the life-threatening
virus - which the opponent had argued was necessary - was indeed highly desirable, but
not an issue under Art. 83 EPC, given the claim as worded.
In T 515/00 the board pointed out that an invention cannot be considered to be
irreproducible merely because a claim encompasses a hypothetical embodiment which
lies outside the breadth of the claim as determined by the Protocol on the Interpretation
of Art. 69 EPC, which embodiment cannot be reproduced.
If the only embodiment disclosed with concrete details in a patent is not disclosed in a
manner sufficiently complete for the claimed invention (in this instance a railway traction
unit with a liquid-nitrogen-cooled superconductive transformer) to be carried out by a
person skilled in the art on the date of priority with respect to the fundamental scope of
said invention, it is of no significance with regard to the question of sufficient disclosure
whether on the relevant date of filing a variant (in this instance a railway vehicle with a
liquid-helium-cooled transformer) could have been carried out if the variant, although it is
covered by the wording of the patent claim, does not fall within the fundamental scope of
the claimed invention with regard to the teaching of the patent due to a lack of
comparable technical success (T 1173/00, OJ 2004, 16).
The board went on to state that if an invention is insufficiently disclosed, it is of no
relevance whether it was objectively impossible to provide the missing information on the
date of priority, ie whether nobody could have achieved the intended and claimed
technical effect. The decisive issue is whether the invention is disclosed in a manner
sufficiently complete for it to be carried out by an average person skilled in the art on the
date of priority, with knowledge of the patent and on the basis of that person’s common
general knowledge.

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 II.A.4. Reproducibility without undue burden

Where a disadvantage of an invention (in this case the risk of injury to users) could
prevent its use, this is not an obstacle to reproducibility provided that the otherwise
desired result is achieved by the technical teaching disclosed in the patent in suit
(T 881/95). An Art. 83 EPC objection concerning the absence of any detailed indication
of the use envisaged for the products cannot succeed, as Art. 83 EPC merely requires
the invention to be sufficiently disclosed (T 866/00).
4. Reproducibility without undue burden
II.A.4. Reproducibility without undue burden

The disclosure must be reproducible without undue burden.

Even though a reasonable amount of trial and error is permissible when it comes to
sufficiency of disclosure, eg in an unexplored field or where there are many technical
difficulties, the skilled person has to have at his disposal, either in the specification or on
the basis of common general knowledge, adequate information leading necessarily and
directly towards success through the evaluation of initial failures (T 226/85, OJ 1988,
336; following T 14/83, OJ 1984, 105; T 48/85, T 307/86). Where the skilled person can
only establish by trial and error whether or not his particular choice of numerous
parameters will provide a satisfactory result, this amounts to an undue burden (T 32/85).
Nor can sufficiency of disclosure be acknowledged, if, for an invention which goes
against prevailing technical opinion, the patentee fails to give even a single reproducible
example (T 792/00).
It suffices for the disclosure of an invention that the means intended to carry out the
invention are clearly disclosed in technical terms which render them implementable and
that the intended result is achieved at least in some, equally realistic, cases (T 487/91).
The occasional failure of a process as claimed does not impair its reproducibility if only a
few attempts are required to transform failure into success, provided that these attempts
are kept within reasonable bounds and do not require an inventive step (T 931/91). Nor
is reproducibility impaired if the selection of the values for various parameters is a matter
of routine and/or if further information is supplied by examples in the description
(T 107/91). However, wrongly citing a method of measuring an essential product
parameter may constitute insufficient disclosure (T 1250/01). According to T 256/87 all
that has to be ensured is that the skilled person reading the specification will be able to
carry out the invention in all its essential aspects and know when he is working within the
forbidden area of the claims. The possibilities of indirect empirical investigation referred
to in the specification were, in the board's view, an acceptable solution which sufficed to
fulfil the requirements of Art. 83 EPC without undue burden.
There is no requirement in the EPC that the claimed invention may be carried out with
the aid of only a few additional non-disclosed steps. The only essential requirement is
that each of those additional steps be so apparent to the skilled person that, in the light
of his common general knowledge, a detailed description of them is superfluous
(T 721/89).
Experiments constitute an undue burden if they have first of all to find the solution to the
problem and are not carried out just to determine the numerical limits of a functionally
defined range (T 312/88). They should quickly give a reliable picture of how the products
can be produced or manufactured (T 475/88). However, it is not necessary for the
experimental data filed with the patent in suit to be an exact repetition of the worked

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examples of the patent, as long as the experimental work can be regarded as being
within the scope of the invention (T 674/96).
Where it is obvious that a skilled person would select a particular analytical measuring
method, (none being disclosed in the patent), balancing its simplicity and convenience
against the required accuracy, the requirements of Art. 83 EPC are met (T 492/92). This
is the case even if the two different analytical methods proposed by the patentee give
significantly different results with the same composition. It also suffices if the person
skilled in the art would assume that it was most likely that a certain method was used
and this assumption could be tested in the light of the information given in the examples
of the patent in suit (T 143/02). However, where there are different measuring methods
which do not always lead to the same result, this can amount to an undue burden, as in
T 225/93 (see also Chapter II.B.1.1.3).
If the description in a patent specification provides no more than a vague indication of a
possible medical use for a chemical compound yet to be identified, more detailed
evidence cannot be used later to remedy the fundamental insufficiency of disclosure of
such subject-matter (T 609/02).
5. The requirement of sufficiency of disclosure in the biotechnology field
II.A.5. Sufficiency of disclosure - biotechnology

5.1. Clarity and completeness of disclosure

The principles elucidated under Chapter II.A.3 above are also applicable to biological
inventions.
5.1.1 The extent to which the invention must be reproducible
With regard to this issue reference should be made to the case law laid down by the
boards in T 281/86 (OJ 1989, 202), and T 299/86, as dealt with above under Chapter
II.A.3.
As stated above, an invention is regarded as sufficiently disclosed if at least one way is
clearly indicated enabling the skilled person to carry out the invention (T 292/85,
OJ 1989, 275). The invention of the present case concerned a recombinant plasmid
comprising a homologous regulon, heterologous DNA and one or more termination
codons for expression in bacteria of a functional heterologous polypeptide in recoverable
form. The application was refused by the examining division on the grounds that not all
embodiments falling within the broad functional wording of the claims were available.
The claims also embraced the preparation of future products, whereas they should be
limited to what was available at the priority date. The board disagreed, holding that the
non-availability of some particular variants was immaterial as long as there were suitable
variants known which provided the same effect.
Similarly, in T 386/94 (OJ 1996, 658) the patent specification provided a technically
detailed example for the expression of preprochymosin and its maturation forms in E.
coli. It suggested the possibility of expressing these proteins in micro-organisms in
general. The board held that the invention was sufficiently disclosed because one way to
carry out the invention was clearly indicated and the state of the art contained no
evidence that foreign genes could not be expressed in organisms other than E. coli.
An invention may also be sufficiently disclosed where results are not exactly repeatable.
In T 301/87 (OJ 1990, 335) the invention provided a route through recombinant DNA

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technology to certain types of interferons but in a manner that would not provide identical
results each time when repeated. The board concluded that variations in construction
within a class of genetic precursors, such as recombinant DNA molecules claimed by a
combination of structural limitations and functional tests, were immaterial to the
sufficiency of disclosure provided the skilled person could reliably obtain some members
of the class without necessarily knowing in advance which member would thereby be
made available.
However, if the essence of the invention is the achievement of a given technical effect by
known techniques in different areas of application and serious doubts exist as to whether
this effect could readily be obtained for the whole range of applications claimed, more
technical details and more than one example may be required (see T 612/92, T 694/92,
T 187/93 and T 923/92).
An application may only be objected to for lack of sufficient disclosure if there are serious
doubts, substantiated by verifiable facts. The mere fact that a claim is broad is not in
itself a ground for considering the application as not complying with the requirement of
sufficient disclosure under Art. 83 EPC (T 19/90, OJ 1990, 476). In this case the claimed
invention was defined by the incorporation of an activated oncogene sequence into the
genome of non-human mammalian animals in general. The examining division refused
the application on the grounds that in the light of the differences among different animals,
it could not be assumed that the sole example given - mice - could be extended to all
other non-human mammalian animals and the claims were thus unrealistically broad.
The board disagreed.
Furthermore, even where the claims are supported by the description from a purely
formal point of view, they may still not be considered allowable if they encompass
subject-matter which in the light of the disclosure provided by the description can be
performed only with undue burden or application of inventive skill. As for the amount of
detail needed for a sufficient disclosure, this depends on the correlation of the facts of
the case to certain general parameters, such as the character of the technical field and
the average amount of effort necessary to put into practice a certain written disclosure in
that technical field, the time when the disclosure was presented to the public and the
corresponding common general knowledge, and the amount of reliable technical details
disclosed in a document (see T 158/91, T 639/95 and T 36/00).
5.1.2 Reproducibility without undue burden
A number of factors contribute to a finding of undue burden.
In T 187/93, for example, there were experimental uncertainties in the patent application.
The invention concerned a method for producing, by expression in eukaryotic cells, a
truncated membrane-free derivative of a viral polypeptide, which provided protection in
an immunised subject against in vivo challenge by a viral pathogen. Examples were only
given of truncation of HSV glycoprotein gD. No general technique allowing extrapolation
of the results to any other glycoprotein from any other virus were disclosed. The board
found that the skilled person, when trying to obtain the same technical effect with a
different glycoprotein would have experienced lack of predictability, which amounted to
an undue burden.
Similarly, in T 727/95, the board found that the invention relied too much on chance. The
claimed subject-matter included a “microorganism designated Acetobacter and having

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the ability of microorganisms ATCC 53264, ATCC 53263 and ATCC 53524 to [...]”. The
board observed that by including the phrase “having the ability of”, the claim covered not
only Acetobacter microorganisms derived from the deposited strains, but also
Acetobacter microorganisms which had the stated characteristics in common with the
deposited strains. In the board's judgment, finding other stable, cellulose high-producing
Acetobacter strains in nature was a chance event, and relying on chance for
reproducibility amounted to an undue burden in the absence of evidence that such
chance events occurred and could be identified frequently enough to guarantee success.
The board concluded that the claim was not repeatable without undue burden over the
entire breadth of the claim.
In T 694/92 (OJ 1997, 408) incomplete guidance was given. The claimed subject-matter
concerned a method for genetically modifying a plant cell. In fact, the board held that the
experimental evidence and technical details in the description were not sufficient for the
skilled person to reliably achieve, without undue burden, the technical effect of
expression in any plant cell of any plant structural gene under the control of any plant
promoter. Sufficient support for a claim broadly directed to such a method was not
provided.
The claimed subject-matter in T 639/95 concerned a method for producing PHB
biopolymers in a host transformed with genes encoding the enzymes ß-ketothiolase,
acetoacetyl-CoA reductase and polyhydroxy butyrate (PHB) synthetase. The board
found that the experimental plan for identifying and isolating the PHB gene was very
general. Some references were missing and/or incomplete. There were no results and
no details which could facilitate the repetition of the work. The board thus held that the
total amount of experimental effort necessary to advance successfully step by step
towards the desired final goal amounted to an undue burden for the skilled person.
However, in T 412/93, where errors and omissions prejudiced the reproducibility of one
of the examples in toto and of another example in part, the reproducibility of the invention
was not affected, as the examples were alternatives to previous ones.
In T 612/92, further scientific research would have been necessary in order to carry out
the invention in some of the areas claimed. The claimed invention related to a method for
incorporating foreign DNA into the genome of monocotyledonous plants via T-DNA. The
patent suggested applying to monocotyledonous plants the same technique as known
from the prior art for dicotyledonous plants. Examples of the transformation of two
monocotyledonous species were given, but no new technique was suggested, nor were
any indications given of any adaptations necessary to make the known method work in
monotyledonous species. Later work resulted in lack of success in other
monocotyledonous species. The board held the requirements of Art. 83 EPC were not
fulfilled because there were serious doubts as to whether such a method could be
performed over the whole range that was claimed (cf. T 694/92, OJ 1997, 408).
In T 772/89 the board considered whether the description contained a disclosure that
enabled a skilled person to prepare the two kinds of host claimed, that is, a host suitable
for cloning and a host suitable for expressing a genomic bovine growth hormone
sequence. The board held that the disclosure was insufficient in respect of the second
kind of host, as the skilled person could not have found suitable expression hosts in a
straightforward manner at the priority date.

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However, in T 223/92 the board rejected an objection by the appellant (opponent) that
the provision of a DNA sequence coding for human interferon-gamma was in itself not
sufficient and that it amounted to an undue burden for the skilled person to repeat the
invention on the basis of this knowledge. The board was well aware of the fact that even
with the full disclosure of the DNA sequence, reproducibility of the whole process of
expressing the gene to produce the desired interferon gamma was still a difficult,
complex and time - consuming task in 1981. Nonetheless, the board was convinced that
the provision of the DNA sequence in 1981 enabled those skilled in the art to reproduce
the invention, possibly in a time - consuming and cumbersome way, but, in the given
circumstances, without undue burden of experimentation and without needing inventive
skill (see also T 412/93).
5.2. Deposit of living material
If an invention concerns a microbiological process or the product thereof and involves
the use of a micro-organism which is not available to the public and which cannot be
described in the European patent application in such a manner as to enable the
invention to be carried out by a person skilled in the art, the invention shall only be
regarded as being disclosed as prescribed in Art. 83 EPC if a culture of the micro-
organism has been deposited with a recognised depositary institution not later than the
date of filing of the application (see R. 28(1) EPC).
5.2.1 Substantive law questions
In decision T 418/89 (OJ 1993, 20) the board had to decide whether the deposited
hybridoma enabled the skilled person to carry out the invention as claimed. The board
found that the characteristics of the monoclonal antibodies produced by the deposited
strain were different from those mentioned in the claims and that it was not possible to
produce monoclonal antibodies from the deposited hybridoma using techniques
recommended by the depository institution. The requirements of Art. 83 EPC were thus
not met. A disclosure could not be regarded as sufficient if and when it was only possible
to reproduce the invention after repeated requests to the depository institution and by
applying techniques considerably more sophisticated than those the latter
recommended. Nor could the scope of the patent be restricted to what had been
deposited, as the characteristics of the deposit differed from the written disclosure in the
patent. The true characteristics of the monoclonal antibodies produced by the deposited
hybridoma were nowhere described and thus not available to the public. Thus a mere
deposit of a hybridoma without any corresponding written description did not provide a
sufficient disclosure. Similar conclusions were reached in decisions T 495/89 and
T 498/94.
In T 349/91 the board held that an application was not sufficiently enabling where a
laborious screening process was necessary to produce a hybridoma cell line secreting
an antibody corresponding to a specific deposited antibody.
However, R. 28(1) EPC cannot be interpreted such that there is an obligation to deposit
material to facilitate the reproduction if the invention can be repeated on the basis of the
written description, even if this should be a much more cumbersome way than by merely
growing the deposited micro-organism (T 223/92).
Similarly, in T 412/93 the board stated that the need for a deposit cannot be introduced
by reference to the concept of undue burden. This concept relates more to cases where

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the route that the reader is to follow is so poorly marked that success is not certain such
as in T 418/89 (see above). If the road is certain but long and laborious, the patentee is
under no obligation to assist the disclosure by making actual physical samples available.
The board felt that to come to the opposite conclusion would be effectively to introduce a
requirement to make the best mode immediately accessible to the public, and such a
requirement is not part of the European patent system.
With respect to the question whether the reproducibility of specific micro-organisms (eg
plasmids or viral strains) was assured by the written description in the absence of a
deposition, the board, after careful examination of the written disclosure, held in some
cases that the information provided in the application was sufficient to lead the skilled
person reliably to the same micro-organisms (T 283/86, T 181/87); in other cases it was
not (T 815/90, T 816/90).
5.2.2 Procedural law questions
(a) Identity of applicant and depositor
The previous EPO practice established by T 118/87 (OJ 1991, 474) that the patent
applicant and depositor must, in principle, be one and the same has been changed by
the insertion of a sub-paragraph (d) into R. 28(1) EPC. Now biological material may be
deposited by a person other than the applicant if the name and address of the
depositor are stated in the application and a document is submitted satisfying the EPO
that the latter has authorised the applicant to refer to the deposited biological material in
the application and has given his unreserved and irrevocable consent to the material
being made available to the public in accordance with R. 28 EPC.
(b) Deficiency in deposit
T 39/88 (OJ 1989, 499) affirmed the principle that one important purpose of R. 28 EPC is
to make the availability of the deposited organisms independent of any consent by the
depositor. The board observed that the proper way of bringing a deposit originally filed
for another purpose (here a US application) into line with the requirements of the EPC
system was to formally convert the deposit into a deposit under R. 28 EPC (in the case
of a deposit made on the basis of a special agreement between the EPO and the
depositary institution) or into a deposit under the Budapest Treaty (which automatically
covers R. 28 EPC), as the case might be (see also T 239/87, T 90/88, T 106/88).
(c) Late submission of deposit number
According to R. 28(1)(c) EPC, the application must state the depositary institution and
the file number of the deposited biological material. In G 2/93 (OJ 1995, 275) the
Enlarged Board of Appeal held that the provisions of R. 28 EPC were subordinate to the
requirements of Art. 83 EPC. The indication of the file number (accession number) of a
culture deposit in a patent application was substantive because, under the EPC, it was
instrumental in enabling a person skilled in the art to carry out the invention. The
Enlarged Board therefore held that, contrary to the ruling in J 8/87 (OJ 1989, 9), the
information concerning the file number may not be submitted after expiry of the time limit
set out in R. 28(2)(a) EPC (ie sixteen months after the date of filing of the application or,
if priority is claimed, after the priority date).
See T 227/97 (OJ 1999, 495) for the board's decision that reestablishment of rights may
be available for the time limit set by R. 28(2)(a) EPC and R. 13bis.4 PCT.

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 II.A.6. The relationship between Article 83 and Article 84 EPC

6. The relationship between Article 83 and Article 84 EPC

II.A.6. The relationship between Article 83 and Article 84 EPC

6.1. Article 83 EPC and support from the description

The patent claims must clearly define the subject-matter for which protection is sought
under Art. 84 EPC. In T 94/82 (OJ 1984, 75) it was held that this requirement was
fulfilled in a claim to a product when the characteristics of the product were specified by
parameters relating to the physical structure of the product, provided that those
parameters could be clearly and reliably determined by objective procedures which were
usual in the art. In such a product claim, it sufficed to state the physical properties of the
product in terms of parameters, since it was not mandatory to give instructions in the
claim itself as to how the product was to be obtained. The description, however, had to
fulfil the requirements of Art. 83 EPC and thus enable the person skilled in the art to
obtain the claimed product described in it (see also T 487/89, T 297/90, T 541/97).
It is of relevance whether a problem falls within Art. 83 or Art. 84 EPC when taking into
consideration that examination in respect of the requirements of Art. 83 EPC is still
permitted during opposition proceedings, whereas in respect of Art. 84 EPC it is limited
during opposition proceedings to those cases where there has been an amendment
(T 127/85, OJ 1989, 271; cf. also T 301/87, OJ 1990, 335; T 1055/98, T 5/99). With
regard to the examination in respect of Art. 84 EPC during opposition proceedings see
further Chapter "Opposition procedure" under VII.C.6.1.4 and 6.2.
In T 292/85 (OJ 1989, 275) the stated grounds for the refusal were that the disclosure
was not sufficient under Art. 83 EPC and there was consequently a lack of proper
support under Art. 84 EPC. The board pointed out that in appropriate cases it is only
possible to define the invention (the matter for which protection was sought,
Art. 84 EPC), in a way which gives fair protection having regard to the nature of the
invention which had been described by using functional terminology in the claims. The
need for fair protection governs both the considerations concerning the scope of claims
and the requirements for sufficient disclosure. The board found that an invention is
sufficiently disclosed if at least one way is clearly indicated enabling the skilled person to
carry out the invention.
In T 409/91 (OJ 1994, 653; ex parte proceedings) and T 435/91 (OJ 1995, 188; inter
partes proceedings) it was pointed out that the protection conferred by a patent should
correspond to the technical contribution to the art made by the disclosure of the invention
described therein, which excludes the patent monopoly being extended to subject-matter
which, after reading the patent specification, would still not be at the disposal of the
skilled person. The available information must enable the skilled person to achieve the
envisaged result within the whole ambit of the claim containing the respective functional
definition without undue difficulty, and the description with or without the relevant
common general knowledge must provide a fully self-sufficient technical concept as to
how this result is to be achieved. T 409/91 was followed up in T 713/98, where the board
stated that the requirement of understanding a claim characterised by a functional
feature defining a result to be achieved was one of clarity and the requirement of
implementing it was one of support, both within the meaning of Art. 84 EPC.
Implementation, viewed in relation to the disclosure as a whole, was highly relevant to
the question of sufficiency under Art. 83 EPC.

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In the inter partes case T 435/91 (OJ 1995, 188), one of the essential technical features
of claim 1, an additive which forced a detergent composition into the hexagonal liquid
crystal phase, was defined only by its function. The patentee admitted that it was not
possible to identify, on the basis of the information contained in the patent specification
or of common general knowledge, compounds other than those specifically mentioned
as bringing about the desired effect. The board was of the opinion that the compositions
must all be available to the skilled person if the definition was to meet the requirements
of Art. 83 EPC.
However, as long as there are no concrete grounds for believing that the invention
cannot be carried out within the whole range claimed, there is no reason for not allowing
more broadly based claims in an application (T 242/92, T 484/92). In opposition
proceedings the opponent bears the burden of proving that the invention cannot be
carried out within the whole range claimed (T 418/91, T 456/91, T 548/91).
6.2. Article 83 EPC and clarity of claims
When undefined parameters are used in the claims and no details of the measuring
methods are supplied, the question arises whether there is a problem with respect to
Art. 83 or Art. 84 EPC. The answer to this question is important because in opposition
proceedings the patent can be examined for its compliance with Art. 83 EPC without any
restriction. The compliance with Art. 84 EPC is however examined only in cases where
there has been an amendment.
In some decisions (T 123/85, T 124/85, T 172/87, T 358/88, T 449/90, T 148/91,
T 267/91, T 697/91; all inter partes proceedings) the absence of information in the
application on methods for measuring undetermined parameters in the application was
considered a problem with respect to Art. 83 EPC. This problem was also addressed
with reference to Art. 83 EPC in two ex parte proceedings, (T 122/89 of 5.2.1991 and
T 503/92). In T 860/93 (OJ 1995, 47), also ex parte proceedings, it was decided that the
absence of methods for measuring a relative quality in the claim was a problem with
respect to the clarity of the claim under Art. 84 EPC (see also T 230/87, T 176/91,
T 917/92).
In T 1055/92 (OJ 1995, 214) the examining division had rejected the patent application
under Art. 84 EPC because in the claim it was not clear how certain values were to be
computed. The board held that the requirements of Art. 84 EPC, that the claims shall
define the matter for which protection is sought, should be clearly distinguished from the
requirement under Art. 83 EPC that the European patent application must disclose the
invention in such a way that it enables a person skilled in the art to carry out that same
invention. Under Art. 83 EPC, sufficient disclosure is required of a European patent
application, ie of the application as a whole, comprising the claims, together with the
description and the drawings, but not of an individual claim as such. A claim, on the other
hand, must comprise the essential features of the invention (T 32/82, OJ 1984, 354); the
essential features should comprise those features which distinguish the invention from
the closest prior art. The primary function of a claim is to set out the scope of protection
sought for an invention, which implies that it is not always necessary for a claim to
identify technical features or steps in detail (see also T 713/98, dealt with under Chapter
II.A.6.1).

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7. Evidence
II.A.7. Evidence

The objection of lack of sufficient disclosure presupposes that there are serious doubts,
substantiated by verifiable facts (T 19/90, OJ 1990, 476; T 890/02, OJ 2005, 497).
In order to establish insufficiency, the burden of proof is upon an opponent to establish
on the balance of probabilities that a skilled reader of the patent, using his common
general knowledge, would be unable to carry out the invention (T 182/89, OJ 1991, 391).
A mere statement that one of several examples in a patent has been repeated once
"exactly as described" without obtaining exactly the results claimed in the patent is in
principle inadequate to discharge that burden (see also T 406/91, T 418/91, T 548/91,
T 588/93, T 465/97, T 998/97, T 499/00 and T 751/00). If the patent contains only an
example with a hypothetical experimental protocol, and this example is to be relied on for
showing sufficiency, then the burden of proof lies on the patentee to show that in practice
this protocol works as stated. Evidence that a variation of this protocol works isunlikely to
be enough (T 792/00). For more details see "Law of evidence", Chapter VI.K.5.
As proof that an invention has been insufficiently disclosed, the boards require that the
attempt to repeat it must fail despite following the conditions given in the examples. This
requirement is not fulfilled where the opponent repeats the patented process under
conditions covered by claim 1 but differing in many respects from those applying in the
contested patent's examples (T 665/90).
An invention should be reproduced using the examples given. Insufficiency cannot be
proven on the basis of laboratory trials when the only embodiment exemplified in the
patent is an industrial fermentation process (T 740/90). The disclosure was also
considered sufficient where the opponent had only used equivalents of the surfactants
given in the patent, as he had not discharged his burden of proof (T 406/91).
It was held in T 541/96 that if an invention seems to offend against the generally
accepted laws of physics and established theories, the disclosure should be detailed
enough to prove to a skilled person conversant with mainstream science and technology
that the invention is indeed feasible, the onus being on the applicant (see also
T 1023/00).
B. Claims
Claims

Art. 84 EPC lays down the relevant principles governing the content and wording of the
claims, providing that claims should be clear and concise and be supported by the
description. It is supplemented by R. 29 EPC.
As explained in decision G 2/88 (OJ 1990, 93, Corr. 469), Art. 84 EPC provides that the
claims of a European patent application "shall define the matter for which protection is
sought". R. 29(1) EPC further requires that the claims "shall define the matter for which
protection is sought in terms of the technical features of the invention". The primary aim
of the wording used in a claim must therefore be to satisfy such requirements, having
regard to the particular nature of the invention, and the purpose of the claims. The
purpose of claims under the EPC is to enable the protection conferred by the patent or
patent application to be determined (Art. 69 EPC), and thus the rights of the patent
owner within the designated contracting states (Art. 64 EPC), having regard to the
patentability requirements of Articles 52 to 57 EPC.

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Claims

There are basically two different types of claim, namely a claim to a physical entity (eg
product, apparatus) and a claim to a physical activity (eg method, process, use). These
two basic types of claim are sometimes referred to as the two possible "categories" of
claim. Within the above two basic types of claim various sub-classes are possible (eg a
compound, a composition, a machine; or a manufacturing method, a process of
producing a compound, a method of testing, etc.). Furthermore, claims including both
features relating to physical activities and features relating to physical entities are also
possible. There are no rigid lines of demarcation between the various possible forms of
claim.
The technical features of the invention are the physical features which are essential to it.
The technical features of a claim to a physical entity are the physical parameters of the
entity, and the technical features of a claim to an activity are the physical steps which
define such activity. The Enlarged Board of Appeal also pointed out, however, that the
boards of appeal had in a number of cases allowed the technical features to be defined
functionally in certain instances (eg T 68/85, OJ 1987, 228; T 139/85).
The boards of appeal have repeatedly confirmed that claims had to be clear for the sake
of legal certainty, as their purpose was to enable the protection conferred by the patent
to be determined (see eg T 337/95, OJ 1996, 628; T 338/95, T 586/97, T 437/98,
T 728/98, OJ 2001, 319; T 877/99, T 1074/00, T 799/04).
1. Clarity
II.B.1. Clarity

1.1. Principles governing the text of claims

1.1.1 General
The protection sought should normally be indicated in the claims by technical features
(see T 4/80, OJ 1982, 149). Furthermore the claims per se must be free of contradiction
(see T 2/80, OJ 1981, 431).
In a case as far back as T 165/84 it was considered that the claims lacked clarity if the
exact distinctions which delimited the scope of protection could not be learnt from
them.
When a claim is directed to a product characterised by parameters, the established
jurisprudence requires that those parameters must be clearly and reliably determined
either by indications in the description or by objective procedures which are usual
in the art (see T 94/82, OJ 1984, 75; T 452/91, T 541/97, T 437/98, T 193/01).
In T 412/93, however, the board observed that frequently where something had to be
measured there would be a grey area where measurement error might make it difficult
to determine whether a particular product fell within a claim or not. The board held that
this did not justify an objection under Art. 84 EPC.
When an essential ingredient comprised in a chemical composition is open to be labelled
arbitrarily "active ingredient" or not depending exclusively on the mental label the user
wished to apply, thereby rendering the meaning of that feature protean, then the public is
left in doubt as to the distinction which compositions are covered by the claim and which
are not, which is at variance with the principle of legal certainty. Because of that lack of
legal certainty, the claim fails to meet the requirement of clarity imposed by Art. 84 EPC
(T 586/97).

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In T 762/90 a lack of clarity was found in the use of a trade mark designating a whole
series of products which differed from one another depending on phases in their
industrial development. Moreover, the board expressed doubts about the use of such a
designation, since it was uncertain whether the meaning of the trade mark would remain
unaltered up to the end of the patent term (see also T 939/92). Similarly, in T 480/98 the
board considered that a trade mark product referred to in the characterising portion of
claim 1 did not have a clear technical meaning, in that it could refer to a plurality of
products having different compositions and properties. In consequence there was a lack
of clarity, and the claim was not allowable. According to the board in T 623/91 the
exclusion of a composition by reference to the trade mark or trade designation would not
introduce uncertainty and therefore not offend against Art. 84 EPC, as changes in the
range of chemical composition would not be likely without a corresponding change in the
trade name or trade mark.
The preamble of claim 2 of the application in T 363/99 contained a reference to a
German patent specification. The board considered this to be a violation of Art. 84,
second sentence, EPC since it was impossible to establish the scope of the matter for
which protection was sought without consulting the reference document mentioned. The
fact that the indication of the publication number of the reference document provided the
most concise definition of the matter for which protection was sought (Art. 84 EPC) was
irrelevant by comparison. When formulating a patent claim, the form that was objectively
more precise always had to be chosen (T 68/85, OJ 1987, 228).
In T 728/98 (OJ 2001, 319) the board held that it followed from the requirement of legal
certainty that a claim could not be considered clear within the meaning of Art. 84 EPC if it
comprised an unclear technical feature (here “substantially pure”) for which no
unequivocal generally accepted meaning existed in the relevant art. This applied all
the more if the unclear feature was essential for delimiting the subject-matter claimed
from the prior art. In this case the description did not give any indication as to how the
term should be interpreted. Likewise in T 226/98 the board held that the feature "as a
pharmaceutical product" for defining a pharmaceutical standard of purity in a claim
related to a product as such (here, famotidine form "B"), rendered said claim unclear in
the absence of a generally accepted quantitative definition for the purported
standard of purity.
In decisions T 1129/97 (OJ 2001, 273) and T 274/98 the board emphasised that, to
satisfy the clarity requirement, the group of compounds/ingredients according to the
claim had to be defined in such a way that the skilled person could clearly distinguish
compounds/ingredients that belonged to the claimed group from those that did not. In
T 274/98 the board stated that in the context of a claim relating to a cosmetic or
pharmaceutical composition containing fatty bodies, the term "products sensitive to
oxidation" referred to products which, at ambient temperature, were degraded in the
presence of oxygen. In that light the disputed term was perfectly clear. The appellant
failed to supply evidence that in the given context some products would be susceptible to
oxidation in some conditions and not in others. Hence there was no ambiguity, and the
claim was clear (cf. also T 425/98 regarding the expression "consisting of a major
amount of").
Where a quality is expressed in a claim as being within a numerical range, the method
for measuring that quality must be either general knowledge or a method for measuring it
needs to be identified. However, where the claim specifies that a quality must be absent,

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this implies that this quality cannot be detected by the methods which are common in the
art for measuring it, so that the indication of a specific method is not necessary
(T 1012/98).
Complexity as such is not equivalent to a lack of clarity - clarity under Art. 84 EPC is not
at stake in a case of mere complexity of a claim provided the subject-matter for which the
protection is sought and the scope thereof are clear and unambiguous for a person
skilled in the art, either per se or in the light of the description (T 574/96). In T 1020/98
(OJ 2003, 533) the board confirmed that compliance with the clarity requirement of
Art. 84 EPC was not dependent on the time required to establish whether a given
compound was covered by the product claim. The clarity requirement was not a basis for
objecting to the complexity of a claim. Clarity within the meaning of Art. 84 EPC merely
required the claims to define the subject-matter for which protection was sought clearly
and unambiguously for the skilled person, if necessary in the light of the description.
In T 687/00 the preamble of claim 1 of the main request related inter alia to a "plastic
sealing sheet with appreciably better biaxial extensibility than conventional sheet". The
board held that this part-feature conveyed a mere desideratum which made no intrinsic
technical contribution to the subject-matter of the claim. Furthermore, the impugned
feature described an objective to be achieved over the prior art and therefore concerned
the central problem addressed by the inventor of the application at issue. A subjective
problem of this kind could alter in the course of the procedure. The board emphasised
that the statement of the problem belonged, as usual, in the description and not in the
claim.
In T 194/99 the board stated that it was possible in a claim for a first entity to define
certain characteristics of that entity as a function of characteristics of a second entity
employed when using the first entity (medical laser apparatus defined as a function of
absorption characteristics of a photosensitizer). As such, there was no need for the claim
to be directed to the combination of the first and the second entity (T 455/92). According
to the board, a prerequisite was, however, that the second entity and its relevant
characteristics as such, not their exact values, were unambiguously identified in the
claims.
1.1.2 Reference to the description or drawings
In addition, the boards established two further general principles with regard to the
requirements to be met by the text of the claims - in T 150/82 (OJ 1984, 309) the board
ruled that claims relying on references to the description in the specification in respect of
all their technical features (so called "omnibus claims") were unallowable as contrary to
R. 29(4) and R. 29(6) EPC, unless absolutely necessary, eg when a plurality of
conditions would not lend themselves to verbal expression without such a reference.
Examples of such exceptions included inventions containing features or limitations which
could only be expressed by means of drawings or graphs defining a particular shape or a
plurality of conditions. In T 271/88 the board upheld T 150/82 and decided that it was not
possible to base claims on an appendix showing structural chemical formulae designated
as "chemical formulae incorporated within claims". The board held that it was quite
evident that the terms "description" and "drawing" in R. 29(6) EPC were meant to cover
structural chemical formulae (see also T 752/94).
In T 1156/01, the board considered that, if the invention was characterised by
parameters, the method of and means for measurement should appear completely in the

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claim itself, whenever this was reasonable, or by reference to the description in

accordance with R. 29(6) EPC, if the method was so long that it would impair the
conciseness of the claim (confirmed in T 796/01).
In T 237/84 (OJ 1987, 309), the board stated that the purpose of reference signs in a
claim (R. 29(7) EPC) was to make the claims easier for all to understand. They did not
limit the scope of the claim but did affect its clarity and might enable it to be expressed
more concisely than would otherwise be possible (confirmed eg in T 572/90). In T 986/97
the board allowed a reference to the drawings.
In decision T 816/90 plasmids were defined by use of a designation which had no
technical meaning per se. Moreover, their structure was defined by reference to a figure.
The board was of the opinion that such a definition of a plasmid was contrary to the
requirements of Art. 84 EPC and therefore could not be accepted.
1.1.3 Indication of all essential features
According to the established case law of the boards of appeal Art. 84 EPC has to be
interpreted as meaning not only that a claim must be comprehensible from a technical
point of view, but also that it must define the object of the invention clearly, that is to say
indicate all the essential features thereof. All features which are necessary for
solving the technical problem with which the application is concerned have to be
regarded as essential features; see on this issue T 32/82 (OJ 1984, 354) and T 115/83,
confirmed inter alia in T 269/87, T 391/91, T 409/91 (OJ 1994, 653), T 694/92 (OJ 1997,
408), T 1055/92 (OJ 1995, 214), T 630/93, T 61/94, T 488/96, T 1167/97, T 203/98,
T 260/01, T 1069/01, T 844/02 and T 813/03. The indication of all essential features is
seen in part as necessary to meeting the clarity requirement, in part as a prerequisite for
the support function laid down in Art. 84, second sentence, EPC (see Chapter II.B.4),
and in part it is inferred from Art. 84, first sentence, EPC in conjunction with R. 29(1) and
(3) EPC.
The essential features should in particular comprise those which distinguish the invention
from the prior art (T 1055/92, OJ 1995, 214; T 813/03). Regarding the delimitation of
essential from non-essential features, see also T 61/94, T 203/98, T 141/00 and
T 260/01, which is discussed below.
The board's opinion in T 32/82 was also confirmed in T 622/90, where it was held that
lack of clarity could be caused not only by the presence of an ambiguous feature, but
also by the absence of a feature which was necessary for clarity (see also T 630/93).
In T 409/91 the invention related to mineral oils containing paraffin wax. The inventors
found that waxy fuels having wax crystals of sufficiently small size at low temperatures to
pass through paper filters used in diesel engines could be obtained by using additives
with a structure described in the application by a general formula. The claims did not
mention the additives.
The board held that the claims did not define the matter for which protection was sought
by reference to all its essential technical features as required by Art. 84, first sentence,
EPC: in the description of the application in suit the use of certain additives was
presented as an essential constituent of the fuel oil composition. As this feature was
missing in the claims, the board found that they defined some other invention which was
not sufficiently disclosed. The board further held that the requirement that the claims be

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supported by the description (Art. 84, second sentence, EPC) reflected the general legal
principle that the extent of a patent monopoly, as defined by the claims, should
correspond to the technical contribution to the art. Claims should not therefore extend to
subject-matter which would still not be at the disposal of a skilled person after reading
the description. Consequently, a technical feature described and highlighted in the
description as being an essential feature of the invention also had to be part of the
claims.
In T 260/01 the board maintained that it was not necessary for an independent claim to
give a full account of all the intellectual steps required to implement its teaching. Under
established case law it was sufficient that the claim indicated the technical measures that
were essential to achieve the desired result. The relative ranking of individual process
parameters was subordinate to the overall "control philosophy" and could clearly be
omitted from an independent claim, provided that the claim’s control philosophy was not
indeterminate and speculative.
In T 914/02 the claimed method aimed at identifying optimum fuel bundle loading
arrangements in a nuclear reactor core. It consisted of a series of steps which might be
purely abstract, as at no stage was the use of any technical means implied. The
appellant sought to derive from the alleged sheer complexity of the proposed solution an
implied use of technical means, in particular a computer. The board found no such
alleged mentally irresolvable complexity. Furthermore, according to the board, it was
doubtful as a matter of principle whether complexity could be used to disqualify an
activity as a mental activity. Rather, it would appear generally that if computer means
were indeed indispensable, they should be included in the claim as an essential feature
of the invention.
In T 818/03 the board considered that a method claim which did not state sufficiently
clearly the steps by which a particular result was achieved might still be considered clear
provided the result to be achieved was clearly defined, and a claim which defined a
method of achieving some less than clearly defined result might also still be considered
clear provided the steps that needed to be taken to achieve that result were sufficiently
clearly defined. However, a claim must be considered to lack clarity if, as here, it set out
insufficiently clearly both the necessary parameters of the method and the relevant
characteristic features of the result.
In G 1/04 (OJ 2006, 334) the Enlarged Board recalled that Art. 84 EPC required the
claims to define the subject-matter for which patent protection was sought, and that they
must be clear. An independent claim within the meaning of R. 29 EPC should explicitly
specify all of the essential features needed to define the invention, and the meaning of
these features should be clear for the person skilled in the art from the wording of the
claim alone. The same should apply mutatis mutandis in respect of a claim relating to the
subject-matter excluded from patent protection under Art. 52(4) EPC. These
requirements served the overriding purpose of legal certainty.
The Enlarged Board took the view that a diagnostic method within the meaning of
Art. 52(4) EPC had an inherent and inescapable multi-step nature. If diagnosis as the
deductive medical or veterinary decision phase was a purely intellectual exercise, the
feature pertaining to the diagnosis for curative purposes and the features relating to the
preceding steps which were constitutive for making the diagnosis represented the
essential features of a diagnostic method within the meaning of Art. 52(4) EPC. Thus, in

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order to satisfy the requirements of Art. 84 EPC, an independent claim relating to such a
method must include these features.
The essential features necessary for clearly and completely defining a particular
invention were for the most part of a technical nature. But, if a non-technical feature was
to be regarded as constitutive for defining the invention, it must likewise be included as
an essential feature in the independent claim. Thus, although diagnosis stricto sensu
was a purely intellectual exercise unless it was carried out by a device, the feature
pertaining to it was such an essential feature as to be included in the independent claim.
The same applied to a feature relating to a method step of a non-technical nature
belonging to the preceding steps which were constitutive for making the diagnosis for
curative purposes. As regards, in particular, the non-technical feature pertaining to
diagnosis for curative purposes, it was to be included as an essential feature in the
respective independent claim if its essentialness was unambiguously inferable from the
respective European patent application or European patent as a whole. This was the
case if the application or patent in question disclosed a method for obtaining findings of
diagnostic relevance which allowed the attribution of the detected deviation to a
particular clinical picture (on the principal issues of this decision, see Chapter I.A.2.5.)
1.1.4 Clarity of broad claims
It was stated in decision T 238/88 (OJ 1992, 709) that the clarity of a claim is not
diminished by the mere breadth of a term of art (eg "alkyl") contained in it, if the meaning
of such term - either per se or in the light of the description - is unambiguous for a person
skilled in the art (on the problem of the interpretation of claims in general, see Chapter
II.B.5).
In T 523/91 the board held that the wording "plastics in combination with inserts" and
"this insert is combined with the plastics granules in a wound or folded manner" did not
cause the subject-matter of the claim to be unclear within the meaning of Art. 84 EPC.
Although the nature of the combination covered many possibilities, the resulting subject-
matter of the claim was broad rather than unclear. The broadness of a claim could not be
contested on its own but only in conjunction with other criteria such as novelty, inventive
step or reproducibility.
Likewise in T 688/91 the board stated that a broad claim was not to be equated with one
lacking clarity. In this instance the claim was worded as follows: "Integrated
microprogrammed apparatus [...] with apparatus to generate the T-states T0 [...], T1 [...],
[...] characterised in that [...] the generation both of the T-states T0, T1 [...] and of the
further T-states [...] is in each case effected as a function of preceding T-states and of
state parameters such as the instantaneous values of state and/or mode signals and
[...]". The board held that, even if the words "such as" were understood to mean "for
example", with the result that the subsequent information was not to be interpreted in a
restrictive sense, the words "state parameters" were clear in as much as they conveyed
the fact that T-state generation was to be effected as a function of any parameters
representing one of the states of the apparatus. Although the claim was to be regarded
as broad, since the terms used were open to general interpretation, breadth was not to
be equated with an absence of clarity.
In T 630/93 the board noted that Art. 84, first sentence, EPC implied that it was not
always necessary for a claim to identify technical features or steps in full detail. The
function of the essential features, although normally expressed in technical terms, was

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often to define the borders of an invention rather than details of the invention within those
borders. Thus, essential features could often be of a very general character and in
extreme cases indicate only principles or a new idea (see also Chapter “Sufficiency of
disclosure”).
The principle whereby a broad claim is not unclear per se was applied in several
decisions (T 456/91, T 393/91, T 530/94, T 950/97, T 149/98).
1.1.5 Principles in connection with categories of claim
In the aforementioned decision T 688/91 (see right above) the board found that the fact
that claims of different categories were deemed to be independent claims did not
preclude reference to other independent claims. In the board's view, however, any
such reference had to make perfectly clear whether or not the reference was intended to
replace features. In the former case, it had for reasons of clarity to replace all the
features, and in the latter case none.
In case T 410/96 concerning a data processing system the question arose whether it
was permissible for a claim to a system to refer back to a claim to a method. The board
held that, although R. 29(4) EPC mentioned a reference only in the context of a claim
including all the features of the claim it referred to, this did not imply a contrario that a
reference which did not fulfil this condition was necessarily impermissible. The board
found that there was no a priori objection under Art. 84 EPC to an independent claim
which partially drew its features from preceding claims of a different category. The
essential features were thus incorporated in the disputed claim by reference, the claim
thus complying with R. 29(3) EPC.
In decisions T 418/92 and T 453/90 the boards confirmed that it was possible for claims
to relate to both physical activities and physical entities, in particular where the
inventions concerned were fully disclosed as processes to the skilled person only if
apparatus features were also included in the definition.
In T 426/89 (OJ 1992, 172) the board decided that a claim relating to a "method for
operating" a device was not "clear" (Art. 84 EPC) if the claimed features only described
how the device worked.
In T 841/95 the board found that where a claim for an apparatus sought to define the
invention by reference to features of the use to which the apparatus was to be put, a lack
of clarity could result. However, if the subject-matter of the application was an apparatus
and it was not viable to define the apparatus other than by reference to the said use, an
apparatus claim directed to a combination of apparatus and use and defining the
apparatus unambiguously could be clear.
Including in a device claim "for carrying out a process" a reference back to an earlier
claim did not alter the fact that it was an independent (non-process) claim; rather, it
limited the claimed device to being suitable to carry out the process referred to
(T 1017/98).
The disputed claim before the board in T 952/99 contained two different aspects of a use
claim: on the one hand it defined the use of a particular physical entity to achieve an
'effect', and on the other it defined its use to produce a product. Although a use claim
normally falls into either one category or the other, the board found that such a clear
distinction was not possible in this case. The claim contained both application and

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process features and there was a technical affinity between the additional process
step and the 'core' of the invention. Both the application and process features were thus
technical features of the invention, so that their combination did not contravene
R. 29(1) EPC, the relevant criterion for assessing the extent to which the combination of
a 'use' claim and technical process features was allowable from the point of view of
clarity.
The board drew a distinction with T 796/91, in which it had been held that the
heterogeneous combination of process features and application features rendered the
claim fundamentally unclear. That case had concerned the combination of a process
claim and a use claim with no process claim at all. In contrast to the case before the
board, the process features had apparently had no affinity to the application features,
which had made it impossible to subsume the two different types of technical feature
under one claim.
For the peculiarities of product-by-process claims, see Chapter II.B.6.
1.2. Exceptions to the principles
Exceptions to these principles have been permitted for practical reasons and under
certain circumstances claims granted which contained features in the form of disclaimers
and functional or unspecified features.
1.2.1 Disclaimers
(a) Allowability of disclaimers
In its decisions G 1/03 and G 2/03 (OJ 2004, 413 and 448) the Enlarged Board of Appeal
used the term "disclaimer" as meaning an amendment to a claim resulting in the
incorporation therein of a "negative" technical feature, typically excluding specific
embodiments or areas from a general feature.
A more detailed discussion of G 1/03 and G 2/03 and the subsequent jurisprudence on
the admissibility of undisclosed disclaimers pursuant to Art. 123(2) EPC can be found in
Chapter III.A.1.6.3.
To summarise, an undisclosed disclaimer may be allowable in order to:
- restore novelty by delimiting a claim against the state of the art under Articles 54(3)
and (4) EPC
- restore novelty by delimiting a claim against an accidental anticipation under
Art. 54(2) EPC
- disclaim subject-matter which, under Articles 52 to 57 EPC, is excluded from
patentability for non-technical reasons.
The Enlarged Board emphasised that, in defining the situations in which a disclaimer
might be allowed, care had been taken to make sure that the reason justifying a
disclaimer was not related to the teaching of the invention.
It disagreed with the view that, starting from the premise that a disclaimer was always a
mere waiver of part of the invention, it might be used for any purpose, ie also for
excluding non-working embodiments. The Enlarged Board held that a claim

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comprising non-working embodiments might have different consequences, depending on

the circumstances.
According to the Enlarged Board, where there was a large number of conceivable
alternatives and the specification contained sufficient information on the relevant criteria
for finding appropriate alternatives over the claimed range with reasonable effort, the
inclusion of non-working embodiments was of no harm. Therefore, a disclaimer was
neither necessary nor appropriate.
If this was not the case and there was a lack of reproducibility of the claimed invention,
this might become relevant under the requirements of inventive step or sufficiency of
disclosure. The determining date for fulfilling the latter requirement had to be the date of
filing or priority, and deficiencies in this respect could not be remedied during the
proceedings before the EPO (overruling T 170/87 and T 313/86).
This decision of the Enlarged Board of Appeal overruled the more restrictive approach in
T 323/97, which had laid down that any amendment to a claim which was not supported
by the application as originally filed and which was intended to delimit the claimed
subject-matter further vis-à-vis the state of the art was in breach of Art. 123(2) EPC. In
addition, the limits within which disclaimers were admissible was more precisely defined,
making some of the earlier jurisprudence obsolete (see T 313/86, T 623/91, T 1050/93).
According to these decisions, a disclaimer should also be admissible when a sub-range
of the invention's subject-matter defined in terms of ranges was to be excluded not in the
light of the prior art but because it did not solve the technical problem.
(b) Drafting of disclaimers
Regarding the drafting of disclaimers, the Enlarged Board of Appeal stated in G 1/03 and
G 2/03 (OJ 2004, 413 and 448) that the disclaimer should not remove more than was
necessary to restore novelty or to disclaim subject-matter excluded from patentability for
non-technical reasons.
In any case, the requirements of conciseness and clarity of Art. 84 EPC were also
applicable to claims containing disclaimers. This meant that a disclaimer was not
allowable if the necessary limitation could be expressed in simpler terms in positive,
originally disclosed features in accordance with R. 29(1), first sentence, EPC. In addition,
a plurality of disclaimers might lead to a claim drafting which put an unreasonable burden
on the public to find out what was protected and what was not protected. A balance had
to be struck between the interest of the applicant in obtaining adequate protection and
the interest of the public in determining the scope of protection with reasonable effort.
In the interest of transparency of the patent, it should be clear from the specification that
there was an undisclosed disclaimer and why it had been introduced. The excluded prior
art should be indicated in the description in accordance with R. 27(1)(b) EPC and the
relation between the prior art and the disclaimer should be shown.
With regard to the drafting of disclaimers the Enlarged Board likewise takes its cue from
existing jurisprudence, much of which is doubtless still applicable.
The board had already decided in T 4/80 (OJ 1982, 149) that disclaimers were
admissible if the subject-matter remaining in the claim could not technically be defined
directly more clearly and concisely (see also T 433/86 and T 173/96).

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A disclaimer introduced in order to establish novelty should exclude only that subject-
matter which is disclosed in the state of the art (T 434/92, T 653/92 and T 426/94). Of the
cases which followed G 1/03 and G 2/03, see inter alia T 285/00, T 426/00, T 747/00,
T 10/01.
In T 11/89 the board held that claims containing a disclaimer should clearly have shown
the technical features by which the claimed subject-matter was distinguished from the
excluded subject-matter. The publication number of a patent specification was obviously
not a technical feature and was therefore not appropriate for determining the scope of a
disclaimer. The claim in question was of the type "X-derivatives of the general formula I
[...] with the exception of the X-derivatives of the general formula I disclosed in patent
specification N°[...]" (see, however, T 623/91, in which the exclusion of a composition by
reference to a trade mark or a trade designation was allowed; with regard to reference to
a trade mark, albeit with another outcome, see also T 480/98).
In T 161/02 the board pointed out that the disclaimer combined features which arose
from two different documents of prior art, the combination of these features resulting
in a disclaimer that corresponded to neither the disclosure of the first nor that of the
second document, and which - as acknowledged by the appellant - did not make any
technical sense. The board held that such a disclaimer rendered the claim unclear within
the meaning of Art. 84 EPC, as it did not allow the public to find out what was protected
and what was not protected.
To justify the exclusion expressed by the formulation "non-therapeutic use" at the
beginning of the disputed claim, the appellant in T 67/02 had cited G 1/03 and G 2/03
(OJ 2004, 413 and 448), which had ruled that disclaimers were admissible for subject-
matter not patentable under Art. 52 to 57 EPC. However, the board found that in the
present case it was not possible to identify a clear distinction between cosmetic use and
therapeutic treatment. The board therefore took the view that the exclusion rendered the
claimed subject-matter unclear.
In the claim at issue in T 201/99 the appellants (patent proprietors) replaced the range of
treatment times "1-10 minutes" by "1-6 minutes". They argued that the range of 1 to 6
minutes should be regarded as disclaiming a sub-range of more than 6 to 10, so as to
remove the area of overlap between the claimed subject-matter and the prior art. The
board, however, emphasised that Enlarged Board of Appeal decisions G 1/03 and
G 2/03 (in particular point 3, last paragraph, of the Reasons) explicitly ruled out the
possibility of hiding a disclaimer by using an undisclosed positive feature defining the
difference between the original claim and the anticipation, since this would affect the
transparency of the patent (Art. 84 EPC).
(c) Novelty and inventive step
In T 188/83 (OJ 1984, 555) the board made it clear that the range was not rendered
novel by the fact that the values calculated from the examples described in a citation
were excepted by means of a disclaimer if these values could not be regarded as
individual.
In T 170/87 (OJ 1989, 441) the board established that a disclaimer could render new an
inventive teaching which overlapped the state of the art, but could not impart inventive
step to a teaching which was obvious (see also T 857/91 and T 710/92). In T 597/92

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(OJ 1996, 135) the board confirmed this, stating that there was no basis in the EPC for
the substantiation of inventive step by way of a disclaimer (see also T 653/92).
The Enlarged Board of Appeal, too, was at pains to point out in G 1/03 and G 2/03 that
an undisclosed disclaimer which is or becomes relevant to the assessment of inventive
step or sufficient disclosure constitutes an extension which is inadmissible under
Art. 123(2) EPC (see also T 968/00 and T 703/02).
In T 1028/02, claim 1 of the contested patent contained a negative feature which in the
board's opinion could be considered as a disclaimer in the light of the definition of a
disclaimer given by the Enlarged Board in its decision G 1/03 (OJ 2004, 423). In that
decision, however, the Enlarged Board had drawn a distinction between disclaimers
"disclosed" in the application as originally filed and those not so disclosed. It was only in
the case of an "undisclosed" disclaimer that the assessment of inventive step must be
carried out without taking account of the said disclaimer.
In T 134/00 the claim at issue related to a fuel oil composition consisting of a middle
distillate fuel oil and an additive composition. It required the additive composition to
comprise at least the components of given types (i) and (ii), but it could also comprise
other additive components. The claim also contained a disclaimer excluding a specific
combination only as component (i) and not from the total fuel composition. The board
therefore concluded that the disclaimer did not exclude the presence of the two specified
components in the total fuel composition.
1.2.2 Functional features
In T 68/85 (OJ 1987, 228) the board found that functional features defining a technical
result were permissible in a claim (i) if, from an objective viewpoint, such features could
not otherwise be defined more precisely without restricting the scope of the invention,
and (ii) if these features provided instructions which were sufficiently clear for the expert
to reduce them to practice without undue burden, if necessary with reasonable
experiments. The board further pointed out that the effort to define a feature in functional
terms had to stop short where it jeopardised the clarity of a claim as required by Art.
84 EPC. The following decisions agreed with these findings: T 139/85, T 292/85
(OJ 1989, 275), T 293/85, T 299/86 (OJ 1988, 88), T 322/87, T 418/89 (OJ 1993, 20),
T 707/89, T 204/90, T 752/90, T 388/91, T 391/91, T 810/91, T 822/91, T 894/91,
T 281/92, T 490/94, T 181/96, T 750/96, T 265/97, T 568/97, T 484/98, T 295/02,
T 499/02. Some of these decisions (see eg T 204/90, T 181/96, T 265/97) examine a
third criterion, which is not strictly speaking a requirement under Art. 84 EPC and
requires that (iii) the state of the art does not stand in the way of using such functional
and therefore general and broad terminology.
T 332/87 offers an interpretation of the Guidelines C-III, 4.8 where it is said that a claim
directed to a product for a particular use has to be construed as defining a product
suitable for this use (old version). According to the board this meant only that it might be
admissible in appropriate cases to introduce functional language into a claim for defining
a product. However, a product defined inter alia by means of a functional feature could
only be considered as novel if this functional feature differentiated the product in
substance from known products.
In T 361/88 the board distinguished between two types of functional feature: the first type
of functional feature is related to process steps which are known to the man skilled in the

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art and may easily be performed in order to obtain the desired result; the second type of
functional feature consists of process steps defined by the result which is aimed at. This
is also allowable as long as the man skilled in the art knows, without exceeding his
normal skills and knowledge, what he has to do in order to obtain said result. Another
situation arises if said result is obtained for the first time, in which case the man
skilled in the art does not know how to achieve the result.
In T 243/91 it was stated that a functional feature was allowable if that feature provided a
clear instruction to a skilled person to reduce it to practice without undue burden. In
T 893/90 the feature "being present in amounts and proportions just sufficient to arrest
bleeding" was held to be a functional feature which defined a technical result which also
constituted a testable criterion to be satisfied by the claimed pharmaceutical
composition. Because such testing involved only routine trials, the adopted functional
language was allowable. The introduction of a reference to specific amounts and/or
proportions of the components would limit the claim and was not necessary. The
situation in T 893/90 was distinguished from the one before the board in T 181/96.
Although in the former case the testing might appear prima facie bothersome, it was
nothing out of the ordinary for the field of medicine, involving only routine trials. In the
case in suit, however, which concerned an apparatus for hydrostatically testing a sealing
element of a threaded connection between two connected sections of pipe, there was no
general type of pipe connections with generally well-defined ranges of dimensions which
were thus generally available for verification of the functional features as such.
In T 446/90 a mixing step was defined in a claim by the result to be achieved, namely
obtaining a dense packing of particles B, the definition of the latter being a theoretical,
idealised scientific model, such models being well known. The reference to this
theoretical model could be understood by the skilled person on the basis of the further
information given in the patent in suit, and at least one indirect method suitable for
testing the density of the packing had been disclosed in the description. Under these
circumstances the definition of the mixing conditions by the result to be achieved was
held by the board to be clear. The board noted that the incorporation into the claim of the
mixing conditions described in the examples would unduly limit the scope of protection
and was therefore not appropriate.
In case T 720/92 the application was refused inter alia because claim 1 was held not to
be clear since it used the obscure terms "metal promoted oxidation" and "oxidizable
organic polymer"; the indication of a maximum oxygen permeance was considered a
definition by the result to be achieved which could not represent a technical feature. The
board disagreed, holding that the term "clarity" in Art. 84 EPC referred to the practical
meaning of the language of the patent claims. A claim combining functional definitions
limited to features, which a skilled person would have had no difficulty in determining on
the basis of common general knowledge, and a structural definition of the essential
contribution to the art was not contrary to Art. 84 EPC.
In T 391/91 claim 1 set out in general terms the sequence of steps to be followed in
order to put the invention into practice, ie in order to produce unicellular micro-organism
host cells having INA (ice nucleation activity) or enhanced INA. The claim was in fact a
generalisation from the particular examples. The department of first instance
considered the definition in general functional terms of the DNA fragment encoding an
expression product responsible for the INA+ phenotype inadmissible. The board stated
that as there was no reason to doubt that it was possible to generalise the specific

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teaching of the examples given, it would be unfair to the appellant to require a restriction
of the claim by incorporation therein of the specific features of the examples. The skilled
person could use any suitable variant capable of providing the same effect of the
invention. This might be tedious, but it was nothing out of the ordinary in this field and
involved only routine trials.
In T 241/95 (OJ 2001, 103) the Swiss-type second medical use claim defined the
disease or disorder to be treated with substance X as “condition which is capable of
being improved or prevented by selective occupation of the serotonin receptor”. The
board held that this functional definition was unclear because no test was at hand to
determine whether the therapeutic effects were a result of the newly discovered property
of X of occupying the serotonin receptor or any other known or unknown property of that
substance.
In T 1074/00 the board considered that the term "capable of hybridising under
stringent conditions" was sufficiently clear for the purposes of Art. 84 EPC, having
regard to the particular nature of the subject-matter (see also T 29/05). The board found
that, although different experimental protocols might be applied for assessing
hybridization under stringent conditions, this did not mean that these protocols would
lead to different results as far as the detected nucleotide sequence was concerned.
Moreover, it had to be taken into account that the present claim defined its subject-
matter also by a further functional feature relating to the biological activity.
In T 151/01 the product claim at issue was intended to be restricted vis-à-vis the prior art
embodiments by a functional feature, namely that the amount of the ingredient present in
the composition must be a "therapeutic amount". The board had no doubt, that the
skilled person was perfectly able in most cases to decide whether a certain amount of a
given non-steroidal anti-inflammatory agent had a therapeutic effect or not. However, it
pointed out that, in order to establish the lower limit of the therapeutic amount for a given
non-steroidal anti-inflammatory agent, in other words, in order to clearly establish the
scope of protection of the claims, a standard test was required, since the result would
strongly depend on the experimental method used. As there was no such test in the
description or known to the skilled person, the board concluded that the claim did not
fulfil the requirement of Art. 84 EPC.
1.2.3 Unspecified features and relative qualities
Unspecified features are permitted as follows:
(a) To avoid an undue limitation of the scope of the claim where the person skilled in the
art can verify the result by tests involving nothing more than trial and error (T 88/87).
(b) To render the meaning of the feature intelligible from the actual claim.
Thus, the objection in T 487/89 was based on the fact that the claim had indicated both
tenacity and toughness with a lower but no upper limit. The opposition division took the
view that such "open-ended" parameters were always objectionable if they related to an
inherently desirable characteristic. The board, however, held that whether the absence of
an upper or lower limit was acceptable in a claim in any individual case depended on all
the surrounding circumstances. Where, as in the case in question, the claim sought to
embrace values as high as could be attained above a specified minimum level, given the
other parameters of the claim, then such open-ended parameters could not normally be

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objected to. This decision was confirmed by T 129/88 (OJ 1993, 598), T 87/84, T 92/84,
T 136/84 and T 297/90, although in the latter case a role was played by the question of
sufficient disclosure (cf. also T 989/95, in which T 487/89 was agreed with but not
applied).
In T 227/91 (OJ 1994, 491) the claims comprised a coating thickness defined by a
formula with two parameters (a) and (t). Parameter (a) represented the thermal diffusivity
of the coating means and was therefore a feature inherent in the instrument.
Parameter (t) represented the effective pulse time of the laser and was related to the
laser operating conditions, not to the structure of either the laser or the instrument. The
thickness defined in the claims was still connected with the mode of operation of the
laser, that is, with a human factor irrelevant to the instrument per se. The extent of the
protection conferred by the subject-matter of the claims was therefore regarded by the
board as ambiguous and indefinite.
In T 455/92 independent claim 2 was worded as follows: "Covering [...] for a pressing
[...], characterised by:
(a) a length which corresponds at least to the circumference of the shell face of the
pressing to be covered,
(b) an overall breadth sufficient to cover the shell face and both end faces of the
pressing, and
(c) a fold such that [...] the breadth [...] corresponds to the breadth of the shell face of the
pressing [...]".
The board did not see this as a breach of Art. 84 EPC, since reference had been made
to a physical entity which was known; hence the range of sizes was definable in so far as
it excluded packaging materials for other physical entities. Furthermore, it was self-
evident to a skilled person in this field that the size of the packaging material (the
covering) was dependent on the physical entity to be packed (for the interpretation of
claims see Chapter II.B.5).
In T 860/93 the board decided as follows: Where a quality is expressed in a claim as
being within a given numerical range, the method for measuring that quality must either
be general technical knowledge, so that no explicit description is needed, or a method of
measuring that quality needs to be identified (decision T 124/85 followed). In contrast,
where a claim specifies a relative quality, in this case that the products should be
"water-soluble", it is not normally necessary to identify any method for its determination
(see also T 785/92). In T 860/95, T 649/97, T 939/98, T 1041/98, T 193/01, T 545/01 and
T 378/02 the boards confirmed that the use of a relative term in a claim may be accepted
where the skilled person is able to understand the meaning of this term in a given
context. However, in T 728/98 and T 174/02 the boards ruled that the relative terms at
issue were unclear.
2. Conciseness
II.B.2. Conciseness

2.1. General
In T 79/91 the board stated that lack of clarity of the claims as a whole could arise from
lack of conciseness. The invention in this case had been set out in at least ten
independent claims of different scope. The board was of the opinion that this

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presentation made it difficult, if not impossible, to determine the matter for which
protection was sought, and placed an undue burden on others seeking to establish the
extent of the monopoly. Citing this case, the board found in T 596/97 that, prima facie, a
total of seven independent claims could be undesirable for reasons of conciseness and
clarity. However, on the facts of the specific case before it, the board found the
independent claims to be acceptable.
In T 246/91 the application comprised 191 claims, reduced in appeal proceedings to 157.
The board ruled that the number of claims had to be reasonable, bearing in mind the
nature of the invention claimed. Although no hard and fast definition could be accorded
to the term reasonable, this did not mean that the requirement was wholly devoid of
meaning and legal effect. In deciding the matter, regard had to be had to the interest of
the relevant public, since patents ought not to be allowed to erect a legal maze or smoke
screen in front of potential users of the inventions to which they laid claim. Patent claims
taken singly as well as in totality had to be clear and concise in order to enable such
potential users to ascertain, without undue burden, let alone recourse to litigation,
whether their planned commercial use was likely to infringe the patent. Having to
construe the remaining 157 claims and form a valid and commercially useful opinion on
whether or not any one of them could prevent or hinder the commercial activities
imposed, necessarily, a severe and totally undue burden on the public. It followed that
the application in question contravened the clear provisions not only of R. 29 EPC but
also of Art. 84 EPC.
However, where a single main claim having to present a multiplicity of alternatives
corresponding to the plurality of processes claimed would have lacked clarity, multiple
claims could be concise within the meaning of Art. 84 EPC (T 350/93).
Overlapping method and use claims were allowed by the board in T 433/99, as the
emphasis and thus scope of the claims was slightly different. Moreover, such a method
allowed for differences in claim interpretation in the different contracting states of the
EPC, particularly during infringement and revocation proceedings in national courts,
where opportunities for amendment were limited. The Guidelines C-III, 3.2 (June 2005
version) also discouraged an over-academic or rigid approach to the presence of claims
that were differently worded but apparently of similar effect.
A Markush formula is the concisest means of defining a class of chemical compounds in
a claim (T 1020/98). The examining division had held that "formulating claims in a style
that makes routine tasks in substantive examination unnecessarily difficult" was a
contravention of Art. 84 EPC. However, there is no legal basis in the EPC for a request
to restrict the content of an independent claim so that substantive examination can be
carried out with greater ease and less effort.
Regarding lack of conciseness because of a superfluous claim, see eg T 988/02.
2.2. Rule 29(2) EPC
In case T 56/01 each of the appellant's requests in the appeal stage contained three
independent claims of the same category: one claim to a broadband communications
module and two claims to a signal transport system. Hence, the board had to discuss
compliance with the amended R. 29(2) EPC.

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The board concluded from the preparatory documents that condition (a), in spite of the
distinction made between products and apparatus in the opening part of the Rule, also
applied to apparatus claims. Nevertheless, the board did not consider that condition (a)
was met by the two claims for the signal transport system because they were not
interrelated. The board inferred from the examples in an early proposal to the
Administrative Council for the amendment of R. 29(2) EPC that interrelated products
were meant to be different objects that complement each other, or somehow work
together. However, in the present case, the two different claims to the signal transport
system were for essentially the same object.
Moreover, the board defined the "alternative solutions" under R. 29(2)(c) EPC as
different or even mutually exclusive possibilities. The claims at issue, however, related to
one and the same solution with slightly different wording and level of detail. Moreover,
even alternative solutions were only allowed under the condition that "it is not
appropriate to cover these alternatives by a single claim". The board concluded from the
preparatory documents that "not appropriate" meant "not possible or not practical". The
intention was that, if it was possible to cover alternative solutions by a single claim, then
the applicant should do so. In the case at issue, given the overlap and similarities in the
features of the claims, the board held that it would have been entirely appropriate to
cover the subject-matter of the signal transport system by a single independent claim
with dependent claims as necessary.
Finally, the board emphasised that, when an objection under R. 29(2) EPC arose, the
burden of proof was shifted onto the applicant, ie it was up to the applicant to argue
convincingly why additional independent claims could be maintained.
In T 659/03 the board had to decide whether the two contentious independent claims in
the same category were covered by the exception in R. 29(2)(c) EPC. The board held,
first of all, that the appellant's wish to protect the two alternative processes by two
independent process claims was justified. It then confirmed that there were alternative
solutions to a particular problem, since the independent claims each contained all the
features required to solve the problem addressed. In T 525/03, the board found that
there were alternative solutions and held that it would not appear appropriate to cover
those alternative solutions in a single independent claim. Rather, attempting to redefine
the subject-matter of these claims in a more generalising way in one independent claim
might lead to an objection under Art. 123(2) EPC. Such generalisation could furthermore
be problematic for Art. 87 EPC.
In T 133/02, the Board held that a control system and a control means for use in the
system generally constitute inter-related products within the meaning of R. 29(2)(a) EPC.
3. Form of the claims
II.B.3. Form of the claims

R. 29(1) EPC provides that claims must contain, wherever appropriate, a statement
indicating the designation of the subject-matter of the invention and those technical
features which are necessary for the definition of the claimed subject-matter but which, in
combination, are part of the prior art ("preamble"), and a characterising portion stating
the technical features which, in combination with the features stated in the first part, it is
desired to protect.

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3.1. One-part or two-part claim

In decision T 13/84 (OJ 1986, 253), the board ruled that a claim in two-part form had to
be regarded as appropriate if a clearly defined state of the art existed from which the
claimed subject-matter distinguished itself by further technical features (likewise
T 181/95). This decision was confirmed by T 162/82 (OJ 1987, 533), where the board
added that the extent to which prior art was cited in the description could not be a
determining factor in deciding whether the one-part or the two-part form of a claim was
appropriate in a given case.
In T 170/84 (OJ 1986, 400) it was pointed out that where a two-part claim would lead to a
complex formulation it was no longer appropriate. In a one-part claim, the features
required for the definition which belonged to the state of the art had to be sufficiently
clear from the description. This principle has been upheld inter alia in T 269/84,
T 120/86, T 137/86 and T 278/86. The latter two decisions stipulated that a two-part
claim was not justified if it gave an incorrect picture of the state of the art (likewise
T 181/95). In T 735/89 the board did not accept a one-part claim because it gave the
impression that there was no closer state of the art.
In T 99/85 (OJ 1987, 413) the board held that in opposition proceedings there was no
reason officially to insist on a change in the wording of the claim simply because one
feature in the preamble to a two-part claim did not belong to the state of the art.
Furthermore, the board saw R. 29(1) EPC as an implementing regulation which did not
constitute a ground for opposition (a similar view was held in T 168/85, T 4/87, T 429/88
and T 65/89).
In T 350/93 the patent application disclosed processes for the production of electro-
active material and composite materials containing such material. It included main claims
1 to 4 and 6 to 8 in one-part form. The board observed that the one-part form was
justified because details in certain process steps distinguished the claimed processes
from those known from the prior art and the resulting distinctive features were difficult to
pick out in a simple and unambiguous form. For further instances in which a claim in two-
part form was not regarded as appropriate, see inter alia T 345/89, T 378/92, T 723/93
and T 181/95.
3.2. Particular issues in connection with two-part claims
Which features are known and hence to be included in the preamble has to be decided
in the light of the objective facts (T 6/81, OJ 1982, 183).
In T 13/84 (OJ 1986, 253) the board considered it could not be accepted as a general
rule that the piece of prior art used for the preamble of the claim should be concerned
with the same problem as the invention (likewise T 287/02). Generally, the apparatus or
process constituting the prior art which was nearest to the invention would have to figure
in the preamble of the claim, stating such features of it as were necessary for the
definition of the claimed subject-matter and which were in combination already part of
this prior art (see also T 897/90). R. 29 EPC made no reference to the necessity or
desirability that the characterising portion of the claim should fairly set out the inventive
step. It was the subject-matter of the claim as a whole which embodied the invention and
the inventive step involved (cf. T 886/91 and T 157/93).

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Likewise, in T 850/90, it was confirmed that examination for inventive step should also
take account of the features in the preamble, since the invention was defined by the
claims as a whole. Likewise, in T 980/95 it was held that there was no explicit
requirement in R. 29(1)(a) EPC that a claim in two-part form be set up on the basis of the
"closest" prior art, since the rule made no reference to the necessity or desirability for the
characterising portion of the claim to set out the inventive step. Thus the mere fact that a
particular state of the art turned out, in later proceedings, not to be the "closest" state of
the art for the assessment of inventive step did not in itself result in a two-part form
based on that art contravening R. 29(1)(a) EPC.
In decision T 688/91 (discussed above, Chapter II.B.1.1.4) the board took the view that
there was a breach of R. 29 and Art. 84 EPC where an incorrect distinction was made
between the preamble and the characterising portion (likewise T 181/95).
4. Claims supported by the description
II.B.4. Claims supported by the description

Art. 84 EPC stipulates that the claims must be supported by the description. This
requirement means that the subject-matter of the claim must be taken from the
description and it is not admissible to claim something which is not described.
In decision T 133/85 (OJ 1988, 441) the board took the view that a claim which did not
include a feature described in the application (on the proper interpretation of the
description) as an essential feature of the invention, and which was therefore
inconsistent with the description, was not supported by the description for the purpose of
Art. 84 EPC. The boards apply this principle as part of their established jurisprudence,
see eg T 409/91 (OJ 1994, 653), T 939/92 (see right below), T 322/93, T 556/93,
T 583/93, T 659/93, T 482/95, T 616/95, T 687/98, T 1076/00 and T 637/03. However, it
is inferred to some extent from different provisions of Art. 84 EPC (see also Chapter
II.B.1.1.3).
In T 156/91, too, the alleged absence of essential features in the claim was not viewed
as a question of reproducibility of the invention within the meaning of Articles 83 and
100(b) EPC, for which the disclosure as a whole is always the criterion; instead, what
was involved was an objection under Art. 84 EPC.
In decision T 435/89 an allegedly essential process feature was missing from the
apparatus claim. The board held that a claim for an apparatus per se need not contain
information about the most efficient way of operating it, ie process features. The
apparatus and the process for its use were to be kept strictly separate.
In T 888/90 (OJ 1994, 162), the appellants had removed from their claim 1 a feature
deemed to be necessary to the solution of the technical problem. The board stressed
that the omission of a feature in a combination could mean that a claim related merely to
a sub-combination of an invention. Such a sub-combination with no function other than
that of an intermediary building block for providing an inventive full combination might
also be patentable in principle, if expressly presented as such in the application as filed
and if it otherwise satisfied all conditions for patentability. Such sub-combinations were
analogous to intermediate compounds in a chemical synthesis. However, in the board's
view, it could not be assumed that assemblies from the outset directly and unequivocally
implied their own sub-combinations. Thus, without express disclosure in this respect,
including the particular use, the support for such claims would be inadequate.

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In T 939/92 the board held that it did not follow from Art. 84 EPC that a claim was
objectionable just because it was "unreasonably broad". The expression "supported by
the description" meant that the technical features stated in the description as being
essential features of the invention described must be the same as those used to define
the invention in the claims, for otherwise the claims would not be true definitions but
mere descriptions. The facts of the case in question differed from those underlying
T 409/91 and so an objection of lack of support could not be validly raised.
In T 586/97, the board found that the absence from any independent claim of any upper
limit on the amount of a particular detrimental but necessary component in the chemical
composition claimed was at variance with the aim of the invention as set out in the
description, namely, to decrease the percentage of the undesirable ingredient in the
claimed composition. The claim was thus so broad it went beyond the scope of the
invention as disclosed in the description.
In ex parte proceedings T 484/92, the board concluded that, in contrast to T 409/91, the
requirement of support by the description had been met and the appellant was entitled to
claim the alleged invention in broad functional terms, ie in terms of the desired end
effect, because, having disclosed one mechanism for achieving that goal, there were
alternative ways of performing the invention at the disposal of the person skilled in the
art, which would become apparent to him upon reading the description, based on his
common general knowledge. In T 627/04, too, the board allowed a broad claim because
it corresponded to the actual contribution made by the contested patent's disclosure to
the state of the art. The question of the extent to which the examples adduced in the
description may be generalised in the formulation of the claims is usually examined in
the context of the requirements of Art. 83 EPC (see in particular Chapter II.A.5.1). For
the problem of the relationship between Art. 83 and Art. 84 EPC, see also Chapter II.A.6.
The following decisions deal likewise with this issue.
In T 1055/92 the board stated that since the primary function of a claim was to set out
the scope of protection sought for an invention this implied that it was not always
necessary for a claim to identify technical features or steps in detail. This primary
function of the claims should be clearly distinguished from the requirement that the
European patent application had to disclose the invention in such a way that it enabled a
person skilled in the art to carry out that same invention. The board considered that it
was sufficient if the application as a whole described the necessary characteristics of an
invention in a degree of detail such that a person skilled in the art could perform the
invention. This requirement, however, related to Art. 83 EPC and was not relevant to
Art. 84 EPC. Under Art. 83 EPC sufficient disclosure was required of a European patent
application but not of an individual claim as such. A claim had to comprise the essential
features of the invention; the essential features should in particular comprise those
features which distinguished the invention from the closest prior art (see also T 61/94).
In T 659/93, however, the board held that the requirement that the claims should be
supported by the description meant that they had not only to contain all the features
presented as essential in the description, but had also to reflect the applicants' effective
contribution by enabling the skilled person to carry out their teaching throughout the
field to which they applied (similarly T 332/94 with reference to T 409/91, OJ 1994, 653).
In T 568/97 the claims of the patent in suit defined the physiological effect to be achieved
by a sufficiently high concentration of vasoactive intestinal polypeptide and/or

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prostaglandins as active agents in a pharmaceutical composition for transurethral

administration. Neither individual values nor ranges of the amounts of vasoactive
intestinal polypeptide and/or prostaglandins were disclosed in the patent. Furthermore, it
was impossible to find out without undue burden the physiologically effective amounts as
claimed merely on the basis of common general knowledge. The board held that the
description of the patent lacked support within the meaning of Art. 84 EPC as to the
amount of vasoactive intestinal polypeptide and/or prostaglandins required to achieve a
physiologically effective dose. The functional feature not only had to be such that the
skilled person could understand it; he also had to be able to implement it.
In T 977/94 the board decided that if the patentee amended his claims he had also to
bring the description into line with them, because of its fundamental importance. An
invention was only claimable to the extent that it was supported by the description (Art.
84, second sentence, EPC), and the claims were interpreted in the light of the
description (Art. 69 EPC). So it was necessary to check that the essential elements of
the invention claimed were also described as such in the description (cf. T 300/04).
In T 317/99 the wording of the claim was comprehensible and coherent. However, a
condition present in the claim, although literally supported by the description, was not
met by the examples in the description. Hence the examples did not fall within the scope
of the claim. According to the board, the fact that one part of a claim was not in
agreement with one part of the description was not always enough to justify an objection
under Art. 84 EPC. If the claim was comprehensible and logical, it sufficed that there was
support for all the elements of the claim in the description.
In T 295/02 the board found that an inconsistency between a claim and the provisional
description was not a valid reason to refuse the application if the inconsistency arose
from an amendment, if it was apparent that the text of the description was not intended
by the applicant to form the agreed basis of any decision, especially one concerning its
consistency with the amended claims, and if the appellant was prepared to adapt the
description to conform to a definite allowable set of claims.
5. Interpretation of claims
II.B.5. Interpretation of claims

5.1. General
The skilled person, when considering a claim, should rule out interpretations which are
illogical or which do not make technical sense. He should try, with synthetical propensity,
ie building up rather than tearing down, to arrive at an interpretation of the claim which is
technically sensible and takes into account the whole disclosure of the patent (Art.
69 EPC). The patent must be construed by a mind willing to understand, not a mind
desirous of misunderstanding (T 190/99; confirmed inter alia in T 437/98, T 1084/00,
T 920/00, T 552/00, T 500/01, T 749/03, T 859/03, T 1241/03).
In T 409/97 the board held that an erroneous statement in the introduction to the
description was of no assistance in interpreting the claim and establishing the subject-
matter for which protection was being sought, where this statement contradicted its
actual content.
Two methods having no technical bearing on each other cannot form a single multi-step
process (ie a "technical whole") even though they are linguistically linked together in a
claim (T 380/01).

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5.2. Meaning of terms

In T 759/91 and T 522/91 the claims contained the expression "comprising substantially".
The board was of the opinion that this term lacked clear, explicit boundaries and its
scope needed interpretation. While in everyday language the word "comprise" might
have both the meaning "include" or "comprehend" and "consist of", in drafting patent
claims legal certainty normally required it to be interpreted by the broader meaning
"include" or "comprehend" (see eg T 457/02). The word "substantially" imposed a
restriction on the word "comprising" in the sense that "to a large extent only that is
comprised which is specified". The boundaries of the term "comprising substantially"
were therefore to be drawn where the essential characteristics of the specified subject-
matter ceased. The scope of the term "comprising substantially" was therefore
interpreted as being identical to that of "consisting essentially of". However, in view of the
unequivocal character of the words "consisting of" as compared to "comprising", the
expression "consisting essentially of" was to be given preference.
In decision T 711/90 the board confirmed the assumption in the case law that the
substitution of the term "consists of" for "contains" in a claim raised the question of clarity
of the claim. When, as in the claim in question, the glass consisted of components
denoted (i), (ii) and (iii), the presence of any additional component was excluded and,
therefore, the proportions of the components (i), (ii) and (iii) expressed in percentages
should have added up to 100 mole % for each claimed composition.
In T 1045/92 the claims concerned "a two-pack type curable composition comprising
[...]". In the board's view "a two-pack curable composition" was an item of commerce as
familiar to readers skilled in the polymer art as everyday articles were to the public at
large. The claim was therefore clear.
In T 405/00 the board considered that, according to the language conventional for patent
claims in the field of chemistry, the wording "composition comprising a persalt" defined
exclusively the mandatory presence of at least one of the specific chemical compounds
belonging to the group of persalts. Accordingly, the claimed subject-matter was
completely open to further component(s), ie also in respect of the possible presence of
further compound(s) belonging to the same group. The portions of the description
defining the persalt ingredient did not amount to the unambiguous disclosure of the
exclusive presence of only one persalt.
5.3. Using description and drawings to interpret the claims
The subject-matter of claims is governed by Art. 84 EPC and their function by
Art. 69 EPC. According to Art. 84 EPC the claims define the invention for which
protection is sought. Under Art. 69 EPC the claims determine the extent of the protection
which will be conferred by the patent, through their definition of the invention. Under Art.
69 EPC the description and drawings are used to interpret the claims. The question
arises whether it is possible to interpret the claims in the light of the description and
drawings as provided in Art. 69 EPC merely in order to determine the extent of protection
or whether it is also possible to do so in order to establish whether the conditions
governing patentability and clarity have been satisfied.

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5.3.1 Use in the examination of the conditions for patentability

(a) General
In a number of decisions, such as T 23/86 (OJ 1987, 316), T 16/87 (OJ 1992, 212),
T 89/89, T 121/89, T 476/89, T 544/89, T 565/89, T 952/90, T 439/92, T 458/96 and
T 717/98, the boards of appeal laid down and applied the principle whereby the
description and drawings are used to interpret the claims when an objective assessment
of the content of a claim has to be made to judge whether its subject-matter is novel and
not obvious.
(b) Relevance of Article 69 EPC
In this connection, several decisions refer to Art. 69(1) EPC (T 23/86, OJ 1987, 316;
T 16/87, OJ 1992, 212; T 476/89, T 544/89, T 565/89, T 952/90, T 717/98). Other case
law emphasises that Art. 69 EPC and its Protocol are primarily for use by the judicial
organs which deal with infringement cases (T 1208/97). The board in T 556/02 made
clear that it solely used the general principle of law applied throughout the EPO that a
document had to be interpreted as a whole (see eg T 23/86, OJ 1987, 316; T 860/93, OJ
1995, 47). Art. 69 EPC was a specific application of this general principle.
(c) Interpretation of ambiguous terms or confirmation of the text of a claim
Many decisions which use the description and drawings to interpret the claims concern
the interpretation of relative, ambiguous or unclear terms or cite the description
merely to confirm the most obvious interpretation of the text of a claim (eg T 23/86, OJ
1987, 316; T 16/87, OJ 1992, 212; T 327/87, T 121/89, T 476/89, T 565/89, T 952/90,
T 439/92, T 458/96, T 717/98, T 556/02).
In decision T 50/90 the board pointed out that the description and drawings were used to
interpret relative terms contained in the claims when the extent of protection had to be
determined.
When the technical content of the claims and the description clearly establish how an
invention operates, these features cannot be disregarded for the purposes of assessing
patentability by interpreting them merely as defining an intended use (T 458/96).
In several decisions the boards stated that terms used in patent documents should be
given their normal meaning in the relevant art, unless the description gives them a
special meaning. The patent document may be its own dictionary (see eg T 311/93 and
T 1321/04).
(d) Reading additional features into the claims
In T 416/87 (OJ 1990, 415) the board was confronted with the situation where a feature
was not included in the claims which the description on its proper interpretation specified
to be an overriding requirement of the invention. The board held that, following
Art. 69(1) EPC and its Protocol, the claims might be interpreted as requiring this as an
essential feature, even though the wording of the claims when read in isolation did not
specifically require such feature (confirmed in an obiter dictum in T 717/98).
In T 121/89, on the other hand, the board does use the description to interpret an
ambiguous term ("loose ignition charge"), but at the same time stresses that only
features recited in or deducible from the claims could be set forth to distinguish the

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invention from the state of the art. The examples cited in the description did not limit the
scope of the claims unless they were explicitly mentioned in them (see also T 544/89).
In T 1208/97 certain known molecules were encompassed by the terms of the product
claim. Appellant 1 had argued that a novelty objection could not apply because the
patent specification stated the clear intention not to cover these molecules. The board
did not agree with this view. For the purposes of judging novelty, Art. 69 EPC offered no
basis for reading into a claim features which could be found in the description. As this
article and the Protocol concerned the extent of protection, they were primarily for use by
the judicial organs which dealt with infringement issues. According to the board, it had to
be established whether or not the wording of claim 1, independently of any alleged
intention derivable from the description, allowed a clear distinction between the claimed
molecules and the known molecules.
In T 932/99 claim 1 was directed to a product per se. The claim defined only the
structure of a membrane as such, independently from its installation in an apparatus for
gas separation. The board pointed out that, for this reason, the indication in the claim
"capable of separating oxygen from oxygen-containing gaseous mixture" merely served
the purpose of defining a capability of the claimed membrane, without imparting any
limitations on any actual use of the structure claimed. The respondents had argued that,
if claim 1 was interpreted in the light of the description, those limitations would be
apparent. However, the board held that a distinction had to be drawn between, on the
one hand, the fact that it might be necessary to take into account any explicit definition
as given in the description for interpreting a claim's term and, on the other hand, the
attempt to use Art. 69 EPC as a basis for reading limitations derived from the description
into claims in order to avoid objections based on lack of novelty or inventive step. The
latter approach to interpretation, whereby features mentioned only in the description
were read into claim 1 as necessary limitations, was incompatible with the EPC
(T 1208/97; see also T 945/99).
5.3.2 Use in the examination relating to the requirements of Article 123 EPC
In T 500/01, the board considered that a patent, being a legal document, may be its own
dictionary. If it was intended to use a word which is known in the art to define a specific
subject-matter to define a different matter, the description may give this word a special,
overriding meaning by explicit definition.
In T 1018/02 the board emphasised that, although a claim must not be interpreted in a
way which was illogical or did not make sense, the description could not be used to give
a different meaning to a claim feature which in itself imparted a clear, credible technical
teaching to the skilled reader. This also applied if the feature had not been initially
disclosed in the form appearing in the claim (see also T 373/01, T 396/01, T 1018/02).
5.3.3 Use in the examination relating to the clarity requirement pursuant to
Article 84 EPC
In a large number of decisions (eg T 327/87, T 238/88, OJ 1992, 709; T 416/88,
T 194/89, T 264/89, T 430/89, T 472/89, T 456/91, T 606/91, T 860/93, T 287/97,
T 250/00, T 505/04), the boards interpreted the claims in the light of the description and
drawings in order to establish whether they were clear and concise within the meaning of
Art. 84 EPC.

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In T 238/88 (OJ 1992, 709) the board stated that the fact that the features were not in
fact usual terms of art did not rule out clarity and conciseness, since according to
Art. 69 EPC the description should be used to interpret the claims.
In T 456/91 the board was of the opinion that the clarity of a claim was not diminished by
the mere breadth of a term of art contained in it, if the meaning of such term was
unambiguous for a person skilled in the art, either per se or in the light of the description.
In this case an extremely large number of compounds could be used for carrying out the
invention. It was clear from the claims, when read in the light of the description, which
peptides were suitable for the invention.
Likewise, in T 860/93 (OJ 1995, 47) the board assumed that the description might be
used to determine whether the claims were clear. In so doing it took its cue from the
general legal principle whereby "ex praecedentibus et consequentibus optima fit
interpretatio", which was recognised in the Contracting states. It accepted the reasoning
in T 454/89 (see below), namely that the description could only be used to determine the
extent of the protection conferred and not to establish clarity, only in the case of claims
which were self-contradictory, but not in general (see also T 884/93 and T 287/97). In
T 523/00, T 1151/02 and T 61/03, the boards stated that a patent may be its own
dictionary.
However, a number of decisions point out the limits to the use of the description and
drawings in the examination relating to the clarity requirement.
T 2/80 (OJ 1981, 431) pointed out that a claim did not comply with the requirement of
clarity laid down in Art. 84 EPC if it was not, per se, free of contradiction. It had to be
possible to understand the claims without reference to the description (see also
T 412/03).
In decision T 454/89 the board shared this view and explained that Art. 84 EPC requires
that claims must be clear in themselves when read using normal skills, including
knowledge of the prior art but not any knowledge derived from the description contained
in the patent application or the amended patent. While it was true that Art. 69 EPC
allowed the description to be used to interpret the claims, it was only concerned with the
extent of protection conferred as one of the effects of an application or patent whenever
that extent had to be determined, particularly for third parties. It was not concerned with
a claim's definition of the matter for which protection was sought, as was Art. 84 EPC. In
the course of the examination of an opposition, therefore, the applicant or patentee could
not rely on Art. 69 EPC as a substitute for an amendment which would be necessary to
remedy a lack of clarity. The board took the same line in decision T 760/90.
In T 1129/97 (OJ 2001, 273), the board held that the mere fact that the precise meaning
of an unclear term ("low alkyl") was expressly disclosed in the description but not in the
claims did not mean that the latter met the clarity requirement. The clarity stipulation
under Art. 84 EPC concerned only the claims, and therefore - according to the
established case law of the EPO boards of appeal - required that they be clear in
themselves, without there being any need for the skilled person to refer to the
description. True, under Art. 69(1) EPC the description was to be used to interpret the
claims. But Art. 69 EPC concerned only the extent of protection where this was at issue,
eg with third parties, and not (as in Art. 84 EPC) the definition of the matter to be
protected by a claim (confirmed in T 56/04 and T 64/03).

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In T 49/99 the board held that since clarity was a claim requirement, a clarity deficiency
in the claim wording was not rectified by the fact that the description and the drawings
would help the reader to understand the technical subject-matter that the claim was
intended to define.
In T 56/04 the board pointed out that a claim containing an unclear technical feature
prevented its subject-matter from being identified beyond doubt. That was particularly the
case if the unclear feature was meant to delimit the claimed subject-matter from the state
of the art. The board therefore took the view that a vague or unclear term which was
used in the claim and a precise definition which was to be found only in the description
could be allowed only in exceptional cases to delimit the claimed subject-matter from the
state of the art. Such an exception pursuant - mutatis mutandis - to R. 29(6) EPC exists
if the precise definition - for whatever reason - cannot be incorporated into the claim, and
the precise definition of the vague or unclear term is unambiguously and directly
identifiable by a skilled person from the description. In T 56/04 the board said that an
exception was not involved. The specific value of "approximately 1 mm" disclosed in the
description could have been incorporated into the claim itself instead of "slightly less
than [...]".
In T 412/02 the board held that the unambiguous characterisation in a claim of a product
by parameters or by a mathematical relation between parameters necessarily required
that each parameter could be clearly and reliably determined. In the board's view, it
followed that the knowledge of the method and conditions of determination of the
parameter was necessary for the unambiguous definition of the parameters and, as a
consequence, for the unambiguous definition of a mathematical relation between them.
Thus, in order to allow the matter for which protection was sought to be defined, it had to
be clear from the claim itself when being read by the person skilled in the art exactly how
the parameters should be determined. This would, as a rule, imply that the method of
determination and the conditions of measurement which might have an influence on the
value of the parameter should be indicated in the claim, either expressly or, if
appropriate, by way of reference to the description according to Rule 29(6) EPC. Such
indication would only become superfluous provided it could be shown that the skilled
person would know from the outset which method and conditions to employ (see also
T 1156/01 and T 908/04).
Whilst noting the general principle that the claims must be clear per se, the board took in
T 992/02 the view that the non-inclusion in the claim of the method whereby one of the
parameters characterising the composition claimed (level of formation of volatiles) could
be measured was justified in the light of the requirement under Art. 84 EPC that the
claims be concise. It considered that such a conclusion could be reached in the case in
hand because the method was clearly identified in the description and did not give rise to
any ambiguity.
5.3.4 Scope of protection not defined with regard to infringement
In T 442/91 the respondents wanted the board to rule on the extent of the protection
conferred by what they considered to be broad claims. The board, however, felt that it
should not concern itself in opposition appeal proceedings with the extent of the
protection conferred by a patent (except for the purposes of Art. 123(3) EPC), as this
was the responsibility of the national courts dealing with infringement cases. Whilst the
EPO made it clear how terms of art used in the claims should be understood, it should

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not proffer any further interpretation of the patent's future scope beyond that (see also
T 740/96).
In line with this thinking, the board in T 439/92 and T 62/92 interpreted the claims with a
view to identifying their subject-matter.
6. Product-by-process claims
II.B.6. Product-by-process claims

6.1. Introduction
Under Art. 64(2) EPC the protection conferred by a process patent extends to the
products obtained directly by the process, even if they are not patentable per se. Certain
applicants tried to acquire protection for known products by using process claims to
define them and arguing thus - it follows from Art. 64(2) EPC, which expressly states that
protection will be granted for the direct product of a patentable process, that, under the
EPC, a product is rendered novel by the fact that it is produced by means of a new
process. This is notwithstanding the fact that such product is not new per se, by virtue of
its physical characteristics (see T 248/85, OJ 1986, 261; likewise T 150/82, OJ 1984,
309).
The boards of appeal did not accept this line of argument and made a distinction
between claims to a new and inventive product defined by its method of manufacture
and claims to a new and inventive process, the protective effects of which also extended
to the direct products of this process.
The first decision in this regard was T 150/82 (OJ 1984, 309). The board stated that
claims for products defined in terms of processes for their preparation (known as
"product-by-process" claims) were admissible only if the products themselves fulfilled the
requirements for patentability and there was no other information available in the
application which could have enabled the applicant to define the product satisfactorily by
reference to its composition, structure or some other testable parameter.
The boards of appeal have further clarified and developed these requirements in their
case law.
6.2. Requirement that the claimed product must be patentable
In decision T 248/85 (OJ 1986, 261) it was stated that a product could be defined by the
use of various parameters, such as its structure or its process of preparation. The use of
a different parameter by which to define a particular product could not by itself give the
product novelty. Furthermore Art. 64(2) EPC did not confer novelty upon a claim which
was formulated as a "product-by-process" when no novelty existed in such product per
se, and did not entitle or enable an applicant for a European patent to include such
claims in his patent which did not satisfy the requirements for patentability of Art. 52(1)
EPC.
In T 219/83 (OJ 1986, 211) the board stated that "product-by-process" claims had to be
interpreted in an absolute sense, ie independently of the process. If their subject-matter
as such was new, they still did not involve an inventive step merely because the process
for their preparation did so. In order to be patentable, the claimed product as such had to
be a solution to a separate technical problem which was not obvious in the light of the
state of the art (see also T 223/96).

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These criteria were confirmed and applied in many decisions (see for instance T 251/85,
T 434/87, T 171/88, T 563/89, T 493/90, T 664/90, T 555/92, T 59/97, T 1164/97,
T 238/98, T 748/98 and T 620/99).
The board clarified the conditions for novelty of product-by-process claims in decision
T 205/83 (OJ 1985, 363). It stated that the polymer product of a known chemical process
was not rendered new merely by virtue of a modification to the process. If a chemical
product could not be defined by structural characteristics but only by its method of
manufacture, novelty could be established only if evidence was provided that
modification of the process parameters resulted in other products. It was sufficient for
this purpose if it was shown that distinct differences existed in the properties of the
products. This evidence might not include properties which could not be due to the
product's substance parameters (see also T 279/84, T 151/95, T 728/98, T 564/02 and
T 1247/03).
In decision T 300/89 (OJ 1991, 480) it was stated that the application lacked novelty if
the claim neither defined the product structurally nor mentioned all the specific conditions
needed to obtain necessarily the products whose novelty could be demonstrated, eg by
means of comparative tests.
In T 728/98 the board stated that the general rule that the level of purity of a low
molecular chemical compound could not entail novelty was also valid in the case of a
product-by-process claim where the purity level was the inevitable result of the
preparation process indicated in the claim. In the present case the appellant (applicant)
had not been able to prove the existence of an exceptional situation where all attempts
had failed to achieve a particular level of purity by conventional purification methods. For
details on the issue of "achieving a higher degree of purity", see Chapter I.C.4.1.4.
In T 803/01 the board noted that (contrary to the view of the examining division) there
was no statement whatsoever in T 205/83 (OJ 1985, 363) which prohibited the presence
of parameters relating to impurities in a claim for reasons of clarity. The parameters
relating to the purity of the polylactides were technical features in line with
R. 29(1) EPC. This was considered to be a relevant criterion for assessing the extent to
which the use of purity parameters in a product claim was allowable from the point of
view of clarity (G 2/88, OJ 1990, 93).
In T 394/03 the board ruled that improved product quality achieved by means of a
process did not generally constitute, in a product-by-process claim, a structural feature
giving rise to novelty or inventive step. In the present case, a decorated ceramic product
was claimed which differed from known products of this type only by virtue of its better
quality, which had been achieved by means of the process according to the invention.
In T 564/02, when examining whether the product itself met the requirements for
patentability, the board had to deal with the burden of proof. The respondent
(opponent) had raised an objection of lack of novelty which was based on the disclosure
in an example in a prior art document. The board observed that the validity of this
objection rested exclusively on the validity of certain assumptions made by the
respondent with respect to parameters of the product disclosed in prior art. In such a
case, the concept of the balance of probabilities could not be applied for the assessment
of the validity of each assumption; it had to cede to a stricter criterion close to absolute
conviction. In other words, there should be a degree of certainty which is beyond
reasonable doubt.

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6.3. Requirement that the claimed product cannot be described in any other way
The criterion laid down in T 150/82 (OJ 1984, 309), whereby it must be impossible to
define the claimed product other than in terms of a process of manufacture is now
established case law (see eg T 333/93, T 749/95, T 950/97, T 1074/97, T 933/01). Inter
alia, it was discussed specifically in the following decisions.
The board stated in decision T 320/87 (OJ 1990, 71) that product-by-process claims
were admissible for hybrid seeds and plants when they were not individually definable
biological entities which could be characterised by their physiological or morphological
features.
In decision T 130/90 the board had to rule on recombinant monoclonal antibodies having
two different specificities and produced by a process involving trioma cells or quadroma
cells and thus producing antibodies in a native form. The patentability of the process was
not questioned. The process known from prior art chemically recombined antibody half-
molecules. At issue was the validity of the product claim. The prior art did not disclose
how fully re-associated molecules, ie with the same structure as native antibodies, which
might be contained in the mixture of hybrids, could be screened out and isolated from
molecules which were chemically altered. The board allowed a claim for bispecific
recombinant monoclonal antibodies comprising intact immunological chains produced by
the process claimed in the independent process claims of the patent in suit. Defining the
antibodies by their process was the only way of delimiting them vis-à-vis the prior art.
In T 552/91 (OJ 1995, 100) it was held that where a European patent application relates
to chemical substances originally defined by an incorrect chemical structural formula,
correction of which is not allowable under R. 88 EPC, replacement of the incorrect
formula by the correct one infringes Art. 123(2) EPC. Nevertheless, the submission of a
"product-by-process" claim is compatible with Art. 123(2) EPC if it contains all the
measures required to obtain this result (starting materials, reaction conditions,
separation).
6.4. Combination of product and process features
In decision T 148/87 the board stated that it was admissible to combine product
parameters and process parameters in the same claim. In T 129/88 (OJ 1993, 598) the
board was of the opinion that the inclusion in a product claim of one or more process
features might be permissible if their presence was desirable having regard to the impact
of the national laws of one or more contracting states (see also T 592/95 and T 288/02).
6.5. Extension of protection conferred by product-by-process claims
In decision T 411/89 the board had to decide whether the amendment of a product-by-
process claim from "obtained" to "obtainable" extended the protection conferred by the
patent. The board took the view that the protection was not extended because the
amendment did not modify the definition of the product which was claimed per se from
the beginning and because the process used for its characterisation remained the same.
In decision T 423/89, by restricting the claim to only one of a number of manufacturing
processes specified in the original claim and disclosed in the description, the patent
proprietors had ceased to claim absolute product protection and had undertaken a
significant limitation of their claim. There were therefore no objections under
Art. 123(3) EPC. The change in category from a product-by-process claim to a

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manufacturing process claim was also admissible in this case, as the protection afforded
by the granted patent had to extend to all those methods of manufacture covered by the
processes described in the claim and disclosed in the patent specification.
In T 20/94, however, objections under Art. 123(3) EPC led to the board's refusing a
change from process claims to a product-by-process claim by way of amendment, as
despite the fact that a product-by-process claim was characterized by the process for its
preparation, it nevertheless belonged to the category of claim directed to a physical
entity and was a claim directed to the product per se. The scope of protection conferred
by a product claim exceeded the scope conferred by a process claim under Art. 64(2)
EPC.
7. Claims fees
II.B.7. Claims fees

R. 31(1) EPC lays down that any European patent application comprising more than ten
claims at the time of filing must, in respect of each claim over and above that number,
incur payment of a claims fee.
The Legal Board of Appeal ruled in case J 9/84 (OJ 1985, 233) that R. 31(1) EPC is to
be interpreted as meaning that claims numbered 1 to 10 upon filing of the European
patent application - or transmittal to the EPO of the international application under the
PCT - were exempt from fees, and that claims numbered 11 onwards were not.
Accordingly, abandoning a fee-exempt claim after filing - or transmittal - did not have the
effect that its fee exemption was transferred to another claim.
The question has arisen on a number of occasions as to whether part of, or an annex to,
the description of a European patent application comprising a series of numbered
paragraphs drawn up in the form of claims should be regarded as claims for the
purposes of R. 31(1) EPC.
In J 5/87 (OJ 1987, 295) the application contained, under the heading "Claims", ten
claims; however it contained 33 further claims which were annexed to the description as
preferred, numbered embodiments presented in the form of claims. The addendum
appeared in form as well as in substance only to consist of claims within the meaning of
Art. 84 and R. 29 EPC. Furthermore, the appellant had admitted that the addendum had
been included in the application in order to maintain the possibility of making its content
a basis for substantive examination. As a result, the applicant was required to pay a
claims fee - applicants are not at liberty to ignore the provisions on the form and content
of the description and claims contained in R. 27 and R. 29 EPC.
In decision J 15/88 (OJ 1990, 445), the board decided in a similar case that although the
117 disputed "clauses" in question were numbered and arranged as claims and seemed
to define matter in terms of technical features, they were not to be regarded as such
since the fact remained that they were never referred to as claims and there were claims
elsewhere which were referred to as such.
Decisions J 16/88, J 29/88, J 25/89, J 26/89, J 27/89, J 28/89, J 34/89 and T 490/90 all
confirmed this opinion, pointing out that the case dealt with in J 5/87 differed from the
others since the applicant had indicated an intention to regard the annexes as claims.
The intention of the appellant not to have this part considered as claims is more
important than the form of the text.

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 II.C.1. Introduction

C. Unity of invention
Unity of invention

1. Introduction
II.C.1. Introduction

Under Art. 82 EPC, the European patent application may relate to one invention only or
to a group of inventions so linked as to form a single general inventive concept.
R. 30 EPC gives an interpretation of the concept of unity of invention where a group of
inventions is claimed. This rule was amended by decision of the Administrative Council
of the European Patent Organisation dated 7.12.1990 (OJ 1991, 4), which entered into
force on 1.6.91, but the principles set out by board of appeal case law relating to
R. 30 EPC as in force before 1.6.91 can still be applied.
The boards of appeal are responsible for judging unity of invention when they decide on
a protest made by an applicant against an additional fee charged by the EPO as ISA or
IPEA (see Articles 154(3) and 155(3) EPC). Harmonisation of the definitions regarding
the requirement of unity of invention in the PCT (R. 13 PCT, amended like R. 30 EPC)
and the EPC (Art. 82 EPC in conjunction with R. 30 EPC) means that the criterion of
unity of invention in both systems will be subject to uniform assessment by search
examiners and boards of appeal alike. The principles involved in unity of invention will
therefore be dealt with as one.
2. Unity in the context of different types of claims
II.C.2. Unity in the context of different types of claims

2.1. Plurality of independent claims

Under Art. 82 EPC and R. 13.1 PCT, the international application must relate to one
invention only or a group of inventions so linked as to form a single general inventive
concept. The second of these alternatives, ie the single-concept linked group, may give
rise to a plurality of independent claims in the same or different categories.
In W 5/92 the board considered it to be implicit in the definition of R. 13.1 PCT that the
"invention" be considered in the broadest sense. Thus, according to PCT Search
Guidelines VII-5 (PCT Gazette No. 30/1992, Sec. IV; No. 29/1993, Sec. IV, no longer in
force; for similar guidance see paragraph 10.05 of the PCT International Search and
Preliminary Examination Guidelines, as in force from 25.3.2004), the mere fact that an
international application contained claims of different categories or several independent
claims of the same category was in itself no reason for objection on the grounds of lack
of unity of the invention.
R. 30(1) EPC and R. 13.2 PCT state that where a group of inventions is claimed in one
and the same European/international patent application, the requirement of unity of
invention is fulfilled only when there is a technical relationship among those inventions
involving one or more of the same or corresponding special technical features.
The previous R. 30 EPC (old version, as in force until 31.5.91), like the previous
R. 13 PCT, specified three cases in which a combination of independent claims in
different categories was to be considered as having unity in the above-mentioned
sense. The combinations were as follows:
(a) in addition to a claim for a given product, a claim for a process specially adapted for
the manufacture of the product, and a claim for a use of the product;

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(b) in addition to a claim for a given process, a claim for an apparatus or means
specifically designed for carrying out the process;
(c) in addition to a claim for a given product, a claim for a process specifically adapted for
the manufacture of the product, and a claim for an apparatus or means specifically
designed for carrying out the process.
The list was not exhaustive and other combinations were permitted if they had met the
requirements of Art. 82 EPC (T 861/92). The same applied to the old version of
R. 13.2 PCT (W 3/88, OJ 1990, 126; W 29/88, W 3/89). In T 702/93 it was held that this
old version of R. 30 EPC did not provide for such a fictitious unity in the case of
independent claims in the same category.
The principles laid down in previous board rulings on unity of invention were based on
this fiction, which no longer exists now that R. 30 EPC and R. 13 PCT have been
amended. However, the principles set out in this case law remain unchanged (T 169/96).
In T 202/83 it was concluded from the old version of R. 30(c) EPC that the requirement
of unity was not met by every subject-matter for carrying out a process. On the contrary,
the provision presupposed that the means for carrying out the process had been
specifically designed. Consequently, such a means in connection with the corresponding
process did not meet the unity requirement if it was obvious that it could also serve to
solve other technical problems.
In T 200/86 the board held that it was possible to claim, in one application, not only a
product for pharmaceutical use, but also the product's non-therapeutic (cosmetic and
dietary) uses.
In W 29/88 the international application related to chemical products, a process for their
preparation and their use. The board was of the opinion that a particular use of a class of
compounds on the one hand, and, on the other hand, a claim to that class of compounds
per se or to certain members of that class of compounds could form a single general
inventive concept. The board stressed that the salient point was not the identity of the
respective structural scopes, but the question whether the compounds claimed per se
(and the process for their manufacture) contributed to the solution of the problem
underlying the use invention.
In W 32/88 (OJ 1990, 138) the board was of the opinion that an invitation to pay an
additional fee on the grounds that an international application concerning a process and
an apparatus related to two different inventions, whereas the apparatus was
specifically designed for carrying out the process, had no legal basis, even if the
claims for the apparatus were not restricted to such use (see also W 16/89).
In W 13/89 the board found unity of invention between a claim to the use of a substance
or composition for the preparation of a medicine intended for a specific use (second
medical use) and a claim to a pharmaceutical product containing that substance or
composition (first medical use). This decision was confirmed in W 5/91 and W 28/91.
In W 23/91 the board confirmed the ISA's view that the novelty of a given product might
justify claims of different categories being contained in a single application without
contravening the requirements of unity of the invention (several new uses of the product
in different areas and/or new processes concerning the product, eg preparation). In the
case in point, the two independent product claims related to two "products", namely a

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nucleic acid sequence and the protein relating to the nucleic acid sequence. The board
held that these products might constitute the common link if they were novel.
In W 40/92 the board took the view that there can be unity of invention if one
independent claim to a process and another to the means for executing that process
were comprised in one application. Said means could itself also be a process.
In T 492/91, the board found that, for the purposes of Art. 82 EPC, the whole
composition covered by claim 6 (new composition) need not be the product of the
process according to claim 1 (process for preparing known products). It was sufficient for
one component of the composition to be such a product where the composition and the
process were intended to solve the same technical problem. The board concluded that
the scope of claim 6 therefore did not have to be limited to the compositions resulting
from the process according to claim 1, thus excluding the compositions obtainable by
subsequent mixing.
2.2. Dependent claims
R. 13.4 PCT expressly provides that dependent claims must fulfil the requirement of
unity in accordance with R. 13.1 PCT. The EPC makes no comparable express
provision. The question has therefore arisen as to whether dependent claims have to be
treated differently under the two provisions. Board of appeal case law on PCT cases has
been uniform: the boards have repeatedly confirmed the principle that the requirement of
unity must also be met by dependent claims (see inter alia W 3/87, W 2/88, W 30/89,
W 32/89, W 26/90, W 8/91 and W 54/91). In EPC cases the boards likewise assume that
dependent claims have to meet the requirement of unity. As distinct from the
PCT procedure, under the EPC the approach is not as strict as in the case of
independent claims, where the examination is always carried out in accordance with the
express requirement, but only in those cases where unity could be problematical (see
T 140/83 and T 249/89).
In W 8/91 it was decided that, where claims were formally dependent, the ISA had to
state expressly why they lacked unity; it was not enough simply to say that this was
shown directly by the subject-matter as defined by the ISA.
In W 6/98 the board held that anticipation of the subject-matter of an independent claim
might well lead to a situation of non-unity a posteriori, which however could only be
established by showing that there was indeed no unifying novel inventive concept
common to all dependent claims. The board noted that lack of novelty of the subject-
matter of an independent claim did not automatically lead to a posteriori lack of unity for
the claims directly or indirectly appended to said independent claim.
2.3. Intermediate products
In T 57/82 (OJ 1982, 306) it was stressed that the subject-matter of an application
relating to new chemical end products, processes for their preparation, and to new
intermediates for those end products at all events had unity within the meaning of
Art. 82 EPC if all these subject-matters were technically interconnected and integrated
into a single overall concept by being oriented towards the end products. In this context,
starting materials which were used in a process for preparing end products and which
were themselves products of a disclosed, albeit unclaimed, production process were also
considered to be intermediates. This principle was confirmed in T 110/82 (OJ 1983, 274)

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for low-molecular products. According to that board, an invention relating to new low-
molecular end products and to several groups of new low-molecular intermediates
invariably had unity if the groups of intermediates prepared and oriented towards the
end-products were technically closely interconnected with the end products by the
incorporation of an essential structural element into the end-products and if due account
was taken of the regulatory function of Art. 82 EPC (prohibition of unjustified saving of
fees, need for ready comprehensibility).
This was confirmed by T 35/87 (OJ 1988, 134) and T 470/91 (OJ 1993, 680). The
intermediates in the latter case - unlike those in earlier ones - were not structurally
related to each other. However, they provided both the essential structural elements
present in the end products. The intermediates of the application were therefore only
made available with a view to obtaining the end products and they were sufficiently
closely technically interconnected with those end products. Thus, they were integrated
into a single overall inventive concept by being oriented towards the end products. This
was not prejudiced by the fact that the two sets of intermediates were not structurally
related to each other since the orientation of the intermediates towards the end products
permitted the individual technical problems addressed by the intermediates to be
combined into a unitary overall problem to the solution of which both sets of purpose-
made intermediates contributed.
In W 35/91 the board ruled that the requirements of unity of invention as set out in
R. 13.1 and R. 13.2 PCT were met if the novel intermediates designed to give rise to the
novel end products were technically sufficiently closely related by their contribution to an
essential structural element of the end products.
In W 7/85 (OJ 1988, 211) the board stated that there was sufficient technical information
to justify a prima facie finding of unity of invention between a claim to a mixture and a
claim to one essential component of that mixture or a narrowly defined version thereof. If
a finding of unity was justified in cases of chemical intermediates and end products even
when, as was often the case, only a part of the intermediate structure was actually
incorporated, there was all the more reason to view the intact components and the
corresponding compositions in a mixture as technically interconnected by incorporation.
The former were not even destroyed when the admixture was prepared and fully retained
their properties and functions in the product, unlike typical intermediates, which lost their
identity in the process. Thus, both inventions could be considered to fall within the same
general inventive concept. In such cases the requirement that the means for preparing
the end product should be "specially designed for carrying out the process" appeared to
be fulfilled since none of the means led or was related to an end product outside the
scope of its definition. In view of this the character of the invention in the component
was, prima facie, also dependent on the existence of an invention in the end product.
3. Assessing lack of unity of invention
II.C.3. Assessing lack of unity of invention

3.1. General approach - content of claims

According to Art. 3(4)(iii) PCT, an international application must comply with "the
prescribed requirement of unity of invention".
In W 6/97 it was held that the determination of unity of invention must be made on the
basis of the contents of the claims as interpreted in the light of the description and of the
drawings, if applicable. The board referred to Annex B, Part 1(b) of the PCT

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Administrative Instructions (corresponding to Annex B, paragraph (b) PCT

Administrative Instructions, as in force from 1.10.2005), which states that principle and
noted that the PCT Administrative Instructions are binding not only on the ISA but also
on the board of appeal acting as the "three-member board" according to R. 40.2(c) and
(e) PCT (see G 1/89, OJ 1991, 155; in the PCT Regulations, as in force from 1.4.2005,
the reference to the "three-member board" has been replaced with that to the "review
body").
In W 39/90 the board observed that it was not the formal choice of words or form of
reference, but the actual content of the claims which established technical relationships
between the subject-matter of different claims, and which was thus decisive for the
question of unity. In W 33/92 the board emphasised that R. 13.1 PCT did not require the
link between the subject-matter of the two independent claims to be expressly stated in
their wording. All that was required was that there be a single inventive concept.
Neither the PCT itself nor the Rules under the PCT contain provisions indicating how to
decide whether or not an international application complies with the prescribed
requirement of unity of invention. However, in the PCT Search Guidelines it is stated,
inter alia, that lack of unity of invention may be directly evident "a priori", that is before
considering the claims in relation to any prior art, or may only become apparent "a
posteriori", that is after taking prior art into consideration (G 1/89, OJ 1991, 155).
3.2. Assessment of lack of unity by the International Searching Authority (ISA)
Lack of unity may be directly evident a priori, ie before examination of the merits of the
claims in comparison with the state of the art revealed by the search (W 1/96 and
W 6/90, OJ 1991, 438). If the objection of lack of unity of invention is raised a priori, the
technical problem must be defined solely on the basis of the description and not of the
prior art (see W 50/91, W 22/92, W 52/92 and T 188/04).
For international applications the question arose as to whether the ISA had the power to
assess unity of invention a posteriori, ie after an examination of the application. In
W 3/88 (OJ 1990, 126) the board had answered this question in the negative,
interpreting the expression "a single general inventive concept" of R. 13.1 PCT as being
simply the general concept of what the applicant subjectively claimed to be his invention.
By contrast, in W 44/88 (OJ 1990, 140) and W 35/88, the answer was in the affirmative.
In the latter cases the boards had referred to the PCT Search Guidelines which
permitted assessment of unity a posteriori. Both a board of appeal and the President of
the EPO had then referred the question to the Enlarged Board of Appeal:
The Enlarged Board of Appeal delivered a decision in G 1/89 (OJ 1991, 155) and G 2/89
(OJ 1991, 166). It decided that the EPO in its capacity as an ISA might, pursuant to
Art. 17(3)(a) PCT, request a further search fee where the international application was
considered to lack unity of invention a posteriori. The Enlarged Board first noted that the
problems involved were mainly due to the fact that, under the PCT, as well as under the
EPC, search and (substantive) examination were carried out in sequentially different
steps and by different examiners. This procedural separation of search and examination
led inevitably to a certain overlapping because of the functional relationship between
search and examination. Thus, although the objective of the search was in principle
limited to discovering and reporting on relevant prior art for the purpose of assessing
novelty and inventive step, which was ultimately the task of the examining authority (ie
the IPEA and/or the designated Office under the PCT and the examining division under

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the EPC respectively), it was obvious that in many instances the search examiner
needed to form a provisional opinion on these issues in order to carry out an effective
search. Otherwise, he would simply be at a loss how to judge the relevance of the
documents in the prior art and how to arrange the search report accordingly. This
overlapping was inherent in the PCT and the EPC and was in contrast to the system of
most national patent laws, where search and examination were carried out in one
combined operation, normally by the same examiner, and where consequently there was
no separation of fees for search and examination as under the PCT and the EPC.
The Enlarged Board further noted that the requirement of unity of invention under the
PCT applied equally to the procedure before the ISA and to the procedure before the
IPEA according to Art. 17(3)(a) PCT and Art. 34(3)(a) PCT respectively, which was in
conformity with the procedural separation of search and examination as referred to
above and reflected the principle that the normal fees for search and examination were
related to one invention (or a single general inventive concept) only. This led to the
conclusion that the requirement of unity of invention under the PCT had in principle to be
judged by the same objective criteria by both the ISA and the IPEA.
The Enlarged Board observed that the PCT Search Guidelines contained a direct
reference to the consideration of unity of invention by the ISA on an a posteriori basis, ie
after an assessment of the claims with regard to novelty and inventive step in relation to
the prior art. A comparison with the corresponding EPO Guidelines showed that under
the EPC it was also clearly foreseen that consideration of unity of invention by the search
divisions might be carried out on an a posteriori basis (see also R. 46 EPC). In the view
of the Enlarged Board, this was a consequence of the special structure of the PCT and
the EPC. Therefore, the Guidelines had on this point to be considered as consistent with
the PCT and the EPC. As to the PCT Search Guidelines, it was noted that such
guidelines were based on Art. 56 PCT dealing with the task of the Committee for
Technical Cooperation (see in particular Art. 56(3)(ii) PCT and the reference to the need
for uniformity of, inter alia, working methods). The PCT Search Guidelines VII-9
(PCT Gazette No. 30/1992, 14025; now contained, in amended form, in chapter 10 of the
PCT International Search and Preliminary Examination Guidelines, as in force from
25.3.2004), set out how this was to be applied in practice and were the basis for a
uniform practice on the part of all International Searching Authorities.
Since, under the terms of R. 33.1(a) PCT, the prior art consisted of everything that had
been made available to the public before the date of filing of the international application,
the ISA could use such documents as grounds for a decision of lack of unity a posteriori
even if it was not possible to cite these documents against a corresponding national
patent application in one of the contracting states designated (W 21/89).
3.3. Assessment of lack of unity in examination proceedings
According to the wording of Art. 82 EPC, the requirement of unity of invention has to be
satisfied not only by the patent application as filed but also by the patent application at
later stages of the patent granting procedure, ie before the examining division, up until
grant of the patent. R. 46(2) EPC refers to the possibility that the examining division
might disagree with the search division concerning lack of unity of a particular patent
application and that then the examining division's opinion is decisive in that the latter
may order refund of any further search fee at the applicant's request. It lies within the
discretion given to the examining division to decide that a patent application lacks unity

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of invention within the meaning of Art. 82 EPC, even if the search division did not raise a
similar objection under R. 46(1) EPC (T 178/84, OJ 1989, 157).
3.3.1 Lack of unity raised at different stages of the procedure
In T 87/88 (OJ 1993, 430) the board noted that the Enlarged Board of Appeal had ruled
that when the EPO carries out an international search, an international application may
also be considered, under Art. 17(3)(a) PCT, not to comply with the requirement of unity
of invention "a posteriori", ie after prior art is taken into consideration and a provisional
opinion on novelty and inventive step is thereby formed (G 1/89, OJ 1991, 155; G 2/89,
OJ 1991, 166). This principle applied equally when carrying out a European search
(Art. 92 EPC) because in both cases the searches and search reports were virtually
identical. The appellants' objection that a search division was not entitled to decide that
the claimed invention lacked unity "a posteriori" as well was therefore unfounded.
In T 94/91 it was added that Art. 82 EPC clearly provided that European patent
applications must satisfy the criteria of unity of invention without any restriction. There
was no difference in the EPC between "a priori" and "a posteriori" lack of unity.
Therefore, European patent applications had to fulfil the condition of unity and it was of
no importance whether the non-unity appeared immediately or only in view of a
document found during the search or during the examination.
In T 544/88 (OJ 1990, 429) the board ruled that if an applicant, in response to an
objection of lack of unity under Art. 82 EPC, filed new claims allegedly relating to an
invention meeting the unity requirement, examination should be continued even if the
other application documents had not been limited to the subject-matter of those claims.
However, the examining division might request the applicant to bring the description and
drawings into line with the valid claims (R. 27(1)(d) EPC as in force up to 31.5.1991; this
corresponds to R. 27(1)(c) EPC in the present version of R. 27 EPC which entered into
force on 1.6.1991) and to delete from the patent documents those parts of the
description and drawings which did not refer to claimed inventions (R. 34(1)(c) EPC). It
would then be necessary to check in each individual case whether such adjustments
ought to be deferred until allowable claims were submitted.
3.3.2 Assessment of requests for refund of further search fees (Rule 46(2) EPC)
In J 24/96 (OJ 2001, 434) the appellant raised the issue of whether, in its decision
concerning the refund of further search fees under R. 46(2) EPC, the examining division
should have dealt with the alleged incompleteness of the partial search report. The board
held that within the framework of R. 46 EPC it is the task of the examining divisions (and
the boards of appeal) to examine whether communications of the Search Divisions under
R. 46(1) EPC asking for further search fees were justified. R. 46(2) EPC does not,
however, refer to any acts of the Search Divisions other than communications issued
under R. 46(1) EPC. It was therefore not necessary for an examining division to deal in a
decision under Rule 46(2) EPC with other objections raised by the applicants in
connection with the search, such as for example the objection that the partial search
report was not drawn up in accordance with the Guidelines. To avoid any
misunderstanding, the board observed that the examination divisions of course have the
possibility of arranging for an additional search to be performed, if they consider a search
report delivered by the Search Division incomplete, but that this had nothing to do with a
formal decision issued under R. 46(2) EPC concerning refund of further search fees
upon request.

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In T 188/00 the appellant had requested a refund of the further search fee paid in
response to a communication from the search division under R. 46(1) EPC. The board
noted that under R. 46(2) EPC the examining division had to review the finding of the
search division that the claims as filed lacked unity of invention. In other words, a review
of the finding of lack of unity of invention had to be carried out having regard only to the
facts presented by the search division in its communication under R. 46(1) EPC. Since in
most cases objections against lack of unity of invention were raised having regard to the
prior art (a posteriori unity objections), this meant that the examining division had to base
its review solely on the documents cited in the partial search report and on the
specification of the different inventions drawn up by the search division, while taking into
account any arguments which the applicant might have submitted in support of his
request for a refund.
The board observed that in the analogous procedure under the PCT, a review of the
justification for the invitation to pay additional fees resulting from a finding of lack of unity
was provided for in R. 40.2(c) and (e) and R. 68.3(c) and (e) PCT, the protest procedure.
The boards of appeal had ruled that these reviews had to be based exclusively on the
reasons given in the invitation to pay, having regard to the facts and arguments
submitted by the applicants (W 4/93, OJ 1994, 939).
In the case at issue, however, the examining division had reasoned that the claims as
filed lacked unity of invention a posteriori, as a consequence of the finding that claim 1
as filed lacked an inventive step having regard to documents D1 and D4, where the latter
document was not cited in the partial search report. Thus the examining division did not
review the finding of lack of unity of invention within the meaning of R. 46(2) EPC, but
carried out a fresh examination on the basis of a new document D4. The board therefore
held that the decision to refuse the refund of a further search fee had to be set aside for
formal reasons alone and that the appellant's request for a refund of a further search fee
under R. 46(2) EPC was justified.
3.4. No assessment of lack of unity in opposition proceedings
In G 1/91 (OJ 1992, 253) the Enlarged Board held that unity of invention did not come
under the requirements which a European patent and the invention to which it related
had to meet under Art. 102(3) EPC when the patent was maintained in amended form. It
was consequently irrelevant in opposition proceedings that the European patent as
granted or amended did not meet the requirement of unity. It was clear from the "travaux
préparatoires" not only that lack of unity was deliberately excluded as a ground for
opposition, but also that any lack of unity arising during opposition proceedings as a
result of amendment of the patent had to be accepted.
The Enlarged Board noted inter alia that although unity of invention under Art. 82 EPC
was a material requirement, it was still merely an administrative regulation. It served a
number of administrative purposes, particularly in demarcating the respective
responsibilities of the departments. The administrative purposes of unity were fulfilled in
the main up to the time the patent was granted. The purpose and intention of opposition
proceedings was to give a competitor the opportunity of opposing unjustified protective
rights. Since this served the competitor's interests, he did not also need to be given the
opportunity of contesting a patent on the ground of lack of unity. Lack of unity did not in
fact rule out patent protection; it could only result in an application being divided to
produce two or more patents.

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 II.C.4. Criteria for determining lack of unity

4. Criteria for determining lack of unity

II.C.4. Criteria for determining lack of unity

4.1. Determination of the technical problem

According to the established case law of the boards of appeal, determining unity of
invention requires as a precondition an analysis of the technical problem or problems
underlying the respective group of inventions (see W 11/89, OJ 1993, 225; W 6/97,
T 188/04). In W 6/91 the board held that the determination of the technical problem
underlying the invention was a mandatory precondition for the assessment of unity of
invention, ie whether or not the subject-matter claimed as the solution to such a problem
represented a single general inventive concept. The disregard of this principle would be
in itself sufficient justification for the reimbursement of the additional search fees. In
W 8/94 the board held that a discussion of the problem underlying the claimed subject-
matter was required, because only then was it possible to decide whether or not a
common special technical feature within the meaning of R. 13.1 and R. 13.2 PCT existed
for different embodiments (see W 11/89, OJ 1993, 225; W 14/89, W 59/90, W 14/91,
W 17/91).
In W 6/97 the board found that establishing the technical problem underlying a claimed
invention or group of inventions in relation to the state of the art should start, as a rule,
from what was considered in the description as having been achieved by the claimed
invention, since claims directed to compositions of matter at least were normally silent on
the technical effects to be achieved by such compositions. As soon as the search
revealed prior art which was clearly more relevant than that already acknowledged in the
description of the international application, it was necessary to determine what was to be
considered as the particular technical problem in view of both the disclosure of the
international application as a whole and the prior art thus revealed (see W 6/91). Unity of
invention might be assessed only after the technical problem had been determined in
such a manner.
The boards have on several occasions stressed that an alleged lack of clarity in a claim
cannot be used as a reason for an objection based on lack of unity (cf. W 31/88,
OJ 1990, 134; W 7/89, W 59/90).
In W 17/03 the board was concerned with the investigation of technical relationships for
unity. The case is referred to further below.
4.2. Examination as to novelty and inventive step
In W 12/89 (OJ 1990, 152) the board had examined the legal position and, given the
difference of opinion between the boards, had referred, inter alia, the following questions
to the Enlarged Board of Appeal (G 1/89):
"Does an International Searching Authority have the power to carry out a substantive
examination of an international application in respect of novelty and inventive step when
considering under Art. 17(3)(a) PCT whether the application complies with the
requirement of unity of invention set forth in R. 13.1 PCT?
If an International Searching Authority does have such power, in what circumstance does
it have an obligation to carry out such a substantive examination?"
The Enlarged Board of Appeal delivered its decision in G 1/89 (OJ 1991, 155) and
G 2/89 (OJ 1991, 166). It found that in accordance with normal terminology, the term

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"examination" or "substantive examination" referred to the activities of the authorities

responsible for deciding on patentability, such as the examining division of the EPO, or,
in the case of the PCT, to the activities of the IPEA and/or the designated Office.
Obviously, an ISA did not have any power to carry out such activities. The Enlarged
Board held that an ISA might only form a provisional opinion on novelty and inventive
step for the purpose of carrying out an effective search. This opinion was in no way
binding on the authorities referred to above. The same principle applied also when an
ISA considered that an international application did not comply with the requirement of
unity of invention set forth in R. 13.1 PCT on an "a posteriori" basis. Such consideration
had only the procedural effect of initiating the special procedure laid down in
Art. 17 PCT and R. 40 PCT and was, therefore, not a "substantive examination" in the
normal sense of that term. According to the decision an assessment of whether a single
general inventive concept existed was to be undertaken only in so far as this was
necessary to establish whether the invention complied with the requirement of unity
when implementing the procedure laid down in Art. 17 PCT and R. 40 PCT. Such an
assessment was provisional and did not constitute a substantive examination in the
sense of an examination as to patentability (cf. W 6/90, OJ 1991, 438).
The Enlarged Board further noted that consideration by an ISA of the requirement of
unity of invention should, of course, always be made with a view to giving the applicant
fair treatment and that the charging of additional fees under Art. 17(3)(a) PCT should be
made only in clear cases. In particular, in view of the fact that such consideration under
the PCT was being made without the applicant having had an opportunity to comment,
the ISA should exercise restraint in the assessment of novelty and inventive step and in
borderline cases preferably refrain from considering an application as not complying with
the requirement of unity of invention on the ground of lack of novelty or inventive step
(see W 24/90, W 23/91, W 43/91). In W 1/97 the board held that there was no such clear
case where the ISA, having already searched part of the subject-matter, was still not in a
position to identify several separate inventions.
After the Enlarged Board of Appeal's decision in G 1/89 and G 2/89, the boards
repeatedly used a lack of novelty or inventive step in the general inventive concept
underlying the invention to justify a finding of lack of unity of invention (cf. W 17/89,
W 27/89, W 18/90 and W 19/90). In W 10/92 the board stressed that the problem-
solution approach was to be applied to unity of invention (W 16/91, W 21/91).
In W 17/03 the ISA had considered that the absence of common technical features and
an allegedly different problem solved would be sufficient to demonstrate lack of unity
between groups of inventions. The board suggested that the ISA's approach to the
determination of the problem appeared to stem from the belief that what was required
was the same analysis as that used to determine the problem when using the problem
and solution approach to evaluate inventive step, possibly because differences and
problems are involved in both situations.
The board stated that it was not convinced that the investigation of technical
relationships for unity with the aid of common problems underlying the inventions is
necessarily the same as the analysis that is used to determine the problem when using
the problem and solution approach to evaluate inventive step. The board gave the
following reasons:

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(1) The evaluation of unity involves comparing problems solved (or effects achieved) by
different claims, whereas the evaluation of inventive step is carried out on a single claim.
As a result, when examining unity, the problems solved by different claims must be
considered in the light of each other and cannot be determined in isolation in an absolute
sense.
(2) In the evaluation of inventive step, the idea is to define a problem based on the
distinguishing features that is essentially as narrow as possible, but not involving
elements of the solution. On the other hand, in the evaluation of unity, these restrictions
do not apply, since the overall object is to find out what the claims involved have in
common, ie if the respective inventions are so linked as to form a single general
inventive concept.
Thus, the specific problems solved by the different inventions with respect to the closest
prior art might need gradual refinement, in particular generalisation starting from the
problem directly solved, to find out whether or not there was a common denominator that
still distinguished the inventions from the said prior art.
5. The single general inventive concept
II.C.5. The single general inventive concept

5.1. General
When deciding on unity of invention, it is mandatory under R. 13.1 PCT to determine
whether or not a group of inventions claimed in an international application forms a
single general inventive concept. Thus, when seeking to establish at the search stage
whether inventions comply with the requirement of unity, the first question to be
considered is whether the inventions are linked by a single general concept.
In W 19/89 the board decided that the application clearly lacked unity of invention, since
the four possibilities comprised by claim 1 related to a further development of the state of
the art in different directions, namely by employing different classes of dehalogenation
agents having no new technical feature in common. Where at least one solution of the
underlying technical problem already formed part of the state of the art, the requirement
of a "single general inventive concept" implied that the further solutions to that problem
proposed in the application must have at least one new element in common, this new
element being normally represented by at least one new technical feature. Since the
absence of such a unifying new technical feature was admitted by the applicant, the
application related to more than one invention.
A useful analysis of the single general concept was made in W 6/90 (OJ 1991, 438). The
board found that this concept manifested itself in features common to different teachings
expounded individually in the same application. It observed that a teaching for the
purposes of patent law encompassed not only the immediate subject-matter
representing the solution to the problem as defined in the relevant claim, but also its
technical consequences which were expressed as effects. It was noted that any
subject-matter was defined by structural features and the relationship between them.
The relevant effects, ie the outcome or results achieved by the invention as claimed,
would usually already be apparent from the problem as stated. A single general concept
might therefore be said to be present only if a partial identity existed between the
teachings in an application deriving from the structural features of the subject-matters
claimed and/or the outcome or results associated with those subject-matters.

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Where subject-matters of the same category were concerned, a partial identity,

generating unity of invention, could result from the structural features of these subject-
matters and/or their associated effects. The absence of such an element common to all
the different teachings in the application, and hence a lack of unity, might be established
a priori under certain circumstances. A lack of unity might, however, also be established
a posteriori between the subject-matters of different independent claims or in the
remaining subject-matters if the subject-matter of a linking claim was clearly not novel or
inventive vis-à-vis the state of the art. The board gave an example of what was meant by
the abstract term "single general concept": a product, a process specially adapted for the
manufacture of the said product, and a use of the said product, for example, embodied a
single general concept because, on the one hand, the partial identity between the
product and its use derived from the structural features of the product and, on the other
hand, the partial identity shared by the product and the process specially adapted for its
manufacture also derived from the product which was to be considered as the effect or
result of this process (see T 119/82, OJ 1984, 217).
The board also noted that the criteria governing unity of invention for the purposes of
R. 13.1 PCT elucidated above also applied in principle where the inventive step was
based chiefly on the discovery of an unrecognised problem (see T 2/83, OJ 1984,
265). If the common problem, ie the effects to be achieved, was itself already known or
could be recognised as generally desirable (a mere desideratum) or obvious, there
would be no inventive merit in formulating the problem. If the common structural features
were to be found only in the prior art portions of the claims, and if these known features
did not help to solve the problem of the combined whole, this might also indicate a lack
of unity.
In W 38/90 the sole common link between the subject-matter of claims 1, 2 and 4 was
that the respective features all contributed to the realisation of the same device - a
viewing assembly for a door. The board observed that this common pre-characterising
feature was confined to indicating the designation of the invention, as part of the prior art;
it was not, however, a specific feature interacting with the remaining characterising
features and thereby contributing to the various inventions and their effects. Therefore,
this sole link had to be rejected as irrelevant as regards any possible contribution to
inventiveness. As already concluded, in the absence of any kind of common relevant
feature, no unity "a priori" could be recognised.
In W 32/92 (OJ 1994, 239) the board held that there was no unity of invention where the
subject-matters of independent claims, including their effects, had no common inventive
feature in those parts of the claims differing from the closest prior art.
In T 861/92 the apparatus claimed was specifically adapted for carrying out only one
step of the claimed process. The board came to the conclusion that the subject-matter of
the claims satisfied the requirements of Art. 82 EPC as there was a technical relationship
between both inventions.
In W 9/03 the board considered whether the common problem underlying the claims
could establish unity between the different inventions. The board held that a common
problem could establish the unity of different inventions only under certain conditions, for
example in the case of a problem invention. That was not the situation in the case at
issue, however. According to the applicant, the common problem was considered that of
providing a more secure, faster and easier connection setup. The board started from the

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assumption that the person skilled in the relevant art would normally consider this
problem. The common problem was therefore so broadly formulated that it was "itself
already known or could be recognised as generally desirable or obvious" (cf. W 6/90,
OJ 1991, 438); as a result, unity could not thereby be established.
5.2. Inventive character of the single general concept
R. 13.2 PCT defines the method for determining whether the requirement of unity of
invention is satisfied in respect of a group of inventions claimed in an international
application: "Where a group of inventions is claimed in one and the same international
application, the requirement of unity of invention referred to in Rule 13.1 PCT shall be
fulfilled only when there is a technical relationship among those inventions involving one
or more of the same or corresponding special technical features. The expression
"special technical features" shall mean those technical features that define a contribution
which each of the claimed inventions, considered as a whole, makes over the prior art."
Once such a single, ie common, concept was established, it was necessary to consider
whether or not the same could contribute to the inventiveness of the various subject-
matters claimed in the case. Nothing indicated that this concept was known or belonged
to the general knowledge of the man skilled in the art. Since the search examiner did not
indicate that the documents cited in the case could exclude such a contribution, it could
not be assumed that this could not be the case (W 17/89; cf. W 6/90, OJ 1991, 438, dealt
with in Chapter II.C.5.1). In view of this, a single inventive concept had to be attributed to
all claims linking all their subject-matters (see W 22/91).
In W 6/90 (OJ 1991, 438; see also Chapter II.C.5.1) the board further noted inter alia that
for the purposes of unity of invention, R. 13.1 PCT also stipulated that the single general
concept had to be inventive. Even with a given single general concept there was lack of
unity if the concept had no inventive character. The boards of appeal have confirmed the
above decision on several occasions (see eg W 31/91, W 29/92, W 34/92, W 45/92,
W 8/93 and W 6/97).
In W 48/90 and W 50/90 the board noted that as far as chemical compounds were
concerned, unity of invention was no mere question of the respective structural features,
but had to be decided taking into account the technical problem to be solved and
whether or not the respective compounds contributed to the solution found.
In W 45/92 the board stated that the term "inventive" could not be interpreted as a
requirement for the common part to be inventive per se and therefore claimable as such.
The investigation in this respect should concentrate on whether or not all or some of
such features could contribute to the later detailed consideration of the inventive steps.
Only if the state of the art or common general knowledge which had already been taught
showed, beyond reasonable doubt, that this was not possible in the circumstances,
should non-unity be declared. It further held that the term "same or corresponding
special technical features" recognised that the features should define a contribution to
the invention vis-à-vis the prior art. As the features in question were also part of the most
relevant state of the art, where they were set out in an identical manner, they could not
provide such a contribution. Thus, the various inventions, if any, had to lie in the
unshared specific characterising features in each case. Since the claims contained no
other common feature between them in the characterising part, this confirmed the
conclusion of lack of unity (see W 32/92, OJ 1994, 239).

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In W 38/92 the board confirmed W 6/90 (above) and noted that the common features in
the claim groups represented the "sole concept" linking the various subject-matters. The
board stated that the remaining question was whether or not any of these specific
features in the claim groups or their combination could make a contribution to the
inventive steps relating to each claimed subject-matter; if so, this would render the said
concept linking the various subject-matters inventive. The board observed that the new
R. 13 PCT also required such a contribution by the suggested common "special
technical features" over the prior art, ie that more than novelty be provided. In T 94/91
the board made it clear that the general inventive concept could not be equated with the
features cited in a claim or in a particular combination of claims. What should be
considered was the inventive concept as defined in the claims with due regard to the
description and any drawings (see W 2/95).
In W 9/93 the board noted that the intermediate compounds were known, so that these
products could not serve as a common inventive concept, and that a technical feature
contained in the process claims was also known. The board pointed out that a technical
feature which already formed part of the state of the art could not, by definition, make a
contribution over the prior art and did not, therefore, qualify as a unifying element within
the meaning of R. 13.1 PCT. The board observed that, according to R. 13.2 PCT, as in
force from 1.7.1992, an international patent application may relate to a group of
inventions if there was a "technical relationship" among those inventions involving one or
more of the same or corresponding "special technical features", ie such technical
features that defined a contribution which each of the claimed inventions made over the
prior art. The board went on to say that R. 13.1 PCT did not simply require some link
between a group of inventions claimed in an international patent application, but a
common inventive concept. This meant that there must be either a common technical
problem or at least, if there was more than one technical problem, there must be one
single technical concept behind the solutions of these different problems. Neither of
these conditions was, however, met in this case.
In T 957/96 the application described a number of processes which did not have any
process step in common. The board found that in this case the decisive fact for the
question of unity of invention was that all the processes claimed shared a common
technical feature, namely the use of the substantially pure regioisomer, which was
essential for solving the technical problem addressed by the application. It was this use
of the intermediate compound which formed the common "inventive" concept of all the
claimed process variants. In other words, this feature constituted a special technical
feature which defined the contribution that the claimed invention made over the prior art
as required by R. 30(1) EPC.
In W 11/99 (OJ 2000, 186) the board held that if, in an international patent application,
there are claims directed to products and to a process for the manufacture thereof,
it could not be assumed that there were no corresponding special technical features
within the meaning of R. 13.2 PCT simply because the process could also be used to
manufacture other products.
The board interpreted the requirement for the presence of "corresponding special
technical features" under R. 13.2 PCT in cases where a manufacturing process and
products were being claimed in the same application to mean that they could usually be
assumed to be present where the production process is new and actually suited to
making the claimed products accessible (where appropriate in addition to further

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products). In such cases the board regards the process as being "specially adapted" to
the manufacture of the claimed products. A narrower interpretation of the terms
"specially adapted" and "corresponding special technical features" would not fulfil the
legislative purpose of Art. 34(3) PCT and associated R. 13.1 PCT, which, in the board's
view, was the same as that of Art. 82 EPC, namely to prevent subject-matters which
were not interconnected being claimed in one and the same application. This
interpretation accorded with Annex B to the PCT Administrative Instructions mentioned in
the PCT Guideline III-7.2 (July 1998 version), where it is stated in Part 1, item (e), that a
process is specially adapted for the manufacture of a product if it inherently results in the
product (see Annex B, paragraph (e) of the PCT Administrative Instructions, as in force
from 1.10.2005). If this condition was met, it was irrelevant whether other products could
be obtained using the process.
5.3. Unity of single claims defining alternatives ("Markush claims")
The situation involving the so-called "Markush practice" wherein a single claim defines
alternatives is also governed by R. 13.2 PCT. According to R. 13.3 PCT, the
determination of whether a group of inventions is so closely linked as to form a single
general inventive concept shall be made without regard to whether the inventions are
claimed in separate claims, or as alternatives within a single claim (see W 35/91).
In W 3/94 (OJ 1995, 775) the board had to decide whether the ISA had substantiated its
findings of non-unity. It approached the issue by referring to Annex B, Part 1(f) of the
Administrative Instructions under the PCT, as in force from 1.7.1992 (now Annex B,
paragraph (f) of the PCT Administrative Instructions, as in force from 1.10.2005) which is
concerned with the special situation of the "Markush practice". According to that section
of the PCT Administrative Instructions, the requirement of a technical interrelationship
and the same or corresponding special technical features as defined in
R. 13.2 PCT shall be considered to be met when the alternatives are of a similar nature.
The section then specifies when alternatives are to be regarded as "of a similar nature."
In W 1/94, the EPO acting as ISA had found that the compounds according to the
"inventions" it had identified did not have a new structural element. Nevertheless the
board concluded that the absence of such an element did not automatically destroy the
unity of the invention. On the contrary, it was clear from the PCT Administrative
Instructions that a technical relationship must be recognised for a group of alternative
chemical compounds, such as all the compounds having a common property or activity,
and such a common activity existed in the case in point. The new use could therefore
form the general inventive concept linking the subject-matters of the claims in
accordance with R. 13.1 PCT and had to be treated as a functional characteristic linking
the compounds claimed.
In W 6/95 the board referred to the PCT Administrative Instructions which are binding not
only for the ISA but also for the board of appeal acting as the "three-member board"
according to R. 40.2(c) PCT (see G 1/89, OJ 1991, 155; in the PCT Regulations, as in
force from 1.4.2005 the reference to the "three-member board" has been replaced with
that to the "review body"). The board noted that it follows from Annex B, Part 1(f)(i) of the
PCT Administrative Instructions (now part of Annex B, paragraph (f) PCT Administrative
Instructions, as in force from 1.10.05), that in order to establish unity of invention "a
posteriori", it was not sufficient for all alternatives of chemical compounds covered by a
Markush claim to have a common property or activity, ie be suitable for solving a

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common technical problem, because according to item (B)(1) they had, in addition, to
have a "significant structural element" in common in order for the alternatives to form
unity. The board made it clear that it was, however, not in agreement with the
explanation given in Annex B, Part 1(f)(ii) PCT Administrative Instructions to assume that
the said "significant structural element" hat to be novel per se. Rather, this expression
meant that in relation to the said common property or activity there had to be a
common part of the chemical structure which distinguished the claimed compounds from
known compounds having the same property or activity (see also W 6/97).
In T 169/96 the examining division was of the opinion that in the case before it such a
single general inventive concept was not present, since the structural alternatives
comprised by formula A, which had a common property, did not share a common
significant structural element, and, according to the EPO Guidelines C-III, 7.4a (June
2005 version), which referred to the text of R. 30 EPC (old version), a common new use
of known and novel chemical compounds was not in itself sufficient to establish a
common inventive concept within the meaning of Art. 82 EPC. The board noted that the
fact that one claim also comprised a known compound, not covered by another claim 2,
was of no relevance to the question of unity, because R. 30(b) EPC (old version as in
force until 31.5.91) (also under its new version) did not require that there must be a
common concept unifying different "means" according to it. In other words, it was not
relevant in these circumstances that the three different classes of chemical compounds
identified by the examining division comprised completely different chemical structures of
a residue. The board observed that the above-mentioned Chapter of the Guidelines, as
well as Annex B, Part 1(f) of the PCT Administrative Instructions (this corresponds to
Annex B, paragraph (f) of the PCT Administrative Instructions, as in force from 1.10.05)
concerning the examination of unity of invention of so-called Markush-type claims rightly
stated that the said significant structural element might consist of a combination of
individual components linked together. It was not stated there that the combination of
individual structural elements had to be novel per se, nor did such a requirement follow
from Art. 82 EPC. Rather it followed from that guideline that this expression meant that in
relation to the said common property or activity there had to be a common part of the
chemical structure which distinguished the claimed compounds from known compounds
having the same property or activity. In the present case no state of the art was cited
which related to chemical compounds which were known to be useful for the production
of polymeric compositions of enhanced oxidative stability. The combination of the
peroxide group and the residue "An" which was responsible for conferring the oxidative
stability, however, distinguished the compounds of claim 2 from all chemical compounds
conventionally used as antioxidants in polymeric compositions, on the one hand, and
from all compounds conventionally used as polymerisation initiators, on the other hand.
In W 4/96 (OJ 1997, 552) the board of appeal noted that the requirement of a technical
relationship as defined in R. 13.2, first sentence, PCT might be met when all claimed
alternatives belong to a class of compounds which might be expected to behave in the
same way in the context of the claimed inventions ("Markush claims''). The technical
relationship involved those common special technical features that defined a
contribution over the state of the art (R. 13.2, second sentence, PCT; see also W 6/96).
However, such contribution could not be recognised on the basis of this expectation if
members of the class had already been shown in the prior art to behave in the manner
disclosed in the application. The board added that if at least one Markush alternative was
not novel over the prior art, the question of unity had to be reconsidered by the examiner,

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ie a posteriori (see Annex B, Part l (f)(v) PCT Administrative Instructions in conjunction

with PCT Search Guidelines; Annex B, Part I PCT Administrative Instructions has
become Annex B of the PCT Administrative Instructions, as in force from 1.10.2005;
Part II (examples) can now be found in the PCT International Search and Preliminary
Examination Guidelines, as in force from 25.3.2004).
The board also held that an objection of lack of unity could be raised a posteriori with
regard to all categories of grouping of alternatives of chemical compounds. An
a posteriori assessment of unity had to be made in all circumstances in the same way,
since the legal requirement of R. 13 PCT was the same for all cases. Therefore, the
a posteriori assessment of unity in cases of a functional relationship within a group of
compounds had to be made in a manner corresponding to the assessment in cases of a
structural relationship. This was appropriate for compounds related by their structure
as well as for compounds related by their function. The structural relationship within the
meaning of Annex B, Part l (f)(i)(B)(1) and the relationship within the meaning of
Annex B, Part l (f)(i)(B)(2) and (iii) served the same purpose: both tests were intended
to show whether the alternative compounds were of a similar nature, as was said in the
introductory part of Annex B, Part l (f)(i). These tests were only tools in order to
determine whether there was unity of invention as defined in R. 13 PCT.
6. Plurality of inventions and further search fees
II.C.6. Plurality of inventions and further search fees

6.1. Consequences of non-payment of a further search fee

If the search division raises the objection of lack of unity of invention a further search fee
must be paid in accordance with R. 46(1) EPC or Art. 17(3)(a) PCT for each invention
involved. If the fee is paid in due time the applicants may select the single invention or
group of inventions they wish to retain in the main application.
The consequences of non-payment of the further search fee for the procedure for the
grant of a European patent have been the subject of conflicting interpretations on the
part of the boards. While it was stated in T 178/84 (OJ 1989, 157) that in the case of
non-payment of the further search fee under R. 46(1) EPC the subject-matter not
searched was regarded as abandoned and accordingly could not be pursued in the
parent application, in T 87/88 (OJ 1993, 430) it was expressly stated that non-payment
could not result in abandonment. The board stated that non-payment of the further
search fee in no way prejudiced the future legal fate of the unsearched parts and that
R. 46(1) EPC merely provided that in the case of non-payment of further search fees the
search division was to draw up a European search report only for those parts of the
application that related to the invention for which the search fees had been paid.
The President of the EPO therefore referred the following point of law to the Enlarged
Board of Appeal:
"Can an applicant who fails to pay further search fees for a non-unitary application when
requested to do so by the search division under R. 46(1) EPC pursue that application for
the subject-matter in respect of which no search fees have been paid or must he file a
divisional application for it?"
In G 2/92 (OJ 1993, 591) the Enlarged Board of Appeal decided that the application
could not be pursued for subject-matter in respect of which the applicants had not paid
the further search fees. Instead the applicants had to file a divisional application for that

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subject-matter if they wished to continue to protect it. In the view of the Enlarged Board,
it was clear from the procedural system of the EPC that the invention which was to be
examined for patentability had to be an invention in respect of which a search fee had
been paid prior to the drawing up of the European search report. Part IV of the EPC
envisaged that an application progressed after filing from the search division to the
examining division. One object of R. 46 EPC was to implement this procedure by
ensuring that an appropriately extensive search was completed in respect of each
individual application before it was examined by the examining division. To this end, in
response to an invitation from the search division to pay one or more further search fees
in respect of one or more further inventions to which the application related, applicants
had to pay such further search fees if they wished to ensure that one of the further
inventions could become the subject of the claims of that application. That was the
proper interpretation of R. 46(1) EPC in context. This confirmed the practice according to
T 178/84 (see EPO Guidelines C-VI, 3.2a - June 2005 version).
In T 319/96 the initial application lacked unity, but no further search fee was paid. The
applicant took the view that, because of the international-type search (Art. 15(5)a) PCT)
carried out by the EPO for the subject-matter of the original claims 4 to 10, it had not
forfeited its right to choose and could therefore continue pursuing this subject-matter. It
had paid a search fee for each of the two inventions, and two search reports had been
prepared by the Office. Since the appellant insisted on pursuing the second invention
further, the application was refused under Art. 97(1) EPC in conjunction with Art. 82 and
R. 46 EPC.
The board stated that, under R. 46(1) EPC, a search fee was to be paid for each further
invention if the European search report was to cover that invention. It was true that an
international-type search report had been drawn up under Art. 15(5)(a) PCT for the
subject-matter of the second invention in the context of another procedure, ie the
national procedure for the purpose of establishing priority; however, this could not simply
replace the European search report. R. 46 EPC did not provide that a search report from
another procedure could be substituted for the European search report. Rather, the
Rules relating to Fees (RRF) provided that a search report on the same subject-matter, if
prepared by the Office outside the context of the European grant procedure acting in a
different capacity on the basis of other treaties, should be taken into consideration in so
far as the European search fee was partly or wholly refunded (Art. 10(2) RRF). The
restitution was therefore made by “rolling back”, not by waiving the European search fee.
For this reason, R. 46 EPC did indeed apply here, and the appellant would have been
obliged to pay the further search fee in order to retain the option of pursuing the second
invention in the application at issue.
In T 631/97 (OJ 2001, 13) the board held that R. 46(1) EPC on its proper interpretation
does not prohibit a review by the examining division of the search division's opinion on
lack of unity of invention where further search fees are not paid. A narrow interpretation
of R. 46(1) EPC whereby the finding of lack of unity of invention by the search division is
considered as final where the additional search fees are not paid would deprive the
applicant of an opportunity to dispute the finding of the search division during the
examination proceedings and would also unjustifiably restrict the power of the examining
division on the question of unity of invention to the subject-matter for which search fees
were paid. Thus the board did not share the view held in T 1109/96. The board found
that the above interpretation of R. 46(1) EPC was in agreement with that of the Enlarged

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Board of Appeal in Opinion G 2/92. It also found that the Guidelines were fully consistent
with G 2/92 and R. 46 EPC.
The board noted that the present practice of search and examination of international
applications under the PCT where the EPO is elected or designated office was also
consistent with the above view: R. 112 EPC which entered into force on 1.3.2000
(OJ 1999, 660–667) requires the EPO to examine the requirement of unity of invention of
an international application entering the EPO as a Euro-PCT application also where the
ISA considered that the application did not comply with the requirement of unity of
invention (R. 13.1 and R. 13.2 PCT), and the applicant did not pay additional search fees
according to Art. 17(3)(a) PCT.
6.2. Dispensing with further search fee
In W 36/90 and W 19/89 the board observed that where there was lack of unity in an
international application, in particular if the objection was evident a posteriori, the search
examiner might decide to supplement the international search with a search on the
additional inventions as well as on the first invention. This was so particularly if the
concepts of the inventions were very close and none of them required a search in
different classification units, so that the search could be performed for all the inventions
without creating too much extra work (see PCT Search Guidelines as agreed upon by
the Interim Committee for Technical Cooperation at its seventh session in Geneva in
October 1977, PCT/INT/5). In such a case no objection of lack of unity should be raised
because charging further fees would be incompatible with the principle of equity vis-à-vis
the applicant (see G 1/89; for searches of additional inventions without payment of fees,
see paragraphs 10.64-10.65 of the PCT International Search and Preliminary
Examination Guidelines, as in force from 25.3.04).
6.3. Further invitations to pay additional search fees
In W 1/97 (OJ 1999, 33) during the pending procedure on the applicants' protest
concerning the first invitation to pay an additional search fee, the ISA sent a second and
a third invitation to pay further additional search fees. The board noted that these
invitations were only valid if the relevant provisions provided a legal basis for further
invitations. The board could see no such basis. The board noted that although
Art. 17(3)(a) PCT and R. 40 PCT did not deal expressly with the question whether a
series of successive invitations was possible, the matter was covered by the PCT Search
Guidelines (PCT Gazette No. 30/1992, 14025). According to PCT Search Guidelines VII-
2, second sentence, the invitation to pay additional fees "must identify the separate
inventions and indicate the amount to be paid" (this principle can now be found at
paragraph 10.60 of the PCT International Search and Preliminary Examination
Guidelines in force from 25.3.04). This had to be seen in connection with the provision in
the Guidelines that the search report had to be made on those parts of the international
application for which additional search fees had been paid. This meant that the search
report had to be made on those separate inventions identified in the invitation for which
additional fees had been paid. This system prevented further separate inventions being
identified in a later stage of the proceedings for the purpose of collecting further search
fees. The PCT Search Guidelines VII-10 repeated the above general requirements
expressly for the situation of an a posteriori finding of non-unity, stating even more
clearly that the number of additional search fees to be paid had to be indicated. The
obligation of the ISA to identify in the first and only invitation the separate inventions for

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which the applicant had to pay additional fees in order to receive a complete search
report served the purpose of giving the applicant a sound basis for his decision whether
the payment of the additional fees was in his interest. Such a basis was only given if he
knew what he was to receive in return for the fees to be paid.
The board concluded that within the current system under the PCT it was not possible to
use the final search result as a basis for charging additional fees. On the contrary, the
invitation to pay additional search fees had to be sent before the search report was
established. This implied that the result of the search on those parts of the international
application for which fees had been paid might entail a posteriori objections of non-unity
not considered in a previous invitation to pay additional search fees. In addition, the ISA
was obliged to establish the international search report within three months from receipt
of the search copy or nine months from the priority date (R. 42.1 PCT). In most cases
this left no time for successive invitations to pay additional search fees on the basis of
the result of the search at the time of each invitation. As the present case illustrated,
successive invitations to pay additional search fees could have the consequence that the
question of unity of invention became pending before different instances at the same
time. This could be in conflict with basic principles of procedural law which also applied
to protest cases (see W 53/91). Once a protest was filed, the EPO acting as ISA
remained competent only for the prior review of the justification of the invitation already
issued (R. 40.2(e) PCT). It was not entitled to raise the question of non-unity a second or
third time in the same search procedure.

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 III.A.1. Content of the application as originally filed

III. AMENDMENTS - DIVISIONAL APPLICATIONS

A. Article 123(2) EPC
Article 123(2) EPC

According to Art. 123(2) EPC a European patent application or a European patent may
not be amended in such a way that it contains subject-matter which extends beyond the
content of the application as filed.
1. Content of the application as originally filed
III.A.1. Content of the application as originally filed

1.1. General issues

Regarding the concept of the content of the application, G 11/91 (OJ 1993, 125) laid
down that it related to the parts of the European patent application which determined the
disclosure of the invention, namely the description, the claims and the drawings. This
was reaffirmed that the description, claims and any drawings in the application
documents determined the content of the application as filed (G 2/95, OJ 1996, 555;
T 382/94, OJ 1998, 24).
In addition, as pointed out in T 860/00, the disclosure implicit in the patent application - ie
what any person skilled in the art would consider necessarily implied by the patent
application as a whole (eg in view of basic scientific laws) - is relevant for the
requirements of Art. 123(2) EPC.
In T 246/86 (OJ 1989, 199) the board decided that as the abstract was intended solely
for documentation purposes and did not form part of the disclosure of the invention, it
could not be used to interpret the content of the application for the purposes of
Art. 123(2) EPC. For the purpose of Art. 123(2) EPC, "the content of the application as
filed" also did not include any priority documents, even if they were filed on the same day
as the European patent application (T 260/85, OJ 1989, 105).
Concerning the content of the application as originally filed, the board in T 1018/02
stated that although a claim was not to be interpreted in a way which was illogical or did
not make sense, the description could not be used to give a different meaning to a claim
feature which in itself imparted a clear, credible technical teaching to the skilled reader.
That also applied if the feature had not initially been disclosed in the form appearing in
the claim.
In T 605/93 the board held that where the application documents of the European
application as filed were a translation of the international application as it was filed, the
content of the "application as filed" (for the purpose of Art. 123(2) EPC) was that of the
international application as it was filed. In all normal circumstances, it ought however to
be assumed that the published European application was identical in content with the
published international application.
In T 658/03 the granted patent contained two sets of claims, namely claims 1 to 14 for
the contracting states AT, BE, ES, FI and SE and claims 1 to 10 for the contracting
states DE, FR, GB and IT. During prosecution of the case before the opposition division,
amended sets of claims were filed by the proprietor, by way of a main request filed on 18
July 2001. The main request was based on a single set of claims 1 to 10 valid for all
contracting states, these claims corresponding to granted claims 1 to 10 for the
contracting states DE, FR, GB and IT.

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Article 123(2) EPC

The board pointed out in a communication accompanying the summons to oral

proceedings that the claims then on file represented an amendment with respect to the
contracting states AT, BE, ES, FI, SE and, as far as those contracting states were
concerned, were open to a full examination. It stated that any change of attribution of
claimed subject-matter in an application or patent having different (sets of) claims for
different contracting states, to a contracting state under which that subject-matter was
not previously subsumed, amounted to an amendment in the sense of Art. 123 EPC.
Such an amendment was subject, in principle, to full examination as to its conformity with
the requirements of the EPC.
After examination the board came to the conclusion that the subject-matter of claim 1 of
the main request and, by the same token, that of claims 2 to 10, did not meet the
requirements of Art. 123(2) EPC as far as the contracting states AT, BE, ES, FI and SE
were concerned. Since, furthermore, the board could only decide on a request in its
entirety, the appellant's main request, ie maintenance of the patent on the basis of
claims 1 to 10 filed on 18 July 2001 for all contracting states, was refused.
In T 382/94 (OJ 1998, 24) a European patent application was filed with a description and
claims in German, accompanied by 25 drawings. Three of the drawings contained so-
called flow sheets with text matter in English. The application was published in this form.
In the board’s view, this raised the question whether text matter in drawings which was
couched in an official language other than the language of proceedings was part of the
content of the application as filed, and whether in this respect it was possible to correct
the application.
The board argued that, under Art. 80(d) EPC, the accordance of the date of filing
depended on whether the documents filed by the applicant contained "a description and
one or more claims" in an EPO official language. However, the EPC did not make the
accordance of the date of filing dependent on whether any text matter in the drawings
was in a language in accordance with Art. 14(1) and (2) EPC. If drawings were submitted
in full on the date of filing, the establishment of the filing date could not be dependent on
whether they contained text matter in a language other than the language of
proceedings. The special provision under Art. 91 EPC in conjunction with R. 43 EPC
related exclusively to the question of whether any drawings were filed at all on the date
of filing.
The accordance of a date of filing could relate only to the whole of the application
documents. And under Art. 123(2) EPC, the limits for changing or correcting the parts of
an application affecting the disclosure were defined by what a skilled person would
derive from the whole of these documents as filed. It appeared to be alien to the EPC not
to consider certain parts of the description, claims or drawings actually filed on the date
of filing to be part of the documents as filed. The amendment of the application, based
on the English-language text matter in the drawings as filed, did not represent an
infringement of Art. 123(2) EPC.
In T 23/02, the board said that although the claims as originally filed contained no
reference to a method of measurement for the average particle diameter, that did not
mean that any method could be used to determine that parameter. If anything, the claims
raised doubts as to how the average particle diameter had to be determined, in particular
because the skilled person would be aware of the fact that the method of measurement
was of a decisive nature in particle size analysis. Therefore the skilled person would use

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the description and drawings when deciding how the average particle diameter was to be
measured, and would come to the conclusion that when properly interpreted in the light
of the original description, the claims as originally filed already contained restrictions as
to the method of measurement for the average particle diameter of the various particles.
Furthermore, the method of measurement for the average particle diameter did provide a
technical contribution because it affected the actual value of that parameter.
According to Art. 123(2) EPC, a European patent application or a European patent may
not be amended in such a way that it contains subject-matter which extends beyond the
content of the application as filed. In T 500/01 the board stated that a claim, the wording
of which was essentially identical to a claim as originally filed, could nevertheless
contravene the requirements of Art. 123(2) EPC if it contained a feature whose definition
was amended in the description in a non-allowable way. The specific definition of a
feature which according to the description was an overriding requirement of the claimed
invention was applied by a skilled reader to interpret that feature whenever it was
mentioned in the patent. Since in this case the definition had no basis in the application
as filed, claim 1 did not meet the requirements of Art. 123(2) EPC.
In T 287/98, the word "scrap" originally comprised in the disputed passage of the English
version of the application, which means "refuse or waste in general" had been replaced
in claim 1 by "scrap metal". The original application in Dutch contained the word
"schroot", which means scrap metal, as substantiated by the copies of various
dictionaries provided by the appellant. According to the board, this word was not
correctly translated into English and nothing other than "scrap metal" was meant in the
application as originally filed. The board further decided that the replacement of the word
"scrap" by "scrap metal" was allowable under Art. 123(2) EPC since Art. 70(2) EPC
provides that in a case referred to in Art. 14(2) EPC, i.e. in which the European patent
application is filed in a language of a contracting state other than English, French or
German, the original text must be taken into account in proceedings before the European
Patent Office, in order to determine whether the subject-matter of the application extends
beyond the content of the application as filed.
The appeal in T 1228/01 lay from the examining division's decision to refuse the
European patent application entitled "Method of preparation and use for zona pellucida
antigens and antibodies for sterilization and contraception" because it contained subject-
matter which extended beyond the content of the application as filed, contrary to
Art. 123(2) EPC. The appellants inferred that the reference to a deposited phage in a
claim, whose correct deposit was mentioned in the application as originally filed, was an
implicit disclosure of a part of a nucleotide sequence contained in the phage, although
the sequence was not disclosed per se.
Reference was made to T 301/87 where the Board had taken the view that if an entity
itself was disclosed to the skilled person, this did not necessarily mean that a component
part was also disclosed for the purpose of priority if this could not be envisaged directly
and unambiguously as such and required considerable investigation to reveal its identity.
Although the earlier decision had dealt with the question of entitlement to priority, in the
present case (T 1228/01), the board took the view that the conclusion reached in it might
also apply when the allowability of amendments in the light of Art. 123(2) EPC was
examined. Since the required standard of correspondence with an earlier document - the
application as originally filed in the one case and the priority document in the other - was

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the same, ie explicit or implicit disclosure, the board concluded that the findings of
T 301/87 could be applied to the present situation. Thus the disclosure in the application
as originally filed of the deposition of the recombinant bacteriophage Lgt11-P3 was not
considered to be a basis within the requirements of Art. 123(2) EPC for the disclosure of
a DNA sequence designated as "the P3 coding sequence" which was allegedly
contained in that bacteriophage, but which as such was not disclosed in the application
as originally filed.
In T 792/94 the board ruled that since the teaching of claim 1 as amended was
ambiguous (Art. 84 EPC), allowing scope for an interpretation which extended beyond
the overall teaching of the initial application, the amendment contravened
Art. 123(2) EPC.
Decisions T 673/89 and T 685/90 prohibited the later inclusion of equivalents. T 673/89
concerned a dual circuit braking system. The board held that the mere fact that the
original claim did not indicate how the signals were transmitted in the brake circuits was
not a basis for deliberately supplementing its teaching with a further embodiment not
referred to in the application documents as originally filed. In T 685/90 the board stated
that specific equivalents of explicitly disclosed features did not automatically belong to
the content of a European patent application as filed, when this content was used as
state of the art according to Art. 54(3) and (4) EPC against a more recent application. It
therefore concluded that such equivalents could not belong to the content of a European
patent application either, when this content was assessed to determine whether an
amendment was admissible under Art. 123(2) EPC. In T 265/88 the board refused to
allow originally undisclosed equivalents to be added by using a wider technical term in
place of the single technical means originally disclosed. T 118/88 had concluded that the
obviousness of a feature was no replacement for the original disclosure.
In T 40/97 the board considered what the originally filed application taught the person
skilled in the art and took the view that in a case where a number of generally similar
embodiments were discussed in equivalent terms, the person skilled in the art would, in
normal circumstances and when nothing pointed to the contrary, notionally associate the
characteristics of an element of one embodiment described in some detail with the
comparable element of another embodiment described in lesser detail.
In T 284/94 (OJ 1999, 464) the board stated that an amendment of a claim by the
introduction of a technical feature taken in isolation from the description of a specific
embodiment is not allowable under Art. 123(2) EPC if it is not clear beyond any doubt for
a skilled reader from the application documents as filed that the subject-matter of the
claim thus amended provides a complete solution to a technical problem unambiguously
recognizable from the application. Nor is an amendment allowable under
Art. 123(2) EPC which replaces a disclosed specific feature either by its function or by a
more general term and thus incorporates undisclosed equivalents into the content of the
application as filed.
In T 243/89 the applicant had originally claimed a catheter only for medical use; during
examination proceedings he filed a further claim for its manufacture. The board of appeal
saw no reason to refuse the filing of an additional method claim for forming the
apparatus, in view of the similar wording and thus of the close interrelationship between
both independent claims. Provided the result of the activity was in itself patentable, such
methods were also patentable unless the disclosure was insufficient.

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In T 157/90 and T 397/89 it was stressed that it was insufficient for the generalisation of
a feature to have only formal support in the application as filed. If, for example, the
application as filed only described specific embodiments, and the feature's general
applicability was not evident to the skilled person, then generalisation could not be
allowed.
In T 906/97 the board stated that an a posteriori demonstration that the original claims,
considered in isolation from the rest of the application documents, could possibly be
construed in such a way as to cover a specific type of apparatus failed to provide
convincing evidence that such specific apparatus was actually disclosed to the skilled
person.
In T 770/90 the board ruled that an unduly broad claim not supported by the description
as originally filed was not a suitable "reservoir" for amendments. On the issue of
Art. 123(2) EPC, the board stated in T 296/96 that the content of a document was not to
be viewed as a reservoir from which features pertaining to separate embodiments could
be combined in order to artificially create a particular embodiment. When assessing
whether a feature had been disclosed in a document, the relevant question was whether
a skilled person would seriously contemplate combining the different features cited in
that document. That was not the case in the application as filed.
In T 54/82 (OJ 1983, 446) the board held that an objection under Art. 123(2) EPC did not
necessarily arise when an amendment was proposed which involved combining separate
features of the original subject-matter of an application. When considering whether
different parts of the description in an application could properly be read together, the
state of the art might also be taken into account.
Expanding on T 13/84 (OJ 1986, 253) it was stated in T 547/90 and T 530/90 that
reformulating the technical problem was not in breach of Art. 123(2) EPC provided the
problem as clarified and the solution proposed could have been deduced from the
application as a whole in the form originally filed.
Decision T 784/89 (OJ 1992, 438) ruled on a computer-controlled method of producing
NMR images disclosed explicitly in the documents as filed. By reference to another
patent application an apparatus was implicitly disclosed comprising a programmable
component which, when suitably programmed, was used for the claimed method. The
board considered that only this specific combination had been disclosed. To claim an
apparatus for carrying out a method was considered an inadmissible extension of the
European patent application because the claim covered apparatus which could also be
used in other methods and to achieve other effects. The only allowable claim was for an
apparatus for carrying out a method comprising a programmable component which could
be suitably programmed to carry out the method.
In T 526/92 the patent related to an additive concentrate having a high TBN of at least
235 for incorporation in a lubricating oil composition. The application as filed contained
no explicit reference to TBN apart from the examples where 235 was the lowest value
mentioned. The feature "having a high TBN of at least 235" was introduced during the
examination proceedings to distinguish the claimed subject-matter from compositions
with low TBN values up to 100 disclosed in a citation. The board revoked the patent on
the grounds that it breached Art. 123(2) EPC, stating that the precondition of the
disclaimer had not been met (see also G 1/03 concerning law applicable to disclaimers in
Chapter III.A.1.6.3).

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In this case, however, TBN values had not been originally disclosed as a "broad" range
but only as single, punctate values; thus a new range was defined which had not been
disclosed originally. Furthermore, the generic part of the original specification did not
contain any information indicating that TBN played any role in the framework of the
application in suit. This meant that there was also no information whatsoever concerning
a TBN range, whether open-ended or not. Nor was there any information at all in the
description regarding the contribution of a TBN to the solution of a technical problem.
Moreover, it could not be concluded that the individual TBN values disclosed in the
examples were representative of a TBN range starting at 235 and without any upper
limit. The board held that there was a contravention of Art. 123(2) EPC where values of a
parameter were given only in the examples, without the significance of this parameter
becoming evident from the original specification, arbitrarily forming a range which was
open-ended in one direction and had one limit selected from the examples in the other.
T 201/83 (OJ 1984, 481) and T 17/86 (OJ 1989, 297) started from the assumption that a
limitation could also constitute an inadmissible extension of the subject-matter of the
application. In T 201/83, however, the board came to the conclusion that the amendment
of the concentration range for a component of a claimed alloy was allowable on the basis
of a value described in a specific example since the skilled person could have readily
recognised that this value was not so closely associated with the other features of the
example as to determine the effect of that embodiment of the invention to a significant
degree. The new limit could therefore be deduced from the original documents. In
T 17/86 the examining division took the view that, although the introduction into a claim
of a particular technical feature constituted a limitation, it nevertheless contravened
Art. 123(2) EPC since the feature concerned had been described in the application solely
in association with another feature not included in the claim. The board, however, stated
that the application as filed unmistakably showed that the combination of technical
features in the new claim thus amended was sufficient to produce the result sought in the
application.
In T 1067/97 the board confirmed that if a claim was to be restricted to a preferred
embodiment, it was normally not admissible under Art. 123(2) EPC to extract isolated
features from a set of features which had originally been disclosed in combination for
that embodiment. An amendment of this nature would only be justified in the absence of
any clearly recognisable functional or structural relationship among said features.
In T 714/00 the board said that extracting an isolated feature from an originally disclosed
combination and using it to delimit claimed subject-matter could only be allowable in
connection with Art. 123(2) EPC if that feature was not inextricably linked with further
features of that combination.
With regard to isolation and extraction of combined features, T 25/03 first recalled that
according to the established case law of the boards of appeal, if a claim was restricted to
a preferred embodiment, it was normally not admissible under Art. 123(2) EPC to extract
isolated features from a set of features which had originally been disclosed in
combination for that embodiment. That kind of amendment would only be justified in the
absence of any clearly recognisable functional or structural relationship among said
features (see for example T 1067/97). In the case at issue the board concluded that
since claim 1 resulted from the extraction of isolated steps from the specific combination
disclosed as essential in the embodiment of Figure 4, and since the appellant had not
referred to other parts of the application as filed that could support the proposed

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amendment, and no such parts had been identified by the board, claim 1 as amended in
accordance with the first auxiliary request did not meet the requirements of
Art. 123(2) EPC.
In T 727/00 the board held that the combination - unsupported in the application as filed -
of one item from each of two lists of features meant that although the application might
conceptually comprise the claimed subject-matter, it did not disclose it in that particular
individual form. For that reason alone, claim 1 of the main request was not supported by
the description.
In T 582/91, the respondent (opponent) was of the opinion that when restricting a
granted claim by introducing subject-matter from the dependent claims all the features of
the dependent claims in question should be incorporated in the new independent claim.
Contrary to this opinion the board considered that one feature of a dependent claim
could be readily combined with a preceding independent claim as long as the skilled
person recognised that there was clearly no close functional or structural relationship
between the one feature of that dependent claim and its other features, or between that
one feature and the teaching of other dependent claims referred to in that dependent
claim. If this was the case, no objections under Art. 123(2) EPC arose (confirmed in
T 938/95; see also T 288/89).
According to the boards' consistent case law, the guiding principle is that deleting
meanings of residues must not lead to the selection, in the respective lists, of a particular
combination of single, specific but originally undisclosed meanings of residues (see
T 615/95 and T 859/94).
In T 942/98, precisely this had occurred through the deletion of all other meanings,
residues X1, X2 and R5 had been narrowed down to a single meaning, leading to a
combination of specific meanings of residues not disclosed in the application as filed.
Consequently, claim 1 as filed did not in itself provide adequate support for claim 1 as
amended.
In T 615/95 there were three independent lists of sizeable length specifying distinct
meanings for three residues in a generic chemical formula in a claim. One originally
disclosed meaning was deleted from each of the three independent lists. The board
stated that the present deletions did not result in singling out a particular combination of
specific meanings, i.e. any hitherto not specifically mentioned individual compound or
group of compounds, but maintained the remaining subject-matter as a generic group of
compounds differing from the original group only by its smaller size. Such a shrinking of
the generic group of chemical compounds was not objectionable under Art. 123(2) EPC,
since these deletions did not lead to a particular combination of specific meanings of the
respective residues which was not disclosed originally or, in other words, did not
generate another invention (see also T 948/02, which refers in detail to the case law on
the deletion of one originally disclosed meaning and which did not allow the amendment
of a generic chemical formula).
In T 3/03 the board decided that an amendment consisting in the generalisation of an
effect obtained for particular embodiments was not admissible. In the case in point, the
results obtained for particular embodiments could not be generalised since the particular
circumstances of use, including the type of additive used, determined whether or not
filterability was improved.

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The board in T 1146/01 had to answer the question of whether one measurement of a
selected characteristic or property of a sample disclosed only in an individual example
could be relevant to the generality of the claimed subject-matter, separately from and
irrespectively of the other parameters inherent to the same sample. The situation in this
case was different from the case in T 201/83. In T 201/83 an amendment was allowed on
the basis of a particular value described in a specific example, provided the skilled
person could readily have recognised that value as not so closely associated with the
other features of the example as to determine the effect of that embodiment of the
invention as a whole in a unique manner and to a significant degree. In T 1146/01,
however, the board stated that formulating a new range on the basis of individual values
taken from selected examples, which were not at all directly related to each other, meant
that the reader was confronted with new information not directly derivable from the text of
the application as originally filed.
In T 653/03, the original term "diesel engine" in claim 1 was replaced by the term
"combustion engine". Thus the suitability of the claimed method was generalised to any
type of combustion engine. The board decided that the treatment of exhaust gas in the
original application was always related to a diesel engine, and it could not be inferred by
the skilled person that the subject-matter of the granted patent extended to a method
which was suitable for any type of combustion engine. The technical contribution was
that the amended method was suitable for any type of combustion engine, whereas in
the original form it was suitable only for a diesel engine. The generalisation was not
allowable.
In T 1241/03, in view of the general disclosure of the application as filed, the reference in
a claim to a combination of compounds in specific concentrations, explicitly disclosed in
different passages of the application, was not considered by the board to be an
amendment of the patent which extended beyond the content of the application as
originally filed.
In T 1067/02 the board came to the conclusion that the unclear nature of the amendment
introduced upon grant in claim 1 as filed, ie the introduction of the term "complete",
allowed two different interpretations and, although they were both technically sensible,
neither of them was directly and unambiguously derivable from the general disclosure of
the application as filed. Consequently, claim 1 of the main request extended beyond the
overall teaching of the application as originally filed.
1.2. Technical contribution - addition or deletion of a feature
G 1/93 (OJ 1994, 541; see above) stated that the underlying idea of Art. 123(2) EPC was
clearly that an applicant should not be allowed to improve his position by adding subject-
matter not disclosed in the application as filed, which would give him an unwarranted
advantage and could be damaging to the legal security of third parties relying on the
content of the original application. If, however, an added feature merely excluded
protection for part of the subject-matter of the claimed invention as covered by the
application as filed, the adding of such a feature could not reasonably be considered to
give any unwarranted advantage to the applicant. Nor did it adversely affect the interests
of third parties. Therefore, a feature which had not been disclosed in the application as
filed but which had been added to the application during examination was not to be
considered as subject-matter which extended beyond the content of the application as
filed within the meaning of Art. 123(2) EPC, if it merely limited the protection conferred by

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the patent as granted by excluding protection for part of the subject-matter of the claimed
invention as covered by the application as filed, without providing a technical contribution
to the subject-matter of the claimed invention (see also T 112/95).
The question of whether an added feature made a technical contribution or merely
limited the scope of protection was discussed in several decisions.
In T 384/91 of 27.9.1994 (OJ 1995, 745) it was held that the added feature did make a
technical contribution. This decision was based on the following considerations: the
example mentioned by the Enlarged Board illustrated a case where the feature was
clearly not merely a limitation. However, the borderline beyond which a feature was no
longer to be considered as making a technical contribution to the subject-matter of the
claimed invention and was merely limiting the protection conferred, was not co-terminous
with this example but lay between it and the limit of complete technical irrelevance.
According to the board this view was consistent with the fact that the Enlarged Board
had rejected relevance as a criterion for novelty and inventive step, which would also
have implied a comparison with the cited prior art documents. Thus the board also
rejected the argument that the condition that the feature must not make a technical
contribution to the subject-matter of the claimed invention applied to "inventions". These
"inventions" therefore, had to be "identified" by assessing novelty and inventive step in
order to see whether they really were "inventions" and, if so, on the basis of which
features. The board explained that the term "invention" did not necessarily imply the
presence of novelty and inventive step, as was apparent from the wording of Art. 52, 54
and 56 EPC.
The board concluded that there was no need to take into account the prior art
documents, but that the assessment of whether the exception for mere limitations
applied in a particular case should depend only on the technical relationship of the added
feature to the content of the application as originally filed, as understood by a skilled
reader. At the least, a feature went beyond providing a mere limitation not involving a
technical contribution to the invention if it interacted with the way in which the other
features of the claim solved the technical problem, as it was understood from the
application as originally filed.
In case T 64/96, a patent relating to a cover for automobile sun visor mirrors comprising
rectangular plates overlapping and connected together in chain-like succession was
revoked by the opposition division. The third auxiliary request of claim 1 was amended in
that it was included as an additional feature that lugs were "integrally formed in said
plates".
The appellant (patent proprietor) argued first that this feature was disclosed, at least
implicitly, in the original application. Indeed since the plates were described according to
the appellant as being of plastics, the person skilled in the art would not seriously
consider forming the plates without lugs and then attaching the lugs thereafter, for to do
so would unnecessarily increase the production costs of what was after all a mass-
produced article. The appellant also argued in the alternative that the requirement that
the lugs be "integrally formed in said plates" was of the class of feature allowed by
G 1/93 (OJ 1994, 541) (in short, no technical contribution). In particular, the appellant
argued in this respect that all he was doing was limiting the scope of protection of the
patent by means of non-inventive selection since the original application covered both
integrally formed lugs and separately formed lugs subsequently attached to the plates.

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In the board's opinion the first line of argument confused two essentially different
questions, namely what the person skilled in the art would do on the basis of his general
common knowledge when seeking to put the teachings of the original application into
practical effect and what the original application directly and unambiguously disclosed to
him. The answer to that second question was that the skilled person was told that the
plates "are provided" with lugs, nothing else. That statement certainly included the
possibility of forming the lugs integrally with the plates but did not disclose it.
The board then examined the second line of argument and came to the conclusion that
applying the criterion, as set out in G 1/93 (OJ 1994, 541) and T 384/91 (OJ 1995, 745),
to the present case, it could be seen that the feature in question did indeed make a
technical contribution to the subject-matter of the claim since forming the lugs integrally
with the plates led to a simpler and cheaper construction of cover which, at least by
implication, was the technical problem which the invention set out to solve. Thus the
addition of this feature to claim 1 of the third auxiliary request offended against
Art. 123(2) EPC.
Another question which arose was whether deleting a feature could constitute a technical
contribution to an invention.
On this matter, in T 802/92 (OJ 1995, 379), an ex parte case, the application as filed
contained only product claims relating to "a double heterojunction p-i-n photovoltaic cell
having at least three different semiconductor compound layers composed together of at
least four different elements, comprising ... first and second ohmic contacts ...". In the
course of examination proceedings the applicant also claimed the method of making
such a photovoltaic cell. However, the method claim did not contain a feature relating to
the formation of first and second ohmic contacts.
The board allowed the deletion of this feature in the method claims. It explained that the
aim of the invention was to make photovoltaic cells with certain abilities. This aim was
achieved by the use of three different semiconductor layers formed of at least four
different elements. In the board's view, it followed from the description that the presence
of ohmic contacts did "not provide a technical contribution to the subject-matter of the
claimed invention". Therefore, the presence or absence of such ohmic contacts did not
affect the carrying out of the described invention since they were not an essential part of
it. The board invoked the principles underlying the interpretation of Art. 123(2) EPC set
out by the Enlarged Board in G 1/93 (OJ 1994, 541; see above). According to the board
in this case these considerations were equally applicable to cases where a feature had
been removed from a claim or omitted, so as to broaden its protection. Thus the removal
from a claim of a feature which did not provide a technical contribution to the subject-
matter of the claimed invention and whose removal merely broadened the protection
conferred by the claim did not contravene Art. 123(2) EPC.
In T 10/97 not all the compounds listed in the original claim were included in amended
claim 1. However, since the claimed group of compounds was obtained not by restricting
an originally disclosed generic definition of a substituent in a generic formula to a specific
one selected from worked examples, but by deleting some members from a list of
individualised equally useful compounds in order to improve the chances of patentability
over the available prior art, the board found that such deletions must be considered
admissible in accordance with the case law of the boards of appeal (see T 393/91). For
the remaining compounds, no particular technical effect was either disclosed or alleged.

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In T 592/99 the opposition division had revoked the patent under Art. 102(1) EPC. On
appeal, the board noted that, the feature as originally disclosed having been replaced by
the feature objected to under Art. 100(c) EPC, the claim as such related to different
products. The board concluded that in keeping with "Order 1" of G 1/93 (OJ 1994, 541)
the patent in suit contained subject-matter which extended beyond the content of the
application as filed, which was prohibited by Art. 123(2) EPC. Thus, the patent could not
be maintained unamended, because the ground for opposition under Art. 100(c) EPC
prejudiced the maintenance of the patent. On the other hand, the board observed that it
could not be amended since deleting the limiting subject-matter from the claims would
extend the protection conferred, which was prohibited by Art. 123(3) EPC.
The board observed that in the case of a product claim concerning a composition defined
by its components and their relative amounts given in terms of ranges, it could not be
accepted that such ranges, which constituted essential features, did not provide a
technical contribution to the subject-matter of the claimed invention, as suggested by the
appellant. Any amendment to the ranges had to have the effect of modifying the claimed
subject-matter, and thus also provided a technical contribution. If the newly claimed
limited range were allowed even though unsupported, any subsequent selection
invention based on the new range would have to be refused as not novel, which would
otherwise not necessarily be the case. To allow this would, of course, give an
unwarranted advantage to the patentee, contrary to the purpose of Art. 123(2) EPC. In
the board's view, that was exactly what was meant in the "typical example" given in point
16 of G 1/93, "where the limiting feature is creating an inventive selection not disclosed
in the application as filed or otherwise derivable therefrom". Obviously, in the quoted
text, such an "inventive selection" could not mean anything other than a potential
(inventive) selection. Therefore the new feature constituted added subject-matter.
The board noted that the respondents could not be requested to demonstrate the
potential character of the selection without making, or preventing themselves from
making, a further selection invention. Thus, the burden of proof could not reasonably be
shifted to them, as demanded by the appellant.
The board in T 931/00 stated that although figures in examples might, under specific
conditions, be used to limit a range which was already present in the original application,
they could not be used to define an entirely new relationship between parameters which
had never been linked before. Such arbitrary new links between existing parameters
introduced new matter, contrary to the requirements of Art. 123(2) and Art. 100(c) EPC.
In T 1004/01 the opposition division had decided that the requirements of
Art. 123(2) EPC were not fulfilled. In particular, the feature specifying that the peel
strength be "at least 24 grams", a value only disclosed in a specific example, was
associated with a multiplicity of further features of that example and could not be
detached from those further features.
The question that arose before the board of appeal was whether or not there was a basis
in the application as originally filed for a peel strength "of at least 24 grams" to define the
claimed laminate. According to the application as filed, the peel strength of the laminate
was defined by an open-ended range as an essential feature of the invention. In the
general description and the claims there was no further mention of any preferred peel
strength range.

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According to the board, the examples in the application as filed only illustrated specific
laminates which were prepared from specific polymer blends and a specific nonwoven
web, using specific lamination conditions and provided specific values of the peel
strength. Thus, the exemplified laminates and the peel strength thereof were disclosed
only in a concrete technical context, without providing any preference for a peel strength
of at least 24 grams. Nor was any such preference given in the description, which could
justify the lower limit.
Since, however, a peel strength of 24 grams was disclosed, the question arose as to the
conditions under which such an exemplified feature could form the basis for a new range
as claimed. The peel strength of 24 grams could not be detached from the exemplified
laminates to form a basis for a generalised lower limit of the claimed peel strength range
without taking into consideration the other particulars closely associated therewith. It
followed that the claimed subject-matter in all requests could not be directly and
unambiguously derived from the application as filed.
As to the technical contribution, the board said that the amended feature involved an
interaction with the other features, ie a technical contribution to the invention, and did not
provide a mere limitation of scope. Furthermore, the board pointed out that the general
criteria of G 1/93 (OJ 1994, 541) had to be met, namely that the limitation did not involve
a technical contribution to the subject-matter of the claimed invention and did not provide
an unwarranted advantage. Since the claimed peel strength led to a technical
contribution of the claimed subject-matter, the question whether or not the limiting
feature created an inventive selection could be left unanswered. Consequently, the
added feature could not be regarded as a mere limitation of the protection.
1.3. Disclosure in drawings
The case law according to T 169/83 (OJ 1985, 193), T 523/88 and, later, T 818/93
showed that the EPC did not prohibit the amendment of claims to include features from
drawings, provided the structure and the function of such features were clearly,
unmistakably and fully derivable from the drawings by the skilled person and not at odds
with the other parts of the disclosure. Nor could any element be dropped.
Indeed, in T 169/83 (OJ 1985, 193), T 465/88 and T 308/90 it was pointed out that where
drawings existed they were to be regarded as an integral part of the documents
disclosing the invention. Drawings were to be treated on an equal footing with the other
parts of the application. Further, the fact that features were disclosed solely in the
drawings did not preclude these features from becoming essential in the course of the
proceedings (T 818/93). The features for which a skilled person could clearly derive the
structure and function from the drawings could be used to define more precisely the
subject-matter for which protection was sought (T 372/90).
In T 398/92, the board made particular reference to the case law on this subject. In the
case at issue the patent claims as amended contained features that had not been
mentioned expressis verbis in the written part of the original application but had been
derived from the figures for the application as filed. In this case the drawings in question
illustrated the curves in a system of Cartesian co-ordinates with a precise, defined scale.
The curves therefore could not be compared to the schematised representation of an
invention given by a graph. The board recognised that the points of these curves were
not purely intellectual graphic constructions but, on the contrary, corresponded to real
experimental values, representing the percentages of a particular drug released in

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solution. Although these percentages were not mentioned expressis verbis in the original
document, the board was of the opinion that for a skilled person they would have been
clearly and unambiguously derivable from the scale given on the Y-axis, since the figures
were sufficiently precise for the ordinate values to be read exactly and thus for the same
numerical features as introduced in the claims to be derived from them. The
incorporation into the text of the claims of the numerical features derived from the curves
therefore did not contravene Art. 123(2) EPC (as far as a graph representing a
mathematical equation is concerned, see T 145/87). This case related to a process for
regulating the print quality of printers which could only be carried out using statistical
calculations. On the basis of a formula given expressis verbis, its representation as a
graph according to the Cartesian co-ordinate system and a basic knowledge of statistics,
the possible values of two parameters in the formula, though not expressly disclosed,
could be deduced.
In T 191/93 amendments were based exclusively on the original drawings and
introduced only some of the features disclosed in the drawings. The board held that the
subject-matter of the patent had been extended compared to the application as filed
because it was not derivable from the drawings that the two newly introduced features
could be isolated from the other features shown in the drawings. The subject-matter
defined in the claims thus amended was ambiguous. In this case, however, the
ambiguity could be removed by also introducing into the claim a third feature, disclosed
in the drawings as filed, together with the other two features.
In T 676/90 the applicant wished to delete the rolling-device features of a carrying aid for
a pair of skis. The board found, however, that the original documents had disclosed only
a carrying aid consisting of a rolling device and a carrying strap or only of a rolling
device, but not an option without a rolling device. Nor was the board swayed in its view
by the applicant's argument that the carrying strap was shown separately in a drawing. It
held firstly that, according to the description, this drawing was an expanded view of the
carrying strap shown in Figure 1 (which, moreover, showed a ski with the carrying strap
in conjunction with the rolling device). Secondly, a drawing could never be interpreted in
isolation from the overall content of the application but only in that general context. The
content of an application was defined not only by features mentioned or shown therein
but also by their relationship to each other.
In T 497/97 the board noted that, since drawings were often approximate and therefore
unreliable, they could only be used in interpreting amended claims if the description did
not contain a more precise indication of what was meant. Moreover, in the case at issue,
the drawings showed only a preferred embodiment of the invention, which did not rule
out the possibility of other embodiments covered by the claimed subject-matter. The
board concluded that the contested wording, inserted in the characterising portion of
claim 1, had been validly based on the description according to the application, ie that
the wording had been inferable from its context without extending its meaning.
In T 748/91 the board reached the conclusion that size ratios could be inferred even from
a schematic drawing as long as the delineation provided the relevant skilled person
with discernible and reproducible technical teaching. In the board's view, schematic
drawings depicted all the essential features.
However, a figure which served only to give a schematic explanation of the principle of
the subject-matter of the patent and not to represent it in every detail did not allow the

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sure conclusion to be drawn that the disclosed teaching purposively excluded a feature
not represented. A "negative" feature of this sort (in this case, "with no internal fittings")
could not subsequently be incorporated into the claim (T 170/87, OJ 1989, 441).
Regarding the absence of a feature in a figure which served only to give a schematic
explanation of the principle of the invention, see also T 264/99, in which the board found
the circumstances to be different from those in T 170/87.
Likewise, in T 906/97 the board held that the parent application as filed failed to disclose
unambiguously the position of a door. The only indication of this position could be found
in some figures, and in the board's view there was no suggestion whatsoever in the
description itself that this detail of the schematic representation was actually meant to
correspond to a technical feature of the apparatus shown in the figures, rather than being
merely an expression of the draughtsman's artistic freedom.
1.4. Cross-references
In T 6/84 (OJ 1985, 238) the subject-matter of the application was a chemical process
solely characterised in that the catalyst was synthetic offretite having a silica/alumina
mole ratio of 5 to 10. For the definition of synthetic offretite the description referred to a
Canadian patent specification in which the offretite used was defined as aluminosilicate
having the given mole ratios for the oxides and a characteristic X-ray powder diffraction
pattern. The board took the view that structural features of a means for performing a
chemical process (here the catalyst "offretite"), which were not mentioned in the
application documents themselves but in a document (here a Canadian patent
specification) to which they referred, could be incorporated into a patent claim if they
unequivocally formed part of the invention for which protection was sought (see
T 590/94). However, it was not permissible to single out a particular one of their number
(here a silica/alumina ratio) in the absence of evidence that this feature alone was a
sufficient characterisation. It was instead necessary to recite fully the other essential
components of the structure and the diffraction pattern figures which belonged together,
as originally disclosed and defined in that document.
In T 6/84 it was clear having regard to the facts that the further characterising
parameters of synthetic offretite which were included in the main claim by way of
amendment were indeed features which unequivocally formed part of the invention for
which protection was already sought, because the use of synthetic offretite as a catalyst
was already the only characterising feature in the claim as originally filed, and the
features which were added to that claim simply defined such synthetic offretite better.
In T 689/90 (OJ 1993, 616), however, the description of the invention as originally filed
did not in any way suggest that the "further details" of a certain feature to be found in a
document D1 referred to and now to be included in the main claim were intended to
identify features of the invention for which protection might be sought or that such
features implicitly clearly belonged to the description of the invention. The board decided
that features disclosed only in a cross-referenced document which was identified in the
description as filed were prima facie not within "the content of the application as filed".
Only under particular conditions would adding them to a claim not be an infringement of
Art. 123(2) EPC, namely if the description of the invention as filed left the skilled reader
in no doubt that protection was sought for those features; that they helped achieve the
invention's technical aim and thus formed part of the solution to the technical problem
underlying the invention claimed; that they implicitly clearly belonged to the description of

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the invention contained in the application as filed and thus to the content of the
application as filed, and that they were precisely defined and identifiable within the total
technical information contained in the reference document. In the case at issue these
requirements were not fulfilled.
1.5. Errors in the disclosure
1.5.1 Calculation errors
In T 13/83 (OJ 1984, 428) the board held that R. 88 EPC did not apply to a non-obvious
correction of an error in the description or claims which resulted from an erroneous
technical calculation. A correction of such an error was allowable under Art. 123(2) EPC
if the amendment would be regarded by the skilled reader as clearly implied by the
disclosure of the application as filed. If more than one arithmetical possibility of
correction could be envisaged, the correction chosen had to be the one which the
application as a whole clearly implied.
1.5.2 Incorrect structural formula
In T 552/91 (OJ 1995, 100) the question arose as to whether and in what form protection
could be obtained for groups of chemical substances and individual compounds whose
originally disclosed structural formula proved incorrect. The applicant's main request was
aimed at securing such protection by a further substance claim for the group of
compounds with the structural formula subsequently found to be correct. This request
was refused on the grounds that it would violate Art. 123(2) EPC. The board defined
"content" within the meaning of Art. 123(2) EPC as "the entire technical disclosure
derived by a skilled person from the application". Thus it was not enough to prove that as
a result of amendments to the original patent application nothing other than the originally
disclosed subject-matter was claimed; what was more important was that technically
relevant information which the skilled person could not derive from the original
documents was not thereby added to the application. In this case, the subsequently
amended general formula gave the skilled person for the first time crucial information
about the true chemical structure of the group of substances. This led to conclusions
regarding properties that could be put to use. The information added to the application
through the amendment of the general formula and relating to the true composition of the
group of substances could not have been obtained from the application as originally filed.
1.5.3 Amendment based on errors
In T 740/91 the board allowed a change in the upper limit of the amount of epoxy
compound present on a yarn from 5.0 % by weight to 0.6 %. This amendment conferred
both novelty and inventive step on the claimed subject-matter. The value of 0.6 % was
explicitly disclosed in example IV. However, the patentee conceded that this figure had
been inserted in error in place of the true figure of 0.49 %.
The board concluded that the fact that the figure was wrong did not alter the fact that it
was actually and credibly disclosed. It could thus be relied on as the basis for the new
upper limit. This interpretation of Art. 123(2) EPC was consistent with its underlying
intention, which was to protect the public from being faced at a later stage with claims
which were wider in their scope than what had been disclosed in the application as filed,
and published for the information of the public, including the applicant's competitors. In
this case, any such competitor who had read the application as first published had

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formed the view that the originally claimed range of 0.1 to 5 % was too wide in the light of
the prior art, and had thought that the broad claim could not validly be sustained. He
would have seen at once that the highest figure for the cured epoxy resin given in any
example was 0.6 %, as clearly disclosed in example IV, and therefore could not have
been taken by surprise if the upper limit of 5 % were later to be reduced to 0.6 %. The
fact that the figure was wrong would be unknown to competitors, and therefore could not
influence their judgment.
1.5.4 Elimination of contradictions
In T 172/82 (OJ 1983, 493) the deletion of a feature in a claim was considered
admissible because the sole purpose of such deletion was to clarify and/or resolve an
inconsistency. And in T 271/84 (OJ 1987, 405) it was stated that an amendment to a
claim to clarify an inconsistency did not contravene Art. 123(2) or Art. 123(3) EPC if the
amended claim had the same meaning as the unamended claim, on its true construction
in the context of the specification.
In T 758/92 the board allowed the deletion of a feature because it was clearly
inconsistent with the teaching disclosed in the application as filed, and there was a clear
basis in the original disclosure for its deletion. A skilled reader of the original application
documents would have realised that the feature to be deleted was erroneously
introduced in the claim because the resulting definition was contradictory to the
functioning of the described embodiment of the invention.
In case T 60/90 the applicant had deleted the lower limit of a temperature range in order
to eliminate an inconsistency between the claims and the examples. Resolving this
inconsistency was found unobjectionable under Art. 123(2) EPC. The board held that, (1)
the feature in question was not explained as essential in the disclosure (it was originally
a preferred embodiment), (2) it was not, as such, essential for the function of the
invention (the examples used a lower temperature - the source of the contradiction), and
(3) its removal required no real modification of other features to compensate for the
change.
In T 609/95 the board took the position that where a drafting defect or inconsistency in
an application would be evident to a reader skilled in the art, the person to whom the
application is addressed, it is reasonable to suppose that he would, in the light of the
content of the application, attempt to formulate a notional amendment which would
enable him to make sense of what he reads, and to the extent that the amendment might
be said to leap to the mind of the reader, although perhaps only after close study of the
document, it can be regarded as implicit in the application and would not contravene
Art. 123(2) EPC, if effected in practice (see also T 887/97 for such amendment during
opposition appeal proceedings).
In T 749/03 the respondent (patent proprietor) had made reference to T 190/99, which
discussed the possibility of amending a granted claim to replace an inaccurate technical
statement, which was evidently inconsistent with the totality of the disclosure of the
patent, with an accurate statement of the technical features. According to that decision,
the skilled person, when considering a claim, should rule out interpretations which were
illogical or did not make technical sense. It appeared that in the present case (T 749/03)
a similar situation arose - claim 5 as originally filed would, if taken alone, not make
technical sense, and even the simple addition of its features to the features of claim 1
would result in an inadequately defined apparatus. However, by taking into account the

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whole disclosure of the patent the skilled person might arrive at a technically sensible
interpretation of the claim.
In that context reference was also made to T 371/88 (OJ 1992, 157), which concerned
the admissibility of amending a granted claim to replace a restrictive term with a less
restrictive term. The board in that case had ruled that such replacement was permissible
under Art. 123(3) EPC if examination of the extent of protection conferred by the granted
claim resulted in the following conclusions: (a) the restrictive term in the granted claim
was not so clear in its technical meaning in the given context that it could be used to
determine the extent of protection without interpretation by reference to the description
and the drawings of the patent; (b) it was quite clear from the description and the
drawings of the patent and also from the examination procedure up to grant that the
further embodiment belonged to the invention and that it had never been intended to
exclude it from the protection conferred by the patent. In the present case (T 749/03),
having regard to claim 1 alone, the features relating to the second (transmission) grating
were perfectly clear in their technical meaning. However, in combination with claim 5
they would only make sense if reference were made to the description and drawings.
Therefore requirement (a) was met. Further, there could be no doubt that the applicant
had not waived that embodiment. Hence requirement (b) was also met.
1.6. Subsequent addition of details
1.6.1 Amendments in the description of the prior art
In T 11/82 (OJ 1983, 479) it was pointed out that the mere addition to the description of a
reference to prior art could not reasonably be interpreted as the addition of "subject-
matter", contrary to Art. 123(2) EPC. Whether it did so would clearly depend on the
actual language used and the circumstances of the case.
In T 211/83 the board even considered it essential that details of the way a component of
the invention worked, which could only be inferred from previously published advertising
literature referred to in the description, be included in the description since they were of
significance for the invention.
In T 450/97 (OJ 1999, 67) the board confirmed that the mere addition of a reference to
prior art did not contravene Art. 123(2) EPC. It added that after limitation of the claims,
also at the opposition stage, a document which subsequently proved not only to be the
closest state of the art, but also to be essential for understanding the invention within the
meaning of R. 27(1)(b) EPC was to be introduced in the amended description.
In T 889/93 the appellant (patent applicant) explained that the closest prior art was
shown in two figures of the contested application. In his reply to the board's objection of
obviousness he submitted that these figures did not show the state-of-the-art device
correctly as they were misleadingly oversimplified. The board allowed originally filed
drawings to be replaced by better ones since this only removed an inaccuracy in the
representation of the state of the art and did not affect the disclosure of the invention per
se. T 1039/93 found along similar lines. In the case at issue, certain figures of the
application as filed had been erroneously labelled as prior art while in fact representing
in-house technical knowledge of the appellant that had not been made available to the
public. The board did not object to the deletion of the labels "prior art" from the relevant
figures since such deletion neither infringed Art. 123(2) EPC nor affected the disclosure
of the state of the art; on the contrary such amendment was necessary to avoid giving an

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inaccurate representation of the state of the art. After the amendment the description
correctly indicated the prior art as required by R. 27(1)(b) EPC.
Equally, an amended claim did not contain subject-matter which extended beyond the
content of the application as filed if the preamble to the claim had been amended by
substituting an appropriate more general term, which was apt to define a feature
common to both the closest prior art described in the application as filed and the
invention which was the subject of the application, for a specific term which was not apt
to define that feature of the prior art (T 52/82, OJ 1983, 416).
1.6.2 Subsequent addition of effects
In T 11/82 (OJ 1983, 479) it was stated that it was not inevitable that the addition of a
discussion of the advantages of the invention with reference to the prior art would
constitute a contravention of Art. 123(2) EPC. In T 37/82 (OJ 1984, 71), for example, a
technical feature was clearly disclosed in the original application but its effect was not
mentioned or not mentioned fully. It could however be deduced from the original
application on the basis of normal expert considerations.
In the Guidelines C-VI, 5.3.4 (June 2005 version), it is pointed out that amendment by
the introduction of further examples and statements of effects or advantages of the
invention not mentioned previously should always be looked at very carefully in the light
of general considerations. Under certain circumstances, later filed examples or new
effects, even if not allowed into the application, may nevertheless be taken into account
by the examiner as evidence in support of the patentability of the claimed invention.
1.6.3 Disclaimers
(a) Applicable law - decisions G 1/03 and G 2/03
On 8 April 2004, the Enlarged Board of Appeal ruled on referrals G 1/03 and G 2/03
(OJ 2004, 413 and 448) concerning disclaimers and established the criteria to be taken
into account. For a full account of the law now applicable to disclaimers, see the text of
the decisions. Here, the Enlarged Board's answers to the questions it was asked to
consider are set out:
1. An amendment to a claim by the introduction of a disclaimer may not be refused under
Art. 123(2) EPC for the sole reason that neither the disclaimer nor the subject-matter
excluded by it from the scope of the claim have a basis in the application as filed.
2. The following criteria are to be applied for assessing the allowability of a disclaimer
which is not disclosed in the application as filed:
2.1 A disclaimer may be allowable in order to:
- restore novelty by delimiting a claim against state of the art under Art. 54(3) and
(4) EPC;
- restore novelty by delimiting a claim against an accidental anticipation under
Art. 54(2) EPC; an anticipation is accidental if it is so unrelated to and remote from the
claimed invention that the person skilled in the art would never have taken it into
consideration when making the invention; and
- disclaim subject-matter which, under Articles 52 to 57 EPC, is excluded from
patentability for non-technical reasons.

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2.2 A disclaimer should not remove more than is necessary either to restore novelty or to
disclaim subject-matter excluded from patentability for non-technical reasons.
2.3 A disclaimer which is or becomes relevant for the assessment of inventive step or
sufficiency of disclosure adds subject-matter contrary to Art. 123(2) EPC.
2.4 A claim containing a disclaimer must meet the requirements of clarity and
conciseness of Art. 84 EPC.
With regard to the admissibility of disclaimers reference should be made to Chapter
II.B.1.2.1.
(b) Decisions applying the criteria established by G 1/03 and G 2/03
Most of the decisions the boards have taken pursuant to the Enlarged Board's decision
on disclaimers have related to the nature of an accidental anticipation in the specific
cases at issue. A number of decisions discussed at the end of this subchapter relate to
other issues.
In T 500/00 the amendment was a disclaimer introduced by the appellant into claim 1
during the examining proceedings in response to an objection of lack of novelty based on
prior art document D1. The question arose as to the requirements under which such a
disclaimer might be allowable.
According to G 1/03 (OJ 2004, 413), a disclaimer may be allowable in order to restore
novelty by delimiting a claim against an accidental anticipation under Art. 54(2) EPC;
thus the question that arose was whether or not the disclosure of D1 was accidental.
In the case in point, the claimed solution showed an overlap with the teaching of D1. D1
and the application in suit concerned the same technical field, had, except for the
disclaimed component, identical compositions and related to the same purpose of
sufficient curing. Moreover, the same technical problem underlay both the patent in suit
and D1. Since the skilled person would consider D1 as suitable prior art to make the
invention, confirmed by the reference to D1 in the original application, the disclosure of
D1 could not be considered as being accidental within the meaning of G 1/03.
Furthermore, since D1 related to the same technical effect as the patent in suit, and
since its starting polymers to be cured were structurally identical to those used in the
claimed process, D1 could be considered as a suitable starting point for assessing
inventive step.
The appellant argued that the disclaimer had been made in good faith according to the
Guidelines and in accordance with the practice of the boards of appeal at the time of
making the disclaimer. The board pointed out that the Guidelines were not rules of law.
When introducing the disclaimer into claim 1 as granted, the appellant had referred to
Guidelines C-VI, 5.8b (in an earlier version). Even so, the board explained that at the
time when the disclaimer was introduced, the appellant, considering the relevant case
law, could not expect that a disclaimer which was relevant for the assessment of
inventive step and changed the technical information in the application as filed would be
allowable.
The appellant's position that transitional provisions should be provided for in G 1/03 for
those applicants who had relied in good faith on the previous EPO patent practice at the
time of making the disclaimer failed as well, as explained by the board.

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The principles laid down in G 1/03 were to be applied to the present case. Since the
disclosure in D1 could not be considered as accidental within the meaning of G 1/03, the
disclaimer was not allowable under Art. 123(2) EPC.
The decision in T 14/01 concerned the allowability of a disclaimer aimed at removing an
overlap with prior art in view of G 1/03.
According to the board in this case, the allegation that a teaching extracted from prior art
led away from the invention implied that the skilled person had taken this prior art into
consideration. Yet for an anticipation to be accidental it was necessary that the skilled
person would have never taken it into consideration. The board then decided that the
prior art in question was not accidental in the sense of G 1/03, and that the disclaimer
was not admissible.
In T 1049/99 the board concluded that, contrary to what the respondent (patent
proprietor) claimed, the skilled person would have taken the teaching of document D21
into consideration when working on the invention in search of a solution to the technical
problem defined by the respondent, using appropriate and relevant means to resolve his
problem in the same technical field as that of the patent in suit. Moreover, contrary to
the respondent's conclusions at the hearing, the board stressed that the fact that a
document was difficult to find in published prior art or was difficult for the skilled person
to access was not sufficient to justify the conclusion that it constituted an accidental
anticipation.
In T 217/03, on the issue of whether document D1 was an accidental anticipation, the
board stated that D1 did not deal explicitly with the technical problem underlying the
claimed invention. However, that was not decisive for accepting D1 as an accidental
anticipation. The board concluded that D1 related to the same general technical field as
that of the subject-matter of claim 10 and was not from a technical point of view so
unrelated and remote that the person skilled in the art would never have taken it into
consideration when working on the invention (see G 1/03, OJ 2004, 413, point 2.2.2 of
the Reasons). Thus the disclosure of D1 could not be considered to constitute an
accidental anticipation. Therefore the disclaimer in claim 10 did not fulfil the conditions
required to render it admissible.
Other decisions too have had to establish whether or not an anticipation was accidental.
In T 717/99, for example, the board did not agree with the opponent's conclusion that the
anticipation was not accidental. In T 1086/99, T 1050/99, T 1102/00, T 134/01, T 584/01,
T 506/02, T 285/00 and T 1146/01 (on comparative examples of a prior art document
providing a teaching not to be followed) the boards ruled that the anticipation was not
accidental and that the disclaimers were therefore inadmissible.
The following decisions deal with further aspects of the application of G 1/03:
In T 1050/99 the respondent (patentee) disputed the fact that decision G 1/03 applied to
his case, arguing that as the feature in question (earlier disclaimer reformulated as an
"exclusion" feature) related to subject-matter which was "disclosed" in the application as
filed, the amendment derived therefrom was to be regarded as a mere "waiver" of part of
the disclosed invention rather than as a disclaimer. Consequently, in his view, the criteria
applying to "undisclosed" disclaimers as set out in G 1/03 did not apply. In the board's
view there was no doubt that the amendment "with the exclusion of ..." answered to the
definition of a disclaimer. Moreover, there was a basis in the application for the subject-

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matter which was excluded in the claim. However, that subject-matter was presented as
a part of the invention, not as an area that was to be excluded or avoided. In that
sense, the disclaimer was in fact an "undisclosed" disclaimer because there was no
disclosure in the application as filed of the disclaimer per se. Dismissing the
respondent's arguments regarding the interpretation of Order 2 of G 1/03, the board
concluded that the ruling of G 1/03, which dealt with the allowability of disclaimers not
disclosed in the application as filed, was fully applicable to the present case.
T 1102/00 likewise considered the definition of a disclaimer. In its decision, the
opposition division had held that the disclaimer correctly excluded the novelty-destroying
matter disclosed in the prior art. The board observed that the opposition division had
apparently not examined the question of whether the disclaimer had a basis in the
application as filed, that question being decisive for the criteria to be applied in assessing
its allowability. The board was not convinced that the passage in the application as filed
cited by the appellant provided a basis for the disclaimer at issue. Even if it were
acknowledged that the subject-matter defined by the expression "lignées cellulaires de
mammifères" (as in the disclaimer) corresponded exactly to that defined by the
expression "cultures de cellules de mammifères" (as in the application), it could not be
inferred from the disclosure of the application as filed that the applicant intended to
exclude such subject-matter from the scope of protection sought. Thus the board came
to the conclusion that the disclaimer had no basis in the application as filed. It then
applied the criteria established by G 1/03 to be applied in assessing the allowability of a
disclaimer which was not disclosed in an application as filed.
In T 970/02, the board acknowledged the fact that the "negative" feature was introduced
in order to establish novelty with respect to E3, and that this document as closest prior
art was also of relevance in respect of inventive step. In the board's view, however, since
the amendment and the alleged "disclaimer" were clearly supported by the original
disclosure the conditions set out in G 1/03 did not apply to the case in point.
In T 285/03 the board found that the interpretation offered by the appellant amounted to
a disclaimer although it was not phrased in the usual form. However, that disclaimer was
not based on a particular prior art disclosure, whether accidental or not, but tried to
delimit the claim against any potential prior art disclosure, contrary to the principles set
out in G 1/03.
T 747/00 relates to the condition set by G 1/03 (point 2.2 of the Reasons) that a
disclaimer should not remove more than is necessary either to restore novelty or to
disclaim subject-matter excluded from patentability for non-technical reasons. The board
concluded that since, in the absence of a novelty-destroying disclosure, the disclaimer
removed subject-matter without any need to do so, that disclaimer necessarily removed
more than was necessary to restore novelty, which was not allowable (see also
T 201/99). In T 1050/99 the board concluded that the disclaimer covered more than was
disclosed in the prior art and thus removed from the claim more than was necessary to
restore novelty. See also T 285/00 which concerned a disclaimer largely not based on
the disclosure of a prior art document cited under Art. 54(3) EPC, thereby rendering the
remaining claimed subject-matter more distant from a relevant prior art document cited
under Art. 54(2) EPC.
In T 10/01 the scope of the disclaimer was broader than was necessary to restore
novelty. The board nevertheless referred to point 3 of the Reasons for G 1/03, saying

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that it could also be inferred from that decision that a disclaimer that was broader than
strictly necessary to restore novelty might be allowed, depending on the circumstances
of the case, if that proved necessary to prevent any lack of clarity in the claim that might
otherwise result. However, in the case at issue there was no apparent justification for the
disclaimer being broader than the disclosure in document (1).
(c) Review of case law prior to G 1/03 and G 2/03
The case law prior to G 1/03 and G 2/03 is not entirely obsolete and so a few decisions
are referred to.
In T 898/91 the board held that the purpose of a disclaimer was to re-establish the
novelty of a claim over the teaching of a prior art document without introducing new
subject matter, so that a precise basis for what was disclaimed had to exist either in the
original application or in the prior art document.
In T 982/94, claim 1 was amended during appeal procedure by changing the original
lower limit of 40° for the twist angle to a new lower limit of 60°, which was not explicitly
disclosed in the original application documents. This modification which amounted to
disclaiming the values between 40° and 60° from the originally claimed range for the
twist angle, was introduced in order to overcome the novelty objection based on the
contents of document D1 in which the limit of 60° was explicitly disclosed as the upper
limit of the preferred range of between 20° and 60° for the twist angle. For this reason
among others the board was convinced that the disclaimer introduced into claim 1 as
amended was adequately supported by the disclosure of document D1, and the
amendment therefore complied with the requirements of Art. 123(2) EPC.
However, in T 898/91 the board held that if the appellants' intention were to re-establish
novelty over document (1) , then it should be noted that the newly introduced expression
"less than 25 wt. %" would not achieve this goal. This was because in document (1) the
range 25 to 65 % by weight was merely given as an example of "low fat". There seemed
thus no reason why the skilled person would not regard something below but close to 25
wt. % as also falling within the teaching of document (1), so that the feature below 25 wt.
% could not be regarded as a disclaimer of any overlap with any precise range required
by document (1). Claim 1 was thus objectionable under the terms of Art. 123(2) EPC.
In T 863/96 (see also T 43/99) the board referred to the case law of the boards of appeal
according to which it would be allowable under Art. 123(2) EPC to formulate a disclaimer
which is precisely defined and limited to the prior art disclosure, provided this disclosure
is an accidental novelty-destroying disclosure. It clearly appeared that the disclaimer to
be formulated on the basis of this disclosure was only allowable if the cited document
containing the said disclosure had no relevance for any further examination of the
claimed invention and it must then disappear from the prior art field to be taken into
consideration. The board referred to T 4/80 (OJ 1982, 149), and T 170/87
(OJ 1989, 441) where the disclaimer was not allowed because the subject-matter to be
disclaimed was considered relevant to the assessment of inventive step (see also
T 596/96).
In T 1071/97 board pointed out that excluding protection for part of the subject-matter of
the claimed invention as covered by the application as filed or the patent as granted by
disclaiming a certain anticipation in prior art which was not referred to in the originally
filed documents was acceptable under the terms of Art. 123(2) EPC only if the following

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conditions were met: (i) the subject-matter disclaimed had to be precisely defined and
strictly limited to the actual scope of the anticipation; and (ii) said anticipation had to be a
so-called "chance anticipation", which meant that it would be regarded as accidentally
falling within the terms of the claims of the application or the patent in question.
Condition (ii) specifically referred to cases where what was disclosed in the prior
document could fall within the wording of the claims of the application or the patent to be
assessed for novelty without there being a common or related technical field, or a
common technical problem or solution. In other words, the prior document had to form
part of an entirely remote and unrelated state of the art which the skilled person, faced
with the assessment of inventive step, would normally never take into consideration. In
each case, a particularly careful comparison was to be made between what could fairly
be considered to fall within the wording of the claim and what was effectively shown in
the document.
The board stated that since the state of the art in the present case was highly relevant to
the subject-matter claimed in the patent in suit, condition (ii) was clearly not met.
Accordingly, the disclaimer was not allowable under Art. 123(2) EPC and, consequently,
the first auxiliary request as a whole was not acceptable (see also T 917/94, T 159/95,
T 645/95, T 608/96 and T 13/97).
In T 596/96 the board came to the conclusion that the first condition for a disclaimer to
be admissible was that the prior art document must be indisputably
novelty-destroying. In the present case, no novelty objection was raised on the basis of
the documents cited by the appellant in support of the disclaimer.
As explained in T 426/94, the incorporation into a disclaimer of features not disclosed in
either the contested patent or the originally filed documents, in order to exclude any
accidental novelty-destroying prior description of parts of the claimed subject-matter,
was, according to current board of appeal practice, not contrary to Art. 123(2) EPC. The
disclaimer had, however, to adhere as closely as possible to the wording of the
disclosure of the novelty-destroying document.
In T 893/96 the board judged that the originally allowed disclaimer on which the claim
was maintained according to the decision under appeal was not allowable, because it
was broader than the prior art it purported to overcome and so was in breach of the
provisions of Art. 123(2) EPC (see also T 915/95).
In T 65/97 the appellant introduced a disclaimer to exclude the disclosure of prior art
document D1, thereby trying to make the claimed subject-matter novel. However, the
disclaimer was not allowable because it did not disclaim all of what was disclosed by D1.
In T 541/97 the invention related to a filter for a smoking article comprising a water
disintegrative paper. The parameter of the moisture disintegration index (MDI) was the
only characterising feature used to define the invention. After examination the board
concluded that this MDI parameter and the associated test were not publicly known at
the date of priority and/or filing. The board further decided that the test for determining
this unusual parameter, which had to be sufficiently defined to produce an acceptably
accurate and repeatable result, was also not sufficiently defined in the patent application
as filed. In particular, it was important to use the correct type of measuring cylinder for
the MDI test in order to arrive at the correct value for the parameter.

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The appellant specified the type of measuring cylinder to be used by amending the claim
and the description. He saw this as a disclaimer, ie excluding all other cylinders from
use.
The board however found that the effect of changing the type of cylinder was to change
considerably the value of MDI measured with it. Thus the type of cylinder used played an
essential role in determining the scope of protection.
The board held that specifying the type of cylinder after filing the application was not a
disclaimer in the accepted sense: it did not exclude protection for part of the subject-
matter otherwise covered by the claim, nor did it make the claim novel over cited prior art
or limit the claim to one of the previously disclosed alternatives. Instead, it chose
something which had never been specifically mentioned before, thereby extending the
subject-matter of the originally filed application. The applicant furthermore relied on the
argument that legal certainty was increased by the amendment. The board did not agree.
A competitor might have obtained different test results by using a measuring cylinder
other than the one now mentioned in the claim.
The amendment, which provided a technical contribution to the subject-matter of the
claimed invention, would have given an unwarranted advantage to the appellant which
was contrary to the purpose of Art. 123(2) EPC, as explained in G 1/93.
In G 1/93 (OJ 1994, 541) the Enlarged Board held that a feature which had not been
disclosed in the application as filed but which had been added to the application during
examination and which, without providing a technical contribution to the subject-matter of
the claimed invention, merely limited the protection conferred by the patent as granted by
excluding protection for part of the subject-matter of the claimed invention as covered by
the application as filed was not to be considered as subject-matter which extended
beyond the content of the application as filed within the meaning of Art. 123(2) EPC.
In T 934/97 the board held that adding disclaimers infringed Art. 123(2) EPC unless
stringent requirements, set out inter alia in T 13/97, T 596/96, T 863/96 and T 893/93,
were met. In the board's view, the conditions to be fulfilled before a disclaimer could be
admitted were as follows:
(i) there had to be novelty-destroying prior art, and the disclaimer had to be precisely
formulated on the basis of that art and limit the invention against it;
(ii) said art had to be an accidental anticipation;
(iii) the art excluded had to be outside that to be considered when assessing inventive
step.
The board also referred to a fourth condition already laid down in G 1/93 (OJ 1994, 541,
point 9 of the Reasons):
(iv) With regard to Art. 123(2) EPC, the underlying idea is clearly that an applicant shall
not be allowed to improve his position by adding subject-matter not disclosed in the
application as filed, which would give him an unwarranted advantage and could be
damaging to the legal security of third parties relying on the content of the original
application (see also T 1146/98).
In T 323/97 (OJ 2002, 476) the board held that an amendment to a patent by the
introduction of a "negative" technical feature into a claim resulting in the exclusion of

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certain embodiments (ie by the incorporation into the claim of a so-called disclaimer)
was, regardless of the name "disclaimer", nonetheless an amendment governed by
Art. 123(2) and (3) EPC. As far as the requirements of Art. 123(2) EPC were concerned,
that meant that the amended claim had to find support in the application as filed, a
requirement which was mandatory for the allowability of the amended patent or patent
application as explained in G 3/89 (OJ 1993, 117).
In the later decision T 351/98, the board noted that, according to the established case
law on disclaimers (see T 982/94), where an overlap occurred between the prior art and
the claimed subject-matter, specific prior art could be excluded by disclaimer to establish
novelty even in the absence of support for the excluded matter in the application as filed.
Where, as in this case, that prior art was formed by third-party patent applications which
were prior art only by virtue of the deeming provision of Art. 54(3) EPC, so that the later
applicant could not know of their contents and so could not formulate his claims as
originally filed to avoid their contents, it seemed justifiable on a balanced interpretation of
the EPC to allow the later applicant to limit his claims to what was novel over the
Art. 54(3) EPC prior art by means of a disclaimer. In this situation, an overliteral
insistence on a precise basis in the original disclosure for the purposes of
Art. 123(2) EPC would have the effect of extending the deemed publication provisions of
Art. 54(3) EPC to matter which was not disclosed in the earlier applications. The board
was aware that decisions of other boards of appeal (see in particular T 323/97) published
since it came to its decision on the claims in this case had expressed a different view on
the allowability of disclaimers; but in the case of Art. 54(3) EPC prior art this board still
considered the view taken above the more appropriate interpretation of the EPC.
2. "Tests" for the assessing allowability of an amendment
III.A.2. "Tests" for the assessing allowability of an amendment

In accordance with established board case law, the relevant question to be decided in
assessing whether an amendment adds subject-matter extending beyond the content of
the application as filed or the parent application as filed is whether the proposed
amendments were directly and unambiguously derivable from the application as filed
or from the parent application as filed. The established case law is reviewed in decisions
such as T 1206/01 and T 731/03.
2.1. Deducibility of amendments from the application as filed directly and
unambiguously
Decision T 194/84 (OJ 1990, 59) related to amendments leading to the generalisation of
the subject-matter of an application or to the omission of a feature (in this instance, the
use in an electrode of a storage battery cell of cellulose fibres in general instead of
natural cellulose fibres). The patentee had taken the view that the amendment was
admissible because the original application could properly be cited against the novelty of
a more generic claim to cellulose fibres. The board took the view that this approach was
based on a misapplication of the novelty test. The test for additional subject-matter
corresponded to the test for novelty only in so far as both required assessment of
whether or not information was directly and unambiguously derivable from that
previously presented in the originally filed application or in a prior document respectively.
An amendment was not allowable if the resulting change in content of the application, in
other words the subject-matter generated by the amendment, was novel when compared
with the content of the original application or, looked at another way, if the said change in
content would be novelty-destroying for a hypothetical future claim when the original

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content would not be. It was important that it was the change in content which was
tested, ie the amended content minus the original content, so that the test was applicable
to amendment by generalisation or omission of a feature.
In T 514/88 (OJ 1992, 570) the board took the view that the two tests in relation to the
question of broadening of claims before grant by abandoning a feature, ie the test for
essentiality (or inessentiality) on the one hand and the novelty test on the other, were not
mutually contradictory but represented the same principle. In both cases the relevant
question was whether or not the amendment was consistent with the original disclosure.
This meant direct and unambiguous derivability from and no contradiction of the totality
of the original disclosure (same reasoning followed in T 527/88 and T 685/90).
T 118/89 took a reserved attitude to the novelty test, but at the same time emphasised
the importance of the above-mentioned key question, in stating that the allowability of
amendments during the grant procedure could be determined without reference to the
state of the art simply by comparing the protection sought on the basis of the current
claims with the disclosure in the application as filed. There was therefore no objective
need to carry out new or modified novelty tests. The test for novelty was similar to that
for allowability of amendments under Art. 123(2) EPC only in so far as the former also
involved a direct comparison, in this case between the claims and the disclosure in a
document or other evidence possibly prejudicial to novelty, ie the state of the art.
It is also clear from T 288/92 and T 187/91 (OJ 1994, 572) that the decisive question
when assessing the admissibility of amendments is whether the amendment can be
directly and unambiguously deduced from the application documents as filed:
In T 288/92 the appellant (applicant) contended that the amendment resulted in a
limitation of the original claim. The board rejected this argument on the grounds that the
expression "subject-matter which extends beyond the content of the application as filed"
in Art. 123(2) EPC prohibited the introduction of any technical information which a skilled
person would not have objectively derived from the application as filed, so that the
examination of the allowability of an amendment according to Art. 123(2) EPC was
directed to the process of "derivation" (see also T 383/88), as distinct from a simple
comparison of the scopes of amended and unamended subject-matters. In the view of
the board this provided a definitive method for deciding the allowability of an
amendment. Any other "test", such as the "novelty test", necessarily posed hypothetical
questions. On the facts of the case the board held that it was not permissible to amend a
generic formula defining a class of chemical compounds by restricting an originally
disclosed generic definition of a substituent to a specific (individual) one which was
arbitrarily selected from chemical entities, such as in the examples, without some
support for such restriction in the general part of the description (see also T 859/94).
In T 187/91 (OJ 1994, 572) the appellant had requested that a patent on a fibre optic
amplifier be granted. The claims in the application as filed referred to "a plurality of pump
light sources", ie two or more light sources; the amended claims referred to "a pump
light source" and, thus, sought protection for a fibre optic amplifier including one or more
light sources. The board conceded that there was clearly a close conceptual correlation
between the assessment of novelty and the assessment of what was an allowable
amendment under Art. 123(2) EPC. It further explained, however, that two
considerations which underlay Art. 123(2) EPC were different from those that underlay
Art. 54 EPC: firstly, a reader of an application published pursuant to Art. 93(1) EPC after

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18 months would be informed of the maximum extent of its subject-matter and therefore
its maximum content some time before the text of the application including the claims
was finalised, having regard to the drawing up of the European search report and the
subsequent examination of the application. Secondly, the relationship between the
claims and content of the European patent application was determined by the idea that,
after appropriate amendment if necessary, the granted claims should give a fair
protection for the inventive subject-matter contained in the application as filed.
The board found that a skilled reader of the application as filed would seriously
contemplate the use of only one light source when carrying out the described invention;
there was nothing in the application as filed or in his common general knowledge which
would cause the skilled person to exclude the possibility of using only one light source.
Additionally, on a careful and analytical reading of the whole content of the application as
filed, there was no reason to regard the use of a plurality of light sources as essential to
the invention in order to achieve its stated aims. On the contrary, the proper
interpretation of the content of the application as filed was that it included as one
possible practical variation of the preferred embodiment of the invention a fibre optic
amplifier having only one light source.
In several decisions, the boards were required to give an opinion on interpreting the term
"clearly and unambiguously derivable". These decisions also show how this criterion is
applied in practice.
T 367/92 gives an example of an amendment rejected under Art. 123(2) EPC because it
contained a specific term which, in the board's view, could not be considered to be
clearly and unambiguously derivable from the originally disclosed generic term. In this
case the issue of admissibility under said article boiled down to the question whether the
generic term "polyester" could be equated with the specific term "polyethylene
terephthalate". The sole document added by the appellant/patent proprietor in support of
this interpretation proved only that polyethylene terephthalate was a polyester (which
was never under discussion), but did not show that "polyester" could be interpreted as
implicitly meaning "polyethylene terephthalate".
In T 823/96, the question whether or not a composition containing zero percent of a UV
absorber was disclosed in the application as originally filed had, in the board's judgment,
to take account of the whole content thereof and could not solely be based on the
isolated parts of the description relied upon by the appellant. The board also observed
that the term "implicit disclosure" should not be construed to mean matter that does not
belong to the content of the technical information provided by a document but may be
rendered obvious on the basis of that content. In the board's judgment, the term "implicit
disclosure" relates solely to matter which is not explicitly mentioned, but is a clear and
unambiguous consequence of what is explicitly mentioned. Therefore, whilst common
general knowledge must be taken into account in deciding what is clearly and
unambiguously implied by the explicit disclosure of a document, the question of what
may be rendered obvious by that disclosure in the light of common general knowledge is
not relevant to the assessment of what is implied by the disclosure of that document. On
the contrary, these two questions must be strictly separated. The board therefore did not
agree with the appellant's submission that the decision under appeal was based on an
underestimation of the common general knowledge.

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In T 917/94 the board decided that the omission of a feature of a claim did not
contravene Art. 123(2) EPC, if this feature was implicitly defined by two other features
and, being therefore redundant, its omission created no subject-matter extending beyond
that of the application as filed.
In deciding on the admissibility of the newly submitted documents of the patent in suit,
the board in T 925/98 noted that according to the respondent, the range 30% to 50%
given in claim 1 infringed Art. 123(2) EPC, since such a range was not disclosed in the
originally filed documents of the patent in suit, which only disclosed a general range of
30% to 60% and a preferred range of 35% to 50%.
The board held, however, that, according to the established case law, in the case of such
a disclosure of both a general and a preferred range, a combination of the preferred
disclosed narrower range and one of the part-ranges lying within the disclosed overall
range on either side of the narrower range was unequivocally derivable from the original
disclosure of the patent in suit and thus supported by it (see T 2/81, OJ 1982, 394;
T 201/83, OJ 1984, 481; cf. also T 53/82, T 571/89, T 656/92, T 522/96 and T 947/96 all
referring to T 2/81). Thus claiming a range from 30-50% did not contravene
Art. 123(2) EPC. In the case in point, moreover, graphs indicated that the claimed range
was in fact the most efficient one.
In T 329/99 the board stated that a clear distinction had to be made between the
questions whether a particular embodiment was disclosed by an application, be it
explicitly or implicitly, or/and whether that embodiment was merely rendered obvious by
the application's disclosure (see T 823/96). A particular technical embodiment might be
rendered obvious on the basis of the content of an application as filed without, however,
belonging to its explicit or implicit disclosure and therefore without serving as a valid
basis for amendments complying with the requirements of Art. 123(2) EPC.
In the board's view in T 686/99 the application as filed disclosed in an undifferentiated
way different categories of base oils without any pointer regarding the selection of one
particular category thereof. Priority was not given to ester oils from the original host of
equivalent base oils.
Therefore the board came to the conclusion that combining in claim 1 a base oil
mandatorily comprising ester oils with the hydrofluorocarbons listed in claim 1 resulted
from a multiple selection within two lists of alternative features, namely of ester oils from
the list of base oils and of hydrofluorocarbons from the list of refrigerants, thereby
generating a fresh particular combination. The content of the application as filed was not
to be considered to be a reservoir from which individual features pertaining to separate
sections could be combined in order to artificially create a particular combination. In the
absence of any pointer to that particular combination, this combined selection of features
did not, for the person skilled in the art, emerge clearly and unambiguously from the
content of the application as filed.
In T 962/98 the appellant argued that the claimed subject-matter derived from Example
1D and the content of the application as originally filed. In particular, tests carried out on
the composition of Example 1D showed that the "four surfactants" could be applied in a
more general context, present claim 1 being, furthermore, consistent with the description.
The board did not rule out the possibility that there might be situations where some
characteristics taken from a working example could be combined with other features
disclosed in a more general context without necessarily creating an objectionable

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intermediate generalisation. However, under Art. 123(2) EPC, such an intermediate

generalisation was admissible only if the skilled person could recognise without any
doubt from the application as filed that those characteristics were not closely related to
the other characteristics of the working example and applied directly and unambiguously
to the more general context. In other words, in order to be acceptable, this intermediate
generalisation had to be the result of unambiguous information that a skilled person
would draw from a review of the example and the content of the application as filed.
In the present case it was, in the board's view, not possible to conclude without any
doubt whether or not those four surfactants either could be singled out of the
composition of Example 1D and used with other carriers or were only adapted to the
specific composition disclosed in Example 1D. The skilled reader was given no
guidance, either in Example 1D itself or in the more general description as to which
components of Example 1D should be retained unchanged, and which could be varied at
will. This situation of doubt was in contradiction with the requirement that an amendment
be directly and unambiguously derivable from the application as filed. Nor could this
conclusion be rebutted by the tests carried out on the composition of Example 1D.
Contrary to the appellant's submissions, in order to assess whether an amendment
complied with the requirements of Art. 123(2) EPC, the question was neither whether or
not a skilled person could design other compositions in the light of the directions given by
the tests nor whether or not the amended subject-matter was consistent with the
description.
2.2. The "is it essential" test
Another test developed by the boards of appeal for the allowability of an amendment,
having regard to Art. 123(2) EPC concerns the deletion of a feature. In T 66/85
(OJ 1989, 167) it was pointed out that if a technical feature was deleted from a claim in
order not to exclude from protection certain embodiments of the invention, the
broadening of the claim did not contravene Art. 123(2) EPC as long as there was a basis
for a claim lacking this feature in the application as originally filed. It was immaterial
whether or not the feature in question was relevant to the inventive concept of the
claimed subject-matter (see also T 228/98).
T 133/85 (OJ 1988, 441) concerned a case where a feature was described as an
essential feature of the invention but was not contained in the claim. The claim was
therefore not supported by the description (Art. 84 EPC). An amendment to the
description to provide support for the claim was, however, not allowable under
Art. 123(2) EPC, because the amended description would contain subject-matter which
extended beyond the content of the application as filed - namely information that such
feature was not an essential feature of the invention.
On the other hand, in T 260/85 (OJ 1989, 105) it was stated that it was not permissible to
delete from an independent claim a feature which the application as originally filed
consistently presented as being an essential feature of the invention, since this would
constitute a breach of Art. 123(2) EPC. T 496/90, T 189/94, T 628/91 and, more recently,
regarding deletion of the feature "substantially pure", T 728/98 (OJ 2001, 319), confirmed
this case law. In T 628/91, however, the disclosure was such that a structural feature
could be replaced by a functional one, firstly because it was not disclosed as essential,
secondly because its function was described.

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Article 123(2) EPC

In T 415/91, the board refused to allow the deletion of the feature "three-phase"
alternating current. It argued that the low and high AC voltages were consistently
referred to in the description and claims as being three-phase: the expression "three-
phase" appeared about 200 times in the application as originally filed and no other
number of phases was mentioned at all. The skilled person reading the application as
originally filed would not necessarily have regarded the numerous references to "three-
phase" as being purely by way of examples. Although it was possible that upon
reflection, and using his imagination, it might occur to him that it was not essential to use
three phases, this would be his own idea, resulting from his own thinking. It was not part
of the content of the application as originally filed. In T 236/95 the board examined
whether, considering the problem derivable from the original description, three deleted
features were represented as essential features of the invention. If the problem could not
be solved without the features concerned, they could not be considered unimportant.
That the original disclosure is the determining factor is also clear from T 331/87
(OJ 1991, 22), in which deletion of a non-essential feature was allowed: the replacement
or removal of a feature from a claim may not be in breach of Art. 123(2) EPC if the skilled
person would directly and unambiguously recognise that (1) the feature was not
explained as essential in the disclosure, (2) it was not, as such, indispensable for the
function of the invention in the light of the technical problem it served to solve, and (3)
the replacement or removal required no real modification of other features to
compensate for the change (see also T 60/90, Chapter III.A.1.5.4).
Applying the above mentioned criteria in T 396/95, the board considered that whereas it
was not expressly mentioned that the deleted feature ("carbonation") was essential for
the invention this followed implicitly from the whole presentation of the invention. This
feature was seen by the board to be indispensable for the function of the invention in the
light of the technical problem it served to solve. Indeed the skilled person would not have
regarded the carbonation feature as indispensable for the function of the invention, if the
invention concerned the obtaining of chilled beverages and the problem underlying the
invention consisted only of how to improve the cooling of the water in order to provide
cooled beverages. But in the present case the application as originally filed related to "a
water carbonator system" and the problem underlying the invention also comprised the
improvement of gas/liquid mixing. In this case, the skilled person would regard the
carbonation feature as indispensable for solving the problem underlying the invention.
In T 374/93 the opponent argued before the board that the amount of polymer to be
added to the suspension as defined in claim 1 of the original application was an essential
feature, and that the deletion of this feature was not allowable under Art. 123(2) EPC.
The board did not agree, holding that the original application as a whole unambiguously
taught that the amount of cationic polymer to be added to the suspension depended on
various parameters and could easily be experimentally determined. In the board's
judgment, a skilled person would therefore interpret the relevant passage, in the light of
the original specification as a whole, as an instruction to facilitate the finding of the
optimum amount of cationic polymer, or as an advantageous embodiment of the
originally disclosed invention. In view of these considerations, the deleted feature of the
originally filed claim 1, suggesting the need to raise in steps the amount of polymer to be
added if the amount of cationic binder were reduced from a value just above 0.5% to a
value just below this value, appeared to be inconsistent with the teaching of the original
application. In any case, in the board's view, the skilled reader would not immediately

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and unambiguously recognise from the passage containing several relative terms and
expressions such as "in some instances", "eg", "normally" and "usually", that the feature
as deleted from the original claim 1 was a mandatory feature.
In T 784/97 the patent proprietor alleged that a prior art document would have made the
skilled person aware that the disputed feature was not essential. The board held that
whether or not a feature of an independent claim had to be seen as "essential" could not
be a question of the prior art disclosure. Rather, what had to be decided was what a
skilled person was taught by the originally filed documents. In the present case, a skilled
person having considered the originally filed documents was aware that the particle size
was part of the alleged invention, so that this feature could not be omitted from an
independent claim at a later stage without contravening the requirements of Art. 123(2)
and Art. 100(c) EPC.
Any attempt to interpret Art. 123(2) EPC such that the introduction into a claim of
features previously described as non-essential would not be permissible, must fail. The
board based this statement in T 583/93 (OJ 1996, 496) on the consideration that
the EPC contained no requirement that forbade the redefinition of an invention provided
that Art. 123(2) and (3) EPC were complied with. Such a redefinition was often
necessary in order to take into account prior art not known to the applicant at the priority
date. It was therefore possible that features described as optional at the priority date
later became essential in the sense that they were necessary to delimit the invention
from the prior art. The introduction of such features was permissible provided that, first,
the application as originally filed contained an adequate basis for such limitations and,
second, the resulting combination of features was still in line with the teaching of the
application as originally filed.
2.3. The "novelty test"
Recent case law no longer refers to the "novelty test". The recent decision T 60/03 does,
however, include a passing reference.
T 133/85 (OJ 1988, 441) pointed out that care was necessary when applying the law
relating to novelty to questions which arose in relation to Art. 123(2) EPC. In T 177/86
the novelty test was described as "not very useful" for examining the admissibility of
broadening a claim.
The following decisions provide an overview of the previous practice of the boards of
appeal:
In T 201/83 (OJ 1984, 481) it was stated that the test for compliance with
Art. 123(2) EPC was basically a novelty test, ie no new subject-matter may be generated
by the amendment. This was approved in T 136/88. T 17/86 (OJ 1989, 297, Corr. 415)
added that novelty could be found in a limitation, the addition to a claim of a further
feature, or even in the absence of one of the elements of a device. The novelty test was
incorporated in the Guidelines C-VI, 5.3.1 (June 2005 version).
In T 433/01 the board's view was that the second auxiliary request would in all probability
also have failed to meet the requirements of Art. 123(2) EPC because it did not satisfy
the criterion derived from T 201/83 (OJ 1984, 481) that for a generalisation based on a
value described in an example to be admissible, that value had to be manifestly

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Article 123(3) EPC

independent of the other features of the example in terms of the relevant technical
properties.
In T 416/86 (OJ 1989, 309) it was held that the fact that a technical means (in this case
an aperture of a special design) was known did not take away the novelty of its
equivalents (in this case, apertures of a different design producing the same effect as the
former) even if the equivalents were themselves well known. It followed that the
equivalents of a disclosed technical means had to be considered new and therefore not
disclosed if they were not mentioned in the original documents. In accordance with these
principles, the board decided that the replacement of a specific feature disclosed in the
invention by a broad general statement was to be considered as an inadmissible
amendment under Art. 123(2) EPC when this general statement implicitly introduced for
the first time specific features other than that originally disclosed. Therefore, the
substitution in the claim of a structurally defined element of that claim by its known
function (or disclosed function) was considered contrary to Art. 123(2) EPC.
However, in T 873/94 (OJ 1997, 456) the board pointed out that where a proposal for
amending an application involved the addition of a limiting feature to a claim, applying a
"novelty test" was not appropriate for determining whether or not the amendment
complied with Art. 123(2) EPC. Following G 1/93 (OJ 1994, 541), the board pointed out
that the underlying idea of Art. 123(2) EPC was clearly that an applicant should not be
allowed to improve his position by adding subject-matter not disclosed in the application
as filed, which would give him an unwarranted advantage and could be damaging to the
legal security of third parties relying on the content of the original application. In the light
of these considerations the addition to a claim before grant of an undisclosed limiting
feature might or might not violate Art. 123(2) EPC, depending on the circumstances.
B. Article 123(3) EPC
Article 123(3) EPC

Art. 123(3) EPC prohibits amendments to granted claims during opposition proceedings
in such a way as to extend the protection conferred by a European patent.
1. General issues
III.B.1. General issues

In T 325/95 the patent proprietor amended a granted claim by introducing limiting

features disclosed only in the description. The appellant (opponent) argued that claim 1
as granted did not actually afford any scope of protection whatsoever, because the claim
was invalid, its subject-matter lacking an inventive step. Since the features added to
claim 1 were not set out in any of the dependent claims as granted, the subject-matter
now covered by amended claim 1 was not covered by any of the claims. Therefore, by
introducing features disclosed only in the description the scope of the claims had been
extended within the meaning of Art. 123(3) EPC.
The board pointed out that this argumentation was based on the assumption that the
extent of protection referred to in Art. 123(3) EPC would depend not only on the actual
wording of the claims, but also on their validity in view of the prior art. This assumption
however was not supported by the explicit statement in Art. 69 EPC that "the extent of
the protection conferred by a European patent ... shall be determined by the terms of the
claims".
Appellant's submissions in effect also implied that claims amended in opposition
proceedings should always have a counterpart in the set of claims as granted. This was

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not in line with the consistent case law of the EPO either. Attention was drawn for
instance to decision G 2/88 (OJ 1990, 93), which ruled that replacement of a granted
claim to a compound or composition by a claim directed to a new use of the compound
or composition was admissible under Art. 123(3) EPC.
In T 1149/97 (OJ 2000, 259) the board decided that, without opposition, issue of a
decision to grant a European patent normally constituted a cut-off point for making
amendments to the application documents in the European proceedings. If an opposition
has been filed, cut-off effects due to the grant of a patent might be seen in the
restrictions which R. 57a, R. 87 and Art. 123(3) EPC imposed on further amendment of
the patent specification. Although Art. 123(3) EPC addressed only the claims of the
European patent, amendments to the description and the drawings might also extend the
protection conferred in accordance with Art. 69(1) EPC.
If, in view of Art. 84 and Art. 69 EPC, the application documents were adapted to
amended claims before grant, thereby deleting part of the subject-matter originally
disclosed in order to avoid inconsistencies in the patent specification, as a rule subject-
matter deleted for this reason could not be reinserted either into the patent specification
or into the claims as granted without infringing Art. 123(3) EPC. An analogous finding
applied to subject-matter retained in the patent specification during such adaptation for
reasons of comprehensibility, but indicated as not relating to the claimed invention.
Dealing with the allowability of amendments in T 81/03, the board detailed why it
considered that the facts of the case dealt with in T 1149/97 (OJ 2000, 259) differed from
those of the case in point, contrary to the opponents' allegation of a substantive cut-off
effect of the grant of a European patent. In reply to the opponents' second line of
argument it further stressed that Art. 69 EPC and its Protocol were to be applied in
proceedings before the EPO whenever it was necessary to determine the protection
conferred (see for example G 2/88, OJ 1990, 93). Equivalence considerations obviously
often played a prominent role in national infringement proceedings, and although
equivalents were not mentioned in the EPC at present, they would be in the Protocol on
Art. 69 in the revised Convention, EPC 2000 (Special edition No. 1 of OJ 2003, 73).
Nevertheless, in spite of the indisputable importance of the concept of equivalence for
the determination of the scope of protection, if the opponents had been right in their
allegations, it would never be possible to amend a claim during opposition proceedings -
although this was provided for in the EPC - since the addition of any new feature to some
extent necessarily reduced the weight of the features in the claim as granted. This was
particularly true when the subject-matter of the granted claim was not new, the situation
in which amendments were most called for. For that reason the argument could not be
accepted. The board thus found that the general, abstract concern that the addition of a
feature to a claim after grant led to an extended scope of protection because the
resulting combination of features might give rise to a different evaluation of equivalents in
infringement proceedings was not in itself a sufficient reason for not allowing the addition
of limiting features under Art. 123(3) EPC.
The board agreed with the patent proprietor that there was no basis in the EPC for the
idea that amendments after grant had to be based on subject-matter contained in the
patent specification. The wording of Art. 123(2) EPC was unambiguous. It was
Art. 123(3) EPC which was intended to protect the interests of third parties, as pointed
out by the Enlarged Board in G 1/93 (OJ 1994, 541).

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Article 123(3) EPC

In the board's view it followed that amendments to a European patent could be based on
the whole reservoir of features originally disclosed in the corresponding application,
provided that Art. 123(3) EPC was not infringed by such amendments, due account
being taken of the provisions of Art. 69(1) EPC.
In T 241/02 in the board's view neither the fact that the appellant (proprietor) approved
the text of the patent in suit nor considerations with respect to legal certainty added to
the requirements relating to amendments in R. 57a or Art. 123(2) EPC. The grant of a
patent therefore did not necessarily constitute a final and automatic cut-off point ruling
out any reinsertion of deleted subject-matter (in the case at issue, reinsertion of portions
of the description relating to the process claimed). The said reinsertion complied in this
case with both R. 57a and Art. 123(2) EPC. It remained therefore for the board to
examine whether the requested reinsertion satisfied Art. 123(3) EPC. The opposition
division had concluded on the basis of T 1149/97 (OJ 2000, 259) that reinsertion would
not be possible, since it would contravene Art. 123(3) EPC, but without referring to any
specific parts or making any connection between parts to be reinstated and any concrete
conclusion as to how the product claims would be extended in contravention of
Art. 123(3) EPC. The board decided that, by contrast with the situation in T 1149/97, in
the case in point the appellant had deleted too much of the description, overlooking the
relevance of parts of it to these remaining claims. According to the board, T 1149/97 did
not lay down a strict rule. It required that an examination of a request for reinsertion be
carried out with a view to establishing whether or not Art. 123(3) EPC, on the facts of
each case, was indeed infringed. Since the requested reinsertion had to be examined in
detail, in the case at issue the opposition division's decision was not sufficient to reject
the reinsertion as a whole. Since at that point it was uncertain which parts of the
requested reinsertion still might violate one or more requirements of the EPC and the
further patentability criteria had not yet been examined in the opposition proceedings, the
board decided to remit the case for further prosecution.
In T 666/97 the product claim of the auxiliary request no longer included a process
feature which was included in the product claim as granted. In the board's view it
followed from the fact that the subject-matter for which protection was claimed in the
auxiliary request was a product that it could only be characterised by features manifest
in/on the product itself. That meant that manipulations taking place during product
manufacture but not resulting in product features were of no relevance to the definition of
the claimed product and hence to the scope of protection of the claim. That was an
unavoidable implication of the established case law of the boards of appeal, under which
the subject-matter of a product-by-process claim derives its novelty not from new
procedural steps but purely from structural features (see T 205/83, OJ 1985, 363).
Thus, to resolve the issue of compliance with the requirements of Art. 123(3) EPC, what
had to be decided was whether the omitted product-by-process feature was technically
significant for the definition of the claimed product, ie whether it was a product feature.
The board found that in the present case the omitted feature was not a product feature.
Thus the claim had not been extended within the meaning of Art. 123(3) EPC.
The board in T 1052/01 took the view that deleting examples given in claim 1 as granted
(here "valve, restrictor, etc.") for a generalised feature (here "hydraulic functional unit")
did not extend the protection conferred, as these examples were embraced by the
generalised feature which determined the extent of the protection conferred.

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 III.B.2. Generalisation of a feature

In accordance with established board case law the legal notion of "protection conferred"
in Art. 123(3) EPC refers to the totality of protection established by the claims as granted
and not necessarily to the scope of protection within the wording of each single claim as
granted. Under Art. 123(3) EPC, the patentee is generally allowed to redraft, amend or
delete the features of some or all claims and is not bound to specific terms used in the
claims as granted as long as the new wording of the claims does not extend the scope of
protection conferred as a whole by the patent as granted (and does not violate the
requirements under Art. 123(2) EPC). Thus in the board's view in T 579/01, in order to
assess any amendment under Art. 123(3) EPC after grant, it was necessary to decide
whether or not the totality of the claims before amendment in comparison with the totality
of the claims after amendment extended the protection conferred.
In the case in point, independent claim 1 and dependent claims 2 to 6 of the new main
request were directed to a "vegetable plant", while the respective claims as granted were
directed to a "cell in a vegetable plant". The board said that in the understanding of the
skilled person the term "a cell of a plant", not being qualified as "isolated", included
various physiological and morphological states of such a cell, including both
differentiated and undifferentiated states. The cells in the different states in which they
existed in a (developing) plant fell within the protection conferred by the claim to the "cell
of a vegetable plant" as granted, and the protection conferred by such claim also
extended to such cells in a plant. Furthermore, the biological notion "cells of a plant"
encompassed such differentiated cells which were morphologically and functionally
organised to constitute a plant. That implied that morphologically and functionally
organised aggregates of plant cells, eg plants, likewise fell within the protection
conferred by the granted claim to "a cell of a plant".
The board also decided that any plant as subject-matter of claim 1 of the new main
request fell within the protection conferred by a claim to "a cell of a plant", and finally that
the "plant" now claimed was characterised by the same genetic features as recited in the
granted claim to "a cell of a plant". Also taking account of legislative developments in
Europe in respect of the legal protection of biotechnological inventions (ie Articles 8.1
and 9 of Directive 98/44/EC), the board concluded that the amendment of the "cell of a
plant" claim to a "plant" claim was not contrary to the requirements of Art. 123(3) EPC.
2. Generalisation of a feature
III.B.2. Generalisation of a feature

The board of appeal held in its decision T 371/88 (OJ 1992, 157) that Art. 123(3) EPC
was not contravened if a restrictive term in a granted claim which in its strict literal sense
did not embrace an embodiment set out in the description was replaced by a less
restrictive term. The restrictive term should not, however, be so clear in its technical
meaning in the given context that it could be used to determine the extent of protection
without interpretation by reference to the description and drawings. Moreover, it had to
be quite clear from the description and drawings and also from the examination
procedure up to grant that the further embodiment belonged to the invention and that it
was never intended to be excluded from the protection conferred by the patent.
In T 795/95 the board did not share the appellant's view that deleting the feature
"preferably polyvinyl or polyethylene" from the preamble of granted Claim 1 extended the
protection conferred. The formulation "preferably polyvinyl or polyethylene" had no
bearing on the scope of protection, which was determined by the more general term
"plastic" and not the specific preferred substances polyvinyl or polyethylene. Deleting a

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Article 123(3) EPC

"preferred" feature did not extend the scope of protection if such feature was
encompassed by an earlier and general one (in this case, "plastic") which determined the
protection conferred.
3. Transposition of features
III.B.3. Transposition of features

In T 16/86 the board pointed out that it was the subject-matter of the claim as a whole
which embodied the invention. Therefore, in so far as a change in the position of a
feature inside a claim did not alter its meaning, the extent of protection conferred
remained unchanged and such an amendment contravened neither Art. 123(2) nor
Art. 123(3) EPC.
In T 160/83 the board had no objection to the appellants' amendment of the
characterising clause so as to include a feature which was previously in the preamble but
not shown in the document representing the closest state of the art.
In T 96/89 the board of appeal again allowed the transposition of features from the
preamble of a claim to its characterising portion. This did not alter the subject-matter
claimed, and thus did not extend the scope of protection. Nor was it in breach of
Art. 123(3) EPC if terms were first generalised in the preamble, then trimmed back in the
characterising portion to the subject-matter originally disclosed. R. 29(1) EPC required
that claims be delimited against the nearest prior art; before the preamble to an
independent claim could be drafted at all it was often necessary to select from two
restrictive terms (the subject-matter claimed and the closest prior art) a general term
covering both.
In T 49/89 the subject-matter of granted claim 1 had been limited during opposition
proceedings to a special embodiment according to granted dependent claim 2. The
board of appeal held that the protection had not been extended because new claim 1
indicated all the features in granted claim 1 and the newly incorporated features were
merely elaborations on those contained in granted claim 1. The extent of protection
conferred by a European patent was determined by the content of all claims, not that of
one or several only. Thus, for example, even though an independent claim lacked
novelty a claim dependent on it could still be valid and the patent proprietor could restrict
himself to that claim. It was, moreover, irrelevant when determining the extent of
protection whether features were referred to in the prior art portion or characterising
portion. The transposition of information from one to the other did not therefore
contravene Art. 123(3) EPC.
4. Change of claim category
III.B.4. Change of claim category

Enlarged Board decision G 2/88 (OJ 1990, 93) related to a change of claim category in
opposition proceedings, and in particular to the change from a product claim to a use
claim. It stated that a change of category of granted claims in opposition proceedings
was not open to objection under Art. 123(3) EPC, if it did not result in extension of the
protection conferred by the claims as a whole, when they were interpreted in accordance
with Art. 69 EPC and its Protocol. In this context, the national laws of the contracting
states relating to infringement should not be considered, for there was a clear distinction
between the protection which was conferred and the rights which were conferred by a
European patent. The protection conferred by a patent was determined by the terms of
the claims (Art. 69(1) EPC), and in particular by the categories of such claims and their
technical features. In contrast, the rights conferred on the proprietor of a European

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patent (Art. 64(1) EPC) were the legal rights which the law of a designated contracting
state might confer upon the proprietor. In other words, in general terms, determination of
the "extent of the protection conferred" by a patent was a determination of what was
protected, in terms of category plus technical features; whereas the "rights conferred" by
a patent were related to how such subject-matter was protected.
When deciding upon the allowability of an amendment involving a change of category,
the considerations were, in principle, the same as when deciding upon the allowability of
any other proposed amendment under Art. 123(3) EPC.
An amendment of granted claims directed to "a compound" and to "a composition
including such compound", so that the amended claims were directed to "the use of that
compound in a composition" for a particular purpose, was not open to objection under
Art. 123(3) EPC. For it was generally accepted as a principle underlying the EPC that a
patent which claimed a physical entity per se, conferred absolute protection upon such
physical entity, for all uses of such physical entity, whether known or unknown. It
followed that if it could be shown that such physical entity (eg a compound) was already
part of the state of the art, then a claim to the physical entity per se lacked novelty. It also
followed that a claim to a particular use of a compound was in effect a claim to the
physical entity (the compound) only when it was being used in the course of the
particular physical activity (the use), this being an additional technical feature of the
claim. Such a claim therefore conferred less protection than a claim to the physical entity
per se.
In T 912/91 the appellant/patentee claimed the use of graphite for obtaining a sintered
composite ceramic body having certain characteristics. The board held that the change
of claim category from the granted product claims for composite bodies to these use
claims did not broaden the scope of protection of the granted claims. Even if it were
considered that the use claim was notionally equivalent to a claim to a process including
the step of using the graphite in the sintered body and that the effect of Art. 64(2) EPC
was to confer protection on the product resulting from this process as well, this would not
represent an extension of protection within the meaning of Art. 123(3) EPC, since the
sintered composite body was defined in the use claim in a more restricted way than the
composite body of the granted claim (narrower range of the graphite content, etc.).
In T 134/95 a patent had been granted in respect of a "container for medical use". The
claimed apparatus was designed to permit the separate storage and the mixing, at the
time of use, of three predefined and different compounds. The protection conferred
therefore related to the apparatus and, necessarily, to its use at least for the purposes of
storage and mixing. After amendment, the claim became a use claim, covering only the
use of the container and no longer protecting the apparatus as such. Having pointed out
that inventions of this kind were designed with a particular object in mind and could not
normally be used for other purposes, the board noted that in this case, the change of
category, replacing the granted claim with a claim for the use of the container, had the
effect of limiting the scope of protection. The amendment was therefore allowable.
Contrary to the opponents' allegation that a "drip solution" was obtained, the board
concluded that the use of the container did not lead to the manufacture of a product; on
the contrary, its purpose was to carry out two successive handling operations (the
separate and sterile storage of each of the three solutions, and then the sterile
compound mixing of these solutions at the time when they were administered) as

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explicitly stated in the granted claim (in respect of compartments for "separate storage
and subsequent mixing, immediately before use" of the three solutions). The intended
purpose was to conserve each of the three solutions during the storage phase and to mix
them immediately before use, avoiding any premature change of the mixture. The two
stages of the process therefore in no way had the effect of modifying the starting
solutions with a view to obtaining or manufacturing a product. This use therefore fell into
the category "use of a physical entity to obtain an effect or result", and on this basis the
change of category was allowable.
In T 279/93 the board found that a claim to the use of a compound A in a process for
preparing compound B had no broader scope than a claim to a process for preparing
compound B from compound A. It had already been stated in G 2/88 (point 2.5 of the
Reasons) that the technical features of a claim to an activity were the physical steps
which defined such activity. In this case, the board considered that process claim 1 as
filed, process claim 1 as granted and use claim 1 filed on appeal all related to the same
physical steps, and that the claims were therefore of the same scope. On this view, the
scope of protection conferred by this use claim was not broader than that conferred by
the granted process claim (see also T 619/88).
A change from a product claim to a claim for the use of the product was also allowed in
T 37/90, T 75/90, T 938/90 and T 879/91.
In T 420/86 a change from a claim for a process for treating soil, in which X was used, to
a claim for the use of X for treating soil was allowed. In T 98/85 on the other hand, a
change from a "process for the preparation of a ... composition" to the "use of this ...
composition as a ..." was seen as a breach of Art. 123(3) EPC.
In T 276/96 the board decided in view of G 5/83 (OJ 1985, 64) that the change of claim
of the type "Method of fabricating item A using item B providing effect C" to a claim of the
type "Use of item B in a method of fabricating item A to provide effect C" did not extend
the protection conferred, since with both formulations the same activity would be
forbidden to competitors.
A change from a product claim to a claim for a process for manufacturing the product is
generally seen as unproblematical (T 54/90, T 191/90, T 762/90, T 153/91 and
T 601/92). In T 423/89 the change in category from a product-by-process claim to a
manufacturing process claim was admissible. In T 402/89, however, the board pointed
out, in passing, certain difficulties in interpreting the term "protection conferred".
In T 5/90 the patent was granted with a claim in the form "a product having product
features x and product-by-process features characteristic of process steps y". This claim,
however, turned out not to be novel. The patentee finally claimed "a process of making a
product having product features x by using process steps y and process steps z".
The board interpreted such a claim as covering the process steps only in so far as a
product having product features x actually resulted. This was called a process-limited-by-
product claim by the board. The direct product of this process would also be protected
under the provisions of Art. 64(2) EPC, but such product inevitably fell within the scope
of the product claim originally granted. The board regarded a process-limited-by-product
claim of this type as clearly complying with the requirements of Art. 123(3) EPC because
it would only be infringed if the product fell within the originally granted product claim and
in addition the particular form of manufacture using process steps z was used.

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In T 20/94 the patent in suit in the form as granted exclusively comprised process claims
for preparing a product. In the form as amended it comprised a product claim relating to
the product per se. The board stated that the protection conferred by a claim directed to
a process for preparing a product covered that process. Pursuant to Art. 64(2) EPC, a
product directly obtained by that process was also protected, but it was not protected
when obtained by any other process. However, the protection conferred by a claim
directed to a product per se was absolute upon that product. The product claim thus
conferred protection on that product regardless of the process by which it was prepared.
The appellant attempted to overcome this objection by formulating the product claim as
amended in the form of a product-by-process claim using the term "directly obtained".
The board did not agree with this line of argument, stating that a product-by-process
claim was interpreted as a claim directed to the product per se, since the only purpose of
referring to a process for its preparation was to define the subject-matter for which
protection was sought, which was a product. Whether or not the term "directly obtained"
or any other term, such as "obtained" or "obtainable", was used in a product-by-process
claim, the category of that claim did not change. Thus amended claim 1 in the case in
question contravened Art. 123(3) EPC.
In T 426/89 (OJ 1992, 172) the claim related to a process for operating a pacemaker. An
actual operating method for a pacemaker for arresting a tachycardia would necessarily
be a method for treating the human (or animal) body by therapy using a pacemaker, and
would not be patentable. However, the patentee maintained that the claim referred to the
steps in a technical method which did not define a method of treatment but rather, in
functional terms, the structural features of a pacemaker. The board agreed. If correctly
interpreted in accordance with Art. 69(1), second sentence, EPC claim 1 did not define a
method but rather an apparatus (pacemaker) in terms of the functions of its components.
Since the reference to a method in the designation of the subject-matter of claim 1 did
not make this explicit, the board regarded claim 1 as not "clear" within the meaning of
Art. 84 EPC. The differences between the patent according to the auxiliary request and
the granted version were that in claim 1 the title of the invention, "Method for the
operation of a pacemaker", had been replaced by "Pacemaker". The board pointed out
that the amendment of claim 1, including its change of category, did not contravene
Art. 123(3) EPC. Claim 1 as granted was already a product claim containing a functional
definition of a pacemaker. So the seeming change of category did not alter the content of
the claim but simply served to clarify it (see also T 378/86, OJ 1988, 386).
In T 82/93 (OJ 1996, 274) the granted patent contained a claim 1 relating to a method of
operating a pacer. The board found that this claim defined a method for treatment of the
human body by therapy and therefore was not allowable under Art. 52(4) EPC. It held
that the device claim of the auxiliary request was not allowable under Art. 123(3) EPC.
The subject-matter protected by the granted claim was a pacer, when in use; in
contrast, the claim of the auxiliary request only included technical features which defined
physical characteristics of the pacer device itself. The board explained that in general
terms, if a patent as granted only included claims defining the operation of a device and
therefore containing both "device features" and "method features", and the proposals to
amend the patent during opposition proceedings included claims which only contained
"device features", the proposed amendment was not allowable having regard to
Art. 123(3) EPC, because the patent as granted conferred protection upon the device
only when it was in use so as to carry out the method, whereas the proposed amended

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patent would confer protection upon the device whether or not it was in use, and would
therefore confer additional protection compared to the patent as granted.
In contrast to the findings in T 426/89 mentioned above, in this case the board held that
claim 1 as granted was clear, defined the use of a device to carry out a method of
treatment of the human body by therapy and was not a pure "device claim" since it also
included method steps. Thus, under such circumstances, Art. 52(4) and Art. 123(3) EPC
might operate in combination as an "inescapable trap".
In T 1206/01 the board clearly pointed out that according to the established case law of
the boards of appeal a product claim conferred protection on the claimed product,
regardless of the process or method by which it was prepared. Therefore a change of
category from a granted product claim to a process claim restricted to one or more
methods of preparing the product did not extend the protection thereby conferred.
C. Relationship between Article 123(2) and Article 123(3) EPC
Relationship between Article 123(2) and Article 123(3) EPC

1. Cases of conflict
III.C.1. Cases of conflict

In T 384/91 (OJ 1994, 169) the question was referred to the Enlarged Board whether,
given the requirements of Art. 123(2) and (3) EPC, a patent could be maintained in
opposition proceedings if its subject-matter extended beyond the content of the
application as filed, whilst at the same time the added feature limited its scope of
protection. The conflict here was that the "limiting extension" had to be deleted as a
breach of Art. 123(2) EPC, but to do so would broaden the scope of the patent and thus
contravene Art. 123(3) EPC (see G 1/93, OJ 1994, 541).
This problem was extensively discussed for the first time in T 231/89 (OJ 1993, 13). In
this decision, an additional, limiting feature was added to the claim during grant
proceedings. The opposition division revoked the patent on the grounds that the feature
had not been disclosed in the application as originally filed but its deletion would
contravene Art. 123(3) EPC. The board of appeal held it to be inappropriate to take
paragraphs 2 and 3 of Art. 123 EPC as independent of each other while applying them in
conjunction to revoke the patent. This "paradoxical result" could be avoided by
interpreting the two paragraphs in terms of their mutual relationship, where one was
predominant, ie independent, and the other subordinate, ie dependent:
(a) If Art. 123(2) EPC was predominant, the added feature would have to be deleted in
spite of Art. 123(3) EPC;
(b) If Art. 123(3) EPC was to be taken as independent, the added feature could remain.
If the limiting feature was irrelevant for novelty and inventive step, it seemed reasonable
to opt for alternative (b); protection of third parties was then crucial. If, on the other hand
- as was the case here - the added feature had no technical significance, then alternative
(a) seemed appropriate and, thus, the deletion of the feature justified.
In T 10/91 a neutral feature of no particular value for the skilled person was added during
the examination proceedings. The feature had no technical significance. It could
therefore stay in the claim, but could not be taken as delimiting when examining for
novelty and inventive step.

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 III.C.2. Decision G 1/93 of the Enlarged Board of Appeal

In T 938/90, however, the addition was technically significant and it had to be taken into
account in the examination for novelty and inventive step. The board therefore declined
to apply the principles developed in T 231/89 and dismissed the patent proprietor's
appeal against the revocation of the patent (see T 493/93).
2. Decision G 1/93 of the Enlarged Board of Appeal
III.C.2. Decision G 1/93 of the Enlarged Board of Appeal

In G 1/93 (OJ 1994, 541) the Enlarged Board of Appeal pronounced on the question of
"limiting extensions" as follows:
If a European patent as granted contained subject-matter which extended beyond the
content of the application as filed within the meaning of Art. 123(2) EPC and which also
limited the scope of protection conferred by the patent, such patent could not be
maintained in opposition proceedings unamended, because the ground for opposition
under Art. 100(c) EPC prejudiced the maintenance of the patent. Nor could it be
amended by deleting such limiting subject-matter from the claims, because such
amendment would extend the protection conferred, which was prohibited by
Art. 123(3) EPC. Therefore, in principle, if the European patent as granted contained a
"limiting extension", it had to be revoked. Paragraphs 2 and 3 of Art. 123 EPC were
mutually independent of each other. In this sense, it had to be admitted that
Art. 123(2) EPC in combination with Art. 123(3) EPC could operate rather harshly
against an applicant, who ran the risk of being caught in an inescapable trap and losing
everything by amending his application, even if the amendment was limiting the scope of
protection. However, as submitted by the opponent, this hardship was not per se a
sufficient justification for not applying Art. 123(2) EPC as it stood in order to duly protect
the interests of the public. Nor did it, in principle, matter, that such amendment had been
approved by the examining division. The ultimate responsibility for any amendment of a
patent application (or a patent) always remained that of the applicant (or the patentee).
The Enlarged Board, however, also mentioned three other instances:
- If the added feature could be replaced by another feature disclosed in the application
as filed without breaching Art. 123(3) EPC, the patent could be maintained (in amended
form). This might turn out to be a rare case in practice (see below T 166/90).
- An added undisclosed feature without any technical meaning could be deleted from a
claim without violating Art. 123(3) EPC.
- An added feature, which did not provide a technical contribution to the subject-matter of
the claimed invention but merely limited the protection conferred by the patent as
granted by excluding protection for part of the subject-matter of the claimed invention as
covered by the application as filed, was not considered as subject-matter which
extended beyond the content of the application as filed within the meaning of
Art. 123(2) EPC. In this case also the patent could be maintained.
Board of appeal 3.4.02 has recently noted in T 335/03 that, according to G 1/93, there is
no basis in the EPC for providing a claim with a footnote to the following effect: "This
feature is the subject of an inadmissible extension. No rights may be derived from this
feature"; in other words, in cases of conflict between Art. 123(2) and Art. 123(3) EPC the
footnote solution is inadmissible.

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3. Resolving the conflict in exceptional cases

III.C.3. Resolving the conflict in exceptional cases

In some cases the conflict between Art. 123(2) and Art. 123(3) EPC can be resolved. In
T 166/90 the board allowed an inadmissible feature in a granted claim to be replaced by
other disclosed features, since this did not extend the scope of protection. The invention
concerned an opaque plastic film. The product claim as granted contained a feature
stating that the density of the film was less than the arithmetical density from the type
and proportion of the individual components. In opposition proceedings the patent
proprietor claimed a process for manufacturing the film, but without including in his
process claim the density-related feature. The board examined whether this would
broaden the scope of the patent, asking if the process claim features which replaced the
deleted feature necessarily limited the claim to films - like that in the granted product
claim - with a density less than the arithmetical one. The board concluded that, with a
probability bordering on certainty, the process now claimed would produce an opaque
film of a density less than that arithmetically derivable from the type and proportion of its
individual components. Thus, deleting the density-related feature had not in fact
extended the scope of protection.
In T 108/91 (OJ 1994, 228) the board concluded that Art. 123(3) EPC was not
contravened when an incorrect technical statement which was evidently inconsistent with
the totality of the disclosure was replaced by an accurate statement of the technical
features involved. This case concerned a container-closure arrangement, which,
according to information later included in the claim, was unstressed, whereas it was clear
from the description that this part was in fact under tension. Decisions T 673/89 and
T 214/91 followed T 271/84 (OJ 1987, 405), T 371/88 (OJ 1992, 157) and T 438/98, in
ruling that amending a claim to remove an inconsistency did not contravene Art. 123(2)
or Art. 123(3) EPC if the claim as corrected had the same meaning as the correct
interpretation of the uncorrected claim in the light of the description.
In T 553/99 the board stated that if a claim as granted contained an undisclosed, limiting
feature in contravention of Art. 123(2) EPC it could be maintained in the claim without
violating Art. 123(2) EPC provided that a further limiting feature was added to the claim
which further feature was properly disclosed in the application as filed, and deprived the
undisclosed feature of all technical contribution to the subject-matter of the claimed
invention.
T 657/01 provided a recent example of the inescapable Art. 123(2) and (3) EPC trap.
With regard to the approach applicable in a case concerning the relationship between
Art. 123(2) and Art. 123(3) EPC, T 942/01 held it to be a principle in patent law (see for
example G 1/93, OJ 1994, 541) that a patent could not be maintained unamended in
opposition procedure if a violation of Art. 123(2) EPC had occurred during the
examination procedure. In the case in point the respondents, during the opposition
procedure, had correctly objected under Art. 123(2) EPC to the deletion of the feature in
question, and the appellant had consequently reacted by cancelling the deletion, ie by
reintroducing the deleted feature into claim 1. Such a cancellation of unallowable
amendments during the opposition proceedings was normally possible under the
provisions of the EPC, except where the unallowable amendment was a "limiting
extension", so that its cancellation would extend the protection conferred by the patent
and therefore contravene the requirements of Art. 123(3) EPC (G 1/93). According to the
board, such a situation was the basis for T 1149/97 which had been cited by the

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respondents. However, that decision did not apply to the case at issue (T 942/01), which
dealt with an unallowable extension only.
D. Rule 88, second sentence, EPC
Rule 88, second sentence, EPC

R. 88 EPC provides that if a request for correction concerns the description, claims or
drawings, the correction must be obvious in the sense that it is immediately evident that
nothing else must have been intended than what is offered as correction. Furthermore, in
G 3/89 (OJ 1993, 117) the Enlarged Board of Appeal specified that, for a correction
under R. 88, second sentence, EPC to be allowed, the respective part of the European
patent had to contain such an obvious error that a skilled person was in no doubt that the
feature concerned could not be meant to read as such. If, on the other hand, it was
doubtful whether that feature was incorrectly defined, then a correction was ruled out
(see T 664/03).
In J 42/92 the board had to decide whether a request under R. 88 EPC, second
sentence, can be made after grant. It came to the conclusion that a request under
R. 88 EPC for amendments to the description or claims may only be filed during the
pendency of application or opposition proceedings. Under Art. 97(4) EPC, the decision to
grant a European patent takes effect on the date on which the European Patent Bulletin
mentions the grant. After this date, R. 88 EPC can only be applied while opposition
proceedings are pending. In the case at issue, the decision to grant the patent had
already taken effect, and no opposition had been filed. The appeal had therefore been
dismissed, since the EPO had ceased to have jurisdiction to consider a request under
R. 88 EPC at the time when the request was filed.
The board also pointed out that there is no reason why, once no application or opposition
proceedings are pending before the EPO, decisions on the question of corrections
(bearing in mind the requirement of obviousness to a skilled person) should not fall within
the sole jurisdiction of the national courts or other authorities responsible for proceedings
in which this question may arise.
1. Relation to Article 123(2) EPC
III.D.1. Relation to Article 123(2) EPC

The boards have been called upon several times to discuss the question whether a
correction under R. 88 EPC, second sentence, could be allowed even if the requested
amendment would constitute an extension of protection within the meaning of
Art. 123(2) EPC over the disclosure made on the date of filing. In decisions T 401/88
(OJ 1990, 297) and T 514/88 (OJ 1992, 570) the answer was negative. In T 200/89
(OJ 1992, 46) the board took a similar view with regard to Art. 123(3) EPC and
concluded that requests for correction under R. 88 EPC and requests for amendment
under Art. 123 EPC had to be considered separately.
A further question was whether, for the purposes of correction under R. 88 EPC, second
sentence, the evidence that nothing else would have been intended than what was
offered as the correction could take the form of documents filed only after the application.
On this point a different conclusion was reached in T 401/88 (OJ 1990, 297) than in
J 4/85 (OJ 1986, 205).
As a result of referrals by the President of the EPO (G 3/89, OJ 1993, 117) and by a
board of appeal (G 11/91, OJ 1993, 125) both questions came to be decided by the
Enlarged Board. The Enlarged Board's conclusion was that the parts of a European

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application or patent relating to the disclosure (description, claims and drawings) could
be corrected only within the limits of what the skilled person would derive directly and
unambiguously, using common knowledge and seen objectively and relative to the date
of filing, from the whole of these documents as originally filed. Such a correction was of a
strictly declaratory nature and thus did not infringe the prohibition of extension under
Art. 123(2) EPC. Other documents - notably priority documents and the abstract - could
not be used for correction purposes even if filed together with the application, but could,
however, be adduced as evidence of common general knowledge on the date of filing.
Evidence of what constituted such knowledge on that date could be furnished in any
suitable form. And documents not relating to the disclosure could, under certain
circumstances, be included partially or wholly in the disclosure by means of reference.
No correction was possible if there was any doubt as to whether a mistake existed, or
whether nothing else could have been intended other than what was offered as the
correction.
In T 1008/99, the request for correction of errors concerned a European divisional
application which had been filed with a wrong description not related to the earlier
(parent) application. The wrongly filed description should therefore be replaced by the
description of the parent application. The board held that for the purposes of R. 88 EPC,
the error had to be apparent from the divisional application itself, and the parent
application could not be used to demonstrate that the error was obvious. Even if it was
apparent from the filed description, claims and drawings that they did not belong
together, it was not immediately clear from the divisional application itself which of these
parts was not correct. For that reason alone the requested correction under R. 88,
second sentence, EPC was not allowable.
Moreover, according to decision G 2/95 (OJ 1996, 555, point 2 of the Reasons), the
interpretation of R. 88, second sentence, EPC had to be in accord with Art. 123(2) EPC,
which meant that a correction under R. 88 EPC was bound by Art. 123(2) EPC, in so far
as it related to the content of the European patent application as filed. A correction could
therefore be made only within the limits of the content of the parts of the application
which determined the disclosure of the invention, namely the description, claims and
drawings. Other documents could only be used for proving what was common general
knowledge on the date of filing. As far as a divisional application pursuant to Art. 76 EPC
was concerned, the content of the application which determined the disclosure was that
of the divisional application as filed, rather than that of the earlier (parent) application.
2. Obviousness of the error and the correction
III.D.2. Obviousness of the error and the correction

In the past, the boards have allowed corrections under R. 88, second sentence, EPC
provided it was immediately evident to the skilled person that an error had occurred and
how it should be corrected. In T 640/88 and T 493/90 the required correction to an error
in the claim was evident from the description. In T 488/89 the reference to a parallel
application enabled the skilled person to establish without difficulty the correct limit
values. In T 365/88 it was ruled that an abbreviation in the claim could be corrected
because it appeared correctly in the description; an additional Roman numeral I in the
abbreviation of an enzyme was implicitly disclosed because at the time of filing only one
enzyme of this type was known, and clarification prevented confusion with enzymes of
the same type discovered at a later date.

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 III.D.2. Obviousness of the error and the correction

In T 990/91 the board allowed the correction of a chemical name on the grounds that an
obvious error had been made in naming a salt which was the subject-matter of the
application - the molecular formula of this salt was clear from the application. However,
the molecular formula corresponding to the name was different. Guided by the content of
the application and taking into account cited documents which were published before the
priority date of the application in question, the correction required would be immediately
evident to the skilled person.
In T 417/87 the board of appeal allowed the number of a publication cited in the original
description to be corrected under R. 88, second sentence, EPC. In T 158/89, however,
correction of a percentage range of a component was not allowed. In the board's view,
the skilled person could have deduced from inconsistencies in the claims and description
that an error had occurred. However, there were two plausible ways of correcting it.
Since the skilled person would have regarded both alternatives as equally plausible, it
was not immediately obvious that nothing else had been intended other than the
proposed correction.
In T 606/90 the board allowed a correction pursuant to R. 88 EPC, second sentence, in
the opposition proceedings although the correction was not so obvious from the
published text of the patent that it was immediately evident that nothing other than the
proposed correction could have been intended. The applicant had filed typed
amendments to the claims and the description and had also submitted the "working
document" with the handwritten corrections for the dossier. The typed version of claim 1
omitted the detail which was now the subject of a request for correction pursuant to
R. 88 EPC; the same detail was present in the corresponding passage in the description.
When the text was being prepared for publication of the patent, the detail in question was
also omitted from the description owing to an error by the EPO. The board concluded
that the omission in the description should not be taken into account when considering
the admissibility of the correction. It stated that it was therefore clear that the phrase in
question had been omitted from the typed version of claim 1 as a result of an error by the
applicant and that the reader of the patent would immediately have noticed the need for
correction of this error if a transcription error had not likewise been committed by the
EPO. The correction requested was therefore admissible within the terms of R. 88 EPC.
In T 955/92 the appellant had requested that under R. 88 EPC the words "silica" and
"alumina" in the claims and description be replaced by "silicon" and "aluminium"
respectively. It argued that the ambiguous expression "silica to alumina atomic ratio"
could only have two meanings, either "silicon to aluminium atomic ratio" or "silica to
alumina molar ratio" and that it was evident to a skilled person that the correction could
only be as requested.
The board did not share this view. It accepted that a mistake was obvious and that the
interpretation according to the correction sought was more likely than the alternative.
However, referring to G 3/89 (OJ 1993, 117), it emphasised that the correction should be
unambiguously derivable by a skilled person, using common general knowledge, from
the description, claims and drawings of the patent application on the date of filing. The
board held that in the case in point the reasons given by the appellant to show that only
the requested correction could have been intended were not based on the level of
general knowledge on the date of filing. In order to arrive at the conclusion that the
requested correction was the only physically meaningful one, experiments had had to be

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performed which needed more than common general knowledge, and the results thereof
would not have been available on the date of filing.
In T 438/99 the board held that the fact that a term or phrase could not be interpreted or
construed because it was unresolvably ambiguous did not necessarily mean that its
deletion was a permissible amendment under Art. 123(2) EPC. There remained a
residual clear meaning in the ambiguous term, eg, as in the present case, that a specific
direction was taught, and suppressing that fact resulted in a different technical teaching.
E. Standard of proof for allowing amendments and corrections
Standard of proof for allowing amendments and corrections
III.E. Standard of proof for allowing amendments and corrections

In T 383/88 the board held that the normal standard of proof in proceedings before the
boards of appeal, namely "the balance of probability", was inappropriate for determining
the allowability of an amendment under Art. 123(2) EPC. Instead, a rigorous standard, ie
one equivalent to "beyond reasonable doubt" was considered by the board to be the right
one to apply in such a case, since applying a lower standard could easily lead to
undetected abuse by allowing amendments on the basis of ostensibly proven common
general knowledge.
It had frequently been argued that certain technical features could be directly and
unambiguously derived from a specification as filed by reading it in the light of common
general knowledge. However, the board recommended viewing this approach with
considerable caution. Firstly, the issue of the allowability of an amendment under
Art. 123(2) EPC had to be decided by reference to what could be derived from the patent
application as filed in the light of common general knowledge and not vice versa.
Secondly, it was notoriously difficult to prove common general knowledge. For example,
information might be generally disseminated, and therefore known within the community
of skilled addressees, but it might well, at the same time, not be commonly accepted.
Furthermore, too much reliance could not be placed on affidavit evidence from over-
qualified persons, for the relevant knowledge was that of a notional, ie average, skilled
addressee, and not that commanded by leaders in the relevant scientific discipline or
field. The board added that it could not normally be the case that an affidavit by a single
person was sufficient to discharge the burden of proof to the strict standard that was
required.
In T 581/91 the board held that the balance of probabilities was not an appropriate
criterion to be applied in a case where a correction under R. 88 EPC was at stake.
Following decision T 383/88, the board stated that a more rigorous standard, that is one
equivalent to "beyond reasonable doubt", ought to be applied.
In T 795/92 the board stated that Art. 123(2) EPC clearly precluded allowing an
amendment if there was any doubt as to whether or not it was derivable from the original
application. In the case at issue an upper limit of 89% indicated in claim 1 of the main
request for the degree of nickel reduction was not expressly mentioned in the application
as filed. The board decided that, in spite of a certain probability in favour of the
appellant/patentee's position, the amendment was not allowable because there were
various known methods for calculating this value, not all leading to identical results, and
the application did not directly and unambiguously disclose which method had to be
used.
As to extension of the protection conferred, see T 113/86 in Chapters VI.K.4.3.3 and
VII.C.6.1.4.

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F. Divisional applications
Divisional applications

1. Subject-matter of a divisional application

III.F.1. Subject-matter of a divisional application

1.1. General principles

European divisional applications may only be filed in respect of subject-matter which
does not extend beyond the content of the earlier application (parent application) as filed.
If they fulfil this condition and the formal requirements for the accordance of a filing date,
then the same filing and priority dates apply to them as to the parent application
(Art. 76(1), second sentence, EPC). The question whether the subject-matter of a
European divisional application extends beyond the content of the parent application will
be decided by the examining division (J 13/85, OJ 1987, 523; see also Guidelines C-
VI, 9.1- June 2005 version). Further details of procedural aspects, and in particular
R. 25 EPC, are given in Chapter VI.G., "Rules common to all proceedings before the
EPO - Divisional applications".
All features disclosed in the divisional application must have been indicated in the
description, claims or drawings of the parent application as filed.
According to Art. 100(c) EPC, a patent granted on a divisional application may be
opposed on the ground that its subject-matter extends “beyond the content of the earlier
application as filed”. Similar wording is used in Art. 76(1) and Art. 123(2) EPC, which
exclude the addition of new matter during examination.
It is a generally accepted principle of patent law that, once a divisional application has
been validly filed, it becomes separate and independent from the parent application.
Thus, once the conditions of Art. 76(1) EPC have been met, the divisional application is
to be examined as an application quite separate from the parent application and has
itself to comply independently with all the various requirements of the EPC. A divisional
application therefore has to meet the requirements of both Art. 76(1) EPC and
Art. 123(2) EPC (T 441/92, T 873/94, OJ 1997, 456; T 1008/99, T 561/00).
In order to determine whether or not the divisional application offends against the
provisions of Art. 76(1) EPC, it has to be established whether technical information has
been introduced into that divisional application which a skilled person would not have
objectively and unambiguously derived from the earlier application as filed (T 402/00,
T 423/03).
In T 587/98 (OJ 2000, 497) the board observed that the procedure defined in the EPO
for the filing of divisional applications was self-contained and complete.
In EPO practice an unamended description identical to that contained in the parent
application is normally accepted. R. 25(2) EPC was deleted with effect from 1 June 1991
to ensure conformity with EPO practice. The Guidelines C-VI, 9.1.5 (June 2005 version)
also state that an amendment of the description should be required only where
absolutely necessary. Thus the repetition in a divisional application of matter in the
parent application need not be objected to unless it is clearly unrelated to or inconsistent
with the invention claimed in the divisional application.
In T 441/92, therefore, the board took the view that there was nothing in the EPC to
prevent an applicant from repeating the earlier description in a divisional application and

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that Art. 76(1) EPC had not been contravened in this respect in the case in point (but see
T 797/02 and T 720/02 in Chapter III.F.2).
1.2. Validity of divisional applications
The Enlarged Board of Appeal has three referrals pending concerning the validity of
divisional applications (T 39/03, T 1409/05 and T 1040/04). Having regard to Article 8 of
its Rules of Procedure, the Enlarged Board of Appeal has decided to consider the points
of law referred to it in consolidated proceedings (ref. no. G 1/05, G 1/06 and G 3/06).
G 1/05 concerns the question whether a divisional application, which at its filing date
extended beyond the content of the earlier application as filed, can still be amended
during examination in order to meet the requirement of Art. 76(1), second sentence EPC.
G 3/06 concerns the question whether a patent granted on a divisional application having
the same deficiency could be amended in order to overcome the ground of opposition
under Art. 100(c) EPC. Finally, G 1/06 concerns the question how the requirements of
Art. 76(1) EPC are to be interpreted in case of a sequence of divisional applications,
each divided from its predecessor.
In T 39/03 (OJ 2006, 362) the board was well aware that, where a divisional application
offends against the provisions of Art. 76(1) EPC, it is the established practice of the EPO
to allow the applicant at any later stage of the examining procedure to make
amendments which bring it into line with Art. 76(1) EPC, and to consider the corrected
application, provided it also satisfies Art. 123(2) EPC with regard to its version as filed,
as a valid divisional application filed on the date of filing of the earlier application and
having the benefit of any right of priority (see Guidelines A-VI, 1.2.1 and 1.2.2; C-
VI, 9.1.4 to 9.1.6 - June 2005 version). The board, however, had strong reservations as
to the correctness of this practice in the light of the recent case law regarding the
treatment of divisional applications filed as divisional applications of earlier divisional
applications, and concerning the provisions of R. 25(1) EPC.
The board therefore referred the following questions to the Enlarged Board of Appeal:
(1) Can a divisional application which does not meet the requirements of Art. 76(1) EPC
because, at its actual filing date, it extends beyond the content of the earlier application,
be amended later in order to make it a valid divisional application?
(2) If the answer to question (1) is yes, is this still possible when the earlier application is
no longer pending?
(3) If the answer to question (2) is yes, are there any further limitations of substance to
this possibility beyond those imposed by Art. 76(1) and Art.123(2) EPC? Can the
corrected divisional application in particular be directed to aspects of the earlier
application not encompassed by those to which the divisional as filed had been directed?
In T 1040/04 (OJ 2007, ***), the board has referred the following point of law to the
Enlarged Board of Appeal:
Can a patent which has been granted on a divisional application which did not meet the
requirements of Art. 76 (1) EPC because at its actual date of filing it extended beyond
the content of the earlier application, be amended during opposition proceedings in order
to overcome the ground of opposition under Article 100(c) EPC and thereby fulfill said
requirements ?

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Finally, in T 1409/05 (OJ 2007, ***), the board has referred the following points of law to
the Enlarged Board of Appeal:
(1) In the case of a sequence of applications consisting of a root (originating) application
followed by divisional applications, each divided from its predecessor, is it a necessary
and sufficient condition for a divisional application of that sequence to comply with
Art. 76(1) EPC, second sentence, that anything disclosed in that divisional application be
directly, unambiguously and separately derivable from what is disclosed in each of the
preceding applications as filed?
(2) If the above condition is not sufficient, does said sentence impose the additional
requirement
(a) that the subject-matter of the claims of said divisional be nested within the subject-
matter of the claims of its divisional predecessors?
or
(b) that all the divisional predecessors of said divisional comply with Art. 76(1) EPC?
1.3. Amendments to divisional applications
In several decisions the boards extended the principles set out in rulings on
Art. 123(2) EPC to the relation between divisional and parent applications. The subject-
matter of the amended application or patent (in this case the divisional application) had
to be directly and unambiguously derivable from, and consistent with, the original
disclosure (in this case the parent application) (T 514/88, OJ 1992, 570; T 527/88). It is
the total information content of the original application as filed that matters (T 873/94,
OJ 1997, 456). In view of these decisions, the board held in T 289/95 that the question of
whether or not a claim in a patent deriving from a divisional application "covers" or
"embraces" something which was not specifically disclosed in the parent application was
not the proper standard of comparison for determining whether there had been an
inadmissible extension of subject-matter.
While Art. 76(1) EPC requires a divisional application not to extend beyond the content
of the earlier application, Art. 123(2) EPC stipulates that, once the provisions of
Art. 76(1) EPC have been met, the divisional application may not be amended after filing
in such a way that it contains subject-matter extending beyond the content of the
divisional application as filed (Guidelines C-VI, 9.1.4 - June 2005 version; see also
T 441/92, T 873/94, OJ 1997, 456; T 1221/97, T 402/00, T 423/03).
Art. 76(1) and Art. 123(2) EPC have the same purpose, ie to create a fair balance
between the interests of applicants and patentees, on the one hand, and competitors
and other third parties on the other. The idea underlying these provisions is that an
applicant should not be allowed to improve his position by adding subject-matter not
disclosed in the application as filed, which would give him an unwarranted advantage
and could be damaging to the legal security of third parties relying on the content of the
original application (G 1/93, OJ 1994, 541; T 873/94, OJ 1997, 456; T 276/97, T 701/97).
The arguments used by the appellant in T 276/97 may be summarised as follows: given
that the wording of the French version of Art. 76(1), second sentence, EPC differed from
that of Art. 123(2) EPC, it was wrong to follow the EPO case law, according to which the
interpretation of Art. 123(2) EPC was applicable to Art. 76(1) EPC as well. Referring to

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the case law, the board stated that Art. 76(1) EPC was to be equated with
Art. 123(2) EPC. The term "éléments" in the French version of Art. 76(1) EPC did not
justify a different interpretation of the terms "Gegenstand" and "subject-matter"
respectively in the German and English versions of Art. 76(1) and Art. 123(2) EPC. The
board also confirmed that the French wording of Art. 76(1) EPC translates the same
intention as the German and English versions of the article, ie to disallow an extension of
the parent application’s content through the introduction of new subject-matter in the
divisional filing, or through any amendment subsequent to the date of filing of the parent
application.
In T 701/97 the board stated that an amendment had to be regarded as introducing
subject-matter extending beyond the content of the original application if the overall
change in the content of the application resulted in the skilled person being presented
with information which was not clearly and unambiguously presented in the original
application, even when account was taken of matter which was implicit to a person
skilled in the art (see also T 383/88 and T 688/99). The criteria to be used for comparing
a claimed invention with the subject-matter disclosed in an earlier document allegedly
disclosing the same invention had recently been defined again in G 2/98 (OJ 2001, 413).
Where, as in the case in suit, an independent claim present in the parent application as
originally filed had been amended by the addition of features restricting the scope of the
claim and taken from a number of parts of the original application which were not clearly
related, it was not sufficient that all the individual added features were disclosed in the
original application. Rather, the combination of features in question had to be clearly and
unambiguously derivable from the document by a skilled person using common general
knowledge. Hence multiple limitations generating specific subject-matter not derivable
from the original application could not be allowed.
In decisions T 720/02 and T 797/02 (identical reasoning) the board stated that the
invention or group of inventions defined in the claims of the parent application as divided
out of the grandparent application determines the essential content of the parent
application. To meet the requirements of Art. 76 EPC any further divisional applications
divided out of the parent application must be directed to objects encompassed by such
invention or group of inventions.
In T 90/03 the board referred to the ruling in T 797/02 that the invention or group of
inventions defined in the claims of a divisional determines the content of the divisional
application per se.
1.4. Individual cases
T 176/90 was based on the principle that the parent application should disclose the
invention claimed in the divisional application in a manner sufficiently clear and complete
for it to be carried out by the skilled person. For an invention relating to a generic class of
chemical compounds this required the disclosure of the structure of the class, usually by
means of a general formula, and an indication of a method of preparation.
In T 118/91 the board considered the argument that the filing of a divisional application
led to the abandonment of its subject-matter in the parent application, which accordingly
could no longer be considered as having originally disclosed that subject-matter. The
board found that there was nothing in Art. 76 EPC or any other provision of the EPC to
support that contention, stating clearly that the content of the application as filed cannot
as a matter of logic be reduced by the subsequent filing of a divisional application.

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 III.F.2. Division of a divisional application

In T 441/92 a divisional application was filed with a description essentially identical to

that in the parent application. After an amendment to the claims the divisional application
comprised the same subject-matter as the parent application, which in the meantime had
lapsed irrevocably (so that the question of double patenting did not arise). The board
found that the claims now featuring in the divisional application did not introduce subject-
matter beyond the content of the parent application and thus did not contravene
Art. 76(1) EPC. Nor was Art. 123(2) EPC contravened, since all the claims were directly
and unambiguously derivable from the description in the divisional application as filed.
Equally no objection could be made to the fact that the divisional application as originally
filed claimed a different invention from that specified in the amended claims. While the
content of an application must not be extended after filing, the protection sought by the
claims might be extended beyond that sought in the claims as originally filed as long as
the application was pending; in this respect, there was no distinction between a normal
and a divisional application. Furthermore, the subject-matter of the claims in the parent
application could not be considered to have been abandoned because that application
had lapsed. The board found that the lapse of the parent application could not have the
effect of reducing the content of a previously filed divisional application.
In T 542/94 the examining division refused a divisional application on the basis of
Art. 123(2) EPC because its subject-matter extended beyond the parent application,
when it should have done so on the basis of Art. 76(1) EPC. The board noted that the
admissibility requirement for the claims in a divisional application was the same in
Art. 76(1) and Art. 123(2) EPC. Since the examining division's arguments were
essentially based on a comparison between the subject-matter of the parent application
and that of claim 1 of the divisional application, its finding was in fact based on
Art. 76(1) EPC. Hence, the imprecise ground for refusal given in the decision under
appeal did not put the appellant in a disadvantageous position and there was therefore
no case for reimbursement of the appeal fee under R. 67 EPC.
In T 211/95 the examining division had refused a divisional application on the grounds
that a set of features from the original claim 1 of the parent application was entirely
missing from claim 1 of the divisional application. This omission was said to violate the
provisions of Art. 76(1) EPC. The board was unable to accept this. There were two
technically unconnected teachings which could be claimed separately. The skilled
person would clearly see that the set of features according to the subject-matter claimed
in the parent application was not essential to the subject-matter claimed in the divisional
application. The subject-matter of the divisional application was directly and
unambiguously disclosed in the parent application.
2. Division of a divisional application
III.F.2. Division of a divisional application

In several recent decisions the boards affirmed the admissibility, in principle, of

divisionals from divisionals, which had also been expressly advocated by the contracting
states during the preparatory work on the EPC 2000.
In T 555/00 the board stated that a European divisional application from a pending
European patent application, ie the parent application, which itself had been filed as a
European divisional application from a then pending European patent application, ie the
grandparent application, did not as such contravene the requirements of Art. 76 and
R. 25 EPC.

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Divisional applications

Since both the European divisional application on which the patent in suit is based and
the parent application are deemed to have been filed on the date of filing of the
grandparent application under Art. 76(1) EPC, not only the patent in suit but also the
parent application must comply with Art. 76(1) EPC. Hence subject-matter contained in
the patent in suit must be disclosed in both the parent application as filed and the
grandparent application as filed. It follows that if the patent in suit contains subject-matter
which extends beyond the content of the parent application as filed and/or the
grandparent application as filed, the patent in suit must be revoked.
Since non-compliance with Art. 76(1) EPC constitutes grounds for the revocation of a
European patent under Art. 100(c), second alternative, EPC and Art. 102(1) EPC, it
further follows that the EPC does not provide for the possibility either of determining any
effective filing date from which the patent in suit may profit, or of assessing novelty and
inventive step in respect of prior art published before that date if the patent contains
subject-matter which extends beyond the content of the parent application as filed and/or
the grandparent application as filed. The board referred to the divergent findings in
T 904/97.
In T 904/97 the board had held that the parent application did not comply with
Art. 76(1) EPC with respect to the grandparent application, and that it therefore could not
validly benefit from the latter's filing and priority dates. Nor, in consequence, could it
have transferred any such non-existent benefits to any subsequent divisional application.
Furthermore, the board had stated that since both the divisional application for which the
patent in suit had been granted and the parent application comprised subject-matter
extending beyond the content of the grandparent application as originally filed, the
earliest possible filing date from which the patent in suit could benefit was the actual
filing date of the parent application. Consequently, the grandparent application belonged
to the prior art under Art. 54(2) EPC.
In T 1158/01 (OJ 2005, 110) the board held that there is in principle no difficulty in
applying Art. 76 EPC mutatis mutandis to the examination of divisionals from divisionals,
since the earlier application out of which the second-generation divisional was divided is
then the first-generation divisional. If the first-generation divisional itself is a valid
divisional of the parent application, it inherits the latter’s date of filing, which then under
Art. 76(1) EPC also applies to the second-generation divisional.
If, however, the first-generation divisional is not a valid divisional of the parent application
within the meaning of Art. 76 EPC, it cannot itself be deemed to have been filed on the
date of filing of the parent. Nor does the EPC provide for it to be accorded any other date
of filing, not even the date on which it was actually filed, and as a result it also cannot
transfer a date of filing to the second-generation divisional. Hence the second-generation
divisional is not a valid divisional application either. Referring to T 904/97 and T 555/00,
the board held that, when the validity of a second-generation divisional application is
examined, the validity of the first-generation divisional must also be scrutinised. If the
subject-matter of the first-generation divisional does not comply with Art. 76(1) EPC, the
second-generation divisional derived from it is likewise invalid.
In T 797/02 the board took a somewhat different approach in its evaluation of second-
generation divisional applications (see also T 720/02, identical reasoning). Here the
appellant had filed the parent application as a divisional application with the same
description as the grandparent application, together with substantially amended claims.

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 III.F.3. Double patenting

The appellant submitted that the content of the parent application should be determined
in the light of the whole description. Since the description in the parent application, which
was substantially the same as that in the grandparent application, comprised several
indications showing that the omitted features at issue here were not mandatory, the
subject-matter of claim 1 could not possibly extend beyond the content of the parent
application.
The board disagreed. For convenience’ sake, it was indeed common practice to allow
applicants to file a divisional application with essentially the same description as the
parent application and to adapt it where necessary to the claims only during further
prosecution of the divisional. However, applicants could not be allowed to use this as an
opportunity to exploit obvious inconsistencies between the claims and description as filed
in order to extend unduly the definition of the subject-matter which they had actually
divided out of the earlier application and made the subject-matter of the divisional.
It is the board's view that the invention or group of inventions defined in the claims of the
parent application as divided out of the grandparent application determines the essential
content of the parent application. To meet the requirements of Art. 76 EPC any further
divisional applications divided out of the parent application must be directed to subject-
matter encompassed by such invention or group of inventions.
Theoretically, subject-matter from a grandparent application (no longer pending), which
was reproduced in the description belonging to a parent divisional application but not
encompassed by the invention actually divided out of the grandparent application, could
be further divided out of that parent application at a later date. However, that would allow
applicants, by the mere filing of recurrent cascading divisional applications, to leave the
public completely uncertain during most of the life of a patent as to how much of the
subject-matter of the original patent application might still be claimed (confirmed in
T 90/03).
In T 643/02 the board stated that Art. 100(c) EPC did not include a definition of the term
"earlier application as filed", which may be either the parent application or the
grandparent application as filed, eg in the case of a divisional application from a
divisional application. In this case, however, the European patent in suit was accorded
the same filing date (20 September 1989) and date of priority (21 September 1988) as
the grandparent application. Art. 76(1) EPC provides that, if the divisional application
does not extend beyond the content of the earlier application as filed, it is deemed to
have been filed on the date of filing of the earlier application and has the benefit of any
right to priority. In the light of this article, the "earlier application" to which
Art. 100(c) EPC refers is the application whose date of filing is claimed in the divisional
application upon which the patent in suit is based (with the corresponding priority right).
Accordingly, "the content of the earlier application as filed", beyond which according to
Art. 100(c) EPC the subject-matter of the European patent may not extend as a result of
amendments, is that of the grandparent application as filed.
3. Double patenting
III.F.3. Double patenting

The parent and divisional applications may not claim the same subject-matter (see
Guidelines C-VI, 9.1.6 and C-IV, 6.4 - June 2005 version).
In T 118/91 and T 80/98, care was taken to avoid any risk of double patenting by
ensuring that the subject-matter of the divisional application differed from that of the

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parent application. In T 118/91, moreover, the board stated that it could find nothing to
support the contention that features forming part of the subject-matter of the divisional
application could not be the subject of a dependent claim in the parent application. The
Guidelines state in C-VI, 9.1.6 that, as a general rule, one application may claim its own
subject-matter in combination with that of the other application. The board found no fault
with this approach and did not see that it imposed an unfair burden on competitors or led
to "double patenting" in its normal sense. In this particular case, the board was satisfied
that any danger of "double patenting" had been eliminated by extensive restriction of the
claims in the divisional application.
In T 58/86 it was decided that the independent claims in a divisional application
impermissibly exceeded the disclosed content of the original application, an essential
feature of the relevant subject-matter of the original application being omitted in each of
them. Reinstating this feature would have resulted in subject-matter that was already
protected in the original application (double patenting).
In T 587/98 (OJ 2000, 497) the examining division had refused a European patent
application, filed as a divisional application, on the grounds that its subject-matter
overlapped with that of the parent application. The board found that the claims were not
"conflicting" claims within the meaning of the Guidelines. Furthermore, there was no
express or implicit provision in the EPC which prohibited the presence in a divisional
application of an independent claim - explicitly or as a notional claim arrived at by
partitioning of an actual claim into notional claims reciting explicit alternatives - which
was related to an independent claim in the parent application in such a way that the
"parent" claim included all the features of the "divisional" claim combined with an
additional feature.

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 IV.A.1. Application filed in or for a state party to the Paris Convention

IV. PRIORITY
The EPO does not normally check the validity of a priority right during examination. A
check must be made, however, if relevant prior art has been made available to the public
within the meaning of Art. 54(2) EPC on or after the priority date claimed and before the
date of filing or if the content of the European patent application is totally or partially
identical with the content of another European application within the meaning of
Art. 54(3) EPC, such other application claiming a priority date within that period and
definitively designating one or more of the same states (see Guidelines C-V, 2.1 - June
2005 version).
Articles 87 to 89 EPC provide a complete, self-contained code of rules on claiming
priority for the purpose of filing a European patent application (see J 15/80,
OJ 1981, 213). However, since the EPC - according to its preamble - constitutes a
special agreement within the meaning of Art. 19 of the Paris Convention, it is clearly
intended not to contravene the basic principles concerning priority laid down in the latter
(see T 301/87, OJ 1990, 335; G 3/93, OJ 1995, 18 and G 2/98, OJ 2001, 413).
The right of priority is generally regarded as one of the cornerstones of the Paris
Convention. Its basic purpose is to safeguard, for a limited period, the interests of a
patent applicant in his endeavour to obtain international protection for his invention,
thereby alleviating the negative consequences of the principle of territoriality (T 15/01,
OJ 2006, 153).
A. Applications giving rise to a right of priority
Applications giving rise to a right of priority

1. Application filed in or for a state party to the Paris Convention

IV.A.1. Application filed in or for a state party to the Paris Convention

In J 9/98 and J 10/98 (OJ 2003, 184) the Legal Board of Appeal referred the following
point of law to the Enlarged Board of Appeal: "Is the applicant of a European patent
application, which was originally filed as a Euro-PCT application, entitled in view of the
TRIPS Agreement to claim priority from a previous first filing in a State which was,
neither at the filing date of the previous application nor at the filing date of the Euro-
PCT application, a member of the Paris Convention for the Protection of Industrial
Property, but was, at the filing date of the previous first filing, a member of the
WTO/TRIPS Agreement?"
In G 2/02 and G 3/02 (OJ 2004, 483) the Enlarged Board decided that the TRIPS
Agreement did not entitle the applicant for a European patent to claim priority from a first
filing in a state which was not at the relevant dates a member of the Paris Convention
but was a member of the WTO/TRIPS Agreement.
2. Priority right of the applicant or his successor in title
IV.A.2. Priority right of the applicant or his successor in title

In T 1008/96 the European patent application resulting in the patent in suit and the two
Italian utility model applications from which priority was claimed had been filed by
different persons. Hence the question of succession in title arose. The board held that
succession in title had to be proven to its satisfaction. It was a general principle of
procedural law that any party claiming a right had to be able to show that it was entitled
to that right (see J 19/87). This question had to be answered in accordance with national
law. The board came to the conclusion that the respondent had failed to prove that it

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was the successor in title for the two Italian utility model applications from which it
claimed priority. Consequently, no priority rights existed for the patent in suit.
In T 5/05 the board stressed that only European applications filed by the applicant
himself or by his successor in title were relevant for the fulfilment of the requirement
derived from Art. 87(4) EPC that the application giving rise to a priority right must be the
first application. The inventor was not relevant. Applications filed by various applicants
figured alongside one another as state of the art within the meaning of Art. 54(2) or
Art. 54(3) EPC. The board also rejected the respondent's argument that the economic
aspect was relevant to the requirements relating to priority and that the two wholly owned
subsidiaries of the same parent company were not independent of each other in view of
their association through the parent. Legal acts were in principle attributable to the (legal)
person who had performed them. Exceptions to this needed a legal basis, which did not
exist in the law relating to priority.
3. National deposit of industrial design
IV.A.3. National deposit of industrial design

In J 15/80 (OJ 1981, 213) it was held that a priority right based on the deposit of an
industrial design was not recognised for a European patent application. As the EPC was
a special agreement within the meaning of Art. 19 of the Paris Convention, a general
understanding by the EPC contracting states that the deposit of an industrial design
clearly gave a priority right for a national patent application could, by application of Art. 4
Paris Convention, lead to an interpretation of Art. 87(1) EPC going beyond its terms.
However, in the absence of such a general understanding there was no reason to read
Art. 87(1) EPC more broadly than its express terms and scope required.
In the board's opinion it was the law under the Paris Convention that, in relation to patent
applications, a right of priority under that Convention existed if the prior application was
for the protection of an invention as such and contained a disclosure of it. The deposit of
an industrial design in essence protected aesthetic appearance. Although the deposited
design might incorporate an invention, according to national design laws the deposit
would not protect the invention as such.
4. Postdating of the previous application
IV.A.4. Postdating of the previous application

Swiss patent law allows a patent application to be postdated if it is subsequently

amended. In T 132/90 the patent proprietor had claimed 11.3.1983, the original filing
date of the earlier Swiss application, as the priority date for their European application
dated 9.3.1984. In 1985 the Swiss Patent Office ordered that the filing date of the Swiss
patent application be set at 1.7.1983 following subsequent completion of the technical
documentation.
The board of appeal concluded that the original application should serve as the basis for
claiming a priority right and that the priority date was the filing date of the original
application. The postdating order did not have ab initio effect, and the subsequent fate of
the original application was immaterial as far as the priority date was concerned.
5. Multiple exercise of the right of priority for one contracting state
IV.A.5. Multiple exercise of the right of priority for one contracting state

In T 998/99 (OJ 2005, 229) the board held that Art. 87(1) EPC made no provision for
multiple filings in the same country within the priority period for the same subject-matter
and hence the same invention in conjunction with the same priority document. As
derogations had to be interpreted strictly, only the first filing could validly claim priority.

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 IV.A.5. Multiple exercise of the right of priority for one contracting state

Neither Art. 4.G(1) of the Paris Convention nor its equivalent in the EPC (Art. 76(1),
second sentence, EPC) allowed a divisional application to give rise to a right of priority
with effects going back to the date of filing of the initial application.
This interpretation was not echoed in the jurisprudence which followed. In T 15/01
(OJ 2006, 153) the board pointed out that, with respect to the issue of exhaustion of
priority, the wording of Art. 87(1) EPC appeared to be open to different interpretations.
Since the EPC constituted a special agreement within the meaning of Art. 19 of the Paris
Convention, this provision was not intended to contravene the basic priority principles of
this Convention. The right of priority was generally regarded as one of the cornerstones
of the Paris Convention. Its basic purpose was to safeguard, for a limited period, the
interests of a patent applicant in his endeavour to obtain international protection for his
invention, thereby alleviating the negative consequences of the principle of territoriality.
The Paris Convention in its present version explicitly recognised the possibility of
claiming multiple and partial priorities and guaranteed the right to divide patent
applications while preserving the benefit of the right of priority for the divisional
application as well (principles also recognised in Art. 76(1), second sentence, EPC and
Art. 88(2) and (3) EPC). In the light of the above, the board considered that the priority
provisions contained in the Paris Convention had to be construed in a manner which
ensured that the general purpose they served, namely to assist the applicant in obtaining
international protection for his invention, was fulfilled as far as possible. Furthermore, the
board examined more closely the circumstances under which the issue of exhaustion
might arise (splitting up of the subject-matter of the priority application to avoid non-unity
objections; filing of a deficient subsequent application and remedying it by means of a
second filing; combination of the originally disclosed subject-matter with further
improvements and additional embodiments developed during the priority period) and
analysed the interests involved. It concluded that the same priority right might be validly
claimed in more than one European patent application; there was no exhaustion of
priority rights.
In T 5/05 the board again confirmed that neither the EPC nor the Paris Convention
contained any indication that the right of priority constituted an exception which therefore
had to be interpreted narrowly and thus allowed the right of priority to be exercised only
once for one contracting state.
B. Identity of invention
Identity of invention

In accordance with Art. 87 EPC a European patent application is only entitled to priority
in respect of "the same invention" as was disclosed in the previous application. The
Enlarged Board of Appeal stated in G 2/98 (OJ 2001, 413) that the concept of "the same
invention" was to be interpreted narrowly and equated with "the same subject-matter" in
Art. 87(4) EPC. This interpretation means that the priority of a previous application in
respect of a claim in a European patent application in accordance with Art. 88 EPC is to
be acknowledged only if the person skilled in the art can derive the subject-matter of the
claim directly and unambiguously, using common general knowledge, from the previous
application as a whole. The subject-matter of the claim defining the invention in the
European application has to be understood as "the specific combination of features
present in the claim" (see also T 948/97).

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1. Disclosure in the earlier application of the invention claimed in the

subsequent application
IV.B.1. Disclosure in the earlier application state

1.1. Basic considerations in the interpretation of "the same invention"

In opinion G 2/98 (OJ 2001, 413) the Enlarged Board of Appeal addressed the whole
concept of "the same invention" in Art. 87(1) EPC. In recent years, boards have applied
different yardsticks to assess identity of invention between a previous and subsequent
application. One was to check whether all the features of the invention claimed in the
European patent application were disclosed in the priority document ("novelty test"). In
T 311/93 and T 77/97 in particular, boards looking at the validity of priority claims
continued to apply the criterion of at least implicit disclosure used for the disclosure test
under Art. 123(2) EPC. Other decisions however followed the principle, developed in
"Snackfood" (T 73/88, OJ 1992, 557), that adding non-essential features which merely
limited the scope of protection did not invalidate the priority claim. This latter decision
allowed a claim to enjoy priority despite containing an additional feature not disclosed in
the earlier application.
In G 2/98 the Enlarged Board of Appeal, ruling on points of law referred by the President
regarding the interpretation of Art. 87(1) EPC, first considered whether interpreting "the
same invention" narrowly was consistent with the relevant Paris Convention and EPC
provisions. A narrow interpretation means that the subject-matter of a claim which
defines the invention in a European patent application - ie the specific combination of
features in that claim - has to be at least implicitly disclosed in the application whose
priority is claimed. The Enlarged Board held that a broad interpretation, distinguishing
between those technical features which related to the function and effect of the invention
and those which did not - with the result that an invention could still be considered "the
same" even if a feature were amended, deleted or added - was inappropriate and
inconducive to proper exercise of priority rights. To ensure a practice fully consistent
inter alia with equal treatment for applicants and third parties, legal certainty and the
principles for assessing novelty and inventive step, "the same invention" had to be
interpreted narrowly and in a manner equating it to "the same subject-matter" in
Art. 87(4) EPC. This interpretation was underpinned by the Paris Convention and
the EPC, and was entirely consistent with opinion G 3/93 (OJ 1995, 18). The Enlarged
Board therefore ruled as follows on the points of law referred to it:
The requirement for claiming priority of "the same invention", referred to in
Art. 87(1) EPC, means that priority of a previous application in respect of a claim in a
European patent application in accordance with Art. 88 EPC is to be acknowledged only
if the skilled person can derive the subject-matter of the claim directly and
unambiguously, using common general knowledge, from the previous application as a
whole.
The principles laid down by the Enlarged Board in G 2/98 mean that many statements
made in decisions based in particular on T 73/88 (holding that adding non-essential and
merely scope-limiting features did not invalidate a priority claim) are no longer relevant
(eg T 16/87, OJ 1992, 212; T 582/91, T 255/91, OJ 1993, 318; T 669/93, T 1056/93 and
T 364/95; see also "Case Law of the Boards of Appeal of the EPO", 3rd ed. 1998, p. 263
et seq. and 269 et seq.).

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The older case law which devised the "novelty" and "disclosure" tests still applies
following G 2/98. This is that two applications relate to "the same invention" within the
meaning of Art. 87 EPC when they both contain "the same subject-matter". The invention
or subject-matter of a previous application is to be considered identical to that of a
subsequent one if the disclosure of both applications is the same (T 184/84). Disclosure
in the previous application means that the subject-matter of the claims of the European
application must be clearly identifiable in the documents of the previous application taken
as a whole (T 81/87, OJ 1990, 250; T 359/92, T 469/92, T 597/92, T 296/93 and
T 620/94). Identical wording is not required (T 81/87, OJ 1990, 250 and T 184/84).
1.2. Amendments and disclaimers
As has been stated in G 2/98 (OJ 2001, 413), the extent of the right to priority is
determined by, and at the same time limited to, what is disclosed in the priority
application.
In G 1/03 and G 2/03 (OJ 2004, 413 and 448) the Enlarged Board held that in order to
avoid any inconsistencies, the disclosure as the basis for the right to priority under
Art. 87(1) EPC and as the basis for amendments in an application under Art. 123(2) EPC
had to be interpreted in the same way. That meant that a disclaimer, not providing a
technical contribution as outlined, which was allowable during the prosecution of a
European patent application did not change the identity of the invention within the
meaning of Art. 87(1) EPC. Therefore its introduction was allowable also when drafting
and filing the European patent application without affecting the right to priority from the
first application, which did not contain the disclaimer (see also T 175/03).
In T 923/00 the application as filed and the priority document were in essence identical.
The board emphasised that any conclusion in favour of or against the amendments'
allowability under Art. 123(2) EPC would also apply in favour of or against the applicant's
entitlement to the claimed priority, and dealt with both issues jointly (see also T 910/03).
1.3. Disclosure in the previous application as a whole
Under Art. 88(4) EPC it suffices if the features claimed in the later application are
disclosed by the earlier application taken as a whole (T 497/91, T 184/84 and T 359/92).
Art. 88(4) EPC cannot be construed as meaning that a priority document must comprise
claims in order to form a regular national filing within the meaning of Art. 87(3) EPC
which can give rise to a right of priority. If the priority document does not include any
claims, this does not mean that the conditions of Art. 88(4) EPC are not fulfilled
(T 469/92). Features of the invention may also be disclosed in the drawings (T 169/83,
OJ 1985, 193).
On the other hand, T 409/90 (OJ 1993, 40), showed that a broad claim in the previous
application was not necessarily a suitable basis for a priority right. This decision was
based on the principle that what was disclosed by a priority document was what could be
deduced from the priority document as a whole by a person skilled in the art. However,
when considering what was disclosed in a priority document's claim it was necessary to
bear in mind the purpose of the claim, ie to define the protection sought. The fact that a
claim in a priority document was broad enough to cover specific subject-matter filed for
the first time in a later application was not by itself sufficient evidence that such
subsequently filed subject-matter had already been disclosed in the priority document, or

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that subsequent claims based on the later-filed subject-matter still defined the same
invention as that which was the subject of the priority document.
At issue in T 289/00 was whether the feature in Claim 1, namely that a channel was
enclosed on all sides, was directly and unambiguously disclosed in the priority
application. The board accepted that the latter's reference to the channel as "filled with
air" did not in itself mean that it was enclosed. However, under Art. 88(4) EPC the
previous application's documents had to be considered as a whole, and the reference
therefore had to be seen together with the other information on this matter which the
skilled person would derive from the application. A skilled person considering the priority
application documents as a whole would conclude, without further information, that the
channel would be enclosed on all sides.
In T 515/00 the board noted that a claim passed the priority test if its subject-matter
could be derived from the previous application as a whole. It followed that comparing the
claim with the corresponding claim of the previous application was not a valid approach
to performing the "priority test".
1.4. Reference to common general knowledge
In T 136/95 (OJ 1998, 198), the board stated that identity of invention has to be
assessed by reference to the skilled person. A patent application is a technical
document, addressed to the skilled person, not a work intended for the general reader.
However, the skilled person is not familiar, unlike in the assessment of inventive step,
with all the prior art, but only with those elements of it which form part of his general
knowledge, and it is on the basis of this knowledge, or by carrying out simple operations
derived from it, that he may infer whether or not there is identity of invention.
The board came to the conclusion that it was necessary to give some flexibility to the
requirement for identity of invention between the two applications. Some features
claimed in the European application need not be expressly mentioned in the previous
application whose priority is claimed, provided that the skilled person is able, purely on
the basis of his knowledge or by performing simple operations to carry out the invention,
to infer these features from the prior application. In the case in question a structural
feature claimed in the European patent application was supported by a general
functional feature described in the prior application.
In T 744/99 the appellant had argued that claim 8 was not entitled to priority because the
British patent application from which priority was claimed did not disclose a receiver. The
board noted that the requirement for the subject-matter of a claim to be derivable
"directly and unambiguously, using common general knowledge from the previous
application as a whole" in accordance with opinion G 2/98 (OJ 2001, 413), such subject-
matter could not be novel with respect to the disclosure of the priority document. The
application of common general knowledge could only serve to interpret the meaning of a
technical disclosure and place it in context; it could not be used to complete an otherwise
incomplete technical disclosure.
Thus the board concluded that, since the priority document only disclosed a new signal
protocol without any disclosure of a suitable receiver, claim 8, which was directed to
such a receiver, was not entitled to the claimed priority date, but only to the filing date.

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1.5. Explicit or implicit disclosure of the "essential" features in the priority

document
1.5.1 General
In order to give rise to priority all the essential elements, ie features of the invention in
the priority document must be either expressly disclosed or directly and unambiguously
implied by the text as filed. The question therefore arises as to what constitutes the
essential elements, ie features of the invention, claimed in the European patent
application, and whether or not these features are disclosed in the respective priority
documents (cf. Art. 88(4) EPC; see T 81/87, OJ 1990, 250; T 65/92, T 127/92, T 296/93,
T 479/97, T 342/98 and T 188/97). Essential elements missing in the priority document
and recognised as essential only later on, are not part of the disclosure of the previous
application and there is then no right to priority (T 81/87, OJ 1990, 250; T 301/87,
OJ 1990, 335; T 269/87, T 296/93, T 1228/01). The "essential features" within the
meaning of this jurisprudence are not the counterpart to the "non-essential features"
within the meaning of the "snackfood" decision. Accordingly, the jurisprudence based on
T 81/87 has been upheld even after the opinion given in G 2/98 (see, for instance,
T 479/97).
1.5.2 Cases of non-disclosure of an essential feature
In T 923/92 the board maintained a patent on a process comprising the preparation of a
protein with (further specified) human tissue plasminogen activator function. The subject-
matter of the claim was defined by means of reference to an amino acid sequence. The
sequence contained in the European application was disclosed for the first time in the
third priority document (P3). It differed from the sequence reported in the first and
second priority documents (P1 and P2) in respect of three amino acids in positions
175, 178 and 191.
The board held that only the priority of P3 could be claimed. In the board's judgment, the
skilled person would consider the primary amino acid structure of a protein to be an
essential feature thereof because it represented its chemical formula. He would therefore
consider the reference to the amino acid sequence of a protein as having not merely an
informational character but as being a primary technical feature linked to the character
and nature of the product. When comparing the sequences reported in P1/P2 and in P3,
the skilled reader, could not know whether, in spite of the differences, the sequences
were identical in their physical and biological characteristics; at least on paper the quoted
replacements of amino acids could imply important structural and functional differences.
The evidence submitted by the patentee was understandably restricted to the testing of a
limited number of parameters and left open the possibility that the two polypeptides could
differ in many other properties (see also T 351/01 on the disclosure of polynucleotides of
differing structure).
In T 1052/93 it was an essential feature of the wash adjunct products claimed in the
European patent that they contained sodium perborate monohydrate in conjunction with
a functionally defined activator. The priority document only mentioned certain activators
complying with the functional definition in the European patent; these specific
compounds could not be considered to disclose the broad group of activators functionally
defined in claim 1 of the European patent.

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In T 1054/92 of 20.6.96 claim 1 contained the feature that the absorbent structure had a
moisture content of less than 10%. This feature could not be derived from the
disclosures in the first and second priority documents. The said upper limit was only
introduced by the third priority document. The board could accord to the subject-matter
of claim 1 only the third priority date. The feature concerning the moisture content of less
than 10% was an essential element. The relevant feature appeared in claim 1 as
originally filed and was relied upon by the appellant in the examination proceedings
when seeking to distinguish the subject-matter of this claim from cited prior art.
In T 277/95 the Board found that, a claim to a method of producing in CHO cells rhEPO
characterised by the presence of a specific glycosilation pattern did not enjoy priority
from a priority application which made available the cell line but gave no information on
the specific glycosilation pattern.
In T 479/97 a first priority document characterised the pelC gene claimed in the
subsequent application as being on a 5kb DNA fragment which was carried by a
deposited plasmid. The board found that even if the sequence of the DNA fragment was
known this did not necessarily imply that the provision of this fragment made available in
a direct and unambiguous manner a specific gene which it contained, if only because the
5kb fragment which was bigger than the gene of interest might carry more than one
gene.
In T 351/01 a polynucleotide which was the subject-matter of claim 1 was characterised
both in structural terms (as defined in Figure 2) and by its function ("encoding a
biologically active tissue factor protein which induces coagulation"). Priority documents I
and II disclosed a polynucleotide having the same function but having a different
structure from that of the polynucleotide of claim 1. Hence the subject-matter of claim 1
could not be seen as the same subject-matter as that disclosed in the priority
documents.
1.5.3 Example of disclosure of essential features of an invention
In T 172/95 the appellant/opponent challenged the validity of a priority claim, arguing that
for the copolymer the subsequent European application contained information not to be
found in the priority document. The board did not follow this argument. As to the
objections concerning the fractionation method the appellant could provide no evidence
whatsoever for his allegation that the differences which were present would result in
different ethylene polymers being claimed in the priority document and in the patent in
suit. In contrast, the respondent provided evidence of the contrary.
Regarding the calculation methods for two parameters defining the claimed copolymer
the board pointed out that the passage not present in the priority document did not
change anything in the actual method of determination of these parameters, but merely
specified how a person skilled in the art would normally operate. Therefore, the
introduction of the above passage into the application as filed did not change anything in
the definition of the copolymer, hence did not in substance modify the teaching of the
priority document. Whereas in the priority document the copolymer could have one or
more melting points, in the subsequent European application the possibility of two
melting points was excluded.

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1.6. Solution of the same problem

In T 647/97 the board stated that the invention or subject-matter of a previous application
was to be considered the same as that of a subsequent application if the disclosure of
both applications was the same. This not only required that the solution to a given
problem (ie the features of the main claim) was the same, but also that the problem itself
was the same in both applications. The proper definition of the problem to be solved in
the priority document as understood by the skilled person reading the document with his
common general knowledge in the art at its filing date was decisive to that end.
The board noted that the priority document only mentioned solid and gel copolymer
compositions for providing a sustained-release composition for treating periodontal
disease (first problem), but was silent about any fluid or liquid compositions. The skilled
person would moreover not consider fluid and liquid compositions as a suitable solution
for the problem addressed in the priority document. It is only disclosed in the contested
patent that the fluid and liquid compositions surprisingly transform into a near solid phase
and would therefore be suitable for treating difficult to reach areas of periodontal cavities
(second problem). It constituted therefore a second invention involving a different
problem and a different solution.
1.7. Error margins and definitions of limits
Prior to G 2/98 (OJ 2001, 413), it was sometimes possible to claim error margins or
definitions of limits which differed in the subsequent application from the original one. In
the jurisprudence which came after G 2/98, however, reference is no longer made to the
decisions handed down in T 212/88 (OJ 1992, 28), T 957/91, T 65/92 and T 131/92 (see
"Case Law of the Boards of Appeal of the EPO", 3rd ed. 1998, p. 263 et seq.). But since
the facts are only comparable up to a certain point, it is not possible to say unequivocally
to what extent the principles laid down earlier still apply.
In T 201/99 the cited priority applications disclosed, in respect of the mean residence
time of the material in the granulator/densifier, either the range "from about 1-6 minutes"
(claim 1 of both priorities) or, for all the examples, a specific residence time of "about 3
minutes". In contrast, claim 1 of the granted patent claimed a mean residence time of "1-
10 minutes". The appellant had argued that the upper limit of "6 minutes" was not
disclosed in the cited priorities as a cut-off value (ie as possibly related to the function of
the invention and its effect) and thus constituted a feature which might be modified
without changing the nature of the invention.
This argument was not accepted by the board, which held that, even if for the sake of
argument the range of "about 1 to 6 minutes" given in the priority applications was
interpreted as an open range extending far beyond "6 minutes", the value of "10
minutes" as well as, for instance, the range from above 6 minutes up to 10 minutes still
constituted selections not disclosed in the priority applications. It followed that for a
skilled person applying his common general knowledge the value of "10 minutes", at
least, was not derivable directly and unambiguously from the prior applications.
The invention in T 423/01 concerned a method for analysing length polymorphisms in
simple or cryptically simple DNA regions. The priority document contained a definition of
the simple DNA sequences analysed according to the invention. According to this
definition, these sequences incorporate short DNA motifs repeated in tandem repeats
and containing at least one nucleotide and a maximum of approximately 6 to 10

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nucleotides. Example 2, which was identical to Example 2 in the application, described

the detection of length polymorphisms of a DNA sequence containing a trinucleotide
sequence as repeating unit. According to claim 1 of the patent in suit, the DNA
sequences in the invention incorporated repeating units of between three and six
nucleotides. The respondents objected that the claimed upper limit, in particular, could
not be found in the original documents.
The board considered the decision T 201/83 (OJ 1984, 481) to be relevant to the
question of rightful priority claims, although it is concerned with the original disclosure of
quantitative ranges of values within the meaning of Art. 123(2) EPC. According to this
case law, an amendment to a range in a claim is allowable on the basis of a particular
value described in a specific example, provided the skilled man could have readily
recognised this value as not so closely associated with the other features of the example
as to determine the effect of that embodiment of the invention as a whole in a unique
manner and to a significant degree. Applying the above case law, the board held that the
claimed priority was validly claimed. The board had already established, in the context of
Art. 123(2) EPC, that the phrase "approximately 6 to 10" explicitly disclosed the number
six. A range between the value 3 disclosed as preferred in Example 2 and the lowest
value of the "range" already mentioned in the priority document for the upper limit value
(at least one nucleotide and a maximum of 6 to 10 nucleotides) was to be considered
disclosed by the original application.
In T 250/02 the board found that the subject-matter of a claim for a herbal essential oil in
which the total amount of carvacrol and thymol was at least 55%, and preferably 70%, by
weight of the said essential oil could not be derived directly and unambiguously from a
priority document disclosing a herbal oil containing "thymol and carvacrol in levels of
55% to 65%".
Further decisions concerned with differing ranges indicated in a priority document and
disputed sets of claims include, inter alia, T 903/97, T 909/97, T 13/00, T 136/01,
T 494/03 and T 537/03. T 788/01 emphasises that a generic disclosure cannot provide
priority for a specific embodiment not disclosed in the priority document.
1.8. Selection from generic disclosure
A generic disclosure implicitly encompassing two or more alternative embodiments
cannot generally give rise to a right of priority in respect of one specific embodiment that
is neither explicitly nor implicitly disclosed (T 61/85 and T 30/01).
T 77/97 related to a case in which two dependent claims 4 and 5 of a European
application related to individual compounds which were part of the group defined by the
generic formula of claim 1. Claim 3 of the priority document defined by means of a
generic formula a group of four chemical compounds, including the compounds
according to the two claims 4 and 5 of the subsequent European application.
The board acknowledged that the priority document contained sufficient information for a
skilled person to obtain without difficulty the four chemical compounds according to the
generic formula of claim 3. However, this affirmative conclusion could not automatically
lead to the recognition of the priority in relation to claims 4 and 5 concerned. With
reference to decision T 409/90 (OJ 1993, 40; see above under Chapter IV.B.1.3), the
board pointed out that it was not sufficient to establish that the compounds concerned fell
within the scope of the claims of the previous application, and that they could be

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prepared without difficulty in accordance with the information contained in this

application.
The expression "the same invention" as used in Art. 87(1) EPC had to be interpreted in
conformity with the requirements of Art. 88(2) to (4) EPC. Before a decision on the
claimed priority could be taken, it was first necessary to establish the elements for
which this priority was being claimed and whether these elements of the invention were
revealed in a precise manner in the priority document. The applicant claimed the right
of priority not only in respect of the element which distinguished all the compounds
claimed in all the claims of the European application from the prior art, but also in respect
of the specific combination of individual substituents which precisely defined the actual
chemical compounds. It was therefore necessary to examine whether these elements,
this set of features, had been revealed precisely by the documents of the prior
application, as required by Art. 88(4) EPC.
Although there was no doubt that the priority document described a very narrow group
as being preferred, it did not, however, distinguish between the four compounds of this
group, and neither did it specify that the formula of claim 3 had to be considered as an
"abridged" formulation of a list or table indicating four individual chemical compounds. As
a consequence, claims 4 and 5 could not be granted the claimed priority right (see also
T 295/87).
The invention at issue in T 30/01 concerned an apparatus for optical imaging and
measurement. The board rejected the appellant's argument relating to an implicit
disclosure in the priority document of two possible implementations of the teaching of the
document, noting that its description unmistakeably indicated the provision of the light
steering means "in the sample arm". This precise disclosure deprived of support the
appellant's construction of the disclosure as implicitly disclosing the provision of the light
steering means in and outside the probe as two complementary alternative
implementations - let alone as disclosing any specific one of these two alternatives by
way of "implicit disclosure" by reference to common general knowledge (T 823/96,
T 744/99 and T 818/00). The board also pointed out that the appellant's contention was
at variance with the criterion consistently applied by the boards of appeal that a generic
disclosure implicitly encompassing two or more alternative embodiments can
generally not give rise to a right of priority in respect of a specific one of the
embodiments that is neither explicitly nor implicitly disclosed (T 61/85) the latter criterion
being a particular form of the "disclosure test" laid down in G 2/98 (OJ 2001, 413) and
constituting the logical corollary of the established principle - confirmed in opinion G 2/98
(see also T 744/99) - that no right to priority can be acknowledged for an invention that is
regarded as novel over the disclosure of the corresponding priority document.
2. Claiming the invention disclosed in the earlier application in the
subsequent application
IV.B.2. Claiming the invention in the subsequent application

The features of the invention disclosed in the priority application must also characterise
the invention claimed in the subsequent application.
2.1. Implicit features of the technical teaching of the subsequent application
In T 809/95, the opponents submitted that the "thin-walled" feature, which was
disclosed in the first priority application as essential, was not contained in granted
claim 1. The board of appeal was of the opinion that granted claim 1 was based on a

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"collapsible" plastic bottle "produced by the blow-moulding method" which had folds "to
facilitate a reduction of volume upon the exertion of a pressure applied to the walls by
hand". This description in itself implied that the bottle would have to be made from thin-
walled plastic flexible enough to be collapsible by hand when empty, as required by
independent claim 3 in the first priority application.
2.2. Features missing with respect to the earlier application
2.2.1 Omission of non-essential features
In T 809/95, the opponents maintained that the claim at issue did not contain all the
features which a skilled person would recognise as essential from the second priority
document, with the result that the claim was directed to another invention. The board
established, however, that the features which the opponents thought were missing were
not connected in any recognisably close way with the problem put forward in this priority
document. This problem was not solved by the missing features, but by other features,
all of which could be found in the claim. Thus the subject-matter of this claim was entitled
to claim the second priority.
In T 576/02 the board pointed out that the omitted feature was even less essential in that
it did not even appear in the independent claims of the priority document, which by
definition specified all the essential features of the invention.
In T 515/00 the appellant had argued that features pertaining to hardware components
relating to the printing process were no longer present in the claim and that there was no
basis in the priority document for the deletion of these features. The board referred to
G 2/98 (OJ 2001, 413, point 8.3 of the Reasons), in which the Enlarged Board had
warned against an approach whereby a distinction was made between technical features
which were related to the function and the effect of the invention and technical features
which were not. Priority could not be acknowledged if a feature was modified or deleted,
or a further feature was added.
The board further noted that a claim passed the priority test if its subject-matter could be
derived from the previous application as a whole. It followed that comparing the claim
with the corresponding claim of the previous application was not a valid approach to
performing the "priority test". The priority test was basically a disclosure test in which the
skilled reader could use common general knowledge. If, in the description of the previous
application, a distinction was made between features that were essential for the
performance of the invention and features which were not, the latter could be deleted
from the subject-matter of a claim without losing the right to priority.
The omitted hardware components were nowhere presented as essential features in the
priority document's description. The skilled reader would not have any reason to assume
that they were essential merely because they were present in claim 1 of the priority
document.
2.2.2 Omission of indispensable features
In T 134/94 the priority document disclosed a process which worked under specific
conditions indicated as features (a) to (d). Requirements (a) and (c) did not appear in the
granted claim of the patent in suit. The board held that this claim was not entitled to
priority. As requirements (a) and (c) did not appear in the granted claim the scope of the
invention as defined thereby comprised areas which, according to the priority document,

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did not belong to the invention. Thus the invention defined by granted claim 1 was not
the same as the invention defined in the priority document. On the priority date the
technical problem underlying the invention was considered to be solved only if each of
the conditions (a) to (d) was satisfied; according to granted claim 1 features (a) and (c)
were no longer necessary for solving the problem underlying the invention.
On this point, the board argued that the respondent's position, which was that the priority
claim should be acknowledged whenever the disclosure of the priority document would
destroy the novelty of the claims of the later application or patent ("novelty test"), had no
basis either in the EPC or in the EPO case law. Such a position would imply that
essential features of an invention disclosed in a priority document could be omitted in a
later application based thereon without loss of priority right. However, if an essential
feature of an invention was so omitted, the invention was no longer the same, ie the
requirement of Art. 87(1) EPC was not fulfilled.
In T 552/94 the patent's claim 1 lacked four features which according to the priority
document were indispensable for carrying out the invention. In other words, they were no
longer essential to the invention as now defined. Citing T 134/94 and T 1082/93, the
board found that without those features the invention according to claim 1 could not be
the same as that described in the priority document, and the requirements of
Art. 87(1) EPC were therefore not met.
In T 1050/92 the disclosure of the invention in the earlier application provided an
adequate basis for replacing the term used in said application with a more general one in
the European application.
3. Enabling disclosure in the priority document
IV.B.3. Enabling disclosure in the priority document

As already stated, Art. 87 EPC requires that the European patent application and the
application whose priority is claimed relate to the same invention. The main criterion in
this respect is whether the claimed invention is disclosed in the priority document as a
matter of substance, ie with all its essential features. The disclosure of the essential
elements must be either express, or be directly and unambiguously implied by the text.
Missing elements which are to be recognized as essential only later on are thus not part
of the disclosure (T 81/87, OJ 1990, 250; T 301/87, OJ 1990, 335; T 296/93,
OJ 1995, 627; T 188/97). T 81/87 and T 296/93 also emphasise that the priority
document must disclose the invention claimed in the subsequent application in such a
way that it can be carried out by a person skilled in the art (T 193/95). As well as
T 441/93, see on this issue the decisions set out below:
In T 81/87 (OJ 1990, 250), concerning living cells capable of expressing bovine
preprorennin, only the priority claim of the second previous application was valid
because in the first one the steps leading to the desired bovine preprorennin gene were
not sufficiently disclosed. The board took the view that in order to give rise to priority
rights the essential elements, ie the features of the invention, in the priority document
had to be either expressly disclosed or directly and unambiguously implied in the text as
filed; missing elements recognised as essential only later on were not part of the
disclosure, and gaps with regard to basic constituents could not be retrospectively filled
by relying on knowledge acquired in this manner. It could become a misuse of the priority
system if some parties in a competitive situation were allowed to jump ahead of others

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on the basis of mere expectations and by omitting the critical features of the invention
altogether (see eg T 843/03 and T 20/04).
In T 296/93 (OJ 1995, 627) the board examined whether the priority document was
deficient in respect of relevant technical information necessary for reducing the claimed
invention to practice by the person skilled in the art without undue burden. Equally, in
T 207/94 (OJ 1999, 273) the board examined the question of whether the requirement in
Art. 87 EPC that the same invention must be claimed in the priority application and the
European patent application was fulfilled in the sense that the priority application
disclosed the invention claimed in the subsequent European application in an enabling
manner.
In T 767/93 claim 1 of the European patent related to a process which comprised
expressing from a recombinant DNA vector in a suitable host organism a polypeptide
capable of raising HCMV-neutralising antibodies in humans. The board found this
invention to be the same as that disclosed in the first priority document: the reported
DNA and amino acid sequences were identical and the teaching of the priority document,
as it would be read by a skilled person, was not limited to a specific example but was of
more general scope, since it referred to the expression of a protein from the isolated
genome fragment by using conventional genetic engineering techniques in suitable
vectors and also mentioned the possibility of expressing discrete portions of the protein.
The lack of actual human clinical data with respect to "the capability of raising HCMV-
neutralising antibodies in humans" did not necessarily lead to the conclusion that
essential elements were missing in the disclosure of the first priority document.
In T 919/93, claim1 of the European patent comprised a reference to the inactivation of a
virus related to Acquired Immune Deficiency Syndrome (AIDS) which was neither cited
expressis verbis in the priority document nor implicitly derivable therefrom.
The board referred to T 449/90 where it was stated that the feature of inactivation of the
NANB- hepatitis or AIDS virus upon dry heating had to be testable by the skilled person
in order for the European application to fulfil the requirement of sufficiency of disclosure.
In the application as filed, there were passages relating to a method for testing virus
inactivation in dry heated blood clotting factor preparations based on the use of thermally
highly stable viruses as virus inactivation indicators. This technical information was
considered by the board in that case to be sufficient for the skilled person to evaluate
whether NANB-hepatitis or AIDS virus had been substantially inactivated by the heat
treatment and thus the requirements of Art. 83 EPC were found to be fulfilled.
In T 919/93 however, these passages in the European application as filed, essential for
the patent application to meet the requirements of Art. 83 EPC had no counterpart in the
priority document, which was thus not enabling for the claimed subject-matter. Thus in
the case in point the priority could not validly be claimed.
In T 843/03 the board pointed out that the priority document had to provide an enabling
disclosure (see, for instance, T 81/87, OJ 1990, 250; T 193/95). The board recalled that
it has been established in a number of board of appeal decisions that sufficiency of
disclosure presupposes that the skilled person is able to obtain substantially all
embodiments falling within the ambit of the claims and that he/she, in order to reach this
goal, may not be confronted with undue burden.

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 IV.C. First application in a Paris Convention country

The examining division had rejected the application for lack of novelty, as in its view the
first priority document was not enabling for the production of the claimed VLP (virus-like
particle) comprising human papilloma virus-16 (HPV-16) L1 capsid protein. However,
based on previous case law on the requirement of Art. 83 EPC (T 19/90, OJ 1990, 476)
and on the novelty requirement (T 464/94) the board concluded that, when an applicant
provided a technical disclosure and prima facie evidence as to certain technical
elements in an application, it was the EPO which had the burden of proof when
judging that something was not shown. According to the appellant, four particles shown
in an electron micrograph forming part of the priority document represented HPV type 16
VLPs which were the result of a procedure disclosed in the priority document with
respect to HPV-11 VLPs. The board held that the examining division had not taken the
legally appropriate approach when deciding to the disadvantage of the applicant with the
reason that "[…] no absolute fact can be deduced from figure 7 as to whether it shows
correctly formed HPV 16 particles or not". The board did not see full proof of such facts
as a requirement within the framework of the EPC and could not see any serious doubts
of the examining division substantiated by verifiable facts.
C. First application in a Paris Convention country
First application in a Paris Convention country
IV.C. First application in a Paris Convention country

In principle, only the first application filed in a state party to the Paris Convention can
form the basis of a priority right. In the EPC, this is made clear in Art. 87(1) and (4) EPC.
If, apart from the application whose priority is being claimed in the subsequent European
application, an earlier previous application was also filed, it must be established whether
the invention claimed in the subsequent application was disclosed in the earlier
application, which would render a priority claim based on the later previous application
invalid. The same principles have to be applied as when establishing identity of invention
between the application forming the basis of priority and the application claiming priority.
The question is whether the person skilled in the art can derive the subject-matter of the
claim of the subsequent application directly and unambiguously, using common general
knowledge, from the previous application or only from the later one.
In T 323/90 the board concluded that the alleged first application disclosed a different
invention to that in the European application and the application from which priority had
been claimed: the claimed process (for increasing the filling power of tobacco lamina
filler) differed as regards both the moisture content of the tobacco for processing and the
first step in the process.
In T 400/90 priority had been claimed from a US application in respect of a European
application concerning an electromagnetic flowmeter. The opponents submitted that the
same invention was already the subject of an earlier US application filed by the same
applicant outside the priority period: the earlier US application disclosed all the features
contained in the European application with the exception of the use of saddle-shaped
coils; however, the latter were already known and used frequently. In the board's
opinion, the question to be answered was whether the use of saddle-shaped coils had
been disclosed in the earlier US application, and not whether it was obvious to use
such coils in place of the magnets disclosed in the earlier application. The board came to
the conclusion that the inventions claimed in the US applications were different and
priority had rightly been claimed from the later application because, according to the
teaching of the earlier application, coils of any shape could be used, whereas according
to the teaching of the priority document saddle-shaped coils had to be used.

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First application in a Paris Convention country

In T 184/84 a method of producing a single crystal of ferrite was claimed in a Japanese

application, the priority of which was claimed in respect of a European application, and in
a previous Japanese application. The starting materials were defined differently in the
two Japanese applications. The method disclosed in the later application and the
European application was clearly more advantageous than that forming the subject-
matter of the earlier Japanese application. The board held that the significant differences
in properties were indicative of the presence of different materials and therefore found
that the earlier Japanese application was not the first filing of the invention claimed in the
European patent application. It based its finding on T 205/83 (OJ 1985, 363), which
stated that the novelty of products prepared using a modified process could be
established by the fact that according to an empirical principle in chemistry, a product's
properties were determined by its structure, so that differences in the properties of
products indicated a structural modification.
The subject-matter in T 107/96 of the patent in suit contained the feature "angle of
contact greater than 120", which feature was disclosed in the later previous US
application P2. In P2 a particular advantageous effect was also attributed to the large
extent of the said "angle of contact". The earlier previous US application P1 was totally
silent about the aforementioned feature "angle of contact" and its advantageous effect.
However, the figures of P1 represented diagrammatic and schematic drawings. The
board stated that, therefore, in line with the established jurisprudence of the boards of
appeal, they could not serve as a basis for determining the extent of a minimum "angle
of contact" because dimensions obtained merely by measuring a diagrammatic
representation of a document did not form part of the disclosure. Hence, the said feature
"angle of contact greater than 120 ", was not disclosed in the earlier previous US
application P1 but only in the later previous US-application P2.
In T 449/04, in order to establish whether the application whose priority was claimed was
the "first application" within the meaning of Art. 87(1) EPC, the Board had to compare the
subject-matter of this application with the subject-matter of the earlier application D1
(Art. 87(4) EPC). In its assessment the Board followed the interpretation of Art. 87 EPC
given in Opinion G 2/98 (OJ 2001, 413) of the Enlarged Board of Appeal which states
firstly that the concept of the "same invention" in Art. 87(1) EPC had to be narrowly or
strictly interpreted, and secondly, that the description of the invention of the earlier
publication had to be considered as a whole.
The application whose priority was claimed had lowered the cobalt-content of the steel
as compared to D1 without adversely affecting the mechanical properties. Given the fact
that D1 dissuaded from providing a maraging steel with this lowered cobalt-content, the
invention disclosed in D1 was not the "same invention" as the one disclosed in the
application whose priority was claimed. Yet, at the same time, the earlier application D1
included a comparative example, the composition of which fell within the elemental
ranges of the maraging steel claimed in the present application as well as the application
whose priority was claimed, which has lead the Examining Division to the conclusion that
the subject-matter at issue was already contained in D1. However, the Board
emphasised that the "same invention" considered in Art. 87(1) EPC did not encompass
the comparative examples which are clearly and definitely excluded from the scope of
the invention in the earlier application D1. Having regard to the strict and narrow
interpretation of the term "the same invention" pursuant to Art. 87(1) EPC, this term is
focussed on what constitutes the elements of the invention.

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 IV.D.1. Publications during the priority interval

D. Partial and multiple priorities

Partial and multiple priorities

In cases where partial or multiple priorities can be validly claimed the subject-matters of
the subsequent application have two or more operative priority dates. In the case of a
partial priority that part of the subsequent application's subject-matters disclosed in the
previous application has the priority date of the previous application; for the remaining
part the date of filing of the subsequent application applies. With multiple priorities, the
priority of two or more previous applications is claimed. In this case, claims in the
subsequent application have the priority date of the previous application in which the
subject-matter subsequently claimed was disclosed. Multiple priorities may be claimed
for any one claim (Art. 88(2), second sentence, EPC), as long as several subject-matters
are included.
In such situations the question arises as to whether the published content of an
application forming the basis of a priority during the priority period belongs to the state of
the art which can be cited against the partial subject-matters of the subsequent
application which have a priority date after the date of publication.
1. Publications during the priority interval
IV.D.1. Publications during the priority interval

In G 3/93 (OJ 1995, 18), the Enlarged Board decided that a document published during
the priority interval, the technical contents of which corresponded to that of the priority
document, constituted prior art citable under Art. 54(2) EPC against a European patent
application claiming that priority, if such priority was not validly claimed. This also applied
if a claim to priority was invalid due to the fact that the priority document and the
subsequent European application did not concern the same invention because the
European application claimed subject-matter not disclosed in the priority document.
The Enlarged Board emphasised that the existence of a right of priority depended, inter
alia, on the fulfilment of the requirement of identity of invention, that is whether the
previous application disclosed the same invention as that claimed in the subsequent
European application. Where priority was claimed but could not be allowed because the
inventions were not the same (despite the fact that the unity requirement was fulfilled),
there was no right to priority. Consequently, any publication of the contents of a priority
document during the priority interval constituted prior art citable against elements of the
European application which were not entitled to priority (see T 441/91, T 594/90,
T 961/90 and T 643/96; for another view see T 301/87, OJ 1990, 335). T 131/99 stresses
that to that extent there is no difference between dependent and independent claims.
2. Different priorities for different parts of a European patent application
IV.D.2. Different priorities for different parts of a European patent application

In T 828/93 the board stated that it followed from Art. 88(3) EPC that different priorities
(including no priority, ie only the date of the European application) could be conferred on
different parts of a European application. All that had to be checked was whether the
subject-matter to be compared with the prior art, ie the subject-matter of the
independent patent claims, corresponded to the disclosure of the documents of the
priority application as a whole (see Art. 88(4) EPC). Only one (or, as the case may be,
no) priority could be conferred on each claimed subject-matter as a whole, insofar as
the subject-matter was defined by the given elements as a whole. This subject-matter as
a whole represented the invention, which either corresponded to the disclosure of a
priority application or not.

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T 132/90 concerned a case in which claim 1 of the contested patent contained a feature
B not disclosed in the Swiss priority document. The board held that a priority right
therefore subsisted only with regard to part of the subject-matter of the claim, ie claim 1
without feature B, but not with regard to the subject-matter of that claim as a whole. The
part of the subject-matter entitled to priority did not involve an inventive step. The
subject-matter as a whole of claim 1 of the European application, which only had the
priority status of the filing with the EPO, was no longer new because the patent
proprietors had published all its features after filing the Swiss application.
In T 127/92 a European patent application claimed the priority of two German utility
models, which had been published during the priority interval (documents D1 and D2).
The board of appeal took the view that priority had been validly claimed from D1 for
claim 1 and several dependent claims. It was necessary to establish whether those sub-
claims that also contained elements not disclosed in D1 were entitled to claim partial
priority from D1 for the subject-matter of claim 1 contained within them. On the basis of
the principles developed in G 3/93 (OJ 1995, 18), the board came to the conclusion that
D1 and D2 formed part of the state of the art in respect of these claims and that,
consequently, the subject-matter of these claims no longer involved an inventive step.
The patent proprietor therefore deleted them.
3. Multiple priorities for one claim
IV.D.3. Multiple priorities for one claim

In T 828/93 (see above) the board confirmed that, because of the legal situation
explained above, the possibility mentioned in Art. 88(2) EPC of multiple priorities for any
one patent claim related only to instances where, unlike in the case at issue, the claim
contained alternatives and could therefore be split into several subject-matters.
In the opinion given in G 2/98 (OJ 2001, 413) the Enlarged Board of Appeal analysed the
legislative intention behind Art. 88(2), second sentence, EPC and likewise concluded
that a distinction has to be drawn between the two following cases. The legislator did not
want several priorities to be claimable for the "AND" claim (eg a claim for features A
and B, with the first priority document disclosing claim feature A alone and only the
second priority document disclosing claim feature B). With regard to the "OR" claim the
Enlarged Board draws the following conclusion from the historical documentation relating
to the EPC: where a first priority document discloses a feature A, and a second priority
document discloses a feature B for use as an alternative to feature A, then a claim for A
or B can enjoy the first priority for part A of the claim and the second priority for part B of
the claim. It is further suggested that these two priorities may also be claimed for a claim
directed to C, if the feature C, either in the form of a generic term or formula, or
otherwise, encompasses feature A as well as feature B. The use of a generic term or
formula in a claim for which multiple priorities are claimed in accordance with Art. 88(2),
second sentence, EPC is perfectly acceptable under Articles 87(1) and 88(3) EPC,
provided that it gives rise to the claiming of a limited number of clearly defined alternative
subject-matters.
In T 620/94 it became apparent that the granted claim 1 covered two alternatives A and
B of the invention. Only alternative B was disclosed in the priority document; alternative
A was contained only in the subsequent European application. Prior art published during
the priority interval rendered obvious alternative A. The patent could thus only be
maintained in amended form, ie limited to alternative B.

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 IV.D.3. Multiple priorities for one claim

In T 441/93 the European patent related to a process for preparing a strain of the yeast
Kluyveromyces, which comprised transforming Kluyveromyces yeast cells with a vector
comprising, inter alia, a DNA sequence encoding a polypeptide. The invention disclosed
in the priority document was a process for the preparation of new strains of the yeast
Kluyveromyces, characterised in that protoplasts of such yeast were mixed with and
transformed by vector molecules. The appellant (opponent) argued that the generic claim
1 of the European patent did not enjoy the priority of the previous application because
the priority document did not mention the transformation of whole cells, which alternative
was covered by claim 1 (and other claims) of the subsequent application.
On the evidence put before it, the board concluded that the references to protoplasts in
the priority document were of crucial importance and that no mention had been made in
the priority document of the possibility of transforming whole cells. The board held that
it was decisive what process had been disclosed in the previous application since claim
1 of the subsequent application was directed to a process. In so far as claim 1 covered
whole cell transformation, it could only be entitled to the filing date of the European
application. It might be the case that all transformed cells which could be made using a
whole cell transformation process could also be made using the protoplast
transformation process of the priority document. But even this would not mean that claim
1 was entitled to the priority date for process aspects neither disclosed nor enabled by
the priority document. Accordingly, claim 1 was entitled to the filing date of the priority
application only in so far as it related to the transformation of protoplasts. The claims
could thus be divided into two groups with regard to priority: Group A, enjoying priority
rights from the previous application and comprising claim 1 in so far as directed to a
process for the transformation of Kluyveromyces protoplasts, and the related further
claims; and Group B, only enjoying the priority of the subsequent European application,
and comprising claim 1 in so far as not directed to a process for the transformation of
protoplasts, and the related further claims.
In T 665/00, there was a quite unusual relationship between the prior use claimed by the
applicant, the invention disclosed in the priority document and the subject-matter of the
disputed claims which can be summarised as follows:
(a) the alleged prior use took place between the priority date and the filing date of the
disputed patent,
(b) the subject matter of that prior use was described in the priority document,
(c) the subject-matter of the prior use fell within the scope of the claims of the disputed
patent, but
(d) the priority document did not necessarily describe all the subject-matters claimed.
In those specific circumstances, the question arose whether the alleged prior use might
be prejudicial to the novelty of the claims, even though it was described in the priority
document.
The board observed that, under Art. 88(3) EPC, the right of priority covered only those
elements of the patent application included in the application whose priority was claimed.
Different elements of a patent application could have different priority dates. In G 2/98
(OJ 2001, 413), the Enlarged Board of Appeal had stated that the approach of
recognising different priority dates also applied to a claim using a generic term or

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formula, provided that the use of such a term or formula gave rise to the claiming of a
limited number of clearly defined alternative subject-matters. Applying that case law to
the case in hand, the board concluded that, of the different alternatives contained in
claim 10 of the disputed patent (relating to a powder containing hollow microspheres the
specific mass of which was described by the generic term "less than 0.1 g/cm3"), the
non-compacted powders containing "Expancel DE" microspheres were covered by the
claimed date of priority. According to the board, the prior use claimed, which took place
after the date of priority and involved a product containing the same "Expancel DE"
microspheres, could not therefore destroy the novelty of powders containing those
microspheres according to claim 10 of the disputed patent, since they were covered by
the date of priority.

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 V. Right to a European patent

V. RIGHT TO A EUROPEAN PATENT

Right to a European patent
V. Right to a European patent

In G 3/92 (OJ 1994, 607), the Enlarged Board of Appeal was called upon to consider the
application of Art. 61(1)(b) EPC in the following circumstances:
The appellant had lodged a European patent application in 1988. The search report
revealed the existence of a prior application filed in 1985 for substantially the same
invention by a third party, to whom the appellant had revealed the invention in
confidence in 1982. This prior application had been published, and in 1986 deemed to be
withdrawn for non-payment of the examination fee. Thereupon the appellant claimed
from the UK Patent Office Comptroller, and was granted, entitlement to a patent for the
invention disclosed in the prior European application under Section 12(1) UK Patents Act
1977. The appellant was thus allowed under Section 12(6) UK Patents Act 1977 to file a
new application in the UK to be treated as having the same filing dates as the prior
European application. The appellant then filed a new European patent application in
respect of the invention disclosed in the prior application under Art. 61(1)(b) in 1990.
The referring Legal Board of Appeal took the view in its interlocutory decision J 1/91
dated 31.3.1992 (OJ 1993, 281) that the Comptroller's decision was a final decision
within the meaning of Art. 61 EPC. However, whilst entitlement to a patent was a matter
for national courts to decide, those courts had no power directly to provide a remedy
under the Convention, that being a matter to be dealt with by the EPO under Art. 61
EPC.
The referring board then went on to consider whether pendency was required under
Art. 61 EPC. As the article was open to differing interpretations, the board decided to
refer the question to the Enlarged Board.
The Enlarged Board of Appeal held that when it has been adjudged by a final decision of
a national court that a person other than the applicant is entitled to the grant of a
European patent, and that person, in compliance with the specific requirements of
Art. 61(1) EPC, files a new European patent application in respect of the same invention
under Art. 61(1)(b) EPC, it is not a pre-condition for the application to be accepted that
the earlier original usurping application is still pending before the EPO at the time the
new application is filed.
The Legal Board of Appeal therefore ruled in J 1/91 dated 24.8.1994 that the conditions
of Art. 61(1)(b) EPC had been met and accordingly remitted the patent application to the
Receiving Section for further prosecution.

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VI. RULES COMMON TO ALL PROCEEDINGS BEFORE THE

EPO
A. The principle of the protection of legitimate expectations
The principle of the protection of legitimate expectations

1. General issues
VI.A.1. General issues

A general principle well established in European Community law, and one generally
recognised in the EPC contracting states and board of appeal case law, is that of the
protection of legitimate expectations. Its application to procedure before the EPO implies
that measures taken by the EPO should not violate the reasonable expectations of
parties to such proceedings (G 5/88, G 7/88, G 8/88, OJ 1991, 137). Some decisions
also use the term "good faith" to describe this concept (J 10/84, OJ 1985, 71; J 38/97). A
key decision on this issue is G 2/97 (OJ 1999, 123), which is broadly based on the
previous case law (see also Chapters VI.A.1.3 and VI.A.2).
According to the case law of the boards of appeal, the principle of the protection of
legitimate expectations governing procedure between the EPO and applicants requires
that communications addressed to applicants must be clear and unambiguous, ie drafted
in such a way as to rule out misunderstandings on the part of a reasonable addressee. A
communication from the EPO containing erroneous information which misleads the
applicant into taking action causing the refusal of his patent application is null and void in
its entirety (J 2/87, OJ 1988, 330). An applicant must not suffer a disadvantage as a
result of having relied on a misleading communication (J 3/87, OJ 1989, 3). On the
contrary, if his actions were based on a misleading communication he is to be treated as
if he has satisfied the legal requirements (J 1/89, OJ 1992, 17).
The principle of the protection of legitimate expectations applies to all procedural actions
-whether formal or informal - taken by EPO employees vis-à-vis parties to proceedings
(T 160/92, OJ 1995, 35; see also T 343/95; T 460/95 of 16.7.1996; T 428/98,
OJ 2001, 494). Decision T 923/95 ruled that the principle of protection of legitimate
expectations applied to both ex parte and inter partes proceedings and in T 161/96
(OJ 1999, 331) the board explicitly stated that the requirements in connection with the
principle of good faith to be observed by the EPO were the same vis-à-vis all parties
involved in proceedings before the EPO, be they applicants, patent proprietors or
opponents.
The Legal Board of Appeal decided in J 13/03 that under Art. 48(2) PCT and
Art. 150(3) EPC the principle of the protection of legitimate expectations also applies to
acts performed by other authorities concerned in Euro-PCT proceedings during the
international phase such as the US Patent Office acting as receiving Office or as
International Preliminary Examining Authority.
1.1. Sources of legitimate expectations
Several decisions have specified the sources of legitimate expectations. In T 905/90
(OJ 1994, 306, Corr. 556) the board held that specific communications or other actions
within the framework of particular proceedings and official statements such as guidelines
were not the only sources of legitimate expectations; these could also properly arise from
the actual general conduct or established practice of organs of the EPO. All changes in
these practices should be officially announced at the earliest possible moment in order to
avoid misleading the parties.

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In J 25/95 (and in decisions given on the same day, namely J 14/95, J 15/95, J 16/95,
J 17/95 and J 24/95) the board drew up a list of these sources in the light of the case
law. It was pointed out that the source of legitimate expectations must be confined to
certain categories of information; information provided by the EPO in individual cases,
information contained in official statements of general applicability and published by the
EPO, eg in the OJ, established practice of departments of the EPO, and decisions taken
by the Enlarged Board because of its special role. The users' confidence in the continuity
of a practice based on a decision of the Enlarged Board might be considered particularly
legitimate since all boards of appeal were expected to follow the Enlarged Board's
interpretation of the EPC.
In J 27/94 (OJ 1995, 831) the board stated that there might be cases in which the public
had a legitimate expectation that the department of first instance would not deviate from
the established case law. This might apply if the relevant case law had become
enshrined in the consistent practice of the department of first instance, and in particular if
this had been made known to the public in published Guidelines, Legal Advice or Notices
from the EPO. On the other hand, several cases have drawn attention to the fact that a
single decision of a board of appeal cannot create a legitimate expectation that it will be
followed in future (J 25/95, T 500/00). More information concerning the effect of case law
on the legitimate expectations principle can be found below under the heading
"Departure from previous case law and the principle of legitimate expectations."
1.2. Examples of the legitimate expectations principle
In T 124/93 the opposition division had wrongly changed the date of its decision, giving it
a later one which had misled the parties about the time limit for filing the notice of appeal
and statement of grounds. Applying the principle of the protection of legitimate
expectations, the board ruled that the appeal was to be considered as filed in due time.
In J 18/96 (OJ 1998, 403) the board accorded a filing date to protect an applicant's
legitimate expectations, although he had not fulfilled a requirement under Art. 80 EPC.
By issuing a communication under R. 85a EPC, the Receiving Section had given him the
impression that his application was validly filed (see also J 5/89).
In J 15/92 the Legal Board of Appeal held that "in the case of a request whose true
nature is uncertain (ie it is unclear whether this is a request for re-establishment or a
request for a decision), the EPO should clarify the matter by asking the requester". It
would have been sufficient in the case in point for the EPO to invite the applicant to
define his request more precisely. For the EPO to interpret the request arbitrarily
constituted an error rendering the impugned decision null and void (see also J 25/92 and
J 17/04).
The Legal Board of Appeal suggested in J 17/04 that it was the EPO's responsibility to
provide forms which catered for all procedural possibilities in a clear and unambiguous
manner. In the case in point the applicant was allowed to rely on a possible interpretation
of the text of the EPO form in accordance with the principle of the protection of legitimate
expectations even if another interpretation was more current.
In J 27/94 (OJ 1995, 831) the board decided that if a declaration which was subject to a
condition and therefore invalid was treated as a valid procedural act by the EPO, the
EPO was not allowed later to go back on its own earlier conduct which served as a basis
for the applicant's decision on how to proceed, because this would have represented

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"venire contra factum proprium" and thus offended against a generally recognised legal
maxim.
Both T 160/92 (OJ 1995, 35) and T 428/98 (OJ 2001, 494) concerned information
provided by EPO employees by telephone. In T 160/92 the board did not deny that the
principle of legitimate expectations should govern all the actions of EPO employees
towards parties to the proceedings, including telephone conversations which were not
provided for in the EPC and did not, as such, form part of the formal procedure before
the EPO. However, since telephone conversations did not form part of the said formal
procedure, the board did not consider it necessary to conduct a detailed investigation
seeking to clear up what had been said in the relevant telephone conversations, the
sequence of procedurally relevant facts having been clearly established in the file. In
T 428/98 (OJ 2001, 494) the board held that an appellant might rely on information which
the board's registrar could be proved to have provided by telephone concerning the
method for calculating a time limit the appellant had to observe before the board if the
point of law on which that information was based had at that time not yet been clarified in
the case law of the boards of appeal.
Several recent cases deal with the attempt by the EPO to correct a decision that had
already been issued and sent to the parties. In T 1081/02, the board held that the
communication issued by the opposition division's formalities officer during the period for
appeal, stating that the decision already issued had been sent by mistake and should
therefore be disregarded, could not constitute a legally sound basis for regarding the
decision's validity as so doubtful that it could be considered void. According to the
applicable principle of the protection of legitimate expectations, however, the parties
could not be deemed to have failed to comply with the time limit for filing a notice of
appeal (Art. 108 EPC) (see also T 466/03).
The facts in T 830/03 were similar. A written decision was notified to the parties after the
oral proceedings before an opposition division ("the first decision"). A second written
decision ("the second decision") was issued together with a communication which
suggested that the first decision was superseded. The opponent filed a notice of appeal
outside the period of four months after the date of the notification of the first decision, but
within the time limit after the notification of the second decision. The board held that the
only legally valid written decision was the first decision but that, in application of the
principle of protection of legitimate expectations, the appeal was deemed to have been
filed in time.
Further examples of the principle of the protection of legitimate expectations can also be
found below under Chapter VI.A.2.
1.3. Limits of the legitimate expectations principle
The Enlarged Board observed in G 2/97 (OJ 1999, 123) that the notice sent by the
registry of the boards of appeal was a standard form, nothing more than an
administrative notice to inform the parties of the reference number of the appeal
proceedings. It had no legal consequences; it was not a "communication" within the
meaning, for example, of Art. 110(2) EPC. Such a notice could not be considered to give
rise to any misunderstanding.
The board decided in J 17/98 (OJ 2000, 399) that the principle of protection of legitimate
expectations according to which communications of the EPO, including official forms,

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must be clear and unambiguous, did not extend so far as to require comprehensive legal
advice to be contained in such forms. While forms must be clear and unambiguous, they
need not contain detailed explanations of the law. This was especially true for legal
issues which directly follow from the provisions of the EPC (see also T 778/00,
OJ 2001, 554).
Consequently, the board did not share the view of the appellants that EPO form 1004
(General Authorisation) should have informed the users of the difference between filing a
general authorisation and the appointment of a representative. This difference resulted
directly from the EPC itself. Thus, the fact that EPO form 1004 did not contain such
information did not render it ambiguous or misleading.
In the same vein, the board in T 1029/00 decided that the appellant could hardly cite the
lack of bank account information on EPO correspondence as the reason for making an
incorrect cash payment. Neither the EPC nor its implementing regulations required
"automatic" provision of this information, whether on all correspondence generally or in
certain specific cases. If necessary, applicants had to ascertain such bank account
information for themselves.
The board in J 29/97 emphasised that an examiner could not be treated as a legal
adviser of the appellant who had to consider what possible action the appellant might
wish to take. The principle of the protection of legitimate expectations did not extend that
far.
The board decided in J 5/02 that if the EPO provided a professional representative with
incorrect information on the basis of which he concluded that the relevant legal
provisions - in this case Art. 122 EPC - were no longer applicable, this was not a
violation of the principle of the protection of legitimate expectations. If he did not realise
the information was incorrect, he was guilty of fundamentally inexcusable ignorance of
the law; if he did realise it was incorrect, he was not misled.
1.4. The requirement of proof
A number of decisions have confirmed that proof is required where the EPO is allegedly
in breach of the principle of the protection of legitimate expectations.
In T 321/95 the board of appeal stated that the alleged oral agreement was not
mentioned anywhere in the communications between the primary examiner and the
appellant and was not derivable from the content of the file either. Thus, arguments
supporting the allegation of a violation of good faith could only be considered as the
appellant's personal opinion, which did not convince the board because there was no
evidence that there had been any agreement in the sense mentioned by the appellant
instead of simply a "miscommunication" between the primary examiner and the
applicant.
In case T 343/95, dealing with the content of a telephone call on which the appellant
based its allegation in respect of principle of good faith, the board was of the opinion that
even if it was not possible to establish the call's content beyond any reasonable doubt a
posteriori, in a case like the present one it was sufficient that the board was satisfied on
the basis of a balance of probabilities (ie that one set of facts was more likely to be true
than the other). There were indeed many circumstances in favour of the appellant's
submission, among them the fact that the appellant had had a similar problem in a

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parallel case where he reacted immediately. The board could find no logical reason,
especially taking into account the fact that his interest in the file had made him contact
the EPO, why he would not have made the payment had he known it was not to be
processed automatically. The board held that the conditions for the application of the
principle of legitimate expectations were fulfilled.
In T 460/95 (interlocutory decision of 16.7.96) the board stated that for applicants to be
able to claim that they had relied on incorrect information in accordance with the principle
of good faith, it had to be established that the erroneous information from the EPO had
been the direct cause of the action taken by the applicants and objectively justified their
conduct (see also G 2/97, OJ 1999, 123). Whether or not this was the case would
therefore depend on the individual circumstances of each case.
2. Obligation to draw attention to easily remediable deficiencies
VI.A.2. Easily remediable deficiencies

In J 13/90 (OJ 1994, 456) the Legal Board of Appeal held that, in accordance with the
principle of good faith, the EPO is obliged to warn users of the European patent system
of omissions or errors which could lead to a final loss of rights. A warning would always
be necessary when one could be expected in all good faith. This would presuppose that
the deficiency could be easily identified by the EPO and the applicant was in a position to
correct the deficiency and thereby avoid the impending loss of rights. The limits to the
scope of this principle were outlined in decision G 2/97 (OJ 1999, 123).
The Enlarged Board, on the basis of the established case law of the boards of appeal,
saw in G 2/97 no justification for the suggestion that the principle of good faith imposes
on a board an obligation to warn a party of deficiencies within the area of the party's
own responsibility (see also J 41/92, OJ 1995, 93; J 4/96, T 690/93, T 861/94,
T 161/96, OJ 1999, 331). The appellant's responsibility for fulfilling the conditions of an
admissible appeal cannot be devolved to the board of appeal. There can be no legitimate
expectation on the part of users of the European patent system that a board of appeal
will issue warnings with respect to deficiencies in meeting such responsibilities. To take
the principle of good faith that far would imply, in practice, that the boards of appeal
would have to systematically assume the responsibilities of the parties to proceedings
before them, a proposition for which there is no legal justification in the EPC or in general
principles of law. The Enlarged Board explained that the decision in T 14/89
(OJ 1990, 432) concerned the particular circumstances of that case - involving a request
for re-establishment of rights - and that there was no generally applicable principle to be
derived from it.
The Enlarged Board of Appeal, considering the question of law raised by T 742/96
(OJ 1997, 533), thus concluded that the principle of good faith does not impose any
obligation on the boards of appeal to notify an appellant of a missing appeal fee when
the notice of appeal is filed so early that the appellant could react and pay the fee in
time, if there was no indication - either in the notice of appeal or in any other document
filed in relation to the appeal - from which it could be inferred that the appellant would,
without such notification, inadvertently miss the time limit for payment of the appeal fee.
2.1. Examples of the obligation to draw attention to easily remediable
deficiencies
The principle of legitimate expectations was applied in J 11/89 where the Receiving
Section failed to take any particular action upon the receipt of Japanese patent

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documents intended to be considered as priority documents, but whose priority was not
claimed in the request for grant.
In J 13/90 (OJ 1994, 456) the Legal Board of Appeal decided that if, having regard to the
principle of good faith, the applicant could expect to receive a communication warning
him of an impending loss of rights, but that communication was not issued in due time,
the EPO must set a new period allowing the applicant to remedy the deficiency and
perform the omitted procedural act in due time.
Decision T 460/95 (interlocutory decision of 16.7.96) found that in the case in point the
irregularity was obvious and easy to identify, and the appellant could easily have put it
right during the time remaining. The registrar, when he received the request for an
extension, could and indeed should have seen that it was based on a misunderstanding
during a telephone conversation.
In J 3/00 the appellant filed an international patent application at the EPO as receiving
Office under the PCT (RO/EPO). The description and claims were filed, by mistake, in
Swedish, a language which the RO/EPO did not accept for filing international
applications. The board held that this deficiency in the application was immediately and
readily identifiable by the receiving Office on the face of the application in the course of
the Art. 11(1) PCT check. The appellant could in good faith have expected a warning.
Several examples concern missing or insufficient fee payments. In J 15/90 of 28.11.1994
the Legal Board of Appeal held that an insufficient payment of a fee did not result in a
loss of rights if the error occurred 18 days before the period expired and the EPO failed
to inform the applicant (see J 13/90, OJ 1994, 456). In T 923/95 a sum of DEM 1 200
instead of DEM 2 000 was mentioned in the fee payment voucher annexed to the notice
of appeal filed by the appellants (opponents). In the board's view, the EPO, which had
acknowledged receipt of the notice of appeal before the final date for payment of the
appeal fee, could at the same time easily have notified the appellants by fax that the
amount of DEM 800 was still outstanding. The board said it was clearly contrary to the
principle of good faith if in circumstances of this kind the EPO remained passive and
allowed a time limit to expire (in this case, one week later), where the consequence of
failure to observe the time limit was that the appeal was considered not to have been
filed.
In T 296/96, only 50% of the appeal fee was paid before the expiry of the time limit under
Art. 108, first sentence, EPC. However, since the formalities officer invited the appellant
to pay the remainder of the appeal fee and accepted its subsequent payment without
comment, the appellant could assume in all good faith that the appeal was deemed to
have been filed (Art. 108, second sentence, EPC) and that, as a consequence, it was not
necessary to file an application for restitutio in integrum. The appellant should thus have
been invited by the EPO to file an application for restitutio in integrum before the expiry
of the one-year time limit under Art. 122(2), third sentence, EPC. Since there was no
such invitation, the appellant, who was misled by the action of the formalities officer,
must, in accordance with the principle of the protection of legitimate expectations, be
treated as having paid the appeal fee in time. The appeal was thus deemed to have
been filed.

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2.2. Electronic filing of documents

The Notice from the EPO dated 3.12.2003 concerning the electronic filing of documents
within the meaning of R. 36 EPC (OJ 2003, 609) states that the electronic filing of
documents is not admissible in opposition and appeal proceedings.
In the ex-parte case T 991/04 the appellant had filed the notice of appeal together with
the grounds of appeal not by regular mail or faxed letter but by using the technical
means of the epoline® -system provided for by the EPO for filing documents relating to a
European patent application. The board held that the appeal did not comply with the
formal requirement "filed in writing" in Art. 108 EPC, but that it was deemed admissible
on the basis of the principle of good faith. The board stated that applicants could expect
that they be informed by the EPO about the use of the correct administrative channels
for filing documents with the EPO and, if they made a readily identifiable mistake, to be
warned accordingly. This principle applied in particular with regard to the newly
introduced epoline® -system because it was well-known that mistakes were more likely
under the new system.
In the ex-parte case T 781/04 the board also stated that an appeal filed via electronic
means did not comply with the requirement of Art. 108 EPC that an appeal must be filed
in writing. However, the appellant, who had filed the appeal via electronic means
(epoline®), had been misled into believing that the appeal had been duly filed. Therefore
the principle of good faith demanded that the appellant's error be rectifiable and the
appropriate remedy would be to allow the appellant's request for restitutio in integrum.
The board distinguished the facts of the case from T 514/05 (OJ 2006, 526) where the
formalities officer had noted that the appeal had been filed electronically, had informed
the party that this was not permitted and advised the party to file the appeal in the normal
way before expiry of the deadline. No reaction had been received from the appellant.
The board in T 514/05 held that the appeal was deemed not to have been filed.
2.3. Limits of the obligation to draw attention to easily remediable deficiencies
Cases concerning missing fees and insufficient fee payments have also been among the
cases highlighting the limits of the obligation to draw attention to easily remediable
deficiencies. In T 161/96 (OJ 1999, 331) the board came to the conclusion that there was
no basis for assuming an obligation on the part of the EPO to warn the party of an
impeding loss of rights relating to an underpayment of 40% of the opposition fee. J 2/94
involved a letter comprising a request without the necessary payment. According to the
board the appellant could not have expected to be informed of the missing fee. There
had been no evident indication in the appellant's submission which made a clarification
or reminder necessary. Indeed, as emphasised by the board, the EPO could, in practice,
often establish whether a specific fee had been paid only after the relevant time limit had
expired, once the complete data on all payments made during that period was available.
In T 445/98, the board considered that, because the department which cashed the fee
was not the same as the one which received the notice of appeal, the deficiency was not
easy to identify and the time between payment of the appeal fee and expiry of the non-
observed two-month time limit for filing the notice of appeal was too short, so that the
opponent could not expect a warning. Moreover, the board pointed out that the principle
of the protection of legitimate expectations did not extend so far as to relieve parties of
their responsibilities, as already stated in many decisions of the boards of appeal
(confirmed by T 778/00, OJ 2001, 554, following G 2/97).

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As pointed out by the board in J 12/94, it is incumbent on both parties to act in good
faith. In particular, a PCT applicant who received a R. 85a(1) EPC notice could be
expected to exercise a high standard of care in responding thereto. In this case it was
the applicant's responsibility to take all necessary steps to avoid a loss of rights,
particularly since re-establishment was not available as a remedy in respect of failure to
meet time limits for entry into the regional phase. The board decided that in the case at
issue the EPO had no duty to contact the applicant to warn it of the impending loss of
rights because the EPO had been proceeding on the assumption that the categorical
statement by the applicant that the PCT Chapter II procedure had been requested was
correct.
J 7/97 concerned a European patent application filed with the EPO by fax. One page of
the description was missing, however, whilst another was transmitted twice. The board
took the view that a single page missing from a lengthy description was not an "obvious
error" under the case law, at least in the circumstances of this particular case. The
applicant could not in good faith expect the EPO to check application documents for
completeness on the very day it received them. Nor could any such obligation be inferred
from the President's decision on fax transmissions (OJ 1992, 299). Art. 3 of that decision
required the filing office to notify the sender as soon as possible "where a document
transmitted ... is illegible or incomplete", as the latter adjective clearly referred to the
transmission rather than the actual document.
3. Courtesy services performed by the EPO
VI.A.3. Courtesy services performed by the EPO

The principle of the protection of legitimate expectations also applies to courtesy

services provided by the EPO where these are not worded so as to rule out any
misunderstanding on the part of a reasonable addressee. However, an applicant cannot
rely on the EPO systematically providing certain courtesy services and therefore is not
entitled to base a claim on their omission (J 12/84, OJ 1985, 108; J 1/89, OJ 1992, 17;
J 27/92, OJ 1995, 288).
In J 1/89 the board held that the applicant was entitled to rely on the accuracy and
completeness of information provided as a courtesy service. He could not, however, rely
on courtesy services not required by the EPC being systematically provided. An example
cited was the due date for a renewal fee. If an applicant paid a renewal fee late as a
result of a misleading reminder, he had to be treated as if he had paid in time.
In J 34/92 the fifth-year renewal fee had not been paid in full. The professional
representative did not however receive the communication the EPO usually issues
drawing attention to the fact that late payment of the renewal fee was possible upon
payment of an additional fee. Furthermore, the communication under R. 69(1) EPC was
sent out so late that a request for re-establishment of rights could no longer be submitted
within the one-year absolute time limit under Art. 122(2) EPC. The Legal Board of Appeal
referred to its consistent case law according to which the EPO may subsequently grant
applicants a time limit sufficient to allow them to perform acts they had been unable to
perform previously because of the EPO's failure to exercise due care; but this was only
applied to non-absolute time limits, as an absolute time limit, by definition, was non-
extendable.
In J 14/94 (OJ 1995, 825) the facts were quite different. The applicant had failed to pay
the third renewal fee. Nevertheless, the EPO continued the examination procedure for

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several years without informing the applicant of any loss of rights. The board held that if,
during a long period of time, the EPO by its conduct led the parties and the public to the
legitimate belief that no loss of rights had taken place, the EPO could not later refer to a
loss of rights which occurred several years previously as this would constitute "venire
contra factum proprium" and therefore contravene the principle of legitimate
expectations. In such circumstances, the late payment of a renewal fee might - by way of
exception - be considered as having been made in time if the EPO had not informed the
applicant of the outstanding payment, had accepted later renewal fees without objection
and had continued the examination proceedings for several years.
In J 27/92 (OJ 1995, 288) the appellant had raised the question of whether European
representatives were entitled to rely on the advice given by the Information Office. A
representative maintained that he had been misled by information voluntarily given to
him on the telephone by an officer of the EPO with regard to the amount of the
examination fee payable. The board pointed out that parties to proceedings before the
EPO - and their representatives - were expected to know the relevant provisions of the
EPC, even when such provisions were intricate. Where such a service had been
rendered, however, an applicant was entitled to rely upon its content if the
communication from the EPO was the direct cause of the action taken and, on an
objective basis, it was reasonable for the appellant to have been misled by the
information. These principles applied not only to written communications but also to oral
communications from the EPO.
4. Principle of legitimate expectations where the previous case law is
departed from
VI.A.4. Principle of legitimate expectations where the previous case law is departed from

4.1. General
In J 27/94 (OJ 1995, 831) the board stated that there might be cases in which the public
had a legitimate expectation that the department of first instance would not deviate from
the established case law. This might apply if the relevant case law had become
enshrined in the consistent practice of the department of first instance, and in particular if
this had been made known to the public in published Guidelines, Legal Advice or Notices
from the EPO. In such a situation, an applicant might legitimately expect that a practice
allowing or even recommending a particular way of proceeding would not be changed
without appropriate advance information.
In the case at issue, the applicant argued that J 11/91 (OJ 1994, 28) was binding on the
department of first instance on the basis of the principle of legitimate expectations.
However, the headnote of J 11/91 was published in the same issue of the OJ as the
referral of this point of law to the Enlarged Board of Appeal. Taking this information into
account, there was no reason to believe that the department of first instance would follow
J 11/91 in future cases. On the contrary, the Guidelines remained unchanged, which in
fact gave reason to expect that the practice based on them would likewise not be
changed. The department of first instance was therefore not obliged by the principle of
the protection of legitimate expectations, on the basis of decision J 11/91, to allow the
filing of a divisional application after the approval of the text intended for grant until
opinion G 10/92 (OJ 1994, 633) was made available to the public.
In J 25/95 the board stressed that the publication of J 11/91 in the Official Journal of the
EPO (OJ 1994, 28) as well as in the publication "Case Law of the Boards of Appeal of

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the EPO" did not create a legitimate and reasonable expectation that a divisional
application could be filed up until the decision to grant. There was no case in which
legitimate expectations had been accepted only on the basis of the publication of a
single decision of a board of appeal. The board observed, furthermore, that decisions of
the boards were not published because the EPO wished to announce that its users could
rely on them in future cases, but because the boards themselves considered them to be
of general interest in respect of the development of case law. If there was any doubt
whether the established practice in this respect existed, it was up to the appellants to
seek clarification by means of an enquiry to the EPO which would have revealed quickly
that the department of first instance did not apply J 11/91.
In T 740/98 the appellant submitted that the disclaimer had been allowed by the
examining division in conformity with the Guidelines for Examination (1994 version) and
the then established case law of the boards of appeal. Consequently the standards set
out in the subsequent decision G 1/03 (OJ 2004, 413) could not be applied, since this
would offend against the principle of good faith and the protection of the legitimate
expectations of the users of the EPO. The board noted that the legal system established
under the EPC does not treat either the Guidelines or established case law as binding.
Thus, any principle of protection of legitimate expectations cannot be based on earlier
Guidelines or case law. The board held that the standards set out in G 1/03 were
applicable to the case.
A similar issue arose in T 500/00 where the appellant argued that the disclaimer had
been made in good faith according to the Guidelines and in accordance with the practice
of the boards of appeal at the time when the disclaimer was made. The board noted that
what counted was not whether the opposition division had acted in accordance with the
Guidelines, but whether it had acted in accordance with the EPC. The board held that at
the time when the disclaimer was introduced the appellant could not expect that it would
be considered allowable. The board added that a single decision of the board of appeal
could not create a legitimate expectation that it would be followed in future. The principle
of good faith could thus not be invoked against the application of principles concerning
the allowability of disclaimers laid down in G 1/03 to pending cases.
4.2. Point in time from which a new decision which deviates from existing
practice becomes generally applicable
Several decisions were concerned with the question of when a new decision which
deviates from existing practice to the detriment of an applicant becomes generally
applicable and how the legitimate expectations of users of the EPO are protected. In
three decisions (G 5/88, OJ 1991, 137, concerning an administrative agreement; G 5/93
OJ 1994, 447; G 9/93, OJ 1994, 891) the Enlarged Board of Appeal reached the
conclusion that decisions overturning earlier rulings would not be applied up to the date
on which they were made available to the public.
According to G 5/93 (OJ 1994, 447) the EPO was bound, by its own interpretation and
practice, to admit the possibility of Euro-PCT applicants having their rights re-established
with regard to the time limit for paying the national fee provided for in R. 104b EPC (now
R. 107 EPC) in all cases where re-establishment of rights was applied for before
decision G 3/91 (OJ 1993, 8) was made available to the public (see also J 9/93).
In G 9/93 (OJ 1994, 891) the Enlarged Board of Appeal overturned its earlier ruling in
decision G 1/84 (OJ 1985, 299) and held that a European patent cannot be opposed by

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its own proprietor (see also Chapter VII.C.1.3). The Enlarged Board held that where
purely procedural matters are concerned there may be reasons of equity for not applying
the new interpretation of the law to pending cases. As to the referred question of the
admissibility of self-opposition, obviously patent proprietors in cases then pending before
the EPO had had every reason to expect that such an opposition would be considered
as admissible, relying on the decision in G 1/84, which had been followed for many
years. In the view of the board, it would be inequitable to prevent them from continuing
the proceedings, which they had embarked on in good faith and which could not
adversely affect the rights of any third party.
In T 716/91 the board came to the conclusion that G 4/93 (corresponding to G 9/92,
OJ 1994, 875) had also to be applied to pending cases. In the case in point an appeal
against the interlocutory decision of the opposition division maintaining the patent in an
amended form was only filed by the opponent. The respondent (patent proprietor)
requested that the patent be maintained as originally granted. In G 4/93 the Enlarged
Board of Appeal stated that under such circumstances the patent proprietor is primarily
limited to defending the amended version as accepted by the opposition division.
Therefore, in view of G 4/93, the board rejected the main request of the respondent in
spite of his argumentation that it was uncertain until the publication of G 4/93 whether it
was allowable for the patentee to maintain a request based upon the originally granted
claims and that contrary case law existed on this issue. The board pointed out that
G 4/93 did not contain any indication limiting the applicability of the law as interpreted
therein to pending cases. Therefore this case was not analogous to the situation in
G 9/93 (see above). On the contrary, following the arguments of the respondent itself
that "contrary case law" existed, the respondent should have taken the appropriate
procedural steps (in this case by filing an appeal) to ensure he could still request the
maintenance of the patent as granted, instead of taking the risk of the other possible
interpretation being followed by the present board.
In the Notice from the EPO, dated 2.11.2005, concerning divisional applications
(OJ 2005, 606) the EPO informed the public that, until the Enlarged Board of Appeal has
issued its decision in case G 1/05, all proceedings before EPO departments of first
instance (examining and opposition divisions) in which the decision depends entirely on
the Enlarged Board's decision will be suspended. Cases before the boards of appeal
may also be stayed. An example of a case which has been stayed pending the outcome
of G 1/05 is T 242/06.
In T 739/05, however, the board saw no reason to suspend the further prosecution and
the final decision of the case until a decision of the Enlarged Board of Appeal was issued
on an important point of law which might have been of importance for the case under
consideration. The board held that the decision of the Enlarged Board of Appeal could
not affect the outcome of the case because of the principle of the protection of legitimate
expectations relating to pending cases. Where existing long-standing practice laid down
in publications of the EPO is overruled by a new decision, consistent case law allows the
applicants of pending cases a transitional period during which they may rely on the
previous practice until the modifying decision is made available to the public.

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Right to be heard

B. Right to be heard
Right to be heard

1. The general principle

VI.B.1. The general principle

Under Art. 113(1) EPC the decisions of the EPO may only be based on grounds or
evidence on which the parties concerned have had an opportunity to present their
comments. This important procedural right is intended to ensure that no party is caught
unawares by reasons given in a decision turning down his request on which he has not
had the opportunity to comment. A decision which fails to take into account the
arguments submitted by a party and which is based on a ground on which the party had
had no opportunity to present its comments, contravenes Art. 113(1) EPC and
constitutes a substantial procedural violation (see J 7/82, OJ 1982, 391; T 1039/00,
T 778/98).
In J 20/85 (OJ 1987, 102) the board pointed out that Art. 113(1) EPC was of fundamental
importance for ensuring a fair procedure between the EPO and a party to proceedings
before it, especially when issues of fact arose. A decision against a party to proceedings
on such an issue of fact could only properly be made by the EPO after all the evidence
on which such decision was to be based had been identified and communicated to the
party concerned. Furthermore, in J 3/90 (OJ 1991, 550) the Legal Board of Appeal held
that where the EPO had examined the facts, Art. 113(1) EPC was not complied with
unless the parties concerned had been fully informed about the enquiries made and the
results and then given sufficient opportunity to present their comments before any
decision was issued (see also J 16/04).
1.1. The definition of "grounds or evidence"
The "grounds or evidence" under Art. 113(1) EPC are to be understood as meaning the
essential legal and factual reasoning on which the EPO has based its decision
(T 532/91, T 105/93, T 187/95, T 1154/04). In T 951/92 (OJ 1996, 53) the board ruled
that the term "grounds or evidence" should not be narrowly interpreted. In the case in
point, which related to examination proceedings, the board held that the term was to be
understood as referring to the legal and factual reasons leading to refusal of the
application, and not in the narrow sense of a requirement of the EPC.
In T 375/00 the appellant considered his right to be heard to have been violated on the
basis that the problem mentioned by the opposition division in its decision was different
to that discussed in the preceding proceedings. The board held that the appellant's right
to be heard had not been violated, because the definition of the objective problem was
part of the arguments, not part of the grounds as specified in Art. 113(1) EPC. In T 33/93
the board stated that the citation of a decision for the first time in the decision under
appeal was not a fresh ground or piece of evidence within the meaning of
Art. 113(1) EPC, but a mere repetition of arguments, since it only confirmed the position
duly brought to the appellant's attention.
In T 587/02 the board saw no fundamental objection to citing in the decision of an
examining division an IPER from an International Preliminary Examining Authority other
than the EPO, provided that it constituted a reasoned statement (as required by
R. 51(3) EPC) using language corresponding to that of the EPC. In the case of an
inventive step objection, that would require a logical chain of reasoning which could be
understood and, if appropriate, answered by the applicant. Since the IPER in this case

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did not fulfil these requirements, the board held that the applicant's right to be heard had
been violated.
1.2. Some examples of the principle
The right to be heard has not been observed if a decision to refuse an application is
based essentially on documents which, though supplied by the applicant in support of his
case, are used against him to produce an effect on which he has not had an opportunity
to make observations (see T 18/81, OJ 1985, 166). This principle also guarantees that
grounds put forward are taken into consideration, and it is contravened if a translation,
subsequently filed in an official language, of a Japanese document cited in due time is
disallowed (T 94/84, OJ 1986, 337).
In T 921/94 the board held that the appellant's bona fide submissions and the technical
information provided by its test report substantially changed the points at issue, and that
the examining division had a legal obligation under Art. 96(2) and Art. 113(1) EPC to
inform the appellant of the objections under the EPC arising in the new situation and to
invite it to file further observations before issuing a decision to refuse the application (see
also T 1154/04).
In T 385/97 the board held that if first instance departments and/or parties had failed to
take account of highly relevant matter which was clearly available in the EPO file and
which related to a ground of opposition, the board's competence extended to rectifying
the position by consideration of that matter, provided that the parties' procedural rights to
fair and equal treatment were respected.
In T 474/04 (OJ 2006, 129) the reason for the revocation of the patent in suit before the
opposition division was that the invention did not involve an inventive step over the prior
use evidenced by D14. D14 was an "eidesstattliche Versicherung" made by a person in
the employ of respondent 2 ("Mr S."). The appellant contested the affirmations in D14
and requested that Mr S. be summoned as a witness. Respondent 2 was prepared to
offer Mr S. as a witness. The opposition division did not summon Mr S. since his
declaration was "clear in terms of the scope of the apparatus which was demonstrated to
the public."
The board of appeal decided that the opposition division's decision not to summon Mr S.
as a witness although he was available handicapped the appellant in its defence against
what turned out to be the decisive piece of evidence. The appellant was effectively
prevented from having his evidence considered that the prior use had not taken place in
the way as alleged by respondent 2. This was all the more inappropriate since the prior
use was the respondent's own and the evidence therefore largely lay "within the power
and knowledge of the opponent."
1.3. Limits of the principle
In T 643/96 an examining division relied in its decision on a document for which it gave
only incomplete bibliographic data. The board held that the examining division's failure to
provide the applicant with a copy of the said document did not amount to a substantial
procedural violation, having regard to the right to be heard, because the document
added nothing to the case, since it listed something already listed in another document
and thus contained only information already known to the appellant/applicant.

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In T 405/94 the board held that a party which, although made aware by at least one letter
from another party that an objection had been raised about the availability to the public of
the content of a thesis, did not react before the oral proceedings at which a decision
could be taken, or which provided for the first time at the oral proceedings information
which was found to need confirmation, had had sufficient opportunity to comment on the
objection and did not need to be given a further opportunity for providing such
confirmation.
In T 296/96 the applicant did not submit convincing arguments in his reply to the first
communication. The examining division refused the application on the basis of the
objections mentioned in the only communication, instead of repeating the objections in a
second one. Since, however, the main arguments for refusing the application were a
mere repetition of those mentioned in the only communication, the contested decision
was based on grounds on which the applicant had had an opportunity to present his
comments and, consequently, Art. 113(1) EPC was not contravened. In T 821/96, the
board added that according to the established case law, it is left to the examining
division's discretion to decide whether to issue a further invitation to present comments
under Art. 96(2) EPC. A further invitation would only be appropriate if it would appear
likely that, in the light of the applicant's reply, the examination proceedings would
terminate in the granting of a patent (see also T 201/98).
1.4. Right to be heard and the timing of decisions
In T 663/99 the board decided that the patent proprietor's right to be heard was violated
if the time limit fixed under R. 57(1) EPC for presenting comments on the opposition had
not expired by the date of handing over a revocation decision to the EPO's internal
postal service (see also T 804/94).
In T 1081/02 the board of appeal decided that the principle of the right to be heard had
been violated since the opposition division, after inviting the patent proprietor to file
within two months the documents considered necessary to maintain the patent, did not
wait until this time limit had expired but issued an interlocutory decision prior to its expiry.
The board held that according to its spirit Art. 113(1) EPC also applied if a party is
denied the opportunity to speak, as it were, because a decision is issued before expiry of
a period granted to the party for the presentation of its comments.
In the ex parte case T 922/02 the board of appeal stated that the provisions of
Art. 113(1) EPC are only complied with, in a case where the decision is taken after the
remittal, typically by announcing the resumption of the proceedings, setting out the
objections, if any, and asking the appellant whether or not he wishes, within a fixed
period of time, to present his comments or modify his request(s). Otherwise any final
decision would come as a surprise to the appellant, which is contrary to the principle of
good faith and fair hearing established by Art. 113(1) EPC. The board followed in this
respect the case law developed in T 892/92 (OJ 1994, 664) and T 120/96 for opposition
procedures, which however is equally applicable to examination procedures because the
right to be heard is an essential procedural principle governing both procedures.
In T 849/03 the board decided that a decision should not catch the parties unawares. In
the examination procedure the right to be heard is therefore violated not only in the event
of failure to inform the applicant beforehand of the reasons forming the basis of a
rejection but also if, at the time the decision is issued, the applicant had no reason to
expect such a decision (see also T 1022/98).

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In T 685/98 (OJ 1999, 346), in the board's judgment, the phrase "fails to reply in due time
to any invitation under ... paragraph 2" in Art. 96(3) EPC has to be construed in the light
of the purpose of the invitation pursuant to Art. 96(2) EPC and R. 51(2) EPC, which is to
afford the applicant an opportunity to exercise his right to present comments in
accordance with Art. 113(1) EPC. Hence a letter from the applicant which neither
exercises nor waives that right is not a reply for the purposes of Art. 96(3) EPC. In the
present case, the examining division believed that the applicant, by making a simple
procedural request by return of post, had somehow forfeited his right to present
comments during the remainder of the four month term set for reply. However, on a
proper interpretation of the applicant's letter, he had neither exercised nor waived his
right under Art. 113(1) EPC to present comments on the substantive issues nor, as the
time set for reply had not expired, could he have forfeited this right. Thus the precipitate
refusal, while there were still some two months of the term for reply unexpired, did
indeed contravene Art. 113(1) EPC by depriving the applicant of an opportunity to
present such comments (see also the Chapter VII.B., "Examination Procedure").
In T 966/02, the opponent had filed two notices of opposition in due form and time. The
opposition division held that the second set of pleadings did not constitute a notice of
opposition but was merely a supplement to the first opposition and that the
subject-matter of claim 1 was not new as compared with document D1, which was only
submitted with the second set of pleadings (notice of opposition). The board held that
this finding infringed Art. 113(1) EPC because the opposition division had given its
decision without first asking the appellant (patent proprietor) to comment on the issue of
novelty and inventive step and without informing it that the material submitted with the
second notice of opposition, in particular D1, was to be taken into account in assessing
novelty. In the case in hand, it was clear that the patent proprietor regarded both notices
of opposition as inadmissible and thus felt that there was no sense in commenting on the
facts until the situation had been clarified. The appellant (patent proprietor) could not
have foreseen that the opposition division would give a final decision without first
clarifying the procedural situation and giving it an opportunity to comment on the facts in
the clarified situation, and it came as a complete surprise to it that it did so.
The case law concerning the specific aspects of the right to be heard which arise in
examination proceedings where a patent application is refused following a single
communication without a further invitation to submit comments is discussed in detail in
Chapter VII.B.3. The problem, relating to the right to be heard in opposition proceedings,
of when an invitation to file observations under Art. 101(2) EPC must be issued is also
discussed in the Chapter VII.C.2.
2. Right to be heard in oral proceedings
VI.B.2. Right to be heard in oral proceedings

2.1. Right to oral proceedings

Art. 113(1) EPC is also important in connection with the right to oral proceedings
provided for in Art. 116(1) EPC. In T 209/88 the board stated that non-compliance with a
request for oral proceedings deprived the party of an important opportunity for presenting
his case in the manner he wished and using the possibilities open to him under the EPC.
By virtue of his request for oral proceedings, the party could rely on such proceedings
being appointed before the issue of an adverse decision and therefore had no reason to
submit further arguments in writing. In this respect, Art. 116 EPC was considered an
essential part of the requirement under Art. 113(1) EPC that the party must be given

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sufficient opportunity to present his comments on the grounds for the decision
(reaffirmed by the same board in T 560/88).
2.2. Introduction of a new claim, relevant document or new argument
A number of decisions have been issued on the subject of enabling the parties to
exercise their right to be heard in oral proceedings when a new claim or relevant
document is introduced.
In a case where an opposition division or a board of appeal feels bound by
Art. 114(1) EPC to examine new facts or evidence submitted for the first time during oral
proceedings, it must, in accordance with Art. 113(1) EPC, give the other parties the
opportunity to comment before issuing a reasoned decision based on such facts or
evidence (G 4/92, OJ 1994, 149; cf. also T 484/90, OJ 1993, 448; with regard to late
submission see T 330/88 and T 356/94 as well Chapter VI.F.4.). The same principle has
also been applied to decisions of examining divisions.
2.2.1 Cases where new claims or relevant documents were introduced
In T 951/97 (OJ 1998, 440) the examining division introduced document D4 for the first
time during oral proceedings. D4 had been mentioned in the European search report but
had not been cited at any stage in the examination procedure prior to the oral
proceedings; in particular, no reference had been made to it in the communication under
R. 71a EPC. After a half-hour adjournment, the appellants filed a second auxiliary
request which, in the examining division's view, was prima facie not admissible and not
allowable. In response to this, the appellants submitted that a further opportunity for
amendment should be granted, since a newly cited document had been introduced by
the examining division, changing the subject of the proceedings. In addition, the
appellants should be given sufficient time to comment on D4. At the end of the oral
proceedings, the application was refused under Art. 97(1) EPC.
The board found that half an hour was too short a period for an adequate analysis of the
complex text of D4. It was clear that D4 was essential to the finding of the examining
division in relation to inventive step; consequently, the decision was based on evidence
on which the applicants did not have a sufficient opportunity to present their comments
as required by Art. 113(1) EPC (see also T 492/03). The examining division had also
decided under R. 71a EPC not to consider this second auxiliary request, on the ground
that the subject of the proceedings had not changed. The board, however, held that the
subject of the proceedings had been changed within the meaning of R. 71a(1) and
(2) EPC, inter alia where the examining division itself introduced a new document, which
was pertinent new material, into the proceedings for the first time during oral
proceedings convened following a R. 71a EPC notification.
In T 783/89 the opposition division had presented the parties at the start of the oral
proceedings with a new version of the main claim, giving them ten minutes to consider it.
The board ruled that this had taken the appellants by surprise. Nor had the time given
been enough to establish whether the amendments were allowable.
In a number of cases, the boards held that Art. 113(1) EPC had not been violated when
new claims or relevant documents were introduced.
In T 484/89 the board held that the opposition division was empowered under
Art. 114(1) EPC to take account of and refer to all relevant documents cited. If it intended

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to do so it would normally issue a communication to that effect when appointing oral

proceedings. In the case in question, however, the opposition division had considered it
necessary to refer to the document during the oral proceedings. In such cases the
parties should, at their request, be granted an adjournment or else new oral proceedings
should be appointed to give them the opportunity to comment. Since no such request
was made according to the decision or the record of the oral proceedings, no breach of
Art. 113(1) EPC had taken place.
In T 376/98 it was evident from the file that the examining division had referred to
document D4 for the first time during the oral proceedings. The examining division
interrupted the oral proceedings to give the applicant time for consideration. When the
oral proceedings were resumed, the appellant requested a decision based on the
documents on file.
Regarding the introduction of D4 at the oral proceedings, the board noted that no
procedural limitations were placed upon the examining division to cite relevant
documents during any stage of the examination procedure, as long as the applicant was
given a fair chance to comment on the objections raised before a final decision was
taken (see T 1198/97). In the board's opinion, the appellant's request for a decision could
only be taken to mean that the appellant was not interested in a further debate about the
relevance of D4 or its importance for the decision. In fact, the appellant's request left the
examining division no other choice than to decide the case straight away and no
procedural violation could be seen in the circumstances.
In T 566/91 the opposition division, albeit inadvertently, based its decision to revoke the
patent on a version of a citation which was more complete than the version which both
parties present at the oral proceedings before the board had in their possession. In order
to comply with Art. 113 EPC in the proceedings before the board, the board offered the
parties a half-hour suspension of the proceedings to enable them to study the fuller
version of the document with the help of the interpreters.
In T 248/92, the examining division had based its decision on arguments submitted for
the first time during oral proceedings. The board held that the examining division's
decision had not been taken contrary to Art. 113(1) EPC. Although one of the purposes
of oral proceedings was to settle as far as possible all outstanding questions relevant to
a decision, they did not have a constraining effect in the sense of requiring an
immediate decision to be taken at the end of those proceedings. If the appellant had felt
the need for further reflection, he could have asked for the oral proceedings to be
adjourned or for the proceedings to be continued in writing so that he could study
carefully the newly introduced arguments, which were obviously crucial to the decision.
2.2.2 Cases where no new claims, relevant documents or new arguments were
introduced
In T 195/84 (OJ 1986, 121) the representative objected at the oral proceedings that new
grounds were being presented, challenging the existence of an inventive step, to which
he had not previously had an opportunity to reply. The board could not share this opinion
as the representative had been aware that such prior art existed, and he had thus had
sufficient time to consider it in full. Furthermore, he had not requested any additional time
to examine this art in greater detail and had not asked for an adjournment.

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In T 327/92 the board held that reliance by the opposition division at oral proceedings on
a document originally cited in the opposition against a dependent claim only, as closest
prior art against an amended main claim, does not amount to a substantial procedural
violation where the patentee had the opportunity to comment at oral proceedings.
2.3. Changes after oral proceedings
In T 862/98 the decision of the department of first instance was signed by an opposition
division different from that before which the oral proceedings had taken place, the
second member having been replaced after the oral proceedings. The board decided
that changes in the composition of an opposition division after oral proceedings should
generally be avoided. This also applied to cases where no final substantive decision had
been given orally. Where changes were unavoidable, new oral proceedings must in
general be offered to the parties (see the analogous rule in Art. 7(1) RPBA). Such offers
might be forgone in exceptional cases.
In the appellants' view, the opposition division had violated Art. 113 EPC by changing its
provisional opinion after the oral proceedings without giving the appellants an opportunity
to comment on the grounds, which had not been stated before, on which the contested
decision was based. In T 68/94 the board pointed out that provisional opinions were
never binding. The purpose of oral proceedings was to summarise and discuss the
parties' arguments. This meant that either party could present its comments on the
other's counter-arguments, in accordance with the requirements of Art. 113 EPC. The
respondents had already filed a letter setting out the arguments which the opposition
division had then endorsed in the contested decision. All the arguments in the case had
been known to both parties.
3. Non-appearance at oral proceedings and the right to be heard
VI.B.3. Non-appearance at oral proceedings and the right to be heard

3.1. Non-appearance at oral proceedings - case law concerning G 4/92

In G 4/92 (OJ 1994, 149) the Enlarged Board of Appeal held that, in view of the right to
present comments, a decision against a party who had been duly summoned but who
failed to appear at oral proceedings could not be based on facts put forward for the first
time during those oral proceedings. Evidence put forward for the first time during oral
proceedings could not be considered unless it had been previously notified and it merely
supported the assertions of the party which had submitted it. However, new arguments
could - in principle - be used in the reasons for the decision as they did not constitute
new grounds or evidence, but were reasons based on the facts and evidence already put
forward. This opinion related only to inter partes proceedings.
The way in which G 4/92 is interpreted and applied in practice is illustrated in a number
of decisions.
In T 341/92 (OJ 1995, 373) the board held that it was possible to base a decision on a
ground discussed for the first time during oral proceedings which would prevent the
patent being maintained as amended, at least if the stage reached in the case was such
that the absent - albeit duly summoned - patent proprietors could have expected the
question to be discussed and were aware from the proceedings to date of the actual
basis on which it would be judged. The appellants (patent proprietors) had filed, together
with a statement setting out the grounds of appeal, a main request and an auxiliary
request with new claims. However, the appellants - having notified the board to that

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effect in advance - were not represented at the oral proceedings. During oral
proceedings the question of whether the subject-matter of claim 1 in accordance with the
main request infringed Art. 123(3) EPC was brought up by the board for the first time.
The board concluded that the main request constituted an inadmissible extension of the
protection conferred. At the end of oral proceedings it was announced that the patent
would be maintained with the claims according to the auxiliary request. The board did not
consider itself prevented by reasons of procedural law from rendering a decision on the
basis of Art. 123(3) EPC. It argued that the situation differed from G 4/92 in that the
extension to which objection had been made arose solely from a comparison of the
wordings of the respective claims according to the granted patent and the main request
before the board, and therefore not from facts that had only been introduced into the
case during oral proceedings.
In T 133/92 the board concluded that considering and deciding in substance on the
maintenance of the patent on the basis of claims as amended during oral proceedings in
the absence of the appellants (opponents) did not conflict with the opinion of the
Enlarged Board of Appeal in G 4/92. The board stated that the respondent's (patentee's)
restrictions to the claims removed objections already raised by the appellants. In such a
situation the appellants could not have been taken by surprise, because they had
reasonably to expect that the respondent would try to overcome all objections. The
submission of auxiliary requests was clearly not a "fact" within the meaning of G 4/92.
Were it otherwise, no decision could ever be issued at the end of a hearing where, as is
usually the case, auxiliary requests are filed and, as is also frequently the case, the
opponent does not attend the hearing, thereby rendering such hearings pointless and a
waste of time, as well as offending against the general principle of legal certainty, ie the
general interest of the public in the termination of legal disputes. Likewise, the board held
in T 771/92 that the decision to maintain the patent on the basis of a set of claims
amended during oral proceedings in the absence of the appellant did not conflict with the
principles described in G 4/92. The submission of restricted claims was neither a fact nor
could it be evidence. The appellant could not be taken by surprise by the amendment
made, because he had reasonably to expect that the respondent would try to overcome
the objections made. The amendments resulted from the novelty objection made by the
appellant during the written procedure.
In cases T 912/91, T 202/92, T 856/92 and T 890/92, which were based on similar facts,
the board also concluded that Art. 113(1) EPC had been satisfied. In T 1049/93 the
board decided that, where a duly summoned opponent chose not to attend oral
proceedings, a board of appeal could still consider prior art which might be an obstacle
to the maintenance of the patent in suit. G 4/92 should not be construed as extending or
prolonging the rights of a voluntarily absent party. In case T 414/94 the board stated that
there was no general prohibition on amending requests during a party's absence from
oral proceedings as requested by the respondent. An absent party must expect reactions
of the opposing party within the legal and factual framework of the case established prior
to oral proceedings, and the possibility of decisions taking account of, and being based
on, such reactions.
In T 501/92 (OJ 1996, 261), the board ruled that if a new ground for allowing the appeal
based upon the facts set out in the file record was raised by an appellant for the first time
as a new argument during oral proceedings from which the respondent was voluntarily
absent, it would be contrary to Art. 113(1) EPC and contrary to the principles underlying

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G 4/92 to decide to allow the appeal on the basis of this new ground without first giving
the respondent an opportunity to comment. In the case in point the appellant (opponent)
submitted at the oral proceedings that the failure by the proprietor to file a formal request
for maintenance of the European patent should lead automatically to revocation of the
patent.
In T 892/94 (OJ 2000, 1) the respondents (proprietors), albeit duly summoned, not only
failed to appear at the oral proceedings but had also notified the board in advance,
before the oral proceedings were held, of their decision to take no further part in the
proceedings.
In the board's view, the respondents' declaration that they would take no further part in
the proceedings could only be construed as an unequivocal decision to surrender,
voluntarily, their rights according to Art. 113(1) EPC and to avail themselves no longer of
the opportunity to present their comments on any objections, facts, grounds or evidence
which could potentially be introduced into the proceedings by the appellants or the board
and which could later turn out to be decisive for the revocation of the patent. The board
was therefore of the opinion that considering and deciding in substance on the
revocation of the patent did not contravene the respondents' procedural rights as laid
down in Art. 113(1) EPC, although the respondents did not attend the oral proceedings.
In T 191/98 the board dealt with the question of whether the respondent (proprietor), who
had not attended the oral proceedings, had been given sufficient opportunity to present
comments on the introduction of the late-filed document D10, the interpretation of the
disclosure of D10 and the reasons leading to the decision for revocation. The respondent
had had more than two years' prior knowledge of the possible admission of D10 into the
appeal proceedings and had been informed by the board that D10 was to be discussed
at the oral proceedings. The appellant considered D10 to be novelty-destroying. The
board did not follow the appellant's line of argument, but it decided that the subject-
matter of claim 1 as granted lacked inventive step when starting from the prior art
disclosed in D10, and it revoked the patent.
The board referred to G 4/92 (OJ 1994, 149) and considered that the respondent, when
informing it of its non-appearance, should have expected that the board would decide in
substance on the patent in its granted form, taking into account any piece of evidence
filed by the appellant and arguments based on that evidence, including the possibility
that the line of argument based on a particular piece of evidence would be further
developed during the oral proceedings.
T 55/91 raised the principle of the right to be heard in ex parte proceedings when the
applicants/appellants, who were duly summoned to attend oral proceedings, failed to
take advantage of the opportunity presented. The board considered that the appellants
had had an opportunity to present their comments on the novelty objection raised by the
board, but had not availed themselves of this opportunity. On considering the case at the
oral proceedings, duly held pursuant to R. 71(2) EPC despite the absence of the
appellants, the board came to the conclusion that the subject-matter of claims 1 and 2
lacked novelty for reasons already set out by the board.
On this issue see also T 434/95 in the Chapter VII.C.8.2.4, concerning the apportionment
of costs.

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3.2. Non-appearance at oral hearings before the boards of appeal

On 1.5.2003 new Art. 11(3) of the Rules of Procedure of the Boards of Appeal (RPBA,
OJ 2003, 61) entered into force. According to Art. 11(3) RPBA, "the Board shall not be
obliged to delay any step in the proceedings, including its decision, by reason only of the
absence at the oral proceedings of any party duly summoned who may then be treated
as relying on its written case." In T 706/00 the board observed that this new RPBA
provision superseded the findings of G 4/92 (OJ 1994, 149).
In T 979/02 (ex parte), two days before the oral proceedings, the appellants had
informed the board that they would not attend. On the afternoon of the same day they
filed a single amended set of claims for the appeal board to consider in their absence.
The board referred to the ex parte case T 70/98 and to Art. 11(3) RPBA. In T 70/98 the
appellants had announced on the day before the oral proceedings that they would not
attend and had then filed a new auxiliary request. The board in that case had concluded
that the appellants had waived the opportunity of discussing their case and, if necessary,
of filing further amendments to overcome any objections during the oral proceedings. In
the case at issue the board stated that for reasons of procedural economy, it had no
reasonable alternative other than to decide on the admissibility of the request by using
the criterion of whether the documents of the request would be prima facie clearly
allowable under the EPC. The board concluded that both the description and the claims
taken alone prima facie revealed a number of formal deficiencies and decided not to
admit the late-filed request. The appeal was dismissed.
In T 986/00 (OJ 2003, 554), in a communication accompanying the summons to oral
proceedings, the respondent (patent proprietor) had been warned that he should be
prepared to amend the description and the dependent claims at the oral proceedings,
should the board decide to maintain the patent in amended form on the basis of one of
the auxiliary requests. Furthermore, it had been indicated that any written submission
should be filed at the latest one month before the oral proceedings. However, the
proprietor chose not to be represented at the oral proceedings and, despite the warning,
did not file any further amendments to the patent in suit.
According to Art. 113(2) EPC, the board has to decide upon the patent only in the text
submitted, or agreed, by the proprietor. Furthermore, according to Art. 11(1) and (3)
RPBA, a case should normally be ready for decision at the conclusion of oral
proceedings and the parties should provide all relevant information and documents
before the hearing. The board held that a proprietor who chose not to be represented at
oral proceedings should ensure that he has filed all the amendments he wishes to be
considered before the oral proceedings. According to the board, this was all the more so
in the case at issue, since the proprietor had been expressly warned about the possible
necessity of amending the claims and the description. The board concluded that it could
therefore take the decision without further ado, and it revoked the patent.
4. Article 113(2) EPC
VI.B.4. Article 113(2) EPC

Under Art. 113(2) EPC the EPO may consider and decide upon the European patent
application or the European patent only in the text submitted to it, or agreed, by the
applicant for or proprietor of the patent. Thus, in T 32/82 (OJ 1984, 354) the board stated
that when taking its decision a board of appeal (or department of first instance) had no
authority to order the grant of a European patent containing claims which were different

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in their content or interdependency from those submitted by the applicant. In T 647/93

(OJ 1995, 132) the board pointed out that Art. 113(2) EPC was a fundamental procedural
principle, being part of the right to be heard, and was of such prime importance that any
infringement of it, even as the result of a mistaken interpretation of a request, had, in
principle, to be considered to be a substantial procedural violation (see also T 32/82 and
J 19/84). In any case, such violation occurred when, as in the case in point, the
examining division did not make use of the possibility of granting interlocutory revision
under Art. 109 EPC after the mistake had been pointed out in the grounds of appeal.
4.1. The requirement of a text agreed by the applicant
In T 73/84 (OJ 1985, 241) the board held that the European patent was to be revoked if
the proprietor stated in opposition or appeal proceedings that he no longer approved the
text in which the patent was granted and would not be submitting an amended text (see
also T 655/01). The board in T 706/00 pointed out that the EPO cannot depart from a
request once made. It can only grant or deny the request; it cannot grant more, less or
even something different. Unless a grantable text is submitted, at least auxiliarily, only
the request in full is rejected. In T 549/96, the board noted that an applicant must
unambiguously indicate, at the end of the proceedings, which text he proposes.
Otherwise, the examining division would be unable to decide on the basis of which
version it should proceed and the application would eventually have to be refused, since
there would be no clear request at all. Thus, if an applicant failed to indicate his approval
of the text of an allowable subsidiary request, eg by express disapproval or by
maintaining one or more unallowable higher-preference requests, the examining division
could refuse the application under Art. 97(1) EPC (see also T 976/97).
In T 237/96 the board explained that Art. 113(2) EPC could not be interpreted in the
sense that the examining division was bound to accept any amendment which the
applicant might propose, only to ensure that there was a version approved by him. In
circumstances in which, as in the case in question, amendments proposed by the
applicant after the R. 51(4) EPC communication were with good reason not allowed by
the examining division by virtue of R. 86(3) EPC and the applicant did not give its
agreement to any other version of the application documents, the established practice of
the EPO, sanctioned by consistent case law, was to refuse the application on the ground
that there was no version approved by the applicant within the meaning of
Art. 113(2) EPC, on which a patent could be granted.
In T 917/95, a patent proprietor who was a party to the inter partes proceedings had
submitted a new claim prior to the oral proceedings before the board of appeal, but no
amended description or drawing. The descriptions and drawings relating to the previous
claims were incompatible with the new claim. Because the proprietor failed to appear at
the oral proceedings, no documents were available at the end of the oral proceedings on
the basis of which the patent could have been maintained (see also T 725/00 and
T 1174/01).
4.2. Cases where the EPO is uncertain or mistaken about the approval of the
text
In T 666/90 the status of the requests on file was not clarified during oral proceedings
before the opposition division. This resulted in a disagreement in the period between oral
proceedings and the drafting of the written decision. The board pointed out that in a case
such as this the appropriate action to take was to request a written copy of the final

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version of the requests and clarification of the order in which they were to be ranked prior
to the decision being issued. Failure to clarify the position was in breach of
Art. 113(2) EPC and hence constituted a substantial procedural violation. In T 552/97 the
opposition division had taken no decision on the main request, being under the incorrect
impression that it was no longer in the proceedings. The board pointed out that EPO
departments should clarify the position before issuing decisions, especially if requests
had been amended in oral proceedings. In T 355/03 it was unclear which text the
applicant wished to have as the basis for grant. The board held that the examining
division ought to have established what the applicant really wanted. The examining
division's failure to do so constituted a substantial procedural violation.
In T 425/97, the text of the single claim attached to the written decision of the opposition
division was different from the text apparently held patentable at the oral proceedings, in
relation to many essential features of the claim. From the original minutes of the oral
proceedings, the history of the case and further circumstances, the board therefore
concluded that the opposition division took a decision on the patent in suit on the basis of
a text which had neither been submitted nor agreed by the proprietor of the patent. This
involved an infringement of Art. 113(2) EPC and had to be considered as a substantial
procedural violation.
In T 543/92 and T 89/94 the opposition division unintentionally failed to take account of a
document introducing amended claims. In both cases the patent was revoked. The board
ruled that once an item of mail had been received at the EPO it had to be considered to
have been received by the organ deciding the case. Responsibility for correct processing
of mail thereafter lay with the relevant departments within the EPO. The decision under
appeal was thus in breach of Art. 113(2) EPC.
C. Oral proceedings
Oral proceedings

1. Right to oral proceedings

VI.C.1. Right to oral proceedings

1.1. The general principle

The right of parties to oral proceedings in examination, opposition and appeal
proceedings is enshrined in Art. 116(1) EPC, according to which oral proceedings take
place either at the instance of the EPO if it considers this to be expedient or at the
request of any party to the proceedings. The right to an oral hearing is an extremely
important procedural right which the EPO should take all reasonable steps to safeguard
(T 19/87, OJ 1988, 268, T 663/90, T 808/94, T 911/04). If a request for oral proceedings
has been made, such proceedings have to be appointed. This provision is mandatory
and leaves no room for discretion (T 283/88, T 795/91, T 556/95, T 1048/00).
Considerations such as speedy conduct of the proceedings, equity or procedural
economy cannot take precedence over the principle of the right to oral proceedings
(T 598/88).
The refusal of a request for oral proceedings normally constitutes a violation of the right
to present comments and justifies reimbursement of the appeal fee (see under
"Reimbursement of the appeal fee", VII.D.15.4.2). Thus, if the request for oral
proceedings is ignored, even due to an oversight, the decision must be set aside as null
and void (T 19/87, OJ 1988, 268; T 93/88, T 560/88, T 663/90 and T 766/90).

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1.2. Oral proceedings before the Receiving Section

Under Art. 116(2) EPC oral proceedings must take place before the Receiving Section at
the request of the applicant only where the Receiving Section considers this to be
expedient or where it envisages refusing the European patent application. Thus, in
J 20/87 (OJ 1989, 67) the Legal Board stated that a board, exercising powers within the
competence of the Receiving Section under Art. 116(2) EPC in conjunction with
Art. 111(1) EPC, could refuse a request for oral proceedings made by an applicant in the
course of an appeal against a decision of the Receiving Section where the board did not
consider such proceedings to be expedient and where it did not envisage refusing the
European patent application.
A case in which the Receiving Section had to decide whether the loss of a right had
resulted from the EPC in accordance with R. 69(2) EPC was not a case in which the
Receiving Section "envisages refusing the European patent application" within the
meaning of Art. 116(2) EPC. The Receiving Section could therefore refuse an applicant's
request for oral proceedings where it did not consider such proceedings expedient
(J xx/xx , OJ 1985, 159).
In J 17/03 the board of appeal decided that the refusal of oral proceedings before the
Receiving Section did not amount to a procedural violation. Since a decision confirming a
loss of right or refusing a requested re-establishment of rights is not to be equated with
the refusal of an application, the Receiving Section had discretion in dealing with the
appellant’s request for oral proceedings. While the discretion provided for in
Art. 116(2) EPC was not without limits and had to be exercised in light of recognised
procedural principles such as the right to be heard set out in Art. 113(1) EPC, the
Receiving Section had given the appellant ample opportunity to present its case as
several letters and communications had been exchanged and a consultation by
telephone had taken place.
1.3. Examples of the principle
The board in T 556/95 (OJ 1997, 205) held that the discretion of an examining division to
allow amendments up to the decision to grant the patent did not mean that that
department had discretion to refuse a request for oral proceedings dealing with such
amendments. The examining division must have regard to Art. 116(1) EPC when
exercising its discretion under R. 86(3) EPC in case of amendments requested after the
issue of a communication under R. 51(6) EPC (old version predating that which entered
into force on 1.7.2000). The board went on to state that the right to be heard in oral
proceedings (Art. 116 EPC) subsisted so long as proceedings were pending before the
EPO. Lastly, the board added that the Enlarged Board of Appeal - which in G 7/93
(OJ 1994, 775) had given some guidance as to how an examining division should
exercise such discretion under R. 86 EPC (after R. 51(6) EPC communication had been
sent) - could not limit the application of Art. 116(1) EPC by means of such guidance.
In T 383/87 the board pointed out that Art. 116(1) EPC guaranteed the right of any party
to request oral proceedings, ie to argue its case orally before the relevant department of
the EPO. A party might feel that it could present its case better orally than in writing,
even if it had no new arguments. It was then its genuine right to request oral proceedings
without being inhibited by the fear of having to pay additional costs, unless the request
for oral proceedings was a clear abuse of the law. In T 125/89 the board also
emphasised that Art. 113(1) and Art. 116(1) EPC were clearly not restricted to "new and

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substantial arguments". Parties also had the right to repeat known arguments or to
stress arguments which had already been brought forward or to link such arguments in a
specific combination or series.
In T 693/95, the board emphasised that where several parties are involved, eg in
opposition proceedings, the EPC provides only for oral proceedings to which all the
parties are invited, so as to respect the principles of judicial impartiality and the equal
rights of parties. No provision exists for a discussion of substantive issues between a
single party and a member of either the opposition division or the board of appeal. In the
case in question, oral proceedings had taken place before the opposition division, and
the appellants had had an opportunity to present their comments, through one of their
number who had been present. Thus there was no basis for their allegation that they had
been denied the right to be heard.
2. Request for oral proceedings
VI.C.2. Request for oral proceedings

A party's right to oral proceedings is subject to a clear and unconditional request for such
proceedings (T 299/86, OJ 1988, 88; T 433/87, T 663/90). The question whether a
request for oral proceedings has been made must be decided on the individual facts of
each case. If there is the slightest doubt, clarification should be sought from the party
concerned (T 19/87, OJ 1988, 268; T 283/88). Nevertheless, in T 528/96, the board
explained that, although the opposition division might reasonably have been expected to
query whether such a request was in fact intended, the fact that it failed to do so did not
constitute a procedural violation, since the onus to make a clear request was on the
party itself.
In T 870/93 the board found that the appellant had merely stated his intention of awaiting
a new communication from the opposition division before - possibly - requesting oral
proceedings. It added that to be sure of oral proceedings, the opponent should have
asked for them at an early stage. Alternatively, if his intention was to request oral
proceedings only if certain conditions were not fulfilled, he should have filed an auxiliary
request clearly setting out those conditions.
2.1. Wording of request
2.1.1 Wording constituting a request
In the ex parte case T 95/04 the appellant’s request for a telephone call from the
examiner was followed by a further request “in any event” for an opportunity to be heard
before an adverse decision was taken. In the board’s view, the expression “in any event”
in the given context clearly implied that in the event that the examiner was to exercise his
discretion and not to communicate further with the applicant, then the applicant wished to
have a further opportunity to be heard which under the circumstances could only be
provided by appointing oral proceedings. The applicant's request thus included a request
for appointment of oral proceedings.
In T 19/87 (OJ 1988, 268) the board considered that the request in the applicant's letter
for "an interview as a preliminary to oral proceedings" could only be construed as both a
request for an interview (which might or might not be granted) and a request for oral
proceedings. In the case in question it was mandatory that oral proceedings should take
place before the examining division (see also T 283/88).

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In T 668/89 the phrase "... applicant's representative claims his right to appear and argue
the case orally" was deemed to be a valid request for oral proceedings.
2.1.2 Wording not constituting a request
In T 528/96, the final paragraph of the patentee's response to the opposition - the last
document on the file before the opposition division took its decision - read as follows:
"Should the opposition division feel that further information is required, the patentee will
be pleased to respond in due course, either in writing or during the oral hearing". The
opposition division argued that this statement did not constitute a request for oral
proceedings. The board endorsed this view. The statement did not constitute a formal
request for oral proceedings.
In interlocutory decision T 299/86 (OJ 1988, 88) a party made the following statement:
"In the event, however, that the examining division is minded to refuse the application, I
reserve my right to request oral proceedings under Art. 116 EPC". This was interpreted
as meaning that the party had not yet decided whether to request oral proceedings (see
also T 263/91).
In T 433/87 the board interpreted the patent proprietor's request "to conclude the
opposition proceedings and if necessary arrange oral proceedings as soon as possible"
to mean that oral proceedings were requested only in the event of their being considered
necessary by the opposition division. The statement "if there are any outstanding
problems, the writer would welcome an opportunity to discuss the case with the
examiner" could not be understood as a valid request for oral proceedings either (see
T 88/87).
2.2. Withdrawal of request
A party's request for oral proceedings can be withdrawn only by virtue of a clearly
expressed intention not to proceed with the request, for example in the form of an
unambiguous written statement to that effect on the file. If there is no unequivocal proof
of the withdrawal of the request, it has to be assumed that the request, once submitted,
is still valid and was therefore also valid at the time of the contested decision (see
T 283/88, T 663/90, T 879/92).
In T 3/90 (OJ 1992, 737) oral proceedings were appointed as a result of a party's request
for such proceedings on an auxiliary basis. The party subsequently stated that it would
not be represented at the oral proceedings. In its decision, the board stated that such a
statement should normally be treated as equivalent to a withdrawal of the request for oral
proceedings (see also T 696/02 and T 1027/03). In T 910/02 the board of appeal
remitted the case to the department of first instance for further prosecution without oral
proceedings, since all the parties that had presented their comments in the appeal
proceedings had either withdrawn their request for oral proceedings or had stated that
they would not attend oral proceedings. In such a case the board has discretion either to
abide by the date for the oral proceedings in order to announce a decision, or to cancel
the oral proceedings and issue a decision based on written proceedings.
However, a party's silence in response to a communication inviting it to state whether it
wishes to maintain its request for oral proceedings may not, in principle, be interpreted
as a withdrawal of the request.

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 VI.C.2. Request for oral proceedings

In T 35/92 the board stated that while it was reasonable for the opposition division to
expect a response to its communication, which was justified in the interests of keeping
the proceedings as brief as possible, there were nevertheless no legal grounds
whatsoever for interpreting silence on the part of the appellants as withdrawal of the
subsidiary request for oral proceedings. A request within the meaning of Art. 116(1) EPC
could only be withdrawn by a declaration to that effect.
In T 686/92 the appellant's (patent proprietor) silence following a communication from
the opposition division, asking whether they were maintaining the request for oral
proceedings, had also been interpreted by the opposition division as a withdrawal of that
request. The board stated that in the case of an auxiliary request for oral proceedings by
a party there was no room for discretion on the part of the opposition division. The board
held that the opposition division had no power to issue a decision adversely affecting the
party without first appointing oral proceedings. In a similar case (T 795/91) the board
added that a withdrawal required an unambiguous expression of the party's wish to
withdraw (see also T 766/90, T 879/92).
2.3. Further oral proceedings before the same department
According to Art. 116(1), second sentence, EPC the EPO may reject a request for further
oral proceedings before the same department where the parties and the subject of the
proceedings are the same. In T 298/97 (OJ 2002, 83) the board observed that as a
matter of law, the right to oral proceedings was not to two oral proceedings on the same
subject. Any further oral proceedings on the issue of admissibility would therefore be a
matter for the board's discretion.
In T 194/96 the board stated that the discretionary power to reject a request for further
oral proceedings before the same department is limited to the case "where the parties
and the subject of the proceedings are the same". In the case in question, after the first
oral proceedings new citations were submitted which were more pertinent than the
documents on file and which could and in fact did radically change the nature of the
decision. The board held that in such a case the subject of the proceedings within the
meaning of Art. 116 EPC could no longer be the same (see also T 441/90).
In the following cases a request for further oral proceedings was rejected:
In T 298/97 the appellant had ample time and opportunity for over three years to prepare
and present its arguments and indeed was, at its own request, given the further
opportunity following the oral proceedings to submit evidence on the very issues raised
at the oral proceedings. However, since the appellant was not able to overcome its own
inadmissibility difficulty, no further proceedings, whether written or oral, were required.
An opportunity for clarification having been given and no issue requiring further
proceedings having resulted, the request for further oral proceedings was refused.
In T 748/91 the board considered that in the case in point no substantially new situation
had arisen with regard to Art. 116(1), second sentence, EPC to justify further oral
proceedings (see also T 692/90, T 755/90, T 25/91 and T 327/91). In T 547/88 too the
board rejected the request for further oral proceedings since the parties and the subject
were the same. The purpose of continuing the proceedings in writing after the first oral
hearing was merely to provide further clarification of the same facts.

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In T 614/90 the board did not consider further oral proceedings expedient. The
opportunity to comment in writing on the board's reasons for refusing further oral
proceedings was also rejected because the reasons for the refusal had been given to the
respondent in a communication.
In T 529/94 the board ruled that refusal had not constituted a procedural violation.
Indeed, in the board's opinion as expressed in this case, the examining division, in
exercising its discretionary power under R. 86(3) EPC, had considered newly filed claims
3 and 4 as inadmissible. The legal consequence of this was that claims 3 and 4 were
never integrated into the text of the application and never became part of it. For this
reason, refusing to hold oral proceedings a second time, during which proceedings it was
intended to discuss the allowability of proposed amendments already judged as
inadmissible, could not constitute a procedural violation.
In T 731/93 the board stated that where fresh evidence had been admitted into the
proceedings, the "subject" of such proceedings, as construed by reference to the text of
Art. 116(1) EPC in all three official languages, could no longer be the same. In this case
the refusal of a request for further oral proceedings constituted a substantial procedural
violation.
2.4. Auxiliary request for oral proceedings
According to the established practice of the boards of appeal, a request for oral
proceedings on an auxiliary basis is interpreted as a request for oral proceedings unless
the board intends to decide the case in favour of the requesting party (see T 3/90,
OJ 1992, 737).
In T 344/88 the appellants requested that oral proceedings be held if the opposition
division intended to maintain the patent in whole or in part. The opposition division
rejected the opposition as inadmissible without appointing oral proceedings. The board
found that while it was true that, in rejecting the opposition as inadmissible, no formal
decision had been taken to maintain the patent, this was nevertheless the consequence
of the decision. A party's auxiliary request for oral proceedings therefore should not be
viewed solely in terms of its wording. In view of the particular importance of the right to
present comments in the form of oral proceedings, if it could reasonably be assumed
from the wording of the request that oral proceedings were desired, such proceedings
should be appointed or, where there were genuine doubts, the extent of the auxiliary
request should be clarified by consulting the requesting party.
Although boards repeatedly emphasise the absolute right to oral proceedings (see above
Chapter VI.C.1) a request for oral proceedings has sometimes been interpreted as
conditional when the board intends to remit the case to the department of first instance.
In T 924/91 the appellants requested oral proceedings if the patent were not to be
granted on the basis of the written submissions. The board remitted the case to the
department of first instance and stated that there was no need to appoint oral
proceedings because remittal meant that the decision under appeal was being set aside,
not that the application was being refused. The board emphasised that the appellants'
conditional request for oral proceedings was a request in the current appeal proceedings
and would have no effect in the further proceedings before the examining division.
Likewise, in T 166/91 the board stated that the decision to remit the case to the

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department of first instance was not to be considered as adversely affecting the

appellants, so that no oral proceedings needed to be appointed (see also T 808/94).
In their statement of grounds of appeal the appellants in T 494/92 made an unconditional
request for oral proceedings. The board stated that in view of the positive conclusion it
had reached regarding the question of inventive step, and in the absence of any other
substantive and/or procedural issues, such oral proceedings would serve no purpose.
The board thus treated the request as merely conditional.
2.5. Request for oral proceedings in further prosecution proceedings
In T 892/92 (OJ 1994, 664) the board held that "further prosecution" proceedings on
remittal by the board of appeal were to be regarded as a continuation of the original
proceedings, particularly where the original interlocutory decision had been set aside by
the board and was therefore no longer legally effective. Consequently, the patent
proprietors' original request, which had never been withdrawn or amended, became
effective again after remittal, so that the opposition division should not have taken a
decision adversely affecting the proprietors without giving them an opportunity to present
their case orally (Art. 116(1) EPC).
3. Non-appearance at oral proceedings
VI.C.3. Non-appearance at oral proceedings

3.1. Right to present comments and non-attendance of a party by choice

In T 917/95 the board held that a patentee who, in inter partes proceedings, filed a new
claim but no amended description prior to the oral proceedings before the board of
appeal and who failed to attend the oral proceedings could not rely on the board's
postponing its ruling simply to permit amendment of the description, even if the new
claim was grantable (see also T 109/02 and T 181/02).
On the question whether a decision pronounced against a party who has chosen not to
attend oral proceedings may be based on new facts, evidence and/or arguments
introduced during those oral proceedings, see Chapter VI.B.3, "Non-appearance at oral
proceedings and the right to be heard".
3.2. Obligation to give notice if not attending oral proceedings
In T 653/91 the board made the following statement: "If, having been summoned to oral
proceedings, a party does not wish to attend such proceedings, both the board (through
its Registrar) and any other parties to the proceedings should be notified in writing of this
fact as early as possible before the appointed day. Except in special circumstances,
telephone communications concerning such matters are inappropriate, especially in inter
partes proceedings".
Also in T 930/92 (OJ 1996, 191) the board pointed out that there was an equitable
obligation on every party summoned to oral proceedings to inform the EPO as soon as it
knew that it would not attend as summoned. This was the case whether or not that party
had itself requested oral proceedings, and whether or not a communication had
accompanied the summons to oral proceedings. If a party which had been summoned to
oral proceedings failed to attend as summoned without notifying the EPO in advance that
it would not attend, an apportionment of costs in favour of another party which had
attended as summoned could be justified for reasons of equity in accordance with
Art. 104(1) EPC (see Chapter VII.C.8.2.4).

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In T 692/00 the board held that for the appellant (proprietor) to announce shortly before
the appointed date for oral proceedings that it might or might not attend while
maintaining its request for oral proceedings could only be an abuse of procedure.
4. Preparation and conduct of oral proceedings
VI.C.4. Preparation and conduct of oral proceedings

4.1. Fixing or postponing the date for oral proceedings

Under the terms of the Notice of the Vice-Presidents Directorates-General 2 and 3 dated
1 September 2000 concerning oral proceedings before the EPO (OJ 2000, 456; cited
hereafter as "Notice") the departments of first instance and the boards of appeal will fix
one single date for oral proceedings without pre-announcement of the date by phone or
fax. Oral proceedings appointed by the EPO will be cancelled and another date fixed at
the request of a party only if the party concerned can advance serious reasons which
justify the fixing of a new date (overruling T 320/88, OJ 1990, 359, in this respect). In
addition, the rules of the boards of appeal provide that "a change of date for oral
proceedings may exceptionally be allowed in the board's discretion following receipt of a
written and reasoned request made as far in advance of the appointed date as
possible..." (Art. 11(2) RPBA, entered into force on 1.5.2003).
The Notice lists the following as examples of serious substantive reasons to request the
change of the date for oral proceedings: a previously notified summons to oral
proceedings of the same party in other proceedings before the EPO or a national court,
serious illness, a case of death within the family, the marriage of a person whose
attendance in oral proceedings is relevant, military service or other obligatory
performance of civic duties, as well as holidays which have already been firmly booked
before the notification of the summons to oral proceedings. Examples of grounds which
are, as a rule, not acceptable are a summons to oral proceedings before the EPO or a
national court notified after the summons in the relevant proceedings, and excessive
work pressure.
The Notice also stipulates that every request for fixing another date for oral proceedings
should contain a statement why another representative cannot substitute the
representative prevented from attending the oral proceedings.
In T 1080/99 (OJ 2002, 568) the board had made it clear in a letter sent almost three
months before appointed oral proceedings that a request by a party for postponement of
the oral proceedings, did not meet all the requirements of the Notice. The party, instead
of attempting to supplement its original request as soon as possible, chose to react to
the board's letter only one week before the appointed oral proceedings. The board held
that it must be considered that the additional reasons and evidence for the request for
postponement and the fixing of a new date for oral proceedings were received too late
and that these reasons could therefore not be accepted.
Nevertheless the board made some remarks having regard to the substance of the
party's late-filed reasons. Among them the board took the view that a "series of business
engagements" was not a reason falling within point 2.3 of the Notice, since business
engagements were directly governed and planned by the office of the patent agent or the
representative and were not normally affected by "external forces" within the meaning of
point 2.3 of the Notice. Moreover according to point 2.4 of the Notice, "excessive work
pressure" was normally not acceptable as a ground for postponement of oral

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proceedings. The board concluded that the late filed additional reasons were also
insufficient within the terms of the Notice.
4.1.1 Unavailability of a party, representative or expert
In T 275/89 (OJ 1992, 126) the board considered that the illness of a duly represented
party was not a sufficient reason for postponing appointed oral proceedings unless the
party who was ill needed to be present. A request to change an appointment could only
be allowed if unforeseen, exceptional circumstances had arisen, which either made oral
proceedings impossible (such as a representative's or unrepresented party's sudden
illness) or could have a decisive impact on the course of the proceedings (such as
unforeseen unavailability of an important witness or expert).
In T 37/97, the board decided that the facts cited in support of the request were neither
unforeseeable nor exceptional and therefore did not justify postponement. In cases such
as this, where a new representative was appointed after the summons to oral
proceedings had been duly issued, the said representative, before taking on the
mandate, could be expected to make sure he was available on the appointed date or to
arrange for alternative representation. Furthermore, a professional representative could
be expected to be able to prepare for oral proceedings with all due care within a month
unless the case was exceptionally difficult, which it was not.
In T 693/95 the board decided that it had waited patiently for two years to give the
appellants time to find a legal representative of their choice. This they had failed to do.
After such a long delay there was no valid reason for postponing oral proceedings; for
reasons of equity, the board was obliged to take into account not only the appellants'
interests but also those of the respondent and the public, which had an interest in
knowing as soon as possible the exact extent of protection of the contested patent.
In T 664/00 the appellant (patent proprietor) had requested an adjournment of oral
proceedings in order to allow them to be attended by an expert from the United States,
which would not have been possible on the date appointed by the board since this was a
public holiday in the USA. The board rejected the request for the following reason.
National holidays in individual contracting states are not recognised by the EPO for
practical reasons. To allow for national holidays in non-contracting states throughout the
world would be even less practical. To allow for such holidays in just one country would
discriminate against parties from other states.
In J 4/03 the board decided that the desire of the appellant himself to be present at oral
proceedings did not in itself amount to a serious ground for postponing the oral
proceedings to a date on which the appellant could be present, in the absence of other
special circumstances. The present appeal against the decision of the department of first
instance turned essentially on how the law was to be applied to facts which were not in
dispute, and so the presence or absence of a party who was duly represented in the
proceedings should have no impact on the course of the proceedings or the final
decision.
In T 1067/03 the respondent's representative requested that the oral proceedings be
postponed because of a prior appointment for a medical operation. The representative
said that his client was opposed to a change of representative on the grounds that, in
addition to the appeal in question, a further opposition and a patent infringement case

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were pending which together formed an intricate ensemble. In the board's opinion, these
circumstances justified postponing the oral proceedings.
4.1.2 New evidence
In J 4/03 the board held that the desire of an applicant to file unspecified new evidence
at an unspecified future date could not amount to a serious reason for postponing oral
proceedings. Even in ex parte proceedings the appellant must attempt to file any facts or
evidence he wishes to rely on before the set date of oral proceedings so that the board
can exercise its discretion under Art. 114(2) EPC whether to admit the further evidence
or not, on the basis of the relevant material.
In T 881/95 the request for postponement was refused because the evidence, which
could only have been provided later, was not such as to affect the decision.
4.1.3 Proceedings before a national court
In T 392/97 the board ruled that the subsequent appointment of oral proceedings by a
national patent court to take place on the same date as the previously appointed oral
proceedings before the board was not in itself a sufficient reason for adjournment. A
request to postpone an appointed and agreed date could only be allowed in the case of
"unforeseen and exceptional" circumstances. "Exceptional" could be construed as
meaning those circumstances which either made it impossible for the oral proceedings to
take place or might have a material bearing on the course and outcome of the
proceedings.
4.2. Curtailment of notice in the summons
Under R. 71(1), second sentence, EPC the notice given in the summons to oral
proceedings must be at least two months, unless the parties agree to a shorter period.
In J 14/91 (OJ 1993, 479) the board ruled that a dispute about a third party's right to
inspect the application dossier before publication must be decided promptly (ie before
publication), otherwise Art. 128(2) EPC becomes null and void. If oral proceedings would
facilitate a prompt decision, the summons under R. 71(1) EPC may give shorter notice -
even without the other party's agreement - provided the parties are given enough time to
prepare. The board referred to Art. 125 EPC and stated that in the case of a request for
inspection of files to which the applicant objected, oral proceedings were the best way to
give the parties a comprehensive and swift hearing. Although the EPC did not itself make
any provision for urgent cases, it was a generally recognised principle of procedural law
in the contracting states that notice could be curtailed in urgent cases. The degree of
curtailment should be decided on a case-by-case basis.
In T 772/03 the summons to oral proceedings did not comply with the requirement to
give at least two months’ notice. The board observed that the onus of proving that an
agreement for a shorter notice period was reached lies with the examining division as the
party making the claim (following T 111/95). The board noted that the minutes of the oral
proceedings did not prove that the representative had agreed to a shorter period of
notice, and that the file contained no evidence that the representative and the examining
division had ever discussed a shorter notice period. The examining division had thus
failed to prove that an agreement on a shorter notice period had been reached.

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In T 111/95 the board stated that the examining division had no right simply to set a date
for oral proceedings about two weeks after despatch of the summons. The board found
that there was nothing on file to establish that the applicants' representative, at any time
and unconditionally, accepted the date set. The board thus held that the summons was
null and void, as were the actions following and resulting from it. The case was therefore
remitted to a department of first instance in a different composition for resumption of the
proceedings at the stage preceding the invalid act.
4.3. Communication under Article 11(1) RPBA
Under Art. 11(1) RPBA the board may, if oral proceedings are to take place, send a
communication drawing attention to matters which seem to be of special significance, or
to the fact that questions appear no longer to be contentious, or containing other
observations that may help concentration on essentials during the oral proceedings.
Art. 11(1) RPBA entered into force on 1 May 2003 and replaces the previous
Art. 11(2) RPBA (cited hereafter as "Art. 11(2) RPBA (previous version)"). The only
difference between the two articles is that according to Art. 11(1) RPBA a communication
no longer needs to be sent with the summons to oral proceedings. The case law on
Art. 11(2) RPBA (previous version) thus remains applicable in all other respects.
In T 614/89 it was pointed out that a communication in accordance with
Art. 11(2) RPBA (previous version) preparatory to the oral proceedings, in which the
board presented its provisional assessment of the facts, was by no means binding and
ought not to be interpreted by any party as meaning that the proceedings were pointless.
Rather, that party had an absolute right to have the case discussed at the oral
proceedings. The communication in accordance with Art. 11(2) RPBA (previous version)
was a snapshot, intended to clear up certain points of controversy in advance and
accelerate the proceedings, as well as to encourage the parties to come up with further
and sounder arguments in order to provide a reliable basis for the decision.
By a decision dated 13.12.1994 the Administrative Council introduced R. 71a EPC
concerning the preparation of oral proceedings. R. 71a EPC provides as follows: "When
issuing the summons, the EPO shall draw attention to the points which in its opinion
need to be discussed for the purposes of the decision to be taken. At the same time a
final date for making written submissions in preparation for the oral proceedings shall be
fixed..." (OJ 1995, 9).
In G 6/95 (OJ 1996, 649), on a referral in T 276/93 (OJ 1996, 330) , the Enlarged Board
ruled that R. 71a(1) EPC did not apply to the boards of appeal, which thus continued to
have discretion as to whether or not to send a communication when issuing a summons
to oral proceedings, as provided for in Art. 11(2) RPBA (previous version). The
mandatory procedural requirements of R. 71a(1) EPC applied to the EPO's departments
of first instance but not to the boards, because the Administrative Council could not
amend the Implementing Regulations in such a way that the effect of an amended rule
was in conflict with the RPBA - adopted under Art. 23(4) EPC by the Presidium of the
boards of appeal and approved by the Council as reflecting the boards' independence.
4.4. Interpretation and application of Rule 71a EPC
R. 71a EPC stipulates, inter alia, that, when the EPO issues the summons to oral
proceedings, a final date for making written submissions in preparation for the oral
proceedings must be fixed. New facts and evidence submitted after this date need not be

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considered, unless admitted on the grounds that the subject of the proceedings has
changed. The same is true for applicants or patentees invited under R. 71a(2) EPC to
submit documents which meet the requirements of the EPC.
In G 6/95 (OJ 1996, 649) the Enlarged Board of Appeal held that R. 71a(1) EPC did not
apply to the boards of appeal. However, in T 97/94 (OJ 1998, 467) the board ruled that if
a board decides to send the parties a communication under R. 71a(1) EPC, the parties
are obliged to comply with it, particularly as regards the deadline for reply.
R. 71a(1) EPC is thus binding on the parties.
In T 452/96 the board emphasised that fixing a time limit under R. 71a EPC was not to
be taken as an invitation to submit further evidence (see also T 39/93, OJ 1997, 134, and
T 885/93) and therefore had no impact on the EPO's power to disregard late-filed
documents (see also T 476/96).
4.4.1 Examination and opposition proceedings
In T 755/96 (OJ 2000, 174) the board observed that R. 71a EPC gave the EPO a
discretionary power. The EPO's power to accept or refuse late-filed new facts or
evidence was in fact governed by Art. 114(2) EPC, and the discretionary power to refuse
new requests for amendments was governed by Art. 123 EPC and the corresponding
Implementing Regulations.
As to the exercise of discretion under R. 71a EPC regarding amendments, the board
held that the discretion is to be exercised by considering all relevant factors which arise
in a particular case and by balancing the applicant's interest in obtaining proper patent
protection for his claimed invention and the EPO's interest in bringing the examination
procedure to a speedy close by the issue of a decision (following G 7/93, OJ 1994, 775).
In the board's view it was important to draw a distinction between the application
stage and the opposition stage. The reasons given for introducing R. 71a EPC made it
clear that a particular concern was that in opposition proceedings other parties were not
taken by surprise. Parties to opposition proceedings were often represented by
professional representatives, who would need to consult their clients and technical
experts for further instructions to deal with new requests or evidence. Thus there could
be good reasons to refuse material filed after the final date set under R. 71a EPC, or to
postpone oral proceedings.
However, the same considerations did not apply to an examining division entrusted with
substantive examination, since it had its own technical expertise and did not have to
obtain instructions from third parties. If prepared for oral proceedings, it should normally,
even in relation to requests filed at the oral proceedings, be in a position to assess
whether a new request was clearly not allowable under the EPC and to decide on the
basis of this finding not to admit such a new request into the proceedings. An examining
division which in exercising such discretion does not admit amended claims must give
the reasons therefor. The assessment that they were filed too late under R. 71a EPC did
not represent adequate reasoning in accordance with R. 68(2) EPC.
In T 712/97 the respondent (opponent) filed a report on comparative experiments on the
last day of the period set for filing comments pursuant to R. 71a(1) EPC. The opposition
division allowed this experimental report into the proceedings, but not the appellant's
experimental report in response thereto.

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The board held that allowing the respondent's report into the proceedings did not amount
to a procedural violation. However, it considered that admitting the respondent's
experimental report into the proceedings meant that the subject of the proceedings had
changed within the meaning of R. 71a(1) EPC and that the appellant's experimental
report should therefore also have been admitted into the proceedings as a response to
the respondent's experimental report. That the appellant's report would not affect the
outcome of the proceedings was in these circumstances not a consideration that should
have been taken into account when deciding on its admission into the proceedings. A
party was entitled to know that its response was part of the documents admitted into the
proceedings, even if it proved not to be decisive for the outcome before that instance.
In T 484/99 the appellant (patentee) alleged that the refusal, under R. 71a EPC, by the
opposition division to consider or even look at amendments to the requests presented on
the day of the oral proceedings before them amounted to a procedural violation. The
board disagreed because it was clear from the wording of R. 71a(2) EPC, that
submissions by the proprietor presented after the final date did not need to be
considered. In T 64/02 the board referred to the case law of the boards of appeal holding
that the opposition division's discretion to disregard submissions filed too late also
covered amended claims presented after the final date fixed under R. 71a EPC.
R. 71a(2) EPC thus also applied to the belated submission of amended patent claims in
an auxiliary request, even if those claims had not been requested in the summons (see
also T 1105/98 referred to further below).
In T 951/97 (OJ 1998, 440), the board considered the application of the rule to the
examining division. It held that the subject of the proceedings was changed within the
meaning of R. 71a(1) and (2) EPC, inter alia, where the examining division itself
introduced a new document, which was pertinent new material, into the proceedings for
the first time during oral proceedings convened following a R. 71a EPC notification.
4.4.2 Appeal proceedings
The relevant case law concerning R. 71a EPC in appeal proceedings concerns
R. 71a(2) EPC only, as R. 71a(1) EPC does not apply to the boards of appeal (see
above Chapter VI.C.4.4.).
The board in T 1105/98 explained that R. 71a(2) EPC was applicable to proceedings
before the boards of appeal. In the case in question, the patent proprietor's auxiliary
request with amended claims was presented at the start of the oral proceedings, ie after
expiry of the time limit set in the summons to oral proceedings. The respondent
(opponent) argued that the auxiliary request should be refused as being out of time.
The board examined whether the auxiliary request could be refused as being out of time
on the basis of R. 71a(2) EPC, and decided that this provision also applied to the late
submission of amended claims by way of an auxiliary request, even if the summons to
oral proceedings had not contained an invitation to submit them. If the patent proprietor
only submitted amended claims at the oral proceedings, the board could use its
discretion to disregard them, particularly if the facts of the case had remained the same
and further investigation was necessary to assess the lack of patentability alleged as
grounds for opposition (see also T 681/02).
In T 401/02 the board of appeal did not admit into the proceedings the appellant's
amended claims, which were presented for the first time at the oral proceedings, even

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though the factual position had not changed. The admission of new requests on the
basis of amended patent claims which are submitted by the patent proprietor only at the
oral proceedings despite a final date having been set in the summons for the submission
of such requests is distinctly limited in opposition appeal proceedings by R. 71a(2) EPC
and the case law that has evolved on this provision. The board held that the admission of
the request would normally have to be refused if the board or one of the parties to the
appeal proceedings could not be expected to study the amended claims without
postponement of the oral proceedings.
4.5. Computer-generated presentations
In T 1122/01 the board of appeal had to decide on the admissibility, during oral
proceedings, of a PowerPoint presentation which did not communicate any new facts.
The board explained that a PowerPoint presentation is essentially a written presentation
of information, thus enabling a party to present written arguments in addition to its oral
statements. It could also be a way of introducing new means of evidence, or it could lead
to a completely new and unexpected presentation of the case by a party. There is
therefore a risk of the other parties being caught unawares by this, of new procedural
issues being raised, and of the oral proceedings becoming protracted.
The board explained that the principles relating to the use of visual aids such as flip
charts should also be applied to PowerPoint presentations. A party wishing to use such a
presentation should announce this intention early enough before the oral proceedings
and should send both the board and the other parties a copy. Any objections can then be
raised and considered at the oral proceedings before the presentation is given, and a
decision can be made if need be.
In T 1110/03 (OJ 2005, 302) the board of appeal considered the objection of the
appellant (patent proprietor) to the manner in which one of the opponents was permitted
to argue his case at oral proceedings before the opposition division by means of an hour-
long computer-generated slideshow presentation containing many complex slides. The
board concurred with the view expressed in decision T 1122/01 that there was a danger
of a degree of unfairness creeping in in the unrestricted use of computer-generated
slideshow presentations in oral proceedings. This potential unfairness could be mitigated
by providing the other parties and the division or board with copies of the material to be
presented in good time before the oral proceedings.
4.6. Taking of minutes
In T 642/97, the board considered basic principles concerning the minutes which
according to R. 76 EPC should contain "the essentials of the oral proceedings ... and the
relevant statements by the parties...". It stressed that this provision did not require that
the minutes reflect the full arguments of the parties. It was within the discretion of the
minute-writer to decide what he considered "essential" or "relevant" (see T 212/97).
Whereas minutes were required to contain the requests or similarly important procedural
statements, most of the arguments concerning patentability were normally apparent from
the previous written submissions or from the facts and submissions in the written
decision and did not need to be contained in the minutes. Nevertheless, if a party was of
the opinion that the minutes were incomplete or wrong, since essential submissions were
not reflected at all in the file, it might request the opposition division to correct the
minutes to preserve its rights.

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In T 231/99 it was mentioned that the board's responsibility for the decision on the
validity of the patent did not extend to deciding on the accuracy of the minutes of first
instance proceedings (see also T 1198/97). In T 212/97 the board explained that only
decisions could be contested. Since the minutes of oral proceedings were neither a
decision nor part of the decision, they could not be "annulled" by the board of appeal (as
already established in T 838/92). A procedural violation could only be said to have
occurred if the limits of the minute-writer's discretion as to what he considered "essential"
or "relevant" were overstepped, eg if a party's unambiguous statement of surrender were
omitted from the minutes. T 928/98 specified that what was particularly relevant were the
specific requests and statements with an impact on the definition of the subject-matter,
such as statements of surrender or abandonment of subject-matter.
In T 1063/02 the board held that it could not order the amendment of the opposition
division's minutes of oral proceedings unless they manifestly and definitely differed from
the actual course of the proceedings.
In T 396/89 there was disagreement between the parties as to whether the appellant had
or had not made a concession on a particular point before the opposition division. There
was no record of this in the minutes of the proceedings. The board stated that if a clear
concession was made during oral proceedings, the opposition division was entitled to
base its decision on that concession, unless it was convinced that the facts conceded
were not true. However, if an important matter of fact was conceded, that concession
ought to be carefully recorded in the minutes of the hearing.
In T 740/00, the appellant informed the opposition division of its opinion that the minutes
did not reflect the actual conduct of the proceedings. Instead of examining whether the
minutes actually fulfilled the requirements of R. 76(1) EPC and then deciding whether or
not to correct them, the opposition division argued in essence that the minutes were
correct because the minutes said so. The board considered such a reasoning circular
and thus as not fulfilling the requirements of R. 68(2) EPC, which required decisions of
the EPO to be reasoned. This constituted a procedural violation (see also T 819/96).
4.7. Costs
4.7.1 Apportionment of costs
The failure of a party to submit new and substantial arguments at oral proceedings does
not as a rule lead to a different apportionment of costs pursuant to Art. 104 EPC. In
certain cases, however, eg if a request for oral proceedings is withdrawn or
postponement is requested, if a party does not turn up for the oral proceedings or if there
is an abuse of the oral proceedings, a different apportionment of costs may be ordered in
accordance with Art. 104 EPC (see Chapter VII.C.8.2).
4.7.2 Interpreting costs during oral proceedings
Under R. 2(1) EPC, any party to oral proceedings before the EPO may, in lieu of the
language of the proceedings, use one of the other official languages of the EPO, on
condition either that such party gives notice to the EPO at least one month before the
date appointed for such oral proceedings or makes provision for interpreting into the
language of the proceedings.
In T 473/92 the respondents asked the EPO, three days before the oral proceedings, to
arrange for and bear the cost of interpreting services. According to the respondents, the

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period of one month stipulated in R. 2(1) EPC had not been observed because the EPO
had failed to issue a corresponding invitation: they submitted that the EPO ought to have
drawn their attention to the period of notice mentioned in R. 2(1) EPC. The board,
however, decided that the respondents had to bear the costs of interpreting at the oral
proceedings. If the parties were being offered a free interpreting service, the EPO should
at least be enabled to minimise its costs by having sufficient time to organise the
interpreting efficiently. Obviously, only the EPO could assess how much preparation time
was needed. Nor was the EPO under any obligation to draw the respondents' attention
to the notice period of one month. A professional representative before the EPO was
supposed to be familiar with both the EPC and its Implementing Regulations.
In T 44/92 the board came to the conclusion that if a patent proprietor with several
appointed representatives chose to use another official language for the oral
proceedings in addition to the language of proceedings, the EPO would not bear the
costs of interpreting (R. 2(1) and (5) EPC).
D. Time limits, further processing and interruption of proceedings
Time limits, further processing and interruption of proceedings

1. Calculation of time limits

VI.D.1. Calculation of time limits

1.1. Calculation of time limits under Rule 83 EPC

In J 14/86 (OJ 1988, 85) the Legal Board of Appeal made the following ruling on the
calculation of time limits under R. 83 EPC - the fact that R. 83(2) EPC fixed the point in
time from which all the time limits ran and defined this point as the day following that on
which the event giving rise to the time limit occurred, could not be interpreted as
requiring the addition of a day to time limits expressed in years, months and weeks,
hence the grant of an additional day for reasons of equity. The expiry date of time limits
expressed in years, months or weeks was derived from R. 83(3) to (5) EPC. These
paragraphs, in conjunction with paragraph 2 of the same rule, established unequivocally
that the time limits were fixed in full years, months and weeks, without any possibility of
their being reduced or extended (see also J 9/82, OJ 1983, 57).
The calculation of time limits under R. 80 PCT is identical, but its wording largely avoids
the lack of clarity found in R. 83 EPC.
In J 13/88 the Legal Board of Appeal gave an example of how to calculate time limits
with reference to the above-cited case law. In the case in question the 12-month priority
period had to be calculated. The event representing the point in time from which a time
limit started to run was the filing date of the application in respect of which priority was
claimed, which was 5.5.1986. The period referred to in Art. 87 EPC was expressed in
months; it expired in the relevant subsequent month (ie in this case May 1987) on the
day which had the same number as the day on which the said event occurred, which
was 5.5.1987 (R. 83(2) EPC in combination with R. 83(4) EPC). For events which trigger
the start of a time limit in connection with re-establishment of rights, see Chapter
VI.E.2.2.1 below; for "notification" as an event which triggers the start of a time limit, see
Chapter VI.N.5; for the relevant event for calculating the time limit under Art. 78(2) EPC,
see J 13/04.

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1.2. Extension of time limits ipso jure on account of public holidays or technical
failures
1.2.1 Public holiday in one of the filing locations under Rule 85(1) EPC
The amendment made to R. 85(1) EPC with effect from 1.8.1987 ensured that time limits
would expire at the same time even where there was a public holiday in only one of the
filing locations (Art. 75(1)(a) EPC). This rule relates both to the time limit for filing
documents, cheques and debit orders and to payments not assignable to any particular
filing location, such as, for example, payment by means of a bank transfer (for the legal
position prior to 1.8.1987 see J 1/81, OJ 1983, 53 and J 30/89).
1.2.2 Interruption in the delivery of mail
R. 85(2) EPC provides for a time limit to be extended if it expires on a day on which there
is a general interruption or subsequent dislocation in the delivery of mail in a contracting
state or between a contracting state and the EPO. The duration of the period of
interruption or dislocation shall be as stated by the President of the EPO.
In J 4/87 (OJ 1988, 172) the board reaffirmed that in the event of an unforeseeable
postal delay causing non-compliance with a time limit, the EPO had no discretion to
extend the time limit other than in the cases referred to in R. 85(2) EPC.
In J 11/88 (OJ 1989, 433) the board interpreted R. 85(2) EPC as being so drafted that if
a general interruption or subsequent dislocation in the delivery of mail within the meaning
of the rule occurred, any time limit under the EPC which expired within the period of
interruption or dislocation was extended by operation of law. Accordingly, if the
President of the EPO did not issue a statement as to the duration of that period, because
he did not have the relevant information at the right time, this could not affect the rights
of a person adversely affected by the interruption or dislocation. The board furthermore
stated that whether or not an interruption in the delivery of mail or subsequent dislocation
qualified as a "general interruption" was a question of fact, which had to be decided in
the light of any credible information available; in case of doubt, the EPO should make
official enquiries of its own motion in application of Art. 114(1) EPC.
In J 3/90 (OJ 1991, 550) the Legal Board of Appeal interpreted the concept of a general
interruption, explaining that R. 85(2) EPC was not restricted to nationwide interruptions.
In this case the board had to consider whether or not a disruption of mail had affected
those residing in an area in such a way as to render it of "general character" and decided
that the limited geographical extent of the disruption did not disqualify the interruption
from being general. Whether or not a representative had undertaken all possible
measures to avoid the effects of a postal strike was not a relevant test under
R. 85(2) EPC.
In J 1/93 the Legal Board of Appeal again stated that for an interruption in the delivery of
mail under R. 85(2) EPC to be considered general in character the public in general
residing in an area of some magnitude, even if of limited geographical extent, had to be
affected. The loss of a single mailbag might affect a number of individual addressees but
not the public in general.
In J 14/03 the board confirmed that evidence of a disruption within the meaning of
R. 85(2) EPC provided by the appellant can lead to a retrospective extension of time in a
particular case, as occurred in J 11/88, if this evidence, had it been known at the time,

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would have been such as to warrant a Presidential statement under R. 85(2) EPC.
However, the board found that in that case the quality of evidence was quite different
from the case at issue, in which the only evidence of interruption was that of newspaper
articles. The board considered this evidence inconclusive as the articles reported not
only a number of problems caused by adverse weather and unofficial strikes, but also
measures to deal with such conditions.
1.3. Statutory periods of grace and the fiction of observance of a time limit for
fee payments
1.3.1 Additional period for renewal fees under Article 86(2) EPC
In decision J 4/91 (OJ 1992, 402) the Legal Board of Appeal laid down a new method for
calculating the additional period for renewal fees. The board held that when calculating
the six-month period for the payment of a renewal fee with additional fee under
Art. 86(2) EPC, R. 83(4) EPC should be applied mutatis mutandis in the light of R. 37(1),
first sentence, EPC. This meant that the six-month period did not end on the day of the
subsequent sixth month corresponding "in number" to the due date according to
R. 37(1), first sentence, EPC but on the day which was equivalent to this due date by
virtue of its being the "last day of the month". For the purposes of calculating the
additional period under Art. 86(2) EPC, therefore, R. 83(4) EPC, in the context of
R. 37(1), first sentence, EPC resulted in a period running "from the last day of the month
to the last day of the month".
The Legal Board then considered Legal Advice No. 5/80 (previous version) on the
"Calculation of aggregate time limits" (OJ 1980, 149, 152) as a possible breach of the
"last day of the month" rule, since it mentioned in passing that the principles contained
therein should also be applied to the additional period under Art. 86(2) EPC. The board
held that Legal Advice No. 5/80 was not applicable to the start of the additional period
under Art. 86(2) EPC. This meant that the additional period started on the last day of the
month specified in R. 37(1), first sentence, EPC even in the circumstances mentioned in
R. 85(1), (2) and (4) EPC. It followed that the occurrence of such circumstances at the
beginning of the period did not result in the end of the period being postponed beyond
the end of the sixth month and into the seventh month. Legal Advice No. 5/80 was
superseded by Legal Advice No. 5/93 rev. (OJ 1993, 229) which takes into account the
amendments to R. 85a, R. 85b and R. 104b(1) EPC (now R. 107(1) EPC).
1.3.2 Period of grace for payment of fees under Rule 85a EPC
In J 5/91 (OJ 1993, 657) the Legal Board of Appeal was asked to rule on how
R. 85a EPC should be interpreted where the time limit under paragraph 1 for the
subsequent payment of designation fees for the designation of contracting states in
connection with a European application expired later than under paragraph 2. The new
version of R. 85a(1) EPC, which came into effect on 1.4.1989, states that if the
designation fees are not paid within the specified time limit the EPO must notify the
applicants that they may still be validly paid within a period of grace of one month. The
two-month period of grace without notification under R. 85a(2) EPC continues to apply to
precautionary designations. The board therefore concluded that in cases where the time
limits for subsequent payment of designation fees under paragraphs 1 and 2 of
R. 85a EPC expire at different times, all designation fees can still validly be paid up to
the later date.

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In J 5/98 the board held that the occurrence of a national holiday on the last day of the
period of grace for payment of designation fees pursuant to R. 85a(2) EPC did not have
the effect of extending that period. Having examined all relevant provisions the board
pointed out that the case was concerned with the expiry of a period of grace and not an
initial time limit and the law did not allow the extension of the expiry of a period of grace.
The board observed that the period of grace, as its name indicates, exists to allow those
who miss the initial time limit to comply belatedly, provided they pay a surcharge. To
extend such periods of grace to allow for national holidays in contracting states would be
to add a second period of grace to the first. That would be contrary to the intention
behind the present R. 85a EPC which was to regularise the practice relating to payment
of fees after expiry of the initial time limit.
The calculation of the period for payment of designation fees is also dealt with in Legal
Advice No. 5/93 rev. (OJ 1993, 229).
The board in J 15/02 stated that the time limits under R. 25(2), second sentence, EPC
and R. 85a EPC respectively did not form one integrated period, even if, according to
G 3/91 (OJ 1993, 8), the two time limits were closely linked, because the benefit of an
extension under R. 85a EPC was available only if the prescribed surcharge was paid
together with the due designation fees. In view of G 4/98 (OJ 2001, 131) and the
different requirements for compliance with the two time limits, the wording of Art. 4(1) of
the Council's decision of 13 October 1999 (OJ 1999, 660: "Rules 15(2) and 25(2) as
amended shall apply to all European patent applications in respect of which, on 1 March
2000, the designation fees have not been validly paid and the time limit under existing
Rules 15(2) and 25(2) EPC for paying them has not yet expired") could not be
interpreted as meaning that the "time limit" included an extension under R. 85a(2) EPC
(see also J 9/02).
1.3.3 Fiction of fee payment in due time pursuant to Article 8(3) and (4) RRF
In J 20/00 neither the sixth renewal fee nor the additional fee according to Art. 86(2) EPC
had been entered in a bank account held by the EPO in due time. The question then
arose whether Art. 8(3) RRF (in conjunction with Art. 8 (4) RRF) was applicable since it
referred to the observance of a "period" for payment.
The board noted that it is true that the expression "period" in Art. 8 RRF could at first
sight be understood as meaning a time limit in the sense of a period of a certain duration
which begins on a first and ends on a later ("last") day, whereas renewal fees are due on
a specific single day, namely on the last day of the month containing the anniversary of
the date of filing of the European patent application (R. 37(1), first sentence, EPC).
However, this was not convincing in view of the definition of periods given in
R. 83(1) EPC. More relevant, in fact decisive, was the fact that in effect the due date
marks the last day of a long period (one year and one day - R. 37(1), first sentence, EPC
in conjuction with second sentence, EPC) during which a renewal fee can be validly paid
(without additional fee). The board concluded that Art. 8(3) and (4) RRF apply equally to
the payment of renewal fees in respect of which one of the conditions set out in
Art. 8(3)(a) RRF has been fulfilled on or before the due date. This provision also covers
situations where the payment order was given later than ten days before the relevant
point in time.
The board also found that the non-observance of the time limit and an ensuing loss of
rights connected to it cannot be established, as long as the request mentioned in

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Art. 8(4) RRF has not been issued by the EPO and the time limit specified therein has
not expired. As the examining division failed to do so, the board was empowered
pursuant to Art. 111(1) EPC (cf. T 842/90) to set a time limit of two months according to
Art. 8(4) RRF. As the appellant paid the requested surcharge in due time and had
previously filed evidence that payment of the sixth renewal fee had been effected, all
requirements of Art. 8(3) RRF had been fulfilled.
2. Extension of time limits on request and further processing
VI.D.2. Extension of time limits on request and further processing

2.1. Relevant criteria when time limits are extended

In T 79/99 the board noted that when asked for either extensions of time limits or
postponement of oral proceedings, the board has to consider not only the interests of
each of the parties but also the overall interest in the expeditious prosecution of appeals
and the delays to other cases in the event of postponements. It decided that all interests
would be best served in the case at issue by maintaining the date appointed.
The board took this opportunity to remind parties that, while some delay arising from the
volume of pending appeals was inevitable, additional delays caused by parties
themselves were often avoidable and were in principle undesirable. Such additional
delays could affect not only the particular cases in which they occur but also other
pending appeals the parties to which have complied with the usual time limits. It was also
the case that most initial time limits under the EPC and the procedure of the boards were
generous by comparison with corresponding provisions of the laws of many contracting
states. Parties should not consider extensions of time as being available for the asking.
Requests for extensions of time should only be made sparingly. Such requests should be
made as soon as the possibility of the need for extra time becomes apparent and not at
the last moment. Only the period of time actually and reasonably required should be
sought. The more extensions a party seeks, or the longer the time sought for any one
extension, the more important it is to provide reasons. It is also prudent to consult other
parties to the appeal in advance - if they agree to an extension, the board is more likely
to agree also; if they disagree, the board could then be made aware of their views. The
board went on and pointed out that when considering requests for additional time, it
would take into account not only any reasons put forward but also the number of
previous extensions (if any), the views of the other party or parties (if known), the effect
of delays on other appeals pending before it and the general principle that all delays are
to be avoided where possible. Similar considerations apply to requests to adjourn oral
proceedings.
For discretionary decisions under R. 84, last sentence, EPC, see also T 954/98.
2.2. Further processing under Art. 121 EPC
An extension can no longer be requested once a period has expired (J 7/81,
OJ 1983, 89). However, Art. 121(1) EPC provides that applicants may request further
processing of a European patent application if their application is to be refused, has been
refused or is deemed to be withdrawn following failure to reply within a time limit set by
the EPO.
In J 37/89 (OJ 1993, 201) the Legal Board of Appeal pointed out that the applicants
could overcome a loss of rights under Art. 96(3) EPC resulting from the refusal of a
request for a time-limit extension by requesting further processing in accordance with

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Art. 121 EPC. At the same time, they could request reimbursement of the fee for further
processing. This secondary request had to be decided on in connection with the final
decision. Under Art. 106(3) EPC, the decision on the secondary request could be
appealed together with the final decision. The appeal could also be confined to
contesting the decision on the secondary request.
In J 47/92 (OJ 1995, 180) the Legal Board of Appeal stated that further processing under
Art. 121 EPC was available only in respect of those time limits the duration of which
was to be determined or set by the EPO. As regards the period of grace pursuant to
R. 85b EPC the board noted that its duration was defined as one month by the rule itself
and not by the EPO. Though it was true that the actual date of expiry of the period of
grace depended on an action performed by the EPO, this fact did not imply that the time
limit was set by the EPO, since the EPO did not thereby determine the duration of the
time limit. The period of grace was therefore not open to further processing.
In J 16/92 the examining division had issued a communication pursuant to R. 69(1) EPC
after its first communication inviting observations had failed to elicit a response. The
representative had thereupon applied for further processing of the application, requesting
an extension of the time limit for filing observations concerning the first communication.
The omitted act had, however, not been completed within the two-month time limit
pursuant to Art. 121(2) EPC. The Legal Board of Appeal concluded that where the
omitted act consisted in filing a reply in substance to a first communication, it was not
completed by filing a request for a time limit for submitting that reply, since a request for
a time limit was not equivalent to the act the party in question had proposed performing
within the time limit requested.
3. Interruption of proceedings (Rule 90 EPC)
VI.D.3. Interruption of proceedings (Rule 90 EPC)

3.1. Application of Rule 90 EPC by the EPO of its own motion

The EPO must apply the provisions of R. 90 EPC of its own motion (J ../87,
OJ 1988, 323; J 23/88, T 315/87). The consequence of interruption of proceedings is
that the time limits in force as regards the applicant or patentee at the date of interruption
of the proceedings, shall begin again as from the day on which the proceedings were
resumed (cf. R. 90(4) EPC). However, the time limit for making the request for
examination and the time limit for paying renewal fees are only suspended (see below
hapter VI.D.3.7, "Consequences of interruption of proceedings").
3.2. Concept of legal incapacity (Rule 90(1)(a) and (c) EPC)
The EPC does not define the concept of “legal incapacity”, which is assessed differently
according to whether the person concerned is the applicant or patentee or a professional
representative: In J xx/xx (OJ 1985, 159) and J xx/87 (OJ 1988, 177) the Legal Board
held that the capacity of the applicant or patent proprietor to carry out legal
transactions relating to his application or patent must be determined in accordance with
the relevant national law because the interest in the patent application or the patent is
an interest in property (cf. Art. 74 and Art. 2(2) EPC; see also J 49/92). On the other
hand, J xx/xx (OJ 1985, 159) states that a uniform standard of judging legal incapacity
of representatives shall apply in order to avoid differences in the application of
R. 90(1)(c) EPC depending on the nationality of domicile of the representative.

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3.3. Determining legal incapacity of the applicant or patent proprietor for the
purpose of Rule 90(1)(a) EPC
In J ../87 (OJ 1988, 177) the board ruled that a brief medical certificate attesting that the
applicant had been in a state of physical and mental exhaustion and depression, was not
sufficient to establish incapacity within the meaning of R. 90(1)(a) EPC since the
certificate said nothing about the seriousness and duration of this condition.
In J 49/92 the Legal Board of Appeal was again unable to conclude from the applicant's
submission that he had been legally incapacitated in accordance with German law,
which was relevant in that case. The board had no evidence - such as a medical
certificate - to suggest that the applicant's condition had been such, according to
German legal practice, as to exclude his exercising his will rationally, since he had still
managed to transfer the fees for the application, even if they had been sent by mistake
to the German Patent Office instead of the EPO.
3.4. Determining legal incapacity of the representative for the purpose of Rule
90(1)(c) EPC
In J xx/xx (OJ 1985, 159) the board noted that although there were differences in the
national laws of contracting states as to the concept of "legal incapacity" and as to its
consequences, there seemed to be a broad agreement that a person of full age was
legally incapacitated when he was suffering from such a disturbance of his mind that he
was unable to form the necessary voluntary intention to carry out legal transactions
which would be binding upon him, eg to make valid contracts. Such a disturbance of his
mind could be recognised by national law even if it was temporary only (eg a disturbance
caused by physical injury or by the influence of alcohol or other drugs) or occurred from
time to time, as was the case with some mental illnesses in which the patient had lucid
intervals. Disturbance of the mind causing legal incapacity was always recognised by law
if it was of long duration, a fortiori if it was permanent and irreversible.
The board noted that although no definition of legal incapacity was given in the Rule or in
the EPC, the most that could possibly be deduced from R. 90 EPC itself was that the
incapacity should be such that the appointment of a new representative was necessary
or at least expedient: cf. R. 90(3) EPC The relevant aspect of his legal incapacity for the
purpose of R. 90(1)(c) EPC was that of his incapacity to carry out professional work on
behalf of a client. Since there was a unified European profession of representatives
before the EPO, it was justified to consider that there should be a uniform standard of
judging legal incapacity, in order to avoid differences in the application of
R. 90(1)(c) EPC depending on the nationality or domicile of the representative. The
matter was, of course, completely separate from any question of a representative's legal
incapacity to manage his own personal affairs, which, in accordance with the relevant
national law would be governed by his nationality or domicile. In these circumstances,
the question of determining the legal incapacity of a representative for the purposes of
R. 90(1)(c) EPC was one for the EPO, applying its own standards, developed in the light
of experience and taking into consideration principles applied in the national laws of the
contracting states.
In J 7/99 the board noted that this uniform standard of legal incapacity had been
determined by the board for the purpose of R. 90(1)(c) EPC taking into consideration the
principles recognised in the national laws of the contracting states. The basic
consideration was whether the representative concerned was either in a fit mental state

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to do the work required of him at the material time or whether he lacked the capacity to
make rational decisions.
In J 5/99 the board stated that that meant carefully weighing up all reliable relevant
information. Also indispensable was a reliable medical opinion taking account of all
material facts.
The legal incapacity had to be of a persistent nature (J ../86, OJ 1987, 528). For the
purposes of R. 90(1)(c) EPC, the EPO must establish whether and if so when the
representative was legally incapacitated, and in the light of its findings specify the time
limits which might have been interrupted (J ../87, OJ 1988, 323).
In J 7/99 the appellant's former representative explained during the oral proceedings, his
mental block was restricted to just this single case in which his secretary failed to
observe the time limit pursuant to Art. 91(5) EPC and, as a consequence, he himself
failed to file the grounds of the request for restitutio in integrum within due time
(Art. 122(2) EPC). In other cases he worked, as he pointed out, "automatically" so that
no other failure to meet time limits or other mistakes occurred. The board found,
however, that was not "legal incapacity" as it is understood for the purpose of
R. 90(1)(c) EPC. Legal incapacity pursuant to this rule means a mental state in which the
representative is so totally or nearly totally unable to take rational decisions that all his
professional duties, and not just one isolated case, are affected by his mental state. It
would be highly unreliable to assess a representative's legal capacity or incapacity by
reference to only one case. Furthermore that approach would beg the question whether
legal incapacity as regards one single case could or did affect other cases dealt with by
the representative in question. Thus the board did not find that the appellant's former
representative was legally incapable of dealing with the application at the material time
and held that the main request must be refused (legal incapacity was also rejected in
J 2/98.)
In T 315/87 of 14.2.1989 the board lent credence to the assertion that during the time in
question the previous representative had found himself in the unusual situation
described, particularly as the circumstances (proceedings concerning professional
conduct, the need to organise his office's work) had also been made known officially to
the EPO. It further accepted that he had been suffering from physical and mental
disorders during that time. Indeed, the medical documents submitted by the previous
representative himself pointed to a psychosomatic condition.
3.5. Legal incapacity of a representative from outside the contracting states
In J 23/88 the Receiving Section had disallowed the applicant's claim under
R. 90(1)(a) EPC, holding that an American patent attorney was not covered by
R. 90(1)(a) EPC, being neither the applicant nor the proprietor of a European patent, nor
a person authorised by national law to act on his behalf. The decision was based on a
strict construction of R. 90(1)(a) EPC, and in particular upon the premise that the
relevant category in that Rule (persons authorised by national law) covered legal
representatives of the applicant (patent proprietor) but did not extend to a patent attorney
authorised under the laws of a non-Contracting State, whose legal incapacity was,
therefore, irrelevant to the operation of the above Rule. The board disallowed the
applicant's claim under R. 90(1)(a) EPC.

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The board however, of its own motion, considered whether or not such interruption had
taken place under R. 90(1)(c) EPC (legal incapacity of the representative of an applicant
for a European patent), a ground not specifically relied upon by the appellant. The board
came to the conclusion that the US patent attorney in the case at issue was, at the
relevant time, a legally incapacitated representative of the applicant within the meaning
of R. 90(1)(c) EPC. This interpretation was fully consonant with the preparatory
documents regarding the desirability of equal treatment of Applicants from Contracting
and non-contracting states. The board found that the difference in the wording of
R. 90(1)(c) EPC from that of R. 90(1)(a) EPC was deliberately chosen so as to create
equal treatment between applicants in the Contracting and in non-contracting states (cf.
Minutes of the 10th meeting of Working Party I of the inter-governmental conference for
the setting up of a European system for the grant of patents, held in Luxembourg, on 22
to 26 November 1971, BR/144/71, point 71). The board observed that Art. 133(2) EPC
provided a limited exception to the normal requirement for professional representation
within the meaning of Art. 134 EPC in the case, and only in the case, of the filing of the
European patent application. Such a filing could validly be made by the applicant himself
or by any representative duly authorised by him. Thus, in effect, once the processing of
the international application had properly started in the EPO, an American patent
attorney would lose his entitlement to act under Art. 49 PCT by virtue of the combined
effect of Art. 27(7) PCT, Art. 133(2) EPC and Art. 134 EPC. Once he lost his
representative capacity, any interruption in proceedings occasioned by his death or legal
incapacity would no longer be covered by R. 90(1)(c) EPC.
3.6. Interruption of proceedings because of insolvency (Rule 90(1)(b) EPC)
According to R. 90(1)(b) EPC proceedings before the EPO shall be interrupted in the
event of the applicant for a European patent, as a result of some action taken against his
property, being prevented by legal reasons from continuing the proceedings before the
EPO.
In J 9/90 the Legal Board held that for R. 90(1)(b) EPC (interruption of proceedings
because of insolvency) to be applied in the light of Art. 60(3) EPC and R. 20(3) EPC, the
applicant entered in the Register of European Patents and the insolvent person (here a
limited company) had to be legally identical (for the possibility of having rights re-
established see Chapter VI.E.8.).
In J 26/95 (OJ 1999, 668) the board noted that, as could be derived from the legislative
history of R. 90 EPC, it was not the name or formal qualification of an action against
property that was decisive for the question of whether it interrupted proceedings under
R. 90(1)(b) EPC. It was also not decisive whether the action served the purpose of
satisfying all of the debtor's creditors. The decisive criterion for interruption was whether
the action against the property was such as to make it legally impossible for the applicant
to continue with proceedings. Being placed under Chapter 11 of the US Bankruptcy
Code was an action taken against the property of the debtor. It did not, however,
constitute a case where, as a result of such action, it was impossible for the debtor to
continue the proceedings before the EPO. On the contrary, it was the very nature of
proceedings under Chapter 11 that it was the debtor who continued to act for his
business, even if he was subject to certain restrictions due to his obligation to preserve
the interests of his creditors and due to his supervision by a trustee, if any. The board
concluded that Chapter 11 bankruptcy proceedings were therefore not comparable to the
cases which had been recognised in the case law of the boards of appeal as leading to

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interruption of proceedings, ie where parties had been placed under receivership under
French law (J 7/83, OJ 1984, 211) or been declared bankrupt under German law
(J 9/90). The board therefore concluded that, in the absence of specific circumstances
having been shown in the case under consideration, proceedings against the applicant
under Chapter 11, "Reorganization", of Title 11 - Bankruptcy - of the United States Code
did not interrupt proceedings before the EPO within the meaning of R. 90(1)(b) EPC. A
situation which could be compared to the exceptional case underlying decisions J 9/94
and J 10/94 had also not been substantiated (the case law enshrined in J 26/95 was
also confirmed in J 11/98).
3.7. Consequences of interruption of proceedings (Rule 90(4) EPC)
R. 90(4), first sentence, EPC states that the time limits in force as regards the applicant
for or proprietor of the patent at the time of interruption of the proceedings shall begin
again as from the day on which the proceedings are resumed. R. 90(4) EPC includes
two exceptions in this respect, namely the time limits for making a request for
examination and for paying renewal fees. R. 90(4) EPC does not however constitute an
exception to the general principle that all time limits are interrupted. Its sole purpose is to
specify how time limits are to be calculated when proceedings resume (J 7/83,
OJ 1984, 211).
In J 7/83 (OJ 1984, 211) the board held that in the event of proceedings for grant of a
European patent being interrupted because the applicant company has gone into
receivership (R. 90(1)(b) EPC), the period prescribed by Art. 94(2) EPC for payment of
the examination fee is suspended as from the date on which payments were
discontinued by court order up to the date on which proceedings for grant are resumed
(R. 90(2) EPC). The period then resumes for the part remaining to elapse, or for at least
the two months prescribed by R. 90(4), second sentence, EPC. In J ../87 (OJ 1988, 323)
the board stated that such an interpretation could not be applied to renewal fees for
which the EPC did not prescribe a time limit for payment but simply dates on which they
fell due. The only time limit affecting renewal fees that might be suspended was the six-
month period for paying the renewal fee together with an additional fee referred to in
Art. 86 EPC. R. 90(4) EPC had to be interpreted as deferring until the date proceedings
are resumed the payment date for renewal fees which had fallen due during the period of
the representative's or applicant's incapacity.
E. Re-establishment of rights
Re-establishment of rights

1. Applicability of re-establishment of rights (Article 122(1) EPC)

VI.E.1. Applicability of re-establishment of rights (Article 122(1) EPC)

1.1. The meaning of "time limit"

For re-establishment of rights to be possible, there must be a failure to meet a time limit
vis-à-vis the EPO, ie a time limit given specifically to the applicant pursuant to the EPC
or by an officer of the EPO within which he must accomplish a certain act.
In J 3/83 the board explained that the concept of a time limit within Art. 122 EPC
involved a period of time of a certain duration. In the case of designation of states,
there was no such period. States had to be designated at a particular time, see
Art. 79(1) EPC.
In J 7/90 (OJ 1993, 133) the board found that the "time limitation" condition imposed
under board of appeal case law, which required that, in general, a request for correction

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of the designation of a state or priority data had to be refused in the public interest if it
was not made early enough to enable publication of a warning together with the
European patent application, was not a "time limit" within the meaning of
Art. 122(1) EPC.
In J 21/96 the board held that the time restriction for filing a divisional application
(R. 25(1) EPC) was not a time limit within the meaning of Art. 122(1) EPC. It merely
identified a point in the grant procedure after which a divisional application could no
longer be filed. This point was decided upon by the applicant when he gave his approval
pursuant to R. 51(4) EPC. Therefore, in the absence of a time limit to be observed, re-
establishment of rights was not possible (regarding Art. 25 EPC in its 1988 version see
also J 11/91, J 16/91, OJ 1994, 28 and J 4/02.)
The Legal Board of Appeal adhered to this conclusion even after R. 25(1) EPC had been
amended in 2001. In J 10/01 the board emphasised that not every "time limit", "time
limitation" or "time restriction" under the EPC is also a time limit pursuant to
Art. 122 EPC. According to J 21/96, R. 25(1) EPC does not lay down a time limit within
the meaning of Art. 122 EPC but merely identifies a point in the grant procedure after
which a divisional application may no longer be filed. This decision can be applied to the
case in suit as well, as only the defined point in time has been changed, from the time of
approval of the text according to R. 51(4) EPC to the moment when the earlier
application is no longer pending.
On the same subject the board emphasised in J 24/03 (OJ 2004, 544) with reference to
J 3/83 and the principles of procedural law generally recognised in the contracting
states, that a time limit involves a period of fixed length for accomplishing a
procedural act. It held that, in procedural law, the fact that a conditional act can only be
accomplished before a particular set of circumstances foreseen by legal provisions
occurs (condition), was conceptually different from a set period of time imposed for
doing an act (time limit). The board concluded that R. 25(1) EPC does not impose any
time limit but rather sets a condition, namely that the earlier European patent application
was pending. The communication of the day of publication to the applicant cannot be
regarded as an implicit imposition of a time limit (see also J 3/04).
Time limits in the EPC have two conceptual elements: (1) a period of time determined
in years, months or days, and (2) a relevant date, which serves as the starting date of
the time limit, and from which the period of time is counted. Time restrictions imposed on
applicants by the EPC, but not having these conceptual elements can not be regarded
as time limits for the purposes of Art. 122 EPC (J 18/04, OJ 2006, 560).
1.2. Loss of rights as a direct consequence by virtue of the EPC
Under Art. 122(1) EPC rights cannot be re-established unless they have previously been
lost as a direct consequence of the non-observance of a time limit vis-à-vis the EPO.
In J 1/80 (OJ 1980, 289) certified copies of priority documents had not been filed within
the 16-month period provided for in R. 38(3) EPC. The Legal Board of Appeal found that,
according to the EPC, there was a deficiency only if the priority documents had not been
filed by the end of the period. It could only be said that there was a deficiency thereafter
and the applicant should have been given an opportunity to remedy that deficiency within
a further period. The board recognised that there could only be a loss of rights if the
applicant did not then take advantage of this opportunity.

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In J 7/93 (see Chapter IX.D., "The EPO as a PCT authority") the EPO did not tell the
appellant to ignore its previous communications issued in connection with a time limit
supposed to be missed; this would have enabled the appellant to recognise that its
request for re-establishment was unnecessary. Instead, the EPO continued the
proceedings for re-establishment of rights and finally refused restitutio without taking into
account the fact that these proceedings had been unnecessary from the very beginning.
The board found that this amounted to a substantial procedural violation within the
meaning of R. 67 EPC. The board held that it was equitable to order reimbursement of
the appeal fee, even though the appellant had not applied for this (J 7/82, OJ 1982, 391).
The board held that since there was no longer any legal ground to request re-
establishment of rights, the fee for re-establishment was wrongly accepted by the EPO
and, therefore, had to be refunded to the appellant (confirrming J 1/80 and T 522/88).
1.3. Omission of acts by applicant
Under Art. 122(1) EPC re-establishment of rights may be granted to both the applicant
and the proprietor of a European patent.
In G 1/86 (OJ 1987, 447) the Enlarged Board of Appeal admitted an exception to this
principle in the following case: an opponent as appellant may have his rights re-
established under Art. 122 EPC if he has failed to observe the time limit for filing the
statement of grounds of appeal. The board first of all observed that in drafting
Art. 122 EPC, the authors of the EPC intended only to exclude certain cases and time
limits from restitutio in integrum, and not to restrict that facility solely to applicants and
patent proprietors. The wording of Art. 122(1) EPC, the historical documentation relating
to the EPC and a comparison of the national laws of member states suggested that
opponents may not have their rights re-established in respect of the time limit for appeal.
However, this did not answer the question raised with regard to the time limit within
which the opponent has to file the statement of grounds for appeal because, when its
authors decided to exclude opponents from restitutio in integrum, the draft EPC made no
provision for a separate time limit for filing the statement of grounds of appeal, and
consequently they did not rule on the matter.
The Enlarged Board considered that the reasons justifying the exclusion of opponents
from re-establishment of rights in respect of the time limit for appeal - in particular the
patent proprietor's interest in no longer being left uncertain as to whether an appeal had
been lodged once this time limit had expired - could not be extended to the time limit for
filing the statement of grounds of appeal, because this uncertainty no longer existed.
Once the appeal had been filed, the legal process had begun and the patent proprietor
had to comply with the procedural requirements like all the other parties and wait until
the board of appeal arrived at a final decision on the appeal's admissibility.
On this basis the Enlarged Board applied the general legal principle recognised in the
contracting states of the EPC that all parties to proceedings before a court must be
accorded the same procedural rights, as a principle deriving from the general principle of
equality before the law. Under this principle an opponent must not be treated differently
from the patent proprietor as that would result in unjustifiable discrimination against him.
In T 210/89 (OJ 1991, 433) the board ruled that an opponent (appellant) was not entitled
to have his rights re-established when he missed the two-month time limit for filing an
appeal (Art. 108, first sentence, EPC). An opponent (appellant) seeking to have his
rights re-established under Art. 122(1) EPC could not rely on the principle of "equality

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before the law" (applying Art. 125 EPC) where the appeal did not exist for procedural
reasons (distinguishing G 1/86, see above). The applicant or proprietor, having failed to
set in motion his appeal, would find himself at the end of the legal road; by contrast, an
opponent could, if he wished, seek revocation in the national courts into whose
jurisdiction the European patent would have passed (see also T 323/87, OJ 1989, 343;
T 128/87, OJ 1989, 406 and T 314/01).
Referring to G 1/86 the board stated in T 702/89 (OJ 1994, 472) that a request for re-
establishment of rights by an opponent who had failed to observe the nine-month time
limit under Art. 99(1) EPC for filing the notice of opposition and paying the appropriate
fee had to be rejected as inadmissible. In G 1/86 the Enlarged Board of Appeal held that
in appeal proceedings the legal process started when the appeal had been filed and the
appropriate fee had been paid. For the same reasons, the board in T 748/93 maintained
that, in accordance with Art. 99(1) EPC, the legal process in opposition proceedings
began when the notice of opposition was filed and the appropriate fee was paid.
In J 3/80 (OJ 1980, 92) the board made it clear that if the national industrial property
office concerned failed to forward a European patent application filed with that national
office to the EPO in time, with the result that the application was deemed to be
withdrawn (Art. 77(5) EPC), the applicant could not claim restitution of rights, since the
EPC provided only for restitution of rights where there had been a failure to observe a
time limit which it was for the applicant to observe.
2. Admissibility of applications for re-establishment of rights
VI.E.2. Admissibility of applications for re-establishment of rights

2.1. Department competent to decide upon the application

The department competent to decide on the omitted act shall decide upon the application
(Art. 122(4) EPC).
2.1.1 When the fee for grant and the printing fee have not been paid or the translation
has not been filed
In J 22/86 (OJ 1987, 280) the board stated in relation to the failure to pay grant and
printing fees and to file translations that the examining division was in the first instance
competent to decide upon such omitted act. However, in view of the special
circumstances of this case, the board decided, pursuant to Art. 111(1) EPC, to exercise
the power of the examining division to decide upon the application for restitutio (see also
J 9/86).
In T 26/88 (OJ 1991, 30) the appellant failed to comply with the request (pursuant to
R. 58(5) EPC) to pay the printing fee and to file translations of the claims within three
months of notification of the request. The patentee submitted the request that the board
of appeal should examine and decide upon the application under Art. 122 EPC. The
board found that the circumstances of decision J 22/86 were quite different from the
case at issue and justified the exceptional exercise of the power of the examining
division to decide on the application for re-establishment. In the case before the board
the opposition division's formalities officer was responsible (see also T 522/88).
2.1.2 When no reply has been received to a communication under Article 96(2) EPC
In J 10/93 (OJ 1997, 91) the board noted that, according to Art. 20(1) EPC, the Legal
Division was competent to decide on the appellants' request for recording the transfer of

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a patent application. However, the Legal Division not only decided on this request but
also dealt with the appellants' application for re-establishment of rights which it rejected
as inadmissible. In the case at issue, the omitted act was the applicants' failure to reply
to a communication of the examining division issued pursuant to Art. 96(2) EPC.
Consequently, the department competent to decide on the application for restitutio was
the examining division (Art. 122(4) EPC). The board found that the Legal Division had
exceeded its powers. It stated that this could not be justified by any need to decide on
the request for restitutio as a preliminary issue to be answered before examining the
request for registering the transfer. The board set aside the decision of the Legal Division
on this ground alone and ordered that the request for restitutio be remitted to the
examining division for examination.
2.1.3 When a renewal fee has not been paid
In J 23/96 the applicant applied for a decision under R. 69(2) EPC and, as an auxiliary
request, asked for re-establishment of rights. The examining division issued a brief
communication saying that the request for re-establishment would be decided once the
decision under R. 69(2) EPC was final, or during any ensuing appeal. The board noted
that auxiliary requests were filed in case the main request was refused; they then took its
place and had to be dealt with in the same decision. The course taken by the examining
division was at odds with procedural economy, and might also oblige the applicant to
appeal twice. This amounted to a substantial procedural violation which meant setting
the contested decision aside and referring the matter back, without considering the
merits, for the division to decide on the two requests together. The board could not
decide on the request for re-establishment because it was not the "competent
department" within the meaning of Art. 122(4) EPC. In this case, the competent
department was the examining division.
2.1.4 When a notice of appeal or statement of grounds of appeal has not been filed
T 473/91 (OJ 1993, 630) was concerned with jurisdiction over the request for re-
establishment of rights in respect of the time limit for filing a notice of appeal. The board
noted that the admissibility of an appeal under Art. 109 EPC (interlocutory revision) only
fell under the jurisdiction of the department of first instance when this question could be
decided immediately on the basis of the appeal submissions themselves (notice of
appeal and statement of grounds, date of payment of the appeal fee). Consequently, the
appellate instance had exclusive jurisdiction over a request for restitutio in respect of a
time limit relating to the appeal itself (Art. 108 EPC) (see also T 949/94). The board
stated that in the system for appellate review by a separate higher instance, as foreseen
by the EPC in accordance with the principle of devolutive legal remedy, a final decision
(as distinct from a decision that was no longer appealable as a result of the time for
appeal having lapsed) by a lower instance effectively severed the case from that
instance, in so far as the decision had settled all pending issues on their merits. As an
exception to the principle of devolutive legal remedy, Art. 109 EPC provided for
rectification by the department of first instance. Being an exception to the system of
devolutive appeals, this provision had, however, to be construed narrowly. The board
held that since the outcome of the admissibility issue was dependent on the outcome of
the issue of restitutio in integrum, the request for restitutio had to be decided by the
board of appeal.

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In T 808/03, the board pointed out that the department competent to decide whether a
notice of appeal meets the requirements of the EPC was the board of appeal. While this
competence in relation to admissibility of an appeal was subject to the exception of
Art. 109(1) EPC, this provision conferred only the limited power to set aside uno actu the
department's own decision if the appeal was considered admissible and well founded.
There is no power to decide that an appeal is not admissible.
In T 624/96 the board ruled that because no written statement setting out the
grounds of appeal had been filed within the time limit under Art. 108 EPC in conjunction
with R. 78(3) EPC, the appeal should be rejected as inadmissible under R. 65(1) EPC
unless the appellant's request for re-establishment of rights was granted. The appellant
had filed such a request. Under Art. 122(4) EPC the board of appeal was competent to
decide on this request, because the omitted act concerned an appeal.
2.1.5 When a protest under Rule 40.2 PCT has not been filed
In W 3/93 (OJ 1994, 931) the board stated that as the board had to decide on the
protest, it was also competent to examine the request for re-establishment of rights
(Art. 122(4) EPC).
2.2. Time limits for filing an application for re-establishment (Article 122(2) EPC)
2.2.1 Two-month time limit from the removal of the cause of non-compliance
(a) General issues
The application for re-establishment of rights must be filed within two months of the date
of the removal of the cause of non-compliance with the missed time limit. This also
applies if the time limits under Art. 102(4) and (5) EPC have been missed, even if no
decision has yet been handed down concerning revocation (G 1/90, OJ 1991, 275). The
omitted act must be completed within the same period. The fee for re-establishment of
rights is also payable within the same time limit as that stipulated by Art. 122(2) EPC for
the filing of an application for re-establishment (J 18/03).
In most cases the "cause of non-compliance with the time limit" involved some error in
the carrying-out of the party's intention to comply with the time limit (J 29/86,
OJ 1988, 84; regarding other possible causes of non-compliance, see Chapter VI.E.6.1.)
According to the case law of the boards of appeal, the removal of the cause of non-
compliance occurs in such cases on the date on which the person responsible for the
application (the patent applicant or his professional representative) is made aware of the
fact that a time limit has not been observed (T 191/82, OJ 1985, 189; T 287/84,
OJ 1985, 333; J 29/86, OJ 1988, 84; J 27/88, J 27/90, OJ 1993, 422). The decisive
factor in this is the time when the person concerned ought to have noticed the error if he
had taken all due care (established case law, see eg J 27/88, J 5/94, J 27/01, T 315/90,
T 840/94 and T 170/04).
As stated in J 27/90 (OJ 1993, 422), the removal of the cause of non-compliance is a
matter of fact which has to be determined in the individual circumstances of each case
(J 7/82, OJ 1982, 391; see also J 16/93, T 900/90, T 832/99). In the case of an error of
facts the removal occurs on the date on which any person responsible for a patent
application should have discovered the error made. This is not necessarily the date of
receipt of the communication under R. 69(1) EPC (see T 315/90). If, however, such a
communication has duly been served, it may, in the absence of circumstances to the

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contrary, be assumed that the removal was effected by this communication (see also
J 7/82, OJ 1982, 391, J 29/86, OJ 1988, 84; T 900/90, T 428/98, OJ 2001, 494; T 832/99
and J 11/03).
In J 29/86 (OJ 1988, 84) the board assumed a later date in view of the special
circumstances of the case. In T 900/90 the board emphasised that in all cases in which
the receipt of the notification under R. 69(1) EPC could be regarded as the removal of
the cause of non-compliance it had to be clearly established that neither the
representative nor the applicant was aware that the application had been deemed to be
withdrawn before the receipt of that notification. Other cases in which the boards agreed
to a date different from that of the receipt of the communication under R. 69(1) EPC
include J 16/93, J 22/97, J 7/99, J 19/04, T 24/04 and T 170/04.
In J 27/01 the board decided that persons absent from their residence for a lengthy
period are obliged to ensure that legally important documents are forwarded to them so
that they can note their contents within a time limit appropriate to the technology
available in the particular case. The obstacle to completion of the omitted act was
therefore overcome on the date on which the individual applicant could have noted the
content of the EPO communication under R. 69(1) EPC if he had had it duly forwarded to
him.
(b) Responsible person
In several decisions the boards considered the question of who the responsible person
was who ought to have detected the omission.
In T 191/82 (OJ 1984, 415) the board held that in a case in which non-compliance with a
time limit leading to a loss of rights under the EPC was discovered by an employee of a
representative, the cause of non-compliance, ie failure to appreciate that the time limit
had not been complied with, could not be considered to have been removed until the
representative concerned had himself been made aware of the facts, since it had to
be his responsibility to decide whether an application for re-establishment of rights
should be made and, if it was to be made, to determine the grounds and supporting facts
to be presented to the EPO (see also J 7/82, OJ 1982, 391; J 9/86 and T 381/93).
In J 27/88 the board held that the responsible person in the case at issue was neither the
appellant nor the European representative but the US patent attorney who was the
authorised agent of the appellant and was duly empowered to take all necessary
measures. The date of removal of the cause of non-compliance was the date on which
the US patent attorney became aware of the omission. In this decision the board stated
that the effective date of removal of the cause of non-compliance was not necessarily the
date on which the omission had been discovered but the date on which it ought to have
been discovered if all due care had been observed (see also T 315/90).
In J 27/90 (OJ 1993, 422) the applicant, a US company, properly appointed a European
professional representative as its agent by referring to a general authorisation
(R. 101(2) EPC). For the payment of renewal fees the appellant used a computerised
service firm, a so-called "renewal fee payment agency". In a communication under
R. 69(1) EPC received by the professional representative, the appellant was informed
that the application was deemed to be withdrawn because the renewal fee and additional
fee had not been paid in due time. The board held that in the absence of circumstances
to the contrary a communication under R. 69(1) EPC to the professional representative

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removed the cause of non-compliance. This applied also when parties instructed the
(European) professional representatives via their (national) patent attorney. The
appointment of an independent service firm for the payment of renewal fees did not
constitute such circumstances to the contrary.
In J 16/93 the board stated that by virtue of the contractual relationship between the
applicant for a European patent and the professional representative, to which the
express authorisation on file with the patent application bore witness, the professional
representative was responsible for complying with all the obligations incumbent on his
client under the EPC. In principle, therefore, a communication under R. 69(1) EPC to the
representative removed the cause of non-compliance with a time limit. However, in the
event of exceptional circumstances the cause of non-compliance with a time limit may
persist even though the applicant's representatives were duly informed of the loss of
rights resulting therefrom. This is the case when a combination of circumstances, which
cannot be blamed on either the applicant or its representatives, and which arose in
particular from the fact that they had both moved to new addresses and from the illness
of a director of the company applying for a European patent, made it impossible for the
professional representatives to contact the applicant in due time. This combination of
circumstances prevented the representatives from performing the omitted act - ie paying
the renewal fee for the third year - since they had not received any advance. A
representative whose authorisation is silent in this respect and who has not received any
funds for this purpose is not expected to advance moneys on behalf of his client out of
his own pocket.
In T 840/94 (OJ 1996, 680) the board noted that according to the established case law of
the boards of appeal, the removal of the cause of non-compliance occurred on the date
on which the applicant or his representative should have discovered the error. The board
also observed that the EPO had notified the European representative as prescribed in
R. 81(1) EPC. If a party instructed the authorised representative not to pass on any
further communication from the EPO, it could not then rely on the fact that information
notified to the European representative and necessary for continuing the proceedings
was lacking. Similarly, in T 812/04 the board held that the person to be taken into
account for the purposes of establishing the point in time when the appellant was no
longer prevented from carrying out an unperformed act is the representative duly
appointed under R. 81(1) and R. 101(6) EPC.
In T 32/04 the board considered that in the absence of a duly registered transfer of the
application, the person responsible for the purpose of the EPO remained the applicant or
his representative. Hence an alleged assignment of the application to a third party in the
absence of such a registration was "res inter alios acta", ie outside the ambit of the legal
relationship between the applicant and the EPO.
(c) Legal fiction of deemed notification
The boards explained in several decisions that the decisive factor is the date of actual
receipt of a communication under R. 69(1) EPC.
In J 7/82 (OJ 1982, 391) the board held that the provisions of R. 78(2), last sentence,
EPC which deemed postal notifications to have been made when despatch had taken
place, did not apply in a case in which the receipt of a notification under R. 69(1) EPC
was relevant to the question of when the cause of non-compliance with a time limit had
been removed, for the purposes of Art. 122 EPC. In such a case the significant date was

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the date of actual receipt by the applicant. Likewise, in J 22/92 the communications
under R. 69(1) and R. 85a(1) EPC had been correctly made under the provisions of
R. 78(2) EPC, the applicant having neither residence nor principal place of business
within the territory of one of the contracting states. Notwithstanding that, the board held
that the removal of the cause of non-compliance took place thereafter, through a
telephone conversation between the newly appointed professional representative and
the EPO. The board emphasised that the removal of the cause of non-compliance was a
matter of fact and therefore had to be established beyond any reasonable doubt. This
was not the case where under R. 78(2) EPC the notification was only deemed to have
been made when despatch had taken place and when the receipt of the letter could not
be proved. Thus, the board considered the date on which the responsible representative
of the appellant first became aware of the missed time limit to be the date on which the
removal of the cause of non-compliance with the time limit had occurred (see T 191/82,
OJ 1985, 189).
In T 428/98 (OJ 2001, 485) it was stated that where a communication from the EPO
notifies an applicant that he has missed a time limit, the cause of failure to complete the
omitted act within the meaning of Art. 122(2), first sentence, EPC is as a rule removed
on the date when the applicant actually receives the communication, provided that failure
to complete the act was purely due to previous unawareness that the act had not been
completed. The legal fiction of deemed notification under R. 78(3) EPC (in the version in
force until 31 December 1998, now R. 78(2) EPC) has no effect on the date of removal
of the cause of non-compliance, even if this works against the applicant because the
actual date of receipt of the communication precedes the date calculated according to
R. 78(3) EPC (see also T 1063/03).
In J 11/03, however, the board agreed with the appellant that the removal of the cause of
non-compliance had not taken place before deemed notification in accordance with
R. 78(2) EPC, since there was no indication that the communication concerning loss of
rights had already been received before that date (see also J 10/99).
2.2.2 One-year time limit following the expiry of the unobserved time limit
A request for re-establishment of rights is only admissible within the year immediately
following the expiry of the unobserved time limit.
In J 16/86 the board ruled that a request for re-establishment filed over a year after
expiry of the non-observed time limit was inadmissible whatever the reasons for its late
submission (see also J 2/87, OJ 1988, 330; J 34/92).
In J 6/90 (OJ 1993, 714) the statement of grounds was not submitted until shortly after
the end of the period of one year stipulated in Art. 122(2), third sentence, EPC but within
the period of two months specified in Art. 122(2) EPC, which in the case at issue expired
later. The Legal Board of Appeal pointed out that the one-year period served to provide
legal certainty. If this period had elapsed, any party could confidently assume that a
patent application or patent which had been rendered invalid by the non-observance of a
time limit would not be revived. However, if on inspecting the file a third party noted that
an application for re-establishment had been made within the one-year time limit, he
would have adequate notice. The board concluded as follows: To make a valid request
for re-establishment of rights within the year immediately following the expiry of the
unobserved time limit, it is sufficient if the files contain a clearly documented statement of

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intent from which any third party may infer that the applicant is endeavouring to maintain
the patent application. (see also T 270/91, T 493/95, J 6/98 and J 35/03).
In J 12/98 the appellant's chief argument on appeal appeared to be that the words
"within the year immediately following the expiry of the unobserved time limit" in
Art. 122(2), third sentence, EPC should be construed to mean "within one year of the
applicant having knowledge of the unobserved time limit". As the board pointed out, this
interpretation would appear to make the starting point for calculating the two-month
period referred to in Art. 122(2), first and second sentence, EPC the same as that for
calculating the one-year time limit referred to in Art. 122(2), third sentence, EPC. This
interpretation would thus, according to the board, deprive Art. 122(2), third
sentence, EPC of any function, as of necessity something done within two months of a
particular date would have been done within one year of that date. Such a reading, in the
board's view, was contrary to the normal rules of interpretation.
2.3. Making good the omitted act
The omitted act must be performed within two months from removal of the cause of non-
compliance (Art. 122(2), second sentence, EPC).
According to T 167/97 (OJ 1999, 488), the requirement of Art. 122(2), second sentence,
EPC implies that the completed act likewise must meet the requirements of the EPC - ie
in the case at issue that the statement of grounds of appeal is admissible for the purpose
of Art. 108, last sentence, EPC. Where the statement of grounds filed with the request
for re-establishment is insufficient for the appeal to be declared admissible, the request
for re-establishment must itself be declared inadmissible.
2.4. Filing and substantiation of the application (Article 122(2) and (3) EPC)
Under Art. 122(2) EPC an application for re-establishment of rights has to be filed in
writing within two months of the removal of the cause of non-compliance with the time
limit. Under Art. 122(3) EPC the application has to state the grounds on which it is
based, and set out the facts on which it relies. According to the established case law of
the boards of appeal, these provisions have consistently been interpreted as meaning
that a statement of grounds, containing at least the core facts on which the application
relied, had to be filed within the stated time limit (J 18/98). Further evidence to back up
these allegations of fact could, if necessary, be presented after the expiry of the time
limit.
In T 13/82 (OJ 1983, 411) the board held that the application would be duly supported
only if it was clear from the facts set out and substantiated that the applicant had taken
all due care required by the circumstances to observe the time limit. The board held that
a conclusive case must be made, setting out and substantiating the facts, for the
probability - at least - that a wrongful act or omission on the part of an assistant was the
cause of the failure to meet the time limit: the mere possibility was not sufficient to
exculpate the applicant (T 715/89).
In J 17/89 the board stressed that the two-month period laid down in Art. 122(2) EPC
was clearly designed to enable the parties to carry out the necessary investigations and
consultations, as well as to prepare the documentation for submission of a request under
Art. 122 EPC.

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In T 287/84 (OJ 1985, 333) the board decided that an application for re-establishment of
rights could be considered as complying with the requirement that it had to set out the
facts on which it relied (Art. 122(3) EPC) if the initially filed application in writing, which
did not contain such facts, could be read together with a further document, which
contained them and was filed before the expiry of the period within which the application
had to be filed.
In J 5/94 it was decided that the grounds on which a request for re-establishment of
rights was based could be amplified, provided this completed the submission that had
been filed in due time and thus did not alter the basis on which the original request for re-
establishment had been filed.
In T 324/90 (OJ 1993, 33) the board held that evidence proving the facts set out in the
application could be filed after expiry of the two-month time limit laid down in
Art. 122(2) EPC. Only the grounds and a statement of the facts had to be filed within the
two-month period. It was not necessary to indicate in an application for re-establishment
the means (eg medical certificates, sworn statements and the like) by which the facts
relied on would be proved. Such evidence could be submitted after the time limit, if so
required (see also T 667/92).
In J 18/98 the examining division had refused the applicant's application for restitutio in
integrum. An appeal was filed against that decision. From the established case law on
Art. 122(3) EPC the board concluded that facts submitted only with the statement of
grounds of appeal could not be taken into account, since the function of appeal
proceedings was only to give a judicial decision upon the correctness of an earlier
decision of the department of first instance (T 34/90, OJ 1992, 454). On the basis of the
submission to be taken into account, the board decided that the applicant had not
complied with his burden of allegation and proof. The vague statement that the assistant
had been carefully trained and, during random checks, had proved to be knowledgeable
and careful was not adequate, since no further details had been given of the selection
conditions, of the training and checking, or of the office's mode of operation.
In J 8/95 the appellants argued that the German-language version of Art. 122(3) EPC did
not stipulate that the statement of grounds for an application for re-establishment of
rights had to be filed within the time limit laid down in Art. 122(2) EPC. In the current
case, the language of the proceedings was German; clearly, therefore, the decision had
to be based on the German version, which was less strict. The board however decided
that Art. 177(1) EPC assumed a uniform legislative intent, which could only be identified
on the basis of all three texts of the EPC. This prevented an applicant from invoking the
supposedly less strict wording of a provision of the EPC in the language of the
proceedings (see also T 324/90, OJ 1993, 33).
In J 26/95 (OJ 1999, 668) the applicant had missed two time limits which expired
independently of one another and each resulted in the application being deemed
withdrawn. The board held that in such an event a request for re-establishment had to be
filed in respect of each unobserved time limit if the legal sanction of the application being
deemed withdrawn was to be overcome. If this was done there were thus two requests
for re-establishment which were legally independent of one another. It was irrelevant
whether such requests were filed in the same letter or in different letters, and on the
same or on different dates. Where two different time limits had been missed the loss of
rights could only be overcome if the applicant showed, in respect of both time limits,

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that all requirements of Art. 122 EPC for the requests to be admissible and well-founded
were met - including the payment of two fees under Art. 122(3), second sentence, EPC.
2.5. Correction of deficiencies in the application for re-establishment
In T 14/89 (OJ 1990, 432) the board pointed out that the principle of good faith governing
proceedings between the EPO and the parties involved required that the applicant have
his attention drawn to deficiencies in his application for re-establishment of rights which
were obviously easy to correct (in the case in point: fee not paid and substantiation
not supplied) if correction of the deficiencies could be expected within the two-month
time limit for restitutio under Art. 122(2) EPC. If this communication was not sent by the
EPO within the two-month time limit, it had to be sent subsequently and a new time limit
set. Acts, the deficiencies of which were corrected within this set time limit, were deemed
to have been performed in due time within the meaning of Art. 122(2) EPC. This case
law was confirmed by the Legal Board of Appeal in a similar case, J 13/90
(OJ 1994, 456). In J 34/92 the board pointed out, however, that this only applied to time
limits which were not absolute.
In J 41/92 (OJ 1995, 93) the board held that the users of the EPC could not, by merely
asking the EPO to warn them of any deficiency that might arise in the course of the
proceedings, shift their own responsibility for complying with the provisions of the EPC.
If, however, a deficiency was readily identifiable by the EPO and could easily be
corrected within the time limit, the principle of good faith required the EPO to issue a
warning (following T 14/89, OJ 1990, 432, and J 13/90, OJ 1994, 456). Whereas the
EPO might be obliged, on the basis of the principle of good faith, to give information on a
specific query, a party could not expect a warning in respect of any deficiency occurring
in the course of the proceedings (cf. J 12/94; see also Chapter VI.A.2. concerning the
limits to the EPO's obligations with regard to the protection of legitimate expectations).
3. Time limits excluded from re-establishment under Article 122(5) EPC
VI.E.3. Time limits excluded from re-establishment under Article 122(5) EPC

3.1. General issues

The provisions relating to restitutio in integrum do not apply to the time limits referred to
in Art. 122(5) EPC.
Art. 122(5) EPC expressly excludes restitutio in integrum in the case of non-payment of
the filing, search and designation fees within the time limits referred to in
Art. 78(2) EPC and Art. 79(2) EPC and of the examination fee within the time limit
referred to in Art. 94(2) EPC. This express exclusion formulated with regard to the non-
payment of these fees within the normal time limit also applies in the event of their not
being paid within the periods of grace provided for in R. 85a and R. 85b EPC, for the
obvious reason that to concede that restitutio in integrum applies to the non-observance
of these grace periods would allow the unequivocal prohibition contained in
Art. 122(5) EPC to be evaded (see J 12/82, OJ 1983, 221; J 18/82, OJ 1983, 441, and
J 11/86). In J 11/86 the board held that a European patent application for which no filing,
search and designation fees had been paid in due time was deemed to be withdrawn
(Art. 90(3) and Art. 91(4) EPC). The non-payment of these fees was not a correctable
deficiency under Art. 91(2) EPC, which the EPO had to give the applicant an opportunity
to correct. Thus, the appellants could not derive any right from the non-issuance of a
reminder by the EPO and restitutio in integrum was excluded by Art. 122(5) EPC
whether or not such reminder had been sent.

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 VI.E.3. Time limits excluded from re-establishment under Article 122(5) EPC

In J 8/94 (OJ 1997, 17), the board was asked to consider again whether the exclusion
from re-establishment under Art. 122(5) EPC also applied to the period of grace provided
for in R. 85b EPC. For the old version of R. 85b EPC, which came into force on 4 June
1981, this question had already been answered in the affirmative by the Legal Board of
Appeal (J 12/82, OJ 1983, 221). The board explained in J 8/94 that, according to the
new version of R. 85b EPC which had been in force, with minor amendments, since 1
April 1989 (OJ 1989, 1 ff), the period of grace no longer immediately followed the time
limit for filing the request for examination, but began to run only on notification of a
communication from the EPO pointing out the failure to observe the time limit. This
amendment was made because experience showed that, when a time limit was missed,
the period of grace immediately following it could often not be observed either. The
problem was the same for all periods of grace under R. 85a and R. 85b EPC. The
reasons for the new version of the two rules were therefore above all procedural. It was
intended primarily to increase certainty for applicants with regard to the observance of
periods of grace. It was not, however, intended that any change should be made with
regard to the exclusion from re-establishment of periods of grace, as was clear from the
preparatory documents. On this basis, the board concluded that the period of grace
under the current version of R. 85b EPC was excluded from re-establishment in the
same way as the normal time limit mentioned in Art. 122(5) EPC for filing the request for
examination under Art. 94(2) EPC (confirmed in J 25/94).
In J 12/92 the Legal Board of Appeal ruled that a request for re-establishment in respect
of the time limit under Art. 121(2), second sentence, EPC was possible (see J ../87,
OJ 1988, 323; J 29/94, OJ 1998, 147).
The provisions of Art. 122 EPC are not applicable to the time limits referred to in
paragraph 2 of this Article (T 900/90).
3.2. PCT time limits excluded under Article 122(5) EPC
In J 16/90 (OJ 1992, 260) the appellant, who had failed to pay the filing fee, the search
fee and the designation fees for his European patent application either within the time
limit provided for in Art. 78(2) and Art. 79(2) EPC or within the period of grace provided
for in R. 85a EPC, applied for re-establishment of rights under Art. 122 EPC. In support
of his application he cited Legal Board of Appeal case law, according to which Euro-
PCT applicants who had not paid the appropriate fees had had their rights re-established
(see J 5/80, OJ 1981, 343 and J 12/87, OJ 1989, 366). As a result direct European and
Euro-PCT applicants were not being treated equally. This was one of the questions the
Legal Board of Appeal referred to the Enlarged Board of Appeal.
In G 3/91 (OJ 1993, 8) the Enlarged Board of Appeal held that, contrary to earlier rulings,
Euro-PCT applicants were no more entitled to re-establishment of their rights, if they
failed to observe the time limits for the payment of the national fee, designation fee or
search fee, than were European applicants. The Enlarged Board noted that
Art. 122(5) EPC does not expressly mention either R. 104b(1)(b) EPC (corresponds to
existing R. 107(1)(c) EPC in conjunction with R. 106 EPC) and R. 104b(1)(c) EPC
(corresponds to existing R. 107(1)(e) EPC) or Art. 157(2)(b) EPC and Art. 158(2) EPC.
However, under Art. 11(4) PCT, an international application fulfilling the requirements
listed in items (i) to (iii) of paragraph (1) of that Article "shall have the effect of a regular
national application ...". An analogous provision was contained in Art. 150(3) EPC. Under
such circumstances, any international application meeting the conditions laid down in the

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PCT and requesting a European patent was deemed to be a regular European patent
application. The Enlarged Board of Appeal stated that the time limits to be observed by
Euro-PCT and direct European applicants were in essence identical and that their equal
treatment was therefore consistent with the law. Accordingly, both the time limits
provided for in Art. 78(2) and Art. 79(2) EPC and those provided for in R. 104b(1)(b) and
(c) EPC (see above) in conjunction with Art. 157(2)(b) and Art. 158(2) EPC were
excluded from re-establishment under Art. 122 EPC (see also J 5/04).
The Enlarged Board of Appeal also decided the question of re-establishment into the
period of grace according to R. 85a EPC, stating that the period of grace was closely
linked to the normal periods laid down in Art. 78(2) and Art. 79(2) EPC and in
R. 104b(1)(b) and (c) EPC (see above) and was accordingly excluded, as they were,
from re-establishment under Art. 122(5) EPC.
In G 5/92 and G 6/92 (OJ 1994, 22 and 25) the Enlarged Board of Appeal considered
whether re-establishment of rights should be granted in respect of the time limit for
paying the examination fee under Art. 94(2) EPC. The Enlarged Board held that it
followed from Art. 122(5) EPC read in conjunction with Art. 94(2) EPC that re-
establishment could not be granted to an applicant who was prevented from meeting that
deadline. The Enlarged Board referred to G 3/91 (OJ 1993, 8), according to which
Art. 122(5) EPC applied to a Euro-PCT as well as to a European applicant. The time
limits under Art. 94(2) EPC were thus excluded from re-establishment of rights, no matter
whether the applicant had chosen the "direct" European or the Euro-PCT route (see also
J 5/04).
In G 5/93 (OJ 1994, 447) the Enlarged Board added that a Euro-PCT applicant could be
re-established in the time limit for paying the claims fees provided for in
R. 104b(1)(b)(iii) EPC (corresponds to existing R. 110 EPC) because the direct
European applicant was not excluded by Art. 122(5) EPC from re-establishment in the
time limit to pay the corresponding fees provided for in R. 31 EPC.
Concerning the application of the new case law to proceedings which were still pending
(see the referral by the Legal Board of Appeal in J 4/93), the Enlarged Board of Appeal
stated in G 5/93 (OJ 1994, 447) that Euro-PCT applicants could be re-established in the
time limit for paying the national fee provided for in R. 104b EPC (now R. 107(1)(c) EPC
in conjunction with R. 106 EPC) in all cases where re-establishment of rights was applied
for before decision G 3/91 was made available to the public.
In J 13/03 the board refused the appellant's request for the question of whether
Art. 122(5) EPC applied to PCT applications on entry into the regional phase to be
referred again to the Enlarged Board of Appeal for review. It did not accept the
arguments of the appellant, who invoked the complexity of the procedure and the
economic consequences for the applicant, who would inevitably lose his patent rights, as
the PCT application had already been published in the relevant phase of the procedure.
The board held that these considerations had no relevance with respect to the reasoning
of the decisions of the Enlarged Board of Appeal in G 3/91 (OJ 1993, 8) and G 5/93
(OJ 1994, 447), which was based on the identical legal nature and procedural function of
the time limits under R. 104b(1)(b) EPC in conjunction with Art. 157(2)(b) and
Art. 158(2) EPC and those provided for in Art. 78(2) and Art. 79(2) EPC. Aspects and
facts not relating to the legal nature of the time limits were not decisive points.

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In T 227/97 (OJ 1999, 495) the board noted that a time limit might only be specifically
excluded by Art. 122(5) EPC. The board noted that there could be no presumption of any
intention to exclude the time limit of R. 28(2) EPC from restitutio in integrum under
Art. 122 EPC. The protection of the public was safeguarded by the provisions of
Art. 122(6) EPC. The board made clear that the time limits in the rules of the
Implementing Regulations were generally open to restitutio in integrum if failure to
observe them lead to a loss of rights. The board also held that under Art. 48(2)(a) PCT a
Euro-PCT applicant who had not carried out a certain procedural act within the time limit
prescribed in the PCT might take advantage of the relevant provisions of the EPC
concerning re-establishment of rights (Art. 122 EPC) in all cases where the direct
European applicant too might invoke them if he failed to observe the relevant time limit.
The board came to the conclusion that the provisions of Art. 122 EPC were applicable to
the time limit set by R. 28(2)(a) EPC and the equivalent time limit set by R. 13bis.4 PCT.
In J 1/03 the appellant had requested that restitutio be granted into the time limit under
R. 4.9(b)(ii) PCT. Invoking the reasoning of G 3/91 (OJ 1993, 8), the appealed decision
had held that re-establishment was excluded under Art. 122(5) EPC, since the provision
in the EPC which most closely corresponded to the time limit under R. 4.9 PCT was the
time limit under Art. 79(2) EPC. The board, however, pointed out that actually there was
no time limit in the EPC which corresponded to the time limit under R. 4.9(b)(ii) PCT.
Thus, there was no identical time limit under the PCT within the meaning of G 3/91 but
only a comparable one. The board refrained from a final decision on the application of
Art. 122(5) EPC to the case at issue, as re-establishment could not be granted on the
merits of the case.
4. Article 48(2)(a) PCT
VI.E.4. Article 48(2)(a) PCT

Art. 48(2)(a) PCT states that any contracting state shall, as far as that state is
concerned, excuse, for reasons admitted under its national law, any delay in meeting any
time limit. The application of provisions concerning restitutio in integrum is covered by
Art. 48(2)(a) PCT, when the necessary conditions are fulfilled. Consequently, a
Euro-PCT applicant who has not carried out a certain procedural act within the time limit
prescribed in the PCT can take advantage of the relevant provisions of the EPC
concerning re-establishment of rights in all cases where the direct European applicant
too may invoke them if he fails to observe the relevant time limit (see G 3/91,
OJ 1993, 8).
In W 4/87 (OJ 1988, 425) the board decided that an application for restitutio in integrum
could be submitted in cases where the statement of grounds supporting the protest
under R. 40.2(c) PCT was submitted late, since Art. 122 EPC applies in conjunction with
Art. 48(2) PCT.
In W 3/93 (OJ 1994, 931) the request for re-establishment of rights was to enable the
protest to be deemed to have been filed within the time limit fixed by the ISA under
Art. 17(3)(a) PCT and R. 40.1 PCT, and, in substance, for examination of the protest.
The board held that by analogy with the principles developed by the Enlarged Board of
Appeal in G 5/83 (OJ 1985, 60, points 5 and 6 of the Reasons) for interpreting the EPC,
Art. 48(2) PCT should be construed to mean that in the event of a delay in meeting the
time limit laid down in R. 40.3 PCT the same legal remedies were available as in the
case of failure to observe other comparable time limits under the PCT or EPC (see also
W 4/87). The board stated that when re-establishment of rights was granted, the legal

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situation was restored to that existing prior to the noting of the loss of rights which
ensued from failure to observe the time limit. The board of appeal's decision based on
failure to observe the time limit was thus rendered invalid, even though it was a final
decision. In other words, the granting of re-establishment of rights destroyed the legal
validity of the decision, which accordingly did not need to be set aside or amended. As a
result, the protest was admissible and had to be examined on its merits.
5. Parties to proceedings
VI.E.5. Parties to proceedings

In T 552/02 the appellants (proprietors) asserted that the respondents should not be a
party to the proceedings with respect to the application for re-establishment. They
essentially based this assertion on a passage in the Guidelines E-VIII, 2.2.7 (June 2005
version), which reads as follows: "The grounds for the decision [on the re-establishment
of rights] need only be stated if the application is disallowed. This also applies in
opposition proceedings since the opponents are not involved in the procedure for re-
establishment of rights". They further held that Art. 15(2) RPBA obliged the board to
state its grounds if it gave a different interpretation of the EPC to that provided for in the
Guidelines.
On the latter point the board said (a) that the members of the board were not bound by
any instructions and had only to comply with the provisions of the EPC, which meant the
board was not bound by the Guidelines, and (b) that Art. 15(2) RPBA did not oblige the
board to state grounds for deviating from the Guidelines but simply stipulated that it
should "state the grounds for its action if it consider[ed] that [its] decision [would] be
more readily understood in the light of such grounds".
According to the board, the response to be given to the application for re-establishment
was of the utmost importance for the respondents, as it affected the actual admissibility
of the appeal and hence the reviewability of the opposition division's decision to revoke
the patent in suit. From this the board deduced that it would be a breach of
Art. 113(1) EPC to take a decision concerning the interests not only of the appellants but
also of the respondents without giving the latter an opportunity to present comments.
6. Merit of applications for re-establishment of rights
VI.E.6. Merit of applications for re-establishment of rights

Under Art. 122(1) EPC, for re-establishment to be allowed the requester must show that
he missed the time limit despite taking all the due care required by the circumstances.
6.1. Inability to observe a time limit
In the established case law, unawareness of the expiry of a time limit is recognised as an
obstacle to its observance, as are persistent financial difficulties incurred by the person
concerned through no fault of his own. The former is to be distinguished from a
deliberate act on the part of the applicant/representative which is attributable to tactical
considerations or a legal error.
6.1.1 Financial difficulties
In J 22/88 (OJ 1990, 244) the Legal Board of Appeal had to resolve the question as to
whether Art. 122 EPC applied in cases of financial difficulties lasting a fairly long time.
The board referred to the "travaux préparatoires" and came to the conclusion that
financial difficulties experienced through no fault of one's own and leading to failure to
observe time limits for the payment of fees could constitute grounds for granting re-

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establishment of rights. A prerequisite for granting the request was that the applicant
should have tried with all due care to obtain financial support. The board also made it
clear that for "all due care" to be proven, it had, of course, to be clear that the financial
difficulties were genuine and were due to circumstances beyond the reasonable control
of the applicant (see also J 31/89, T 822/93). In J 9/89 the board noted that there was no
evidence before the board of any effort having been made by or on behalf of the
appellant to find financial support during the critical period.
In J 11/98 the fifth renewal fee for a PCT application was not paid in time and the
examining division issued a communication under R. 69(1) EPC noting that the
application was deemed to be withdrawn under Art. 86(3) EPC. A newly appointed
representative requested the EPO to recognise that proceedings were interrupted under
R. 90(1)(a) or (b) EPC (see Chapter VI.E.7., "Interruption of proceedings") and requested
re-establishment in respect of the time limit, on the grounds that at the relevant times in
1996 the appellant (patent applicant) had been seeking protection under Chapter 11 of
US bankruptcy law.
The board confirmed the examining division's decision refusing the application for re-
establishment. The applicant had not shown that at the relevant time it had been so
lacking in funds as to be absolutely unable to make the payment. Only the latter situation
had been accepted by the board, in an exceptional case, as a ground for re-
establishment. The applicant's submissions showed that non-payment of the fifth
renewal fee was due not to an absolute inability to pay but to its business priorities at the
time. That could not justify re-establishment.
6.1.2 Tactical considerations
Art. 122(1) EPC requires that the party in question must have been unable to observe a
time limit. In T 413/91 of 25.6.1992 the board stated that the word "unable" implied an
objective fact or obstacle preventing the required action, eg a wrong date inadvertently
being entered into a monitoring system. The appellants' reasons for not filing any
statement of grounds were that they had expected an agreement with the proprietor,
which, however, did not come about. The board stated that such a reason did not justify
re-establishment of rights, pointing out that it was an extraordinary means of judicial
remedy. It offered no choice to a party as a substitute for the proper action to be taken,
nor did it imply any right to have the fatal effect of an intentional step cancelled, even if
this step later on proved to have been a mistake. A party who had deliberately chosen
not to file a statement of grounds for the appeal could not achieve an appellate review
through the back door of a request for re-establishment. The board therefore refused the
request for re-establishment of rights.
In T 250/89 (OJ 1992, 355) the opponent had claimed that he could not have filed the
statement of grounds in due time because he would have needed to refer to documents
withheld by a third party. The board confirmed the line taken in earlier decisions (see
G 1/86, OJ 1987, 447; T 287/84, OJ 1985, 333). When determining whether all due care
required by the circumstances had been taken, the word "all" was important and failure
to observe a time limit had to be the result of an oversight, not a culpable error. The
board rejected the application for re-establishment of rights on the ground that the
opponent had had sufficient material at his disposal to be able to draw up the statement
of grounds in due time in accordance with Art. 108, third sentence, EPC and R. 64 EPC.

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6.2. General comments on due care

In numerous decisions the boards have ruled on the "all due care required by the
circumstances" issue. In considering it, the circumstances of each case must be looked
at as a whole (T 287/84, OJ 1985, 333). The obligation to exercise due care must be
considered in the light of the situation as it stood before the time limit expired. In other
words, the steps the party took to comply with the time limit are to be assessed solely on
the basis of the circumstances applying at that time (T 667/92, T 381/93).
In T 30/90 the board held that the allowability of applications for re-establishment hinged
on whether the conduct of the appellant and/or his representative, during the entire
period after the relevant decision, was indicative of "all due care required by the
circumstances". In this connection, "all due care" meant all appropriate care, ie as much
as would be taken under the circumstances by the average reasonably competent
patentee/representative.
In J 23/87 the board ruled that exercising due care under Art. 122 EPC meant that an
applicant, when deciding whether to pursue his application, could not rely entirely on
information provided voluntarily by PCT authorities and the EPO at various stages of the
procedure, and instead had to ensure that he was normally able to comply with the basic
PCT and EPC time limits even if he received this information late or not at all.
In accordance with the established case law of the boards, re-establishment cannot be
justified by ignorance or misinterpretation of an EPC provision (see also Chapter
VI.E.6.3.2(b)). This also applies to individual applicants without a representative (J 2/02).
With regard to re-establishment in respect of disciplinary proceedings and the European
Qualifying Examination, the board ruled in D 6/82 (OJ 1983, 337) that a mistake of law,
particularly one regarding the provisions on notification and calculation of time limits, did
not, as a general rule, constitute grounds for re-establishment of rights. The obligation to
take "all due care required by the circumstances" meant that persons engaged in
proceedings before or involving the EPO had to acquaint themselves with the relevant
procedural rules.
For cases where the cause of non-compliance with a time limit involves some error in the
carrying out of the party's intention to comply with the time limit, the case law has
established the criterion that due care is considered to have been taken if non-
compliance with the time limit results either from exceptional circumstances or from an
isolated mistake within a normally satisfactory monitoring system (J 2/86, J 3/86,
OJ 1987, 362; T 428/98, OJ 2001, 494 and T 785/01; for the requirements to be met by
an individual applicant without a representative, see Chapter VI.E.6.3.1(b)). In the latter
case, the relevant party must show that the system normally works well (see eg J 9/86,
J 27/88, J 28/92, T 179/87, T 27/86, T 166/87, T 715/91, T 612/90, T 731/91, T 179/92,
T 371/92, OJ 1995, 324; T 377/93, T 956/93, T 681/95, T 1062/96, T 186/97, T 428/98,
OJ 2001, 494 and T 785/01).
6.2.1 Exceptional circumstances
In T 14/89 (OJ 1990, 432), due to internal reorganisation and removals, the
R. 58(5) EPC communication was put into the wrong removal carton and consequently
did not reach the responsible department of the patent proprietor. The board found that
this fact, which led to non-observance of the time limit, constituted an isolated mistake

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such as could not be ruled out despite careful company organisation. The conditions for
re-establishment of rights were therefore met.
In T 469/93 the board found that even if all due care required by the circumstances were
to be exercised, the occasional error during complex transfers of company ownership
could not entirely be avoided. The error in this case being an exceptional one, the
causes of which had since been removed, the appellant's request for re-establishment of
rights was to be allowed.
In J 13/90 (OJ 1994, 456) the applicant, a small firm employing about 15 people, was in
takeover negotiations with another company. In the course of the negotiations a change
of attorney took place. As a result of the unforeseeable breakdown in negotiations plus
the fact that action had already been taken to replace the previous attorney, payment of
the fourth-year renewal fee had been overlooked. This isolated mistake in a special
situation was, in the board's opinion, excusable and the requested re-establishment of
rights was therefore granted.
In J 21/92 and J 24/92 the applicant and his representative (both Americans) had each
changed their fee-monitoring system, independently of each other. The situation was
further complicated by the fact that the representative was no longer responsible for
paying the appellant's renewal fees.
In T 369/91 (OJ 1993, 561) the relevant circumstances involved moving from a manual
to a computerised time-limit monitoring system. Here "due care" meant ensuring that
during the changeover period the representatives handling the various kinds of cases
were told which system - manual or computerised - had generated the reminder in
question. Only then could they reliably know if and when a further reminder was likely.
In T 489/04 the board did not recognise the installation of a new computer system as
an extraordinary circumstance. On the contrary, it considered the resulting burden on
employees as foreseeable and containable, had appropriate measures been taken in
good time.
6.2.2 Isolated mistake within a satisfactory system for monitoring time limits
(a) General principles
An isolated mistake in a normally satisfactory system is excusable (see for example
T 1024/02, T 165/04 and T 221/04); the appellant or his representative must plausibly
show that a normally effective system for monitoring time limits prescribed by the EPC
was established at the relevant time in the office in question (J 2/86, J 3/86,
OJ 1987, 362; and J 23/92). The fact that this system operated efficiently for many years
was evidence that it was normally satisfactory (see J 31/90, J 32/90, T 309/88 and
T 30/90).
In T 130/83 the board stated that if a proper reminder system had been instituted by a
representative, in order to guard against the consequences of oversight in a busy office,
this was itself strong prima facie evidence of the taking of care by the representative (see
also T 869/90, T 715/91, T 111/92 and T 428/98, OJ 2001, 485).
In T 283/01 of 3.9.2002 the board pointed out that the applicant's system was not
properly designed to handle the appeal in question, involving partial responsibility of an
external representative. The deviation from the normal way of filing and prosecuting an

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appeal had been the applicant's deliberate decision in the particular circumstances of the
case. The failure to take note of the time limit for filing the statement of grounds of
appeal had been a consequence of that deviation. On the contrary, the board held that
taking all due care required by the circumstances of the case should have implied
installing an individual control mechanism, offering a realistic possibility of detecting and
correcting the failure to note and calculate the time limit for filing the statement of
grounds. However, it was clear from the facts submitted by the appellant that no such
measures had been taken.
In T 808/03 the board held that the condition of "an isolated mistake by a usually reliable
person" was not met in the present case, as the responsible person had made a second
mistake when processing the reminder of a system for monitoring time limits.
(b) Small firms/companies
In T 166/87 of 16.5.1988 the board held that the question whether a particular
arrangement used in a particular office to ensure that procedural acts such as the
payment of fees were completed in due time satisfied the requirement of "all due care" in
Art. 122 EPC had to depend on the individual circumstances of each case (J 9/86). In
the board's view, what had to be considered was whether the system during normal
operation was reasonable and normally satisfactory, and therefore such as to establish
that the applicant had used "all due care required by the circumstances" in his efforts to
observe the time limit in question. The board held that in a relatively small office,
normally working in an efficient and personal manner, employing normally reliable
personnel, a cross-check mechanism, especially in relation to one-off payments such as
an appeal fee, could fairly be regarded as superfluous (regarding organisational
requirements in a small enterprise, see also J 11/03).
In J 31/90 the board took the view that this system, while far from perfect, could be
considered in the special circumstances of the case to be normally satisfactory. The
board emphasised, however, that the system could only be so considered because of
the particular conditions in which the representative and her secretary worked. Over a
period of ten years, working together alone in a small office they had built up an excellent
working relationship and mutual trust. The board was satisfied that the system had
worked well over a considerable period of time. The fact that this system operated
efficiently for many years was evidence that it was normally satisfactory (see also
J 33/90).
In T 869/90 the board noted the absence of any kind of cross-check on the actions of the
representative in question during the final ten days before the deadline. The
representative himself appeared to have been in effect entirely responsible, during this
final ten-day period, for meeting the time limit for the statement of grounds as well as for
drafting it. The board found that, especially in the context of a time limit which was
inextensible, the provision within an office system of a cross-check on the activities of the
representative responsible for the substantive work, by an independent person whose
duty it was to ensure that the document in question was despatched on time, was a
reasonable precaution. The board stated that the absence of such a cross-check in
circumstances similar to the case at issue might well lead to a finding of lack of due care
in future cases. The board however recognised that until that case occurred, the
possibility that such an error could be made by the representative or one of his partners

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probably seemed extremely remote. Thus the board accepted, with some degree of
doubt, that the requirement of "all due care" had been satisfied.
In T 73/89 the board rejected the application for re-establishment of rights because, in
order to work properly, the normally satisfactory diary system required a qualified
attorney to check whether, in any particular case, an extension was necessary or
possible; in this case no such check was made.
(c) Large firms/companies
In J 9/86 the board was of the opinion that in a large firm where a large number of dates
had to be monitored at any given time, it was normally to be expected that at least one
effective cross-check was built into the system (T 223/88, J 26/92, T 828/94 and
T 808/03).
In T 828/94 the board noted that a monitoring system used in a particular office to ensure
that payment of fees would be completed in due time should contain an independent
cross-check to prevent the misunderstanding between a representative and a technical
assistant from assuming that a notice of appeal would be prepared and filed on time by
the other person, for example, someone would be responsible for checking
independently of the representative and the assistant. The board noted that where a
misunderstanding was likely to arise as a result of the two being responsible for the
same file, the assistant should have clear instructions on how to proceed.
Concerning the need for an independent cross-checking mechanism, see also T 428/98
(OJ 2001, 494), T 1172/00, T 785/01, T 36/97 and T 622/01.
In T 686/97 of 12.5.1998 the board observed that reminder systems normally satisfactory
to ensure compliance with other rules of procedure under the EPC could not be
satisfactory in the context of appeals to the boards, whose function is to provide a final
judicial review under the EPC. The board recognised that the specific remit of the
administrative section, in particular the limitation of its function to a strictly non-
interpretative application of relevant rules and time-limits, was and remains the only
practicable one, and therefore found it to be normally satisfactory. It pointed out,
however, that the reminder system used by the applicant for restoration, a corporate
patent department, relied solely upon the ascertainment of and compliance with relevant
time limits as contained in various EPO forms and/or notices published in the Official
Journal. Thus, the reminder system contained a significant, if not overwhelming reactive
component and correspondingly lacked reliance on internal legal analysis and resultant
administrative measures.
The provision of a "redundant" or "failsafe system" is an essential component of a
normally satisfactory reminder system in corporate departments. The failure to provide
administrative reminders to the responsible patent attorneys of the time limits applying to
the filing of statements of grounds of appeal was incompatible with the operation of a
normally satisfactory system and therefore the exercise of all due care within the
meaning of Art. 122(1) EPC.
In T 677/02 the board decided that a large enterprise had not exercised all the due care
required by the circumstances if, when the representative actually responsible was on
short time working, no deputy had been designated to crosscheck the input of time limits
into the system for monitoring time limits.

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6.3. Persons required to exercise due care; requirements regarding due care
Primarily it is up to the applicant (patent proprietor) to show due care. If third parties act
for him he has to accept their actions on his behalf (cf. J 5/80, OJ 1981, 343). The "due-
care" obligation is assessed differently, depending on whether an applicant, his
representative or an assistant is involved.
6.3.1 Due care on the part of the applicant
(a) General principles
In J 3/93 the board ruled that the duty to exercise all due care stipulated by Art. 122 EPC
applied first and foremost to the applicant and then, by virtue of the delegation implicit in
his appointment, to the professional representative authorised to represent the applicant
before the EPO. The fact that the representative had acted correctly did not exempt his
client from suffering the consequences of his own mistakes, or even negligence (see
also J 16/93, J 17/03).
In T 381/93 the board of appeal observed that the applicant was entitled to rely on his
duly authorised professional representative to deal with the EPO. However, the board
held that to the extent that he was on notice that a time limit had not been met and/or
that instructions were required in order to meet it, an applicant had a duty to take all due
care in the circumstances to meet the time limit.
In J 22/92 the board held that the applicant, who had appointed US attorneys for the
purpose of the PCT application, was entitled to believe that a copy of a communication
had been sent to the US attorneys as well. The board referred to the principle of
proportionality and stated that the loss of the patent application as a result of what may
be considered at most a minor procedural irregularity would otherwise appear an
extremely severe result. The board held that, in the case in point, the due care to be
considered was in fact not that which was expected from a professional representative
but that which was expected from an applicant unaware of the proceedings.
In J 5/94 the board made allowance for the fact that the appellant was an individual
applicant who had not appointed a representative and who was neither familiar with the
requirements of the EPC nor in possession of an established office organisation attuned
to ensuring that procedural deadlines were met. The board pointed out that in such a
case the same standards of care as those required of a professional representative or
the patent department of a large firm could not be applied.
At the same time, an individual applicant was also obliged to exercise due care in the
course of the procedure. Accordingly, when not using the services of a professional
representative, he must himself take all possible steps to ensure that he can do, properly
and punctually, whatever is required during the grant procedure to prevent any loss of
rights. He is not entitled either to invoke general ignorance of the law or to leave undone
anything which may reasonably be expected of him with a view to observing time limits.
(J 5/94, J 27/01, T 671/02)
In T 601/93 the appellant was not aware of the need to file a statement of grounds within
the time limit. The board held that any legal error which might have led the appellant to
believe that the requirement was not to be observed would exclude the application of
due care, considering the unequivocal provision in Art. 108 EPC (concerning a mistake
of law by an individual applicant without a representative, see also J 2/02).

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In T 122/91 the board held that due care had not been exercised if the head of an office
went off on a journey without informing his deputy of matters requiring immediate
attention because a time limit was involved.
(b) Using an non-authorised representative
In J 23/87 the applicant failed to furnish a translation of an international application within
the time limit prescribed by Art. 22(1) PCT in conjunction with Art. 158(2) EPC. The
appellant, a small Japanese firm with limited financial resources, submitted that a
Japanese patent attorney without special knowledge of PCT matters had been
consulted, and that this attorney incorrectly informed the appellant that "filing in
designated countries could be made within twenty months from the PCT filing date"
(instead of, correctly, the priority date) and that, due to this mistake in combination with
the lack of official information, the appellant was unaware of the need to take action
before the EPO at the relevant time. The board held that for an applicant who lacked the
necessary knowledge of the PCT and the EPC procedures, it was obviously necessary
to consult a competent professional representative in order to cope with the procedures
involved in such a patent application. Thus, the board was not satisfied that the
appellant, being completely ignorant about the special procedure to be observed in this
case, had chosen a sufficiently competent professional representative and let him
properly advise the appellant on the matters involved having had an opportunity to study
the details concerning the present application. The board added that a mistake of this
kind on the part of a professional representative, even properly consulted, could hardly
be accepted as a ground for granting restitutio in integrum.
6.3.2 Due care on the part of the professional representative
(a) General issues
In T 112/89 the board stated that, regarding the due care required by Art. 122(1) EPC,
the obligations of the applicant and those of his representative were clearly distinct and
that the due care to be exercised by the representative might depend on the relationship
which existed between him and his client. The board noted that it was clear that both the
representative and the applicant had to exercise all due care in order to observe all the
time limits during patent granting procedures. In the case at issue, the board was not
convinced that the duty of the representative was fully discharged when he had notified
his client that a time limit was to be observed and was satisfied that the client had
received the notification. On the contrary, the board was of the opinion that when a
representative had been instructed to lodge an appeal and did not receive in due time
from his client the necessary additional instructions he needed to discharge his duty, he
should take all necessary measures to try to obtain from his client these instructions.
In J 16/93 the board stated that a representative who had not received any funds for the
purpose of paying the renewal fee and whose authorisation was silent in this respect was
not expected to advance moneys on behalf of his client out of his own pocket. As the
client was, in this situation, free to abandon its application by ceasing to pay the fees
demanded by the EPC, the representative risked effecting a payment which he would not
be able to recover either from the EPO (even though his client had not wished the
payment to be made), or from the client, if the authorisation was silent in this respect.
In J 19/04 the board confirmed that a professional representative is not obliged to pay
renewal fees on his client's behalf if he has received no instructions to do so. However,

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the representative's conduct has to be assessed according to the extent to which he has
done all that is necessary to ascertain the client's true wishes. It is not the number of
(unanswered) reminders that is decisive, but when those reminders were sent in relation
to the date on which the time limit expired, how the reminders were formulated and what
the representative's duties were in relation to the client.
In T 338/98 the appellant was first represented by professional representative A, but later
asked him to transfer all files to a new representative B. One European patent
application failed to be transmitted. Although the representatives were aware that the
renewal fee was due for this application, they did not reach clear agreement about
paying it, with the result that the fee was not paid and the application was deemed to be
withdrawn.
The board held that in these circumstances it did not appear appropriate formally to
delimit the individual responsibilities of each of the representatives during a transfer of
cases requiring, by its very nature, close co-operation between the persons involved and
naturally leading to overlapping responsibilities. The fact that in these circumstances the
representatives had been unable to reach agreement about the way to proceed and that
the appellant had not been informed of the outstanding renewal fee and of the
disappearance of the file in question was not an indication that all due care required by
the circumstances had been taken at that moment. The board did not allow re-
establishment of rights.
In J 16/92 the board made it clear that anyone getting himself into a situation where he
could not be sure of being able to complete the omitted act ran the risk of his request for
further processing being ruled inadmissible for failure to complete the omitted act in good
time. In this case the representative had not started working on the file until four days
before expiry of the time limit for further processing and hence had discovered too late
that he was unable to find the first communication to which he was to respond.
In J 1/03 the board emphasised the paramount importance of the designation of
receiving Offices and the difficulty or even impossibility, in many cases, of correcting
wrong or missing designations. Consequently, the benchmark for what "all due care"
meant in those cases, was very high. Likewise the check of the content of the
international application on the basis of the "Notification of Receipt of Record Copy"
issued by the International Bureau had to be made very carefully.
In T 719/03 the board did not accept the appellant's argument that the failure to comply
with the time limit had been an isolated mistake by the qualified secretary who had noted
on the cover page of the revocation decision only the time limit for appeal but not also
the time limit for filing the statement of grounds of appeal. The board held that the
appellant's representative had himself failed to exercise due care, since the contested
decision had been shown to him twice without his noticing the incompleteness of the
note concerning the mandatory time limit that had to be monitored. The board took the
view that, with careful handling of a dossier involving statutory time limits, the
representative was so often faced with the time limits to be observed that compliance
with the time limit was ensured.
(b) Ignorance of or erroneous interpretation of a provision of the EPC
In J 3/88 the board noted that account should be taken of the fact that under
Art. 134(1) EPC the contracting states had in principle confined representation of

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applicants before the EPO to "professional representatives" who, by virtue of their

qualification should guarantee the best possible representation. The board stated that it
followed that a representative could not relieve himself of responsibility for carrying out
tasks which, by reason of his qualification, fell upon him personally, such as, for
example, the interpretation of laws and treaties. If he delegated such tasks to an
employee and if the latter made an error in the course of that work which resulted in the
failure to observe a time limit, the representative could not claim that he had taken all
due care required by the circumstances (see also J 33/90).
In J 31/89 the Legal Board of Appeal confirmed that erroneous interpretation of the EPC
on the part of the duly authorised representative with regard to the rules for calculating
time limits (in the case in point, regarding the late payment of a renewal fee together with
the additional fee) could not be excused. The appellant and the representative failed to
determine correctly the last date for valid payment of the renewal fee (see J 42/89,
T 853/90 and T 493/95).
In T 624/96 the board expressed doubts about the nature of the original mistake, which
concerned calculation of the time limit for filing the statement of grounds of appeal. This
was possibly a "mistake of law" caused by ignorance or misinterpretation of the
provisions of the EPC, as in eg J 31/89 or T 853/90. The board found that in the
circumstances of the case at issue, however, the agent had not made a "mistake of law"
of this kind. The agent cited an earlier appeal in which he had represented the same
applicant, and after verifying this the board concluded that he therefore did indeed have
some familiarity with the appeals procedure. He also submitted programmes of training
courses, organised by IRPI (French institute for research into intellectual property) and
the Paris chamber of commerce, at which he had given talks on European patents and
EPO proceedings. This too indicated that the agent in question was regarded by users
as reasonably familiar with such proceedings. The board therefore allowed the
applicant's request for re-establishment.
In J 28/92 the board held that the misinterpretation of a provision of the EPC by a
representative was not without basis or unreasonable and considered that there was no
basis for penalising the representative for having arrived at a not unreasonable
interpretation of a rule of the EPC, which subsequently turned out to be wrong. The
missed time limit was actually the result of the failure of the representative's secretary to
carry out his instructions correctly. The representative of the applicant could show that
he had a normally effective system for monitoring time limits and that he had duly
instructed the reliable secretary. The board observed that the representative's
interpretation of a legal provision of the EPC was not the result of, and did not lead to, a
failure to exercise all due care required by the circumstances.
In T 516/91 the mistake made by the representative was that he requested an extension
of two months for submitting the grounds of appeal. The board emphasised that the time
limits set by Art. 108 EPC could not be extended. In mistakenly believing that an
extension of these time limits was possible, the representative failed to exercise due care
(see also T 248/91 and T 853/90).
In T 460/95 the representative requested an extension of the time limit, although, in his
professional capacity, he should have known that time limits under Art. 108 EPC could
not be extended. The board noted that representatives were expected to be acquainted
with the provisions of the EPC regarding time limits, and that the representatives in

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question had not been as vigilant as the situation demanded. In this specific case,
however, the board found that the representative had taken the precaution of contacting
the Registry of the Boards of Appeal beforehand, prior to his failure to observe the time
limit, and had received information from that body which had led him to take action
prejudicial to his interests. The board took the view that the appellants should not suffer
injury merely because they had relied on information received from the EPO which later
proved to be mistaken or likely to have been misunderstood. The board considered that
the principle of trust constituted a further reason for acceding to the patent proprietor's
request, and therefore, for acceding to the request for re-establishment of rights.
In T 881/98, the appellant's professional representative had written to the Registry of the
boards of appeal requesting a two-month extension to a time limit, without giving reasons
or indicating that the time limit in question was for submitting the statement of grounds of
appeal. He added that if not notified to the contrary he would assume his request was
allowed. Only after the time limit had expired did the appellant learn, following a
telephone call between the representative and the Registry, that the time limit was not
extendable and the appeal was therefore being dismissed as inadmissible. The
communication to that effect was issued two days later. The appellant requested re-
establishment of rights. He cited the principle of the protection of legitimate
expectations - the Registry should have noticed the mistake and drawn attention to it in
time.
The board refused the request for re-establishment. First, it confirmed the boards' case
law whereby ignorance or misinterpretation of EPC provisions was no excuse for non-
compliance with the time limit in question. Nor did it consider the Registry to have fallen
short of legitimate expectations, as in this case (in contrast to T 460/95) the appellant
had not been misled to his detriment by wrong information from the Registry but had
himself made the mistake of thinking that the time limit could be extended. Nor, in the
circumstances, was it easy for the Registry to realise the appellant's mistake, because
the extension request was easily confusable with a routine one, especially since it was in
a standard form.
In T 733/98 the board informed the appellants that the statement setting out the grounds
of appeal did not comply with Art. 108, third sentence, EPC. The appellants requested
re-establishment in respect of the time limit for filing the statement of grounds, arguing
that they had relied on Legal Advice No. 15/84 of the EPO, which had still been in force
when they had received the communication under R. 51(4) EPC. The board held that the
appellants had misinterpreted the Legal Advice in question, having failed to realise that
the procedure for handling main and auxiliary requests which it described no longer
applied once amended R. 51 EPC entered into force. The board decided that the
requirement of all due care required by the circumstances within the meaning of
Art. 122(1) EPC was not met in this case. The request for re-establishment was refused
and the appeal rejected as inadmissible.
6.3.3 Due care on the part of a non-authorised representative
In J 3/88 the US patent attorney of a "non-resident" applicant acted in collaboration with
the duly appointed professional representative. The board held that as regards the
requirement of "all due care" within the meaning of Art. 122(1) EPC, the US patent
attorney had to be regarded as the agent of the appellant. Thus, in order to comply with

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this requirement, it had to be established that the US patent attorney had taken the due
care required of an applicant for or proprietor of a European patent by Art. 122(1) EPC.
In J 25/96 the board held that where a US applicant availed himself of the services of a
US patent attorney for matters which in relation to the EPO fell within the applicant's
responsibility, the US patent attorney had to be regarded as the agent of the applicant.
Thus, to meet the "all due care" requirement, the US patent attorney had to show he had
taken the due care required of an applicant.
6.3.4 Due care in dealing with assistants
(a) Introduction
Numerous decisions of the boards of appeal deal with the legal question: under what
circumstances a mistake by an assistant may be imputed to the representative of a
party, and hence to that party.
The case law concerning due care on the part of professional representatives' assistants
was established in J 5/80 (OJ 1981, 343). This key ruling by the Legal Board of Appeal
lays down that a request for re-establishment of rights can be acceded to in the event of
a culpable error on the part of the assistant, if the professional representative is able to
show that he has chosen for the work a suitable person properly instructed in the tasks
to be performed, and that he has himself exercised reasonable supervision over the work
(see also T 191/82, OJ 1985, 189; T 105/85, T 110/85, OJ 1987, 157; T 11/87, T 176/91
and T 221/04). Where an assistant has been entrusted with carrying out routine tasks
such as typing, posting letters and noting time limits, the same strict standard of care is
not expected as is demanded of the representative himself (J 16/82, OJ 1983, 262;
J 33/90, J 26/92, T 221/04 and T 43/96). Decision J 5/80 also pointed out that, if other
than routine tasks are delegated which normally would fall to the representative by
virtue of his professional qualification, the representative would not be able to establish
that he exercised all due care (see also J 33/90 and T 715/91).
Regarding the burden of proof in the form of an adequately detailed statement in
connection with the duty of care in the selection, instruction and supervision of
assistants, see J 18/98.
(b) Selection, instruction and supervision
It is incumbent upon the representative to choose for the work a suitable person,
properly instructed in the tasks to be performed, and to exercise reasonable supervision
over the work (J 5/80, J 16/82). These duties are incumbent upon him also with regard to
substitutes for holidays, special leave and other emergency situations. New assistants
must be supervised on a regular basis for a period of at least some months (see J 3/88,
T 715/91).
The case law cited above applies equally to a patent attorney residing in the USA (or his
assistants) if he acts in collaboration with the duly appointed professional representative.
In J 3/88 the US patent attorney of a "non-resident" applicant acted in collaboration with
the duly appointed professional representative. The "docket clerks" (assistants of the US
patent attorney) were entrusted with the performance of routine tasks such as noting
time limits and checking due dates. The board stated that in order to be able to carry out
these admittedly rather simple tasks properly, they needed nevertheless some basic
knowledge. In particular, the docket clerks should be familiar with the meaning of the

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various existing time limits for the payment of renewal fees they had to handle as well as
the legal consequences in case a particular prescribed time limit was not met. In
addition, they had to be able to identify the critical dates of a patent application and to
record them on an "index card". Finally, the docket clerks ought to be acquainted with
the conditions and modalities of informing the US patent attorney in charge about the
due dates to be observed. Above all, they should know how to proceed when a fees
reminder sent by a professional representative was received by the office of the US
patent attorney. The board concluded that, although no special qualifications were
required, it was fairly impossible for a docket clerk to perform these routine tasks
satisfactorily without having previously been given appropriate instruction and being
supervised closely until he was familiar with the job.
A reasonable supervision of the activity of a newly engaged docket clerk implied that his
work be periodically checked. In order to be effective and avoid culpable errors, these
periodic checks should not be initiated mainly by the docket clerk on the occasion of his
alerting the patent attorney in charge to a coming due date, but should rather be
performed systematically irrespective of such alerts, at least during an initial training
period of several months. These checks should be aimed at making sure that, especially
in consideration of subsequently received fees reminders, the index cards were
accurately updated.
In T 191/82 (OJ 1985, 189) the non-payment in due time of an additional fee was found
to be clearly attributable to an unfortunate concatenation of errors by nevertheless
properly selected and experienced employees.
In J 12/84 (OJ 1985, 108) the due care required in the circumstances was not observed
when the employees of another company were instructed to sign for registered mail
addressed to the representative, as he was not able to supervise the work of such
persons not employed by his firm.
In T 309/88 the board stated that even employees without formal training as patent
attorney's assistants could perform the task of recording and monitoring time limits. This
was routine work which did not require specialised knowledge and professional
qualifications. However, the assistant had to be properly instructed in the tasks to be
performed and a trained employee had to be on hand to give advice.
In J 26/92 the board noted that according to the case law of the boards of appeal, routine
tasks could be entrusted to an assistant provided that the necessary due care on the part
of the representative had been exercised in dealing with the assistant. In this respect, it
was incumbent upon the representative to choose for the performance of routine tasks a
suitable person, properly instructed in the tasks to be performed, and to exercise
reasonable supervision over their work.
In T 949/94 the board stated that a representative was expected to exercise a
reasonable supervision over the work delegated. This did not mean that he had to
supervise the posting of every letter. Once he had signed a letter and ordered his
secretary to post it, he was entitled to assume that it had been posted. In the light of that,
the board was satisfied that the representative had exercised due care in dealing with his
secretary (J 31/90).
In T 1062/96 the board found that the posting of a letter prepared and signed by the
representative was a typical routine task which the representative could entrust to an

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assistant. In the case in question the assistant was expressly instructed to send the letter
by fax on the same day. In a properly organised office the representative could rely on
the correct execution of such an instruction. The sending of the fax did not require any
specialised knowledge or qualification. Therefore, the assistant, here a secretary, who
had proven to be reliable in the daily work of the representative's office, could have been
expected to do this job within her own responsibility. Since the order was to be carried
out more or less immediately, a later check whether the fax had actually been
despatched was not necessary.
In J 25/96 the statement of grounds for the request for re-establishment of rights
explained inter alia that non-observance of the time limit had been caused by the
assistant entrusted with monitoring time limits.
The board held that the case law according to which a representative could entrust
suitably qualified and supervised personnel with monitoring time limits had been
developed for routine tasks and normal cases. It did not mean that a representative
could also entirely leave such staff to monitor cases which
(i) were particularly urgent
(ii) needed particular attention and further steps by the representative himself to ensure
that the necessary acts were still performed in time
(iii) could result in an irrevocable loss of rights if any error or delay occurred.
(c) Technically qualified assistant
In T 715/91 the board held that the consequences of an error by a technically qualified
assistant (an engineer training for the European qualifying examination) imputed to the
representative would also have to be borne by the appellants. The task of writing, or at
least supervising, the despatch of important submissions, such as grounds of appeal,
would normally fall to the representative himself. Furthermore, given that the assistant
had only recently been taken on, the representative could not be expected to have been
able to ascertain in such a short time to what degree the assistant did know the rules and
regulations of the EPC.
In T 828/94 the board found inter alia that the technical assistant in charge was not
supervised well enough and had not been properly instructed.
Referring to the required standard in exercising due care, the board decided in T 832/99
that a technical employee working in a firm of patent attorneys was not an assistant but
was carrying out de facto the work of a patent attorney. This meant that the same strict
requirements for due care would have to be applied to the technical employee as were
applied to the appellant and the appellant's representative.
(d) Substitutes replacing assistants
In J 16/82 (OJ 1983, 262) the board stated that the conditions relating to assistants also
applied in the case of a substitute replacing an assistant who was on holiday, ill or
otherwise absent. It was a commonly experienced fact of life that assistants did have to
be temporarily replaced from time to time. Where a qualified assistant was absent,
therefore, the applicant or representative had either to be able to call on a similarly
qualified substitute or else himself to take over the work assigned to the assistant. The

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same standard of care had to be exercised as regards the choice, instruction and
supervision of the substitute as of the assistant himself (T 105/85).
In T 324/90 (OJ 1993, 33) the board held that in a large firm, where a considerable
number of deadlines had to be monitored at any given time, it had normally to be
expected that at least an effective system of staff substitution in the case of illness and
for absences in general was in operation in order to ensure that official documents such
as decisions by the EPO, which started periods within which procedural steps had to be
carried out, were properly complied with. From the facts submitted in this case it had to
be concluded that no appropriate precautions had been taken in the event of unexpected
absences on the part of staff responsible for monitoring time limits.
In J 41/92 (OJ 1995, 93) the Legal Board of Appeal found that, in the case of a
professional working alone and having a much smaller number of time limits to comply
with, less strict standards in this respect could be applied. However, the board went on to
say that a careful and diligent professional representative had, in any case, to be
expected to take into account that he or she might fall ill and be prevented for some time
from taking care of time limits. Therefore, if a professional representative ran a one-
person office, appropriate provisions needed to be made so that, in the case of an
absence through illness, the observance of time limits could be ensured with the help of
other persons. If there was no substitute or assistant at the representative's office, co-
operation with colleagues or with a professional association could, for example, be
sought for this purpose.
6.3.5 Due care in using mail delivery services
In decision T 667/92 the board considered whether the appellant could be said to have
taken all the due care required by the circumstances when allowing only two days for
delivery from the UK to Germany and whether, in these circumstances, the choice of
using a special carrier for the delivery was in keeping with the due care requirement. The
board pointed out that a party who missed a time limit had also to show due care in its
choice of method of delivery and that the use of outside agents might be held against the
applicant under Art. 122 EPC owing to a lack of proper safeguards. The board added
that in parallel situations telefaxing should preferably be used. The board took into
account the very extraordinary circumstances regarding the withholding of the item by
the customs in Munich for 36 hours, an incident which could not reasonably be foreseen,
and allowed the request.
In T 381/93 the problem arose from the failure of the private courier service to deliver the
package containing the corresponding documents to the EPO as instructed. In deciding
on due care, the board referred to decision T 667/92, in which it was stated that a party
who had missed a time limit had also to show due care in its choice of method of
delivery. The board held that once a reliable carrier had been chosen and commissioned
for the delivery, a party was entitled to rely on them, provided that the party had given all
the necessary and proper instructions to the carrier.
If a party to proceedings requests re-establishment of rights on the basis that a
document missed an EPO time limit because it did not arrive within the standard delivery
time, that party will have to prove that the form of postage used would normally have
ensured that the document would reach the EPO on time. The board left out of account
the question of whether a party who relies on the usual delivery time has exercised all
due care with regard to the time limit (T 777/98, OJ 2001, 509)

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 VI.E.7. Rights of use under Article 122(6) EPC

7. Rights of use under Article 122(6) EPC

VI.E.7. Rights of use under Article 122(6) EPC

In J 5/79 (OJ 1980, 71) the board stated that according to Art. 122(6) EPC, third party
rights of user arose only where the restoration related to an already published European
patent application or a European patent; those whose commercial interests were at stake
should be entitled to be sure that protection, the existence of which was public
knowledge, and which had fallen into the public domain, no longer had effect. The board
stated that the basis of this rule had never been questioned. In the case at issue, the
restoration related to an application that was unpublished at the material time, so on that
ground alone there could be no third party rights of user.
There was another requirement of Art. 122(6) EPC, before third party rights could arise,
which was also lacking in the case at issue, namely that the restoration of rights should
be made public. Publication concerning European patent applications and patents took
place in the "European Patent Bulletin". According to Art. 129(a) EPC, this Bulletin was
to contain entries made in the Register of European Patents as well as other particulars
the publication of which was prescribed by the EPC. Particulars of the restoration of
rights within the period in default in the case at issue constituted no such "other
particulars". In accordance with Art. 127, second sentence, EPC, no entries could be
made in the Register of Patents prior to publication of the European patent application.
Even in the case of published applications, R. 92(1)(u) EPC, provided that the date of
re-establishment of rights was to be entered only if loss of the application
(R. 92(1)(n) EPC) or the revocation of the patent (R. 92(1)(r) EPC) had been entered in
the Register. That was not so in the case at issue. The board held therefore that no
rights of user could be claimed by a third party on the facts in this case that the appellant
was not adversely affected by the decision under appeal.
8. Restitutio in integrum - Interruption of proceedings
VI.E.8. Restitutio in integrum - Interruption of proceedings

In accordance with R. 90 EPC, which the EPO must apply of its own motion, the legal
incapacity of an applicant or his representative has the effect of interrupting proceedings
and, where appropriate, the one-year time limit referred to in Art. 122(2) EPC (J ../87,
OJ 1988, 323).
In case T 315/87 the board of appeal was faced with the question whether the EPO
should not of its own motion first check whether the conditions for an interruption of
proceedings under R. 90 EPC existed, before considering a request for re-establishment.
The board stated that preference should be given to the application of Art. 122 EPC,
under which less severe impairment could also be grounds for re-establishment of rights.
The question of any interruption of proceedings under R. 90 EPC could be left open
provided that all the losses of rights which had occurred could be overcome by restitutio
in integrum under Art. 122 EPC.
In J 9/90 the Legal Board of Appeal held that for R. 90(1)(b) EPC (interruption of
proceedings because of insolvency) to be applied in the light of Art. 60(3) EPC and
R. 20(3) EPC, the applicant entered in the Register of European Patents and the
insolvent person (here: a limited company) had to be legally identical. However, the fact
that the persons involved were not identical did not necessarily rule out re-establishment
of rights under Art. 122 EPC. Someone who was only indirectly affected by an event,
such as insolvency, could be "unable" within the meaning of Art. 122(1) EPC. In such a

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case however the persons so affected had to prove that they had exercised all the due
care that could have been expected of them in the circumstances of such an insolvency.
9. Interrelation between Article 122 EPC and Rule 85(2) EPC
VI.E.9. Interrelation between Article 122 EPC and Rule 85(2) EPC

In T 192/84 (OJ 1985, 39) it was held that if the President of the EPO extended time
limits expiring during a period of general interruption in the delivery of mail in a
contracting state (R. 85(2) EPC), a pending application for re-establishment of rights
considered to have been lost during that period, which had been filed by a representative
having his place of business within that state, had to be deemed to have been made
without purpose ab initio, even though the non-observance of the time limit was due to
causes other than the interruption in the delivery of mail. Accordingly, it could be
declared that no rights were lost and the fee for re-establishment of rights could be
refunded.
10. Principle of proportionality
VI.E.10. Principle of proportionality

In T 111/92 the statement of grounds of appeal had been filed two days late due to an
error of calculation of the due date on the part of the representative. The board held that
the mistake in calculating the ten-day period due to human error at a time when the
person in question was under pressure was an isolated mistake in an otherwise
satisfactory system. The board referred to the principle of proportionality and stated: In
accordance with general principles of law, as applied in the context of administrative law,
a procedural means used to achieve a given end (eg a sanction following a procedural
non-compliance) should be no more than that which is appropriate and necessary to
achieve that end. Bearing the principle of proportionality in mind, the loss of the patent
application because of the procedural irregularity which has occurred in the case at issue
would be a severe result. Moreover, the interests of any third party misled in the sense of
Art. 122(6) EPC by the fact that the statement of grounds of appeal was filed two days
late would be protected by Art. 122(6) EPC. The board allowed thus the application for
re-establishment (see also T 869/90, T 635/94, T 804/95, T 27/98 and J 22/92).
In J 44/92 and J 48/92 the boards noted that the principle of proportionality only applied
in borderline cases, in support of other grounds already substantiating to a certain
extent the allowance of the appeal. Usually it had been applied where a time limit had
been missed by one or two days due to some miscalculation (see below). The board
considered that the principle of proportionality did not assist the appellant as there had
been a major system fault, which could not be excused by reliance on the principle of
proportionality.
In decision T 971/99 and T 1070/97 the boards stated that Art. 122(1) EPC does not
leave any room for the application of the principle of proportionality so that the
number of days by which a time limit had been missed is irrelevant for deciding whether
all due care was applied or not. Only the character of the conduct before the time limit
expires is decisive for the consideration of the due care issue, not the length of the
ensuing delay.
F. Late submission
Late submission

In the following decisions the boards of appeal have regularly reviewed some or all of the
previous rulings applicable or at least relevant to the cases before them. Typical
examples are T 135/98, T 468/99, T 574/02, T 481/00, with its lengthy discussion of case

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law relating in particular to prior use; T 874/03, T 1027/03, T 982/02, along with T 66/03,
and T 745/98, T 1248/03, based on the RPBA; T 1080/01, T 404/02 and T 1124/02, with
regard to new facts and evidence in support of grounds of opposition validly raised in the
opposition proceedings.
1. The meaning of "late" - delaying the proceedings
VI.F.1. The meaning of "late" - delaying the proceedings

To expedite the proceedings, parties are supposed to submit all facts, evidence and
requests at the outset, or - if this is not possible - as soon as they can. Arguments and
evidence should not be filed piecemeal, a principle enshrined in Art. 10a and
Art. 10b RPBA (for a decision taken after the new RPBA came into force but on an
appeal filed beforehand, see T 361/03).
The boards stress that an opponent is required to submit all his objections during the
opposition period, setting each out in full. In T 117/86 (OJ 1989, 401) it was pointed out
that facts and evidence in support of an opposition which were presented after the nine-
month period had expired were out of time and late, and might or might not be admitted
into the proceedings as a matter of discretion under Art. 114(2) EPC. Boards had to
ensure that proceedings were conducted expeditiously, and other parties fairly treated
(see T 101/87, T 173/89, T 237/89, T 430/89 and T 951/91, OJ 1995, 202). In T 339/92,
the board held that late submissions should be taken into account if this did not delay the
proceedings.
In T 645/90 the board refused to allow the late-filed evidence into the proceedings as it
had only been submitted at the oral proceedings; the respondents had not had the
opportunity to assess it or provide their own counter-experiments, and its relevance was
not immediately apparent.
In T 252/95, the appellant cited in his grounds of appeal a public prior use which he had
not put forward in the opposition proceedings. The board admitted this new submission -
in deciding whether it was late, it had to consider the entire technical contribution in the
opposition proceedings and the reasons given in the contested decision for refusing the
opposition. The appellant had convincingly explained why he had been unable to
respond to the opposition division's decision by continuing to argue on the basis of the
public prior use originally cited, and why this new public prior use was required for a
further-reaching discussion of the features.
The board held that precisely in cases of public prior use - where multiple individual acts
of such use had supposedly occurred before the priority date - it could serve the interests
not only of both parties but also of the departments conducting the proceedings, if just a
few of those acts were selected for detailed substantiation. This meant, inter alia, that a
subsequent pleading could not be disallowed as late-filed should it transpire that for
unforeseeable reasons the party's original pleading could not succeed.
In T 502/98 the board recalled that not only the facts and the evidence submitted by the
opponent within the nine-month period for filing an opposition were "filed in due time",
but also any which were submitted by the patent proprietor within the four months given
for replying to the grounds of opposition.
The filing of facts and evidence within subsequent periods of time could also be in "due
time" if it occurred in accordance with the principle of procedural economy and hence if
the filing party had observed a fair degree of procedural vigilance. The board stated that

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this might be the case if, for example, certain facts or evidence became relevant only
after a party had submitted an unforeseeable amendment to the claims, or a new
experimental test report, or had for the first time challenged the existence of common
general knowledge undisputed up to that moment. In the case at issue, the board found
that the appellant (opponent) could not foresee before the filing of such amended claims
that the respondent (patent proprietor) would actually limit the claimed matter. The board
came to the conclusion that the disputed document was not filed late, but in due time.
Accordingly, the opposition division had been wrong to exercise its discretionary power
pursuant to Art. 114(2) EPC in respect of the document, as that provision applied only to
facts and evidence filed late.
2. Consideration of late submissions
VI.F.2. Consideration of late submissions

Under Art. 114(1) EPC, the EPO is obliged to examine the facts of its own motion, and in
doing so, it is not restricted to the facts, evidence and arguments provided by the parties
and the relief sought. According to Art. 114(2) EPC, however, the EPO may disregard
facts or evidence which are not submitted in due time by the parties concerned. The
apparent contradiction between these two principles has generated a considerable body
of case law. In T 122/84 (OJ 1987, 177) the board summarised the historical
development of the principle of ex officio examination with regard to late submission on
the basis of the "travaux préparatoires" to the EPC.
For a long time, board of appeal practice was governed by the landmark decision
T 156/84 (OJ 1988, 372), according to which the principle of examination by the EPO of
its own motion under Art. 114(1) EPC takes precedence over the possibility under
Art. 114(2) EPC of disregarding facts or evidence not submitted in due time. Accordingly,
the main criterion for deciding on the admissibility of late-filed documents and evidence
was their relevance, ie their evidential weight in relation to other documents already in
the case (see eg T 322/95, T 475/96, T 864/97 and T 892/98).
In some more recent decisions the relevance of late-filed documents was no longer
viewed as being the only decisive criterion for admitting them. Other criteria, such as
how late the documents were and whether their submission constituted a procedural
abuse or whether admitting the late-filed documents could lead to an excessive delay in
the proceedings, were also held to be decisive (see T 534/89, OJ 1994, 464; T 17/91
and T 951/91, OJ 1995, 202).
T 1002/92 (OJ 1995, 605) concerns the extent to which the principles set out by the
Enlarged Board of Appeal in G 9/91 and G 10/91 (OJ 1993, 408 and 420) with regard to
the admissibility of fresh grounds of opposition (see, in this respect, Chapter VII.C.5.2)
influence the admissibility of late-filed new "facts, evidence and arguments" in support of
grounds of opposition already contained in the notice of opposition. The conclusion was
as follows:
(a) In proceedings before the opposition divisions, late-filed facts, evidence and
related arguments which go beyond the "indication of the facts, evidence and
arguments" presented in the notice of opposition pursuant to R. 55(c) EPC in support of
the grounds of opposition on which the opposition is based should only exceptionally be
admitted into the proceedings by the opposition division, if prima facie, there are clear
reasons to suspect that such late-filed material would prejudice the maintenance of the

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European patent in suit. Such consideration of relevance as the principal factor follows
from the administrative character of the opposition proceedings.
(b) In contrast to the first-instance procedure, the appeal procedure is a judicial
procedure and therefore "less investigative". Therefore, as regards proceedings before
the boards of appeal, new facts, evidence and related arguments which go beyond the
"indication of facts, evidence and arguments" presented in the notice of opposition
pursuant to R. 55(c) EPC in support of the grounds of opposition on which the opposition
is based should only very exceptionally be admitted into the proceedings if such new
material is prima facie highly relevant in the sense that it is highly likely to prejudice
maintenance of the European patent. Also, other relevant factors in the case, in
particular whether the patentee objects to the admissibility of the new material and the
reasons for any such objection, and the degree of procedural complication that its
admission is likely to cause should be taken into account. In general the later that such
new material is filed, the greater the degree of procedural complication that it is likely to
cause (confirmed in T 212/91, T 951/91, OJ 1995, 202 and T 255/93).
During the following years, the boards have looked for other ways to handle late
submissions, as the existing case law - to the effect that the main criterion was the
material's relevance - was found increasingly unsatisfactory (albeit confirmed in other
decisions such as T 68/98, T 864/97 and T 892/98). Only rarely (T 577/97) did the
boards persist with the approach whereby evidence is disregarded only exceptionally,
irrespective of the procedural stage at which it is submitted (cf. T 426/97 and T 855/96).
In T 633/97 the board found that the complexity of the examination necessitated by the
late-filed material should also be a criterion for considering it. It explained that once oral
proceedings had been arranged in appeal cases, the decision to admit new evidence or
requests into the procedure should hinge neither on a fixed time limit for their submission
nor on their merit. It should instead be governed primarily by a general interest in the
appeal proceedings being conducted in an effective manner, ie in dealing with as many
of the issues raised by the parties as possible, while still being brought to a close within a
reasonable time. New submissions should normally be disregarded if the complexity of
the technical or legal issues raised was such that neither the board nor the other party
could be clearly expected to deal with them without adjournment of the oral proceedings.
Complex fresh subject matter filed at short notice before or during oral proceedings ran
the risk of being not admitted to the proceedings without any consideration of its
relevance or allowability.
In T 609/99 a document was introduced by the opponent subsequent to the summons to
oral proceedings before the opposition division. The latter took the view that this
document had not been submitted in due time and disregarded it pursuant to
Art. 114(2) EPC. The board took the document into account, leaving open the question
whether or not the document had been submitted in due time and despite the proprietor's
objection to its admission. The board in fact held that the document did not extend the
legal and factual framework of the appeal according to the principles defined in G 9/91
and G 10/91. Since the document not admitted at first instance was again relied on in
support of the same argument on appeal, the board took it into account despite the
proprietor's objection to its admission and without any implication that it was prima facie
highly relevant as defined in T 1002/92, ie that it was highly likely to prejudice
maintenance of the patent.

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3. Exercising discretion over admitting late submissions

VI.F.3. Exercising discretion

In T 705/90 the board pointed out that any decision to disregard late-filed documents had
to be accompanied by a statement of reasons. It was not enough simply to point out that
the documents were late.
In T 214/01 the board decided to admit documents D3, D5, D6 and D7, which had been
filed by the opponent on the "final date" within the meaning of R. 71a EPC in preparation
for the oral proceedings before the opposition division. Since the appellant (opponent) in
the statement of grounds had questioned the opposition division's choice not to admit all
these documents into the proceedings, the board took the opportunity to note that,
although Art. 114(2) EPC gave an opposition division discretion not to consider evidence
not submitted in due time, the division was obliged to give reasons for its decision not to
consider such evidence if the opponent - as in the case in point - remained of the view
that it was relevant. It was not acceptable that (relevant) pieces of evidence filed outside
the opposition period (in this case documents D6 and D7) were not mentioned at all in
the decision under appeal. Since the minutes of the oral proceedings were also silent on
those documents, there was no evidence on file that the opposition division had actually
taken note of them.
In T 267/03 the board decided that a late submission not admitted by the opposition
division was not to be admitted by the board if the opposition division had correctly
exercised its discretionary power under Art. 114(2) EPC.
3.1. Examination as to relevance
3.1.1 General
If the board conducts "examination as to relevance" when exercising its discretion under
Art. 114(2) EPC, then the admission of a citation (such as an anticipatory document)
which has been filed late (ie could have been submitted earlier) depends on whether it is
decisive (relevant) for the outcome of the case (see T 258/84, OJ 1987, 119). According
to decision T 156/84 (OJ 1988, 372) the principle of examination by the EPO of its own
motion under Art. 114(1) EPC took precedence over the possibility of disregarding late-
filed facts or evidence provided for in Art. 114(2) EPC. This was not only evident from the
wording of both provisions; it also followed from the EPO's duty vis-à-vis the public not to
grant or maintain patents which it was convinced were not legally valid. The EPO was
therefore obliged to assess the citation's relevance by considering the facts. If, having
regard to the facts of the case as a whole, the new submission had no material bearing
on the decision, the board could, according to Art. 114(2) EPC, disregard the submission
without having to give detailed reasons (see T 71/86, T 11/88, T 705/90).
In T 326/87 (OJ 1992, 522) the board took the same line, on the grounds that
Art. 114(2) EPC set a legal limit on the inquisitorial duties of the appeal boards and that
these duties should not be interpreted as extending to carrying out a roving enquiry into
facts alleged and evidence adduced at a late stage of the proceedings (in the case in
point, the opponent had submitted a new document with the statement of grounds of
appeal). The main criterion for deciding on the admissibility of a late-filed document was
its relevance, ie its evidential weight in relation to other documents already in the case
(see also T 286/94).

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 VI.F.3. Exercising discretion

According to T 273/84 (OJ 1986, 346) the discretionary power contained in

Art. 114(2) EPC was clearly granted to ensure that proceedings ran smoothly and to
forestall tactical abuse (see also, in this connection, T 110/89 and T 315/92).
Regarding examination as to relevance, the board explained in T 560/89 (OJ 1992, 725)
that Art. 114(2) EPC allowed the EPO to disregard documents which contained no more
information than the documents filed on time and did not disclose matter which could
change the outcome of the decision. According to the decision in T 611/90
(OJ 1993, 50), late-filed evidence, documents and other matter could be rejected by the
boards of appeal on the ground of their irrelevance, ie on the basis that they were no
more "weighty" or "cogent" than documents which were already in the case.
However, the late-filed evidence had to be admitted into the case and taken into account
if it was relevant - ie if it might cause the patent to be revoked or its scope to be limited
(T 164/89 and T 1016/93).
The board in T 718/98 decided that a party’s introduction, at a very late stage of the
proceedings, of evidence which could have been filed much earlier, as a strategic
measure to improve its own case against the opposing party, amounted to an abuse of
procedural rights and was therefore rejected independently of the possible relevance of
the evidence.
According to T 97/90 (OJ 1993, 719) the wording of Art. 114(1) EPC did not mean that
the boards of appeal had to conduct rehearings of the first-instance proceedings, with
unfettered right, and indeed obligation, to look at all fresh matter regardless of how late it
was submitted. Art. 114(2) and Art. 111(1) EPC set a clear limit to the scope of any new
matter that could be introduced into an appeal by the parties so that cases on appeal
had to be, and remain, identical or closely similar to those on which decisions at first
instance had been rendered. This case law was confirmed by the boards of appeal inter
alia in T 26/88 (OJ 1991, 30; where it was stated that the essential function of the appeal
procedure was to determine whether the decision issued by a department of first
instance was correct on its merits), T 326/87 (OJ 1992, 522), T 229/90 and T 611/90
(OJ 1993, 50).
In T 201/92 the board pointed out that facts and evidence had to be submitted once they
were available and once it had become clear that they were relevant, so that the board
and the other parties could take the steps deemed necessary.
3.1.2 Examination as to relevance with regard to G 9/91 and G 10/91
In the light of G 9/91 and G 10/91 (OJ 1993, 408 and 420) and with reference to the case
law mentioned already under Chapter VI.F.2. on limited ex officio examination in appeal
proceedings, the examination as to relevance was looked at critically in a number of
recent decisions. According to the new approach to this question, in the exercise of
discretion under Art. 114(2) EPC, late-filed facts and evidence can be excluded on
grounds of abuse of procedure and during appeal proceedings on grounds of restrictions
on the principle of ex officio examination.
In T 212/91 the board confirmed that cases decided by the boards of appeal should have
the same, or substantially the same, legal and factual framework as the case on the
basis of which the department of first instance's decision had been rendered.

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In T 85/93 (OJ 1998, 183), the board, citing G 9/91, G 10/91 and T 212/91, confirmed
that evidence of common general knowledge, like any other evidence in support of an
opponent's case, should be filed at an early stage in the proceedings before the
opposition division (following G 4/95, OJ 1996, 412), and may be rejected as
inadmissible at the board's discretion if filed for the first time during appeal proceedings.
In T 874/03 the board, considering a prior-art document and its English translation, which
were first filed at the oral proceedings before the board, acknowledged that it was
immediately apparent that this fresh material might represent the closest prior art. In
accordance with Art. 10b(3) RPBA, such facts and evidence may not in principle be
admitted into the proceedings because their admission would lead to an adjournment of
the proceedings. However, an exception to the above principle is justified if the patent
proprietor agrees to the admission of the fresh material. The board in T 874/03 stipulated
that, as emphasised by the Enlarged Board in G 9/91 (OJ 1993, 409), it might in some
cases be in the patent proprietor's own interest that such facts and evidence were not
excluded from consideration in the centralised procedure before the EPO. It pointed out
that such fresh material had to be prima facie highly relevant in order to be admitted into
the proceedings exceptionally with the agreement of the patent proprietor.
The above criteria set out by the Enlarged Board in G 9/91 concern the admissibility of a
fresh ground for opposition. However, they are also generally applicable to the
admissibility of late-filed facts and evidence submitted in support of a ground for
opposition (see also T 1002/92). In the case in point (T 874/03), both of the criteria set
out in G 9/91 which apply to the admissibility of late-filed material were met.
3.1.3 Examination as to relevance and abuse of procedure
In some cases the boards of appeal have disregarded late-filed material on the grounds
of abuse of procedure.
In T 951/91 (OJ 1995, 202) the board refused to take account of late-filed evidence even
before it was actually submitted and pointed out that the discretionary power given to
the departments of the EPO pursuant to Art. 114(2) EPC served to ensure that
proceedings could be concluded swiftly in the interests of the parties, the general public
and the EPO, and to forestall tactical abuse. Parties had to take into account the
possibility that late-filed material would be disregarded and do their best to submit the
facts, evidence and arguments relevant to their case as early and completely as
possible. If a party failed to do so without adequate excuse, and admitting the evidence
would lead to an excessive delay in the proceedings, the boards of appeal were fully
justified in refusing to admit it in exercise of the discretion provided by Art. 114(2) EPC.
The board informed the parties in a communication that the submission of further fresh
experimental data proposed to be filed by the appellant (opponent) at some unspecified
later date, some 20 months after the statement of grounds of appeal had been filed and
at a time when the decision was substantially completed, was regarded as an abuse of
procedure.
In T 496/89 the board pointed out that the late introduction of documents and of other
matter into the appeal proceedings is inimical and contrary to the public interest, quite
apart from being unfair to the other party. Attempts by either party to spring a surprise on
the other by deliberate late-filing, as well as inadvertent omissions to present arguments
and the evidence needed to support them, ran counter to the spirit and intent of the EPC
(see also T 430/89).

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In T 741/91 the board stated that filing evidence only one day prior to the oral
proceedings before the opposition division, thus not allowing the other party to consider
and respond to it during the oral proceedings, was not acceptable conduct on the part of
the submitting party. The opposition division should disregard such evidence by
exercising the discretion conferred upon it under Art. 114(2) EPC.
In T 375/91 the board could see no reason why the respondent (opponent) did not
present its tests in due time, that is promptly in reply to the appellant's statement and
certainly before oral proceedings were appointed, so leaving the patentee sufficient time
to reply, if necessary by filing counter tests. To have waited with the presentation of the
tests until only seven weeks before the oral proceedings jeopardised the whole object of
such proceedings, which was to prepare a case for decision on conclusion of the oral
proceedings, and denied the appellant the right to file a detailed counterstatement. This
was contrary to fair and proper procedure.
In T 1019/92 the board reached the conclusion that the fact that an opponent, after the
end of the opposition period, subsequently submitted prior art material originating from
itself, did not constitute an abuse of the proceedings in the absence of evidence that this
was done deliberately for tactical reasons (in contrast to the situations found to exist in
T 534/89 and T 17/91; see Chapter VI.F.3.1.4). The board admitted the late-filed
document into the proceedings. Also, in T 315/92 the board of appeal did not consider
that there had been a tactical abuse and took the late-filed documents into account
under the principle of examination by the EPO of its own motion, since these might have
put maintenance of the patent at risk (see also T 110/89).
Filing with the statement setting out the grounds of appeal, new documents reinforcing
the line of attack already made before the department of first instance had to be
considered as the normal behaviour of a losing party and did not constitute an abuse of
procedure (T 113/96).
An abuse of procedure presupposes the deliberate withholding of information (see
T 534/89). In T 901/95, the board ruled that a personnel change causing the appellants
to learn belatedly about projects in their own very large firm did not constitute such
abuse.
In T 135/98 the appellant (patent proprietor) had sought and obtained a postponement of
the oral proceedings in order to be able to prepare and file further evidence in the form of
independently conducted experiments. The evidence eventually filed was not the
evidence for which the appellant had sought an adjournment. The appellant gave no
reason for the late submission of the evidence he eventually produced other than an
explanation for the non-production of the evidence he had intended to but did not
produce.
In the board's judgment, the evidence actually filed could have been prepared and filed
much earlier and was therefore insufficient to justify the lateness. The appellant had
been under a duty to inform the board of his change of plan. It had been unfair for the
appellant to remain silent for four months, knowing that he would be filing evidence the
other parties and the board did not expect and that he would not be able to comply with a
direction of the board given in response to his own adjournment request. It had to be
remembered that any postponement of oral proceedings granted in favour of an
appellant acted as an extension of the suspensive effect of an appeal and thus, in the
case of an appealing patentee, of the time during which respondent opponents risked an

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allegation of infringement if they worked an invention which had already been found
unpatentable by the opposition division. In the circumstances, the appellant's behaviour
had been an abuse of procedure.
In T 446/00, large numbers of requests had been filed, in some cases very late in the
proceedings, and one of the late requests contained a claim specifically abandoned by
the appellant proprietor earlier in the proceedings. The board identified various forms of
behaviour as abuses of procedure, including non-compliance with a procedural direction
of the board requiring a party to take a certain step or steps. It was also an abuse of
procedure for a party to adopt an unequivocal position on an issue and subsequently to
depart from that position without explanation. That applied particularly, but not solely, in
contested inter partes proceedings, in which another party was entitled to rely on that
position as part of the case it had to meet. Furthermore, the board stated that it was the
duty of any party to proceedings, whether ex parte or inter partes, to make its own case
and to formulate its own requests.
In T 569/02, the appellant (patentee) had filed the results of comparative tests with the
teaching of document D4 one month before the oral proceedings before the board. As a
reason for filing the evidence at that stage the appellant had explained that he had
considered that document D1 was the most relevant document.
The board could not accept this argument. It had been quite clear to the appellant from a
very early stage of both the opposition and the appeal proceedings that document D4
could be considered the closest prior art. Furthermore, in the board's view, comparative
tests normally required careful consideration by the other party, including discussions
with technical experts who could not be expected to be immediately available. It might
also be necessary for the other party to repeat the tests or perform other tests
themselves. The board did not consider the relevance of the tests to play a role, since
even relevant evidence of this type should not be filed at such a late stage in the
proceedings. The board therefore decided to exercise its discretion under
Art. 114(2) EPC not to admit the test results into the proceedings.
3.1.4 Procedural abuse in the case of public prior use
Stricter standards have been set by the boards of appeal particularly in the case of the
admissibility of late-filed evidence of public prior use by the opponent. On the basis of
Art. 114(2) EPC, the boards did not include late-filed evidence in the proceedings
because in the specific circumstances there had been an abuse of procedure and a
breach of the principle of good faith. In such cases the boards chose to refrain from
examining the potential relevance of the submission (see T 17/91, T 534/89,
OJ 1994, 464; T 211/90).
In T 17/91 an allegation of prior use based on the opponents' own activities had been
filed two years after the expiry of the opposition period, with no good reason for the
delay. This, in the board's view, constituted an abuse of the proceedings and a breach of
the principle of good faith. Irrespective of its potential relevance, the allegation was
therefore to be disregarded under Art. 114(2) EPC.
Taking a similar line, the board ruled in T 534/89 (OJ 1994, 464) that an objection based
on prior use by the opponents themselves which was raised only after the expiry of the
opposition period (Art. 99(1) EPC), although the factual circumstances were known to
the opponents and there was nothing to prevent the objection being raised during that

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period, constituted an abuse of procedure. From this, the board concluded that when
abuse of procedure was manifest, in view of the fact that a party deliberately refrained
from raising an issue even though the necessary supporting evidence was available, it
would be contrary to the principle of good faith to admit such evidence by applying
Art. 114(2) EPC in that party's favour.
Four weeks before the oral proceedings in T 211/90 the appellant alleged public prior
use for the first time. However, the evidence was already familiar to the appellant before
expiry of the opposition period. The board held that the fact that the appellant was
unaware of the relevance of this evidence, even though familiar with it at the time of filing
the opposition, did not justify its introducing the evidence into the proceedings for the first
time at such a late stage - irrespective of the reasons why it did not become aware of the
potential relevance of this material until then. Neither the fact that the appellant had
changed representatives during the appeal proceedings, nor the fact that it was the new
representative who first recognised the relevance of this material could justify taking it
into account. The board therefore decided not to consider this material in the further
proceedings, without examining its potential relevance.
In T 985/91 the board referred to T 17/91, and held that in cases such as that before it,
where the late-filed material related to an alleged prior use by the party filing it, this
material should only be admitted into the proceedings in exceptional circumstances.
Therefore, the board disregarded the late-filed material relating to an alleged prior use
because neither the reasons given for the filing of the material concerned more than four
years after the end of the time limit for opposition and only one week before the date of
the oral proceedings, nor the content of the material itself, were such as to persuade the
board that it would be proper to allow its introduction into the proceedings.
In T 847/93 the board held that the conclusions arrived at in T 17/91 could not be applied
directly to the case in point because the prior use asserted in that case was not based on
the opponent's own activities, but rather referred to an apparatus manufactured by a
third company and delivered to the opponent. The board remitted the case to the
department of first instance.
In T 45/88 the late-filed prior use was disregarded in view of the length of time the
proceedings had already lasted (five years since the notices of opposition had been filed)
and the need to carry out an extremely thorough examination of facts dating back more
than nine years. As in the case of T 262/85, which the board endorsed, the
circumstances associated with the taking of evidence - namely course, duration and
outcome - were so uncertain as to warrant discretion being exercised in a negative
sense.
In T 503/94 the prior use allegation was raised for the first time in the appeal
proceedings only two weeks before the oral proceedings. The appellants had given no
reason for making the allegation at this late stage. The board stated that it raised a case
entirely different from that on which the decision under appeal was based. It would only
admit this fresh case into the proceedings if it were prima facie highly relevant. The
evidence supplied was, however, deficient and so the board refused to admit it into the
proceedings.
In T 628/90 an allegation of public prior use, which was filed for the first time in appeal
proceedings and was adequately substantiated, was taken into account because of its

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possible relevance to enable thorough consideration to be given to the patentability of

the subject-matter of the contested patent (see also T 150/93).
In T 864/99 the board decided to disregard a belated submission concerning an alleged
prior use because the prior use in fact stemmed from the appellant (opponent's) own
activities and the appellant had not filed the new evidence until ten months after the filing
of the original statement of the grounds of appeal and seven months after the
respondent's counterstatement without having good reasons for doing so. Furthermore,
the appellant did not present a coherent and consistent picture of how the alleged public
prior use took place.
In T 481/99 the board said that the principle that late-filed facts, evidence and related
arguments should only exceptionally be admitted into the proceedings by the opposition
division (see eg G 9/91, OJ 1993, 408 and T 1002/92, OJ 1995, 605) did not imply that a
late-filed allegation of prior use, which would be relevant if proven, was to be
automatically disregarded on the ground that the new facts first needed to be established
by taking evidence. However, if the submissions and/or documents relating to the late
allegation of prior use showed inconsistencies or even contradictions, the deciding body
was entitled to disregard the alleged prior use pursuant to Art. 114(2) EPC without
further enquiries. The board saw no reason to deviate from the opposition division's
decision to disregard the disputed alleged prior use, as it had correctly exercised its
discretionary power.
In T 380/00 the appellant (opponent) in the statement of the grounds of appeal for the
first time relied on the non-confidential disclosure of technical features of the invention by
an engineer during a job interview. In support of this argument, the appellant filed a
statutory declaration by the engineer and a series of drawings which were allegedly
produced during the interview.
The board stated notably that the statutory declaration did not identify the persons
present at the interview and that the technical drawings were marked confidential. It
further considered that the respondent (patentee) had convincingly submitted that
according to standard practice the persons present at the interview on behalf of the
prospective employer would have felt bound by an at least implicit obligation of
confidentiality, and the appellant had not provided any evidence to the contrary in the
statement of the grounds of appeal. The board ultimately considered that the alleged
public prior use by the engineer was too poorly substantiated to justify further
investigation of the matter, which incidentally would have entailed the case being
remitted. The late submissions were therefore disregarded.
In T 947/99 all the three allegations (a), (b) and (c) of public prior uses were filed well
outside the nine-month period for opposition at different stages of the opposition
(allegation (a)) or opposition appeal proceedings (allegations (b) and (c)). It was thus, in
the board's view, beyond doubt that all prior use allegations had to be regarded as late-
filed within the meaning of Art. 114(2) EPC, whether "late" was taken to mean after the
end of the opposition period or after the end of the opposition proceedings. As to the
circumstances surrounding the late allegation of public prior use (a), the appellant
(opponent) submitted that in the course of parallel legal proceedings before the Patents
Court in London it had first become aware, during a meeting on 17 May 1999, of the
possibility that there might have been prior public use. In the board's judgment, a very
clear explanation and sound reasons had been given by the appellant as to why in the

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case at issue the allegation of public prior use (a) was filed when it was and why this
could not have been done earlier. As to the circumstances why (b) and (c) were raised
for the first time in the statement setting out the grounds of appeal, the appellant
essentially explained that the expert opinion dated 15 June 1999 for (a) had led the
appellant (opponent) to investigate other products available on the relevant market
before the priority date. It was only in the course of this investigation that it had become
aware in October 1999 of the possibility that there might have been the above-mentioned
two further public prior uses (b) and (c).
In the board's judgment, there was prima facie no reason to doubt that the appellant was
correct in asserting that, in the circumstances of this case, it could not have filed the
allegations of public prior use (b) and (c) before the appeal was lodged so it was
established that no abuse of procedure had occurred. The board decided to take all
three into account.
On the issue of documents relating to prior use submitted during appeal proceedings, the
board in T 508/00 ruled that poor communications within a company or a group of
subsidiary companies did not constitute adequate and acceptable grounds for allowing
the late submission of evidence concerning alleged prior use.
3.1.5 Examination as to relevance and justified late submission
In some decisions, however, it was decided that the delay was less important if the party
was reacting to a finding in the contested decision or to the opponent's submission.
In T 101/87 the board drew a distinction between (a) the case of an opponent attempting
to find further prior art when the opposition division had decided that the original citations
did not warrant revoking or restricting the patent, and (b) the case of an opponent
making a further search in response to substantial amendments of a claim or to
comments from the opposition division regarding a missing link in a chain of argument. In
the latter case, new documents could be admitted into the proceedings, instead of being
regarded as late-filed.
In T 49/85 the board stated that a reference filed by an opponent for the first time with its
statement of grounds was not submitted in due time unless representing the effective
counter evidence to a newly emphasised reason given in the decision (see also T 172/85
and T 561/89). The same applied if the party reacted to its opponent's submission, eg in
T 705/90, where documents I to N were cited by the appellant in its observations in
support of an argument presented in response to the respondent's statement of grounds.
Also, in T 238/92 the board of appeal did not consider a document presented for the first
time with the statement of grounds of appeal as "late-filed", since it served as the first
evidence of a feature considered in the contested decision as essential for the
assessment of inventive step (see also T 117/92).
Where documents were filed with the statement of grounds of appeal but the need for
filing them arose from the reasoning given in the decision under appeal, and they were
too relevant to be disregarded under Art. 114(2) EPC, the board admitted them into the
proceedings (T 223/95).
In T 430/89 the explanation for the late submission of arguments and of a document was
that the representative took over the case only recently. The board held that this could
not be accepted as a justification for tardiness.

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Late submission

In T 785/96, with a letter sent just one month before the oral proceedings before the
board, the appellant filed additional experiments. The appellant stated that the reason for
this late filing was a change of representative, after which the necessity of the
experiments had appeared.
The board confirmed the decision T 97/94 (OJ 1998, 467) and stated that the change of
representative does not form an acceptable ground for late filing unless it is due to force
majeure. The new representative is obliged to continue the proceedings from the point
they had reached when he took over from his predecessor (see also T 552/98).
In T 736/99, prior-art document D4 was submitted two years and eight months after
expiry of the term set by Art. 108 EPC. As the appellant (opponent) accepted
unreservedly, a change of professional representative was not an objective excuse for
delay. The board did acknowledge that the fact that the amendment to claim 1 was such
as to imply a shift of priority date was not something which was flagged in the decision
under appeal. Nevertheless, legally the opponent had received constructive notice of the
priority shift in the decision under appeal, and a first submission of intermediate prior art
in response to it after expiry of the four-month period for filing the statement of the
grounds of appeal had to be regarded as a late submission whose admission was a
matter for the discretionary power of the board pursuant to Art. 114(2) EPC. In the
board’s judgment, D4 was sufficiently relevant in relation to the issue of inventive step for
it to be admitted into opposition appeal proceedings despite being submitted late.
4. Late submission and the right to be heard
VI.F.4. Late submission and the right to be heard

A number of decisions have addressed the question of how the right to be heard is
safeguarded if the EPO intends to take late-filed facts and evidence into account in the
decision (see, for example, T 874/03).
In a case where an opposition division or a board of appeal feels bound by
Art. 114(1) EPC to examine new facts or evidence submitted for the first time during oral
proceedings, it must, in accordance with Art. 113(1) EPC, give the other parties the
opportunity to comment before issuing a reasoned decision based on such facts or
evidence (G 4/92, OJ 1994, 149; see also T 484/90, OJ 1993, 448).
In T 330/88 the board held that the right to be heard had not been contravened by virtue
of a relevant document being submitted late during oral proceedings. The representative
was given sufficient time during the oral proceedings held on two consecutive days to
consider this document, consisting of only seven pages including the claim page and two
figure sheets. He could be expected to be able to react to this new situation either by
rejecting the document as irrelevant or by filing amended claims.
If the EPO intends to consider evidence filed late by an opponent in view of its relevance
to the decision, and the patent proprietors have filed no observations on the new
documents, then under Art. 101(2) EPC they must be invited to do so before the case
can be decided on the basis of such evidence. This requirement follows both from
Art. 113(1) EPC and from the general principles of procedural law applicable under
Art. 125 EPC (T 669/90, OJ 1992, 739).
In T 356/94 the board added that any late-filed facts or evidence could be admitted in the
opposition proceedings in so far as such facts or evidence were subsequently discussed
by the parties concerned in accordance with Art. 113(1) EPC, which meant allowing the

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parties sufficient time, depending on the nature of the facts or evidence submitted, to
provide explanations. Taking into consideration comparative tests presented on the
same day as oral proceedings were held could constitute an infringement of the other
party's right to be heard, since the latter had had no material opportunity to check them.
In T 270/90 the board refused to consider late-filed experimental data, on the grounds
that the principle of fairness had been breached. In point of fact, the data was irrelevant
anyway, but this was only a secondary consideration.
This case law was confirmed by T 939/90, in which the board was of the opinion that the
evidence submitted was rightly excluded by the opposition division to the extent that its
lateness practically precluded the opponents from countering it by tests of their own. The
board stated that for obvious reasons this no longer applied to the appeal proceedings
and admitted the evidence into the proceedings.
Also in T 685/91 the board confirmed that the opposition division had rightly decided not
to consider the experiment report, which was submitted about one month prior to the oral
proceedings before the opposition division, because such a short period was clearly
insufficient to carry out counter-experiments. However, the report was admitted into the
appeal proceedings since the same comparative data had been submitted together with
the statement of grounds of appeal in support of the objection of lack of inventive step
raised initially in the statement of grounds of opposition. The board considered that the
technical report did not take the respondent by surprise since the latter had had ample
time and opportunity to carry out its own experiments.
In T 259/94 the appellants submitted new evidence - including documents reflecting
common general knowledge and reports of tests - two years after filing the appeal. The
respondent did not object to their introduction into the appeal proceedings. The board
held that in such circumstances the principle of "volenti non fit iniura" empowered it to
admit the late-filed evidence.
In T 106/97 the prior-art citation did not literally disclose the high purity value claimed in
the patent in suit, but had to be read by a skilled person who was aware of the handbook
which the appellant (opponent) had cited only shortly before the oral proceedings on the
appeal. The respondent asked that the handbook be disallowed as late-filed. The board
held that a highly relevant handbook which constituted general technical knowledge
could not be thus disregarded.
5. Late-filed arguments
VI.F.5. Late-filed arguments

In T 92/92 the board pointed out that Art. 114(2) EPC did not provide a legal basis for
disregarding late-filed arguments on the grounds that they were presented for the first
time in oral proceedings. The board held that the EPC in the English version made a
clear distinction between "facts and evidence" on the one hand and "arguments" on the
other in Art. 114(1) EPC and that Art. 114(2) EPC did not refer to arguments.
Art. 114(2) EPC was to be interpreted such that the parties' right to argue their case was
not unduly restricted.
Decision T 604/01 deals also with the interpretation of the expression "facts". According
to the board, facts in the legal sense are to be understood as the circumstances and
incidents of a case, looked at apart from their legal bearing. In the case in point the

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board decided that the appellant's submission at the oral proceedings should have been
considered merely as arguments.
Taking a similar line in T 861/93, the board ruled that decisions referred to by a party in
support of its arguments were never citations which, under Art. 114(2) EPC, could be
rejected as being late. Arguments were not covered by the said provision. Therefore,
decisions to which a party referred in support of its arguments should be regarded as
part of these arguments and should not be rejected as being filed late.
In T 131/01 (OJ 2003, 115) the board had to point out that the only possible new
submissions to be disregarded if not submitted in due time were those set out in
R. 71a(1) EPC, namely "new facts and evidence". It followed that new relevant
arguments in respect of previously submitted facts presented after the time indicated in
the summons had to be taken into account by the opposition division under that
provision.
In this case, according to the board, as was apparent from the minutes of the oral
proceedings, no new facts and evidence had been submitted. Document DE had been
cited and analysed in the notice of opposition, so its content did not constitute new facts.
The board could also see no justification for the opposition division not having admitted
new arguments presented at the oral proceedings in the exercise of their discretion
under Art. 114(2) EPC. This provision, as worded in all three languages, was also
concerned with facts and evidence which were introduced late, but not with arguments
("Tatsachen und Beweismittel" in the German text and "faits et preuves" in the French
text). In its opinion G 4/92 (OJ 1994, 149) the Enlarged Board defined "new arguments"
as being not new grounds or evidence, "but reasons based on the facts and evidence".
Therefore in the board's view arguments introduced late could not be excluded under
Art. 114(2) EPC.
6. Documents cited in the patent or the search report
VI.F.6. Documents cited in the patent or the search report

A document considered during the examination procedure is not automatically

scrutinised in opposition or opposition appeal proceedings, even if it is quoted and
acknowledged in the contested European patent (T 155/87, T 198/88, OJ 1991, 254;
T 436/88, T 484/89). According to T 291/89 this also applied to a document cited in the
search report. In T 536/88 (OJ 1992, 638), the board endorsed this principle but made an
exception in a specific case, on the grounds that, although the document in question had
only been filed after the expiry of the time limit for opposition, it was cited and
acknowledged in the European patent as the closest prior art for the purpose of
formulating the technical problem set out in the description. A document of this kind
formed part of the opposition or opposition appeal proceedings even if it was not
expressly cited within the opposition period. For a different view, see T 234/90, T 300/90
and T 501/94 (OJ 1997, 193), where the board also went on to say that a document
indicated in a citation as the closest prior art for the purpose of elucidating the technical
problem set out in the citation did not automatically form part of the opposition or
opposition appeal proceedings if not expressly cited within the opposition period.
Regarding this issue, the board commented in T 387/89 (OJ 1992, 583) on the scope of
the principle of ex officio examination under Art. 114(1) EPC in opposition proceedings.
The board of appeal invoked this principle to introduce two documents which were
mentioned in the search report but were not specifically cited by the opponents, and on

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the basis of these documents the appeal against the revocation of the patent was
dismissed. In the board's view, neither an opposition division nor a board of appeal had
any duty to reconsider the relevance of documents cited in the European search report if
such documents had not been relied upon by the opponents to support their grounds of
opposition. Under Art. 114(1) EPC, however, an opposition division or appeal board may
introduce new documents into the opposition proceedings if it has good reason to
suppose that the documents could affect the outcome of the decision. In T 588/89 the
board similarly introduced a document into the appeal proceedings under
Art. 114(1) EPC, because, in its view, the document reflected the closest prior art and
raised doubts as to whether an inventive step had taken place.
In T 219/92 a document cited in the search report had to be taken into consideration in
view of its relevance. The board also considered it justifiable to exercise its discretion
under Art. 111(1) EPC to decide the case having regard to this document, since the
responsibility for the late citing lay with the respondents and the decision was not to the
appellant's disadvantage.
In T 541/98, document 4 - referred to in the introduction of the patent in suit - had not
been cited by the opponent or considered by the opposition division, and was mentioned
for the first time by the board after the opposition proceedings. The appellant (patent
proprietor) felt that was at odds with the judicial nature of proceedings before the boards.
The board took the view that document 4 was not new because it formed part of the
patent specification. What was new was the argument based on this document, and a
board could always put forward its own arguments.
7. Remittal to the department of first instance
VI.F.7. Remittal to the department of first instance

7.1. General
If a new citation (such as an anticipatory document) is filed during opposition appeal
proceedings, the question arises whether the case is to be remitted to the department of
first instance. In board of appeal case law (see T 258/84, OJ 1987, 119; T 273/84,
OJ 1986, 346; T 621/90, T 166/91, T 223/95), the prevailing view is that, if a document
filed for the first time in opposition appeal proceedings is relevant enough to be taken
into consideration, the case should as a rule be remitted under Art. 111(1) EPC to the
department of first instance so that the document can be examined at two levels of
jurisdiction and the patent proprietor is not deprived of the possibility of subsequent
review. However, it is established board of appeal practice that where the board comes
to the conclusion that the document is not such as to prejudice the maintenance of the
patent, the board may itself examine and decide the matter under Art. 111(1) EPC
(T 326/87, OJ 1992, 522; T 416/87, OJ 1990, 415; T 457/92, T 527/93, T 97/90,
OJ 1993, 719).
In T 1070/96 the board stated that even though as a rule, a case should be remitted to
the department of first instance, if a new document is so relevant that it has considerable
influence on the decision to be taken, a remittal is, however, not appropriate if the board
is able to deduce from the reasoning of the decision under appeal how the opposition
division would have decided had it known the late filed document.
In T 111/98 a respondent introduced a new document during the appeal proceedings.
The board admitted the document into the proceedings. In response to the late filing of
the document, the appellant considered it necessary to amend the claims and requested

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that the case be remitted to the department of first instance. Since the board felt that this
new document was not likely to play a decisive role for the issue of the claims' inventive
step, it decided not to remit the case to the first-instance department. Amendment of the
claims in response to the citation of a new document during appeal proceedings is not as
such a sufficient reason to remit the case to the department of first instance. Remittal
remains at the discretion of the board.
In T 611/00 the appellant relied on the same grounds of opposition as it did at first
instance, but it based its appeal on completely new evidence. The board held that in
order to admit this new evidence it had to balance two demands of public interest, that of
procedural fairness and that of preventing unwarranted monopolies. If the board found
that the documents should be taken into account, it had to ensure that the respondent
received fair procedural treatment in the further conduct of the case. Therefore the
request for the case to be remitted to the department of first instance had to be allowed.
In T 736/01 the board said that since it was not the function of an appeal to examine and
decide upon a fresh case resulting from the newly submitted and admitted prior art (see
T 26/88, OJ 1991, 30; T 611/90), it would exercise its discretion under Art. 111(1) EPC
and remit the case to the opposition division.
In T 361/03 the board admitted into the proceedings a document submitted by the
appellant (opponent) one month before the oral proceedings. This had, however, the
concomitant effect of fundamentally altering the factual framework of the case under
appeal compared with that upon which the opposition division's decision had been based
and with which the respondent (patent proprietor) was prepared to deal. The board
therefore judged that remittal to the department of first instance for further prosecution as
requested by the respondent and not opposed by the appellant was justified. This had
the twofold purpose of allowing this fresh case to be examined at two levels of
jurisdiction and of giving the respondent a reasonable opportunity to consider possible
fallback amendments and possible evidence that could be produced in defence of such
amended requests.
The appropriateness of remittal to the department of first instance is a matter for decision
by the boards of appeal, which assess each case on its merits.
7.2. Patent in jeopardy
In T 326/87 (OJ 1992, 522) the board added that remittal to the department of first
instance is particularly desirable if the new citation puts the maintenance of the patent at
risk: where this is not the case, the board itself may decide on the matter, as for example
in T 253/85, T 49/89, T 565/89 and T 881/91.
In T 638/89 the board of appeal followed this line of argument in remitting the case to the
opposition division because a document cited for the first time in the statement of
grounds for appeal was highly relevant and should therefore be admitted into the
proceedings.
That remittal is not automatic where the patent is at risk is shown by T 1060/96. In this
case a document (E4) had been submitted by the appellant (opponent) during the appeal
procedure and one year prior to oral proceedings. The respondent had not challenged
consideration of the document. It did however ask that the case be remitted to the
department of first instance. The board found that remittal was not justified: the

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respondent had had over a year to study the document, and its relevant part was
technically very simple and merely reinforced the teaching of known documents. So it
was not a new fact which went beyond the facts, evidence and arguments put to the first-
instance department. The board revoked the patent.
7.3. New facts
In T 125/93, where a highly relevant document was filed by the patentee shortly before
the date appointed for oral proceedings, the board admitted it into the proceedings
pursuant to Art. 114(1) EPC, which had the concomitant effect of altering the factual
framework of the case under appeal compared with that upon which the decision under
appeal had been based. The legal consequence of such a shift in the framework being
well settled, and there being no "special reasons" of the kind referred to by the Enlarged
Board in G 9/91 and G 10/91 (OJ 1993, 408 and 420), the board referred the case back
to the opposition division for further prosecution.
In T 611/90 (OJ 1993, 50) the appellants (opponents) presented an entirely fresh case -
based on public prior use instead of the previously-cited ground of prior publication - in
their statement of grounds for appeal. The board explained that it may, subject to the
circumstances, be inappropriate for an appeal board to deal itself with the allowability of
such an appeal, raising as it does a case quite different from that on which the contested
decision is based. The public's and the parties' interest in having the proceedings
speedily concluded may then be overridden by the requirement that appeal proceedings
should not become a mere continuation of first-instance proceedings. To ensure fairness
to both parties, the board remitted the case to the opposition division. It admitted the
late-filed material into the proceedings but decided that the party responsible for the late
submission should bear all the additional costs arising from it (see also T 847/93).
In T 97/90 the board referred to T 611/90 and confirmed that if fresh evidence,
arguments or other matter filed late in the appeal proceedings raised a case substantially
different from that on which the contested decision was based, the case should be
remitted to the department of first instance where this was demanded by fairness to both
parties. However, this did not imply that all cases in which a new ground of objection was
raised late in the appeal must be remitted to the department of first instance. On the
contrary, this should only be done if the admission of the new ground into the appeal
proceedings would lead to revocation of the patent.
In T 852/90 the board of appeal acceded to a request from the appellants (opponents)
for permission to introduce fresh evidence at the start of oral proceedings. The board
confirmed that where a case on appeal turned out to be different from - or dissimilar to -
the case decided by the department of first instance, it should be remitted to that
department, pursuant to Art. 111(1) EPC. In the case in point, however, the late-filed
evidence amounted to no more than an amplification - albeit a significant one - of the
case already canvassed before the opposition division. The board therefore decided that
there was no need to remit the case.
8. Apportionment of costs
VI.F.8. Apportionment of costs

According to board of appeal case law, if a party introduces important facts or evidence
at a late stage of the proceedings, without cogent reasons for the delay, this may be
taken into account in the apportionment of costs (see T 117/86, OJ 1989, 401; T 326/87,

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OJ 1992, 522; T 97/90, T 611/90, OJ 1993, 50; T 110/91, T 705/92, T 847/93, T 1016/93
and T 574/02).
If the reasons for the late citing of a document do not point towards negligence or other
circumstances that would amount to an abuse of procedure, there is no reason of equity
which would justify an apportionment of costs in the other party's favour (T 1016/93).
The board in T 874/03 ruled that when late filing of facts and evidence necessitated
remitting the case to the department of first instance, the costs of any oral proceedings in
the appeal proceedings were normally to be borne by the party responsible for the late
filing. The filing of document D4 for the first time during the oral proceedings, and its
subsequent admission into the proceedings, would inevitably increase the costs to be
incurred by the appellant (patent proprietor) in defending his patent, compared with the
normal costs he would have incurred if D4 had been filed in due time. Such late
submission was not justified by a change in the subject of the proceedings. Therefore it
was equitable in the case at issue that the expenses (travelling and accommodation
costs for the appellant's two participants) incurred by the appellant (not acting through a
professional representative) in connection with the oral proceedings in the appeal should
be borne by the respondent.
With regard to the apportionment of costs, see in particular Chapter VII.C.8.
G. Divisional applications
Divisional applications

1. Procedural questions
VI.G.1. Procedural questions

1.1. Introduction
The most important rules on European divisional applications are laid down in Art. 76
and R. 25 EPC. The divisional application is accorded the same filing date as the parent
application and benefits from any right of priority of the parent application in respect of
the subject-matter contained in the divisional application. A European application may
give rise to more than one divisional application. A divisional application may itself give
rise to one or more divisional applications. As soon as it has been validly filed, a
divisional application is examined entirely separately from the parent application and
must satisfy the various requirements of the EPC on its own merits (see Guidelines C-
VI, 9.1 and A-IV, 1 - June 2005 version; see also Notice dated 9.1.2002 concerning
amendment of R. 25(1), R. 29(2) and R. 51 EPC, OJ 2002, 112; see also Chapter
III.F.1).
In T 1177/00 (see also T 1176/00) the appellant (opponent) requested that the
proceedings be stayed until the parent case had been finally settled. The board stated
that the earlier (parent) application did not have procedural priority. Apart from being
deemed to have the filing date and priority date of the earlier application and having to
meet the requirements of Art. 76 EPC, a divisional application was an application like
any other; in particular, it did not have a subordinate procedural status.
In T 1184/03 the appellant requested, in the oral proceedings, that delivery of the
decision be postponed with a view to filing a divisional application. The board stated that
the case was ready to be decided at the oral proceedings. Postponing the decision of the
board to allow the filing of a divisional application would run counter to the public interest
in having the matter decided as expeditiously as possible, because the matter ready to
be finally decided by this board would be pending again.

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1.2. Rule 25(1) EPC

1.2.1 General
Under R. 25(1) EPC (in the version dated 2 January 2002), the applicant may file a
divisional application in relation to any pending earlier European patent application. An
application is pending up to (but not including) the date on which the European Patent
Bulletin mentions the grant of the European patent or up to the date on which the
application is refused, withdrawn or deemed withdrawn (see Notice of 9.1.2002,
OJ 2002, 112).
In J 24/03 (OJ 2004, 544) the appellant argued that he had missed the time limit for filing
a divisional application provided for by R. 25(1) EPC. The board stated that
R. 25(1) EPC did not impose any time limit for filing a divisional application, but rather set
a condition, namely that the earlier European patent application was pending.
Art. 122 EPC was therefore inapplicable to the filing of a divisional application, since no
time limit within the meaning of Art. 122 EPC was set in R. 25 (1) EPC (see also J 21/96
and J 10/01).
In J 18/04 (OJ 2006, 560) the board added that the term "pending ... patent application"
in R. 25(1) EPC did not establish a time limit, but rather a substantive requirement which
had to be fulfilled at the point when a divisional application was filed. A board had no
power to exempt an applicant from compliance with this substantive requirement. No
substantive rights were established in a divisional application before the actual filing date
of the divisional application. Substantive rights which were lost in the parent application
could not be re-established in the divisional application by applying Art. 122 EPC.
1.2.2 Filing period
(a) Legal position after 2 January 2002
In J 4/99 the Legal Board of Appeal held that the latest version of R. 25(1) EPC (of 2
January 2002), according to which the applicant may file a divisional application relating
to any pending European patent application, could not be applied retrospectively.
In J 7/04 the Legal Board did not share the applicant's view that a divisional application
may be filed at the latest on the date of the publication of the mention of the grant of the
parent application. The board referred to J 7/96 (OJ 1999, 443) and J 10/01 and stated
that the examining division's decision to grant a patent does not take effect on the date
on which the decision-making process is completed, but on the date on which the
European Patent Bulletin mentions the grant. In the interim period, ie between the
decisions to grant the patent and the publication of the mention of the grant, the
application is deemed to be still pending before the EPO. Once the grant of the patent
has been mentioned, the earlier procedure is terminated and the application is no longer
pending. Thus, the date after which the applicant is no longer allowed to file a divisional
application is that on which the European Patent Bulletin mentions the grant of the earlier
patent because on that date the patent is deemed to be outside the EPO's jurisdiction,
and a divisional application could not be filed on the same date because the application
is definitively removed from the EPO's sphere.
In J 28/03 (OJ 2005, 597) the Legal Board of Appeal confirmed that an application was
pending up to (but not including) the date on which the European Patent Bulletin
mentioned the grant of the European patent, or until the date on which the application

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was refused, withdrawn or deemed withdrawn; if notice of appeal was filed against the
decision to refuse, a divisional application could still be filed while appeal proceedings
were under way (see Notice dated 9.1.2002, OJ 2002, 112). The logical idea behind the
Notice of the EPO concerning the amendments of R. 25(1) EPC, which stated that only
an appeal against a refusal of the patent application would allow the filing of a divisional
application, was to enable a party to file a divisional application independently of the
outcome of the appeal, in other words even if the refusal of the "parent application" were
to be confirmed by the board of appeal the divisional application would have its own and
independent examining procedure. On the other hand, an appeal against a decision
granting a patent and resulting in publication of the grant of the patent would be
expected to be inadmissible under Art. 107, first sentence, EPC and should therefore not
enable the applicant to file a divisional application even during the appeal procedure.
This could also be understood as a means of preventing abusive appeals based on
artificial construction of pending "parent applications". Thus, the status of a divisional
application filed while an appeal was pending against the decision to grant a patent
pursuant to the parent application depended on the outcome of that appeal. Therefore,
the department of first instance could not decide on the question whether the divisional
application had been validly filed until the decision of the board of appeal on the appeal
was taken.
(b) Legal position prior to 2 January 2002
Under R. 25(1) EPC (in the version which entered into force on 1.10.1988), a divisional
application could be filed only up to the date on which the applicant approved the text in
which the patent was to be granted under R. 51(4) EPC (in the version which entered
into force on 1.9.1987). Only a brief overview of the extensive case law on that previous
version of R. 25(1) EPC is given below. For more information, see "Case Law of the
Boards of Appeal of the EPO", 4th edition 2001, p. 411 et seq.
In its opinion G 10/92 (OJ 1994, 633) the Enlarged Board of Appeal concluded that an
applicant could only file a divisional application relating to the pending earlier European
patent application up to the date of approval in accordance with R. 51(4) EPC.
Art. 76(3) EPC contained a general authorisation to specify the procedure for filing
European divisional applications. This general authorisation also allowed the
Administrative Council to determine the point in time up to which a European divisional
application could be submitted. R. 25 EPC was therefore consistent with Art. 76(3) EPC
and hence was also reasonable and appropriate.
In J 36/92 the appellant approved the text of the patent application according to
R. 51(4) EPC, stating in the same letter, "We have today filed a divisional application
including ...." However, the divisional application reached the EPO one day after the
applicant's letter. The board stated that where an applicant approved the text of a
European patent application pursuant to R. 51(4) EPC and in the same letter stated that
he had that day filed a divisional application, the filing of the divisional application should
be allowed, whether or not it was actually received by the EPO together with the letter
(see also J 27/94, OJ 1995, 831).
In J 29/96 (OJ 1998, 582) the board held that where consent has been given to the text
of an earlier application pursuant to R. 51(4) EPC, then withdrawal of this consent for the
sole purpose of filing a divisional cannot re-open the period in which a divisional
application can be filed (see G 10/92, OJ 1994, 633).

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1.3. Designation of contracting states in a divisional application

According to Art. 76(2) EPC, the European divisional application shall not designate
contracting states which were not designated in the earlier application.
In G 4/98 (OJ 2001, 131), the Enlarged Board of Appeal found that there was no support
under the European patent system for the view that a failure to pay designation fees in
due time had the effect that the designations disappeared retroactively as if they had
never existed. On the contrary, the board pointed out that the wording of Art. 78(2) and
Art. 79(2) EPC and the system clearly indicated that up to the due date for payment of
the designation fees, the designations had full effect. Only if the designation fees were
not paid in due time would the designations not have any effect with respect to acts to be
performed after that date, such as the filing of a divisional application. Retroactivity of the
effects of non-payment of designation fees would occur only where the EPC explicitly
provided for it, ie in the case of provisional protection (Art. 67(4) EPC).
The applicant might designate all contracting states designated in the parent application
in the divisional application, and he might proceed with all of them even if in respect of
the parent application he later paid only some or no designation fees. This was in line
with the fact that the procedure concerning the divisional application was in principle
independent from the procedure concerning the parent application and that the divisional
application was treated as a new application. Although there are some connections
between the two procedures (eg concerning time limits), actions (or omissions) occurring
in the procedure concerning the parent application after the filing of the divisional
application should not influence the procedure concerning the latter. Moreover, the
applicant was not forced into the senseless act of paying designation fees for a parent
application in which he had lost all interest. This supersedes the decision in J 22/95
(OJ 1998, 569), according to which failure to pay a designation fee rendered the
designation void ab initio.
In J 40/03 the appellant asked to designate Sweden in a divisional application filed after
the time limit for payment of designation fees on the parent application had expired.
Sweden was designated in the parent application as filed but no designation fee for that
state had been paid. The board confirmed the established case law (J 25/88,
OJ 1989, 486; J 19/96, G 4/98, OJ 2001, 131) and summarised that the designations in
a parent application, all or some of which may be designated in a divisional application,
were those in the parent at the time of filing of the divisional application. If the time limit
for paying the designation fees for the parent had not expired, there would be complete
identity of potential designations since all the deemed precautionary designations of the
parent would be available to the divisional. However, if that time limit had expired and
designation fees had been paid for fewer states than those originally designated in the
parent, then the divisional could only designate some or all of those states which
remained designated in the parent; other states formerly designated in the parent were
deemed withdrawn by virtue of Art. 91(4) EPC, and thus deemed never to have
benefitted from any provisional protection by virtue of Art. 67(4) EPC. Art. 76(2) EPC
should be interpreted as "all states validly designated in the parent may also be
designated in the divisional".
In J 1/05 the applicant had paid the designation fee only in respect of Italy and did not
file the divisional application designating all the EPC contracting states until after the
normal time limit for payment of designation fees for the parent application. The board

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confirmed G 4/98 (OJ 2001, 131), in which it was held that only such states as were
already designated in the parent application could be designated in a divisional
application, or, in the event that the designation fee for the parent application had not
been paid, those for which the normal period for payment of the designation fee had not
yet expired. After expiry of that period, the provisional designation of any other
contracting states was deemed to be withdrawn and the right to designate further states
was lost. Moreover, no right to valid designation of new states in the divisional
application could be derived from the fact that an appeal was pending against a
notification of a loss of rights under R. 69 (2) EPC in relation to the parent application.
The divisional application could therefore claim territorial validity only for Italy.
1.4. Right to file a divisional application
In J 2/01 (OJ 2005, 88) the board held that joint applicants only acquired the procedural
status of one applicant in common, ie they constitute a single party in the legal sense.
Therefore, where an application (the "earlier application") had been filed jointly by two or
more applicants and the requirements of Art. 61 EPC or R. 20(3) EPC had not been met,
the right to file a divisional application in respect of the earlier applications under
Art. 76 EPC was only available to the registered applicants for the earlier application
jointly and not to one of them alone or to fewer than all of them.
The case underlying decision J 34/86 concerned a very particular set of circumstances
where the Legal Board of Appeal allowed an application to be filed as a divisional
application by a party other than the registered applicant for the parent application. The
applicant for the parent application had been ordered by a US court to assign all property
rights in the invention defined by certain claims of the parent application to the applicant
for the divisional application, and the applicant for the parent application had already
signed an assignment to that effect.
1.5. Correction of errors
In J 17/97 and J 18/97 the representative had filed the parent application in the name of
Int. Inc., but the divisional application in the name of S.medica. Due to the different
identities of the applicants, the Receiving Section had refused to treat the application as
a divisional application. In its decisions, the Legal Board did not allow the request for
correction to replace the name of the applicant of the divisional application with the name
of the applicant of the parent application pursuant to R. 88 EPC because the appellant
had not proved that the divisional application had been filed in error by S.medica and
should have been filed by Int. Inc. R. 88 EPC may not be used to enable a person to give
effect to a change of mind or to a subsequent development of plans.
In T 1008/99, the request for correction of errors concerned a European divisional
application which had been filed with a wrong description unrelated to the earlier (parent)
application. The wrongly filed description was therefore to be replaced by the description
of the parent application. The board held that, for the purposes of R. 88 EPC, the error
had to be apparent from the divisional application itself, and the parent application
could not be used to demonstrate that the error was obvious. Even if it was apparent
from the filed description, claims and drawings that they did not belong together, it was
not immediately clear from the divisional application itself which of these parts was
incorrect. For that reason alone, the correction requested under R. 88, second sentence,
EPC was not allowable.

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H. Rules relating to Fees

Rules relating to Fees

1. Payment of fee
VI.H.1. Payment of fee

1.1. Incorrect debit orders

Under Art. 5(2) and Art. 8(2) RRF the EPO has opened deposit accounts for the
settlement of fees and costs of other services provided by the EPO (see consolidated
version of the respective regulations in the Ancillary Regulations to the EPC, Edition
2006, Art. 5(2) RRF).
In some early decisions of the boards of appeal it was held that the EPO must execute a
debit order in accordance with the substance of that order where the intention was clear,
even though the amount specified was clearly incorrect - see, eg T 152/82 OJ 1984, 301)
or a national form used in error, as in T 170/83 (OJ 1984, 605). A statement that a debit
order for payment of a fee had been issued was itself considered such a debit order in
the absence of any record of the original in T 17/83 (OJ 1984, 307),
However, in T 79/01, where less than half of the appeal fee had been paid, the board
disagreed with this argument in the light of the established case law of the Enlarged
Board of Appeal. The board pointed out that the appeal procedure was a judicial
procedure (G 9/91, OJ 1993, 408; G 8/91, OJ 1993, 346; G 1/99, OJ 2001, 381). This
implied that the general principles of court procedure applied, such as, in inter partes
proceedings, the principle of impartiality or equal treatment of the parties to the
proceedings. Nor did the clear wording of Art. 108 EPC and Art. 9 RRF support the
argument that in assessing the admissibility of the appeal the indication of the intention
of the appellants was decisive and should prevail over the amount specified in the debit
order. The EPO could not therefore debit a different, much higher amount for the
payment of the appeal fee without violating this principle.
Where the appellant declares the automatic debit order to be "unconditionally revoked"
only after the appeal fee has been debited, this has no consequence regarding the
admissibility of the appeal (T 270/00).
1.2. Designation fees
If the amount paid in respect of designation fees under Art. 79(2), second sentence, EPC
or R. 85a EPC is not sufficient for all the contracting states designated at the time of
payment, the payer must be requested pursuant to Art. 7(2), first sentence, RRF to
select the states he wishes to designate. Application of this provision therefore takes
precedence over Art. 9 (2), second sentence, RRF. Only if the payer does not comply in
due time with this request must Art. 9(2) RRF be applied instead of Art. 7(2), second
sentence, RRF (J 23/82, OJ 1983, 127). (Art. 79(2) EPC has been amended since this
decision, but only in respect of the time limit for payment of the designation fees.)
However, it is not justified for the EPO to proceed according to Art. 9(2), second
sentence, RRF in a case where the applicant has individually indicated the states he has
designated, for which he has paid the corresponding amount in designation fees, and
where, on invitation under Art. 7 RRF, he does not indicate other states for which the
payment should be used but confirms his wish to maintain the original individual
designations (J 19/96). According to the Legal Board of Appeal, the fact that the
designation of the states expressly indicated by the applicant was not possible for legal
reasons was not equivalent to the situation where the applicant had not specified how to

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apply an insufficient overall amount, as referred to in Art. 9(2), first sentence, RRF (as in
J 23/82 above). The designation was still a clear and unequivocal declaration of the
procedural will of the applicant which was binding on the EPO.
1.3. Indication of purpose of payment
In J 19/96 the board noted that J 23/82 (OJ 1983, 127) held that the indication of the
purpose of a payment within the time limit for payment was not a mandatory requirement
for payment to have been made in due time and, according to Art. 7(2) RRF, could thus
still be given later. However, the current board doubted whether this meant that it was
generally possible to change the purpose of a payment after expiry of the relevant time
limit with retroactive effect to the date on which the payment was made.
1.4. Methods of paying
The remittance of German Patent Office fees vouchers does not comply with Art. 5 RRF
and thus cannot be regarded as payment of a fee (T 415/88). Nor can payment in cash
of the appeal fee at the German Patent and Trade Mark Office (DPMO), instead of the
EPO, be accepted (T 1029/00). The administrative agreement of 29 June 1981 between
the two offices concerning procedure on receipt of documents and payments
(OJ 1981, 381) as amended on 13 October 1989 (OJ 1991, 187), covers only those
forms of postal delivery actually specified in the agreement and cannot be interpreted
more broadly. Pure cash payments are not the same as payment enclosures because
they are not delivered as mail. They are more like documents brought by hand, which
under Art. 1(4) of the 1989 agreement could not be accepted by the DPMA for the EPO.
2. Date of payment
VI.H.2. Date of payment

Art. 8 RRF as amended stipulates that the date on which payment shall be considered to
have been made shall be the date on which the payment is "actually" entered in an
account held by the EPO (for a summary of the previous case law on this matter, see
J 24/86, OJ 1987, 399).
Under Art. 8(3) RRF, the period for payment of a fee is considered to have been
observed even if payment is not received until after expiry of the period in which it should
have been made, on condition that certain requirements are met (see T 842/90 for an
application of this Article).
Under Art. 8(1)(a) RRF, where an amount is transferred to a bank account, the date on
which the amount of the payment or transfer is actually entered in the EPO's bank
account is considered to be the date on which the payment has been made to the EPO.
Thus, where an appeal fee is mistakenly transferred to a bank account held by the
German Patent Office (GPO), neither the date on which the transfer is entered in the
GPO's account nor the date on which the order to transfer the amount to the GPO is
issued may be taken into account to establish whether a fee due to the EPO has been
paid in due time (T 45/94 and T 1130/98). The boards pointed out that, in the
Administrative Agreement between the German Patent Office and the EPO concerning
procedure on receipt of documents and payments dated 29.6.1981, as amended on
13.10.1989 (OJ 1991, 187), there are no provisions regarding the passing on of the
payment or notification of the EPO for erroneous bank transfers. Sums of money payable
to the EPO and paid into one of the accounts held by the German Patent Office are,
under the terms of the Administrative Agreement, repaid to the payer (J 49/92). On the

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other hand, according to Art. 1(5) of the Administrative Agreement, payments sent by
post to the GPO are accepted on behalf of the EPO and set aside for daily collection by
an EPO employee.
Similarly, the use of a private courier to deliver a cheque (which did not arrive until after
expiry of the relevant time limit), could not be considered as equivalent to the use of the
postal services. The courier in question was not recognised as a delivery service
equivalent to the postal service until later, by a decision of the President of the EPO
dated 11 December 1998 (OJ 1999, 45) and this provision could not have retroactive
effect (J 13/98).
3. Small amount lacking
VI.H.3. Small amount lacking

Under Art. 9(1), first sentence, RRF, a time limit for payment is in principle deemed to
have been observed only if the full amount of the fee has been paid in due time.
However, the EPO is given the discretion, where this is considered justified, to overlook
any small amounts lacking without prejudice to the rights of the person making the
payment (Art. 9(1), fourth sentence, RRF).
The justification for overlooking a small fee underpayment has been considered by the
boards of appeal in several cases. In T 130/82 (OJ 1984, 172) the board decided that it
was justified to overlook an underpayment of just over 10%. In J 11/85 (OJ 1986, 1) the
board stated that an underpayment of about 10% may as a rule be considered as a small
amount (see also T 109/86 of 20.7.1987). See also T 343/02, where the underpayment
of less than 2% due to the unexpected deduction of bank charges was overlooked.
In T 290/90 (OJ 1992, 368) the board found that this question must be decided on an
objective basis, having regard to all the relevant circumstances of the case, and not on a
subjective basis. It held that in the circumstances of that case 20% of the opposition fee
could properly be regarded as a small amount, because it was inappropriate to punish
the appellant for contending he was entitled to a reduction in the opposition fee (under
R. 6(3) EPC) and the missing 20% was paid soon after expiry of the period.
However, in T 905/90 (OJ 1994, 306, Corr. 556) the board found that the meaning of
'smallness' could best be determined by comparing the amount of shortfall with the
amount of the full fee. A difference of 20% clearly could thus not, on purely arithmetical
grounds, be regarded as small. It was with very small or trifling amounts that
Art. 9(1) RRF was designed to deal so as to prevent a loss of rights where an inadvertent
error of some kind had led to a slight underpayment of an amount due in respect of the
relevant proceedings.
In J 27/92 (OJ 1995, 288) the examination fee was underpaid by about 20%, amounting
to DEM 560. Distinguishing T 905/90, the board defined the concept of a "small amount
lacking" in Art. 9(1) RRF as a fixed proportion of the amount of the particular fees to be
paid. At most, 20% of the fee to be paid might be regarded as small within the meaning
of the said provision. Moreover, the choice of 20% as the percentage to be considered a
"small amount" would achieve the desirable end of making it possible to apply
Art. 9(1) RRF to cases where a party paying fees mistakenly sought to take advantage of
the 20% reduction in fees available in relation to Art. 14(2) and (4) EPC under
R. 6(3) EPC and Art. 12 RRF. In the case in point the board decided that it was justified
to overlook the deficit as the applicant not only paid it without delay, but also appeared to

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have been misled into paying only 80% of the fees as a result of information provided by
the EPO.
I. Procedural steps
Procedural steps

1. General principles
VI.I.1. General principles

A procedural step is an act, performed by a party to the proceedings, which falls under
procedural law as regards the conditions governing it and its effect, and which influences
the course of the proceedings. The decisions of the boards of appeal have developed a
number of principles regarding procedural steps:
In proceedings before the EPO a distinction can be made between two kinds of
procedural step: those affecting the scope, subject-matter and effect of the requested
decision, and those affecting the form of the proceedings. This chapter looks at general
principles applying to both types of procedural step. The special features relevant to
opposition and appeal statements, to requests for a different apportionment of costs,
reimbursement of the appeal fee and appointment of oral proceedings, and to the filing of
amended claims are dealt with in the appropriate chapters.
To be effective, declarations regarding procedure need, in the interests of legal certainty,
to be clear, particularly - because of their consequences - declarations terminating the
proceedings; ambiguous declarations are ineffective (J 11/94, OJ 1995, 596). This was
confirmed in J 27/94 (OJ 1995, 831), where it was also stated that this implies that a
procedural declaration must not be subject to any condition, leaving it open whether the
EPO can proceed further on the basis thereof. The applicant had approved the text of
the patent under R. 51(4) EPC yet also stated his intention to file a divisional application
in due course, although, according to G 10/92, a divisional application can only be filed
up to this approval. Thus the approval should not have been treated as valid.
There is also a general interest in the reliability of procedural declarations of the parties,
particularly declarations which open a new procedure. Thus someone who performs the
required acts acquires the status and the procedural rights of a party, eg as applicant,
opponent or appellant, on the date of completion of the necessary requirements.
Procedural declarations cannot be negated on the basis of instructions not yet known to
the representative when acting vis-à-vis the EPO (T 309/03, OJ 2004, 91; in this case a
representative filing an appeal unaware that the applicant did not wish to appeal). Nor
are procedural statements valid if they are filed by a person who is not entitled to do so
(J 28/86, OJ 1988, 85). On this basis the approval of the text of a patent application was
held invalid in J 12/95. Both the approval and a divisional application were sent to the
EPO together by courier, as ordered by the representative, but before they had arrived
an employee faxed only the approval to the EPO. The Receiving Section therefore held
the filing of the divisional application to be invalid. However, the board found that there
was convincing evidence that this transmission took place against the express order of
the authorised representative and could not therefore be treated as a valid approval. The
divisional application had to be considered to have been filed within the time limit laid
down in R. 25(1) EPC.
The legal personality of a named entity under the EPC is decided on the same basis as
before national courts, namely the capacity to sue or to be sued in its own name and on
its own account (G 3/99, OJ 2002, 347).

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 VI.I.2. Signatures

According to T 212/88 (OJ 1992, 28) all requests by parties, including any request for
apportionment of costs, should be made before announcement of the decision at the
conclusion of oral proceedings. In T 552/97 the board ruled that, before issuing its
decision, the department responsible should clarify the position, ascertaining exactly
what was requested and verifying the correctness of its assumption that a request had
been withdrawn. An objective lack of clarity at the end of the oral proceedings constituted
a substantial procedural violation. Requests relating to ancillary proceedings (eg
apportionment of costs) remain pending, even if the appeal is withdrawn (T 265/93 and,
similarly, T 789/89, OJ 1994, 482).
Procedural statements are open to interpretation (G 9/91, OJ 1993, 408). Statements
filed during proceedings before the department of first instance are not valid in the
subsequent appeal proceedings (see T 34/90, OJ 1992, 454; T 45/92, T 501/92,
OJ 1996, 261).
2. Signatures
VI.I.2. Signatures

In J 25/86 (OJ 1987, 475), the board held that the signing of the authorisation is to be
considered to be the legal act from which an application ultimately originated.
In T 960/95, the board ruled that under R. 61a EPC in conjunction with R. 36(3), first
sentence, EPC, an opposition had to be signed. A missing signature was a deficiency
which could be remedied under R. 36(3), second sentence, EPC. According to T 850/96,
the same had to apply to signatures which were not legible. An opposition signed by a
non-authorised third party should be treated like an unsigned one (T 665/89).
3. Main and auxiliary requests
VI.I.3. Main and auxiliary requests

3.1. Admissibility
In T 382/96 the board stressed that one of the fundamental principles of European patent
law was that responsibility for defining the subject-matter of a patent rested with the
applicant (in opposition proceedings the proprietor). That was clear for example from the
provisions of R. 51(4) to (6) EPC and R. 58(4) and (5) EPC. The applicant (patent
proprietor) could not offload this responsibility de facto on to the EPO or any other
parties to the proceedings by filing a multitude of requests, let alone incompletely
formulated request variants. Doing so constituted an abuse of procedure, as it
overburdened the EPO and any other parties to the proceedings with work not originally
theirs to perform and thereby hampered the orderly conduct of proceedings.
In T 792/92 the board considered as inadmissible the appellant's request at the end of
the oral proceedings that, should the outcome of the discussions be negative for him, he
be given the opportunity to formulate new requests.
3.2. Examination procedure
According to T 1105/96 (OJ 1998, 249), an applicant had a right both to file one or more
auxiliary requests in addition to a main request, and to maintain all such requests even if
the examining division communicated its view that all except the last auxiliary request
were inadmissible or unallowable, and he was then entitled to a reasoned appealable
decision in respect of rejection of each such request. Where an examining division had
communicated its view that a further request in the form of an amended text of a claim
would be allowable, the rejection in advance of such a further request unless all

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Procedural steps

preceding requests were abandoned was an unlawful exercise of discretion under

R. 86(3) EPC and a substantial procedural violation under R. 67 EPC (see T 155/88).
In T 549/96 it was noted that Art. 113(2) EPC required the examining division to decide
upon an application only in the text agreed by the applicant. Thus an applicant had to
indicate clearly at the end of the proceedings which text he wished to be used. If an
applicant failed to indicate his approval of the text of an allowable subsidiary request, eg
by express disapproval or by maintaining one or more unallowable higher-preference
requests over one considered allowable by the examining division, the examining
division could refuse the application under Art. 97(1) EPC.
The board contrasted opposition and grant proceedings. In the case of an allowable
auxiliary request in opposition proceedings an interlocutory decision was taken under
Art. 106(3) EPC to the effect that the European patent met the requirements of the EPC,
account being taken of the amendments made by the patent proprietor. This interlocutory
decision then also had to include the reasons why the preceding requests did not meet
the requirements of the EPC. This saved the proprietor the further costs of fulfilling the
formal requirements under R. 58(5) EPC before there was a final decision on the version
in which the patent could be maintained. No comparable situation existed in grant
proceedings. On the contrary, in ex parte appeal proceedings the principle of
examination ex officio applied. Up to the grant stage it had to be ensured that the
conditions for patentability were met. An interlocutory decision, stating that the
application in a certain version met the requirements of the EPC, would be in conflict with
this purpose. The board drew attention to Legal Advice No. 15/98 (OJ 1998, 113).
3.3. Opposition procedure
According to T 234/86 (OJ 1989, 79), the opposition division can - and in certain
circumstances must - maintain the patent as per the patentee's subordinate auxiliary
request if he pursues main and auxiliary requests which are not allowable although
taking precedence over the allowable one. Rejection of the requests which take
precedence must be substantiated (see also T 488/94).
In T 5/89 (OJ 1992, 348) the board confirmed that a decision may confine itself to
rejecting the main request only if all subordinate requests have been withdrawn. This
principle was also confirmed in T 785/91.
4. Maintenance in the case of prior European rights
VI.I.4. Maintenance in the case of prior European rights

In T 117/90, during the opposition and appeal proceedings, a European patent

application was found to be part of the state of the art under Art. 54(3) and (4) EPC and
thus caused lack of novelty for all the designated states except Austria and Luxembourg.
The board revoked the contested patent for all states, including Austria and Luxembourg,
on the grounds that the respondents had requested only the rejection of the opponents'
appeal and not the maintenance of the patent in Austria and Luxembourg (see also
T 796/90).
In comparable situations maintenance of the patent for some of the originally designated
states was examined by the boards. This was the case in decisions T 622/89, T 368/90,
T 755/90 and T 806/90 on the basis of requests to that effect from applicants or
patentees, some of whom had submitted separate sets of claims for the various (groups
of) states.

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 VI.J.1. Withdrawal of patent application as a whole

J. Withdrawal of application and surrender of patent

Withdrawal of application and surrender of patent

1. Withdrawal of patent application as a whole

VI.J.1. Withdrawal of patent application as a whole

A valid notice of withdrawal which has been received at the EPO is binding on the
applicant, although, in the case of withdrawal by mistake, R. 88 EPC may be applicable
(see Legal Advice No. 8/80, OJ 1981, 6, points 2 and 5).
A request for withdrawal of a European application should only be accepted without
question if it is completely unqualified and unambiguous (J 11/80, OJ 1981, 141). In
J 11/87 (OJ 1988, 367) the board added that where there was even the slightest doubt
as to the proprietor's actual intent such a declaration should be construed as a
declaration of withdrawal only if the subsequent facts confirmed that such had been his
true intent.
In J 15/86 (OJ 1988, 417) the board stated that there was a recognised difference
between passive abandonment and active withdrawal of a European patent application.
Each case in which there was a dispute as to the applicant's intention had to be
considered on its own facts. A written statement by the applicant or his representative
had to be interpreted in the context of the document as a whole and the surrounding
circumstances. Similarly, J 7/87 (OJ 1988, 422) ruled that the language used had to be
interpreted in the light of the surrounding circumstances, from which it had to be clear
that the applicant really wanted immediate and unconditional withdrawal rather than
passive abandonment leading in the course of time to deemed withdrawal. Actual
withdrawal did not depend on whether the applicant had used the term "withdrawal".
In J 6/86 (OJ 1988, 124) the board considered the statement "the applicant wishes to
abandon this application" as an unambiguous withdrawal of a European patent
application, since nothing in the circumstances under which the statement had been
made could be taken as qualifying such an interpretation. It is too late to ask for
retraction of a notice of withdrawal once the withdrawal has been notified to the public in
the European Patent Bulletin (see Legal Advice No. 8/80, OJ 1981, 6, point 2; see also
J 15/86, OJ 1988, 417). In this case it was alleged that the withdrawal had been made by
mistake.
In J 4/97, the applicants informed the EPO three days after withdrawal that their request
had been made erroneously and should be cancelled. The EPO, referring to Legal
Advice No. 8/80 (OJ 1981, 6) informed the applicants that the withdrawal had come into
force and was binding, and notification of the withdrawal was later published in the
European Patent Bulletin. However, the board held that the withdrawal of the application
could be corrected under R. 88 EPC. The legal considerations contained in J 10/87
concerning the retraction of a withdrawal of a designation of a contracting state equally
applied to the withdrawal of a patent application as a whole. In particular, it had to be
ascertained that the withdrawal had been due to an excusable error, that here was no
undue delay in seeking retraction, and that the retraction of the withdrawal had not
adversely affected the public interest or the interests of third parties.
In the circumstances of the case at issue, the board held that the fact alone that the
withdrawal was retracted after only three days was a strong indication that it had indeed
been made in error. The error resulted from confusion between two similar reference
numbers assigned by the appellants to their patent applications. In the board's opinion
this mistake could be considered as an excusable oversight. The public interest was not

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Withdrawal of application and surrender of patent

affected because the withdrawal was retracted before the corresponding entry was made
in the Register of European Patents and more than six weeks before the withdrawal was
officially notified to the public in the European Patent Bulletin. The interests of third
parties could be protected if a national court applied Art. 122(6) EPC mutatis mutandis.
In J 14/04 the board agreed with J 10/87 that the public interest lay in being able to rely
on information officially published by the EPO. However, the board took the view that the
Register of European Patents constituted an official publication, and as, at the time of the
request for withdrawal, access to the Register was freely offered to the public on the
Internet, the request for withdrawal was available to the public on the date the Register
indicated the request for withdrawal was recorded. It was of no relevance whether the file
was actually consulted on this date. Nor did the board consider that Art. 122(6) EPC
could apply mutatis mutandis to cases of correction under R. 88 EPC.
Referring to J 14/04 and the other cases discussed above, the Legal Board agreed in
J 25/03 (OJ 2006, 395) that entries in the Register of European Patents also amounted
to notification to the public from the day of their publication. Nor, in the interests of legal
certainty, was it relevant that only four days had elapsed between mention of the
withdrawal in the Register and mention of the request for retraction of the withdrawal.
2. Surrender of patent as a whole
VI.J.2. Surrender of patent as a whole

According to T 73/84 (OJ 1985, 241), the patent proprietor cannot terminate the
proceedings by telling the EPO that he is surrendering the European patent, since this is
not provided for in the EPC. Thus he would only be able, as far as national law
permitted, to surrender the patent vis-à-vis the national patent offices of the designated
contracting states under the relevant national law. If the proprietor states in opposition or
appeal proceedings that he no longer approves the text in which the patent was granted
and will not be submitting an amended text, the patent is to be revoked.
Legal Advice No. 11/82 (OJ 1982, 57) states that a European patent must be revoked
during opposition proceedings (without any further examination as to patentability) if the
proprietor states that he no longer approves the text in which the patent was granted and
does not submit an amended text. Following this Advice and T 73/84, the board stated in
T 186/84 (OJ 1986, 79) that if the patent proprietor requested revocation, the patent was
to be revoked without substantive examination. Under Art. 113(2) EPC, the EPO may
only consider and decide upon a patent in the text submitted to it, or agreed, by the
proprietor. Agreement could not be held to have been given if the proprietor expressly
withdrew approval of the text without submitting an amended text. It followed that the
patent could not be maintained against the will of the proprietor and that he might also
bring about revocation by a direct request.
A direct request suffices, whatever the form of the words, when it is made clear to the
boards that appellant and respondent agree that the patent should be revoked. In this
case, the statement "We herewith abandon the above patent" was held equivalent to a
request for revocation to which the board could accede under Art. 111(1) EPC (T 237/86,
OJ 1988, 261; see also T 347/90). In T 459/88 (OJ 1990, 425) the board added that
there was no public interest in maintaining a patent against the patent proprietor's will.
Regarding the request for revocation of a patent, see Chapter VII.D.11.3.

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 VI.J.3. Abandonment of parts of an application or patent

3. Abandonment of parts of an application or patent

VI.J.3. Abandonment of parts of an application or patent

If an applicant or patent proprietor abandons claims the question arises whether his aim
is the substantive abandonment of the relevant subject-matter of his application or
patent, or whether his intention is to file a divisional application in respect of the
subject-matter involved or whether the action is merely an attempt to reformulate the
claims to take account of objections made by the EPO or an opponent.
3.1. Abandonment with substantive effect
If the abandonment has substantive effect, there is no possibility of reinstating the
abandoned subject-matter, either as part of pending grant or opposition proceedings or
by filing a divisional application. This is the assumption if the relevant parts of the
description are also abandoned.
In T 61/85 the applicant had amended the claims before the examining division and
requested during appeal proceedings that the claims be granted as originally filed. The
board refused this request since the applicant had expressly and unambiguously
abandoned the entire original claim and the relevant parts of the description.
In J 15/85 (OJ 1986, 395) it was held that if an applicant cancels claims in a patent
application but fails to state at the time that their deletion is without prejudice to the filing
of a divisional application, the examining division is obliged to withhold its consent to the
subsequent filing of a divisional application.
However, a declaration of abandonment can be interpreted to the effect that there was
no intention to abandon definitively the subject-matter of the application or patent. In
T 910/92 the applicants had expressly abandoned several claims in their application, but
later retracted their declaration and requested that the claims deleted from the
application be reinstated in a divisional application. The board considered under what
circumstances it was possible to retract a declaration of abandonment. It referred to the
case law, which required that the real intention of the party making the declaration be
established, taking into account all the circumstances of the case, and concluded that in
this case the appellants' real intention was not to abandon part of the original disclosure
altogether, but to avoid the lack of unity that had arisen as a result of the change in the
protection sought. In contrast to the case in J 15/85 the board did not see any need in
this case to protect the public interest by generally prohibiting the retraction of a
declaration of abandonment. It could be expected that any third parties interested in the
proceedings relating to the application in question would have asked to inspect the files
at suitable intervals up until the conclusion of the proceedings.
In J 13/84 (OJ 1985, 34) the board applied the same criteria to the interpretation of a
declaration of abandonment as the case law had developed for declarations of
withdrawal of an application (see above Chapter VI.J.). In particular, all the
circumstances had to be taken into consideration and not just the preceding
declarations. In the case in question the applicants had deleted their claim 21 in
response to a communication from the examining division, adding that "in accordance
with the examiner's suggestion, we are filing a divisional application for the intermediate
products ... and for their method of preparation". The Receiving Section took the view
that the divisional application, with the former claim 21 as its subject-matter, was not filed
within the period of two months prescribed in R. 25(1)(b) EPC (previous version). It
argued that claim 21, which had already been divided out from the application on

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6.6.1983 and therefore no longer formed part of the parent application on 31.8.1983 (the
date of filing of the divisional application), could no longer be converted into a divisional
application. The board did not share this view and called for the declaration of
abandonment to be interpreted in the same way as a declaration of withdrawal of an
application, ie taking into account all the circumstances. It added that, generally
speaking, and as stated in the summary of the Legal Board's decision in J 11/80
(OJ 1981, 141), a request for withdrawal should only be accepted without question if it is
completely unqualified and unambiguous.
The board also referred to decisions J 24/82, J 25/82 and J 26/82 (OJ 1984, 467), in
which it was found that, where claims were withdrawn specifically under R. 25(1) EPC,
the applicant's restrictive intention was not to be interpreted in isolation on the strength of
particular statements but in the context of the entire procedure. The board took the view
that in this case no express intention to drop the claim ensued from the circumstances.
The divisional application was therefore admissible.
In T 118/91 the board ruled that the inclusion of a particular claim in a divisional
application did not mean that claim had been dropped from the parent application.
3.2. Abandonment without substantive effect
The limitation of claims may represent attempts to respond to objections by the EPO or
an opponent without necessarily involving any immediate intentions of substantive
abandonment. In this case the question arises of whether the applicant or patent
proprietor can reinstate broader claims which had been proposed at an earlier stage of
the proceedings.
3.2.1 Examination proceedings
In T 472/91 the board allowed the reinstatement during ex parte appeal proceedings of
claims amended during the examination procedure.
However, aspects of procedural law could present obstacles to the reinstatement of
dropped claims or the filing of a divisional application involving such claims. In T 12/81
(OJ 1982, 296), for example, the application had been refused. In their statement of
grounds of appeal the applicants requested that claim 5 be deleted. During the oral
proceedings, however, the applicants requested that this claim be reinstated in the
application. The board refused this request on the grounds that allowing such a late
request contravened the ratio legis of R. 86(3) EPC in conjunction with R. 66(1) EPC,
which was to prevent proceedings becoming unduly prolonged.
3.2.2 Opposition proceedings
(a) Reinstating broader claims before the opposition division
In T 64/85 during opposition proceedings the patent proprietor had first amended his
claim 1 and then asked as his main request that the patent be maintained as granted.
The opponent was of the opinion that the patent proprietor had, by his amendments,
abandoned certain subject-matter. Since both the opponent and the public ought to be
entitled to trust that this subject-matter was no longer protected, such abandonment
should not be reversible. The board took the view that decision J 15/85 was not
applicable in this case since the amendments here did not affect any embodiment in the
description or the drawings, with the result that they did not unambiguously limit the

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protection originally sought but rather clarified features which were already implicitly
comprised in the description. The board also held that an amendment made before the
opposition division had commented on patentability could not be definitive (see also
T 168/99).
In T 123/85 (OJ 1989, 336) the board stated that during the opposition proceedings the
patent proprietor was entitled to amend a request already made; in particular he could
reinstate the patent in the form in which it was granted, provided this did not constitute
an abuse of procedural law. In requesting that their patent be maintained in a limited
form the patent proprietors were merely trying to delimit their patent to meet objections
expressed by the EPO or the opponents. However, the patent proprietors did not, by
virtue of such limitation, irrevocably abandon subject-matter covered by the patent as
granted but not by the request as thus limited (likewise T 155/88, T 225/88 and
T 715/92).
The view taken in T 123/85 that this also applied to the subsequent appeal proceedings
now only applies to the extent laid down in G 9/92 and G 4/93 (OJ 1994, 875; see below
as well as under Chapter "Appeal procedure").
(b) Reinstating broader claims in opposition appeal proceedings
According to G 9/92 and G 4/93 (OJ 1994, 875), in opposition appeal proceedings the
extent to which the patent proprietor is entitled to make amendments depends on the
result of the first-instance proceedings and on whether the patent proprietor himself filed
an admissible appeal or is merely the respondent (the view taken in eg T 576/89,
OJ 1993, 543; T 770/89 and T 217/90 is thus no longer applicable):
(i) Where the patent proprietor is appealing against the revocation of his patent, he is
entitled to revert to a more broadly worded version of the patent, and in particular the
one as granted, even if he had filed a restricted version at the commencement of appeal
proceedings (T 89/85; T 296/87, OJ 1990, 195; T 373/96, T 65/97 and T 564/98). Should
opposition appeal proceedings reveal that the claims as amended during opposition
proceedings are in breach of Art. 123(3) EPC, the patent proprietor and appellant must
be allowed to abandon this version (T 828/93). The right in principle to reactivate earlier
claims is refused if it appears to constitute an abuse of procedure, as was the case in
T 331/89.
(ii) Where the opposition was rejected and the patent maintained as granted, the
respondent (patent proprietor) can revert to the version as granted, provided he has first
proposed restrictions during the appeal proceedings (T 705/91).
(iii) Where the patent was maintained as amended the patent proprietor who did not
himself file an admissible appeal may, according to G 9/92 and G 4/93 (OJ 1994, 875),
in principle only defend the patent in the form it which it was maintained by the
opposition division in its decision. He may not revert to the version of the patent as
granted (see also T 369/91, OJ 1993, 561). Any amendments he proposes in the appeal
proceedings may be rejected by the board if they are neither appropriate nor necessary,
which is the case if the amendments do not arise from the appeal (see, for example,
T 266/92 of 17.10.1994). According to T 752/93 of 16.7.1996, however, an amendment
made in the course of appeal proceedings to the version as amended by the opposition
division which is appropriate and necessary may not merely restrict this version; it may
also extend it - even in cases where the patent proprietor has not filed an appeal. For the

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limits set on the respondent (patentee) to make amendments see G 1/99 (OJ 2001, 381;
see also Chapter "Appeal procedure").
If however, where the patent is maintained in amended form, the patent proprietor is
himself the appellant, he may in appeal proceedings pursue claims which are broader
than those held to be allowable by the opposition division.
It was however decided that in appeal proceedings the patent proprietor may only pursue
claims which were the subject of the decision at first instance. In T 528/93 the board took
the view that a request containing an independent claim filed earlier in virtually identical
form, then withdrawn during proceedings before the opposition division and hence not
the subject of the contested decision, was not the subject of the appeal, because the
appellant was not adversely affected by such a decision with respect to that request.
Exercising its discretion, the board did not therefore admit this request into the appeal
proceedings (see also T 506/91). However, in T 168/99 the board admitted the main
request into the proceedings although it had previously been withdrawn and had not
been considered by the opposition division. According to the board, an action taken in
opposition proceedings by the patent proprietor before the opposition division had issued
any comments on the relevance of the grounds for opposition should prima facie be
considered as a mere proposal directed to the opponent made with a view to reaching an
early agreement. The wording of the withdrawal ("[revised claims] to replace all the
claims at present on file") neither stated nor implied that the subject-matter was being
abandoned.
3.3. Non-payment of further search fees in the case of lack of unity
According to T 178/84 (OJ 1989, 157) it is clearly the intention of R. 46(1) EPC to regard
subject-matter as abandoned in a particular patent application if, in response to an
invitation according to this rule, the further search fee is not paid for this subject-matter
within the time limit set by that rule. Since a different view was taken in T 87/88
(OJ 1993, 430), the President of the EPO referred the matter to the Enlarged Board of
Appeal which, in G 2/92 (OJ 1993, 591), held that an applicant who failed to pay the
further search fees for a non-unitary application could not pursue that application for the
subject-matter in respect of which no search fees had been paid. He would have to file a
divisional application in respect of such subject-matter. However, non-payment was not
to be equated with the abandonment of parts of the application.
3.4. Non-payment of claims fees
If an applicant fails to pay claims fees, he is considered under R. 31(2) EPC to have
abandoned the claims. Apart from resolving the specific question whether certain parts of
the application were part of the description or were claims, decision J 15/88
(OJ 1990, 445) made clear that such abandonment of certain claims could only cause a
substantive loss of subject-matter if the subject-matter involved was contained only in
the claims and not also in the description or drawings. The board held that an applicant
who declined to pay claims fees when they were demanded ran the risk that features of
a claim deemed to have been abandoned pursuant to R. 31(2) EPC, which were not
otherwise to be found in the description or drawings, could not subsequently be
reintroduced into the application and, in particular, into the claims. The idea that there
could be forced abandonment of subject-matter, in reliance on R. 31(2) EPC, appeared
rather to be in conflict with the principles of higher law to be deduced from
Art. 52(1) EPC in conjunction with Art. 123(2) EPC. An applicant normally had the right to

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derive subject-matter from any part of the description, claims or drawings as originally
filed (see points 6 and 7 of the Reasons). This view has since been confirmed in other ex
parte proceedings, namely T 490/90.
K. Law of evidence
Law of evidence

1. Introduction and definitions

VI.K.1. Introduction and definitions

Before an administrative authority or a court takes a decision, it is required to establish

the existence of the material facts, ie the facts from which, under the relevant legal
provision, the legal effect ensues. The facts are established by taking evidence.
Where the onus is on the parties to present their case, they are required to furnish proof
of the facts they allege, in so far as such facts are disputed. Where the investigative
principle applies, the evidence relating to the facts to be proved must be obtained by the
body which has to take the decision, although the lengths to which it must go are left to it
in the proper exercise of its discretion. The body in question is not bound by mutually
corroborating statements made by parties on opposing sides; it has wide discretion to
decide what evidence to accept and the weight it attaches to it (the principle of unfettered
consideration of the evidence).
Art. 117 EPC and R. 72 to R. 76 EPC contain provisions governing means of giving or
obtaining evidence, the procedure for taking evidence as well as the conservation of
evidence. The boards of appeal have also considered other questions arising in
connection with the law of evidence.
The EPC contains no restrictions with regard to evidence which can be admitted in
proceedings before the EPO. This has been confirmed on several occasions by the case
law of the boards of appeal, which have interpreted the term "taking of evidence"
broadly, applying it not only to the hearing of the oral evidence of parties, witnesses or
experts in accordance with R. 72 EPC but also to the production of documents of any
kind, affidavits and the giving and obtaining of evidence, whatever its form (see
T 117/86, OJ 1989, 401; T 416/87, OJ 1990, 415; T 323/89, OJ 1992, 169; T 314/90). A
"déclaration sur l'honneur" certified by a "notaire" also constitutes admissible evidence,
although its probative value depends on the particular circumstances of the case
(T 301/94).
The term "documents" in Art. 117(1)(c) EPC, which is not elucidated in the EPC, was
defined in T 314/90 as meaning essentially all written documents in which thoughts are
expressed by means of characters or drawings, including published documents.
In T 795/93 the board was of the opinion that a document as a means of disclosing the
state of the art was a means of proof with a variety of functions. It was intended first to
prove what had been made available to the public in the written description it contained,
ie what contribution in the form of information, knowledge, teaching, etc. it made to the
state of the art, and also served to prove when such information had been made
available.
In T 558/95 the board stated that a statutory declaration ("eidesstattliche Erklärung") was
evidence within the meaning of Art. 117(1) EPC and as such subject to the free
evaluation of evidence. It took the place of the sworn statements in writing referred to in
Art. 117 EPC which did not exist as evidence under German law.

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In T 543/95 the board drew a distinction between the terms "evidence" and
"substantiation". The time at which something could be said to have been made
available to the public was substantiated by indication of a date or of a restricted period
and by indication of the means by which the time claimed was established. The purpose
of the evidence was to verify whether the assertion made was in fact correct.
Substantiation did not extend to evidence, even if it was possible for both to coincide
when using written documentation as a means of proof.
2. Admissibility of evidence
VI.K.2. Admissibility of evidence

2.1. No definitive itemisation of admissible evidence

Art. 117 EPC makes no provision for a definitive itemisation of admissible evidence. Nor
does the EPC contain any provisions which say that certain questions of fact may only
be proved by certain forms of evidence. In their case law the boards of appeal have
considered the question of whether the evidence submitted by a party can be admitted
into the proceedings. The assumption here has been that any type of evidence is
admissible for proving any facts.
In G 11/91 (OJ 1993, 125) the Enlarged Board of Appeal stated that evidence of what
was common general knowledge on the date of filing of a patent application may be
furnished in connection with an admissible request for correction under R. 88, second
sentence, EPC in any suitable form allowed by the Convention (and Art. 117(1) EPC in
particular) as a means of giving or obtaining evidence. It may thus be based upon means
of evidence in other than document form (see also G 3/89, OJ 1993, 117). The Legal
Board of Appeal decided along the same lines in J 11/88 (OJ 1989, 433), according to
which questions of fact must be settled on the basis of any credible information available.
2.2. Hearing parties, witnesses and experts
In T 374/02 the board clarified that the EPC required clear requests with regard to
testimonies a party wished witnesses to give, since the responsible department of the
EPO had to issue a decision regarding the taking of oral evidence (Art. 117(1)(d) and
R. 72(1) EPC). The party had to indicate the factual details that it wanted to be proven by
the oral evidence requested. In this case, the appellant had solely asked in his letter for
the board's opinion about the presence of three persons during the oral proceedings and
mentioned that one of them "can make a further statement" without explicitly offering the
mentioned persons as witnesses. Even if the mention of the above persons could have
been considered an implicit offer of witnesses, the board was of the opinion that it did not
need to hear them, because this "implicit offer of witnesses" did not specify what should
be able to persuade the board to evaluate differently the evidence already existing in the
file and because witnesses were meant to corroborate the facts for which they were
expected to be heard, not to fill in gaps in the facts and arguments brought forward by
the party in support of its case. The lack of an indication of the facts which were to be
proven by testimonies of the three persons mentioned meant that the necessary
conditions for the hearing of witnesses did not exist in the case at issue.
Both an employee of one of the parties (see T 482/89, OJ 1992, 646; T 124/88,
T 830/90, OJ 1994, 713; T 443/93, T 937/93) and also his clients (T 575/94) may be
heard as witnesses. The fact that a witness might be biased did not make his oral
evidence inadmissible but was a matter to be taken into account when the EPO
considered the evidence (T 838/92). Similarly, the board in T 558/95 was unable to

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exclude the opponent's statutory declarations from the proceedings on the grounds that
their wording was to some extent identical and that they had been drawn up by
employees of the opponent. It was rather a question of evaluation to see whether the
evidence provided was sufficient.
In T 543/95 the opposition division had refused to hear the witness, commenting that he
would serve only to confirm the facts presented. It regretted that the opponent had not
produced further documents showing when the brochure was made public. The board
pointed out that the purpose of all evidence, whatever its nature, was to confirm a party's
assertions. Parties were free in their choice of evidence. The kinds listed in
Art. 117(1) EPC were merely examples. It was not for opposition divisions to criticise the
absence of other types of evidence.
In T 311/01 the appellant (opponent) had offered witness testimony on the skilled
person's knowledge and understanding of D1. The board considered this an admissible
form of evidence under Art. 117(1) EPC, where there was a need to clarify matters
potentially material to the decision and of which the witness had personal knowledge.
But the testimony had been offered as evidence not of specific facts but of the
knowledge and ideas of skilled persons in the technical field concerned. So the appellant
was offering experts, not witnesses. That, however, was not necessary; the board itself
was expert enough, at least on the features and advantages described inter alia in
documents D1 to D3 and D5. The further question arising could be answered from
document D6, with no need for further evidence. So it was not necessary to hear the
"witnesses" proposed.
In T 324/03 the appellant (opponent) had nominated three witnesses to give evidence in
support of his allegation that prior use of the patent at issue (cutting tool inserts) had
taken place but the board rejected the request for hearing these witnesses. In this case,
the board considered it appropriate to start from the hypothesis that inserts of type 229
as shown in the drawing D8 as alleged by the appellant were effectively made available
to the public before the priority date of the patent in suit, and only if the alleged prior use
was found pertinent as to its subject-matter to investigate whether it could be established
as fact, for example by hearing the witnesses offered by the appellant. However, in the
absence of any precise information or data in the submitted documents, the allegations
of the appellant had to be regarded as unsubstantiated. As a consequence, the
appellant's offer to hear witnesses for proving the allegations made became irrelevant for
the board's decision.
In T 375/00 the appellant had offered expert opinion on a number of matters as
evidence, wishing the board to find and appoint an expert under Art. 117(1)(e) EPC to
support aspects of his case. In general, the expert was expected to testify on issues
concerning the cited documents and the prior use cutter. The issues related to the
technical interpretation of documents and to consideration of how the cutter might work.
In the board’s opinion, an expert was only necessary when a board did not consider itself
in a position to decide upon a matter without technical assistance. As boards included
two technically qualified members, such cases would be rare and would occur only in
special circumstances. Such circumstances did not obtain in the case at issue, which
was a relatively simple mechanical case. Moreover, it was open to the appellant himself
to actively seek the necessary evidence, and he had not done so. If a board were to be
active in seeking experts to help the case of a party, it might be open to accusations of

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partiality. It was therefore neither necessary nor desirable for the board to obtain the
evidence of an expert in this case.
In T 395/91 it was not considered appropriate for an expert to be heard since the
questions to be answered by the expert had already been answered by the inventor as a
person skilled in the art. The board was further of the opinion that assessment of the
patent law aspects, on the basis of comprehensible technical facts, was a matter for the
members of the board and not a technical expert.
2.3. Unsworn witness declarations (affidavits)
Art. 117(1)(g) EPC allows sworn statements in writing as a means of giving or obtaining
evidence. These are to be distinguished from "affidavits" or "statutory declarations",
whose purpose is to ensure that the person who has signed and handed one in need not
be heard as a witness; it is not necessary to confirm the context of the declaration by
hearing the person in question. In T 674/91 the board noted that it was board of appeal
practice to regard affidavits in original or copy form as admissible means of providing
evidence. It was also pointed out that such declarations were generally produced from
answers to questions put by legal experts and it was therefore not surprising if a number
of declarations contained the same stereotyped formulations.
The opposition division revoked the patent in suit in T 474/04 (OJ 2006, 129) because
the invention did not involve an inventive step over the prior use evidenced in a
declaration submitted in lieu of evidence on oath. Since fundamental assertions made in
the declaration had been contested, the author was offered as a witness. Although the
appellant (patentee) had consistently demanded that the author be heard, the opposition
division decided not to summon him as a witness, even though he was available. The
board held that this had handicapped the appellant in its defence against what turned out
to be the decisive piece of evidence. The appellant had effectively been prevented from
having its evidence that the prior use had not taken place in the way alleged by the
respondent considered. This was all the more inappropriate since the prior use was the
respondent’s own and the evidence therefore largely lay "within the power and
knowledge of the opponent". Thus, the opposition division had infringed the appellant’s
right to be heard, which constituted a substantial procedural violation justifying the
remittal of the case to the department of first instance.
The board thus made clear that, as a rule, if assertions made in an unsworn witness
declaration remain contested, a request from a party to hear the witness must be granted
before these assertions are made the basis of a decision against the contesting party.
The principle of free evaluation of evidence applying in the proceedings before the EPO
could not be a justification for refusing a relevant and appropriate offer of evidence. Free
evaluation of evidence means that there are no firm rules according to which certain
types of evidence are, or are not, convincing. It does not mean that the deciding body
can choose the evidence which it considers sufficient for establishing the truth, but that
there are no firm rules according to which certain types of evidence are, or are not,
convincing.
In T 770/91 the board pointed out that although statutory declarations were not explicitly
covered by Art. 117(1)(g) EPC, they were taken into account in accordance with the
principle of the unfettered consideration of evidence. Similarly, the EPO accepts unsworn
solemn declarations in the same way as it accepts other unsworn statements (T 970/93).

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Also, the fact that an affidavit was submitted by the appellant's general manager did not
make it inadmissible. Assessment of the affidavit was a question to be dealt with in
accordance with the principle of the unfettered consideration of evidence (T 327/91).
However, what was not admissible was evidence supplied in the form of testimony by
witnesses or statutory declarations if such means of evidence were offered in place of
delivery notes which could no longer be produced because such a long time had been
allowed to elapse that they had been destroyed during routine shredding (T 231/90).
2.4. Other evidence
In T 71/99, the patent had been revoked at the end of the oral proceedings before the
opposition division. The appellant's (patentee) objections to the contested decision were
based exclusively on allegations relating to the conduct of the oral proceedings before
the opposition division. However, the minutes of the proceedings by the division did not
provide a full account of the conduct of oral proceedings. To show the board what had
actually happened, the respondent submitted part of a copy of a report of the
proceedings dictated by his representative on the day they were held. The appellant
argued that this document should not be admitted; it had been submitted late, one month
prior to the oral proceedings before the board. The board, however, took the view that
the report submitted by the respondent was much more explicit; it was only two pages
long and was not difficult to understand. Moreover, the appellant himself had not
seriously challenged the accuracy of the facts it reported. Under these circumstances,
the board saw no reason not to admit the document and informed the parties accordingly
at an early stage in the proceedings.
3. Procedure for the taking of evidence
VI.K.3. Procedure for the taking of evidence

3.1. Competent departments

Art. 117 EPC provides for the admission of evidence in proceedings before examining
divisions, opposition divisions, the Legal Division and the boards of appeal.
It was made clear in J 20/85 (OJ 1987, 102) that the Receiving Section also has the
power to take evidence, although this EPO body is not listed in Art. 117 EPC.
3.2. Time frame
Evidence must be taken as soon as a dispute arises (J 20/85, OJ 1987, 102). Evidence
may also be taken from parties without the presence of their patent attorneys if the latter
have been informed of the hearing (see T 451/89 and T 883/90).
In T 953/90 the board held that when a party sought to prove potentially relevant facts by
means of the statement of a witness, it was particularly important that this statement be
furnished early in the opposition phase so as to enable the witness to give oral evidence
in accordance with Art. 117 EPC, if the statement was disputed by a party on the other
side or if the EPO considered it necessary.
3.3. Taking of evidence - scope
In T 39/93 the board held that it had to decide an appeal on the basis of the evidence
and arguments adduced only in the current proceedings. It would be wholly wrong for it
to take cognisance of any matter that was not actually in this particular case. If an
original photomicrograph was a piece of evidence that had been introduced in another

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case and only a photocopy of this had been introduced in the case in question, the board
was limited to a consideration of the photocopy filed in the present appeal.
EPO departments must ascertain the relevance of evidence submitted to them before
deciding whether to admit or reject it. Only in exceptional circumstances need they not
do so, according to the board in T 142/97 (OJ 2000, 358). In the case in point, however,
the opposition division based its refusal of the offers to present evidence on mere
conjecture as to its content, and failed even to take cognisance of the evidence tendered
and its connection with the circumstances of the prior use, although there were no
circumstances which would have made examination as to relevance dispensable. An
opposition division's refusal to consider evidence filed in due time (eg witness testimony
or inspection) thus infringes a party's fundamental right to free choice of evidence and
right to be heard (Art. 117(1) and Art. 113(1) EPC).
In T 804/92 (OJ 1994, 862) the opposition division had, in a communication to the
parties, suggested in detail the content of a statement under oath. Such a practice was
firmly rejected by the board because it involved the risk of leading witnesses and could
seriously undermine the probative value of such statements. This applied to departments
at any instance in proceedings before the EPO.
In T 798/93 the board emphasised that sworn statements in writing, which were one of
the means of giving or obtaining evidence listed in Art. 117(1) EPC, were not
automatically ordered simply at the request of one of the parties. All means of giving or
obtaining evidence listed in Art. 117 EPC were subject to the discretion of the
department concerned, which ordered them only when it considered this necessary.
With regard to evidence submitted in the form of an affidavit, the board was not obliged
to check the signatures as long as no counter-opinion had been presented concerning
those signatures (T 674/91).
3.4. Keeping of evidence
T 760/89 (OJ 1994, 797) dealt with the possibility of returning documents which had
been filed as evidence and were subject to an obligation to maintain secrecy. The ruling
was that documents filed as evidence during opposition proceedings and submissions
referring to them in principle remained in the file until the end of the proceedings and for
at least five more years (see R. 95a EPC). Documents filed as evidence could only
exceptionally and on a substantiated request remain unconsidered and be returned.
Such an exception existed if the interests of the filing party in having them returned
unconsidered clearly prevailed over the interests of any other party and the public
interest. This might be the case if the documents were filed in breach of a confidentiality
agreement and if they did not belong to the state of the art but were third party
statements filed as part of the response to the opposition, and if the other parties
involved agreed with the request. The same applied to submissions referring to such
documents.
4. Evaluation of evidence
VI.K.4. Evaluation of evidence

4.1. Principle of unfettered consideration of evidence

The EPC says nothing about how the outcome of taking evidence should be assessed.
The principle of unfettered consideration of evidence applies. The body required to take
the decision therefore decides - on the basis of the whole of the evidence taken and the

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proceedings, and in the light of its conviction arrived at freely without reference to any
legislative provisions on the evaluation of evidence - whether an alleged fact has
occurred or not (see T 482/89, OJ 1992, 646; T 327/91, T 838/92 and T 575/94). Nor
have any general rules been laid down in the case law for the consideration of evidence;
instead, it has been decided from case to case when a particular piece of evidence is
sufficient. If a party fails to submit available evidence when asked by the board to do so,
this may be taken as an indication that it is possible that the evidence does not support
his arguments (see T 428/98).
When evaluating evidence, it is necessary to distinguish between a document which is
alleged to be part of the state of the art within the meaning of Art. 54(2) EPC, in the
sense that the document itself is alleged to represent an instance of what has been
made available to the public before the priority date of the opposed patent, and a
document which is not itself part of the state of the art, but which is submitted as
evidence of the state of the art or in substantiation of any other allegation of fact relevant
to issues of novelty and inventive step (T 1110/03, OJ 2005, 302). In the first situation, a
document is direct evidence of the state of the art; its status as state of the art cannot
normally be challenged except on authenticity. In the second situation, a document is
also evidence albeit indirect; it provides a basis for an inference about, eg the state of
the art, common general knowledge in the art, issues of interpretation or technical
prejudice etc. – an inference which is subject to challenge as to its plausibility. Only a
document of the first kind can be disregarded on the sole ground that it is published after
the priority date. Documents of the second kind do not stand or fall by their publication
date even on issues of novelty and inventive step. Disregarding indirect evidence would
deprive the party of a basic legal procedural right generally recognised in the contracting
states and enshrined in Art. 117(1) and Art. 113(1) EPC.
4.2. Probative value of evidence - individual cases
4.2.1 Evidence sufficient
In T 162/87 and T 627/88 it was decided that the statement made by an employee of
the party alleging prior use could be sufficient. The statements of employees of one of
the parties were also used in T 124/88, T 482/89 (OJ 1992, 646), T 830/90
(OJ 1994, 713), T 838/92 and T 327/91, without any grounds for their credibility being
given. The credibility of witnesses could not be impugned merely because they were
related to one another and had a business relationship with one of the parties (T 363/90).
In T 937/93 it was stated that the probative value of the declarations of a witness
depended on the circumstances of the particular case.
In T 1191/97 the appellant's criticism of the evaluation of evidence by the department of
first instance did not pose a serious threat to the witness's credibility. The fact that the
events at issue had taken place a long time ago could readily explain certain
imprecisions in the witness's testimony. The board saw no indication that the witness
had been in breach of his obligation to testify to the best of his recollection.
In T 970/93 the respondent had disputed the validity of all the evidence brought forward
but mainly based its objection on the assumption that the evidence could have been
falsified. The board held that such an allegation based solely on suspicion could not
reasonably be expected to form a valid ground for casting doubt on the credibility of the
evidence. It accepted them thus as valid evidence.

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In national proceedings before the Dutch District Court and Court of Appeal, several
witnesses were heard, and written statements were introduced from both parties. The
Dutch Court of Appeal could not establish an uninterrupted chain of proof that the
alleged public prior uses had indeed taken place before the priority date of the contested
patent. After evaluating the Dutch Appeal Court's findings, the board's judgment in
T 665/95 was that no further investigations were necessary and that the conclusion of
the Dutch Appeal Court could be followed, with the consequence that the subject-matter
of the granted claim 1, contrary to the impugned decision of the opposition division, was
considered to be novel.
4.2.2 Evidence insufficient
In accordance with the principle of unfettered consideration of evidence items of
evidence relevant to a matter at issue have to be given appropriate weight in order to
establish reliably what was likely to have occurred. An unsigned statement by an
unknown and unnamed person should in principle be given minimal weight (T 750/94,
OJ 1998, 32).
In T 332/87 a dated internal paper, marked as being confidential and not signed, was -
together with an undated leaflet - not considered sufficient evidence. In T 595/89 the
board decided that the opponent's in-house documents relating to the installation of a
device in an aeroplane and to the sale thereof were not sufficient to prove public prior
use.
In T 204/88 a letter of tender was not sufficient to prove public prior use because it was
not discernible when and to whom the device was to be delivered and because the
device was described in terms too general for anyone to identify whether it corresponded
to the invention. In T 725/89 too, a dated tender was not regarded as sufficient evidence,
as it was not proven when the tender had actually been presented, and the date of the
tender was only one week prior to the priority date. By contrast, the board took the view
in T 482/89 (OJ 1992, 646) that an unsigned delivery note, together with other
documents, could constitute sufficient evidence of delivery.
In T 473/93 the board decided that the appellant's surmise that he had been in error in
making his statutory declaration was not sufficient to allow orally presented facts which
deviated from the declaration to appear more credible. The fact alleged orally therefore
had to be regarded as not proven.
In T 48/96 the board stated that, in order to prove the allegation that a particular
apparatus described in a catalogue had been available to the public before the priority
date, it was not sufficient to show that the catalogue had been published on time,
because a mere indication in a catalogue did not constitute absolute proof that the
described product had in fact been available to anybody; for example, there could have
been a delay. It therefore decided not to accept copies of pages from a catalogue
bearing a date as sufficient proof of availability to the public.
In T 314/99 concerning the availability to the public of a diploma degree paper
("Diplomarbeit"), the board took the view that the said paper did not become publicly
available by its mere arrival in the archive of the Chemistry Department Library of the
University. The ”logbook” produced in evidence was a handwritten note book in which
the diploma degree papers received in the archive were entered by the librarians. The
logbook itself was not an official publication of the library but essentially an internal

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document of the library staff. After closer examination of the annotations in the logbook,
the board said that it could not be concluded with certainty that the relevant entries were
actually made before the relevant priority date and it could not be ruled out that they
were added at a later time, when for one reason or another the time frame became
relevant. In the absence of further submissions or evidence to refute these arguments,
the board could come to no other conclusion than that the evidence of the annotated
logbook was unsafe.
In T 91/98 the respondent (opponent) challenged inventive step on the basis of, in
particular, document (8) which was an entry from the Lexis-Nexis database. The
document did not, however, provide any evidence as to when this information was
entered into the database, ie as to when it was made available to the public. Neither
could the date of availability be taken as the date mentioned in the heading of the entry
(September 3, 1985) as this latter date could not be equated to the distribution date of
the information and was not even necessarily correct. After detailed evaluation of the
declarations and affidavits filed by the respondent the board arrived at the conclusion
that the date on which the information contained in document (8) was made available to
the public could not be unambiguously defined.
To prove the alleged public prior use, in T 212/97, the appellant (opponent) had cited
facts based on hearsay. The appellant's attention had been drawn several times to the
inadequacy of the evidence for the alleged prior uses. He failed to cite any witnesses.
However, where public prior use was alleged, an opponent had to do everything he could
to provide satisfactory evidence.
In T 905/94 the patent proprietor had exhibited a blind at an exhibition. After having
considered the evidence regarding the exhibition the board looked at the question of
whether use of the same trade name for different models could constitute evidence of
the fact that the patent proprietor had marketed or described the blinds according to the
patent at issue before the date of priority. In the board's opinion, such use could not
constitute sufficient evidence since it was common practice in industry for the same
name to be used and retained for a product, the technical characteristics of which
changed over time as improvements were made. The board also emphasised that the
fact that one witness had made his declaration three years earlier than other witnesses
was not sufficient reason to make his testimony more credible.
In T 702/99 the board made extensive remarks with regard to the probative value of test
evidence. It noted that it is essential that comparative tests, conducted by a number of
persons as evidence for or against qualities such as an improved "feel" of a product (eg
cosmetics), be made under conditions which ensure maximum objectivity on the part of
those conducting the tests and who may be required at a later date to give evidence in
proceedings. Since such evidence is opinion evidence and thus inherently subjective, its
value lies in the number of similar or same opinions and the tribunal faced with such
evidence will seek to judge the objective value of a number of subjective opinions.
Parties to proceedings should adopt the same standards in the preparation of such test
evidence as they should in the preparation of experimental evidence. While the use of
independent persons would naturally tend to carry more weight, the use of employees
may not be objectionable per se as long as the test conditions are designed to ensure
that, just as if independent persons were used, the employees are not biased by prior
knowledge of either the products under test or of their employer’s expectation of the
result of their tests.

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It is always desirable that such tests can be shown to be "blind"; that the testers have
had no part in the making of the claimed invention or research leading up to the invention
or the patenting procedure; and that the tests have been conducted under the strictest
conditions. The presentation of such evidence must also be accurate, but the format of
the presentation is of secondary importance; a carefully prepared report and/or table
may convey as much information as a large number of statements from the testers.
In J 10/04 the Receiving Section had questioned the credibility of a sworn statement.
Considering the sworn statement to have been based on personal impressions which
are subjective and not always reliable particularly regarding a routine task, the Receiving
Section had not invited the witness to hear her personally. The Legal Board did not share
that view and stated that the Receiving Section should have heard the witness
personally in order to be able to evaluate her credibility. The board evaluated sworn
statements as a form of evidence with a high probative value especially if they were
given with the awareness that wilful false statements were punishable by fine or
imprisonment or both under the applicable law. Strong reasons were therefore necessary
to disregard this kind of evidence. These reasons could be a set of circumstances which
made the statement very unlikely, so that the credibility of the witness would become
decisive. The credibility of a person could only be evaluated by oral evidence. The
credibility of witnesses could not be impugned merely because they had a business
relationship with a party. The fact also that the statement was based on personal
impressions of the witness could not be a reason to disregard it, because evidence was
often based on the personal recollection of a person. If evidence based on personal
impression was not credible per se, evidence from witnesses could never be credible.
The opponent having died, the board had to decide in T 74/00 whether the evidence had
shown that an heir or heirs had succeeded to the right of the opponent to appeal or to
the appeal itself. In the board's view, the best evidence which could be provided was
evidence of the relevant law of succession (here: Japanese law) as applied to the facts
of the case in hand and, in particular, by way of opinion from a Japanese lawyer; the
mere filing of copies of a party's correspondence with his instructing Japanese attorneys
could not serve as substitute because such correspondence was not evidence per se. In
this case the board considered two issues of fact, namely the date of the opponent's
death and the issue of succession:
As to the first issue, there were two items of evidence - the statement in a letter from the
representative's instructing Japanese patent attorneys that they had no knowledge that
she had died before the filing date of the appeal, and the information, appearing from the
notice of appeal that she had died during 2002. The board saw in the first item a vague,
second-hand and thus highly unreliable piece of evidence. However, the second item of
evidence, while very general as to the date of death, did at least provide a year of death
and could thus be said to establish that, at least on the balance of probability, the
opponent had still been alive when the appeal was filed.
As to the question whether the two daughters of the deceased inherited all the rights of
the appeal jointly or not, the available evidence demonstrated inconsistencies in the
crucial matter of the identity of the heirs. The board reached therefore the conclusion that
the necessary legal requirement - namely that there must be sufficient evidence of an
heir or heirs - had quite simply not been fulfilled. There was accordingly no-one who
could continue the appeal, which therefore had to lapse (see also Chapter VII.C.3.1.).

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4.3. "Balance of probabilities" and standard of proof - case groups

The facts on which the decision is based must have been established to the satisfaction
of the deciding body. The question arises as to what degree of satisfaction is necessary.
The boards of appeal generally apply the standard of the "balance of probabilities", ie
they are satisfied on the basis that one set of facts is more likely to be true than the
other. This standard applies particularly in opposition appeal proceedings (see T 182/89,
OJ 1991, 391; T 270/90, OJ 1993, 725; T 859/90, T 109/91, T 409/91, OJ 1994, 653;
T 1054/92, T 296/93, OJ 1995, 627; T 326/93, T 343/95) but also in the decisions issued
in ex parte proceedings (T 381/87, OJ 1990, 213; T 69/86, T 128/87, OJ 1989, 406;
T 939/92, OJ 1996, 309). In other cases (eg T 100/97) the board decided on the basis of
circumstances of which it was sufficiently certain.
When an issue of fact is being examined and decided by the EPO on the balance of
probabilities, the more serious the issue the more convincing must the evidence be to
support it (T 750/94, OJ 1998, 32). If a decision on such an issue might result in refusal
or revocation of a European patent, for example in a case concerning alleged prior
publication or prior use, the available evidence in relation to that issue had to be very
critically and strictly examined. A European patent should not be refused or revoked
unless the grounds for refusal or revocation (that is, the legal and factual reasons) were
fully and properly proved.
4.3.1 Prior use
In T 782/92, the board took the view that public prior use had to be proved beyond any
reasonable doubt. In T 472/92 (OJ 1998, 161) the board reaffirmed the principle of the
balance of probabilities in normal cases, but made a distinction for cases of public prior
use where practically all the evidence in support of an alleged public prior use lay within
the power and knowledge of the opponent. In such cases, the patentee seldom had any
ready, or indeed any access to it at all. All he could, in practice, do was to challenge that
evidence by pointing out any inconsistencies contained in it or to draw attention to any
gaps in the chain of commercial transactions that needed to be established by the
opponent in order to succeed on this ground. The board stated that the opponent had to
prove the alleged prior use up to the hilt, for little if any evidence would be available to
the patentee to establish the contradictory proposition that no prior public use had taken
place. Later case law also confirmed that, where public prior use is cited, the
assessment of probability which normally underlies the boards' opinion must cede to a
stricter criterion close to absolute conviction. In other words, there should be a degree of
high certainty which is beyond any reasonable doubt (T 97/94, OJ 1998, 467; see also
T 848/94 and T 12/00).
At the same time, a party could not relieve itself of the burden of providing counter-
evidence for facts it alleged by simply referring to T 472/92 and stating that all the
evidence lay within the disposition power of its adversary, without bringing proof that not
he but only the respondent was able to collect the evidence in support of the respective
contention, as stated by the Board in T 254/98.
In T 970/93 the claims referred to a continuous multi-stand mill plant for producing steel
plates. Two prior uses, a mill plant in China and a mill plant in Germany, were put
forward by the opponents (appellants). A discussion developed on the subject whether
the skilled person would have been able to recognise the relevant feature, ie the rolling

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speed ratio of the mill plant in China, because such ratio could not be derived from a
single rolling event. Furthermore, the respondent took the view that both the builders and
the owners of the plant would impose confidentiality in order not to reveal the actual
capacity of the mill, thus putting competitiveness at risk. Following the principle of the
balance of probabilities it was, in the board's view, very unlikely that in a period of almost
seven years between the start of operations at the plant and the priority date of the
patent in question, the mill drive motor speed ratio of the mill would not have become
publicly available taking account of the following evidence and circumstances: it was
common practice in China to promote and demonstrate newly-installed industrial plants
as a means of instruction to young engineers. It was not at all likely that an obligation for
secrecy would bar this information path for competition reasons as supposed by the
respondent. In the absence of any evidence as to confidentiality the principle also
applied that the company that purchased the mill could be considered a member of the
public which through the purchase of the mill and subsequent use thereof took
possession of all the relevant information with respect to the rolling speed ratio.
4.3.2 Content of a disclosure
In T 793/93 the relevant prior art document had failed to disclose explicitly something
falling within a claim. The board held that availability within the meaning of Art. 54 EPC
could still be established if the inevitable outcome of what was literally or explicitly
disclosed fell within the ambit of that claim. In the board's view, a standard of proof much
stricter than the balance of probability, to wit "beyond all reasonable doubt", needed to
be applied. It followed that if any reasonable doubt existed as to what might or might not
be the result of carrying out the literal disclosure and instructions of a prior art document,
in other words if there remained a "grey area", then the case of anticipation based on
such a document had to fail (see also T 464/94).
In T 348/94, the board held that it had not been proven beyond reasonable doubt that the
technical contents of the oral presentation at the conference corresponded in all details
to the relevant article published 10 months later in the conference proceedings. Unless
there was proof to the contrary, a written publication, supposedly based on a paper
previously read at a public meeting held some time earlier, could not be assumed to be
identical to what was disclosed orally but might contain additional information (see also
T 890/96).
In T 151/99 the board regarded it as highly plausible in the light of the available evidence
that a master's thesis had become available to at least one member of the public. If the
reference was in a document published before the priority date of the patent in suit then
it could be assumed that the said paper had also been made available to the public
before the said date.
In T 204/00 the board observed that, according to established case law, the standard of
proof to be applied in establishing the inevitable outcome of a prior art disclosure for the
purpose of assessing novelty should be significantly stricter than the balance of
probabilities (see T 793/93 and T 396/89). The board held that this was particularly so in
the circumstances of the case at issue, where the inevitable result alleged by the
appellant was in contradiction with the explicit disclosure of the prior art document D1
and the results obtained by the respondent. In addition, the party submitting the
allegation had not only the burden of reproducing the earlier disclosure in such a way as
to demonstrate that the alleged inevitable outcome had occurred, but also the burden of

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proving convincingly that if any significant deviation from the conditions specified in the
earlier disclosure was not material to the outcome (see also T 396/89).
4.3.3 Amendments
The boards only allowed amendments or corrections if it was certain beyond any
reasonable doubt that the subject-matter of the application had not been extended
beyond that of the application as filed (T 383/88, T 581/91). When examining
Art. 123(3) EPC the board laid down the principle in T 113/86 that voluntary amendments
requested by the patentee which were not necessitated by any of the grounds for
opposition raised by the opponent or by the board should, in principle, not be allowed if
there was the slightest doubt that the unamended patent could be construed differently
to the patent as amended.
4.3.4 Claiming a valid priority
In T 1056/01 the board pointed out that because of the crucial effect a valid priority date
had on patentability, the date of filing of the application whose priority was claimed had
to be proven in a formal way, namely by a certificate issued by the authority which had
received that application (see R. 38(3) EPC and Art. 4D(3) Paris Convention). Even if no
such formal proof was prescribed for the timely withdrawal of a previous application
pursuant to Art. 87(4) EPC (see Art. 4C(4) Paris Convention), it appeared appropriate to
require an equally high standard of proof, for once there existed a previous application
concerning the same invention both dates were equally relevant for establishing the
validity of the claimed priority. However, in the case at issue, the timely withdrawal of the
UK application for the purposes of Art. 87(4) EPC could not be established. This fact
operated to the detriment of the appellant, because he carried the relevant burden of
proof. Unlike facts barring patentability (see for example T 219/83 cited by the appellant),
timely withdrawal of a previous application was a positive precondition for claiming a
valid priority from a subsequent application for the same invention. Hence, the date of
the effect of the withdrawal was a fact which could act in the applicant’s favour, and she
had relied on it just as she had relied on the filing date (and the content) of the
subsequent UK application. Application of the principle that the burden of proof for a
particular fact was to be borne by the party alleging it was even more justified in this
situation, where the alleged fact was a purposive act by the appellant’s representative.
For these reasons it was held that the priority claim of the patent was invalid because,
under the terms of Art. 87(4) EPC, the UK patent application could not be considered to
be the first application for the purpose of claiming priority.
4.3.5 Abusive conduct
In G 3/97 and G 4/97 (OJ 1999, 245 and 270) the Enlarged Board of Appeal held that if
the person named as opponent according to R. 55(a) EPC is acting on behalf of a third
party, such an opposition is inadmissible only if the involvement of the opponent is to be
regarded as circumventing the law by abuse of process. The deciding body had to be
satisfied on the basis of clear and convincing evidence that the law had been
circumvented by abuse of process.
In T 291/97 the appellant had contended in the statement of grounds of appeal that the
publication of document (1) had occurred in consequence of an evident abuse within the
meaning of Art. 55(1)(a) EPC, and thus did not constitute prior art citable against the
claims at issue. The board decided that the above publication was to be taken into

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consideration for the application of Art. 54 EPC. It observed in its decision that the
finding of an evident abuse under Art. 55(1)(a) EPC was a serious matter. An abuse was
not lightly to be presumed. The standard of proof was identified by the words ”evident
abuse” (German: ”offensichtlicher Missbrauch”; French: ”un abus évident”) as being high:
the case had to be clear-cut, and a doubtful case would not be resolved in favour of the
applicant. The evidence filed in the case at issue did not meet the standard that the
board would consider appropriate, in particular in that virtually every declaration filed
contained serious mis-statements that had subsequently been corrected, or the indicated
mis-statements had not been relied on. That the errors had been corrected or not relied
on was commendable, but left unresolved the problem of whether any part of such a
statement could be relied on at all. The board also pointed out that in proceedings before
the EPO it had to be possible to rely on the written evidence as having been checked
with the facts: should that not be the case, the party in question would run the risk of
having its evidence being disregarded as unreliable as a whole.
4.3.6 Procedural issues
In cases of re-establishment of rights it is usually ruled that, on the basis of the evidence
furnished, the board is or is not satisfied that the facts adduced to substantiate the
application for re-establishment of rights are true. In T 243/86 and T 13/82
(OJ 1983, 411), a request was made for "Glaubhaftmachung" (ie that the facts on which
the application relies be set out) in accordance with Art. 122(3), first sentence, EPC.
Whether this term signifies - as in German, Austrian or Swiss law - that a lower degree of
probability is sufficient has not yet been decided.
The issue under appeal in T 1200/01 was whether an opposition of the appellant against
the patent could be deemed to have been filed. According to Art. 99(1), last sentence,
EPC, this was only the case if the opposition fee had been paid within the opposition
period. However, in the case at issue no trace of a notice of opposition nor of a voucher
for payment of the opposition fee allegedly filed by the appellant had been found within
the EPO. The board noted that concerning the standard of proof to be applied for
establishing the receipt of documents not found within the EPO, it is the established case
law of the boards of appeal that, even if proof to this effect can seldom lead to absolute
certainty, it must at least show to a high degree of probability that the alleged filing took
place (see also T 128/87, OJ 1989, 406, cited by the board). It also noted that in some
previous cases (see T 243/86 and T 69/86, cited by the board) it was accepted that this
standard was met if there were concrete traces of the item sought which, even if they did
not show it for certain, indicated a high probability of the lost document having once been
in the EPO. Nevertheless, any other means of giving evidence, such as witness
testimony, could equally be considered in this context. The board pointed out that under
the EPC, the critical event for compliance with a time limit is the date of receipt of an item
at the EPO for which receipt the filing party bears the responsibility. It followed that the
burden of proof that filing has been effected fell on this party. The impossibility of
furnishing proof of a higher probability that an item was filed than that it was not filed,
must therefore go against the filing party. In the case at issue the board held that the
evaluation of the evidence referred to above did not allow the conclusion that there was
a higher degree of probability that the alleged filing took place than that it did not.

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4.3.7 Disciplinary matters

In D 5/86 (OJ 1989, 210), the board held that an infringement of the rules of professional
conduct had to be established to the satisfaction of the disciplinary body before it could
impose a disciplinary measure. Absolute certainty was not required, but a degree of
probability which in human experience verged on certainty. A disciplinary measure could
not be imposed if there was reasonable doubt as to whether the infringement had
occurred.
5. Burden of proof
VI.K.5. Burden of proof

5.1. Apportioning the burden of proof

5.1.1 General
If a material fact is not or cannot be proven, a decision is taken on the basis of who
carries the relevant burden of proof: the fact that the real position cannot be established
operates to the detriment of the party which carries the burden of proof for this fact.
The EPC contains no explicit provisions in this respect. However, a few principles can be
inferred from board of appeal practice. According to T 200/94 (following established case
law), if a board's investigations did not enable it to verify beyond reasonable doubt the
facts alleged, this went to the detriment of the party needing to prove them, ie the party
who relies on these facts.
At all events, in proceedings before the EPO, facts which related to a party's own actions
or were the subject of a party's own perceptions could not be denied on the ground of
“ignorance” by that party if the presentation of the facts in question was essentially the
party's responsibility (T 247/98). According to T 254/98, a party cannot relieve itself of
the burden of providing counter-evidence for facts it alleges by simply referring to
T 472/92 (OJ 1998, 161; see above Chapter VI.K.4.3.1) and stating that all the evidence
is within the power of its adversary, without bringing proof that not he but only the
respondent is able to collect the evidence in support of the respective contention.
In ex parte proceedings the applicant bears the burden of proof for the facts in his
favour, eg the fact that a document cited by the examining division does not form part of
the state of the art (T 160/92, OJ 1995, 35), the fact that the conditions laid down in
Art. 123 EPC have been met (T 383/88) or the fact that a limitation of the claims is
admissible (T 2/81, OJ 1982, 394). In T 32/95 the board found that once the applicant
had indicated sound reasons for doubting whether a cited document belonged to the
state of the art, the examiner should have acted as recommended in the Guidelines C-
IV, 5.2 (previous version), ie not pursued the matter further if additional investigation
failed to produce sufficient evidence to remove that doubt.
With regard to opposition proceedings, the principle was laid down in T 219/83
(OJ 1986, 328) that the patent proprietor is given the benefit of the doubt if the parties
make contrary assertions regarding facts barring patentability which they cannot
substantiate and, furthermore, the EPO is unable to establish the facts of its own motion
(see also T 293/87 and T 459/87). In appeal proceedings, the party's status as opponent
makes no difference when it comes to assigning the burden of proof (this follows also
from T 740/90, T 270/90, OJ 1993, 725 and T 381/87, OJ 1990, 213). If the opponent
disputes the existence of an inventive step (T 382/93) or the reproducibility of the
invention (T 16/87, OJ 1992, 212; T 182/89, OJ 1991, 391), he bears the burden of proof

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in this respect at first and second instance. In T 1003/96, the board confirmed that in
case of uncertainty about a prior-art disclosure, the patentee should be given the benefit
of the doubt (see T 230/92, T 345/86, T 601/91 and T 968/91).
In T 596/99 the board observed that while it was legitimate for an opponent to attack a
patent by pointing at an allegedly erroneous appreciation of the evidence by the
examining division, in opposition proceedings, the burden of proof nevertheless
remained with the opponent. In the case at issue the appellant (patent proprietor)
therefore rightly stressed that, even if the respondent (opponent) was successful in its
effort to cast serious doubt on the persuasiveness of the appellant’s evidence, this would
not justify the conclusion that the invention failed to solve the existing technical problem,
but only that the evidence was inappropriate. For the respondent to actually prove that
the subject-matter of claim 1 was unable to solve the said problem, it would have been
necessary to submit convincing counterevidence. In summary, the board found that the
respondent’s arguments were not sufficient to discharge its burden of proof.
5.1.2 Individual cases
(a) Novelty contested
In T 713/01 the appellant had denied the existence of an "enabling" disclosure in D2 for
polymers prepared in the presence of a solubilised lithium pyrrolidide initiator by
reference to T 124/87 (OJ 1989, 491) and T 206/83 (OJ 1987, 5), according to which the
criterion for a prior art disclosure to be novelty-destroying was that the claimed subject-
matter could be directly and unequivocally inferred from an enabling disclosure in it. The
board held that in proceedings before the examining division the burden of proof for an
allegedly distinguishing "product-by-process" feature lay with the applicant (see
T 205/83, OJ 1985, 363 and T 279/84). It held that the appellant’s arguments were
irrelevant, and that the same applied to the question whether lack of novelty could be
decided on the basis of the mere probability of an anticipatory disclosure addressed in
T 464/94 and T 727/95 (OJ 2001, 1).
(b) Inventive step contested
In T 547/88 inventive step was contested. Although the board had asked the parties to
issue a joint protocol stating what tests had to be done and under what conditions, each
party in fact conducted his own experiments and obtained contradictory results. It was
therefore not possible for the board, on the basis of these tests, to conclude definitively
that no inventive step was involved. The board held that in such a case the patent
proprietor should be given the benefit of the doubt with regard to the relevance of the
claimed features to the problem to be solved. Moreover, since the prior art did not
suggest the subject-matter of the contested claims, that subject-matter implied an
inventive step. The patent was therefore maintained.
In T 97/00 the respondent had alleged that it was up to the appellant to demonstrate that
increased activity, improved stability and higher selectivity to C5+ hydrocarbons were not
obtained over the whole claimed scope. The board however held that, according to
established case law, each of the parties to the proceedings carried the separate burden
of proof for any fact they alleged (see also T 355/97). Therefore, in the case at issue, the
burden of proof for showing that the claimed method led to the alleged and unsupported
advantageous effects mentioned in the patent in suit rested with the respondent
(patentee). In the absence of any corroborating evidence that these advantageous

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effects were obtained, the allegation in the patent in suit of increased activity, improved
stability and higher selectivity was unsubstantiated and consequently such alleged
effects were not to be taken into account in assessing inventive step.
(c) Reproducibility of the invention contested
In T 792/00 the board found that if the patent contained only an example with a
hypothetical experimental protocol, and if this example was to be relied on for showing
sufficiency, then the burden of proof lay with the patentee to show that in practice this
protocol worked as stated. Evidence that a variation of the protocol worked was unlikely
to be enough. The board pointed out that the general rule was that the person who
asserted something positive had the burden of proof. Thus if a patentee asserted that an
example in a patent could be carried out as stated, and an opponent denied that, it was
up to the patentee to provide proof. However, if the example contained a complete
experimental protocol and the patentee affirmed that the results reported had been
obtained, a board was likely to accept that the patentee had done enough to shift the
burden of proof to the opponent to provide a repeat of the experiment to show that it did
not, in fact, work as stated.
(d) Procedural issues
In J 10/91 the board held that if a letter and attached cheque in payment of a fee, had
been lost without further evidence or high probability that it had been lost in the EPO, the
risk was then borne by the sender. Even conclusive evidence that something had been
posted could not be treated as sufficient to prove that a document had been received by
the EPO. If the post failed to deliver a document, the applicant would suffer the
consequences for failing to file that document, as stated by the board in J 8/93.
In T 632/95 the board confirmed that the burden of proving that a document had been
received lay with the party submitting the document just as, vice versa, the EPO bore the
burden of proving receipt of the documents it issued.
If a party relied on the allegation that there was a general legal maxim, according to
which his appeal would have to be allowed (in the case in question, the principle
whereby decisions of a court of final jurisdiction could be set aside in the event of serious
procedural errors), he would have to produce evidence that such a procedural principle
existed in most EPC contracting states and was therefore "generally recognised" for the
purpose of Art. 125 EPC (T 843/91, OJ 1994, 832). Following on from that, another
board stated in T 833/94 that, when the evidence offered does not directly indicate the
truth or falsity of the fact in issue, but requires knowledge of the national law and patent
practice, such law and practice has to be proved as does any other fact on which a party
bases its arguments.
According to the German version of R. 78(2), second sentence, EPC (formerly
R. 78(3) EPC), the EPO must in a case of doubt, "im Zweifel", establish the date on
which the letter was delivered to the addressee. In T 247/98 the board decided that,
when establishing the meaning of the term "im Zweifel" in the German version of
R. 78(2) EPC, account should be taken of the French and English versions, which
assumed that there was a dispute ("en cas de contestation", "in the event of any
dispute").

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From the general principles concerning the burden of presentation which fell on the
parties, it followed that a party seeking the application of a legal provision favourable to
its interests had to set out the facts justifying such application, even if it did not ultimately
bear the burden of proof for those facts. Although, in the event of a dispute within the
meaning of R. 78(2) EPC, the burden of proof for the date of delivery fell on the EPO,
this could not be taken to mean that a party wishing to rely on the late delivery of a letter
from the EPO had no obligation to contribute to the clarification of circumstances within
its own sphere of activity but could sit back, as it were, and wait to see whether the EPO
succeeded in ascertaining when the letter had been delivered to the party. A dispute
("Zweifel" in the German version) within the meaning of this rule could only arise if it was
maintained that a letter had in fact been received more than ten days following its
posting.
Having regard to the above, in the case in point the mere absence from the file of the
advice of delivery and of the receipt from the appellants' then representative did not
constitute a sufficient basis for a dispute ("Zweifel" or "contestation") under R. 78(2) EPC
over whether the decision had been delivered to the appellants' then representative
within ten days of despatch.
5.2. Shifting of the burden of proof
Each party bears the burden of proof for the facts it alleges. If one party furnishes
convincing proof of the fact it alleges, the burden of proof for the other party's contrary
assertion shifts to the latter (T 270/90, OJ 1993, 725). In T 109/91 the board held that the
burden of proof might shift constantly as a function of the weight of the evidence
(confirmed eg in T 525/90, T 239/92 and T 838/92).
In opposition proceedings the burden of proving that the objections raised under
Art. 100 EPC have been substantiated lies with the opponent. However, once the
opposition division has decided to revoke the patent, the burden shifts to the proprietor of
the patent, who has to demonstrate on appeal that the reasons for revoking the patent
were not sound, ie that the opposition division's decision was wrong as to the merits
(T 585/92, OJ 1996, 129).
In T 131/03 the board also took its cue from the principle that in inter partes proceedings
the burden of proof rests primarily upon the opponent. However, it pointed out that, when
the latter has established a strong presumption that unusual parameters as used to
define the claimed subject-matter are inherently disclosed in the prior art, the patent
proprietor cannot merely claim the benefit of the doubt. It is incumbent upon to him to
contribute in establishing to which extent such parameters, which he freely chose to use
in the definition of his invention, actually distinguish the claimed subject-matter from the
prior art.
In T 499/00 the allegations made by the respondents and in the contested decision had
never been proven. The board felt that the burden of proof could not be reversed to rest
with the appellants in the prevailing circumstances, where – as opposed to the situation
in T 585/92 – the patent had been revoked by the opposition division not on the strength
of a real failure to disclose the information needed to reproduce the claimed subject-
matter, but for reasons that the board elsewhere deemed erroneous. In the case in point,
the burden of proof could not be shifted to the patentee because revocation could not, in
the board’s view, be pronounced solely in the light of the arguments and factors put
forward by the opponents (see also T 954/93). The same principle applied to the

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appellants, but it could not be invoked against them because their arguments and
assertions, liable to be confuted in that respect, had nothing to do with the reasons for
the decision in the case in point.
In T 954/93, too, it was not accepted that the burden of proof had been shifted. In this
case, the appellant (opponent) had put forward objections to the patent on the basis of
lack of novelty, which would have had to be demonstrated by means of experiments. He
had not however carried out any tests on the ground that they would have been very
expensive. The board considered the allegation unproven and refused to reverse the
burden of proof. The fact that experiments would have been very expensive did not shift
the burden of proof onto the patent proprietor.
In T 743/89 it had been proved that a leaflet disclosing the invention had been printed
seven months before the priority date, but it was uncertain when the leaflet had been
distributed. The board took the view that, although the date of distribution could no
longer be ascertained, it was reasonable in any event to assume that distribution had
occurred within the seven-month period. The respondents contended that this was not
the case, but the board considered this assertion to be so lacking in plausibility that it
placed the onus of proof on the respondents.
Questions relating to the shifting of the burden of proof can also arise in connection with
procedural issues:
According to T 128/87 (OJ 1989, 406), a party presenting a cheque to the EPO bears the
burden of proof for its receipt by the EPO. However, if the party furnishes sufficient proof
that a certain document was filed, such evidence shifts the burden to the EPO to provide
a greater weight of evidence to the contrary (T 770/91 and J 20/85, OJ 1987, 102).
L. Representation
Representation

1. Professional representatives
VI.L.1. Professional representatives

1.1. List of professional representatives (Article 134(1) EPC)

Art. 134(1) EPC stipulates that professional representation of natural or legal persons in
proceedings established by the EPC may only be undertaken by professional
representatives whose names appear on a list maintained for this purpose by the EPO.
The requirements for such entry are laid down in Art. 134(2) EPC.
Persons whose name appears on the list of professional representatives
(Art. 134(1) EPC) and who have passed the European qualifying examination
(Art. 134(2)(c) EPC) possess scientific or technical knowledge, because under Art. 10(1)
REE 1994 (OJ 1994, 7) evidence of such knowledge is a condition for admission to the
examination. Practically all persons entered on the list under the special provisions of
Art. 163 EPC may also be assumed to possess such knowledge. The objective of the list
of professional representatives is to provide a survey of particularly qualified
representatives in patent matters (D 14/93, OJ 1997, 561).
In J 1/78 (OJ 1979, 285) the appellant was entered on the list of professional
representatives before the EPO under the letter "V" as "von F., A.". The object of his
appeal was to obtain a ruling which would enable him to be entered under the letter "F"
as, for example, in the telephone directory. The decision found that the entry was made
in accordance with the principles laid down by the President of the EPO whereby the full

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surname must be entered in alphabetical order. Under German law, former titles of
nobility ("von") form part of the surname. The board noted that the purpose of entry on
the list was to confer upon the person whose name was entered the right to appear in
the European patent grant procedure. A distinction had to be made between entry for the
purposes of conferring a right and publication of the list, which latter was not prescribed
in the EPC. The EPO issues a directory from time to time for the purposes of meeting
public demand for information. In this directory, the person entered on the list could be
allowed an additional entry under another letter should he so desire.
1.2. Duty of persons without residence nor place of business within a
contracting state to be represented by a professional representative
According to Art. 133(1) EPC, no person shall be compelled to be represented by a
professional representative in proceedings established by the EPC.
However, Art. 133(2) EPC stipulates that natural or legal persons not having either a
contracting state residence or their principal place of business within the territory of one
of the contracting states must be represented by a professional representative and act
through him in all proceedings established by the EPC (T 1157/01 reviews the applicable
law), other than in filing the European patent application (see T 451/89 and T 883/90).
The Implementing Regulations may permit other exceptions.
In T 213/89 the Japanese inventor replied directly to the EPO with a set of revised
application documents, and accompanied by a letter to his representative indicating that
the revised documents had also been sent to the representative. The board noted that
no confirmation by the representative was received that any of the submissions directly
received from the inventor should be regarded as an official reply to the EPO action.
Since persons not having a residence or their principal place of business within the
territory of one of the contracting states must act through their representative in the
proceedings, the said submissions received direct could not be taken into account.
1.3. Professional representatives during the transitional period
One of the conditions for including a professional representative on the EPO list is that
he has passed the European qualifying examination (EQE). During a transitional period
after the EPC first entered into force, this requirement could be waived under the
conditions laid down in Art. 163 EPC (see J 19/89, OJ 1991, 425; J 10/81). For all states
belonging to the EPC since the beginning, this period ended on 7.10.1981 (decision of
the Administrative Council dated 6.7.1978, OJ 1978, 327). After that date, under
Art. 163(6) EPC, a person with his place of business or employment in a state newly
acceding to the EPC may, during a period of one year as from that state's accession, be
added to the list under the conditions laid down in Art. 163(1) to (5) EPC, ie without
having to pass the EQE.
The reunification of Germany posed its own problems, in J 18/92, J 30/92, J 31/92,
J 32/92 and J 33/92, regarding the admission of professional representatives. The
appellants argued that the provisions of Art. 163(6) EPC should be applied to patent
attorneys, even where they had qualified in West Germany and not the former GDR. In
the board's view, Art. 163(6) EPC could only be applied by analogy to those finding
themselves in a similar situation to the patent agents of a country acceding to the EPC.
This requirement was fulfilled only by patent agents from the former GDR and not by
their colleagues who had already been admitted in the West. The board held that it

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would be strange if those who were admitted as patent agents in a contracting state
were able to become authorised representatives without having to pass the examination
merely by way of analogy with people working in a country which had just become a
member. The appeals were accordingly dismissed.
1.4. Procedural steps performed by a person other than the professional
representative
In J 28/86 (OJ 1988, 85) the Legal Board of Appeal held that a request for examination
filed by a person who was not entitled to act as a representative in accordance with
Art. 134 EPC was invalid. The board noted that the situation did not change because the
representative had later been entered on the list of professional representatives. In this
capacity he had neither approved nor resubmitted the invalid request he had made
earlier.
In decision T 665/89 the board addressed the question of the admissibility of an
opposition by an opponent whose residence was not in a contracting state, where the
notice of opposition was signed by a person who was neither a professional
representative (Art. 134(1) or Art. 134(7) EPC) nor an employee of the opponent
(Art. 133(3) EPC). The board of appeal concluded that the actions of the unauthorised
person ought to be judged as if the signature were missing, and thus assumed that the
deficiency was remediable. The opponent made up for the missing correct signature at
the EPO's invitation within the time limit laid down. The document thus retained the
original date of receipt in accordance with R. 36(3), third sentence, EPC.
In T 803/03 the board examined the relevant EPO case law (J 28/86 and T 665/89) and
its implications for the case at issue, which concerned an abandonment order signed by
a non-entitled person.
In J 32/86 the board held that the mere appointment of a professional representative to
meet the requirement of Art. 133(2) EPC (the appellant had his residence in the USA)
did not automatically have the legal effect of validating acts previously performed by an
applicant himself. The EPO was however obliged to give the representative a fair chance
to remedy any deficiency of this kind that might have occurred before his appointment
and which could still lawfully be remedied by him.
2. Legal practitioners entitled to act as professional representative
VI.L.2. Legal practitioners entitled to act as professional representative

2.1. Introduction
Under Art. 134(1) EPC, professional representation of natural or legal persons in
proceedings established by the EPC may only be undertaken by professional
representatives whose names appear on the above list. However, Art. 134(7) EPC
provides that professional representation in such proceedings may also be undertaken,
in the same way as by a professional representative, by any legal practitioner qualified in
one of the contracting states and having his place of business within such state, to the
extent that he is entitled, within the said state, to act as a professional representative in
patent matters. The arrangements for legal practitioners set out in Art. 134(7) EPC
therefore constituted an exception.
In J 19/89 (OJ 1991, 425) it was observed that despite all the differences in the
designations and career backgrounds of the persons included in the ranks of legal
practitioners, the profession had developed on an essentially equal footing in the

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contracting states as a result of Europe's common legal history and shared legal culture.
The board noted that the last clause of Art. 134(7), first sentence, EPC was necessary
because under national law even an actual legal practitioner might be precluded to some
degree from acting as a professional representative in patent matters. That clause
prevented a "Rechtsanwalt", "legal practitioner" or "avocat" from having more extensive
powers of representation before the EPO than he was entitled to before his national
patent office. Art. 134(7) EPC was therefore a special rule limited in scope to the corpus
of legal practitioners, which existed under various designations in all the contracting
states. Members of the profession of Rechtsanwalt and comparable professions in the
contracting states were entitled under Art. 134(7) EPC to act as professional
representatives before the EPO, not by virtue of their status as individual Rechtsanwälte
but by virtue of the institution of the profession of Rechtsanwalt as such.
In J 18/99 the main issue was whether or not the appellant, a legal practitioner
(abogado) qualified in Spain and having his place of business in Spain, was entitled
under Art. 134(7) EPC to undertake professional representation of third parties in
proceedings before the EPO. The board concluded that for the application of
Art. 134(7) EPC all that was significant was that a legal practitioner qualified in a
contracting state was - as such - entitled, within that state, to act as a representative in
patent matters. The EPC did not distinguish for this purpose between entitlement to act
as a "simple" representative or as a "professional" representative of clients (reference
being made to the "travaux préparatoires"). Following the examination of national
provisions and conclusions drawn by the OHIM (Communication No. 2/96 of its President
of 22 March 1996, point 1), the board concluded that under the present Spanish law any
legal practitioner qualified in Spain and having his place of business in Spain was
entitled to represent clients in patent matters before the Spanish Patent and Trademark
Office if he presented an authorisation from the party.
2.2. Register of legal practitioners
The register of legal practitioners must be clearly distinguished from the list of
professional representatives established in accordance with Art. 134(1) to (4) EPC.
Whereas, according to Art. 134(4) EPC, the entry of a person's name in the list of
professional representatives entitles them to act in all proceedings established by the
EPC, the EPC does not contain any corresponding provision for legal practitioners. Their
competence to undertake representation before the EPO is not general, but depends
directly on their complying with the provisions of Art. 134(7) EPC (J 27/95).
The objective of the list of professional representatives is to provide a survey of
particularly qualified representatives in patent matters; it would be jeopardised if legal
practitioners without such qualifications were included on the list. Accordingly, the
conditions for entry on the list of professional representatives under Art. 134(2) EPC also
apply to legal practitioners (D 14/93, OJ 1997, 561).
According to the practice of the EPO, legal practitioners who indicate their intention to
undertake representation in proceedings before the EPO and present an authorisation
are entered in a register of legal practitioners, provided that they comply with the
requirements of Art. 134(7) EPC. The Legal Division is responsible for checking these
requirements and for the registration of names in, or deletion from, the register of legal
practitioners (see decision of the President dated 10.3.1989 concerning the
responsibilities of the Legal Division, point 1.1(c), OJ 1989, 177; cf. also J 27/95).

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In J 18/99, a further issue concerned the appellant's registration as a legal practitioner

under Art. 134(7) EPC. The board noted that the appellant, a legal practitioner
("abogado") in Spain, had requested registration as a legal practitioner entitled to act in
proceedings established by the EPC in accordance with Art. 134(7) EPC without filing a
signed authorisation, whereas according to the practice of the Legal Division legal
practitioners were registered only if they had filed a signed authorisation from a party.
The board therefore remitted the case to the Legal Division with the order to register the
appellant, provided that he filed the signed authorisation.

2.3. Qualifying conditions according to Article 134(7) EPC

In J 19/89 (OJ 1991, 425) the Legal Board of Appeal considered whether a patent
attorney under national law should, in view of his legal qualifications and entitlement to
act as a professional representative in national patent matters, be regarded as a "legal
practitioner" within the meaning of Art. 134(7) EPC and hence be authorised to act
before the EPO. The board decided that irrespective of his specialist qualifications and
powers of representation in national patent matters, a patent attorney under national
law could not be regarded as a "legal practitioner" within the meaning of Art. 134(7) EPC,
and therefore was not entitled to act as a professional representative before the EPO
(see also D 14/93, OJ 1997, 561).

In T 643/01 the appellant (patent proprietor) contended in particular that the opponent's
reply of 28 January 2002 was inadmissible on the ground that it had been signed by
Mr R., who was a legal practitioner and member of the Paris Bar but who was allegedly
unable to show that he possessed an authorisation conforming to the requirements of
R. 101(1) EPC. The appellant requested that, if the signatory concerned was relying on
his official status as a professional representative before the EPO, the board should find
that French law prohibits such a plurality of offices, since the exercise of the profession
of barrister could not properly be combined simultaneously with that of industrial property
attorney. In the appellant's view, these provisions should be transposed into the law of
the EPC. The board held, in the case at issue, that the signatory of the impugned
pleadings of 28 January 2002 was entitled to act before the EPO and held the
appropriate authorisation for that purpose. Mr R. and Mr D., legal practitioners and
members of a partnership, were indeed members of the Paris Bar, and the names of
both appeared on the list of professional representatives before the EPO. They were
therefore both entitled to act in one capacity or the other before the EPO under
Art. 134(1) and (7) EPC. The board held that a decision on the legality, in France, of
simultaneously exercising the profession of barrister and acting as a professional
representative before the EPO fell solely within the jurisdiction of French professional
and judicial bodies.

In J 27/95, the Legal Board of Appeal first made it clear that the competence of legal
practitioners to undertake representation before the EPO depended directly on their
complying with the provisions of Art. 134(7) EPC. Thus, each time a legal practitioner
made a request to act as a professional representative in proceedings before the EPO,
the Legal Division had the right to examine whether he or she satisfied the conditions
under Art. 134(7) EPC. If such a request was refused, it could be refiled and
reconsidered on the basis of new facts at any time. In its decision the board pointed out
that according to Art. 134(7) EPC a legal practitioner qualified in a contracting state had
to have "his place of business in such State". The board noted that in all three languages

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of the EPC the expression "his place of business" (in contrast to "a place of business")
was used. The board stated that this formulation made it clear that the place of business
within the meaning of Art. 134(7) EPC was the place (if any) at which a person practised
his or her profession as legal practitioner.
3. Appointment of a common professional representative (Rule 100 EPC)
VI.L.3. Appointment of a common professional representative (Rule 100 EPC)

In J 35/92 the first-named of two individual joint applicants had transferred his rights in
the application to a company, which had appointed another representative who had then
purportedly withdrawn the application. The second applicant did not agree with the
withdrawal. The department of first instance held that the company was entitled
unilaterally to withdraw the application by virtue of R. 100(1) EPC, according to which the
first-named applicant could be regarded as the representative of both, but the board of
appeal disagreed. R. 100 EPC applied only where no joint professional representative
had been appointed, whereas in the case in question the original applicants had
appointed a representative, who continued to act for the second applicant. The board
therefore concluded that the purported withdrawal of the application by the first-named
applicant was invalid. The parties were given two months to appoint a joint professional
representative, failing which one would be appointed by the EPO.
In J 10/96 the Legal Board of Appeal ruled that where several applicants were
represented jointly by a professional representative, who during the course of
proceedings ceased to represent his clients, the correct procedure to be followed was
that contained in R. 100(2), second sentence, EPC, according to which the applicants
were to be requested by the EPO to appoint a common representative within two
months. If this request was not complied with, the EPO was empowered to appoint the
common representative.
In G 3/99 (OJ 2002, 347) the Enlarged Board of Appeal dealt with the question of
admissibility of joint oppositions and joint appeals. The decision makes it clear that an
opposition filed in common, apart from the fact that it is filed by more than one person, is
as much a single opposition as an opposition filed by only one person. Consequently, the
common opponents are obliged to act in common through their duly determined common
representative. In an opposition filed in common, there must in all cases be a common
representative (Art. 133(4) and R. 100 EPC), and only that common representative is
entitled to act in the opposition proceedings on behalf of all the common opponents
taken as a whole.
The decision further notes that an individual common opponent not being the common
representative, or a subgroup of the group who filed the opposition in common, but
without their common representative, is not allowed to act or intervene on his own or on
behalf of one or more or all of the other individuals. Thus, only the common
representative is entitled to sign the filed documents (R. 100 and R. 36(3) EPC), the
signature of other individuals not being required. At any stage of the procedure, be it the
opposition or the appeal procedure, it may also occur that the joint member who is the
common representative intends to withdraw from being a joint member, ie to withdraw
from the proceedings. In such circumstances, he must notify his decision to the EPO with
the procedural consequence that, for the determination of a new common representative,
the provisions of R. 100(1) EPC have to be applied for the opposition procedure by virtue
of the last sentence of that rule and, for the subsequent appeal procedure, by virtue of
R. 66(1) EPC.

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It may also occur that the common representative ceases to act in the procedure without
the EPO being informed thereof. In both cases, the other joint members must take the
appropriate action to continue the procedure in due time and to inform the EPO of the
new common representative if appointed. However, there is no practical need to
acknowledge the validity of procedural acts of a joint member who is not the common
representative. Since a procedural act performed by a non-entitled person is treated by
the EPO in the same way as a missing signature (see T 665/89), each joint member or
any other person acting on his behalf can perform such an act to avoid missing a time
limit, provided the deficiency is remedied within a further time limit set by the board in the
communication under R. 36(3) EPC notified to the common representative and sent for
information to the non-entitled person who performed the act. The deficiency can be
remedied if the procedural act is signed by the common representative. If, for whatever
reason, this person ceases to be a joint member, the signature must be provided by a
new common representative appointed pursuant to R. 100 EPC.
The issue of the validity of an appeal filed by a person who is not the common
representative named under R. 100(1) EPC in the notice of opposition is dealt with in the
Chapter "Appeal procedure".
4. Authorisations for appointment of a representative
VI.L.4. Authorisations for appointment of a representative

4.1. Filing of the authorisation

R. 101(4) EPC stipulates that if the authorisation is not filed in due time, any procedural
steps taken by the representative other than the filing of a European patent application
shall, without prejudice to any other legal consequences provided for in the EPC, be
deemed not to have been taken (see T 355/86).
R. 101(4) EPC attaches particular importance to formal clarification of the legal
relationship between the entitled person and the representative, especially as regards
the applicant/representative situation. In T 10/82 (OJ 1983, 407) the person who gave
his name as opponent was a professional representative within the meaning of
Art. 134 EPC. The board held that a professional representative within the meaning of
Art. 134 EPC was not entitled to give his own name as opponent when acting for a client.
Thus, the opposition was inadmissible.
In J 12/88 it turned out that the former representative of the appellant had acted before
the EPO on behalf of the appellant without being instructed to do so and using a forged
authorisation. The board considered all these proceedings to be null and void. There had
never been a valid European patent application before the EPO. All fees paid to the EPO
on behalf of the appellant were never due and had to be reimbursed.
In T 850/96 the appellant had alleged that the opposition was not admissible because
the signatories of the notice of opposition did not file an authorisation. According to him
an employee must declare with the notice of opposition that he acts as a professional
representative. Otherwise he must file an authorisation. In the case under consideration
both signatories of the notice of opposition were professional representatives. The board
held that Art. 1(1) of the decision of the President of the EPO of 19 July 1991
(OJ 1991, 489) stipulates that a professional representative whose name appears on the
list maintained by the EPO and who identifies himself as such shall be required to file
a signed authorisation only in the circumstances set out in Art. 1(2) and (3) of this
decision of the President. In the case at issue, the deficiency had not been the lack of a

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signed authorisation, but the failure of the signatories of the notice of opposition to
identify themselves as professional representatives.
4.2. General authorisations
In J 11/93 the applicant formally applied under R. 69(2) EPC for a decision on the finding
that his application was deemed to be withdrawn. He submitted in his statement of
grounds of appeal that the official communication under R. 85a(1) EPC should have
been sent to the authorised European representative since he had been duly
empowered to act on behalf of the applicant by a general authorisation filed with the
EPO in respect of another European patent application. Instead of this the
communication was sent directly to the applicant, a US company.
The board observed that the usual form recommended for general powers had not been
used and nothing in the document filed with the co-pending application allowed the
Receiving Section to infer that the applicant intended the said document to be regarded
as a general power rather than a specific one. The board confirmed that the
authorisation in suit had never been registered by the EPO as being a general one, and
that even if it had been so registered it would then have been incumbent on the applicant
to communicate the number allotted to the general authorisation so that the Receiving
Section could take it into consideration before sending the communication pursuant to
R. 85a(1) EPC to the applicant at its last known address, rather than to the
representative. Under these circumstances the board considered that when the letter
pursuant to R. 85a(1) EPC sent directly to the applicant was issued no European
professional representative had yet been appointed by the applicant. Hence the
provisions of R. 81 EPC, according to which - if a representative (ie a European one) had
been appointed - notifications were to be addressed to him, could not apply but
consequently only those of R. 78(2) EPC (version as in force up to 31.12.1998) relating
to notifications in respect of addressees not having either a residence or place of
business in one of the contracting states and who had not appointed an authorised
representative.
In J 9/99 (OJ 2004, 309) the board decided that the Legal Division had authority to check
the authorisation of a representative named in a general authorisation and to issue a
formal decision to reject the registration of a general authorisation. A decision not to
register a general authorisation can only be issued in respect of a request from a party to
the proceedings within the meaning of R. 101(2) EPC, ie either an authorising or an
authorised party.
In J 17/98 the Legal Board of Appeal needed to rule on whether communications
concerning the deemed withdrawal of applications had been correctly notified to the
applicants, who were residents of a non-EPC contracting state, even though general
authorisations were held by the EPO on their behalf. The applicants argued that the
communications relating to deemed withdrawal should in fact have been notified to the
representatives appearing in the general authorisations on file with the EPO. The board
held that the filing of a general authorisation to act on behalf of a specific applicant and
the notification of the appointment of a representative in an individual application were
two separate procedural acts. By definition, general authorisations did not refer to
specific cases and did not allow the EPO to assume, without further information from the
applicant, that a specific representative had been appointed in a particular case. From
the EPC it was clear that the filing of a general authorisation did not imply the

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appointment of a professional representative in a specific case. In such clear cases

directly following from the provisions of the EPC the principle of the protection of
legitimate expectations did not require the EPO to issue comprehensive legal advice
extending beyond the form in question, provided it was in itself clear and unambiguous.
4.3. Sub-authorisations
In T 227/92 it was held that a sub-authorisation from a professional representative to a
person who was not a professional representative within the meaning of Art. 134 EPC
was invalid. The latter person's role was therefore limited to that of technical adviser to
the professional representative.
In T 382/03 the previous representative, Mr E. of UDL, filed a fax to announce that Mr U.,
who was not a member of that association, would appear for respondent 1 at the oral
proceedings before the board. Mr E. did not notify the board that his association's
authorisation was terminating. Hence, that was a situation where the said President's
decision required the new representative, Mr U., to prove that he was authorised to act
on behalf of respondent 1.
As Mr U. did not refer to a general authorisation from respondent 1, proof of an individual
authorisation had to be provided to the board. In principle, that could be done by filing a
direct individual authorisation from opponent 1, or by filing a sub-authorisation from an
authorised representative who was entitled to sub-authorise a third representative. In
view of the sub-authorisation from UDL submitted by Mr U. at the oral proceedings, the
only issue remaining was whether or not UDL was entitled to give such a sub-
authorisation. As Mr G. had filed notice of opposition 1 without filing an authorisation,
there was no evidence on file that Mr G. had obtained the power to give sub-
authorisations.
In the board's view, the issue of whether or not a board considers a representative to be
authorised by a party was a matter of proof including a free evaluation of the evidence
and overall circumstances in an individual case. To define an appropriate standard of
proof with respect to a representative's authorisation, the board took account of the
purpose for requiring an authorisation.
4.4. Authorisation of an association of representatives
In J 16/96 (OJ 1998, 347) the EPO Legal Division had informed a company X that its
patents department could not be registered as an association of representatives. Such
an association meant one consisting solely of professional representatives in private
practice. This was clear from the "Communication on matters concerning representation
before the EPO" (OJ 1979, 92). Since the members of a company's patent department
were not in private practice, they could not be registered as an association.
The board concluded that there was no basis in the EPC for the EPO's practice of
restricting R. 101(9) EPC to professional representatives "in private practice". An
association within the meaning of that provision could therefore also be formed by
professional representatives not in private practice. This interpretation of R. 101(9) EPC
was consistent with the EPC's general aim, as stated in its preamble, of providing
protection for inventions in the contracting states by a single procedure for the grant of
patents. As noted when it was first introduced, R. 101(9) EPC was to be applicable in
various countries, with differing national legal provisions and traditions, where

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representatives had often pooled their resources by forming some kind of association,
such as a firm. This was why it had been reworded, and the original terms "partnership"
and "Sozietät" replaced with more general ones: "association of representatives" and
"Zusammenschluss von Vertretern". The French term "groupement de mandataires" had
remained unchanged (see CI/GT VI/166d/77 of 20.4.1977). In view of this, there was no
reason to interpret the term "association of representatives" in a way which limited its
meaning.
5. Oral submissions by an accompanying person
VI.L.5. Oral submissions by an accompanying person

5.1. General
In J 11/94 (OJ 1995, 596), the Legal Board of Appeal referred the following question to
the Enlarged Board of Appeal - might a board of appeal exercise discretion in deciding
whether or not a person not entitled under Art. 134(1) and (7) EPC to represent parties to
proceedings before the EPO could make submissions during oral proceedings in addition
to the pleadings by the professional representative. Further, if such discretion existed,
which criteria did the board have to observe when exercising it.
The Enlarged Board of Appeal also had to decide on a question referred to in decision
T 803/93 (OJ 1996, 204). This question was whether, and if so in what circumstances, a
person other than the professional representative (that is, an accompanying person) may
make oral submissions on behalf of a party concerning either legal or technical issues,
during oral proceedings under Art. 116 EPC before an opposition division or a board of
appeal. This question went beyond the circumstances of J 11/94, which concerned ex
parte proceedings involving only legal issues.
The Enlarged Board gave its answer in two decisions, G 2/94 (OJ 1996, 401) referring to
J 11/94, and G 4/95 (OJ 1996, 412) occasioned by T 803/93.
In G 4/95 (OJ 1996, 412) the Enlarged Board noted that the appointment of a
professional representative by a party involved the authorisation and identification of the
professionally qualified person who was responsible for the presentation to the EPO of
all submissions made by the party. Such presentation of a party's case was the essential
core of the function of a professional representative under Art. 133 EPC. During oral
proceedings, a professional representative was expected to present the entire case of
the party that he or she represented.
The Enlarged Board considered separately the presentation of facts and evidence, on
the one hand, and the presentation of arguments, on the other hand.
As to the presentation of facts or evidence by an accompanying person, the Enlarged
Board held that such oral submissions during oral proceedings - in addition to the
complete presentation of the party's case by the professional representative - are not
excluded under the EPC. They may be allowed under the overall discretionary control
which the EPC gives to the EPO with respect to the filing of facts and evidence.
As to the question whether an accompanying person may make oral submissions during
oral proceedings by way of argument, the Enlarged Board pointed out that Art. 133 EPC
made no distinction between written and oral proceedings in connection with the
requirements for representation. Thus a professional representative was responsible for
all written and oral submissions made on behalf of the party who had appointed him.
However, in the context of the written procedure provided under the EPC for

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oppositions and opposition appeals an appointed professional representative could

submit additional documents signed by a third person (for example a professor of law or
science). Provided that they were submitted under the responsibility and control of the
professional representative, they did not have to be excluded from consideration in the
proceedings in which they were filed. Similarly, during oral proceedings under
Art. 116 EPC in the context of opposition or opposition appeal proceedings, a person
accompanying the professional representative of a party was not excluded from making
oral submissions in relation to either legal or technical issues on behalf of that party to
the proceedings under the control of the professional representative, and in addition to
the complete presentation of the party's case by the professional representative.
The Enlarged Board further held that such oral submissions could not be made as a
matter of right, but only with the permission of and at the discretion of the EPO. The
following criteria should be considered by the EPO when exercising its discretion:
(i) The professional representative should request permission for such oral submissions
to be made. The request should state the name and qualifications of the accompanying
person and should specify the subject-matter of the proposed oral submissions.
(ii) The request should be made sufficiently in advance of the oral proceedings so that all
opposing parties are able properly to prepare themselves in relation to the proposed oral
submissions.
(iii) A request made shortly before or at the oral proceedings should, in the absence of
exceptional circumstances, be refused unless each opposing party has agreed to the
making of the oral submissions requested.
(iv) The EPO should be satisfied that oral submissions by an accompanying person were
made under the continuing responsibility and control of the professional representative.
Decision T 302/02, applying G 4/95, did not allow the expert to make submissions.
In G 2/94 (OJ 1996, 401) the Enlarged Board made it clear that there was no difference
as a matter of principle between the admissibility of such oral submissions in ex parte
proceedings and in inter partes (opposition) proceedings, and that this matter had been
fully considered in the context of opposition proceedings in G 4/95 (OJ 1996, 412). The
Enlarged Board noted that it was important that the board should control the
proceedings. The board should exercise its discretion in accordance with the
circumstances of each individual case. The main criterion to be considered was that the
board should be fully informed of all relevant matters before deciding the case. The
board should be satisfied that the oral submissions were made by the accompanying
person under the continuing responsibility and control of the professional representative.
In T 334/94 the board emphasised that for a legal or technical expert to be allowed to
make submissions at oral proceedings on behalf of a party and under the control of that
party's representative, certain criteria relating to Art. 113(1) EPC had to be fulfilled.
G 4/95 had ruled that the party wanting such submissions to be made had to ask
permission sufficiently in advance of the oral proceedings to give the other parties time to
prepare. Only in exceptional circumstances should the EPO allow such a request if made
just before the date of the hearing, unless all the other parties agreed. The board noted
that the Enlarged Board had not defined what "sufficiently in advance" meant, or laid
down a deadline for making such requests. In its view, the deadline of one month

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before the proceedings for filing submissions or new sets of claims was a minimum. On
that basis, nominating an accompanying expert one week before the proceedings was
not acceptable.
On the other hand, in T 899/97 the appellant (opponent) requested that a technical
expert be allowed to speak during the oral proceedings in order to explain the physical
phenomena that occurred when a prior art separator was used. Pointing out that the
relevant letter from the appellant had reached him only two weeks before the oral
proceedings, and referring to G 4/95 (OJ 1996, 412) and T 334/94, the respondent
requested that this technical expert be refused permission to speak.
The board considered the particular circumstances of the case, ie:
- that no time limit for making further submissions had been set by the board with the
summons to oral proceedings
- that the respondent (patent proprietor), although he had had two weeks’ notice of the
technical expert’s appearance at the oral proceedings, had not taken any immediate
action in this respect, but merely objected to his being heard at the beginning of the
oral proceedings
- that the respondent, when referring to the criteria (ii) and (iii) mentioned in headnote
2(b) of decision G 4/95, had not indicated any specific preparatory measure that had
been rendered impossible or hindered by the relatively late presentation by this
technical expert
- that this technical expert was one of the authors of the test report (R2) filed by the
appellant with the statement of grounds, that the board had raised some questions on
this specific technical issue in the annex to the summons to oral proceedings, and that
these technical issues had already been discussed before the department of first
instance.
With this in mind the board held that the request to hear the technical expert had been
submitted sufficiently in advance of the oral proceedings by the appellant, and that the
respondent had been able “to properly prepare” himself "in relation to the oral
submissions" by this technical expert, including explanations concerning the physical
phenomena occurring in prior art separators as tested in R2 (see G 4/95).
In T 621/98, during oral proceedings, the board was faced with the question of whether
the patent proprietor, who was professionally represented, needed to announce in
advance his intention to make submissions during the proceedings, pursuant to G 4/95
(OJ 1996, 412). The board ruled that the patent proprietor was a party to the
proceedings and as such was not to be treated as an accompanying person. As a party
to the proceedings he had a right to take part in them.
In T 475/01 the board, exercising its discretion under the EPC and taking account of the
criteria established by the Enlarged Board of Appeal (see G 4/95, OJ 1996, 412),
allowed oral submissions by the persons accompanying both parties at the oral
proceedings. Unlike the respondent, the board took the view that neither the EPC nor the
above Enlarged Board decision could be held to imply that a party that represented itself
in proceedings was to be treated differently to a professional representative in respect of
oral submissions by accompanying persons.

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In T 1212/02 the appellant did not consent to a colleague of the representative of the
respondent (opponent) making submissions before the board during oral proceedings.
While the representative herself was authorised to act as a professional representative
within the meaning of Art. 134 EPC, the same was not true of her colleague, even
though he too worked in the patent department of the same firm, the respondent's
holding company, and was familiar with the case in point. The appellant (patentee)
observed that no provision had yet been made under Art. 133(3) EPC to allow the
employees of one legal person to represent another legal person.
As the appellant had argued, it was true that no legal provision had been made for the
representative of one company to be undertaken by an employee of another company
connected with the former company. It was also true that it was a matter for the board's
discretion to allow a person who was not the professional representative authorised for
the case in point to make oral submissions on legal or technical issues before the board,
provided the criteria established in G 4/95 were met. To save time, the board in the case
at issue decided on a pragmatic approach and allowed the professional representative's
colleague to make submissions, but only after the representative had given an express
assurance that she took full responsibility for such submissions.
5.2. Oral submissions by former members of the boards of appeal
In J 11/94 (OJ 1995, 596) the authorised representative was accompanied during oral
proceedings by a former chairman of the Legal Board of Appeal who had retired about a
year and a half previously. The professional representative requested permission for the
former board member to make submissions in addition to his own arguments. The case
referred to the Enlarged Board therefore encompassed the question whether special
criteria applied to the exercise of a board's discretion in relation to a request for the
making of additional oral submissions by a former board of appeal member.
The Enlarged Board noted in G 2/94 (OJ 1996, 401) that there was a potential conflict
between what might be seen as a right of former board of appeal members to seek
subsequent employment on the basis of their special knowledge by making oral
submissions during proceedings before the EPO, and the need for proceedings before
the EPO to be conducted free from any suspicion of partiality. The existence of such a
potential conflict was well recognised in the context of national judicial systems where it
was clear that persons accepting appointments as judges were subject to restrictions if
they wished to work in private legal practice after having served as judges. The
existence of such restrictions reflected the generally recognised principle of law that
parties to legal proceedings were entitled to a fair hearing before judges who could not
reasonably be suspected of partiality. It concluded that the above potential conflict had to
be resolved with a view to avoiding any suspicion of partiality during the conduct of
proceedings before the EPO. The public interest in the proper conduct of proceedings
before the EPO had to prevail over the personal interests of former board of appeal
members who wished to make oral submissions on behalf of parties to the proceedings.
It was therefore necessary to place restrictions on the admissibility of such oral
submissions, at least for a reasonable period of time following termination of a person's
appointment as a member of a board of appeal. In the absence of specific legislation, the
point in time following termination of his or her appointment after which a former member
of the boards of appeal might make oral submissions in proceedings before the board of
appeal was a matter within the judicial discretion of the boards of appeal. The

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Enlarged Board found that during either ex parte or inter partes proceedings, a board of
appeal should refuse permission for a former member of the boards of appeal to make
oral submissions during oral proceedings before it, unless it was completely satisfied that
a sufficient period of time had elapsed following termination of such former member's
appointment to the boards of appeal, so that the board of appeal could not reasonably be
suspected of partiality in deciding the case if it allowed such oral submissions to be
made.
The board of appeal should normally refuse permission for a former member of the
boards of appeal to make oral submissions during oral proceedings before it, until at
least three years have elapsed following termination of the former member's
appointment to the boards of appeal. After three years have elapsed, permission should
be granted except in very special circumstances. Before the expiry of three years, there
would normally be too great a risk that the public would consider the making of such
submissions in oral proceedings to give an unfair advantage to the party on whose
behalf a former member appeared.
5.3. Oral submissions by qualified patent lawyers of non-EPC contracting states
Another question of law decided in G 4/95 above was whether, having regard in
particular to the provisions of Art. 133 and Art. 134 EPC, a person who was not qualified
in accordance with Art. 134 EPC but was a qualified patent lawyer in a country which
was not an EPC contracting state might present some or all of a party's case as if he
were qualified under Art. 134 EPC. The Enlarged Board decided that no special criteria
applied to the making of oral submissions by qualified patent lawyers of countries which
were not contracting states to the EPC. The criteria set out above were equally
applicable to such patent lawyers.
6. Distinction between presentation of facts and evidence and presentation
of arguments
VI.L.6. Distinction between presentation of facts and evidence and presentation of arguments

In G 4/95 the Enlarged Board noted that the distinction between the presentation of facts
and evidence, on the one hand, and the presentation of arguments, on the other hand,
was of basic importance under the EPC. It noted, as discussed in T 843/91
(OJ 1994, 818), a practice developed in the boards of appeal "to allow contributions by
experts under the control of the authorised representative when it considers it would be
useful for the good understanding of the case", thus mirroring the practice within the
opposition division. In decision T 843/91 it was suggested that the legal basis for
admitting such oral submissions by "experts" was Art. 117 EPC. In this connection, the
Enlarged Board did not accept that Art. 117 EPC provided a legal basis for hearing oral
submissions by an accompanying person involving the presentation of facts and
evidence, as was suggested in decision T 843/91 for example. Art. 117 EPC and its
implementing rules, R. 72 to R. 76 EPC, were solely concerned with setting out the
procedure relevant to formal "taking of evidence". Such procedure necessarily involved
as a precondition for its use the making of a decision to take evidence within the
meaning of Art. 117 EPC, and that decision had to set out all the matters prescribed in
R. 72(1) EPC, as the first stage in the procedure.

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 VI.M.1. Right to a decision

M. Decisions of EPO departments

Decisions of EPO departments

1. Right to a decision
VI.M.1. Right to a decision

Pursuant to R. 69(1) EPC, the EPO, if it notes that the loss of any rights results from the
EPC, must communicate this to the party concerned. If the party disagrees with the
finding of the EPO it may apply for a decision on the matter by the EPO (R. 69(2) EPC)
or it may request further processing or reestablishment of rights, as the case may be
(J 14/94, OJ 1995, 824).
The right to a decision after notification of loss of rights is a substantial procedural right
which cannot be ignored by the EPO. A party who applies for a decision under
R. 69(2) EPC is entitled to receive one. If the correctness of a notification of loss of rights
under R. 69(1) EPC is challenged, the EPO has a duty to reply within a reasonable
period of time having regard to the subject-matter of the communication (see J 29/86,
OJ 1988, 84; J 34/92).
In J 7/92 the board stated that although it would be preferable for the EPO to issue a
communication under R. 69(1) EPC quickly, it could not be blamed for having done so in
the case at issue over seven months after expiry of the period of grace. The EPC did not
provide that the EPO should note the loss of rights mentioned in R. 69(1) EPC within a
certain period. Nor did it provide any period of time for the ensuing communication. The
EPO could not be required to keep a permanent and close eye on every file so as always
to act as quickly as possible in order to preserve all the applicant's rights. However,
when the EPO had to handle incoming requests or documents containing clear
deficiencies which were obviously easy to correct and could be expected to be remedied
within the time limit to avoid a loss of rights, then the question might arise
whether - depending on the case - the principles of good faith governing the relations
between the parties and the EPO did not demand that the EPO should not fail to draw
attention to such deficiencies (on the principle of the protection of legitimate expectations
see Chapter VI.A.).
In J 43/92 the board noted that a decision pursuant to R. 69(2) EPC could only validly be
applied for in the circumstances defined in R. 69(1) EPC. Thus, it was a necessary
condition for such an application that the EPO previously noted the loss of a right
resulting from the EPC without any decision and communicated this to the party
concerned. Otherwise, there was no basis for the EPO to give a decision pursuant to
R. 69(2) EPC. The board further noted that R. 69(1) EPC did not prescribe any particular
form for the communications provided therein, distinguishing them from other
communications or notifications under the EPC. Even if, according to the Legal Advice
No. 16/85 (OJ 1985, 141) communications in which the EPO noted the loss of any right
normally contained a reference to the time limit for an application for a decision on the
matter under R. 69(2) EPC, such reference did not appear to be necessarily decisive as
to the true nature of the communication. Whether a document constituted a
communication pursuant to R. 69(1) EPC should be derived from its substantive content
and its context (as to the form for such communications, see below Chapter VI.M.5.).

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2. Composition of the competent departments of first instance

VI.M.2. Composition of the competent departments of first instance

2.1. Examining division

In T 714/92 the board could not find any indication in the part of the file open to public
inspection that the primary examiner had already signed the impugned decision before
the date on which he left the examining division. The board held that to take a decision
on a date on which the examining division no longer existed in its stated composition,
without the examining division ensuring that it be apparent from the part of the file open
to public inspection that the member who left the examining division had agreed the text
of the decision before leaving, had to be considered as a substantial procedural violation.
Thus the impugned decision was set aside as void ab initio and without legal effect.
2.2. Opposition division
Art. 19(2) EPC stipulates that an opposition division must consist of three technical
examiners, at least two of whom must not have taken part in the proceedings for grant of
the patent to which the opposition relates.
In T 390/86 (OJ 1989, 30) oral proceedings had taken place in the presence of three
examiners appointed to form the opposition division. The chairman had announced its
decision during the oral proceedings in the presence of the other two examiners.
Although the decision had subsequently been duly reasoned in writing, it had been
signed by three members other than those before whom the oral proceedings had taken
place. The board considered whether the decision of the opposition division was valid
having regard to the circumstances. It was thus clear from Art. 19 EPC that the power to
examine and decide an opposition pursuant to Art. 101 and Art. 102 EPC had at all times
to be exercised personally by the examiners appointed to do so. The power of a
department of the EPO such as an opposition division to issue a decision had not only to
be exercised personally but also to be seen, both by the parties and by the public, to be
exercised personally. Similarly, where a decision was issued in writing setting out
reasons for an oral decision, the parties and the public should be able to see from the
written decision that it had been taken by the examiners appointed to the particular
opposition division responsible for that oral decision. It was of course possible that not all
the appointed members were able to sign a written decision (for example through
illness). However, in the board's view, if the decision of a particular division was to be
legally valid, it had to have been written on behalf of and represent the views of the
members who were appointed to that division to decide the issue or issues which were
the subject of the decision, and it had to bear signatures which indicated this. As a result,
the written reasons for a decision delivered during oral proceedings could only be signed
by the members of the deciding body who took part in the oral proceedings. The board
therefore held that if, in a case where a final substantive decision had been given orally
by an opposition division during oral proceedings, the subsequent written decision giving
the reasons for that oral substantive decision was signed by persons who did not
constitute the opposition division during the oral proceedings, the decision was null and
void.
In its decision T 243/87 the board of appeal developed further the principles established
in T 390/86. The board held that even though only one member of the opposition division
had been replaced after the oral proceedings, there was no longer any guarantee that
the reasoned decision signed subsequently accurately reflected the point of view of all

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three members who had taken part in the oral proceedings, or even of the majority of the
opposition division. In the board's view, the exceptional situation in which one of the
appointed members was incapacitated (for example through illness) was quite different.
In such cases it was right to accept that, although the reasoned written decision should
be signed only by the members of the division who actually took part in the oral
proceedings, one of them could sign on behalf of the member unable to do so. It was of
course advisable to check that the reasoned written decision represented the point of
view of all the members who took part in the oral proceedings.
In T 251/88 the composition of an opposition division was held to be contrary to
Art. 19(2) EPC, because two of the three members had taken part in the proceedings for
grant of the patent to which the opposition related. The board of appeal ordered that the
decision of the opposition division be set aside and the case be remitted for fresh
examination by an opposition division with a different composition (see also T 382/92).
In T 939/91 the chairman of the opposition division had participated as second examiner
in the decision to grant the patent in suit, as was clear from EPO Form 2035.4. The
board of appeal decided that the opposition division had therefore violated the provisions
of Art. 19(2) EPC and that the decision delivered had to be annulled on the grounds that
the department delivering it had not been competent to do so. The board felt it fair to
order reimbursement of the appeal fee, given that violation of the provisions of
Art. 19(2) EPC had to be considered as a substantial procedural violation.
In T 476/95 the chairman of the opposition division had, at an earlier stage of the grant
proceedings, written and signed a negative communication which preceded the decision
of the examining division to refuse the application. In the board's opinion, Art. 19(2), first
and second sentence, EPC referred to the participation of members of the opposition
division at every stage of the grant proceedings, not only to their involvement in the final
decision. The primary examiner in the opposition proceedings had also been a signatory
to the decision refusing the application after examination. A breach of Art. 19(2) EPC
was considered to have occurred if both the primary examiner and the chairman of the
opposition division had taken part in the grant proceedings.
In T 960/94 the board held that to comply with R. 68(1), second sentence, EPC and
R. 68(2) EPC a written reasoned decision confirming the orally announced decision was
required. Such a written reasoned decision had to be issued on behalf of the very same
members of the opposition division who were present at the oral proceedings, as the
task of giving a written reasoned decision was personal to those members of the
opposition division present at the oral proceedings and could not be delegated to a
differently composed opposition division, even if two of the members remain the same
(following T 390/86, OJ 1989, 30). As no confirmatory written decision had been issued
in the names of the members present at the oral proceedings, the decision given orally
was void and had to be set aside.
In the case at issue in T 838/02, the composition of the opposition division had been
contrary to Art. 19(2), second sentence, EPC. The board noted that, in such a situation,
previous decisions of the boards of appeal had set aside the contested decision
immediately, as in T 939/91. In T 251/88, however, the board had asked the applicant
(appellant) whether he invoked the procedural violation before deciding on the remittal of
the case. The present board noted that it preferred the latter approach. It observed that it
might be in the legitimate interest of the parties in an individual case to proceed and to

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come to a final decision as quickly as possible. A remittal implied a substantial delay,

even if the case was treated with priority by the department of first instance. The board
therefore considered it appropriate to give the parties an opportunity to comment before
deciding on the question of remittal. Since the appellant had requested remittal and the
respondents had not objected, the conclusion was that remittal had to be ordered in the
absence of any special reasons for doing otherwise (Art. 10 RPBA).
In T 900/02 a member of the opposition division took employment with the respondent's
representative's firm after the oral proceedings; however, no offer to the parties of new
oral proceedings was made. The board pointed out that the case law of the boards of
appeal showed it to be well-established that a signed written decision issued after oral
proceedings should be the decision of those members of the first instance who
conducted the oral proceedings and none others. The case-law also showed that a
change of composition of an opposition division between oral proceedings and the issue
of a written decision should be avoided and, if that was not possible, parties should be
offered new oral proceedings in the event of a change (see T 862/98).
3. Suspected partiality
VI.M.3. Suspected partiality

3.1. General principles

In G 5/91 (OJ 1992, 617), the Enlarged Board of Appeal commented on the suspected
partiality of a member of an opposition division. In the case which had led to the referral,
T 261/88 (OJ 1992, 627), the primary examiner was a former employee of the opponent
and had represented that company many times in examination and opposition
proceedings before the EPO. The Enlarged Board observed that although the questions
referred to it were directly related only to proceedings before an opposition division, the
problems involved were of a general character and also had a bearing on the activities of
the other EPO departments of first instance charged with the procedure, eg the
examining divisions (see Art. 15 EPC).
The Enlarged Board stated that it must be considered as a general principle of law that
nobody should decide a case in respect of which a party may have good reasons to
assume partiality. The basic requirement of impartiality therefore also applied to
employees of the EPO departments of first instance engaged in decision-making
activities affecting the rights of any party. Although the provisions of Art. 24 EPC on
exclusion and objection only applied to members of the boards of appeal and the
Enlarged Board of Appeal and not to employees of the EPO departments of first
instance, including opposition divisions, this did not justify the conclusion that such
employees were exempt from the requirement of impartiality. Furthermore, although
Art. 24 EPC was only applicable to appeal proceedings, it seemed justified to apply the
principles underlying the provisions of Art. 24(3), second and third sentences, EPC to an
objection on the ground of suspected partiality before a department of first instance.
Such an objection could thus be disregarded if it was not raised immediately after the
party concerned became aware of the reason for the objection or if it was based on
nationality. Finally, the Enlarged Board found that the question whether or not an
objection to a member of an opposition division on the ground of suspected partiality was
to be considered justified could only be decided in the light of the particular
circumstances of each individual case. Such considerations involved factual questions of
degree rather than points of law and were therefore not a matter for the Enlarged Board
of Appeal to decide.

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3.2. Individual cases

3.2.1 Members of the examining and opposition divisions
In T 433/93 (OJ 1997, 509) following a substantial procedural violation in connection with
a decision issued by a department of first instance, the decision was set aside at the
request of a party, and the case was remitted to the department of first instance for re-
hearing. Following such remittal, the board found it necessary for the case to be
examined and decided by a different composition of opposition division (that is, by a
composition of three new members), in relation to the grounds of opposition raised and
introduced into the proceedings. The board considered that if the case was to be heard
further and re-decided by the same composition of opposition division, the members of
the opposition division would have to attempt to put out of their minds the result of their
previous decision before re-hearing and re-deciding the case.
The board held that the important point was not whether the file record showed any
previous evidence of actual partiality by the members of the opposition division during
the previous conduct of the case (see T 261/88 of 16.2.1993), or whether the present
members of the opposition division would in fact be unprejudiced or impartial if they re-
heard the case, but whether a party would have reasonable ground to suspect that
they would not receive a fair hearing if the case was re-heard before the same
composition of opposition division (whether because of possible prejudice as to how the
case should be decided, or because of possible partiality, or otherwise).
In T 261/88 of 16.2.1993 the board held that a disqualifying partiality presumed a
preconceived attitude on the part of a deciding person (in this case the first examiner)
towards a party (in this case the patentee) of the case. The fact that the views held on
the issues of the case by the examiner differed from those held by the party was itself
not disqualifying. The board noted that disqualifying partiality was limited to situations
where the opinion of a person responsible for taking decisions affecting the right of
parties (eg a judge) was swayed by his attitude towards a party. The board examined
whether the reasoning underlying the decision under appeal showed such major
deficiencies that there was reason to believe that the primary examiner was, either
deliberately or inadvertently, trying to "bend" the facts of the case, and that this was done
because of a preconceived attitude towards one of the parties. The board could not find
anything basically or conspicuously wrong with the analysis of the technical questions.
In T 143/91 the board held that a member of an opposition division was biased if it could
be shown that he had a personal interest within the meaning of Art. 24(1) EPC. The
mere fact that the member was previously employed by a company dependent on a
party to the opposition proceedings was not, however, sufficient proof of such an
interest.
In T 951/91 (OJ 1995, 202) objections under Art. 24 and Art. 19(2) EPC were raised by
the appellant in the statement of grounds of appeal suggesting that the opposition
division had been biased in its attitude to the parties. In reaching its decision on this
point, the board observed that nothing in the minutes of the oral proceedings, which the
appellant had not criticised, led to the conclusion that the arguments had not been duly
considered by the opposition division or that the latter was suspected of bias during
those proceedings. The board examined the reasons set out in the appealed decision
and observed that the decision itself did not reveal any bias.

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In T 611/01 the board found that a substantial procedural violation had occurred and
decided that only a remittal could ensure the case was given the procedurally correct
treatment which had previously been denied. The board considered that the new
examination proceedings should be conducted by a differently composed examining
division, that is, by a division of three new members. Such a direction was typically
made when there was a question of possible bias against a party and the board
emphasised that that was not the case here. However, a differently composed first
instance could also be appropriate when a party had reasonable grounds for feeling it
might not otherwise have a fair re-hearing, as occurred in T 433/93 (OJ 1997, 509) or
where, as in T 628/95 of 13.5.1996, remittal to a differently composed first instance was
ordered ipso facto on the board's concluding that the decision at first instance was null
and void.
The board noted that the appellant had requested a different composition but, even in
the absence of such a request, it would have so directed because, after grave procedural
irregularities, it was important to ensure so far as possible there should not be any
ground for dissatisfaction with the conduct of the further proceedings, such as might well
be the case if the same examining division was again to refuse the application even after
impeccably conducted proceedings. In the circumstances, and bearing in mind that
someone not a member of the particular examining division could have been responsible
for, or at least involved in the procedural violation, such a direction was also fairer for the
members of the examining division who took the decision under appeal.
In T 900/02 the board observed that it was well-established in the case law of the boards
of appeal that a suspicion of partiality or bias could be sufficient to invalidate a first
instance decision (see "Case Law of the Boards of Appeal of the EPO", 4th edition 2001,
p. 378 et seq.). This reflected a basic principle of procedural law in the contracting states
of the EPC (see Art. 125 EPC), namely that all the members of a tribunal had to be
above any suspicion of bias. Although often referred to as the rule against bias (or
sometimes as a rule of natural justice), it was important to note that, in the majority of
cases in which it was invoked, no actual bias or partiality was established and all that
occurred was an inference that one or more persons in a decision-making capacity might
have had reasons to favour a particular party.
The board noted that in G 5/91 (OJ 1992, 617) the Enlarged Board held that the question
whether or not an objection of suspected partiality was justified could only be considered
in the particular circumstances of each individual case. The board considered the
appellant's objection in the form of a question: can justice be seen to have been done in
the circumstances of the case at issue, namely when a member of the opposition
division took employment with the respondent's representative before the written
decision was issued? The board found that nothing untoward actually happened in the
case at issue; it stated that a suspicion of partiality however had inevitably to arise if a
member of an opposition division, or any other first instance body, first solicits and then
accepts employment with a firm in which a partner or other employee was conducting a
case pending before that member.
In T 479/04, the board observed that the decision in G 5/91 (OJ 1992, 617) stated the
following as an obiter dictum: In respect of opposition proceedings there may be
arguments in favour of letting the opposition division itself consider and decide upon
such matters by means of an interlocutory decision allowing separate appeal. This would
have the advantage of making it possible to have this procedural matter settled before a

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decision on the substance is taken. According to the board, it could be inferred from this
that there was no principle prohibiting an opposition division from deciding itself on an
allegation of partiality made against it (see G 5/91). The board found that the order in
G 5/91 in fact left it open whether the decision on the opposition division's partiality
necessarily had to be taken before its final or interlocutory decision on the substance.
The board held that, although the Enlarged Board had, in the above obiter dictum,
considered it advantageous for the procedural matter to be settled before a decision on
the substance was taken, it could not be inferred from the order in G 5/91 that it was
forbidden in principle to decide on that matter together with the decision on the
substance. The board therefore concluded that the opposition division had not committed
any procedural error in the case in hand by deciding itself, as part of the contested
decision, on the allegation that it would be impartial.
3.2.2 Members of the boards of appeal
In T 843/91 (OJ 1994, 818), a newly appointed board had to consider whether the three
members of the board of appeal originally appointed could be suspected of partiality. The
board agreed with the view held in decision T 261/88 (see above) that a disqualifying
partiality presumed a preconceived attitude towards a party on the part of a person in a
decision-making capacity. More precisely, partiality would be knowingly to favour one
party by granting it rights to which it was not entitled, or by intentionally disregarding the
rights of the other party. The board referred to G 5/91 (OJ 1992, 617) which stated that
the question whether or not an objection to members on the ground of suspected
partiality was to be considered justified could only be decided in the light of the particular
circumstances of each individual case.
In T 241/98 of 22.3.1999 a party to the appeal proceedings raised an objection under
Art. 24(3) EPC to a member of the board on the basis of suspected partiality. As the
objection was formally admissible the board held oral proceedings on the substantive
issue of partiality, excluding the member objected to and including his alternate. As the
board was unable to establish any objective basis for a suspicion of partiality, the
exclusion of the original member was lifted and the appeal was continued before the
board in its original composition.
In T 1028/96 of 15.9.1999 the board had to consider the correct procedure where an
objection of partiality was raised against board members. The board ruled that a
preliminary examination for admissibility under Art. 24(3) EPC was incumbent on the
original board, following which the procedure under Art. 24(4) EPC might need to be
followed if the objection was admissible. An objection by a party that a member of the
board had previously "participated in the decision under appeal" (Art. 24(1) EPC) only
covered decisions of the examining and opposition divisions and not decisions of the
boards of appeal arising from those decisions. An objection under Art. 24(3) EPC based
on "suspected partiality" could give rise to exclusion of board members originally
appointed in circumstances where substantially the same crucial facts were at issue in
opposition appeal proceedings as had previously been at issue in grant appeal
proceedings "in the light of the particular circumstances of each individual case".
According to T 954/98 of 9.12.1999, the rules for exclusion from a board for partiality
should be interpreted not only in the light of the principle of judicial impartiality, but also
the principle of "gesetzlicher Richter" (ie according to the principle of "the duly
designated judge"), such that, firstly, a member whose impartiality was suspect should

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not handle a case, but secondly that parties should not be able to change the
composition of boards at will for no objective reason. Purely subjective impressions or
vague suspicions were not enough to disqualify a member. The member's behaviour or
situation had to provide objective justification for a party's fears. The mere fact of taking
discretionary procedural steps which might disadvantage a particular party was not
enough to justify exclusion, not even if the party concerned interpreted those steps as
expressing bias against it.
In T 190/03 (OJ 2006, 502) the proprietor's objections and arguments involved a rather
complex combination of possible sources of partiality. The board observed that there
were two distinct aspects of partiality involved in the proprietor's objections and the
situations envisaged by Art. 24 EPC. Firstly, partiality for subjective reasons, ie an actual
partiality on the part of the member, for example due to a personal interest or a dislike of
a party. Secondly, a suspicion or appearance that there is partiality, which would be
derived by an "objective observer" from a particular action of a member, or an assumed
response to a proprietor's action. Thus, the board noted that the existence of partiality
had to be determined on the basis of the following two tests:
- Firstly, a "subjective" test requiring proof of actual partiality of the member concerned.
- Secondly, an "objective" test where the deciding board judges whether any
circumstances of the case give rise to an objectively justified fear of partiality.
Actual partiality was an internal characteristic of the member himself and its presence
was clearly objectionable because it went against the principle of a fair trial. However,
suspicion and appearances were not enough to show actual partiality. This was because
it was a fundamental duty of a member acting in a judicial capacity to take decisions
objectively and not be swayed by personal interest or other peoples' comments or
actions. Thus, personal impartiality of a member was to be presumed until there was
proof to the contrary.
On the other hand, the appearance of partiality involved external aspects and it did not
need to be proved in the same way as actual partiality, but the circumstances had to be
judged to see whether they gave rise to an objectively justified fear of partiality. This
essentially corresponded to the "objective" and "reasonable" grounds identified above in
the case law of the EPO.
Applying the above tests to the case at issue, the board came to the following
conclusions:
The board held that not admitting amended claims, regardless of whether the board had
correctly used its power or discretion to do so, would not give rise to an objectively
justified fear of partiality. It also held that at the beginning of an appeal case where a
properly constituted board had not performed a procedural step, there were generally no
circumstances that gave rise to an objectively justified fear of partiality. Finally, it held
that the mere fact that the member concerned gave reasons and explanations of the
reasons, which went beyond the facts, in response to an invitation under Art. 3(2) RPBA
did not give rise to an objectively justified fear of partiality under the objective test.

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 VI.M.4. Date of decision

4. Date of decision
VI.M.4. Date of decision

4.1. Entry into force of decisions

The Enlarged Board of Appeal has held that it is necessary to distinguish between
decisions taken after the closure of the debate in oral proceedings and decisions taken
following written proceedings. Where oral proceedings are held, the decision may be
given orally. The decision becomes effective by virtue of its being pronounced. The
equivalent of that point in time in written proceedings is the moment the decision is
notified. Once it has been pronounced and, in the case of written proceedings, notified,
the decision enters into force and cannot be amended, even by the department that
issued it. A decision may only be revoked by the department that issued it by way of an
interlocutory revision under Art. 109 EPC if one of the parties has filed an admissible and
well-founded appeal (G 12/91, OJ 1994, 285).
4.2. Completion of the internal decision-making process
In T 586/88 (OJ 1993, 313) the board referred the following point of law to the Enlarged
Board of Appeal: "If the decision of an examining or opposition division is pronounced
not at the end of oral proceedings but following written proceedings or proceedings
continued in writing after oral proceedings, at what point is the internal decision-making
process within that department of the EPO completed?".
In G 12/91 (OJ 1994, 285) the Enlarged Board of Appeal stated that the point of law
referred was of vital importance to the general question of determining the final point at
which a first-instance department of the EPO could still take account of further
submissions by the parties. The Enlarged Board noted that the point in time at which a
decision entered into force, ie the moment it was pronounced or notified, was not the last
moment at which parties could still submit observations. This had to be done at an
earlier point in the proceedings to allow the decision-making department time to
deliberate and then issue its decision based on the parties' submissions.
As far as oral proceedings were concerned, established board of appeal case law had
this point in time as the time of closure of the debate, which was fixed by the decision-
making department - having first heard the parties' submissions - to allow itself time to
consider its decision. Once the debate had been closed, further submissions by the
parties had to be disregarded unless the decision-making department allowed the parties
to present comments within a fixed time limit or decided to reopen oral proceedings for
further substantive debate on the issues.
In the case of decisions taken following written proceedings, the final moment at which
fresh matter submitted by the parties could still be taken into account had to correspond
to the time of closure of the debate during oral proceedings. The need to ensure legal
certainty required that this moment be as clearly fixed as the moment when the debate
was closed during oral proceedings. Neither the EPC nor its Implementing Regulations
contained any provision fixing that moment.
The Enlarged Board of Appeal reached the conclusion that the point in time at which the
internal decision-making process was completed was the date on which the formalities
section handed over the date-stamped, post-dated decision to the EPO postal service.
This was a date the parties could ascertain very easily, because, as the President of the
EPO had explained, it was always three days prior to the date stamped. Internal EPO

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instructions made it clear that a period of three days always elapsed between the date-
stamping of a decision and its despatch. If, for whatever reason, the EPO postal service
was unable to despatch the decision on the date stamped, it returned the decision to the
formalities section where it was given a new date, which again pre-dated the date of
actual despatch by three days. This practice ensured that the date of despatch was
always stamped on the decision three days before it was actually despatched. It thus
fulfilled the need for strict legal certainty which the handing down of a decision had to
ensure.
When a decision is handed over by the formalities section to the EPO postal service for
notification, it is taken from the file and is therefore removed from the power of the
department that issued it. This moment marks the completion of proceedings before the
decision-making department. Once proceedings have been completed the decision-
making department can no longer amend its decision. It must disregard any fresh matter
the parties may submit to the EPO thereafter. Seeing that it is important for the parties to
know at which point in time the decision-making process following written proceedings is
completed, this point in time should be clearly indicated in the decision (see also
T 631/94, OJ 1996, 67).
In T 798/95 the decision to grant a European patent was handed over to the EPO postal
service for notification on 25.8.1995 during the official working time of the EPO. On
25.8.1995, at 6.47 pm, the appellant filed a request by telefax for amendment of the
application under R. 86(3) EPC. The board held that a request for amendment filed after
the completion of the proceedings up to grant before an examining division was to be
disregarded even if the filing of the request and the completion of the proceedings
occurred on the same date. The board noted that the proceedings before the examining
division were completed not later than at the end of the official working time on that date.
Thereafter, the examining division could no longer amend its decision, as it was not
competent to consider the request. The appellant's submissions that the examining
division had been responsible for the application all day on Friday, 25.8.1995 and that it
was possible to amend the application until issue of the decision were therefore not
correct.
5. Form of decisions
VI.M.5. Form of decisions

5.1. General issues

In T 390/86 (OJ 1989, 30) the board stated that when a substantive decision is given
orally during oral proceedings it must be formally notified to the parties in writing
(R. 68(1) EPC) and formally completed by giving reasons for the decision in writing
(R. 68(2) EPC). In the board's judgment, it was clear from R. 68 EPC and Art. 108 EPC
that until a substantive oral decision was formally completed in writing and notified to the
parties, the two-month period within which a notice of appeal had to be filed did not
begin.
In J 8/81 (OJ 1982, 10) the board stated that in accordance with the normal practice of
the EPO, the contents of the communication ought to have been identified as a decision,
so as to preserve the clear distinction made in the EPC and Implementing Regulations
between decisions and communications (see eg R. 68 and R. 70 EPC). The letter ought
also to have drawn attention to the possibility of appeal and the provisions of Art. 106 to
Art. 108 EPC, in conformity with R. 68(2) EPC. The fact that the requirements of

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R. 68(2) EPC were not fully complied with did not, however, mean that the letter was
merely a communication. Whether a document issued by the EPO constituted a decision
or a communication depended on the substance of its contents, not on its form
(J 43/92, T 222/85, OJ 1988, 128).
In T 42/84 (OJ 1988, 251) the board held that the alleged failure of the EPO to enclose
the text of Art. 106 EPC to Art. 108 EPC with the decision neither invalidated the
decision nor did it constitute a substantive procedural violation. R. 68 EPC stated that the
written communication of the possibility of appeal had to draw the attention of the parties
to the provisions laid down in Art. 106 to Art. 108 EPC, the text of which should be
attached. However, it also stated that the parties could not invoke the omission of that
communication. This had, in the board's view, to be read as applying also to the
omission of the text of the articles alone.
In T 222/85 (OJ 1988, 128) the board noted that the contents of a "communication"
never constituted a "decision". This distinction was important, because only a "decision"
could be the subject of an appeal - see Art. 106(1) EPC. In the case at issue the
communication only represented a preliminary view, on an ex parte basis, and was not
binding upon the department of the EPO which sent it. In contrast, the contents of a
"decision" were always final and binding in relation to the department of the EPO which
issued it, and could only be challenged by way of appeal.
In J 20/99 the board noted in its decision that all EPO departments should, if quoting a
decision of the boards of appeal or any other legal authority, identify that authority and
place the cited passage(s) in quotation marks. It found that the examining division had
raised in its communication some objections having in mind the reasons of a decision of
a board of appeal that were repeated verbatim without any quotation marks or attribution.
The board had observed that the situation then was completely different from that which
the examining division had in mind.
In T 830/03, after a written reasoned decision was notified to the parties, the formalities
officer informed the parties that the written decision "was only a draft". A second written
decision intended to supersede the first written decision had been issued by the EPO.
The board noted that the need for legal certainty required a presumption of validity in
favour of a written decision which was notified to the parties by an opposition division in
accordance with the formal requirements of the EPC, in particular R. 68 to R. 70 EPC.
Once the decision was pronounced and the (first) written decision, in the case at issue,
notified to the parties, the opposition division was bound by it even if it considered its
decision not to "have any legal effect" (see T 371/92, OJ 1995, 324). The decision could
be set aside only by the second instance on the condition that an allowable appeal was
filed under Art. 106 EPC. With the filing of the first notice of appeal, the power to deal
with the issues involved in this case passed from the department of first instance to the
appeal instance (devolutive effect of the appeal).
Therefore, in the judgment of the board, the written decision, which was notified to the
parties by the opposition division in accordance with the formal requirements of the EPC,
in particular R. 68 to R. 70 EPC, constituted the only legally valid written decision. All
actions carried out by the opposition division after the notification of the decision, and a
fortiori after the filing of the first appeal, were ultra vires and thus had no legal effect.

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5.2. Inconsistency between oral and written decisions

In T 666/90 the opposition division had indicated during oral proceedings that it would
maintain the European patent as amended if new documents conforming to the version
of the claims it had said it would allow were submitted. Although such a set of claims had
not yet been formally submitted in writing by the applicants' representative during oral
proceedings, the representative had given an undertaking to do so later and had done so
by the deadline set. The written decision had revoked the patent however. The board
held that this inconsistency between the oral and written decisions was in breach of
R. 68(1) EPC and was hence a substantial procedural violation.
In T 425/97 an appellant submitted as sole ground of appeal the inconsistency existing
between the written decision and the form of the patent held to be patentable by the
opposition division at the oral proceedings. The board held that any substantive
deviation, as in this case, of the decision notified in writing from the decision taken at the
oral proceedings and given orally, amounted to a procedural violation.
5.3. Reasons for the decision
5.3.1 Reason for main and auxiliary requests
Under R. 68(2) EPC, decisions of the EPO which are open to appeal must be reasoned.
According to the established case law of the boards of appeal, a reasoned decision must
be given for each of the different requests (main and auxiliary requests). Although in
exceptional circumstances a reference in the reasons for a decision to grounds given in
preceding communications may be allowed, it must be quite clear from those grounds
which considerations played a crucial role for the division responsible when it took its
decision (T 234/86, OJ 1989, 79). It must be ensured that, before issuing a decision
revoking the patent solely on the basis of the patent proprietor's main request, thef
proprietor has expressly withdrawn all subordinate requests (see T 81/93, T 5/89,
OJ 1992, 348). If the patentee files one or more auxiliary requests in addition to a main
request and does not withdraw any of them, an opposition division is obliged in its
decision to give reasons why each successive request is either not admissible (in the
exercise of its discretion under R. 57(1) and R. 58(2) EPC) (T 155/88, T 406/86,
OJ 1989, 302; T 951/97, OJ 1998, 440) or not allowable on substantive grounds. If an
opposition division allows an auxiliary request without giving reasons in its decision why
the main request or preceding auxiliary requests are not allowable, that decision should
be set aside as void and without legal effect, and the appeal fee refunded on the basis of
a substantial procedural violation (see T 484/88).
In T 966/99 the board held that the appellant's first auxiliary request, according to which
the written decision should provide reasoning as to why the withdrawn main request
might not be allowable, had to be rejected.
The board made a number of observations in its decision. It observed that R. 66(2) EPC
in combination with Art. 113(2) EPC meant that the decision dealing with revocation or
maintenance of the patent needed to include reasons only in respect of those of the
patentee's requests concerning the text of the patent that were still pending. As soon as
a request was withdrawn by the patentee, there was no longer a procedural basis for the
board to consider and decide upon it. Further, Art. 113(2) EPC gave the patentee the
exclusive right to file requests relating to the text of the patent; therefore such requests
by parties to the proceedings other than the patentee were not admissible. Accordingly,

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the board could not include reasons in the decision in respect of such texts if submitted
by the appellant (opponent). Moreover, it followed from Art. 107 EPC, as underlined by
the Enlarged Board in G 9/91 (OJ 1993, 408), that the inter partes appeal procedure
aimed to give the losing party the opportunity to challenge the decision of the opposition
division on its merits. When the decision under appeal was set aside as a consequence
of the withdrawal of the main request, the appellant was no longer adversely affected by
the maintenance of the European patent in accordance with that request.
5.3.2 Compliance with the requirements of Rule 68(2) EPC
In T 856/91, the contested decision referred to the knowledge of prominent skilled
persons and cited "a statement by a well-known expert" but contained no information
enabling the reader to infer who these persons were or exactly what they had said. The
board took the view that this incomplete information did not constitute a breach of
R. 68(2) EPC, since it was sufficient for a decision to be reasoned in some way, even if
the reasoning was incomplete and deficient.
In T 647/93 (OJ 1995, 132) the appellants had lodged an appeal against the decision of
the examining division to refuse the application and claimed that the latter had committed
substantial procedural violations in that, inter alia, it had not followed the procedure set
out in the Guidelines, or provided a written reasoned decision as required by
R. 68(2) EPC. The board observed that the reasons for the refusal were somewhat
enigmatic, and that there was no basis for them in the EPC. However, the board held
that even if the reasons for the decision were not well founded, this did not mean that the
decision was not reasoned at all within the meaning of R. 68(2) EPC.
In T 70/02 the board found that by simply stating "no convincing arguments have been
found in your letter" in response to letters in which the objections put forward were
exhaustively discussed by the applicant, the examining division had adopted an unfair
attitude, leaving the applicant without any indication as to why his arguments had not
been found convincing, so that he had been unable to react against the conclusions of
the examining division.
In accordance with R. 68(2) EPC, decisions of the EPO which are open to appeal must
be reasoned. In this respect the board accepted that reasoning did not mean that all the
arguments submitted should be dealt with in detail, but it was a general principle of good
faith and fair proceedings that reasoned decisions should contain, in addition to the
logical chain of facts and reasons on which they were based, at least some reasoning on
crucial points of dispute in this line of argumentation in so far as this was not already
apparent from other reasons given, in order to give the party concerned a fair idea of
why its submissions were not considered convincing and to enable it to base its grounds
of appeal on relevant issues.
5.3.3 Non-compliance with the requirements of Rule 68(2) EPC
In T 493/88 (OJ 1991, 380) the board held that a decision of an opposition division
rejecting an opposition had not been correctly reasoned within the meaning of R. 68(2),
first sentence, EPC if, after giving the reasons why the opposition division, unlike the
opponent, considered the subject-matter of the patent to be new, it failed to state the
reasons why it considered that the subject-matter also involved an inventive step.

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In T 292/90, regarding inventive step, the examining division had merely said that the
claimed process amounted to an obvious juxtaposition of the teachings of documents
2, 3 and 4. There was no explanation of how the examining division had arrived at this
conclusion. The board considered this form of reasoning to be insufficient. The reasoning
given in a decision open to appeal had to enable the appellants and the board of appeal
to examine whether the decision was justified or not. A decision on inventive step
therefore had to contain the logical chain of reasoning which had led to the relevant
conclusion (see also T 52/90).
In T 153/89 the examining division had given no reasons for finding in its decision that
the subject-matter of the dependent claims was not inventive. The board of appeal took
the view that the perfunctory statement in the contested decision did not permit the board
to judge whether this issue had been sufficiently investigated, or investigated at all. The
examining division's decision on such grounds did not amount to a reasoned decision.
In T 740/93 the case had been sent back to the department of first instance because of a
procedural violation (incorrect composition of the opposition division), with the order for
further prosecution by a correctly composed opposition division. The new opposition
division rendered a decision which was nearly identical to the first one. The board held
that, in accordance with R. 68(2) EPC, decisions of the EPO which were open to appeal
had to be reasoned. In this respect the board accepted that reasoning did not mean that
all the arguments submitted should be dealt with in detail, but it was a general principle
of good faith and fair proceedings that reasoned decisions should contain, in addition to
the logical chain of facts and reasons on which every decision was based, at least some
reasoning on crucial points of dispute in this line of argumentation, in so far as this was
not immediately apparent from the reasons given, in order to give the party concerned a
fair idea of why his submissions were not considered convincing. Since the second
decision was nearly identical to the first one, it did not meet the requirements of
R. 68(2) EPC, in that it was not sufficiently reasoned, which failure amounted to a
substantial procedural violation.
In T 227/95 the appellants submitted that the decision of the opposition division to
maintain the patent in amended form was not reasoned within the meaning of
R. 68(2) EPC. In its decision, the board agreed with this view. The decision contained no
reasons on the merits of the case. Instead, it merely stated: "for the reasons it is referred
to the decision of the board of appeal dated 24.01.94" (T 527/92). However, decision
T 527/92 contained no such reasons, since the case was remitted to the opposition
division for further prosecution. The board in that case decided only that the patent could
not be maintained in accordance with the patentees' (then) main request. The
examination of the auxiliary request was left entirely to the department of first instance.
In T 698/94 the board noted that neither the minutes of the oral proceedings before the
opposition division nor the "Summary of Facts and Submissions" of the appealed
decision itself contained the slightest hint at the arguments brought forward by the
parties. It was impossible for the parties to the proceedings to see how the opposition
division had arrived at its conclusion of lack of novelty. As a result, the losing party was
deprived of its legitimate right to challenge the reasoning on which the decision was
based, which was the very purpose of proceedings before the boards of appeal (cf.
G 9/91, OJ 1993, 408). The board explained that the requirement of R. 68(2) EPC for
decisions to be "reasoned" meant that the decision had expressly to set out the logical
chain of argument upon which the conclusion and therefore the final verdict were based,

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in respect of each and every ground that had been pleaded and substantiated. The de
facto absence of reasoning in the decision under appeal represented a substantial
procedural violation.
In T 135/96 the opposition division had completely ignored two documents as well as
some lines of argument developed by the appellants (opponents) in support of their
allegation that the claimed subject-matter lacked an inventive step. The board held that
the failure to consider these documents and arguments, which were relevant to the
ground of lack of inventive step on which the decision under appeal was based,
constituted a violation of the right to be heard and thus a substantial procedural violation
as well as a fundamental deficiency in the first-instance proceedings. Moreover, the
decision under appeal was not in conformity with R. 68(2) EPC, since it gave no reason
why the subject-matter of the independent claims was considered to involve an inventive
step in respect also of the two additional lines of argument developed by the opponents.
In T 652/97 the board held that the principle enshrined in R. 68(2) EPC ensured a fair
procedure between the EPO and parties to proceedings, and the EPO could only
properly issue a decision against a party if the grounds on which it was based had been
adequately reasoned. The decision had not provided the opponent with any reasoning
concerning its main argument, which conflicted with the requirements of R. 68(2) EPC
and constituted a substantial procedural violation.
In T 615/95 in an annex to its decision, the examining division considered that an
interlocutory revision could only be possible on condition that several objections were
overcome. These objections were unrelated to the grounds of refusal and had clearly no
link at all to the decision under appeal. The board held that an examining division's
decision should not be supplemented normally by annexes dealing with issues having no
relation to the issues dealt with in the reasons for this decision.
In T 473/98 (OJ 2001, 231) the board held that it is entirely appropriate and desirable in
the interests of overall procedural efficiency and effectiveness that an opposition division
should include in the reasons for a revocation decision pursuant to Art. 102(1) EPC
employing the standard decision formula, by way of obiter dicta, findings which could
obviate remittal in the event of the revocation being reversed on appeal.
In T 278/00 (OJ 2003, 546) the board noted that while the tenor of the decision under
appeal was unambiguous, namely that the application at issue lacked inventive step
pursuant to Art. 56 EPC and unity pursuant to Art. 82 EPC, it was established case law
that R. 68(2) EPC required the decision to contain, in logical sequence, those arguments
which justified the tenor. In the board's view, the reasoning of a decision under appeal
must be taken as it stands. It held that the requirements of R. 68(2) EPC could not be
construed in such a way that, in spite of the presence of unintelligible and therefore
deficient reasoning, it was up to the board or the appellant to speculate as to what might
be the intended meaning of it. The board had to be in a position to assess on the basis of
the reasoning given in the decision under appeal whether the conclusion drawn by the
first instance was justified or not. That requirement was not satisfied when the board was
unable to decide which of the various inconsistent findings indicated in and justifying the
decision under appeal were correct and which were false.
In T 897/03 the board held that a decision that leaves it to the appeal board and the
appellant to speculate as to which of the reasons given by the examining division in
different communications might have been decisive for the refusal of the application,

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could not be considered to meet the requirements of R. 68(2) EPC. The decision under
appeal did not contain any specific reasons, but merely referred to various
communications issued by the examining division (see T 652/97 and T 278/00,
OJ 2003, 546).
In T 963/02 the board stated that if a decision was merely reasoned by a reference to a
preceding communication, the requirement of R. 68(2), first sentence, EPC was only met
if the communication referred to itself fulfilled the conditions defined in T 897/03 and
T 278/00 above. The decisive reasons for refusal had to be clear from the reference, for
the party and for the board of appeal. This applied, in particular, if reference was made to
more than one preceding communications, dealing with a number of issues, and possibly
having as basis different sets of claims. The decision under appeal must not leave it to
the board and the appellant to speculate as to which of the reasons given in preceding
communications might be essential to the decision to refuse the application (see
T 897/03).
In T 1356/05 (also T 1360/05) the applicant requested a decision on the state of the file.
The board held that such a request was not to be construed as a waiver of the right to a
fully reasoned first instance decision, even in the light of the suggested procedure in the
Guidelines (Guidelines E-X, 4.4 - June 2005 version; see also T 1309/05). The board
stated that quite apart from the fact that no provision of the Guidelines could override an
article or rule of the EPC, such as R. 68(2) EPC (T 861/02), it noted that the quoted
passage in the Guidelines did not discuss in detail the procedure to be followed if such a
request was presented during oral proceedings, and it was not at all apparent that the
suggested procedure was to be applied under such circumstances. On the contrary, it
appeared rather to concern the situation where an applicant relied only on the written
procedure. The term “state of the file” implied that all relevant facts and arguments were
already on file - ie they exist in a written form -, which could hardly be the case
immediately following oral proceedings if, as in the case at issue, oral arguments had
been made.
On inadequate reasons given in the decision at first instance, and the circumstances in
which reimbursement of the appeal fee is justified, see Chapter VII.D.15.
5.4. Signatures on a decision
In T 390/86 (OJ 1989, 30) the board noted that although R. 70 EPC states that "any
communication from the EPO is to be signed by and to state the name of the employee
responsible", there was nothing in R. 68 EPC or elsewhere in the EPC which specifically
required the decision of a first-instance department of the EPO (ie a decision which was
open to appeal) to be signed by the employee or employees responsible. The board,
however, having regard to the principles which were applicable, came to the conclusion
that if the decision of a particular division was to be legally valid it had to bear the
signatures of the members who had been appointed to that division to decide the issue
or issues which were the subject of the decision.
In T 243/87 the decision was substantiated and issued in writing after oral proceedings.
The decision was signed by two members who had taken part in the oral proceedings
and by one who had not. The board ruled that the latter signature rendered the decision
null and void. It ordered remittal to the department of first instance, and a refund of the
appeal fee because a substantial procedural violation had occurred.

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In T 777/97 the appellant had requested correction of the description before the
opposition division. The first examiner had signed the correction decision also on behalf
of the division's absent chairman. The board ruled that the decision was valid.
In T 999/93 the board held that if a decision of a particular division is to be legally valid, it
must have been written on behalf of and represent the views of the members who were
appointed to that division to decide the issues forming the subject of the decision, and it
must bear signatures which indicate this.
In D 8/82 (OJ 1983, 378) the board had to decide whether a signature was valid, where
the surname appeared only as a mark in which one could still discern the first letter and
which was recognisably intended as a signature. The board held that the signature was
valid since in several contracting states of the EPO there is no requirement that a
signature be legible or recognisably composed of letters. It is enough that it serves to
identify the signatory.
In T 225/96, the file showed that the contested decision had been signed by only the first
examiner on the opposition division, and not by its chairman, second examiner and legal
member. The board sent the case back for regularisation. The division however replied
that the three non-signing members were not at this stage of the proceedings prepared
to put their names to a text issued without their knowledge or approval.
The board decided that this response meant the division had not yet finalised a reasoned
decision; the document sent to the parties was merely a draft from the first examiner. But
to issue the parties with a draft decision not approved by all division members present at
the oral proceedings was a substantial procedural violation. The board added that if, as it
had first imagined, the signatures had merely been missing, this could have been
corrected under R. 89 EPC which allows correction of linguistic errors, errors of
transcription and obvious mistakes in EPO decisions. It also noted that the forms
accompanying the decisions are never signed, because they are computer-generated
and therefore, under R. 70(2), first sentence, EPC, a seal may replace the signature. In
general, the decision as notified to the parties is presumed to be authentic.
6. Correction of errors in decisions
VI.M.6. Correction of errors in decisions

6.1. General issues

In decisions of the EPO, only linguistic errors, errors of transcription and obvious
mistakes may be corrected (R. 89 EPC).
In T 212/88 (OJ 1992, 28) the board held that the absence of a chairman's or minute-
writer's signature at the end of an opposition division's decision was a rectifiable, obvious
error within the meaning of R. 89 EPC. In the case in question a second examiner had
been referred to in the minutes as a member of the opposition division, although in fact
he was not a member and did not take part in the oral proceedings. The board held that
correction of the two errors had to be by means of a decision under R. 89 EPC with
retrospective effect from the date of the original decision. The same board emphasised
the retrospective effect of corrections under R. 89 EPC in T 116/90 but stated that it was
unnecessary to redate the decision as from the date of correction.
In T 850/95 (OJ 1997, 152) the decision to grant under R. 51(6) EPC had been
despatched when the applicant filed two additional pages of the description, which had
been omitted due to a clerical error when the applicant filed a complete set of

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replacement pages for the text of the application, and requested their inclusion in the
patent specification. He was informed that the technical preparations for the publication
of the patent specification had been completed. The applicant requested that the patent
be re-published incorporating the missing pages. The request for correction was refused
by the examining division on the ground that the corrections specified did not relate to
passages in the patent specification where the Division wished to base its decision on a
different text (Guidelines, E-X, 10 - June 2005 version).
The board found that, according to the practice of the EPO, the decision to grant issued
by the examining division (an electronically generated form) referred to the documents
approved by the applicant under R. 51(4) EPC, so that they became an integral part of
the decision to grant. It followed from this that errors in the specification might also be
corrected under R. 89 EPC. The board held that, in a decision to grant, if the text given
for grant was not and obviously could not be the text corresponding to the real intention
of the examining division, there was an obvious mistake within the meaning of
R. 89 EPC, and the text erroneously indicated could be replaced by the text on which the
examining division actually wanted to base its decision. The board noted that the filing of
replacement pages for the whole specification should be avoided unless the extent of the
amendments made it absolutely necessary.
In T 425/97 in a note from the opposition division concerning a consultation by telephone
it was stated that appellant II (patentee) had drawn the opposition division's attention to
an obvious error in the minutes and in the decision. This consultation was followed by
the dispatch by telefax of a revised version of the "Facts and submissions" and the
"Reasons" of the decision and a revised form of the minutes. A new term for appeal was
not set. In a short accompanying communication, the opposition division informed the
parties that the correction was made according to R. 89 EPC, and had "become
necessary because auxiliary request 7 and 8 obviously had been confounded". No trace
of said auxiliary request 8 was however to be found in the foregoing history of the case.
In the corrected form of the decision, a completely fresh text of the valid claim was
enclosed. The minutes were corrected accordingly.
The board referred to G 8/95 which dealt with the scope of R. 89 EPC, stating that the
difference between an appeal against a decision and a request for correction of a
decision may be seen in the fact that in the first case the remedy is directed against the
substance of the decision and in the latter case against the form in which the decision
was expressed. This means that it could be within the scope of R. 89 EPC to correct the
text of the patent if it is not and cannot be in the form corresponding to the intention of
the deciding instance (T 850/95, OJ 1997, 152). The board found however that, in the
case at issue, the intention of the opposition division apparently had changed between
the oral proceedings and the issue of the written decision in its original version. The
claim on which the revised version of the decision was based was substantially different
from the non-revised one. Moreover, the text of the minutes of the oral proceedings
attached to the decision was not the original one, but was also modified to bring it into
agreement with the decision. For these reasons, the original decision could not be
revised under R. 89 EPC since the modifications introduced would change not only the
form but its very substance.
In T 212/97 the board pointed out that R. 89 EPC permitted the opposition division to
correct an obvious mistake in the copy of the decision notified to the parties. In the case

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at issue, a fourth person had been named as a member of the opposition division
although no such person had been mentioned in the original document.
In T 965/98 the board issued a decision orally on the basis of claims submitted during
oral proceedings. However, during preparation of the written reasons, the appellant
requested correction of an obvious error in the claims. The board agreed to the
correction under R. 88 EPC and amended its original decision to take account of the
correction under R. 89 EPC.
In T 867/96 the patentee had requested the correction under R. 89 EPC of a sentence, in
the reasons for a board of appeal decision, stating that all the parties had agreed that a
certain document represented the closest prior art. The board pointed out that the case
was closed, as res judicata, and therefore no longer before it. Citing in particular G 8/95
(OJ 1996, 481) and G 1/97 (OJ 2000, 322), the board held that only the board which had
taken a decision could decide whether it required correction. Furthermore, establishing
whether correction was necessary involved studying the facts, implying in general and up
to a certain point that such requests were admissible. The present board thus ruled that
the request for correction was admissible. However, it also held that this particular
request did not fulfil the requirements of R. 89 EPC, was unfounded and should therefore
be refused.
In T 367/96 the board noted that according to decision G 1/97 (OJ 2000, 322),
R. 89 EPC should be limited to its narrow wording. Accordingly, R. 89 EPC only allows
for correction of formal errors in the written text of the decision notified to the parties in
accordance with R. 68 EPC. R. 89 EPC does not however pave the way to
reexamination of the factual or legal issues on which a decision is based, nor to reversal
of any conclusion derived by the deciding body from a consideration of these issues.
6.2. Errors in the printed version of the European patent specification
In T 150/89 some printing errors in the published patent specification were found which
were not present in the version accepted by the EPO. The board found that such
omissions should normally be corrected as a matter of routine. The decision to grant was
legally binding as regards existence and scope of the patent (Art. 97 EPC). The
specification reproduced that decision (Art. 98 EPC). It was an official document
published by a public authority for general information, and as such had legal force
before the courts. It was therefore subject to the same correction criteria as the grant
decision itself under R. 89 EPC. That provision did not cover matters of fact or
substance; only obvious errors could be corrected. The EPO could make such
corrections on request or of its own motion . Thus the specification was to be brought
into line with the decision to grant, and whether this took the form of a reprint or a
corrigendum (which was a matter for the department of first instance, or possibly its
formalities officer, to decide) should clearly indicate the correction made.
In T 55/00 the examining division had sent a "Communication under R. 51(4) EPC" to the
representative of the appellant. The enclosed documents contained only pages 1 to 40 of
the description. However, the text of the communication did not take into account the
intention of the examining division to omit pages 41 to 44 of the description. The appeal
was against the decision of the examining division to refuse the appellant's request for
correction of errors under R. 89 EPC. He had requested the issue of a corrected patent
specification.

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The board held that a correction under R. 89 EPC was not possible, because the non
inclusion of pages 41 to 44 of the description was due to the discretion of the examining
division and not to any error. The board held that because the EPC does not provide for
any possibility to amend or revoke a patent once granted - except as a result of an
opposition procedure - and because the patent proprietor is not allowed to file a notice of
opposition against his own patent, it is very important to check the decision and
documents. The appellant had had the opportunity to check the documents as a
complete set. The board held that the EPO complies with the requirements of
R. 51(4) EPC not only in communicating the text on form 2004 but also in enclosing a
complete set of the relevant documents. The text on form 2004 indicates explicitly that "a
copy of the relevant documents is enclosed". The enclosed documents also form a
relevant part of the communication. It was therefore not sufficient to check only whether
the documents enclosed were the documents referred to in the communication; the
contents of the relevant documents had also to be checked.
6.3. Competence to correct a decision under Rule 89 EPC
In G 8/95 (OJ 1996, 481) a question of law was referred to the Enlarged Board of Appeal
to decide which board of appeal (either the technical board or the Legal Board) was
competent to decide on appeals from a decision of an examining division refusing a
request under R. 89 EPC for correction of the decision to grant. In the view of the
Enlarged Board, the basis of such a request for correction was not that the party was not
granted what it had requested. Rather, such a request was based on the allegation that
there was a linguistic error, error of transcription or similar obvious mistake.
The Enlarged Board noted that the competence to correct errors in a decision under
R. 89 EPC lay with the body which had given the decision. Hence, in the examination
procedure the examining division had to decide on a request to correct errors in the
decision to grant. If the request for correction of the decision to grant concerned the
grant of the patent, then the decision on the correction had also to concern the grant of
the patent, since it was the request of the party which defined the subject of the dispute.
The Enlarged Board also agreed with the statement made in J 30/94 (OJ 1992, 516) that
it was the decision to refuse the request for correction which was under appeal.
According to the Enlarged Board, this did not alter the subject of the dispute in the
second instance. The decisive criterion in Art. 21(3)(a) EPC was not that the decision
under appeal was the decision to grant itself. It was sufficient for the decision to
"concern" the grant, and this was necessarily the case if the subject of the decision was
the text in which the patent was to be or had been granted, since this was the result of
the substantive examination and defined the rights conferred by the patent. The
Enlarged Board came to the conclusion that the decision refusing a request for
correction of the decision to grant concerned the grant of the patent. It was, therefore,
the technical boards as defined in Art. 21(3)(a) and (b) EPC which had to decide on
appeals from a decision of an examining division refusing a request under R. 89 EPC for
correction of the decision to grant.
In J 12/85 (OJ 1986, 155) the board noted that the existence of inconsistencies in the
decision to grant a patent might be a ground for filing a request for correction based on
R. 89 EPC. However, a board of appeal could only examine appeals from decisions of
other instances of the EPO (Art. 21(1) EPC). Thus it could not examine a request for a
correction of the decision under appeal based on R. 89 EPC. A decision on such a
request had first to be taken by the department of first instance before the matter could

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be referred to a board of appeal. The board further noted that inconsistencies did not
affect the validity of the decision to grant the patent nor imply that the appellant was
"adversely affected" by this decision.
In J 16/99 the board held that when correction of the priority date of a granted patent is
requested, there may be a case for correction under R. 89 EPC of the EPO's decision to
grant. The board found that R. 89 EPC was applicable since, being applicable to errors
of transcription and obvious mistakes in a decisions of the EPO, it allowed correction of
errors in, inter alia, decisions to grant without the limiting requirement of pending
proceedings.
The board also found that the formalities officer who made the decision under appeal
had no authority to make a decision under R. 89 EPC. Such decisions had to be made
by the examining division (see G 8/95, OJ 1996, 481), and are not one of the category of
decisions which could be delegated to Formalities Officers (see the Notice of the Vice-
President of DG 2 of the EPO, OJ 1984, 317, as revised by the further Notice,
OJ 1989, 178 - the version applicable at the time of the decision under appeal - and
again revised, with no effect on the point at issue here, by Notice in OJ 1999, 504).
In T 226/02 during opposition proceedings the respondent had requested a correction to
the description of the patent as granted under R. 88 EPC. The tenor of the written
decision, which was signed by the members of the opposition division, was that the
opposition was rejected. The written grounds for the decision included a section at the
end under the rubric "Decision". In this section it was indicated that the opposition was
rejected and that the description of the patent was amended according to R. 89 EPC.
The board considered that the opposition division acted ultra vires in taking a decision
under R. 89 EPC to correct a decision of the examining division. The board held that only
the body which took a decision is entitled to correct that decision to the form which the
body had intended the decision should take. Thus, only the examining division was
entitled to correct its own decision.
7. Principles for the exercise of discretion
VI.M.7. Principles for the exercise of discretion

In J 4/87 the appellant submitted that there was nothing in the EPC which prevented the
EPO from exercising discretion in cases of exceptional delay in the post. The board,
however, held that as a matter of law the EPO had no general discretion as suggested
by the appellant. The EPO could only exercise discretion if the power to do so could be
derived from the EPC.
In J 20/87 (OJ 1989, 67) the Receiving Section had rejected a request for a partial
refund of the European search fee. In the reasons for its decision it was stated, inter alia,
that the criteria for the refund of the European search fee were defined in Art. 10 RRF
and these did not leave room for any discretion in favour of the applicant. In the case in
question, these criteria had not been fulfilled. The board confirmed the finding of the
Receiving Section and found that there was nowhere any support for the idea that the
EPO was entitled to exercise any general discretion based on equity in respect of
refunding the fee for the European search report. In fact, the existence of such a
discretionary power could lead to serious difficulties in practice, bearing in mind the very
large number of applications before the EPO and the great variety of possible borderline
cases to be considered individually on such a general basis.

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In T 182/88 (OJ 1990, 287) the board clarified its case law concerning the exercise of
discretion given to EPO departments. The board held that when exercising discretion,
whether for or against a particular party, the reasons for the exercise of that discretion
should be given. In any case where the EPC gave discretion to a department of the EPO
in relation to an issue in proceedings before it, general principles of law required such
discretion to be exercised having regard to the factors which were relevant to that issue.
Those factors were in turn determined by considering the purpose of the exercise of the
discretion in its context, and in the context of the EPC as a whole (see T 183/89). The
board stressed that discretion had always to be exercised on a case-by-case basis,
having regard to the particular circumstances. Discretion had always to be exercised
judicially, by taking into account those factors which were legally relevant to the issue in
question and ignoring those which were not. Showing consideration to parties before the
EPO should not be confused with the proper exercise of discretion according to law.
The board made it clear that where the EPC had given discretion to a department of the
EPO in relation to proceedings at first instance before it, such discretion was normally
best exercised by the department of first instance, because it had control over the
proceedings and should be aware of all the factors which were relevant to the exercise of
its discretion. Furthermore, once a department of first instance had exercised its
discretion, in any appeal against a decision involving the exercise of that discretion a
board of appeal was normally reluctant to interfere with such a decision, unless the
reasoning in the decision had clearly been based on wrong principles.
In G 7/93 (OJ 1994, 775) the Enlarged Board stated that if an examining division had
exercised its discretion under R. 86(3) EPC against an applicant in a particular case and
the applicant filed an appeal against the way in which discretion had been exercised, it
was not the function of a board of appeal to review all the facts and circumstances of the
case as if it were in the place of the department of first instance, in order to decide
whether or not it would have exercised its discretion in the same way as the department
of first instance. If a department of first instance was required under the EPC to exercise
its discretion in certain circumstances, it should have a certain degree of freedom when
doing so, without interference from the boards of appeal. In the circumstances of a case
such as that before the referring board, a board of appeal should only overrule the way in
which a first-instance department had exercised its discretion if it came to the conclusion
either that the department had not exercised its discretion in accordance with the proper
principles as set out above, or that it had done so in an unreasonable way, and had thus
exceeded the proper limits of its discretion (see also T 640/91, OJ 1994, 918).
8. Legal status of the Guidelines for Examination in the EPO
VI.M.8. Legal status of the Guidelines for Examination in the EPO

In T 162/82 (OJ 1987, 533) and T 42/84 (OJ 1988, 251), two boards of appeal ruled on
the discretionary power of examining divisions to depart from the EPO Guidelines.
According to these two decisions, the Guidelines were only general instructions intended
to cover normal occurrences. Thus, an examining division could depart from them
provided it acted in accordance with the EPC. In reviewing the decision of an examining
division, a board of appeal would wish to ensure uniform application of the law and judge
whether the division had acted in accordance with the EPC, not whether it had acted in
accordance with the Guidelines.
In T 647/93 (OJ 1995, 132) the board stated that it was normally desirable for examining
divisions to act in accordance with the Guidelines, but pointed out that these were not

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rules of law, so failure to follow a procedure set out in them was not in itself a substantial
procedural violation (T 51/94, T 937/97)
9. Duties not entrusted to formalities officers
VI.M.9. Duties not entrusted to formalities officers

In T 161/96 (OJ 1999, 331) the appellant requested that the opposition fee be
considered to have been paid in due time and that the notice of opposition I be deemed
to have been filed validly within the opposition period. He applied for a decision by the
EPO under R. 69(2) EPC. The appellant was informed under R. 69(2), second sentence,
EPC by a formalities officer of the opposition division that no loss of rights had occurred.
The opposition division later rejected opposition I as inadmissible.
The board held that the act of informing an opponent under R. 69(2), second sentence,
EPC did not belong to the duties entrusted to formalities officers of the opposition
divisions by virtue of the powers transferred to the Vice-President of Directorate-General
2 of the EPO by order of the President of the EPO dated 6.3.1979, under R. 9(3) EPC
(see Notice dated 15.6.1984, OJ 1984, 319, as revised and supplemented on 1.2.1989,
OJ 1989, 178). The appellant was not therefore entitled to rely on the formalities
officers's communication that no loss of rights had occurred.
In T 808/03 the purported decision to grant restitutio in integrum in relation to the filing of
the notice of appeal was made by a formalities officer acting on behalf of the examining
division pursuant to R. 9(3) EPC and the Notice of the Vice-President of Directorate-
General 2 dated 28.4.1989 (OJ 1999, 504). Item 11 of this notice entrusted formalities
officers with "Decisions as to applications under Art. 122(4) EPC, where the application
can be dealt with without further taking of evidence under R. 72 EPC". Art. 122(4) EPC
vests jurisdiction for deciding on applications for restitutio in integrum, provides that:
"The department competent to decide on the omitted act shall decide on the application."
The board noted that the omitted act was the filing of a notice of appeal and the
department competent to decide whether an appeal was admissible and thus inter alia
whether a notice of appeal met the requirements of the EPC is the board of appeal of the
EPO (R. 65(1) EPC; see T 949/94 of 24.3.1995 and T 473/91, OJ 1993, 630). This
competence in relation to admissibility of an appeal was, however, subject to an
exception, since Art. 109(1) EPC empowered the department of first instance in ex parte
proceedings to set aside its own decision if it considered an appeal to be "admissible
and well-founded".
The board observed that this did not constitute full jurisdiction to decide whether an
appeal was admissible; there was no power to decide that an appeal was not admissible,
nor was there power to decide that an appeal was admissible but not well founded.
There was only the limited power to set aside uno actu its own decision if the appeal was
considered admissible and well founded. Moreover, the board found that even if it were
considered that the examining division, acting under the limited jurisdiction over
admissibility vested in it by Art. 109(1) EPC, qualified as "the department competent to
decide on" the due filing of a notice of appeal within the meaning of Art. 122(4) EPC, this
power would not be susceptible of being split and partially entrusted to a formalities
officer for "decision" pursuant to item 11 of the notice of the Vice-President of DG2
referred to above. For these reasons it was decided that the purported decision of the
department of first instance to allow the request for restitutio in integrum was declared
null and void.

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10. Jurisdiction
VI.M.10. Jurisdiction

In J 42/92 the board had to decide whether a request under R. 88, second sentence,
EPC could be made after grant. It came to the conclusion that a request under
R. 88 EPC for amendments to the description or claims could only be filed during the
pendency of application or opposition proceedings. Under Art. 97(4) EPC, the decision to
grant a European patent took effect on the date on which the European Patent Bulletin
mentioned the grant. After that date, R. 88 EPC could only be applied while opposition
proceedings were pending.
The board also pointed out that there was no reason why, once no application or
opposition proceedings were pending before the EPO, decisions on the question of
corrections (bearing in mind the requirement of obviousness to a skilled person) should
not fall within the sole jurisdiction of the national courts or other authorities responsible
for proceedings in which this question might arise (see also T 777/97).
N. Other procedural questions
Other procedural questions

1. Language privilege
VI.N.1. Language privilege

Natural or legal persons having their residence or principal place of business within the
territory of a contracting state having a language other than English, French or German
as an official language, and nationals of that state who are resident abroad, may file
documents which have to be submitted within a given time limit in an official language of
the contracting state concerned (Art. 14(2) and (4) EPC). These persons thereby
become entitled to a fee reduction under R. 6(3) EPC.
The leading decision in this area is G 6/91 (OJ 1992, 491) following a referral by
T 367/90 (OJ 1992, 529). The Enlarged Board of Appeal ruled that the persons
concerned were only entitled to the fee reduction under R. 6(3) EPC if they filed the
essential item of the first act in filing, examination, opposition or appeal proceedings in
an official language of the state concerned other than English, French or German, and
supplied the necessary translation no earlier than simultaneously with the original. To be
able to claim the fee reduction it was sufficient for the notice of appeal to be filed as the
essential item of the first act in appeal proceedings in an official language of a
contracting state and be translated into one of the official languages of the EPO.
Subsequent items, such as the statement of grounds of appeal, could then also be filed
in an EPO official language.
These principles have since been applied in a number of decisions, for example in
T 367/90 of 3.6.1992, T 385/90 and T 297/92. See also the decisions below.
As far as opposition proceedings are concerned, the board decided in T 290/90
(OJ 1992, 368) that to be granted a 20% reduction in the opposition fee under
R. 6(3) EPC, that part of a notice of opposition which is governed by R. 55(c) EPC
should always be filed in a non-official authorised language. It is inadmissible for a
German opponent to file an opposition in the Dutch language even if represented by a
Dutch patent attorney (T 149/85, OJ 1986, 103).
Neither a request for a fee reduction, nor a notification that only a reduced fee has been
paid, is an essential part of the first act of the relevant proceedings. This is in contrast to
the notice of appeal, which, although linguistically insensitive, is clearly essential to

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appeal proceedings (T 905/90, OJ 1994, 306, Corr. 556), applying G 6/91; see also
J 4/88, OJ 1989, 483).
In J 15/98 (OJ 2001, 183) the board decided that, where a patent application was filed in
one of the languages referred to in Art. 14 EPC, a date of filing was to be attributed
under Art. 80 EPC, irrespective of the fact that the applicant had neither its residence nor
principal place of business in a contracting state nor was a national of a contracting
state, provided that all the other requirements of Art. 80 EPC were satisfied. The board in
J 6/05 did not concur with this view. According to this decision, until the Revised EPC
2000 enters into force, an application filed in an official language of a Contracting State
other than English, French or German, eg in the Finnish language, does not produce the
result provided for in Art. 80 EPC, ie no date of filing is attributed, if the other conditions
provided for in Art. 14(2) EPC, namely the applicant having its residence or principal
place of business within the territory or being a national of that (same) contracting state
(here: Finland), are not fulfilled (see also J 9/01).
In J 21/98 (OJ 2000, 406) the appellant (patent applicant), who had filed a request for
examination in Italian within the time limit provided for under Art. 94(2) EPC, and a
simultaneous English translation, had been refused the 20% reduction in the
examination fee pursuant to Art. 14 EPC. According to the Receiving Section, the written
request for examination in the Italian language should have been filed together with the
request for grant. However, according to the board, Art. 94(2) EPC, in connection with
Art. 75, Art. 92 and Art. 94(1) EPC, was to be interpreted such that, within the grant
procedure, the request for examination constituted an autonomous step quite separate
from the (previous) step of filing the patent application, enabling the applicant to consider
whether to continue the grant procedure in the light of the search report. Since the EPC
gave the applicant the right to file the request for examination after the publication of the
search report, it followed that the same right must be owed to the applicant who wanted
to avail himself of the option provided for in Art. 14(2) and (4) EPC (see also J 22/98,
J 6/99, J 14/99 and J 15/99).
In J 36/03 the board held that the examination fee should be reduced if the request for
examination was filed in an authorised non-official language, even in cases where the
application was transferred, before the examination fee was paid, to an applicant
who was not one of the persons referred to in Art. 14(2) EPC.
Under Art. 14(4) EPC, those entitled to file in an official language of a contracting state
under Art. 14(2) EPC must supply a translation in English, French or German within the
time limit prescribed in the Implementing Regulations. Several decisions deal with the
legal consequences of failure to comply with a time limit for filing a translation in an
official language. Where the applicant fails to observe the time limit provided for in
Art. 14(2) EPC in conjunction with R. 6(1) EPC, the application is deemed withdrawn
under Art. 90(3) EPC (see eg J 18/01). According to T 323/87 (OJ 1989, 343) and
T 193/87 (OJ 1993, 207) respectively, a notice of appeal or a notice of opposition is
deemed not to have been received under Art. 14(5) EPC. However, in T 126/04 the
board did not follow T 323/87 with respect to the legal consequence of failure to comply
with the time limit. It held that the only possible interpretation of the reference in
R. 65(1) EPC to R. 1(1) EPC, which itself referred to Art. 14(4) EPC, was that
R. 65(1) EPC determined the legal consequence of failure to file a translation of the
notice of appeal as required by Art. 14(4) EPC. The legal consequence was therefore the

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inadmissibility of the appeal. It was not a case of conflict within the meaning of
Art. 164(2) EPC, since R. 65(1) EPC was a lex specialis.
2. Inspection of files
VI.N.2. Inspection of files

Under Art. 128 EPC, the confidential treatment of patent applications ceases on
publication of the application, not on expiry of the 18-month period mentioned in
Art. 93 EPC (J 5/81, OJ 1982, 155).
Any person who can prove that the applicant for a European patent has invoked the
rights under the application against him may obtain inspection of the files prior to the
publication of the application and without the consent of the applicant under
Art. 128(2) EPC. According to J 14/91 (OJ 1993, 479), these rights can be said to have
been invoked where the invocation of rights is formulated in relation to the first filing in a
contracting state but the subsequent European application is mentioned at the same
time. Any dispute between the applicant and a third party concerning the latter's right to
inspect the files pursuant to Art. 128(2) EPC is best decided in oral proceedings
convened at short notice.
In J 27/87 the board confirmed the Receiving Section's decision to refuse a request
pursuant to Art. 128(2) EPC, because there was no proof that the applicants had invoked
their rights under the application against the appellants. The extracts from
correspondence in which the applicants' representative asserted that his clients had
developed a new technology and mentioned the patent application were not deemed
sufficient evidence.
R. 93 EPC indicates those parts of the file which are to be excluded from inspection
pursuant to Art. 128(4) EPC. In T 811/90 (OJ 1993, 728) the board held that filed
documents which, following a substantial procedural violation, were to be withdrawn from
the part of the file available for public inspection and which did not fall under the
exclusions listed in R. 93 EPC had to be returned to the filing party if it so requested.
Similarly, documents marked "confidential" which do not belong to classes of documents
to be excluded from file inspection are returned to the party concerned without note
being taken of their contents (T 516/89, OJ 1992, 436; cf. also later decision of the
President of the EPO, OJ 2001, 458).
Where a priority document reached the EPO in time, but was actually filed by a third
party in connection with another application, the board held that the priority claim was
lost. One reason given was that R. 38(3) and R. 104b(3) EPC (now R. 111(2) EPC)
ensure that a certified copy of the previous application is available to third parties
requesting inspection of the file. This would clearly not be the case where a document is
included only in a completely unrelated file (J 11/95).
In the case before the board in T 1101/99, the opponent (appellant) requested inspection
of the files under Art. 128 EPC in respect of documents arising from the international
preliminary examination. The appellant's request was not directed to the IPEA but to the
EPO acting, after grant of the patent, outside its PCT functions. A formalities officer
acting for the opposition division rejected the request for inspection of the file. The board
noted that the term 'granting of inspection' set out in the Notice of the Vice-President of
DG 2 of the EPO concerning the entrustment to formalities officers of certain duties
normally the responsibility of the opposition divisions of the EPO (dated 28.4.1999,
OJ 1999, 504, point 13) apparently referred only to a positive decision, whereas in the

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decision under appeal the request for inspection was rejected. The board found that
there was no justification for interpreting the delegation of duties beyond its actual
wording such that it would also cover the rejection of requests for file inspection.
In T 379/01 the board stressed that the provisions concerning the exclusion of
documents from file inspection stipulated exceptions from the principle of public
inspection of files pursuant to Art. 128(4) EPC, thus requiring a narrow construction of
those provisions. In particular, if a key document relating to a fundamental issue in an
inter partes case, such as contested admissibility of an opposition, was concerned, a
strict standard had to be applied.
Pursuant to the decision of the President of the EPO dated 7.9.2001 concerning
documents excluded from file inspection (OJ 2001, 458), documents must be excluded
from file inspection at the reasoned request of a party only if their inspection would be
prejudicial to the legitimate personal or economic interests of natural or legal persons.
The board held that, in view of the public interest in accessing evidence relevant for
deciding a case, a merely abstract prejudice to hypothetical personal or economic
interests was not a sufficient bar. The party requesting such exclusion should rather
show that public access to certain documents would be prejudicial to specific and
concrete personal or economic interests. In the case at issue, the board rejected the
argument that it would violate the personal rights of an association and its members if
the "Vereinssatzung" (rules of association) were open to file inspection without any
restriction.
3. Register of Patents
VI.N.3. Register of Patents

3.1. General
No entries can be made in the Register of Patents prior to publication of the European
patent application (Art. 127 EPC). Even in the case of published applications,
R. 92(1)(u) EPC provides that the date of re-establishment of rights is to be entered only
if loss of the application (R. 92(1)(n) EPC) or the revocation of the patent
(R. 92(1)(r) EPC) has been entered in the Register (J 5/79, OJ 1980, 71).
An entry in the Register of European Patents recording the withdrawal of a patent
application fulfils the same function as a publication in the European Patent Bulletin in
that it amounts to a notification to the public (J 25/03, OJ 2006, 395; see also J 14/04
and J 12/03).
3.2. Registration of licences
As to the recording in the Register of European Patents of an exclusive licence under a
patent already granted, the Legal Board of Appeal ruled in its decisions J 17/91
(OJ 1994, 225) and J 19/91 that registration was no longer possible once the patent had
been granted because the EPO had renounced jurisdiction in favour of the national
offices of the contracting states designated in the request for grant.
3.3. Transfer
Art. 72 EPC provides that an assignment of a European patent application must be made
in writing and requires the signatures of the parties to the contract. Under R. 20(1) EPC,
a transfer of a European patent application is recorded in the Register of European
Patents at the request of an interested party and on production of documents satisfying

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the EPO that the transfer has taken place. This is in line with the PCT system (R. 92bis.1
PCT).
In J 38/92 and J 39/92 the Legal Board of Appeal ruled that a transfer could only be
recorded in the Register of European Patents on the basis of an official document in
accordance with R. 20(1) EPC (previous version) if that document directly verified the
transfer. It did not suffice if a judgment was submitted which mentioned another
document from which it was possible to verify the transfer.
Assessing whether there are documents satisfying the EPO that a transfer has taken
place in accordance with R. 20(1) and (3) EPC and making the entry in the register is the
responsibility of the relevant department of first instance. Accordingly, in appeal
proceedings, substitution of another party for the original applicant is possible only once
the relevant department of first instance has made the entry or where there is clear-cut
evidence of a transfer (J 26/95, OJ 1999, 668; see also T 976/97).
In J 12/00 the board summarised the preconditions for registering a transfer of a
European patent application as follows: (i) a request of an interested party
(R. 20(1) EPC); (ii) the production of documents satisfying the EPO that the transfer has
taken place (R. 20(1) EPC); and (iii) the payment of an administrative fee
(R. 20(2) EPC). The case at issue concerned an invention by an employee whose rights
to the patent had allegedly been automatically transferred to the employer. Documents
were produced specifying the obligation, but, according to the board, these only created
the obligation to assign rights but did not constitute the assignment itself. Moreover,
certain inventions were exempt from the obligation to transfer. Other documents
produced concerned registrations in different countries on the basis of documents other
than assignment documents. The board stressed that the specific requirements of the
EPC defined what was required for the registration of a transfer of rights before the EPO,
so there was no point in showing what might or might not be sufficient for another patent
office in cases of the transfer of rights.
Under Art. 20 EPC the Legal Division is responsible for decisions in respect of entries in
the Register of European Patents and their deletion. An appeal lies to the Legal Board of
Appeal, not to a technical board (Art. 106(1) and Art. 21(2) EPC). The entitlement of the
patent proprietor entered in the Register of Patents may not therefore be questioned in
opposition and subsequent appeal proceedings (T 553/90, OJ 1993, 666).
A transfer can be recorded in the Register of European Patents even after deemed
withdrawal of a patent application, if it is still possible that restitutio is available and the
successor in title has taken, together with his request for registering the transfer,
procedural steps suitable for restoring the application (J 10/93, OJ 1997, 91).
4. Suspension of proceedings under Rule 13(1) EPC
VI.N.4. Suspension of proceedings under Rule 13(1) EPC

4.1. Rule 13(1) EPC

4.1.1 General
Under R. 13(1) EPC the EPO must stay the proceedings for grant ex officio if a third
party provides it with proof that he has opened proceedings against the applicant for the
purpose of seeking a judgment that he is entitled to the grant of the European patent
(see J 28/94, OJ 1997, 400; T 146/82, OJ 1985, 267 and J 10/02), unless the third party
consents to the continuation of such proceedings. The patentee will not be heard but

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may file a request with the Legal Division not to suspend proceedings. An appeal may be
filed against the Legal Division's decision adversely affecting the applicant, proprietor or
third party respectively (J 28/94, OJ 1997, 400).
A decision of the examining division to grant a European patent (Art. 97(2) EPC) does
not take effect on the date the decision-making process following written proceedings
before that division is completed, but on the date on which the European Patent Bulletin
mentions the grant (Art. 97(4) EPC). In the interim period, proceedings for grant are
still pending before the EPO and a request for suspension of proceedings under
R. 13 EPC is admissible (J 7/96, OJ 1999, 443). This decision was followed in J 36/97.
Suspension of the proceedings for grant means that the legal status quo existing at the
time they were suspended is maintained, ie neither the EPO nor the parties may validly
perform any legal acts while the proceedings are suspended (J 38/92 and J 39/92).
In J 10/02 the appellant argued that in the case where an appeal was lodged against a
decision to suspend grant proceedings, the provision of R. 13 EPC appeared to be in
conflict with the provisions of Art. 106(1) EPC. The board, however, pointed out that the
suspensive effect of an appeal served to provide an appellant with provisional legal
protection in the sense that no action should be taken to implement the decision of the
first instance in order not to deprive the appeal of its purpose. However, if the grant
proceedings were continued and the appellant would arrive at a definitive end to the
grant proceedings in its favour, this would be more than the appellant could achieve if it
succeeded with the appeal under consideration.
4.1.2 Opening of proceedings before a national court
Suspension must be ordered if satisfactory proof of the opening of relevant proceedings
before a national court is given to the EPO by a third party, provided that the European
patent application has not been withdrawn or is not deemed to have been withdrawn
(T 146/82, OJ 1985, 267).
In J 6/03 the legal board had to decide whether proceedings against the applicant
initiated before a Canadian court for the purposes of seeking judgment that the third
party was entitled to the grant of the European patent could be a ground for suspension
of proceedings under R. 13 EPC. The board pointed out that R. 13 EPC had to be
considered as an implementing provision to Art. 61(1) EPC. The system under Art. 60
and Art. 61 EPC in conjunction with R. 13 to R. 16 EPC was governed by the
requirement on the one hand to find a balance between the interests of both the
applicant and the claimant and on the other hand to provide for proceedings that could
be dealt with by the EPO within a reasonable period of time without particular knowledge
of national law and furthermore with a high degree of legal certainty for the parties and
for the public. The board concluded that R. 13(1) EPC referred to proceedings which
resulted directly, ie generally and automatically, in decisions mentioned in
Art. 61(1) EPC. That was not the case for decisions of courts of third states.
In J 36/97 the respondents raised the issue of the jurisdiction of the Munich Court of
First Instance I ("Landgericht München"), arguing that the appellants' action constituted
an abuse of law. The board disagreed, however, pointing out that pursuant to Art. 7 of
the Protocol on Recognition, the courts in the contracting states before which entitlement
proceedings were brought were of their own motion to decide whether or not they had
jurisdiction pursuant to Art. 2 to 6 of the Protocol. Moreover, according to Art. 9(2) of the

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Protocol, neither the jurisdiction of the national court whose decision is to be recognised
nor the validity of such decision may be reviewed. In connection with R. 13 EPC, it was
sufficient for the board to ascertain that the party requesting suspension of the
proceedings had opened proceedings against the applicants in a contracting state for the
purpose of seeking a judgement that it was entitled to the grant of the European patent
(see also J 8/96 and J 10/02).
The appellants in J 7/00 had brought an action against the filers of the European patent
application to have the application transferred to themselves, and had then applied to
have grant proceedings suspended under R. 13 EPC until the entitlement issue had
been settled. The appellants considered themselves adversely affected by the Legal
Division's decision because it linked the suspension not to the earlier date on which the
complaint was received at the court of first instance ("Landgericht"), but to the date when
it was served on the patent proprietors as opposing party. The board held that national
law determined when and how legally relevant civil proceedings were opened in a
contracting state. Under the Code of Civil Procedure in Germany, entitlement
proceedings opened when the complaint was served.
4.2. Rule 13(3) EPC
If, in accordance with R. 13(3) EPC, the EPO sets a date on which it intends to continue
the proceedings for the grant of the European patent, the date may be varied or the
order staying the proceedings may be discharged at the subsequent request of the
applicant or of the third party who applied for the order (T 146/82, OJ 1985, 267).
In J 33/03 the Legal Division had refused the applicant's request to continue the grant
procedure pursuant to R. 13(3) EPC. The board, exercising its discretion under
R. 13(3) EPC in conjunction with Art. 111(1) EPC, emphasised that it was neither
competent nor qualified to decide which party the European application might belong to,
or even which outcome of the entitlement proceedings might be more likely. The board
only had to evaluate the impact of a further suspension or the continuation of the grant
proceedings on each of the parties.
The board took into account, among other things, the fact that the European patent at
issue was virtually ready for grant. The aim of R. 13 EPC was to prevent an unauthorised
applicant from impairing a true proprietor's position by amending the application without
its consent. That was no longer possible at that stage of the proceedings. In as much as
the applicant could nevertheless deprive the third party of any title to the disputed patent
by withdrawing the application or by abandoning any patent granted on it, the applicant
had undertaken during the oral proceedings before the board neither to withdraw the
application nor to abandon any such patent.
In J 10/02 the board took the following factors into account when exercising its discretion
under R. 13(3) EPC: the fact that the entitlement proceedings only concerned part of the
invention and the duration of the suspension.
5. Notifications
VI.N.5. Notifications

If a representative has been appointed, notifications are addressed to him in accordance

with R. 81(1) EPC. In addition to the decisions below, see also J 39/89, J 22/94, J 17/98,
T 703/92 and T 1281/01.

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In J 19/92 the Legal Board of Appeal held that notifications to an applicant's

representative are duly made if they were despatched before the representative
relinquished his brief. The notification to the applicant does not therefore have to be
repeated after the brief has been relinquished. On the contrary, it is the representative
who is obliged to inform his client of the notification. In T 247/98 the board confirmed that
what determined whether a R. 81(1) EPC notification was to be sent to the
representative was the legal situation at the time when the document was
despatched.
However, in T 703/92 the written decision and minutes of the oral proceedings were sent
not to the authorised representative but to the opponents. The board found that, as the
provision relating to notification had not been observed, the question whether a
notification had effectively taken place depended (in accordance with R. 82 EPC) on
whether and when the representative had received the full decision.
In T 812/04, the board pointed out that R. 101(6) EPC, in conjunction with R. 81(1) EPC,
clearly indicated that, until the termination of an authorisation had been communicated to
the EPO, the latter was obliged to notify communications, decisions or other documents
to the duly appointed representative and that these notifications alone would have valid
effects. The fact that the appellant had filed the notice of appeal himself imposed no
obligation on the Registry of the boards of appeal to inquire about the legal status of
relations between the applicant (client) and the duly appointed representative or to send
the documents and communications subsequently to the client direct.
In its decision J 5/04, the board made it clear that the initial designation of a
representative at the time when the international application had been filed with a
receiving Office other than the EPO (here: INPI) did not meet the requirements for the
valid designation of the representative for the regional phase before the EPO.
A communication under R. 85b EPC was handed not to the appellant or his spouse
(regulation dated 19.12.1995 to protect customers of the postal service in Germany-
RPCPS, BGBl I, p. 2016) but to a third party not authorised by the appellant to accept it.
The said party was in the addressee's business premises, but not an employee. In the
board's view, that meant that notification under Section 12(1) and (2) RPCPS had not
occurred. Nor did the party qualify under any of the categories of "substitute addressee"
defined in Section 13 RPCPS. There was also no evidence that the appellant had ever
seen the communication. The board therefore found the EPO had not shown notification
to have been properly effected (J 35/97).
In J 9/96 the Legal Board of Appeal held that notification of a communication posted as
an ordinary letter in accordance with R. 78(2) EPC is deemed to have been made when
despatch has taken place. However, if the communication does not reach the addressee
and is not returned to the EPO, the legal fiction of deemed notification cannot be applied,
unless the EPO can establish that it duly despatched the communication (see also
J 27/97 and J 32/97). R. 78 EPC has since been amended with effect from 1.1.1999,
such that notifications to addressees, who have not appointed a representative and have
neither their residence nor a place of business within the territory of one of the EPC
contracting states, are effected by registered letter (see Notice dated 1.4.1999,
OJ 1999, 301, at 304).

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Facsimile transmissions of notifications do not satisfy the requirements of R. 77(1) and

(2) EPC and cannot therefore be considered as regular notification within the meaning of
Art. 119 EPC and R. 77 EPC (J 27/97).
When establishing the meaning of the term "im Zweifel" in the German version of
R. 78(3) EPC (now R. 78(2) EPC), account should be taken of the French and English
versions, which assume that there is a dispute ('en cas de contestation', 'in the event of
any dispute'). A dispute ('Zweifel', literally 'doubt' in the German version) within the
meaning of this rule could only arise if it was maintained that a letter had in fact been
received more than ten days following its posting. The mere absence of the advice of
delivery or the receipt from the file was not in itself sufficient to give rise to a dispute
('Zweifel') within the meaning of this rule (T 247/98).
6. Unity of the European patent application
VI.N.6. Unity of the European patent application

A patent was owned in one designated state (UK) by one company (A) and in other
designated states by another related company (B). Only company B filed an appeal
against revocation of the patent. The respondents raised the question whether the
revocation decision had become final as regards the UK, where only A had a patent,
since the appeal filed by B and the subsequent decision of the board of appeal on it
could not affect the decision under appeal with regard to the UK but only with regard to
the designated states for which B was the patent proprietor.
The board held that the principle of unitary procedure leading up to the grant of one
European patent must be taken into account. This principle derived from Art. 118 EPC,
which explicitly stated that applicants for different contracting states should, for the
purpose of proceedings before the EPO, be regarded as joint applicants or proprietors.
Thus the decisions of the departments of both first and second instance took effect for all
the designated states (T 119/99).
In J 2/01 (OJ 2005, 88) the board had to deal with a divisional application filed only in the
name of one of the two joint applicants for the parent application. The board pointed out
that a consequence of the unity requirement under Art. 118 EPC was that, when two or
more persons filed an application in common, they could not acquire a procedural status
different from that of a single applicant, because otherwise each of them could perform
different and contradictory procedural acts, including the filing of different versions of the
patent to be granted. Therefore, joint applicants only acquired the procedural status of
one applicant in common, ie they constituted a single party in the legal sense and they
held the rights and obligations derived from that procedural status jointly in respect of the
application. The legal fiction in Art. 60(3) EPC applied to the joint applicants in common.
O. Interpretation of the EPC
Interpretation of the EPC

1. The Vienna Convention on the Law of Treaties

VI.O.1. The Vienna Convention on the Law of Treaties

The Vienna Convention on the Law of Treaties applies only to agreements which postdate
its entry into force, and therefore not to interpreting the EPC. In J 8/82 (OJ 1984, 155) the
board noted however that it was well recognised that Art. 31 and Art. 32 of the Vienna
Convention about the interpretation of treaties merely codified existing public international
law. In its first decision (G 5/83, OJ 1985, 64), the Enlarged Board of Appeal endorsed
this, pointing out that the International Court of Justice, the European Court of Human
Rights, the Federal German Constitutional Court ("Bundesverfassungsgericht") and the

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House of Lords had also applied the principles of interpretation in Art. 31 and Art. 32 of
the Vienna Convention to treaties to which strictly they did not apply. It concluded that the
EPO should do the same. Art. 31 of the Vienna Convention states that a treaty must be
interpreted in accordance with the ordinary meaning to be given to the terms of the treaty
in their context and in the light of its object and purpose. T 128/82 (OJ 1984, 164) adds
that under Art. 32 of the Vienna Convention recourse may also be had to supplementary
means of interpretation, such as the international treaty's legislative history (eg the
preparatory work and the circumstances in which the treaty was concluded), in order to
confirm the meaning arrived at by applying Art. 31 of the Vienna Convention or to
determine the meaning when applying Art. 31 of the Vienna Convention leaves the
meaning ambiguous or obscure, or produces a meaning which is obviously nonsensical or
unreasonable. In J 4/91 (OJ 1992, 402), for example, the Legal Board of Appeal drew on
historical material relating to the EPC to support its view, arrived at from a teleological and
systematic interpretation of the relevant provisions, regarding the additional period for
paying renewal fees. G 1/98 (OJ 2000, 111) discussed the purpose of Art. 53(b) EPC, its
relationship to other international treaties and legal texts, and its legislative history. In
G 3/98 and G 2/99 (OJ 2001, 62 and 83), the Enlarged Board reached its conclusions on
Art. 55(1) EPC after interpreting the wording and considering also the legislator's intention
and the aspects of systematic, historical and dynamic interpretation.
2. Agreement on Trade-related Aspects of Intellectual Property Rights
(TRIPS)
VI.O.2. TRIPS

2.1. The requirement for the judicial review of decisions

In T 557/94 the board discussed the TRIPS requirement for the judicial review of
decisions revoking a patent. While recognising that the European Patent Organisation
was not a party to TRIPS the board investigated whether the basic principle of judicial
review under Art. 32 TRIPS was satisfied by the EPC. It found that in any case, under
Art. 111(1), second sentence, EPC the board of appeal was empowered either to decide
on the merits of the case or to remit the case; it was not restricted to the latter alternative
if the opposition division maintained the patent and the board was considering revoking
the patent for the first time. Reading Art. 32 TRIPS in the context of the usual structure of
judicial review in the EPC contracting states and the EPC itself, this provision
guaranteed an instance for judicial review in revocation proceedings, but did not oblige
the reviewing instance to remit the case to the department of first instance for
continuation of proceedings when revocation was being considered by the judicial
instance for the first time.
The right of the parties to fair proceedings if a relevant document was introduced only at
the appeal stage was a quite different matter. According to the case law of the boards
such a procedural situation called for careful consideration.
In T 1173/97 (OJ 1999, 609) the board, however, thought that, although TRIPS could not
be applied directly to the EPC, it was appropriate to take it into consideration in
connection with the patentability of computer program products, for TRIPS was aimed at
setting common standards and principles concerning the availability, scope and use of
trade-related intellectual property rights. It thus gave a clear indication of current trends.
The appellant's reference to current practice at the US and Japanese patent offices
caused the board to emphasise that the legal position in the USA and Japan differed
greatly from that under the EPC: only the EPC contained an exclusion such as that in

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Art. 52(2) and (3) EPC. These developments nevertheless represented a useful
indication of modern trends and, in the board's view, could contribute to the further highly
desirable (worldwide) harmonisation of patent law.
2.2. Interpretation of Article 87 EPC in the light of TRIPS
In G 2/02 and G 3/02 (OJ 2004, 483) some issues on provisions of the EPC which
admitted of different interpretations required consideration by the Enlarged Board,
namely the provisions of the EPC concerning the recognition of priority from India and
the TRIPS Agreement. The Enlarged Board held that the TRIPS Agreement did not
entitle the applicant for a European patent application to claim priority from a first filing in
a state which was not at the relevant dates a member of the Paris Convention but was a
member of the WTO/TRIPS Agreement. The Enlarged Board noted that neither the
European Patent Organisation nor the EPO was a member of the WTO/TRIPS
Agreement; there was no provision in either instrument to allow their adherence thereto.
As a formal matter, general multilateral treaties containing rules of general (conventional)
law, such as the TRIPS Agreement, were a source of international law for the contracting
parties and for no one else.
The Enlarged Board held that TRIPS provisions, like decisions of the European and
International Courts of Justice and national decisions, were elements to be taken into
consideration by the boards of appeal but were not binding on them. Whereas it was
legitimate for the boards of appeal to use the TRIPS Agreement as a means to interpret
provisions of the EPC which admit of different interpretations, specific provisions of
TRIPS could not justify ignoring express and unambiguous provisions of the EPC. To do
so would usurp the role of the legislator. This was confirmed by the fact that the legislator
of EPC 2000 found it necessary to revise Art. 87 EPC in order to implement the TRIPS
Agreement.
The Enlarged Board explained that the European Patent Organisation as a public
international organisation had an internal legal system of its own (see the judgment of
the High Court of England and Wales [Patents Court] in re Lenzing AG's European
patent (UK) [1997] R.P.C. 245, at 264). The EPC provided an autonomous legal system
for the granting of European patents. In legal terms, neither the legislation of the
contracting states nor the international conventions signed by them were part of this
autonomous legal system. Within the framework of the system established by the EPC,
legislative power rested with the contracting states alone and was exercised by either an
inter-governmental conference (Art. 172 EPC) or the Administrative Council
(Art. 33 EPC). The EPO was not itself party to the WTO and the TRIPS Agreement.
Thus, the obligations deriving from the TRIPS Agreement did not bind the EPO directly
but only such contracting states of the EPC as were members of the WTO and the
TRIPS Agreement. In this connection, it was irrelevant whether some or all of the
contracting states of the EPO were party to the TRIPS Agreement. Even if all of them
had become members of the TRIPS Agreement on 1 January 1995, so that no problems
of reciprocity under the Indian patent law would have arisen, a notification under
Art. 87(5) EPC would still have been required.
3. Interpretation of the various language texts of the EPC (Article 177 EPC)
VI.O.3. Interpretation of the various language texts of the EPC (Article 177 EPC)

In J 8/95 it was held that Art. 177(1) EPC was based on the assumption that the authors
of the EPC had one intention, which was to be determined using the three versions of

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 VI.O.4. Interpretation of the EPC by the boards of appeal

the EPC. Even if one language version of a provision were found to differ from the other
two versions, no legal consequences could be derived from that version other than those
which could be derived from the other two versions - regardless of the language of the
proceedings. A difference in the wording in one language would have to be considered
only in so far as it could form one element of the interpretation. In the case at issue,
however, the provision under consideration, even in the allegedly different version, could
readily be understood in context in the same way as the other two official languages,
with the result that all three versions of the provision corresponded as far as content was
concerned.
4. Interpretation of the EPC by the boards of appeal
VI.O.4. Interpretation of the EPC by the boards of appeal

4.1. Decisions of the Administrative Council concerning a question of

interpretation
In J 16/96 (OJ 1998, 347) the issue was whether an association of representatives within
the meaning of R. 101(9) EPC could also be formed by professional representatives who
did not work in private practice. The Administrative Council of the European Patent
Organisation had decided at its 4th meeting in 1978 that an association within the
meaning of this rule could only be an association consisting of professional
representatives in private practice. The Legal Board of Appeal pointed out that in their
decisions the boards of appeal were not bound by any instructions and complied only
with the provisions of the EPC (Art. 23(3) EPC). The boards of appeal could not be
formally bound by a decision of the Administrative Council concerning a question of
interpretation, nor could such a decision be deemed to be an instruction for their
decisions. However, such a decision was a relevant element in interpretation.
According to the Vienna Convention on the Law of Treaties, the EPC had to be
interpreted "in good faith in accordance with the ordinary meaning to be given to the
terms of the treaty in their context and in the light of its object and purpose" (Art. 31(1)
Vienna Convention). According to Art. 31(3)(a) Vienna Convention, "any subsequent
agreement between the parties regarding the interpretation of the treaty or the
application of its provisions" had also to be taken into account. Interpreting the case in
accordance with Art. 31(1) of the Vienna Convention, the board concluded that an
association within the meaning of R. 101(9) EPC could also be an association of
representatives not engaged in private practice. The intended aim of the Council's
decision, which was to eliminate ambiguities in the application of R. 101(9) EPC, had, in
the light of recent developments in the profession, not been achieved, and as such the
decision was less important in relation to the other factors involved in interpretation.
4.2. Taking national decisions into account
In T 98/00 the board held that Art. 69(1) EPC did not deal with the issue of amendments,
which was regulated by Art. 123 EPC. The provisions of Art. 69(1) EPC were primarily
intended to be applied by the courts responsible for deciding on infringement cases, and
thus they were not designed to be a substitute for the requirements of Art. 123(3) EPC.
In T 452/91 the board took the view that in proceedings before the instances of the EPO,
questions of patentability were to be decided solely in accordance with the EPC. No
national decision should be cited as if it were binding on the EPO, and claims should not
be refused by the EPO on the ground that their "patentability cannot be upheld under the
jurisdiction of one member state". It could be that the law in most or all other contracting

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states was different. The reasoning that led the national instance to its conclusion might
well lead an EPO instance to a similar conclusion under the EPC, but this would first
need a careful assessment of the EPC, and of relevant EPO board of appeal case law, a
comparison with the legislation and case law on which the national instance reached its
conclusion, and a study of the position in other contracting states.
4.3. Implementing Regulations
In T 991/04 the board noted that as R. 65 EPC in its present wording was also part of the
very first version of the EPC the validity of R. 65(2), second sentence, EPC, could not be
seriously questioned by a reference to the principle laid down in Art. 164(2) EPC that in
the case of conflict between the provisions of the EPC and those of the Implementing
Regulations, the provisions of the EPC should prevail. The fact that requirements
stipulated by an article of the EPC needed to be specified by the Implementing
Regulations did not create a case of conflict. As the EPC itself did not define the
requirements establishing the admissibility of an appeal, R. 65 EPC specified these
requirements in an authentic way. The board stated that the Diplomatic Conference as
the legislator of the European patent system drafted the first versions of the EPC and the
Implementing Rules as a legal unity which should be read in a consistent way. In this
regard the Implementing Regulations had the function of an authentic interpretation of
the EPC.
5. Allocation of responsibilities in the EPC
VI.O.5. Allocation of responsibilities in the EPC

In J 5/01 the applicant had requested that the number of the second priority application
be corrected. The request for correction under R. 88 EPC was rejected by a decision of
the Receiving Section.
The board found that said decision of the Receiving Section was taken after the
applicant had indicated under Art. 96(1) EPC that he wished to proceed further with the
application, at which point in time the examining division became responsible for the
examination of the application and the Receiving Section ceased to be responsible
(Art. 16 EPC in conjunction with Art. 18(1) EPC). The board held that the wording of
Art. 16 and Art. 18 EPC as they stood left no room for an interpretation according to
which the responsibility for a European patent application could be split between
Receiving Section and examining division. The board observed that a clear and mutually
exclusive allocation of this responsibility in the EPC prevailed over considerations of
procedural or cost economy (contrary to J 8/82). Thus, relying on the point in time at
which a request for correction was made rather than on the two acts mentioned in
Art. 16 EPC (request for examination or indication under Art. 96(1) EPC) would be contra
legem.

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 VII.A.1. Accordance of a date of filing - language of the filed documents

VII. PROCEEDINGS BEFORE THE EPO

A. Preliminary and formalities examination
Preliminary and formalities examination

Under Art. 16 EPC, the Receiving Section is responsible for the examination on filing and
the examination as to formal requirements of each European patent application; the
revised version of Art. 16 EPC is provisionally applicable under Art. 6 of the Act Revising
the EPC dated 29.11.2000. The Receiving Section also publishes the European patent
application and the European search report.
The examination on filing under Art. 90 EPC relates, in particular, to the assessment
whether the European patent application satisfies the requirements for the accordance of
a date of filing in conformity with Art. 80 EPC (see Art. 90(1)(a) EPC). If the European
patent application fails to meet these requirements, the Receiving Section will inform the
applicant that the application will not be dealt with as a European patent application
unless he remedies the disclosed deficiencies within one month. If the applicant does so,
he will be informed that the date of filing is the date on which the requirements of
Art. 80 EPC were met (R. 39 EPC).
The examination as to formal requirements under Art. 91 EPC starts, if a European
patent application has been accorded a date of filing, provided that the application is not
deemed to be withdrawn because the filing fee and the search fee had not been paid or
the translation under Art. 14(2) EPC had not been filed in due time. Additionally R. 40 to
43 EPC must be taken into account.
1. Accordance of a date of filing - language of the filed documents
VII.A.1. Accordance of a date of filing - language of the filed documents

In J 18/96 (OJ 1998, 403), a request for grant of a European patent was filed on
2.2.1995 together with a description in English in the form of a scientific article, a claim
in German, a German abstract and drawings with explanations in German and English.
The filing and search fees were not paid, even after a communication under
R. 85a(1) EPC was sent. On 17.11.1995, the applicant requested that a priority
document be issued. The Receiving Section refused this request on the grounds that the
application could not be accorded a filing date.
The board confirmed that the requirements of Art. 80 EPC for the accordance of a filing
date were not met if the description and claims were filed in two different official
languages, in which case the patent application was not legally valid. Although it did not
do so in the case in question, the Receiving Section should have given the applicant the
opportunity to remedy the easily corrected deficiency in accordance with Art. 90(2) EPC
in conjunction with R. 39 EPC. However, it did issue a filing number and, in further
correspondence, led the applicant to the legitimate belief that the application had been
validly filed. In accordance with the principle of the protection of legitimate expectations,
the application had to be accorded the filing date of 2.2.1995 and this had to be
confirmed in the requested priority document, even if the application had since been
deemed to have been withdrawn because of non-payment of fees. The accordance of a
filing date was not dependent on the payment of fees.
In T 382/94 (OJ 1998, 24) the application was filed in German. The drawings,
however, contained flow sheets with text matter in English. The board decided that an
application could be accorded a filing date where the claims and description were filed in
the language of proceedings. However, the accordance of a filing date was not

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dependent on any text matter in the drawings being in a language in accordance with
Art. 14(1) or (2) EPC. The accordance of a filing date related to the whole of the
application documents filed. In the case in question, the English text matter in the flow
sheets was thus part of the original disclosure, and amending the application on the
basis of a translation into German of these passages did not, contrary to the opinion of
the examining division, represent an infringement of Art. 123(2) EPC.
In J 15/98 (OJ 2001, 183) the European patent application was filed in Spanish with the
Spanish Patent and Trademarks Office (PTO) the day before the last day of the priority
year and forwarded to the EPO some days later. The core of the problem was that the
applicant did not have her residence or principal place of business in an EPC contracting
state and was not a national of an EPC contracting state either. The EPO Receiving
Section did not accord the date of filing the application with the Spanish PTO as date of
filing under Art. 80 EPC.
The Legal Board of Appeal took the view that it depended on the interpretation of
Art. 80(d) EPC in conjunction with Art. 14(1) and (2) EPC whether the date of filing the
application with the Spanish PTO could be accorded as filing date. It held that according
to the literal construction of Art. 80(d) EPC it seemed to be clear that the reference to
Art. 14 EPC was made only to identify the possible languages to be used. No reference
was made to the entitlement to use these languages. Spanish was an official language of
a contracting state. Pursuant to Art. 14(2) EPC it was possible to use Spanish to file an
application. Thus, under the EPC an application filed in Spanish could be accorded a
filing date. The effects deriving from the filing date could not depend solely on the
nationality of the applicant since there was no ground for discrimination in this respect.
The Legal Board of Appeal ordered that the date of filing the Spanish version of the
patent application with the Spanish PTO be accorded as date of filing within the meaning
of Art. 80 EPC.
In J 22/03, the Legal Board of Appeal referred to its decision in J 18/96 and explained
that, under Art. 80(d) EPC, the documents filed must contain a description and one or
more claims in one of the languages referred to in Art. 14(1) and (2) EPC, in order for a
date of filing to be accorded. Art. 14(1), second sentence, EPC stated that European
patent applications must be filed in one of the official languages. The principle that
applications are to be monolingual could therefore clearly be inferred from that provision.
Since Art. 80(d) EPC referred to that provision, accordance of a date of filing required
that the description and the patent claim(s) be in the same (permitted) language.
2. Application documents
VII.A.2. Application documents

2.1. Filing of application documents

European patent applications may be filed in writing, directly or by post, at the EPO's
filing offices in Munich, The Hague or Berlin. The EPO's sub-office in Vienna is not a
filing office. For filing of applications by facsimile and in electronic form (epoline®), see
Guidelines A-II, 1.2 et seq. (June 2005 version).
Two decisions point out the need to ensure - if the applicant wishes to be accorded a
particular date of filing - that application documents are actually received by the EPO
itself or by a competent national authority by that date. This is particularly important
where applications are filed by post.

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In J 18/86 (OJ 1988, 165) the board stated that under R. 24 EPC in conjunction with
Art. 75(1)(b) EPC the date of filing of a European application was always the date on
which the application documents were actually received, either by the EPO directly or by
a competent national authority. R. 24 EPC provided a comprehensive and self-sufficient
system in accordance with which the EPO could determine the date of filing of a
European patent application wherever (in accordance with Art. 75(1) EPC) it was filed.
Nothing in the EPC admitted of the possibility of applying a provision of any national law
to the determination of the date of filing of a European patent application.
In J 4/87 (OJ 1988, 172), as a result of an unforeseeable postal delay, a European
patent application posted in the United Kingdom on 4.12.1985 did not reach the EPO
until 11.12.1985. The application claimed priority from 8.12.1984. The postal delay was
due to a general interruption in the delivery of mail in the United Kingdom during the
period from 15.11.1985 to 5.12.1985 inclusive. Time limits expiring within that period
were extended to 6.12.1985 pursuant to R. 85(2) and (3) EPC. Thus, in that particular
case, the 12-month time limit for claiming priority expired outside the period of
interruption of mail specified in the President's notice. The appellant asked for an
individual extension of the time limit on the grounds that nothing in the EPC prevented
the EPO from allowing discretion in cases where the applicant might suffer hardship due
to exceptional delays in the post. The appeal was dismissed since nothing in the EPC
enabled the EPO to accord a date of filing for an application other than that on which the
main documents making up the application were received by the competent authority. In
consequence, the principles set out in decision J 18/86 above applied equally to an
application filed direct with the EPO in Munich.
In J 13/04, the board observed that, under Art. 78(2) EPC, the filing and search fees
must be paid within one month of the filing of the European patent application.
Consequently, the time limit for payment of these fees in the case at hand could not be
determined on the basis of either the date on which the application was forwarded to the
EPO or the date on which the receipt was issued under R. 24(2) EPC but rather only on
the basis of the date on which the application within the meaning of Art. 75(1) EPC was
received by the competent national authority, provided that the date of that filing was
also the date of filing within the meaning of Art. 80 EPC.
2.2. Subsequent filing of drawings
In J 19/80 (OJ 1981, 65) it was held that if a part of a drawing is missing, the missing
part is not to be considered as a missing drawing for the purposes of R. 43 EPC; the
whole figure is to be considered as an incorrect drawing. The correction of drawings is
dealt with in R. 88 EPC. However, according to G 3/89 and G 11/91 (OJ 1993, 117 and
125), the priority documents cannot support a correction under R. 88, second sentence,
EPC. If a sheet including two complete figures is filed late, these cannot be considered
incorrect drawings for the purposes of R. 88 EPC. The late filing of one or more complete
figures is dealt with in R. 43 EPC (J 1/82, OJ 1982, 293).
2.3. Replacing the invention
R. 88 EPC gives the EPO discretion in allowing corrections. In J 21/85 (OJ 1986, 117)
the Legal Board had held that R. 88 EPC did not permit an invention covered by a
request for grant of a patent to be exchanged for another, even if a request for correction
under R. 88 EPC was submitted immediately the application had been filed and it was
demonstrated beyond doubt that the inventions were unintentionally confused.

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In T 726/93 (OJ 1995, 478), however, the board exercised its discretion by allowing the
erroneously filed wrong claims and description to be replaced by the documents which
the appellant had actually intended to file.
In J 21/94 (OJ 1996, 16) doubts were raised about T 726/93 and the following question
was referred to the Enlarged Board: "Can the complete documents forming a European
patent application, that is the description, claims and drawings, be replaced by way of a
correction under R. 88 EPC by other documents which the applicant had intended to file
with his request for grant?" In G 2/95 (OJ 1996, 555), the Enlarged Board ruled that they
could not.
In decision J 21/94, taken on 20.1.1997 and terminating the appeal proceedings, the
Legal Board concluded that the originally disclosed invention B could be accorded a filing
date even if there were contradictions between the request for grant (which related to
invention A) and the application documents (which disclosed invention B). If a further
invention (here invention A) was disclosed during grant proceedings, it could not be
given a filing date unless it was clear that protection for this invention was now sought.
2.4. Extent of competence of the Receiving Section
R. 88 EPC, second sentence, lays down as a condition for acceptance of a request for
correction concerning a description, claims or drawings that a correction must be obvious
in the sense that it is immediately evident that nothing else would have been intended
than what is offered as the correction. This often requires a technical examination of the
file, so that the question arises whether the Receiving Section is competent to deal with
the correction in such a case.
In decision J 4/85 (OJ 1986, 205) the board made it clear that the duties of the Receiving
Section did not include a technical examination of the file; it should not, therefore, take a
decision on a request for correction necessitating such an examination, but should leave
the request in abeyance until the file had been transferred to the examining division.
However, in J 33/89 (OJ 1991, 288) the board pointed out that the Receiving Section
remained competent for decisions on requests for correction of drawings under R. 88,
second sentence, EPC unless the request necessitated a technical examination.
In J 5/01, the Receiving Section had issued a decision by which the applicant’s request
to correct the number of the second priority application was rejected, stating that since at
the time of filing the R. 88 EPC request the present application was still under the
responsibility of the Receiving Section, the present decision had been made by and
under the responsibility of the Receiving Section.
The Legal Board found that this decision was taken after the applicant had indicated
under Art. 96(1) EPC that he wished to proceed further with the application, at which
point in time the examining division became responsible for the examination of the
application and the Receiving Section ceased to be responsible (Art. 16 EPC in
conjunction with Art. 18(1) EPC). The board held that the wording of Art. 16 EPC and
18 EPC as they stand leaves no room for an interpretation according to which the
responsibility for a European patent application could be split between the Receiving
Section and the examining division. The clear and mutually exclusive allocation of this
responsibility in the EPC prevails over considerations of procedural or cost economy
(contrary to J 8/82, OJ 1984, 155), Thus, relying on the point in time at which a request

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for correction was made rather than on the two acts mentioned in Art. 16 EPC (request
for examination or indication under Art. 96(1) EPC) would be contra legem.
The board pointed out that corrections under R. 88 EPC are not a matter which forms
part of the examination on filing or of the examination as to formal requirements (Art. 90
and 91 EPC). Rather, the wish or the need for a correction may arise during the whole
grant procedure and even afterwards, eg. during opposition proceedings; so, nor do the
nature of the issue or the specific tasks of the two bodies in question suggest it that the
responsibility for deciding on corrections under R. 88, first sentence, EPC, should be
retained with the Receiving Section (for corrections necessitating a technical
examination see J 4/85, OJ 1986, 205).
In J 13/02, the board took the view that the fact that the EPC 2000 versions of Art. 16 to
18 EPC were already applicable in accordance with Art. 6 of the Revision Act did not
alter the fact that the Receiving Section's competence comes to an end once a valid
request for examination has been made with the result that the examining division must
examine whether the application meets the requirements of the EPC (Art. 94(1) EPC in
conjunction with Art. 96(2) and 97(1) and 97(2) EPC).
3. Identity of the applicant
VII.A.3. Identity of the applicant

In J 25/86 (OJ 1987, 475) it was pointed out that the requirement of Art. 80(c) EPC for
"information identifying the applicant" was to be considered as having been met
whenever it was possible to establish beyond reasonable doubt the identity of the
applicant on the basis of all data contained in the documents filed by the applicant or his
representative.
In Art. 60(3) EPC the principle is established that the EPO assumes the applicant to be
entitled to the European patent. This fiction only relieves the EPO of any need to
investigate the existence of the entitlement. However, when a person referred to in
Art. 60(1) EPC, other than the applicant, disputes the entitlement to the grant of a
European patent, the entitlement may be modified under the conditions provided for in
Art. 61 EPC.
Following J 7/80 (OJ 1981, 137) it was held in J 18/93 (OJ 1997, 326), J 17/96 and
J 31/96 that a correction substituting the name of the applicant was allowable under
R. 88 EPC if there was sufficient evidence to support the request for correction. This rule
was not in conflict with the provisions of Art. 61 EPC, which concerned ownership
disputes. R. 88, second sentence, EPC was not applicable. It was only necessary to
verify whether there was sufficient evidence to support the request under R. 88 EPC for
correction of the applicant's name; where the correction of a mistake was requested and
R. 88, second sentence, EPC was not applicable, the EPO had to be satisfied that a
mistake had been made, what the mistake was and what the correction should be. In
order to avoid any abuse, the burden of proving the facts had to be a heavy one (J 8/80,
OJ 1980, 293).
A correction under R. 88, first sentence, EPC was retroactive to the original date of filing
(J 3/91, OJ 1994, 365; J 2/92, OJ 1994, 375) and the application was restored to the
form which it should have taken on the filing date if the error had not been made (J 4/85,
OJ 1986, 205).

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In J 17/97 and J 18/97 the representative had filed the parent application in the name of
Int. Inc., but the divisional application in the name of S.medica. Due to the different
identities of the applicants, the Receiving Section had refused to treat the application as
a divisional application. In its decisions, the Legal Board did not allow the request for
correction to replace the name of the applicant of the divisional application with the name
of the applicant of the parent application pursuant to R. 88 EPC because the appellant
had not proved that the divisional application had been filed in error by S.medica and
should have been filed by Int. Inc.
4. Designation of states
VII.A.4. Designation of states

4.1. Article 79(2) EPC (old version)

Under Art. 79(2) EPC as in force until 30.6.1997, designation fees had to be paid before
the European patent application was published, namely within 12 months of the date of
filing or, if priority was claimed, within 12 months of the priority date or within one month
of filing the subsequent European patent application (whichever was the later date).
In J 8/80 (OJ 1980, 293) the Legal Board of Appeal interpreted R. 88, first
sentence, EPC as meaning that a correction was not precluded by virtue of its not being
"obvious" within the meaning of R. 88, second sentence, EPC. Moreover a mistake could
result from an omission. The Legal Board accordingly ruled that the designation of states
was correctable if it could be shown which states ought in fact to have been designated
(J 4/80, OJ 1980, 351; J 12/80, OJ 1981, 143) and if a request for correction was made
in time for a warning to be given when the patent application was published (J 3/81,
OJ 1982, 100; J 21/84, OJ 1986, 75). According to J 10/87 (OJ 1989, 323), subject to
certain narrowly circumscribed conditions, the withdrawal of a contracting state's
designation was correctable after publication of the European patent application (see
"Case Law of the Boards of Appeal of the EPO", 2nd edition 1996, p. 265 et seq.). New
Art. 79(2) EPC has now superseded this case law as regards correction of designation of
states.
4.2. Article 79(2) EPC (current version)
Since 1.7.1997, under new Art. 79(2) EPC, designation fees are now payable up to six
months from the date on which the European Patent Bulletin mentions the publication of
the European search report. Thus a new designation system applies to EP applications
filed as from 1.6.1997. Precautionary designation of all EPC contracting states has been
replaced by express designation of all states party to the EPC on the date of filing.
Those states for which designation fees have been validly paid, and where under
R. 23a EPC the application is thus comprised in the state of the art, are published in the
European Patent Bulletin (see Supplement to OJ 5/1999).
Under the old rules, J 14/90 (OJ 1992, 505) and J 18/90 (OJ 1992, 511) laid down
principles about designating states which only became party to the EPC a few days after
the EP application was filed, and J 30/90 (OJ 1992, 516) ruled that a PCT application
could give rise to a European patent only in states for which the EPC too was in force
when the international application was filed (see "Case Law of the Boards of Appeal of
the EPO", 2nd edition 1996, p. 266 et seq.).
Also under the old rules, in J 25/88 (OJ 1989, 486) the Legal Board of Appeal ruled, in
the case of an application for which Form 1001 had not been used, that the absence

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from the (otherwise adequate) documents filed by the applicant of an explicit designation
of a particular contracting state (a requirement under Art. 80(b) EPC for according a date
of filing) was to be considered as a precautionary designation of all the contracting
states.
4.3. Effect of non-payment of designation fees
On 5.10.1998 the EPO President asked the Enlarged Board of Appeal under
Art. 112(1)(b) EPC whether deemed withdrawal following failure to pay designation fees
meant that the designation was of no legal effect and deemed never to have taken place
or whether deemed withdrawal under Art. 91(4) EPC was effective only from a later date.
The statement which gave rise to this referral was the Legal Board's observation
(J 22/95, OJ 1998, 569) that the deemed withdrawal of a designation as a
consequence of non-payment of the designation fee had effect from the outset, ie the
designation was invalid ab initio. However, EPO practice is based on the assumption that
this deemed withdrawal only has effect ex nunc, ie on expiry of the term for payment of
designation fees.
In G 4/98 (OJ 2001, 131), the Enlarged Board of Appeal found that there was no support
under the European patent system for the view that failure to pay designation fees in due
time had the effect that the designations disappear retroactively as if they had never
existed. On the contrary, the board pointed out that the wording of Art. 78(2) EPC and
Art. 79(2) EPC and the system clearly indicate that up to the due date for payment of the
designation fees, the designations deploy their full effects. Only if the designation fees
were not paid in due time, would the designations not have any effect with respect to
acts to be performed after that date, such as the filing of a divisional application.
Retroactivity of the effects of non-payment of designation fees would occur only where
the EPC explicitly provides for it, ie in the case of provisional protection (Art. 67(4) EPC).
The board also found that a non-retroactive effect of the deemed withdrawal of
designations due to the failure to pay the corresponding fees would allow the situation in
respect of divisional applications to be dealt with appropriately. According to the
approach of J 22/95, all divisional applications filed before the due date of the payment
of designation fees for the parent application would disappear if the designation fees
were not paid in due time, because the designations would be deemed never to have
taken place und thus the requirement of Art. 76(2) EPC could not be met, namely that
the divisional application shall not designate contracting states which were not
designated in the earlier application. To avoid this consequence, the applicant would be
forced to pay the designation fees for the parent application, even if he had lost all
interest in it, for example due to an unfavourable search report. By contrast, the board
pointed out that an ex nunc effect of the deemed withdrawal of designations due to the
non-payment of the corresponding fees meant that failure to pay these fees did not affect
the validity or the geographical extent of the divisional application. The applicant might
designate all contracting states designated in the parent application in the divisional
application, and he might proceed with all of them even if in respect of the parent
application he later paid only some or no designation fees. This was in line with the fact
that the procedure concerning the divisional application was in principle independent
from the procedure concerning the parent application and that the divisional application
was treated as a new application.

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The second question submitted by the President of the EPO related to the date from
which the deemed withdrawal of the designation of a contracting state took effect. The
Enlarged Board of Appeal held that since in its opinion no general retroactive effect was
attached to the fact that a designation was deemed to be withdrawn, the deemed
withdrawal necessarily took effect upon expiry of the time limits mentioned in Art. 79(2)
EPC and R. 15(2), R. 25(2) and R. 107(1) EPC, as applicable, and not upon expiry of the
period of grace provided by R. 85a EPC.
4.4. Correction of designation of states in Euro-PCT applications
J 17/99 explained that with respect to corrections of designations in Euro-PCT
applications, the same principles shall apply as for Euro-direct applications (see also
Chapter IX, "The EPO acting as a PCT authority").
J 27/96 concerned a Euro-PCT application designating all the then 17 EPC contracting
states for a European patent. Owing to a misinterpretation of the designation
instructions, the representative only designated 10 states and paid 10 designation fees
on entry into the regional phase. After expiry of the time limit under R. 85a(2) EPC, the
appellant filed a request for correction under R. 88 EPC to the effect that the remaining
states be designated, and paid the respective fees. The Legal Board (J 3/81,
OJ 1982, 100) held that although its case law had in principle allowed a designation to
be added under R. 88 EPC, failure to pay a fee in due time could not be remedied under
that Rule.
The appellant's auxiliary request to replace states expressly indicated as states for which
designation fees had been paid upon entry into the regional phase by states designated
only later by way of correction under R. 88 EPC likewise failed. The appellant had never
contended nor submitted any proof that the original designation had been made
erroneously. In this context, the appellant had argued that were his main request, ie the
addition of the omitted designations, to be allowed, more states would be designated
than fees paid. In this situation, the EPO would have been obliged to ask the applicant
for which states the fees paid were intended and the most important states could have
been chosen. The Legal Board objected, pointing out that the retroactive effect of the
correction did not mean that the applicant was reinstated in the procedural phase when
designations had to be made and fees paid or that, in consequence, the whole
procedure in that phase would be available to him again. Correction of a mistake was an
isolated procedural measure and not a case of re-establishment into a procedural phase
as a whole.
In J 3/01 the Legal Board of Appeal recalled that correction under R. 88, first
sentence, EPC is allowable in the case of linguistic errors, errors of transcription and
mistakes in any document filed with the EPO. There was ample case law of the boards
of appeal with respect to omitted designations of contracting states and omitted priority
claims, according to which R. 88 EPC also applied to erroneous omissions in documents
filed with the EPO (eg J 6/91, OJ 1994, 349). However, the board noted that, pursuant to
the established case law of the boards of appeal, R. 88, first sentence, EPC in no way
compelled the EPO to permit the correction of errors of any kind at any time. All three
texts of this rule ("können" - "may" - "peuvent") gave the EPO the authority to permit
certain types of correction at its discretion, which also meant that corrections could be
made dependent on conditions or might not be allowed with regard to other, compelling
principles of the EPC. Thus, for instance, the Legal Board recognised a need for a time

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limitation for the allowability of a correction of designations only up to the date of the
mention of the international publication in the European Patent Bulletin. The board
referred to J 27/96 where the board stated that a correction by addition of a designation
did not mean - despite its ab initio effect - that the applicant was reinstated into the
procedural phase where designations could be made and fees paid.
The board held that the so-called retrospective effect of a correction under R. 88 EPC
did not cancel previous procedural events, but only caused the document corrected to be
considered from the time of correction and for the future as filed ab initio in the corrected
version. Correction under R. 88 EPC did not reverse the effect of decisions already taken
on the basis of the uncorrected document and did not re-open a procedural phase
already terminated or a time limit already expired. In other words, a procedural loss of
right only indirectly caused by the incorrect document would not be remedied by a later
correction of the document pursuant to R. 88 EPC. This principle also characterised the
functional and essential difference between a correction under R. 88 EPC on the one
hand and restitutio in integrum pursuant to Art. 122 EPC on the other hand (see also
J 25/01).
5. Correction of priority declarations
VII.A.5. Correction of priority declarations

Early on the Legal Board allowed correction of state designation under R. 88, first
sentence, EPC (J 8/80, OJ 1980, 293; J 12/80, OJ 1981, 143; J 3/81, OJ 1982, 100;
J 21/84, OJ 1986, 75). Shortly afterwards the rather strict principles developed in these
decisions were also applied in cases where correction of priority declarations was at
stake. Although a mistake correctable under R. 88, first sentence, EPC can be an
incorrect statement or the result of an omission, all the previous cases related to omitted
priority declarations (J 3/82, OJ 1983, 171; J 4/82, OJ 1982, 385; J 14/82, OJ 1983, 121;
J 11/89 and J 7/90, OJ 1993, 133).
In the four decisions J 3/91 (OJ 1994, 365), J 6/91 (OJ 1994, 349), J 9/91 and J 2/92
(OJ 1994, 375), the Legal Board refined the principles to be applied to corrections of
priority declarations. In J 6/91 it analysed and summarised the previous case law,
pointing out that the applicant had to prove a mistake, ie that the document filed with the
EPO did not express the true intention of the person on whose behalf it was filed. In the
earlier decisions the burden of proof on the applicant was defined as a heavy one. In
J 9/91, however, the board now took the view that the omission of a priority declaration
would, in nearly every case, be an error. Thus, as a general rule, there was no need in
cases of this kind to require special evidence to discharge the burden on the applicant of
proving that a mistake had been made.
Despite the fact that R. 88, first sentence, EPC allowed correction without any time bar,
the Legal Board followed the established case law requiring a request for correction of a
priority claim to be made sufficiently early for a warning to be included in the publication
of the application (J 3/82, OJ 1983, 171; J 4/82, OJ 1982, 385; J 14/82, OJ 1983, 121).
This principle was upheld because the EPO, when exercising its discretionary power
under R. 88, first sentence, EPC had to balance the applicant's interest in gaining
optimum protection and a third party's interest in maintaining legal security and, in
particular, in ensuring that the published application data were correct.
The board noticed, however, that the previous case law in special circumstances already
allowed the correction even without such a warning:

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(i) if the EPO was partly responsible for the fact that no warning was published (J 12/80,
OJ 1981, 143) and/or
(ii) if the interest of the public was not seriously affected because
- the mistake was obvious (in this sense, implicitly, J 8/80, OJ 1989, 293);
- only a second or further priority was added (J 4/82, OJ 1982, 385; J 14/82,
OJ 1983, 121; J 11/89);
- the public was otherwise informed about the full scope of protection sought by the
applicant (J 14/82, OJ 1983, 121).
In J 3/91, J 6/91 and J 2/92 it was held that even after publication of a European patent
application without a warning, the priority declaration could be corrected under R. 88,
first sentence, EPC provided that there was an obvious discrepancy in the published
application indicating that something was wrong. In such a case the interests of third
parties were not adversely affected by the correction.
In J 3/91 the board held that an experienced practitioner could have noticed the obvious
discrepancy because the claimed Japanese priority date (31.12.1983) and the European
application date (3.1.1984) were close together and the Japanese file number was
mentioned.
In J 6/91 the international application in suit claiming priority from a US continuation-in-
part application was itself presented as a continuation-in-part application and referred
back to an earlier US application. In view of this and other special circumstances, the
board allowed the addition of a (first) priority claim referring to the earlier US application.
In J 2/92 the US priority date claimed for a PCT application was, owing to a clerical error,
a Saturday when the USPTO was closed, instead of the previous Friday. The correct
date was indicated on the priority document. Owing to a further clerical error in the
request for transmittal of priority documents under R. 17.1(b) PCT (a typing error in the
document number), the Receiving Office - in this case the USPTO - transmitted the
wrong document to WIPO. The board allowed its replacement even after publication of
the international application, adding, however, that this might not always be possible.
In the parallel cases T 972/93 and T 973/93 the examining division refused a request for
the priority date to be corrected. European patent application E1 claimed the priority of a
French application F1, from which two French divisional applications F2 and F3 were
filed within the priority year claiming the priority of the parent application. The matter at
issue in T 972/93 and T 973/93 were European applications E2 and E3, which claimed
the priority of F2 and F3 respectively. In error however, the filing date of F2 and F3 was
given as the priority date. This mistake was detected during examination proceedings,
after E2 and E3 had been published with the wrong priority date, because E1 was
discovered as a prior right within the meaning of Art. 54(3) EPC.
The board of appeal allowed the correction (following J 6/91, OJ 1994, 349), ruling that
the mistake was apparent, because only eight months separated the filing date of E2 and
E3 from the incorrect priority date, whereas the priority year was usually exploited to the
full. The interests of third parties had not been adversely affected because the
precautionary filing of two European divisional applications with respect to E1, which had

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the same content as F2 and F3, made it possible to gain protection for the subject-
matters of E2 and E3 with the priority of F1.
On the other hand, in J 7/94 (OJ 1995, 817) the board did not allow the correction. It held
that the mere fact that an existing priority was not claimed could not justify adding this
priority by correction. For these reasons the board maintained its practice that a
correction after publication could only be allowable under special circumstances, in
particular, if it was apparent on the face of the published application that a priority was
wrong or missing. The board stated that it was not sufficient, as suggested by the
appellant, that a mistake might be detected after consulting the priority document, since
the published data as such should be reliable at the publication date. In the case at issue
it was not apparent even from the priority document as filed relating to the priority
indicated in the request form that the priority data were not correct (likewise T 796/94).
The appellant's argument that the interest of the public was not affected by the addition
of a second or subsequent priority was also rejected. It was true that in such a case the
publication of the application was not delayed. Nevertheless, the addition of a priority of
a later date than the priority erroneously claimed might also affect the public because
any additional priority was relevant for the evaluation of the validity of the patent.
In J 11/92 (OJ 1995, 25) the priority of four UK applications was claimed for the
European patent application. After the technical preparations for publication of the
European application had been completed the applicant requested the addition of an
omitted priority. It was explained that the third priority disclosed 24 examples. However,
two weeks before the third priority the applicant had filed a UK application which had
been inadvertently overlooked in the European filing. This UK application already
disclosed 21 of the 24 examples. Accordingly the earlier application was the first one to
disclose the subject-matter of these 21 examples, while the latter one was the second to
do so, and, thus, provided no basis for priority in respect of the common subject-matter.
The Receiving Section refused the request for correction because it was not filed
sufficiently early for a warning to be included in the publication of the application.
Following established case law the Legal Board pointed out that a correction under
R. 88, first sentence, EPC was at the discretion of the competent authorities and that the
interest of the applicant in gaining optimum protection and the interest of the public in
legal security were to be balanced. Applying this basic principle to the present case the
board allowed the requested addition of a fifth priority claim. It took into account the fact
that the appellant filed in due time, as a precautionary measure, a second application
claiming priority from the omitted UK application. By this "auxiliary" application the
parties were informed of the full scope of European patent protection sought. In addition,
the public was fully informed of the scope of European patent protection sought as far as
the subject-matter was concerned since the examples disclosed in the omitted priority
application were covered by the first and third priority applications. Finally, the board took
into account the fact that the applicant acted promptly after detection of the mistake and
that the patent grant procedure, including publication of the application after 18 months,
had not been held up in any way.
In T 713/02 (OJ 2006, 267), the board held that even where the formalities officer
allowed a request for correction of priority data, the matter was not thereby decided in
the applicant's favour in binding form prior to the decision terminating the granting
procedure and was, thus, open to review by the board of appeal. The board found no
reason to assume that the official letter, in which the formalities officer stated that the

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requested correction was allowed, constituted a formal (interlocutory) decision; nor did
this statement for objective reasons qualify as such a decision whose content - the
addition of a further priority by way of correction pursuant to R. 88 EPC - was res
judicata; nor was there any basis for construing such an effect on the principle of
legitimate expectations or good faith. It followed that, irrespective of whether the
formalities officer acted ultra vires (as the examining division held) or not, the question of
whether in the present case the further priority was validly claimed was open to review
by the board of appeal exercising the power conferred on it by Art. 111(1) EPC.
However, see the Notice from the EPO regarding decision T 713/02 (OJ 2006, 293).
Moreover, the board held that the examination of a request for correction of priority data
after the publication of the application was not to be restricted to that portion of the facts
and circumstances which in a decision of a board of appeal in another case were
considered not to preclude the correction. Therefore, in the case before the board, it
could not be ignored that the requested correction by addition of an earlier priority date
would eliminate from the state of the art pursuant to Art. 54(2) EPC a highly relevant
document, which the applicant had previously de facto accepted as comprised in that
state of the art (see, however, Communication of the EPO concerning T 713/02,
OJ 2006, 293).
6. Filing of priority documents
VII.A.6. Filing of priority documents

In J 1/80 (OJ 1980, 289) it was stated that R. 38(3) EPC permitted an applicant to file
certified copies of the priority documents at any time before the end of the sixteenth
month after the date of priority. There was only a deficiency if the priority documents had
not been filed at the end of the period. It could only be said that there was a deficiency
thereafter and the applicant had to be given an opportunity to remedy that deficiency
within a further period (Art. 91(2), R. 41(1) and R. 84 EPC). There was a loss of rights
only if the applicant did not take advantage of that opportunity.
7. Applicability of Article 110(3) EPC
VII.A.7. Applicability of Article 110(3) EPC

If the appellants fail to reply in due time to an invitation under Art. 110(2) EPC, the
European patent application is deemed to be withdrawn under Art. 110(3) EPC even if
the appeal relates to formal points, as the effect of the appeal, namely that the board of
appeal is now competent for the case, applies to the entire application (J 29/94,
OJ 1998, 147; see Chapter VII.D.3).
8. Publication of the application
VII.A.8. Publication of the application

In J 5/81 (OJ 1982, 155) it was stated that the key date for completion of the technical
preparations for publication under Art. 93 EPC specifiable pursuant to R. 48(1) EPC
could be said to give the applicant a certain minimum period of time within which his
withdrawal of the application also prevented its publication. If the application was not
withdrawn until after the key date, the applicant could no longer rely on its not being
published. Nevertheless, the EPO was allowed by law to prevent publication, at its own
discretion.

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B. Examination procedure
Examination procedure

1. Request for examination

VII.B.1. Request for examination

According to Art. 94(1) EPC, the EPO shall examine, on written request, whether a
European patent application and the invention to which it relates meet the requirements
of the EPC. Art. 94(2) EPC states that a request for examination may be filed at any time
from the date of filing of the application up to the end of six months after the date on
which the European Patent Bulletin mentions the publication of the European search
report.
In J 12/82 (OJ 1983, 221) the board found that the unequivocal terms of Art. 94 EPC did
not permit any wide interpretation - in fact the article required that the request be written,
filed within a certain period and accompanied by payment of the fee within the same
period. In addition it should be noted that the authors of the EPC, ie the contracting
states, gave the request filed within the time limit extensive effects: it could not be
withdrawn (Art. 94(2), last sentence, EPC), yet on the other hand, if it was filed late the
patent application was automatically deemed to be withdrawn (Art. 94(3) EPC). The
board held that the mere payment of the examination fee within the time limits provided
for in Art. 94(2) EPC and R. 85b EPC could not be a substitute for filing the request itself
in good time. EPO Form 1001.1 for request for grant now contains the written request for
examination.
In J 4/86 (OJ 1988, 119) the board held that failure to file a request for examination for a
European patent application would result in the application's being deemed to be
withdrawn upon expiry of the period referred to in Art. 94(2) EPC and not subsequently
upon expiry of the period of grace provided by R. 85b EPC. In such a case, therefore, a
renewal fee which did not become due until after expiry of the first-mentioned time limit
had to be refunded.
In J 25/92 the board found that in so far as the applicant for a European patent
application had to use the EPO forms, he only had to ensure that the examination fee
was paid in time, as the first condition - that the request be written and filed within a
certain period - was fulfilled. That meant that the payment of the fee in due time really
constituted the request.
In J 4/00 the board held that a request for examination under Art. 94 EPC required, over
and above payment of the examination fee, that the underlying intention of an applicant
that his application should proceed to examination was manifested in a written statement
made by the applicant or his representative addressed to the EPO and received there in
time. While this requirement was quite distinct from that of payment of the examination
fee, there was no prescribed form of words for a request for examination which could be
contained in the same document as a debit order or other payment instruction. To qualify
as a request for examination, in the circumstances of the case the only reasonable
interpretation of the text filed with the EPO had to be that the applicant thereby wanted to
inform the EPO that he wished to have the application examined pursuant to
Art. 94 EPC.

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2. Procedure stage prior to substantive examination

VII.B.2. Procedure stage prior to substantive examination

2.1. Communication under Article 96(1) EPC and Rule 51(1) EPC
Under Art. 96(1) EPC if the applicant for a European patent has filed the request for
examination before the European search report has been transmitted to him, the EPO
will invite him after the transmission of the report to indicate, within a period to be
determined, whether he desires to proceed further with the European patent
application. Additionally, R. 51(1) EPC provides that, in the invitation pursuant to
Art. 96(1) EPC, the EPO will invite the applicant, if he wishes, to comment on the
European search report and to amend, where appropriate, the description, claims and
drawings.
In J 8/83 (OJ 1985, 102) and J 9/83 the board found that if a supplementary European
Search report has to be drawn up in respect of an international application which is
deemed to be a European patent application, the applicant is entitled to receive the
invitations provided for in Art. 96(1) EPC and R. 51(1) EPC. Since in the case of such an
international application, responsibility for examination of the application does not pass
to the examining division until the applicant has indicated under Art. 96(1) EPC that he
desires to proceed further with his application, the applicant may obtain a refund of the
examination fee if in response to the invitation under Art. 96(1) EPC he withdraws his
application, or allows it to be deemed to be withdrawn.
The board noted that the provisions of Art. 96(1) EPC and R. 51(1) EPC clearly operate
in the respective interests of applicants, third parties and the EPO by encouraging
applicants to review their applications critically and realistically in the light of the
European search report, before substantive examination begins. The opportunity given
by the EPO to obtain a refund of the substantial fee for examination by withdrawing the
application at that stage, or allowing it to be deemed to be withdrawn, provides an
additional incentive to withdraw cases which are unlikely to succeed.
2.2. Amendments after receipt of the European search report (Rule 86(2) EPC)
Before receiving the European search report the applicant may not amend the
description, claims or drawings of a European patent application except where otherwise
provided (R. 86(1) EPC).
In J 10/84 (OJ 1985, 71) the board noted that the general purpose of R. 86(2) EPC was
to permit the applicant for a European patent to make voluntary amendments in order to
take the results of the European search report into account.
Following receipt of the European search report and before receipt of the first
communication from the examining division, the applicant may, of his own volition,
amend the description, claims and drawings (R. 86(2) EPC). Moreover, since he has the
right under R. 51(1) EPC to comment on the European search report at that stage, he
can expect to receive the examining division's response to his comments in the first
communication, which can be to his advantage because of his right to submit
amendments with his reply to that communication (R. 86(3) EPC; see J 8/83,
OJ 1985, 102 and J 9/83).
In J 6/96 the Legal Board of Appeal noted that, for a non-PCT applicant seeking a
European patent, amendments before the receipt of the search report were prohibited by
R. 86(1) EPC whereas the applicant who had filed a PCT application was permitted to

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make amendments even after the 21 or 31-month period provided for in R. 104b(1) EPC
(now R. 107 EPC). However, according to Art. 157(1) EPC, the international search
report under Art. 18 PCT took the place of the European search report.
Therefore - beyond the possibility of filing amendments with the International Bureau
after receipt of the international search report (Art. 19 PCT and R. 46 PCT) - a PCT
applicant seeking a European patent could present amended patent claims to the EPO
as soon as it had received the international search report. Thus, the possibility for a PCT
applicant to amend claims before each designated office (Art. 28 PCT) was only the
consequence of the fact that it is in another procedural phase. It appears from the above
that in fact the PCT applicant has more time to amend claims than a non-PCT applicant.
2.3. Failure to reply to the communication pursuant to Article 96(1) EPC (Article
96(3) EPC)
According to Art. 16 EPC, the Receiving Section ceases to be responsible for a
European patent application when a request for examination has been made or the
applicant has indicated under Art. 96(1) EPC that he desires to proceed further with his
application. If the applicant does not wish to proceed further, he may simply refrain from
answering the invitation within the time limit, so that the application is deemed to be
withdrawn pursuant to Art. 96(3) EPC.
In J 33/86 (OJ 1988, 84) the board found that if the applicant files the request for
examination and pays the examination fee before the European search report is
transmitted to him, and fails to state within the period specified under Art. 96(1) EPC
whether he desires to proceed further with his application, then under Art. 96(3) EPC the
application is deemed to be withdrawn. Until that time the Receiving Section remains
responsible for the examination of the application (see Art. 16 EPC).
Art. 16 EPC was revised in 2000, the revised version being provisionally applicable
under Art. 6 of the Revision Act.
3. Substantive examination of the application
VII.B.3. Substantive examination of the application

3.1. First and further communications pursuant to Article 96(2) EPC and Rule
51(2) EPC
The purpose of the examination is to ensure that the application and the invention to
which it relates, meet the requirements set out in the relevant articles of the EPC and
Rules of the Implementing Regulations.
Art. 96(2) EPC states that if the examination of a European patent application reveals
that the application or the invention to which it relates does not meet the requirements of
the EPC, the examining division shall invite the applicant, in accordance with the
Implementing Regulations and as often as necessary, to file his observations within a
period to be fixed by the examining division.
According to the established case law of the boards of appeal, it is left to the examining
division's discretion to decide whether to issue a further invitation. The words "as often
as necessary" indicate that the examining division may use its discretion to act according
to the circumstances. Under Art. 113(1) EPC, however, it is not necessary to give the
applicant repeated opportunities to comment on the examining division's submissions if
the main objections to the grant of a European patent remain the same. A further
invitation to present comments following a substantiated communication in which

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deficiencies were recorded is only appropriate if it would appear likely that, in the light of
the applicant's reply, the examination proceedings would terminate in the granting of a
patent (see T 84/82, OJ 1983, 451; T 161/82, OJ 1984, 551; T 162/82, OJ 1987, 533;
T 243/89, T 300/89, OJ 1991, 480; T 793/92 and T 516/93).
In T 640/91 (OJ 1994, 918) the board stated that the requirement in Art. 96(2) EPC that
the examining division must invite the applicant to file his observations "as often as
necessary" implicitly recognised that in certain circumstances the examining division
would be legally obliged to invite further observations from the applicant before issuing a
decision. Having regard to Art. 113(1) EPC, there was a "necessary" legal obligation for
an examining division to invite further observations from an applicant before issuing a
decision adversely affecting him, where the division might be inclined to issue an
immediate decision on the ground that he had shown lack of good faith in his previous
observations. The board pointed out, moreover, that it was in principle not the function of
an examining division to assess either the degree of collaboration from applicants or
their good faith when deciding whether or not to invite further observations in the
exercise of its discretion under Art. 96(2) EPC. The exercise of this discretion depended
primarily upon whether or not there was a reasonable prospect that such an invitation
could lead to the grant of a patent (see also T 855/90, in which the board found that the
examining division had exercised its discretion unreasonably).
In T 802/97 the board noted that when applying Art. 96(2) EPC to determine in a specific
case whether an applicant should be given a further opportunity to present comments or
amendments before refusing an application after a single official communication, the
established practice of the examining divisions as set out in particular in the Guidelines
for Examination in the EPO is to warn the applicant who had made a bona fide attempt
to deal with the examining division's objections, eg by a telephone conversation or by a
short further written action, that the application will be refused unless he can produce
further more convincing arguments or makes appropriate amendments within a specified
time limit. Only when the applicant has not made any real effort to deal with the
objections raised in the first communication, should the examining division consider
immediate refusal of the application, this however being an exceptional case (see
Guidelines C-VI, 4.3 - June 2005 version).
In T 89/93 the board again held that the examining division could not refuse an
application after a first communication if the applicant had made a serious attempt to
overcome the objections raised or if it appeared likely that continuing the procedure
would lead to a positive result. Following T 908/91, the board decided, however, that
reimbursement of the fee for appeal would not be equitable.
In T 79/91 the board held that the refusal of the application after only one communication
was not contrary to Art. 96(2) EPC because it was unlikely that further communications
would have produced a positive result.
In T 63/93 the board stated that a patent application could be refused after the first
communication if the applicant's response failed to convince the examining division,
particularly where the claimed subject-matter had not been substantially modified (see
also T 66/83 and T 304/91).

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3.2. Contents of a communication according to Article 96(2) EPC and Rule

51(3) EPC
Under the procedure set out in Art. 96(2) EPC, if the examination has revealed that the
European patent application or the invention on which it is based does not meet the
requirements of the EPC, the examining division's communication shall contain a
reasoned statement covering, where appropriate, all the grounds against granting the
European patent (R. 51(3) EPC). Moreover, the examining division should invite
applicants as often as necessary to file their comments.
In T 5/81 (OJ 1982, 249) the appellant submitted that, in the only communication sent,
the examiner had failed to comment on claim 5, an omission which was contrary to
Art. 96(2) EPC and R. 51(3) EPC. The board noted that an appeal might relate only to a
decision subject to appeal within the meaning of Art. 106(1) EPC and not to preparatory
measures. Art. 96(2) EPC and R. 51(3) EPC applied exclusively to that preparatory
procedure. A failure to comply with these requirements could not be taken into
consideration unless it had some influence on the decision to refuse, as in the case of a
breach of Art. 113(1) EPC. The appellant's objection was unfounded, not only for this
reason, but also because the examiner commented on the content of the claim in
question by drawing attention to the possibility of formulating an independent claim
based thereon. Since the appellant did not make use of that possibility, the examining
division was not obliged to discuss it when refusing the application. The allusion thereto
in the reasons for the decision did not form part of the ratio decidendi and was intended
solely to demonstrate that the examining division was aware of the fact that the
application might contain patentable subject-matter. A refusal under these circumstances
was not open to challenge.
In T 161/82 (OJ 1984, 551) the board noted that a distinction had to be made between
the grounds on which a decision was based (ie the requirements of the EPC which were
not satisfied by the application or the invention to which it related) and the reasoned
statement explaining in greater detail why the examining division was of the opinion that
such grounds existed (see R. 51(3) EPC). Art. 113(1) EPC did not require an applicant to
be given repeated opportunity to comment on arguments of the examining division so
long as the decisive objections to the grant of the European patent remained the same
except for some supplementary observations concerning the applicant's arguments
which did not convince the examining division.
In T 568/89 the board held that whether the given reason was correct or not was a
matter of judgment and not of procedure.
In T 20/83 (OJ 1983, 419) the board noted that Art. 96(2) EPC prescribes that the
examining division must draw all obstacles to patentability to the applicant's attention.
This conclusion related to the requirements for patentability as laid down in the EPC
itself. The validity of a patent in various contracting states was however not an
immediate condition under the EPC (see T 830/91, OJ 1994, 728).
In T 98/88 the board pointed out that R. 51(3) EPC did not make it compulsory for
communications in accordance with Art. 96(2) EPC to set out all the grounds against the
grant of the patent. The board's view in this case was that deferral of the examination in
respect of the requirements under Art. 52 EPC until a clear version of the claims had
been received did not conflict with R. 51(3) EPC.

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3.3. Amendments after receipt of the first communication (Rule 86(3) EPC)
After receipt of the first communication from the examining division the applicant may, of
his own volition, again amend the description, claims and drawings once in reply to the
communication. No further amendment may be made without the consent of the
examining division (R. 86(3) EPC).
In T 229/93 the board found that in the circumstances of the case at issue the examining
division should have considered refusing to consent to the amendments pursuant to
R. 86(3) EPC, since the filing of such amendments after the expiry of the time limit for
answering the first communication of the examining division in the form of a completely
retyped description was contrary to the requirement of procedural economy (see
T 113/92).
In T 300/89 (OJ 1991, 480) the board pointed out that even if it were possible for the
examiner to envisage amendments which might lead to the grant of a patent, the burden
lay with the applicant to propose amendments if he so wished (including various
alternatives in the form of auxiliary requests). These amendments could be proposed in
the applicant's observations in reply to the first communication (Art. 96(2) EPC) from the
examining division, where any objections were raised (T 599/92). It also held that an
applicant had a right to request oral proceedings at any time, but if he wished to avoid
the risk of an adverse decision being issued without oral proceedings being appointed,
he should request oral proceedings at the latest in his observations in reply to such (here
first) communication under Art. 96(2) EPC.
3.4. Admissibility of amendments after reply to the first communication
Under R. 86(3), last sentence, EPC after receipt of the reply to the first communication
from the examining division, amendments to a European patent application cannot be
made without the consent of the examining division. It is therefore a matter of discretion
for the latter.
According to the consistent case law of the EPO boards of appeal, an examining division
when exercising such discretion must consider all relevant factors of the specific case
and balance in particular the applicant's interest in obtaining an adequate protection for
his invention and the EPO's interest in bringing the examination to a close in an effective
and speedy way. Furthermore, once an examining division has exercised such
discretion, a board of appeal should only overrule it if it comes to the conclusion either
that the examining division did not exercise its discretion in accordance with the right
principles or that it exercised its discretion in an unreasonable way and had thus
exceeded the proper limit of its discretion (see T 237/96 with particular reference to
G 7/93, OJ 1994, 775 and T 182/88, OJ 1990, 287).
In T 43/83 the board noted that according to R. 86(2) and (3) EPC an applicant was
entitled to amend his application twice of his own volition. In the case at issue the
applicant had not availed himself of these two opportunities. According to R. 86 (3) EPC
he needed the consent of the examining division for further amendments, so that the
examining division was fully entitled to decide on the application after the first
communication and to refuse the application exclusively on grounds which had already
been mentioned in their first communication, satisfying thus Art. 113(1) EPC as well.

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In T 951/97 the board noted that whether or not consent was given was at the discretion
of the examining division and depended on the facts of the individual case, on the nature
of the grounds for seeking an amendment, and equally on the stage of the procedure. It
was easier to secure an amendment at an earlier rather than at a later stage (see
T 529/94 and T 76/89).
In T 1105/96 (OJ 1998, 249) the board noted that the admissibility of any main or
auxiliary request which was filed after the reply to the first communication from the
examining division was a matter within the discretion of the examining division
(R. 86(3) EPC). Such discretion must be exercised lawfully having regard to the relevant
circumstances. In a case such as this, where an examining division had indicated that a
further request in the form of an amended text for the main claim of an application would
be allowable, it was difficult to imagine any circumstances in which it would be lawful for
the examining division to deny the admissibility of such request, in the exercise of such
discretion. Certainly, in the circumstances of the case at issue, the rejection in advance
of such a further auxiliary request unless all preceding requests were abandoned was an
abuse of procedure, an unlawful exercise of discretion under R. 86(3) EPC and thus a
substantial procedural violation within the meaning of R. 67 EPC.
In T 166/86 (OJ 1987, 372) the board held that under R. 86(3) EPC, further
amendments - which included the submission of a separate set of claims for a given
contracting state - could only be made with the consent of the examining division (see
Legal Advice No. 4/80, OJ 1980, 48). The examining division had to take the decision on
whether to consent to the requested amendment after due assessment of the particular
circumstances. In particular, this involved balancing the EPO's interest in speedy
completion of the proceedings against the applicant's interest in obtaining a patent which
was legally valid in all the contracting states. The examining division would not be able to
refuse its consent to an amendment if, for good reasons, the applicant was only at that
late stage in a position to request the amendment, or if the requested amendment was
obviously essential for him and to take it into account would not appreciably delay the
grant procedure. In the board's view, the latter situation was the case here.
In T 182/88 (OJ 1990, 287) and T 166/86 (OJ 1987, 372), the board decided that a
separate set of claims submitted at a late stage in the proceedings was admissible under
the particular circumstances. It added that the EPO's user-friendly reputation should
clearly be excluded from consideration during the exercise of any discretion by the EPO.
The showing of consideration towards parties before the EPO should not be confused
with the proper exercise of discretion according to the law. It was also held that when a
decision hinged on the exercise of discretion, the reasons should be given.
In T 872/90 the board held that neither the remark "the applicant has already once
amended the claim" nor a reference to R. 86(3) EPC could be considered to represent a
reasoning because, in the board's opinion, such statements solely constituted a
reference to the power given to the examining division by the above rule.
3.5. Amendments relating to unsearched subject-matter
Amended patent claims which refer to unsearched subject-matter and which do not
combine with the original claims to form a single general inventive concept must, under
the new R. 86(4) EPC (which entered into force on 1.6.1995), be rejected as
inadmissible (see Communication of the EPO dated 1.6.1995, OJ 1995, 409, 420 et
seq.).

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In T 442/95, at the beginning of the substantive examination, the examining division had
raised a lack of unity objection against the claims as filed on the basis of the finding that
these related to three different groups of inventions. Later, the appellants filed amended
claims based on the subject-matter of the three groups. These claims were refused by
the examining division on the grounds of lack of novelty. In the appeal proceedings the
appellants submitted new claims, based on subject-matter which did not appear in the
claims as filed. They submitted that the description of this newly claimed subject-matter
was to be found in the description. In the board's judgment, the subject-matter claimed
had not been searched and did not combine with the originally claimed and searched
groups of inventions to form a single general inventive concept. There was no need at
this stage to investigate whether the application as filed provided support for such a
claim, because under R. 86(4) EPC the claim was not admissible. The only path open to
the appellants was to pursue the subject-matter of said claim in the form of a divisional
application.
In T 613/99, the EPO as International Searching Authority considered that the invention
forming the subject-matter of claims 1 and 2 of the international application related to
acts excluded from patentability. On the basis of R. 39(1)(iii) PCT, it refrained from
searching these two claims but established an international search report on the
remaining claims. The examining division having stated in a later communication that
claims 1 and 2, in view of the amendments made to them, no longer concerned subject-
matter excluded from patentability, the applicants responded by filing a fresh set of
claims comprising these two claims only. Subsequently, the examining division refused
the European patent application, explaining that R. 86(4) EPC was applicable in this
case since the amended claims related to matter which had not been the subject of an
international search.
The board of appeal decided that this line of argument was not acceptable. It stated that
R. 86(4) EPC referred to a particular situation, ie where subject-matter was described but
not claimed in the original application and was therefore not searched; where that
subject-matter failed to meet the requirement for unity of invention with the matter
claimed in the application; and where, following the search report, the applicants had
filed fresh claims relating only to this unsearched matter. In this situation, the
patentability of these fresh claims could not be examined in the context of the original
application, since this would have amounted to a derogation from the principle endorsed
in G 2/92 (OJ 1993, 591), according to which the invention to be examined had to be an
invention for which a search fee had been paid.
In the case at issue, the situation was entirely different. The claimed subject-matter in the
application under consideration had been claimed in the original application and had
therefore been searched, even if it had not been possible to carry out a meaningful
search. Moreover, the invention forming the subject of claims 1 and 2 of the application
at issue was substantially the same as that which formed the subject of claims 1 and 2 of
the original application. In such a situation, if the examining division rejected a finding of
the search division regarding matter excluded from the search, a so-called additional
European search could be carried out at the request of the examining division.
In T 443/97 the appellant (opponent) had argued that the amended claim contravened
R. 86(4) EPC.

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The board stated that the amended claim did not relate to unsearched subject-matter.
Moreover, it pointed out that R. 86(4) EPC related to issues concerning lack of unity of
invention. It was also clear from the EPO Notice dated 1.6.1995 (OJ 1995, 409) that
R. 86(4) EPC concerned examination proceedings, and particularly those cases in which
no further search fees requested by the search division for non-unitary subject-matter
had been paid by the applicant. The purpose of R. 86(4) EPC was to exclude any
amendment which circumvented the principle according to which a search fee must
always be paid for an invention presented for examination. The board noted that unity of
invention was a requirement of an administrative nature and that the administrative
purposes of this requirement were fulfilled when the examination procedure had been
concluded, ie when the patent had been granted (see G 1/91, OJ 1992, 253). Therefore,
R. 86(4) EPC was not relevant for the opposition case at issue.
In T 708/00 (OJ 2004, 160) the application had been refused by the examining division,
principally on the grounds that the new claims were not allowable under R. 86(4) EPC.
The board pointed out that R. 86(4) EPC did not apply when the applicant had not paid
the search fee in respect of a non-unitary invention relating to the originally filed claims in
spite of being invited to do so under R. 46(1) EPC. In that case, the application could not
be examined further, and a divisional application would have to be filed if protection were
sought (see G 2/92, OJ 1993, 591). Under R. 86(4) EPC, amended claims could only be
refused if the subject-matter of the claims filed originally and that of the amended claims
was such that, had all the claims originally been filed together, a further search fee would
have been payable - on top of the search fees payable in respect of the claims actually
filed at the outset - in respect of the amended claims, relating to a different invention
within the meaning of R. 46(1) EPC (see also T 319/96 and T 631/97, OJ 2001, 13).
The board noted that a subsequent amendment to limit the subject-matter of the main
claim by additional features disclosed in the application as filed did not generally affect
the notion of unity of invention under either R. 86(4) or R. 46(1) EPC.
In T 353/03 the examining division had stated in its decision of refusal that the new
feature in claim 1 had not been searched and that, for that reason, the application was
refused according to Art. 97(1) in conjunction with R. 86(4) EPC. The board observed
that the ground for refusal under R. 86(4) EPC had been raised in the appealed decision
for the first time with respect to the subject-matter of claim 1 underlying the decision. The
applicant had thus had no opportunity to present his comments before the decision was
issued. That contravened the applicant's rights as laid down in Art. 113(1) EPC and
amounted to a substantial procedural violation.
The board found that in its decision the examining division did not take into account the
fact that R. 86(4) EPC mentioned another condition which also had to be fulfilled for
amended claims to be rejected, namely that the unsearched subject-matter did not
combine with the originally claimed invention to form a single general inventive concept
(lack of unity). There was no discussion in the appealed decision as to why the subject-
matter of new claim 1 was not in unity with original claim 1. The board came to the
conclusion that the appealed decision was not reasoned within the meaning of
R. 68(2) EPC.
R. 86(4) EPC, which was introduced with effect from 1.6.1995, was intended to prevent
amendments of the application which circumvent this principle that a search fee must
always be paid for an invention presented for examination. R. 86(4) EPC stops

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applicants switching to unsearched subject-matter in the reply to a communication from

the examining division and makes means available for the EPO to react when different
subject-matter is claimed not simultaneously but in sequence as is the case when the
applicant drops the existing claims and replaces them with originally non-unitary subject-
matter extracted from the description (T 274/03; with regard to R. 86(4) EPC, see Notice
of 1.6.1995, OJ 1995, 409, 420 et seq.).
In T 274/03 the board noted that it was clear that post-search "switching" of subject-
matter clearly implied a significant change in the nature of the subject-matter being
claimed which was not normally comparable to the addition of features taken from the
description to further define an element that was already a feature of the original main
claim. The board was of the opinion that an amendment amounting to the restriction of
an original main claim by including complementary features from the original description
into the claim represented an admissible reaction of an applicant vis-à-vis an objection
against the patentability of the unamended claim and did not constitute an abuse of the
system of the nature which R. 86(4) EPC was introduced to prevent (T 377/01 and
T 708/00). This type of amendment should not therefore in general be judged as
contravening the requirements of the rule, even though an additional search could be
required. In this context it was to be observed that the implicit finding of lack of unity
between the originally claimed and later claimed subject-matter, which was a
prerequisite for an objection under R. 86(4) EPC, had to, with amendments of the type
under consideration here, be a posteriori. The Guidelines for Examination in the EPO
made it clear however that this form of objection to lack of unity should be the exception,
with benefit of the doubt being given to the applicant (see Guidelines C-III, 7.7 - June
2005 version).
3.6. Issuance of a further communication under Article 113(1) EPC
Under Art. 113(1) EPC the decisions of the EPO may only be based on grounds or
evidence on which the parties concerned have had an opportunity to present their
comments.
In T 734/91 the applicant had filed a fresh set of claims to overcome all the objections
mentioned in the examining division's communication. The board confirmed that the
applicant should not be given repeated opportunities to comment on the same objections
but pointed out that, where an applicant had made a bona fide attempt to overcome the
objections raised by the examining division, Art. 113(1) EPC might require him to be
given the opportunity to present his comments on the grounds for refusing the amended
claims.
In T 907/91 the examining division refused the application without informing the applicant
of its grounds for not accepting the amended documents submitted after receipt of the
first communication and after oral proceedings. The board held this action to be in
breach of Art. 113(1) EPC because, prior to issuing the contested decision in written or
oral proceedings, the examining division should have given its reasons for refusing to
accept the amended documents. Such grounds could be of a formal nature or relate to
substantive patent law, depending on the relevant provisions. However, other grounds
could also be brought to bear, based on generally recognised principles of procedural
law (see Art. 125 EPC), such as the applicant's attempt to delay proceedings by
submitting an excessively large number of requests for amendments in clear abuse of
the patent grant procedure.

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In T 951/92 (OJ 1996, 53) the board summed up the case law by stating that
Art. 113(1) EPC was intended to ensure that, before a decision refusing an application
for non-compliance with a requirement of the EPC was issued, the applicant had been
clearly informed by the EPO of the essential legal and factual reasons on which the
finding of non-compliance was based. This was so that in advance of the decision he
knew both that the application might be refused and why, and also so that he might have
a proper opportunity to comment upon the reasons and/or to propose amendments so as
to avoid refusal of the application. Thus the term "grounds or evidence" in
Art. 113(1) EPC should not be narrowly interpreted. In particular, in the context of the
examination procedure the word "grounds" did not refer merely to a ground of objection
to the application in the narrow sense of a requirement of the EPC which was considered
not to be met. The word "grounds" should rather be interpreted as referring to the
essential reasoning, both legal and factual, which led to refusal of the application
(T 187/95). In other words, before a decision was issued an applicant had to be informed
of the requirement which he had to meet and had to have an opportunity of meeting it. If
a communication under R. 51(3) EPC and pursuant to Art. 96(2) EPC did not set out the
essential legal and factual reasoning to support a finding that a requirement of the EPC
had not been met, then a decision based on such a finding could not be issued without
contravening Art. 113(1) EPC, unless and until a communication had been issued which
did contain the essential reasoning. If a decision was issued in the absence of a
communication containing essential reasoning, Art. 96(2) EPC was also contravened,
since in order to avoid contravening Art. 113(1) EPC it was "necessary" to issue a further
communication (see also T 520/94, T 750/94, OJ 1998, 32; T 487/93 and T 121/95).
In T 309/94 the board found that the examining division, in its last communication before
its decision, had hinted to the appellant (patent applicant) that a positive decision, eg to
grant a patent, could be expected if amended claims in the sense indicated by this
department of first-instance were filed. Accordingly, the appellants filed such claims.
Without any further information, and deviating from the impression given to the
appellants, the examining division then issued a decision refusing the application. This
deprived the appellants of the opportunity to present comments or counter-arguments
and thus infringed the requirements of Art. 113 EPC. The board held that this amounted
to a substantial procedural violation justifying reimbursement of the appeal fee.
In T 92/96 the board found that, after notification of a correctly reasoned communication
from the examining division, the applicants had had an opportunity to comment on the
objections set out therein, but had confined themselves to suggesting a minor
correction to the claim. A correction of this kind was not such as to lead the examining
division to modify its opinion, as the essential features of claim 1, which had been
considered to lack an inventive step, had remained unchanged. It had therefore to be
expected that the examining division would decide to refuse the application after
receiving the applicants' letter, since the applicants had made no real effort to reply to
the objections. In the board's view, the applicants had therefore suffered no prejudice,
and the examining division was not obliged, by virtue of the provisions of the EPC or of
the principle of good faith, to issue a new communication or to grant a telephone
interview to discuss the problem of inventive step on which it had already given a
negative ruling. Consequently, the examining division had not committed a procedural
violation, particularly with regard to Art. 113(1) EPC, and under these circumstances the
reimbursement of the appeal fee requested by the appellants on the basis of R. 67 EPC
was not granted.

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In T 946/96 the board noted that if an examining division refused its consent to a further
amendment under R. 86(3) EPC, the recognised correct procedure for the examining
division to follow was clearly set out in the Guidelines C-VI, 4.9 (June 2005 version); If a
request for amendment is to be refused under R. 86(3) EPC, the applicant must first in
compliance with Art. 113(1) EPC be sent a communication giving the reasons for
refusing the amendment. Here, the first indication given to the appellant that the
examining division was not prepared to consent to the introduction of the claims
submitted was in the decision under appeal. This was a substantial procedural violation
by the examining division. Art. 113 EPC had to be complied with also in the case of a
refusal of consent under R. 86(3) EPC, irrespective of how many previous
communications had been issued.
The board went on to say that if the examining division refused consent of the latest
submitted amended claims under R. 86(3) EPC this did not automatically revive previous
sets of claims which the examining division had consented to consider under
R. 86(3) EPC - unless the applicant had indicated that he was relying on these as an
auxiliary request. The correct procedure was to notify the applicant of the grounds for
intending to refuse consent to the latest set of claims and to ask him whether he wanted
a decision on that basis. If the applicant then maintained his request solely on the basis
of these claims, and any further arguments by the applicant did not persuade the
examining division to change its mind, then a decision should be given in which the
reasons for the refusal of consent under R. 86(3) EPC were stated, and the application
would be refused under Art. 97(1) and 78(1)(a) EPC on the basis that it contained no
claims to which the applicant had agreed.
In T 802/97 the board held that if a decision includes several grounds, it shall meet the
requirements of Art. 113(1) EPC with respect of each of the grounds. In the board's
judgment, if a decision of the EPO includes several grounds supported by respective
arguments and evidence, it is of fundamental importance that the decision as a whole
meets the mandatory requirements of Art. 113(1) EPC. Leaving it up to the deciding
body to suggest which of the grounds were to be considered as the basis of the decision
and which were not - and did not therefore need to comply with the requirements of
Art. 113(1) EPC - could only lead to legal uncertainty and confusion of the parties. An
exception from the above principle could be obiter dicta which were not part of the
grounds on which a decision is based.
In T 275/99 the board held that the requirements of Art. 113(1) EPC are met if the
appealed decision was entirely based on the grounds, facts and evidence which were
already known to the appellant from the extensive international preliminary examination
report (IPER) which had been drawn up for the description and the claims of the
international application corresponding exactly to the European application refused and
which had been incorporated by way of reference in an official communication of the
examining division.
In T 587/02 the appellant (patent applicant) had appealed on the ground that the
impugned decision violated the right to be heard (Art. 113(1) EPC) because the first
substantiated objection under the EPC was contained in the decision to refuse the
application. The board observed that in T 275/99 it had been held that Art. 113(1) EPC
could be met by the incorporation, by way of reference, of an IPER in an official
communication from an examining division, and it found no objection to citing an IPER
from an International Preliminary Examining Authority other than the EPO, provided that

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it constituted a reasoned statement as required by R. 51(3) EPC, using language

corresponding to that of the EPC; in the case of an inventive step objection that would
require a logical chain of reasoning which could be understood and, if appropriate,
answered by the applicant.
The board noted that the communication preceding the decision drew attention to the
IPER drawn up by the USPTO and found it necessary to consider the wording of the
IPER to see whether the objections giving rise to refusal and their basis in the EPC could
be identified. In the board's view the IPER failed to meet this test, and it also observed
that the refusal of the application after one action implied that the appellant had made no
real effort to deal with the examining division's objections (see Guidelines C-VI, 4.3 -
June 2005 version; cf. also T 802/97). Given that the appellant had deleted claims 1 to
11 and had presented arguments even though no clear case to be answered had been
made, that was patently not the case.
The board pointed out in T 268/00 that the right to be heard pursuant to Art. 113(1) EPC
only precludes a decision's being taken on the basis of fresh evidence and grounds,
while the use of a fresh argument, here based on a particular technical opinion, in a
decision still based on grounds communicated beforehand was not precluded. Hence the
technical argument in the decision under appeal addressed by the appellant, whether
fresh or not, did not violate any of the appellant's rights. As to the technical substance of
that argument, whilst the appellant might neither agree with the finding of the examining
division nor with the technical argument given, a divergence of views between the
examining division and the appellant on the substantive issue of inventive step did not
amount to a procedural violation.
In T 497/02 the appellant, relying on the then applicable Guidelines C-VI, 4.12 (now
Guidelines C-VI, 4.9 - June 2005 version), had complained that he was sent no written
communication prior to the oral proceedings giving the reasons for the refusal under
R. 86(3) EPC, nor any prior telephone indication, and that this amounted to a violation of
his rights under Art. 113(1) EPC. The board noted that an applicant cannot expect to
amend his claim request(s) a bare month before the date set for oral proceedings, and
still before the oral proceedings be sent a written communication or given a telephone
notification indicating that the examining division proposes to exercise its discretion
under R. 86(3) EPC against the admission of the new request(s), and the reasons for
this. The applicant must expect to have to deal with any problems with such late
requests at the oral proceedings.
The board observed that the purpose of R. 86(3) EPC was to give the examination
division a discretion to refuse amendments to the claims not made in answer to the first
communication, so as to ensure that the examination procedure is brought to a
conclusion in as few actions as possible (see Guidelines C-VI, 4.7 - June 2005 version).
From this and the Guidelines C-VI, 4.12 (earlier version), the board saw the purpose of
the then applicable Guidelines as being to give an applicant an opportunity to avoid the
situation of having a negative decision merely on the ground of there being no text
agreed to by the applicant.

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3.7. Informal communications

3.7.1 Telephone conversations
In T 300/89 (OJ 1991, 480) the board held, in relation to the appellant's complaint as to
the failure of the examiner to telephone as requested, that the practice in relation to such
informal communications was clearly set out in the Guidelines. Such informal
communications and the practice relating to them should be clearly distinguished from
the formal examination procedure governed by Art. 96(2) EPC and R. 51 EPC. The
examiner's discretion as to whether to make such an informal communication had to be
exercised in accordance with the Guidelines, having regard to the particular
circumstances of each individual case. An exercise of such discretion adversely to an
applicant, such as in the case in question, could not by its nature be a procedural
violation, however, because the procedure for such conversations was informal in the
sense that it was not governed by the EPC, but was additional to the procedure provided
by the EPC. In any event, in the board's view, in the case in question no criticism could
properly be made of the examiner in relation to his failing to telephone the appellant.
In T 160/92 (OJ 1995, 35) the appellant claimed that in two telephone conversations with
the primary examiner he was misled into believing that a refusal was not imminent, as a
further communication would be issued as the next step of the procedure. The board
noted that telephone calls between examiners of the EPO and applicants, in some
situations, could be a tool for speeding up an otherwise slower procedure. However, one
should be warned against expecting too much from them in critical situations, as
misunderstandings could happen more easily than in writing, sometimes promoted by
the fact that one of the two participants in the conversation might not be fully prepared
for dealing with the case. It was with good reason that the procedure before the EPO
was in principle, with the exception of oral proceedings under Art. 116 EPC, a written
procedure. Moreover, in the examination (as well as in the opposition) procedure the
primary examiner was only one of a division of three examiners, it being well-known that
his individual statements could not be binding for the division. Furthermore, telephone
conversations were not provided for in the EPC and did not, as such, form part of the
formal procedure before the EPO.
The board did not deny that the principle of good faith should govern all the actions
relating to procedural matters, even the informal ones, of employees of the EPO towards
parties to the proceedings. However, before the decision of the examining division could
be set aside it would have to be manifestly clear that the rules of procedure as laid down
in the EPC had been infringed. Since telephone conversations did not form part of the
said formal procedure, the board did not consider it necessary to conduct a detailed
investigation aimed at clearing up what was said in the above-mentioned telephone calls,
the sequence of procedurally relevant facts being already clearly established in the file.
The board held that the answer to the controversial question whether the applicant was
misled about the possibility of imminent refusal of the application must be sought by
focusing on the procedurally relevant content of the file.
3.7.2 Interviews
In principle, the refusal of a request for an interview with the examiner concerned does
not contravene any of the rules of procedure contained in the EPC. If the applicant
requests an interview, the request should be granted unless the examiner believes that

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no useful purpose would be served by such a discussion (Guidelines C-VI, 6.2 - June
2005 version).
In T 98/88 it was held that Art. 116 EPC gave every party the absolute right to oral
proceedings, but not the right to an interview with a particular member of an examining
division. It is for the examiner concerned to decide whether such an interview should
take place (see also T 235/85, T 19/87, OJ 1988, 268; T 409/87, T 193/93 and
T 589/93).
In T 409/87 the appellant had requested an interview which had been denied by the
examining division without giving reasons. The board observed that although the
decision under appeal did not indicate specifically why the requested interview had not
been granted, it was clear from it that the examining division had considered that such
an interview would not have served any useful purpose. Under such circumstances, the
examiner did not need to grant the interview requested (see Guidelines C-VI, 6.2 - June
2005 version). As an interview, in contrast to oral proceedings, was not a procedural step
provided by the EPC, the refusal to grant a request for an interview was not a decision
open to appeal and, therefore, did not fall under the provision of R. 68(2), first half-
sentence, EPC.
In T 182/90 (OJ 1994, 641) the appellant did not request oral proceedings before the
examining division but instead asked only for an interview. The board held that no
contravention of Art. 116(1) EPC as alleged by the appellant could be recognised.
In T 872/90 the board held that in accordance with established case law (see T 19/87
OJ 1988, 268), if any reasonable doubt existed in the minds of the examining division as
to the true nature of a potentially ambiguous request made to it by the applicant it was
clearly desirable, as a matter of practice, that the examining division should seek
clarification from the party concerned, in particular because the right to an oral hearing
provided by Art. 116 EPC was an extremely important procedural right which the EPO
should take all reasonable steps to safeguard. Violation of this right had, therefore, in
principle, to be considered as a substantial procedural violation within the meaning of
R. 67 EPC unless the circumstances and reasons for the refusal to grant that right could
be considered as a mere error of judgment. Having regard to the somewhat ambiguous
nature of the request for an opportunity "to be heard", which in the first place gave rise to
the interpretation to represent a request for an informal interview, the allowance or
refusal of which was entirely a matter of discretion, the board found that such an error of
judgment had in fact occurred and there was no procedural violation in this respect (see
T 19/87, T 283/88, T 668/89 and T 589/93).
In T 366/92 the statement that the applicant "would welcome the opportunity to discuss
the case with the Examiner at an informal interview ..." did not constitute a request for
oral proceedings under Art. 116 EPC.
In T 299/86 (OJ 1988, 88) the board held that the right of a party to request oral
proceedings under Art. 116 EPC was in no way affected by the fact that such party could
have also requested and/or attended an interview with the examiner.
In T 808/94 the board stated that informal interviews (also called "personal consultation")
and/or informal consultations by telephone which were carried out by the primary
examiner alone could not replace duly requested oral proceedings under Art. 116 EPC,
which were to take place before all members of the examining division (Art. 18(2) EPC).

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Board of appeal case law concerning oral proceedings in examination proceedings are
dealt with in Chapter VI.C.
3.8. Failure to reply to the communication pursuant to Article 96(2) EPC
If an applicant fails to reply to a communication pursuant to Art. 96(2) EPC and
R. 51(2) EPC inviting him to file his observations on the disclosed deficiencies,
Art. 96(3) EPC prescribes that the application will be deemed withdrawn. The phrase
"fails to reply in due time to any invitation under ... paragraph 2" in Art. 96(3) EPC is to
be construed in the light of the purpose of the invitation pursuant to Art. 96(2) EPC and
R. 51(2) EPC, which is to afford the applicant an opportunity to exercise his right to
present comments in accordance with Art. 113(1) EPC (T 685/98, OJ 1999, 346).
In T 160/92 (OJ 1995, 35) the board held that Art. 96(3) EPC did not require "a complete
reply", but only "a reply" in order to avoid the consequence of having the application
deemed to be withdrawn. A letter of reply to a communication of the examining division
filed in due time by the applicant and dealing with substantial points of this
communication constituted a reply within the meaning of Art. 96(3) EPC and thus, from
the point of view of procedural law, ruled out the possibility of deemed withdrawal.
In J 29/94 (OJ 1998, 147) the board observed - in relation to Art. 110(3) EPC - that there
was another form of reply which could result in a refusal, and not in the deemed
withdrawal of the application: if the applicant did not want to reply in substance to the
communication, it was permissible for him to ask for a decision on the file as it stood.
In T 685/98 (OJ 1999, 346) the board noted that prior to a valid refusal under
Art. 97(1) EPC the applicant must either have exercised his right to comment or have
waived this right. It held that a simple procedural request made by the applicant after
receipt of the R. 51(2) EPC communication could not be treated as a waiver of the right
to present comments during the remainder of the four-month term set for reply. When the
applicant neither replied in substance to the objections raised nor waived his right to
present comments, then the refusal of the application was ultra vires and voidable ab
initio because under Art. 97(1) EPC the application was to be refused, if no different
sanction was provided for by the EPC. However, Art. 96(3) EPC provides a different
sanction for failure to reply, namely the deemed withdrawal of the application.
In unclear cases there can be no presumption that an applicant has waived his right to
be heard under Art. 113(1) EPC. As was emphasized by the Enlarged Board of Appeal in
decision G 1/88 (OJ 1989, 189), surrender of a right cannot be simply presumed ("a jure
nemo recedere praesumitur"). Hence a refusal decision pursuant to Art. 97(1) EPC
based on such a presumption and taken before expiry of the term originally set for reply
to a communication contravenes Art. 113(1) EPC and thus involves a substantial
procedural violation. The board made it clear that where an applicant's letter of reply to a
first R. 51(2) EPC communication contains only a procedural request devoid of any
substantive implications, the examining division has no power to refuse the application
under Art. 97(1) EPC.
3.9. Refusal of a European patent application (Article 97(1) EPC)
Under Art. 97(1) EPC the examining division will refuse a European patent application if
it is of the opinion that such application or the invention to which it relates does not meet

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the requirements of the EPC, except where a different sanction is provided for by the
EPC.
A European patent application which fails to meet one of the requirements of the EPC
has to be refused in its entirety, without its being necessary to consider whether the
application as a whole, eg a dependent claim, might contain material indicative of an
inventive step (T 5/81, OJ 1982, 249; T 293/86, T 398/86 and T 98/88). In T 162/88 it
was stated that if the European patent application in the version submitted or approved
by the applicant contained a claim which the examining division considered unallowable,
the examining division had to refuse the European patent application in its entirety under
Art. 97 EPC and not just the claim concerned (see also T 117/88, T 253/89 and
T 228/89).
In T 11/82 (OJ 1983, 479) the board held that a European patent application had to
satisfy the conditions laid down in the Implementing Regulations (see Art. 78(3) EPC). If,
in the opinion of the examining division, the application did not do so, the examining
division was obliged by Art. 97(1) EPC to refuse it.
In several decisions the boards pointed out that it was highly desirable that the
examining division should give an appealable decision with sufficient reasoning on all
the issues that had been properly raised by the EPO during the examination proceedings
and dealt with substantively in the applicant's reply. Such "complete" decisions
streamlined the procedure rendering remittal to the department of first instance
unnecessary: the board could decide all issues already raised in the department of first
instance without depriving the appellant of the opportunity to have them considered at
two instances (see T 153/89, T 33/93 and T 311/94).
In T 839/95 the examining division did not take a final decision as provided for in
Art. 97 EPC. Instead, it issued a decision indicated as an interlocutory decision under
Art. 106(3) EPC rejecting the main and two auxiliary requests and stating that the
invention claimed according to the third auxiliary request was found to meet the
requirements of the EPC.
The board noted that an interlocutory decision in the case of an allowable auxiliary
request is foreseen in the instructions to examiners only for auxiliary requests in
opposition proceedings (Guidelines D-VI, 7.2.2 - June 2005 version). It did not consider it
appropriate for the department of the first instance to proceed in the same way in grant
proceedings. In the board's judgment, the purpose of the interlocutory decision in
opposition proceedings is intended to save the proprietor the further cost of fulfilling the
formal requirements under R. 58(5) EPC before there is a final decision on the version in
which the patent can be maintained (T 89/90, OJ 1992, 456). A corresponding situation
does not exist in grant proceedings because there is no adverse party who may object to
the version to which the applicant has agreed. The appeal was admissible, since the
appellant was adversely affected by the rejection of his preceding requests.
3.10. Amendments filed before the boards of appeal
In T 63/86 (OJ 1988, 224) the board noted that the wording of the whole of R. 86(3) EPC
pointed specifically to the examining division. In cases of minor amendments filed during
the appeal, it might be appropriate for a board of appeal to exercise the discretion of the
examining division under R. 86(3) EPC. However, where substantial amendments had
been proposed which required a substantial further examination in relation to both the

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formal and substantive requirements of the EPC, such further examination should be
carried out, if at all, by the examining division as the first instance, only after the
examining division had itself exercised its discretion under R. 86(3) EPC (T 47/90,
OJ 1991, 486; T 1/92, OJ 1993, 685; T 296/86, T 341/86, T 347/86, T 501/88, T 531/88,
T 317/89 and T 184/91).
In T 1051/96 the appellants re-introduced on appeal matter which, having been objected
to under Art. 82 EPC by the examining division, had not been further prosecuted by
them. The board held that the applicant could not be allowed, on appeal from a decision
refusing the restricted claim on some other ground, such as lack of inventive step, to put
forward a request which reverted to the broader claim and thus re-introduced matter
open to the objection of lack of unity. It decided that the admission of this request into the
proceedings should be refused in the exercise of the board's discretion under
R. 86(3) EPC (see T 63/86, OJ 1988, 224). The board noted that this was because, as
was clear from the EPC, in particular Art. 96 EPC, and had been stated in G 10/93
(OJ 1995, 172), it was the task of the examining division, and not that of the board of
appeal, to carry out a full examination as to patentability requirements. Proceedings
before the boards of appeal in ex-parte cases were primarily concerned with examining
the contested decision.
4. Examination proceedings after issue of the Rule 51(4) EPC
communication
VII.B.4. Examination proceedings after issue of the Rule 51(4) EPC communication

4.1. Introduction
R. 51(4) EPC has been amended several times. The purpose of the amendments was to
shorten the period up to the grant of a European patent.
The new R. 51(4) EPC, which entered into force on 1.4.2005 (OJ 2005, 88), states as
follows: "Before the Examining Division decides to grant the European patent, it shall
inform the applicant of the text in which it intends to grant it, and shall invite him to pay
the fees for grant and printing and to file a translation of the claims in the two official
languages of the EPO other than the language of the proceedings within a non-
extendable period to be specified, which may not be less than two months or more than
four months. If the applicant pays the fees and files the translation within this period, he
shall be deemed to have approved the text intended for grant."
The new Rule does not foresee the possibility of failure to signal approval. If the
applicant does not file the translations and/or does not pay the fees for grant and
printing, the application will be deemed withdrawn under Art. 97(3) and (5) EPC and
R. 51(8) EPC.
For R. 51 EPC in its version prior to 1.7.2002, see "Case Law of the Boards of Appeal of
the EPO", 4th edition 2001, p. 434 et seq.
4.2. Approval of the text by the applicant
4.2.1 Clear and unambiguous approval according to R. 51(4) EPC (earlier version)
The following decisions relate to earlier versions of R. 51(4) EPC. Nevertheless, they
may also be applicable to the present version.
In J 12/83 (OJ 1985, 6) the board held that an applicant for a European patent could be
"adversely affected", within the meaning of Art. 107 EPC, by a decision to grant the

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patent if the patent were granted with a text not approved by the applicant, contrary to
Art. 97(2)(a) EPC. Approval, for the purposes of that article, had to be established "in
accordance with the provisions of the Implementing Regulations" (here R. 51(4) EPC).
In J 13/94 the board observed that any approval of the text, in accordance with
R. 51(4) EPC, might thus have serious procedural consequences for applicants. Hence,
according to the case law of the Legal Board of Appeal, declarations by applicants
should only be treated as valid approval under R. 51(4) EPC if they were clear and
unambiguous which, in particular, implied that:
- the approval was not subject to any condition (J 27/94, OJ 1995, 831);
- it was clear to which text the applicant had given his approval (J 29/95, OJ 1996, 489).
In J 27/94 (OJ 1995, 831) the board held that in the interests of legal certainty a
procedural declaration had to be unambiguous (confirming J 11/94, OJ 1995, 596). This
implied that it must not be subject to any condition, leaving it open whether the EPO
could proceed further on the basis thereof. It found that the examining division should not
have treated the letter in question as valid approval under R. 51(4) EPC, because it
contained a condition which made the approval invalid. The approval of the text intended
for grant was a necessary requirement for the next step in the proceedings, ie the
communication under R. 51(6) EPC. It had to be clear for the EPO when receiving the
declaration whether or not it was an appropriate basis for the despatch of this
communication. In the interests of legal certainty the board stated that procedural
declarations had to be unambiguous. The examining division should have objected to the
invalid approval, with the eventual consequence foreseen in R. 51(5), first
sentence, EPC.
4.2.2 Rule 51(4) EPC communication refusing main and first auxiliary requests (2002
version)
In T 1181/04 (OJ 2005, 312) the appellant (patent applicant) filed an appeal against the
communication under R. 51(4) EPC issued by the examining division refusing the main
request and the first auxiliary request.
The board noted that the communication under R. 51(4) EPC from the examining
division gave the appellant the impression that no possibility was available to him other
than to pay and accept the proposed text or not to pay and lose the application. This
impression was even stronger because reasons for turning down the higher ranking
requests were also contained in the document and no indication was given as to how to
proceed if the appellant wished to maintain these higher ranking requests. The board
observed that where approval is not given, this also has a legal consequence, namely
the refusal of the application in accordance with Art. 97(1) EPC. The legal consequence
of the non-existence of the applicant's approval was not the same as that foreseen for
the failure to pay the fees or to file the translation. In the former case the application is
refused, whereas in the latter it is deemed to be withdrawn. The board noted that the fact
that an applicant's disapproval of the text proposed for grant has special legal
consequences also makes it necessary to ensure that disapproval is clearly established
by the examining division.
The board noted that the communication sent to the applicant reflected an EPO practice
that did not provide for a procedure to be followed in the event that the applicant did not

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agree with the version proposed by the examining division. The board found that this
practice was not justified by the EPC. The applicant's approval of the text proposed for
grant by the examining division was an essential and crucial element in the grant
procedure and its existence or non-existence needs to be formally ascertained. Further,
the applicant should be given the opportunity to express his disapproval of the text
proposed for grant by the examining division with a communication under R. 51(4) EPC
and to obtain an appealable decision refusing his requests.
In T 1255/04 (OJ 2005, 424) the board followed decision T 1181/04. The board held that
in cases where there is a request which is considered allowable and on which a
R. 51(4) EPC communication is to be sent, but there are also higher-ranking requests
which are not allowed, the communication under R. 51(4) EPC is deficient if it is not
accompanied by reasons why the higher-ranking requests are not allowed. The
R. 51(4) EPC communication should, in addition, expressly mention the option of
maintaining the disallowed requests, thus reminding the applicant and the examining
division of the possibility for the applicant to ask for a written appealable decision on
these higher-ranking requests.
The board noted, furthermore, that if the applicant maintained a still pending higher-
ranking request discussed at the oral proceedings before the examining division, that
request could not be refused under R. 86(3) EPC. A decision which merely stated that
the application was refused because there was no version approved of by the applicant
within the meaning of Art. 113(2) EPC on which a patent could be granted, would be
inadequately reasoned, because it did not give the substantive reasons why the version
the applicant had approved of was not in conformity with the patentability requirements
of the EPC.
4.3. Article 113(2) EPC
Art. 113(2) EPC states that the EPO shall consider and decide upon the European
patent application or the European patent only in the text submitted to it, or agreed, by
the applicant for or proprietor of the patent.
In T 32/82 (OJ 1984, 354) the board held that in accordance with Art. 113(2) EPC, it
could only decide on the European patent application in the text submitted to it or agreed
by the applicant. It followed that when deciding the appeal the board had no authority
under the EPC to order the grant of a European patent containing claims which were
different from those submitted by the applicant in their content or interdependency. Even
if the board had indicated to an applicant that a dependent claim might be allowable if
rewritten as an independent claim but the applicant had not expressly requested the
board to consider it as such, the board was not obliged to do so.
In T 872/90 the board held, in view of the requirement of Art. 113(2) EPC according to
which the EPO will consider and decide on the European application only in the text
submitted to it, or agreed, by the appellant, that former claims which had been replaced
by newly filed claims could no longer be considered to constitute a text agreed to by the
applicant.
In T 647/93 (OJ 1995, 132) the board found that the provision of Art. 113(2) EPC was a
fundamental procedural principle, being part of the right to be heard, and was of such
prime importance that any infringement of it, even as a result of a mistaken interpretation
of a request, had, in principle, to be considered to be a substantial procedural violation.

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In any case, such violation occurred when, as in the case in question, the examining
division did not make use of the possibility of granting interlocutory revision under
Art. 109 EPC, after the mistake had been pointed out in the grounds of appeal (see
T 121/95).
In T 237/96 the board noted that in circumstances in which, as in the case in question,
amendments proposed by the applicant were not allowed by the examining division by
virtue of R. 86(3) EPC and the applicant did not give its agreement to any other version
of the application documents, the established practice of the EPO, sanctioned by
consistent case law, was to refuse the application on the ground that there was no
version approved by the applicant within the meaning of Art. 113(2) EPC on which a
patent could be granted.
4.4. Amendments filed in reply to a communication under Rule 51(4) EPC
The decisions below relate to the earlier versions of R. 51 EPC. Nevertheless, the
criteria for accepting or refusing requests for amendment under R. 86(3), or correction
under R. 88 EPC, have not been changed by the new R. 51 EPC. Thus the approval of a
notified text submitted by an applicant pursuant to R. 51(4) EPC does not become
binding (G 7/93, OJ 1994, 775).
In T 375/90 the board noted the conditions defined by the boards of appeal limiting the
extent of the discretion which may be exercised when applying R. 86(3) EPC, where
amendments were proposed by the applicant after issue of the R. 51(4) EPC
communication:
(i) There is no discretion in the obligation to admit amendments which remove
deficiencies constituting violations of the EPC (see T 171/85, OJ 1987, 160 and
T 609/88).
(ii) In all other cases the EPO's interest in a speedy completion of the proceedings must
be balanced against the applicant's interest in the grant of a patent with amended claims
(see T 166/86, OJ 1987, 372; T 182/88, OJ 1990, 287 and T 76/89).
The board noted that the Guidelines C-VI, 4.8 and 4.9 stated that the communication
under R. 51(4) EPC does not constitute an opportunity for the applicant to call into
question the outcome of the earlier procedure and only minor amendments will be
considered within the period under R. 51(4) EPC. Moreover, the applicant had to give
good reasons for proposing the changes only at this stage of the proceedings. These
rules of the Guidelines also reflected the call for the balance of interests applicable when
judging cases falling under category (ii) mentioned above. It followed from the foregoing
considerations that the examining division (or the board acting within its competence),
when applying the provisions of R. 86(3) EPC, was not completely free to deny any
examination of the respective amended documents.
In T 171/85 (OJ 1987, 160) the applicants argued that the amendment requested was
covered by R. 88 EPC and could therefore be made even after communication of
approval under R. 51(4) EPC. The board noted that it was true that in the
generally-accepted view corrections under R. 88 EPC, second sentence, could be made
at any time prior to the decision to grant (see also Guidelines C-VI, 5.9 - March 1985
version). However, the board considered that in this particular case the requirement of
R. 88 EPC, second sentence, was not met. The board took the view that although

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correction under R. 88, second sentence, EPC was not possible, the documents
nonetheless contained an inconsistency which should properly have been removed
before the communication under R. 51(4) EPC was issued. If this was not done the
precondition for grant under Art. 97(2) EPC that the application meets the requirements
of the EPC appeared not to be met. The board of appeal saw no reason why an
inconsistency between claims or between claims and the description should not be
removed, in agreement with the examining division and the applicant, even if the latter
had communicated approval of the (faulty) text under R. 51(4) EPC. Nor as a rule would
it seem necessary to set aside and replace the communication under R. 51(4) EPC; this
need be done only if in a contracting state there might be a loss of rights under
Art. 65(3) EPC unacceptable to the applicant.
In T 1/92 (OJ 1993, 685) the board found that if, according to R. 51(6) EPC, it could not
be established beyond doubt at the end of the time limit under R. 51(4) EPC that the
applicant approved the text in which the examining division intended to grant the
European patent, the examining division could not proceed to the grant of the patent and
R. 51(5) EPC applied. The board further noted that as the appellants' requests that their
approval be disregarded and that the time limit for response to the R. 51(4) EPC
communication be extended were filed within the four-month period given in that
communication, they were entitled, in accordance with R. 51(5) EPC to make
observations upon invitation by the examining division, should it not consent to the
proposed amendments. This meant that in any circumstance the appellants were entitled
to a response dealing with their requests. Under R. 51(4), last sentence, EPC they were
further automatically entitled to the requested extension. R. 51(5) EPC expressly entitled
the applicant to a response from the examining division to a request for amendment, if
this request was filed on time. As a result, no final decision could be taken until that time
limit had expired, and only then if there was unambiguous approval.
In T 999/93 the decision to refuse the application under R. 51(5), first sentence, EPC for
lack of any approved text of the application (Art. 113(2) EPC), was incorrect since the
fact that the appellant never withdrew the main and first and second auxiliary requests as
well as the appellant's letter of 6.4.1993 (disapproval of the text proposed for grant, but
request for a decision on the main request) clearly showed that he indeed approved and
proposed the text according to his higher-ranking requests (see also R. 51(5), second
sentence, EPC). The decision would instead have required a reasoning as to the
substance of the main, first auxiliary and second auxiliary requests.
In T 237/96 the board held that the broadening of the scope of claim 1 requested by the
applicant after receipt of the examining division's communication under R. 51(4) EPC so
as to encompass one originally disclosed embodiment was not consistent with his
previous submission that said embodiment was not part of the invention, raised new
issues as to clarity and inventive step and was not supported by any argumentation in
favour of the allowability of the amended claim. The board found that the examining
division, in refusing to consent to the amendment under R. 86(3) EPC, did not exercise
its discretion in a wrong or unreasonable manner. Had it given its consent to the
amended version of the claim, it would have been necessary to restart examination from
the beginning, which, given the prima facie lack of clarity of the claim, would have led to
a considerable delay.
In T 1066/96 the board noted that, pursuant to R. 51(5) EPC, the examining division had
the discretion not to consent under R. 86(3) EPC to amendments proposed by the

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applicant within the period set by the communication under R. 51(4) EPC. However, in
that case, R. 51(5) EPC explicitly provided that the examining division shall, before
taking a decision, request the applicant to submit his observations within a period it shall
specify and shall state its reasons for so doing. These provisions had to be seen in the
light of the general rule laid down in Art. 113(1) EPC, under which the decisions of the
EPO may only be based on grounds or evidence on which the parties concerned have
had an opportunity to present their comments.
In this context, it was clear that further amendments could not be excluded wholesale in
advance, but the discretion under R. 86(3) EPC had to be exercised on a case-by-case
basis balancing the interests of the EPO and the applicant against one another (see
G 7/93, OJ 1994, 775). Therefore, in exercising its discretion under R. 86(3) EPC in a
negative way, an examining division could only refuse an application if, before issuing a
decision, it had informed the applicant about the fact that the further amendments
requested would not be admitted and about the reasons for not admitting said
amendments, thereby taking due account of the applicant's reasons for such late filing of
further amendments. If the applicant maintained its request and its counterarguments
were not considered convincing by the examining division, the application had to be
refused under Art. 97(1) EPC, since it contained no claims to which the applicant had
agreed.
4.5. Re-opening examination after approval of the text for grant
In G 10/92 (OJ 1994, 633) the Enlarged Board stated that if examination proceedings
were re-opened by the examining division after approval in accordance with
R. 51(4) EPC, because - for whatever reason - the proposed text for grant was to be
amended, R. 51(4) EPC required that the applicant once again be informed of the text in
which the examining division intended to grant the European patent. The same was true
in appeal proceedings. The approval in accordance with R. 51(4) EPC given before the
department of first instance was equally binding on an appeal. If the board of appeal then
concluded that the patent had to be amended prior to grant, the applicant again had to
approve the amended text, approval being stated before the board if the board was
ruling on the issue, or to the examining division if the matter had been remitted.
In G 10/93 (OJ 1995, 172) the Enlarged Board held that the examining division was not
bound by the view - whether positive or negative - expressed in the examination
pursuant to Art. 96(2) EPC; examination proceedings could be re-opened "for whatever
reason" after the approval in accordance with R. 51(4) EPC.
4.6. Examination after remittal for further prosecution
In T 79/89 (OJ 1992, 283) the board rejected the appellant's main request, and remitted
the case to the department of first instance for further prosecution on the basis of the
auxiliary request. In this case, Art. 111(2) EPC was applicable, according to which the
department of first instance shall be bound by the ratio decidendi of the board of appeal,
insofar as the facts are the same. The ratio decidendi of the board of appeal's previous
decision was that the subject-matter of the main request was not allowable, but that the
grant of a patent in accordance with the auxiliary request was subject to a consideration
of its patentability by the examining division. In this case, in the board's judgment,
following the issue of the board's previous decision, the examining division clearly had
no power to re-open examination on the basis of the claims which the appellant
requested (with subject-matter corresponding to the previously rejected main request).

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Having examined the subject-matter of the auxiliary request for patentability and found
no objection to it, the examining division was bound to issue a communication under
R. 51(4) EPC with a text based on the auxiliary request. Furthermore, in the absence of
approval of such text, in the board's judgment the examining division was bound to
refuse the application, for the reasons set out in its decision. Since the examining
division had no power to re-open examination in respect of the claims as requested by
the appellant, in the context of the appeal in question the board necessarily had no
power to re-open examination in respect of such claims, because it could only exercise
power which was within the competence of the examining division (Art. 111(1) EPC).
Thus, the main request of the appellant had to be refused.
4.7. Late amendments under new Rule 51(6) EPC communication
The new procedure required amendments to R. 51(4) to (6) EPC. Nevertheless, the
criteria for accepting or refusing requests for amendment (see R. 86(3) and 88 EPC)
have not been changed by the new R. 51 EPC.
The new system is similar to that in force until 1987 (the "old system") (see "Case Law of
the Boards of Appeal of the EPO", 3rd edition 1998, p. 397 et seq.) in that there is only
one communication informing the applicant of the text in which the examining division
intends to grant the patent, and inviting him to pay the fees for grant and printing and to
file a translation of the claims. Furthermore, under the old system, payment of the fees
for grant and printing and filing of the translation also implied approval of the text
intended for grant.
Enlarged Board of Appeal decision G 7/93 (OJ 1994, 775) related to the earlier version
of R. 51(6) EPC. The criteria set out in that decision still apply to the new procedure
under R. 51(4) to (6) EPC.
In G 7/93 the Enlarged Board stated that the wording in R. 86(3) EPC, "No further
amendment may be made without the consent of the examining division", simply meant
that the examining division may or may not give its consent to a request for amendment
by the applicant. However, since the underlying object of a R. 51(6) EPC (earlier version)
communication is to conclude the granting procedure on the basis of the approved text, a
request for amendment which is received by an examining division after such a
communication has been issued should be considered in a different way from a similar
request for amendment received at a much earlier stage in the overall examination
procedure, and in particular before approval by the applicant of a notified text. Such a
request should be considered in the context of the very late stage in the pre-grant
procedure at which it has been made, and against the background that the examining
division has already completed its substantive examination of the application, and that
the applicant has already had at least one opportunity to amend the application. Against
such background, allowing a requested amendment after issue of a R. 51(6) EPC
communication will be the exception rather than the rule. Nevertheless, the question
remained in what kind of circumstances it would be appropriate to make an exception to
the normal rule.
In G 7/93, in response to a referral in T 830/91 (OJ 1994, 728), the Enlarged Board of
Appeal looked initially at the question of the admissibility of amendments to the patent
application after a R. 51(6) EPC communication. Decisions T 1/92 (OJ 1993, 685) and
T 675/90 (OJ 1994, 58) had differed in their interpretation of this point.

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 VII.B.4. Examination proceedings after issue of the Rule 51(4) EPC communication

The Enlarged Board of Appeal concluded that the approval of a notified text submitted by
an applicant pursuant to R. 51(4) EPC was not rendered binding by virtue of a
communication being issued in accordance with R. 51(6) EPC. Even following the issue
of such a communication and until the issue of a decision to grant the patent, it was left
to the discretion of the examining division under R. 86(3) EPC, second sentence,
whether or not to allow amendment of the application.
In the Enlarged Board's view, when considering the possible circumstances when it
might be appropriate for an examining division to exercise its discretion under
R. 86(3) EPC to allow an amendment after issue of a R. 51(6) EPC communication, it
should be borne in mind that a request for amendment at that stage might arise either as
a result of a realisation by the applicant of the need for amendment, or as a result of a
point raised by the examining division, or as a result of consideration of observations
made by a third party pursuant to Art. 115 EPC. In any of these circumstances, the
discretion to allow amendment should be exercised according to the same principles. Of
course, an objection should only be raised by an examining division at that stage of the
proceedings if it was prepared to allow amendments to meet the objection. When
exercising its discretion following the issue of a R. 51(6) EPC communication, an
examining division had to consider all relevant factors. In particular it had to consider
and balance the applicant's interest in obtaining a patent which would be legally valid in
all of the designated states, and the EPO's interest in bringing the examination
procedure to a close by the issue of a decision to grant the patent. Having regard to the
object of a communication under R. 51(6) EPC, which was to conclude the grant
procedure on the basis of the previously approved text, allowance of a request for
amendment at that late stage in the grant procedure would be the exception rather than
the rule.
A clear example of an exceptional case when it might be appropriate to allow
amendment was, in the Enlarged Board's view, where the applicant requested separate
sets of claims to be substituted in respect of designated states that had made
reservations under Art. 167(2) EPC. Similarly, other minor amendments which did not
require the re-opening of substantive examination and which did not appreciably delay
the issuing of a decision to grant the patent might be allowable after a R. 51(6) EPC
communication had been issued.
As to the second question referred to it, of whether the EPO was obliged to consider
reservations under Art. 167(2) EPC as constituting requirements of the EPC which had
to be met in accordance with Art. 96(2) EPC, the Enlarged Board of Appeal held that,
under Art. 96(2) EPC, an examining division is required to consider whether the
application or the invention to which it relates meets the requirements of the EPC. When
a contracting state to the EPC makes a reservation under Art. 167(2) EPC it reserves the
right to make provisions in its national law on the matters set out in Art. 167(2) EPC.
Such provisions of national law are clearly not "requirements of the EPC" within the
meaning of Art. 96(2) EPC.
Thus G 7/93 supersedes on this point decisions T 860/91 and T 675/90, in which it was
held that the discretionary power conferred by R. 86(3) EPC to allow amendments no
longer existed after a R. 51(6) EPC communication had been issued.
The decisions below also relate to earlier versions of R. 51(4) EPC:

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Examination procedure

In T 790/93 a request for amendment was submitted after the (old) R. 51(6) EPC
communication had been issued but before the patent was granted. The formalities
officer who issued the decision granting the European patent did not take account of the
request for amendment. The board held that the formalities officer had exceeded his
authority, ruling that he should have forwarded the request to the examining division
since a formalities officer could only take the decision to grant the European patent
(R. 51(11) EPC) in clear cases. The decision to correct errors in the description, claims
or drawings of the application always lay with the examining division.
In T 1225/97 the applicants had appealed against the decision of the examining division
on the ground that it had not taken account of decision G 7/93, in which the Enlarged
Board of Appeal had ruled that even after the issue of a communication under
R. 51(6) EPC an examining division could still exercise its discretion under R. 86(3),
second sentence, EPC to allow amendment of an application.
The board could not see that the examining division had exercised its discretion
inappropriately according to the criteria laid down in decision G 7/93. Although the
appellants argued that the substantive examiner would immediately realise, in the light of
the examination he had already carried out, that the amendments were admissible, this
view failed to take account of the fact that the primary examiner would no longer be in a
position, several months later, to remember all the details of the application. In fact, the
examination of the amendments could be expected to take some considerable time. The
amendments were therefore not “minor” changes of the kind which did not require the
resumption of substantive examination.
4.8. Amendment after completion of the examination procedure
In T 798/95 the decision to grant the European patent was handed over by the
formalities section of the examining division to the EPO postal service for notification.
The request for amendment of the application under R. 86(3) EPC was filed on the same
day at 6.47 pm, thus after completion of the proceedings. Referring to G 12/91
(OJ 1994, 285), the board held that a request for amendment under R. 86(3) EPC filed
after completion of the proceedings up to grant before an examining division was to be
disregarded, even if the filing of the request and the completion of the proceedings
occurred on the same date.
5. Consolidation of proceedings
VII.B.5. Consolidation of proceedings

In J 17/92 the board first pointed out that Legal Advice No. 10/81, since replaced by
Legal Advice No. 10/92 (OJ 1992, 662), the text of which did not differ in any material
respect, was not binding on EPO bodies. Thus the possibility of consolidation that it
interpreted into the EPC and the preconditions that it laid down for such consolidation
were subject to review by the boards of appeal. The board held that allowing
consolidation was something both permissible and desirable under the EPC, in
accordance with the desire expressed in the preamble to the EPC that such protection
be obtainable in the contracting states by means of a single procedure for the grant of
patents. Consolidation was not only in the interest of applicants, but also in that of the
public not to have to take account of two separate European patents with the same text.
However, the board also found that the conditions to be imposed on consolidation should
not be more restrictive than necessary. It therefore took the view that the condition that
the two applications at issue as filed had to be identical was too stringent. Where, as in

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 VII.B.6. Entry into force of a decision to grant a European patent

the case in point, an applicant was seeking to consolidate a Euro-PCT application for
certain contracting states with a direct European application for other contracting states,
it was not unnatural for the direct European application to be adapted to European
requirements and the Euro-PCT application to contain claims adapted to the
requirements of the applicant's home country. The board found that if the form of claims
with which the applicant wished to proceed in the consolidated applications was
acceptable either as an amended set of claims or as being identical to the set of claims
as filed, consolidation should be possible. In the case at issue the differences related
only to dependent claims and to the introduction of a claim in the first medical use
format. In the board's view, such an amended set of claims should prima facie not
prevent consolidation.
6. Entry into force of a decision to grant a European patent
VII.B.6. Entry into force of a decision to grant a European patent

Under Art. 97(4) EPC, the decision to grant a European patent referred to in
Art. 97(2) EPC does not take effect until the date on which the European Patent Bulletin
mentions the grant. This mention is published at the earliest three months after the start
of the time limit referred to in Art. 97(2)(b) EPC for the payment of the fees for grant and
printing. The EPO must publish a specification containing the description, claims and any
drawings at the same time as it publishes the mention of the grant (Art. 98 EPC).
In J 7/96 (OJ 1999, 443) the board did not share the view of the department of first
instance and the applicant that the proceedings for grant are concluded on the date the
examining division reaches its decision to grant a European patent under Art. 97(2) EPC.
The board noted that it was true that this date represents the date on which the process
of reaching a decision on the application within the examining division is concluded; both
the EPO and the applicant are bound by the decision as far as the text of the patent to
be granted, the claims, description and drawings are concerned, and the subject-matter
of the text of the patent becomes res judicata at that date. Thereafter, the EPO can no
longer amend its decision and must disregard any fresh matter the parties may submit
(see G 12/91, OJ 1994, 285). Only linguistic errors, errors of transcription and obvious
mistakes may be corrected later under R. 89 EPC. The date on which the decision to
grant the European patent is reached is thus clearly decisive as regards the EPO and
the applicant.
It is from this date of mention under Art. 97(4) EPC that, in accordance with
Art. 64(1) EPC, a European patent confers on its proprietor the same rights in respect of
each contracting state in respect of which it is granted as would be conferred by a
national patent granted in that state. The EPO publishes the mention of the grant of the
European patent at the same time as it publishes a specification of the patent containing
the description, claims and any drawings. Thus the date on which the mention of the
grant of the patent is published is also the date on which the text of the patent is made
available to the public (Art. 98 EPC). The mention also marks the time when the
responsibility of the EPO comes to an end and the national patent systems take over, the
granted patent becoming a bundle of national patents. It also marks the start of the
period during which a notice of opposition may be filed (Art. 99(1) EPC). Thus, the date
of publication of the mention of the grant of the patent is the date on which the grant of
the patent takes legal effect with respect to third parties, and on which the extent of
protection conferred on the applicant is determined once and for all by means of the
accompanying publication of the specification of the patent pursuant to Art. 98 EPC.

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During the period between the decision to grant the patent (Art. 97(2) EPC) and the
publication of the mention of the grant (Art. 97(4) EPC), the application is deemed to be
still pending before the EPO. As the department of first instance itself admits in its
decision, and as is also not disputed by the applicant, according to established EPO
practice it is still possible during this interim period to take some limited action in
respect of the application, which may, for example, be withdrawn or transferred.
Applicants may even withdraw individual designations if they so wish. For its part, the
EPO continues to have certain rights or obligations concerning the patent during this
period; for example, the annual fees fall due and transfers of rights in the patent must be
registered by the EPO.
In J 23/03 the appellant requested that the designation country GR incorrectly marked
with a cross be corrected to GB. After a considerable exchange of correspondence, the
examining division refused the request for correction on the ground that, from the date of
publication of the patent, public interest in the reliability of the published information
overrode the patent proprietor's interest in a correction, especially as he had had several
opportunities to check the designation information in the course of the proceedings,
namely after the notification of forms 2004 and 2005.
The board stated that R. 88 EPC does not contain an explicit reference to a time limit
and that a request for correction can therefore be submitted at any stage of the patent
grant procedure (see also J 6/02). This also applies to the correction of incorrect
designation information in the application documents as requested by the appellant. The
board nevertheless found that the appellant's request for correction of the designation
information in the application documents had been submitted to the EPO only on
29.4.2002. Mention of the grant of his patent had appeared in the Patent Bulletin over a
month before that date. Under Art. 97(4) EPC, mention of the patent grant leads to the
grant of the patent taking effect and to the patent grant proceedings being concluded. At
the time that the appellant submitted his request for correction, therefore, the
proceedings were no longer pending (see J 7/96, OJ 1999, 433 and J 42/92).
The board held that the pendency of patent grant proceedings was, however, a
requirement for the submission of an admissible request for correction because after that
date the bundle of European patents granted under a single system divides into national
patents which are then no longer administered by the EPO but by the appropriate
national offices.
7. Errors in the Patent Bulletin
VII.B.7. Errors in the Patent Bulletin

Art. 97(4) EPC stipulates that the decision to grant a European patent does not take
effect until the date on which the European Patent Bulletin mentions the grant.
In decision J 14/87 (OJ 1988, 295) the question arose to what extent a deficiency in the
publication of the mention of grant of a European patent, ie the omission of important
particulars relating to the grant, might render the patent ineffective. The board held that
in principle deficiencies in the publication of the mention of grant in the European Patent
Bulletin did not necessarily render the decision to grant within the meaning of
Art. 97(4) EPC ineffective. Nevertheless, this matter could be decided only in the light of
the case in question and the fact that the purpose of the publication was to draw the
attention of interested parties to the grant of the patent, and also that any decision to file
an opposition had, under normal circumstances, to be based on a careful examination of

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 VII.B.8. Metric or SI units

the extent of the protection conferred by the patent and not solely on the particulars
given in the European Patent Bulletin. Such an examination could be carried out
satisfactorily only if the patent specification was published at the same time as the
mention of grant of the patent.
8. Metric or SI units
VII.B.8. Metric or SI units

Decision T 561/91 (OJ 1993, 736, see also T 176/91 and T 589/89) led to the
amendment of R. 35(12) EPC since it found that the R. 35(12) EPC (earlier version) only
required applicants for a European patent to express weights and measures in metric
units. The new wording of R. 35(12), first sentence, EPC now makes it clear that metric
units means SI units: "Physical values shall be expressed in the units recognised in
international practice, wherever appropriate in terms of the metric system using SI units."
R. 35(12) EPC was amended by decision of the Administrative Council of 13.12.1994
and entered into force on 1.6.1995 (OJ 1995, 409).
C. Opposition procedure
Opposition procedure

1. Legal nature of opposition proceedings

VII.C.1. Legal nature of opposition proceedings

1.1. Introduction
The nature of the main procedural principles for opposition proceedings has been the
subject of a number of decisions by the boards and the Enlarged Board of Appeal.
Opposition is a means, to which any person may have recourse, of contesting a decision
and causing the legal validity of a patent to be re-examined. The filing of a notice of
opposition sets a particular administrative procedure in train which follows on directly
from the grant of the patent. Opposition is not a legal remedy in the classic sense and,
unlike an appeal, it therefore has neither suspensive effect nor the effect of transferring
the case to a superior tribunal (T 695/89, OJ 1993, 152).
1.2. Independent procedure
Opposition is an independent procedure following the grant procedure (T 198/88,
OJ 1991, 254; T 373/87) and is not designed to be an extension of the examination
procedure (G 1/84, OJ 1985, 299; see also T 279/88, T 182/89, OJ 1991, 391 and
T 387/89, OJ 1992, 583). It is a separate procedure in which a patent wrongly granted
may be limited or revoked. Therefore, a document taken into account in the procedure
before the examining division is not automatically evidence to be considered in
opposition or opposition appeal proceedings, even if quoted and acknowledged in the
opposed patent (T 198/88, OJ 1991, 254).
1.3. Contentious proceedings
The post-grant opposition proceedings under the EPC are to be considered as
contentious proceedings between parties who, whilst normally representing opposite
interests, should be given equally fair treatment.
The Enlarged Board came to the above conclusion in G 9/91 and G 10/91 (OJ 1993, 408
and 420), in which it addressed fundamental aspects of the opposition procedure. It held
that opposition took place only after grant of the European patent, ie at a point in time
when the proprietor was enjoying in each designated contracting state the same rights
as would be conferred by a national patent granted in that state (Art. 64 and 99 EPC).

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Opposition procedure

Thus, the relief sought by the opponent was not, as in traditional pre-grant opposition,
refusal of the patent application but revocation of the patent as granted (in its entirety or
in part) with effect ex tunc in all designated contracting states (see Art. 68 EPC).
Furthermore, the grounds for opposition (Art. 100 EPC) being limited to and essentially
the same as the grounds for revocation under national law (Art. 138 EPC), it appeared
that the concept of post-grant opposition under the EPC differed considerably from that
of classical pre-grant opposition and in fact had several important features more in
common with the concept of the traditional revocation procedure.
In view of the purpose and particular nature of the opposition procedure as provided for
in Part V of the EPC, the Enlarged Board has held in subsequent case law (G 9/93,
OJ 1994, 891, overturning G 1/84, OJ 1985, 299) that the patent proprietor is not entitled
to oppose his own patent. The words "any person" in Art. 99(1) EPC can only be
reasonably interpreted as referring to the public at large which was being given the
opportunity to challenge the validity of the patent in question. In the board's opinion, it
appeared artificial to include the patent proprietor. The provisions of Part V of the EPC
and the corresponding Implementing Regulations were clearly based on the assumption
that the opponent was a person other than the patent proprietor and that the opposition
proceedings were always inter partes.
The procedure automatically becomes bilateral as soon as an opposition has been filed,
no matter whether the opposition is valid, admissible or allowable. R. 57(1) EPC
expressly requires the opposition division to communicate the opposition to the
proprietor of the patent, and the Guidelines D-IV, 1.5 (June 2005 version) provide that
communications and decisions about whether the opposition is deemed to have been
filed and is admissible are also to be notified to the patent proprietor. Thus, the EPC
does not provide for a decision by an opposition division "to end the ex parte
proceedings" (T 263/00).
1.4. Principle of ex officio examination
The opposition procedure is a purely administrative procedure and differs fundamentally
from the appeal procedure, which must be regarded as a procedure proper to an
administrative court (see G 7/91 and G 8/91, OJ 1993, 356 and 346; G 9/91,
OJ 1993, 408).
Proceedings before the EPO provided for in respect of European patent applications and
patents are governed by the principle of party disposition (ne ultra petita), according
to which the procedure is - with some exceptions - initiated on request (see G 9/92,
OJ 1994, 875; G 4/93, OJ 1994, 875), and the principle of ex officio examination laid
down in Art. 114(1) EPC, according to which the EPO examines the facts of its own
motion and is not restricted by the arguments or requests of the parties.
Certain restrictions have, however, been placed upon the principle of ex officio
examination in order to make EPO proceedings clearer, accelerate them and therefore
limit the risks to the parties. In G 9/91 (OJ 1993, 408), the Enlarged Board addressed the
issue of the power of an opposition division or board of appeal to decide upon the
patentability of parts of a patent which had not been attacked in the notice of opposition.
According to this decision, opposition proceedings are only pending to the extent to
which the European patent is opposed in the statement pursuant to R. 55(c) EPC.
Subject-matter not opposed therein is not subject to any "opposition" within the meaning
of Art. 101 and 102 EPC, nor are there any "proceedings" within the meaning of Art. 114

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and 115 EPC in existence concerning any unopposed subject-matter. The opposition
division or board of appeal therefore has the power to decide on the revocation or
maintenance of a patent only to the extent to which the patent is opposed in the notice
of opposition.
Application of the principle of ex officio examination to the grounds for opposition is also
subject to restrictions. However, in this case the restricted application is not derived from
the principle of party disposition; the proper extent of examination has to be determined
by the application of other procedural principles (G 10/91, OJ 1993, 420). In first instance
proceedings the opposition division should examine only those grounds for opposition
which the opponents have submitted within the time limit for opposition and have
properly supported with facts and evidence. Grounds extending beyond this may only be
considered in exceptional cases to which special conditions apply (for details, see
Chapter VII.C.5.2.2).
1.5. Principle of impartiality
Opposition divisions in inter partes proceedings should refrain from making suggestions
to the parties.
In T 293/92 the opposition division, instead of limiting itself to evaluating the parties'
requests, took a more active role in that it suggested in a communication the wording of
a claim thought to be allowable. The board stated that apart from being undesirable from
the point of view of impartiality in inter partes proceedings, such suggestions might also
lead to confusion as regards the provisional and non-binding nature of communications
written in proceedings before the EPO. In the case in question, the opposition division,
by suggesting an allowable independent claim, had led the parties to assume that the
claims on file were not allowable; the opposition division's change of mind during the oral
proceedings might be seen as rather unexpected and surprising for the parties.
In T 223/95 the appellant had argued that the opposition division should take steps of its
own motion to establish by investigation the level of knowledge of the person skilled in
the art. The board observed that such an investigative approach would not be
consistent with the character of the post-grant opposition proceedings under the EPC,
which were in principle to be considered as contentious proceedings between parties
normally representing opposite interests, who should be given equally fair treatment. In
the board's opinion, it was unrealistic to suppose that the opposition division could seek,
gather and select evidence in an entirely impartial fashion; herein lay an essential
distinction between the functions of the examining divisions and the opposition divisions.
For that reason it was the responsibility of the opponent himself to present to the
opposition division the facts, evidence and arguments in support of the grounds on which
the opposition was based.
2. Right to be heard in opposition proceedings
VII.C.2. Right to be heard in opposition proceedings

2.1. Opportunity to make comments and principle of equal rights

In inter partes proceedings such as opposition proceedings the right to be heard is
inextricably linked to the principle of equal rights. Consequently, no party should be
given preferential treatment in the number of times it is allowed to present its case orally
or in writing. The opposition division is therefore required to ensure that the parties can
exchange their submissions in full and have equal opportunity to comment on them. The

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fact that a full exchange of submissions takes up more time than a partial exchange of
submissions does not justify the violation of a fundamental procedural rule. If the
opposition division considers a multiple exchange of submissions expedient, it must give
each party equal opportunity to comment. Thus, the opposition division may invite a
party to submit a rejoinder to the reply to the notice of opposition, but in that case it is
obliged to invite the other party to respond to that rejoinder, whereafter it must decide
again whether a third exchange of submissions is expedient. The fact that R. 57(3) EPC
leaves it to the opposition division, "if it considers it expedient", to invite the opponents to
reply cannot be interpreted as an authorisation to derogate from the fundamental
principles of equal rights referred to above. The opposition division must exercise this
discretionary power before starting a second exchange of submissions, ie before issuing
the invitation to submit the rejoinder, as is made clear in R. 57(3) EPC (T 190/90; see
also T 669/90, OJ 1992, 739; T 682/89 and T 439/91).
In T 532/91, another board likewise considered the principle of equal rights; if the
opposition division considered it expedient to start a second exchange of submissions
and to indicate to the opponents the possibility of submitting a rejoinder, it was obliged to
do so, in the same way, to the appellants (patent proprietors), so that the exchange of
submissions could be completed and to place the parties on the same footing as regards
the number of times they could present their arguments. The board failed to see why,
during the same exchange of submissions, the opposition division had written to the
opponents: "You are at liberty to file your rejoinder ..." and to the appellants: "Please take
note", which could have led the latter to be unsure of their right to submit a rejoinder.
Such inequality of treatment was incompatible with the principle of equal rights -
particularly since it was the patent proprietors who had been treated less favourably -
and in itself constituted a procedural error.
In T 789/95 the file contained no indication that a copy of the opponent's observations
had been forwarded to the patent proprietor. It was therefore to be assumed that the
communication of the observations to the patent proprietor had been omitted, in
contravention of the Guidelines D-IV, 5.4 (June 2005 version). In the board's view, this
constituted a substantial procedural violation, as it infringed the principle that all parties
to proceedings must be accorded the same procedural rights.
2.2. Invitation to file observations under Article 101(2) EPC
2.2.1 "As often as necessary"
Art. 101(2) EPC reinforces the right to be heard laid down in Art. 113 EPC by requiring
the opposition division, when examining an opposition, to invite the parties "as often as
necessary" to comment, within specified periods, on its own communications or those
filed by other parties. Where necessary, any communication to the proprietor of the
European patent must contain a reasoned statement covering all the grounds against the
maintenance of the European patent (R. 58(3) EPC).
Art. 101(2) EPC does not require as a rule that the grounds for not maintaining the
patent invariably be set out in a communication, but only if this is "necessary". Such
"necessity" can arise only in efforts to establish the facts or in view of Art. 113(1) EPC.
So the opposition division must issue a communication only if it considers this
necessary, eg to take up new substantive or legal arguments or draw attention to points
still requiring clarification. R. 58(3) EPC, which merely contains instructions concerning
the content of any communications that may have to be issued, adds nothing to the

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above consideration of principle. Accordingly, the provisions of Art. 101(2) EPC and
R. 58(3) EPC cannot be interpreted as meaning that the opposition division is obliged in
every case to issue at least one communication before giving its decision, unless it is
necessary to do so on the basis of Art. 113(1) EPC (see T 275/89, OJ 1992, 126;
T 538/89, T 682/89 and T 532/91).
Not issuing at least one communication under Art. 101(2) EPC cannot in itself
substantiate an allegation of infringement of the right to be heard under Art. 113 EPC
(T 774/97). For example, the boards see no need under Art. 113(1) EPC for the
opposition division to announce its opinion in advance in a communication or to give a
further opportunity to the patentee to declare whether he is interested in a limited patent
if, despite having been informed of an additional objection of the opponent, he does not
react but maintains his sole request for maintenance of the patent with the amended
claims (T 165/93). Nor is it necessary under Art. 113(1) EPC to give a party a repeated
opportunity to comment on the argumentation of the EPO body, so long as the decisive
objection against the contested procedural action remains the same (see T 161/82,
OJ 1984, 551; T 621/91).
However, an invitation to file observations is required if the EPO intends to consider
evidence filed late by an opponent in view of its relevance and the patent proprietor has
not commented on such evidence. In the case T 669/90 (OJ 1992, 739) relating to the
use and terms of a previous EPO form, the board held that, if the EPO sent a
communication which (on a reasonable interpretation) misled a party into believing that it
was not necessary to defend its interests by filing observations in reply to new facts and
evidence filed by an adverse party, and if such new facts and evidence then formed the
basis for a decision adversely affecting the misled party, the latter had not had "an
opportunity to present its comments" within the meaning of Art. 113(1) EPC. Such a
procedure was also not a fair procedure and was contrary to the principle of good faith
governing relations between the EPO and parties to proceedings before it. The board did
not agree with decision T 22/89, in which, in similar circumstances, the board had found
that it could be inferred from the teaching of the document in question ("the relevance of
the document existed beyond any doubt") that such a document would have a decisive
role in the decision (see also T 582/95).
A violation of the principle of the right to be heard under Art. 113(1) EPC and of
Art. 101(2) EPC in conjunction with R. 57(3) EPC has also taken place if a patent is
revoked in the absence of a prior communication from the opposition division and the
decision in question states that the claims include grantable subject-matter (T 103/97).
The fact that the patentee had not requested oral proceedings was interpreted in the
case in question as meaning that it had waived any further amendments to the claims.
2.2.2 Limitation of the parties' observations to the "necessary and expedient"
Whilst, in opposition proceedings, the patent proprietor has a right under Art. 101(2) EPC
in conjunction with R. 57(1) EPC to file observations on the notice of opposition, it is
apparent from Art. 101(2) EPC and R. 57(3) EPC that observations of the parties are
only admissible in so far as, in the exercise of its discretion, the opposition division
considers them expedient. In other words, the parties should be invited to file
observations and amendments only if such an invitation is "appropriate" and such
observations should be limited to what is "necessary" in the light of the grounds
submitted for the opposition (see T 406/86, OJ 1989, 302). It is namely in the interests of

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the efficient conduct of opposition proceedings that observations by parties should be

properly limited to what is necessary and expedient (T 295/87, OJ 1990, 470; T 7/95).
In this context, the case law refers to the "general principles" applying to the opposition
procedure (see communication of the EPO, OJ 1985, 272): The EPO's aim is to
establish as rapidly as possible, in the interests of both the public and the parties to the
opposition proceedings, whether or not the patent may be maintained given the
opponent's submissions. It seeks to achieve this by means of a speedy and streamlined
procedure, which implies firm control by the opposition division at all stages. This
requirement must however be balanced against the need to allow the parties to present
their cases adequately so that the correct decision can be made. The later version of the
information from the EPO on the opposition procedure remains unchanged in this regard
(see OJ 1989, 417).
2.3. Communication and invitation to file observations under Rule 58(4) EPC
R. 58(4) EPC provides that the opposition division is to inform the parties of the text in
which it intends to maintain the patent and invite them to state their observations within
two months if they disapprove of that text. The boards of appeal have frequently
addressed the issue of when it is necessary to send the parties such a communication.
In T 219/83 (OJ 1986, 211) and T 185/84 (OJ 1986, 373) the board stated that, after oral
proceedings in an appeal from opposition proceedings, the parties must be sent a
communication pursuant to R. 58(4) EPC only if they cannot reasonably be expected to
state their observations concerning the maintenance of the European patent in the
amended form definitively during the oral proceedings. This case law was confirmed in
several decisions (eg T 75/90, T 895/90 and T 570/91).
In T 446/92 it was stated that, in a case where a duly summoned opponent was not
represented at oral proceedings, the decision of the board to maintain the contested
patent in amended form in accordance with a request of the patentee submitted during
those proceedings could nevertheless be given orally pursuant to R. 68(1) EPC at the
end of the proceedings, if no new facts or evidence were dealt with during the
proceedings. Under these circumstances, the application of R. 58(4) EPC could be
dispensed with because the patent in suit was maintained with an amended text
emanating from and approved by the patentee (see, in this respect, G 1/88,
OJ 1989, 189) and, furthermore, because the opponent's deliberate decision to refrain
from being represented at oral proceedings before the board was to be regarded as
being tantamount to a tacit abandoning of his right to present comments pursuant to
Art. 113(1) EPC and R. 58(4) EPC. In the previous decisions T 424/88, T 561/89 and
T 210/90 the board did not send the parties/participants a communication pursuant to
R. 58(4) EPC, even though the appellants (opponents) had not attended the oral
proceedings.
2.4. EPO communications to "take note" and sufficient time to submit a
response
An invitation by the opposition division to file observations under Art. 101(2) EPC can be
distinguished from a communication from the EPO in that the latter merely invites the
recipient to take note. Communications, signed by the formalities officer and inviting the
appellants to "take note" of the opponents' submissions, are not communications of the
opposition division within the meaning of Art. 101(2) EPC, which require a period to be

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fixed for reply (normally four months; see Guidelines E-VIII, 1.2 - June 2005 version). It is
at the discretion of the recipient to reply to this communication if he finds it necessary,
having reviewed the significance of the material sent to him. If he intends to reply but for
any reason is prevented from doing so within a reasonable period of time, then the
appropriate action is to inform the opposition division of his difficulties (T 582/95).
The boards of appeal have dealt in a series of decisions with the issue of fixing a
reasonable period which provides the recipient of an EPO communication with an
adequate opportunity to reply:
The right to be heard enshrined in Art. 113(1) EPC requires that the party concerned be
given sufficient time to submit an adequate response if the EPO decides to
communicate to a party to proceedings before it an objection raised by another party
without an express invitation to reply within a specified time limit. Thus, a decision relying
on such objections cannot be taken until an adequate period of time has expired in which
the other party can be fairly expected to present its comments. The question regarding
what period of time is sufficient for this purpose is a question of fact which has to be
answered on the basis of the merits of each individual case. Since any time limit set by
the EPO should not be shorter than two months (see R. 84 EPC), thus regardless of
whether or not the action required within such a time limit is simple or can be performed
immediately, normally, ie in the absence of any exceptional circumstances, an adequate
period of time for presenting comments should not be shorter than that mentioned above
(T 263/93). Thus, in T 430/93, the board found that there had been a violation of the right
to be heard where the respondent had been granted a total of five months to comment
on the appellant's reply to the opposition, whereas the appellant was subsequently
neither granted sufficient time (a few days) to file observations nor even invited to do so.
Exceptional circumstances in which a shorter period of time was held to be acceptable
were mentioned in T 275/89 (OJ 1992, 126). In this case, the objection was made that
the interval between the notification to the patentee of a submission from the opponents
and the date the decision was issued was too short to allow the appellant to file
observations. The board noted that the opposition division had waited for somewhat
longer than a month before taking its decision. In the board's view, in the case of a
communication which was issued for information purposes only and which did not set a
time limit for response, a period of one month (which in the present case was exceeded)
sufficed as a rule to comply with the requirements of Art. 113 EPC. Moreover, the
documents on which the decision under appeal was based had already been mentioned
in the notice of opposition together with an assessment of their substantive and legal
significance, so that the decision under appeal was not based on fresh matter.
In T 494/95, the board took the view that the interval of more than one month between
the notification of the patent proprietor's reply to the opposition and the date of issuing
the decision was sufficient to allow the appellant (opponent) a reasonable opportunity to
present his comments, or at least to indicate an intention of so doing, or to request oral
proceedings. In the board's view, it was clear from R. 57(3) EPC, from the EPO
information "Opposition Procedure in the EPO" (OJ 1989, 417) and from previous
decisions that, if oral proceedings did not take place and the decision was based solely
on grounds on which the parties concerned had had an opportunity to present their
comments, a decision could be taken without further notice upon expiry of the period
allowed to the patent proprietor for submitting observations. Here, the board could not
see that any procedural violation had occurred, as the decision was neither based on

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grounds unknown to the appellant (Art. 113(1) EPC), nor was the opposition division
invariably obliged under the EPC to set a time limit for the appellant's response to the
patent proprietor's observations or to suggest that any such response should be made.
By contrast, in another case in which difficult technical questions had to be considered,
not even a time period of about one month was considered sufficient to give the
appellant a realistic opportunity to inform the opposition division of his intention to file a
substantive reply and to ask for an appropriate time limit for this purpose, let alone to
present substantive comments (T 263/93; see also T 494/95).
In T 914/98 the board stated that the seventeen-day period which elapsed between the
appellants receiving the reply of the respondents and the handing over of the decision to
the EPO internal postal service was manifestly too short to give the appellants an
adequate opportunity for comment. According to the board, in view of the case law the
appellants could not reasonably have expected a decision to be issued so quickly.
2.5. Opportunity to comment - case groups
2.5.1 Opportunity to comment on new grounds of opposition
Art. 113(1) EPC, in which the requirement that the parties be heard is enshrined,
provides that decisions of the EPO may only be based on grounds or evidence on which
the parties have had an opportunity to present their comments. The term "grounds or
evidence" in Art. 113(1) EPC should not be narrowly interpreted. In particular, in the
context of the examination procedure the word "grounds'' does not refer merely to a
ground of objection to the application in the narrow sense of a requirement of the EPC
which is considered not to be met. The word "grounds" should rather be interpreted as
referring to the essential reasoning, both legal and factual, which leads to a refusal of the
application. In other words, before a decision is issued, an applicant must be informed of
the case which he has to meet, and must have an opportunity of meeting it (T 951/92,
OJ 1996, 53; see also T 105/93). This interpretation of Art. 113(1) EPC is equally
applicable in the context of opposition proceedings: thus the patent proprietor must be
informed (normally in writing) not only of the new ground of opposition (ie the new legal
basis for the opposition), but also of the essential legal and factual reasons (ie its
substantiation) which could lead to a finding of invalidity and revocation. Thereafter the
patent proprietor must have a proper opportunity to present comments in reply to the
new ground and its substantiation (T 433/93).
In T 656/96, the opponent had based his opposition solely on the invention's purported
lack of inventive step. However, lack of novelty was advanced as a ground for opposition
for the first time in the oral proceedings and in the absence of the patent proprietor, who
had previously informed the division that he would not be attending oral proceedings.
The opposition division revoked the contested patent, even though it had not originally
raised a novelty objection in its communication under Art. 101(2) EPC. In such
circumstances, the board referred to the case law of the Enlarged Board of Appeal
distinguishing between the opposition ground of lack of novelty and that of lack of
inventive step (G 7/95, OJ 1996, 626) and recognising the opposition division's
competence to consider, exceptionally under Article 114(1) EPC, fresh grounds for
opposition which, prima facie, appear, either in whole or in part, to prejudice
maintenance of the European patent (G 10/91, OJ 1993, 420). In the case in hand, the
board held that, particularly in the light of the opinion on novelty expressed in the
communication from the opposition division, no prima facie case against maintenance of

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the patent could be gathered from the file, so that the appellant had been entitled to
consider that the question of novelty would play no part before the opposition division.
The appellant must therefore have been taken by surprise by the decision taken in his
absence by the opposition division at the oral proceedings to revoke the patent on the
grounds of lack of novelty, grounds on which he had not been asked, nor had any
reason, to express an opinion .
In T 270/94, the board found that the opposition division had infringed Art. 113(1) EPC
by preventing opponent 1, who had based its opposition solely on lack of novelty, from
commenting on an opposition ground of lack of inventive step duly submitted by
opponent 2 and communicated to all the parties in accordance with R. 57(2) EPC.
Furthermore, the board observed that Art. 114(2) EPC, relied on by the opposition
division, was not applicable to the case, because it indicated only that the EPO could
disregard late-filed facts or evidence, whereas the case in hand involved arguments put
forward by one of the parties to the proceedings in relation to a ground of opposition
submitted in due time by another party.
In T 1164/00, the board held that the opposition division was in principle entitled to
introduce a new ground of opposition even at the late stage of oral proceedings, since, in
its view, it was apparent that the patent in suit did not comply with the requirements of
Art. 83 EPC. However, in this case, the annex to the summons to oral proceedings did
not contain any indication of the opposition division’s intention to introduce a new ground
of opposition, which meant that the appellant was made aware of the factual and legal
reasons supporting the introduction of this new ground for the first time during the oral
proceedings. The board therefore concluded that the appellant had not been notified in
writing as early as possible and, not having been informed beforehand of the factual and
legal reasons, had been taken by surprise and had not had a fair opportunity during the
oral proceedings to prepare a proper defence against this new objection. In those
circumstances, the opposition division ought to have adjourned the oral proceedings in
order to give the appellant sufficient time, in accordance with Art. 113 EPC, to prepare a
suitable defence against the new objections (see also T 433/93, OJ 1997, 509 and
T 817/93).
2.5.2 Opportunity to comment on uncontested claims
In T 293/88 (OJ 1992, 220) the board found that the decision of the opposition division to
revoke the patent without issuing any communication in advance disregarded the fact
that the validity of claims 7, 9 and 10 had not been challenged at all and that the parties
reasonably ought to have been given a further opportunity to fall back on that position in
such circumstances. The onus of raising such related additional matter with the parties
was on the opposition division under Art. 113(1) EPC - which it had not done in this case
(unlike T 9/87, OJ 1989, 438; here it was held that the opposition division had no
obligation to examine uncontested claims in different categories which related to different
inventions).
2.5.3 Opportunity to comment on provisional opinions of the opposition division
In T 558/95 the opposition division had issued two written communications before the
oral proceedings stating that, "in the provisional opinion of the opposition division", the
subject-matter described in the public prior use did not prejudice the contested patent
within the terms of Art. 100(a) EPC. The patent proprietor therefore found it "surprising"
that detailed consideration was given to the public prior use during the oral proceedings.

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However, the board held that provisional opinions of this kind were not binding on the
further proceedings. Especially in view of the fact that the opponent continued to
elaborate his arguments against these comments by the opposition division, the
possibility of a different assessment by the opposition division could not be ruled out
from the start.
2.5.4 Opportunity to comment where the opposition is rejected as inadmissible
If an opposition is rejected as inadmissible but the division does not say why, thereby
preventing the opponent from responding, it infringes his right to comment (T 1056/98).
2.5.5 Opportunity to comment after remittal to the department of first instance
Normally, where a document has been sent to one of the parties, said party is given
sufficient time to respond thereto before a department of the EPO takes a decision
(T 263/93). If the case is to be remitted to the first instance for further prosecution, the
recipient of a document still has, in view of the remittal, the opportunity to contest the
argumentation of the other party for the purposes of the remitted case (see T 832/92).
Under Art. 113(1) EPC, the opposition division must expressly give the parties an
opportunity to present observations after remittal to it of a case by a board of appeal for
further prosecution on the basis of new evidence, even if submissions with respect to this
new evidence have already been made during the preceding appeal proceedings
(T 892/92, OJ 1994, 664; see also T 769/91). In T 120/96 another board shared this view
and added that the term "opportunity" in Art. 113(1) EPC could only be given effective
meaning by applying the principles of good faith and the right to a fair hearing. For such
an opportunity to exist, it is necessary that the parties be expressly asked whether or not
they wish to present, within a fixed period of time, their comments, or if, as in the case at
issue, the parties have already made detailed submissions during the previous appeal
proceedings, whether or not these submissions should be regarded as complete. On
these grounds alone, the board found that the immediate termination of the opposition
proceedings following the remittal, without any intervening communication announcing
the resumption of proceedings, was inconsistent with Art. 113(1) EPC.
The board also found it desirable for the opposition division to clarify whether any
requests submitted originally, ie before the opposition proceedings had been interrupted
by the appeal proceedings, were being maintained, modified or withdrawn, or whether
further requests would be submitted. Following the established case law of the boards of
appeal (see eg T 892/92, OJ 1994, 664), the board was of the opinion that further
proceedings on remittal by the board of appeal ordering "further examination of the
opposition" should be regarded as a continuation of the original opposition proceedings,
particularly in view of the fact that the original interlocutory decision to maintain the
patent unamended was set aside by the board and was therefore no longer legally
effective. Consequently, the appellant's original requests - including his subsidiary
request for oral proceedings - which had never been withdrawn or amended became
effective again after remittal, so the opposition division should not have taken a decision
adversely affecting the appellant without giving him an opportunity to present his case
orally (Art. 116(1) EPC).

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3. Special features of the opposition procedure

VII.C.3. Special features of the opposition procedure

3.1. Transfer of opponent status

The following question regarding the transfer of an opposition was put to the Enlarged
Board of Appeal: "Is an opposition pending before the EPO transferable only to the
opponent's heirs or can it be transferred freely either with the opponent's enterprise or
with a part of that enterprise operating in a technical field in which the invention to which
the patent in suit relates can be exploited?".
In G 4/88 (OJ 1989, 480), the Enlarged Board of Appeal, after noting that R. 60(2) EPC
implicitly acknowledged the transmission of the opposition to the opponent's heirs and
that, by analogy, the opposition could be transmitted to the opponent's universal
successor in law, held that the opposition constituted an inseparable part of the
enterprise's assets; therefore, in so far as those assets were transferable or assignable
under the applicable national laws, the opposition which was part of them had also to be
regarded as transferable or assignable in accordance with the principle that an
accessory when annexed to a principal object ("accessio cedit principali") becomes part
of the principal object.
In T 670/95, the board summarised the decisions given following G 4/88 (OJ 1989, 480):
opponent status is not freely transferable. It does however move to the successor in title
in case of universal succession, eg a takeover or merger of legal persons (T 349/86,
T 475/88). Where opposition proceedings are pending before the EPO, it may be
transferred or assigned to a third party as part of the opponent's business assets,
together with the assets in the interests of which the opposition was filed (G 4/88). This
may occur even during opposition/appeal proceedings. In T 659/92 (OJ 1995, 519) the
board stated in this regard that a party's rights in a case may be transferred at any stage
of opposition appeal proceedings, provided they are transferred together with the
business assets or the assets in the interests of which the appeal was filed. However, to
obtain opponent status and become party to the appeal proceedings, the new opponent
must first provide evidence that a transfer has duly taken place. Until he does so, the
proceedings are conducted with the original opponent (T 870/92).
In T 799/97 the opponent went bankrupt during the first-instance opposition proceedings.
The representative wanted to continue the proceedings with company D, which had
acquired the bankrupt firm. The opposition division refused this request on the grounds
that the purchase contract showed that not all the opponent’s assets had been
transferred; certain items and liabilities were not covered by the deal. Nevertheless, the
board concluded that opponent status had indeed been transferred to company D. Unlike
T 659/92 (see above), where only various industrial property rights had been transferred,
here the entire firm had been taken over. This automatically included the part of the
business to which the opposition related. In the board’s view, there was nothing in either
G 4/88 or T 659/92 to indicate that opponent status was transferred only in the event of
an unqualified transfer of all receivables and liabilities.
In case the opposition is allocated to two different parts of a business, the opponent
status could be transferred to a third party only by transferring both parts of the business
or the whole firm (T 9/00, OJ 2002, 275).
In T 74/00, the value of R. 60(2) EPC lay not so much in the question whether or not
proceedings should continue in the event of an opponent's death as in the fact that in

541
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this provision the EPC recognised that, in that event, the late opponent's heirs could
participate in any further opposition proceedings. Unlike transfers between both legal
and/or natural persons, where the opposition is transferable together with business
assets, an opposition could pass from a deceased opponent to his or her heirs without
any requirement that it be accompanied by any particular assets of the deceased. A
deceased opponent's heir or heirs could only be ascertained by reference to the
particular national laws of succession applicable to the estate of the deceased opponent,
meaning that the person or persons seeking to establish that they had the right to
succeed to an opposition had to produce satisfactory evidence. If more than one heir of
the deceased opponent was established, the relevant national law could be decisive.
Thus if, for example, the evidence showed that under the relevant national law a
deceased opponent had left different assets to different persons, such that only one or
more specified persons out of a larger number were identifiable as inheriting the
opposition, then logically only that person or those persons could be the heir or heirs for
the purpose of the opposition. In any case, as with other multiple opponents (see below),
all persons identifiable as heirs inheriting the opposition had at all times to be
ascertainable and act through a common representative, and the EPO had to be
informed if any of them ceased for any reason to be a member of the multiple opponent.
For further decisions about the transfer of party status, see Chapter VII.D.5.2.
The case law of the Enlarged Board of Appeal on the transfer of opponent status was
also considered by the board in T 711/99 (OJ 2004, 550). It held that opponent status
could be transferred to a singular successor when a commercial department was sold,
but this was an exception to the general principle in law whereby an opposition was not
freely transferable, as defined in G 4/88 (OJ 1989, 480) considered together with G 3/97
(OJ 1999, 245). This exception was to be narrowly interpreted and precluded an
opponent parent company from being recognised, in the event of the sale of a subsidiary
that had always been entitled itself to file oppositions, as having the right to transfer its
opponent status, by contrast to an opponent who sold a commercial department that was
an inseparable part of the opposition but was not itself entitled to file oppositions. Thus,
opponent status could only be transferred together with the assignment of part of the
commercial activity of an opponent with sole legal authority where the transferred
company division or department is not a legal person and therefore lacks legal authority.
However, that did not apply in this case, in which, even though the transferred company
was a wholly owned subsidiary of the parent company, it was still entitled to act on its
own behalf in opposition, having full legal authority – a feature of legal personality.
Considering this restrictive interpretation in respect of the transferability of opponent
status, a further board acknowledged in T 1091/02 (OJ 2005, 14) the need to refer a new
question to the Enlarged Board of Appeal. In the absence of explicit provisions relating to
the substantive and formal requirements for the transfer of opponent status in the EPC,
the board felt obliged to examine whether the requirements as developed by the
previous case law should be applied to the case in hand, in which the original opponent
had sold and assigned to a third person all the shares of a legally independent entity to
the business of which the opposition related. In view of the divergent solutions adopted
by the boards of appeal with regard to both substantive and formal requirements for the
transfer of opponent status, the board saw the need to refer the following questions to
the Enlarged Board of Appeal:

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 VII.C.3. Special features of the opposition procedure

1. (a) Can opponent status be freely transferred?

1. (b) If question 1(a) is answered in the negative, can a legal person who was a 100%-
owned subsidiary of the opponent when the opposition was filed and who carries on the
business to which the opposed patent relates acquire opponent status if all its shares are
assigned by the opponent to another company and if the persons involved in the
transaction agree to the transfer of the opposition?
2. If question 1(a) or (b) is answered in the affirmative:
(a) Which formal requirements have to be fulfilled before the transfer of opponent status
can be accepted? In particular, is it necessary to submit full documentary evidence
proving the alleged facts?
(b) Is an appeal filed by an alleged new opponent inadmissible if the above formal
requirements are not complied with before expiry of the time limit for filing the notice of
appeal?
3. If question 1(a) and (b) is answered in the negative:
Is an appeal admissible if, although filed on behalf of a person not entitled to appeal, the
notice of appeal contains an auxiliary request that the appeal be considered filed on
behalf of a person entitled to appeal?
The questions referred to the Enlarged Board of Appeal were answered in G 2/04
(OJ 2005, 549) as follows:
I. (a) The status as an opponent cannot be freely transferred.
I. (b) A legal person who was a subsidiary of the opponent when the opposition was filed
and who carries on the business to which the opposed patent relates cannot acquire the
status as opponent if all its shares are assigned to another company.
II. If, when filing an appeal, there is a justifiable legal uncertainty as to how the law is to
be interpreted in respect of the question of who the correct party to the proceedings is, it
is legitimate that the appeal is filed in the name of the person whom the person acting
considers, according to his interpretation, to be the correct party, and at the same time,
as an auxiliary request, in the name of a different person who might, according to
another possible interpretation, also be considered the correct party to the proceedings.
3.2. Impact of withdrawal of opposition on proceedings before the EPO
3.2.1 Withdrawal of opposition during opposition proceedings
R. 60(2) EPC provides that the opposition proceedings may be continued by the EPO of
its own motion if the opposition is withdrawn.
In T 197/88 (OJ 1989, 412) the board considered the circumstances under which
opposition proceedings could be continued by the EPO of its own motion under
R. 60(2) EPC when an opposition was withdrawn. In a communication under
R. 58(4) EPC the opposition division had proposed an amended version of the patent
which the patent proprietor approved. The opponent at first raised objections but then
withdrew his opposition, whereupon the opposition division terminated the proceedings.
In response to the patent proprietor's appeal, the board remitted the case to the
opposition division to continue the proceedings. The board pointed out the EPO's duty to

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the public not to maintain patents which it was convinced were not legally valid at all or
only to a limited extent. Furthermore, it was often the patent proprietor who was
interested in limiting his patent to ensure that his claims stood up to legal scrutiny. The
proceedings ought therefore to be continued if they had reached such a stage as to be
likely to result in limitation or revocation of the European patent without further
assistance from the opponent and without the opposition division itself having to
undertake extensive investigations.
In T 558/95 the chairman informed the parties at the oral proceedings that the patent
proprietor's main request had been refused. Several months later, the opponent
withdrew the opposition, whereupon the opposition division issued the contested
interlocutory decision, in which the reasons for refusing the main request were based on
the opposition division's assessment of the relevance of the public prior use, while the
auxiliary request was allowed. The patent proprietor appealed against the interlocutory
decision. In his statement of grounds for appeal, he argued, inter alia, that, after the
withdrawal of the opposition, there had no longer been any reason for the opposition
division to continue the proceedings, unless the evidence already considered had
sufficed to justify the limitation or revocation of the contested patent, without additional
help from the opponent and without further detailed investigations, which it did not in the
case in hand. Namely, the board noted that the main request had been refused at the
oral proceedings, ie before the opposition was withdrawn. The decision concerning this
request was final; even after the withdrawal of the opposition, it could no longer be
reviewed by the department of first instance. The continuation of the proceedings by the
EPO of its own motion under R. 60(2) EPC, second sentence, therefore applied only to
the auxiliary request, which had not been the subject of a final decision at the oral
proceedings.
During opposition proceedings in T 283/02, the opponent had announced that she was
withdrawing her opposition. She had then filed an appeal against the opposition
division’s decision to discontinue the opposition proceedings and to reject the request for
rectification of the opponent’s withdrawal of opposition and the request for continuation
of opposition proceedings by the EPO of its own motion. The board noted that
withdrawal of opposition was a definitive procedural declaration which took away the
opponent’s status as an active party to the proceedings. Such a declaration did not
require the agreement of either the opposition division or the patent proprietor. It took
effect as soon as it was received by the EPO. Moreover, the fact that the opposition
division could have decided to continue the opposition proceedings under R. 60(2) EPC
had no impact on this effect. In that situation too the opponent would not be a party to
the proceedings (see T 789/89, OJ 1994, 482). The decision whether or not to continue
the proceedings rested with the opposition division.
3.2.2 Withdrawal of opposition during appeal proceedings
In several cases the boards of appeal have considered the procedural significance of the
withdrawal of the opposition during the appeal proceedings.
In particular, in T 629/90 (OJ 1992, 654) two oppositions had been lodged against the
granting of a patent. One opponent had withdrawn its opposition prior to delivery of the
decision by the opposition division. The patent proprietor lodged an appeal against the
patent's revocation. The other opponent withdrew its opposition prior to oral proceedings
before the board. The board held that, in contrast to the situation in opposition

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proceedings, where it was a matter of discretion whether the case was continued
following withdrawal of the opposition, withdrawal in appeal proceedings had no direct
significance in terms of procedural law if the opposition division had revoked the
European patent. In this case, the board of appeal had to examine the substance of the
opposition division's decision of its own motion; it could only set the decision aside and
maintain the patent if the latter met the requirements of the EPC. The board could also
take account of evidence submitted by an opponent prior to withdrawal of the opposition
(see also Chapter VII.D.11.2).
3.3. Continuation of opposition proceedings in the event of surrender or lapse
of a European patent
If a European patent has lapsed or been surrendered in respect of all the designated
states, the opposition proceedings may - under R. 60(1) EPC - be continued at the
request of the opponent, provided the request is filed within two months of the date on
which the EPO notified the opponent of the surrender or lapse. R. 60(1) EPC establishes
no legal obligation on the EPO to ascertain of its own motion the legal status of a
European patent and does not apply in the event of an alleged surrender or lapse of a
European patent, unless confirmation thereof has been received by the EPO from the
appropriate authorities of all the designated contracting states (T 194/88).
According to the established case law of the boards of appeal, R. 60(1) EPC is
applicable mutatis mutandis in proceedings in which the appellant is the opponent. With
respect to continuation of appeal proceedings after expiry of the patent, see Chapter
VI.D.11.4.
The patent proprietor cannot terminate the proceedings by informing the EPO of his
surrender of the European patent, since this is not provided for in the EPC; at this stage
in the proceedings, notices of surrender must be addressed, as far as national law
permits, to the national authorities of the designated contracting states (T 73/84,
OJ 1985, 241; see T 123/85, OJ 1989, 336 and T 196/91). In this regard, the Enlarged
Board of Appeal made clear that while the patent grant procedure clearly provided scope
for legal fictions, ie withdrawal of the patent application, a similar construct was out of the
question in proceedings before the opposition divisions. Once a patent had been
granted, the proprietor could no longer surrender it by informing the EPO (G 1/90,
OJ 1991, 275).
In some cases, a notice of surrender may be interpreted as an unambiguous request by
the proprietor in opposition or appeal proceedings that the patent be revoked; but then in
particular there has to be no doubt that the proprietor is seeking the effects of revocation
under Art. 68 EPC, ie the cancelling of the effects of the European patent application and
the resulting patent as from the outset. If there is any doubt over the intended scope of a
notice of surrender in opposition proceedings because it cannot be unambiguously
construed as a request for revocation, then according to the Guidelines for Examination,
D-VIII, 1.2.5, it is up to the competent department to make sure that such a request is
really what is wanted (T 386/01 referring to T 237/86, OJ 1988, 261; T 186/84,
OJ 1986, 79; T 347/90). In the case in point, the notice of surrender addressed to the
EPO could not be construed unambiguously and without doubt from the overall context
as a request by the proprietor for revocation of the patent in opposition proceedings.

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3.4. Acceleration of proceedings in the case of pending infringement

proceedings
If the opposition division is unable to process an opposition case speedily on account of
the amount of work in hand, the Guidelines D-VII, 1.1 (June 2005 version), stipulate that
it should, in principle, process submissions in order of receipt. The Guidelines
subsequently list cases to be given priority. Such cases have been laid down in two
notices by the EPO dated 19.5.1998 (OJ 1998, 361 and 362): the EPO will accelerate
the processing of an opposition if it is informed by a party to the proceedings or by the
national court or other competent authority of a contracting state that infringement
actions are pending.
T 290/90 (OJ 1992, 368) gave the board of appeal the opportunity to comment on
accelerated processing of oppositions and appeals. In a case involving seven
oppositions, one had been rejected on formal grounds, whereupon the opponent filed an
appeal on 12.4.1989. A communication under R. 69(1) EPC stating that the opposition
was deemed not to have been filed was issued on 2.6.1989, followed by a decision
under R. 69(2) EPC on 29.1.1990. The patent proprietor requested accelerated
processing of the appeal because an infringement action was pending and, in view of the
probable number of infringing products on the market, the longer the opposition
proceedings took, the more difficult it would be for him to enforce the patent.
In its decision the board of appeal held accelerated processing to be a basic principle in
procedural law. It is essential for a patent to be enforceable in practice, and timing is
often a matter of great importance for the patentee and his competitors. It is therefore not
only important to decide quickly about the appeal but also to bring the opposition
proceedings to a speedy conclusion. Hence, if several oppositions are filed and the
admissibility of one of them is questioned, the opposition should be processed up to the
point when it is ready to be decided, and at the same time as the appeal is being
examined, so that the opposition can be decided soon after completion of the appeal
proceedings. Pursuant to Art. 106(1), second sentence, EPC (suspensive effect of
appeal) the potentially inadmissible opposition should be considered admissible unless
and until the board of appeal decides otherwise.
3.5. Intervention of an alleged infringer
Art. 105 EPC is a special provision on the intervention of the assumed infringer in
opposition proceedings. Under that article, an assumed infringer may, subject to certain
conditions, intervene in pending opposition proceedings. If the assumed infringer meets
the conditions, in particular payment of the opposition fee, the intervention will be treated
as an opposition in accordance with Art. 105(2) EPC. The intervener thus acquires the
status of opponent.
In T 202/89 (OJ 1992, 223) the following point of law was referred to the Enlarged Board
of Appeal, "Does a party which gives valid notice of intervention in opposition
proceedings (Art. 105 EPC) during the period for appeal following the opposition
division's decision have a right of appeal under Art. 107 EPC?".
In G 4/91 (OJ 1993, 339) the Enlarged Board held that the intervention under
Art. 105 EPC of an assumed infringer in the opposition proceedings presupposed that
opposition proceedings were pending at the time he gave notice of intervention.
Moreover, a decision of the opposition division on the relief sought had to be regarded as

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conclusive in the sense that the opposition division no longer had the power thereafter to
amend its decision. The Enlarged Board further held that proceedings before an
opposition division were terminated when such a conclusive decision was issued,
irrespective of when this decision became final. Thus, if, after an opposition division had
issued a decision terminating the proceedings, none of the parties to the opposition
proceedings filed an appeal, any notice of intervention filed during the two-month period
for appeal under Art. 108 EPC was invalidated.
In G 3/04 (OJ 2006, 118), which was concerned with the question whether a third party
who had intervened during appeal proceedings could continue those proceedings after
the sole appeal had been withdrawn, the Enlarged Board commented in detail on various
aspects of intervention. It concluded, inter alia, that the valid intervener only acquired the
status of an opponent, irrespective of whether the intervention occurred during the
proceedings before the opposition division or at the appeal stage. In either case his
rights and obligations were the same as those of other opponents. For opposition
proceedings in particular, this meant that an intervener in proceedings before the
opposition division, where all the opponents had withdrawn their oppositions, could
continue the proceedings alone and, if need be, file an appeal, since he had the same
status as an opponent under Article 99 EPC (with respect to intervention in opposition
appeal proceedings, see Chapter VII.D.5.4).
In T 631/94 (OJ 1996, 67) the board noted that when a decision to terminate opposition
proceedings, taken in written proceedings, was handed over to the EPO postal service, it
became public and effective and had therefore been issued. If the parties to the
proceedings leading to that decision did not appeal, the opposition proceedings were
completed at that point in time and thereafter intervention based on Art. 105 EPC was no
longer possible.
In T 446/95, in which an infringement action had been based on a French national
patent, the board held that the intention and purpose of an intervention in accordance
with Art. 105 EPC was to enable the assumed infringer to defend himself against the
action by the patentee based on the opposed European patent, in order to prevent the
EPO and the national courts handing down contradictory decisions on the validity of
European patents. In the case in question, the fact that the European patent had claimed
priority from the French patent and that France had been designated was irrelevant, as
there was no legal basis for intervening in the European patent on the basis of an
infringement action relating to the French patent. The admissibility of an intervention
before the EPO could not depend on a provision of national law. The intervention was
therefore inadmissible.
In T 392/97 the would-be interveners requested that the date for the appointed oral
proceedings be postponed and submitted that they had not been duly summoned to the
oral proceedings in accordance with R. 71(1), second sentence, EPC which stipulated at
least two months' notice. In the board's view, R. 71(1) EPC did not stipulate that the
requirement of a two-month period also applied if, subsequent to a duly effected
summons, there was an intervention by a third party. As a general principle, an
intervener entered the proceedings at the stage they were at on the date of intervention,
including pending time limits. Issuing a further summons or adjourning the date would
in this case clearly conflict with the previous agreement between the opponent and the
patentee as to the fixing of the oral proceedings and with the legitimate interest of the

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parties in bringing the proceedings before the EPO to a conclusion. The request for
postponement of the appointed oral proceedings was therefore rejected.
4. Examination of admissibility of opposition
VII.C.4. Examination of admissibility of opposition

4.1. Examination of admissibility by the EPO of its own motion

It is a principle firmly established by board of appeal case law that the admissibility of an
opposition is examined by the EPO of its own motion. An objection that the opposition is
inadmissible because the opponent is not entitled to file an opposition may be raised at
any stage of the proceedings, ie even at a late stage before the board of appeal,
because the admissibility of the opposition is an indispensable procedural requirement
for any substantive examination of the opposition submissions (see T 289/91,
OJ 1994, 649; T 28/93, T 590/94, T 522/94, OJ 1998, 421; T 960/95 and T 1180/97). If
the board of appeal has good reasons for examining the admissibility of an opposition
(T 199/92), it may and is obliged to do so, even if the patent proprietor has not
challenged admissibility during either opposition or appeal proceedings (T 541/92). In
G 4/97 (OJ 1999, 270), the Enlarged Board of Appeal reaffirmed that the admissibility of
an opposition could be challenged during the appeal proceedings on grounds relating to
the identity of an opponent, even if no such objection had been raised before the
opposition division.
In T 222/85 (OJ 1988, 128) the board stated that a communication under R. 57(1) EPC
indicating the admissibility of an opposition was not a decision of the opposition division,
and the sending of such a communication did not prevent the subsequent rejection of the
notice of opposition as inadmissible under R. 56(1) EPC, for example if the admissibility
was challenged by the patent proprietor in the proceedings (see also T 621/91).
In T 522/94 (OJ 1998, 421) the board commented by way of obiter dictum on the
significance of admissibility. This was a classic example of a case where turning a blind
eye to procedural requirements had led to an impasse. The opponent had not set out
enough facts for the opposition division to be able to determine the issues of novelty and
inventive step. The board stressed that admissibility of the opposition was an important
aspect when checking the opposition as to formal requirements, and that to go into the
merits of the case where there was a lack of admissibility could not be justified by the
theory "that a patent cannot be maintained when its lack of validity strikes the eye".
There was no such "eye-striking case" if the facts, evidence and arguments were
insufficient. The requirement of admissibility was not to be circumvented by over-
emphasising the ex officio principle and shifting the burden of establishing the case from
the opponent to the opposition division.
In T 925/91 (OJ 1995, 469) the appealed decision of the opposition division did not
confine itself to rejecting the opposition as inadmissible but, in addition, expressed its
opinion on the validity of the patent. The board followed the previous case law of the
boards of appeal, according to which an opposition could not be examined as to its
substance when it had been declared inadmissible. As soon as an opposition had been
rejected as inadmissible, the opposition procedure was regarded as legally terminated
and substantive examination could not be initiated any more. The inadmissibility of
an opposition, when finally decided, or an appeal, had the effect of transferring the
European patent to the national jurisdiction of the designated states, which then
assumed sole responsibility for assessing the patent's validity with reference to their own

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legislation. The board therefore came to the conclusion that it was inconsistent with the
procedural principle referred to above for the decision rejecting the opposition as
inadmissible to consider that opposition's merits. The board further held that remarks on
substantive matters in a decision rejecting the opposition as inadmissible had no legal
effect. However such remarks should, on principle, be avoided as a procedural
deficiency of this kind could result in legal uncertainty during the national phase and
could disadvantage either the proprietor or the opponent (see also T 328/87,
OJ 1992, 701).
4.2. Competence to decide on inadmissibility
According to R. 56(1) EPC, if the opposition division notes that the notice of opposition
does not comply with the provisions of Art. 99(1) EPC (ie the provisions governing, inter
alia, the time limit for filing a notice of opposition), it must reject the notice of opposition
as inadmissible.
In G 1/02 (OJ 2003, 165), the Enlarged Board of Appeal examined whether a formalities
officer was competent to decide on the consequences of late payment of the opposition
fee and thus on the inadmissibility of an opposition. In the cases ruled on in T 295/01
(OJ 2002, 251) and T 1062/99, the opposition fee had not been paid within the time limit
laid down in Art. 99(1) EPC. In each case the contested decision had been taken by a
formalities officer.
In T 295/01, the board held that point 6 of the Notice of the Vice-President DG 2, dated
28 April 1999, concerning the entrustment to formalities officers of certain duties
normally the responsibility of the opposition division (OJ 1999, 506; hereinafter referred
to as "the Notice of 28.4.1999") conflicted with provisions of a higher level, ie R. 9(3) and
56(1) EPC. It therefore found that competence to decide on the inadmissibility of the
notice of opposition lay with the opposition division and could not be entrusted to a
formalities officer. The board in T 1062/99, on the other hand, ruled that it made no
difference that the contested decision had been taken by the formalities officer on the
opposition division’s behalf. It saw the provisions of the Notice of 28.4.1999, the validity
of which it did not question, as providing the legal basis for this delegation of powers.
Taking the view that the two boards’ decisions were divergent, the President asked the
Enlarged Board of Appeal to consider whether points 4 and 6 of the Notice of 28.4.1999
conflicted with provisions of a higher level (see OJ 2002, 466).
In the reasons for its decision, the Enlarged Board stated that the provisions of the
Notices of the Vice-President DG 2 were valid on the basis of R. 9(3) EPC, under which
formalities officers could be entrusted with duties falling to the examining and opposition
divisions and involving no technical or legal difficulties. It therefore concluded that points
4 and 6 of the Notice of 28.4.1999 did not conflict with provisions of a higher level.
4.3. Formal requirements for opposition and filing in due time
4.3.1 Fundamentals
According to Art. 99(1) EPC notice of opposition must be filed within nine months of the
publication of the mention of the grant of the European patent in the European Patent
Bulletin. In the interests of legal certainty, the EPC lays down certain requirements for an
opposition that must be met before the opposition period expires. These include the
requirements that the opponent be sufficiently identified, the patent opposed be

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indicated, the notice of opposition be in writing, specific grounds be stated and the
opposition fee be paid.
Until the requirements of Art. 99(1) EPC regarding the filing of an opposition in due time
have been met, a potential opponent is not a party to any proceedings before the EPO
(see T 152/85, OJ 1987, 191).
In T 438/87 the question addressed was whether a delay in publication of the European
patent specification could in any way affect calculation of the time limit for filing an
opposition. The board of appeal concluded that, in the case before it, the date of
publication was the point from which the opposition period began, because the mention
of the grant of the patent in suit had been brought to the public's attention in the normal
way, irrespective of what problems may have affected publication of the patent
specification and what consequences such untoward event might have for certain third
parties owing to their geographical location.
4.3.2 Designating the opponent
R. 55(a) EPC provides that the notice of opposition must contain the name and address
of the opponent and state where his residence or principal place of business is located,
in accordance with the provisions of R. 26(2)(c) EPC, which deals with the precise
particulars by which such identity needs to be established. If the identity of an opponent
is not established before expiry of the period allowed for filing an opposition, the
opposition is inadmissible (T 25/85, OJ 1986, 81). This defect cannot be remedied
(T 590/94).
In T 870/92 the board emphasised that, when indicating a legal entity, failure to use its
exact official designation (R. 26(2)(c) and 61a EPC) did not necessarily mean that the
opposition was inadmissible. An incorrect designation which nevertheless sufficed to
indicate the party's identity had to be distinguished from the absence of such information.
Errors in a designation could be corrected at any time (R. 88, first sentence, EPC; see
also T 828/98).
4.3.3 Title of the invention
Under Rule 55(b) EPC, the notice of opposition must contain, inter alia, the number of
the patent, the name of the proprietor and the title of the invention. If the identification of
the patent against which the opposition has been filed is insufficient, the opposition must
be rejected as inadmissible under R. 56(1) EPC, unless the deficiency has been
remedied before expiry of the opposition period.
In T 317/86 (OJ 1989, 378) the opponent had not indicated the title of the invention
within the period specified under R. 56(2) EPC. The board decided that omission from
the notice of opposition of the title of the invention - merely an item of bibliographical
data identifying the contested patent - did not constitute a deficiency within the meaning
of R. 56(2) EPC, provided that the other particulars available to the EPO were together
sufficient to identify easily and beyond doubt the patent being contested by means of an
opposition.
In T 344/88 the board of appeal considered whether the citing by the opponent of the
wrong number for a patent specification contravened R. 55(c) EPC, if the mistake was
not corrected until after expiry of the opposition period. The first patent specification cited
by the opponent bore no relation at all to the invention. However, the notice of opposition

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contained enough detailed information for it to have been possible to identify the actual
patent specification intended. The board of appeal allowed the number to be corrected.
Given such a detailed submission of facts, it would have been taking formal
requirements too far to reject the opposition simply because the wrong number had been
given for a cited patent specification. Whether or not the EPO actually effected a
correction between receipt of the notice of opposition and expiry of the period of
opposition was irrelevant. The sole decisive factor was that the error was recognisable
within the period for opposition and that the opposition division was able, on the basis of
the description of the citation, to establish the latter's identity beyond all doubt.
In T 335/00 and T 336/00, the R. 55(b) EPC requirements were not strictly fulfilled.
Among other things, the title of the invention was missing, and the opposition was
directed to the application. The board nonetheless deemed the opposition admissible
because the contested patent was identifiable uniquely and fairly easily on the basis of
the specified publication number. Even the mistake of opposing an application and the
omission of the title did not seem serious enough to the board to make the opposition
inadmissible.
4.3.4 Payment of the opposition fee
Art. 99(1), last sentence, EPC states that a notice of opposition is not deemed to have
been filed until the opposition fee has been paid. Payment of an opposition fee is thus a
factual requirement, which must be fulfilled within the nine-month opposition period if an
opposition is to be admitted. Failure to pay an opposition fee within the required period
where the filing of an opposition is intended is a factual mistake which cannot be rectified
once the time limit for filing an opposition has passed. Nor can the failure to pay the
opposition fee in time be rectified on the basis of R. 88 EPC. It is apparent from the
wording of R. 88 EPC that the clear policy of the EPO is to distinguish between a
mistake in a document and other kinds of mistakes, such as failure to pay a fee in time,
and only to allow correction of mistakes in a document (T 152/85, OJ 1987, 191).
4.3.5 Other requirements
In T 193/87 (OJ 1993, 207) the board found that if a notice of opposition was filed in a
language of a contracting state other than an official language of the EPO and the
translation prescribed in Art. 14(4) EPC was not filed in due time, the notice should be
deemed not to have been received, and the opposition fee was to be refunded (following
T 323/87, OJ 1989, 343). Since the opposition had not come into effect, there was no
question of examining its admissibility under R. 56(1) EPC.
In T 960/95 the notice of opposition was filed without having been signed. The board
stated that a notice of opposition should be duly signed (R. 36(3), first sentence, EPC in
conjunction with R. 61a EPC). The omission of the signature was remedied within the
time limit set by the opposition division, and the notice of appeal therefore retained its
original date of receipt (R. 36(3), third sentence, EPC).
4.4. Entitlement to file an opposition
4.4.1 General conditions
In G 3/97 and G 4/97 (OJ 1999, 245, 270) the Enlarged Board of Appeal dealt with the
issue of opponent status in a comprehensive manner. On many points, these decisions
superseded earlier case law on the entitlement and identifiability of opponents (see also

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Chapter VII.C.4.4.4). According to G 3/97 und G 4/97, an opponent's status is a

procedural status, and the way it is substantiated is a matter of procedural law. This is
laid down in Art. 99(1) EPC in conjunction with Art. 100, R. 55 and R. 56(1) EPC.
According to those provisions, the opponent is the person who meets the conditions set
out therein for filing an opposition, in particular that of identifiability. The EPC sets no
other explicit formal conditions for opponents.
4.4.2 No personal interest of the opponent - double filing of opposition by the same
person
The EPC does not require that the opponent have his own interest in the outcome of the
opposition proceedings; Art. 99(1) EPC states that "any person" is entitled to file a notice
of opposition. As early as in G 1/84 (OJ 1985, 299) the Enlarged Board held that the
motives of the opponent were in principle irrelevant (otherwise, no doubt, the phrase
"any person" would have been rendered as "any person interested"), whilst his identity
was of primarily procedural importance (similarly in T 635/88, OJ 1993, 608; T 590/93,
OJ 1995, 337). Following that case law, the board stated in T 798/93 (OJ 1997, 363) that
requests for the opposition to be declared inadmissible should be refused if, as in the
case under consideration, they were based on either an objection regarding an aspect
of the opponent's status, such as his profession (a representative authorised to appear
before the EPO), or his field of technical expertise (different from that of the patent
forming the subject of the opposition) or on his lack of motives for acting (statement by
the opponent saying that his only reason for acting was to complete his training).
In G 3/97 and G 4/97 (OJ 1999, 245, 270) it was held in this regard that the EPC
legislator had expressly designed the opposition procedure as a legal remedy in the
public interest, which under Art. 99(1) EPC was open to "any person". Requiring an
opponent to show an interest, of whatever kind, in invalidating the patent would be
incompatible with that. The opponent's motives were irrelevant for the EPO, in the
absence of evidence of abusive conduct.
In T 9/00 (OJ 2002, 275), the board pointed out that repeated filing of an opposition by
the same person could be objected to for lack of legitimate interest. It ruled that a (legal)
person who filed two different notices of opposition to the same granted patent acquired
party status as opponent only once, even if both notices complied with the requirements
of Art. 99(1) EPC and R. 55 EPC. Both gave lack of novelty and inventive step as the
grounds of opposition. Since the later opposition did not entail any change in the legal
situation in the opposition proceedings compared to the earlier one, the board dismissed
it as inadmissible for lack of a general legitimate interest. Nor could such an interest be
inferred from the fact that the later opposition was assigned to a different part of the
company from the earlier opposition and only that part of the company had been
transferred to a third party.
In T 966/02, the same opponent had filed two oppositions to the contested patent under
Art. 100(a) EPC, only the second of which cited the document D1 on which the
opposition division based its decision. In the board's view, however, the question in this
case was less whether the second opposition was admissible than whether the material
in the second opposition was admissible. It was questionable whether the opposition
division had even been competent to use the document cited in the second
opposition. The board stated that, irrespective of whether or not the second opposition
filed had to be regarded as admissible, the first opposition had been filed in due form and

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time and was therefore admissible, and opposition proceedings had been initiated as a
result. If the second opposition also had to be regarded as admissible, the department of
first instance was obliged to take account of the material it cited. However, if it had to be
regarded as inadmissible, the department of first instance was competent, under the rule
on examination of its own motion in Art. 114(1) EPC, to take account of the material cited
in the inadmissible opposition if (i) another admissible opposition had been filed and (ii)
there was reason to do so because the material was relevant. Both conditions were met
in the case in hand. There was therefore no need to decide whether the second
opposition was admissible, since the department of first instance, in any event, was
competent to take account of both document D1 and any other relevant material cited in
the second set of pleadings.
4.4.3 Opposition by the patent proprietor
In G 9/93 (OJ 1994, 891) the Enlarged Board overturned the decision in G 1/84
(OJ 1985, 299) by holding that the patent proprietor was not covered by the term "any
person" in Art. 99(1) EPC and was therefore not entitled to oppose his own patent
under that provision. The ruling on this matter in G 1/84 could thus no longer be followed.
4.4.4 Opposition on behalf of a third party - straw man
Referrals T 301/95 (OJ 1997, 519) and T 649/92 (OJ 1998, 97) asked whether an
opposition is inadmissible if the opponent is a "straw man" acting for some other person.
In G 3/97 and G 4/97 (OJ 1999, 245, 270) the Enlarged Board of Appeal ruled that the
opponent is the person who fulfils the requirements of Art. 99(1) EPC in conjunction with
Art. 100, R. 55 and R. 56(1) EPC. Filing the opposition makes him formally the legitimate
opponent. If he has met the requirements for an admissible opposition, he is an
opponent and remains so until the end of the proceedings or of his involvement in them.
He cannot offload his status onto a third party. Thus there cannot be another “true”
opponent apart from the formally authorised opponent. A third party who incites him to
file the opposition cannot perform any procedural acts, and is certainly not treated as a
party to the proceedings. The EPO also lacks the procedural scope for investigating the
allegation that a straw man is involved. So an opposition is not inadmissible purely
because the person named as opponent in accordance with R. 55(a) EPC is acting on
behalf of a third party.
It is however inadmissible if the opponent's involvement is to be regarded as
circumventing the law by abuse of due process.
a. Such circumvention of the law arises, in particular, if:
aa. the opponent is acting on behalf of the patent proprietor. According to G 9/93
(OJ 1994, 891), a proprietor cannot oppose his own patent; opposition is an inter partes
procedure, so the patentee and opponent must be different persons.
bb. if the opponent is acting on behalf of a client in the context of activities which, taken
as a whole, are typically associated with professional representatives, without
possessing the necessary qualifications pursuant to Art. 134 EPC. This would be the
case if a person not entitled to act as a professional representative were acting on a
client's behalf and carrying out all the activities typically carried out by professional
representatives, while himself assuming the role of a party in order to circumvent the
prohibition on his acting as a professional representative.

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b. However, circumvention of the law by abuse of process does not arise purely
because:
aa. a professional representative files an opposition in his own name on behalf of a client
bb. an opponent with either a residence or principal place of business in an EPC
contracting state is acting on behalf of a third party who does not meet this requirement.
c. In determining whether the law is being circumvented by abuse of process, the
principle of the free evaluation of evidence is to be applied. The burden of proof lies with
the person alleging that the opposition is inadmissible. The deciding body has to be
satisfied, on the basis of clear and convincing evidence, that such abuse is occurring.
In the light of the above principles developed by the Enlarged Board of Appeal, the
previously relevant case law is largely considered no longer to apply (see T 10/82,
OJ 1983, 407; T 635/88, OJ 1993, 608; T 25/85, OJ 1996, 81; T 582/90, T 289/91,
OJ 1994, 649; T 548/91, T 339/93, T 590/93, OJ 1995, 337; T 798/93, OJ 1997, 363; for
details see also "Case Law of the Boards of Appeal of the EPO", 3rd ed. 1998, p. 424 et
seq. and 425 et seq.).
4.4.5 Admissibility of a joint opposition - multiple opponents
(a) Payment of a single opposition fee
Under Art. 99 EPC, any person may file a notice of opposition. The boards of appeal
dealt in several decisions with the interpretation of the words "any person". In T 272/95
(OJ 1999, 590), for example, the board considered the issue of interpretation and, in
view of the need for clarification, referred to the Enlarged Board, inter alia, the question
whether an opposition filed by more than one person was to be regarded as admissible
where only one opposition fee had been paid.
In G 3/99 (OJ 2002, 347), the Enlarged Board stated, first of all, that cases relating to
common opponents (third parties acting in common in filing a notice of opposition) who
pay only one opposition fee were regularly encountered by the opposition divisions. This
was not only true for the oncomouse case cited by the referring board, but also for
several oppositions filed in common over many years by, for instance, Unilever PLC and
Unilever NV, which, notwithstanding the similarity of their company names, were two
different legal persons. These oppositions had been considered to be admissible on the
basis of R. 100(1) EPC. By contrast, in T 543/99, it was decided that the opponent
companies Unilever PCL and Unilever NV, as "related companies”, should each have
paid an opposition fee when they filed an opposition.
With respect to the interpretation of the words "any person" in Art. 99(1) EPC, the
Enlarged Board of Appeal held that, as regards an opposition filed in common by a
plurality of persons, the common opponents had to be either a natural person, a legal
person, a body equivalent to a legal person by virtue of the law governing it or a
combination thereof. Moreover, it followed from R. 100(1) EPC that several persons
acting in common in filing a notice of opposition were filing only one opposition and from
Art. 99(1) EPC that only one opposition fee had to be paid in due time in order for the
opposition to be deemed to have been filed. The payment of the opposition fee was
linked to the filing of an opposition and not to the number of persons who filed the
opposition. There was no procedural difference with respect to an opposition filed by a

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single natural person, by a single legal person or by a single body equivalent to a legal
person by virtue of the law governing it.
Thus, an opposition filed in common by two or more persons which otherwise meets the
requirements of Art. 99 EPC and R. 1 and 55 EPC is admissible on payment of only one
opposition fee.
(b) Legal status and composition of a multiple opponent
Also in G 3/99 (OJ 2002, 347), the Enlarged Board held that, in an opposition filed in
common, there had to be in all cases a common representative (Art. 133(4) EPC and
R. 100 EPC) and only that common representative was entitled to act in the opposition
proceedings on behalf of all the common opponents taken as a whole. In order to
safeguard the rights of the patent proprietor and in the interests of procedural efficiency,
it had to be clear throughout the proceedings who belonged to the group of common
opponents or common appellants. If either a common opponent or appellant (including
the common representative) intended to withdraw from the proceedings, the EPO had to
be notified accordingly by the common representative or by a new common
representative determined under R. 100(1) EPC in order for the withdrawal to take effect.
Referring to that case law in its interlocutory decision in T 482/02 of 9.2.2005, the board
stated that, where it was doubtful whether an opposition had been filed on behalf of a
body which enjoyed legal personality in its own right or on behalf of several natural
persons acting in common, the opponents (here a UK partnership) should be invited to
establish that the body was a legal person or an equivalent thereto. If this was not
established, the opposition was to be considered as having been filed on behalf of the
several natural persons as common opponents. In that case the opponents still had to
furnish the names and addresses of the partners in order to comply with R. 55(a) EPC. If
this information was not received within a period specified by the board, the opposition
had to be rejected as inadmissible under R. 56(2) EPC, irrespective of whether or not
such information would have been sufficient to prevent rejection under R. 56(1) EPC.
Similarly, in T 315/03 (OJ 2005, 246), the board followed the decision of the Enlarged
Board in G 3/99, adding that, while admissibility of an opposition by multiple opponents
had to be kept under review throughout the proceedings, parties could not expect the
opposition division or board to do this alone. It was clear that the board had neither the
resources nor the knowledge of the relevant laws of all the contracting states necessary
to police the composition of, and the legal status of all members of, multiple opponents.
Once prima facie admissibility was acknowledged, it had to be up to the party or parties
seeking to challenge admissibility to make a case of inadmissibility. However, the board
saw no reason in the present case to question the legal status of the multiple opponents,
the respondent not having pointed to any evidence which suggested the legal status of
the various persons in question was other than the opposition division held. If the
respondent wished to challenge those conclusions, it was incumbent on it to produce or
point to some evidence to question such conclusions - for example evidence from official
registers or the results of inquiries showing that a legal person never or no longer
existed, or evidence that under the relevant national law a legal person does not have
the status found by the opposition division.
With regard to changes over time in the composition of a multiple opponent, the board
agreed with the respondent that the absence over eleven and a half years of any
notification concerning the 1200 members of opponent 6 ("opposition club") could in itself

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be considered an indication that the "clear throughout" condition had not been complied
with. On the other hand, the fact that certain opponents only came into being for the
purpose of filing opposition to one patent could not in itself be an objection to
admissibility; an opponent's motive or lack of motive was irrelevant (see G 3/97,
OJ 1999, 245). Similarly, it appeared to the board to be wholly irrelevant that an
opponent, whether individual or multiple, could be supported by others. Such supporters
clearly could not take any part in the proceedings and could not affect its outcome. In
relation to any proceedings there were likely to be non-parties who wanted to see a
particular party succeed (eg employees or shareholders of a company which was a
party). If some opponents - as in this case - made varying reference to their supporters in
the belief that this might influence the result, then that was of course incorrect. However,
support for a party could not per se be a reason to challenge admissibility.
4.5. Substantiation of the opposition
4.5.1 Required content of the notice of opposition
Under R. 55(c) EPC the notice of opposition must contain three items: a statement of (i)
the extent to which the European patent is opposed and (ii) of the grounds on which the
opposition is based as well as (iii) an indication of the facts, evidence and arguments
presented in support of those grounds. For the opposition to be admissible, it is sufficient
that one of the grounds for opposition fulfils the requirements of R. 55(c) EPC. Nowhere
in the EPC is there any basis for the concept of partial admissibility of oppositions. The
concept of "inadmissibility" is only applicable to the notice of opposition as a whole (as
held in T 653/99; see also T 212/97 and T 65/00).
The boards have already set out the circumstances in which the third requirement of an
indication of the facts, evidence and arguments is met. If it is met, the opposition is
deemed to be sufficiently "substantiated" and thus admissible.
In T 222/85 (OJ 1988, 128) the board of appeal held that the said requirement was only
satisfied if the contents of the notice of opposition were sufficient for the opponent's case
to be properly understood on an objective basis. The board reasoned that the
purpose of the third requirement of R. 55(c) EPC (in combination with the first two
requirements) was to ensure that the notice of opposition set out the opponent's case
sufficiently so that both the patentee and the opposition division knew what that case
was. Whereas the requirements of R. 55(a) and (b) EPC and the requirements (i) and (ii)
of R. 55(c) EPC could be considered as formal in nature, the third requirement of
R. 55(c) EPC, in combination with Art. 99(1) EPC, was substantive in nature, and called
for reasoning which went to the merits of the opponent's case. A well-drafted opposition
ought to contain reasoning that was full but concise. And in general, the less reasoning
that a notice of opposition contained, the greater the risk that it would be rejected as
inadmissible. The board held that the question whether a particular notice of opposition
met the minimum substantive requirements of Art. 99(1) EPC and R. 55(c) EPC could
only be decided in the context of each individual case (since various relevant factors,
such as the complexity of the issues raised, varied from case to case). Thus, depending
upon the circumstances of each individual case, the third requirement of R. 55(c) would
only be satisfied if there was sufficient indication of the relevant "facts, evidence and
arguments" for the reasoning and merits of the opponent's case in relation to the
grounds of opposition to be properly understood by the opposition division and the
patentee. This had to be assessed on an objective basis, from the point of view of a

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reasonably skilled person in the art to which the opposed patent related (similarly
T 925/91, OJ 1995, 469; cf. also T 2/89, OJ 1991, 51). The issue of the sufficiency of
the notice of opposition in this respect had to be distinguished from the issue of the
strength of the opponent's case. On the one hand, an unconvincing ground for
opposition might have been clearly presented and argued. Conversely, a deficient
submission might be rejected as inadmissible even though, if properly drafted, it would
have succeeded (see eg T 621/91, T 3/95, T 152/95 and T 1097/98).
The facts presented in support of grounds for an opposition must be sufficient for the
EPO and the patent proprietor to understand the case without further investigation
(T 2/89, OJ 1991, 51). In T 204/91 the board stated in particular that the term "indication"
in R. 55(c) EPC had to be construed as requiring more than a mere hint at a number of
possible attacks upon the patent and at the likely support for each such possible attack,
which indication (or hint) might then be augmented by the subsequent late filing, possibly
even at the appeal stage, of further evidence, arguments or other matter - even of fresh
grounds of objection. Rather, the scope and depth of "indication" needed to be such as
to enable the patentee and the opposition division to see clearly just what attack was
being mounted against the patent, and what evidential support was being adduced for
that attack. In other words, the patentee and the opposition division had to be put in a
position of understanding clearly the nature of the objection submitted as well as the
evidence and arguments in its support. This required the elaboration of the relevant
circumstances of the case to such an extent that the patentee and the opposition division
were able to form a definitive opinion on at least one ground of opposition raised,
without the need to make further investigations (cf. T 453/87 and T 279/88). The fact that
a patentee must be able to understand, without undue burden, the case made against
his patent in the notice of opposition does not, however, exclude the possibility that he
may have to undertake a certain amount of interpretation, as was held in T 199/92.
R. 55(c) EPC does not prescribe such a complete "indication of the facts, evidence and
arguments presented in support" as to permit a conclusive examination on that basis
alone (T 1069/96).
Likewise, the EPC does not require, for the admissibility of an opposition, that an
argument brought in support of the opposition has to be conclusive in itself for it to be
admissible. Considering the evidence is part of the process of ascertaining whether the
opposition is well founded in substance. Under Art. 101(1) EPC, this can only be done if
it has already been determined that the opposition is admissible (T 234/86, OJ 1989, 79;
see also T 453/87 and T 2/89, OJ 1991, 51).
In that connection, false statements in the notice of opposition cannot affect its
admissibility. The statements made in the opponent's pleadings need not be true; the
opposition division and the patentee simply have to be able to follow them. Either they
ascertain that there is an error in the reference, or that the view taken in the opposition is
wrong, or that there is no error and the view taken is correct. This is purely a question of
the merits of the case (see T 534/98).
In T 934/99 the board stated that R. 55(c) EPC does not imply the requirement of a
logical line of reasoning in the sense that the arguments brought forward in the notice of
opposition must be cogent or convincing. Rather, the criterion is whether the arguments
presented are relevant and, where necessary as the result of a reasonable interpretative
effort, specific enough to allow a person skilled in the art to form a reasoned opinion of

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whether the line of reasoning on which the opponent apparently relies is (logically)
correct ("convincing") or not (ie wrong).
In T 1019/92 the board stated that the question of whether a notice of opposition fulfilled
the requirement of R. 55(c) EPC was an objective one which had to be judged at the
expiry of the nine-month opposition period. The board emphasised that even if, as in this
case, an opponent subsequently relied upon prior art material not mentioned in the
notice of opposition to support its line of argument, this could not render that notice of
opposition inadmissible if at the relevant date it complied on an objective basis with the
requirement stated above.
It has been already stated in T 182/89 (OJ 1991, 391) that if, as in the present case, a
ground for opposition were alleged in the notice of opposition but not per se properly
supported as required by R. 55(c) EPC within the nine-month period for opposition, then
that ground for opposition should be rejected on the same basis as if it were
inadmissible under R. 56(1) EPC. The board went on to say that if this course was not
followed, the procedure could be easily abused, in that an opponent might allege more
than one ground for opposition in his notice of opposition but only support one of these
grounds in his notice of opposition; then, at a later stage in the opposition proceedings,
he might bring forward facts and evidence in support of the other alleged grounds for
opposition, causing delay and an increase in costs. In the board's view this should not be
allowable. R. 55(c) EPC in conjunction with R. 56(1) EPC clearly required that every
ground for opposition alleged in the notice of opposition be supported by "facts,
evidence and arguments" within the nine-month opposition period and that the notice of
opposition (at least to the extent that R. 55(c) EPC had not been complied with) be
rejected as inadmissible if this had not been done.
4.5.2 Case groups
(a) Sufficient substantiation of the grounds for opposition
Several decisions of the boards of appeal considered in greater detail, when examining
the admissibility of the opposition, what constitutes sufficient substantiation in the notice
of opposition.
In T 134/88 the opposition did not deal with all the features of the contested claim, but
still satisfied R. 55(c) EPC. The board summed up by saying that an opposition directed
against alleged lack of inventive step in the case of a combination invention was
generally inadmissible if it related only to the assessment of one individual feature - to be
admissible, it would have to deal with the invention as a whole, or at least with its
essential content, so that when the facts on which the opposition was based were
indicated, circumstances became recognisable which enabled the patent proprietor and
the assessing body to pass conclusive judgment on the asserted grounds for opposition
without having to make enquiries of their own.
In T 185/88 (OJ 1990, 451) the board of appeal ruled that grounds for opposition were in
due form if the only document cited in support of the sole assertion of lack of inventive
step (in this case a German patent specification), although actually published after the
date of filing or priority, nevertheless contained a reference to a publication known
before the date of filing or priority (in this case a German unexamined application or
"Offenlegungsschrift").

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In T 406/92 the opponent had claimed in the notice of opposition that D4 reproduced in
writing what had been presented orally at a conference. Reference to this conference
was made in a footnote in D4. The opposition division rejected the opposition. In its
decision it argued inter alia that the talk represented as corresponding to document D4
could not be regarded as belonging to the state of the art in accordance with
Art. 54(2) EPC, as the footnote left open to what extent the talk corresponded to the later
publication. The board decided that how accessible an oral description was to the public
depended on the "how" (talk, discussion, radio or television programme, etc.) and the
"where" (public conference, factory building, etc.). The notice of opposition had given
information in this respect. Whether the said conference was actually public and whether
the content of the talk really did correspond to the disclosure of D4 did not affect the
admissibility of the opposition, but could be significant for assessing the allowability of
the opposition in terms of substantive law. For these reasons the opposition was
admissible (see T 786/95).
In T 533/94 and T 534/94 the correlation between the individual features of the claimed
invention and the relevant passages of the prior art documents in the notice of opposition
had been made in the form of tables and it had not been explicitly indicated what
particular statements were alleged to destroy the novelty of the invention or form a basis
for an argument on obviousness. The board found that this did not affect the notice's
admissibility. The board observed that a notice of opposition was addressed to the
opposition division and the patentee who were not only skilled in the art but also
competent in examining novelty and inventive step. Thus, in the board's judgment, a
detailed and exhaustive discussion of matters which were implicit to such skilled persons
was not needed to understand the opponent's case and, therefore, not an admissibility
requirement (see also T 534/98, in which it was held, with reference to the prevailing
view in the case law, that substantiation of an opposition did not require proof of a claim
concerning common general knowledge, unless the claim was called into question by
another party or by the EPO).
In T 521/00 the board had to assess whether the alleged opposition ground of insufficient
disclosure pursuant to Art. 100(b) EPC had been substantiated in the notice of
opposition. The appellant had referred to T 65/00, in which it was stated that, for an
opposition to be admissible, it was sufficient that the arguments were such that an
arguable case was established, it being irrelevant whether the arguments brought
forward by the opponent referred to Art. 84 or 83 EPC. The board admitted that this
statement would cover the case under consideration, but could not concur with it.
According to the board, the mere establishment of an arguable case would not comply
with R. 55(c) EPC, which required that an indication of the facts, evidence and
arguments be presented in support of the alleged opposition grounds. This provision
should not be undermined by lowering its requirements even more, as the Enlarged
Board had stressed its significance in G 9/91 (OJ 1993, 408) and G 10/91
(OJ 1993, 420). The board therefore preferred to follow T 134/88 (see above), in which it
had been found that allegations which could not be subsumed under one of the
opposition grounds had to be left out of consideration.
(b) Insufficient substantiation of the grounds for opposition
In T 448/89 (OJ 1992, 361) the board of appeal followed decision T 222/85
(OJ 1988, 128) and rejected the opposition as inadmissible. The board held that the
requirement under R. 55(c) EPC for facts and evidence in support of the grounds to be

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indicated was not fulfilled if several different subject-matters were described in a

document cited as prejudicial to novelty and it was neither stated nor readily discernible
which of them incorporated all the features of the contested claim. In this case the
objection of lack of inventive step had not indicated the facts, evidence and arguments. A
general reference to all publications cited in the European search report was not enough
if it was neither stated nor readily discernible which document was being presented in
support of which argument.
In T 545/91 the board of appeal followed the case law established in T 448/89
(OJ 1992, 361) and T 222/85 (OJ 1988, 128). The opposition was rejected as
inadmissible since the submitted document relied upon contained 200 pages and the
notice of opposition made no specific reference to any of its passages. Even if the
opponent's contention were correct that an expert would immediately find the relevant
chapter in the index, the board held that further clarification was necessary as this
chapter was 86 pages long and contained subjects not directly related to each other (see
T 204/91).
In decision T 550/88 (OJ 1992, 117) the board of appeal considered whether national
prior rights could as a matter of law constitute "facts or evidence" relevant to the ground
of lack of novelty under Art. 54(1) and (3) EPC. If not, such facts and evidence did not
support the ground for opposition which had been alleged and therefore did not satisfy
the requirement of R. 55(c) EPC. In the board's judgment, on the proper interpretation of
Art. 54(3) EPC, national prior rights were not comprised in the state of the art, and only
prior European patent applications filed under the EPC could be considered as such
under Art. 54(3) EPC. The board of appeal decided in this case that the opposition was
inadmissible because the only facts and evidence indicated in the notice of opposition
were references to national prior rights.
In T 182/89 (OJ 1991, 391) the board held that in order to establish insufficiency, a mere
statement by an opponent that one example in a patent had been repeated once "exactly
as described" without obtaining exactly the described results as set out and claimed in
the patent was clearly in principle quite inadequate to discharge the burden of proof.
Indeed, if a notice of opposition alleged insufficiency under Art. 100(b) EPC as the sole
ground of opposition, and contained such a statement as the only indication of "facts,
evidence and arguments" in support of this ground, there would, in the board's view, be
good grounds for rejecting such a notice of opposition as inadmissible, on the basis that
it contained no sufficient indication of facts and evidence which, even if subsequently
proved, could provide legal and factual reasons for revoking the patent.
Similarly, in T 511/02, the question was raised as to whether the appellant (opponent)
had fulfilled its duty of substantiation pursuant to Art. 99(1) and R. 55(c) EPC, that is to
say, had given an adequate indication of the relevant facts and evidence intended to
support the alleged ground for revocation. The board considered the content of the
notice of opposition, noting that the appellant had cited fitting instructions and
instructions for use and installation and had indicated their publication date. Fitting and
installation instructions did not generally bear a publication date but a coded or uncoded
printing date, and were not therefore "published" in the true sense of the word but were
made available to the public by being distributed with the product to be fitted or installed.
In the board’s view, therefore, the term "publication date" used by the appellant was at
the very least misleading. The citations in the case at issue likewise did not indicate
when and how the cited instructions had been made available to the public. Since this

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factor was crucial to the establishment of whether the citations formed part of the prior
art and thus whether they could actually be cited against the patent, no adequate
indication had been given of the relevant facts and evidence.
4.5.3 Opposition based on public prior use
(a) Sufficient substantiation of the alleged prior use
As stated above, a claim is deemed to be sufficiently substantiated if it can be
understood by the EPO and the other parties without their having to investigate the
matter themselves. Thus, the board will generally consider an allegation of public prior
use only if it is sufficiently substantiated, ie where it can be readily seen how the public
prior use took place (this was not the case in eg T 6/86, T 329/86 and T 78/90). If an
opponent wishes to rely upon prior use as being part of the state of the art for the
purpose of Art. 54(2) EPC and as part of the legal and factual framework within which
the substantive examination of the opposition is to be conducted, the notice of opposition
must indicate within the opposition period all the facts which make it possible to
determine the date of prior use, what has been used, and the circumstances relating to
the prior use. In T 538/89 the board stressed that the evidence specified could be
submitted after expiry of the period for opposition since R. 55(c) EPC only requires that it
be indicated (see also T 752/95, T 249/98). Nomination of a witness for a subsequent
examination of the witness was deemed to constitute indication of evidence (see also
T 28/93 and T 988/93).
Public prior use is only adequately substantiated if specific details are given of what was
made available to the public, where, when, how and by whom (T 328/87, OJ 1992, 701;
T 93/89, OJ 1992, 718; T 1002/92, OJ 1995, 605 and T 212/97). In cases of alleged
public prior use, particular substantiation is required in the notice of opposition. However,
a distinction must still be made between examining the admissibility of the opposition
and its substantive merit. Decisions T 194/86, T 328/87 (OJ 1992, 701), T 93/89
(OJ 1992, 718), T 232/89, T 538/89, T 754/89, T 78/90, T 600/90, T 877/90, T 441/91,
T 602/91, T 988/91, T 541/92 and T 927/98 held that to be able to determine whether an
invention has been made available to the public by prior use, the following circumstances
have to be clarified:
(i) when the act of prior use occurred
(ii) what was made available to the public through that use
(iii) the circumstances of the act of use, ie where, how and by whom the subject-matter
was made public through that use
Establishing that this prior use was indeed public has little bearing on admissibility
(T 1022/99).
The issue the board had to resolve in T 241/99 was whether, in the event of a purported
sale to a small, closed group of customers, it was sufficient to indicate the buyers in
the form "customers X, Y, Z ..." The board referred to case law under which a single
proven sale without obligation to maintain secrecy was sufficient to render the sold article
available to the public within the meaning of Art. 54(2) EPC (T 482/89, OJ 1992, 646). In
such cases, however, the requirements of R. 55(c) EPC were met only if the name and
address of the sole buyer were indicated within the opposition period. The board
therefore did not consider the encoded customer details in the computer printout (list of

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customer numbers) to be an indication of the customers’ identity. The board further

deemed that even the two witnesses called to prove the correctness of the computer
printout were only likely to be able to say something about the circumstances in which it
was generated. As, in the interests of legal certainty, it had to be possible to decide on
the admissibility of an opposition on the basis of the file as it stood at the end of the nine-
month opposition period, it was too much to ask of the patent proprietor and the
opposition division that a called witness had to be heard first in order to find out whether
he personally knew anything at all about the circumstances of the sale that might be
evidence of availability to the public. The board therefore dismissed the opposition as
inadmissible.
(b) Examination by the EPO of its own motion
Under Art. 114 EPC the EPO has a limited obligation to undertake an examination of its
own motion with regard to public prior use.
In T 129/88 (OJ 1993, 598) the board noted that although a board of appeal had an
obligation under Art. 114(1) EPC to investigate matters of its own motion, that obligation
did not extend as far as investigating an allegation of public prior use, where the party
previously making that allegation had withdrawn from proceedings and it was difficult to
establish all the relevant facts without that party's co-operation. The reason for this was
that the obligation to investigate of its own motion imposed on the EPO by
Art. 114(1) EPC was not unlimited in its scope, but was confined by considerations of
reasonableness and expediency. Therefore, if the opponents withdrew the opposition,
thereby indicating that they were no longer interested in the outcome of the opposition,
then, although the EPO might have the power, depending on the country of residence of
relevant witnesses, to compel them to give evidence, either before the EPO or before the
court of a contracting state, in the interests of procedural economy it should not normally
investigate the issue any further. It would be different if a relevant public prior use had
already been substantiated by documents of undisputed authenticity, or if the material
facts with respect to the alleged public prior use were undisputed (see T 830/90,
OJ 1994, 713; T 887/90, T 634/91, T 252/93 and T 34/94).
5. Substantive examination of the opposition
VII.C.5. Substantive examination of the opposition

5.1. Introduction
In decisions G 9/91 and G 10/91 (OJ 1993, 408 and 420) the Enlarged Board stated that
a post-grant opposition procedure could be constructed in different ways - an opponent
could, for example, be allowed to confine his action to making a simple request for a
general re-examination of the patent on the basis of some general observations.
However, the post-grant opposition procedure under the EPC was not constructed in this
way. As appeared from Art. 99 EPC in conjunction with R. 55(c) EPC, the notice of
opposition had, inter alia, to contain a statement of the extent to which the European
patent was opposed and of the grounds on which the opposition was based as well as
an indication of the facts, evidence and arguments presented in support of these
grounds.
The Enlarged Board thus considered that the core of the matter in the cases before it
was whether the statement of the opponent under R. 55(c) EPC limited the power and
obligation of the EPO in its examination of the case or whether such examination could

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or even should go beyond the opposition as filed and be extended to other parts of the
patent and to other grounds for opposition than those covered by such statement.
The Enlarged Board held that R. 55(c) EPC made sense only when interpreted as having
the double function of governing (together with other provisions) the admissibility of the
opposition and of simultaneously establishing the legal and factual framework within
which the substantive examination of the opposition was in principle to be conducted.
The legal framework of an opposition case is defined solely by (i) the extent to which
the patent is actually opposed and (ii) the grounds upon which it is opposed, whilst its
factual framework is determined by the facts, evidence and arguments adduced and
set out in the notice of opposition pursuant to R. 55(c) EPC. It is thus self-evident that
neither grounds not actually supported by such facts, evidence and arguments, nor
claims not actually opposed (as distinct from being merely formally mentioned in the
notice of opposition) can be properly regarded as making up the "legal and factual
framework" of the opposition (T 737/92).
A distinction has to be made between the two main requirements of R. 55(c) EPC, ie the
indication of the extent to which the European patent is opposed and the grounds for
opposition.
5.2. Examination of the legal framework of the opposition
5.2.1 Extent to which the European patent is opposed
(a) Fundamentals
Art. 99(1) EPC provides, inter alia, that "notice of opposition shall be filed in a written
reasoned statement". R. 55(c) EPC requires the notice of opposition to contain, inter alia,
"a statement of the extent to which the European patent is opposed". Opposition
proceedings constitute an exception to the general rule under the EPC that a European
patent after grant is no longer within the competence of the EPO but becomes a bundle
of patents within the jurisdiction of the designated contracting states. Opposition
proceedings are an exceptional procedure whereby, during a limited period of time, a
centralised action for revocation of a European patent may be brought before and
decided by the EPO. With this background in mind, the board in T 9/87 (OJ 1989, 438)
held that an opponent's statement pursuant to R. 55(c) EPC of "the extent to which the
European patent is opposed", in combination with the grounds of opposition, provided a
definition of the issues raised by the opposition and, therefore, of the extent of
competence of the EPO in relation to the examination of the opposed European patent
under Art. 101 EPC.
The case law of the boards of appeal had for some time been divided on the extent to
which the opposition division (or, under R. 66(1) EPC, a board of appeal) could examine
the patent in accordance with Art. 101 and 102 EPC. Some boards had advocated that
examination be restricted to the contested claims (eg T 9/87, OJ 1989, 438 and
T 192/88). Others had favoured unrestricted examination of the grounds for opposition
and the claims in accordance with Art. 114(1) EPC (eg T 156/84, OJ 1988, 372;
T 266/87, T 197/88, OJ 1989, 412; T 493/88, OJ 1991, 380 and T 392/89).
In G 9/91 and G 10/91 (OJ 1993, 408 and 420) the Enlarged Board pointed out that it
was rather unusual for the opposition to be limited to only a certain part of the patent. If,
however, this was the case, the examination of an opposition under Art. 101 EPC was

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limited by the statement, in the notice of opposition, of the extent to which the patent was
opposed. It was further stated that neither the opposition division nor a board of appeal
had the obligation or power to examine and decide on the maintenance of a European
patent except to the extent to which it was opposed.
The Enlarged Board held that the requirement of R. 55(c) EPC to specify the extent to
which the patent was opposed within the time limit prescribed by Art. 99(1) EPC would
be pointless if, later on, other parts of the patent could freely be drawn into the
proceedings. This would also be contrary to the basic concept of post-grant opposition
under the EPC. Subject-matter not included by the opponent in his opposition was
therefore not subject to any "opposition", nor were any "proceedings" within the meaning
of Art. 114 and 115 EPC in existence concerning the non-opposed subject-matter.
Consequently, the EPO had no competence to deal with them at all (see T 443/93).
However, the subject-matter of claims depending on an independent claim which had
fallen in opposition or appeal proceedings could be examined as to patentability even if it
had not been explicitly opposed, provided its validity was prima facie in doubt on the
basis of information already available.
The possible effect of G 9/91 (OJ 1993, 408) on the practice of the boards of appeal was
discussed in T 376/90 (OJ 1994, 906). As regards the requirement of R. 56(1) EPC in
conjunction with R. 55(c) EPC that the notice of opposition contain a statement of the
extent to which the European patent is opposed, the board proceeded on the accepted
principle that statements were to be interpreted in the way that an addressee would
understand them, taking into account the surrounding circumstances (see, in this
respect, T 1/88, in which the board based its interpretation of equivocal procedural acts
on the "objective value of the explanation"). However, the board added that, although it
had been the general practice, where patents were opposed without an explicit
statement of the extent to which they were opposed, to interpret the absence of such a
statement as an indication of the opponent's intention to oppose the patent concerned in
its entirety, the continuance of this "liberal" practice appeared questionable in the light of
G 9/91. Indeed, in the extreme case where the extent to which a patent was opposed
was in serious doubt, this might lead to a rejection of the opposition as inadmissible.
However, this legal point was not decided in the case in hand because there could be no
such serious doubts in the circumstances.
(b) Individual cases
In T 1019/92 the requirement of R. 55(c) EPC was found to be met by an explicit request
that the patent be revoked in its entirety. The board held that, in these circumstances, if
an opponent requested revocation of the patent in its entirety, then the fact that no
specific prior art material had been cited against a dependent claim did not exclude that
claim from the opposition.
In T 1066/92, claims 3, 4 and 5 (out of ten) were challenged by an opposition. Rejection
of these claims was requested on the grounds of lack of novelty and lack of inventive
step. The opposition division maintained the patent in amended form only on the basis of
claims 1 and 2 as granted. The patentee lodged an appeal against the decision. The
board noted that neither within the time limit for opposition nor even later in the
proceedings before the opposition division had the opponent made any specific request
to extend the opposition to granted claims 6 to 10. The opponent expressed his opinion
that Art. 114(1) EPC gave the opposition division the power to extend the opposition,

564
 VII.C.5. Substantive examination of the opposition

especially if non-extension would result in the maintenance of claims which were

obviously not patentable. The board stated that, following G 9/91, the opposition division
had no power to extend the opposition to granted claims 6 to 10 and therefore was not
entitled to revoke these claims. Apart from the fact that the board did not consider the
subject-matter of granted claims 6 to 10 to be, prima facie, not patentable, the
opponent's opinion was not supported by G 9/91. It further stated that the decision of the
Enlarged Board left no room for any extension of the opposition beyond the statement
under R. 55(c) EPC. The board saw no reason to deviate from the conclusions laid down
in G 9/91 and held that granted claims 6 to 10 should have been maintained by the
opposition division. The decision to revoke the non-opposed claims was therefore ultra
vires and had to be set aside.
In T 114/95 the respondent (patent proprietor) contended that the appeal was not
admissible in respect of the granted independent claim 4, because the appellant had not
substantiated any reason in accordance with Art. 100 EPC in its notice of opposition
against the subject-matter of this claim. The board held that if an opponent requested
revocation of the patent in its entirety, it was sufficient to substantiate the ground(s) for
opposition in respect of at least one claim of the patent for the requirements of
R. 55(c) EPC to be met (see T 926/93, OJ 1997, 447; T 1180/97). R. 55(c) EPC did not
refer to claims but rather required that the notice of opposition should contain a
statement of the extent to which the patent was opposed. The board also found that
there was no limitation set by the EPC on allowing an opponent whose opposition was
considered admissible to support and use grounds, evidence and arguments for
revocation of the patent that were submitted by other opponent(s). Therefore, in the case
at issue, the appellant was allowed to rely on submissions for lack of inventive step
brought forward against granted claim 4 by the other opponent, who did not appeal.
5.2.2 Grounds on which the opposition is based
(a) Scope of the examination of the grounds for opposition
In G 10/91 (OJ 1993, 420) the Enlarged Board of Appeal turned to the second main
requirement of the statement under R. 55(c) EPC, ie the indication of the grounds on
which the opposition is based. Here the question referred was whether the opposition
division, in the examination of the opposition, was obliged to consider all the grounds for
opposition referred to in Art. 100 EPC or whether the examination should be restricted to
the grounds referred to by the opponent in his notice of opposition.
The Enlarged Board noted that the problems here differed from those related to the first
main requirement in that in the case of the extent to which the patent was opposed, it
was a question of the formal competence of an opposition division or a board of appeal
to deal with a non-opposed part, whilst the problems connected with the grounds for
opposition were more concerned with the procedural principles to be applied where the
European patent or part of it had been correctly opposed. Whilst the Enlarged Board
could find no legal basis in Art. 114(1) EPC for an obligatory review of the grounds for
opposition not covered by the statement pursuant to R. 55(c) EPC, it did examine
whether that article actually empowered the opposition division or board of appeal to
investigate such grounds at all. It then held that an opposition division or a board of
appeal was not obliged to consider all the grounds for opposition referred to in
Art. 100 EPC, going beyond the grounds covered by the statement under R. 55(c) EPC.
Exceptionally, however, the opposition division could, in application of Art. 114(1) EPC,

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consider other grounds for opposition, which, prima facie, in whole or in part would seem
to prejudice the maintenance of the European patent.
As regards the investigative power of the boards under Art. 114(1) EPC, read in
conjunction with the proviso "mutatis mutandis" in R. 66(1) EPC, it is their judicial
character that sets the limits to this power. To permit the shifting of the legal and factual
framework of the opposition in appeal, in a mistaken reliance on the wording of
Art. 114(1) EPC, read in isolation from the rest of the EPC, and in particular Rule 66(1),
would offend the legal principles contained and expressed in the EPC and explained in
the case law of the Enlarged Board (T 737/92).
Following the decision in G 10/91, the board held in T 274/95 (OJ 1997, 99) that, if a
ground for opposition was substantiated in the notice of opposition but was subsequently
not maintained during the opposition division proceedings (in the case in question, a
statement to that effect had been made by the opponent during oral proceedings), the
opposition division was under no obligation to consider this ground further or to deal with
it in its decision, unless the ground was sufficiently relevant to be likely to prejudice
maintenance of the patent.
(b) Fresh grounds for opposition
(i) Definitions
In G 1/95 and G 7/95 (OJ 1996, 615 and 626; consolidated proceedings) the Enlarged
Board of Appeal dealt with the meaning of the legal concept of "grounds for
opposition" under Art. 100 EPC. It noted that the function of Art. 100 EPC was to
provide, within the framework of the EPC, a limited number of legal bases, ie a limited
number of objections on which an opposition could be based. The Enlarged Board
observed that, on the one hand, all "grounds for opposition" mentioned in Art. 100 EPC
had their counterparts in other articles of the EPC. On the other hand, whereas the
grounds for opposition in Art. 100(b) and (c) EPC each related to a single legal basis on
which an opposition could be based, ie insufficient disclosure and unallowable
amendment before grant respectively, the same did not apply to Art. 100(a) EPC.
Art. 100(a) EPC referred not only to the general definition of patentable inventions
according to Art. 52(1) EPC, and to the exceptions to patentability according to
Art. 53 EPC, but also to a number of definitions under Art. 52(2) to (4) EPC and Art. 54 to
57 EPC ("invention", "novelty", "inventive step" and "industrial application") which, in
conjunction with Art. 52(1) EPC, defined specific requirements and thus formed separate
grounds for opposition. The totality of Art. 52 to 57 EPC in conjunction with
Art. 100(a) EPC did not therefore constitute a single objection to the maintenance of the
patent, but a collection of different objections (ie legal bases). For an opposition to be
admissible within the framework of Art. 100(a) EPC, it followed that it had therefore to be
based on at least one of the legal bases for an opposition, ie on at least one of the
grounds for opposition set out in Art. 52 to Art. 57 EPC.
In considering the proper application of Art. 114(1) EPC during opposition appeal
proceedings, the Enlarged Board of Appeal also decided on the meaning of the legal
concept "fresh ground for opposition" as used G 10/91 (OJ 1993, 420, point 18 of the
Reasons). It found that this term must be interpreted as having been intended to refer to
a ground for opposition which was neither raised and substantiated in the notice of
opposition, nor introduced into the proceedings by the opposition division in accordance
with the principles set out in G 10/91 (point 16 of the Reasons).

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 VII.C.5. Substantive examination of the opposition

(ii) Objections deemed to be fresh grounds for opposition

The meaning of the key concepts of "ground for opposition" under Art. 100 EPC and
"fresh ground for opposition" having been clarified, the Enlarged Board of Appeal
decided on the questions referred to it in T 937/91 (OJ 1996, 25) and T 514/92
(OJ 1996, 270). It should be noted as background information that the Enlarged Board
had already held in G 10/91 (OJ 1993, 420) that fresh grounds for opposition could be
considered in appeal proceedings only with the approval of the patentee (for more details
see Chapter VII.D.14; see also "Case Law of the Boards of Appeal of the EPO, 4th
edition 2001, p. 514 et seq.).
In G 1/95 (OJ 1996, 615), the Enlarged Board decided that, in a case where a patent had
been opposed on the grounds set out in Art. 100(a) EPC, but the opposition had only
been substantiated on the grounds of lack of novelty and lack of inventive step, the
ground of unpatentable subject-matter based on Art. 52(1) and (2) EPC was a fresh
ground for opposition and accordingly could not be introduced into the appeal
proceedings without the agreement of the patentee.
In G 7/95 (OJ 1996, 626), the Enlarged Board decided that, in a case where a patent had
been opposed under Art. 100(a) EPC on the ground that the claims lacked an inventive
step in view of documents cited in the notice of opposition, the ground of lack of novelty
vis-à-vis the said documents based on Art. 52(1) and 54 EPC was a fresh ground for
opposition and accordingly could not be introduced into the appeal proceedings without
the agreement of the patentee. However, the allegation that the claims lacked novelty in
view of the closest prior art document could be considered in the context of deciding on
the ground of lack of inventive step.
In T 135/01, the board took the view that the mere observation in the course of an
opposition procedure, whether by a party or the opposition division, that the subject-
matter of a claim was new having regard to the prior art did not mean that lack of novelty
was thereby introduced as a ground for opposition. Thus an assessment of inventive
step generally began with a determination of the point of novelty, which implied a finding
that the subject-matter of the claim was new. Treating such a routine affirmation of
novelty as introducing the opposition ground of lack of novelty would be tantamount to
including the latter ground as an invariant concomitant of the opposition ground of lack of
inventive step, which would be contrary to decision G 7/95 (OJ 1996, 626). In particular,
the present board saw, as a requirement for affirming that lack of novelty was in
substance raised in the opposition procedure as a ground for opposition, the presence of
a contention, by a party to the proceedings or by a third party presenting observations
pursuant to Art. 115 EPC or by the opposition division, to the effect that the subject-
matter of a claim was not new having regard to some specific prior art.
(iii) Admissibility and substantiation of a fresh ground for opposition
In T 736/95 (OJ 2001, 191) the ground referred to by the appellant under
Art. 100(c) EPC had not been raised in the notice of opposition. The opposition division
had decided not to admit the newly submitted ground, without giving the parties any
indication that it considered it to be less pertinent. The question which then arose was
whether the fresh ground could be examined at all under Art. 114(1) EPC. Having regard
to the Enlarged Board of Appeal's decisions in G 10/91 (OJ 1993, 420) and G 1/95
(OJ 1996, 615) and to the Guidelines for Examination in the EPO, the board concluded
that the department of first instance at least had to examine whether a fresh ground was

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relevant. The aim of first-instance proceedings was to avoid invalid patents. Therefore, in
the case in question, the opposition division ought first to have examined under
Art. 114(1) EPC whether the ground raised under Art. 100(c) EPC could prejudice
maintenance of the patent before rejecting it as inadmissible. Since it did not do so, but
based its refusal to admit the ground only on the fact that it had been raised late, the
opposition division deprived the appellant of the opportunity to have the relevance of this
ground, and thus its admissibility, examined on appeal.
In T 433/93 the board held that, in all normal cases, if an opposition division decided to
introduce a new ground for opposition into the proceedings in addition to the ground(s)
for opposition which the opponent had raised and substantiated in the notice of
opposition, this should be done in writing as early as possible in the proceedings. The
written notification to the patent proprietor from the opposition division informing the
proprietor that a new ground for opposition would be introduced into the proceedings
should at the same time ensure that the proprietor was informed not only of the new
ground for opposition (ie the new legal basis for the opposition), but also of the legal and
factual reasons (ie its substantiation) that would in effect substantiate the new ground
which would lead to a finding of invalidity and revocation, so that the proprietor was fully
informed of the case which he had to meet, and had a proper opportunity to present
comments in reply. If, in a very exceptional case, an opposition division decided for the
first time during oral proceedings that a new ground of opposition should be introduced
into the proceedings, it would in principle be appropriate, even during oral proceedings,
for the opposition division to notify the proprietor in writing both of the introduction of the
new ground and of the legal and factual reasons which substantiated such a new
ground. In this way, possible misunderstandings would be avoided, and the notification
would be part of the written file record of the case.
5.3. Examination of the factual framework of the opposition
In T 1002/92 (OJ 1995, 605) the board stated that when considering the admissibility of a
further ground for opposition not covered by the notice of opposition after expiry of the
opposition period, both before an opposition division and before a board of appeal, the
Enlarged Board was necessarily implicitly considering the admissibility of such a fresh
ground in combination with at least an indication of the fresh facts and evidence
intended to support it. The mere stating of a fresh ground without any indication of the
fresh facts, evidence and argument supporting it would obviously be inadmissible, either
within or after expiry of the opposition period. It would be illogical to have one criterion for
the admissibility of late-filed new facts, evidence and arguments in combination with a
fresh ground, and a different criterion for judging the admissibility of late-filed new facts,
evidence and arguments in support of a ground for opposition already covered by the
opposition statement. Hence, in the board's view, it followed that the principles set out by
the Enlarged Board in the opinion G 10/91 (OJ 1993, 420) as underlying the admissibility
of fresh grounds for opposition, were also generally applicable to the admissibility of late-
filed new facts, evidence and arguments intended to support grounds for opposition
already covered by the opposition statement (see also Chapter VII.C.5.2.2.(a)).
Likewise, where amended claims were introduced in the opposition proceedings there
could be no objection to the opponent's submitting new citations and new arguments
against the new claims (T 623/93). The examination by the opposition division of a new
submission justified in this way was in keeping with Enlarged Board of Appeal decision
G 9/91 (OJ 1993, 408).

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In T 154/95 the board ruled that in opposition or appeal proceedings it was basically
irrelevant how an opponent came across documents or other evidence made available to
the public. Thus there was nothing to stop an opponent from citing a prior use invoked in
the same case by another opponent whose opposition was inadmissible because it had
been filed after expiry of the opposition period.
6. Amendments in opposition proceedings
VII.C.6. Amendments in opposition proceedings

6.1. Admissibility of amendments

6.1.1 General
For the opposition procedure, the Implementing Regulations initially lacked a clear
corollary to R. 86 EPC (amendment of the European patent application) governing the
proprietor's right to amend his patent. R. 57a EPC, which entered into force on 1.6.1995,
provides that, without prejudice to R. 87 EPC, the description, claims and drawings may
be amended, provided that the amendments are occasioned by grounds for opposition
specified in Art. 100 EPC, even if the respective ground has not been invoked by the
opponent. The new provision also applies to all proceedings pending on that date. The
introduction of R. 57a EPC thus created a lex specialis for amendments during
opposition proceedings.
Before R. 57a EPC entered into force, boards of appeal had allowed amendments only
where occasioned by a ground for opposition actually relied upon by the opponent.
R. 57a EPC has extended the possibilities of amending the patent. Under this Rule, any
amendments made in opposition proceedings must be occasioned by the grounds for
opposition specified in Art. 100 EPC. That is to say, amendments can be allowed only if
they are required in order to meet a ground for opposition. It is not necessary, however,
for the ground for opposition in question actually to be invoked by the opponent. For
example, in opposition proceedings admissibly brought on the grounds of non-
patentability, the patent proprietor can also submit amendments to remove added
subject-matter (Guidelines D-IV, 5.3 - June 2005 version). In opposition proceedings, the
patent proprietor may likewise file one or more alternative sets of claims on which the
opposition division may base a decision to maintain the patent in amended form, listing
those claims in order of preference (EPO Legal advice No. 15/05 (Rev.2), OJ 2005, 357).
Prior to the introduction of R. 57a EPC, amendments in opposition proceedings
proposed only in view of the existence of national prior rights were not allowable
(T 550/88, OJ 1992, 117). Pursuant to the new provision, amendments occasioned by
national prior rights - which are not included in the grounds for opposition specified in
Art. 100 EPC - are also admissible during opposition proceedings. The reference to
R. 87 EPC, which as a general provision of the EPC also applies to opposition
proceedings, makes this absolutely clear.
This was also confirmed by the board in T 15/01 (OJ 2006, 153). In that case, the
appellant had justified the filing of separate claims for Spain and Greece on the grounds
that a number of claims as granted might be ineffective in Spain and Greece, since the
reservations made by both contracting states under Art. 167(2)(a) EPC were still in force
on the date of filing of the application. The board held that, although the EPC did not
contain an explicit provision for the corresponding situation where an applicant or
proprietor wished to take into account the reservation made by an EPC contracting state
under Art. 167(2)(a) EPC, it had been the established practice of the EPO from the very

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beginning to accept the filing of separate sets of claims for such contracting states. This
practice had also been confirmed by the Enlarged Board of Appeal in G 7/93
(OJ 1994, 775), in which the Enlarged Board of Appeal regarded such situations as an
exceptional case in which amendments might be appropriate at a very late stage of the
examination procedure. The technical board further made clear that the general purpose
of R. 57a EPC was to allow amendments only where they were made to overcome an
objection against the validity of the European patent. It followed from the reference to
R. 87 EPC that, within the framework of the centralised opposition procedure before the
EPO, amendments were also to be allowed where the patentee intended to overcome a
possible ground of invalidity which only existed in respect of a particular contracting
state. Thus, R. 57a EPC was not infringed by the formulation of a separate set of claims
for a contracting state in which, due to a reservation made under Art. 167(2)(a) EPC,
certain product claims as granted would be considered invalid or ineffective.
The introduction of R. 57a EPC has not affected other legal aspects set out by the
boards of appeal in previous decisions.
6.1.2 Filing date of amendments
R. 57a EPC addresses the purely substantive aspects of the proprietor's entitlement to
amend his patent, and does not specify the point in time up to which amendment is
allowed; here existing practice remains unchanged. This restriction of the right to amend
is in line with the object and purpose of opposition proceedings, and does away with the
need for a discretionary provision like R. 86(3) EPC (see Notice from the EPO dated
1.6.1995 concerning amendment of the EPC, the Implementing Regulations and the
Rules relating to Fees, OJ 1995, 409).
As already mentioned, the boards of appeal have derived in particular from R. 57(1) EPC
the principle that the proprietor has no right to have amendments admitted in any stage
of opposition proceedings. At the discretion of the opposition division or the board of
appeal, amendments can be refused if they are neither appropriate nor necessary. In
particular, late amendments can be refused if they are not a fair attempt to overcome an
objection made. In general, the question whether an amendment is appropriate can only
be answered on the basis of its content, ie after it has actually been submitted. To refuse
any further amendment is only appropriate if it is evident after various unsuccessful
amendments that the proprietor is not seriously trying to overcome the objections but is
only delaying the proceedings (T 132/92).
Claims filed late (ie just before or at the hearing) are subject to the same principles in
opposition proceedings as in appeal proceedings. In T 648/96 the amendments
requested in oral proceedings before the opposition division were simply a response to
arguments put forward. The board said EPO deciding instances have a discretion to
consider documents (including claims) filed in particular during oral proceedings, if they
respond to the instance's or the opponent's objections, or are clearly grantable.
Undesirable delays in the proceedings should however be avoided.
In T 382/97 the appellant (patentee) came up with three auxiliary requests only at the
beginning of oral proceedings, ie almost at the last moment. The appellant tried to justify
disregarding the time limit set by the opposition division under R. 71a EPC by citing
R. 57a EPC which, it asserted, "was created as a lex specialis for amendments during
opposition proceedings" and did not "specify the point in time up to which the
amendment is allowed". Indeed, the board agreed that R. 57a EPC explicitly established

570
 VII.C.6. Amendments in opposition proceedings

the patent owner's right to amend its patent according to the criteria laid down in that
rule. However, the board could not accept the appellant's argument that the absence of a
time limit in R. 57a EPC entitled a patent proprietor to submit amendments to its patent
at any time, ie also during oral proceedings, without good reason. In the board's
judgment, R. 57a and 71a EPC together governed the procedural preconditions for
amendments to a patent by its proprietor before the opposition division, which
amendments of course had to comply with Art. 123(2) and (3) EPC: R. 57a EPC created
the legal basis for amendment, and R. 71a EPC governed the deadline for doing so. The
board emphasised in this connection that amendments not complying with a time limit
set under R. 71a EPC might nevertheless be admissible if there were good reasons for
their late submission. Finally, the board noted that the patent owner's right to amend its
patent under R. 57a EPC did not equate to an automatic right to file additional auxiliary
requests. Any amendment had to be carried out in the most expedient manner, which
had to be established by the opposition division, taking into due account the interests of
all parties.
In T 463/95 the opposition division refused the main request to maintain the European
patent in amended form, for the reason that claim 29 had been submitted only one week
prior to the oral proceedings and was not clearly allowable because the subject-matter of
claim 29 did not involve an inventive step vis-à-vis the prior art. The board noted that the
opposition division exercised a discretionary power in relation to requests for amendment
in oppositions before it, and stated that consideration of a new or amended independent
claim could reasonably be expected when such a new or amended claim resulted from a
combination of features taken from granted claims which had been specifically opposed,
since the opponents should already be familiar with the subject-matter. The board further
noted that the appellant (patent proprietor) had indicated that he had become aware of a
possible infringement only at a late stage and that he had to defend his legal interest
within the scope of granted claims. The board concluded that under these circumstances
the opposition division should have asked the parties to comment on claim 29. Only if
there was a substantial difference in the subject-matter of claim 29 could it have been
rejected as inadmissible for not being clearly allowable. In the present case, however,
the patentee was acting within the normal framework to salvage as much as possible
after granted claim 1 had fallen.
6.1.3 Filing additional dependent and independent claims
The principles for dealing with amendments to opposed patents developed by the boards
of appeal also apply to the filing of additional dependent or independent claims in
opposition or subsequent appeal proceedings.
As already set out in T 829/93 and T 317/90, the addition of a dependent claim leaves
unimpaired the scope of the independent claim to which such dependent claim refers. It
neither limits nor amends the subject-matter claimed in the corresponding independent
claim. The addition of a dependent claim is therefore no response at all to an objection
against the patentability of the subject-matter claimed. The fact that dependent claims
may constitute valuable fall-back positions should the corresponding independent claim
subsequently be found unallowable does not justify their addition in opposition
proceedings to a remaining broader independent claim.
In a number of recent decisions it was pointed out that the legal situation with regard to
the addition of dependent or independent claims in opposition proceedings had not been

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changed by the introduction of R. 57a EPC. For in the opposition procedure an

examination of the validity of a patent had to be made on the basis of the objections
raised under Art. 100 EPC. Opposition proceedings were not an opportunity for the
patentee to propose amendments to the text of a patent for purposes not clearly related
to meeting a ground for opposition raised under Art. 100 EPC. In particular, the addition
of new dependent claims having no counterpart in the granted patent was neither
appropriate nor necessary to meet a ground for opposition and was therefore not
admissible (see eg T 794/94 and T 674/96).
In T 24/96 the board pointed out that the addition of a new dependent claim 7 of the main
request was an unnecessary, inappropriate and inadmissible amendment, even under
R. 57a EPC, since the new dependent claim could not have any influence on the
characteristics of the invention as set out in independent claim 1 on which new claim 7
depended.
The principles of this case law also apply to the filing of additional independent claims
in opposition proceedings, as the following decisions demonstrate.
In T 610/95 the appellant failed to provide a reasoned argument to show that the filing of
new independent claim 5 was indeed necessitated by a ground for opposition. The board
referred to G 1/84 (OJ 1985, 299), which made it clear that the opposition procedure was
not designed to be, and was not to be misused as, an extension of the examination
procedure. It would, in the board's opinion, contravene the principles set out in G 1/84 if
it was considered admissible to amend the text of a granted patent during opposition
proceedings, while maintaining the sole independent claim under opposition, by
incorporating an additional new independent claim which as such had no counterpart in
the granted patent and, accordingly, was neither the subject of substantive examination
in the examination procedure nor open to opposition owing to its non-existence in the
granted patent.
In T 223/97 the board confirmed that the addition during opposition proceedings of one
or more independent claims while maintaining the main claim in question could not be
considered to be a restriction to the main claim in order to meet the ground for opposition
raised against it. Thus the mere addition of new claims to the claims as granted was
inadmissible because such amendments could not be said to meet a ground for
opposition. These new claims were thus not admissible, even if they otherwise satisfied
the dual conditions of Art. 123(2) and (3) EPC. However, the replacement of one
independent claim as granted by several, for example two, independent claims each
directed to a respective specific embodiment covered by the independent claim as
granted was admissible if the replacement was occasioned by grounds for opposition
specified in Art. 100 EPC.
Referring to the above decision, the board held in T 181/02 that only in exceptional
cases could the replacement of a granted single independent claim by two or more
independent claims be occasioned by a ground for opposition, for example in cases
where a granted independent claim covered two specific embodiments. Such a situation
might also arise if two granted dependent claims (eg claims 2 and 3) were linked in
parallel to a single independent claim (claim 1). Then the filing of two independent claims
(eg including the features of claims 1 and 2, and 1 and 3) might be possible (moreover
thereby decreasing the number of claims).

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However, in the case at issue, the board saw no reason why it should require two
independent claims to overcome an objection based on Art. 100 EPC. It was normally
sufficient for the patentee to remain with a single independent claim solely by modifying
the granted claim once, ie by adding one or more features to the granted single
independent claim. Adding a second independent claim was in normal cases not needed
to avoid revocation of the patent on the basis of the unmodified or modified granted
single independent claim, and furthermore did not do anything to help avoid revocation
(see also T 610/95).
In T 937/00, the board made some observations concerning the filing of multiple
independent claims in response to an opposition, the admissibility of subsequent
amendments and the conduct of the opposition procedure in such cases. In response to
the opposition, the patentee had filed two separate sets of claims, these sets
respectively comprising 18 and 21 independent claims.
The board referred to G 1/91 (OJ 1992, 253), according to which the unity of invention
did not come under the requirements which a European patent must meet. The board
saw also no objection of principle to a patentee amending his claims in response to an
opposition so that they comprised several independent claims directed to different
subject-matters originally covered by a single generic claim of a given category, when
such a claim could not be maintained.
However, the board noted in the case at issue that the filing of multiple independent
claims directed to different inventions might unduly complicate and delay the opposition
procedure, in particular when this filing was followed by a series of further amendments.
An efficient and possibly complete examination of the opposition might for instance
become virtually impossible if subsequent amendments were proposed in a piecemeal
way rather than addressing all the objections raised by the other party as soon as these
objections arose, if they manifestly gave rise to new issues, in particular if they
introduced new claims which did not result from any combination of the claims in the
granted version or if they introduced features for which there was no unambiguous
support in the application documents as originally filed. In the present case, taking into
consideration the exceptionally high number of independent claims introduced at the
opposition stage and also the fact that the granted patent was based on no fewer than
fourteen priority applications and that the subject-matter of the only two generic
independent claims as granted lacked novelty in view of one of the appellant’s own
earlier patent applications, the opposition division's refusal to admit the subsequent
amendments did not appear to be unduly unfair in the circumstances.
6.1.4 Amendments intended to remedy a lack of clarity
Objections to the clarity of claims or any consequent requests for amendment are only
relevant to opposition proceedings as far as they can influence the decisions on issues
under Art. 100 EPC or arise in relation to the subject-matter to be amended as a
consequence of such issues. This was the view taken by the board in T 127/85
(OJ 1989, 271), to which it added that it would be an abuse of opposition proceedings if
the patent proprietor were allowed merely to tidy up and improve his disclosure by
amendments not specifically necessitated by the grounds advanced for the opposition,
even if those amendments were to comply with Art. 123 EPC. This applied equally to
amendments during opposition proceedings intended merely to clarify ambiguities in the
claims or description.

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The double caveat in R. 58(2) EPC represented by the words "where appropriate" and
"where necessary" emphasises the need for caution in inviting the patent proprietor to
make amendments during opposition proceedings. In other words, he should be invited
to do so only when it is "appropriate" and the amendments should be limited to what is
"necessary" in the light of the grounds submitted for the opposition. Limited consideration
of amendments is intended to help expedite and streamline opposition proceedings
(T 406/86, OJ 1989, 302; see also T 24/88, T 324/89 and T 50/90).
In this connection, the board pointed out in T 23/86 (OJ 1987, 316) that Art. 84 EPC is an
EPC requirement relating to applications that under Art. 102(3) EPC must be taken into
account in opposition proceedings whenever the patent proprietor made any
amendments. However, Art. 84 EPC was not itself a ground for opposition under
Art. 100 EPC - an opposition could not be based on the assertion that a patent claim was
unclear under Art. 84 EPC. In T 792/95, another board confirmed the principle that, in
opposition proceedings and subsequent appeal proceedings, only such amendments
may be made as are necessary in the light of the grounds for opposition under
Art. 100 EPC; it referred in this connection to G 1/84 (OJ 1985, 299), according to which
the opposition procedure is not designed to be, and is not to be misused as, an
extension (or continuation) of the examination procedure.
In T 113/86 the board of appeal followed this principle, ruling against the admissibility of
amendments proposed by the patent proprietor which were not necessary to take
account of the grounds for opposition invoked by the opponent under Art. 100 EPC or by
the board under Art. 114 EPC, if there were the slightest possibility of a different
interpretation being given to the patent specification before and after the amendments.
The protection conferred by the patent would actually be extended if, as a result of
amendments to clarify the granted claims, the claims could be more widely construed
than a court would have construed them by the application of Art. 69 EPC. However, the
board was of the opinion that the removal of an inconsistency between a claim and the
description should be allowed if the inconsistency arose from an error, provided that the
error was so obvious to a skilled person in the light of the patent specification as a whole
that an interested third party could have anticipated the extent of protection conferred by
the amended claim. In these circumstances the request for the correction of an error did
not represent an abuse of opposition proceedings. Moreover, the removal of the
discrepancy was in the interests of legal certainty.
However, where a deficiency results from a discrepancy between the description and the
claim, lack of clarity in the invention's disclosure can be objected to because that
requirement comes under Art. 83 EPC, not Art. 84 EPC, and may therefore be taken into
consideration in opposition proceedings (T 175/86).
In T 565/89 the board held that in opposition appeal proceedings the clarity of claims
was irrelevant under Art. 102(1) EPC in conjunction with R. 66(1) EPC, since this was
not a ground for opposition under Art. 100 EPC; it therefore refused to entertain a clarity
objection to the claim in question. However, deciding on the claim's patentability meant
looking closely at its content and - under Art. 69(1) EPC - using the description and
drawings to interpret it. This principle was followed inter alia by T 89/89 and T 62/88. In
T 16/87 (OJ 1992, 212) - where the patentee and the opponent disagreed on the
interpretation of a term in a claim - the board also made it clear that under
Art. 69(1) EPC, stipulating that the description and any drawings were to be used to
interpret the claims also applied to opposition proceedings when the meaning of a claim

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had to be objectively determined to assess the novelty and inventiveness of its subject-
matter.
6.2. Substantive examination in case of amendments
In all cases in which amendments are requested by a patentee which are compatible
with Art. 123 EPC, Art. 102(3) EPC confers on the opposition division and the board of
appeal jurisdiction, and thus the power, to decide on the amended patent in the light of
the requirements of the EPC as a whole (T 472/88). This jurisdiction is thus wider than
that conferred by Art. 102(1) and (2) EPC, which expressly limits jurisdiction to the
grounds of opposition mentioned in Art. 100 EPC. When substantive amendments are
made to a patent, both instances have the power to deal with grounds and issues arising
from those amendments even if they were not (and could not be) specifically raised by
an opponent pursuant to R. 55(c) EPC (T 227/88, OJ 1990, 292; see G 9/91,
OJ 1993, 408; T 472/88 and T 922/94).
Following the decision in T 227/88, the board in T 301/87 (OJ 1990, 335) added that
when amendments were made to a patent during an opposition, Art. 102(3) EPC
required them to be examined to ascertain if the EPC, including Art. 84 EPC, was
contravened as a result. However, Art. 102(3) EPC did not allow objections to be based
upon Art. 84 EPC if they did not arise out of the amendments made. It would be
somewhat absurd if making a minor amendment were to enable objections outside
Art. 100 EPC to be raised which had no connection with the amendment itself.
The board also concluded in T 367/96 that Art. 102(3) EPC does not allow objections of
lack of support by the description of an amended main claim if said claim results in
substance from the combination of claims of the patent as granted in accordance with
the cross-references therein and thus concerns a specific object which as such was
already claimed in the patent as granted.
In T 853/02 the patent at issue concerned a milking system for mammals. The
respondent argued that the amended disclaimer, in so far as it attempted to exclude two-
way valves, was not supported by the description of the patent in so far as this passage
contemplated using a two-way valve as a variable pressure source. The board, however,
considered that this objection did not directly relate to the amended disclaimer because it
could have also been raised for the unamended disclaimer which also referred to the
terms "without using a two-way valve pulsator". In other words, this objection did not
concern the amendments that led to claim 1 of the main request but claim 1 of the patent
as granted. Therefore, this objection represented an attempt to raise an objection under
Art. 84 EPC to a feature already present in claim 1 of the patent as granted. Since
Art. 84 EPC was not a ground of opposition, the board considered this objection as being
inadmissible.
In T 648/96 the board found that the opposition division's failure, in the contested
decision, to address the substance of the opponent's "lack of clarity" objections to the
amended documents was a substantial procedural violation; under Art. 102(3) EPC, it
should have examined of its own motion whether the amendments complied with
Art. 84 EPC and Art. 123(2) and (3) EPC (see also T 740/94).

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6.3. Additional search

In T 503/96 the board considered the criteria for the need for an additional search in
relation to restrictive amendments. It referred to the Guidelines B-III, 3.5 (June 2005
version), which state, "In principle, and in so far as possible and reasonable, the search
should cover the entire subject-matter to which the claims are directed or to which they
might reasonably be expected to be directed after they have been amended...”. The
board stated that whether or not to commission an additional search in a particular case
was a matter for the administrative discretion of the opposition division, but if an
inappropriate criterion was invoked when exercising this discretion, doubt would
inevitably be raised as to whether the discretion was reasonably exercised.
Since, in the case of amendment of the claims in the course of opposition or appeal
proceedings, such amendments are to be fully examined as to their compatibility with the
requirements of the EPC (G 9/91, OJ 1993, 408, point 19 of the Reasons), it was not
inappropriate for an opponent to make observations on a possible need for an additional
search to enable this full examination to be carried out (Guidelines D-VI, 5 - June 2005
version). The judgment on whether an additional search was necessary and the
obligation to perform this search if it was judged to be necessary were administrative
matters for the EPO.
7. Decisions of the opposition division
VII.C.7. Decisions of the opposition division

7.1. Revocation of a European patent by way of a decision

In T 26/88 (OJ 1991, 30) the board of appeal had to rule on an appeal against a
formalities officer's decision to revoke a patent under Art. 102(4) EPC because the
printing fee had been paid late. The board considered whether the revocation should
have been issued in the form of a decision at all, concluding that the loss of rights under
Art. 102(4) EPC had occurred by operation of law ("automatically") and that the
formalities officer should have issued a communication concerning loss of rights in
accordance with R. 69(1) EPC. In revocation under Art. 102(4) and (5) EPC it saw an
analogous situation to the grant procedure. The case law of other boards revoking
patents by way of a decision had not considered the alternative of automatic loss of
rights.
The President of the EPO took the matter up under Art. 112(1)(b) EPC. In G 1/90
(OJ 1991, 275) the Enlarged Board of Appeal stated that the revocation of a patent
under Art. 102(4) and (5) EPC required a decision. It drew a comparison between the
various procedural stages (grant, opposition and revocation, in connection with the future
Community patent) and concluded that the wording of the regulations clearly indicated in
each case whether a decision or a communication had to be issued concerning the loss
of rights under R. 69(1) EPC. The Enlarged Board also considered the issue of legal
certainty and, in the light of the "travaux préparatoires" relating to R. 69 EPC, discussed
the question of when a loss of rights noted in accordance with that provision became
non-appealable. It found that the procedure of pronouncing revocation by way of a
decision led neither to legal uncertainty nor to misunderstandings. Whereas, in the grant
procedure, there was a clear basis for the deemed withdrawal of an application, no such
possibility existed with oppositions because the patent proprietor was unable to abandon
his granted patent by making a declaration to the EPO. The Enlarged Board confirmed
that it was up to the legislator to decide when to issue a communication pursuant to

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R. 69(1) EPC, which is followed on request by a decision (R. 69(2) EPC), and when a
decision was not preceded by such a communication. If the EPC had laid down different
provisions for grant and opposition, that did not constitute an inherent contradiction.
7.2. Interlocutory decisions
7.2.1 General
In T 376/90 (OJ 1994, 906) the first question to be decided was whether the opposition
was admissible, and whether it was correct for the preliminary decision on this point to
be made appealable only together with the final decision. As to the latter point, the
opposition division decided on the admissibility in an interlocutory decision within the
meaning of Art. 106(3) EPC, ie a decision which did not terminate the proceedings as
regards one of the parties. In the board's view, according to the clear language of that
provision, such an interlocutory decision could only be appealed together with the final
decision, unless the decision allowed separate appeal. Whether to allow a separate
appeal was within the discretion of the opposition division. The board held that this
discretion under Art. 106(3) EPC was properly exercised by the opposition division with a
view to enabling a decision on the substantive issues to be reached as soon as possible.
7.2.2 Maintenance of the European patent as amended
The long-established practice of the EPO of delivering interlocutory decisions subject to
appeal when a patent is maintained as amended was described in detail by the Enlarged
Board of Appeal in G 1/88 (OJ 1989, 189).
According to Art. 102(1) to (3) EPC a decision on an opposition to a European patent
can involve revocation of the patent, rejection of the opposition or maintenance of the
patent as amended, the latter requiring the publication of a new European patent
specification. Under Art. 102(3)(b) EPC a prerequisite for maintenance of the patent as
amended is that the printing fee be paid.
With these regulations in mind, the EPO very early on adopted the device of an
interlocutory decision, for which there is no express provision, in order to establish in the
first place the text of the amended specification. Only after this interlocutory decision has
come into force are the fee for printing and a translation of the claims in the other official
languages requested pursuant to R. 58(5) EPC. Once these requirements have been
fulfilled what is then a non-appealable final decision on maintenance of the patent as
amended is given and the new patent specification is published.
A decision to maintain the European patent - even an interlocutory decision - can of
course only be given if there is a text "submitted or agreed" by the patent proprietor
pursuant to Art. 113(2) EPC. In that connection Art. 102(3)(a) EPC states that it must be
established, "in accordance with the provisions of the Implementing Regulations", that
the patent proprietor approves the text. It has accordingly been standard practice for the
EPO's opposition divisions always to proceed in accordance with the relevant
R. 58(4) EPC, even where the text has already been "submitted or agreed" by the patent
proprietor during the proceedings and rejected by the opponent.
Before G 1/88 was issued, a board held in T 390/86 (OJ 1989, 30) that Art. 102(3) EPC
and R. 58(4) EPC did not preclude that an opposition division could, in the course of
opposition proceedings, make a (final) interlocutory decision in respect of a substantive
issue raised by the opposition, before the sending of any R. 58(4) EPC communication.

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What was precluded by R. 58(4) EPC was that the opposition division should "decide on
the maintenance of the European patent" in an amended form without first informing the
parties of the amended text in which it was intended to maintain the patent and inviting
their observations. However, neither Art. 102(3) EPC nor R. 58(4) EPC precluded an
opposition division from giving decisions on substantive issues in the opposition
before sending a communication under R. 58(4) EPC, and before "deciding to maintain
the patent in amended form". For example, an opposition division could during the
course of an opposition make a (final) interlocutory decision (either orally or in writing)
that a particular proposed amendment contravened Art. 123 EPC. Similarly, in the
board's view, an opposition division could make a (final) interlocutory decision during the
course of an opposition that the main claim, for example, of the opposed patent could not
be maintained. Such a substantive interlocutory decision was not a decision actually
to maintain the patent in amended form, but was preliminary to such a decision. The
taking of such substantive interlocutory decisions during the course of opposition
proceedings was desirable both in order to move the proceedings forward towards a
conclusion, and, in appropriate cases as envisaged in Art. 106(3) EPC, to allow a party
to appeal such an interlocutory decision before the opposition proceedings were
terminated. It was further held that in a case where a final substantive decision had been
given, an opposition division had no power thereafter to continue examination of the
opposition in relation to the issues which were the subject of that decision, either under
R. 58(5) EPC or at all. Further submissions from the parties relating to such issues were
inadmissible.
In T 89/90 (OJ 1992, 456) the opponents had lodged objections to an interlocutory
decision which maintained the patent as amended. The board observed that the EPC
contained no general rules as to when an interlocutory decision could or should be
delivered. The relevant department therefore had to use its discretion in judging whether
an interlocutory decision was appropriate in an individual case or whether the matter
could only be settled in a decision terminating proceedings. This involved weighing up
various considerations such as whether an interlocutory decision would accelerate or
simplify the proceedings as a whole (clarifying a disputed question of priority, for
example, could be of key importance for the form and length of the subsequent
proceedings) and clearly also included the issue of costs. In the board's view, it was
clear that the established practice of delivering appealable interlocutory decisions under
Art. 106(3) EPC where a patent was maintained as amended was based on the weighing
up of such cost aspects. The board concluded that this practice was both formally and
substantively acceptable.
8. Apportionment of costs
VII.C.8. Apportionment of costs

8.1. Principle that each party must bear its own costs
Under Art. 104(1) EPC, each party to opposition proceedings must, as a rule, meet the
costs it has incurred. However, the opposition division or board of appeal may, for
reasons of equity, order a different apportionment of the costs incurred during taking of
evidence or in oral proceedings.
The phrase "taking of evidence" used in Art. 104(1) EPC refers generally to the receiving
of evidence by an opposition division or a board of appeal (T 117/86, OJ 1989, 401;
T 101/87, T 416/87, T 323/89, OJ 1992, 169; T 596/89 and T 719/93). The boards' case
law refers to Art. 117(1) EPC, according to which "taking of evidence" covers the giving

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or obtaining of evidence generally in proceedings before departments of the EPO,

whatever the form of such evidence, and includes, in particular, the production of
documents and sworn statements in writing.
8.2. Equity of a different apportionment of costs – case groups
There is no definition of equity in the EPC. The boards of appeal therefore had to
develop the criteria determining whether costs were to be apportioned on a case-by-case
basis. In a number of decisions it has generally been stated that apportionment of costs
is justified if the conduct of one party is not in keeping with the care required, that is if
costs arise from culpable actions of an irresponsible or even malicious nature (see, for
example, T 765/89, T 26/92 and T 432/92). However, according to T 717/95 no abuse
has taken place if a party to the proceedings misinterpreted the content of a citation
when comparing it with the subject-matter claimed in the disputed patent.
A thorough examination of the decisions of the boards of appeal reveals that requests for
a different apportionment of costs are often filed in the following scenarios:
(a) late submission of documents and/or requests (see 8.2.1);
(b) request for oral proceedings withdrawn or postponement requested (see 8.2.2);
(c) appeal or opposition withdrawn (see 8.2.3);
(d) failure of a party to appear at the oral proceedings (see 8.2.4);
(e) cases of alleged abuse of procedure or abuse of oral proceedings (see 8.2.5).
8.2.1 Late submission of documents and/or requests
As shown above (see Chapter VII.C.5.2.2(b)), fresh grounds for opposition submitted in
appeal proceedings may be considered only with the approval of the patentee (G 10/91,
OJ 1993, 420). In T 1002/92 (OJ 1995, 605), however, the board focused on the issue of
the late submission of facts and evidence to substantiate the original grounds for
opposition cited in the proceedings before the opposition division. In interpreting
Art. 114(2) EPC, the board applied the principles laid down in G 10/91 and held that late-
filed facts, evidence and related arguments should only exceptionally be admitted into
the proceedings if, prima facie, there were clear reasons to suspect that such late-filed
material would prejudice the maintenance of the European patent.
Where facts and evidence supporting the opposition are submitted at a late stage in the
proceedings and another party incurs considerably higher costs as a result, a different
apportionment of the costs may be ordered for reasons of equity (see T 10/82,
OJ 1983, 407; T 117/86, OJ 1989, 401; T 101/87, T 326/87, OJ 1992, 522; T 416/87,
OJ 1990, 415; T 323/89, OJ 1992, 169; T 596/89, T 622/89, T 503/90, T 611/90,
OJ 1993, 50; T 755/90, T 110/91, T 161/91, T 705/92, T 867/92, OJ 1995, 126; T 719/93
and T 970/93). The relevant factor in deciding on the costs is whether or not there are
cogent reasons justifying the late submission; it is regarded as irrelevant whether the
material in question has any bearing on the decision on the merits. However, it should be
pointed out that, in several cases, requests for apportionment of costs have been
refused, despite an unjustified delay, because there was no proof that higher costs had
been incurred (see, for example, T 297/86, T 212/88, OJ 1992, 28; T 443/90, T 582/90,
T 267/92, T 306/93, T 486/94 and T 9/95).

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(a) Late submission was unjustified

In T 117/86 (OJ 1989, 401) the appellants had produced, together with their statement of
grounds, two new documents and an affidavit in support of the contention that the
opposed patent lacked an inventive step. The board concluded that the fact that new
documents were presented after the nine-month period for filing opposition could itself
give rise to additional expenditure for the other party, and that the costs should be
apportioned differently for reasons of equity.
In T 83/93 the board ruled that submitting as evidence five new documents 40 months
after the end of the opposition period (without giving reasons) and reviving an objection
under Art. 100(c) EPC on the basis of new facts and evidence 51 months after the end of
the opposition period was an abuse of appeal proceedings. It was therefore equitable to
apportion the costs in the respondent's favour; as a result of the appellant's
unsubstantiated late filing of evidence, the respondent had incurred higher costs than if
all the evidence had been submitted within the nine-month opposition period, in which
case all the items (prior art documents and comparison of the original documents with
valid documents) could have been dealt with in a single operation.
In T 867/92 (OJ 1995, 126) the claims had been amended during the opposition
proceedings. Eighteen months after the claims had been amended the appellant
(opponent) cited in the statement of grounds of appeal a new prior art document. The
board held that the EPC does not impose a time limit for citing new prior art in response
to an amendment of the claims. However, an opponent who cites new prior art with a
considerable delay with no special reason justifying the delay runs the risk of having to
bear the proprietor's costs incurred in attending oral proceedings which cannot bring the
case to an end because of the new citation. However, as there was no suggestion that
the appellant (opponent) wilfully abused the procedure in the present case, the board
considered that it would be equitable to order the appellant to pay only half those costs.
The fact that the appellant relied in the statement of grounds of appeal on three new
documents exclusively, and for the first time even raised the issue of novelty on the basis
of a document already discussed in the patent in suit, was regarded by another board as
an abuse of the opposition procedure (T 416/87, OJ 1990, 415). By introducing
arguments and documents which bore little relation to those filed in the original
opposition, the appellant had produced virtually a new opposition at the appeal stage.
This could not, by definition, be the purpose of an appeal. The late filing of documents
must have considerably increased the costs incurred by the respondent, compared to
what they would have been if all facts and evidence had been filed within the nine-month
period. Although the respondent clearly envisaged requesting a decision on costs in the
event of oral proceedings only, the abuse of procedure justified the apportionment of
costs incurred during the taking of evidence. As provided in R. 63(1) EPC, such costs
include the remuneration of the representatives of the parties.
In T 514/01, the board found that the late allegation of public prior use during the first
oral proceedings before the opposition division had given rise to additional costs
because second oral proceedings before the opposition division had been needed to
investigate the alleged prior public use. The award of costs was therefore equitable,
which meant that the board could not grant the request made by the appellants
(opponents) that the costs decision ordering them to bear the costs of the first oral
proceedings be set aside.

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In T 931/97, it was only in the appeal proceedings that the opponent had submitted new
evidence, which however the patentee knew about from earlier proceedings before the
German Patent Office. The board held that in such a case - where the patentee knew the
documents and could assess their prospects - a different apportionment of costs was not
justified.
Where a document successfully introduced at a late stage is of such relevance that the
board decides to remit the case to the first instance in order to allow the patentee to have
his case decided by two instances of jurisdiction, then in the absence of any convincing
explanation for the late introduction of that document, the costs between the parties
should be apportioned in such a way that the late-filing party should bear all the
additional costs caused by his tardiness. Costs should only be shared between the
parties if there exist strong mitigating circumstances for the late filing of facts, evidence
or other matter, for example, where the document introduced was obscure and therefore
difficult to get hold of (T 326/87, OJ 1992, 522 and T 611/90, OJ 1993, 50).
T 336/86 involved a special case. The appellants submitted a prior patent belonging to
the respondents for the first time in the appeal proceedings, which destroyed the novelty
of the patent in suit. The respondents requested an apportionment of costs as the oral
proceedings would not have been necessary had the patent been presented earlier. The
board agreed that the late submission was not justified and that higher costs had been
incurred as a result. However, as the respondents either had - or should have - been
aware of the existence of their own patent, it took the view that an apportionment of
costs was not justified.
(b) Late submission was unjustified, but not disadvantageous
In a number of cases the boards have refused a different apportionment of costs despite
unjustified late submission because they were of the opinion that the belated introduction
of new documents was not disadvantageous to the other party.
In T 330/88 the respondents filed a new document two days prior to the oral
proceedings. The board took the view that the late filing was unjustified but that an
apportionment of costs would not be equitable as the appellants had had sufficient time
to deal with the document, especially since the decision was not taken until four months
after the oral proceedings and following the opportunity to present comments.
In T 525/88, the late filing was unjustified, but the request for apportionment of costs was
rejected because the documents were of no relevance and did not affect the decision.
The same applied in T 534/89 (OJ 1994, 464) and T 876/90.
In T 882/91, the board did not look into whether the unjustified late submission had led to
higher costs because it was of the opinion that the other party had not had to spend very
much additional time and energy on the documents which had been submitted late and
that there was therefore no reason to apportion costs (see the decisions on similar cases
in T 737/89, T 685/91, T 556/90, T 231/90 and T 875/91).
In T 28/91 three documents which had already been submitted to the opposition division
were re-submitted at a later stage in the appeal proceedings. The board ruled that the
late submission was not disadvantageous as no new arguments had been introduced,
and therefore no additional work had been necessary.

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In T 938/91 an alleged prior public use was filed for the first time, with drawings
pertaining thereto, together with the statement of grounds for appeal. The patentees had
requested a different apportionment of costs on the grounds that the complicated
drawings required considerable extra effort. The board rejected this request, taking the
view that the additional effort involved in studying the drawings would have been
necessary even if they had been submitted in good time. No additional costs had
therefore been incurred as a result of the late submission.
In T 1182/01 the board's decision to remit the case immediately to the department of first
instance meant that the late filing of documents by the respondent had not incurred any
undue cost burden in relation to the present appeal. Accordingly the board did not see
any reason of equity to order a different apportionment of costs in relation to these
proceedings. The question of costs in subsequent proceedings before the opposition
division and possible further appeal proceedings was left for consideration by the
opposition division and board of appeal concerned.
(c) Late submission was justified
In principle, costs are not apportioned differently if the late submission of facts and
evidence appears justified. The boards have assumed in particular that belated
submission is justified or that no abuse of procedure has taken place if new documents
are filed for the first time at a later stage in the proceedings as a reaction to
communications from the board, comments from the other party or amendments of the
patent or decisions of the department of first instance which make such documents
necessary in the first place (see T 582/88, T 638/89, T 765/89, T 472/90, T 556/90,
T 334/91, T 875/91, T 81/92 and T 585/95).
In T 712/94 the board allowed the appellant (opponent) to introduce facts and evidence
on alleged prior use at the appeal stage, whilst refusing the respondent's (patentee's)
request for apportionment of costs. The patentee had been made aware of the prior-use
documents during negotiations conducted well before the first-instance decision was
taken. Thus they had not taken him by surprise when later introduced into the appeal
proceedings following failure of the negotiations. The board could therefore see no
reasons of equity requiring a different apportionment of costs.
Similarly, in T 29/96 the request for a different apportionment of costs was refused. A
new document which was fairly simple and straightforward in content had been filed
together with the statement of grounds of appeal. The board ruled that this was the
earliest possible moment that the document could have been submitted. In any event,
the introduction of the new document could not be regarded as having given rise to a
new opposition; it had not introduced new closest prior art, but was merely a new
secondary information source. In the present case, it was logical for the appellant, as the
losing party in the opposition proceedings, to introduce the document into the appeal
proceedings in an effort to improve his position by filling a gap referred to in the
impugned decision.
In T 507/03 the opposition division had regarded the claimed invention to be patentable
over the documents cited by the opponent. As a reaction to the reasons given in the
impugned decision, the opponent (appellant) filed a new set of documents in the appeal
proceedings, thus after the nine-month period for filing opposition. Refusing the request
for a different apportionment of costs due to the late filing, the board argued that,
according to Art. 108 EPC and R. 65 EPC, a statement of grounds of appeal had to

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identify the extent to which amendment or cancellation of the decision was requested.
This, however, did not forbid a losing opponent to file new pieces of prior art if it was felt
that they could counter the reasons given in the appealed decision. Further, the new
documents were all easily understandable and had not caused an unreasonable amount
of extra work such as to justify departure from the normal rule that each party meets its
own costs pursuant to Art. 104 EPC.
In T 554/01, the applicant submitted a number of documents following the negative
decision taken by the opposition division. The board held that the mere fact that certain
documents had been submitted at a late stage did not justify a finding that there had
been an abuse on the part of the applicant, especially where they had been submitted as
a result of a legitimate desire to supplement the line of argument which had been
unsuccessful before the department of first instance. Moreover, the respondents had not
shown that they had incurred additional costs as a result of the documents' introduction
into the proceedings.
In T 1171/97 the board rejected a request for apportionment of costs because it was
satisfied that the new documents which had become known to the appellants
(opponents) in the course of another search had not been filed in order to obstruct the
proceedings, but because they contained aspects which the opposition division said it
had not found in the previously available references.
In the following cases, the boards decided to order a different apportionment of costs,
even though the late submission of new facts and evidence was justified:
In T 847/93, the board admitted a statement of grounds of appeal documenting new prior
art. Mitigating circumstances for the late filing of new facts and evidence were put
forward by the appellants and were held to be credible by the board. On the other hand,
the board was also of the opinion that it was credible that the costs incurred by the
respondents were higher as a result of the introduction of an entirely fresh case than if
the facts and evidence had not been filed at a late stage. It therefore decided to order an
apportionment of costs under Art. 104(1) EPC according to which the appellant had to
pay the respondents 50% of the costs incurred by the respondents - after remittal to the
first - in respect of the subsequent oral proceedings and the taking of evidence as well as
in any subsequent appeal. In T 1137/97, a belatedly submitted document was likewise
admitted into the proceedings and a different apportionment of costs was ordered. In
determining the costs, the board itself, exercising its discretion under Article 111(1) EPC,
awarded a fixed sum of EUR 2 500 to avoid the need for an exact investigation of the
amount, which would have been more burdensome for the parties.
In T 937/00, the board found that all the requests presented by the appellant in writing in
advance of the oral proceedings were clearly inadmissible and their filing could hardly be
considered appropriate in the circumstances of the case, in which the appellant had
chosen to file an exceptionally high number of independent claims in response to the
notice of opposition: he had presented amended independent claims 2, 5, 29 and 69 at
the appeal stage only, having filed no fewer than six different versions of the claims
during the opposition procedure, and independent claims 5 and 58 had in effect
countered the limitations brought to independent claims 2 and 29. At the very end of the
oral proceedings, he had even filed a third auxiliary request according to which all the
claims which had been contested in the appeal procedure were simply abandoned. In
these circumstances, the board felt compelled to admit the belated auxiliary request, as

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had the board rejected the appellant’s third auxiliary request, the appeal would have
been dismissed and the revocation of the patent would have become final, and also to
remit the case to the department of first instance, none of the remaining claims having
ever been considered by the opposition division. However, the board deemed it
appropriate for reasons of equity to order an apportionment of the costs of the oral
proceedings such that the appellant bore 50% of the costs incurred by the respondent in
travel expenses and remuneration for his representative for the purpose of attending the
oral proceedings.
8.2.2 Request for oral proceedings withdrawn or postponement requested
Nothing in the EPC prevents a party from withdrawing a request for oral proceedings at
any stage of the procedure. The withdrawal of such a request is not culpable conduct as
such and cannot be a factor in assessing whether reasons of equity exist in accordance
with Art. 104(1) EPC (T 91/99).
In T 154/90 (OJ 1993, 505) the opponents had initially insisted on oral proceedings,
although the opposition division did not consider that they were necessary. However,
eight days before the arranged date the opponents informed the opposition division that
they wished to cancel the oral proceedings. For reasons of internal organisation at the
EPO, the opposition division did not receive this letter until after the date of the oral
proceedings. The board of appeal ruled that eight days was a sufficient period of time for
the oral proceedings to be cancelled, since no evaluation of new facts or arguments was
needed (the case was different in T 10/82, OJ 1983, 407). Since the letter was received
too late for purely internal reasons, the opponents were not at fault. They were not
obliged to bear a part of the costs of the other party. A change of opinion regarding the
necessity of oral proceedings could not be regarded as culpable conduct either.
In T 432/92 postponement of the oral proceedings was requested two days prior to the
agreed date as the father of the respondents' representative had died on the previous
day. The appellants requested a different apportionment of costs because their
representative had already travelled from America to the EPO, thereby incurring
unnecessary costs. They argued that the respondents could have been represented by
someone else from their patent attorney's firm. The board refused the request because
there had been no recognisably wrongful or irresponsible conduct on the part of the other
party. The board was of the opinion in particular that the respondents could not be
expected to be represented by a different patent attorney, who would have had to
prepare two oral proceedings in one day (one for an ongoing parallel case) and to travel
as well.
In T 556/96, the appellant withdrew his request for oral proceedings early in the
afternoon preceding the appointed day. By that time, the opposing party's representative
had already set off. The board ruled that the appellant had withdrawn his request too
late. The fact that the other party had also unconditionally requested oral proceedings
was irrelevant; it too could have withdrawn the request, had it known in time that the
appellant would not be attending. The board therefore ordered the appellant to pay the
costs incurred by the respondent in preparing and attending the oral proceedings.
In T 29/96 the respondent informed the board and appellant, four working days before
the date set for oral proceedings, that it was abandoning the patent and no longer
requesting oral proceedings. However, the declaration abandoning the patent was not
completely unambiguous. The board refused the appellant's request that costs be

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awarded against the respondent; it had been clear that the oral proceedings would
probably be superfluous. Also, the appellant could have contacted the DG 3 Registry to
find out about the course the proceedings would be taking. The board also dismissed the
appellant's further argument that additional costs had been incurred in clarifying the legal
position following abandonment of the patent; these would have arisen anyway, even
without the (cancelled) oral proceedings.
8.2.3 Appeal or opposition withdrawn
In T 85/84 the appellants withdrew the appeal in a telex to the EPO and the respondents'
representative 48 hours before the date of the oral proceedings. The EPO forwarded
this information, together with the decision to cancel the oral proceedings, to the
respondents' representative, a member of its patent department, by telex sent at 4.17
pm. The telex did not reach the patent department until the next day. By this time,
however, the respondents' representative had already departed in order to prepare for
the oral proceedings in Munich. He requested apportionment of costs. Although the
opposition and the appeal had been withdrawn, a decision was given on the
apportionment of costs (see also T 765/89). The board refused to apportion the costs as
the respondents' representative had been informed in good time that the oral
proceedings would not be taking place. Internal delays in forwarding the communication
were not the fault of the appellants. The representative's departure for Munich a day
before the oral proceedings was not warranted by the distance and therefore not
necessary from the point of view of the oral proceedings. The appellants should have
been able to assume that their communication had reached the representative in good
time. There had been no culpable conduct.
In T 614/89 the appellants withdrew the appeal for financial reasons four days before
the date set for oral proceedings. The respondents were notified the same day.
Respondents I filed a request for apportionment of costs on the grounds that they had
already prepared themselves for the oral proceedings and the appellants must have
known long before the date set that the appeal stood no chance of success. The board
took a decision on the request, rejecting it on the grounds that the appeal had been
withdrawn sufficiently promptly that no costs had been incurred for the oral proceedings.
It also ruled that the right to oral proceedings was subject to no restrictions and that the
appellants had acted neither negligently nor with wilful intent (see also T 772/95).
In T 674/03, the opponent withdrew its appeal nine days before the date set for the oral
proceedings. The board held that the exercise of an absolute procedural right did not, in
principle, constitute abuse. There was no evidence that the opponent had at any time
acted in such an improper or negligent manner that a different apportionment of the
costs was justified, especially where the costs for which reimbursement was sought were
such as were usually incurred by a party in defending its interests in appeal proceedings.
8.2.4 Failure of a party to appear at the oral proceedings
(a) Different apportionment of costs ordered
There is an equitable obligation on every party summoned to oral proceedings to inform
the EPO as soon as he knows that he will not be attending as summoned, regardless of
whether he himself or another party requested the oral proceedings and of whether or
not a communication accompanied the summons to oral proceedings. If a party who has
been summoned to oral proceedings fails to attend as summoned without notifying the

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EPO in advance, an apportionment of costs in favour of another party, who has attended
as summoned, may be justified for reasons of equity in accordance with
Art. 104(1) EPC - as held by the board in T 930/92 (OJ 1996, 191).
In T 909/90 oral proceedings had been appointed at the appellants' request. Without
giving the board or opponents any advance notice, the appellants did not attend the oral
proceedings. Nor did they comment on the board's communication. For this reason in
particular the oral proceedings contributed nothing new to the case. The board ordered
the apportionment of costs without examining whether higher costs had been incurred as
a result of the appellants' failure to appear.
In T 937/04 the appellant and patent proprietor informed the board by fax sent only to the
EPO and not to the other parties on Friday, 17 February 2006, after business hours, at
16.27, that he would not attend the oral proceedings. Reasons to justify the filing of this
information at such a late stage were not provided. The other parties were thus informed
by the registrar of the board on Monday, 20 February 2006, i.e. one working day before
the oral proceedings, that the appellant would not attend them. The board stated that the
appellant, by informing solely the EPO and not the other parties, had failed to exercise all
due care required and concluded that, for reasons of equity, an apportionment of costs
should be accorded in favour of the respondent.
In cases where a party delays his decision not to attend oral proceedings or the
communication of this decision to the board, an apportionment of costs in favour of the
other party may be justified insofar as the costs were directly caused by the fact that the
notice was not filed in appropriate time before the oral proceedings. In T 91/99, the board
stated that, where an appellant failed to give notice that he would not be attending the
oral proceedings until two working days before the date set for the proceedings, this
could constitute negligent or wilful conduct which had to be considered under
Art. 104(1) EPC; however, in the case at issue, there was no culpable conduct on the
part of the appellant which could justify an apportionment of costs under Art 104(1) EPC
(by contrast, in T 693/95 and T 338/90 costs were awarded because notice of the
appellant's absence had been given, in the former case, only an hour before the oral
proceedings and, in the latter, at the time when the oral proceedings were due to start).
The appellants' failure to advise the board in time that they would not be appearing at the
oral proceedings was likewise the reason for ordering them to bear the costs in T 434/95.
In that case, the board added that Enlarged Board of Appeal opinion G 4/92
(OJ 1994, 149) on the right to be heard was not relevant to its decision on costs, which
related to the procedural consequences of a party's action in choosing not to attend. The
opinion applied to substantive decisions on patents in suit, but not to the present case,
where the respondent had presented no new facts in the oral proceedings (see also
T 641/94).
(b) Refusal of a request for apportionment of costs
A party requesting oral proceedings is not obliged to be represented at them. Its duly
announced absence could not be considered as improper behaviour. Moreover, the non-
appearance of a party generally does not adversely affect the party which did attend. A
different apportionment of costs cannot be ordered if the respondents have neither
shown nor claimed that they incurred additional costs because the appellants were not
present (T 544/94; cf. T 632/88 and T 507/89).

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In T 591/88 both parties had requested that oral proceedings be held - both in fact filing
an "unconditional" request. Without giving any advance notice, the respondents failed
to appear. The appellants requested apportionment of costs on the grounds that the oral
proceedings would not have been necessary had they known that the respondents would
not be attending. The board rejected a different apportionment of costs because the
appellants had made an "unconditional" request for oral proceedings, ie also covering
the eventuality that the other party would not appear.
In T 435/02, both the appellant and the respondent had filed an auxiliary request for
oral proceedings. When filing its request, the respondent had wanted to attend the oral
proceedings to ensure that the board would not overturn the decision under appeal
without its having the opportunity to present its case orally. In response to the appellant's
decision not to attend the proceedings, the respondent gave notice that it too would not
be attending and commented that it had wished to attend "merely to rebut
statements/arguments made by the patentee during these proceedings". Although the
board expressly informed the parties that the oral proceedings would be held as planned,
the respondent failed to attend. The respondent requested a different apportionment of
costs because the appellant had withdrawn its request for oral proceedings so late that
the respondent had incurred costs which no longer could be recovered. The board
refused the request on the grounds that, contrary to the respondent's claim, its failure to
appear was not a response to the appellant's decision not to attend but the result of a
choice not to take the opportunity which it had requested to present its case orally.
In T 275/89 (OJ 1992, 126) the appellant's representative filed a request that the oral
proceedings scheduled for 09.00 on 3 May be adjourned, on the grounds that the
appellant was unable to attend the oral proceedings owing to illness. The request was
submitted so late, ie in the afternoon of 30 April, that it was impossible in view of the
public holiday the following day to notify the respondents in time: they had already set
out during the afternoon of 1 May. The request was refused however and the oral
proceedings took place without the appellant. The respondents requested a different
apportionment of costs on the grounds that they would not have attended either had they
known that the appellant would not be appearing. The board, however, took the view that
the appellant could not be made responsible for the fact that the respondents had
chosen to make an early start to the journey. Furthermore, the only matter of importance
was whether the appellant's absence rendered the oral proceedings unnecessary. This
question had to be answered in the negative. The request for costs was therefore
rejected.
In T 849/95 the respondent submitted a request for apportionment of costs, as the
appellant had not informed the EPO in good time that he would not be taking part in the
oral proceedings which he too had requested. The board rejected the request, as the
oral proceedings were arranged not only at the request of both parties, but also because
the board itself required further airing of facts on the part of the respondent. The oral
proceedings would not have been cancelled even if the appellant had informed the EPO
in good time.
In T 838/92 too, the appellants stayed away from the oral proceedings. The respondents
requested a different apportionment of costs as they had appeared with seven
witnesses. The board rejected the request because the witnesses had been summoned
at the respondents' instigation in order to prove the prior uses alleged by the latter. There
was therefore no reason to impose the costs on the appellant.

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8.2.5 Cases of alleged abuse of procedure or abuse of oral proceedings

Exceptions to the principle that each party must bear its own costs may also be made in
cases of abusive conduct in which it is equitable to make an award of costs against one
of the parties. In a number of cases, parties have sought to obtain a different
apportionment of costs on the basis of an abuse of the procedure or of the oral
proceedings (for abuse of procedure in cases in which documents were submitted late,
see Chapter VI.F.3.1.3).
(a) Abuse of procedure
An apportionment of costs is often requested on the grounds that the notice of opposition
or appeal has been incorrectly filed.
In T 170/83 the opponents had used an incorrect form for payment of the opposition fee,
thereby giving rise to a decision by formalities to reject the opposition; the opponents
thereupon filed an appeal against this decision. The patent proprietors (respondents)
requested that the appeal costs be awarded against the appellants, since it was their
error which had rendered the proceedings necessary. The board rejected the request,
taking the view that the appeal proceedings were not improper. An abuse justifying the
apportionment of costs could only be rooted in the party's conduct during the
proceedings.
In a number of cases the boards took the admissibility or allowability of an opposition or
an appeal to be an indication that no abuse had taken place (eg T 7/88 and T 525/88).
Similarly, in T 506/89, the board found that the opponent's filing of an appeal did not
constitute an abuse of procedure and therefore rejected the request for a different
apportionment of costs, since it had decided, in the oral proceedings, to maintain the
patent as amended. Nor was there an abuse of procedure where the appeal was filed
without new arguments (T 605/92) or where the appellant's chances of success were
considered to be low (T 318/91). In T 99/87, the board held that there had been no
abuse in either the discussion during the oral proceedings or the respondent's
formulation of new claims.
In T 210/98, the respondent requested an apportionment of costs on the ground that the
appellant had withdrawn three auxiliary requests at the beginning of the oral proceedings
for which the preparation had been time consuming. The board refused the request,
stating that it was normal for parties to prepare themselves thoroughly for oral
proceedings. A change of view was one of the situations with which a professional
representative could be confronted during oral proceedings. As it was not exceptional for
requests to be changed or withdrawn during oral proceedings as a result of the
discussion held, no abuse of procedure could be seen in the withdrawal of requests at
the beginning of the oral proceedings, which had apparently been a reaction to
convincing written arguments.
In T 952/00, the board found that the equity requirement was a matter for the body
hearing the case to decide at its discretion in the light of the facts. It was to be seen as
the compensation one party owed another as a result of his negligence or culpable
irresponsibility, or a wrongful act carried out with intent to cause the other party harm,
leading to damage requiring that party to request oral proceedings or taking of evidence
which would otherwise have been unnecessary. The wrongful act, whether intentional or
simply the result of culpable negligence, had to be judged in the light of the normal

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behaviour of an ordinarily diligent party. It also had to be clearly and obviously the direct
cause of the costs which should not have been incurred.
In the case in point, it was important to compare the evidence given by the opposing
party at first instance with the additional evidence he had had to give at the appeal stage,
bearing in mind the evidence to the contrary given by the patent proprietor at both
instances. The board found that the statements made by the proprietor on the accuracy
of the opponent’s allegations during successive discussions had varied considerably
over time, whereas the opponent’s allegations had remained consistent. The board
concluded that without the false statements of the patentee the opponent would not have
been required to go to the expense of gathering further evidence. The request of the
opponent (appellant) for an apportionment of costs in respect of the costs incurred during
the taking of evidence after notification of the first-instance decision was therefore to be
granted.
(b) Abuse of oral proceedings
An apportionment of costs is justified if excessive costs are incurred for the oral
proceedings and caused mainly by one party (see T 49/86).
In T 1022/93 the appellant had refrained from communicating in the written appeal
procedure why, in his opinion, the amended process claims should be considered
inventive and from specifying that the additional example described a process according
to the amended set of claims. This made it impossible either to remit the case without
oral proceedings or to deal with the substance of the case at the oral proceedings. For
reasons of equity, therefore, the appellant was required pursuant to Art. 104(1) EPC to
reimburse to the respondent the costs incurred as a result of the participation at the oral
proceedings before the board.
In T 42/99, appellant I announced, as early as one month prior to oral proceedings, that
experts would attend those proceedings. Only shortly before the appointed date for the
proceedings, appellant II submitted a request that statements by an expert be admitted
at the oral proceedings. Appellant II also requested the postponement of the oral
proceedings so that its expert would have enough time to prepare. The board decided to
postpone the appointed date to enable both appellants to be accompanied by experts at
the oral proceedings. However, in doing so, the board also regarded it as equitable to
order a different apportionment of costs. In its reasons the board took the view that,
although a reply from appellant II to the announcement by appellant I that experts would
attend the oral proceedings would not have been possible within the time limit set by the
board, a "response" to the aforementioned announcement should have followed
immediately and not shortly before the appointed date for oral proceedings. At this late
stage, it was plausible that the representative of appellant I had made arrangements for
the trip to Munich and a hotel reservation, which could not be cancelled without a
financial loss.
However, in the majority of cases, the boards have found that there was no abuse and
have accordingly refused to order a different apportionment of costs.
On the basis of Art. 116(1) EPC any party has the exclusive right to request oral
proceedings if it considers them to be necessary. The fact that one of the parties has to
travel a longer distance than the other does not make the request for oral proceedings
abusive. Furthermore, an objection of abuse based on the fact that the problems to be

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discussed in oral proceedings are simple ones and could easily be presented in writing
cannot be sustained (T 79/88).
Parties have repeatedly tried to bring about an apportionment of costs on the grounds
that no new arguments have been put forward during oral proceedings by the party
which requested them and that therefore there has been an abuse of the oral procedure.
Although costs were apportioned on these grounds in T 167/84 (OJ 1987, 369), the
boards otherwise unanimously took the view that the right to oral proceedings was
absolute and therefore not subject to any conditions (T 614/89, T 26/92, T 81/92 and
T 408/02). The absence of new arguments is not a reason for apportioning costs - as
was found in T 303/86, T 305/86, T 383/87, T 125/89 (departing from the decision at first
instance) and T 918/92.
In T 297/91 it had, for a number of reasons, not been possible to decide all the issues
during the first oral proceedings, with the result that the respondent (patent proprietor)
had requested that oral proceedings be held for the second time and that the costs
incurred be borne by the appellant. The board rejected the request for apportionment of
costs because the further oral proceedings had become necessary for reasons beyond
the patent proprietor's control.
In T 407/92 the appellant and opponent as a party of right requested the apportionment
of costs because they considered it an abuse that the respondents, after the first oral
proceedings, had presented numerous additional sets of claims and requested additional
oral proceedings, although the board, at the end of the first oral proceedings, had
declared that the proceedings should be continued in writing on the basis of the three
auxiliary requests presented by the respondents during the first oral proceedings. The
board could not see any abusive conduct in the present case because, due to the
relatively complex technical content of the patent in suit, the board itself considered it
necessary to have a further oral discussion with the parties. The request was rejected.
In T 905/91 the respondents had requested a different apportionment of costs on the
grounds that the appellants had not brought prepared auxiliary requests to the oral
proceedings, which had therefore continued into the afternoon. The board rejected the
request for the following reasons. Firstly, the appellants had endeavoured to take
account of the reservations expressed by the board and had filed new documents.
Secondly, oral proceedings served specifically to clarify the situation completely through
the direct exchange of arguments and, if necessary, to rephrase the patent application in
the light of the outcome of the discussion. The duration of oral proceedings depended on
the particular case; at any rate it was not unusual for such proceedings to continue into
the afternoon, and the parties should be prepared for this.
In decision T 461/88 (OJ 1993, 295) the board decided that the appellants' insistence on
hearing witnesses was clearly compatible with the principle of responsible exercise of
rights, as this may well have been the only means of proving the alleged public nature of
the prior use. The board refused the request for apportionment of costs.
8.3. Apportionable costs
Under R. 63(1) EPC, the apportionment of costs is dealt with in the decision. Only those
expenses necessary to assure proper protection of the rights involved may be taken into
consideration. The costs include the remuneration of the parties' representatives.

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This rule is frequently applied in the case law of the boards of appeal (T 167/84,
OJ 1987, 369; T 117/86, OJ 1989, 401; T 416/87, OJ 1990, 415; T 323/89,
OJ 1992, 169). In T 930/92 (OJ 1996, 191) the board held that when fixing the amount of
costs to be paid to a party, in addition to the remuneration of the professional
representative of that party, the expenses incurred by an employee of that party in order
to instruct the professional representative before and during oral proceedings may be
taken into consideration under R. 63(1) EPC, if such instruction was necessary to assure
proper protection of the rights involved. In T 326/87 (OJ 1992, 522), all the costs incurred
as a result of the remittal to the department of first instance were deemed to be
apportionable.
In T 758/99, the board held that a decision on the apportionment of future costs in appeal
proceedings caused by the late filing of documents depended on the course of the
subsequent procedure and, in the absence of the necessary facts, could not be decided
at that stage. The board refrained from such an ”open-ended” award of costs, agreeing
with the appellant’s objection that the consequences of such an award were
unpredictable. For these reasons the board deviated from the judgment given in
T 611/90, in which the legitimately incurred future costs had been apportioned. The
board remitted the case to the department of first instance and ordered that a decision
on the request for apportionment of costs would be taken at a later stage.
8.4. Fixing of costs
The amount of costs to be paid under a decision apportioning them is fixed, on request,
by the registry of the opposition division. The fixing of costs by the registry may be
reviewed by a decision of the opposition division on a request filed within the period laid
down in the Implementing Regulations (Art. 104(2) EPC). R. 63(3), first sentence, EPC
provides for a period of one month from notification of the award of costs. It also requires
that the relevant request be filed in writing and state the reasons on which it is based.
Moreover, the request is not deemed to be filed until the fee for the awarding of costs
has been paid (R. 63(3), second sentence, EPC). The requirements are thus essentially
the same as those for an appeal.
In T 668/99, the question was raised as to whether the prohibition of reformatio in peius
also applies if the proceedings are not referred to a higher level of jurisdiction but are
continued within the same level of jurisdiction, as is the case with a legal remedy against
the fixing of the costs by the opposition division registry. The board recalled that an
appeal and a request for an opposition division decision have far more similarities
(suspensive and devolutive effect) than differences, and so the position of the sole
requester is comparable to that of the sole appellant. The board was therefore satisfied
that the prohibition of reformatio in peius also had to apply to a request under Art. 104(2),
second sentence, EPC.
Where the boards of appeal have to rule on the apportionment of costs, they have the
power under Art. 104(1) and (2) and Art. 111(1) EPC, and having due regard to
Art. 113(1) EPC, not only to apportion but also to fix the costs (T 934/91, OJ 1994, 184).
The scope of the apportionment depends on the specific circumstances of the individual
case. The party to the proceedings who caused the additional costs may be ordered to
pay all or a part of those costs (T 323/89, OJ 1992, 169).
Since the filing of new material after expiry of the opposition period may cause the other
party to incur additional costs, the board, in T 117/86 (OJ 1989, 401), ordered that the

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appellant should pay the respondent 50% of his representative's costs in preparing and
filing the response to the appeal (see also T 83/93).
In T 715/95, new documents were submitted only in the appeal proceedings. The delay
was not justified. However, because the documents were so relevant the board admitted
them and remitted the case to the department of first instance. But it also ordered the
late-filing party to pay 50% of the cost of the oral proceedings, and 100% of that of the
further proceedings at first instance. Similarly, in T 45/98, the appellant submitted new
documents only in the appeal proceedings. They were admitted into the proceedings, but
the case was not remitted to the department of first instance. With regard to the
apportionment of costs, the board ordered that the appellant should pay 45% of the costs
incurred by the opposing party's representative in the appeal proceedings.
8.5. Procedural aspects
8.5.1 Filing a request for apportionment of costs
The practice before the boards of appeal is that all requests by parties, including any
requests as to costs, should be made before any decision is announced in oral
proceedings (T 212/88, OJ 1992, 28) - in the case cited here, however, the request for
apportionment of costs was considered exceptionally, because the parties were not, at
the time, aware of this practice.
There is no basis for deciding on a different apportionment of costs if the party which
would benefit from the decision did not request apportionment and even made it known
that it would not enforce any such decision (T 408/91). This applied even if the board
considered an apportionment of costs to be equitable (see also T 125/93).
A request for apportionment of costs submitted by the respondent merely as a party to
the appeal proceedings as of right (Art. 107, second sentence, EPC) must be rejected as
inadmissible as it would otherwise contravene the principle of equal treatment (T 753/92
and T 514/01).
In T 896/92 the request for a different apportionment of costs was rejected for lack of
substantiation and because of the absence of obvious reasons. In decision T 193/87
(OJ 1993, 207) the board refused likewise the apportionment of costs because it could
not see any reasons of equity which could justify such an apportionment of the costs, nor
had the respondent brought forward any evidence in this respect. In several decisions,
the boards of appeal have stressed the importance of submitting evidence to support a
request for a different apportionment of costs (eg T 49/86, T 193/87, T 212/88,
OJ 1992, 28; T 404/89, T 523/89, T 705/90, T 776/90 and T 306/93).
8.5.2 Competence issues
In T 765/89 it was stressed that the board was still responsible for deciding on the
request that costs be awarded against the appellants even if the latter had withdrawn
their appeal. Where an opponent/respondent withdraws his opposition during appeal
proceedings, he ceases to be a party to the appeal proceedings as far as the substantive
issues are concerned but retains his party status in so far as the question of
apportionment of costs is still at issue (T 789/89, OJ 1994, 482).
In T 1059/98, with regard to the respondent’s request for apportionment of costs, the
board stated that no request had been made before the opposition division for

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apportionment of the costs incurred in connection with the oral proceedings held before
that first instance, and the opposition division had neither considered nor decided upon
such matter in the decision under appeal. Art. 21(1) EPC provided that a board of appeal
could only examine appeals from decisions of EPO departments of first instance. That
clearly meant, in the circumstances of the case, that the board could not examine and
decide upon a request for apportionment of costs incurred as a result of oral proceedings
before the opposition division if that request was presented for the first time before the
board of appeal and thus no decision had been taken on it by the department of first
instance. The board was therefore not competent to consider and decide upon the
respondent’s request for apportionment of costs, which was rejected accordingly.
As a matter of principle costs are not apportioned in transfer proceedings (J 38/92,
OJ 1995, 8).
8.5.3 Appeal solely against the decision on costs inadmissible
Art. 106(4) EPC states that the apportionment of costs of opposition proceedings cannot
be the sole subject of an appeal. As a rule, therefore, an appeal relating to
apportionment of costs must be regarded as inadmissible if the appeal relating to the
revocation of a patent is rejected as inadmissible for lack of merit and there is no other
admissible request. However, if the impugned decision did not take into account the
withdrawal of the request for oral proceedings and is thus based on a substantial
procedural violation, the part of the impugned decision relating to apportionment of costs
must be set aside (T 154/90, OJ 1993, 505).
In T 753/92 respondents I were adversely affected by the decision under appeal only in
so far as their request for apportionment of costs was rejected. If respondents I had
lodged an appeal against this decision, the appeal, with the apportionment of costs as its
sole subject, would have been inadmissible under Art. 106(4) EPC.
In T 668/99, the board took the view that, since no appeal had been lodged against the
opposition division’s decision on costs, that decision had become final upon expiry of the
time limit for filing a notice of appeal. It found that neither was the decision on costs
mentioned in the request submitted with the appeal nor was there any indication of an
implicit challenge to that decision. The fact that, under Art. 104(1) EPC, the decision on
costs might have to be made by the EPO did not change the outcome either. The board
held that, unlike the general procedural requirements, which - as had been consistently
held - had to be reviewed at all times, including in the appeal procedure, the issuance of
a decision on costs by the EPO did not necessarily mean that the decision also had to be
reviewed by the EPO. The review of a decision at a higher level of jurisdiction required
an appeal by one of the parties.
D. Appeal procedure
Appeal procedure

1. Legal character of appeal procedure

VII.D.1. Legal character of appeal procedure

The provisions governing the appeal procedure are set out in Art. 106 EPC to
Art. 111 EPC and R. 64 EPC to R. 67 EPC and in the Rules of Procedure of the Boards
of Appeal. R. 66(1) EPC plays an important role since it stipulates that, unless otherwise
provided, the provisions relating to proceedings before the department which took the
decision under appeal are applicable to appeal proceedings mutatis mutandis. This
application by analogy is, however, not automatically permissible in every case and for

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every provision (G 1/94, OJ 1994, 787). Criteria therefore had to be established for when
such an analogy was permissible and when not. To this end it was necessary to analyse
the legal nature of the appeal procedure.
Appeal proceedings are wholly separate and independent from the proceedings at first
instance. Their function is to give a judicial decision upon the correctness of a separate
earlier decision taken by a department (T 34/90, OJ 1992, 454; G 9/91, OJ 1993, 408;
G 10/91, OJ 1993, 420; T 534/89, OJ 1994, 464; T 506/91). In T 501/92 (OJ 1996, 261)
the board deduced from this principle that any procedural request or statement made by
a party during proceedings in the first instance was not applicable in any subsequent
appeal proceedings, and had to be repeated during the latter if it was to remain
procedurally effective.
In decision G 1/99 (OJ 2001, 381) the Enlarged Board held that the appeal procedure is
to be considered as a judicial procedure (see G 9/91, OJ 1993, 408, point 18 of the
Reasons) proper to an administrative court (see G 8/91, OJ 1993, 346, point 7 of the
Reasons; likewise G 7/91, OJ 1993, 356). In an older decision (G 1/86, OJ 1987, 447),
the Enlarged Board also addressed this question. In G 9/92 and G 4/93 (both
OJ 1994, 875) it was decided that the extent of appeal proceedings is determined by the
appeal.
These characteristics of the appeals procedure not only serve as criteria when assessing
whether a provision may be applied analogously in individual cases; they also have
general legal consequences in many respects. It follows from the characteristics set out
by the Enlarged Board that the general principles of court procedure, such as the
entitlement of parties to direct the course of the proceedings themselves ("principle of
party disposition"), also apply to appeals (see G 2/91, OJ 1992, 206; G 8/91, G 8/93,
OJ 1994, 887; G 9/92 and G 4/93), that a review of the decision taken by the department
of first instance can, in principle, only be based on the reasons already submitted before
that department (G 9/91, G 10/91), and that the proceedings are determined by the
petition initiating them (ne ultra petita) (see G 9/92 and G 4/93). The Enlarged Board has
also made it clear that the decision-making powers of opposition divisions, and of the
boards in opposition appeal proceedings, are circumscribed by the statement under
R. 55(c) EPC of the extent to which the European patent is opposed. They have no
powers to decide and thus investigate anything extending beyond that statement (see
G 9/91). This has defined the sphere of application of Art. 114(1) EPC, and clarified the
distinction between the power to initiate and determine the object of proceedings, on the
one hand, and the power to examine the facts then relevant, on the other. The individual
procedural consequences and the Enlarged Board's decisions are discussed in greater
detail below.
2. Suspensive effect of the appeal
VII.D.2. Suspensive effect of the appeal

Under Art. 106(1) EPC, an appeal has suspensive effect. The Legal Board of Appeal
defined this effect in J 28/94 (OJ 1995, 742), in which a third party claimed entitlement to
the grant of the patent and requested suspension of the proceedings for grant under
R. 13(1) EPC. The board took the view that the appeal's suspensive effect meant the
contested decision had no legal effect until the appeal was resolved. Otherwise appeal
would be nugatory.

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 VII.D.3. Devolutive effect of the appeal

Thus, if a decision refusing to suspend the publication of the mention of grant of a patent
were appealed, publication should be deferred until the appeal was decided. If (as here)
this was not possible for technical reasons, the EPO should take all necessary steps to
advise the public that the mention of grant was no longer valid (see also T 1/92,
OJ 1993, 685).
The suspensive effect of the appeal was further expounded on in J 28/03
(OJ 2005, 597). According to the Legal Board of Appeal, suspensive effect means that
the consequences following from an appealed decision do not immediately occur after
the decision has been taken. Actions normally taking place after a decision are "frozen".
Suspensive effect does not have the meaning of cancellation of the appealed decision.
Even after an appeal the decision as such remains and can only be set aside or
confirmed by the board of appeal. Moreover, the status of a divisional application filed
while an appeal against the decision to grant a patent on the parent application is
pending depends on the outcome of that appeal.
3. Devolutive effect of the appeal
VII.D.3. Devolutive effect of the appeal

On appeal, the first instance loses its competence for the further prosecution of the
application for all contracting states - the appeal does not leave a part of the application
pending in the first instance. Thus, deemed withdrawal of the application pursuant to
Art. 110(3) EPC applies in the case of a failure to reply to a communication pursuant to
Art. 110(2) EPC in ex parte appeal proceedings, even where the decision under appeal
did not refuse the application, but only a particular request. The board reasoned that
even if the appealed decision concerned only the designation of a state and not the
application as a whole, according to the principle of unity of the application and of the
patent in the proceedings the suspensive effect of the appeal affected the application as
a whole. Since it was bound by the EPC, a deviation from the clear wording of a
provision of the EPC could only be considered if the provision was in breach of a higher
legal principle or was purely arbitrary. The board decided it was not, as the validity of a
designation was part of the grant procedure - the decision to grant had to identify the
states for which the patent was granted (J 29/94, OJ 1998, 147).
The devolutive effect of the appeal does not affect the competence of the department of
first instance to decide on a request concerning the contents of the minutes of the oral
proceedings held before it. What is devolved is the subject-matter decided by the
appealed decision (T 1198/97).
4. Language of the proceedings
VII.D.4. Language of the proceedings

The same language arrangements apply to appeals as to all other EPO proceedings.
Under R. 1(1) EPC any party may use any EPO official language in written proceedings
(for the legal position prior to the deletion of R. 3 EPC see T 379/89 and T 232/85,
OJ 1986, 19), and under R. 2(1) EPC any party to oral proceedings may use another
EPO official language instead of the language of the proceedings, provided he either
gives the EPO at least one month's notice or arranges for interpreting into the language
of the proceedings.
In T 34/90 (OJ 1992, 454) the respondent did neither. His representative argued that
because he had lawfully used an alternative official language in oral proceedings before
the opposition division, he should be allowed to use the same language in the hearing
before the board. Although he did not actually say so, this plainly implied that appeal

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proceedings were simply a continuation of the first-instance (ie opposition) proceedings.

From the principle that appeal proceedings were wholly separate and independent from
first-instance proceedings for the purpose of deciding the admissibility of using an
alternative official language under R. 2(1) EPC - and for other procedural purposes - the
board inferred that a party could use such a language in oral proceedings before it only if
he again gave the requisite notice (see also communication of the Vice-President DG 3,
OJ 1995, 489).
In J 18/90 (OJ 1992, 511) the board recognised that in written proceedings and
decisions, organs of the EPO might also use an official language other than the
language of proceedings, provided all parties to the proceedings had given their
agreement (see also T 788/91).
In T 706/91 the appeal had been drawn up in accordance with R. 1(1) EPC in one of the
official languages, namely German. The appellant had therefore cited passages from the
disputed European patent's claims and description in that language, even though they
had been drawn up in French as the language of the proceedings. The board decided
that these references were admissible (see also Chapter VI.N.1., "Language privilege").
5. Procedural status of the parties
VII.D.5. Procedural status of the parties

5.1. Parties to appeal proceedings

Under Art. 107 EPC, the parties to proceedings before the department of first instance
are also parties to the ensuing appeal proceedings, even if they have not personally filed
an appeal. Pursuant to Art. 99(4) EPC, opponents as well as the patentee are parties to
opposition proceedings. In addition, Art. 105 EPC makes provision for intervention by the
assumed infringer.
For other proceedings, the general principle applies that the parties to them are those
whose legal interests are affected by the decision at issue. In T 811/90 (OJ 1993, 728),
for example, opposition proceedings had been concluded and the time limit for lodging
an appeal had expired. Only the patent proprietor lodged an appeal, but against a
separate decision on a point incidental to the opposition. It was held that the other party
had no right to be a party to the appeal as he had not been a party to the relevant
decision. However, in a decision concerning an appeal against a Legal Division decision
refusing to suspend grant proceedings under R. 13 EPC, the applicant is to be treated as
a party to the proceedings. The request for suspension cannot be separated from the
grant proceedings. The applicant's legal position is directly affected by suspension,
because for its duration he is denied the rights under Art. 64(1) EPC (J 33/95).
A patent applicant who is not heard when grant proceedings are suspended at a third
party's request pursuant to R. 13 EPC may still challenge the justification for that
suspension. He is a party as of right to any appeal proceedings initiated by the third party
against rejection of the latter's request by the EPO (J 28/94, OJ 1997, 400).
Art. 107 EPC states that where one party files an appeal, any other parties to the first-
instance proceedings are parties to the appeal proceedings as of right. Nothing in the
EPC enables an opposition division or board of appeal to exclude a party from ongoing
proceedings (T 838/92).
In T 643/91 the appeal of opponent 1 was rejected as inadmissible. Opponent 2 filed an
admissible appeal. Opponent 1 was considered by the board to be "any other party to

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 VII.D.5. Procedural status of the parties

the proceedings" under Art. 107 EPC and, as a consequence, to be a party as of right in
the appeal proceedings of opponent 2. However, in T 898/91 it was held that an
opponent whose opposition has been rejected as inadmissible by the opposition division
and who has not filed an appeal against this decision is not entitled to be a party to any
appeal by the patent proprietor, because he ceases to be a party to the opposition
proceedings once the decision on the admissibility of its opposition takes full legal effect.
Where a company is dissolved and thus ceases to be a legal person, it loses its capacity
to be a party to any proceedings. If it was the original appellant, the appeal consequently
lapses (T 353/95). However, a party's opponent or appellant status does not lapse
merely as a result of bankruptcy proceedings being issued (T 696/02).
Third parties commenting under Art. 115 EPC on the patentability of the invention
claimed are not parties to the proceedings before the EPO.
5.2. Transfer of party status
According to R. 20(1) and (3) EPC, a transfer of a European patent application shall
have effect vis-à-vis the EPO only when and to the extent that documents are produced
which satisfy the EPO that the transfer has taken place.
5.2.1 Opponent
In G 4/88 (OJ 1989, 480) it was ruled that a company's opponent status is also
transferable to the firm which has taken it over. Party status is transferable at any stage
during pending appeal proceedings if transferred together with the business assets or
part of the company in whose interests the appeal has been filed (T 659/92,
OJ 1995, 519; see also T 702/97, T 799/97 and T 1137/97). However, under R. 20 EPC,
a change of party to the proceedings is only effective once the succession in title is
documented for the EPO. It is not necessary for the other party to agree to the change.
The previous party to the proceedings retains its rights and obligations until the transfer
has been documented (T 413/02, T 870/92 and T 478/99). A mere declaration of the
transfer of opponent status does not suffice (T 670/95). Thus, although transfer is also
possible prior to appeal proceedings being commenced by the transferee (T 563/89,
applying G 4/88, OJ 1989, 480), the transfer should be notified to the EPO with
supporting evidence before the appeal is filed or the appeal will be inadmissible
(T 1137/97).
The possession of a commercial interest in the revocation of a patent is not sufficient to
allow a successor in business to take over and conduct opposition appeal proceedings in
the absence of evidence of a transfer of the right to do so together with the related
business assets of the opponent. In the absence of such evidence, the transfer of an
opponent’s business assets to two separate persons cannot give either of them the right
to take over and conduct opposition or opposition appeal proceedings. When such
evidence is present, only the transferee established by such evidence can acquire such
a right (T 298/97, OJ 2002, 83).
5.2.2 Patent proprietor
Where the European patent is transferred during opposition proceedings the new patent
proprietor entered in the Register of Patents takes the place of the previous patent
proprietor both in the opposition and in the appeal proceedings. His entitlement may not
be questioned in these proceedings (T 553/90, OJ 1993, 666).

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For a transferee of a patent to be entitled to appeal, the necessary documents

establishing the transfer, the transfer application and the transfer fee pursuant to
R. 20 EPC must be filed before expiry of the period for appeal under Art. 108 EPC. Later
recordal of the transfer does not retroactively validate the appeal (T 656/98,
OJ 2003, 385).
In T 15/01 (OJ 2006, 153) the board distinguished between the situation where a party
acquired a patent through a transfer, as in T 656/98 and through a merger, as in the
case before the board. It held that R. 20(3) EPC does not apply in the latter case, where
the change of proprietor status is caused by universal succession of law. The universal
successor of a patent applicant or patentee automatically acquires party status in
proceedings pending before the EPO.
5.3. Rights of parties under Article 107 EPC
In appeal proceedings, the case law recognises the right of all parties to be heard (see
J 20/85, OJ 1987, 102; J 3/90, OJ 1991, 550; T 18/81, OJ 1985, 166; T 94/84,
OJ 1986, 337; T 716/89, OJ 1992, 132), albeit within the limits of expediency (see
T 295/87, OJ 1990, 470). The parties also have a right to oral proceedings.
Furthermore, G 1/86 (OJ 1987, 447) recognised the validity of the principle that all
parties must be treated equally in similar legal situations in proceedings before the
boards of appeal.
Decision T 73/88 (OJ 1992, 557) deduced from this that all parties to proceedings had
the right to continue appeal proceedings. If there was already one valid appeal, no
further appeals were needed and the fees paid for appeals filed later had to be refunded.
However, in decision G 2/91 (OJ 1992, 206) the Enlarged Board disagreed. It took the
view that from the legal point of view the status of parties who had filed an appeal was
not comparable with that of those who had not. It was clear from generally recognised
principles of procedural law that the appellant alone could decide whether the appeal
filed by him was to stand. Art. 107, second sentence, EPC only guaranteed non-
appellants who were party to proceedings of the first instance that they were parties to
existing appeal proceedings. A person who was entitled to appeal but did not do so,
settling instead for being "automatically" a party to the appeal proceedings, had no
independent right of his own to continue those proceedings if the appellant withdrew his
appeal. He acquired that right only by filing an appeal himself and paying the associated
appeal fee. By the same token, there was also no reason to refund the fee for any
appeals filed after the first, unless the requirements of R. 67 EPC were met. The related
issue of whether non-appealing parties can file substantive requests is dealt with in
G 9/92 and G 4/93 (both OJ 1994, 875; see Chapter VII.D.6.1).
The parties must be given equally fair treatment (G 9/91, OJ 1993, 408, point 2 of the
Reasons).
In T 1072/93 the board held that the freedom of the board to offer specific advice to one
of the parties as to how an objection might be overcome, even when such an objection
stemmed from the board itself, was severely limited, especially in inter partes
proceedings where the preservation of judicial impartiality was a paramount requirement.
In T 253/95, the same board confirmed that boards of appeal in inter partes proceedings
must be strictly impartial and found that alerting a party to a possible argument against
him and on a ground on which the burden of proof rested on him, in advance of the oral

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proceedings, would amount to a clear violation of the principle of impartiality, irrespective

of the fact that the communication setting out such an argument would also be sent to
the other party. In T 394/03 the board held that, even though the opposition division's
decision to reject the opposition had been annulled, it was not necessary, in the absence
of a request, to give the patentee and respondent another opportunity to comment, nor,
given the impartiality of the board, was there any requirement on principle to do so.
5.4. Intervention
5.4.1 Admissibility of intervention
(a) General
Under Art. 105 EPC, to intervene admissibly in opposition proceedings a party must
show either that the patentee has instituted infringement proceedings against him or that
in response to a request from the patentee to stop allegedly infringing the patent he has
himself instituted proceedings for a court ruling that he is not in fact doing so.
In G 1/94 (OJ 1994, 787) the Enlarged Board concluded that Art. 105 EPC should apply
to appeal proceedings. The term "opposition proceedings" was not restricted to the
department of first instance, but could also refer to such proceedings at second instance.
Intervention during appeal proceedings was therefore admissible.
A notice of intervention filed during the two-month period for appeal has no legal effect if
no appeal is filed (G 4/91, OJ 1993, 707; see Chapter VII.C.3.5 for further details).
(b) Time Limit
The applicable starting point for calculating the three-month period for intervention under
Art. 105(1) EPC is always the date of the institution of the first court action, when the
sole available period for intervention starts to run. The two alternative starting points
under Art. 105(1), first and second sentence, EPC respectively, for calculating the three-
month period for intervention are mutually exclusive (T 296/93, OJ 1995, 627). See also
T 144/95. Art. 105 EPC cannot be used to give an opponent who fails to file an appeal in
time a second chance, as the opponent does not fulfil the requirement of being a third
party (T 1038/00).
(c) Assessment of procedural act
The principle that the assessment of the nature of a procedural act taken by a party
before the EPO is to be made with consideration of its actual substance rather than with
consideration of its form or name applies equally when deciding whether national
infringement proceedings have been commenced (T 188/97).
In T 195/93 the board held that if a patentee simply sent a legal warning letter asking the
intervener to stop production and sale of a product covered by the patent, this could not
be regarded as institution of proceedings for a court ruling even if under national law the
addressee became liable for damages 30 days after receiving the letter. The intervention
was therefore rejected as inadmissible. Similarly, according to T 392/97, Art. 105 EPC
requires that an intervener should prove both that the patentee has requested that he
cease alleged infringement of the patent and that he has instituted proceedings for a
court ruling that he is not infringing the patent. Thus where the letter was sent not to the
allegedly infringing company, but to an unrelated one which it was assumed was about

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to acquire it, the first requirement was not fulfilled and their interventions were
inadmissible.
5.4.2 Intervener's rights
(a) Fees payable
Where a party intervenes only at the appeal stage, several decisions have stated that no
appeal fee need be paid if the party is not seeking appellant status in his own right (see
T 27/92, T 684/92, T 467/93, T 471/93, T 590/94, T 144/95, T 886/96 and T 989/96). In
T 1011/92 and T 517/97 (OJ 2000, 515) the board ruled that an intervener must pay the
fee if he wants to have his own right to appeal proceedings, in the sense that he can
continue them if the original appellant withdraws his appeal. However, in T 144/95,
where an intervention was filed during appeal proceedings and an appeal fee paid, the
board ordered the appeal fee to be refunded (at the request of the intervener) - under
Art. 107 EPC, an admissible appeal could only be filed by a party who was already a
party to the proceedings leading to the decision and who was adversely affected by it.
Where the intervention was filed during appeal proceedings, the intervener could not
satisfy these conditions, and, (referring to G 1/94, OJ 1994, 787), could not be
considered as an appellant. Whilst Art. 105 EPC provided an exception to the time limit
for payment of the opposition fee under Art. 99 EPC, no such exception was made
concerning the appeal fee.
(b) Withdrawal of appeal
The Enlarged Board has now ruled, in G 3/04 (OJ 2006, 118), that the proceedings
cannot be continued, after the only appeal has been withdrawn, with a party who has
intervened during the appeal proceedings (see also T 694/01, OJ 2003, 250).
(c) Opposition grounds raised
In G 1/94 (see above), the Enlarged Board also examined the question of whether an
intervener could raise any of the grounds for opposition under Art. 100 EPC even if they
had not yet been examined by the opposition division, and found in the affirmative. If a
fresh ground for opposition was raised, the case should be remitted to the department of
first instance unless the patent proprietor wished the board to rule on it there and then. In
T 694/01 (OJ 2003, 250), it was made clear that where a board has decided to maintain
a patent on the basis of a given set of claims and a description to be added to them, in
subsequent appeal proceedings confined to the issue of the adaptation of the description
the previous decision is res judicata and the intervener cannot therefore challenge this
decision by introducing a new ground of opposition.
5.5. Observations by third parties
According to Art. 115 EPC any person may present observations concerning the
patentability of the invention after the publication of the European patent application. This
person shall not be a party to the proceedings before the EPO.
According to T 908/95, no account is taken of a submission in which a third party refers
during appeal proceedings to a public prior use without sufficiently substantiating the
necessary criteria, and if further studies would be needed which could only be carried out
in collaboration with that third party (who is not a party to the proceedings).

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6. Extent of scrutiny
VII.D.6. Extent of scrutiny

Appeals give losing parties the opportunity to challenge first-instance decisions

adversely affecting them, and to try to have them set aside or changed. The appeal
constitutes the subject-matter of the proceedings (G 9/91, OJ 1993, 408; G 10/91,
OJ 1993, 420, point 18 of the Reasons; G 9/92, OJ 1994, 875). The board's power to
decide is determined by the appellant's request(s). The legal and factual framework on
which the contested decision was based determines the limits within which this power
may be exercised (G 9/91, G 10/91, especially point 18 of the Reasons). In the case of
an opposition, this means that the opponent's first-instance requests determine the
extent to which the patent is challenged, and the grounds for opposition to be
considered, at both first and second instance. Beyond that, the boards have no power to
decide. By way of exception to this principle, dependent claims can be examined if the
material already available casts doubt prima facie on their validity, and a new ground for
opposition can be considered with the patentee's consent (G 9/91, G 10/91, T 362/87,
OJ 1992, 522). The appellant's request also defines the limits for applying
Art. 114(1) EPC; beyond it, there is no power to examine the facts (G 9/92, points 3 and
4 of the Reasons).
In admissible opposition appeal proceedings, in the absence of a "request" or reply from
a respondent indicating that the decision of the opposition division should not be
amended or set aside, a board of appeal must still examine and decide whether the
appeal is allowable, in accordance with Art. 110 and 111 EPC (T 501/92, OJ 1996, 261).
The board also upheld T 34/90 (OJ 1992, 454), according to which the procedural
statements made during the first-instance proceedings are not applicable to the appeal
proceedings.
6.1. Binding effect of requests - no reformatio in peius
The question of law referred to the Enlarged Board of Appeal in G 9/92 and G 4/93 (both
OJ 1994, 875) asked whether and to what extent a board of appeal could depart from the
request formulated in the notice of appeal when deciding opposition appeal proceedings,
to the disadvantage of the appellant.
The Enlarged Board took several factors into account. The aim of the appeal was to
eliminate an 'adverse effect'. As the filing of an appeal was subject to a time limit, it
would not be consistent to allow non-appealing parties the unrestricted right to alter the
extent of the proceedings by submitting their own requests without limitation of time. A
non-appealing party as a respondent had the opportunity to make what it considered to
be appropriate and necessary submissions in the appeal proceedings to defend the
result obtained before the department of first instance.
The Enlarged Board thus concluded that:
1. If the patentee was sole appellant against an interlocutory decision maintaining his
patent in amended form, neither the board of appeal nor the non-appealing opponent (as
party to the proceedings as of right under Art. 107, second sentence, EPC) could
challenge maintenance of the patent as thus amended.
2. If the opponent was sole appellant against an interlocutory decision by an opposition
division maintaining the patent in amended form, the patentee was primarily restricted in
the appeal proceedings to defending the patent as thus maintained. Amendments

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proposed by the patentee (as party to the proceedings as of right under Art. 107 EPC,
second sentence) could be rejected by the board as inadmissible if they were neither
appropriate nor necessary (see eg T 321/93).
(a) General issues
The doctrine of reformatio in peius cannot be extended to apply separately to each point
decided by the opposition division (T 327/92; see also T 401/95 and T 583/95).
In T 598/99 the board observed that the principle of reformatio in peius applied so as to
prevent a sole appellant being put in a worse situation than he was in before he
appealed. Where the patentee was the sole appellant, the principle could not serve to
protect the opponent/respondent from being put in a worse situation than he was in
before the appeal (G 9/92, OJ 1994, 875 and G 4/93, OJ 1994, 875). Indeed, whenever
a sole patentee was successful in his appeal against the revocation of his patent, the
opponent would be in a worse position than before. The fact that the opponent was not
entitled to appeal against the decision to revoke the patent was immaterial in that
respect.
In T 149/02 the board stated that the two general principles of procedure - prohibition of
reformatio in peius and the devolutive effect of the appeal, which conferred on the board
the power to consider its subject-matter - were complementary and had to be
implemented in such a way that they did not exclude each other.
(b) Patentee as sole appellant
Applying the principles expounded in G 9/92 and G 4/93 the board concluded in
T 856/92 that in a case where the patentee and sole appellant appealed only in respect
of some of the claims held allowable in the opposition division's interlocutory decision,
neither the board nor the opponent might challenge those claims not questioned by the
appellant.
(c) Opponent as sole appellant
In T 752/93, T 637/96, and T 1002/95 the opposition division had maintained the patent
in amended form and only the opponent had appealed. The non-appealing patentee
proposed amendments during the appeal proceedings. In T 752/93 and T 1002/95 the
board found that amendments proposed by a non-appealing patentee could, according
to G 9/92, be rejected as inadmissible by the board of appeal if they were neither
appropriate nor necessary, ie had not been occasioned by the appeal. According to
T 752/93 the patentee should therefore have the opportunity to correct erroneous
amendments if these were detected later in the proceedings. Similarly, in T 637/96, the
respondent (patentee) was able to request restoration of the claim as granted, as the
amendment made to it in opposition proceedings did not change its subject-matter (ie the
claim as granted and amended meant the same thing) and was therefore unnecessary.
In T 752/93 and T 637/96 the amendments were found not to worsen the sole appellant's
position and the boards thus considered them appropriate and necessary. In T 1002/95
the board pointed out that under R. 57a EPC, which came into force after decisions
G 9/92 and G 4/93, a patentee was entitled to make "appropriate and necessary"
amendments occasioned by grounds for opposition specified in Art. 100 EPC, even if the
respective ground was not invoked by the opponent.

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(d) Revocation of patent

The principles of G 9/92 were applied in T 169/93 to the situation where the patent had
been revoked, not amended. The patentee appealed against the decision to revoke (for
lack of inventive step). The opposition division had found the patent sufficiently disclosed
and novel. The appellant submitted that these issues could not be reopened, as none of
the opponents had appealed this finding, relying on decisions G 9/91 (OJ 1993, 408),
G 10/91 (OJ 1993, 420) and G 9/92 (OJ 1994, 875). The board disagreed, pointing out
that the respondents were unable to file an appeal, not being adversely affected under
Art. 107 EPC, their request for revocation having been granted. Moreover, as the patent
had been revoked, it was not possible for the appellant to have an even worse outcome.
It was thus open to the respondents to re-argue matters which had already been at issue
before the opposition division.
(e) Exceptions to the rule
Limited exceptions to the rule against reformatio in peius exist. In G 1/99 (OJ 2001, 381)
the Enlarged Board of Appeal answered the question referred to it in T 315/97
(OJ 1999, 554), namely, "Must an amended claim which would put the opponent and
sole appellant in a worse situation than if he had not appealed - eg by deleting a limiting
feature of the claim - be rejected?".
The Enlarged Board held that in principle such a claim must be rejected. However, an
exception to this principle might be made where the opposition division had allowed an
inadmissible amendment. In the case at issue the opposition division had done just that
with the agreement of the proprietor, who was thus not adversely affected by the
decision and unable to appeal. The patent proprietor (respondent) had filed during the
appeal proceedings a main request including the added (and unallowable) limiting
feature, and an auxiliary request deleting it (and thus widening the claim). The Enlarged
Board found that the main request had to be rejected because it did not meet the
requirements of the EPC. Moreover, if the principle of reformatio in peius were to be
applied without considering the specific circumstances of the case, the auxiliary request
would also have to be rejected because it would put the opponent (appellant) in a worse
situation than if it had not appealed. The only possible course the board could then take
would be to revoke the patent, there being no further remedy for the proprietor. The
proprietor would thus definitively lose any protection as a direct consequence of an
inadmissible amendment being held allowable by the opposition division. The Enlarged
Board considered it inequitable for the patent proprietor not to be given a fair opportunity
to mitigate the consequences of errors of judgment made by the opposition division. The
patent proprietor should thus be allowed to file requests in order to overcome this
deficiency, as follows:
- in the first place, for an amendment introducing one or more originally disclosed
features which limit the scope of the patent as amended.
- if such a limitation is not possible, for an amendment introducing one or more originally
disclosed features which extend the scope of the patent as maintained, but within the
limits of Art. 123(3) EPC;
- finally, if such amendments are not possible, for deletion of the inadmissible
amendment, but within the limits of Art. 123(3) EPC, even if, as a result, the situation
of the opponent is made worse.

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See T 594/97, T 994/97, T 590/98, T 76/99 and T 724/99 for application of the principles
enunciated in G 1/99.
According to T 809/99 a non-appealing patent proprietor is primarily restricted on appeal
to defending the claims is maintained by the opposition division. If these claims are not
allowable, the principle of prohibition of reformatio in peius applies, i.e. an amended
claim which would put the opponent and sole appellant in a worse situation than if it had
not appealed must be rejected.
The board went on to say that the only exception to this principle as set out in G 1/99
requires consideration of a particular sequence of possibilities for overcoming the
deficiency presented by the claim(s). The first solution for overcoming the deficiency to
be considered (an amendment introducing one or more originally disclosed limiting
features which would not put the opponent (appellant) in a worse situation than it was in
before it appealed) in fact concerns a limitation of the scope of the claim. Such limitation
can also be achieved by deleting the alternative embodiment in the claim, which led to
the deficiency.
The proprietor's argument that the limitation to only one of the two alternatives would
render the scope of protection too narrow for it to be commercially interesting is not a
valid reason for dismissing this solution and proceeding to the next possible solution
indicated in G 1/99 (point 2.4 of the Reasons).
According to an obiter dictum in T 239/96, the board took the view that, in the absence of
a provision on cross-appeal (in German "Anschlussbeschwerde"), reformatio in peius
cannot be ruled out altogether under the EPC, as it might serve as a means of avoiding
unnecessary litigation, while still satisfying the legitimate expectations of the parties for a
fair hearing.
6.2. Subject-matter under examination
The admissibility of the opposition, being an indispensable procedural requirement for
any substantive examination of the opposition submissions, must be checked ex officio
in every phase, including any ensuing appeal proceedings (T 240/99).
No part of a patent's subject-matter (eg individual claims) not opposed within the nine-
month time limit can be reviewed in either opposition or appeal proceedings. The
opponent's statement under R. 55(c) EPC establishes the extent to which the patent is
contested and thus the formal competence of the opposition division or board of appeal.
The only exception to this principle concerns an opposition explicitly directed only to the
subject-matter of an independent claim. In such a case, subject-matter covered by
claims which depend on the independent claim can also be examined as to patentability
(G 9/91, OJ 1993, 408; see also T 323/94).
According to T 896/90, detailed grounds for opposition for a single granted independent
claim do not mean that only that part of the patent is being contested, if the opponent
has indicated that he wants the whole patent revoked. However, in T 737/92 the board
found that an opposition was filed only to the extent that it was substantiated.
Where two opponents lodge appeals contesting different sets of claims and one
subsequently withdraws its appeal, it becomes a party as of right under Art. 107 EPC
and the other opponent becomes the sole appellant. The scope of the appeal is defined

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by the latter's request, which the non-appealing party may not exceed and which binds
the board (T 233/93).
Where the patentee appeals the revocation of the patent, the board is not bound by the
findings of the opposition division; the whole case, including those claims considered
novel by the opposition division, and objected to by the non-appealing opponent, must
be considered (T 396/89). Furthermore, if the patent proprietor as the sole appellant in
the opposition appeal proceedings makes amendments to the version of the patent
adopted in accordance with an interlocutory decision of the opposition division, the board
is both competent and obliged ex officio to examine those amendments from both a
formal and a substantive point of view, even if the respondents expressly agree to them
(T 1098/01).
Claims which remain unchanged after the removal of the references in dependent claims
need not be examined in opposition appeal proceedings to see if they contain grounds
for opposition raised for the first time in those proceedings, unless the patentee consents
(T 968/92).
Where a request is withdrawn during opposition proceedings and is thus not the subject
of the contested decision, a virtually identical request filed during appeal proceedings is
not the subject of the appeal, because the appellant is not adversely affected by the
decision of the opposition division as far as this request is concerned (T 528/93).
Reviewing and eliminating any ambiguities in the claims and description which are not
necessary to refute substantiated grounds of opposition is not part of the review of the
contested decision carried out during opposition appeal proceedings. In the event of
ambiguities in the claims which are not connected to changes in the granted documents,
Art. 69 EPC stipulates that the description and drawings must be used to interpret the
claims, not that the claims must be changed (T 481/95).
In T 653/02 it was held that a board has no competence to examine a newly formulated
claim derived by combination of granted claim 1 with a sub-claim not being within the
extent to which the patent had been opposed; this did not fall within the exception
allowed by G 9/91 (OJ 1993, 408). In T 646/02 the board found that the case at issue
differed from the facts before the board in T 653/02, in that the subject-matter not
opposed was described in the patent and was part of the independent claim as granted
but was not itself the subject-matter of a dependent claim of the patent as granted.
Whether or not the board had competence to examine depended, however, only on
whether the patent was clearly restricted to a subject-matter not covered by the notice of
opposition. This was done in T 646/02 by restriction to the subject-matter of the
deliberately excluded dependent claim and, in the case at issue, by restriction to
deliberately excluded variants of the invention. The board held that the exception in
G 9/91 was not therefore applicable in the present case either, since it was applicable
only to subject-matter implicitly covered by the notice of opposition and not to those
explicitly excluded.
In line with G 9/91, a patent proprietor may in appeal proceedings amend an
uncontested dependent claim in accordance with R. 57a EPC (T 711/04).

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6.3. Patentability requirements under examination

6.3.1 In opposition appeal proceedings
The boards' scrutiny as regards the grounds for opposition is circumscribed by the notice
of opposition filed by the opponent. The Enlarged Board established in G 10/91
(OJ 1993, 420) that only those grounds for opposition already cited at the opposition
stage could be considered on appeal. New ones could be introduced only with the
consent of the patentee, whose power of veto applied regardless of their relevance.
The boards have considered the effects of the above ruling as regards three particular
problems: the meaning of "ground for opposition"; how to proceed where a ground for
opposition has been examined by the opposition division of its own motion; and, how to
proceed where a ground for opposition has been put forward during opposition
proceedings but for some reason not examined by the opposition division.
(a) Definition of new ground for opposition
The Enlarged Board of Appeal was called upon to define the legal concept “grounds for
opposition” in G 1/95 and G 7/95 (OJ 1996, 615 and 626; see also Chapter
VII.C.5.2.2(b)).
Regarding new grounds introduced only at the appeal stage, the Enlarged Board ruled
that by "a fresh ground for opposition" G 10/91 meant a new legal basis for objecting to
maintenance of the patent which was neither raised and substantiated in the notice of
opposition nor introduced into the proceedings by the opposition division under
Art. 114(1) EPC in accordance with the principles set out in G 10/91 (point 5.4 of the
Reasons).
Thus where a patent has been opposed on the grounds set out in Art. 100(a) EPC (ie the
subject-matter is not patentable within the terms of Art. 52 to 57 EPC), but the opposition
has only been substantiated on the grounds of lack of novelty (Art. 54 EPC) and lack of
inventive step (Art. 56 EPC), the ground of unpatentable subject-matter based upon
Art. 52(1) EPC and Art. 52(2) EPC is a fresh ground for opposition and accordingly may
not be introduced into the appeal proceedings without the agreement of the patentee,
see referring decision T 937/91, OJ 1996, 25.
Moreover, in a case where a patent has been opposed under Art. 100(a) EPC on the
ground that the claims lack an inventive step (Art. 56 EPC) in view of documents cited in
the notice of opposition, the ground of lack of novelty based upon Art. 52(1) EPC and
Art. 54 EPC is a fresh ground for opposition and accordingly may not be introduced into
the appeal proceedings without the agreement of the patentee. However, the allegation
that the claims lack novelty in view of the closest prior art document may be considered
in the context of deciding upon the ground of lack of inventive step. (See referring
decision T 514/92, OJ 1996, 270).
T 18/93 and T 796/90 are now overruled as regards the definition of new grounds for
opposition (for an example of the application of these principles, see T 105/94).
An objection of lack of novelty is implicitly contained in a notice of opposition, where an
earlier European application is submitted with the opposition, even though no comments
as to novelty are made. This is because, according to Art. 56, second sentence, EPC
such state of the art cannot be considered in deciding whether there is an inventive step,

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and so can only be relevant to novelty. It is not, therefore, a new ground for opposition
within the meaning of G 7/95 (T 455/94).
Similarly, although objections concerning the requirements of Art. 123(2) EPC were not
expressly pleaded under R. 55(c) EPC, but formed part of the opposition division's
decision, the board in T 922/94 held that the objection under Art. 123(2) EPC formed part
of the legal framework of the decision under appeal and the appellant could not rely on
G 10/91 for its request not to admit this ground into the appeal proceedings.
In T 928/93 the opponent had alleged that the patented subject-matter lacked novelty.
This objection failed, because the subject-matter known in the art and the claimed
subject-matter did not have the same features, although they showed the same effect.
According to consistent case law, the disclosure of prior art does not extend to the
equivalents of the subject-matter described therein. Objections based on lack of an
inventive step were raised for the first time by the appellant (opponent) in his reply to the
summons to oral proceedings. Having regard to the decisions of the Enlarged Board in
G 10/91 (OJ 1993, 420) and G 7/95 (OJ 1996, 626), and since the respondent had also
failed to give his consent, such a new ground for opposition was not to be taken into
consideration.
In T 986/93 (OJ 1996, 215) the board made it clear, firstly, that if an opposition division
chose to disregard belated submissions concerning a new ground of opposition, this
could not detract from the fact that the ground had been relied upon, ie introduced,
during the opposition proceedings. Secondly, the procedural decision of an opposition
division to disregard submissions formed an essential element of its decision-making
process and as such was one of the issues subject to review if the final decision of the
opposition division was challenged on its merits. The board stated that although it was
reluctant to interfere with a discretionary decision of an opposition division pursuant to
Art. 114(2) EPC, it would do so where necessary and appropriate (see T 122/84, OJ
1987, 177). The board held that the boards of appeal were not barred from considering a
belatedly submitted ground for opposition which had been disregarded by the opposition
division pursuant to Art. 114(2) EPC if they were of the opinion that the opposition
division had exercised its discretion in this respect wrongly.
In T 520/01 the board stated that, where a ground of opposition, here insufficiency, was
expressly not maintained in opposition oral proceedings by the only party which had
relied on the ground, and the opposition division did not deal with the ground in their
decision, the re-introduction of the ground in appeal proceedings constitutes a fresh
ground which, following opinion G 10/91 (OJ 1993, 420) by analogy, requires the
permission of the proprietor. Even if, read strictly on its wording, G 10/91 does not apply
to withdrawn grounds which were originally sufficiently substantiated, the board found it
necessary to consider an analogous application of the said opinion in the present case
with regard to its general approach towards matter not examined at first instance being
(re-)introduced at the appeal stage. One important factor was the procedural results
which could ensue. One likely effect would be that the case would have to be remitted to
the department of first instance and the patentee would find himself again in exactly the
same position as at the start of the original oral proceedings before the opposition
division. The present board considered that such a possibility was not in accordance with
the view expressed in opinion G 10/91 that the patentee should not face unforeseeable
complications at a very late stage in the proceedings. Such a possibility would be an

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unreasonable burden on the patentee and an open door to abuse (however, see also
T 1066/92).
It is not certain from G 9/91 or G 10/91 whether grounds for opposition which were
considered by the opposition division on submission by one opponent only and then
taken up by a different opponent as the sole appellant can only be examined by the
board with the patentee's consent (T 758/90, where this point did not have to be
decided).
It is, however, clear that other considerations arise where amended claims are proposed:
G 10/91 (OJ 1993, 420) stresses that amendments must be examined fully for
compatibility with the EPC. Thus, where the respondents (opponents) first raised an
objection under Art. 100(b) EPC (insufficient disclosure) during the appeal proceedings
to an amended claim, the appellants could not refuse permission to discuss the new
ground (T 27/95).
In T 922/94, the board stressed that Art. 102(3) EPC in conjunction with R. 66(1) EPC
conferred wide powers upon the boards to consider all possible objections under the
EPC, pleaded or not pleaded, that might arise from an amendment of the claims
originally filed.
The fact that amendments have been made to a claim in the course of the opposition
proceedings does not allow an opponent to raise an admissible objection under
Art. 123(2) EPC at the appeal stage in the absence of the patentee's agreement, if such
objection results from an amendment made before grant and has not been originally
raised as a ground for opposition under Art. 100(c) EPC pursuant to R. 55(c) EPC
(T 693/98).
(b) Ground for opposition examined by the opposition division on its own motion
If an opposition division has examined of its own motion a ground for opposition, then the
board of appeal is empowered to rule on it (see eg T 309/92, T 931/91 and T 1070/96).
In the latter decision, the board stated that since appeal proceedings aimed at a judicial
decision upon the correctness of a decision of the department of first instance, it was
irrelevant which opponent raised a particular objection or whether this particular
opponent was still party to the proceedings, provided that the objection was dealt with in
the decision under appeal.
However, the mere reference to Art. 100(c) EPC in the decision under appeal does not
imply that the corresponding ground for opposition was introduced into the proceedings,
if the decision under appeal did not deal in a substantial way with this ground for
opposition (T 128/98).
(c) Ground for opposition put forward but not examined during opposition procedure
In T 986/93 (OJ 1996, 215) it was held that a board of appeal is not barred from
considering a belatedly submitted ground of opposition which had been disregarded by
the opposition division pursuant to Art. 114(2) EPC if the board is of the opinion that the
opposition division exercised its discretion in this respect wrongly. The board interpreted
opinion G 10/91 to the effect that "new grounds for opposition" meant all those grounds
not put forward until the appeal stage, rather than those - as argued by the appellant -

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not submitted within the opposition period under R. 55(c) EPC or else disqualified by the
opposition division under Art. 114(2) EPC.
In T 274/95 (OJ 1997, 99) the board held that a ground for opposition which was
substantiated in the notice of opposition but which was subsequently not maintained
before the opposition division, if sought to be re-introduced during appeal proceedings
was not a "fresh ground for opposition" within the meaning of opinion G 10/91, and could
consequently be re-introduced into the appeal proceedings without the agreement of the
patent proprietor, in the exercise of the board of appeal's discretion.
In T 131/01 (OJ 2003, 115), the patent had been opposed under Art. 100(a) EPC on the
grounds of lack of novelty and inventive step, and the ground of lack of novelty had been
substantiated pursuant to R. 55(c). The board held that a specific substantiation of the
ground of lack of inventive step was neither necessary - given that novelty was a
prerequisite for determining whether an invention involved an inventive step and such
prerequisite was allegedly not satisfied - nor generally possible without contradicting the
reasoning presented in support of lack of novelty. The objection of lack of inventive step
was thus not a fresh ground for opposition and so could be examined in the appeal
proceedings without the agreement of the patentee.
However, the board in T 520/01 found that where a ground of opposition is expressly
not maintained in opposition oral proceedings by the only party which has relied on the
ground and the opposition division does not deal with the ground in its decision, the re-
introduction of the ground in appeal proceedings does constitute a fresh ground which,
following G 10/91 (OJ 1993, 420) by analogy, requires the permission of the proprietor.
The board also went on to explain that where a ground was substantiated within the
opposition period and the party which had raised the ground neither appeared at the
opposition oral proceedings nor withdrew the ground, the ground had to be dealt with by
the opposition division and could be taken up by other appellants in subsequent appeal
proceedings.
6.3.2 Ex parte proceedings
In G 10/93 (OJ 1995, 172) the Enlarged Board ruled that, where the examining division
had refused an application, the board had the power to examine whether the application
or the invention to which it related met the requirements of the EPC. This also held good
for requirements the division had not considered in the examination proceedings or had
regarded as fulfilled. The board should then, where appropriate, decide either to rule on
the case itself or send it back to the examining division.
This followed from the fact that ex parte review was not of a contentious nature. It
involved examination of the patentability requirements in proceedings in which only one
party (patent applicant) was involved. The departments involved at every instance had to
ensure that these requirements were fulfilled. In ex parte proceedings, therefore, the
boards of appeal were not restricted either to examination of the grounds for the
contested decision or to the facts and evidence on which that decision was based, and
could include new grounds even though in ex parte cases too the main aim of appeal
proceedings was to review the contested decision.
This decision was based on case T 933/92, in which an examining division had refused
an application for non-compliance with Art. 123(2) EPC. Whilst sharing the examining
division's view with respect to Art. 123(2) EPC, the board felt the application should be

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refused for lack of inventive step. In the board's view, the question whether grounds
could be added or replaced was not resolved by G 9/91 and G 10/91.
The extent of the obligation to review a case where the appeal is partially withdrawn is
discussed in Chapter VII.D.11.1.
6.4. Facts under examination - applying Article 114 EPC in appeal proceedings
Parties have no right to determine what facts will be taken into account in a board's
decision. On the contrary, Art. 114(1) EPC - which also applies in appeals proceedings -
requires the board to establish the facts of its own motion (cf. T 89/84, OJ 1984, 562 and
J 4/85, OJ 1986, 205; the former superseded in so far as the view was taken that a
respondent's "cross-appeal" was not necessary).
As the Enlarged Board made clear in G 8/93 (OJ 1994, 887), the board's obligation
under Art. 114(1) EPC exists only once proceedings are pending (see also T 690/98).
Earlier, T 328/87 (OJ 1992, 701) had already ruled that the facts could be investigated
only if the appeal was admissible. There are, however, limits to this obligation, for
example under Art. 114(2) EPC, where facts and evidence are submitted late. The same
applies if an opponent/respondent withdraws his opposition: in T 34/94 the board found
that, "if in the event of withdrawal of the opposition the opponent is the respondent, the
board may take into account evidence which was submitted by the opponent prior to
withdrawal of the opposition. However, for reasons of procedural economy, the duty of
the EPO to examine the facts of its own motion pursuant to Art. 114(1) EPC does not
extend to its having to examine the submission of the opponent that a previous oral
disclosure took place if the crucial facts are difficult to ascertain without his co-operation"
(this confirmed the case law in T 129/88, OJ 1993, 598; T 830/90, OJ 1994, 713;
T 887/90, T 420/91 and T 634/91; see also T 252/93).
T 182/89 (OJ 1991, 391) sets out what the obligation to investigate involves;
Art. 114(1) EPC should not be interpreted as requiring the opposition division or board of
appeal to ascertain whether there was support for grounds for opposition not properly
substantiated by an opponent, but as enabling the EPO to investigate fully the grounds
for opposition which were both alleged and properly substantiated pursuant to
R. 55(c) EPC (see also T 441/91 and T 327/92).
T 60/89 (OJ 1992, 268) held that when alleged facts put forward without proof as causing
lack of novelty had occurred a long time previously and the question was no longer
pursued by the parties it was not obliged to investigate the matter ex officio under
Art. 114(1) EPC. Nor did the board in T 505/93 consider itself obliged to carry out any
further investigation when the opponents refused to take part in oral proceedings where
the content of a prior use was to be clarified.
If departments of first instance and/or parties fail to take account of highly relevant matter
which is clearly available in the EPO file and which relates to a ground of opposition, the
board's competence extends to rectifying the position by consideration of that matter
provided, of course, the parties' procedural rights to fair and equal treatment are
respected. This is not only consistent with Enlarged Board decisions G 9/91
(OJ 1993, 408) and G 10/91 (OJ 1993, 420), but incumbent on the board as the last
instance in proceedings concerning the grant or maintenance under opposition of
European patents (T 385/97). It enhances acceptance of the boards' decisions and their
standing as the only judicial body ruling on patentability with effect for all the designated

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contracting states, if those decisions based on all material are submitted during the
appeal proceedings. A document presented in such proceedings should therefore be
taken into account if it is not completely irrelevant or at odds with considerations of
procedural economy (T 855/96).
In T 715/94 the board held that it was entitled to find novelty-destroying a document
submitted but considered irrelevant before the examining and opposition divisions, as
novelty had already been questioned and the document cited in the appellant's notice of
opposition.
6.5. Arguments under examination
The question of whether a party has discharged its onus of proof in relation to the
availability to the public of a document is an argument and not a new ground of appeal.
The prohibitions or restrictions on additions to the extent to which a patent is opposed,
the raising of a new ground for opposition or the introduction of new facts or evidence, do
not apply to the admission of a new argument. Indeed, the very purpose of appeal
proceedings, particularly oral proceedings, is to provide an opportunity for a losing party
to throw new light on relevant aspects of matters which have been decided to his
detriment and/or to draw attention to facts in the reasoning of the department of first
instance that resulted in a decision adverse to him. This can, in practice, best be
achieved by reliance on new arguments. Whilst it is desirable that all relevant arguments
be brought at the earliest possible stage of the proceedings, there is no requirement in
Art. 108 EPC that the statement of grounds of appeal be exhaustive as to the arguments
to be brought (T 86/94).
Similarly, in T 432/94 the appellant was allowed to redefine the problem to be solved by
the invention. The board stated that it could not be concluded from Art. 108, third
sentence, EPC that an appellant was bound to the line of argument he used in the
statement of grounds for the whole appeal proceedings; this dealt with an admissibility
requirement and did not limit the matter in dispute in appeal proceedings.
6.6. Review of first-instance discretionary decisions
If the way in which a department of first instance has exercised its discretion on a
procedural matter is challenged in an appeal, it is not the function of a board of appeal to
review all the facts and circumstances of the case as if it were in the place of the
department of first instance, and to decide whether or not it would have exercised such
discretion in the same way as the department of first instance. A board of appeal should
only overrule the way in which a department of first instance has exercised its discretion
if the board concludes it has done so according to the wrong principles, or without taking
into account the right principles, or in an unreasonable way (T 640/91, OJ 1994, 918; see
also T 182/88, OJ 1990, 287; T 986/93, OJ 1996, 215; T 237/96 and G 7/93, OJ 1994,
775).
7. Filing and admissibility of the appeal
VII.D.7. Filing and admissibility of the appeal

According to Art. 108 EPC a notice of appeal must be filed in writing within two months
after the date of notification of the decision appealed from. The notice shall not be
deemed to have been filed until after the fee for appeal has been paid. The content of
the notice of appeal is set out in R. 64 EPC.

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7.1. Appealable decisions

Under Art. 106(1), first sentence, EPC appeals lie against decisions of the EPO
departments listed in that Article.
7.1.1 Departments
The boards can hear appeals only against the decisions taken by other EPO
departments (J 12/85, OJ 1986, 155). There is thus no right of recourse to the boards of
appeal in respect of extensions of patent applications and patents to the extension
states. Instead, it is the respective national jurisdiction which is responsible (J 9/04, see
also J 2/05).
7.1.2 Decisions
Whether a document constitutes a 'decision' or not depends on the substance of its
content and not on its form (J 8/81, OJ 1982, 10; see also J 26/87, OJ 1989, 329;
J 13/92, T 263/00 and T 713/02, OJ 2006, 267). It is, therefore, not relevant that the text
in question is in the form of a mere letter, not does it matter if it states "… it is decided" to
allow the request. Nor is the fact decisive that the Notice of the Vice-President DG2
dated 28.4.99 uses the wording "Decisions concerning the correction of errors ..."
(T 713/02, OJ 2006, 267). An appeal against a formalities officer's letter rejecting the
opposition as inadmissible was held to be an appealable decision in T 1062/99. A
"decision" needs to involve a reasoned choice between legally viable alternatives
(T 934/91, OJ 1994, 184).
The case law of the boards of appeal has established that the following are not regarded
as appealable decisions by other EPO departments:
(i) A request under R. 89 EPC for correction of a contested decision. Not until the
request has been decided at first instance can the matter be referred to the board
(J 12/85, OJ 1986, 155).
(ii) The preparatory steps referred to in Art. 96(2) EPC and R. 51(3) EPC (T 5/81,
OJ 1982, 249).
(iii) A communication under R. 57(1) EPC (T 222/85, OJ 1988, 128), or R. 69(1) EPC
(J 13/83).
(iv) A communication from the opposition division finding that an opposition has been
validly filed, and stating that the decision will be taken on that point at the oral
proceedings (T 263/00).
(v) An order by a director of a department of first instance (such as an opposition
division) rejecting an objection to a member of the division on the ground of suspected
partiality. The composition of the division can, however, be challenged on such a ground
in an appeal against its final decision or against a separately appealable interlocutory
decision under Art. 106(3) EPC (G 5/91, OJ 1992, 617).
(vi) A "decision" by a director on a request for inspection of file. Only the examining
division charged with the technical opinion (Art. 25 EPC) or the Formalities Officer
pursuant to the Notice of the DG2 Vice-President (OJ 1984, 317, revised and
supplemented in OJ 1989, 178 and 1999, 504) has the competence to decide on a

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 VII.D.7. Filing and admissibility of the appeal

request for inspection of file. Such a 'decision' under appeal is therefore void ab initio
and the appeal inadmissible (J 38/97; see also T 382/92).
(vii) A letter bearing the letterhead of an EPO Directorate-General and signed by an EPO
Vice-President, if it is evident from its content that it does not constitute a decision and
from its form that it does not emanate from any of the departments listed in
Art. 21(1) EPC (J 2/93, OJ 1995, 675).
(viii) The minutes of oral proceedings (T 838/92). A correction to minutes of oral
proceedings made on the initiative of the opposition division was held not directly
appealable in T 231/99.
T 26/88 (OJ 1991, 30), which held that a document stating that the patent was revoked
under Art. 102(4) and (5) EPC did not constitute a decision, was overruled by G 1/90
(OJ 1991, 275).
7.1.3 Interlocutory decisions
Under Art. 106(3) EPC a decision which does not terminate proceedings as regards one
of the parties (interlocutory decision) can only be appealed together with the final
decision, unless the decision allows separate appeal. Separate appeal is possible
against interlocutory decisions regarding admissibility of the opposition (eg T 10/82,
OJ 1983, 407) or maintenance of a patent in amended form (see eg T 247/85 and
T 89/90, OJ 1992, 456).
7.1.4 Appeals against decisions of the boards of appeal
It was established by the Enlarged Board in G 1/97 (OJ 2000, 322) that:
1. In the context of the EPC, the jurisdictional measure to be taken in response to
requests based on the alleged violation of a fundamental procedural principle and aimed
at the revision of a final decision of a board of appeal having the force of res judicata
should be the refusal of the requests as inadmissible.
2. The decision on inadmissibility is to be issued by the board of appeal which took the
decision forming the subject of the request for revision. The decision may be issued
immediately and without further procedural formalities.
3. This jurisdictional measure applies only to requests directed against a decision of a
board of appeal bearing a date after that of the present decision.
4. If the Legal Division of the EPO is asked to decide on the entry in the Register of
European Patents of a request directed against a decision of a board of appeal, it must
refrain from ordering that the entry be made if the request, in whatever form, is based on
the alleged violation of a fundamental procedural principle and aimed at the revision of a
final decision of a board of appeal.
These principles have since been followed in several decisions, for example J 16/98,
J 3/98 and T 431/04.
In T 846/01 it was explained that at least one of the grounds in the written statement of
grounds of appeal must relate to a point which could at least arguably have been
decided in the appellant's favour by the instance appealed from but had not been so
decided. A favourable decision on the point must also have produced a different

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outcome. An appeal cannot be an excuse for requesting consideration of points which

the instance from which the appeal lies was not entitled to consider.
In the case at issue it was clear that the appellants were not contesting the substance of
the opposition division's decision, which dealt with the renumbering of the claims and the
adaptation of the description, but were actually trying to reopen the issue of validity
which had already been decided in an earlier decision of a board of appeal board. Under
Art. 106 EPC and in view of the principle of res judicata, this decision was not open to
challenge.
7.2. Board competent to hear a case
The responsibilities and composition of boards are laid down in Art. 21 EPC. In G 2/90
(OJ 1992, 10) the Enlarged Board made it clear that under Art. 21(3)(c) EPC, the Legal
Board of Appeal is competent only for appeals against decisions taken by an examining
division consisting of fewer than four members and which do not concern refusal of the
application or grant. In all other cases, ie those covered by Art. 21(3)(a), 21(3)(b) and
21(4) EPC, the technical boards are competent. The provisions of Art. 21(3) and (4) EPC
governing responsibilities and composition are not affected by R. 9(3) EPC.
In G 3/03 (OJ 2005, 343), the Enlarged Board of Appeal held that in the event of
interlocutory revision under Art. 109(1) EPC, the department of first instance whose
decision has been appealed is not competent to refuse a request of the appellant for
reimbursement of the appeal fee. It is the board of appeal which would have been
competent under Art. 21 EPC to deal with the substantive issues of the appeal if no
interlocutory revision had been granted which is competent to decide on the request.
An appeal from a decision of an examining division refusing a request under R. 89 EPC
for correction of the decision to grant is to be decided by a technical board of appeal
(G 8/95, OJ 1996, 481, overruling J 30/94).
An appeal against the decision of the examining division refusing a request for
corrections under R. 88 EPC filed after grant of the patent, on the other hand, is to be
decided by the Legal Board of Appeal. The appeal concerned the preliminary question of
whether a request under R. 88 EPC could be made after grant. This was purely a
question of law, and did not concern the refusal of a European patent application or the
grant of a European patent. It was also consistent with G 8/95, as answering the
preliminary question did not involve any consideration of the text with which the patent
should be granted (J 42/92).
7.3. Entitlement to appeal
7.3.1 Formal aspects
Under Art. 107 EPC, an EPO decision can be appealed only by a party to the
proceedings which gave rise to it.
An appeal filed in the name of the representative instead of the party adversely affected
by the decision impugned was rejected as inadmissible in J 1/92.
In T 340/92 the appellant was a company which had obviously been named in the notice
of appeal by mistake, instead of a subsidiary, which was the real opponent. The actual
appellant was the only party adversely affected by refusal of the opposition, and was

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 VII.D.7. Filing and admissibility of the appeal

readily identifiable through its representative, who was named in the appeal dossier. The
board held that this deficiency could be remedied under R. 65(2) EPC.
However, if the notice of appeal is filed by an adversely affected party, but the grounds of
appeal are filed by a different company which was not a party to the opposition
proceedings, let alone a party adversely affected by the outcome of those proceedings,
the appeal cannot be held admissible. No provision having been made in the
Implementing Regulations pursuant to Art.133(3), last sentence, EPC the EPC does not
currently allow the representation of one legal person by the employee of another
economically related legal person, who cannot therefore file the grounds of appeal on the
other's behalf (T 298/97, OJ 2002, 83).
In the absence of any clear indication to the contrary, a professional representative who
was authorised to act for a party adversely affected by a decision and then filed an
appeal against this decision must be presumed to be acting on behalf of the very same
party that he acted for in the first instance proceedings, and not on behalf of someone
else not entitled to appeal (T 920/97).
In G 3/99 (OJ 2002, 347), the Enlarged Board of Appeal held that where the opposing
party consists of a plurality of persons, an appeal must be filed by the common
representative under R. 100 EPC. Where the appeal is filed by a non-entitled person, the
board of appeal shall consider it not to be duly signed and consequently invite the
common representative to sign it within a given time limit. The non-entitled person who
filed the appeal shall be informed of this invitation. If the previous common
representative is no longer participating in the proceedings, a new common
representative shall be determined pursuant to R. 100 EPC.
In order to safeguard the rights of the patent proprietor and in the interests of procedural
efficiency, it has to be clear throughout the procedure who belongs to the group of
common opponents or common appellants. If either a common opponent or appellant
(including the common representative) intends to withdraw from the proceedings, the
EPO shall be notified accordingly by the common representative or by a new common
representative determined under R. 100(1) EPC in order for the withdrawal to take effect.
Concerning the entitlement to appeal of a transferee of a patent, see Chapter VII.D.5.2.2
above.
7.3.2 Party adversely affected
Under Art. 107 EPC, any party to proceedings adversely affected by a decision may
appeal. A party is adversely affected if the decision does not accede to his main requests
or to auxiliary requests preceding the allowed auxiliary request (T 234/86, OJ 1989, 79;
T 392/91). This is not the case if the patent proprietor withdraws his main request or
preceding auxiliary requests and agrees with the allowed auxiliary request (T 506/91,
T 528/93, T 613/97, T 54/00 and T 434/00). In these cases the patent had been
maintained in amended form by the opposition division (for more details about the
relationship between main and auxiliary requests, see also Chapter VI.I.3.). To establish
whether a party has been adversely affected, it is necessary not only to compare his
objective with the substance of the decision but also to check that he was thus affected
at the time the contested decision was delivered and the appeal filed (see T 244/85,
OJ 1988, 216). An appeal is inadmissible where the appellant is seeking only to amend
not the decision itself but the reasons for it (T 84/02) or the sole aim is to settle a point of

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law not relevant to the case (J 7/00), although here the board did decide to rule on the
issue. Abandoning claims to have a prompt decision in order to be in a position to appeal
also results in the appeal being inadmissible where the patentee's requests were actually
granted (T 848/00).
In T 298/97 (OJ 2002, 83), the board held that where the notice of appeal is filed by an
adversely affected party but the grounds of appeal are filed by a natural or legal person
who, although having economic connections with that adversely affected party, is not
itself that party, the appeal cannot be held admissible.
(a) Patent applicant
In J 12/83 (OJ 1985, 6) the board found that an applicant for a European patent might be
"adversely affected" within the meaning of Art. 107 EPC by a decision to grant the
patent, if the patent was granted with a text not approved by him under Art. 97(2)(a) EPC
and R. 51(4) EPC. In J 12/85 (OJ 1986, 155) the board held that he could be "adversely
affected" within the meaning of Art. 107 EPC only if the grant decision was inconsistent
with what he had specifically requested (see also T 114/82 and T 115/82, both
OJ 1983, 323 and T 1/92, OJ 1993, 685). J 5/79 (OJ 1980, 71) ruled that an applicant
whose priority right was found to have lapsed because he failed to file the priority
documents was no longer adversely affected if re-established in his rights before the
application was published.
An applicant was 'adversely affected' and thus able to file an appeal where the
examining division had rectified its decision but refused to grant reimbursement of the
appeal fee (J 32/95, OJ 1999, 713).
The grounds forming the basis of a decision on rectification should not be interpreted to
mean only the legal basis of the decision, but also the factual reasons supporting the
legal basis. An applicant adversely affected by the factual basis was thus considered
adversely affected in T 142/96.
(b) Patent proprietor
In T 73/88 (OJ 1992, 557) the board ruled that if a patentee's request that his patent be
maintained was upheld by a decision of the opposition division, he could not appeal
against adverse reasoning in the decision (here, regarding his claim to priority) because
he was not adversely affected by it within the meaning of Art. 107 EPC.
In T 457/89, by analogy with G 1/88 (OJ 1989, 189), the board took the view that the
appellant (patentee) was adversely affected by the decision revoking his patent, despite
failing to comment on a communication within the time specified in an opposition
division's invitation under Art. 101(2) EPC and R. 58(1) to (3) EPC. For according to
G 1/88, wherever non-compliance could lead to loss of rights the EPC always expressly
indicates this and Art. 101(2) EPC makes no provision for any loss of rights.
One of the principles representing the fundamental value of legal procedural certainty is
that a party is not to be regarded as adversely affected within the meaning of
Art. 107 EPC by a decision which grants his final request. A request under R. 88 EPC for
correction of a document as the sole reason for the appeal is inadmissible. (T 824/00,
OJ 2004, 5). In this case the proprietor had requested correction under R. 88 EPC of his
letter withdrawing all requests (see also T 961/00 and J 17/04). In the latter decision the
board found that although the notice of appeal only referred to a correction of the

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 VII.D.7. Filing and admissibility of the appeal

decision under appeal under R. 88 and 89 EPC, he made therewith (implicitly) the
allegation that the decision under appeal incorrectly limited the regional scope of the
patent and that this decision should be set aside. The board was therefore satisfied that
the appellant had sufficiently claimed to be adversely affected and the appeal was
admissible.
(c) Opponent
Under R. 58(4) EPC, before the opposition division decides on the maintenance of the
patent in amended form, it shall inform the parties of its intention to do so and shall invite
them to state their observations if they disapprove of the text.
The application of this rule by the department of first instance (see Guidelines D-VI, 6.2.1
- March 1985 version) and also in many appeal proceedings led to a referral to the
Enlarged Board in T 271/85 (OJ 1988, 341). In T 244/85, for example, the board had
held that silence in respect of a communication within the meaning of R. 58(4) EPC was
to be interpreted as a sign of agreement to maintenance of the patent in the proposed
form; an appeal by an opponent who had not notified his disagreement to maintenance
of the patent as amended within the time limit under R. 58(4) EPC was inadmissible,
because he could not claim to have been adversely affected. The point of law referred to
the Enlarged Board was: "Is the appeal of an opponent admissible in a case where,
following notification of the communication pursuant to R. 58(4) EPC, he fails to make
any observations within one month if he disapproves of the text in which it is intended to
maintain the patent?" (the time limit is now two months).
The Enlarged Board found in G 1/88 (OJ 1989, 189) that the fact that an opponent had
failed, within the time allowed, to make any observations on the text despite an invitation
to do so under R. 58(4) EPC did not render his appeal inadmissible.
It reasoned that to regard silence as betokening consent would be tantamount to
withdrawal of the opposition with consequent surrender of the right to appeal. Surrender
of a right could not, however, be simply presumed. Deeming silence to be equivalent to
surrender would also be inconsistent with the logic of how the EPC operated, since it
would be at odds with its basic drafting philosophy and with the way in which it dealt with
losses of rights. Where the legal consequence of an omission was to be a loss of rights,
this was expressly stated. It also had to be remembered that under Art. 164(2) EPC the
Implementing Regulations had always to be interpreted in the light of the EPC.
Consequently, the interpretation of the Implementing Regulations which corresponded
most closely to the principles of the EPC prevailed. It was a principle of the EPC,
however, that parties' rights were safeguarded by the possibility of appeal to at least one
higher-ranking tribunal. The Implementing Regulations should therefore be construed in
such a way that R. 58(4) EPC was not allowed to interfere with the right of appeal under
Art. 106 and 107 EPC. The teleological interpretation, that is to say interpretation in the
light of the sense and purpose of the procedure under R. 58(4) EPC, lead to the same
goal.
In T 156/90 the opponent had stated that he would have no objection to maintenance of
the patent if the claims were amended in a specified way. The patent proprietor
amended the claims accordingly. However, the opponent appealed against the
interlocutory decision maintaining the patent as thus amended, arguing that the

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circumstances had changed and he was no longer bound by his consent. The appeal
was dismissed as inadmissible.
In T 266/92, on the other hand, the opponent had declared in opposition proceedings
that he would withdraw his request for oral proceedings if the patentee agreed to an
amended wording of the patent, as indeed he did. The opposition division maintained the
patent in amended form. The opponent appealed, requesting that the patent be revoked.
The patentee took the view that the opponent had not been adversely affected because
by withdrawing his request for oral proceedings he had implicitly approved the wording of
the patent. The board of appeal disagreed, holding that withdrawal of a request for oral
proceedings did not in itself imply withdrawal of any other existing request. There might
be reasons other than consent - such as a wish to save costs or obtain a quicker
decision - for a party who originally asked for oral proceedings to drop his request.
Accordingly, the board concluded that the appellant was adversely affected within the
meaning of Art. 107 EPC, and was entitled to appeal.
In T 299/89 the board considered the extent of entitlement to appeal of an opponent who
in his opposition had requested only partial revocation but in his appeal wanted the
whole patent revoked. It decided that this was determined by the scope of the original
request made in the opposition. The opponent was only adversely affected within the
meaning of Art. 107 EPC to the extent that this request was not granted, and he could
not on appeal file a wider request.
An opponent is not adversely affected by obiter dicta reasons given in a revocation
decision and favourable to the patent proprietor, and which it is appropriate for the
opposition division to include to obviate remittal in the event of revocation being reversed
on appeal (T 473/98, OJ 2001, 231).
In T 273/90 the board concluded that legal uncertainty arising from inadequate
adjustment of the description to amended claims constituted sufficient grievance under
Art. 107 EPC, as the commercial interests of the appellant (opponent) could be
adversely affected (likewise T 996/92).
In T 833/90 the board held that an appeal should be considered admissible if it was not
clear or ascertainable whether the opponent (appellant) had agreed to maintenance of
the patent.
7.4. Form and time limit of appeal
Under Art. 108 EPC, notice of appeal must be filed in writing within two months after the
date of notification of the decision under appeal. Thus an appeal filed via electronic
means (epoline®)), not being "in writing" must be rejected as inadmissible (T 781/04 and
T 991/04, referring to the EPO Notice dated 9.12.2003 concerning the My epoline®
portal).
Under R. 64(a) EPC the notice of appeal must contain the name and address of the
appellant and under R. 64(b) EPC a statement identifying the decision which is
impugned and the extent to which amendment or cancellation of the decision is
requested.
For a notice of appeal to comply with Art. 108, first sentence, EPC and R. 64(b) EPC, it
must express the definite intention to contest an appealable decision. An appeal filed as
a subsidiary request, ie conditional on the main request not being allowed by the

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 VII.D.7. Filing and admissibility of the appeal

department of first instance, is therefore inadmissible. This is because there should be

legal certainty as to whether or not a decision is contested in view of, firstly, the time limit
under Art. 108 EPC, secondly, the further steps to be taken by the first instance under
Art. 109 EPC, and particularly in view of the suspensive nature of the appeal under
Art. 106(1) EPC (J 16/94, OJ 1997, 331, confirmed by T 460/95, OJ 1998, 588).
Notification of the case number and the responsible board of appeal by the registry does
not constitute a decision under R. 69(2) EPC recognising that an appeal is pending
(T 371/92, OJ 1995, 324; see also T 1100/97 and T 266/97).
7.4.1 Form and content of notice of appeal
(a) Rule 64(a) EPC
In decision T 483/90 the board held that the appellants were sufficiently identified if, in
the notice of appeal, their name was incorrectly given and their address was missing but
the number of the contested patent and the name and address of the professional
representative were the same as those cited in previous proceedings and the appellants
were referred to as the opponents in those proceedings. In T 1/97 the board held that the
notice of appeal should contain the true name of the appellant. If not, the deficiency
could be corrected under R. 65(2) EPC.
In T 613/91 the appellant's precise address was missing from the notice of appeal, but
was known to the parties and the board from the opposition proceedings. The board held
that there was sufficient information for identification within the meaning of R. 64(a) EPC.
In T 867/91 the notice of appeal designated the patent in suit by its number and the
decision under appeal by its date. It also contained the name of the patentee, as well as
the name and address of the appellant's representative. It did not contain the address of
the appellant and did not expressly state that the patentee was the appellant. The board
held that the requirements of R. 64(a) EPC had been met since the notice of appeal
provided sufficient information to identify the appellant and his address.
Correction of the name of the appellant to substitute a natural or legal person other than
the one indicated in the appeal is allowable under R. 65(2) EPC in conjunction with
R. 64(a) EPC, if it was the true intention to file the appeal in the name of said person and
if it could be derived from the information in the appeal, if necessary with the help of
other information on file, with a sufficient degree of probability that the appeal should
have been filed in the name of that person (T 97/98, OJ 2002, 183; see also T 15/01,
OJ 2006, 153 and T 715/01).
(b) Rule 64(b) EPC
If the extent to which cancellation of the decision is requested is not expressly stated in
the notice of appeal, the board will examine whether the relevant information can be
determined from the totality of the appellant's submissions (see T 7/81, OJ 1983, 98 and
T 32/81, OJ 1982, 225; see also T 932/93 and T 372/94).
In T 85/88 the appellant had filed the notice of appeal in due time. However, the
statement identifying the extent to which cancellation of the decision was requested,
required by R. 64(b) EPC, was only submitted after expiry of the period for appeal. The
board held that the extent of the request made on appeal could be inferred interpreting
the notice of appeal in an objective way (see also T 1/88).

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T 631/91, T 727/91 and T 273/92 confirmed the principle that the appeal's scope can be
ascertained from the appellant's overall submissions if the request filed in the appeal
proceedings does not make this clear. Since no indication was made to the contrary in
the appellant's submissions, the board of appeal assumed that he wished to file a
request in the appeal proceedings along the same lines as that filed in the opposition
proceedings (see also T 925/91, OJ 1995, 469 and T 281/95).
According to T 194/90, this principle also applies where an appellant (patentee) appeals
against revocation of his patent by the opposition division but without formally specifying
his request. He is then regarded as maintaining unchanged the request made at the
opposition stage.
In T 632/91 the notice of appeal did not explicitly identify the extent to which amendment
or cancellation was requested of the decision under appeal, which refused the sole
version of the patent application. The board found that the wording "... we hereby file
notice of appeal to the decision ..." had to and could only be construed as a request to
set aside entirely the decision under appeal and to grant a patent on the basis of the
documents of the European patent application to which the decision under appeal
referred. The appeal thus fulfilled the requirements of R. 64 (b) EPC and was admissible
(see also T 49/99).
It is sufficient to establish admissibility of an appeal to put forward requests,
accompanied by reasons why the decision under appeal does not meet the requests
filed in the grounds of appeal (T 445/97).
If the only ruling in an opposition division decision is that the patent is revoked, a
statement by the patent proprietor that he is appealing against the decision is invariably
tantamount to his stating that he wishes and hence requests that the decision be set
aside in its entirety, because setting aside has to be unitary. Hence the content of the
notice of appeal is what R. 64(b) EPC demands as one of its requirements for an
admissible appeal, ie a statement identifying the extent to which cancellation of the
decision is requested (T 407/02).
7.4.2 Appeal filed within the time limit
In T 389/86 (OJ 1988, 87) the board stated that an appeal which is filed after
pronouncement of a decision in oral proceedings but before notification of the decision
duly substantiated in writing complies with the time limit pursuant to Art. 108, first
sentence, EPC.
Unless the translation of the notice of appeal in an official language of the EPO is filed in
due time, the notice will be deemed not to have been received according to
Art. 14(5) EPC and the appeal not to have been filed (T 323/87, OJ 1989, 343; see also
T 126/04).
According to T 1281/01 the legal fiction that the decision (under appeal) has actually
been delivered on the tenth day following its posting (R. 78(2) EPC) does not apply when
it was actually delivered to a previously authorised representative after she had notified
the EPO that the file had been transferred to another representative. Pursuant to
R. 82 EPC, the decision under appeal was deemed to have been notified on the date it
was received by the authorised representative and the appeal had thus been filed in due
time.

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 VII.D.7. Filing and admissibility of the appeal

Similarly, where an appellant is misled by the EPO into thinking that the decision issued
is only a draft, being replaced by a second one, it is sufficient if he files the appeal within
four months of notification of the second written decision (T 830/03).
7.4.3 Payment of appeal fee
If no written notice of appeal has been filed within the time limit the question has arisen
whether merely paying the fee for appeal constitutes a valid means of lodging an appeal.
In T 275/86 the board had held that payment with EPO Form 4212 05.80 should be
accepted as such a notice since it contains essentially the same information as is
required in a notice of appeal within the meaning of R. 64 EPC. However, the board in
J 19/90 stated that merely paying the fee for appeal does not constitute a valid means of
lodging an appeal. This applies even if the object of the payment is indicated as being a
"fee for appeal" relating to an identified patent application and the form for payment of
fees and costs is used. This was confirmed in T 371/92 (OJ 1995, 324), T 445/98 and
T 778/00 (OJ 2001, 554), where the board also added that the failure to indicate the
provisions of R. 65 EPC in the annex to the communication dealing with the possibility of
appeal does not make this incomplete or misleading.
T 514/05 (OJ 2006, 526) also confirmed that merely paying the fee for appeal does not
constitute a valid means of lodging an appeal. This applies even if the object of the
payment is indicated as being a "fee for appeal" relating to an identified patent
application and the form for payment of fees and costs is used.
7.5. Statement of grounds of appeal
A statement setting out the grounds of appeal must be filed in accordance with Art. 108,
third sentence, EPC.
7.5.1 General principles
In two early decisions the boards of appeal established the principles applicable to
statements of grounds.
In T 220/83 (OJ 1986, 249) the board ruled that the grounds for appeal should specify
the legal or factual reasons on which the case for setting aside the decision is based.
The arguments must be clearly and concisely presented to enable the board and the
other party or parties to understand immediately why the decision is alleged to be
incorrect, and on what facts the appellant bases his arguments, without first having to
make investigations of their own. Whilst passages from the literature setting out the state
of the art may - provided sufficiently precise reference is made to them in the grounds of
appeal - be considered an integral part of the grounds, they cannot by themselves form a
sufficient statement of grounds. This principle was expressly confirmed in many
decisions, for example T 250/89 (OJ 1992, 355), T 1/88, T 145/88 (OJ 1991, 251),
T 102/91, T 706/91, T 493/95, T 283/97, T 500/97 and T 1045/02 (see also T 12/00,
where the case was contrasted with T 220/83 and found to differ on the facts).
Further to these decisions, in T 213/85 (OJ 1987, 482) the board stated that grounds
sufficient for the admissibility of an appeal must be analysed in detail vis-à-vis the main
reasons given for the contested decision. If an opposition had been dismissed on the
grounds of insufficient substantiation and the grounds for appeal merely disputed
patentability without elaborating on the admissibility of the opposition, the appeal was
inadmissible for lack of adequate substantiation (see also T 169/89).

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Appeal procedure

Other decisions have since added to or applied these principles.

Grounds within the meaning of Art. 108 EPC could be deemed to be sufficient if new
facts were submitted which removed the legal basis from the decision. That also applied
where the grounds for opposition were based on new facts and there was no discussion
whatsoever of the grounds for the opposition division's decision (T 252/95).
In T 45/92 the appellant disputed the accuracy of the decision of first instance because a
mistake had been made when assessing inventive step. The board considered the
appeal inadmissible for lack of grounds as the mistake was not very serious and the
contested decision had only been based inter alia on this mistake, and the appellant had
not discussed other considerations with respect to inventive step.
In T 3/95 the opposition division had rejected the opposition, which was based on
Art. 100(a) EPC. The opponent based his appeal on the argument that the problem was
not disclosed and not solved and that the requirements of Art. 83 EPC were not met. The
board found the appeal to be admissible since the second argument, although
specifically referring to Art. 83 EPC, related not only to the sufficiency of disclosure but
also to inventive step insofar as the problem and solution approach required that the
problem to be solved be defined objectively, ie in such a way for it to be credible that this
problem was solved by the claimed subject-matter.
The fact that the points made in the statement of grounds of appeal do not go beyond
those made before the opposition division does not detract from the admissibility of an
appeal. A requirement that new arguments be submitted to render an appeal admissible
would imply that the appealed decision must have been correct. Nor need the appeal
have a strong prospect of success. Moreover, the subsequent withdrawal of a relevant
objection already substantiated in the statement of grounds of appeal cannot
retrospectively detract from the admissibility of the appeal as filed (T 644/97). Irrelevancy
and lack of cogency may lead to an unsuccessful outcome of the appeal, but do not of
themselves render it inadmissible (T 65/96). However, merely referring to one's own first-
instance submissions cannot normally replace an explicit account of the legal and factual
reasons for the appeal. Only exceptionally has the case law allowed substantiation to
take that form. References to earlier submissions, even when taken together with the
contested decision, do not as a rule clearly indicate which grounds of the decision are
regarded as mistaken, and why. The board and the opposing party cannot then consider
the merits of the appeal without making investigations of their own (T 349/00; see also
T 165/00).
7.5.2 Exceptions to these principles
In some cases, boards have considered appeals to be admissible even if their grounds
did not meet the requirements described above.
(a) Appeal does not give detailed reasons
In J 22/86 (OJ 1987, 280) the board made it clear that where the written statement did
not contain such full reasons, the requirement for admissibility might be regarded as
satisfied if it was immediately apparent upon reading the decision under appeal and the
written statement that the decision should be set aside.
In T 1/88 the board considered that the criteria of T 220/83 and T 213/85 were satisfied
by a statement of grounds in which it was merely argued by the appellant that a

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 VII.D.7. Filing and admissibility of the appeal

document, which allegedly showed that the process of the patent in suit was obvious,
had not been properly evaluated. The question of inventive step, on the lack of which the
contested decision had been partly based, was not dealt with in detail.
In T 925/91 (OJ 1995, 469) the board held that if the opposition division had considered
the merits of a case but nevertheless rejected the opposition as inadmissible, and if the
appellant had only dealt with the substantive arguments in his statement of grounds for
appeal, the grounds for appeal were not adequately defined (see T 213/85, T 169/89 and
T 534/89). However, since the action of the opposition division was erroneous and
misleading (its decision having examined the substance of the opposition although
considering it inadmissible), the principle of good faith (G 5/88, OJ 1991, 137) dictated
that the appeal should nevertheless be held to be admissible.
In T 574/91 the appellant merely argued that the opposition division "had missed the
point", without discussing the reasons for the decision. The board considered this
statement of grounds admissible even though it did not discuss any of the arguments in
the contested decision and the sole argument put forward bore no connection with the
decision. In the absence of such specific objections on the part of the appellant, the
appeal in this case was limited to a review of the grounds for revocation of the patent.
In T 961/93 the board took the view that the opponent's appeal was sufficiently
substantiated if the sole ground for the appeal was that the patent proprietor had
submitted a request for the patent to be revoked (see also T 459/88, OJ 1990, 425).
In T 898/96 an applicant did not approve the text of the patent (R. 51(4) EPC), but
requested grant with an amended text. The examining division refused the application.
On appeal the applicant stated that the appeal was "substantiated by the fact that the
grant of the patent is now requested in the form that was previously allowed (see case
T 139/87, OJ 1990, 69)." The appeal was held admissible.
In T 934/02 the board decided that an appeal may be substantiated by filing amended
claims which deprive the contested decision of its basis even though it does not state
any specific reasons why the contested decision is wrong. It would therefore be
unnecessary, for the purpose of adequately substantiating an appeal, to file grounds in
support of a version of a claim that the appellant (patent proprietor) no longer defends in
the appeal proceedings. The board referred to the established case law of the boards
according to which an appeal is sufficiently substantiated even if it does not give the
reasons why the decision is contested, provided two criteria are met: (i) the subject of the
proceedings has changed, eg due to the filing of a new set of amended claims together
with the statement of grounds; and (ii) the reasons for the decision are no longer relevant
in view of the change in the subject of the proceedings.
(b) Appeal is based only on facts which existed already at the time the first instance
proceedings took place but which were not put forward during the proceedings (fresh
case)
In T 611/90 (OJ 1993, 50) the statement of grounds developed an entirely fresh case on
lack of novelty based on a public prior use first put forward in the appeal stage and did
not discuss the reasons upon which the contested decision was based. The board
considered the appeal to be admissible because the fresh reasons presented, though
unconnected with those in the decision under appeal, were still within the same

623
Appeal procedure

opposition ground (see also T 938/91, T 3/92, T 219/92, T 229/92, T 847/93, T 708/95
and T 191/96).
An appeal unconnected with the reasons given in the appealed decision (lack of
inventive step) and directed only to a new ground for opposition (lack of novelty) based
on a new document is contrary to the principles laid down in decisions G 9/91 and
G 10/91 (OJ 1993, 408 and 420), according to which an appeal should be within the
same legal and factual framework as the opposition proceedings. It is tantamount to a
new opposition and is thus inadmissible (T 1007/95, OJ 1999, 733).
(c) Appeal is based only on evidence first introduced with the appeal even if it already
existed and was known at the time the first instance proceedings took place
In T 389/95 an appeal was filed on existing grounds for opposition but based solely on
new evidence introduced in the grounds of appeal. The board found the appeal to be
admissible because the issue of new factual framework was one of fact to be determined
objectively as part of the substantive examination of the appeal. In the board's view, it
followed from the fact that opinion G 10/91 allowed even a fresh legal ground for
opposition to be considered in appeal proceedings if the patentee approved, that an
appeal based solely on such a ground was not ipso facto inadmissible; by the same
token an appeal based on the same legal ground, albeit on a completely fresh factual
framework, might be admissible.
(d) Appeal is only based on new requests
The board of appeal held in T 729/90 that an appeal could be admissible if, despite its
not being clear from the statement of grounds why the contested decision was incorrect,
claims were put forward in auxiliary requests which overcame the objections of the
department of first instance (see also T 105/87 and T 563/91; for the question of whether
the appellants are adversely affected see Chapter VII.D.7.3.2).
An appeal requesting maintenance in full of the patent in suit, yet submitting a new
amended claim was found admissible in T 162/97. It was clear from the statement of
grounds that the appellant considered the reasoning in the decision under appeal no
longer applied in view of the amended claim. The statement of grounds also explicitly
indicated a causal link between the amended claim and the reasons given in the decision
under appeal.
However, where an application is refused under Art. 97 EPC and R. 51(5) EPC, on the
grounds that the applicant neither communicated his approval of the text proposed for
grant within the period according to R. 51(4) EPC nor proposed amendments within the
meaning of R. 51(5) EPC within this period, a statement of the grounds of appeal which
deals only with the issues of the admissibility and allowability of new claims filed with the
statement is inadmissible (T 733/98).
7.5.3 Change of circumstances after delivery of the decision
The above principles cannot be applied in cases where the facts change after the
decision has been reached, so that the decision is based on reasons which are no longer
valid.
In J ../87 (OJ 1988, 323) the board considered that the grounds on which the appellant
relied, although based on a new fact which it would have been more appropriate to refer

624
 VII.D.7. Filing and admissibility of the appeal

to the department of first instance, represented sufficient grounds of appeal, given that if
this new fact was confirmed, the contested decision would no longer have had any legal
basis.
In J 2/87 (OJ 1988, 330) and T 195/90 the board took the view that the minimal
requirements of Art. 108 EPC were satisfied when the notice of appeal could be
interpreted as containing a request for rectification of the decision concerned on the
grounds that, since the conditions enunciated in an earlier communication from the EPO
were now fulfilled, the decision was no longer justified.
The circumstances must already have changed by the time the statement of the grounds
of appeal is filed. In T 22/88 (OJ 1993, 143), the board held that a written statement
announcing only that the appellant will complete an omitted act does not comprise
sufficient reasons, and therefore does not constitute a valid statement of the grounds of
appeal. According to T 387/88 it is sufficient to state that the act whose omission formed
the basis of the decision has now been completed.
7.5.4 Reference to an earlier submission
The boards are often faced with the question of whether a statement of grounds which
refers to submissions made in the first-instance proceedings is sufficient. In principle, a
statement of grounds which merely refers generally to previous submissions is not
considered sufficient (see T 254/88, T 432/88, T 90/90, T 154/90, OJ 1993, 505;
T 287/90, T 188/92 and T 646/92). The few decisions recognising such submissions as
possible grounds for an admissible appeal concerned special cases in which the
arguments presented at first instance already adequately addressed the grounds
underlying the contested decision. Whether a statement of grounds met the
requirements of Art. 108 EPC could only be decided on a case-by-case basis (T 165/00).
Some earlier decisions accepted referral to earlier submissions as sufficient, for example
T 355/86 and T 140/88. In T 725/89 a written submission to the opposition division,
commenting on the result of the oral proceedings and received by the opposition division
before it sent out its written decision, was used as the statement of the grounds of
appeal and was accepted by the board as a valid statement of grounds.
7.5.5 References to other documents
The question has also arisen as to whether a reference to other documents is an
adequate statement of grounds.
Where attention was drawn in the statement of grounds to a passage in the description,
but no submissions made in support of the allowability of the claim, the statement of
grounds was held inadmissible (T 145/88, OJ 1991, 251).
However, where the appellants alleged lack of inventive step, merely referring generally
to several documents, the statement of grounds was held to be sufficient, as the
conclusions which the appellants wished to be drawn from these documents were
evident (T 869/91).

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8. Conclusion of the decision-making process

VII.D.8. Conclusion of the decision-making process

8.1. Closure of the substantive debate

The EPC does not prescribe when the substantive debate should be regarded as closed.
Particularly if oral proceedings take place but end without a decision being delivered, it
often has to be decided whether or not subsequently filed documents should be taken
into consideration. A distinction needs to be made between the following situations:
(i) the board does not announce its decision at the end of the oral proceedings, but
reserves the right to deliver its decision subsequently in writing, but without explicitly
stating that the debate is closed;
(ii) the board declares at the end of the oral proceedings that the debate is closed and
announces that the decision will follow in writing.
In the first case, the boards generally find that submissions filed after the oral
proceedings are out of time and can be considered only if they are relevant
(Art. 114(2) EPC). See, for example, T 456/90 and T 253/92.
In the second case, two solutions have been adopted by the boards. One - adopted in
T 762/90 - consists of stating under "Summary of facts and submissions" that a
document was filed after closure of the debate and that the board will not consider it.
Under this option, the document is automatically excluded from the file. This solution was
also adopted in T 411/91.
The other solution - adopted in T 595/90 (OJ 1994, 695) - is to rule that submissions filed
after closure of the debate cannot be taken into account unless the board decides to
reopen the debate. Under this option the submission has by implication to be examined.
8.2. Decision taken as the file stands
In T 784/91 the board took the view that if in ex parte proceedings the appellant indicated
that he did not wish to comment on the case, this could be construed as signifying
agreement to a decision being taken on the case as the file stands.
8.3. Proceedings after delivery of the decision
In T 843/91 (OJ 1994, 818) it was stated that once a decision had been taken the board
was no longer empowered or competent to take any further action apart from drafting the
written decision (see also T 296/93, OJ 1995, 627, where the board disregarded
statements filed after the announcement of the decision, and T 515/94). In T 304/92 the
respondent's request to file new claims after the chairman had announced the board's
decision was rejected, but recorded (with the response) in the summary of facts.
However, in T 212/88 (OJ 1992, 28) a request for apportionment of costs submitted after
the substantive decision had been announced at the end of the oral proceedings was,
exceptionally, admitted. Although the practice of the boards was that all requests by
parties, including any request as to costs, should be made before any decision was
announced in oral proceedings, this practice had not been published and so there was
no reason why parties or their representatives should be aware of it. In T 598/92 an error
in a claim was corrected at the request of the appellant one day after the decision was
delivered at the end of oral proceedings.

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 VII.D.9. Remittal to the department of first instance

8.4. Interlocutory decisions of a board

The finding that an appeal is admissible may be given in an interlocutory decision.
Art. 110(1) EPC and R. 65 EPC show that the boards have to examine whether an
appeal is admissible before considering its merits. An interlocutory decision might be
appropriate where the points of law concerning admissibility are of general significance
and require a speedy decision (T 152/82, OJ 1984, 301; see also T 109/86 of
20.7.1987).
The boards have also issued interlocutory decisions on re-establishment in respect of
the time limits for appeal (T 315/87 of 14.2.1989 and T 369/91, OJ 1993, 561), on the
admissibility of an opposition (T 152/95 of 3.7.1996), and to inform the public rapidly
(pending the final decision) that a mention of grant in the European Patent Bulletin was
incorrect because of the appeal's suspensive effect (J 28/94, OJ 1995, 742). Referral of
a point of law to the Enlarged Board is also an interlocutory decision.
9. Remittal to the department of first instance
VII.D.9. Remittal to the department of first instance

Under Art. 111(1) EPC the board of appeal may either decide on the appeal or remit the
case to the department which was responsible for the decision appealed. Criteria for the
exercise of this discretion have been developed by the boards as follows:
If a document is relied upon for the first time during the appeal proceedings and it is
admitted because it is relevant, the case should normally be remitted to the department
of first instance (see eg T 28/81, T 147/84, T 258/84, OJ 1987, 119; T 273/84,
OJ 1986, 346; T 170/86, T 198/87, T 205/87, T 215/88 and T 611/90, OJ 1993, 50).
Where the examining division sent the appellant a computer-generated translation of a
Japanese paten application four days after the oral proceedings the case was remitted
(T 991/01).
If there is no excuse for the late introduction of the document, but the outcome of the
appeal is nevertheless unfavourable to the party which introduced it, then remittal is not
ordered, as depriving the party of the opportunity to have the issues considered at two
instances is not unfair in such a case (see T 416/87, OJ 1990, 415, confirmed in
T 626/88 and T 527/93).
If no new documents are introduced, but merely arguments presented from a different
point of view, or if the claims are maintained on the basis of an auxiliary request which
the department of first instance has already indicated that it would be prepared to accept,
then the desideratum of keeping the procedure as short as possible requires that there
should be no remittal (T 5/89, OJ 1992, 348; T 392/89 of 3.7.1990 and T 137/90).
The amendment of claims during an appeal from a decision to refuse a European patent
application is a matter of discretion under R. 86(3), last sentence, EPC. In a case where
substantial amendments to the claims are proposed on appeal, which require substantial
further examination, the case should be remitted to the examining division. In this way,
the applicant's right to appeal to a department of second instance is maintained, both in
relation to the exercise of discretion under R. 86(3) EPC, and in relation to the formal
and substantive allowability of the amended claims (see leading decision T 63/86,
OJ 1988, 224). Several boards of appeal have applied this case law in their decisions;
T 200/86, T 296/86, T 98/88, T 423/88, T 501/88 and T 47/90 (OJ 1991, 486). However,
the amendment of the claims in response to the citation of a new document during

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Appeal procedure

appeal proceedings is not as such a sufficient reason to remit the case to the department
of first instance (T 111/98). Following this decision, the board in T 98/00 did not remit the
case despite the appellant's request to do so, finding that it would make no sense if the
boards were ipso facto obliged to remit the case whenever new matter was raised in
appeal proceedings, irrespective of the nature of such matter. In T 402/01 of 21.2.2005 it
was held that a patent proprietor has no automatic right of remittal after the citation of a
new document with the grounds of appeal, even if there is a change in factual
framework, at least in cases where the document is filed in reaction to amendment of the
claim, providing that both parties' right to a fair hearing (Art. 113(1) EPC) is not
jeopardised.
Remittal to the department of first instance is normally also ordered where a substantial
procedural violation occurred in the first instance proceedings (T 125/91, T 135/96 and
T 1065/99), even where the violation affects only one of two opponents (T 125/91). This
is required by Art. 10 RPBA, which provides that a board shall remit the case to the
department of first instance if a fundamental deficiency is apparent in the first-instance
proceedings, unless special reasons present themselves for doing otherwise (T 135/96).
Where the board was able, in ex parte proceedings, to decide in the appellant's favour,
remittal was not considered necessary (T 749/02). The ensuing delay of a final decision
in the case was not considered a special reason in T 48/00. Infringement proceedings
before the German courts did not constitute a special reason in T 914/98, where the
board held that the fundamental right of the appellants to a fair hearing before the
opposition division had to outweigh any advantage that might accrue to the respondents
by having the board deal fully with the case rather than remit it. If the composition of the
Opposition Division is contrary to Art. 19(2) EPC, the parties should be given the
opportunity to comment before the board decides on the remittal of the case (T 838/02).
Remittal is, however, not appropriate in all cases:
In T 679/97, despite a substantial procedural violation by the opposition division, the
board decided not to remit, in view of the interest of the parties in having the case finally
decided.
In T 274/88 the board agreed that where an irregularity has been remedied during
appeal proceedings, the matter should still normally be remitted to the department of first
instance. However, in this particular case, which was ex parte, the board did not remit
because, after correction, the subject-matter of the application was patentable, the
appellants had expressly waived their right to have the issues considered at two
instances, and the examining division had already indicated that it was favourably
disposed on the question of patentability.
Nor does there seem to be an absolute right to have an issue decided upon by two
instances. According to T 83/97 it is not mandatory for the appellate instance to remit
every time a fresh case is raised before it, ie the right to two instances might not in each
and every procedural situation be an absolute right of the parties concerned. (In fact, the
matter was remitted as the board found that it would have been a violation of
Art. 113 EPC to have given a final decision on all outstanding substantive matters
against the requests of the parties, who had had no advance warning of such a
procedural possibility, and in view of the long-standing practice of the boards of appeal).
Similarly, in T 249/93 the board held that remittal lay within the discretion of the board.
Where remittal might mean that a final decision was not reached until after the expiry of

628
 VII.D.10. Binding effect

the patent, the board would be inclined to decide the issue itself, unless there were
strong reasons for not doing so.
Nor does Art. 32 TRIPS limit the board's discretion concerning remittal. In T 557/94 the
board held that Art. 32 TRIPS (which provides for the judicial review of any decision to
revoke a patent) did not oblige the reviewing instance to remit the case to the
department of first instance, where the first instance did not revoke the patent and the
reviewing instance intended to deviate from the decision of the first instance.
Art. 111 EPC empowered the board to decide on the merits of the case without
restriction and it would be alien to at least the majority of legal systems in the EPC
contracting states to limit the power of the reviewing instance in such a way that -
dependent upon the "result" of the decision under attack - it would be bound to remit the
case to the first instance. Nor could it be assumed that the states negotiating TRIPS
intended the introduction of such a limitation.
Remittal to the department of first instance to bring the description into line with
amended claims should be avoided if at all possible for reasons of procedural economy,
and although Art. 111(1) EPC permits it (T 977/94).
In the interests of overall procedural economy and effectiveness, the board in T 473/98
(OJ 2001, 231) also found it entirely appropriate and desirable that an opposition division
should include in the reasons for a revocation decision pursuant to Art. 102(1) EPC
employing the standard decision formula, by way of obiter dicta, findings which could
obviate a remittal in the event of the revocation being reversed on appeal. See also
T 915/98. In T 275/99 the board stated that, from a purely procedural point of view, no
objection could be made to the fact that the examining division had left open in the
appealed decision the issue of inventive step, and the case was remitted.
Although both the appellant and the respondents wished the board to make a final
decision rather than remit the case to the opposition division, the board in T 869/98
refused, pointing out that it is not normally the function of the appeal board to consider
and decide upon questions which were raised for the first time during the appeal
proceedings. As there had been no assessment of inventive step at all during the written
appeal proceedings, the board exercised its discretion under Art. 111(1) EPC and
referred the case back to the opposition division.
In T 887/98, on the other hand, the board held that remittal was not justified: the
appellant (patent applicant) had indeed been able to put forward his arguments in
proceedings at both first and second instance, and had been given plenty of time to
study a document D2 before the oral proceedings. Furthermore, the examining division
had found another document to be prejudicial to inventive step, so introducing D2 into
the proceedings before it would not affect its decision. For these reasons, plus
considerations of procedural economy, the board refused the appellant's request for
remittal.
10. Binding effect
VII.D.10. Binding effect

10.1. General principles

Under Art. 111(2) EPC the EPO department of first instance is bound by the ratio
decidendi of the board of appeal if the case is remitted to the department whose decision
was appealed in so far as the facts are the same.

629
Appeal procedure

The problem of being bound by an earlier board of appeal decision where a case is
remitted also arises in connection with a subsequent appeal against the ensuing
decision.
The boards of appeal take the view that a binding effect also exists in this case (see, for
example, T 21/89, T 78/89, T 55/90, T 757/91, T 113/92, T 1063/92 and T 153/93), often
on the basis that board of appeal decisions are final and without appeal, so that no EPO
body - not even boards of appeal - can take a new decision on facts which have already
been decided.
In T 690/91 the argument was that the same binding effect applied to any subsequent
appeal proceedings since, according to Art. 111(1) EPC, the board might exercise the
same power as was within the competence of the department which was responsible for
the decision appealed.
Decisions of the boards of appeal are final, as a decision can only be contested where it
is expressly provided for under statute. There are no provisions in the EPC allowing an
appeal against a decision of a board of appeal (see Art. 21(1) and 106(1) EPC for
appealable decisions). When the first board of appeal delivers its decision, the content
and text of the patent claims become res judicata and can no longer be amended in
proceedings before the EPO (T 843/91, OJ 1994, 818; see also T 153/93).
The fact that the boards of appeal are courts was established in G 1/86 (OJ 1987, 447,
point 14 of the Reasons, German and French versions - the board held that the English
translation, "act as courts", was inaccurate).
The ratio decidendi of a decision under Art. 111(2) EPC is the ground or the reason for
making it - in other words, the point in a case which determines the outcome of the
judgment (T 934/91, OJ 1994, 184). It is not contained in the order but in the section
"Reasons for the Decision" and it is thus of no importance for its binding effect that a
particular matter is not mentioned in the order (T 436/95).
"Res judicata" means a matter finally settled by a court of competent jurisdiction,
rendering that matter conclusive as to the rights of the parties and their privies, such a
final judgment constituting an absolute bar to a subsequent legal action involving the
same claim, demand or cause of action, and the same parties or their privies (T 934/91,
OJ 1994, 184). However, a board of appeal decision has the binding effect referred to in
Art. 111(2) EPC only if the case is remitted to the department of first instance. A board of
appeal decision in another case is not binding on the department of first instance
(T 288/92; see also J 27/94, OJ 1995, 831). Nor is a decision by a board of appeal on an
appeal from an examining division decision binding in subsequent opposition
proceedings or on appeals therefrom, having regard both to the EPC and to the principle
of res judicata (T 167/93, OJ 1997, 229). The binding effect is also not restricted to cases
where the composition of the board remained unchanged (T 436/95).
Where the board, in the decision remitting the case to the department of first instance, is
silent on the question of the adaptation of the description, this does not necessarily imply
that no adaptation is required, but merely that the matter was not considered or decided.
The point is therefore not res judicata and so can be raised in a subsequent appeal
(T 636/97).

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 VII.D.10. Binding effect

10.2. Type of remittal

The legal effects of Art. 111(2) EPC differ in scope according to the type of remittal.
10.2.1 Remittal only for adaptation of the description
In T 757/91 the board decided that if, after the case was remitted, the only issue still
outstanding was the adaptation of the description to the amended claims which were
held valid in the first appeal proceedings, that issue was the only one which could be
considered in further appeal proceedings. When the first board of appeal delivered its
decision, the content and the text of the patent claims became res judicata and could no
longer be amended in proceedings before the EPO (see also T 55/90, T 843/91,
OJ 1994, 832 and T 113/92).
Remittal for the description to be amended does not render it possible for an opponent to
challenge substantive patentability again by appealing the opposition division's decision
after remittal, where a final decision has been taken on this and the scope of the patent
(T 1063/92).
On remittal the board had made no mention of any adaptation of the description that
might be necessary. The patentee proposed amendments to the description which were
accepted by the opposition division. The opponent appealed against this decision,
challenging the novelty and clarity of the claims as already decided upon by the board of
appeal. Following T 843/91 (OJ 1994, 832), the board in T 153/93 found that all findings
of fact that were a conditio sine qua non of the finally binding parts of the decision were
res judicata with the result that new facts, evidence or arguments seeking to cast doubt
upon these facts could not be considered either by the opposition division or the board of
appeal.
10.2.2 Remittal for the continuation of proceedings
If a board of appeal has issued a decision rejecting certain claimed subject-matter as not
allowable and remitted the case for further prosecution in accordance with an auxiliary
request, under Art. 111(2) EPC, the examination for allowability of the rejected claimed
subject-matter cannot be re-opened, either by the examining division during its further
prosecution of the case, or by the board of appeal in any subsequent appeal
proceedings (T 79/89, OJ 1992, 283; see also T 21/89).
A board is bound in the second of two successive ex parte appeal proceedings by the
ratio decidendi of the decision in the first appeal proceedings where the facts remain the
same. It is to be assumed that this is the case where there is no connection between a
feature amended during the second proceedings and findings of the first board of appeal
playing a key role in the decision (T 690/91).
Under Art. 111(2) EPC, if a board of appeal remits a case for further prosecution to the
department whose decision was appealed, that department is bound by the ratio
decidendi of the board in so far as the facts are the same. After grant, however, the
opposition division is in no way legally bound by the previous decision of the board, on
an appeal from the examining division, even in so far as the facts are the same, although
it should not deviate from a previous decision of a board of appeal on such a point,
unless there appear to be very clear reasons for doing so (T 26/93).

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In the opposition proceedings following the remittal for continuation of the proceedings,
an amendment of the patent claims can change the actual basis of an appeal decision.
In such a case the binding effect of Art. 111(2) EPC no longer applies. This differs from
the situation where the case is remitted for adaptation of the description - here the
previous instance is bound by the ratio decidendi of the board's decision, and the
decision on the patentability of the claims is final, even if the facts have changed
(T 27/94).
Art. 111(2) EPC states unambiguously that the department of first instance and the
board of appeal which is again concerned with the case are bound by the ratio decidendi
of the remitting decision only "in so far as the facts are the same". The opposition
division is thus not bound by the first decision if new claims are submitted which are not
in conflict with the ratio decidendi of the decision. The situation is different if the board
has dismissed the decision under appeal and remitted the case to the department of first
instance with the order to maintain a patent with claims whose wording has been defined
by the board. In such a case the department of first instance is not entitled to admit
amended claims, since they are part of the res judicata of the decision of the board
(T 609/94).
In T 255/92 the case was remitted by the board itself "for further prosecution". The board
stated, for the avoidance of doubt, it is pointed out that according to Art. 111(2) EPC the
examining division is bound by the present decision only to the extent that it has been
decided that the subject-matter of claim 1 as amended during the oral proceedings
before the examining division on 15.10.1991 involves an inventive step over the prior art
considered in the present decision (see also T 366/92).
See also T 720/93 for the extent to which a board considered itself bound by an earlier
board of appeal decision in the same case. Although the claim pending before the board
represented different facts from in the first proceedings since it was a different type of
claim and contained a number of different features, the board found some findings of the
first decision binding for the second proceedings.
11. Termination of appeal proceedings
VII.D.11. Termination of appeal proceedings

Under the EPC it is possible to withdraw a patent application, opposition or appeal.

Decision J 19/82 (OJ 1984, 6) ruled that partial withdrawal is also possible. The
consequences of such a withdrawal for pending appeal proceedings are considered
below.
11.1. Withdrawal of the appeal
In G 7/91 and G 8/91 (OJ 1993, 346 and 356) the Enlarged Board of Appeal ruled that as
far as the substantive issues settled by the contested decision at first instance were
concerned, appeal proceedings - whether ex parte or inter partes - were terminated
when the sole appellant withdrew his appeal. The Enlarged Board found that the
provision of Art. 114(1) EPC did not allow for continuation of the proceedings once the
appeal had been withdrawn. This was evident from the legislative rationale of the EPC. If
Art. 114(1) EPC applied to all withdrawal situations, then the R. 60(2) EPC exception for
oppositions would be superfluous. Nor was withdrawal of the appeal covered by "relief
sought" within the meaning of Art. 114(1), second part of sentence, EPC to which the
EPO would not be restricted in examining the facts; it constituted a procedural act not
requiring the consent of the relevant board (point 8 of the Reasons).The appeal

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procedure was that proper to an administrative court, so any exception from general
procedural principles such as the "principle of party disposition" had to be supported by
much weightier grounds than in administrative proceedings. Neither Art. 114(1) EPC nor
the interests of the general public or the respondent constituted arguments against this
interpretation. Art. 114(1) EPC was restricted to the examination of the facts. The
interests of the general public were primarily safeguarded by the opposition system. It
could be assumed that the patent did not disturb those who had not filed an opposition,
so there was no need to continue the appeal proceedings in order to safeguard their
interests. Nor were the respondents' interests any more in need of protection if they had
not themselves filed an appeal, as was explained in detail in G 2/91 (OJ 1992, 206).
Finally, the Enlarged Board pointed out that when the sole appellant withdrew his appeal,
the suspensive effect of the appeal lapsed and the opposition division's decision thus
became final as regards the substantive issue.
If the sole appellant says he has withdrawn his appeal, but the parties are in dispute as
to whether he did so admissibly, then the board is empowered to rule on that issue
(T 659/92, OJ 1995, 519).
After withdrawal of an appeal it is still permissible to decide on ancillary questions
(T 85/84). Thus in T 21/82 (OJ 1982, 256), J 12/86 (OJ 1988, 83), T 41/82
(OJ 1982, 256) and T 773/91, the board of appeal dealt with requests for reimbursement
of the appeal fee filed after withdrawal of the appeal, and in T 117/86 (OJ 1989, 401),
T 323/89 (OJ 1992, 169), T 614/89 and T 765/89 with requests for apportionment of
costs.
According to T 195/93, the fact that the appellant withdrew his appeal after an
intervention was filed could not immediately lead to termination of the proceedings. The
board had to consider the admissibility of the intervention (see Chapter, VII.D.5.4.1).
Partial withdrawal of an appeal by the sole appellant (opponent) following an allowable
limitation of the patent's subject-matter under Art. 123 EPC during appeal proceedings
deprives the board of its discretionary power to examine the substantive merits of the
remaining, limited subject-matter. The patent must therefore be granted in its amended
form (T 6/92 and T 304/99).
The mere fact that a representative has filed a notice of appeal before taking note of the
appellant's adverse instruction does not justify a correction to the effect that no appeal
has been filed. The request amounts to a withdrawal of the appeal with retrospective
effect, which is not provided for in the EPC (T 309/03, OJ 2004, 91).
A notice of abandonment of the patent was held to be tantamount to withdrawing the
appeal in T 1003/01. In T 60/00, however, the appellant's statement that it had decided
not to pursue the appeal was not regarded as unambiguous withdrawal of the appeal,
derived from the principles laid down in earlier case law: effective withdrawal does not
depend on the term “withdrawal” being used (J 7/87, OJ 1988, 422); a request for
withdrawal should only be accepted without question if it is completely unqualified and
unambiguous (J 11/80, OJ 1981, 141); and where any doubt as to a party's intent exists,
the declaration made can be construed as a withdrawal only if the related subsequent
facts confirm that such is the party's true intent (J 11/87, OJ 1988, 367).
A conditional withdrawal of the appeal is not possible (T 502/02). When an appellant has
clearly withdrawn his appeal, the appeal proceedings can be closed without a reasoned

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written decision, even if the appellant has appended to his declaration of withdrawal an
obviously non-allowable request for a refund of the appeal fee (T 1142/04).
11.2. Withdrawal of the opposition during appeal proceedings
The effects of this vary, depending on whether the opponent in the appeal proceedings is
the appellant or the respondent.
In G 8/93 (OJ 1994, 887) the Enlarged Board held that if the opponent as sole
appellant filed a statement withdrawing his opposition this immediately and
automatically terminated the appeal proceedings, irrespective of the patentee's consent.
The proceedings were also terminated if in the board's view the requirements under the
EPC for maintaining the patent were not met. The Enlarged Board emphasised the
distinction between the power to initiate and continue proceedings and the power to
clarify the facts in pending proceedings. According to its case law, in appeal proceedings
the former is exclusively the province of the appellant, whereas the latter may be
exercised by the board subject to Art. 114 EPC provided proceedings are pending.
This confirmed the earlier case law (see T 117/86, OJ 1989, 401; T 129/88,
OJ 1993, 598; T 323/89, OJ 1992, 169; T 381/89 and T 678/90). Any statements made
following withdrawal of the opposition are irrelevant (see T 381/89). T 544/89 is
overruled.
If, however, the opponent is the respondent, withdrawal of the opposition does not
affect the appeal proceedings (see eg T 135/86, T 362/86, T 373/87, T 194/90, T 629/90,
OJ 1992, 654; T 138/91, T 329/92, T 627/92 and T 78/95). However, under T 789/89
(OJ 1994, 482) withdrawal of an opposition by the respondent means the respondent
ceases to be party to the appeal proceedings in respect of the substantive issues; he
remains party to them only as regards apportionment of costs (confirmed by T 82/92,
T 884/91 and T 329/92). T 484/89 on the other hand found that the respondent remained
party to the proceedings although not obliged to take an active part. The opposition
division's decision is not examined "by the Office of its own motion", but as a result of the
appeal, ie on the basis of the "request" by the appellant for the contested decision to be
revoked (T 958/92).
For the consequences of withdrawal of the opposition as regards the board's powers of
ex officio examination of the facts, see above Chapter VII.D.6.4, "Facts under
examination".
11.3. Request for revocation of a patent
If the opponent is the appellant and the patent proprietor makes it clear that he no longer
approves the text in which the patent was granted and will not be submitting an amended
text, under established case law the appeal proceedings are terminated by a decision
ordering revocation of the patent, without going into the substantive issues. This is
supported by Art. 113(2) EPC, which provides that a patent may be maintained only in a
version approved by the patent proprietor. If there is no such version, one of the
substantive requirements for maintaining the patent is lacking (T 73/84, OJ 1985, 241;
T 230/84, T 157/85). This legal consequence ensues whatever the formulation the
patentee uses (see eg T 237/86, OJ 1988, 261 "we herewith abandon the patent" or
T 92/88 "the patent has been allowed to lapse in all designated states").

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The request for revocation is in substance the same as stating disapproval of a given
text of the claims (see T 186/84, OJ 1986, 79; T 315/91, T 370/91, T 936/91 and
T 820/94).
Thus even a statement requesting withdrawal of the application should be interpreted as
a revocation of the approval of the text of the patent under Art. 113(2) EPC (see
T 264/84, T 415/87, T 68/90 and T 322/91).
In T 347/90 the appellant (patent proprietor) gave notice during the appeal proceedings
that he was withdrawing his application. Here the board interpreted his statement as a
request for the revocation of the patent, and dismissed the appeal without going into the
substantive issues, so that the patent's revocation by the department of first instance
was confirmed. In T 18/92 the patent proprietor (appellant) had specifically requested
revocation of the patent. The board interpreted this request as a withdrawal of the
appeal. Withdrawal of the appeal meant that the first-instance decision revoking the
patent took effect. In T 481/96 the board examined the two solutions and endorsed
T 18/92.
Where the respondent (patent proprietor) states that the patent has been abandoned
'since' a particular date, this cannot be considered a request for revocation, as it does
not indicate that the patent has been abandoned ab initio. The case law on requests for
revocation therefore do not apply and the appeal must be examined as to its merits
(T 973/92).
11.4. Patent expired in all designated states
In T 329/88 the board of appeal applied R. 60(1) EPC by analogy to appeal proceedings
and terminated the proceedings without any decision on the issues, since during the
appeal proceedings the European patent had expired in all the designated contracting
states. The appellant (opponent) had not requested continuation of the appeal
proceedings (see also T 762/89, T 714/93, T 165/95). It should be noted here that
termination of proceedings has no repercussions corresponding to those of revocation
under Art. 68 EPC; instead, it is based on the fact that the patent has already expired
without effect ab initio for each designated contracting state.
However, if the appellant (opponent) expresses doubts concerning a respondent’s
(patentee) claim that a patent has lapsed or been surrendered, then the lapse must be
registered with the EPO or properly proved. Otherwise, R. 60(1) EPC is not applicable
and the appeal procedure continues (T 833/94).
In the more recent decision T 708/01, however, it was decided that, where the patent
proprietor has appealed against a decision of the opposition division, the appeal
proceedings can be continued for all the designated contracting states after the
European patent has expired. The patent proprietor can also request that the patent be
maintained as amended with effect only for the past.
12. Interlocutory revision
VII.D.12. Interlocutory revision

Under Art. 109(1) EPC, in ex parte proceedings the department whose decision is
contested must rectify its decision if it considers the appeal to be admissible and well
founded. Inter partes proceedings are excluded from rectification. However, this does not
prevent the department of first instance rectifying its decision where it erroneously

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revokes, on grounds of non-compliance, a patent it had decided to maintain in amended

form (T 168/03).
12.1. General
In case T 139/87 (OJ 1990, 68) the board of appeal made it clear that an appeal by an
applicant for a European patent was to be considered well founded within the meaning of
Art. 109(1) EPC if the main request of the appeal included amendments which clearly
met the objections on which the refusal of the application had been based as indicated
by the examining division. In such a case, the department that issued the contested
decision must rectify the decision. Irregularities other than those that gave rise to the
contested decision do not preclude rectification of the decision (see also T 47/90,
OJ 1991, 486; T 690/90, T 1042/92, T 1097/92, T 219/93, T 647/93, OJ 1995, 132;
T 648/94, T 180/95, T 794/95). However, where the examining division considers that
interlocutory revision will only be possible on condition several objections are overcome
and these objections are unrelated to the refusal and clearly have no link at all to the
decision under appeal, such an approach has no legal basis (T 615/95).
In T 473/91 (OJ 1993, 630) the board made it clear that the admissibility question under
Art. 109 EPC falls under the jurisdiction of the department of first instance only when this
question can be decided immediately on the basis of the appeal submissions
themselves. Consequently, the appellate instance has exclusive jurisdiction over a
request for restitutio in integrum into a time limit relating to the appeal itself.
In T 919/95 the appellant was of the opinion that an interlocutory revision must result in
the appeal being allowed. A 'cassatory' revision that merely sets aside the contested
decision and resumes the suspended proceedings is not compatible with the EPC. The
interlocutory revision must be a 'reformatory' revision, ie one that confers on the
appellant something that the contested decision deprived him of. The board stated that
the requirements of Art. 109 EPC are met if the reason for the contested decision is
removed as a result of an admissible appeal; once the contested decision is set aside
the requested decision can be taken, or the proceedings can be resumed since further
examination is required of new grounds or facts. The latter does not rule out a
subsequent refusal. The purpose of interlocutory revision is to speed up the procedure. If
an examining division rectifies a decision under Art. 109 EPC merely in order to grant a
patent according to an auxiliary request, even though the applicant insists on his main
request, the procedure is not thereby accelerated but slowed down and this would
constitute a substantial procedural violation (see also T 142/96 under Chapter
VII.D.12.3).
12.2. Reimbursement of appeal fee
Decision J 32/95 (OJ 1999, 713) held that under R. 67, second sentence, EPC the
department of first instance, in the event of interlocutory revision under Art. 109 EPC,
can order reimbursement of the appeal fee, but cannot refuse it, and that the power to
refuse reimbursement of the fee resides exclusively with the board of appeal. Under
Art. 109(1) EPC, first sentence, the department whose decision was contested was
obliged to rectify its decision if it considered the appeal to be admissible and well-
founded; it did not then have the power to remit the appeal to a board of appeal. If, given
this situation, the department did not consider the request for reimbursement of the
appeal fee to be well-founded, it had to grant interlocutory revision and to remit the
request for reimbursement of the appeal fee to the board of appeal for a decision.

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 VII.D.13. Referral to the Enlarged Board of Appeal

However, as regards the composition of the board of appeal competent to deal with such
a request, decision J 32/95 is silent. In G 3/03 (OJ 2005, 344), the Enlarged Board of
Appeal held that in the event of interlocutory revision under Art. 109(1) EPC, the
department of first instance whose decision has been appealed is not competent to
refuse a request of the appellant for reimbursement of the appeal fee. The board of
appeal which would have been competent under Art. 21 EPC to deal with the substantive
issues of the appeal if no interlocutory revision had been granted is competent to decide
on the request.
Under Art. 109(2) EPC a case must be remitted to the boards of appeal without delay
and without comments as to its merits if the decision under appeal is not rectified within
one month of receipt of the statement of grounds of the appeal. Therefore, if further
separate issues - such as the reimbursement of the appeal fee - arise out of the appeal,
the department in charge of the case is obliged under Art. 109(2) EPC to take a separate
decision on rectification before the end of the then one-month time period as soon as it
realises that a decision on any further issue cannot be taken within that period (T 939/95,
OJ 1998, 481). Art. 109 EPC has subsequently been amended and the time limit
extended to three months (OJ 1999, 1).
12.3. Substantial procedural violation
Any infringement of Art. 113(2) EPC, even as the result of a mistaken interpretation of a
request, must, in principle, be considered to be a substantial procedural violation. In any
case, such violation occurs when the examining division does not make use of the
possibility of granting interlocutory revision under Art. 109 EPC, after the mistake has
been pointed out in the grounds of appeal (T 647/93, OJ 1995, 132; see also T 685/98,
OJ 1999, 346).
Before the department of first instance can review the admissibility and merits of a validly
filed appeal, it must have available the documents stipulated in Art. 108 EPC. In T 41/97,
the examining division decided not to rectify its decision before receiving the statement
of grounds of appeal and before the time limit for filing it had expired. This was held to be
a procedural violation.
According to T 691/91, Art. 109 EPC provides for two legally viable alternatives: to
maintain or to annul the decision which is appealed. In the case at issue, the examining
division had chosen a third way; maintaining the earlier decision by issuing a decision on
rectification. This alternative was not covered by the provisions of Art. 109 EPC.
In T 142/96 the practice of re-opening examination after rectification was held to be
contrary to the principle of procedural economy underlying Art. 109 EPC and so
constituted a substantial procedural violation.
13. Referral to the Enlarged Board of Appeal
VII.D.13. Referral to the Enlarged Board of Appeal

Under Art. 112(1) EPC it is within the discretion of the boards of appeal to refer a case to
the Enlarged Board of Appeal if this appears necessary for ensuring uniform application
of the law or if an important point of law arises. It was made clear in T 184/91 that only
questions on a specific point, not entire cases, can be referred to the Enlarged Board of
Appeal.
In G 3/99 (OJ 2002, 347) the Enlarged Board of Appeal confirmed what had already
been stated in decision G 8/92 (not published in the OJ), namely that, even if the

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Enlarged Board considers as a matter of principle that, for a referral to be admissible, the
appeal has to be admissible, this does not apply if the referral itself concerns the
admissibility of the appeal. Without this exception, in cases like the one before the board,
the boards would be denied the opportunity to refer questions on important points of law
concerning the admissibility of an appeal. This would contradict Art. 112(1)(a) EPC
where no restrictions of that kind appear.
The following decisions concern mainly those cases in which the request for referral was
refused, since the others have already been dealt with elsewhere.
13.1. Ensuring uniform application of the law
In principle, the boards always refuse requests for referral where there is no
contradictory case law and they see no reason for departing from earlier decisions (see
eg T 170/83, OJ 1984, 605; T 162/85, T 58/87, T 5/89, T 315/89, T 37/90, T 323/90,
T 688/90, T 506/91, J 47/92, OJ 1995, 180; T 473/92, T 952/92 and T 702/93).
There is in principle no contradiction where a different application of the same rule is
justified by different circumstances (T 143/91).
According to T 373/87 there is no contradictory case law where a single, unconfirmed
decision departs from the case law established by several decisions.
13.2. Important points of law
The board took the view in T 601/92 that in certain cases there was no general interest in
clarifying points of law; such points were consequently not important. Nor is the lack of
case law on a particular issue sufficient reason to refer a question (see T 998/99).
A purely theoretical interest in clarifying points of law is no justification for referral
(T 835/90), nor, according to T 118/89, should hypothetical points be referred. Any
question referred must, moreover, be of a legal nature and not just a question of fact.
The board in T 373/87 and T 939/92 took the same view. Nor may technical questions be
referred, according to the board's ruling in T 181/82 (OJ 1984, 401), in which the
appellants requested referral of the question whether a skilled person would readily
understand the technical content of a prior art document on the strength of his own
knowledge (see also T 219/83, OJ 1986, 211 and T 82/93, OJ 1996, 274). In T 972/91
the board ruled that questions to which no general answer is possible cannot be referred.
In this particular case the appellant had requested referral to the Enlarged Board of
Appeal of the question how a patent claim was to be interpreted and understood in view
of the content of the technical teaching. A request for referral must be refused if a
decision can be reached on the basis of grounds other than those to which the proposed
question is related. For a referral to be admissible, an answer to the question must be
necessary in order for the referring board to be able to decide on the appeal (T 520/01).
The boards have not referred questions where they were of the opinion that the
requirement on which the question was based had not been fulfilled (eg in T 727/89,
where the question presupposed that the claim was not novel and the board took the
view that it was; see also T 162/90 and T 921/91).
Where a board intends to rule in favour of the party requesting referral to the Enlarged
Board of Appeal, it on principle refuses the request (see T 461/88, OJ 1993, 295;
T 301/87, OJ 1990, 335; T 648/88, T 180/92 and T 469/92).

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 VII.D.13. Referral to the Enlarged Board of Appeal

According to T 26/88 (OJ 1991, 30) there is no important point of law to be clarified
where the legal situation on which a question is based has changed in the interim and
the question is therefore unlikely to arise again very often.
According to T 247/85 the question of how permission to appeal against an interlocutory
decision should be presented does not involve an important point of law.
Even where a question involving an important point of law has arisen, the boards have
not referred it if they could resolve it themselves without any doubt (see J 5/81,
OJ 1982, 155; T 198/88, OJ 1991, 254; T 579/88 and T 708/90) or if the question was
not relevant for deciding the specific case (see eg J 7/90, OJ 1993, 133; J 16/90,
OJ 1992, 260; J 14/91, OJ 1993, 479; T 72/89, T 583/89, T 676/90, T 297/91, T 485/91
and T 860/91).
In T 82/93 (OJ 1996, 274) no referral was permitted since the question had already been
decided by the Enlarged Board of Appeal. In T 297/88 the board dealt in detail with the
question of when it was possible to refer a question which had already been decided by
the Enlarged Board. It took the view that, in principle, any answer by the Enlarged Board
on a point of law could be called into question if the Enlarged Board's arguments in the
contested decision were so weak that doubts as to the correctness of the decision per se
were unavoidable. This was also the case where the arguments were based on false
premises so that for this reason there were doubts about the conclusion drawn. A
decision could also be questioned where the premises were correct, the arguments were
conclusive and therefore the conclusion was necessarily also correct, but legal or
technical developments occurring in the interim made it seem desirable in the public
interest to have the question reviewed again by the Enlarged Board.
In T 208/88 of 20.7.1988 a question was referred, even though it was already pending
before the Enlarged Board in other proceedings, because new aspects had emerged in
this case which were useful for the decision. A referral was also made in J 15/90,
although the question was already pending, as the board wished to give the Enlarged
Board the opportunity to consider another type of case which might be affected by its
answer. In T 803/93 (OJ 1996, 204) the board referred the question whether a person
other than an authorised representative could appear before a board in technical cases,
thus complementing the question already pending before the Enlarged Board whether
this was possible in legal cases. In T 184/91 a question already pending was referred
again in order to give the parties to the proceedings the opportunity to present their case
to the Enlarged Board.
A board may only refer questions of law to the Enlarged Board of Appeal "during
proceedings on a case" and before it has decided on the issues in the appeal in relation
to which such questions of law are considered to arise. Points of law having the force of
res judicata, cannot be referred to the Enlarged Board of Appeal (T 79/89,
OJ 1992, 283). According to G 8/92 (not published in the OJ), a referral is only possible if
the appeal is admissible, unless the referral concerns a legal point arising in connection
with the admissibility of the appeal.
13.3. Suspension of first-instance proceedings following referral to Enlarged
Board
Whenever a decision of the examining division depends entirely on the outcome of
proceedings before the Enlarged Board of Appeal on a legal question or point of law

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raised under to Art. 112 EPC - and this is known to the examining division - the further
examination of the application must be suspended until the matter is decided by the
Enlarged Board of Appeal. Failure to do so amounts to a substantial procedural violation
under R. 67 EPC (T 166/84, OJ 1984, 489).
14. Filing of amended claims in appeal proceedings
VII.D.14. Filing of amended claims in appeal proceedings

14.1. Admissibility of filing amended claims in appeal proceedings

There are no special rules on filing amended claims in appeal proceedings. Under
R. 66(1) EPC, boards must therefore apply the provisions which governed the
proceedings before the department which took the contested decision. That means
R. 86(3) EPC for examination proceedings and R. 57a EPC for opposition (T 63/86,
OJ 1988, 224; with regard to the application of R. 57a EPC see the recent decision
T 711/04, citing G 9/91, OJ 1993, 408 on the possibility of amending an unopposed
dependent claim). R. 86(3) EPC is the clearest expression of the principle that EPO
proceedings must be conducted expeditiously, in the parties' and the public interest.
Although not stated so clearly in Art. 101 and 110 EPC, this principle also applies to
opposition and opposition appeal proceedings (T 833/90).
Some decisions cite Art. 11(3) RPBA, which says that after oral proceedings before a
board the case should be ready for a decision (T 626/90, T 48/91, T 1150/97,
T 1071/97). A recent decision, T 764/03, notes that Art. 10a(2) RPBA in the amended
version of 1.5.2003 stipulates that the statement of grounds of appeal and the reply must
contain a party's complete case. They must set out all the facts, arguments and evidence
relied on and all requests made. Amendments to a party's case after oral proceedings
have been arranged are not admitted if they raise issues which the board or the other
parties cannot reasonably be expected to deal with without adjournment of the oral
proceedings (Art. 10b(3) RPBA; see also T 1067/03, where Art. 10b RPBA is applied; for
typical decisions based on R. 71a(2) EPC, see T 382/97 and T 476/03).
In T 840/93 (OJ 1996, 335) the board pointed out that, as noted by the Enlarged Board
of Appeal in G 9/91 (OJ 1993, 408), the main purpose of inter partes appeal proceedings
was to enable the losing party to challenge the first-instance department's decision on its
merits. A patentee who had lost before the opposition division thus had the right to have
the rejected requests reconsidered by the board of appeal. The board added that it was
at odds with the purpose of the appeal procedure to file an appeal which not only sought
to reverse the decision on a request already considered by the opposition division but
also made new requests raising issues which the division had never looked at. Admitting
amended requests was justified only if the patentee would otherwise be deprived of any
opportunity of still getting a patent. If however this "last-chance" argument did not apply,
the board should confine itself to its appellate role, deciding only on those requests
already considered by the opposition division (see also T 25/91).
In some cases, the boards do admit amended requests or auxiliary requests in appeal
proceedings because they are serious attempts at overcoming objections, or if their late
filing can be justified and admitting them does not involve the board or the other party, as
the case may be, in an examination which would significantly delay the proceedings
(T 95/83, OJ 1985, 75; T 153/85, OJ 1988, 1; T 406/86, OJ 1989, 302; T 295/87,
OJ 1990, 470; T 381/87, OJ 1990, 213; T 831/92).

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 VII.D.14. Filing of amended claims in appeal proceedings

In T 64/02 the board ruled that where the appellant's only request was for maintenance
of the patent according to an auxiliary request that the opposition division had not
admitted because it had been filed late, the appeal could be dismissed without
examination of the former request's allowability if the board concluded that the opposition
division had been justified in not admitting the auxiliary request.
14.2. Criteria for taking amendments to claims into consideration
In T 382/97 the appellant submitted four amended sets of claims as auxiliary requests 4
to 7 two weeks before the oral proceedings before the board of appeal. The board held
that filing additional auxiliary requests while maintaining already pending auxiliary
requests unchanged could hardly be considered as being an amendment of existing
requests but amounted to submitting new requests, which in principle was not desirable
at a late stage of appeal proceedings. Furthermore, amendment at a late stage of appeal
proceedings should create as little extra work as possible for both the other party and the
board. By filing new requests without commenting either on the need for filing them or on
the admissibility of those already pending the appellant unduly multiplied the workload in
connection with his case. The requests were held not to be admissible.
In T 577/97 the respondent (patent proprietor) submitted an amended set of claims as an
auxiliary request during oral proceedings at the appeal stage. The appellant objected
that the auxiliary request was late-filed and therefore inadmissible. The board held that
the filing of amended claims in opposition proceedings was governed by Art. 123 EPC
and R. 57a EPC, which did not specify a time limit for the amendments. Therefore, a
board had discretion to accept amended claims at any stage of the appeal proceedings.
In exercising that discretion, the board did not need to consider whether or not the claim
was "clearly allowable"; in the board's view, there was no basis in the EPC for refusing
auxiliary requests at oral proceedings under such a criterion. In contrast to the situation
in examination proceedings, where under R. 86(3) EPC amendments submitted after the
time limit set in the EPO's first communication were subject to the EPO's consent,
R. 57a EPC contained no such requirement. Therefore, auxiliary requests should in
principle be refused only in exceptional cases where they amounted to an abuse of
procedural rights.
Over the years, the boards have laid down criteria for limiting the admissibility of
amended requests (on the board's discretionary powers see also T 577/97 above, cited
and discussed in decisions such as T 937/98, T 952/99; and recently in T 872/01,
T 500/01, T 45/03, T 446/00 and T 24/99).
In T 648/96 the board reaffirmed that claims filed late (ie just before or at the oral
hearing) are subject to the same principles in opposition proceedings as in appeal
proceedings
In considering whether late-filed requests were to be admitted into the proceedings,
T 455/03 reviews the relevant case law and the crucial criteria for taking late-filed
amendments into account. As stated in G 9/91 (OJ 1993, 408, point 18 of the Reasons),
the purpose of the appeal procedure in inter partes proceedings is mainly to give the
losing party the possibility of challenging the decision of the department of first instance.
The appealing proprietor of the patent, unsuccessful before the opposition division, thus
has the right to have the rejected requests reviewed by the board of appeal. However, if
he wants other requests to be considered, admission of those requests into the

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proceedings is a matter for the board's discretion, not a matter of the proprietor's right
(see T 840/93, OJ 1996, 335; T 427/99). In the exercise of due discretion over the
admission of requests by the appealing proprietor that were not before the opposition
division, established board case law is that crucial criteria to be taken into account are
whether or not the amended claims of those requests are clearly allowable and whether
or not there is proper justification for their late filing to forestall tactical abuse (see for
example T 153/85, OJ 1988, 1; T 206/93, T 396/97 and T 196/00).
In T 50/02, regarding the admissibility of the seventh auxiliary request, the request was
submitted at the oral proceedings before the board. The appellant (patent proprietor) of
the patent did not provide any justification for such late filing. The respondent objected to
the admissibility into the appeal proceedings of said request as submitted during the oral
proceedings before the board for being late filed.
The board observed that the purpose of the appeal procedure in an inter partes case
was mainly to give the losing party the possibility of challenging the opposition division's
decision on its merits. The appellant (patent proprietor), unsuccessful before the
opposition division, thus had the right to have the rejected requests reviewed by the
board of appeal. If he wanted other requests to be considered, however, admission of
those requests into the proceedings was a matter for the board's discretion, not a matter
of right. In the exercise of discretion over the admission of requests by the appellant
(patent proprietor) that were not before the opposition division, established board case
law was that the crucial criteria were whether or not the amended claims of those
requests were clearly allowable and whether or not those amended claims gave rise to
fresh issues which the other party, ie the respondent (opponent), and the deciding board
could reasonably be expected to deal with properly without unjustified procedural delay.
Thus, considering claim 1 of the auxiliary request amounted to considering a fresh case
which, if admitted, would require the remittal of the case to the department of first
instance for further prosecution in view of the need to start the whole opposition
procedure anew on the basis of the claims of that request. That would not only cause
considerable procedural delay but would also prevent the board from taking a final
decision at the end of the oral proceedings.
Many other decisions refer in very broad terms to the related case law, at least in as far
as it affects the cases the boards were considering. Typical examples are: T 1102/00,
T 710/99, T 735/00, T 922/03, T 476/03, T 1008/02, T 1202/02, T 537/99 and T 699/00.
Similarly, T 397/01 looks at the criteria applied in board case law. New requests
containing amended sets of claims, even if filed at the oral proceedings, may
exceptionally be admitted into the proceedings if the introduced amendments:
- are justified, eg were filed in response to objections or comments which were not part
of the decision under appeal but were raised in writing during the appeal proceedings
- do not extend the frame of discussion as determined by the decision under appeal and
by the statement of the grounds of appeal
- are clearly allowable and thus can be easily dealt with during oral proceedings by the
other parties and by the board (see eg T 1126/97, T 52/99 and T 468/99).

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 VII.D.14. Filing of amended claims in appeal proceedings

The time of filing amended claims or auxiliary requests, in conjunction with the difficulty
of the examination, is an important criterion for assessing whether they can be taken into
consideration in the proceedings.
14.2.1 Time of filing
In T 51/90 and T 270/90 (OJ 1993, 725) it was emphasised that for reasons of fairness
any new claims filed during appeal proceedings should be submitted at least one month
prior to oral proceedings, unless they were simple and clear enough to be understood
immediately and were obviously allowable (see also T 955/91).
In T 831/92 the board held that, as a matter of principle, the filing of an auxiliary request
in opposition proceedings during oral proceedings before a board of appeal is contrary to
procedural fairness. It is difficult for an opponent to deal properly with a request not
presented in good time before oral proceedings, and an adjournment, possibly to another
day in order to allow further searches, might be necessary if the request were to be
admitted.
In T 81/03, one month before the date of the oral proceedings before the board, the
patent proprietor had filed nineteen auxiliary requests. In the course of the oral
proceedings he withdrew all but five. Of these five requests, the board admitted two and
rejected three. It recalled the relevant conditions for late amendments to be admissible
as laid down in case law, namely T 1126/97 and T 633/97; it also cited Art. 11(6) RPBA
(OJ 2003, 61 at 65). In the circumstances of the case the board concluded that it was of
little importance whether the requests were filed during the oral proceedings or shortly
before them, since in either case the new subject-matter would have to be discussed at
the hearing and neither the board nor the other parties could be expected to deal with it
without adjournment of the oral proceedings. Thus requests filed just before the
minimum period set by the board in a summons to oral proceedings were also to be
regarded, in the present board's view, as belated if they raised issues which would
require a further written phase in order to be properly dealt with.
In T 95/83 (OJ 1985, 75) it was decided that amendments not submitted in good time
before oral proceedings in appeal proceedings should only be considered on their merits
where there is some clear justification both for the amendment and for its late
submission (see also T 153/85, OJ 1988, 1).
In T 482/89 (OJ 1992, 646), T 543/89, T 297/91 and T 252/92 the boards of appeal took
account of claims submitted at the beginning of or in the course of oral proceedings as
they were obviously clearly allowable.
In T 406/86 (OJ 1989, 302) the patent proprietor submitted a proposal for amendments
during the appeal proceedings once a draft decision had already been prepared and
examination of the appeal under Art. 110 EPC had been practically completed. The
board considered that admitting the amendments at that stage would have slowed down
the proceedings and affected the rights of third parties. A different conclusion might be
reached in exceptional circumstances, for example, if the amended text were obviously
allowable (see also T 304/92).
In T 794/94 the board stated that exceptional problems sometimes involved in patents in
the field of genetic engineering can make formulation of a suitable request difficult,
and accordingly amount to exceptional circumstances justifying late submission of

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requests formulated to meet objections which have already been considered at length.
However, there is no right to file an endless succession of new requests in substitution
for requests found inadmissible or unallowable by the board. The chances of a request
being accepted even at a very late stage were much improved if it could quickly be
checked that the request met the requirements of Art. 123 and 84 EPC and was
necessary and appropriate to meet a ground for opposition. Thus it was advisable to
submit not just a clean copy of the amended claims, but a copy of the claims as granted
indicating the verbal additions and deletions by which the claims of the new request were
derived from the claims as granted. In addition, for each amendment, all passages in the
original description which were relied on as providing a fair basis for that amendment
should be stated, and it should be stated what ground for opposition that amendment
served to avoid. The addition of dependent claims which did not correspond to any
claims as granted could not remove a ground for opposition but might well give rise to
new objections and issues which would require discussion. Thus such addition could not
be necessary and appropriate, and a request containing additional dependent claims
was likely to be refused admission into the proceedings.
In T 1148/97, claim 1 according to the auxiliary request was submitted only during oral
proceedings before the board.
The board held that claims could still be admitted at a very late stage if the amendments
limited the scope of protection in such a way that revocation could be avoided and the
patent expeditiously maintained in amended form.
In T 1105/98 the auxiliary request was not submitted until the start of oral proceedings
before the board. The board took the view that such a request could be refused as late-
filed under R. 71a(2) EPC, unless it was to be admitted because the subject of the
proceedings had changed. Discretion under R. 71a(2) EPC could be exercised only if no
such change had occurred. The board thought this was the case here; it could therefore
exercise its discretion. In doing so, it had to make sure that the amended claims fulfilled
the formal requirements and appeared likely to succeed, bearing in mind the time
needed to ascertain this but also the right to be heard. These conditions were not fulfilled
if a further search was needed, so that either the oral proceedings had to be postponed
or the matter remitted to the department of first instance for further prosecution.
The board in T 681/02 adopted the view taken in T 1105/98, where the board had held
that, according to R. 71a(2) EPC, it had discretion not to consider amended claims
submitted by the patent proprietor only at the oral proceedings. In the case at issue the
auxiliary request had been submitted by the appellant (patent proprietor) only at the oral
proceedings. If the said request was intended as a response to the board's preliminary
opinion in preparation for the oral proceedings, it could have been submitted prior to the
time limit specified in that opinion, that is to say, up to one month before the oral
proceedings, the appellant having had over three months in which to do so in the case in
point.
The submission which the respondent and opponent 1 had submitted shortly before the
expiry of this time limit and which related to documents D1 to D9 under consideration in
this procedure would likewise not justify the late auxiliary request, since the subject of
the proceedings had not thereby been changed. The appellant also failed to give any
convincing reasons for the late submission of the auxiliary request.

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Claim 1 according to the auxiliary request differed from claim 1 as granted by virtue of an
additionally incorporated feature. The general assumption therefore had to be made that
this feature had not yet been searched.
The appellant's argument that discretion not to admit auxiliary requests should be
exercised restrictively and be limited to exceptional cases appeared to be based on
T 577/97. The subject-matter of the auxiliary request in that case had presumably been
searched. Unlike in the case before the board, therefore, a final examination was
possible at the oral proceedings. In the circumstances the board followed the principles
evolved in the case law and exercised its discretion under Art. 114(2) EPC not to admit
the auxiliary request.
In T 17/97 an amended request was submitted at the oral proceedings before the board.
The board held that the admissibility of amendments to the text of the granted patent
during opposition and appeal proceedings was a matter for the instance in question to
decide at its discretion under R. 57a and 58(2) EPC.
To be admissible, proposed amendments should be appropriate and necessary having
regard to the nature of the grounds for opposition and the issues raised thereby, namely
if they are occasioned by grounds for opposition laid down in Art. 100 EPC.
14.2.2 Difficulty of examination
According to T 570/96, requests for non-substantive amendment or mere limitation of
claims may thus be admitted even at oral proceedings, especially if the board does not
consider them prima facie unlikely to succeed and provided they raise no new novelty
and inventive step considerations compared with the claims as previously worded (see
also T 252/92, T 297/91 and T 119/95).
In T 1004/01 twelve auxiliary requests were filed in response to the board's
communication preparing the oral proceedings and within the one-month time limit set in
that communication. The amendments to the claims concerned only a more restricted
definition of features and values, which were simple and clear enough to be readily
understood by the skilled person. Whereas the amendments were filed in the form of
twelve auxiliary requests, only a small number of amendments presented in different,
clearly structured combinations were involved. Filing a number of auxiliary requests in
appeal proceedings was not unusual, since it was the proprietor's last chance to get his
patent maintained. Thus the appellant's behaviour did not amount to an abuse of
procedure. Hence the amended claims met the established criteria for taking
amendments to claims into consideration.
In T 92/93 the alternative set of claims included new claims containing subject-matter
which had not previously been claimed. The board held that the claims were not clearly
allowable, in the sense that they could quickly be seen by the board both to introduce no
objections under the EPC and to meet all outstanding objections under the EPC (likewise
T 631/92, T 655/93, T 644/89, T 443/87, T 110/85 and T 401/95).
In T 25/91 the board refused to admit the amended claims because, even from a
preliminary examination of the facts, it was clear that the amended claims represented a
radical departure from the claims previously maintained (see also T 234/92, where a
feature from the description was introduced into claim 1, which might have entailed an
additional search, and T 1105/98, where an additional search was necessary).

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In T 48/91 the board rejected as inadmissible the late-filed claims, which contained one
or more additional features the impact of which was either unclear or impossible to
assess without further investigations, such as carrying out proper comparison tests.
In T 17/97 the board held that, to be admissible, proposed amendments should be
appropriate and necessary, namely they should be occasioned by grounds for opposition
laid down in Art. 100 EPC.
14.2.3 Reasons for late filing
Another relevant criterion is the reason why the requests were filed late.
In T 979/02, two days before the oral proceedings the appellants had confirmed that they
would not attend. On the afternoon of the same day they filed an amended set of claims
"as a single Main Request" for the appeal board to consider in their absence. Since they
had not provided any reason why their new request had not been filed within the time
limit set by the board in its communication, and for reasons of procedural economy, the
board had no reasonable alternative other than to decide on the admissibility of the
request by using the criterion of whether the documents of the request would be prima
facie clearly allowable under the EPC. The board decided that to answer this question
the claims on file had to be compared with the description. It concluded that both the
description and the claims taken alone prima facie revealed a number of formal
deficiencies. The appellants, firstly by filing their request so late and secondly by not
attending the oral proceedings which they themselves had requested, had waived the
possibility of meeting the objections in a dialogue for which the board had been
prepared. In the light of these deficiencies, the board decided not to admit the appellants'
late-filed request into the proceedings under R. 86(3) EPC.
The board in T 796/02 decided that it amounted to an abuse of procedure to withdraw a
request with broader claims in proceedings before the board of appeal, in order to avoid
a negative decision being taken on it by the board, but then to re-introduce those broader
claims before the opposition division, having obtained remittal of the case for further
prosecution on the basis of much more limited claims. As the present case showed, the
overall length of further opposition and possibly further appeal proceedings after remittal
was likely to severely impair the legitimate interests of the other party or parties and of
the general public in having some degree of legal certainty about the existence and
scope of the European patent within a reasonable time span. The re-introduction of both
the main and the first auxiliary requests therefore amounted to an abuse of procedure
and, as a result, they were not to be considered by the board.
In T 14/02, during oral proceedings before the board, the respondent (patent proprietor)
asked permission to file further requests aimed at defining the claimed subject-matter
more narrowly. This request was refused by the board for two reasons: firstly, the need
for further requests had been foreseeable before the oral proceedings, since the board,
in a communication, had given a negative reasoned provisional opinion why the main
request did not appear to involve an inventive step; and secondly, the proposed subject-
matter of the requests could entail further searches for the other party with the possibility
of remittal, so that the suggested amendments were not prima facie allowable. In the
absence of any good reason why the requests could not have been filed earlier, the
board saw no reason for admitting them so late in the proceedings. According to the
boards' case law, new claims filed at a late stage in the proceedings may still be
admitted if this does not significantly delay the proceedings.

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 VII.D.14. Filing of amended claims in appeal proceedings

(a) Amendments caused by developments during the proceedings.

The boards generally admit amendments filed in response to observations made by the
rapporteur or the other party (see T 38/89, T 459/91, T 933/91, T 1059/92, T 69/94 and
T 240/94).
In T 626/90 the board decided to admit into consideration both sets of claims submitted
by the respondent at the oral proceedings. The board was satisfied that the new versions
of the claims were bona fide attempts to overcome the objections raised by the
appellants in connection with the question of the inventive step of the claimed process,
and that no question of the appellants being taken unfairly by surprise arose, because in
both requests the amendments were nothing more than a limitation of the claimed
subject-matter to preferred embodiments of the invention as described in the patent in
suit.
In T 833/90 the board held that the fact that the previously approved limitation was not
necessary in technical terms could not be accepted as justification, since the technical
facts remained the same.
In T 152/95 the board of appeal took account of auxiliary requests only filed by the
respondent (patent proprietor) during oral proceedings on the grounds that it was only
during those proceedings that the board took a decision on the relevance of a document
that differed from that of the department of previous instance and as a result ruled that
the subject-matter of claim 1 according to the main request lacked an inventive step.
Since the versions of the claims filed still had to be examined, the board decided to
continue proceedings in writing and to issue a separate decision on the auxiliary
requests.
In T 610/94 the appellants filed a new set of claims during oral proceedings, stating that
they had limited claim 1 in response to prior art from D12, which had not been cited until
shortly before the proceedings, and that the new claims took account of the defects cited
by the board in the appendix to the summons to oral proceedings. The respondents
replied that they had been surprised by the late-filed claims. The board decided to admit
the new claims and to continue with the oral proceedings after an adjournment of some
90 minutes. In its decision it pointed out that the respondents could be expected to
anticipate an amended, restricted claim, since they themselves had only cited D12 for
the first time shortly before oral proceedings. The board held the new claim to be
allowable, stating that under such circumstances amendments of this kind should be
allowed as a matter of course, even during oral proceedings.
In T 231/95 auxiliary request 2 was not filed until the end of oral proceedings on the
grounds that the necessity of further restricting the claimed subject-matter had only
become apparent during oral proceedings. The board however ruled that the discussion
at the oral proceedings had been primarily restricted to the objections already raised in
written proceedings without introducing any surprising new aspects which would have
presented the respondents with a new case. There was therefore no clear justification for
the late filing.
In T 240/94 the late filing had been unavoidable because of a combination of
circumstances, including the relatively short notice given by the board in its summons to
oral proceedings, the fact that the annex to the summons contained an unexpected
negative assessment of one of the technical advantages of the invention put forward by

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the appellant, the difficulties of communication over the Christmas period, and the
unavailability of the client's technical expert. The board decided to admit the new request
despite the fact that the amendment it proposed was new to the proceedings, and had
clearly taken the respondents by surprise. The respondents' representatives therefore
had to be given time to consult their clients and prepare a response. For these reasons,
the board decided at the oral proceedings to continue proceedings on the auxiliary
request in writing.
In T 206/93 the appellant requested a further opportunity to file new claims, if the late-
filed and not clearly allowable ones on file were not accepted after discussion. The board
took the view that this was an auxiliary request which did not, however, specify the
claims to be discussed. To have admitted it would have posed undue difficulties for the
respondents in dealing properly with the new claims, and a possible adjournment would
have led to an unacceptable delay in the proceedings. The board could see no
exceptional circumstances which might have led to any other conclusion; nor had any
such circumstances been advanced by the appellant. The board therefore refused to
admit this unspecified request, as contrary to proper procedure.
(b) Change of party or representative
In T 408/91 the representative of the new patent proprietor filed amended claims at the
opening of the oral proceedings. The board stated that in the case in point, having regard
to the recent change in ownership of the patent, which had occurred long after the date
on which the grounds of appeal were filed, and to the fact that the claims according to
the new request did appear to be a genuine attempt to meet the grounds on which the
patent was revoked by the opposition division, the late-filing seemed to be justified.
In T 830/90 the change of representative was not accepted as justification for the late
requests. The board took the same view in T 382/97, where it stated that only if the
change of representative was necessitated by proven exceptional circumstances might a
different conclusion be drawn.
In T 1032/96 the board held that the case's late transferral to the representative because
a colleague was ill did not fully justify not filing a set of claims until just three days before
the date set for oral proceedings. The claims were late-filed and inadmissible.
(c) Circumstances extraneous to the proceedings
Parties sometimes argue that amendments to the claims are justified by extraneous
circumstances. The boards will not entertain them, as demonstrated by T 160/89 (heavy
workload), T 148/92 (doubts about the definitive design of the invention, or the
appellants' frequent journeys), T 626/90 (no instructions received in time), T 583/93
(OJ 1996, 496, lack of communication between patentee and licensee) and T 575/94
(new instructions).
The board in T 764/03 recalled this aspect of case law. To explain why the auxiliary
requests had not been introduced into the proceedings earlier, the appellants merely
submitted that they had not previously decided on the best approach to pursuing the
patent for competitive purposes. A patent was an economic asset, and its fate was also
dependent on extraneous circumstances, but in the case in point the appellants had not
more closely identified these circumstances. The point in the appeal proceedings at
which requests must be made, when they have to be considered late and the legal

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consequences thereof, are all governed solely by the rules and conditions of the appeal
case at issue. In assessing the point in the appeal proceedings at which requests
substantively shaping the patent must be submitted, extraneous circumstances such as
licence negotiations with competitors or infringement proceedings are not aspects that
can be considered except as justification for a request for accelerated handling of the
case.
14.3. Amended claims not admitted with divisional applications pending
In T 840/93 (OJ 1996, 335) the board held that in the light of G 9/91 and G 10/91
(OJ 1993, 408 and 420) on the purpose of appeals, special attention must be given to
late-filed requests at the appeal stage when divisional applications are still pending. If the
distinction between the subject-matter of the divisional applications is not clear and some
of them are still pending before the department of first instance, it is inappropriate to
admit, during oral proceedings at the appeal stage after opposition, new requests which
are neither immediately allowable nor bona fide attempts to overcome objections raised.
In T 28/92 the claims were not obviously allowable and the alternative of admitting the
requests, but referring the matter back to the department of first instance for further
examination, was not acceptable, particularly as there were still pending divisional
applications of the application on which the patent in suit was based. The board would
not wish to increase the number of proceedings in which much the same subject-matter
was already being considered by various instances of the EPO.
14.4. Remittal to the department of first instance because of substantial
amendments to claims
According to T 63/86 (OJ 1988, 224), where substantial amendments to the claims are
proposed on appeal and the amendments require further substantive examination, the
case should be remitted to the examining division so that this examination can be carried
out, if at all, by the examining division after it has exercised its discretion under
R. 86(3) EPC. In this way the applicant's right to appeal to a department of second
instance is maintained, both in relation to the exercise of discretion under R. 86(3) EPC,
and in relation to the formal and substantive allowability of the amended claims (see also
T 341/86, T 47/90, OJ 1991, 486; T 184/91, T 919/91, T 599/92, T 1032/92, T 1067/92,
T 96/93 and T 186/93).
In T 746/91 the board applied the principles laid down in T 63/86 and remitted the case
to the opposition division for it to examine and decide whether discretion should be
exercised in favour of the appellant, and if so, whether the claims complied with the
EPC's provisions. The board took this view in the particular circumstances because the
opposition proceedings had themselves been comparatively brief and had not involved
the holding of oral proceedings. It had thus adhered to the principle whereby it should be
established swiftly whether or not a patent can be maintained. Moreover, the amended
claims had been filed with the statement of grounds, ie at the earliest possible stage in
the appeal proceedings.
In T 462/94 the board stated that where in the appeal an entirely new situation had been
created by the amendments made, the parties should be given the opportunity to defend
their claims or submissions before two instances. The case was remitted to the
department of first instance for further prosecution.

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In T 125/94 the board remitted the case to the department of first instance because the
amended claims had not only substantially changed the factual framework of the
contested decision, but could also require a search in an additional classification unit to
determine the closest prior art.
According to the board in T 1201/00, if a case is likely to have to be remitted to the
opposition division for it to assess the unexamined issue of inventive step, a new
auxiliary request first submitted during oral proceedings before the board designed to
overcome an objection of lack of novelty compared with a cited document may
exceptionally be admitted and also remitted to the opposition division for final novelty
examination against that document if none of the requests that took precedence can be
granted for lack of novelty. The need for the department of first instance to assess
inventive step against all the cited prior art means that novelty examination against one
cited document would not entail a significant delay in the opposition proceedings.
Exercising its powers of discretion under Art. 111(1) EPC, the board decided to admit the
new auxiliary request and remit the case to the opposition division for a further decision
on the issue. Any short delay that arose from novelty examination against a single
document would be largely negligible in comparison with the unavoidable need to assess
inventive step against all the cited prior art.
15. Reimbursement of appeal fees
VII.D.15. Reimbursement of appeal fees

15.1. General issues

According to R. 67 EPC the reimbursement of appeal fees is ordered in the event of
interlocutory revision or where the board of appeal deems an appeal allowable, if such
reimbursement is equitable by reason of a substantial procedural violation.
The sub-sentence starting "if such reimbursement" read in its context refers both to
interlocutory revisions and appeals. This means that for each of these stages it is a
prerequisite that a substantial procedural violation has occurred and that reimbursement
is found equitable in the discretion of the deciding body (T 939/95, OJ 1998, 481).
In certain cases the boards will, even in the absence of a request to this effect, examine
whether the reimbursement of the appeal fee is equitable by reason of a substantial
procedural violation (J 7/82, OJ 1982, 391; T 271/85 of 22.3.1989; T 346/88, T 598/88
and T 484/90, OJ 1993, 448). They do not, however, have the power to reimburse the
appeal fee if the conditions of R. 67 EPC are not met (T 41/82, OJ 1982, 256).
It also has to be considered that R. 67 EPC applies only to a procedural violation by the
first instance department whose decision is under appeal. Thus, in T 469/92 the alleged
procedural violation was not an act of the opposition division, whose decision was the
subject of the appeal, but instead that of the examining division. Even if such an act were
in breach of the procedural requirements of the EPC, a board of appeal would not have
the power to order reimbursement.
If an appeal is inadmissible or withdrawn the EPC does not provide for reimbursement
of the appeal fee (T 372/99, T 543/99, T 752/05, T 1375/05, T 1216/04). On the other
hand, reimbursement of the appeal fee is ordered if an appeal is deemed not to have
been filed because the appeal fee was not paid in due time in accordance with Art. 108,
second sentence, EPC. In this case, since the purpose of the fee cannot be achieved,
the fee must be repaid without the board of appeal having to make any specific order to

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that effect (J 21/80, OJ 1981, 101; J 16/82, OJ 1983, 262; T 324/90, OJ 1993, 33 and
T 239/92; for the distinction between the existence and admissibility of an appeal, see eg
T 445/98, T 460/95; see also T 778/00, OJ 2001, 554).
In T 323/87 (OJ 1989, 343) the translation of the notice of appeal had not been filed in
due time. The board held that, pursuant to Art. 14(5) EPC, the notice of appeal was
deemed not to have been filed, and ordered reimbursement of the appeal fee. In
T 126/04, on the other hand, the board decided that failure to file a translation of the
notice of appeal in due time meant that the appeal was inadmissible.
In T 308/05 the board ruled that the appeal fee was to be reimbursed even though the
appeal had been withdrawn. In exceptional cases it was possible - outside the scope of
R. 67 EPC - to consider refunding the appeal fee for reasons of equity. A refund had
been ordered, for instance, in cases where the principle of the protection of legitimate
expectations had been violated (J 30/94, J 38/97). The fact that in the present case the
EPO had been found to have breached the principle of the protection of legitimate
expectations, and that the consequence had been the filing of an appeal which was
objectively superfluous, made it necessary for reasons of equity to refund the appeal fee
paid by the appellant.
The appeal fee cannot be refunded on the basis that a statement of grounds was not
filed, or was filed too late (T 13/82, OJ 1983, 411; T 324/90, OJ 1993, 33). This also
applies where the grounds of appeal have deliberately not been filed in order to make
the appeal inadmissible (T 89/84, OJ 1984, 562), or where the appeal, after due filing of
the notice of appeal and payment of the appeal fee, is withdrawn before expiry of the
period for filing the grounds of appeal (J 12/86, OJ 1988, 83). In T 773/91 the only
appellant had withdrawn his appeal before the board had started to examine it. The
board decided that the appeal fee could not be reimbursed, since the appeal had been
validly filed.
In J 15/01 the board ruled that the fact that an appeal was against a communication, as
opposed to a decision under Art. 106(1) EPC, did not justify refunding the appeal fee. If -
as in this case - the board concluded that there had not been an appealable decision
under Art. 106(1) EPC, this made the appeal inadmissible but did not mean it had never
existed, the requirements under Art. 108 EPC having been met. The appeal fee could
not therefore be refunded.
15.2. Allowability of the appeal
R. 67 EPC stipulates as a precondition for reimbursement that the appeal must be
allowable, ie it must be successful. It is clear from the wording and purpose of the
provision that "allowable" is to be understood to mean that the board of appeal, in
substance at least, "follows" the relief sought by the appellants, in other words allows
their requests (J 37/89, OJ 1993, 201). In J 18/84 (OJ 1987, 215) the Legal Board of
Appeal ordered the reimbursement of the appeal fee, saying the fact that the appeal was
allowed only in part was no impediment to a refund (see also T 129/01 and T 604/01).
15.3. Fairness
A number of decisions dealt with the term "equitable" within the meaning of R. 67 EPC.

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15.3.1 Reimbursement held to be equitable

In J 30/94 the board referred to the principle of a fair procedure and held that after
withdrawal of an appeal a reimbursement of the appeal fee could exceptionally be
ordered if the appeal had not been remitted to the board of appeal within a reasonable
time after the first-instance decision not to allow it. In the present case the appeal was
only referred to the board of appeal seven years after its filing.
In T 1198/97 and T 1101/92 the board observed that there was a causal link between the
violation of the appellant's right to be heard and the necessity to appeal; thus
reimbursement of the appeal fee was equitable.
In T 552/97 the board interpreted R. 67 EPC, looking in particular at the English text, as
meaning that, where several appeals have been filed, each appellant's appeal fee may
be reimbursed if such reimbursement is equitable. In the present case the board ordered
that the patent proprietors' appeal fees as well as those of opponent 2 be reimbursed.
In J 38/97 the board took the view that the appellant, having requested an appealable
decision, could legitimately expect the impugned decision to be issued by the competent
department and not by a person lacking legal authority. In accordance with the principle
of good faith governing relations between the EPO and applicants, it was equitable in
these circumstances to order the reimbursement of the appeal fee.
15.3.2 Reimbursement held not to be equitable
The boards have in the past advanced a variety of reasons for deciding that a
reimbursement of the appeal fee was not equitable. These include the following: (i) the
conduct of the appellant was such as to render reimbursement of the appeal fee
inequitable, (ii) the substantial procedural violation had not been sufficiently closely
linked to the need to pay the appeal fee, and (iii) the substantial procedural violation had
not been the determining factor in the decision under review or the appeal decision.
In J 22/85 (OJ 1987, 455) the board did not consider a reimbursement of the appeal fee
to be justified because the appellant had failed to provide the Receiving Section with the
evidence subsequently submitted in the appeal proceedings.
In J 18/96 (OJ 1998, 403) the Receiving Section had failed to observe the provisions
concerning examination on filing. The proceedings were therefore marred by a
procedural violation. Although the appeal was allowed on the ground, inter alia, of a
procedural violation, the reimbursement of the appeal fee was not equitable because the
appellants themselves had contributed to the failure of the proceedings before the
Receiving Section.
In T 167/96 the impugned decision did not meet the minimum requirements for a
reasoned decision. Although there was no doubt that this lack of reasoning amounted to
a substantial procedural violation, the board did not consider that a refund of the appeal
fee was equitable. Indeed, it was clear from the file history that the proprietor had been
afforded a very considerable period of time by the department of first instance to file
appropriate amendments, but had not replied. It then filed on appeal a set of
amendments which, it believed, overcame the outstanding objections. In the judgment of
the board the appellant had availed himself of the appeal procedure to file necessary
amendments which the opposition division had sought in vain over a period of years to

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elicit from him. The decision was set aside and the case remitted to the department of
first instance pursuant to Art. 10 RPBA (see also T 908/91).
In T 1216/02 the search division had sent a supplementary European search report to
the applicant (appellant) with a wrong citation which was deceptively similar to the
correct one. The examining division had refused the application because of the
applicant's "incomprehensible" response to its second communication. The appellant had
requested that the examination procedure be resumed to enable him to replace his
response with a response based on the right document.
The board held that, albeit for reasons outside the knowledge and control of the
examining division, the refusal decision had been based on evidence on which the
applicant had not had an opportunity - viewed objectively - to present his comments. This
constituted an objective substantial procedural violation within the meaning of
R. 67 EPC. However, the board did not deem reimbursement of the appeal fee equitable,
because the appellant should have facilitated further substantive examination in the
event of remittal or interlocutory revision by including in his statement of grounds of
appeal a substantive response to the examining division's communication, based on the
document which, at the time when the appeal was filed, he had known to be correct.
In T 893/90 the contested decision to refuse the application on the grounds of lack of
novelty was based primarily on document 1, on which, in contrast to document 2, the
appellant had had adequate opportunity to put forward comments. The board stated that
the decision under appeal had been fully reasoned, and that the procedural violation as
regards the reliance on document 2 was thus not sufficiently closely linked to the need to
pay an appeal fee for it to be equitable to reimburse the fee (for a case where the
appellant had no choice but to appeal on other issues unaffected by a procedural
irregularity, see T 4/98, OJ 2002, 139.)
In T 41/97, a refund was not equitable because the procedural error (refusal of
interlocutory revision prior to receipt of the statement of grounds of appeal and before
the expiry of the period for filing it) was not the reason the appeal had been filed.
In T 601/92 the opposition division had not commented, either in a communication or in
its decision, on auxiliary request (5) submitted by the patent proprietor in good time
before the decision was issued. Because auxiliary request (2), which had been submitted
in the appeal proceedings and which preceded auxiliary request (5), was allowed, the
board did not see any reason, despite the procedural violation, to reimburse the appeal
fee, as this would not have been equitable.
In T 219/93 the board remitted the case to the department of first instance since it clearly
called for revision under Art. 109 EPC. The contested decision had also been
inadequately reasoned on one point within the meaning of R. 68(2) EPC. Nevertheless,
the board decided not to reimburse the appeal fee because the refusal had been made
principally on other grounds, and the board did not consider the procedural violation to
be so substantial within the meaning of R. 67 EPC that the reimbursement would be
equitable.
15.4. Substantial procedural violation
Set out below are cases concerning the definition of a "substantial procedural violation",
as well as cases falling within the main categories of cases where substantial procedural

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violations have been alleged and/or occurred. However, the cases referred to in this
chapter are by no means exhaustive. Readers with specific questions relating to whether
a certain factual scenario is likely to constitute a substantial procedural violation are
invited to refer, additionally, to those parts of the book which may be relevant to the
specific circumstances.
15.4.1 Definition
According to R. 67 EPC it is a precondition for reimbursement of the appeal fee that a
substantial procedural violation has taken place. A "substantial procedural violation" is an
objective deficiency affecting the entire proceedings (J 7/83, OJ 1984, 211). According to
J 6/79 (OJ 1980, 225), the expression "substantial procedural violation" was to be
understood, in principle, as meaning that the rules of procedure had not been applied in
the manner prescribed by the EPC. However, the giving of incorrect information by the
EPO about the rules of procedure, which, if followed by the applicant, could lead to the
same consequences as the incorrect application of those rules, could also be considered
as lying within the scope of a "procedural violation". In T 12/03 the board stated that a
substantial procedural violation is an objective deficiency in the procedure in the sense
that the rules of procedure have not been applied in the manner prescribed by the EPC.
In J 14/99, as in J 15/99, J 21/98 (OJ 2000, 406), J 22/98 and J 6/99, it was decided that
a procedural violation which had not played any part in the decision could not be
considered substantial.
In T 5/81 (OJ 1982, 249) it was stated that an alleged violation affecting a part of the
decision other than its ratio decidendi cannot be a substantial violation within the
meaning of R. 67 EPC.
In T 712/97 the board held that the opposition division had actually considered the
respondent's experimental report, but had not relied on it in a way adverse to the
appellant. Therefore, the refusal to admit the appellant's experimental report into the
proceedings, while a violation of the appellant's right to present comments on the
respondent's experimental report, had no influence on the decision reached by the
opposition division. As the refusal had no substantive effect on the outcome of the
proceedings, it did not amount to a substantial procedural violation.
In T 682/91 the board of appeal emphasised that a procedural violation which did not
adversely affect anyone could not be considered substantial. The seriousness of a
procedural violation derived from its adverse effects.
15.4.2 Request for oral proceedings
Normally, refusal of a request for oral proceedings amounts to a breach of the
requirements of the right to be heard, so that such a violation justifies reimbursement of
the appeal fee (T 283/88, T 598/88, T 668/89, T 663/90, T 766/90, T 795/91, T 35/92,
T 686/92, T 556/95, T 647/99).
As decided in T 405/96, there was a substantial procedural violation justifying
reimbursement of the appeal fee where, despite a request by the appellants, no oral
proceedings had been ordered. This applied so long as receipt of the request by the
EPO was proven by the appellants' producing a duly stamped acknowledgment of
receipt and even if the department of first instance was unaware of the request since it
had gone missing within the Office. The board implied that the fact that the department of

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first instance could not be held responsible for the loss was irrelevant. The same applied
to the failure by the opposition division, because of an oversight, to hold oral proceedings
in response to a clear request by the appellants (T 671/95).
Failure to summon the parties to oral proceedings was considered to be a substantial
procedural violation in T 209/88 and T 93/88 (see also J 16/02). In T 560/88 the board of
appeal held that there was a substantial procedural violation where a clear auxiliary
request by the appellant for oral proceedings had not been granted (see also T 543/92).
In T 19/87 (OJ 1988, 268), however, the board held that the finding - albeit wrong - that
there had been no request for oral proceedings was not a procedural violation within the
meaning of R. 67 EPC. Furthermore, failure to seek clarification from the appellant as to
whether oral proceedings were being requested did not constitute a breach of any
procedure.
In T 1183/02 (OJ 2003, 404) the board held that a response to a summons to oral
proceedings before the examining division which contained good-faith responsive
amendments and arguments did not stay the summons. Hence omission of confirmation
that the summons remained valid did not constitute a substantial procedural violation
within the meaning of R. 67 EPC.
In T 182/90 (OJ 1994, 641), T 119/91, T 523/91, T 366/92 and T 397/94 the boards of
appeal stated that it was not a substantial procedural violation within the meaning of
R. 67 EPC if a request to be called back by or have an interview with the primary
examiner was ignored. It was a matter for the examiner's discretion to decide whether to
conduct such informal discussions in accordance with the Guidelines, bearing in mind
the particular circumstances of the case (see Guidelines C-VI, 4.3 and 6 - June 2005
version; see also T 300/89, OJ 1991, 480).
15.4.3 Right to be heard
In J 14/82 (OJ 1983, 121), T 197/88 (OJ 1989, 412), T 716/89 (OJ 1992, 132), T 197/91,
T 640/91 (OJ 1994, 918), T 734/91, T 880/91, T 392/92, T 892/92 (OJ 1994, 664),
T 951/92 (OJ 1996, 53), T 1045/92, T 1101/92, T 220/93, T 479/94, T 778/98, T 594/00
and T 1039/00, reimbursement of the fee for appeal was ordered because the principle
of the right to be heard enshrined in Art. 113(1) EPC had been violated, particularly as
there had been a lack of opportunity to present comments on the grounds for the
contested decision.
In T 18/81 (OJ 1985, 166) the board of appeal stated that the right to be heard had been
infringed when a decision to refuse an application was based essentially on documents
which, though supplied by the applicant in support of his case, had been used against
him to produce an effect on which he had not had an opportunity to make observations.
In J 7/82 (OJ 1982, 391) the Legal Board of Appeal ordered reimbursement of the
appeal fee because the appealed decision had not taken account of any of the
arguments put forward by the appellant and had been based on a ground on which he
had not had an opportunity to present his comments. In this connection it was held in
T 197/88 (OJ 1989, 412) that causing one of the parties to be taken by surprise
amounted to a substantial procedural violation.

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In T 783/89 the parties were given only ten minutes to consider a new version of the
main claim at the oral proceedings. The board held that this way of proceeding caught
the appellants by surprise and thus amounted to a substantial procedural violation.
In T 543/92 and T 89/94 the opposition division overlooked amended claims presented in
a submission. Reimbursement of the appeal fee was ordered.
The board of appeal in T 740/94 held that the failure of the opposition division to deal
with an objection under Art. 100(b) EPC against an amended claim in its decision to
maintain the patent in amended form clearly constituted a substantial procedural
violation (see G 10/91, OJ 1993, 420, point 19 of the Reasons).
In T 666/90 the failure to clarify matters with regard to requests in oral proceedings
before the opposition division was deemed to be a substantial procedural violation.
In T 666/90, T 543/92, T 647/93 (OJ 1995, 132) and T 89/94, reimbursement of the fee
for appeal was ordered because there had been an infringement of the provision in
Art. 113(2) EPC that the EPO must consider and decide upon the European patent only
in the text submitted to it, or agreed, by the applicant for or proprietor of the patent
(regarding Art. 113(2) EPC, see also T 898/96).
In T 960/94 the composition of the opposition division had changed between the decision
announced orally and the written decision. The board decided that issuing the written
decision on behalf of an opposition division whose first member was not present at the
oral proceedings amounted to a substantial procedural violation of both Art. 113(1) and
116 EPC, as it had been issued on behalf of a first member before whom the parties had
been given no opportunity to present their comments at oral proceedings. The written
decision was to be set aside. The appeal fees of both appellants were reimbursed.
In T 611/01 the board decided that a substantial procedural violation was occasioned by
the examining division holding out to the appellants the prospect of a further opportunity
to file arguments before any decision would be issued. In the event, the appellants were
denied that right and the decision was issued without a further opportunity to file
arguments. The case was remitted to the department of first instance to be conducted by
a differently composed examining division.
In the following cases no reimbursement of the appeal fee was ordered:
In T 33/93 the appellant argued that the decision under appeal was based on a
substantial procedural violation, since it cited for the first time a board of appeal decision
on which the appellant had been given no opportunity to present comments. The board
stated that the citation of the decision in support of the refusal was not a fresh ground or
piece of evidence within the meaning of Art. 113(1) EPC, but a mere repetition of
arguments, since it only confirmed the position duly brought to the appellant's attention.
In T 990/91 the board held that since there was no need for the examining division to put
the new argument in question forward in its decision in order to refuse the application,
the lack of opportunity to reply to it could not be considered to be a procedural violation.
In T 238/94 the board considered that, although the decision indeed contained no direct
reference to the appellants' submissions concerning lack of inventive step, the opposition
division had considered in its decision the disclosures of all the documents cited by the
appellants and respondents, and also the possible combinations of their teachings. Thus,

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in the board's view, the appellants' submissions had actually been taken into account,
albeit indirectly, in the process of arriving at the contested decision (see also T 1004/96).
Some other cases involved witnesses:
In T 269/00 the board held that not calling to oral proceedings a witness who had been
offered by one party to confirm a fact did not amount to a substantial procedural
violation. The board distinguished the facts of the case from T 142/97 where an
opposition division's refusal to consider evidence filed in due time (eg witness testimony
or inspection) had been held to infringe a party's fundamental right to a free choice of
evidence and the right to be heard. In T 142/97 the board had judged that the opposition
division had violated the opponent's right to be heard under Art. 113(1) EPC by not
hearing the witness offered in connection with a prior use that had been adequately
substantiated in the notice of opposition. According to the board the present case
differed because the ground of prior use was not adequately substantiated during the
opposition period, but completed piecemeal during the opposition proceedings. The case
thus related to the question of whether the opposition division had correctly exercised its
discretion under Art. 114(2) EPC in not admitting late-filed evidence.
In T 959/00 the opposition division had not replied to the opponent's offer to hear a
witness with respect to the alleged prior use. The board held that the opposition
division's failure to hear the witness and the absence in the decision under appeal of any
reference to a reason why it had not been necessary to hear the witness amounted to a
fundamental procedural violation.
In T 909/03 the board held that it was not necessary for a party to be given a copy of the
minuted testimony before questioning a witness appearing for the other party. During the
oral proceedings the party had been given sufficient opportunity to comment on the
testimony of the witness, even though the written minutes of the hearing were not
available to the parties. No substantial procedural violation had thus occurred.
15.4.4 Inadequate reasons given in the decision at first instance
In several decisions the failure to provide adequate reasoning in a decision in
accordance with R. 68(2) EPC was considered a substantial procedural violation
justifying the reimbursement of the fee for appeal (T 493/88, OJ 1991, 380; T 522/90,
T 360/91 and T 392/91, T 142/95, T 648/96, T 278/00, T 1016/00, T 604/01, T 362/02,
T 749/02, T 427/03, T 571/03). In T 292/90 it was stated that the reasons given should
enable the appellant and the board to understand whether the decision was justified or
not (see also T 52/90) and in T 740/93 the board held that reasoned decisions should
contain at least some reasoning on the crucial points of dispute in a line of
argumentation in so far as this was not immediately apparent from the reasons given, in
order to give the party concerned a fair idea of why his submissions were not considered
convincing (see also T 921/94).
In T 850/95 (OJ 1997, 152) the board observed that the form used to refuse the
correction of errors in a decision (R. 89 EPC) contained pre-printed reasons of a very
general nature and did not seem to provide for the possibility of adding more specific
reasons taking account of the special circumstances of the case. However, a correctly
reasoned decision would have given the appeal proceedings a more detailed factual
basis and assisted the appellant as well as the board. The board held that it was the
examining division's obligation to give substantive reasons for the decision on the

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request for correction, dealing with the specific facts of the case (see also T 897/03). The
board therefore decided that the appeal fee should be reimbursed.
In T 859/97 the board took the view that it was sufficient for the examining division, when
deciding to refuse a European patent application under Art. 97(1) EPC, to state one
ground only which in their opinion would prejudice the grant of a European patent. In the
present case, the examining division was unable to grant a patent because it had
concluded that the subject-matter of claim 7 was not new. Consequently, it was under no
obligation to comment on the patentability of claims 1 to 6. The requirements of
R. 67 EPC were thus not met.
In T 177/98, where a large number of documents and arguments were brought forward,
the opposition division did not consider all the arguments as highly important and
therefore did not discuss them all in their written decision. The board held that the
instances of the EPO have no obligation to consider the parties' arguments in detail or to
give an opinion on every combination of prior art made during the proceedings. It was
the task of each decision taking body to grasp the relevant arguments and to reply to
them. However, the more material was provided, with corresponding arguments, the
more likely it might be that a choice was made as to the importance of the arguments.
This was a question of discretion.
In T 755/96 (OJ 2000, 174) the decision not to consider the two requests filed one day
before the oral proceedings was based only on the ground that they had been filed too
late under R. 71a EPC. In the board's judgment, this ground for not accepting the two
requests could not be considered an adequate reason in support of the exercise of the
examining division's discretion but rather constituted a mere reference to the power
given to the examining division by the said rule. The board concluded that the decision
under appeal was not reasoned in accordance with R. 68(2) EPC.
In T 75/91 the board stated that the impugned decision enabled the reader to follow a
line of argument for refusing the application. Whether these reasons were convincing
and had to be accepted by the board or not was another question and had nothing to do
with a substantial procedural violation. In T 856/91 the board held that R. 68(2) EPC had
been sufficiently complied with as long as some reasons were given, even if incomplete
and inadequate. The request for reimbursement was therefore rejected (see also
T 735/90, T 153/89, T 647/93, OJ 1995, 132).
In T 1356/05 and T 1360/05 the board held that a request for a decision on the state of
the file was not to be construed as a waiver of the right to a fully reasoned first-instance
decision.
In T 1065/99 the board stated that when an International Preliminary Examination Report
(IPER) drawn up by the EPO under the PCT was relied on by the examining division,
such reliance should not be presented to applicants in such a manner as to suggest that
the examining division had not given objective consideration to the patentability
requirements of the EPC.
In this case, the IPER was adopted by the examining division as the only basis for its
opinion that the application did not meet the requirements of the EPC. The board came
to the conclusion that there were three objections - concerning irrelevance, clarity and
sufficiency - which were only obliquely touched upon in the IPER, and thus in the
communication under R. 51(2) EPC. Therefore, the party had had no opportunity to

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contest those objections. The board ordered the reimbursement of the appeal fee for the
violations of Art. 113(1) EPC.
15.4.5 Error of judgment by a department of first instance
A number of decisions discussed whether an error of judgment by a department of first
instance could be regarded as a substantial procedural violation justifying reimbursement
of the appeal fee (T 19/87, OJ 1988, 268; T 863/93).
Normally there is no procedural violation justifying reimbursement of the appeal fee if a
wrong procedure is adopted in a situation where the EPC does not lay down clearly what
procedure is to be followed and the case law has not yet established any settled practice
(T 234/86, OJ 1989, 79).
This principle was extended in a later decision (T 208/88, OJ 1992, 22) in which it was
held that taking a different line from an as yet isolated appeal decision - as opposed to
established board of appeal case law - could not be regarded as a substantial procedural
violation. The fact that the board had come to a different conclusion from the department
of first instance did not by itself mean that the latter had committed a substantial
procedural violation (T 87/88, OJ 1993, 430; T 538/89, T 182/92). In T 208/00 the board
considered that the first-instance department had to be granted a certain degree of
latitude in exercising its power of discretion, which in this case it had not overstepped in
a clearly inappropriate manner. It stated that it was not equitable to reimburse the appeal
fee, especially as under the established case law of the boards of appeal not even "a
gross error of judgment" by the department of first instance was regarded as justifying
such reimbursement.
In T 367/91 the board stated that to base a decision only on a wrong assessment of prior
art and/or the claimed invention had to be regarded as a substantive error, not a
procedural violation (see also T 144/94 and T 12/03).
In T 17/97, the appellant's request for reimbursement of the appeal fee was based on the
fact that the opposition division had disregarded document (5) pursuant to
Art. 114(2) EPC and R. 71a(1) EPC. In the board's judgment this was caused by an
erroneous assessment of the relevance of document (5). Such a misinterpretation, by its
very nature, did not constitute a procedural violation within the meaning of R. 67 EPC.
It does not amount to a procedural violation if the examining division wrongly finds that a
claim 1 is not sufficiently clear to comply with the requirements of Art. 84 EPC, even
where there has been a possible error of judgment and failure to seek clarification from
the appellant (T 680/89).
The misinterpretation of a document does not constitute a procedural violation
(T 1049/92, T 162/82, OJ 1987, 533). In T 588/92 the board pointed out that a different
opinion on the specialist knowledge to be applied when interpreting the technical content
did not amount to a procedural violation. Even a gross error of judgment on the part of
the examining division does not justify reimbursement of the appeal fee (T 860/93,
OJ 1995, 47). Misinterpretation of a letter to the EPO department concerned constitutes
an error of judgment and not a substantial procedural violation (T 621/91).
The examining division's failure to follow a procedure set out in the Guidelines is not in
itself a substantial procedural violation unless it also constitutes a violation of a rule or
principle of procedure governed by an article of the EPC or one of the Implementing

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Regulations. This is because the Guidelines are not legally binding (T 42/84,
OJ 1988, 251; T 51/94, J 24/96, OJ 2001, 434).
In decision T 875/98 the board noted that the EPC does not contain any rule of
procedure which imposed on an opposition division an obligation to abide, in its decision
concerning a certain case, by a decision in a different case. It held that a single decision
issued by an opposition division does not establish a "case law" which must be adhered
to in another opposition case even if the subject-matter of the two respective cases are
closely related.
In T 248/00 the board decided that, where a late submission is not admitted, an
irregularity has taken place if the division has exercised its discretion incorrectly, that is
to say on the basis of irrelevant or arbitrary considerations. The board held that, even if
the non-admission might ultimately prove to be incorrect, such application of the law did
not amount to a substantial procedural violation. The issue was, rather, whether the
opposition division’s discretion had been incorrectly exercised in not admitting a late-filed
request.
15.4.6 Miscellaneous other cases
(a) Cases where substantial procedural violations occurred
(i) Cases concerning the decision-making process and the effect of decisions
In J 5/81 (OJ 1982, 155) it was held that there was a substantial procedural violation
where the Receiving Section had ignored the suspensive effect of an appeal in
accordance with Art. 106(1) EPC.
T 227/95 related to a situation where a decision was taken by a board to remit the case
to the department of first instance (opposition division) for further prosecution and not, as
assumed by the division, with instructions to maintain the patent. The fact that the
opposition division had not carried out the board's order amounted to a substantial
procedural violation with regard to Art. 111 EPC. The case was remitted again to the
department of first instance, and the appeal fee was reimbursed.
In T 425/97 the board decided that any substantive deviation, as in the present case, of
the decision notified in writing from that given orally at the oral proceedings amounted to
a procedural violation.
In T 225/96 the board ruled that to issue the parties with a draft decision not approved by
all opposition division members present at the oral proceedings was a substantial
procedural violation.
In T 231/85 (OJ 1989, 74) the board held that failure to take the applicant's requests into
account as a result of a delay within the EPO (in this case six weeks) constituted a
substantial procedural violation (see also T 598/88). In T 205/89, owing to a mistake by a
formalities officer, a request for an extension of the time for submitting comments in
opposition proceedings never reached the opposition division, which therefore took its
decision without considering the argument presented in the subsequently filed
submission.
In T 804/94 the board ruled that there had been a substantial procedural violation as the
opposition division had issued a decision rejecting the opposition before expiry of the
four-month period it had set for responding to its communication.

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In T 991/02 an opposition division decision had to be set aside for lack of a legal basis.
The opposition division's application of the new R. 29(2) EPC, not yet in force,
constituted a substantial procedural violation.
The board of appeal ordered reimbursement of the appeal fee in T 382/92 because the
composition of the opposition division had not complied with the requirements of
Art. 19(2) EPC. The chairman and one member of the opposition division had already
been members of the examining division which had decided on the application leading to
the patent concerned (see also T 939/91). A substantial procedural violation was also
deemed to have occurred if the decision had been taken by a formalities officer who
was not competent to decide (J 10/82, OJ 1983, 94; T 114/82, OJ 1983, 323;
T 790/93, T 749/02).
In T 900/02 the board stated that a suspicion of partiality must inevitably arise if a
member of an opposition division, or any other first instance body, first solicits and then
accepts employment with a firm in which a partner or other employee is conducting a
case pending before that member, even if it occurred after oral proceedings had been
held. This amounted to a substantial procedural violation. The board also found that the
extreme length of the delay - three years and seven months - between oral proceedings
and the issue of a written decision amounted to a substantial procedural violation. The
case was remitted to the department of first instance.
(ii) Cases concerning documentation and communications passing between the EPO
and the parties
In J 3/87 (OJ 1989, 3) it was stated that if an EPO communication was not as clear and
unambiguous as it ought to be, and led a reasonable recipient into error, that amounted
to a substantial procedural violation, even if the ambiguity of the communication was
partly due to an unfortunate provision of the law. In J 17/92 the appellants complained
that the examining division had used the wrong form for its communication, namely a
form threatening that the application would be refused if a response was not filed. The
examining division agreed that the form was wrong, but failed to withdraw it. The board
considered that this failure to withdraw the wrong form, and then to withdraw the
threatened sanction of a possible refusal of the application, amounted to a substantial
procedural violation. It ordered the reimbursement of the appeal fee as being equitable
under R. 67 EPC.
In T 362/02 the opposition division had revoked the patent for the sole reason that the
appellant had not replied to a communication under Art. 101(2) EPC inviting him to file
observations. The board found that this decision was a substantial procedural violation
because the EPC did not provide any sanction for a party’s failure to reply to a
communication under Art. 101(2) EPC. Further, revocation of a patent for mere failure to
reply to a communication was contrary to the clear intention of the law, which required a
proprietor to agree to the form in which a patent was granted or amended and to use
clear and unambiguous words if he wished to abandon a patent.
The Legal Board of Appeal stated in J 17/04 that R. 85a(1) EPC not only provides for a
period of grace for the applicant ie a further possibility to pay designation fees within an
extended time limit, but also imposes a duty on the EPO to issue a warning to him. This
duty is to be regarded as so essential that a final decision must not be taken without
such a reminder having been sent. Failure to issue the reminder pursuant to
R. 85a(1) EPC constitutes a substantial procedural violation unless the applicant has

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validly renounced the right to be notified. The board noted that the issuance of the
reminder was not a "courtesy service" offered by the EPO, but an act prescribed by the
Implementing Regulations (however, see J 32/97 below).
(b) Cases where no substantial procedural violations occurred
In J 3/91 (OJ 1994, 365) the Legal Board of Appeal refused a request for reimbursement
of the appeal fee, stating that the wrong transcription of a Japanese priority date
could not be considered a procedural violation. The Receiving Section was not obliged
by procedural law to inform the applicant that the "Showa" year had been transcribed
into the equivalent date in the Christian era. Such transcriptions were a routine matter
familiar to practitioners dealing with industrial property rights.
In T 291/93 it was held that a simple reference by the appellant to an inadequate search
of the prior art could not be taken as sufficiently supporting an allegation that a
substantial procedural violation had occurred. Moreover, remarks on substantive matters
in a decision rejecting the opposition as inadmissible had no legal effect. Even if
misleading, they did not represent a substantial procedural violation justifying the
reimbursement of the appeal fee (T 925/91, OJ 1995, 469; see also T 1051/92).
In J 20/96 the EPO had waited one year and three months before requesting the
appointment of a professional representative and nearly another year before asking for
the appellant's new address. Although conceding that the Receiving Section had been
slow to request the appointment of a professional representative, the Legal Board ruled
that this was not a substantial procedural violation because such appointments were a
matter for the appellant; similarly, it was also up to him or his representative to provide
his address.
In J 32/97 the appellant argued that a procedural violation was committed by not sending
the appellant's international representative a copy of the communications pursuant to
R. 85a(1) and 85b EPC, a new procedure applicable only to international applications
with publication date on or after 31.10.1996. The board rejected this view. The new
procedure was a courtesy service not required by the EPC (however, see J 17/04
above).
The board was also not prepared to accept as a ground for appeal the allegation that the
different procedures for notifying documents to persons with residence in the contracting
states and those residing outside contravened Art. 2(1) of the Paris Convention (national
treatment). The complaint of unfair treatment in view of Art. 4 of the TRIPS Agreement
(most-favoured-nation treatment) was likewise rejected by the board.
In T 642/97, a party alleged that the minutes were incomplete or wrong since essential
submissions were not reflected in the file. The board held that the party could request the
opposition division to correct the minutes to preserve its rights (T 231/99). In the absence
of such a request, the allegation of a substantial procedural violation could not be
justified.
15.5. Interlocutory revision
Pursuant to Art. 109 EPC a department whose decision is contested must rectify its
decision if it considers the appeal admissible and well founded. This applies in ex parte
cases only.

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R. 67 EPC also provides for reimbursement of the appeal fee in the case of interlocutory
revision. However, reimbursement of appeal fees is not an automatic consequence of
interlocutory revision. The proper interpretation of R. 67 EPC is that in the case of
interlocutory revision there also has to have been a substantial procedural violation
(see T 79/91, T 536/92). In T 939/95 (OJ 1998, 481), the board's interpretation of
R. 67 EPC was that the words "if such reimbursement" read in their context referred to
both interlocutory revision and appeals. This meant that for each of these stages it was a
prerequisite that a substantial procedural violation had occurred and that reimbursement
was found equitable in the discretion of the deciding body, be it the examining division
or the board.
In G 3/03 the Enlarged Board of Appeal ruled as follows on the questions referred to it by
the Legal Board of Appeal in J 12/01. In the event of interlocutory revision under
Art. 109(1) EPC, the department of the first instance whose decision has been appealed
is not competent to refuse a request from the appellant for reimbursement of the appeal
fee. The board of appeal which would have been competent under Art. 21 EPC to deal
with the substantive issues of the appeal if no interlocutory revision had been granted is
competent to decide on the request.
In T 21/02 an appeal had been fully dealt with by interlocutory revision by the department
of first instance and was thus no longer pending when a request for reimbursement of
the appeal fee was submitted. The board held that the facts of the case differed from
those underlying decisions G 3/03 (OJ 2005, 344) and J 32/95 (OJ 1999, 733) and that
in the present case the request had been submitted in the absence of a pending appeal
and hence could not constitute an ancillary issue to be dealt with in appeal proceedings.
The board was thus not empowered to decide on the request for reimbursement of the
appeal fee.
In T 647/93 (OJ 1995, 132) it was pointed out that when the examining division did not
make use of the possibility of granting interlocutory revision after the mistake had been
pointed out in the grounds of appeal, this was normally deemed to constitute a
procedural violation (see also T 808/94 and T 861/03). In T 183/95 interlocutory revision
was not granted under Art. 109 EPC and the appeal was remitted to the board. The
board in this case pointed out that interlocutory revision could be granted at the
discretion of the department of first instance when it was considering whether the appeal
was "well founded". In this case, the remittal of the appeal could not be said to have
been manifestly wrong from the procedural point of view.
As pointed out in T 691/91, the circumstances under which Art. 109 EPC empowers the
examining division to rectify to decisions are narrowly circumscribed. This article
provides for only two legally viable alternatives; maintaining the contested decision and
remitting the case to the boards of appeal or setting aside the decision and either
granting the patent or, as the case may be, re-opening examination. In the case at issue,
the examining division had chosen a third way; maintaining the earlier decision by
issuing a decision on rectification. The way in which the examining division proceeded
resulted in the appellant's having to file a second appeal against the decision on
rectification. The board ordered reimbursement of the second appeal fee because the
decision on rectification was ultra vires, and reimbursement of the first appeal fee
because a violation of the right to be heard had occurred during the examination
proceedings (see also T 252/91).

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Appeal procedure

In T 794/95 the board took the view that, under the circumstances of the case, the
examining division should have rectified its decision under Art. 109(1) EPC and
proceeded to the interlocutory revision expressly requested. The board did not, however,
consider it equitable to order the reimbursement of the appeal fee, since the examination
procedure up to the decision under appeal was not tainted with any failure and the
necessity for the appellant to file an appeal emerged exclusively from the substance of
the decision, not because of any procedural shortcomings up to this stage and equally
not from the later incorrect handling of the appeal by the examining division (ie the failure
to rectify its decision).
In T 898/96 the board took the view that as soon as the applicant approved in the notice
of appeal the text of the application as specified previously in a communication under
R. 51(4) EPC, there was no reason why the patent should not have been granted, even if
the applicant did not approve this text before filing the appeal. Thus the decision of the
examining division to refuse the application having regard to Art. 113(2) EPC should
have been rectified by way of interlocutory revision. The failure to rectify such a decision
in this way was a substantial procedural violation. However, the board did not consider
the refund of the appeal fee to be equitable, for the very reason that the applicant did not
approve this text of the application until he filed an appeal.
In T 685/98 (OJ 1999, 346) the board explained that the provisions of Art. 109(1) EPC
are tailor-made to enable the examining division to rectify expeditiously procedural
irregularities of the kind which occurred in this case. However, it appeared that the
examining division had either failed to recognise that its decision to refuse when no reply
within the meaning of Art. 96(3) EPC had been received was ultra vires or, despite this
recognition, did not appreciate that it was mandatory in those circumstances to apply the
said provisions and set its own purported decision aside. The pragmatic criterion of
reasonable likelihood that the reopened procedure would lead to a patent being granted
was not applicable where procedural rights were at issue as in the present case. In
addition, the precipitate decision of the examining division contravened Art. 113(1) EPC.
Fundamental legal rights may not be subordinated to considerations of administrative
efficiency.
Accordingly the board took this opportunity to stress the fact that where a fundamental
procedural right has manifestly been violated in a refusal pursuant to Art. 97(1) EPC, or
in the foregoing examination procedure, a further substantial procedural violation occurs
if the examining division fails to grant interlocutory revision on appeal (following
T 647/93, OJ 1995, 132), since such a right must be safeguarded irrespective of the
substantive merits of the case.

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 VIII.1. Introduction

VIII. PROCEEDINGS BEFORE THE DISCIPLINARY BOARD OF

APPEAL
Proceedings before the Disciplinary Board of Appeal

1. Introduction
VIII.1. Introduction

Professional representation of natural or legal persons in proceedings established by the

EPC may only be undertaken by professional representatives whose names appear on a
list maintained for this purpose by the EPO (Art. 134(1) EPC). Any natural person may
be entered on the list, provided that he has passed the European qualifying examination
(Art. 134(2)(c) EPC). Under Art. 134(7) EPC, legal practitioners from the contracting
states are also entitled to act as representatives, subject to the conditions specified
therein.
Detailed comments on the representation of natural or legal persons in proceedings
under the EPC are contained in Chapter VI.L. concerning representation under the rules
common to all proceedings.
All persons on the list of professional representatives are members of the epi (Art. 5 of
the Regulation on the establishment of an institute of professional representatives; latest
version: OJ 1997, 350, for subsequent amendments see OJ 2002, 429 and
OJ 2004, 361) and subject to the Regulation on discipline for professional
representatives (RDR; OJ 1978, 91, as supplemented in OJ 1980, 177 and
OJ 1980, 183) adopted by the Administrative Council of the European Patent
Organisation, and to the Code of Professional Conduct (latest version: OJ 2003, 523)
adopted by the epi.
The bodies which rule on infringements of the rules of professional conduct are: the epi
Disciplinary Committee, the EPO Disciplinary Board, and the Disciplinary Board of
Appeal (DBA) (see Art. 5 RDR). Under Art. 8 RDR, the DBA hears appeals against
decisions of the epi Disciplinary Committee and the EPO Disciplinary Board.
The European qualifying examination (EQE) is governed in particular by the Regulation
on the EQE (REE 1994, OJ 1994, 7), as amended by Administrative Council decision of
9.12.1993 adopting a new Regulation on the European qualifying examination for
professional representatives (Supplement to OJ 12/2005, 1), and by the Regulation's
Implementing provisions (Supplement to OJ 12/2005, 14). In addition, the following
apply: the Instructions concerning the qualifications required for enrolment for the
European qualifying examination (Supplement to OJ 12/2005, 17), the Instructions to
candidates concerning the conduct of the examination (Supplement to OJ 12/2005, 21),
the Instructions to candidates for preparing their answers (Supplement to
OJ 12/2005, 25) and the Instructions to invigilators (Supplement to OJ 12/ 2005, 31).
Under Art. 27 REE, the DBA hears appeals against decisions of the EQE Examination
Board and Secretariat.
The current version (REE 1994, Supplement to OJ 12/2005, 1) entered into force on
1.5.1994. However, Art. 14, 15, 24(2) and 28(1) have been applied since 10.12.1993. By
decision of 8.6.2000, the Administrative Council amended Art. 27(2) and (3) REE
(regarding appeals in connection with the EQE) (OJ 2000, 320). For such cases, the
DBA now comprises two legally qualified members of the EPO and a professional
representative.

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Proceedings before the Disciplinary Board of Appeal

Furthermore, Art. 2, 4 and 25 REE were amended by the decision of the Administrative
Council of 24.10.2002 (OJ 2002, 565) which laid down that members of the Examination
Board and examination committees who satisfy the requirements of Art. 10(2) REE are
no longer entitled to enrol for the examination.
The new provisions implementing the REE 1994 took effect on 1.7.1998 (OJ 1998, 364),
thereby replacing the Implementing provisions in force up to that date (OJ 1994, 595;
OJ 1995, 652); the decision of the Examination Board of 18.4.2002 (OJ 2003, 24)
amended the provisions concerning the modular sitting of the examination.
Despite these changes, DBA case law on the reviewability of Examination Board
decisions continues to apply.
2. European qualifying examination
VIII.2. European qualifying examination

Only persons who have passed the European qualifying examination are entered in the
list of professional representatives (Art. 134(2)(c) EPC).
2.1. Conditions for enrolment
To qualify for enrolment, candidates must either possess a university-level scientific or
technical qualification or demonstrate that they possess an equivalent level of scientific
or technical knowledge (Art. 10(1) REE).
Art. 2 of the Instructions concerning the qualifications required for enrolment for the
European qualifying examination (hereafter "Instructions") states that, as a rule, the
requirements are met if the candidate has a recognised university-level qualification in
one of the following subjects: biology, biochemistry, chemistry, electronics, engineering,
pharmacology and physics. Art. 3, 4 and 6 of the Instructions indicate exceptions to
these requirements.
In several decisions (D 15/04, D 17/04 and D 18/04) the board considered the fact that
the Examination Secretariat had justified candidates' non-admission to the examination
by arguing that they had no university-level scientific or technical qualification within the
meaning of Art. 2 of the Instructions, but only a qualification in accordance with Art. 3(a)
or 4. If a candidate has a qualification which meets the requirements of Art. 3(a) or 4, he
must demonstrate that he has three years' experience in the patent field in order to
qualify for enrolment for the qualifying examination. However, the board concluded that
in these three cases the appellants' qualifications satisfied the requirements of Art. 2 of
the Instructions.
If a candidate possesses a degree, a diploma or a certificate showing a qualification
corresponding to one of those specified in Art. 2 or 3(a) of the Instructions combined with
another discipline not mentioned, the scientific or technical part must be of a level
equivalent to the requirements of the articles mentioned (Art. 4 of the Instructions).
In D 8/04, the appellant held a master's degree in engineering and management from
Chalmers University of Technology in Sweden. The board of appeal held that, inter alia,
the fact that the holder of this degree was entitled to the professional title "civil engineer"
in Sweden and that the appellant's degree required four and a half years' full-time study
pointed to the appellant's qualification being of a level such as those mentioned in Art. 2
of the Instructions.

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 VIII.2. European qualifying examination

All candidates wishing to enrol for the examination must also without fail provide
evidence that they have worked for three years in the field of European patent
applications and European patents. Art. 10(2) to (4) REE sets out the relevant
requirements in detail. The provision contained in Art. 7(1) REE 1991 is now set out in
Art. 10(2) REE 1994. Its substance has not changed, so the jurisprudence relating to
Art. 7 REE 1991 still applies.
According to D 4/86 (OJ 1988, 26), for the condition stipulated in Art. 7(1)(b)(i) REE 1991
to be met, the trainee must have completed his training period under conditions likely to
ensure that he has actually assisted a professional representative by constantly taking
part in activities pertaining to patent application procedures of which the representative is
in fact in charge.
D 14/93 (OJ 1997, 561) ruled that the training period could not be served with a legal
practitioner whose name did not appear on the list of professional representatives, even
if the said practitioner was a patent attorney under national law (see Art. 134(7) EPC).
The appellant argued that for Art. 7 REE 1991 not to allow the training period to be
served under a legal practitioner's supervision infringed the principle enshrined in
Art. 134(7) EPC of equal treatment of legal practitioners and professional representatives
(Art. 134(1) EPC). The board took a different view: the activities referred to in
Art. 7(1)(b) REE presupposed the scientific or technical knowledge required with a view
to activities pertaining to European patent applications and patents; persons training
EQE candidates needed to possess such knowledge, and legal practitioners did not
normally do so.
D 25/96 (OJ 1998, 45) ruled that the period of professional activity required for the EQE
enrolment could not be served with a self-employed German patent agent who was not
on the list of professional representatives.
In accordance with its established practice, the Examination Secretariat applies
Art. 10 REE and the Instructions taking into account only periods of professional activity
completed after the required degree was obtained.
In D 16/04 the board held that this interpretation by the Examination Secretariat did not
conflict with Art. 10 REE. Art. 10(1) REE mentioned the requirement of possessing a
university-level scientific or technical or equivalent qualification first, followed by a
reference to the conditions set out in paragraph 2, ie the three-year full-time training
period to be completed by the date of the examination. The ordinary meaning to be given
to this grammatical order reflected the common understanding that studies normally
precede practical training. Furthermore the required length of the training period was a
consequence of the candidate's technical or scientific degree acquired before starting
the training period rather than vice versa.
Art. 10(2)(b) REE stipulates that candidates who have performed the duties of examiner
at the EPO for at least four years at the date of the examination can enrol for the
European qualifying examination without having previously worked in accordance with
Art. 10(2)(a) REE.
In D 19/04 the appellant, an examiner of many years' standing at the German Patent and
Trade Mark Office, had cited this provision when submitting his candidature for the 2005
qualifying examination without providing evidence that he had worked in accordance with
Art. 10(2)(a) REE. The board pointed out that the Secretariat had been right in not

667
Proceedings before the Disciplinary Board of Appeal

applying that provision to the appellant in his capacity as an examiner at the German
Office. Art. 10(2) REE related to EPO examiners, who in view of their professional
experience could be assumed to have a comprehensive knowledge of the European
patent grant procedure. The professional experience of long-serving examiners in
national offices could not be equated with that of EPO examiners. The board found that,
given the different professional circumstances of EPO examiners and those in national
offices, the means represented by the provision were in reasonable proportion to the end
it served.
2.2. Examination conditions
In D 2/95 the DBA found against an appellant alleging discrimination; the fact that certain
other candidates had been allowed to use normal as opposed to copy paper for the
examination was not in breach of the provisions governing its conduct. Some candidates
might find copy paper more awkward, but others might well prefer it. Nor did other
arguments along similar lines - eg that too little time was allowed for the papers, or that
candidates whose mother tongue was not an EPO official language were at a
disadvantage and should therefore be given more time than the others - convince the
DBA that the relevant provisions had been infringed (D 11/00).
In D 1/94 (OJ 1996, 468) it did however rule that a translation error might constitute a
violation of Art. 11(3) REE 1991 [= Art. 15(3) REE 1994], since this provision assumed
that the translation from the language selected by the candidate into one of the EPO
official languages was totally correct. In its decision, the Examination Board therefore
had to give reasons why the translation errors had not been found to be serious.
In D 14/95 the appellant's arguments centred on an alleged infringement of the principle
of equal treatment. It had been infringed because he, as a specialist in biochemistry, had
been placed at a disadvantage in Paper C (taken from mechanical engineering)
compared with a specialist in that field. The board found against any breach of equal
treatment: the appellant's position was no different from that of any other candidate
whose specialist field did not happen to be used in the paper as set. True, the
examination procedure did in effect involve a certain "inequality". The Examination Board
set a limited number of papers, and therefore had to make a choice amongst the
different technical fields. So there would always be candidates who happened to be
more specialised than others in the particular field selected. This however was inherent
in any general examination, and thus did not constitute arbitrary unequal treatment.
Furthermore, Paper C was less concerned with testing specialist technical knowledge
than the ability to draft a notice of opposition to a European patent.
In D 9/96 a candidate again alleged unequal treatment, this time in connection with the
language rules under Art. 15 REE 1994. The board conceded that not all candidates
were treated equally since not all of them received examination papers in their mother
tongue. However, it had to be taken into account in this context that the differentiation
referred to above was a direct consequence of the linguistic regime of the EPC itself.
According to Art. 14(1) EPC the official languages of the EPO were English, French and
German. Each professional representative was inevitably confronted with documents
and notifications in one of the three official languages of the EPO. Thus, any professional
representative had to be expected, in the public interest and the interest of his clients, to
understand at least one of the official languages of the EPO and to be able to work on
documents and notifications drafted in this language.

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 VIII.2. European qualifying examination

The background to several appeals (D 10/97, D 15/97, D 17/97 and D 5/97) against
Examination Board decisions failing candidates in Paper D of the 1996 EQE was that
some (but not all) of the copies of the paper given to candidates did not contain Question
11. The Examination Board therefore automatically gave all candidates full marks for
Question 11. On this point the DBA reaffirmed D 14/95, which had stated that equal
treatment did not have to be absolute, provided the nature and extent of any unequal
treatment was justifiable in the circumstances. It would be wrong in law, however, if the
examination conditions put certain candidates at a disadvantage for no good reason. The
Examination Board had compensated the affected candidates in a way which appeared
entirely appropriate given the circumstances. This necessarily involved a certain unequal
treatment, which however was limited in its extent and acceptable in this special
situation. In particular, it ensured that no candidate was worse off than if his answer had
been marked objectively. So, in the DBA's view, the way in which the Examination Board
had corrected the error was appropriate to the circumstances and did not constitute
unlawfully unequal treatment.
2.3. Marking the answer papers
Art. 16 REE requires the Examination Board to give the members of the examination
committees the necessary instructions to ensure that candidates' answers are marked in
a uniform manner.
Under Art. 8(b) REE, the examination committees are responsible for marking the
examination papers, each paper being marked separately by two committee members
(examiners). In D 10/02 (OJ 2003, 275) it was noted that neither the REE nor its
Implementing provisions regulated the procedure to follow in the exceptional cases
where a committee was unable to agree on the marking; nor did they provide for calling
in a third or fourth examiner. The board of appeal pointed out that those were the very
cases in which an express provision was needed in order for a candidate to satisfy
himself that his paper had not been marked arbitrarily or the procedure influenced by
irrelevant circumstances. Hence the appointment of a third examiner without any basis in
the REE or its Implementing provisions had to be deemed a substantial procedural
violation.
In D 4/99 the appellant's complaint concerned the fact that the two examiners had
marked Paper D differently. The board stated that the appellant's starting point that in
case of non-identical marks only one value could be the correct one was irreconcilable
with the fact that marking was an individual assessment of the candidate's work. Rather,
more or less strict standards were possible and different aspects might be considered
essential or less important even within the general instructions to the examiner for
marking the papers contained in the Implementing provisions to the REE (OJ 1994, 595).
examiners must have some latitude of evaluation when awarding marks and individual
examiners might arrive at different marks, both results being justifiable. Therefore,
differences in marking did not violate the REE and its Implementing regulations (D 5/94,
D 6/98). In order to safeguard the principle of equal treatment, harmonisation of marking
is provided for in the marking sheets. If the marking is different, the two examiners may
revise their marks on the basis of a discussion among themselves, or papers may be
marked by further examiners before the examination committee as a whole recommends
a grade for the paper to the Examination Board. This means that the committee
recommends the grade, and the Examination Board adopts it or otherwise, in full

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Proceedings before the Disciplinary Board of Appeal

knowledge of the different marks awarded by the two examiners. This system ensures
uniformity of marking as required by Art. 16 REE.
In D 6/99 the DBA confirmed that small differences in marking do not, as such, violate
the REE and its Implementing regulations. They were an unavoidable consequence of
the provision, in Art. 8(b) REE, that each answer was marked separately by two
examiners. The board was not aware of any provision supporting the appellant's
submission that in such cases only the better mark awarded in each category of the
paper should be counted.
In D 3/04 the appellant complained about the unsuitable conditions during examination.
The appealed decision, however, did not show that the appellant’s complaint had been
taken into consideration by the Examination Secretariat. In the board's view, where the
Examination Board finds the circumstances referred to in a complaint not to justify the
allocation of additional marks, brief reasons should be given explaining why this is so.
2.4. Borderline cases
Borderline case assessments of candidates' fitness to practise as professional
representatives before the EPO are not possible under the 1994 Regulation on the
European Qualifying Examination, REE 1994, and its Implementing provisions (IP).
Art. 17(1) REE 1994, which is exhaustive, states that a candidate must pass each
examination paper in order to pass the European qualifying examination as a whole. The
sole exception to this is the provision in R. 5 of the Implementing provisions to the REE,
whereby a candidate sitting the examination for the first time is afforded the option of
having his marks offset. This option is open to the candidate only under the conditions
set out in R. 5(1) to (3) of the Implementing provisions to the REE. If he fails despite this
compensatory measure, he is obliged to resit all the papers in which he did not obtain a
pass mark. This invalidates the principles governing borderline decisions set out in
particular in D 1/93 (OJ 1995, 227). The board has confirmed this in several decisions
(D 8/96, D 3/97, D 18/97 and D 8/98).
In D 4/02 the board of appeal again made it clear that the REE does not allow any
resitting in borderline cases. There could be no question of taking an overall view
whereby a candidate who had not satisfied the requirements for passing the examination
was nonetheless declared to have passed it.
2.5. Substantiation of EQE decisions
At issue in D 12/97 (OJ 1999, 566) was whether EQE Examination Board decisions
informing candidates that they have failed the examination have to be reasoned. The
DBA pointed out that the Regulation on the European qualifying examination (REE) did
not require that.
The board also found the appellant's constitutional arguments - that substantiation of
such decisions was a generally recognised principle of procedural law within the
meaning of Art. 125 EPC - to be unfounded. For this to be so, it had to be shown that
substantiation of such decisions was required in the EPC contracting states.
In D 3/03 the board of appeal confirmed its case law (D 12/97, OJ 1999, 566), whereby
the REE neither requires European qualifying examination (EQE) decisions to be
reasoned nor makes reference to R. 68(2) EPC, which therefore does not apply. The
Guidelines for Examination are likewise not applicable for the same reasons.

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The REE and its Implementing provisions are lex specialis for the EPC. In other words,
unless they expressly refer to the EPC, then only they and not the EPC apply. The
subsidiary nature of these provisions is justified by the fact that they govern a particular
matter unrelated to the EPC stricto sensu, since their purpose is to establish whether a
candidate is considered fit to practise as a professional representative before the EPO.
With regard to the review by the courts of decisions concerning the European qualifying
examination for professional representatives before the EPO the Federal German
Constitutional Court also held that the obligation to give reasons for examination
decisions cannot be regarded as an expression of the structural elements of any
protection of basic rights intended by the Basic Law (see decision 2 BvR 2368/99).
2.6. Appeals against decisions of the Examination Board and the Examination
Secretariat
2.6.1 Competence of the board of appeal
Under Art. 27(1) REE 1994, an appeal lies from decisions of the Examination Board only
on grounds of infringement of the Regulation or of any provision relating to its
application. Since 1.9.2000, Art. 27(2) REE has limited the period for appeal to one
month from the date of notification of the decision appealed against (OJ 2000, 320).
However, the board of appeal has only very limited scope for reviewing the legal validity
of the provisions laid down for implementation by the Administrative Council or, in the
case of delegation, by the Examination Board.
In D 3/89 (OJ 1991, 257) the board of appeal stated in justification of the limited scope of
the examination that the relevant bodies had discretionary powers in drawing up such
procedures. As long as the legislative organ and subsidiary bodies had not misused their
discretionary powers, the DBA could apply the provisions concerning examinations only
to the case in point (see also D 1/81, OJ 1982, 250; D 5/89, OJ 1991, 210; D 14/96 and
D 11/99 of 17.11.1999).
2.6.2 Objective review of the marks awarded
In accordance with the board's consistent case law (in particular D 1/92, OJ 1993, 357
and D 6/92, OJ 1993, 361), decisions of the Examination Board may in principle only be
reviewed for the purposes of establishing that they do not infringe the REE, the
provisions relating to its application or higher-ranking law. In these two cases, the DBA
therefore concluded that its functions did not include reconsidering the examination
procedure on its merits. Accordingly, the Examination Board's value judgment
concerning the number of marks that an examination paper deserves is not subject to
review by the board. Only if the appellant can show that the contested decision is based
on serious and obvious mistakes may the board take this into account. The alleged
mistake must be so obvious that it can be established without re-opening the entire
marking procedure, for instance if an examiner is alleged to have based his evaluation
on a technically or legally incorrect premise on which the contested decision rests. Any
further claims regarding alleged defects in the assessment of candidates' work fall
outside the DBA’s jurisdiction, since value judgments are not subject to judicial review
(D 9/00, D 7/01, D 11/01, D 16/02 and D 6/04).
In D 6/98, the DBA added that these conditions were in line with those for correcting
errors under R. 89 EPC, particularly in the case of errors of transcription or calculation in

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Proceedings before the Disciplinary Board of Appeal

the marking. Under Art. 27(1) REE, the DBA is not empowered to reopen the
assessment procedure (D 15/97). The DBA is not intended to be a department of second
instance empowered to examine whether the marks awarded for a candidate's
examination are justified on their merits or correct, and thus to superimpose its own
value judgment on that of the Examination Board (D 20/96 and D 6/02).
In D 13/02 the board stated that obvious mistakes as referred to above were those which
could be identified without a re-evaluation of the examination paper. That would be the
case, for instance, if one and the same paper had been marked very differently by the
two examiners, since the marking discrepancy alone would indicate an infringement of
the principle of uniform marking, irrespective of the level of the marks awarded. Another
example of an obvious mistake would be a question whose wording was ambiguous or
incomprehensible. That would be clear straight away, without any reference to marks
awarded, from the meaning that common sense would ascribe to the wording of the
question concerned.
D 17/05 cites D 13/02 to point out that a qualified mistake within the meaning of D 1/92
cannot be deduced from a comparison of the candidate's answer with another answer.
The board also cites the statement that the disclosure of marking instructions which may
have been used by the examiner was not required for a decision on an appeal and that
under the established case law no other entitlement existed to any such disclosure.
In D 3/00 (OJ 2003, 365) the appellant claimed that for each question in paper D, parts 1
and 2, he should have been awarded the highest number of marks awarded by one of
the two examiners who had marked his paper. In D 12/00, too, the appellant claimed
among other things that the higher number of marks should count. Also, any discrepancy
between the markings of each examiner showed gross disregard for the principle of
uniformity within the meaning of Art. 16 REE. The board confirmed its established case
law, adding that differences of opinion over the number of marks to be awarded for a
given answer were a reflection of value judgments which were not, in principle, subject to
judicial review. It had also already been explained in D 4/99 that the marking of
examination papers was an individual assessment and that, within the general
instructions to the examiners for marking the papers (see the REE Implementing
provisions), more or less strict standards were possible and different aspects might be
considered essential or less important. Hence it was consistent with the ratio legis of
Art. 8(b) REE that the examiners had some (limited) latitude of evaluation when
awarding marks and might therefore arrive at different marks, both results being
justifiable (D 5/94 and D 6/98). The fact that two independent examiners had arrived at
different marks was not per se a violation of the applicable provisions (D 12/00). In
D 3/00 the board drew attention to the fact that, with regard to the evaluation of the
merits of a candidate's answer in an examination paper, a candidate was not per se
entitled to claim the highest mark awarded by one of the examiners for each answer to a
sub-question or sub-element whenever the two examiners who marked the paper in
accordance with Art. 8(b) REE differed in their marking.
2.6.3 Legitimate interest
According to the established case law, a candidate who appealed against failing the
EQE but resat and passed it before the appeal had been decided still retained a
legitimate interest in pursuing the appeal. This was confirmed in D 3/98. Any other view
would amount to denying him recourse to the law; legitimate interest would then depend

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on how long proceedings took. But appellants could exert little influence over that, and
should therefore not have to suffer the consequences. Whether there was legitimate
interest was to be determined with reference to the date the proceedings were initiated
(in this case, on the day the appeal was filed).
2.6.4 Duties of the Examination Board
In several decisions, the Disciplinary Board of Appeal (DBA) pointed out that, under
point 7 of the instructions to candidates (OJ 1995, 145) and point 7 of the instructions to
invigilators (OJ 1995, 153), a timely and formally correct complaint about the conduct of
the examination was to be submitted to the Examination Board, which was then
supposed to issue a provisional opinion, together with an invitation to comment. Failure
to do so put it in breach of generally recognised principles of procedural law
(Art. 125 EPC), notably the right to be heard (Art. 113(1) EPC; see D 17/96, D 2/97,
D 2/99 and D 3/99).
3. Disciplinary matters
VIII.3. Disciplinary matters

The Regulation on discipline for professional representatives (RDR) of 21.10.1977

(OJ 1978, 91, supplemented in OJ 1980, 177; OJ 1980, 183), which the Administrative
Council adopted in accordance with Art. 134(8)(c) EPC, contains not only provisions on
general professional obligations, professional secrecy and conduct towards clients but
also provisions relating to the disciplinary bodies responsible for imposing disciplinary
measures.
3.1. Disciplinary measures
According to D 5/86 (OJ 1989, 210), an infringement of the rules of professional conduct
must be established to the satisfaction of the disciplinary body before it can impose a
disciplinary measure. Absolute certainty is not required, but a degree of probability which
in human experience verges on certainty. A disciplinary measure cannot be imposed if
there is reasonable doubt as to whether the infringement has occurred.
In D 11/91 (OJ 1995, 721) the EPO Disciplinary Board had ordered the deletion of the
appellant from the list of professional representatives for an indefinite period. In his
appeal, the appellant contested the disciplinary measure and held that the procedure
before the DBA did not comply with the provisions of the European Convention for the
Protection of Human Rights, in particular because the DBA had been established not by
national law but by the Administrative Council of the EPO, the disciplinary bodies did not
constitute an independent court, the DBA was not a national authority, and its decisions
could not be referred to a higher court of appeal.
The DBA decided that the European Convention for the Protection of Human Rights
contained provisions which expressed general principles of law common to the member
states of the EPO. As such these provisions should be considered part of the legal
system of this Organisation and should be observed by all its departments. This
therefore applied to Art. 13, which guaranteed the protection by the judiciary of the rights
of the individual. The "national authority" mentioned in this article was clearly meant to
be understood as a competent authority in accordance with the law of the state
concerned. However, in ratifying the Munich Convention, the contracting states accepted
a transfer of prerogatives whereby professional representatives before the EPO became
subject to the same set of professional regulations, controlled by a central body whose

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decisions were open to effective remedy before a body of second instance whose
independence was guaranteed by the rules governing its composition. The drafting of
these regulations and the establishment of these bodies was thus consistent with
general principles of law, in particular those enshrined in the European Convention for
the Protection of Human Rights.
The board took the view that, in order to ensure that the penalty was proportionate to the
seriousness of the charges and that the maxim whereby penalties should not be arbitrary
but fixed or predetermined was respected, Art. 4(1)(e) RDR (Regulation on discipline for
professional representatives) should be understood as meaning "for a period not defined
by the text", that is for a discretionary period to be decided by the competent disciplinary
body. In its decision, the latter should fix the said period and give reasons for its choice.
In D 20/99 (OJ 2002, 19), appellant X filed an appeal against the EPO Disciplinary
Board's decision to issue him with a reprimand. The DBA, reviewing the penalty imposed
in respect of the first charge only, held that X's actions, for which he had been
prosecuted in France, were in breach of Art. 1(1) and (2) RDR. It was clear that D had
been involved in drawing up European patent applications in consultancy L, owned by
the appellant, while being paid by company P. However, it was evident from the file that
this contractual arrangement had never been the subject of invoicing.
That gave an advantage to consultancy L by cutting the cost of drawing up patent
applications. As it inevitably entailed unfair distortion of competition in relation to other
European patent attorneys, this was an undue advantage. The board concluded that the
misuse of corporate assets was tantamount to unfair competition in relation to fellow
European patent attorneys and thus represented a breach of the rules of professional
conduct governing representatives before the EPO.
3.2. Appealability of decisions in disciplinary matters
In D 15/95 (OJ 1998, 297) the board ruled that a Disciplinary Committee decision
dismissing a complaint was a decision in the legal sense only as regards the persons
referred to in Art. 8(2) RDR, and only they could appeal against it. Thus the person who
made the complaint had no right of appeal. Review on appeal was limited to
safeguarding the rights of the "accused", ie the "professional representative concerned"
within the meaning of the RDR (see also D 1/98). In D 28/97 and D 24/99 the DBA
added that the purpose of disciplinary proceedings was not for individuals to pursue their
interests vis-à-vis others (although these might be affected in individual cases) but rather
to serve the public interest in orderly and proper exercise of professional representation
before the EPO. Any claims by individuals arising from a representative's infringement of
the rules of professional conduct were exclusively a matter for the competent (civil)
courts.
4. Code of Professional Conduct
VIII.4. Code of Professional Conduct

The general principles are laid down in the current version published in OJ 2003, 523.
Point 1(a) of the Code refers in turn, as regards the general requirements for epi
members, to the RDR (OJ 1978, 91).
4.1. General professional obligations
In D 16/95 the board ruled that, although drafting and filing translations and paying fees
in the national phase in a contracting state were not directly related to grant, opposition

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or appeal proceedings, such activities were still covered by Art. 1 RDR. They were, after
all, activities in connection with a European patent (see Art. 65 and 141 EPC) and as
such part of a professional representative's job. Regarding them as covered by Art. 1
RDR was also justified by the fact that it was difficult for outsiders (eg persons
commissioned to translate patent specifications) to distinguish between those of a
representative's activities which were directly related to grant, opposition or appeal
proceedings and those which were not. Since national-phase-related activities were thus
covered by Art. 1 RDR, reprehensible conduct in connection with them constituted a
breach of a representative's general professional obligations under that provision.
4.2. Professional secrecy
In D 11/91 (OJ 1994, 401), the appellant had requested the removal of various
documents placed on file by the complainant. The appellant argued that his request was
justified because, inter alia, their inclusion contravened the rule of confidentiality to which
professional representatives were subject. The documents were items of
correspondence between the complainant and the disciplinary bodies and
correspondence pertaining to an opposition case.
The board decided that the professional secrecy referred to in Art. 2 RDR set limits to the
disciplinary bodies' powers of investigation and to the obligation under Art. 18 RDR for a
professional representative before the EPO to supply all relevant information. However,
the mere obligation of confidentiality deriving from the principle enshrined in Part I RDR
could not be invoked to resist a request under Art. 18 RDR.
4.3. Advertising
The adoption of the Code of Conduct (current version, OJ 2003, 523) entailed the
rescindment of the ban contained in point 2(b)(1) on the comparison of the professional
services of a member with those of another member, as laid down in the version
published in OJ 1999, 537.
The original advertising ban had already been replaced in the previous version
(OJ 1999, 537) by the new provision point 2(a), which says that advertising is generally
permitted provided that it is true and objective.

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 IX.A.1. International applications under the PCT

IX. THE EPO ACTING AS A PCT AUTHORITY

A. Introduction
Introduction

1. Structure of the EPC provisions relating to international applications

under the PCT since 1 March 2000
IX.A.1. International applications under the PCT

The EPC Implementing Regulations relating to PCT applications have been amended by
a decision of the Administrative Council of 13.10.1999 which entered into force on
1.3.2000 (OJ 1999, 660 and 696). A new Part IX has been inserted into the
Implementing Regulations which encompasses former R. 104 to 104c EPC plus a
number of new provisions. A much clearer system of consecutive numbers (R. 104 to
112 EPC) has also been adopted. Former R. 105 to 106a EPC were deleted because
the respective regulations for a transitional period were no longer relevant.
2. Time limits for the European phase entry of an international application
(Rule 107(1) EPC)
IX.A.2. Time limits for the European phase entry of an international application (Rule 107(1) EPC)

Under Art. 22(3) PCT or Art. 39(1)(b) PCT, the EPC may lay down longer time limits for
European phase entry than the standard PCT one of 30 months (the PCT time limit
under Art. 22(1) has been amended from a 20 month to a 30 month time-limit with effect
from 1.4.2002). For the European phase entry of an international application,
R. 107(1) EPC in its version in force up to 1.1.2002 prescribed two different time limits,
running from the date of filing or priority: 31 months for the EPO as elected Office (PCT
Chapter II) and 21 months for the EPO as designated Office (PCT Chapter I).
By a decision of the Administrative Council of the European Patent Organisation dated
28.6.2001 the EPO has harmonised both the time limits under R. 107(1) EPC at 31
months. The amendment entered into force on 2.1.2002 and applies to all international
applications for which, on that date, the acts prescribed under R. 107(1) EPC have not
yet been validly performed and where the time limit for doing so under R. 107(1) EPC in
its previous form had not yet expired (OJ 2001, 373).
B. Competence of the boards of appeal in proceedings under the PCT
Competence of the boards of appeal in proceedings under the PCT

1. The changing role of the boards of appeal

IX.B.1. The changing role of the boards of appeal

Under Art. 154(3) and 155(3) EPC, the function, or competence, conferred by R. 40.2(c)
and 68.3(c) PCT (version prior to 1.4.2005) has been devolved to the EPO boards of
appeal. This function relates solely to the examination of protests against an invitation to
pay an additional fee owing to lack of unity.
When the EPC as revised in 2000 ("EPC 2000") enters into force in December 2007, the
protest procedure will be simplified. This simplified procedure is accommodated by
amendments that have been made to R. 40 and 68 PCT with effect from 1.4.2005 (PCT
Gazette No.10/2005). For more details concerning the simplified procedure and interim
provisions, see chapter IX.C.2., "Protest procedure: the new provisions" below.
2. The role of the boards of appeal prior to the introduction of EPC 2000
IX.B.2. The role of the boards of appeal prior to the introduction of EPC 2000

In J 20/89 (OJ 1991, 375) the board had to decide whether, during the international
phase of a PCT application, it had jurisdiction to examine decisions taken by the EPO
acting in its capacity as an International Preliminary Examining Authority (IPEA) within

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Competence of the boards of appeal in proceedings under the PCT

the meaning of Chapter II of the PCT (see Art. 150 and 155 EPC). It noted that the PCT
did not contain any provisions for appeal or petition during the international phase. Save
as provided in R. 40.2(c) and 68.3(c) PCT, there was nothing in that Treaty, or in the
Regulations under it, providing for appeal during the international phase in proceedings
before the Authority acting as ISA or as IPEA. Applicants are not, however, entirely
deprived of legal safeguards during the international phase. All PCT Authorities in fact
accept and duly consider any request for reconsideration of an earlier decision taken
during the international phase, although this is not expressly provided for in the PCT.
Furthermore, a designated or elected Office can, during the national phase, review a
decision taken during the international phase by an ISA or an IPEA.
The board observed that under Art. 150(3) EPC an international application for which the
EPO acts as designated Office or elected Office is deemed to be a European patent
application. Consequently, there was no obstacle to making use of appeal procedures
provided for under the EPC to supplement the provisions of the PCT in such cases (see
Art. 150(2) EPC). However, if the EPO was neither receiving Office nor designated Office
nor elected Office, but was acting solely as ISA or IPEA, the application of
Art. 150(2) EPC should be limited, as far as the appeal procedure was concerned, to
supplementing the express provisions of R. 40.2(c) and 68.3(c) PCT, which related only
to the examination by boards or other special departments of ISAs or IPEAs of protests
against the charging of additional fees. Thus the board came to the conclusion that
during the international phase of a PCT application, the boards of appeal of the EPO
have no jurisdiction to examine appeals against decisions taken by the EPO acting
solely in the capacity of IPEA within the meaning of Chapter II PCT.
In J 15/91 (OJ 1994, 296) the applicant filed an international patent application with the
EPO and paid the international preliminary examination fee but failed to submit a
demand for international preliminary examination within the time limit, laid down in
Art. 39(1)(a) PCT, of 19 months from the date of priority. The EPO, acting as IPEA,
notified the applicant that fee payment could not be accepted as a substitute for
observing the prescribed time limit. This being so, the applicant was not entitled to
benefit from the provisions for postponing entry into the regional phase until 30 months
from the date of priority.
The aim of the requests made by the applicant in his appeal against this notification was
to obtain a decision to the effect that he had filed his demand for international preliminary
examination in due time. The appellant argued that the board of appeal did have
jurisdiction in the case, because, unlike in case J 20/89 (see above), where it was acting
solely as an IPEA, the EPO had also previously acted as receiving Office. The decision
of the Legal Board of Appeal was based on the principle that the EPO was bound solely
by the provisions of the PCT, the Regulations under the PCT and the relevant agreement
between WIPO and the European Patent Organisation (OJ 1987, 515), where the EPO
was acting, in the international phase of the PCT procedure, in the capacity of an
international authority under the PCT. This followed, with regard to proceedings before
the IPEA, from Art. 34(1) PCT. To this extent, therefore, the EPC did not apply. Apart
from allowing for protests against an invitation by the ISA (or by the IPEA) to pay
additional search fees in cases where the requirements for unity of invention had not
been met, the PCT made no provision for appeal during the international phase.
Furthermore, the board took the view that even if, as in the present case, the EPO had
acted as receiving Office, there were no grounds for supposing that its boards of appeal

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had any jurisdiction. International preliminary examination by the IPEA was a separate
procedure which had to be distinguished from proceedings before the receiving Office
and the ISA. Under Art. 31(3) PCT, the demand for international preliminary examination
had to be made separately from the international application, and Art. 31(6)(a) PCT
stipulated that the demand had to be submitted to the competent IPEA, not the receiving
Office. Although the EPO might well perform all the various functions involved in the
international phase of the PCT proceedings, the distinction between the procedures still
applied. Thus, it was decided that EPO appeal boards had no jurisdiction to examine
appeals against the EPO acting in its capacity as an IPEA. The Legal Board of Appeal
thereby upheld its previous decision J 20/89.
In J 14/98 the applicant had contended that the EPC contracting states had been elected
under Art. 39 PCT and that, therefore, the thirty-one (instead of the twenty-one) month
period under R. 104b(1) EPC (version prior to 1.3.2000) applied in the case at issue. In
fact, a demand for international preliminary examination (PCT Chapter II demand) had
been filed in due time but, owing to a series of errors including a wrong application
number in the demand, it went astray in the US Patent Office (USPTO) acting as
International Preliminary Examination Authority (IPEA) under the PCT.
The board noted that under the provisions of the PCT it was the Office acting as IPEA
(here the USPTO) which was responsible for deciding on the question of whether a PCT
Chapter II demand complied with the formal requirements laid down in the PCT (see
Art. 34 PCT in combination with R. 60.1 PCT, in particular R. 60.1(c) PCT). Thus, the
board made it clear that neither the EPO (if not acting as IPEA) nor the boards of appeal
had jurisdiction concerning PCT Chapter II demands (J 20/89, OJ 1991, 375). The
question of whether or not the effects of Art. 39(1)(a) PCT applied in the proceedings
before the EPO was therefore to be decided on the basis of the conclusions of the IPEA
responsible for the application. The same was true if the IPEA (here the USPTO) acted
under the orders of a final decision of a court (here the CAFC) binding on it. In any case
the Legal Board could not question the jurisdiction of the CAFC in those circumstances.
Nor could the board review the decision of the CAFC as to the merits.
The board held that the finding in the CAFC decision that the PCT Chapter II demand
had been validly filed in due time constituted the factual basis for the further proceedings
before the EPO in its capacity as designated or elected Office. The board noted that, as
far as decisions of the EPO in connection with the entry of PCT applications into the
regional phase were concerned, the jurisdiction of the boards of appeal clearly derived
from Art. 150(3) EPC in combination with R. 104b and 104c EPC (versions prior to the
revision of 1998). Thus, in these circumstances, the Legal Board of Appeal had
jurisdiction to examine the decision of the Receiving Section of the EPO.
In W 3/02 the board established that suspension under R. 13(1) EPC of the grant
proceedings for a PCT application that had entered the regional phase before the EPO
did not extend to PCT protest proceedings pending before the board of appeal.
C. The EPO acting as ISA and IPEA
The EPO acting as ISA and IPEA

1. PCT guidelines binding on the ISA and IPEA

IX.C.1. PCT guidelines binding on the ISA and IPEA

In decisions G 1/89 and G 2/89 (OJ 1991, 155 and 166) the Enlarged Board of Appeal
decided that the EPO in its function as an ISA may, pursuant to Art. 17(3)(a) PCT,

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The EPO acting as ISA and IPEA

request a further search fee where the international application is considered to lack
unity of invention a posteriori.
The Enlarged Board held that the agreement between the European Patent Organisation
and WIPO dated 7.10.1987, including the obligation under its Art. 2 for the EPO to be
guided by the PCT guidelines for international search (see Art. 2 of the agreement as in
force from 1.4.2005), was binding upon the EPO when acting as an ISA and upon the
boards of appeal of the EPO when deciding on protests against the charging of
additional search fees under the provisions of Art. 17(3)(a) PCT. Consequently, as
provided in these guidelines, an international application could, under Art. 17(3)(a) PCT,
be considered not to comply with the requirement of unity of invention, not only "a priori"
but also "a posteriori", ie after taking prior art into consideration.
In W 21/03 the board referred to the statement of the Enlarged Board in G 1/89 that
additional fees under the provisions of Art. 17(3)(a) PCT should only be charged in clear
cases. The board added that what was meant by a "clear case" was best expressed in
the PCT International Preliminary Examination Guidelines (in force from 9.10.1998)
under III-7.6, according to which lack of unity should neither be raised nor persisted in on
the basis of a narrow, literal or academic approach (see also W 2/92). The board noted
that this guidance is contained in the new consolidated PCT International Search and
Preliminary Examination Guidelines which entered into force on 25.3.2004 ("the
ISPE Guidelines"). This guidance is thus formally applicable to the ISA.
2. Protest procedure: the new provisions
IX.C.2. Protest procedure: the new provisions

R. 40 and 68 PCT have been amended with effect from 1.4.2005 (PCT Gazette
No.10/2005). Prior to this change the ISA/IPEA had to undertake a review of the
justification for the invitation to pay additional fees before requiring that the applicant pay
a fee for the examination of the protest (see R. 40.2(e) and 68.3(e) PCT in the versions
valid until 31.3.2005). The boards of appeal were thus acting at second instance when
examining, pursuant to R. 40.2(c) and 68.3(c) PCT, a protest made by an applicant
against an additional fee charged by the EPO under the provisions of Art. 17(3)(a) and
34(3)(a) PCT.
The effect of the changes to R. 40 and 68 PCT is that there is no longer a requirement to
carry out a review of the justification for the invitation to pay additional fees before
requiring that the applicant pay a fee for the examination of the protest. There is thus
only one judicial level which examines the protest, and that is the review body.
Provision is made for this simplified protest procedure in EPC 2000. Thus Art. 154(3) and
155(3) EPC, according to which the boards of appeal are responsible for deciding on a
protest against an additional fee, have been deleted from the EPC as revised in 2000.
However, EPC 2000 has not yet entered into force.
According to the Notice from the EPO dated 1.3.2005 concerning the protest procedure
under the PCT (OJ 2005, 226), pending entry into force of the revised version of the EPC
the EPO will continue to subject any invitation to pay such additional fees to an internal
review, prior to submission of the protest to the board of appeal. This review is in the
nature of a service from the EPO.

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 IX.C.3. Protest procedure: the EPO acting as ISA

3. Protest procedure: the EPO acting as ISA

IX.C.3. Protest procedure: the EPO acting as ISA

If the international application does not comply with the requirement of unity of invention,
the ISA must invite the applicant to pay additional search fees within a time limit fixed by
the ISA (Art. 17(3)(a) PCT, R. 40.1 PCT). The applicant may pay the additional fee under
protest and thereby initiate a review of the justification for the invitation (R. 40.2(c) PCT).
3.1. Substantiation of invitation
Under R. 40.1 PCT, the ISA must specify the reasons for which the application is not
considered as complying with the requirement of unity of invention. According to
established case law the specification of reasons in an invitation to pay additional fees is
an essential requirement and an invitation is not legally effective unless reasons are
given to substantiate lack of unity (W 4/85 and W 7/86, OJ 1987, 63 and 67; W 9/86,
OJ 1987, 459; W 7/85, OJ 1988, 211).
Decision W 4/85 (OJ 1987, 63) stated the minimum requirement for adequate
substantiation. According to that decision, the basic considerations behind the finding
that the invention lacked unity must be set out in a logical sequence to enable the
applicant and the appeal body to check this finding (see also W 2/93, W 2/95 and more
recently W 4/04); only in straightforward cases might it be sufficient just to list the
relevant subject-matters, provided the list made it perfectly clear that the application did
not relate to a single general inventive concept (as, for example, in W 7/92). Also, in
W 7/86 (OJ 1987, 67), W 33/90, W 50/90, W 16/91, W 32/91, W 43/91 and W 9/92 it was
pointed out that listing the inventions which in the ISA's view the application contained
was sufficient reasoning only in exceptional cases.
In G 1/89 and G 2/89 the Enlarged Board of Appeal noted that the consideration by an
ISA of the requirement of unity of invention should, of course, always be made with a
view to giving the applicant fair treatment and that the charging of additional fees under
Art. 17(3)(a) PCT should be made only in clear cases. In particular, in view of the fact
that such consideration under the PCT was being made without the applicant having had
an opportunity to comment, the ISA should exercise restraint in the assessment of
novelty and inventive step and in borderline cases preferably refrain from considering an
application as not complying with the requirement of unity of invention on the ground of
lack of novelty or inventive step (see W 34/89, W 23/92).
In W 26/91 the board concluded that the ISA had contravened the principles laid down
by the Enlarged Board of Appeal in G 1/89 and G 2/89. The mere citation of three
documents without any analysis of what was disclosed and the undifferentiated
allegation that with regard to these documents there was no novelty or inventive step
could not be considered as fair treatment (see also W 3/92, W 3/96). If a lack of inventive
step is not immediately apparent, in case of doubt unity should be assumed (see
W 23/89 and W 51/90).
In W 3/93 (OJ 1994, 931) the ISA did not base its objection of lack of unity on the prior
art referred to in the application or established during the search. It was therefore an "a
priori" objection within the meaning of Chapter VII, 9 of the PCT Search Guidelines (the
corresponding provision is now contained in paragraph 10.03 of the ISPE Guidelines in
force from 25.3.2004). In the board's view the grounds for this objection as stated in the
invitation to pay contained virtually nothing more than a repetition of the substance of
R. 13.1 PCT in different words. However, as the applicant in the present case was

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nevertheless able to make a substantive response, the board was able to accept the
reasoned statement as sufficient on this occasion (confirmed in W 4/94, OJ 1996, 73).
Thus, the only issue to be examined was whether, considering the reasons stated by the
ISA and the submissions made in support of the protest, retaining the additional fees
was justified. The board found that it could not investigate ex officio whether an
objection of lack of unity would have been justified for reasons other than those given, for
example after taking into consideration the documents found during the search or
addressing in depth the objectively resolved technical problem. Accordingly, the
objection of lack of unity could be raised again on different grounds in the event of
subsequent proceedings under PCT Chapter II (confirmed in W 8/93 and W 11/94; see
also W 4/94 below).
In W 14/92 the board ruled that it had to be clear to the applicant whether the lack of
unity objection was a priori or a posteriori.
In W 11/89 (OJ 1993, 225) and W 10/92, the boards came to the conclusion that an
invitation to pay additional search fees had also to contain an exposition of the problem
solved by the invention, unless it was perfectly clear that the technical facts listed in the
invitation could not reasonably be subsumed under an overall problem; if that exposition
was lacking, the invitation was not legally effective and any additional search fees paid
should be reimbursed (see also W 8/94). The determination of the technical problem
underlying the invention was a mandatory precondition for the assessment of unity of
invention, that is to say, whether or not the subject-matter claimed as the solution to such
a problem represented a single general inventive concept. The disregarding of this
principle was considered to be in itself sufficient justification for reimbursement of the
additional search fees (see also W 14/89, W 6/91 and W 3/92). W 50/91, W 52/91 and
W 22/92 held that where the lack of unity objection was a priori, the technical problem
was to be defined only on the basis of the description, not the prior art. According to
W 59/90 and W 14/91, in a posteriori cases, details of the technical problem were
required to be given both before and after a document which caused lack of novelty and
gave rise to lack of unity was found.
In W 18/92 the board found as regards inventive step that there was no indication in the
invitation from the ISA as to which document represented the closest prior art, what the
problem to be solved was in the light of the closest prior art, and whether all five
documents had been combined together to arrive at the finding of lack of inventive step,
or only some of them.
In W 31/88 (OJ 1990, 134) the board held that consideration of the clarity and
conciseness of claims by the ISA was limited to whether they could be sufficiently
understood to permit a meaningful search to be carried out (Art. 17(2)(a)(ii) PCT). Under
the PCT the ISA was not competent to consider whether the requirements of Art. 6 PCT
(in particular clarity and conciseness of claims) had been met. According to Art. 17 PCT,
clarity of claims for the purposes of a meaningful search was a separate question from
that of unity of invention. An alleged lack of clarity in a claim could not be used as a
reason for an objection based on lack of unity.
In W 3/94 (OJ 1995, 775) the board pointed out that Annex B, Part 1(f) of the
Administrative Instructions under the PCT (PCT Gazette No. 15/1992, in force since
1.7.1992; this corresponds to paragraph (f) of Annex B of the Administrative Instructions
in force from 1.10.2005) contained specific criteria for assessing the unity of "Markush"

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claims. These guidelines pointed out that the question of unity of invention must be
reconsidered if at least one "Markush" alternative was not novel, but that reconsideration
did not necessarily imply that an objection of lack of unity would be raised (Annex B,
Part 1(f), (v)). The requirement of R. 40.1 PCT, whereby the invitation had to be
reasoned, would thus be met only if it indicated why the criteria mentioned in Annex B,
Part 1(f)(i), (B)(2) of the Administrative Instructions under the PCT had not been fulfilled.
This was particularly the case where the unity of alternatives "of a similar nature" in a
Markush claim was contested on the basis that they did not share a significant structural
element. In the present case there were no facts from which a lack of unity was so
manifestly clear that more detailed reasons could be dispensed with.
In W 7/99 the board said the purpose of the protest procedure under R. 40.2(c) PCT was
to review whether the invitation to pay was substantively justified, so the sole issue was
whether, given the grounds set out by the ISA and the arguments submitted in the
protest, additional search fees should be retained. So the board could not consider, of its
own motion, whether a lack-of-unity objection might be justified for other reasons than
those given, eg after considering the documents found in the search or looking in detail
at the technical problem objectively solved. The board noted in this connection that the
ISA had annexed "further relevant material" in the form of WPIL abstracts to its reasoned
request for additional fees. The board said that merely naming or listing possibly relevant
additional literature, or simply referring to prior art mentioned in the application's
description, without in any way analysing the implications of that literature or prior art for
unity purposes, could not be considered an implicit a posteriori objection.
In W 11/99 (OJ 2000, 186) the board observed that in section III-7.6 of the International
Preliminary Examination Guidelines (this corresponds to paragraph 10.04 of the ISPE
Guidelines in force from 25.3.2004) it is stated that, although lack of unity should be
raised in clear cases, it should not be raised on the basis of a narrow, literal or academic
interpretation of the relevant provisions. This follows the Guidelines for Examination in
the EPO with regard to the requirement of Art. 82 EPC (see Guidelines C-III, 7.7 - June
2005 version). In the opinion of the board, the narrow interpretation of the relevant
provisions on which the request for payment was obviously based is incompatible with
this guideline too, as it results in subject-matters which contribute to the solution of one
and the same technical problem, and therefore belong together (see also W 11/89,
OJ 1993, 225, point 4.1 of the Reasons), being deemed to lack unity.
3.2. Substantiation of protest
R. 40.2(c) PCT enables the applicant to pay the additional fee under protest, "that is,
accompanied by a reasoned statement to the effect that the international application
complies with the requirement of unity of invention ...". If the applicant decides to pay the
additional fee under protest, therefore, it must be accompanied by a statement setting
out the reasons for the protest. Since under Art. 17(3)(a) PCT and R. 40.1 PCT this fee
has to be paid within a specified time limit it follows that the statement must also be
submitted within the same time limit.
In W 4/87 (OJ 1988, 425) the board held that fees for additional inventions (see
Art. 17(3)(a) PCT) paid within the prescribed time limit (obliging the EPO as International
Searching Authority to draw up the international search report on those parts of the
international application concerned with the said inventions) could not be refunded if the
statement of grounds supporting the protest under R. 40.2(c) PCT was submitted late.

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In W 8/89, W 60/90, W 57/91, W 16/92 and more recently W 27/03 the board
emphasised that an applicant who wished to pay the additional search fee under protest
must submit a reasoned statement. A protest without sufficient reasoning would be
rejected as inadmissible - without substantive examination by the board as to whether
the invitation of the ISA had been properly reasoned. The reasoning must contain
verifiable grounds indicating why the applicant considered unity of invention to be
present. A mere statement to the effect that the international application met the unity
requirement did not constitute a reasoned statement within the meaning of
R. 40.2(c) PCT. Very brief statements of grounds would suffice only in exceptional cases
(see W 48/90).
In W 41/91 the board found that it was clear from the applicant's submissions that he
disagreed with the ISA on one concrete point. To this extent, the applicant's response
sufficed to meet the requirement of a reasoned statement under R. 40.2(c) PCT. The
board stated that according to the established jurisprudence of the boards of appeal of
the EPO, the substance and not the form of a submission was to be considered (see
J 24/82, OJ 1984, 467).
In W 16/99, the board said the ISA's reasoning in its request for additional fees (Form
PCT/ISA/206) indicated that citation (1) in the international search report suggested a
lack of novelty or inventive step in Claim 1 of the international application. The applicant
had not disputed this, but merely referred to statements in the description about
advantages of the invention which did not take the cited prior art into account. He had
said nothing about the identical or corresponding special technical features in which the
contribution of the various solutions should be seen, especially with regard to citation (1).
The board saw no reason to doubt the ISA's position on the disclosure in citation (1), and
so concluded that the request for payment of four additional fees was in line with
Art. 17(3)(a) PCT and R. 40.1 PCT.
3.3. Review of protests
The new procedure which has been introduced with the changes made to R. 40 PCT and
R. 68 PCT is described above under Chapter IX.C.2., "Protest procedure: the new
provisions".
The procedure prior to this change is still relevant until EPC 2000 has entered into force,
and is set out below.
3.3.1 The review of protests by a review panel
Where additional fees have been paid under protest, an EPO review panel will review
whether the invitation to pay these fees was justified. The review panel consists of the
head of the directorate from which the invitation was issued, an examiner with special
expertise in unity of invention and, normally, the examiner who issued the invitation.
If the review panel finds that the invitation was justified, it will inform the applicant
accordingly and invite him to pay a fee for the examination of the protest by the board of
appeal ("protest fee") if he wishes the protest to be referred to the board of appeal for
decision. The protest fee must be paid within a time limit of one month from the date of
notification of the result of the review. If the protest fee is not paid in due time, the protest
will be considered withdrawn. If the board of appeal finds that the protest was justified,
the additional fee(s) and the protest fee will be refunded.

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For details see the Decision of the President of the EPO dated 25.8.1992 and the EPO
Notice dated 26.8.1992 (OJ 1992, 547).
3.3.2 Review of protest by a board
(a) Additional reasons given by the review panel
In W 11/93 the EPO, acting as ISA, had issued an invitation to pay three additional
search fees, which the applicants paid under protest. The board found that the ISA's
invitation under R. 40.1 PCT was invalid owing to lack of (sufficient) reasons. Under the
new R. 40.2(e) PCT (version valid from 1.7.1992 to 31.3.2005) in conjunction with
R. 104a(3) EPC, the ISA must carry out a review of the protest (R. 104a(3) EPC entered
into force on 1.10.1992 and became R. 105(3) EPC with effect from 1.3.2000). The
board also considered whether the reasons accompanying the "result of the review"
might not be considered as making good the lack of reasons in the case of the invitation.
In its decision, the board thoroughly scrutinised the purpose and structure of
R. 40.2(e) PCT and considered whether, when notifying the results of the review in the
event of the invitation being upheld, there was any need at all to supply further reasons.
It pointed out that prior review of the protest by the ISA was comparable to interlocutory
revision under Art. 109 EPC in the case of an appeal (see also W 4/94, OJ 1996, 73).
Furthermore, R. 40 PCT had been revised for reasons of general procedural economy. It
would run counter to that object were the ISA to give additional reasons in the event
that the invitation to pay was upheld. With this decision, the board confirmed the case
law developed in W 4/93 (OJ 1994, 939).
In W 5/94 the board held that in its examination of the protest against the invitation to
pay an additional search fee, the board must not take into consideration any new
reasons brought forward in the ISA's review of the justification for the invitation
(R. 40.2(c) (d) (e) PCT, versions valid prior to 1.4.2005), particularly because any such
new reasons could not have been considered by the applicant in his protest against the
invitation and because the board's task, under the letter of the law (R. 40.2(c), second
sentence, PCT), was limited to the examination of "the protest" (see also W 12/93 and
W 4/04).
In W 3/96 the board noted that, according to the case law concerning the analogous
procedure for international preliminary examination (R. 68.3(e) PCT, version valid prior to
1.4.2005), new reasons may not be added when the result of the review is
communicated (W 4/93, OJ 1994, 939). In this case, too, the subsequently presented
reasons were not to be taken into account when assessing whether the invitation under
R. 40.1 PCT was sufficiently substantiated and whether the protest was justified. The
crucial issue was not whether the invitation could have been clearly substantiated, but
whether clear reasons had in fact been given in the invitation under R. 40.1 PCT. The
absence of such reasons meant that the invitation to pay failed to meet the requirements
of R. 40.1 PCT and therefore offered no basis for refusing to reimburse the additional
search fees which had been paid under protest.
(b) Amendment of claims
In W 3/91 the board held that the request for amendment of the claims could not be
considered in the proceedings before it, because according to Art. 19(1) PCT any
amendments to the claims after receipt of the international search report could only be
filed with the International Bureau within a prescribed time limit. This left no room for the

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ISA or the board to accept amendments. However, the board believed that the request
for amendment, ie that six certain probes should be deleted from claim 3, could be
understood as a declaration that no search for these particular probes should be carried
out by the ISA. The board considered this request to be in an auxiliary relationship to the
request for a full refund of the fees.
In W 3/94 (OJ 1995, 775) it was pointed out, with regard to the applicants' new claim 1,
that the board had no power to examine unity on the basis of this new claim. The board's
powers derived from Art. 154(3) EPC in conjunction with R. 40.2(c) PCT, which provided
for the board to examine the protest. This, of course, it could only do on the basis of the
documents available when the ISA issued its invitation to pay the additional search fees,
as there was no provision for amendments during proceedings before the ISA. The
replacement sheet could at best be regarded as indicating that the ISA should no longer
search certain subject-matter. This was confirmed in W 6/94, where the board found that
the invitation by the ISA to pay additional fees, and also the examination of the protest by
the board under R. 40.2(c) PCT, had to be based on the claims as originally filed. There
was no opportunity for the applicant to amend the claims in the international phase until
he had received the complete international search report (Art. 19(1) PCT).
(c) Devolutive effect of protests
In W 53/91 the EPO as ISA - applying the former protest procedure - invited the
applicant to pay an additional search fee on 30.5.1991, followed on 1.10.1991 by a
second invitation intended to replace the first one - against which the applicant had
meanwhile (on 20.6.1991) filed a protest. He duly filed a protest against the second
invitation too, and this the board was now hearing. The board's first ruling was that the
provisions and principles of the EPC applied mutatis mutandis in protest proceedings,
which therefore also had a suspensive and devolutive effect. The department of first
instance had no power to amend, replace or cancel its own decision once that decision
had been appealed. Noting this, the board also ordered that the search fee paid under
protest be reimbursed.
In W 1/97 (OJ 1999, 33) the board held that successive invitations to pay additional
search fees could have the consequence that the question of unity of invention became
pending at several instances at the same time. This would be in conflict with basic
principles of procedural law which also applied in protest cases. Once a protest had
been filed, the EPO acting as ISA remained competent only for the prior review of the
justification of the invitation already issued (R. 40.1(e) PCT, version valid prior to
1.4.2005). It was not entitled to raise the question of non-unity a second or even further
times in the same search procedure. The board observed that this would be detrimental
to the right of a party to have one and the same case decided in one set of proceedings,
as well as his right not to be forced to seek legal redress in respect of the same case in
several proceedings. It would also disregard the fact that the position to be taken by the
board of appeal in its decision on the protest might become prejudicial for any further
finding of non-unity.
(d) Refund of protest fee
In W 8/01 the ISA's review panel deemed the limited protest made by the applicant to be
entirely justified. The board held that, given that the limited protest had been entirely
allowed by the review panel, the protest fee - paid without reason and apparently owing
to a misunderstanding - was refunded.

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3.4. Missed time limit for filing the protest

Art. 48(2) PCT requires every PCT contracting state to excuse, as far as that state is
concerned, for reasons admitted under its national law, any delay in meeting any time
limit, and allows such a state, so far as it is concerned, to excuse such delays for other
reasons.
In W 3/93 (OJ 1994, 931), the protest was first rejected as inadmissible by the board on
the ground that it was filed too late, whereupon the applicant applied for re-establishment
of rights. The board found that by analogy with the principles developed by the Enlarged
Board of Appeal in decision G 1/83 (OJ 1985, 60, points 5 and 6 of the Reasons) for
interpreting the EPC, Art. 48(2) PCT should be construed to mean that in the event of a
delay in meeting the time limit laid down in R. 40.3 PCT (version valid prior to 1.4.2005)
the same legal remedies were available as in the case of failure to observe other
comparable time limits under the PCT or EPC (see also W 4/87, OJ 1988, 425, point 7 of
the Reasons). Thus, the provisions of Art. 122 EPC were applicable. As the
communication notifying the appellant that the application did not meet the requirements
of unity needed an answer within thirty days of its date, but was not itself posted until one
month after that date, it was clearly not possible for the appellant to comply with the time
limit. The application for re-establishment was therefore granted. The board found that
re-establishment of rights restores the legal situation to that existing prior to the decision
which declared the protest inadmissible, ie it destroys the legal validity of the decision,
which accordingly need not be set aside or amended.
In case W 20/01 the board decided that where an applicant had paid additional fees
under protest after expiry of the time limit set in the ISA's invitation in accordance with
R. 40.3 PCT (version valid prior to 1.4.2005), the protest, although late, had to be
deemed receivable if the ISA had disregarded the lateness of the payment and had
searched the file as if the fees had been paid in due time.
4. Protest procedure: the EPO acting as IPEA
IX.C.4. Protest procedure: the EPO acting as IPEA

The requirement of unity of invention under the PCT applies equally to the procedure
before the ISA and to the procedure before the IPEA according to Art. 17(3)(a) PCT and
Art. 34(3)(a) PCT. Thus, the requirement of unity of invention under the PCT must in
principle be judged by the same objective criteria by both the ISA and the IPEA (G 1/89
and G 2/89, OJ 1991, 155 and 166). Under Art. 155(3) EPC the boards of appeal are
responsible for deciding on a protest made by an applicant against an additional fee
charged by the EPO, acting as IPEA, under the provisions of Art. 34(3)(a) PCT. This will
change when EPC 2000 enters into force (for more details, see Chapter IX.C.2., "Protest
procedure: the new provisions").
4.1. General issues
In W 6/99 (OJ 2001, 196) the board ruled that the EPO, under the binding guidelines for
international preliminary examination, could issue an invitation under R. 68.2 PCT only if
the applicant failed to overcome the a posteriori non-unity objection raised by the IPEA in
the first communication from the examining division. A desire to expedite proceedings by
issuing the first such communication together with the invitation under R. 68.2 PCT could
not justify departing from the procedure laid down in applicants' interests or make up for
the lack of at least one first written opinion under R. 66.2 PCT prior to the invitation under
Art. 34(3)(a) PCT in conjunction with R. 68.2 PCT (see also W 13/99).

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In W 3/03 the IPEA notified the applicants in a second letter that the application did not
comply with the requirement of unity of invention. This happened even though an
objection of lack of unity raised by the ISA had been withdrawn after protest and the
IPEA's first written opinion had not contain any objection concerning unity of invention.
The board referred to VI-5.3 of the PCT International Preliminary Examination
Guidelines, according to which lack of unity of invention will generally be dealt with
before the first written opinion is issued or, if appropriate, concurrently therewith. The
board also referred to VI-5.13 of the PCT International Preliminary Examination
Guidelines, according to which a first written opinion is intended to indicate lack of unity a
posteriori (point 17.36 of the ISPE Guidelines in force from 25.3.2004 provides that
where unity of invention is lacking this observation must be included in the first written
opinion). There is therefore no provision for this objection to be raised only at a later
stage. The board held that, although the Guidelines were not formally binding, an
applicant should be able to expect a departure from the Guidelines only in exceptional
cases. In the case at issue, as a result of the clear statements in the Guidelines and the
withdrawal of the objection of lack of unity of invention by the search division, the
applicants could expect to have been notified of any objection of lack of unity a posteriori
in the first written opinion, to which they could have responded with amendments if
appropriate.
4.2. Substantiation of invitation
In W 2/93 the board noted that the invitation of the IPEA could not be considered as
containing an acceptable reasoned statement setting out the grounds for the invitation.
The reasons adduced were still those that the ISA had put forward in the invitation to pay
additional fees issued pursuant to Art. 17(3)(a) PCT and R. 40.1 PCT. The applicant, in
the light of the international search report, had submitted to the International Bureau of
WIPO an amendment and the statement under Art. 19(1) PCT, and filed two
replacement sheets as required by R. 46.5(a) PCT. It was clear that claim 1 before the
IPEA was different from the one considered by the ISA. The board stated that, in these
circumstances, an invitation citing the same reasons as those which had been put
forward by the ISA in its invitation could not be considered to fulfil the obligation to
specify reasons laid down in R. 68.2 PCT.
In W 4/94 (OJ 1996, 73) the board felt compelled, given the paucity of the IPEA's
remarks, to comment on the issue of the obligation to specify reasons, even though the
applicants had not expressly referred to this in their protest. The IPEA had established
lack of unity with reference to three documents, ie a posteriori, and had maintained its
finding unamended after review. Although the relevant remarks were not fully in accord
with the PCT Preliminary Examination Guidelines, Chapter VI, 5.5 and 5.7 with reference
to Chapter III, 7 (for the corresponding provisions, in amended form, see
paragraphs 10.71 ff of the ISPE Guidelines in force from 25.3.2004), the fact that in their
protest the applicants had commented on an objection as to the novelty of the subject-
matter of the invention according to claim 1 implied that the IPEA's remarks were
understandable and not just mere assertion, and as a result the minimum criterion of the
obligation under R. 68.2 PCT to provide justification could be seen as fulfilled. The board
did not consider the obligation to be infringed if the determinative reason for the decision
was identifiable, even though the reasons could be seen as insufficient or incorrect. In
the board's opinion, EPO board of appeal case law adhered to this principle. A

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comparable approach could also be seen in decisions on protests, such as W 3/93

(OJ 1994, 931, point 2.1 of the Reasons).
In W 12/94 the board noted that the reasoning given by the IPEA did no more than
identify the content of the two sets of claims. However, the board stated that, in a case
as simple as the one in question, any further useful amplification of the reasoning was
hardly possible. The board found the reasoning given by the IPEA sufficient.
In W 18/01 the board pointed out that it followed from the definitions in the Regulations
under the PCT and the PCT International Preliminary Examination Guidelines (which are
binding on the EPO; see G 1/89, OJ 1991, 155, point 6 of the Reasons) that it was
normally not sufficient merely to define and examine the common core of a group of
inventions, for example by indicating the features which were specified in all the claims
defining the inventions of the group. R. 13.2 PCT requires an examination of the
technical relationship among the inventions in a group. Such a relationship may exist
even if the inventions do not involve the same technical features, provided they involve
corresponding special technical features. The definition of "special technical features"
given in R. 13.2 PCT requires an analysis of the contribution which each of the claimed
inventions makes over the prior art. This first entails analysing which of the features
distinguish the claimed inventions from the cited prior art before their contribution can be
examined in the light of the description, in particular the problems solved and the effects
achieved by the claimed inventions.
Although the IPEA’s invitation had not referred to a document in the search report, it had
taken some prior art into consideration, namely dual-band cell phones. The board noted
that the fact that the IPEA had not cited a specific prior art document did not relieve it of
the obligation to consider the possible contribution that each of the claimed inventions
made over the prior art referred to by the IPEA.
4.3. Substantiation of protest
In W 9/94 the EPO, acting as IPEA, informed the applicant that the application did not
comply with the requirement of unity of invention for the reasons indicated. The sole
argument in the statement accompanying the protest was to the effect that the contents
of the claims were already contained in the original claims and therefore the set of claims
had already been searched. The board observed that the appellant had not addressed
the point at issue, and since the fact that the claims in question had been searched
cannot, on its own, constitute a reason for contesting a finding of lack of unity of
invention by the IPEA, it followed that a protest statement which relied solely on pointing
out this fact could not qualify as a reasoned statement for the purposes of
R. 68.3(c) PCT. The same held true for the argument, which might be implicit in the
protest statement, that the unitary character of the claims in question could be inferred
from the fact that the ISA did not request an additional search fee. The board held that
the decision of the ISA was not binding on the IPEA (see G 2/89, OJ 1991, 166,
points 8.1 to 8.2 of the Reasons), and noted that in the matter of a finding of lack of unity
of invention, both the ISA and the IPEA had exercised discretion in borderline cases on
whether or not to issue an invitation under Art. 17(3)(a) PCT or Art. 34(3)(a) PCT
respectively. Because of the difference between the tasks of search and examination, it
might in appropriate cases be proper for this discretion to be exercised differently by the
respective authorities in relation to a given group of inventions. Thus a group of
inventions might sometimes be searchable in full within the bounds of a normal case,

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while the examination of novelty, inventive step, industrial applicability, excluded subject-
matter and clarity for each of the inventions might involve a cumulative effort well beyond
such bounds.
In W 4/93 (OJ 1994, 939) the board took the view that the applicant's right to
communicate orally with the IPEA (Art. 34(2)(a) PCT) did not include the right to formal
oral proceedings. The board added that an informal interview under R. 66.6 PCT usually
served no purpose in protest proceedings under R. 68.3(c) PCT.
In W 12/94 the board noted that the protest did not contain any reasoning but had to be
read in the context of a letter in which the applicant's representative had set out its
reasoning on the issue of unity, namely that as the search could be conducted without
the effort justifying an additional fee, there was inherent unity. The board decided that in
these circumstances the reasoning in the earlier letter had to be regarded as implicitly
contained in the second, which dealt with exactly the same issue. It found that though
the reasoning was totally unconvincing, it was nonetheless sufficient to qualify as "a
reasoned statement" within the meaning of R. 68.3(c) PCT. The protest was therefore
admissible.
In W 2/00 the board found that the applicant had not given proper reasons for his protest,
as required by R. 68.3 PCT. Under R. 68.3(c) PCT, the protest had to be accompanied
by a reasoned statement to the effect that the application complied with the requirement
of unity or that the amount of the required additional fee was excessive. According to the
boards' case law, this meant that an applicant who believed that his application did not
lack unity had to give specific reasons showing why he took that view (W 16/92,
OJ 1994, 237). The appellant's letter contained no such reasons. It merely indicated his
belief that the application did not lack unity. The board took the view that even if the
words "we maintain our opinion" were taken to refer implicitly to some reason(s) given
earlier, they did not amount to a reasoned statement within the meaning of
R. 68.3(c) PCT.
4.4. Composition of a review panel
The effect of the changes to R. 68 PCT, which entered into force on 1.4.2005 (PCT-
Gazette No. 10/2005), is that the examination of the protest is undertaken by a review
body (for more details see Chapter IX.C.2., "Protest procedure: the new provisions").
Amended R. 68.3(d) PCT provides that membership of the review body may include, but
shall not be limited to, the person who made the decision which is the subject of the
protest. Case W 4/95 refers to R. 68 PCT in the version valid until 31.3.2005.
In W 4/95 the applicants, in accordance with the PCT Preliminary Examination
Guidelines (March 1993), Chapter VI, 5.7 (for the corresponding provision, in amended
form, see paragraph 10.78 of the ISPE Guidelines in force from 25.3.2004), filed a
"reasoned statement" under R. 68.3(c) PCT after receiving the result of the preliminary
examination. In particular, the applicants objected to the composition of the board
responsible for examining the protest under the latter rule, on the grounds that one of its
members was the examiner who had issued the opinion which was the subject of the
original protest; under R. 68.3(d) PCT, this was not permissible. The board explained
that R. 68.3(d) PCT referred to the examination of the protest itself and not to the "prior
review" procedure mentioned in R. 68.3(e) PCT. Paragraph (d) specifically referred to
the three-member board mentioned in paragraph (c). Under Art. 155(3) EPC in
conjunction with Art. 34(3)(a) PCT, this body was the board of appeal for the EPO acting

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as IPEA. Neither the PCT nor its Implementing Regulations contained any provision as
to who should carry out the prior review mentioned in paragraph (e). However,
Chapter VI, 5.7, of the PCT Preliminary Examination Guidelines indicated that the review
was not to be entrusted solely to the examiner responsible for the preliminary
examination, although that examiner was allowed to sit on the three-member board.
4.5. Review of protests
The new procedure which has been introduced with the changes made to R. 40 and
68 PCT is described above under Chapter IX.C.2., "Protest procedure: the new
provisions".
The procedure prior to this change is still relevant until EPC 2000 has entered into force,
and is set out below.
W 4/93 (OJ 1994, 939) dealt for the first time with the new procedure for reviewing
protests against invitations to pay additional fees for the international preliminary
examination in the case of lack of unity of the invention. The board decided that the
examination stipulated in R. 68.3(e) PCT of the justification for charging an additional fee
should only be carried out on the basis of grounds stated in the invitation to pay the
additional fee and that the facts and arguments submitted by the applicant in his grounds
of protest should also be included. This precluded the subsequent inclusion of new
grounds and evidence when communicating the result of this review. The board had to
confine itself in its decision to examining the protest and the invitation to pay (confirmed
in W 11/93).
In W 4/94 (OJ 1996, 73), regarding the extent of the notification of the result of the
review under R. 68.3(e) PCT (version valid prior to 1.4.2005), the board noted that the
wording of the rule, in contrast to the "invitation to restrict or pay" in R. 68.2, first
sentence, PCT, stipulated only that a result be notified and did not expressly mention
any obligation to give reasons. The corresponding PCT Preliminary Examination
Guidelines on implementing this rule in Chapter VI, 5.7 (for the corresponding provision,
in amended form, see paragraph 10.78 of the ISPE Guidelines in force from 25.3.2004),
also stipulated a technical reasoned statement only where the review produced a
negative result, ie where the facts in the invitation under R. 68.2 PCT were not
confirmed. The board therefore took the view that, where the review body reached the
conclusion that the arguments put forward in the protest did not necessitate any further
discussion on the technical and/or patent law issues involved, ie did not lead to any new
assessment of the facts, the phrase "... doit indiquer les raisons techniques de ce
résultat ..." or "... will give a technical reasoning of that result" did not mean that it is
automatically incorrect merely to refer back to the reasons given in form PCT/IPEA/405.
The review under R. 68.3(e) PCT could also be compared with interlocutory revision in
accordance with Art. 109 EPC, which did not stipulate any separate obligation to provide
justification.
In W 3/95 (OJ 1996, 462) the board of appeal had to decide on the question whether it
was right for the IPEA to refer the protest to the board of appeal for a decision when
there were serious doubts whether the protest fee had been paid in due time. The board
noted that whereas Art. 155(3) EPC generally stated the responsibility of the boards of
appeal for deciding on protests, R. 104a(3), last sentence, EPC (corresponding to
R. 105(3) EPC as in force since 1.3.2000) more precisely prescribed that any protest
should be referred to the board of appeal for a decision "if the protest fee is paid in due

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time". From this provision it was to be concluded a contrario that if the protest fee is paid
late or is not paid at all, the protest is not to be referred to the board of appeal for a
decision, with the effect that the protest case would not become pending before the
board of appeal. Accordingly, it was the duty of the IPEA to ascertain whether the protest
fee had been paid in due time before referring a protest to the board of appeal for a
decision.
4.6. Additional fees - partial reimbursement
In W 4/95 the EPO, acting as IPEA, had issued an invitation under Art. 34(3)(a) PCT and
R. 68.2 PCT. The applicants had filed a protest, claiming that the amount of the
requested additional fee was too high. Under R. 68.3(c), second sentence, PCT the
"total or partial reimbursement of the additional fee" could be ordered if the protest was
found to be justified (see also the German wording and the French version, which
deviates from the English by referring to "des taxes additionnelles"). In the applicants'
view, this constituted a basis for paying back only a fraction of a single fee.
The board explained that Art. 34(3)(a) PCT and R. 68.2 PCT referred to several fees.
The reason for this was that an application failing to comply with the requirement for
unity of invention could cover more than one additional invention (see PCT Preliminary
Examination Guidelines, Chapter VI, 5.5; this corresponds to paragraph 10.74 of the
ISPE Guidelines in force from 25.3.2004). Moreover, R. 68 PCT referred to
Art. 34(3)(a) PCT; since both passages were clearly concerned with the same fees,
R. 68.3 PCT had to be brought into accord with Art. 34 PCT and R. 68.2 PCT. In the
board's view, therefore, a "partial reimbursement" should be taken to mean a
reimbursement of some additional fees (but not all of them). A "partial reimbursement"
could only be made if at least two additional fees had been paid. The reimbursement of a
fraction of a single fee was not provided for under the PCT.
D. The EPO as designated or elected Office
The EPO as designated or elected Office
IX.D. The EPO as designated or elected Office

The EPO may be a "designated Office" or an "elected Office" for an international

application under the Patent Cooperation Treaty (PCT). The application is then deemed
to be a European application (Euro-PCT application) for the purposes of the EPC. In the
case of Euro-PCT applications the provisions of the PCT apply in addition to those of the
EPC, and where there is conflict between them, the provisions of the PCT prevail.
In J 26/87 (OJ 1989, 329) the international application had been published by the
International Bureau without mentioning Italy as a designated state. The question to be
decided by the board was whether or not Italy was designated in the international
application, ie whether or not the appellant had informed the receiving Office (the
Australian Patent Office) in the international application that he wished to obtain a
European patent for (inter alia) Italy. The board noted that the answer to this question
depended entirely upon the proper interpretation of the "request for grant" form (Form
PCT/RO/101). The Receiving Section had held that Italy was not requested as a
designated state in this form. The board came to the conclusion that if, on the proper
interpretation of the request for grant of an international application, an applicant has
designated an EPO contracting state for which the PCT is in force, the EPO is bound by
the provisions of Art. 153 EPC to act as the designated Office for that contracting state,
even if the international application has been published by the International Bureau
without mentioning that contracting state as a designated state.

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In J 7/93 the International Bureau did not inform the EPO of its election as an IPEA
within the 21-month time limit under R. 104b(1) EPC (see R. 107 EPC in force since
2.1.2002 for an updated version of this rule). At the end of this period the EPO therefore
issued a communication pursuant to R. 85a EPC requesting payment of the fees to be
paid under R. 104b EPC, unaware that the extended time limit of 31 months under
Chapter II PCT was applicable. However, the fees were not paid within the 31-month
time limit and a request for re-establishment of rights was filed. In the meantime, the
EPO had issued a notification pursuant to R. 69(1) EPC indicating that the application
was deemed to be withdrawn. This notification again referred to the 21-month time limit,
the EPO still being unaware of its election. The Receiving Section went on to reject the
request for re-establishment on the ground that re-establishment was excluded under
Art. 122(5) EPC in respect of the time limits for paying fees pursuant to R. 104b(1)(b)
(c) EPC (following G 3/91, OJ 1993, 8). The board held that the communication pursuant
to R. 85a EPC and the notification pursuant to R. 69(1) EPC were legally non-existent
because they could not be based on any provision in the EPC or the PCT. Thus, the
reasons for which the party had refrained from acting upon them were irrelevant as the
communications could have no legal effect to the party's detriment. Further, according to
R. 85a EPC, the fees could still be paid with a surcharge within a period of grace of one
month of notification of the failure to observe the time limit. As no such communication
had been sent and the party had paid the fees and the surcharge, the proceedings for re-
establishment were not necessary. The fact that the EPO continued the proceedings,
and finally refused, re-establishment of rights, without taking into account the fact that
these proceedings were unnecessary from the very beginning amounted to a substantial
procedural violation.
A decision of an examining division of 5.6.1984 (OJ 1984, 565) pursuant to
Art. 153(2) EPC in conjunction with Art. 25 PCT and Art. 24(2) PCT concerned the
authority of a designated Office under Art. 24(2) PCT to maintain the effect of an
international application. The applicant had missed the time limit for filing the
representative's authorisation set by the Japanese Patent Office acting as receiving
Office.
The EPO, acting as designated Office, excused the non-observance of time limits which
had been set by the receiving Office for the correction of formal deficiencies in
accordance with Art. 14(1)(b) PCT in conjunction with R. 26.2 PCT (Art. 24(2) and
48(2)(a) PCT). The examining division found that the time limit under R. 26.2 PCT was to
be compared to time limits set by the EPO under Art. 121 EPC and granted re-
establishment of rights according to Art. 122 EPC in respect of the time limit under
Art. 121(2) EPC.
In J 3/94 the applicant designated, in an international application, a European patent
under the heading "Regional Patent" and five contracting states to the PCT, including the
EPC contracting states Germany and the United Kingdom, under the heading "National
Patent". However, in the demand for international preliminary examination, which was
filed with the EPO in its capacity as IPEA, only the five PCT member states were
elected; under the heading "Regional Patent" there was no cross indicating a European
patent. The applicant subsequently submitted that the failure to elect the EPO had
resulted from a mistake when the demand for international preliminary examination was
filed. He argued, however, that the time limit under R. 104b EPC (as in force prior to
1.3.2000) had actually been observed because the election of contracting states to the

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EPC under the heading "National Patent" (GB and DE) also had the consequence that
the EPO became an elected Office even if no cross was placed in the box for indicating a
European patent. The applicant submitted that his actions were sufficient to cause the
EPO to be deemed an elected Office by operation of law.
The board pointed out that Art. 31(4)(a), last sentence, PCT, stipulated that an election
could relate only to contracting states already designated under Art. 4 PCT. With regard
to a state providing for national and regional patents, this meant that an election
concerning the national grant procedure was only possible if there was a designation
indicating that the applicant wished to obtain a national patent. Likewise, an election
concerning the regional grant procedure was only possible if there was a designation
indicating that the applicant wished to obtain a regional patent. Since each type of
election had effects on different grant proceedings, it appeared that the declaration to
use the results of the international preliminary examination in national grant proceedings
was different from the declaration to use them in European grant proceedings. The board
found that the correspondence of designations and elections, as laid down in
Art. 31(4)(a), last sentence, PCT, applied two principles: first, an election could not cover
a designation which had not been made when the application was filed and, second, it
was up to the applicant for which office he intended to use the results of the international
preliminary examination. The validity of the election had to be decided by the authorities
concerned during the international phase in order to give effect to the election and had to
be assessed on a uniform basis by those authorities. This was apparently in agreement
with consistent practice under the PCT. The EPO as elected or designated Office is fully
competent to interpret applications appointing it to act in these capacities. Accordingly,
the Office is not bound by the interpretation of the receiving Office or of the International
Bureau (J 26/87, OJ 1989, 329; J 19/93).
In J 4/94 the board had to consider whether the EPO was competent to interpret the
applicant's demand for international preliminary examination differently from the United
Kingdom Patent Office acting as IPEA. The board conceded that the demand was
addressed to the IPEA, which was the competent body to deal with it. However, the
board referred to J 26/87 (OJ 1989, 329), in which it had been decided that the
interpretation of the request for grant form by the receiving Office and the International
Bureau was not binding on the EPO in its function as designated Office. The valid
designation put the matter within the competence of the EPO as designated Office
(Art. 2(xiii) PCT and Art. 153(1) EPC). In deciding on the present case, the board
deviated from the interpretation by the IPEA. It found that there was a defect in the
demand, which the applicant should have been invited under R. 60 PCT to correct. It
held that a clear deviation by the IPEA from the intention expressed in the demand was
not binding on the EPO. It was, therefore, possible for the EPO to regard itself as a
validly elected Office. The consequence of this was that under R. 104b(1) EPC (as in
force prior to 1.3.2000) the time limit of 31 months applied.
In J 19/93 the board held that the designation of states in the PCT request form for the
purpose of obtaining a European patent could only be corrected if expressly requested,
and if it was proved that an error had been made by the applicant.
In J 17/99 the EP designation in an international application had not been confirmed
within fifteen months from the priority date as required by R. 4.9(c) PCT (in force until
31.12.2003). It was therefore to be deemed withdrawn by the applicant at the end of that
period (R. 4.9(b)(ii) PCT - as in force until 31.12.2003 - and Art. 24(1)(i) PCT).

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Consequently, the international application's effects under Art. 11(3) PCT - ie those of a
European filing - ended on that date.
The board pointed out that the designated Office was not bound by the views or actions
of the authorities involved in the application's international phase. On the contrary, in
exercising that discretion in the present case the EPO had to apply the same rules and
principles as for identical or comparable situations arising with direct European
applications. This non-discriminatory approach was not only a fundamental principle of
the PCT itself (see, for example, Art. 26 and 48(2)(a) PCT) but also a direct
consequence of Art. 150(3) EPC. It followed from this that the fairly strict approach taken
by the Legal Board of Appeal to correcting designations also applied to Euro-PCT
applications - see also J 3/81 (OJ 1982, 100) with its ruling that Euro-PCT applicants
could not claim, under Art. 26 PCT, broader rights than those available under the EPC to
EP applicants. J 3/81 laid down that if a mistake was made in designating states in a
European or Euro-PCT application, then a request to correct it by adding a further
designation must generally be refused, in the public interest, if made too late for a notice
about it to be added to the application as published. This general rule applied to a
Euro-PCT application even if its publication by the International Bureau necessarily
preceded the date on which the applicant could ask the EPO to correct it. It followed that
the request for correction under Art. 24(2) PCT in conjunction with R. 88 EPC could not
be allowed.
In J 8/01 (OJ 2003, 3) the Legal Board of Appeal held that the jurisdiction of a
(purported) designated Office according to Art. 26 PCT covered the issue of whether an
omitted designation could be validly added or not, since examination of the validity of the
designation is one of the requirements both of the PCT (Art. 4(1)(ii) PCT) and of the EPC
(Art. 153 EPC). The EPO had to decide on the addition of a designation by correction in
the same way as on the same requirement under the EPC, since a correction would
have a legal effect ab initio from the filing date. This non-discriminating approach was a
fundamental principle of the PCT (see, for example, Art. 26 and 48(2)(a) PCT) and a
direct consequence of Art. 150(3) EPC, under which an international application is
considered to be a European one.
In J 6/00, the appellant had declared in a letter to the International Bureau dated
24.5.1996 that the priority claims made in the international application were withdrawn
and had stated that: "It is understood that the withdrawal has no effect for the elected
Offices US, AU, CA, JP, Fl, NO and EP, where processing of the international application
has already started." In its decision of 30.11.1999 refusing the appellant's request, the
examining division had held that the withdrawal of the priority claims had effect for the
EPO.
The board found the appeal allowable under R. 82ter PCT. It noted that R. 82ter PCT
stipulated that if the applicant proved to the satisfaction of any designated or elected
Office that the priority claim had been erroneously considered by the International
Bureau not to have been made, and if the error was an error such that, had it been made
by the designated or elected Office itself, that Office would have rectified it under
national law or practice, the Office in question had to rectify the error and treat the
international application as if the priority claim had not been considered not to have been
made. In the case under consideration the question was not, as R. 82ter PCT
presupposed, whether a priority claim had been erroneously considered not to have
been made, but whether the priority claims had been erroneously considered to have

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been withdrawn by the applicant. The situation was not literally covered by the wording
of the provision; but it concerned only the other side of the coin: in both cases the effect
was the same, namely that the application was considered to be without priority claims.
The board came to the conclusion that R. 82ter PCT could be applied analogously to
cases where the priority claims had been considered to have been withdrawn.

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 X.1. Administrative Agreement with the German Patent Office

X. INSTITUTIONAL MATTERS
Institutional matters

1. Administrative Agreement with the German Patent Office

X.1. Administrative Agreement with the German Patent Office

The Presidents of the German Patent Office (GPO) and the EPO entered into an
Administrative Agreement on 29.6.1981 concerning the filing of documents and
payments (OJ 1981, 381). According to Art. 1 of this Agreement, documents and
payments filed with the GPO, but addressed to or intended for the EPO, are treated as if
they had been received by the EPO on the day of actual receipt by the GPO.
In G 5/88, G 7/88 and G 8/88 (OJ 1991, 137) the Enlarged Board of Appeal considered
the validity of this Administrative Agreement. The board reached the conclusion that the
power of the President of the EPO to enter into such agreements could not be derived
from Art. 5(3) EPC, which states that he represents the European Patent Organisation;
the President's capacity to represent the European Patent Organisation was merely one
of his functions. The extent of the President's power to enter into agreements was rather
to be derived from other provisions of the EPC, in this case Art. 10(2)(a) EPC, according
to which the President must take all necessary steps to ensure the functioning of the
EPO.
It was held that an agreement concerning the treatment of misdirected documents
involved a necessary step to ensure the functioning of the EPO for the following reason:
the misdirection of papers led to the risk of loss of rights, as a result of failure to meet a
time limit, caused by the late receipt of documents. The Administrative Agreement
between the EPO and GPO was therefore found to be valid to the extent that the
possibility of confusion regarding the filing offices of both Offices actually existed; this
potential for confusion existed in Munich.
However, as far as the EPO sub-office in Berlin was concerned, there was no basis for
such a regulation until 1.7.1989. Before this date the sub-office in Berlin was not a filing
office, nor was a letter-box installed. As far as documents and payments which reached
the EPO via the GPO's office in Berlin were concerned, the Administrative Agreement
was invalid. However, the Enlarged Board of Appeal applied the principle of good faith in
favour of the opponent, who had filed a notice of opposition against a European patent
via the Berlin office of the GPO, relying on the Agreement published in the Official
Journal.
The same danger of confusion has existed in Berlin as in Munich since the opening of
the EPO's Berlin filing office on 1.7.1989. On 13.10.1989, the Administrative Agreement
between the Presidents of the two patent offices was adapted to the new situation (see
OJ 1991, 187).
In T 485/89 (OJ 1993, 214), the board held that a notice of opposition filed by fax at the
GPO in Munich on the last day of the opposition period and forwarded to the EPO the
next day was admissible; the opposition fee had already been paid some days earlier.
Oppositions filed within the prescribed time by fax at the GPO in Munich while intended
for the EPO were covered by the Administrative Agreement of 29.6.1981 and should be
treated by the EPO as if it had received them directly, irrespective of whether or not they
had been wrongly delivered.

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2. Power under Article 23(4) EPC to amend the RPBA

X.2. Power under Article 23(4) EPC to amend the RPBA

In 1994, in accordance with Art. 33(1)(b) EPC, the Administrative Council amended
R. 71 EPC by adding further provisions to R. 71a EPC, inter alia to the effect that a
communication must be issued by the EPO at the same time as a summons to oral
proceedings is issued (OJ 1995, 409). In contrast to this requirement of R. 71a(1) EPC,
Art. 11(2) RPBA leaves it to the discretion of the boards of appeal whether or not to send
a communication with such a summons. In G 6/95 (OJ 1996, 649) the Enlarged Board
held that R. 71a(1) EPC did not apply to the boards of appeal. This interpretation of
R. 71a(1) EPC with regard to the boards was based on the consideration that Art. 23(4)
and 33(1)(b) EPC provided two distinct and separate sources of legislative competence
or power.
The Enlarged Board pointed out that Art. 23(4) EPC states that the RPBA "shall be
adopted in accordance with the provisions of the Implementing Regulations". In the view
of the Enlarged Board this was clearly directed to the mechanism set out in R. 11 EPC,
which states that the authority referred to in R. 10(2) EPC (the "Presidium") "shall adopt"
the RPBA. The Enlarged Board concluded that the power under Art. 23(4) EPC to
amend the RPBA belonged to the Praesidium of the boards of appeal, subject to the
approval of the Administrative Council. Considered in the light of the principle of judicial
independence, which Art. 23(3) EPC embodied, the mechanism for adopting the RPBA
through the Praesidium of the Boards of Appeal pursuant to Art. 23(4) EPC acquired its
full value and showed that the above principle extended to the procedure which was
either preparatory to or otherwise related to the making of such decisions.
The Enlarged Board further stated that, according to Art. 33(1)(b) EPC, the
Administrative Council was competent to amend the Implementing Regulations. There
were obviously limits to the exercise of its powers, however. The Administrative Council
was not entitled to amend the Implementing Regulations in such a way that the effect of
an amended rule would be in conflict with the EPC itself (Art. 164(2) EPC). The Enlarged
Board held that according to the proper interpretation of R. 71a(1) EPC, its mandatory
procedural requirements were applicable to the first-instance departments of the EPO,
but were not applicable to the boards of appeal. If R. 71a(1) EPC were to be interpreted
as applying to all departments of the EPO, including the boards of appeal, its effect
would be directly contradictory to and in conflict with the effect of Art. 11(2) RPBA, which
was adopted pursuant to Art. 23(4) EPC as the emanation of the independence of the
boards of appeal. However, the Administrative Council must be presumed to know the
limits of its own power. It was therefore reasonable to assume that the Administrative
Council did not intend to amend R. 71 EPC so as to provide a conflict with a Rule of
Procedure of the Boards of Appeal which it had itself previously approved.
3. Extension Ordinances on the extension of European patents
X.3. Extension Ordinances on the extension of European patents

In J 14/00 (OJ 2002, 432) the board observed that the Agreement with the Republic of
Slovenia extending the protection conferred by European patents (Extension
Agreement), including the associated Extension Ordinance (EO) (OJ 1994, 75) which
came into force on 1.3.1994, was based on the Patent Cooperation Agreement between
the European Patent Organisation and the Republic of Slovenia, which came into force
on 1.9.1993. This agreement was an international treaty of the kind which the President
of the EPO is authorised by the Administrative Council to conclude with the Council's
approval (Art. 33(4) EPC), in order to carry out the functions assigned to him under the

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EPC. This agreement served the interests not only of applicants, providing as it does a
simple route to patent protection in the Republic of Slovenia, but also those of the
Republic of Slovenia, enabling it to offer patent protection for its territory simply by
extending the effects of European and Euro-PCT applications and patents.
The Legal Board of Appeal decided on the admissibility of an appeal directed against a
letter issued by an EPO formalities officer applying the Extension Ordinance. The board
held that, in the case at issue, admissibility was rather precluded by the fact that,
according to the exhaustive provision in Art. 106(1) EPC, only those decisions of the
EPO may be contested which are taken, within the framework of their duties under the
EPC, by the departments listed therein. This was not, however, the case for decisions
taken by the EPO when carrying out its obligations under the Extension Agreement,
including the EO (OJ 1994, 75).
The Legal Board found that there was nothing in the structure or legal nature of the EO
to support the appealability of the letter issued by an EPO formalities officer. The board
held that the extension procedure under the EO generates legal effects exclusively on
the basis of Slovenian national law. The EO did not include the assignment of sovereign
rights to the EPO. It held that the provisions of the EPC and its Implementing
Regulations do not apply unless otherwise provided in the EO. The EO thus made it
absolutely clear that its references to provisions of the EPC are exhaustive and thus that
there could be no corresponding application of other provisions, including those of
Art. 106 EPC et seq. on the appeals procedure.
Nor could the appellant invoke the principle of good faith to obtain legal recourse to the
EPO's boards of appeal. The board stated that this principle is one of the fundamental
principles of European patent law. However, as far as the extension procedure was
concerned, the EPO was not acting within the framework of the EPC. In its introduction
to the EO, the EPO expressly stated that the EO was based on Slovenian national law
only (OJ 1994, 75) and that the extension procedure and its effects were governed solely
by Slovenian law (OJ 1994, 80).
In J 9/04 the board also commented on the structure or legal nature of the EO. It noted
that, as a bilateral ordinance, the EOs essentially deal - exhaustively and strictly
separately from the EPC - with matters pertaining to the integration of extended
European applications and protective rights into the respective national law and their
relationship to national applications and rights based on the law on industrial property of
the extension states (see, for Slovenia, BlfPMZ 1993, 303 - German periodical). This
includes, in particular, the conferral of the same effects on extended applications and
patents as on national ones, the obligation to provide the national patent offices with a
translation of the claims into the respective language, the national authentic text of
extended applications and patents, their prior-art effect with respect to national
applications and patents, and, finally, simultaneous protection. According to the board,
none of these provisions give rise to any obligations on the part of the EPO. Under the
EOs, the EPO merely undertakes vis-à-vis the national patent authorities to assist with
the administrative tasks associated with the extension of European patents, namely
receiving requests for extension, levying extension fees and, after deducting an amount
to cover its expenses, forwarding the remaining amount to the national patent offices.
It was also stated that it was clear from their provisions that the EOs were governed by
the principle of minimal intervention in the sovereign rights of the extension states.

699
Institutional matters

The EPC, on the other hand, was based inter alia on the delegation of national sovereign
rights to the EPO, on the participation and the controlling function of the Administrative
Council in the administration of the EPO, and on the division of renewal fees between
the EPO and the contracting states involved.
The board observed that the EO did not afford any of the rights and obligations
associated with accession to the EPC. Contrary to the appellant's assertion, it thus did
not set up a jus tertii for services rendered by the EPO in fulfilment of its obligations
under the EO either. As a result there was no right of recourse to the boards of appeal in
respect of extensions of patent applications and patents to the extension states. Instead,
in cases such as the one at issue, it was the respective national jurisdiction which was
responsible. For example, Art. 6(2) of the Slovenian Law provides for appeal
proceedings against decisions of the Slovenian Patent Office (see also J 2/05).
4. Referrals to the Court of Justice of the European Communities under the
EC Treaty - legal status of the EPO boards of appeal
X.4. Referrals to the Court of Justice of the European Communities

In T 276/99 the board noted that under the EC Treaty referrals to the Court of Justice of
the European Communities were governed by Art. 234 (jurisdiction of the Court of
Justice to give preliminary rulings). The board pointed out that, prima facie, as the EPO
boards of appeal were not a court or tribunal of an EU Member State, they did not have
the status to refer a question to the Court of Justice of the European Union. Further, the
question that this board had to decide did not fall under Art. 234 EC Treaty.
The board noted that the appellant seemed to have misunderstood the comments of the
German Constitutional Court ("Bundesverfassungsgericht", BverfG, decision of
4.4.2001, 2 BvR 2368/99, published in GRUR 2001, 728 - 730 - German periodical). The
board pointed out that the delegation referred to there was the delegation of powers to
the EPO directly by the EPC contracting states who were also members of the EU, and
not any delegation from the EU itself. There was also delegation of powers by the non-
EU contracting states. Since the European Patent Organisation was not part of the
European Union institutions, and since the delegation of powers by the non-EU
contracting states was to the EPO but not to the European Union or its institutions, there
was no obvious basis for referring a question to the Court of Justice of the European
Communities from an EPO board of appeal.

700
 Table of cases

TABLE OF CASES Decisions and opinions of the Enlarged

Board of Appeal
Decisions of the Disciplinary Board
G 1/83 05.12.84 (OJ 1985, 60) ....................21, 104, 106,
D 1/81 04.02.82 (OJ 1982 258) ..................................671 687
D 6/82 24.02.83 (OJ 1983, 337) .................................374 G 5/83 05.12.84 (OJ 1985, 064) ..............21, 27, 33, 102,
D 8/82 24.02.83 (OJ 1983, 378) .................................471 104-113, 115, 116, 119, 172, 272, 371,
D 4/86 08.06.87 (OJ 1988, 26) ...................................667 486
D 5/86 29.02.88 (OJ 1989, 210) .........................437, 673 G 6/83 05.12.84 (OJ 1985, 67) .....................21, 104, 106
D 3/89 05.03.89 (OJ 1991, 257) .................................671 G 1/84 24.07.85 (OJ 1985, 299) ................320, 321, 531,
D 5/89 22.05.89 (OJ 1991, 218) .................................671 532, 552, 553, 572, 574
D 11/91 14.09.94 (OJ 1995, 721) .........................673, 675 G 1/86 24.06.87 ........................................359, 360, 373,
D 1/92 30.07.92 (OJ 1993, 357) .........................671, 672 594, 598, 630
D 6/92 13.05.92 (OJ 1993, 361) .................................671 G 1/88 27.01.89 (OJ 1990, 469) ................518, 536, 577,
D 1/93 23.09.93 .........................................................670 616, 617
D 14/93 05.06.96 (OJ 1997, 561) ................441, 444, 445, G 2/88 11.12.89 (OJ 1990, 93) ..................34, 73, 77, 78,
667 112, 113, 115-118, 185, 212, 267, 270,
D 1/94 17.05.95 (OJ 1996, 468) .................................668 272
D 5/94 15.11.95 .................................................669, 672 G 4/88 24.04.89 (OJ 1989, 480) .................541, 542, 597
D 2/95 22.04.96 .........................................................668 G 5/88 16.11.90 (OJ 1991, 137) ................311, 320, 623,
D 14/95 19.12.95 .................................................668, 669 697
D 15/95 09.06.97 (OJ 1998, 297) .................................674 G 6/88 11.12.89 (OJ 1990, 114) ........................112, 113,
D 16/95 29.03.98 .........................................................674 116-118
D 8/96 18.07.97 (OJ 1998, 302) .................................670 G 7/88 16.11.90 (OJ 1991, 137) .........................311, 697
D 9/96 09.03.98 .........................................................668 G 8/88 16.11.90 (OJ 1991, 137) .........................311, 697
D 14/96 21.01.97 .........................................................671 G 1/89 02.05.90 (OJ 1991, 155) ................219, 221, 223,
D 17/96 03.12.96 .........................................................673 224, 229, 233, 679-681, 687, 689
D 20/96 22.07.98 .........................................................672 G 2/89 02.05.90 (OJ 1991, 166) ................219, 221, 223,
D 25/96 17.03.97 (OJ 1998, 45) ...................................667 224, 679, 681, 687, 689
D 2/97 16.03.98 .........................................................673 G 3/89 19.11.92 (OJ 1993, 117) ................259, 277, 279,
D 3/97 08.10.99 .........................................................670 424, 493
D 5/97 08.12.98 .........................................................669 G 1/90 05.03.91 (OJ 1991, 275) ................362, 545, 576,
D 10/97 08.12.98 .........................................................669 613
D 12/97 25.06.98 .........................................................670 G 2/90 04.08.91 (OJ 1992, 10) ...................................614
D 15/97 08.12.98 .................................................669, 672 G 1/91 09.12.91 (OJ 1992, 253) ................129, 222, 511,
D 17/97 08.12.98 .........................................................669 573
D 18/97 10.02.00 .........................................................670 G 2/91 29.11.91 (OJ 1992, 206) .................594, 598, 633
D 28/97 04.09.98 .........................................................674 G 3/91 07.09.92 (OJ 1993, 8) ............................320, 351,
D 1/98 21.07.98 .........................................................674 369-371, 693
D 3/98 05.11.01 .........................................................672 G 4/91 03.11.92 (OJ 1993, 707) .........................546, 599
D 6/98 20.04.99 .........................................669, 671, 672 G 5/91 05.05.92 (OJ 1992, 617) ................458, 460, 461,
D 8/98 20.05.99 .........................................................670 612
D 2/99 07.09.00 .........................................................673 G 6/91 06.03.92 (OJ 1992, 491) .........................478, 479
D 3/99 29.09.00 .........................................................673 G 7/91 05.11.92 (OJ 1993, 478) .................532, 594, 632
D 4/99 29.06.00 .................................................669, 672 G 8/91 05.11.92 (OJ 1993, 408) ................411, 532, 594,
D 6/99 06.07.01 .........................................................670 632
D 11/99 17.11.99 .........................................................671 G 9/91 31.03.93 (OJ 1993, 408) ................390, 391, 393,
D 20/99 06.03.01 (OJ 2002, 19) ...................................674 394, 398, 405, 411, 415, 467, 468, 531,
D 24/99 14.05.01 .........................................................674 532, 559, 562-565, 568, 575, 576, 594,
D 3/00 03.05.02 (OJ 2003, 365) .................................672 598, 601, 603-605, 608, 610, 624, 640,
D 9/00 12.12.00 .........................................................671 641, 649
D 11/00 09.05.01 .........................................................668 G 10/91 31.03.93 (OJ 1993, 420) ................390, 391, 393,
D 12/00 27.03.02 .........................................................672 394, 405, 531, 533, 538, 559, 562, 563,
D 7/01 07.11.02 .........................................................671 565-568, 579, 594, 601, 603, 606-610,
D 11/01 04.07.02 .........................................................671 624, 649, 656
D 4/02 17.01.03 .........................................................670 G 11/91 19.11.92 (OJ 1993, 125) ................235, 277, 424,
D 6/02 02.10.02 .........................................................672 493
D 10/02 11.11.02 (OJ 2003, 275) .................................669 G 12/91 17.12.93 (OJ 1994, 285) .................463, 528, 529
D 13/02 11.11.02 .........................................................672 G 1/92 18.12.92 (OJ 1993, 277) .................51-53, 56, 73,
D 16/02 16.07.03 .........................................................671 74, 76-78
D 3/03 23.04.04 .........................................................670 G 2/92 06.07.93 (OJ 1993, 591) ................231, 233, 422,
D 3/04 05.07.05 .........................................................670 510, 511
D 6/04 30.08.04 .........................................................671 G 3/92 13.06.94 (OJ 1994, 607) .................................309
D 8/04 23.08.04 .........................................................666 G 4/92 29.10.93 (OJ 1994, 149) .................326, 328-331,
D 15/04 14.02.05 .........................................................666 400, 402, 586
D 16/04 18.02.05 .........................................................667 G 5/92 27.09.93 (OJ 1994, 22) ...................................370
D 17/04 11.02.05 .........................................................666 G 6/92 27.09.93 (OJ 1994, 25) ...................................370
D 18/04 28.01.05 .........................................................666 G 8/92 05.03.93 .................................................637, 639
D 19/04 28.02.05 .........................................................667 G 9/92 14.07.94 (OJ 1993, 591) ................321, 421, 532,
D 17/05 19.07.05 .........................................................672 594, 598, 601-603
G 10/92 28.04.94 (OJ 1994, 633) ................319, 408, 414,
525

701
Table of cases

G 1/93 02.02.94 (OJ 1994, 541) .................242-246, 258, J 8/80 - 3.1.01 18.07.80 (OJ 1980, 293)......495, 496,
266, 267, 274-276, 283 499, 500
G 2/93 21.12.94 (OJ 1995, 275) .................................182 J 11/80 - 3.1.01 25.03.81 (OJ 1981, 141)......417, 420,
G 3/93 16.08.94 (OJ 1995, 18) ..................289, 292, 305, 633
306 J 12/80 - 3.1.01 26.03.81 (OJ 1981, 143)......496, 499,
G 4/93 14.07.94 (OJ 1994, 875) ................321, 421, 532, 500
594, 598, 601, 602 J 15/80 - 3.1.01 11.06.81 (OJ 1981, 213).......289, 290
G 5/93 18.01.94 (OJ 1994, 447) .........................320, 370 J 19/80 - 3.1.01 03.02.81 (OJ 1981, 65).................493
G 7/93 13.05.94 (OJ 1994, 775) ................334, 344, 476, J 21/80 - 3.1.01 26.02.81 (OJ 1981,101)................651
508, 523, 525-528, 570, 611 J 1/81 - 3.1.01 24.11.82 (OJ 1983, 53).................349
G 8/93 13.06.94 (OJ 1994, 887) .................594, 610, 634 J 3/81 - 3.1.01 07.12.81 (OJ 1982, 100)......496, 498,
G 9/93 06.07.94 (OJ 1994, 891) ................320, 321, 532, 499, 695
553 J 5/81 - 3.1.01 09.12.81 (OJ 1982, 155)........47, 480,
G 10/93 30.11.94 (OJ 1995, 172) .................520, 525, 609 502, 639, 660
G 1/94 11.05.94 (OJ 1994, 787) .................594, 599, 600 J 7/81 - 3.1.01 21.12.81 ......................................352
G 2/94 19.02.96 (OJ 1996, 401) .................450, 451, 453 J 8/81 - 3.1.01 30.11.81 (OJ 1982, 10).........464, 612
G 1/95 19.07.96 (OJ 1996, 615) .................566, 567, 606 J 10/81 - 3.1.01 05.05.82 ......................................442
G 2/95 14.05.96 (OJ 1996, 555) .................235, 278, 494 J 1/82 - 3.1.01 07.04.82 (OJ 1982, 293)...............493
G 4/95 19.02.96 (OJ 1996, 412) ..................394, 450-454 J 3/82 - 3.1.01 16.02.83 (OJ 1983, 171)...............499
G 6/95 24.07.96 (OJ 1996, 649) .................343, 344, 698 J 4/82 - 3.1.01 21.07.82 (OJ 1982, 385).......499, 500
G 7/95 19.07.96 (OJ 1996, 626) ................538, 566, 567, J 7/82 - 3.1.01 23.07.82 (OJ 1982, 391)......322, 359,
606, 607 362-364, 650, 655
G 8/95 16.04.96 (OJ 1996, 481) ..................472-475, 614 J 8/82 - 3.1.01 08.11.83 (OJ 1984, 155)......486, 490,
G 1/97 10.12.99 (OJ 2000, 322) .........................473, 613 494
G 2/97 12.11.98 (OJ 1999, 123) ................311, 313, 315, J 9/82 - 3.1.01 26.11.82 (OJ 1983, 57).................348
317 J 10/82 - 3.1.01 21.12.82 (OJ 1983, 94).................661
G 3/97 21.01.99 (OJ 1999, 245) ........................435, 542, J 12/82 - 3.1.01 11.03.83 (OJ 1983, 221)......368, 369,
551-553, 556 503
G 4/97 21.01.99 (OJ 1999, 270) ........................435, 548, J 14/82 - 3.1.01 19.01.83 (OJ 1983, 121)......499, 500,
551-553 655
G 1/98 20.12.99 (OJ 2000, 111) ................38, 40, 42, 43, J 16/82 - 3.1.01 02.03.83 (OJ 1983,262).......383, 385,
45, 487 651
G 2/98 31.05.01 (OJ 2001, 413) ........................284, 289, J 18/82 - 3.1.01 18.05.83 (OJ 1983, 441)...............368
291-295, 297, 299, 300, 304, 306, 307 J 19/82 - 3.1.01 28.07.83 (OJ 1984, 6)...................632
G 3/98 12.07.00 ...................................................50, 487 J 23/82 - 3.1.01 28.01.83 (OJ 1983, 127).......411, 412
G 4/98 27.11.00 (OJ 2001, 131) ................351, 409, 410, J 24/82 - 3.1.01 03.08.84 (OJ 1984, 467).......420, 684
497 J 25/82 - 3.1.01 03.08.84 (OJ 1984, 467)...............420
G 1/99 02.04.01 (OJ 2001, 381) ................411, 422, 594, J 26/82 - 3.1.01 03.08.84 (OJ 1984, 467)...............420
603, 604 J 3/83 - 3.1.01 02.11.83 ..............................357, 358
G 2/99 12.07.00 (OJ 2001, 83) .............................50, 487 J 7/83 - 3.1.01 02.12.83 (OJ 1984, 211).......357, 654
G 3/99 18.02.02 (OJ 2002, 347) ................414, 446, 554, J 8/83 - 3.1.01 13.02.85 (OJ 1985, 102)...............504
555, 615, 637 J 9/83 - 3.1.01 13.02.85 ......................................504
G 1/02 22.01.03 (OJ 2003, 165) .................................549 J 12/83 - 3.1.01 09.11.84 (OJ 1985, 6)...........520, 616
G 2/02 26.04.04 (OJ 2004, 483) .........................289, 488 J 13/83 - 3.1.01 03.12.84 ......................................612
G 3/02 26.04.04 (OJ 2004, 483) .........................289, 488 J 9/84 - 3.1.01 30.04.85 (OJ 1985, 233)...............214
G 1/03 08.04.04 (OJ 2004, 413) .................157, 193-196, J 10/84 - 3.1.01 29.11.84 (OJ 1985, 71).........311, 504
239, 252-256, 293, 320 J 12/84 - 3.1.01 25.01.85 (OJ 1985, 108).......318, 384
G 2/03 08.04.04 (OJ 2004, 448) .................157, 193-196, J 13/84 - 3.1.01 16.11.84 (OJ 1985, 34).................419
252, 253, 256, 293 J 18/84 - 3.1.01 31.07.86 (OJ 1987, 215)...............651
G 3/03 28.01.05 (OJ 2005, 344) .................614, 637, 663 J 19/84 - 3.1.01 12.11.84 (OJ 1991, 473)...............332
G 1/04 16.12.05 (OJ 2006, 334) ................20, 21, 23, 25, J 21/84 - 3.1.01 29.11.85 (OJ 1986, 75).........496, 499
35, 190 J 4/85 - 3.1.01 28.02.86 (OJ 1986, 205)......277, 494,
G 2/04 25.05.05 (OJ 2005, 549) .................................543 495, 610
G 3/04 22.08.05 (OJ 2006, 118) .........................547, 600 J 11/85 - 3.1.01 23.10.85 (OJ 1986, 1)...................413
G 1/05 pending .....................................XXXIII, 282, 321 J 12/85 - 3.1.01 07.02.86 (OJ 1986, 155)......474, 612,
G 1/06 pending .............................................XXXIII, 282 616
G 2/06 pending .............................................. XXXIV, 41 J 13/85 - 3.1.01 25.08.86 ......................................281
G 3/06 pending ............................................ XXXIV, 282 J 15/85 - 3.1.01 10.07.86 (OJ 1986, 395).......419, 420
J 20/85 - 3.1.01 14.05.86 (OJ 1987, 102)......322, 427,
441, 598
Decisions of the Legal Board of Appeal J 21/85 - 3.1.01 29.01.86 (OJ 1986, 117)...............493
J 22/85 - 3.1.01 23.07.86 (OJ 1987, 455)...............652
J 1/78 - 3.1.01 02.03.79 (OJ 1979, 285)...............441 J 2/86 - 3.1.01 21.10.86 (OJ 1987, 362).......374, 375
J 5/79 - 3.1.01 17.01.80 (OJ 1980, 071)......387, 481, J 3/86 - 3.1.01 21.10.86 (OJ 1987, 362).......374, 375
616 J 4/86 - 3.1.01 04.03.87 (OJ 1988, 119)...............503
J 6/79 - 3.1.01 13.06.80 (OJ 1980, 225)...............654 J 6/86 - 3.1.01 28.01.87 (OJ 1988, 124)...............417
J 1/80 - 3.1.01 17.07.80 (OJ 1980, 289)......358, 359, J 9/86 - 3.1.01 17.03.87 .............................360, 363,
502 374, 376, 377
J 3/80 - 3.1.01 31.01.80 (OJ 1980, 92).................360 J 11/86 - 3.1.01 06.08.86 ......................................368
J 4/80 - 3.1.01 17.09.80 (OJ 1980, 351)...............496 J 12/86 - 3.1.01 06.02.87 (OJ 1988, 83).........633, 651
J 5/80 - 3.1.01 07.07.81 (OJ 1981, 343)......369, 378, J 14/86 - 3.1.01 28.04.87 (OJ 1988, 85).................348
383 J 15/86 - 3.1.01 09.10.87 (OJ 1988, 417)...............417
J 7/80 - 3.1.01 11.03.81 (OJ 1981,137)................495 J 16/86 - 3.1.01 01.12.86 ......................................365
J 18/86 - 3.1.01 27.04.87 (OJ 1988, 165)...............493

702
 Table of cases

J 22/86 - 3.1.01 07.02.87 (OJ 1987, 280).......360, 622 J 18/90 - 3.1.01 22.03.91 (OJ 1992, 511).......496, 596
J 24/86 - 3.1.01 13.02.87 (OJ 1987, 399)...............412 J 19/90 - 3.1.01 30.04.92 ......................................621
J 25/86 - 3.1.01 14.11.86 (OJ 1987, 475).......415, 495 J 27/90 - 3.1.01 11.07.91 (OJ 1993, 422).......362, 363
J 28/86 - 3.1.01 13.04.87 (OJ 1988, 85).........414, 443 J 30/90 - 3.1.01 03.06.91 (OJ 1992, 516)...............496
J 29/86 - 3.1.01 12.06.87 (OJ 1988, 84)........362, 363, J 31/90 - 3.1.01 10.07.92 .............................375, 376,
455 384
J 32/86 - 3.1.01 16.02.87 ......................................443 J 32/90 - 3.1.01 10.07.92 ......................................375
J 33/86 - 3.1.01 10.07.87 (OJ 1988, 84).................505 J 33/90 - 3.1.01 10.07.92 .............................376, 381,
J 34/86 - 3.1.01 15.03.88 ......................................410 383
J 2/87 - 3.1.01 20.07.87 (OJ 1988, 330)......311, 365, J 1/91 - 3.1.01 25.08.94 (OJ 1993, 281)...............309
625 J 3/91 - 3.1.01 01.12.92 (OJ 1994, 365)......495, 499,
J 3/87 - 3.1.01 02.12.87 (OJ 1989, 3)...........311, 661 500, 662
J 4/87 - 3.1.01 02.06.87 (OJ 1988, 172)......349, 475, J 4/91 - 3.1.01 22.10.91 (OJ 1992, 402).......350, 487
493 J 5/91 - 3.1.01 29.04.92 (OJ 1993, 657)...............350
J 5/87 - 3.1.01 06.03.87 (OJ 1987, 295)...............214 J 6/91 - 3.1.01 01.12.92 (OJ 1994, 349)........498-500
J 7/87 - 3.1.01 28.10.87 (OJ 1988, 422).......417, 633 J 9/91 - 3.1.01 01.12.92 ......................................499
J 8/87 - 3.1.01 30.11.87 (OJ 1989, 19).................182 J 10/91 - 3.1.01 11.12.92 ......................................439
J 10/87 - 3.1.01 11.02.88 (OJ 1989, 323)......417, 418, J 11/91 - 3.1.01 05.08.92 (OJ 1994, 28)........319, 320,
496 358
J 11/87 - 3.1.01 26.11.87 (OJ 1988, 367).......417, 633 J 14/91 - 3.1.01 06.11.91 (OJ 1993, 479)......342, 480,
J 12/87 - 3.1.01 25.03.88 (OJ 1989, 366)...............369 639
J 14/87 - 3.1.01 20.05.87 (OJ 1988, 295)...............530 J 15/91 - 3.1.01 16.12.92 (OJ 1994, 296)...............678
J 19/87 - 3.1.01 21.03.88 ......................................289 J 16/91 - 3.1.01 05.08.92 (OJ 1994, 28).................358
J 20/87 - 3.1.01 30.07.87 (OJ 1989, 67).........334, 475 J 17/91 - 3.1.01 17.09.92 (OJ 1994, 225)...............481
J 23/87 - 3.1.01 09.11.87 ..............................374, 379 J 19/91 - 3.1.01 17.09.92 ......................................481
J 26/87 - 3.1.01 25.03.88 (OJ 1989,329).......612, 692, J 1/92 - 3.1.01 15.07.92 ......................................614
694 J 2/92 - 3.1.01 01.12.92 (OJ 1994,375).......495, 499,
J 27/87 - 3.1.01 03.03.88 ......................................480 500
J 3/88 - 3.1.01 19.07.88 .............................380, 382, J 7/92 - 3.1.01 17.02.94 ......................................455
383 J 11/92 - 3.1.01 12.01.94 (OJ 1995, 25).................501
J 4/88 - 3.1.01 23.09.88 (OJ 1989, 483)...............479 J 12/92 - 3.1.01 30.04.93 ......................................369
J 11/88 - 3.1.01 30.08.88 (OJ 1989, 433).......349, 424 J 13/92 - 3.1.01 18.10.93 ......................................612
J 12/88 - 3.1.01 07.11.88 ......................................447 J 15/92 - 3.1.01 25.05.93 ......................................312
J 13/88 - 3.1.01 23.09.88 ......................................348 J 16/92 - 3.1.01 25.04.94 ..............................353, 380
J 15/88 - 3.1.01 20.07.89 (OJ 1990, 445).......214, 422 J 17/92 - 3.1.01 22.11.96 ..............................528, 661
J 16/88 - 3.1.01 18.08.89 ......................................214 J 18/92 - 3.1.01 18.12.92 ......................................442
J 22/88 - 3.1.01 28.04.89 (OJ 1990, 244)...............372 J 19/92 - 3.1.01 11.10.93 ......................................485
J 23/88 - 3.1.01 25.04.89 ..............................353, 355 J 21/92 - 3.1.01 16.03.95 ......................................375
J 25/88 - 3.1.01 31.10.88 (OJ 1989, 486).......409, 496 J 22/92 - 3.1.01 13.12.94 .............................365, 378,
J 27/88 - 3.1.01 05.07.89 .............................362, 363, 388
374 J 23/92 - 3.1.01 17.12.93 ......................................375
J 29/88 - 3.1.01 18.08.89 ......................................214 J 24/92 - 3.1.01 16.03.95 ......................................375
J 1/89 - 3.1.01 01.02.90 (OJ 1992, 17).........311, 318 J 25/92 - 3.1.01 29.09.93 ..............................312, 503
J 5/89 - 3.1.01 09.06.89 ......................................312 J 26/92 - 3.1.01 23.08.94 .............................377, 383,
J 9/89 - 3.1.01 11.10.89 ......................................373 384
J 11/89 - 3.1.01 26.10.89 .............................315, 499, J 27/92 - 3.1.01 20.05.94 (OJ 1995, 288)......318, 319,
500 413
J 17/89 - 3.1.01 09.01.90 ......................................366 J 28/92 - 3.1.01 11.05.94 ..............................374, 381
J 19/89 - 3.1.01 02.08.90 (OJ 1991, 425)......442, 443, J 30/92 - 3.1.01 18.12.92 ......................................442
445 J 31/92 - 3.1.01 18.12.92 ......................................442
J 20/89 - 3.1.01 27.11.89 (OJ 1991, 375)........677-679 J 32/92 - 3.1.01 18.12.92 ......................................442
J 25/89 - 3.1.01 19.03.90 ......................................214 J 33/92 - 3.1.01 18.12.92 ......................................442
J 26/89 - 3.1.01 19.03.90 ......................................214 J 34/92 - 3.1.01 23.08.94 .............................318, 365,
J 27/89 - 3.1.01 19.03.90 ......................................214 368, 455
J 28/89 - 3.1.01 19.03.90 ......................................214 J 35/92 - 3.1.01 17.03.94 ......................................446
J 30/89 - 3.1.01 14.12.89 ......................................349 J 36/92 - 3.1.01 20.05.94 ......................................408
J 31/89 - 3.1.01 31.10.89 ..............................373, 381 J 38/92 - 3.1.01 16.03.95 (OJ 1995) .............482, 483,
J 33/89 - 3.1.01 11.12.89 (OJ 1991, 288)...............494 593
J 34/89 - 3.1.01 30.01.90 ......................................214 J 39/92 - 3.1.01 16.03.95 ..............................482, 483
J 37/89 - 3.1.01 24.07.91 (OJ 1993, 201).......352, 651 J 41/92 - 3.1.01 27.10.93 (OJ 1995, 93)........315, 368,
J 39/89 - 3.1.01 22.05.91 ......................................484 386
J 42/89 - 3.1.01 30.10.91 ......................................381 J 42/92 - 3.1.01 28.02.97 .............................277, 478,
J 3/90 - 3.1.01 30.04.90 (OJ 1991, 550)......322, 349, 530, 614
598 J 43/92 - 3.1.01 28.11.95 ..............................455, 465
J 6/90 - 3.1.01 22.10.92 (OJ 1993, 714)...............365 J 44/92 - 3.1.01 29.11.96 ......................................388
J 7/90 - 3.1.01 07.08.91 (OJ 1993, 133)......357, 499, J 47/92 - 3.1.01 21.10.93 (OJ 1995, 180).......353, 638
639 J 48/92 - 3.1.01 29.11.96 ......................................388
J 9/90 - 3.1.01 08.04.92 .............................356, 357, J 49/92 - 3.1.01 29.05.95 .............................353, 354,
387 412
J 13/90 - 3.1.01 10.12.92 .............................315, 316, J 1/93 - 3.1.01 17.05.94 ......................................349
368, 375 J 2/93 - 3.1.01 07.02.94 (OJ 1995, 675)...............613
J 14/90 - 3.1.01 21.03.91 (OJ 1992, 505)...............496 J 3/93 - 3.1.01 22.02.94 ......................................378
J 15/90 - 3.1.01 28.11.94 ..............................316, 639 J 4/93 - 3.1.01 24.05.93 ......................................370
J 16/90 - 3.1.01 06.03.91 (OJ 1992, 260).......369, 639 J 7/93 - 3.1.01 23.08.93 ..............................359, 693

703
Table of cases

J 8/93 - 3.1.01 19.03.97 ......................................439 J 17/97 - 3.1.01 14.02.02 ..............................410, 496

J 9/93 - 3.1.01 26.04.95 ......................................320 J 18/97 - 3.1.01 14.02.02 ..............................410, 496
J 10/93 - 3.1.01 14.06.96 (OJ 1997, 91).........360, 482 J 22/97 - 3.1.01 10.11.99 ......................................363
J 11/93 - 3.1.01 06.02.96 ......................................448 J 27/97 - 3.1.01 26.10.98 ..............................485, 486
J 16/93 - 3.1.01 20.06.95 ..............................362-364, J 29/97 - 3.1.01 14.06.99 ......................................314
378, 379 J 32/97 - 3.1.01 20.07.98 ..............................485, 662
J 18/93 - 3.1.01 02.09.94 (OJ 1997, 326)...............495 J 35/97 - 3.1.01 07.06.00 ......................................485
J 19/93 - 3.1.01 15.12.97 ......................................694 J 36/97 - 3.1.01 25.05.99 ......................................483
J 2/94 - 3.1.01 21.06.95 ......................................317 J 38/97 - 3.1.01 22.06.99 .............................311, 613,
J 3/94 - 3.1.01 28.03.95 ......................................693 651, 652
J 4/94 - 3.1.01 24.03.95 ......................................694 J 2/98 - 3.1.01 27.11.02 ......................................355
J 5/94 - 3.1.01 28.09.94 .............................362, 367, J 3/98 - 3.1.01 25.09.00 ......................................613
378 J 5/98 - 3.1.01 07.04.00 ......................................351
J 7/94 - 3.1.01 18.01.95 (OJ 1995, 817)...............501 J 6/98 - 3.1.01 17.10.00 ......................................366
J 8/94 - 3.1.01 07.12.95 (OJ 1997, 17).................369 J 9/98 - 3.1.01 02.12.02 (OJ 2003, 184)...............289
J 9/94 - 3.1.01 18.01.96 ......................................357 J 10/98 - 3.1.01 02.12.02 (OJ 2003, 184)...............289
J 10/94 - 3.1.01 18.01.96 ......................................357 J 11/98 - 3.1.01 15.06.00 ..............................357, 373
J 11/94 - 3.1.01 17.11.94 (OJ 1995, 596)......414, 450, J 12/98 - 3.1.01 08.10.02 ......................................366
453, 521 J 13/98 - 3.1.01 06.04.01 ......................................413
J 12/94 - 3.1.01 16.02.96 ..............................318, 368 J 14/98 - 3.1.01 18.12.00 ......................................679
J 13/94 - 3.1.01 04.10.96 ......................................521 J 15/98 - 3.1.01 31.10.00 (OJ 2001, 183).......479, 492
J 14/94 - 3.1.01 15.12.94 (OJ 1995, 825).......318, 455 J 16/98 - 3.1.01 20.12.00 ......................................613
J 16/94 - 3.1.01 10.06.96 (OJ 1997, 331)...............619 J 17/98 - 3.1.01 20.09.99 (OJ 2000, 399)......313, 448,
J 21/94 - 3.1.01 12.04.95 (OJ 1996, 16).................494 484
J 22/94 - 3.1.01 19.06.95 ......................................484 J 18/98 - 3.1.01 16.01.04 .............................366, 367,
J 25/94 - 3.1.01 14.03.96 ......................................369 383
J 27/94 - 3.1.01 27.02.95 (OJ 1995, 831)......312, 319, J 21/98 - 3.1.01 25.10.99 (OJ 2000, 406).......479, 654
408, 414, 521, 630 J 22/98 - 3.1.01 25.10.99 ..............................479, 654
J 28/94 - 3.1.01 07.12.94 (OJ 1995, 742)......482, 483, J 4/99 - 3.1.01 21.03.02 ......................................407
594, 596, 627 J 5/99 - 3.1.01 06.04.00 ......................................355
J 29/94 - 3.1.01 10.03.97 (OJ 1998,147).......369, 502, J 6/99 - 3.1.01 25.10.99 ..............................479, 654
518, 595 J 7/99 - 3.1.01 17.05.00 .............................354, 355,
J 30/94 - 3.1.01 09.10.95 .............................474, 614, 363
651, 652 J 9/99 - 3.1.01 10.10.03 (OJ 2004, 309)...............448
J 8/95 - 3.1.01 04.11.96 ..............................367, 488 J 10/99 - 3.1.01 20.12.99 ......................................365
J 11/95 - 3.1.01 27.11.97 ......................................480 J 14/99 - 3.1.01 25.10.99 ..............................479, 654
J 12/95 - 3.1.01 20.03.96 ......................................414 J 15/99 - 3.1.01 25.10.99 ..............................479, 654
J 14/95 - 3.1.01 20.08.97 ......................................312 J 16/99 - 3.1.01 03.09.01 ......................................475
J 15/95 - 3.1.01 20.08.97 ......................................312 J 17/99 - 3.1.01 04.07.00 ..............................498, 694
J 16/95 - 3.1.01 20.08.97 ......................................312 J 18/99 - 3.1.01 01.10.02 ..............................444, 445
J 17/95 - 3.1.01 20.08.97 ......................................312 J 20/99 - 3.1.01 08.05.00 ......................................465
J 22/95 - 3.1.01 04.07.97 (OJ 1998, 569).......409, 497 J 3/00 - 3.1.01 20.12.01 ......................................316
J 24/95 - 3.1.01 20.08.97 ......................................312 J 4/00 - 3.1.01 21.03.02 ......................................503
J 25/95 - 3.1.01 20.08.97 ..............................312, 319 J 6/00 - 3.1.01 22.11.02 ......................................695
J 26/95 - 3.1.01 13.10.98 (OJ 1999, 668)......356, 357, J 7/00 - 3.1.01 12.07.02 ..............................484, 616
367, 482 J 12/00 - 3.1.01 24.01.02 ......................................482
J 27/95 - 3.1.01 09.04.97 ..............................444, 445 J 14/00 - 3.1.01 10.05.01 (OJ 2002, 432)...............698
J 29/95 - 3.1.01 30.01.96 (OJ 1996, 489)...............521 J 20/00 - 3.1.01 24.09.01 ......................................351
J 32/95 - 3.1.01 24.03.99 (OJ 1999, 713)......616, 636, J 2/01 - 3.1.01 04.02.04 (OJ 2005, 88).........410, 486
637, 663 J 3/01 - 3.1.01 17.06.02 ......................................498
J 33/95 - 3.1.01 18.12.95 ......................................596 J 5/01 - 3.1.01 28.11.01 ..............................490, 494
J 4/96 - 3.1.01 15.04.97 ......................................315 J 8/01 - 3.1.01 06.06.02 (OJ 2003, 003)...............695
J 6/96 - 3.1.01 18.09.97 ......................................504 J 9/01 - 3.1.01 19.11.01 ......................................479
J 7/96 - 3.1.01 20.01.98 (OJ 1999, 443)......407, 483, J 10/01 - 3.1.01 15.10.02 ..............................358, 407
529, 530 J 12/01 - 3.1.01 26.03.03 (OJ 2003, 431)...............663
J 8/96 - 3.1.01 20.01.98 ......................................484 J 15/01 - 3.1.01 15.11.01 ......................................651
J 9/96 - 3.1.01 21.11.97 ......................................485 J 18/01 - 3.1.01 02.05.02 ......................................479
J 10/96 - 3.1.01 15.07.98 ......................................446 J 25/01 - 3.1.01 13.02.03 ......................................499
J 16/96 - 3.1.01 14.07.97 (OJ 1998, 347).......449, 489 J 27/01 - 3.1.01 11.03.04 .............................362, 363,
J 17/96 - 3.1.01 03.12.96 ......................................495 378
J 18/96 - 3.1.01 01.10.97 (OJ 1998,403).......312, 491, J 2/02 - 3.1.01 09.07.02 ..............................374, 378
492, 652 J 4/02 - 3.1.01 28.10.05 ......................................358
J 19/96 - 3.1.01 23.04.99 .............................409, 411, J 5/02 - 3.1.01 30.07.02 ......................................314
412 J 6/02 - 3.1.01 13.05.04 ......................................530
J 20/96 - 3.1.01 28.09.98 ......................................662 J 9/02 - 3.1.01 22.05.03 ......................................351
J 21/96 - 3.1.01 06.05.98 ..............................358, 407 J 10/02 - 3.1.01 22.02.05 ...............................482-484
J 23/96 - 3.1.01 28.08.97 ......................................361 J 13/02 - 3.1.01 26.06.03 ......................................495
J 24/96 - 3.1.01 27.04.01 (OJ 2001, 434).......221, 660 J 15/02 - 3.1.01 24.11.03 ......................................351
J 25/96 - 3.1.01 11.04.00 ..............................383, 385 J 16/02 - 3.1.01 10.02.04 ......................................655
J 27/96 - 3.1.01 16.12.98 ..............................498, 499 J 1/03 - 3.1.01 06.10.04 ..............................371, 380
J 29/96 - 3.1.01 03.09.97 (OJ 1998, 582)...............408 J 4/03 - 3.1.01 09.09.04 ..............................341, 342
J 31/96 - 3.1.01 25.11.97 ......................................495 J 6/03 - 3.1.01 29.09.04 ......................................483
J 4/97 - 3.1.01 09.07.97 ......................................417 J 11/03 - 3.1.01 14.04.05 .............................363, 365,
J 7/97 - 3.1.01 11.12.97 ......................................318 376

704
 Table of cases

J 12/03 - 3.1.01 26.09.05 ......................................481 T 13/82 - 3.5.01 03.03.83 (OJ 1983, 411)......366, 436,
J 13/03 - 3.1.01 23.02.04 ..............................311, 370 651
J 14/03 - 3.1.01 20.08.04 ......................................349 T 21/82 - 3.2.01 30.11.83 ......................................633
J 17/03 - 3.1.01 18.06.04 ..............................334, 378 T 22/82 - 3.3.01 22.06.82 (OJ 1982, 341)...............153
J 18/03 - 3.1.01 03.09.04 ......................................362 T 32/82 - 3.5.01 14.03.84 (OJ 1984, 354)......184, 189,
J 22/03 - 3.1.01 22.06.04 ......................................492 331, 332, 522
J 23/03 - 3.1.01 13.07.04 ......................................530 T 36/82 - 3.5.01 25.10.82 (OJ 1983, 269)...............157
J 24/03 - 3.1.01 17.02.04 (OJ 2004, 544).......358, 407 T 37/82 - 3.5.01 29.07.83 (OJ 1984, 71).........149, 252
J 25/03 - 3.1.01 27.04.05 (OJ 2006, 395).......418, 481 T 39/82 - 3.2.02 30.07.82 (OJ 1982, 419).......155, 156
J 28/03 - 3.1.01 04.10.04 (OJ 2005, 597).......407, 595 T 41/82 - 3.3.01 30.03.82 (OJ 1982, 256).......633, 650
J 33/03 - 3.1.01 16.11.04 ......................................484 T 43/82 - 3.3.01 16.04.84 ......................................102
J 35/03 - 3.1.01 04.05.04 ......................................366 T 52/82 - 3.2.01 18.03.83 (OJ 1983, 416)...............252
J 36/03 - 3.1.01 22.02.05 ......................................479 T 53/82 - 3.3.01 28.06.82 ......................................262
J 40/03 - 3.1.01 18.08.04 ......................................409 T 54/82 - 3.3.01 16.05.83 (OJ 1983, 446)...............239
J 3/04 - 3.1.01 20.09.05 ......................................358 T 57/82 - 3.3.01 29.04.82 (OJ 1982, 306)...............217
J 5/04 - 3.1.01 29.11.05 ..............................370, 485 T 60/82 - 3.2.01 25.10.83 ......................................161
J 7/04 - 3.1.01 09.11.04 ......................................407 T 62/82 - 3.4.01 23.06.83 ......................................162
J 9/04 - 3.1.01 01.03.05 ..............................612, 699 T 65/82 - 3.3.01 20.04.83 (OJ 1983, 327)......153, 154,
J 10/04 - 3.1.01 05.07.04 ......................................432 159
J 13/04 - 3.1.01 23.12.04 ..............................348, 493 T 79/82 - 3.5.01 06.10.83 ......................................163
J 14/04 - 3.1.01 17.03.05 ..............................418, 481 T 84/82 - 3.3.01 18.03.83 (OJ 1983, 451)...............506
J 16/04 - 3.1.01 28.04.05 ......................................322 T 94/82 - 3.2.01 22.07.83 (OJ 1984, 75).........183, 186
J 17/04 - 3.1.01 09.04.05 .............................312, 616, T 109/82 - 3.5.01 15.05.84 (OJ 1984, 473).......154, 164
661, 662 T 110/82 - 3.3.01 08.03.83 (OJ 1983, 274)...............217
J 18/04 - 3.1.01 04.05.05 (OJ 2006, 560).......358, 407 T 113/82 - 3.2.01 22.06.83 (OJ 1984, 10).................166
J 19/04 - 3.1.01 14.07.05 ..............................363, 379 T 114/82 - 3.3.01 01.03.83 (OJ 1983, 323).......616, 661
J 1/05 - 3.1.01 30.09.05 ......................................409 T 115/82 - 3.3.01 01.03.83 (OJ 1983, 323)...............616
J 2/05 - 3.1.01 01.03.05 ..............................612, 700 T 119/82 - 3.3.01 12.12.83 (OJ 1984, 217)......149, 150,
J 6/05 - 3.1.01 17.10.05 ......................................479 159, 161, 226
T 123/82 - 3.3.01 30.08.85 ........................................47
T 128/82 - 3.3.01 12.01.84 (OJ 1984, 164).......102, 487
Decisions of the technical boards of T 130/82 - 3.2.01 26.08.83 (OJ 1984, 172)...............413
appeal T
T
146/82
150/82
- 3.5.01
- 3.3.01
29.05.85
07.02.84
(OJ 1985, 267)........482-484
(OJ 1984, 309)......188, 211,
1980 213
T 152/82 - 3.3.01 05.09.83 (OJ 1984, 301).......411, 627
T 1/80 - 3.3.01 06.04.81 (OJ 1981, 206).......121, 126 T 161/82 - 3.5.01 26.06.84 (OJ 1984, 551)........80, 506,
T 2/80 - 3.3.01 05.06.81 (OJ 1981, 431).......186, 209 507, 535
T 4/80 - 3.3.01 07.09.81 (OJ 1982,149).......186, 194, T 162/82 - 3.5.01 20.06.87 (OJ 1987, 533)......202, 476,
256 506, 659
T 6/80 - 3.2.02 13.05.81 (OJ 1981, 434).................71 T 172/82 - 3.4.01 19.05.83 (OJ 1983, 493)...............250
T 181/82 - 3.3.01 28.02.84 (OJ 1984, 401)..........91, 93,
1981 96, 120, 127, 166, 167, 638
T 184/82 - 3.3.01 04.01.84 (OJ 1984, 261).......129, 130
T 1/81 - 3.2.02 04.05.81 (OJ 1981, 439)...............159 T 191/82 - 3.2.01 16.04.85 (OJ 1985, 189)......362, 363,
T 2/81 - 3.3.01 01.07.82 (OJ 1982, 394).......262, 437 365, 383, 384
T 5/81 - 3.2.02 04.03.82 (OJ 1982, 249)......127, 131, T 192/82 - 3.3.01 22.03.84 (OJ 1984, 415).......150, 166
507, 519, 612, 654
T 6/81 - 3.2.02 17.09.81 (OJ 1982, 183)...............202 1983
T 7/81 - 3.3.01 14.12.82 (OJ 1983, 98).................619
T 9/81 - 3.3.01 25.01.83 (OJ 1983, 372)...............103 T 2/83 - 3.3.01 15.03.84 (OJ 1984, 265)......127, 132,
T 12/81 - 3.3.01 09.02.82 (OJ 1982, 296)..........47, 74, 147, 154, 159, 226
75, 84, 88-91, 96, 420 T 4/83 - 3.3.01 16.03.83 (OJ 1983, 498).........83, 155
T 15/81 - 3.4.01 28.07.81 (OJ 1982, 2)...................154 T 6/83 - 3.5.01 06.10.88 (OJ 1990, 5).......................4
T 18/81 - 3.3.01 01.03.85 (OJ 1985, 166)......323, 598, T 13/83 - 3.3.01 13.04.84 (OJ 1984, 428)...............249
655 T 14/83 - 3.3.01 07.06.83 (OJ 1984, 105).......173, 177
T 19/81 - 3.2.02 29.07.81 (OJ 1982, 51).................162 T 17/83 - 3.3.01 20.09.83 (OJ 1984, 307)...............411
T 20/81 - 3.3.01 10.02.82 (OJ 1982, 217)......121, 127, T 20/83 - 3.3.01 17.03.83 (OJ 1983, 419).......167, 507
167 T 36/83 - 3.3.01 14.05.85 (OJ 1986, 295)..........31, 32,
T 21/81 - 3.5.01 10.09.82 (OJ 1983, 15).........150, 166 102, 119, 169
T 24/81 - 3.3.01 13.10.82 (OJ 1983, 133)......121, 122, T 43/83 - 3.5.01 11.12.85 ......................................508
126, 131, 161, 162 T 49/83 - 3.3.01 26.07.83 (OJ 1984, 112)...........38, 43
T 26/81 - 3.2.02 28.10.81 (OJ 1982, 211)...............126 T 66/83 - 3.5.01 06.06.89 ......................................506
T 28/81 - 3.3.01 11.06.85 ......................................627 T 69/83 - 3.3.01 05.04.84 (OJ 1984, 357).......162, 166
T 32/81 - 3.2.01 05.03.82 (OJ 1982, 225)......135, 148, T 84/83 - 3.2.01 29.09.83 ........................................55
619 T 95/83 - 3.2.01 09.10.84 (OJ 1985, 75).........640, 643
T 104/83 - 3.3.01 09.05.84 ......................................162
1982 T 115/83 - 3.3.01 08.11.83 ......................................189
T 130/83 - 3.3.01 05.07.84 ......................................375
T 10/82 - 3.3.01 15.03.83 (OJ 1983, 407)......447, 554, T 140/83 - 3.2.01 24.10.83 ......................................217
579, 584, 613 T 144/83 - 3.3.01 27.03.86 (OJ 1986, 301)..........21, 27,
T 11/82 - 3.5.01 15.04.83 (OJ 1983, 479)......251, 252, 30-32, 34, 169, 170
519 T 160/83 - 3.2.01 19.03.84 ......................................270
T 164/83 - 3.3.02 17.07.86 (OJ 1987, 149).......120, 168

705
Table of cases

T 169/83 - 3.2.01 25.03.85 (OJ 1985, 193)........74, 129, T 237/84 - 3.5.01 31.07.86 (OJ 1987, 309)...............189
173, 246, 293 T 258/84 - 3.2.01 18.07.86 (OJ 1987, 119)......392, 403,
T 170/83 - 3.3.01 12.09.84 (OJ 1984, 605)......411, 588, 627
638 T 264/84 - 3.4.01 07.04.88 ......................................635
T 173/83 - 3.5.01 10.10.89 (OJ 1987, 465)...........50, 58 T 269/84 - 3.4.01 07.04.87 ......................................202
T 188/83 - 3.3.01 30.07.84 (OJ 1984, 555)...............195 T 270/84 - 3.3.01 01.09.87 ......................................164
T 201/83 - 3.3.01 09.05.84 (OJ 1984, 481)......240, 242, T 271/84 - 3.3.01 18.03.86 (OJ 1987, 405)......164, 250,
262, 265, 298 276
T 202/83 - 3.3.01 06.03.84 ..............................173, 216 T 273/84 - 3.3.01 21.03.86 (OJ 1986, 346)......393, 403,
T 204/83 - 3.3.01 24.06.85 (OJ 1985, 310).................74 627
T 205/83 - 3.3.01 25.06.85 (OJ 1985, 363)......212, 268, T 279/84 - 3.3.02 29.06.87 ..............................212, 438
304, 438 T 287/84 - 3.4.01 11.06.85 (OJ 1985, 333)......362, 367,
T 206/83 - 3.3.01 26.03.86 (OJ 1987, 5)..............48, 49, 373, 374
80, 173, 438 T 288/84 - 3.3.01 07.02.86 (OJ 1986, 128)...............174
T 211/83 - 3.2.01 18.05.84 (OJ 1986, 328).......174, 251
T 219/83 - 3.3.01 26.11.85 (OJ 1986,211).......211, 435, 1985
437, 536, 638
T 220/83 - 3.3.01 14.01.86 (OJ 1986, 249).......621, 622 T 17/85 - 3.3.01 06.06.86 (OJ 1986, 406).................96
T 22/85 - 3.5.01 05.10.88 (OJ 1990, 12).....................9
1984 T 25/85 - 3.3.01 18.12.85 (OJ 1986, 81).........550, 554
T 26/85 - 3.5.01 20.09.88 (OJ 1990, 22).......81, 97, 98
T 6/84 - 3.3.01 21.02.85 (OJ 1985, 238).......174, 248 T 32/85 - 3.3.01 05.06.86 ..............................173, 177
T 13/84 - 3.5.01 15.05.86 (OJ 1986, 253)......129, 202, T 35/85 - 3.3.02 16.12.86 ......................................168
239 T 37/85 - 3.2.01 13.01.87 (OJ 1988, 86).................147
T 32/84 - 3.5.01 06.08.85 (OJ 1986, 9)...................173 T 48/85 - 3.3.02 18.11.86 ......................................177
T 38/84 - 3.3.01 05.04.84 (OJ 1984, 368)...............158 T 49/85 - 3.3.02 13.11.86 ......................................399
T 42/84 - 3.4.01 23.03.87 (OJ 1988, 251)......465, 476, T 52/85 - 3.5.01 16.03.89 ..........................................7
660 T 61/85 - 3.3.02 03.09.87 .............................298, 299,
T 51/84 - 3.5.01 19.03.86 (OJ 1986, 226).................18 419
T 57/84 - 3.3.01 12.08.86 (OJ 1987, 53).................156 T 64/85 - 3.4.01 19.01.88 ......................................420
T 73/84 - 3.2.01 26.04.85 (OJ 1985, 241)......332, 418, T 66/85 - 3.5.01 09.12.87 (OJ 1989, 167)...............263
545, 634 T 68/85 - 3.3.01 27.11.86 (OJ 1987, 228)......186, 187,
T 81/84 - 3.3.02 15.05.87 (OJ 1988, 207)...........27, 28 196
T 85/84 - 3.4.01 14.01.86 ..............................585, 633 T 69/85 - 3.4.01 02.04.87 ......................................116
T 87/84 - 3.2.01 06.02.86 ......................................199 T 73/85 - 3.3.01 14.01.88 ......................................157
T 89/84 - 3.2.01 03.07.84 (OJ 1984, 562).......610, 651 T 89/85 - 3.2.01 07.12.87 ......................................421
T 90/84 - 3.3.01 02.04.85 ......................................132 T 98/85 - 3.3.01 01.09.87 ......................................272
T 92/84 - 3.4.01 05.03.87 ......................................199 T 99/85 - 3.4.01 23.10.86 (OJ 1987, 413).......128, 202
T 94/84 - 3.3.01 20.06.86 (OJ 1986, 337).......323, 598 T 105/85 - 3.3.01 05.02.87 ..............................383, 386
T 106/84 - 3.2.01 25.02.85 (OJ 1985, 132)...............165 T 110/85 - 3.2.02 26.11.87 (OJ 1987, 157).......383, 645
T 122/84 - 3.3.01 29.07.86 (OJ 1987, 177).......390, 607 T 115/85 - 3.5.01 05.09.88 (OJ 1990, 30).........9, 12, 13
T 124/84 - 3.3.01 16.01.86 ......................................127 T 116/85 - 3.3.01 14.10.87 (OJ 1989, 13)............20, 21,
T 136/84 - 3.3.01 06.03.85 ......................................199 26, 29, 169
T 142/84 - 3.2.01 08.07.86 (OJ 1987, 112)...............155 T 121/85 - 3.5.01 14.03.89 ....................................1, 10
T 147/84 - 3.2.01 04.03.87 ......................................627 T 123/85 - 3.3.02 23.02.88 (OJ 1989, 336)......184, 421,
T 156/84 - 3.4.01 09.04.87 (OJ 1988, 372)......390, 392, 545
563 T 124/85 - 3.2.01 14.12.87 ..............................184, 199
T 163/84 - 3.3.02 21.08.86 (OJ 1987, 301)...............153 T 127/85 - 3.3.02 01.02.88 (OJ 1989, 271).......183, 573
T 165/84 - 3.2.02 29.01.87 ......................................186 T 133/85 - 3.2.01 25.08.87 (OJ 1988, 441)......203, 263,
T 166/84 - 3.3.01 22.08.84 (OJ 1984, 489)...............640 265
T 167/84 - 3.2.02 20.01.87 (OJ 1987, 369)........73, 154, T 139/85 - 3.3.01 23.12.86 ..............................186, 196
590, 591 T 144/85 - 3.2.01 25.06.87 ......................................149
T 170/84 - 3.2.01 07.07.86 (OJ 1986, 400)...............202 T 149/85 - 3.3.01 14.01.86 (OJ 1986, 103)...............478
T 171/84 - 3.3.01 24.10.85 (OJ 1986, 95)...........49, 173 T 152/85 - 3.2.01 28.05.86 (OJ 1987, 191).......550, 551
T 175/84 - 3.5.01 22.09.87 (OJ 1989, 71).................148 T 153/85 - 3.3.01 11.12.86 (OJ 1988, 1)............82, 640,
T 176/84 - 3.2.01 22.11.85 (OJ 1986, 50).................138 642, 643
T 178/84 - 3.5.01 07.12.87 (OJ 1989, 157)......221, 231, T 155/85 - 3.3.02 28.07.87 (OJ 1988, 87)........131, 149,
232, 422 156-158
T 184/84 - 3.3.01 04.04.86 ..............................293, 304 T 157/85 - 3.2.01 12.05.86 ......................................634
T 185/84 - 3.2.01 08.04.86 (OJ 1986, 373)...............536 T 162/85 - 3.2.02 20.05.87 ......................................638
T 186/84 - 3.3.01 18.12.85 (OJ 1986, 79)........418, 545, T 163/85 - 3.5.01 14.03.89 (OJ 1990, 379)......7, 10, 11,
635 14
T 192/84 - 3.4.01 09.11.84 (OJ 1985, 39).................388 T 168/85 - 3.4.01 27.04.87 ......................................202
T 193/84 - 3.3.01 22.01.85 ........................................64 T 171/85 - 3.2.01 30.07.86 (OJ 1987, 160)...............523
T 194/84 - 3.4.01 22.09.88 (OJ 1990, 59).................259 T 172/85 - 3.3.01 19.04.88 ......................................399
T 195/84 - 3.2.01 10.10.85 (OJ 1986, 121)......138, 154, T 213/85 - 3.3.01 16.12.86 (OJ 1987, 482)........621-623
327 T 219/85 - 3.2.01 14.07.86 (OJ 1986, 376)...............175
T 198/84 - 3.3.01 28.02.85 (OJ 1985, 209)..........47, 84, T 222/85 - 3.3.02 21.01.87 (OJ 1988, 128)......465, 548,
90, 96, 101 556, 559, 560, 612
T 208/84 - 3.5.01 15.07.86 (OJ 1987, 014)........3, 9, 11, T 226/85 - 3.3.02 17.03.87 (OJ 1988, 336).......173, 177
17, 18 T 229/85 - 3.3.01 27.10.86 (OJ 1987, 237).......128, 165
T 215/84 - 3.3.01 10.09.84 ......................................119 T 231/85 - 3.3.01 08.12.86 (OJ 1989, 74)........113, 114,
T 225/84 - 3.2.01 16.07.86 ......................................154 660
T 230/84 - 3.4.01 16.10.85 ......................................634 T 232/85 - 3.3.01 06.11.85 (OJ 1986, 19).................595

706
 Table of cases

T 235/85 - 3.3.01 22.11.88 ......................................517 T 290/86 - 3.3.01 13.11.90 (OJ 1992, 414)..........27, 29,
T 244/85 - 3.3.02 23.01.87 (OJ 1988, 216).......615, 617 30, 75, 111, 112
T 247/85 - 3.2.01 16.09.86 ..............................613, 639 T 293/86 - 3.3.02 05.07.88 ......................................519
T 248/85 - 3.3.01 21.01.86 (OJ 1986, 261)........84, 121, T 296/86 - 3.3.02 08.06.89 ..............................520, 627
211 T 297/86 - 3.2.10 29.09.89 ......................................579
T 251/85 - 3.3.02 19.05.87 ......................................212 T 299/86 - 3.3.02 23.09.87 (OJ 1988, 88)........176, 178,
T 253/85 - 3.3.02 10.02.87 ......................................404 196, 335, 336, 517
T 260/85 - 3.5.01 09.12.87 (OJ 1989, 105).......235, 263 T 300/86 - 3.5.01 28.08.89 ..................................57, 62
T 262/85 - 3.2.01 03.12.87 ......................................397 T 303/86 - 3.3.01 08.11.88 ................................75, 590
T 271/85 - 3.3.01 22.03.89 (OJ 1988, 341).......617, 650 T 305/86 - 3.2.01 22.11.88 ......................................590
T 291/85 - 3.3.01 23.07.87 (OJ 1988, 302).................82 T 307/86 - 3.3.02 02.05.88 ......................................177
T 292/85 - 3.3.02 27.01.88 (OJ 1989, 275)......175, 176, T 313/86 - 3.3.01 12.01.88 ......................................194
178, 183, 196 T 317/86 - 3.2.01 15.04.88 (OJ 1989, 378)...............550
T 293/85 - 3.3.02 27.01.88 ......................................196 T 322/86 - 3.3.01 11.02.88 ......................................128
T 329/86 - 3.2.01 02.02.89 ......................................561
1986 T 336/86 - 3.3.01 28.09.88 ......................................581
T 341/86 - 3.2.01 19.10.87 ..............................520, 649
T 6/86 - 3.3.01 23.12.87 ......................................561 T 345/86 - 3.3.02 17.10.89 ......................................438
T 7/86 - 3.3.01 16.09.87 (OJ 1988, 381)..........91, 92, T 347/86 - 3.3.02 28.01.88 ......................................520
132 T 349/86 - 3.2.01 29.04.88 (OJ 1988, 345)...............541
T 9/86 - 3.3.01 06.11.86 (OJ 1988, 12).................165 T 355/86 - 3.2.02 14.04.87 ..............................447, 625
T 10/86 - 3.4.01 01.09.88 ......................................175 T 362/86 - 3.5.01 19.12.88 ......................................634
T 16/86 - 3.2.02 04.02.88 (OJ 1989, 415)...............270 T 365/86 - 3.2.02 26.01.89 ......................................166
T 17/86 - 3.2.01 26.10.87 (OJ 1989, 297).......240, 265 T 378/86 - 3.2.02 21.10.87 (OJ 1988, 386)...............273
T 19/86 - 3.3.01 15.10.87 (OJ 1989, 025)........27, 107, T 385/86 - 3.4.01 25.09.87 (OJ 1988, 308).....21-23, 25,
108 26, 34, 35
T 23/86 - 3.4.01 25.08.86 (OJ 1987, 316).......207, 574 T 389/86 - 3.2.01 31.03.87 (OJ 1988, 87).........148, 620
T 26/86 - 3.4.01 21.05.87 (OJ 1988, 19)..........3, 4, 11, T 390/86 - 3.3.01 17.11.87 (OJ 1989, 30)........456, 457,
141 464, 470, 577
T 27/86 - 3.2.01 11.02.87 ......................................374 T 398/86 - 3.2.01 16.03.87 ......................................519
T 38/86 - 3.5.01 14.02.89 (OJ 1990, 384)..........1, 9-11 T 406/86 - 3.3.01 02.03.88 (OJ 1989, 302)........76, 466,
T 48/86 - 3.4.01 12.01.88 ......................................161 535, 574, 640, 643
T 49/86 - 3.2.02 17.09.87 ..............................589, 592 T 416/86 - 3.4.01 29.10.87 (OJ 1989, 309)...............266
T 55/86 - 3.2.01 15.03.88 ......................................161 T 420/86 - 3.3.02 12.01.89 ......................................272
T 57/86 - 3.3.01 19.05.88 ......................................136 T 424/86 - 3.3.01 11.08.88 ........................................74
T 58/86 - 3.2.01 26.04.89 ......................................288 T 427/86 - 3.2.04 08.07.88 ........................................90
T 63/86 - 3.2.01 10.08.87 (OJ 1988, 224)......519, 520, T 433/86 - 3.3.01 11.12.87 ......................................194
627, 640, 649
T 69/86 - 3.2.01 15.09.87 ..............................433, 436 1987
T 71/86 - 3.2.02 18.01.88 ......................................392
T 73/86 - 3.2.02 07.12.88 ........................................64 T 4/87 - 3.2.01 19.05.88 ......................................202
T 95/86 - 3.5.01 23.10.90 ....................................1, 10 T 9/87 - 3.3.01 18.08.88 (OJ 1989, 438).......539, 563
T 109/86 - 3.5.01 20.07.87 ..............................413, 627 T 11/87 - 3.3.01 14.04.88 ......................................383
T 113/86 - 3.3.01 28.10.87 .............................280, 435, T 16/87 - 3.4.01 24.07.90 (OJ 1992, 212)......207, 292,
574 437, 574
T 114/86 - 3.4.01 29.10.86 (OJ 1987, 485).................84 T 19/87 - 3.4.01 16.04.87 (OJ 1988, 268)......333, 335,
T 117/86 - 3.3.01 01.08.88 (OJ 1989, 401)......389, 405, 517, 655, 659
423, 578-580, 591, 633, 634 T 28/87 - 3.2.01 29.04.88 (OJ 1989, 383)...............139
T 120/86 - 3.2.02 12.07.88 ......................................202 T 29/87 - 3.3.02 19.09.90 ......................................165
T 135/86 - 3.5.01 19.06.89 ......................................634 T 35/87 - 3.3.02 27.04.87 (OJ 1988, 134)...............218
T 137/86 - 3.4.01 08.02.88 ......................................202 T 38/87 - 3.4.01 30.06.88 ......................................157
T 162/86 - 3.3.02 07.07.87 (OJ 1988, 452)...............129 T 44/87 - 3.2.01 23.05.89 ......................................165
T 166/86 - 3.3.02 25.09.86 (OJ 1987, 372).......509, 523 T 51/87 - 3.3.02 08.12.88 (OJ 1991, 177)..........48, 49,
T 170/86 - 3.5.01 02.03.89 ......................................627 173, 174
T 175/86 - 3.3.02 06.11.90 ......................................574 T 54/87 - 3.4.01 10.10.88 ......................................157
T 177/86 - 3.2.01 09.12.87 ......................................265 T 56/87 - 3.4.01 20.09.88 (OJ 1990, 188)..........74, 83,
T 194/86 - 3.2.01 17.05.88 ......................................561 149
T 197/86 - 3.3.02 04.02.88 (OJ 1989, 371)...............167 T 58/87 - 3.2.02 24.11.88 ......................................638
T 200/86 - 3.3.02 29.09.87 ..............................216, 627 T 59/87 - 3.3.01 14.08.90 (OJ 1991, 561)........73, 113,
T 222/86 - 3.4.01 22.09.87 ......................................136 114, 156
T 234/86 - 3.4.01 23.11.87 (OJ 1989, 79)........416, 466, T 62/87 - 3.3.01 08.04.88 ........................................51
557, 615, 659 T 65/87 - 3.2.02 18.09.90 ......................................149
T 237/86 - 3.2.01 11.06.87 (OJ 1988, 261)......418, 545, T 77/87 - 3.3.01 16.03.89 (OJ 1990, 280).................79
634 T 81/87 - 3.3.02 24.01.89 (OJ 1990, 250)......175, 293,
T 243/86 - 3.2.01 09.12.86 ......................................436 295, 301, 302
T 246/86 - 3.4.01 11.01.88 (OJ 1989, 199)...............235 T 85/87 - 3.3.01 21.07.88 ........................................92
T 254/86 - 3.3.02 05.11.87 (OJ 1989, 115).......123, 156 T 88/87 - 3.2.02 18.04.89 ..............................198, 336
T 263/86 - 3.4.01 08.12.87 ......................................157 T 89/87 - 3.2.02 20.12.89 ........................................79
T 275/86 - 3.3.01 03.10.90 ......................................621 T 99/87 - 3.2.01 18.10.88 ......................................588
T 278/86 - 3.2.02 17.02.87 ......................................202 T 101/87 - 3.2.01 25.01.90 .............................389, 399,
T 281/86 - 3.3.02 27.01.88 (OJ 1989, 202).......176, 178 578, 579
T 283/86 - 3.3.02 17.03.89 ......................................182 T 105/87 - 3.3.01 25.02.88 ......................................624
T 287/86 - 3.4.01 28.03.88 ......................................120 T 118/87 - 3.3.01 25.08.89 (OJ 1991, 474)...............182

707
Table of cases

T 124/87 - 3.3.01 09.08.88 (OJ 1989, 491)..........75, 82, T 416/87 - 3.3.01 29.06.89 (OJ 1990, 415)......207, 403,
92, 438 423, 578-580, 591, 627
T 128/87 - 3.2.01 03.06.88 (OJ 1989, 406)......360, 433, T 417/87 - 3.2.01 17.08.89 ......................................279
436, 441 T 433/87 - 3.3.01 17.08.89 ..............................335, 336
T 139/87 - 3.2.01 09.01.89 (OJ 1990, 68).........623, 636 T 434/87 - 3.2.02 05.09.89 ......................................212
T 141/87 - 3.4.01 29.09.88 .............................135, 136, T 438/87 - 3.2.01 09.05.89 ......................................550
149 T 443/87 - 3.5.01 09.10.91 ......................................645
T 145/87 - 3.2.01 28.02.90 ......................................247 T 453/87 - 3.3.01 18.05.89 ......................................557
T 148/87 - 3.3.02 24.11.89 ......................................213 T 454/87 - 3.4.01 02.08.89 ......................................138
T 154/87 - 3.2.01 29.06.89 ......................................167 T 459/87 - 3.3.01 18.11.88 ......................................437
T 155/87 - 3.2.01 07.02.90 ......................................402 T 460/87 - 3.3.01 20.06.89 ......................................136
T 162/87 - 3.5.01 08.06.89 ................................64, 429
T 166/87 - 3.3.01 16.05.88 ..............................374, 376 1988
T 170/87 - 3.3.01 05.07.88 (OJ 1989, 441)......194, 195,
248, 256 T 1/88 - 3.3.01 26.01.89 .............................564, 619,
T 172/87 - 3.2.01 12.01.89 ......................................184 621, 622
T 179/87 - 3.2.02 16.01.90 ..............................173, 374 T 7/88 - 3.2.02 08.09.89 ......................................588
T 181/87 - 3.3.02 29.08.89 ..............................176, 182 T 11/88 - 3.5.01 20.10.88 ......................................392
T 193/87 - 3.2.01 13.06.91 (OJ 1993, 207)......479, 551, T 18/88 - 3.3.02 25.01.90 (OJ 1992, 107)...............154
592 T 22/88 - 3.5.01 22.11.91 (OJ 1993, 143)...............625
T 198/87 - 3.3.02 21.06.88 ......................................627 T 24/88 - 3.2.04 30.11.90 ......................................574
T 205/87 - 3.2.02 14.06.88 ......................................627 T 26/88 - 3.3.01 07.07.89 (OJ 1991, 30)........360, 393,
T 213/87 - 3.2.02 08.07.90 ......................................151 404, 576, 613, 639
T 219/87 - 3.3.01 11.03.88 ......................................132 T 39/88 - 3.3.02 15.11.88 (OJ 1989, 499)...............182
T 230/87 - 3.4.01 15.12.88 ......................................184 T 45/88 - 3.3.01 25.07.89 ......................................397
T 239/87 - 3.3.02 11.02.88 ......................................182 T 61/88 - 3.4.01 05.06.89 ......................................160
T 243/87 - 3.3.02 30.08.89 ..............................456, 470 T 62/88 - 3.5.01 02.07.90 ......................................574
T 245/87 - 3.4.01 25.09.87 (OJ 1989, 171)...........21, 24 T 73/88 - 3.3.01 07.11.89 (OJ 1992, 557)......292, 598,
T 256/87 - 3.3.02 26.07.88 ......................................177 616
T 261/87 - 3.3.01 16.12.86 ......................................151 T 79/88 - 3.3.03 25.07.91 ......................................590
T 262/87 - 3.5.01 06.04.89 ......................................162 T 85/88 - 3.3.01 31.08.89 ......................................619
T 266/87 - 3.2.01 30.05.90 ......................................563 T 87/88 - 3.2.01 29.11.91 (OJ 1993, 430)......221, 231,
T 269/87 - 3.3.02 24.01.89 ..............................189, 295 422, 659
T 293/87 - 3.3.01 23.02.89 ................................64, 437 T 90/88 - 3.3.02 25.11.88 ......................................182
T 295/87 - 3.3.01 06.12.88 (OJ 1990, 470)......299, 536, T 92/88 - 3.3.01 19.07.91 ......................................634
598, 640 T 93/88 - 3.3.01 11.08.88 ..............................333, 655
T 296/87 - 3.3.01 30.08.88 (OJ 1990, 195)........93, 160, T 98/88 - 3.4.01 15.01.90 .............................507, 517,
421 519, 627
T 301/87 - 3.3.02 16.02.89 .............................175, 178, T 106/88 - 3.3.02 15.11.88 ......................................182
183, 237, 238, 289, 295, 301, 305, 575, T 117/88 - 3.2.02 09.10.90 ......................................519
638 T 118/88 - 3.5.01 14.11.89 ......................................238
T 302/87 - 3.3.02 30.01.90 ......................................156 T 119/88 - 3.5.01 25.04.89 (OJ 1990, 395).................20
T 305/87 - 3.2.02 01.09.89 (OJ 1991, 429).................70 T 120/88 - 3.2.03 25.09.90 ......................................148
T 315/87 - 3.2.01 14.02.89 .............................166, 353, T 124/88 - 3.5.02 19.12.90 ..............................424, 429
355, 387, 627 T 129/88 - 3.3.03 10.02.92 (OJ 1993, 598)........67, 199,
T 320/87 - 3.3.02 10.11.88 (OJ 1990, 71).......38, 43-45, 213, 562, 610, 634
213 T 134/88 - 3.3.01 18.12.89 ..............................558, 559
T 321/87 - 3.3.01 26.01.89 ......................................162 T 136/88 - 3.2.02 11.10.89 ......................................265
T 322/87 - 3.3.03 25.04.90 ......................................196 T 140/88 - 3.4.01 13.02.90 ......................................625
T 323/87 - 3.3.02 24.03.88 (OJ 1989, 343)......360, 479, T 145/88 - 3.2.01 27.10.89 (OJ 1991, 251).......621, 625
551, 620, 651 T 153/88 - 3.3.03 09.01.91 ........................................55
T 326/87 - 3.3.03 28.08.90 (OJ 1992, 522)......392, 393, T 155/88 - 3.3.01 14.07.89 .............................416, 421,
403-405, 579, 581, 591 466
T 327/87 - 3.2.01 12.01.90 ..............................207, 208 T 158/88 - 3.4.01 12.12.89 (OJ 1991, 566)...................4
T 328/87 - 3.2.01 04.04.91 (OJ 1992, 701)......549, 561, T 162/88 - 3.2.02 09.07.90 ......................................519
610 T 171/88 - 3.2.02 07.05.90 ......................................212
T 330/87 - 3.3.01 24.02.88 ......................................165 T 182/88 - 3.3.01 03.11.88 (OJ 1990, 287)......476, 508,
T 331/87 - 3.2.02 06.07.89 (OJ 1991, 22).................264 509, 523, 611
T 332/87 - 3.3.01 23.11.90 .................................71, 83, T 185/88 - 3.3.01 22.06.89 (OJ 1990, 451)...............558
196, 430 T 192/88 - 3.3.01 20.07.89 ......................................563
T 350/87 - 3.4.01 15.06.89 ......................................166 T 194/88 - 3.2.02 30.11.92 ......................................545
T 362/87 - 3.3.01 13.12.90 ......................................601 T 197/88 - 3.3.02 02.08.88 (OJ 1989, 412)......543, 563,
T 365/87 - 3.3.02 14.09.89 ......................................139 655
T 373/87 - 3.2.04 21.01.92 .............................531, 634, T 198/88 - 3.3.01 03.08.89 (OJ 1991, 254)......402, 531,
638 639
T 381/87 - 3.3.01 10.11.88 (OJ 1990, 213)..........51, 64, T 204/88 - 3.2.01 03.04.90 ......................................430
433, 437, 640 T 208/88 - 3.3.01 20.07.88 (OJ 1992, 22)............76, 80,
T 383/87 - 3.3.02 26.04.89 ..............................334, 590 113, 114, 639, 659
T 387/87 - 3.2.02 14.09.89 ......................................148 T 209/88 - 3.2.01 20.12.89 ..............................325, 655
T 397/87 - 3.3.01 31.01.89 ......................................140 T 212/88 - 3.3.01 08.05.90 (OJ 1992, 28)........173, 175,
T 400/87 - 3.4.01 01.03.90 ........................................25 176, 297, 415, 471, 579, 592, 626
T 409/87 - 3.4.01 03.05.88 ......................................517 T 215/88 - 3.3.01 09.10.90 ......................................627
T 410/87 - 3.4.01 13.07.89 ..............................157, 162 T 223/88 - 3.5.01 06.07.90 ......................................377
T 415/87 - 3.3.01 27.06.88 ......................................635 T 225/88 - 3.3.01 10.08.90 ......................................421

708
 Table of cases

T 226/88 - 3.4.01 11.10.89 ......................................166 T 547/88 - 3.2.02 19.11.93 ..............................337, 438

T 227/88 - 3.3.02 15.12.88 (OJ 1990, 292)...............575 T 550/88 - 3.3.01 27.03.90 (OJ 1992, 117)........50, 560,
T 238/88 - 3.3.03 25.04.91 (OJ 1992, 709)......175, 191, 569
208, 209 T 560/88 - 3.2.01 19.02.90 .............................326, 333,
T 241/88 - 3.2.01 20.02.90 ........................................74 655
T 245/88 - 3.2.01 12.03.91 ............................55, 64, 75 T 572/88 - 3.3.01 27.02.91 ........................................72
T 251/88 - 3.3.01 14.11.89 ......................................457 T 574/88 - 3.3.01 06.12.89 ......................................122
T 254/88 - 3.3.01 10.10.89 ......................................625 T 579/88 - 3.5.01 19.04.90 ......................................639
T 261/88 - 3.5.02 16.02.93 .............................458, 459, T 580/88 - 3.4.01 25.01.90 ......................................173
461 T 582/88 - 3.3.02 17.05.90 ..............................115, 582
T 265/88 - 3.4.01 07.11.89 ......................................238 T 584/88 - 3.3.01 03.04.89 ........................................31
T 271/88 - 3.3.02 06.06.89 ......................................188 T 586/88 - 3.2.04 22.11.91 (OJ 1993, 313)...............463
T 274/88 - 3.2.01 06.06.89 ......................................628 T 591/88 - 3.5.01 12.12.89 ......................................587
T 279/88 - 3.3.01 25.01.90 ..............................531, 557 T 598/88 - 3.3.01 07.08.89 .............................333, 650,
T 283/88 - 3.3.02 26.11.90 .............................333, 335, 654, 660
336, 517, 654 T 601/88 - 3.3.03 14.03.91 ......................................162
T 293/88 - 3.2.02 23.03.90 (OJ 1992, 220)...............539 T 609/88 - 3.3.03 10.07.90 ......................................523
T 295/88 - 3.3.01 12.06.89 ......................................136 T 619/88 - 3.3.03 01.03.90 ......................................272
T 297/88 - 3.3.01 05.12.89 ......................................639 T 626/88 - 3.2.02 16.05.90 ......................................627
T 309/88 - 3.3.01 28.02.90 ..............................375, 384 T 627/88 - 3.3.03 04.07.90 ......................................429
T 310/88 - 3.3.03 23.07.90 ........................................81 T 632/88 - 3.2.02 21.11.89 ......................................586
T 312/88 - 3.3.01 29.01.91 ......................................177 T 635/88 - 3.2.03 28.02.92 (OJ 1993, 608).......552, 554
T 315/88 - 3.4.01 11.10.89 ......................................148 T 636/88 - 3.2.01 12.03.92 ........................................15
T 317/88 - 3.3.01 13.06.91 ......................................120 T 640/88 - 3.3.03 14.12.90 ......................................278
T 320/88 - 3.3.01 13.03.89 ......................................340 T 648/88 - 3.3.01 23.11.89 (OJ 1991, 292).......153, 638
T 329/88 - 3.2.05 22.06.93 ......................................635
T 330/88 - 3.2.01 22.03.90 .............................326, 400, 1989
581
T 344/88 - 3.3.03 16.05.91 ..............................338, 550 T 2/89 - 3.3.02 03.07.89 (OJ 1991, 51).................557
T 346/88 - 3.3.01 24.04.89 ......................................650 T 5/89 - 3.4.02 06.07.90 (OJ 1992, 348)......416, 466,
T 358/88 - 3.3.02 21.09.90 ......................................184 627, 638
T 361/88 - 3.2.01 21.06.90 ......................................196 T 11/89 - 3.3.01 06.12.90 ......................................195
T 365/88 - 3.3.02 05.08.91 ......................................278 T 14/89 - 3.3.02 12.06.89 (OJ 1990, 432)......315, 368,
T 371/88 - 3.2.01 29.05.90 (OJ 1992, 157)......251, 269, 374
276 T 21/89 - 3.3.01 27.06.90 ..............................630, 631
T 383/88 - 3.3.01 01.12.92 .............................260, 280, T 22/89 - 3.3.01 26.06.90 ......................................535
284, 435, 437 T 38/89 - 3.3.03 21.08.90 ......................................647
T 387/88 - 3.4.01 28.11.88 ......................................625 T 40/89 - 3.3.03 05.05.93 ......................................168
T 390/88 - 3.3.02 20.02.90 ................................76, 168 T 49/89 - 3.4.01 10.07.90 ..............................270, 404
T 392/88 - 3.3.01 06.03.90 ......................................162 T 60/89 - 3.3.02 31.08.90 (OJ 1992, 268)......133, 136,
T 401/88 - 3.4.01 28.02.89 (OJ 1990, 297)...............277 139, 174, 175, 610
T 415/88 - 3.2.01 06.06.90 ......................................412 T 65/89 - 3.2.04 05.12.90 ......................................202
T 416/88 - 3.5.01 31.05.90 ......................................208 T 72/89 - 3.2.05 04.06.92 ......................................639
T 423/88 - 3.2.01 20.11.90 ......................................627 T 73/89 - 3.5.01 07.08.89 ......................................377
T 424/88 - 3.4.01 11.05.89 ......................................536 T 76/89 - 3.3.02 10.10.89 ..............................509, 523
T 426/88 - 3.2.02 09.11.90 (OJ 1992, 427)...............139 T 78/89 - 3.4.01 23.01.90 ......................................630
T 429/88 - 3.2.03 25.09.90 ......................................202 T 79/89 - 3.2.01 09.07.90 (OJ 1992, 283)......525, 631,
T 432/88 - 3.5.01 15.06.89 ......................................625 639
T 436/88 - 3.3.02 20.02.92 ......................................402 T 89/89 - 3.4.02 27.03.90 ..............................207, 574
T 444/88 - 3.3.03 09.05.90 ........................................51 T 93/89 - 3.3.03 15.11.90 (OJ 1992, 718).........51, 561
T 446/88 - 3.2.02 28.11.90 ......................................154 T 96/89 - 3.2.03 17.01.91 ......................................270
T 459/88 - 3.3.01 13.02.89 (OJ 1990, 425).......418, 623 T 99/89 - 3.2.01 05.03.91 ......................................136
T 461/88 - 3.2.03 17.04.91 (OJ 1993, 295)........76, 590, T 110/89 - 3.2.01 25.02.91 ..............................393, 395
638 T 112/89 - 3.2.04 04.10.90 ......................................379
T 465/88 - 3.2.03 19.03.90 ......................................246 T 115/89 - 3.2.02 24.07.90 ......................................131
T 466/88 - 3.3.02 12.02.91 ......................................158 T 118/89 - 3.2.03 19.09.90 ..............................260, 638
T 472/88 - 3.3.03 10.10.90 ......................................575 T 121/89 - 3.2.03 25.06.91 ......................................207
T 475/88 - 3.3.01 23.11.89 ..............................177, 541 T 122/89 - 3.4.01 05.02.91 ......................................184
T 484/88 - 3.3.01 01.02.89 ......................................466 T 125/89 - 3.2.03 10.01.91 ..............................334, 590
T 493/88 - 3.4.01 13.12.89 (OJ 1991, 380)......467, 563, T 130/89 - 3.2.02 07.02.90 (OJ 1991, 514).......148, 150
657 T 150/89 - 3.2.02 29.04.91 ......................................473
T 500/88 - 3.4.02 12.07.90 ......................................162 T 153/89 - 3.3.01 17.11.92 .............................468, 519,
T 501/88 - 3.2.02 30.11.89 ..............................520, 627 658
T 508/88 - 3.4.01 20.07.89 ......................................166 T 158/89 - 3.3.02 20.11.90 ......................................279
T 514/88 - 3.2.02 10.10.89 (OJ 1992, 570)......260, 277, T 160/89 - 3.4.01 13.11.90 ......................................648
283 T 164/89 - 3.4.02 03.04.90 ......................................393
T 522/88 - 3.3.01 19.12.89 ..............................359, 360 T 169/89 - 3.3.03 23.10.90 ..............................621, 623
T 523/88 - 3.2.01 26.02.91 ......................................246 T 173/89 - 3.3.01 29.08.90 ......................................389
T 525/88 - 3.2.01 15.11.90 ..............................581, 588 T 176/89 - 3.3.03 27.06.90 ......................................122
T 527/88 - 3.2.01 11.12.90 ..............................260, 283 T 182/89 - 3.3.01 14.12.89 (OJ 1991, 391)......175, 176,
T 531/88 - 3.2.03 08.01.91 ......................................520 185, 433, 437, 531, 558, 560, 610
T 532/88 - 3.3.01 16.05.90 ......................................154 T 183/89 - 3.2.01 30.07.90 ......................................476
T 536/88 - 3.2.01 14.01.91 (OJ 1992, 638)...............402 T 184/89 - 3.3.02 25.02.92 ......................................128
T 544/88 - 3.4.01 17.04.89 (OJ 1990, 429)...............221 T 194/89 - 3.5.02 04.12.90 ......................................208

709
Table of cases

T 200/89 - 3.3.01 07.12.89 (OJ 1992, 46).................277 T 507/89 - 3.3.03 31.01.91 ......................................586
T 202/89 - 3.2.01 07.02.91 (OJ 1992, 223)...............546 T 516/89 - 3.3.02 19.12.90 (OJ 1992, 436)...............480
T 205/89 - 3.2.02 21.08.91 ......................................660 T 519/89 - 3.3.03 05.05.92 ......................................162
T 210/89 - 3.5.01 20.10.89 (OJ 1991, 433)...............359 T 523/89 - 3.2.01 01.08.90 .............................119, 120,
T 213/89 - 3.5.01 10.04.90 ......................................442 592
T 227/89 - 3.3.03 25.09.91 ..............................130, 166 T 528/89 - 3.5.02 17.09.90 ......................................165
T 228/89 - 3.2.01 25.11.91 ......................................519 T 534/89 - 3.2.02 02.02.93 (OJ 1994, 464)......390, 395,
T 231/89 - 3.3.02 14.06.91 (OJ 1993, 13).........274, 275 396, 581, 594, 623
T 232/89 - 3.2.03 03.12.91 ......................................561 T 538/89 - 3.2.01 02.01.91 .............................535, 561,
T 237/89 - 3.2.03 02.05.91 ......................................389 659
T 243/89 - 3.2.02 02.07.91 ..............................238, 506 T 543/89 - 3.2.01 29.06.90 ......................................643
T 249/89 - 3.2.02 15.07.91 ......................................217 T 544/89 - 3.2.03 27.06.91 .............................207, 208,
T 250/89 - 3.2.01 06.11.90 (OJ 1992, 355).......373, 621 634
T 253/89 - 3.2.04 07.02.91 ......................................519 T 551/89 - 3.4.01 20.03.90 ......................................167
T 264/89 - 3.2.01 25.02.92 ......................................208 T 552/89 - 3.4.01 27.08.91 ......................................151
T 268/89 - 3.2.02 06.02.92 (OJ 1994, 50).................127 T 560/89 - 3.3.02 24.04.91 (OJ 1992, 725).......138, 393
T 275/89 - 3.2.01 03.05.90 (OJ 1992, 126)......341, 535, T 561/89 - 3.2.04 29.04.91 ..............................399, 536
537, 587 T 563/89 - 3.2.01 03.09.91 ..............................212, 597
T 279/89 - 3.3.03 03.07.91 .................................. 96-98 T 564/89 - 3.3.01 10.02.93 .............................121, 129,
T 288/89 - 3.2.04 15.01.92 ......................................241 131, 132
T 291/89 - 3.3.02 14.05.91 ......................................402 T 565/89 - 3.2.03 26.09.90 .............................207, 404,
T 294/89 - 3.4.01 25.10.90 ......................................149 574
T 299/89 - 3.3.03 31.01.91 ......................................618 T 568/89 - 3.4.01 10.01.90 ......................................507
T 300/89 - 3.3.01 11.04.90 (OJ 1991, 480)......212, 506, T 571/89 - 3.2.02 22.05.90 ......................................262
508, 516, 655 T 576/89 - 3.3.03 29.04.92 (OJ 1993, 543)...............421
T 315/89 - 3.2.01 11.09.90 ......................................638 T 583/89 - 3.2.02 02.12.92 ......................................639
T 317/89 - 3.2.03 10.07.91 ......................................520 T 588/89 - 3.2.03 15.01.92 ......................................403
T 323/89 - 3.3.02 24.09.90 (OJ 1992, 169)......423, 578, T 589/89 - 3.3.03 05.02.92 ......................................531
579, 591, 633, 634 T 595/89 - 3.2.01 10.07.91 ......................................430
T 324/89 - 3.3.02 13.06.91 ......................................574 T 596/89 - 3.4.01 15.12.92 ..............................578, 579
T 331/89 - 3.3.03 13.02.92 ......................................421 T 603/89 - 3.4.01 03.07.90 (OJ 1992, 230).......1, 11, 36
T 344/89 - 3.3.02 19.12.91 ......................................130 T 604/89 - 3.4.02 14.01.92 (OJ 1992, 240)...............135
T 345/89 - 3.4.01 27.05.91 ......................................202 T 606/89 - 3.3.01 18.09.90 ......................................122
T 365/89 - 3.3.01 10.04.91 ................................75, 127 T 611/89 - 3.3.01 10.10.91 ......................................174
T 366/89 - 3.2.02 12.02.92 ......................................151 T 614/89 - 3.2.03 11.06.92 .............................343, 585,
T 379/89 - 3.3.01 07.12.90 ......................................595 590, 633
T 381/89 - 3.2.03 22.02.93 ......................................634 T 622/89 - 3.3.03 17.09.92 ..............................416, 579
T 386/89 - 3.2.01 24.03.92 ......................................130 T 631/89 - 3.2.02 10.04.92 ......................................161
T 387/89 - 3.4.01 18.02.91 (OJ 1992, 583).......402, 531 T 638/89 - 3.4.02 09.11.90 ..............................404, 582
T 388/89 - 3.3.01 26.02.91 ......................................147 T 641/89 - 3.3.01 24.09.91 ......................................125
T 392/89 - 3.2.01 03.07.90 ..............................563, 627 T 644/89 - 3.2.02 11.09.90 ......................................645
T 396/89 - 3.3.03 08.08.91 .............................347, 434, T 665/89 - 3.2.03 17.07.91 .............................415, 443,
435, 605 447
T 397/89 - 3.2.03 08.03.91 ......................................239 T 666/89 - 3.3.01 10.09.91 (OJ 1993, 495)..........72, 75,
T 402/89 - 3.3.01 12.08.91 ......................................272 93, 97-99
T 404/89 - 3.2.01 09.04.91 ......................................592 T 668/89 - 3.3.03 19.06.90 .............................336, 517,
T 411/89 - 3.3.02 20.12.90 ......................................213 654
T 418/89 - 3.3.02 08.01.91 (OJ 1993, 20)........181, 182, T 673/89 - 3.2.01 08.09.92 ..............................238, 276
196 T 680/89 - 3.4.02 08.05.90 ......................................659
T 423/89 - 3.3.01 10.06.92 ..............................213, 272 T 682/89 - 3.5.01 17.08.93 ..............................534, 535
T 424/89 - 3.2.01 22.08.91 ......................................166 T 695/89 - 3.2.02 09.09.91 (OJ 1993, 152)...............531
T 426/89 - 3.4.01 28.06.90 (OJ 1992, 172)........25, 192, T 702/89 - 3.2.01 26.03.92 (OJ 1994, 472)...............360
273, 274 T 707/89 - 3.3.01 15.04.91 ......................................196
T 430/89 - 3.3.01 17.07.91 .............................208, 389, T 708/89 - 3.3.01 22.03.93 ........................................64
394, 399 T 715/89 - 3.5.01 16.03.90 ......................................366
T 435/89 - 3.3.02 10.06.92 ..............................173, 203 T 716/89 - 3.3.02 22.02.90 (OJ 1992, 132).......598, 655
T 448/89 - 3.4.01 30.10.90 (OJ 1992, 361).......559, 560 T 721/89 - 3.2.01 08.11.91 ......................................177
T 451/89 - 3.2.04 01.04.93 ..............................427, 442 T 725/89 - 3.3.02 20.05.92 ..............................430, 625
T 454/89 - 3.5.01 11.03.91 ......................................209 T 727/89 - 3.2.04 13.03.91 ......................................638
T 457/89 - 3.2.04 21.03.91 ......................................616 T 732/89 - 3.3.03 07.10.92 ..............................130, 166
T 472/89 - 3.2.03 25.06.91 ......................................208 T 735/89 - 3.5.02 09.01.92 ......................................202
T 476/89 - 3.2.01 10.09.91 ......................................207 T 737/89 - 3.2.04 07.12.92 ......................................581
T 482/89 - 3.5.02 11.12.90 (OJ 1992, 646)........56, 424, T 743/89 - 3.3.03 27.01.92 ................................64, 441
429, 430, 561, 643 T 754/89 - 3.2.03 24.04.91 ..............................161, 561
T 484/89 - 3.2.03 08.12.92 .............................326, 402, T 760/89 - 3.2.02 06.09.93 (OJ 1994, 797)...............428
634 T 762/89 - 3.2.01 28.09.92 ......................................635
T 485/89 - 3.2.02 14.08.91 (OJ 1993, 214)...............697 T 763/89 - 3.3.01 10.07.91 ................................72, 101
T 487/89 - 3.3.03 17.07.91 .............................183, 198, T 765/89 - 3.2.01 08.07.93 .............................579, 582,
199 585, 592, 633
T 488/89 - 3.2.01 21.06.91 ......................................278 T 767/89 - 3.2.03 16.04.91 ......................................139
T 495/89 - 3.3.02 09.01.91 ......................................181 T 770/89 - 3.2.03 16.10.91 ......................................421
T 496/89 - 3.3.01 21.02.91 ......................................394 T 772/89 - 3.3.02 18.10.91 .................................48, 49,
T 500/89 - 3.3.01 26.03.91 ................................86, 158 173, 174, 180
T 506/89 - 3.2.01 12.07.90 ......................................588

710
 Table of cases

T 774/89 - 3.3.02 02.06.92 .................................28, 32, T 273/90 - 3.3.01 10.06.91 ......................................618

163 T 277/90 - 3.2.03 12.03.92 ......................................139
T 780/89 - 3.3.02 12.08.91 (OJ 1993, 440)...........29, 30 T 282/90 - 3.3.02 14.01.93 ......................................123
T 783/89 - 3.4.02 19.02.91 ..............................326, 656 T 287/90 - 3.2.01 25.09.91 ......................................625
T 784/89 - 3.4.02 06.11.90 (OJ 1992, 438)...............239 T 288/90 - 3.3.03 01.12.92 ........................................83
T 789/89 - 3.2.01 11.01.93 (OJ 1994, 482)......415, 544, T 290/90 - 3.4.01 09.10.90 (OJ 1992, 368)......413, 478,
592, 634 546
T 292/90 - 3.3.02 16.11.92 ..............................468, 657
1990 T 294/90 - 3.2.04 28.01.92 ......................................148
T 297/90 - 3.2.04 03.12.91 ..............................183, 199
T 3/90 - 3.4.01 24.04.91 (OJ 1992, 737).......336, 338 T 300/90 - 3.3.02 16.04.91 ......................................402
T 5/90 - 3.3.03 27.11.92 ......................................272 T 301/90 - 3.4.01 23.07.90 ......................................155
T 12/90 - 3.3.01 23.08.90 ..................................74, 92 T 303/90 - 3.3.02 04.02.92 ......................................119
T 19/90 - 3.3.02 03.10.90 (OJ 1990, 476)..........38, 40, T 308/90 - 3.2.01 03.09.91 ......................................246
43-45, 175, 176, 179, 185, 303 T 314/90 - 3.3.03 15.11.91 ......................................423
T 30/90 - 3.3.03 13.06.91 ..............................374, 375 T 315/90 - 3.4.02 18.03.91 ..............................362, 363
T 34/90 - 3.3.01 15.10.91 (OJ 1992, 454)......367, 415, T 317/90 - 3.3.03 23.04.92 ......................................571
594, 595, 601 T 323/90 - 3.2.04 04.06.92 ..............................303, 638
T 37/90 - 3.2.02 01.10.92 ..............................272, 638 T 324/90 - 3.3.03 13.03.91 (OJ 1993, 33)........367, 386,
T 47/90 - 3.3.01 20.02.90 (OJ 1991, 486)......520, 627, 651
636, 649 T 332/90 - 3.4.01 08.10.91 ..............................155, 158
T 50/90 - 3.2.02 14.05.91 ..............................207, 574 T 338/90 - 3.3.03 21.10.93 ......................................586
T 51/90 - 3.4.01 08.08.91 ......................................643 T 345/90 - 3.2.04 26.02.92 ......................................148
T 52/90 - 3.3.01 08.01.92 ..............................468, 657 T 347/90 - 3.2.04 19.02.93 .............................418, 545,
T 54/90 - 3.3.03 16.06.93 ......................................272 635
T 55/90 - 3.2.01 05.05.92 ..............................630, 631 T 358/90 - 3.2.03 27.01.92 ......................................139
T 60/90 - 3.3.03 11.12.92 ..............................250, 264 T 362/90 - 3.2.01 13.10.92 ........................................12
T 61/90 - 3.2.03 22.06.93 ......................................132 T 363/90 - 3.2.02 25.02.92 ................................75, 429
T 65/90 - 3.2.02 05.03.92 ......................................148 T 366/90 - 3.3.01 17.06.92 ........................................98
T 68/90 - 3.5.02 28.11.91 ......................................635 T 367/90 - 3.4.01 03.06.92 (OJ 1992, 529)...............478
T 74/90 - 3.2.01 01.10.91 ................................47, 162 T 368/90 - 3.4.01 16.01.92 ......................................416
T 75/90 - 3.2.04 03.05.93 ..............................272, 536 T 372/90 - 3.2.04 20.05.94 ......................................246
T 78/90 - 3.2.01 07.12.93 ......................................561 T 375/90 - 3.2.02 21.05.92 ......................................523
T 82/90 - 3.3.02 23.07.92 ................................64, 173 T 376/90 - 3.3.03 08.09.93 (OJ 1994, 906).......564, 577
T 87/90 - 3.2.02 26.09.91 ..................................58, 76 T 385/90 - 3.2.03 28.02.92 ......................................478
T 89/90 - 3.5.01 27.11.90 (OJ 1992, 456)......519, 578, T 394/90 - 3.2.01 20.03.91 ......................................166
613 T 398/90 - 3.2.04 27.10.92 ........................................58
T 90/90 - 3.2.03 25.06.92 ......................................625 T 400/90 - 3.4.02 03.07.91 ......................................303
T 95/90 - 3.3.01 30.10.92 ......................................149 T 401/90 - 3.3.02 04.02.92 ......................................119
T 97/90 - 3.3.01 13.11.91 (OJ 1993, 719)......393, 403, T 404/90 - 3.4.02 16.12.93 ......................................151
405, 406 T 409/90 - 3.4.01 29.01.91 (OJ 1993, 40)........157, 293,
T 110/90 - 3.5.01 15.04.93 (OJ 1994, 557).................10 298
T 114/90 - 3.3.01 26.02.92 ........................................51 T 424/90 - 3.4.01 11.12.91 ......................................136
T 116/90 - 3.3.01 18.12.91 ......................................471 T 441/90 - 3.3.03 15.09.92 ......................................337
T 117/90 - 3.3.01 12.02.92 ......................................416 T 443/90 - 3.2.03 16.09.92 ..............................139, 579
T 130/90 - 3.3.02 28.02.91 ......................................213 T 446/90 - 3.3.02 14.07.93 ......................................197
T 132/90 - 3.2.03 21.02.94 ..............................290, 306 T 449/90 - 3.3.02 05.12.91 .............................176, 184,
T 137/90 - 3.3.01 26.04.91 ......................................627 302
T 144/90 - 3.2.02 03.12.91 ......................................149 T 453/90 - 3.2.03 26.01.93 ......................................192
T 154/90 - 3.2.04 19.12.91 (OJ 1993, 505)......584, 593, T 456/90 - 3.5.02 25.11.91 ......................................626
625 T 469/90 - 3.4.01 06.02.91 ......................................129
T 156/90 - 3.2.01 09.09.91 ......................................617 T 470/90 - 3.3.01 19.05.92 ......................................156
T 157/90 - 3.3.02 12.09.91 ......................................239 T 472/90 - 3.3.02 10.02.93 ......................................582
T 162/90 - 3.2.03 07.05.92 ......................................638 T 483/90 - 3.2.03 14.10.92 ......................................619
T 166/90 - 3.2.02 11.08.92 ..............................275, 276 T 484/90 - 3.2.01 21.10.91 (OJ 1993, 448)......326, 400,
T 172/90 - 3.3.02 06.06.91 ......................................168 650
T 176/90 - 3.3.01 30.08.91 ......................................284 T 490/90 - 3.4.02 12.03.91 ..............................214, 423
T 182/90 - 3.2.02 30.07.93 (OJ 1994, 641)..........22, 32, T 493/90 - 3.3.02 10.12.91 ..............................212, 278
33, 517, 655 T 496/90 - 3.2.01 10.12.92 ......................................263
T 190/90 - 3.2.04 16.01.92 ......................................534 T 503/90 - 3.3.03 13.10.93 ......................................579
T 191/90 - 3.3.03 30.10.91 ......................................272 T 513/90 - 3.2.02 19.12.91 (OJ 1994, 154)...............159
T 194/90 - 3.3.01 27.11.92 ..............................620, 634 T 517/90 - 3.2.04 13.05.92 ................................73, 154
T 195/90 - 3.4.02 20.06.90 ......................................625 T 522/90 - 3.4.02 08.09.93 ......................................657
T 204/90 - 3.2.02 30.07.91 ......................................196 T 525/90 - 3.3.02 17.06.92 ......................................440
T 210/90 - 3.2.04 25.05.93 ......................................536 T 530/90 - 3.2.02 23.04.92 ..............................129, 239
T 211/90 - 3.2.05 01.07.93 ..............................396, 397 T 537/90 - 3.2.02 20.04.93 ......................................140
T 217/90 - 3.3.01 21.11.91 ......................................421 T 547/90 - 3.5.01 17.01.91 ..............................129, 239
T 219/90 - 3.3.01 08.05.91 ......................................164 T 553/90 - 3.2.03 15.06.92 (OJ 1993, 666).......482, 597
T 229/90 - 3.3.01 10.10.91 ......................................393 T 556/90 - 3.2.02 11.02.93 ..............................581, 582
T 231/90 - 3.2.04 25.03.93 ..............................427, 581 T 562/90 - 3.2.02 30.10.92 ........................................74
T 233/90 - 3.3.02 08.07.92 ..................................69, 82 T 565/90 - 3.3.01 15.09.92 ..................................84, 98
T 234/90 - 3.2.01 22.07.92 ......................................402 T 572/90 - 3.3.02 24.06.92 ......................................189
T 270/90 - 3.3.03 21.03.91 (OJ 1993, 725)........66, 401, T 582/90 - 3.2.01 11.12.92 ...............................67, 554,
433, 437, 440, 643 579

711
Table of cases

T 590/90 - 3.3.01 24.03.93 ......................................156 T 852/90 - 3.3.01 02.06.92 ......................................405

T 591/90 - 3.2.01 12.11.91 ........................................79 T 853/90 - 3.5.01 11.09.91 ......................................381
T 594/90 - 3.2.01 07.06.95 ......................................305 T 854/90 - 3.4.01 19.03.92 (OJ 1993, 669).................15
T 595/90 - 3.2.02 24.05.93 (OJ 1994, 695).......159, 626 T 855/90 - 3.2.03 16.05.95 ......................................506
T 600/90 - 3.3.01 18.02.92 ................................64, 561 T 859/90 - 3.3.01 05.11.92 ......................................433
T 606/90 - 3.2.05 29.01.93 ......................................279 T 869/90 - 3.4.01 01.07.92 .............................375, 376,
T 611/90 - 3.3.03 21.02.91 (OJ 1993, 50)................393, 388
404-406, 579, 581, 591, 623, 627 T 872/90 - 3.2.01 27.06.91 .............................509, 517,
T 612/90 - 3.3.02 07.12.93 ......................................374 522
T 614/90 - 3.3.03 25.02.94 ......................................338 T 876/90 - 3.5.02 05.12.91 ......................................581
T 621/90 - 3.5.01 22.07.91 ......................................403 T 877/90 - 3.3.02 28.07.92 ................................57, 561
T 622/90 - 3.4.02 13.11.91 ......................................189 T 883/90 - 3.2.04 01.04.93 ..............................427, 442
T 626/90 - 3.3.02 02.12.93 .............................640, 647, T 887/90 - 3.2.04 06.10.93 .................................60, 65,
648 67, 562, 610
T 628/90 - 3.5.01 25.11.91 ......................................397 T 888/90 - 3.2.02 01.07.92 (OJ 1994, 162)...............203
T 629/90 - 3.5.02 04.04.91 (OJ 1992, 654).......544, 634 T 893/90 - 3.3.02 22.07.93 .............................105, 106,
T 645/90 - 3.3.04 01.02.95 ......................................389 108, 109, 197, 653
T 650/90 - 3.2.02 23.07.93 ......................................162 T 895/90 - 3.2.04 23.09.93 ......................................536
T 654/90 - 3.3.01 08.05.91 ......................................173 T 896/90 - 3.2.03 22.04.94 ......................................604
T 656/90 - 3.4.01 13.11.91 ......................................123 T 897/90 - 3.3.02 07.05.91 ......................................202
T 663/90 - 3.3.01 13.08.91 .............................333, 335, T 900/90 - 3.2.03 18.05.94 .............................362, 363,
336, 654 369
T 664/90 - 3.2.02 09.07.91 ......................................212 T 901/90 - 3.3.02 23.09.93 (OJ 1994, 556).................71
T 665/90 - 3.3.02 23.09.92 ......................................185 T 905/90 - 3.3.01 13.11.92 (OJ 1994, 306)......311, 413,
T 666/90 - 3.3.02 28.02.94 .............................332, 466, 479
656 T 909/90 - 3.5.02 03.06.92 ......................................586
T 669/90 - 3.4.01 14.08.91 (OJ 1992, 739)......400, 534, T 910/90 - 3.2.04 14.04.93 ..............................127, 128
535 T 938/90 - 3.3.03 25.03.92 ..............................272, 275
T 675/90 - 3.3.01 24.06.92 (OJ 1994, 58).........526, 527 T 939/90 - 3.3.03 16.12.93 ......................................401
T 676/90 - 3.2.04 14.07.93 ..............................247, 639 T 952/90 - 3.2.02 23.11.92 ......................................207
T 678/90 - 3.2.03 27.04.92 ......................................634 T 953/90 - 3.4.01 12.05.92 .................................56, 76,
T 685/90 - 3.2.02 30.01.92 ..............................238, 260 427
T 686/90 - 3.2.03 21.06.93 ........................................19 T 955/90 - 3.4.01 21.11.91 ......................................138
T 688/90 - 3.2.04 26.10.92 ......................................638 T 958/90 - 3.3.01 04.12.92 ......................................117
T 689/90 - 3.4.01 21.01.92 (OJ 1993, 616)...............248 T 961/90 - 3.2.01 07.06.95 ......................................305
T 690/90 - 3.2.03 15.05.92 ......................................636 T 969/90 - 3.4.01 12.05.92 ............................56, 64, 76
T 692/90 - 3.2.02 28.09.93 ......................................337
T 695/90 - 3.2.01 31.03.92 ......................................161 1991
T 705/90 - 3.2.01 15.07.91 .............................392, 399,
592 T 5/91 - 3.2.03 24.06.93 ......................................164
T 708/90 - 3.2.05 06.11.92 ......................................639 T 10/91 - 3.3.03 08.01.92 ......................................274
T 711/90 - 3.3.02 15.09.93 ......................................206 T 15/91 - 3.2.05 22.06.93 ......................................120
T 717/90 - 3.2.01 10.07.91 ......................................147 T 17/91 - 3.2.02 26.08.92 .....................................390,
T 729/90 - 3.3.03 29.10.93 ..............................166, 624 395-397
T 735/90 - 3.3.03 02.09.92 ......................................658 T 24/91 - 3.2.02 05.05.94 (OJ 1995, 512)......24-26, 28
T 737/90 - 3.3.01 09.09.93 ......................................174 T 25/91 - 3.5.01 02.06.92 .............................337, 640,
T 740/90 - 3.3.02 02.10.91 .............................175, 185, 645
437 T 28/91 - 3.3.03 20.10.92 ......................................581
T 752/90 - 3.2.03 08.12.92 ......................................196 T 47/91 - 3.2.03 30.06.92 ......................................139
T 755/90 - 3.3.03 01.09.92 .............................337, 416, T 48/91 - 3.3.02 18.11.93 ..............................640, 646
579 T 55/91 - 3.3.02 11.07.94 ......................................330
T 758/90 - 3.3.02 14.07.94 ......................................608 T 71/91 - 3.5.01 21.09.93 ....................................1, 10
T 760/90 - 3.4.02 24.11.92 ......................................209 T 75/91 - 3.2.03 11.01.93 ......................................658
T 762/90 - 3.4.02 29.11.91 .............................187, 272, T 79/91 - 3.4.02 21.02.92 .............................199, 506,
626 663
T 766/90 - 3.3.02 15.07.92 .............................333, 337, T 94/91 - 3.4.02 09.09.91 ..............................221, 228
654 T 102/91 - 3.5.02 11.10.91 ......................................621
T 768/90 - 3.2.04 14.11.94 ......................................149 T 106/91 - 3.3.03 10.02.94 ......................................129
T 770/90 - 3.5.01 17.04.91 ......................................239 T 107/91 - 3.2.05 06.12.93 ......................................177
T 775/90 - 3.4.02 24.06.92 ......................................160 T 108/91 - 3.2.01 17.09.92 (OJ 1994, 228)...............276
T 776/90 - 3.4.01 28.08.91 ......................................592 T 109/91 - 3.3.02 15.01.92 ..............................433, 440
T 796/90 - 3.3.03 13.09.93 ..............................416, 606 T 110/91 - 3.3.01 24.04.92 ..............................406, 579
T 806/90 - 3.4.02 12.05.92 ......................................416 T 118/91 - 3.2.01 28.07.92 .............................284, 287,
T 811/90 - 3.2.04 02.04.92 (OJ 1993, 728).......480, 596 288, 420
T 815/90 - 3.3.04 20.10.97 ......................................182 T 119/91 - 3.4.02 28.07.92 ......................................655
T 816/90 - 3.3.02 07.09.93 .............................134, 182, T 122/91 - 3.3.02 09.07.91 ......................................379
189 T 125/91 - 3.2.04 03.02.92 ......................................628
T 830/90 - 3.2.01 23.07.93 (OJ 1994, 713)..........59, 67, T 126/91 - 3.2.01 12.05.92 ......................................173
424, 429, 562, 610, 648 T 138/91 - 3.2.01 26.01.93 ......................................634
T 833/90 - 3.3.03 19.05.94 .............................618, 640, T 143/91 - 3.2.03 24.09.92 ..............................459, 638
647 T 148/91 - 3.3.01 01.09.92 ......................................184
T 835/90 - 3.4.02 01.10.92 ......................................638 T 153/91 - 3.2.01 09.09.93 ......................................272
T 842/90 - 3.2.01 20.08.93 ..............................352, 412 T 156/91 - 3.3.01 14.01.93 ..............................175, 203
T 850/90 - 3.2.01 10.06.92 ......................................203 T 158/91 - 3.3.02 30.07.91 ......................................179

712
 Table of cases

T 161/91 - 3.4.01 27.07.93 ......................................579 T 420/91 - 3.2.05 17.03.93 ................................67, 610

T 166/91 - 3.2.04 15.06.93 ..............................338, 403 T 435/91 - 3.3.01 09.03.94 (OJ 1995, 188)......120, 175,
T 176/91 - 3.3.03 08.04.91 .............................184, 383, 183, 184
531 T 438/91 - 3.3.04 17.10.94 ............................21, 27, 30
T 184/91 - 3.3.02 11.06.93 .............................520, 637, T 439/91 - 3.2.02 21.07.91 ......................................534
639, 649 T 440/91 - 3.3.01 22.03.94 ......................................130
T 187/91 - 3.4.01 11.03.93 (OJ 1994, 572)...............260 T 441/91 - 3.4.01 18.08.92 ...............................83, 305,
T 196/91 - 3.1.01 05.12.91 ......................................545 561, 610
T 197/91 - 3.2.04 18.01.93 ......................................655 T 442/91 - 3.3.02 23.06.94 ......................................210
T 204/91 - 3.3.01 22.06.92 ..............................557, 560 T 452/91 - 3.3.03 05.07.95 ..............................186, 489
T 205/91 - 3.2.02 16.06.92 ........................................47 T 453/91 - 3.5.01 31.05.94 ........................................18
T 206/91 - 3.3.02 08.04.92 ......................................149 T 455/91 - 3.3.02 20.06.94 (OJ 1995, 684).......135-138,
T 209/91 - 3.2.03 23.05.91 ..........................................4 160
T 212/91 - 3.3.02 16.05.95 .............................391, 393, T 456/91 - 3.3.03 03.11.93 .............................175, 184,
394 192, 208, 209
T 214/91 - 3.2.04 23.06.92 ......................................276 T 459/91 - 3.2.03 06.06.95 ......................................647
T 221/91 - 3.2.01 08.12.92 ..................................61, 64 T 462/91 - 3.2.02 05.07.94 ........................................56
T 227/91 - 3.2.02 15.12.92 (OJ 1994, 491).......112, 199 T 470/91 - 3.3.01 11.05.92 (OJ 1993, 680)...............218
T 228/91 - 3.2.01 27.08.92 ........................................57 T 472/91 - 3.5.01 19.08.92 ......................................420
T 234/91 - 3.3.02 25.06.93 ..............................141, 165 T 473/91 - 3.5.01 09.04.92 (OJ 1993, 630)......361, 477,
T 236/91 - 3.5.01 16.04.93 ....................................1, 11 636
T 243/91 - 3.2.04 24.07.91 ......................................197 T 478/91 - 3.2.01 02.06.93 ..............................163, 164
T 244/91 - 3.2.03 01.10.93 ......................................139 T 485/91 - 3.2.04 25.04.94 ..............................155, 639
T 245/91 - 3.3.03 21.06.94 ........................................99 T 487/91 - 3.5.01 22.01.93 ......................................177
T 246/91 - 3.3.01 14.09.93 ..............................128, 200 T 492/91 - 3.3.01 04.01.94 ......................................217
T 247/91 - 3.3.01 30.03.82 ..................................75, 96 T 495/91 - 3.3.01 20.07.93 .............................122, 128,
T 248/91 - 3.3.02 20.06.91 ......................................381 131
T 252/91 - 3.2.02 04.04.95 ......................................663 T 497/91 - 3.2.02 30.06.92 ......................................293
T 255/91 - 3.4.02 12.09.91 (OJ 1993, 318).........98, 292 T 500/91 - 3.3.02 21.10.92 .............................133, 136,
T 257/91 - 3.4.01 17.11.92 ......................................164 137
T 258/91 - 3.3.01 19.02.93 ........................................91 T 506/91 - 3.3.02 03.04.92 .............................422, 594,
T 263/91 - 3.2.01 04.12.92 ......................................336 615, 638
T 267/91 - 3.3.02 28.04.93 .................................61, 64, T 508/91 - 3.2.04 28.01.93 ........................................87
174, 184 T 515/91 - 3.2.03 23.04.93 ......................................162
T 270/91 - 3.2.01 01.12.92 ......................................366 T 516/91 - 3.3.03 14.01.92 ......................................381
T 285/91 - 3.4.01 15.06.93 ......................................149 T 518/91 - 3.4.01 29.09.92 ........................................72
T 289/91 - 3.3.01 10.03.93 (OJ 1994, 649)......128, 548, T 522/91 - 3.3.03 18.11.93 ......................................206
554 T 523/91 - 3.3.03 29.03.93 ..............................191, 655
T 297/91 - 3.2.04 16.06.94 .............................590, 639, T 532/91 - 3.5.01 05.07.93 .............................322, 534,
643, 645 535
T 304/91 - 3.2.02 15.12.93 ......................................506 T 545/91 - 3.5.01 28.04.93 ......................................560
T 315/91 - 3.2.03 30.11.93 ......................................635 T 548/91 - 3.3.02 07.02.94 .............................152, 175,
T 318/91 - 3.5.01 18.08.92 ......................................588 184, 185, 554
T 322/91 - 3.2.05 14.10.93 ......................................635 T 552/91 - 3.3.01 03.03.94 (OJ 1995, 100).......213, 249
T 327/91 - 3.5.01 19.11.93 ...............................56, 337, T 555/91 - 3.3.02 05.05.93 ......................................164
427, 429 T 561/91 - 3.3.03 05.12.91 (OJ 1993, 736)...............531
T 334/91 - 3.2.01 09.02.93 ......................................582 T 563/91 - 3.2.01 01.03.93 ......................................624
T 349/91 - 3.4.02 10.03.93 ......................................181 T 566/91 - 3.3.02 18.05.94 ..............................155, 327
T 360/91 - 3.3.03 01.06.93 ......................................657 T 570/91 - 3.2.04 26.11.93 .............................122, 124,
T 367/91 - 3.5.01 14.12.92 ......................................659 536
T 369/91 - 3.3.01 15.05.92 (OJ 1993, 561)........98, 375, T 574/91 - 3.3.02 13.08.93 ......................................623
421, 627 T 576/91 - 3.3.02 18.05.93 ........................................56
T 370/91 - 3.3.02 06.07.92 ......................................635 T 581/91 - 3.3.03 04.08.93 ..............................280, 435
T 375/91 - 3.3.03 17.11.94 ......................................395 T 582/91 - 3.2.01 11.11.92 ..............................241, 292
T 384/91 - 3.4.02 27.09.94 (OJ 1995, 745)......243, 244, T 601/91 - 3.3.01 27.07.93 ......................................438
274 T 602/91 - 3.3.02 13.09.94 ................................61, 561
T 388/91 - 3.4.01 12.10.03 ......................................196 T 605/91 - 3.2.03 20.07.93 ......................................164
T 391/91 - 3.3.02 22.11.93 .............................189, 196, T 606/91 - 3.2.03 27.07.93 ......................................208
197 T 613/91 - 3.2.03 05.10.93 ......................................619
T 392/91 - 3.2.05 24.06.93 ..............................615, 657 T 617/91 - 3.2.02 22.01.97 ......................................163
T 393/91 - 3.3.02 12.10.94 ..............................192, 244 T 621/91 - 3.2.03 28.09.94 .............................535, 548,
T 395/91 - 3.3.04 07.12.95 ......................................426 557, 659
T 406/91 - 3.3.01 22.10.92 ......................................185 T 622/91 - 3.4.02 01.02.94 ........................................48
T 407/91 - 3.3.01 15.04.93 ......................................149 T 623/91 - 3.3.01 16.02.93 .............................187, 194,
T 408/91 - 3.3.02 23.11.93 ..............................592, 648 195
T 409/91 - 3.3.01 18.03.93 (OJ 1994, 653)......120, 175, T 624/91 - 3.2.02 16.06.93 ........................................72
183, 189, 203, 204, 433 T 628/91 - 3.5.02 14.09.92 ......................................263
T 410/91 - 3.2.03 13.10.93 ......................................149 T 631/91 - 3.4.01 27.01.93 ......................................620
T 411/91 - 3.3.02 10.11.93 ......................................626 T 632/91 - 3.3.01 01.02.94 ..............................140, 620
T 412/91 - 3.2.02 27.02.96 ..................................70, 79 T 634/91 - 3.2.02 31.05.94 ...............................59, 562,
T 413/91 - 3.3.02 25.06.92 ......................................373 610
T 415/91 - 3.5.02 13.05.92 ......................................264 T 640/91 - 3.4.01 29.09.93 (OJ 1994, 918)......476, 506,
T 418/91 - 3.3.02 23.08.94 .............................175, 184, 611, 655
185 T 643/91 - 3.3.03 18.09.96 ......................................596

713
Table of cases

T 645/91 - 3.3.01 13.07.93 ........................................82 T 905/91 - 3.4.02 05.10.93 ......................................590

T 651/91 - 3.2.01 18.02.93 ........................................87 T 907/91 - 3.2.03 08.10.93 ......................................512
T 653/91 - 3.4.01 24.09.92 ......................................339 T 908/91 - 3.2.02 16.11.93 ..............................506, 653
T 656/91 - 3.3.02 27.09.94 ......................................168 T 912/91 - 3.3.02 25.10.94 ..............................271, 329
T 658/91 - 3.3.01 14.05.93 ..................................75, 91 T 919/91 - 3.4.01 15.02.93 ......................................649
T 660/91 - 3.4.01 23.07.93 ......................................157 T 921/91 - 3.2.05 09.12.93 ......................................638
T 674/91 - 3.2.03 30.11.94 ..............................426, 428 T 924/91 - 3.2.04 04.08.93 ......................................338
T 677/91 - 3.4.01 03.11.92 ................................72, 165 T 925/91 - 3.4.02 26.04.94 (OJ 1995, 469)......548, 557,
T 682/91 - 3.4.02 22.09.92 ......................................654 620, 623, 662
T 685/91 - 3.3.03 05.01.93 ..............................401, 581 T 931/91 - 3.3.03 20.04.93 ..............................177, 608
T 686/91 - 3.3.01 30.06.94 ..............................122, 123 T 933/91 - 3.5.01 21.06.93 ......................................647
T 688/91 - 3.5.01 21.04.93 .............................191, 192, T 934/91 - 3.3.01 04.08.92 (OJ 1994, 184)......591, 612,
203 630
T 690/91 - 3.3.04 10.01.96 ..............................630, 631 T 936/91 - 3.3.01 06.05.93 ......................................635
T 691/91 - 3.2.02 29.07.92 ..............................637, 663 T 937/91 - 3.2.05 10.11.94 (OJ 1996, 25).........567, 606
T 697/91 - 3.3.01 20.04.94 ......................................184 T 938/91 - 3.2.03 21.09.93 ..............................582, 624
T 699/91 - 3.2.04 21.05.93 ......................................164 T 939/91 - 3.3.04 05.12.94 ..............................457, 661
T 701/91 - 3.2.02 04.10.93 ......................................148 T 942/91 - 3.3.02 09.02.94 ........................................82
T 705/91 - 3.4.02 27.04.93 ......................................421 T 951/91 - 3.3.03 10.03.94 (OJ 1995, 202).......389-391,
T 706/91 - 3.2.01 15.12.92 ..............................596, 621 394, 459
T 715/91 - 3.5.01 24.03.92 .............................374, 375, T 955/91 - 3.4.01 04.02.93 ......................................643
383, 385 T 957/91 - 3.3.03 29.09.94 ......................................297
T 716/91 - 3.2.04 15.05.95 ......................................321 T 958/91 - 3.3.02 25.03.84 ........................................58
T 727/91 - 3.3.01 11.08.93 ......................................620 T 962/91 - 3.5.02 21.04.93 ........................................19
T 729/91 - 3.2.04 21.11.94 ........................................65 T 968/91 - 3.3.03 12.01.94 ......................................438
T 731/91 - 3.2.03 03.05.95 ..............................128, 374 T 972/91 - 3.5.02 12.07.93 ......................................638
T 734/91 - 3.5.01 07.04.92 ..............................512, 655 T 985/91 - 3.2.04 23.03.94 ......................................397
T 740/91 - 3.3.03 15.12.93 ......................................249 T 986/91 - 3.2.03 06.11.95 ........................................80
T 741/91 - 3.3.01 22.09.93 ..............................128, 395 T 988/91 - 3.2.01 29.06.93 ......................................561
T 746/91 - 3.5.01 20.10.93 ......................................649 T 990/91 - 3.3.01 25.05.92 ..............................279, 656
T 748/91 - 3.2.01 23.08.93 ..............................247, 337
T 757/91 - 3.2.03 10.03.92 ..............................630, 631 1992
T 759/91 - 3.3.03 18.11.93 ......................................206
T 766/91 - 3.3.02 29.09.93 .................................48, 64, T 1/92 - 3.3.02 27.04.92 (OJ 1993, 685)......520, 524,
140 526, 595, 616
T 769/91 - 3.2.01 29.03.94 ......................................540 T 3/92 - 3.2.03 03.06.94 ......................................624
T 770/91 - 3.3.02 29.04.92 ..............................426, 441 T 6/92 - 3.3.01 26.10.93 ......................................633
T 773/91 - 3.2.05 25.03.92 ..............................633, 651 T 18/92 - 3.5.02 30.04.93 ......................................635
T 784/91 - 3.5.01 22.09.93 ......................................626 T 26/92 - 3.2.02 27.01.94 ..............................579, 590
T 785/91 - 3.3.03 05.03.93 ......................................416 T 27/92 - 3.2.01 25.07.94 (OJ 1994, 853)...............600
T 788/91 - 3.2.04 25.11.94 ......................................596 T 28/92 - 3.3.02 09.06.94 ......................................649
T 795/91 - 3.5.01 02.11.92 .............................333, 337, T 35/92 - 3.2.01 28.10.92 ..............................337, 654
654 T 42/92 - 3.4.01 29.11.94 ........................................71
T 796/91 - 3.3.03 27.01.93 ......................................193 T 44/92 - 3.2.02 15.04.94 ......................................348
T 799/91 - 3.2.01 03.02.94 ........................................59 T 45/92 - 3.3.01 09.11.93 ..............................415, 622
T 800/91 - 3.3.04 20.07.95 ......................................128 T 62/92 - 3.2.04 20.06.94 ......................................211
T 810/91 - 3.3.01 04.09.92 ......................................196 T 65/92 - 3.3.02 13.06.93 ..............................295, 297
T 822/91 - 3.4.02 19.01.93 ......................................196 T 77/92 - 3.2.02 13.10.95 ....................................1, 12
T 830/91 - 3.3.02 15.09.94 (OJ 1994, 728).......507, 526 T 81/92 - 3.5.02 05.07.93 ..............................582, 590
T 833/91 - 3.5.01 16.04.93 ....................................1, 12 T 82/92 - 3.3.02 04.05.94 ......................................634
T 834/91 - 3.3.03 31.08.93 ......................................122 T 92/92 - 3.2.01 21.09.93 ..............................131, 401
T 842/91 - 3.2.03 11.05.93 ..................................52, 58 T 104/92 - 3.3.04 06.08.96 ......................................160
T 843/91 - 3.3.01 17.03.93 (OJ 1994, 818)......439, 454, T 110/92 - 3.2.03 12.10.94 ......................................164
461, 626, 630, 631 T 111/92 - 3.5.01 27.07.94 ..............................375, 388
T 852/91 - 3.3.01 06.06.94 ......................................152 T 112/92 - 3.3.02 04.08.92 (OJ 1994, 192)...............156
T 856/91 - 3.4.02 08.10.92 ..............................467, 658 T 113/92 - 3.3.01 17.12.92 .............................508, 630,
T 857/91 - 3.2.03 16.11.93 ................................74, 195 631
T 860/91 - 3.3.01 03.08.93 ..............................527, 639 T 117/92 - 3.2.01 02.12.93 ......................................399
T 862/91 - 3.2.04 17.03.93 ......................................162 T 127/92 - 3.2.01 14.12.94 ..............................295, 306
T 867/91 - 3.3.01 12.10.93 ......................................619 T 128/92 - 3.3.04 30.11.94 ........................................56
T 869/91 - 3.5.02 06.08.92 ......................................625 T 131/92 - 3.3.03 03.03.94 ......................................297
T 875/91 - 3.5.02 10.03.93 ..............................581, 582 T 132/92 - 3.3.02 06.08.96 ......................................570
T 879/91 - 3.3.03 08.12.93 ......................................272 T 133/92 - 3.3.01 18.10.94 ................................92, 329
T 880/91 - 3.4.02 26.04.93 ......................................655 T 148/92 - 3.2.03 13.09.94 ......................................648
T 881/91 - 3.2.01 04.02.93 ......................................404 T 160/92 - 3.4.02 27.01.94 (OJ 1995, 387)........54, 311,
T 882/91 - 3.2.01 04.01.93 ......................................581 313, 437, 516, 518
T 884/91 - 3.4.02 08.02.94 ......................................634 T 164/92 - 3.5.01 29.04.93 (OJ 1995, 387).........67, 136
T 885/91 - 3.3.02 27.01.94 ......................................109 T 179/92 - 3.4.02 01.03.94 ......................................374
T 886/91 - 3.3.02 16.06.94 .............................133, 137, T 180/92 - 3.4.02 29.06.94 ......................................638
202 T 182/92 - 3.3.03 06.04.93 ......................................659
T 891/91 - 3.4.02 16.03.93 ......................................139 T 188/92 - 3.3.02 15.12.92 ......................................625
T 894/91 - 3.3.01 16.06.92 ......................................196 T 189/92 - 3.2.04 07.10.92 ......................................139
T 898/91 - 3.3.04 18.07.97 ..............................256, 597 T 199/92 - 3.3.01 11.01.94 ..............................548, 557
T 904/91 - 3.3.01 18.01.95 ........................................82 T 201/92 - 3.3.03 18.07.95 ......................................393

714
 Table of cases

T 202/92 - 3.3.01 19.07.94 ......................................329 T 472/92 - 3.3.03 20.11.96 (OJ 1998, 161)..........63, 64,
T 219/92 - 3.5.01 18.11.93 ..............................403, 624 66, 77, 433, 437
T 223/92 - 3.3.02 20.07.93 .............................133, 137, T 473/92 - 3.5.01 10.03.95 ..............................347, 638
181 T 482/92 - 3.3.01 23.01.97 ......................................122
T 227/92 - 3.4.02 01.07.93 ......................................449 T 484/92 - 3.3.03 30.12.93 ..............................184, 204
T 229/92 - 3.2.04 23.08.94 ......................................624 T 492/92 - 3.3.01 18.01.96 ......................................178
T 230/92 - 3.2.02 16.05.93 ......................................438 T 494/92 - 3.3.03 13.06.93 ......................................339
T 231/92 - 3.4.02 08.03.94 ......................................173 T 501/92 - 3.4.01 01.06.95 (OJ 1996, 261)......329, 415,
T 234/92 - 3.2.03 12.01.95 ......................................645 594, 601
T 238/92 - 3.2.01 13.05.93 ......................................399 T 503/92 - 3.3.03 17.03.94 ......................................184
T 239/92 - 3.2.05 23.02.95 ..............................440, 651 T 506/92 - 3.4.01 03.08.95 ..............................166, 167
T 242/92 - 3.3.02 26.05.93 ..............................175, 184 T 511/92 - 3.2.02 27.05.93 ............................67, 70, 72
T 248/92 - 3.5.02 31.05.93 ......................................327 T 514/92 - 3.2.02 21.09.95 (OJ 1996, 270).......567, 606
T 252/92 - 3.4.02 17.06.93 ..............................643, 645 T 526/92 - 3.3.01 25.10.94 ......................................239
T 253/92 - 3.5.02 22.10.93 ..............................160, 626 T 527/92 - 3.5.01 24.01.94 ......................................468
T 255/92 - 3.5.02 09.09.92 ......................................632 T 536/92 - 3.2.04 29.11.93 ......................................663
T 266/92 - 3.5.01 17.10.94 ..............................421, 618 T 540/92 - 3.3.03 01.03.95 ......................................163
T 267/92 - 3.3.03 04.06.96 ................................77, 579 T 541/92 - 3.2.01 25.01.94 .................................60, 65,
T 272/92 - 3.2.01 16.08.95 ........................................74 548, 561
T 273/92 - 3.3.03 18.08.93 .............................122, 163, T 543/92 - 3.3.03 13.06.94 .............................333, 655,
620 656
T 281/92 - 3.4.02 06.11.92 ......................................196 T 555/92 - 3.3.02 15.11.95 ......................................212
T 288/92 - 3.3.01 18.11.93 ..............................260, 630 T 570/92 - 3.3.02 22.06.95 ......................................107
T 292/92 - 3.3.02 06.09.96 ......................................168 T 574/92 - 3.4.01 17.03.95 ......................................149
T 293/92 - 3.3.03 24.08.95 ......................................533 T 578/92 - 3.4.01 02.02.94 ......................................154
T 297/92 - 3.5.01 06.10.93 ......................................478 T 585/92 - 3.3.02 09.02.95 (OJ 1996, 129).........51, 440
T 304/92 - 3.5.01 23.06.93 ..............................626, 643 T 588/92 - 3.4.01 18.03.94 ......................................659
T 309/92 - 3.2.01 05.01.94 ......................................608 T 597/92 - 3.3.01 01.03.95 (OJ 1996, 135).......195, 293
T 315/92 - 3.5.01 27.04.93 ..............................393, 395 T 598/92 - 3.4.01 07.12.93 ......................................626
T 321/92 - 3.5.02 13.01.93 ......................................135 T 599/92 - 3.4.01 25.04.94 ..............................508, 649
T 327/92 - 3.3.04 22.04.97 ...............................55, 122, T 601/92 - 3.2.04 20.04.95 ...............................80, 272,
328, 602, 610 638, 653
T 329/92 - 3.2.01 29.04.93 ......................................634 T 605/92 - 3.2.01 25.04.94 ......................................588
T 330/92 - 3.2.04 10.02.94 ..............................162, 163 T 612/92 - 3.3.04 28.02.96 .............................175, 179,
T 334/92 - 3.3.01 23.03.94 .............................125, 126, 180
128 T 627/92 - 3.5.02 30.03.93 ......................................634
T 339/92 - 3.2.05 17.02.95 ......................................389 T 630/92 - 3.3.02 22.02.94 ......................................154
T 340/92 - 3.2.01 05.10.94 ......................................614 T 631/92 - 3.3.03 11.05.95 ................................98, 645
T 341/92 - 3.3.01 30.08.94 (OJ 1995, 373)...............328 T 637/92 - 3.2.02 21.11.95 ......................................120
T 347/92 - 3.3.02 23.09.94 ......................................162 T 645/92 - 3.3.01 12.04.94 ..............................121, 131
T 359/92 - 3.2.01 25.03.93 ......................................293 T 646/92 - 3.3.02 13.09.94 ......................................625
T 366/92 - 3.5.02 18.02.93 .............................517, 632, T 649/92 - 3.3.04 28.09.99 ......................................553
655 T 653/92 - 3.3.03 11.06.96 ..............................195, 196
T 367/92 - 3.3.03 22.08.96 ......................................261 T 654/92 - 3.5.01 03.05.94 ........................................48
T 371/92 - 3.3.03 02.12.93 (OJ 1995, 324)......374, 465, T 655/92 - 3.3.02 11.02.97 ........................................26
619, 621 T 656/92 - 3.3.01 04.05.95 ......................................262
T 378/92 - 3.2.01 13.01.94 ......................................202 T 657/92 - 3.3.04 06.09.94 ........................................83
T 382/92 - 3.2.04 26.11.92 .............................457, 613, T 659/92 - 3.2.02 24.10.94 (OJ 1995, 519)......541, 597,
661 633
T 392/92 - 3.5.02 21.01.93 ......................................655 T 667/92 - 3.3.02 10.03.94 .............................367, 374,
T 398/92 - 3.3.02 12.11.96 ......................................246 386
T 406/92 - 3.3.02 18.01.95 ................................57, 559 T 675/92 - 3.4.01 10.11.93 ......................................139
T 407/92 - 3.2.05 20.07.95 ......................................590 T 684/92 - 3.2.01 25.07.95 ......................................600
T 410/92 - 3.5.02 20.09.93 ......................................150 T 686/92 - 3.5.01 28.10.93 ..............................337, 654
T 418/92 - 3.2.03 10.03.92 ......................................192 T 694/92 - 3.3.04 08.05.96 (OJ 1997, 408)......133, 134,
T 422/92 - 3.4.02 21.02.95 ........................................82 139, 152, 174, 175, 179, 180, 189
T 426/92 - 3.4.01 03.03.94 ......................................167 T 697/92 - 3.2.02 15.06.94 ......................................154
T 432/92 - 3.2.01 28.01.94 ..............................579, 584 T 703/92 - 3.2.04 14.09.95 ..............................484, 485
T 434/92 - 3.3.03 28.11.95 ......................................195 T 705/92 - 3.4.01 08.11.94 ..............................406, 579
T 436/92 - 3.3.02 20.03.95 ........................................51 T 710/92 - 3.3.03 11.10.95 ......................................195
T 439/92 - 3.2.04 16.05.94 .............................122, 124, T 712/92 - 3.3.04 19.06.95 ..............................164, 165
207, 211 T 714/92 - 3.2.04 18.09.92 ......................................456
T 441/92 - 3.5.01 10.03.95 .............................281, 283, T 715/92 - 3.3.02 10.02.94 ......................................421
285 T 720/92 - 3.3.03 31.05.94 ......................................197
T 446/92 - 3.3.01 28.03.95 ......................................536 T 737/92 - 3.3.03 12.06.95 .............................563, 566,
T 447/92 - 3.5.02 07.07.93 ..................................47, 81 604
T 453/92 - 3.3.01 20.12.94 ......................................162 T 739/92 - 3.3.03 16.07.96 ........................................62
T 455/92 - 3.2.04 05.10.93 ..............................188, 199 T 741/92 - 3.2.02 21.06.94 ......................................155
T 457/92 - 3.5.01 26.09.94 ......................................403 T 745/92 - 3.4.01 08.06.94 ......................................151
T 461/92 - 3.4.02 05.07.94 ......................................162 T 753/92 - 3.2.03 04.04.95 ..............................592, 593
T 465/92 - 3.2.02 14.10.94 (OJ 1996, 32)............67, 72, T 758/92 - 3.2.01 20.05.94 ......................................250
121 T 766/92 - 3.4.01 14.05.96 ......................................166
T 469/92 - 3.2.02 09.09.94 .............................293, 638, T 769/92 - 3.5.01 31.05.94 (OJ 1995, 525).........5-7, 15,
650 17, 21, 141

715
Table of cases

T 771/92 - 3.3.01 19.07.95 ......................................329 T1049/92 - 3.2.03 10.11.94 ......................................659

T 782/92 - 3.2.01 22.06.94 .................................61, 64, T1050/92 - 3.2.02 20.11.95 ......................................301
433 T1051/92 - 3.2.01 26.04.94 ......................................662
T 785/92 - 3.3.02 14.12.95 ......................................199 T1054/92 - 3.2.02 20.06.96 .................................62, 64,
T 790/92 - 3.5.01 29.10.93 ........................................13 296, 433
T 792/92 - 3.4.01 29.11.93 ......................................415 T1055/92 - 3.5.01 31.03.94 (OJ 1995, 214)......184, 189,
T 793/92 - 3.2.04 16.07.93 ......................................506 204
T 795/92 - 3.3.02 23.04.96 ......................................280 T1059/92 - 3.5.01 21.09.93 ......................................647
T 798/92 - 3.4.01 28.07.94 ......................................154 T1063/92 - 3.3.03 15.10.93 ..............................630, 631
T 802/92 - 3.4.01 22.07.94 (OJ 1995, 379)...............244 T1066/92 - 3.3.02 05.07.95 ..............................564, 608
T 804/92 - 3.5.02 08.09.93 (OJ 1994, 862)...............428 T1067/92 - 3.4.01 16.07.94 ......................................649
T 812/92 - 3.2.01 21.11.95 ......................................165 T1072/92 - 3.2.03 28.06.94 ......................................161
T 820/92 - 3.3.02 11.01.94 (OJ 1995, 113).....21, 27-29, T1077/92 - 3.2.02 05.12.95 ......................................163
31 T1085/92 - 3.5.02 10.11.94 ..................................58, 59
T 831/92 - 3.4.01 13.12.94 ..............................640, 643 T1096/92 - 3.3.03 16.05.94 ......................................156
T 832/92 - 3.5.01 23.06.94 ......................................540 T1097/92 - 3.3.03 27.09.93 ......................................636
T 838/92 - 3.2.01 10.01.95 .............................347, 424, T1101/92 - 3.3.02 13.06.96 ..............................652, 655
429, 440, 587, 596, 613 T1105/92 - 3.2.04 21.01.94 ......................................124
T 856/92 - 3.4.02 08.02.95 ..............................329, 602
T 861/92 - 3.3.02 01.02.93 ..............................216, 226 1993
T 867/92 - 3.5.02 13.04.94 ..............................579, 580
T 870/92 - 3.2.05 08.08.97 .............................541, 550, T 18/93 - 3.3.01 07.11.94 ......................................606
597 T 26/93 - 3.5.02 16.12.94 ......................................631
T 879/92 - 3.5.01 16.03.94 ..............................336, 337 T 28/93 - 3.2.03 07.07.94 ..............................548, 561
T 881/92 - 3.3.03 22.04.96 ......................................128 T 33/93 - 3.3.01 05.05.93 .............................322, 519,
T 882/92 - 3.3.03 22.04.96 ......................................128 656
T 884/92 - 3.3.03 22.04.96 ......................................128 T 39/93 - 3.3.03 14.02.96 (OJ 1997, 134)......129, 135,
T 887/92 - 3.5.01 19.04.94 ........................................13 344, 427
T 890/92 - 3.2.01 12.07.94 ......................................329 T 51/93 - 3.3.04 08.06.94 .............................105, 109,
T 892/92 - 3.3.01 24.06.93 (OJ 1994, 664)......324, 339, 111
540, 655 T 55/93 - 3.2.02 15.03.95 ......................................147
T 896/92 - 3.2.01 28.04.94 ................................74, 592 T 59/93 - 3.5.01 20.04.94 ..........................................5
T 897/92 - 3.2.04 21.03.95 ......................................122 T 63/93 - 3.2.02 28.07.93 ......................................506
T 910/92 - 3.4.02 17.05.95 ......................................419 T 68/93 - 3.3.01 24.01.95 ........................................74
T 917/92 - 3.3.01 06.05.93 ......................................184 T 71/93 - 3.4.02 01.06.93 ..................................72, 73
T 918/92 - 3.2.02 08.12.94 ......................................590 T 74/93 - 3.3.01 09.11.94 ...............................28, 171,
T 920/92 - 3.4.02 19.10.95 ......................................174 172
T 923/92 - 3.3.04 08.11.95 (OJ 1996, 564)......134, 175, T 81/93 - 3.2.04 12.04.95 ......................................466
179, 295 T 82/93 - 3.4.01 15.05.95 (OJ 1996, 274)...........20-23,
T 930/92 - 3.4.01 29.05.95 (OJ 1996, 191)......339, 586, 273, 638, 639
591 T 83/93 - 3.4.01 02.04.97 ..............................580, 592
T 931/92 - 3.3.03 10.08.93 ........................................71 T 85/93 - 3.4.01 17.10.96 (OJ 1998, 183)...............394
T 933/92 - 3.4.01 06.12.93 (OJ 1994, 740)...............609 T 89/93 - 3.2.01 16.05.94 ......................................506
T 939/92 - 3.3.01 12.09.95 (OJ 1996, 309)......120, 132, T 92/93 - 3.4.01 31.07.95 ......................................645
140, 149, 152, 153, 187, 203, 204, 433, T 96/93 - 3.2.04 23.01.95 ......................................649
638 T 105/93 - 3.3.01 22.05.95 ..............................322, 538
T 943/92 - 3.2.04 10.04.95 ......................................162 T 124/93 - 3.3.02 10.08.95 ......................................312
T 951/92 - 3.4.01 15.02.95 (OJ 1996, 53)........322, 513, T 125/93 - 3.3.03 04.12.96 ..............................405, 592
538, 655 T 134/93 - 3.4.02 16.11.95 ......................................162
T 952/92 - 3.4.01 17.08.94 (OJ 1995, 755)..........74, 76, T 141/93 - 3.3.03 15.03.96 ........................................87
638 T 149/93 - 3.3.02 23.03.95 ......................................133
T 955/92 - 3.3.02 26.09.95 ......................................279 T 150/93 - 3.2.04 06.03.95 ......................................398
T 957/92 - 3.3.01 21.12.93 ..............................128, 163 T 152/93 - 3.3.01 21.03.95 ..............................127, 162
T 958/92 - 3.2.02 18.12.95 ......................................634 T 153/93 - 3.3.01 21.02.94 ..............................630, 631
T 964/92 - 3.3.01 23.08.94 ......................................126 T 157/93 - 3.2.03 25.07.95 ......................................202
T 965/92 - 3.3.02 08.08.95 ........................................47 T 165/93 - 3.2.01 12.07.94 ......................................535
T 968/92 - 3.2.03 28.07.94 ......................................605 T 167/93 - 3.3.01 03.05.96 (OJ 1997, 229)...............630
T 969/92 - 3.2.02 31.03.95 ........................................67 T 169/93 - 3.3.01 10.07.96 ......................................603
T 971/92 - 3.3.01 07.09.94 ......................................155 T 186/93 - 3.2.04 22.05.95 ......................................649
T 973/92 - 3.2.01 06.12.93 ......................................635 T 187/93 - 3.3.04 05.03.97 .............................133, 174,
T 986/92 - 3.2.01 28.09.94 ......................................163 175, 179
T 996/92 - 3.3.01 23.03.93 ......................................618 T 191/93 - 3.4.02 07.06.94 ......................................247
T1000/92 - 3.3.01 11.05.94 ......................................126 T 193/93 - 3.5.01 06.08.93 ......................................517
T1002/92 - 3.4.01 06.07.94 (OJ 1995, 605)..........16, 17, T 195/93 - 3.3.04 04.05.95 ..............................599, 633
390, 391, 394, 398, 561, 568, 579 T 203/93 - 3.4.01 01.09.94 ..............................132, 163
T1011/92 - 3.2.03 16.09.94 ......................................600 T 204/93 - 3.5.01 29.10.93 ................................18, 169
T1014/92 - 3.3.01 10.01.95 ......................................164 T 206/93 - 3.3.03 30.10.96 ..............................642, 648
T1019/92 - 3.2.01 09.06.94 .............................395, 558, T 210/93 - 3.3.03 12.07.94 ......................................117
564 T 219/93 - 3.3.03 16.09.93 ..............................636, 653
T1032/92 - 3.4.01 23.08.94 ......................................649 T 220/93 - 3.3.03 30.11.93 ......................................655
T1037/92 - 3.4.01 29.08.96 ......................................139 T 225/93 - 3.3.03 13.05.97 ......................................178
T1042/92 - 3.2.04 28.10.93 ......................................636 T 229/93 - 3.3.01 21.02.97 ......................................508
T1045/92 - 3.3.03 21.10.93 ..............................206, 655 T 233/93 - 3.2.05 28.10.96 ..............................159, 605
T1048/92 - 3.3.01 05.12.94 ........................................93 T 234/93 - 3.3.04 15.05.97 ................................48, 140

716
 Table of cases

T 238/93 - 3.2.02 10.05.94 ......................................156 T 601/93 - 3.3.01 13.09.94 ......................................378

T 240/93 - 3.4.01 17.10.94 ......................................167 T 605/93 - 3.5.01 20.01.95 ......................................235
T 249/93 - 3.3.03 27.05.98 ......................................628 T 607/93 - 3.4.02 14.02.96 ........................................78
T 252/93 - 3.2.02 07.02.95 ..............................562, 610 T 616/93 - 3.2.04 27.06.95 ......................................126
T 254/93 - 3.3.02 14.05.97 (OJ 1998, 285).......112, 118 T 623/93 - 3.5.02 19.10.95 ................................48, 568
T 255/93 - 3.4.01 27.09.94 ......................................391 T 630/93 - 3.5.01 27.10.93 ..............................189, 191
T 263/93 - 3.3.01 12.01.94 .............................537, 538, T 647/93 - 3.5.02 06.04.94 (OJ 1995, 132)......332, 467,
540 476, 522, 636, 637, 656, 658, 663, 664
T 265/93 - 3.3.02 22.09.93 ......................................415 T 653/93 - 3.3.01 21.10.96 ......................................100
T 276/93 - 3.3.03 15.09.95 (OJ 1996, 330)...............343 T 655/93 - 3.2.03 25.10.94 ..............................157, 645
T 279/93 - 3.3.01 12.12.96 .............................117, 172, T 656/93 - 3.2.02 12.03.96 ......................................147
272 T 659/93 - 3.3.03 07.09.94 .............................175, 203,
T 286/93 - 3.3.01 22.11.96 ......................................158 204
T 291/93 - 3.2.05 22.06.95 ......................................662 T 660/93 - 3.4.02 19.07.96 ........................................98
T 292/93 - 3.2.05 13.02.97 ..................................57, 59 T 666/93 - 3.2.03 13.12.94 ......................................147
T 296/93 - 3.3.04 28.07.94 (OJ 1995, 627)......133, 293, T 669/93 - 3.2.03 13.02.95 ......................................292
295, 301, 302, 433, 599, 626 T 690/93 - 3.3.02 11.10.94 ......................................315
T 298/93 - 3.3.01 19.12.96 ......................................122 T 702/93 - 3.4.01 10.02.94 ..............................216, 638
T 306/93 - 3.3.02 30.07.96 ..............................579, 592 T 703/93 - 3.4.01 17.12.96 ......................................166
T 311/93 - 3.3.01 16.01.97 ..............................207, 292 T 712/93 - 3.2.02 14.04.97 ........................................37
T 321/93 - 3.2.04 15.03.95 ......................................602 T 713/93 - 3.2.02 12.02.96 ......................................147
T 322/93 - 3.3.03 02.04.97 ..............................175, 203 T 714/93 - 3.2.01 20.11.95 ......................................635
T 325/93 - 3.3.03 11.09.97 ......................................123 T 719/93 - 3.4.02 22.09.94 ..............................578, 579
T 326/93 - 3.5.01 29.11.94 ................................64, 433 T 720/93 - 3.4.02 19.09.95 ......................................632
T 333/93 - 3.4.01 10.03.97 ......................................213 T 723/93 - 3.3.04 12.07.96 ......................................202
T 339/93 - 3.3.04 18.04.96 ......................................554 T 726/93 - 3.2.05 01.07.94 (OJ 1995, 478)...............494
T 350/93 - 3.4.02 20.01.94 ..............................200, 202 T 731/93 - 3.3.01 01.12.94 ......................................338
T 351/93 - 3.2.03 01.03.95 ..............................161, 165 T 739/93 - 3.2.03 06.04.95 ........................................71
T 352/93 - 3.3.01 04.04.95 ........................................89 T 740/93 - 3.2.04 10.01.96 ..............................468, 657
T 356/93 - 3.3.04 21.02.95 (OJ 1995, 545).....38-40, 43, T 748/93 - 3.3.03 19.04.94 ......................................360
45, 46 T 752/93 - 3.2.04 16.07.96 ..............................421, 602
T 365/93 - 3.2.05 27.07.95 ........................................59 T 767/93 - 3.3.04 13.11.96 ......................................302
T 374/93 - 3.3.01 04.03.97 ......................................264 T 790/93 - 3.5.02 15.07.94 ..............................528, 661
T 375/93 - 3.2.03 02.09.94 ......................................129 T 793/93 - 3.3.03 27.09.95 ................................72, 434
T 377/93 - 3.2.05 29.10.93 ......................................374 T 795/93 - 3.3.01 29.10.96 ..............................120-122,
T 378/93 - 3.4.01 06.12.95 ......................................140 131, 163, 423
T 380/93 - 3.3.03 10.02.94 ..............................122, 128 T 798/93 - 3.2.01 20.06.96 (OJ 1997, 363)......428, 552,
T 381/93 - 3.5.01 12.08.94 .............................363, 374, 554
378, 386 T 803/93 - 3.4.01 19.07.95 (OJ 1996, 204).......450, 639
T 382/93 - 3.3.01 19.09.96 ......................................437 T 813/93 - 3.3.01 17.10.94 ......................................128
T 404/93 - 3.5.02 28.09.94 ........................................48 T 815/93 - 3.3.03 19.06.96 ........................................87
T 410/93 - 3.3.03 16.07.96 ......................................123 T 817/93 - 3.4.02 30.11.94 ......................................539
T 412/93 - 3.3.04 21.11.94 .............................135, 137, T 818/93 - 3.2.02 02.04.96 .................................61, 63,
174, 180, 181, 186 129, 154, 155, 246
T 419/93 - 3.3.03 19.07.95 ......................................128 T 822/93 - 3.3.02 23.05.95 ......................................373
T 422/93 - 3.3.01 21.09.95 (OJ 1997, 24).........128, 135 T 823/93 - 3.2.04 18.10.96 ........................................60
T 430/93 - 3.2.02 17.06.97 ......................................537 T 825/93 - 3.4.01 14.01.97 ......................................136
T 431/93 - 3.2.01 17.11.94 ......................................166 T 828/93 - 3.4.02 07.05.96 .............................305, 306,
T 433/93 - 3.4.01 06.12.96 (OJ 1997, 509)......459, 460, 421
538, 539, 568 T 829/93 - 3.4.02 24.05.96 ......................................571
T 441/93 - 3.3.04 27.03.96 .............................136, 137, T 840/93 - 3.3.02 11.07.95 (OJ 1996, 335)......640, 642,
301, 307 649
T 443/93 - 3.5.02 22.03.95 ..............................424, 564 T 847/93 - 3.4.02 31.01.95 .............................397, 405,
T 467/93 - 3.2.04 13.06.95 ......................................600 406, 583, 624
T 469/93 - 3.4.02 09.06.94 ......................................375 T 848/93 - 3.4.01 03.02.98 ......................................116
T 471/93 - 3.2.03 05.12.95 ......................................600 T 860/93 - 3.3.03 29.12.93 (OJ 1995, 47)........184, 199,
T 473/93 - 3.3.02 01.02.94 ......................................430 207-209, 659
T 487/93 - 3.3.04 06.02.96 ......................................513 T 861/93 - 3.3.03 29.04.94 ......................................402
T 493/93 - 3.3.04 30.01.97 ......................................275 T 863/93 - 3.5.01 17.02.94 ......................................659
T 505/93 - 3.2.02 10.11.95 ......................................610 T 866/93 - 3.3.01 08.09.97 ........................................83
T 516/93 - 3.3.02 02.04.97 ......................................506 T 870/93 - 3.4.01 18.02.98 ......................................335
T 527/93 - 3.2.02 20.01.95 ..............................403, 627 T 884/93 - 3.3.03 05.09.96 ......................................209
T 528/93 - 3.4.01 23.10.96 .............................422, 605, T 885/93 - 3.3.03 15.02.96 ......................................344
615 T 889/93 - 3.5.02 10.02.95 ......................................251
T 540/93 - 3.2.04 08.02.94 ......................................154 T 893/93 - 3.2.04 30.11.95 ......................................258
T 556/93 - 3.3.03 19.02.97 ......................................203 T 915/93 - 3.3.04 22.04.94 ......................................135
T 582/93 - 3.5.01 23.06.94 ........................................67 T 919/93 - 3.3.04 18.11.98 ......................................302
T 583/93 - 3.3.03 04.01.96 (OJ 1996, 496)......152, 203, T 926/93 - 3.4.01 01.10.96 (OJ 1997, 447)...............565
265, 648 T 928/93 - 3.4.02 23.01.97 ................................74, 607
T 588/93 - 3.3.02 31.01.96 ..............................131, 185 T 932/93 - 3.2.01 31.01.95 ......................................619
T 589/93 - 3.2.01 15.06.94 (OJ 1995, 387)...............517 T 937/93 - 3.2.04 04.03.97 ..............................424, 429
T 590/93 - 3.3.01 10.05.94 (OJ 1995, 337).......552, 554 T 943/93 - 3.4.01 03.08.94 ........................................68
T 597/93 - 3.2.02 17.02.97 ......................................148 T 954/93 - 3.3.03 06.02.97 ..............................440, 441
T 599/93 - 3.4.01 04.10.96 ........................................13 T 956/93 - 3.2.04 17.11.94 ......................................374

717
Table of cases

T 961/93 - 3.2.04 14.01.94 ......................................623 T 323/94 - 3.2.04 26.09.96 ......................................604

T 970/93 - 3.2.01 15.03.96 .............................426, 429, T 324/94 - 3.4.01 07.05.96 ..............................148, 150
433, 579 T 329/94 - 3.2.02 11.06.97 (OJ 1998, 241)..........21, 24,
T 972/93 - 3.4.02 16.06.94 ......................................500 25, 33
T 973/93 - 3.4.02 15.06.94 ......................................500 T 332/94 - 3.3.01 18.02.98 ......................................204
T 977/93 - 3.3.04 30.03.99 ........................................73 T 334/94 - 3.3.03 25.09.97 ..............................451, 452
T 986/93 - 3.2.01 25.04.95 (OJ 1996, 215)......607, 608, T 341/94 - 3.3.02 13.07.95 ......................................161
611 T 348/94 - 3.2.02 21.10.98 ................................55, 434
T 988/93 - 3.4.01 04.07.96 ......................................561 T 356/94 - 3.2.01 30.06.95 ..............................326, 400
T 989/93 - 3.3.01 16.04.97 ..............................122, 152 T 363/94 - 3.2.03 22.11.95 ......................................148
T 999/93 - 3.4.02 09.03.95 ..............................471, 524 T 372/94 - 3.3.01 14.08.96 ......................................619
T1016/93 - 3.2.01 23.03.95 ..............................393, 406 T 373/94 - 3.3.02 31.07.98 .............................125, 139,
T1022/93 - 3.3.01 05.10.95 ......................................589 164
T1027/93 - 3.4.02 11.11.94 ......................................150 T 378/94 - 3.2.04 19.03.96 ........................................68
T1039/93 - 3.5.02 08.02.96 ......................................251 T 382/94 - 3.4.02 17.04.97 (OJ 1998, 24)........235, 236,
T1040/93 - 3.2.04 16.05.95 ..............................122, 124 491
T1049/93 - 3.3.01 03.08.99 ......................................329 T 385/94 - 3.3.04 24.06.97 ......................................120
T1050/93 - 3.3.03 07.11.96 ......................................194 T 386/94 - 3.3.04 11.01.96 (OJ 1996, 658).......134, 178
T1052/93 - 3.3.01 10.01.96 ......................................295 T 387/94 - 3.3.04 07.03.97 ......................................136
T1056/93 - 3.2.01 16.01.96 ......................................292 T 397/94 - 3.4.02 05.04.95 ......................................655
T1062/93 - 3.3.02 30.04.97 ......................................130 T 401/94 - 3.3.03 18.08.94 ........................................90
T1072/93 - 3.3.03 18.09.97 ......................................598 T 405/94 - 3.4.02 12.07.95 ......................................324
T1074/93 - 3.3.04 15.12.98 ......................................131 T 406/94 - 3.3.05 17.12.97 ........................................97
T1076/93 - 3.4.02 16.02.95 ........................................61 T 412/94 - 3.3.01 05.06.96 ......................................168
T1077/93 - 3.3.02 30.05.96 .................................22, 29, T 414/94 - 3.4.02 14.05.98 ......................................329
30, 33, 34 T 426/94 - 3.3.02 22.05.96 ..............................195, 257
T1082/93 - 3.3.03 14.11.97 ......................................301 T 432/94 - 3.3.01 19.06.97 ......................................611
T 455/94 - 3.2.04 10.12.96 ..............................132, 607
1994 T 462/94 - 3.5.01 10.01.96 ......................................649
T 464/94 - 3.3.04 21.05.97 .................................68, 70,
T 2/94 - 3.4.01 04.02.98 ......................................136 303, 434, 438
T 20/94 - 3.3.01 04.11.98 ..............................214, 273 T 467/94 - 3.3.01 04.11.99 ......................................152
T 27/94 - 3.2.01 14.05.96 ......................................632 T 469/94 - 3.3.02 01.07.97 .................................26, 28,
T 34/94 - 3.4.02 22.03.94 ...............................64, 562, 32, 115
610 T 479/94 - 3.5.01 31.07.95 ......................................655
T 45/94 - 3.2.01 02.11.94 ......................................412 T 486/94 - 3.2.30 10.03.97 ......................................579
T 51/94 - 3.5.02 08.06.94 ..............................477, 660 T 488/94 - 3.4.02 02.07.97 ......................................416
T 61/94 - 3.5.01 12.10.95 ..............................189, 204 T 490/94 - 3.4.02 11.12.97 ......................................196
T 63/94 - 3.3.04 18.01.95 ......................................135 T 498/94 - 3.3.04 22.06.98 ......................................181
T 68/94 - 3.3.04 11.08.99 ......................................328 T 501/94 - 3.5.02 10.07.96 (OJ 1997, 376)...............402
T 69/94 - 3.3.02 18.06.96 ..............................126, 647 T 503/94 - 3.2.04 11.10.95 ......................................397
T 77/94 - 3.2.03 28.04.98 ........................................65 T 515/94 - 3.3.04 29.10.97 ......................................626
T 86/94 - 3.3.03 08.07.97 ......................................611 T 520/94 - 3.4.01 07.07.94 ......................................513
T 89/94 - 3.3.03 05.07.94 ..............................333, 656 T 522/94 - 3.2.05 22.09.97 (OJ 1998, 421)...............548
T 97/94 - 3.3.03 15.07.97 (OJ 1998, 467)......344, 400, T 529/94 - 3.3.02 09.10.97 ..............................338, 509
433 T 530/94 - 3.3.01 20.04.98 ......................................192
T 105/94 - 3.2.02 29.07.97 ......................................606 T 533/94 - 3.3.01 23.03.95 ......................................559
T 118/94 - 3.4.01 12.02.98 ......................................157 T 534/94 - 3.3.01 23.03.95 ......................................559
T 125/94 - 3.3.02 29.05.96 ......................................650 T 542/94 - 3.2.01 07.05.96 ......................................285
T 134/94 - 3.3.02 12.11.96 ..............................300, 301 T 544/94 - 3.3.02 22.01.97 ..............................156, 586
T 135/94 - 3.5.01 12.06.95 ......................................154 T 552/94 - 3.3.01 04.12.98 ......................................301
T 143/94 - 3.3.02 06.10.95 (OJ 1996, 430).......107, 111 T 557/94 - 3.2.05 12.12.96 ..............................487, 629
T 144/94 - 3.3.06 12.10.99 ......................................659 T 561/94 - 3.3.01 06.12.96 ......................................167
T 164/94 - 3.3.01 11.11.96 ......................................167 T 575/94 - 3.2.01 11.07.96 .............................424, 429,
T 189/94 - 3.2.01 12.01.95 ......................................263 648
T 200/94 - 3.3.01 23.10.97 ..............................132, 437 T 590/94 - 3.3.03 03.05.96 ...............................47, 140,
T 207/94 - 3.3.04 08.04.97 (OJ 1999, 273)......133, 134, 248, 548, 550, 600
137, 302 T 609/94 - 3.4.02 27.02.97 ......................................632
T 209/94 - 3.3.03 11.10.96 ........................................97 T 610/94 - 3.4.02 20.06.96 ......................................647
T 223/94 - 3.2.04 16.02.96 ..............................147, 149 T 619/94 - 3.2.02 12.12.95 ......................................158
T 226/94 - 3.4.01 20.03.96 ......................................149 T 620/94 - 3.5.02 13.06.95 ..............................293, 306
T 238/94 - 3.2.01 11.06.97 ......................................656 T 631/94 - 3.2.05 28.03.95 (OJ 1996, 67).........464, 547
T 239/94 - 3.5.01 15.09.95 ........................................82 T 635/94 - 3.2.03 25.04.95 ......................................388
T 240/94 - 3.5.01 04.12.96 ......................................647 T 641/94 - 3.2.01 01.02.96 ......................................586
T 259/94 - 3.3.01 11.08.98 ......................................401 T 645/94 - 3.3.05 22.10.97 ......................................161
T 270/94 - 3.3.01 22.01.98 ......................................539 T 648/94 - 3.3.01 26.10.94 ......................................636
T 284/94 - 3.4.01 25.11.98 (OJ 1999, 464)...............238 T 668/94 - 3.3.01 20.10.98 ......................................153
T 286/94 - 3.2.01 22.06.95 ......................................392 T 671/94 - 3.3.01 11.06.96 ......................................140
T 295/94 - 3.2.04 26.07.94 ......................................163 T 676/94 - 3.2.01 06.02.96 ................................49, 174
T 301/94 - 3.3.02 28.11.96 .................................56, 77, T 681/94 - 3.2.01 18.06.96 ......................................166
423 T 687/94 - 3.2.02 23.04.96 ..............................129, 148
T 309/94 - 3.3.03 19.03.97 ......................................513 T 697/94 - 3.4.01 28.04.97 ......................................163
T 311/94 - 3.3.01 28.06.94 ......................................519 T 698/94 - 3.3.03 17.02.97 ......................................468
T 312/94 - 3.4.01 04.09.97 ........................................67 T 712/94 - 3.2.03 14.11.96 ......................................582

718
 Table of cases

T 715/94 - 3.4.02 13.11.97 ......................................611 T 142/95 - 3.2.03 04.05.98 ......................................657

T 731/94 - 3.2.01 15.02.96 ......................................148 T 144/95 - 3.2.04 26.02.99 ..............................599, 600
T 740/94 - 3.2.03 09.05.96 ..............................575, 656 T 151/95 - 3.3.02 18.06.98 ......................................212
T 750/94 - 3.4.01 01.04.97 (OJ 1998, 032)..........64, 66, T 152/95 - 3.5.02 03.07.96 .............................557, 627,
430, 433, 513 647
T 751/94 - 3.4.03 12.05.99 ........................................98 T 154/95 - 3.2.01 27.01.98 ......................................569
T 752/94 - 3.3.01 24.05.00 ......................................188 T 156/95 - 3.3.01 30.03.98 ......................................152
T 772/94 - 3.5.01 20.03.96 ......................................122 T 159/95 - 3.3.01 19.04.00 ......................................257
T 780/94 - 3.5.01 24.10.96 ......................................131 T 165/95 - 3.5.02 07.07.97 ......................................635
T 792/94 - 3.2.05 11.10.00 ......................................238 T 172/95 - 3.3.03 05.03.98 ......................................296
T 794/94 - 3.3.04 17.09.98 ..............................572, 643 T 180/95 - 3.3.01 02.12.96 ......................................636
T 796/94 - 3.5.02 27.11.95 ......................................501 T 181/95 - 3.5.02 12.09.96 ..............................202, 203
T 804/94 - 3.2.01 10.07.95 ..............................324, 660 T 183/95 - 3.5.01 25.06.96 ......................................663
T 808/94 - 3.4.02 26.01.95 .............................333, 339, T 187/95 - 3.4.02 03.02.97 ..............................322, 513
517, 663 T 189/95 - 3.3.02 29.02.00 ......................................118
T 817/94 - 3.2.04 30.07.96 ..............................124, 160 T 193/95 - 3.4.01 26.11.98 ..............................301, 302
T 820/94 - 3.3.04 29.11.96 ......................................635 T 211/95 - 3.5.02 09.07.97 ......................................285
T 825/94 - 3.3.01 25.02.00 ......................................106 T 223/95 - 3.5.02 04.03.97 .............................399, 403,
T 826/94 - 3.4.02 30.11.95 ........................................84 533
T 828/94 - 3.5.01 18.10.96 ..............................377, 385 T 227/95 - 3.5.01 11.04.96 ..............................468, 660
T 833/94 - 3.5.01 20.08.98 ..............................439, 635 T 231/95 - 3.2.01 04.06.96 ......................................647
T 840/94 - 3.3.01 26.03.96 (OJ 1996, 680).......362, 364 T 236/95 - 3.2.01 16.07.96 ......................................264
T 848/94 - 3.3.03 03.06.97 ...............................64, 167, T 240/95 - 3.3.06 06.07.99 ........................................98
433 T 241/95 - 3.3.02 14.06.00 (OJ 2001, 103).........29, 198
T 853/94 - 3.3.02 02.11.98 ......................................106 T 252/95 - 3.3.02 21.08.98 ..............................389, 622
T 856/94 - 3.3.04 05.06.97 ......................................135 T 253/95 - 3.3.03 17.12.97 ......................................598
T 859/94 - 3.3.06 21.09.99 ..............................241, 260 T 272/95 - 3.3.04 15.04.99 (OJ 1999, 590).........40, 554
T 861/94 - 3.2.02 19.09.95 ......................................315 T 274/95 - 3.4.01 02.02.96 (OJ 1997, 99).........566, 609
T 871/94 - 3.2.04 24.10.96 ......................................124 T 277/95 - 3.3.04 16.04.99 ......................................296
T 873/94 - 3.4.01 10.07.96 (OJ 1997, 456)......266, 281, T 280/95 - 3.5.02 23.10.96 ......................................132
283 T 281/95 - 3.5.02 24.09.96 ......................................620
T 882/94 - 3.3.03 07.08.97 ......................................167 T 289/95 - 3.2.01 04.03.97 ......................................283
T 892/94 - 3.3.02 19.01.99 (OJ 2000, 1)...........118, 330 T 301/95 - 3.2.05 27.06.97 (OJ 1997, 519)...............553
T 905/94 - 3.2.03 11.06.96 ......................................431 T 317/95 - 3.3.02 26.02.99 ......................................109
T 912/94 - 3.4.01 06.05.97 ..............................127, 149 T 321/95 - 3.4.02 06.11.96 ......................................314
T 913/94 - 3.3.02 27.02.98 ......................................158 T 322/95 - 3.3.03 10.08.99 ..............................163, 390
T 917/94 - 3.3.06 28.10.99 ...............................84, 257, T 325/95 - 3.4.02 18.11.97 ......................................266
262 T 337/95 - 3.3.01 30.01.96 (OJ 1996, 628)...............186
T 921/94 - 3.3.01 30.10.98 ..............................323, 657 T 338/95 - 3.3.01 30.01.96 ......................................186
T 922/94 - 3.3.03 30.10.97 .............................575, 607, T 343/95 - 3.3.04 17.11.97 .............................311, 314,
608 433
T 930/94 - 3.3.01 15.10.97 ..............................120, 152 T 349/95 - 3.2.04 14.02.97 ......................................166
T 949/94 - 3.5.02 24.03.95 .............................361, 384, T 353/95 - 3.3.02 25.07.00 ......................................597
477 T 364/95 - 3.2.04 20.11.96 ......................................292
T 953/94 - 3.5.01 15.07.96 ..................................5, 169 T 373/95 - 3.3.02 06.12.96 ........................................74
T 958/94 - 3.3.02 30.09.96 (OJ 1997, 241)...............105 T 389/95 - 3.5.02 15.10.97 ......................................624
T 960/94 - 3.3.04 13.09.00 ..............................457, 656 T 396/95 - 3.3.02 17.09.96 ......................................264
T 977/94 - 3.2.01 18.12.97 ..............................205, 629 T 401/95 - 3.3.01 28.01.99 ..............................602, 645
T 982/94 - 3.4.02 16.09.97 ..............................256, 259 T 402/95 - 3.4.01 06.10.99 ......................................136
T 434/95 - 3.2.03 17.06.97 .............................148, 330,
1995 586
T 436/95 - 3.4.02 29.09.00 ......................................630
T 3/95 - 3.2.04 24.09.97 ..............................557, 622 T 442/95 - 3.3.04 26.09.96 ......................................510
T 7/95 - 3.5.01 23.07.96 ......................................536 T 446/95 - 3.2.02 23.03.99 ......................................547
T 9/95 - 3.5.02 09.04.97 ......................................579 T 460/95 - 3.5.01 20.10.97 (OJ 1998, 587)......311, 315,
T 27/95 - 3.2.03 25.06.96 ......................................608 316, 381, 382, 619, 651
T 32/95 - 3.5.02 28.10.96 ......................................437 T 463/95 - 3.5.02 29.01.97 ......................................571
T 35/95 - 3.2.04 01.10.96 ......................................124 T 476/95 - 3.2.01 20.06.96 ......................................457
T 68/95 - 3.3.01 23.09.97 ......................................128 T 480/95 - 3.4.02 05.11.96 ........................................61
T 70/95 - 3.3.04 12.01.99 ......................................123 T 481/95 - 3.4.02 15.05.97 ......................................605
T 72/95 - 3.3.05 18.03.98 .............................144, 149, T 482/95 - 3.3.03 28.08.95 ......................................203
150 T 487/95 - 3.2.04 07.08.97 ..............................122, 124
T 73/95 - 3.3.03 18.03.99 ......................................165 T 493/95 - 3.2.04 22.10.96 .............................366, 381,
T 78/95 - 3.3.04 27.09.96 ......................................634 621
T 86/95 - 3.2.02 09.09.97 ........................................55 T 494/95 - 3.2.04 30.06.97 ..............................537, 538
T 104/95 - 3.3.04 16.09.97 ......................................151 T 506/95 - 3.5.02 05.02.97 ......................................122
T 111/95 - 3.3.02 13.03.96 ..............................342, 343 T 530/95 - 3.3.04 10.06.97 ......................................137
T 112/95 - 3.2.01 19.02.98 ......................................243 T 531/95 - 3.2.01 26.08.97 ..............................161, 162
T 114/95 - 3.2.01 08.04.97 ......................................565 T 543/95 - 3.2.03 10.11.97 ..............................424, 425
T 119/95 - 3.2.01 13.01.98 ......................................645 T 556/95 - 3.5.01 08.08.96 (OJ 1997, 205)......333, 334,
T 121/95 - 3.4.01 03.02.98 ..............................513, 523 654
T 134/95 - 3.2.01 22.10.96 ......................................271 T 558/95 - 3.2.01 10.02.97 .............................423, 424,
T 136/95 - 3.2.01 25.02.97 (OJ 1998, 480)...............294 539, 544
T 138/95 - 3.3.04 12.10.99 ......................................107 T 576/95 - 3.2.03 15.04.97 ......................................127

719
Table of cases

T 582/95 - 3.2.01 28.01.97 ..............................535, 537 1996

T 583/95 - 3.2.03 22.12.97 ......................................602
T 585/95 - 3.2.01 10.12.96 ......................................582 T 24/96 - 3.2.04 04.03.99 ......................................572
T 589/95 - 3.3.03 05.11.98 ......................................149 T 29/96 - 3.2.04 16.09.97 ..............................582, 584
T 592/95 - 3.4.01 09.09.98 ......................................213 T 37/96 - 3.3.06 07.02.00 ........................................52
T 600/95 - 3.3.01 28.11.96 ........................................67 T 43/96 - 3.5.02 05.07.96 ......................................383
T 609/95 - 3.3.02 27.08.98 ......................................250 T 48/96 - 3.5.01 25.08.98 ................................65, 430
T 610/95 - 3.3.02 21.07.99 ...............................71, 154, T 59/96 - 3.3.01 07.04.99 ..............................122, 123
572, 573 T 64/96 - 3.2.01 30.09.97 ......................................243
T 611/95 - 3.2.05 13.07.99 ........................................51 T 65/96 - 3.3.03 18.03.98 ..............................100, 622
T 615/95 - 3.3.01 16.12.97 .............................241, 469, T 79/96 - 3.3.05 20.10.98 ........................................84
636 T 80/96 - 3.3.02 16.06.99 (OJ 2000, 50)...........85, 172
T 616/95 - 3.3.06 17.02.99 ......................................203 T 92/96 - 3.5.02 12.09.97 ......................................513
T 628/95 - 3.4.01 13.05.96 ......................................460 T 107/96 - 3.2.05 25.11.98 ......................................304
T 632/95 - 3.2.03 22.10.96 ......................................439 T 113/96 - 3.2.04 19.12.97 ......................................395
T 639/95 - 3.3.04 21.01.98 ..............................179, 180 T 115/96 - 3.2.04 25.02.97 ......................................149
T 645/95 - 3.3.05 25.02.99 ......................................257 T 120/96 - 3.2.03 06.02.97 ..............................324, 540
T 665/95 - 3.2.03 01.03.99 ......................................430 T 135/96 - 3.2.01 20.01.97 ..............................469, 628
T 670/95 - 3.3.05 09.06.98 ..............................541, 597 T 142/96 - 3.2.02 14.04.99 .............................616, 636,
T 671/95 - 3.3.03 15.01.96 ......................................655 637
T 681/95 - 3.4.02 02.11.95 ......................................374 T 158/96 - 3.3.02 28.10.98 ........................................67
T 693/95 - 3.2.03 23.10.00 .............................335, 341, T 161/96 - 3.3.04 03.11.97 (OJ 1999, 331)......311, 315,
586 317, 477
T 706/95 - 3.3.05 22.05.00 ......................................118 T 165/96 - 3.3.06 30.05.00 ..................................52, 58
T 708/95 - 3.4.02 16.12.96 ......................................624 T 167/96 - 3.5.02 16.05.97 ......................................652
T 715/95 - 3.3.06 19.12.00 ......................................592 T 169/96 - 3.3.01 30.07.96 ..............................216, 230
T 717/95 - 3.2.04 23.04.98 ......................................579 T 173/96 - 3.3.02 16.01.98 ......................................194
T 727/95 - 3.3.04 21.05.99 (OJ 2001, 1)...........179, 438 T 181/96 - 3.4.02 12.02.97 ..............................196, 197
T 736/95 - 3.3.04 09.10.00 (OJ 2001, 191)...............567 T 191/96 - 3.2.01 02.04.98 ......................................624
T 739/95 - 3.2.04 26.06.97 ......................................124 T 194/96 - 3.3.02 10.10.96 ......................................337
T 749/95 - 3.4.02 16.07.97 ......................................213 T 218/96 - 3.2.03 15.09.98 ......................................157
T 752/95 - 3.2.03 22.06.99 ......................................561 T 223/96 - 3.3.04 29.01.99 ......................................211
T 767/95 - 3.3.04 05.09.00 ........................................89 T 225/96 - 3.2.03 03.04.98 ..............................471, 660
T 772/95 - 3.2.01 30.09.97 ......................................585 T 233/96 - 3.3.02 04.05.00 ......................................108
T 786/95 - 3.2.04 13.10.97 ......................................559 T 234/96 - 3.2.05 04.12.97 ..............................141, 160
T 789/95 - 3.4.02 13.03.97 ......................................534 T 237/96 - 3.4.02 22.04.98 .............................332, 508,
T 792/95 - 3.2.01 05.08.97 ......................................574 523, 524, 611
T 794/95 - 3.4.02 07.07.97 ..............................636, 664 T 239/96 - 3.5.01 23.10.98 ......................................604
T 795/95 - 3.2.01 06.10.98 ......................................269 T 243/96 - 3.2.02 25.05.98 ........................................55
T 798/95 - 3.3.01 06.12.95 ..............................464, 528 T 262/96 - 3.3.05 25.08.99 ........................................85
T 804/95 - 3.3.01 04.12.97 ......................................388 T 276/96 - 3.4.02 17.06.97 ......................................272
T 809/95 - 3.2.01 29.04.97 .................................57, 62, T 284/96 - 3.3.01 20.07.99 ..............................127, 161
299, 300 T 296/96 - 3.3.01 12.01.00 .............................239, 316,
T 838/95 - 3.3.02 09.12.99 ......................................139 324
T 839/95 - 3.3.05 23.06.98 ......................................519 T 319/96 - 3.2.03 11.12.98 ..............................232, 511
T 841/95 - 3.4.02 13.06.96 ......................................192 T 339/96 - 3.5.02 21.10.98 ......................................129
T 849/95 - 3.2.02 15.12.98 ......................................587 T 349/96 - 3.2.05 22.09.98 ......................................141
T 850/95 - 3.3.02 12.07.96 (OJ 1997, 152)......471, 472, T 366/96 - 3.3.06 17.02.00 ........................................90
657 T 367/96 - 3.4.02 03.12.97 ..............................473, 575
T 860/95 - 3.3.05 27.10.99 ......................................199 T 373/96 - 3.2.02 25.05.00 ......................................421
T 870/95 - 3.4.02 14.07.98 ........................................84 T 379/96 - 3.3.02 13.01.99 ......................................138
T 881/95 - 3.2.01 25.06.97 ..............................177, 342 T 382/96 - 3.3.03 07.07.99 ......................................415
T 897/95 - 3.4.03 22.02.00 ......................................148 T 395/96 - 3.3.06 11.06.99 ......................................157
T 900/95 - 3.5.02 05.11.97 ......................................162 T 405/96 - 3.2.01 08.11.96 ......................................654
T 901/95 - 3.5.02 29.10.98 ................................65, 395 T 410/96 - 3.5.01 25.07.97 ......................................192
T 908/95 - 3.2.01 21.07.97 ......................................600 T 429/96 - 3.3.04 31.05.01 ......................................174
T 915/95 - 3.3.03 23.11.99 ......................................257 T 452/96 - 3.3.02 05.04.00 ..............................161, 344
T 917/95 - 3.2.04 01.08.01 ..............................332, 339 T 458/96 - 3.4.02 07.10.98 ......................................207
T 919/95 - 3.2.02 16.01.97 ......................................636 T 475/96 - 3.3.03 15.06.99 ......................................390
T 923/95 - 3.2.02 12.11.96 ..............................311, 316 T 476/96 - 3.3.03 29.04.99 ......................................344
T 931/95 - 3.5.01 08.09.00 (OJ 2001, 441).............. 1-3, T 477/96 - 3.4.03 25.07.00 ......................................141
14-16, 127, 141-143 T 481/96 - 3.4.02 16.09.96 ......................................635
T 938/95 - 3.2.01 06.03.97 ......................................241 T 488/96 - 3.3.01 07.12.99 ......................................189
T 939/95 - 3.5.01 23.01.98 (OJ 1998, 481)......637, 650, T 503/96 - 3.5.02 12.01.99 ......................................576
663 T 505/96 - 3.5.01 15.12.98 ......................................160
T 960/95 - 3.3.03 31.03.99 .............................167, 415, T 522/96 - 3.2.01 07.05.98 ......................................262
548, 551 T 528/96 - 3.5.01 18.11.98 ..............................335, 336
T 971/95 - 3.4.03 15.09.00 ......................................122 T 532/96 - 3.3.03 13.07.99 ......................................106
T 980/95 - 3.3.03 18.02.98 ......................................203 T 541/96 - 3.4.01 07.03.01 ..............................169, 185
T 989/95 - 3.3.04 06.05.99 ......................................199 T 542/96 - 3.3.02 11.05.00 ......................................112
T1002/95 - 3.2.01 10.02.98 ......................................602 T 549/96 - 3.3.01 09.03.99 ..............................332, 416
T1007/95 - 3.3.03 17.11.98 (OJ 1999, 733)...............624 T 556/96 - 3.2.02 24.03.00 ......................................584
T 561/96 - 3.4.02 16.01.97 ......................................175
T 570/96 - 3.3.03 20.08.98 ......................................645

720
 Table of cases

T 574/96 - 3.3.01 30.07.99 ......................................188 T 15/97 - 3.3.01 08.11.00 ......................................149

T 596/96 - 3.3.02 14.12.99 ...............................256-258 T 17/97 - 3.3.01 14.11.00 .............................645, 646,
T 608/96 - 3.3.01 11.07.00 ................................80, 257 659
T 610/96 - 3.5.02 10.11.98 ........................................97 T 25/97 - 3.2.01 19.07.00 ......................................155
T 624/96 - 3.4.02 06.02.97 ..............................362, 381 T 27/97 - 3.5.01 30.05.00 ................................17, 144
T 626/96 - 3.2.01 10.01.97 ..............................163, 165 T 36/97 - 3.2.03 23.10.01 ......................................377
T 637/96 - 3.2.04 27.11.97 ......................................602 T 37/97 - 3.3.05 22.11.99 ......................................341
T 643/96 - 3.3.01 14.10.96 .............................152, 305, T 40/97 - 3.2.01 01.12.98 ......................................238
323 T 41/97 - 3.2.01 15.04.98 ..............................637, 653
T 648/96 - 3.5.02 16.03.98 .............................570, 575, T 43/97 - 3.4.01 10.10.01 ......................................155
641, 657 T 56/97 - 3.3.02 30.08.01 ..............................109, 110
T 656/96 - 3.2.03 21.06.99 ......................................538 T 59/97 - 3.2.04 24.07.98 ......................................212
T 674/96 - 3.3.02 29.04.99 ..............................178, 572 T 63/97 - 3.2.04 01.12.97 ......................................131
T 686/96 - 3.3.05 06.05.99 ........................................84 T 65/97 - 3.2.04 15.06.00 ..............................257, 421
T 697/96 - 3.3.02 07.10.99 ......................................154 T 66/97 - 3.4.02 09.01.98 ......................................123
T 708/96 - 3.5.01 14.11.97 ......................................123 T 77/97 - 3.3.01 03.07.97 ..............................292, 298
T 711/96 - 3.2.04 17.06.98 ......................................148 T 83/97 - 3.3.04 16.03.99 ......................................628
T 717/96 - 3.2.04 10.07.97 ......................................149 T 100/97 - 3.2.05 16.06.00 ......................................433
T 718/96 - 3.2.01 30.06.98 ......................................170 T 103/97 - 3.4.02 06.11.98 ......................................535
T 730/96 - 3.3.01 19.10.99 .............................121, 122, T 106/97 - 3.2.03 16.09.99 ......................................401
168 T 123/97 - 3.2.01 10.09.98 ......................................163
T 737/96 - 3.3.04 09.03.00 ......................................134 T 142/97 - 3.4.01 02.12.99 (OJ 2000, 358).......428, 657
T 740/96 - 3.2.06 26.10.00 ......................................211 T 153/97 - 3.3.02 02.12.98 ......................................126
T 742/96 - 3.2.05 09.06.97 (OJ 1997, 533)...............315 T 157/97 - 3.3.05 18.03.98 ..............................144, 150
T 750/96 - 3.4.03 27.11.01 ......................................196 T 158/97 - 3.3.05 04.04.00 ..............................143, 150
T 755/96 - 3.3.01 06.08.99 (OJ 2000, 174).......344, 658 T 162/97 - 3.2.04 30.06.99 ......................................624
T 785/96 - 3.3.03 18.04.00 ......................................400 T 167/97 - 3.2.02 16.11.98 (OJ 1999, 488)...............366
T 789/96 - 3.4.01 23.08.01 (OJ 2002, 364).................22 T 170/97 - 3.2.04 23.02.98 ......................................131
T 791/96 - 3.3.04 15.11.99 ......................................137 T 176/97 - 3.3.05 18.03.98 ..............................144, 150
T 819/96 - 3.3.01 02.02.99 ..............................168, 347 T 186/97 - 3.4.02 15.09.97 ......................................374
T 821/96 - 3.3.01 25.04.01 ......................................324 T 188/97 - 3.3.04 08.02.01 .............................295, 301,
T 823/96 - 3.3.01 28.01.97 .............................261, 262, 599
299 T 191/97 - 3.3.03 03.02.99 ......................................168
T 850/96 - 3.2.03 14.01.98 ..............................415, 447 T 202/97 - 3.5.02 10.02.99 ........................................62
T 855/96 - 3.3.05 10.11.99 ..............................391, 611 T 212/97 - 3.5.02 08.06.99 .............................346, 347,
T 863/96 - 3.3.02 04.02.99 ..............................256, 258 431, 472, 556, 561
T 867/96 - 3.3.02 21.06.00 ......................................473 T 223/97 - 3.2.01 03.11.98 ......................................572
T 869/96 - 3.2.03 10.11.98 ......................................147 T 227/97 - 3.3.04 09.10.98 (OJ 1999, 495).......182, 371
T 870/96 - 3.4.02 16.07.98 ..............................123, 124 T 231/97 - 3.3.01 21.03.00 ......................................166
T 886/96 - 3.2.06 06.07.01 ......................................600 T 255/97 - 3.3.05 12.05.00 ......................................163
T 890/96 - 3.3.06 09.09.99 ......................................434 T 258/97 - 3.5.01 08.02.02 ......................................144
T 893/96 - 3.3.03 18.08.99 ......................................257 T 265/97 - 3.4.01 04.05.01 ......................................196
T 898/96 - 3.4.01 10.01.97 .............................623, 656, T 266/97 - 3.2.03 22.06.98 ......................................619
664 T 270/97 - 3.3.02 20.12.99 ........................................86
T 936/96 - 3.3.05 11.06.99 ......................................166 T 276/97 - 3.5.02 26.02.99 ......................................283
T 946/96 - 3.3.01 23.06.97 ......................................514 T 283/97 - 3.5.01 19.10.00 ......................................621
T 947/96 - 3.4.03 07.12.99 ......................................262 T 287/97 - 3.3.03 12.09.00 ..............................208, 209
T 957/96 - 3.3.01 28.01.97 ......................................228 T 291/97 - 3.3.04 08.05.01 ......................................435
T 961/96 - 3.3.01 10.02.00 ......................................125 T 298/97 - 3.3.06 28.05.01 (OJ 2002, 83)........337, 597,
T 986/96 - 3.4.01 10.08.00 ..............................128, 136 615, 616
T 989/96 - 3.2.06 05.07.01 ......................................600 T 313/97 - 3.3.01 17.02.00 ......................................128
T 990/96 - 3.3.01 12.02.98 (OJ 1998, 489)...........94, 95 T 315/97 - 3.4.02 17.12.98 (OJ 1999, 554)...............603
T1003/96 - 3.2.03 06.02.01 ......................................438 T 323/97 - 3.3.06 17.09.01 (OJ 2002, 476)......194, 258,
T1004/96 - 3.2.04 17.10.97 ......................................657 259
T1008/96 - 3.2.03 25.06.03 ......................................289 T 325/97 - 3.3.02 10.02.00 ..............................125, 127
T1018/96 - 3.2.03 28.10.98 ......................................147 T 355/97 - 3.3.01 05.07.00 .............................127, 168,
T1028/96 - 3.2.01 15.09.99 (OJ 2000, 475)...............461 438
T1029/96 - 3.3.01 21.08.01 ........................................65 T 382/97 - 3.3.06 28.09.00 .............................570, 640,
T1032/96 - 3.3.03 26.05.00 ......................................648 641, 648
T1051/96 - 3.3.04 13.07.99 ......................................520 T 385/97 - 3.3.02 11.10.00 ..............................323, 610
T1060/96 - 3.2.03 26.01.99 ......................................404 T 392/97 - 3.2.01 20.04.99 .............................342, 547,
T1062/96 - 3.3.01 11.12.97 ..............................374, 384 599
T1066/96 - 3.4.02 08.07.99 ......................................524 T 396/97 - 3.3.02 15.11.00 ......................................642
T1069/96 - 3.2.01 10.05.00 ......................................557 T 409/97 - 3.2.04 25.11.98 ......................................205
T1070/96 - 3.2.02 13.01.00 ..............................403, 608 T 425/97 - 3.3.02 08.05.98 .............................333, 466,
T1073/96 - 3.3.02 01.09.99 ......................................118 472, 660
T1105/96 - 3.4.01 09.07.97 (OJ 1998, 249).......415, 509 T 426/97 - 3.3.05 14.12.99 ......................................391
T1109/96 - 3.3.03 18.02.99 ......................................232 T 438/97 - 3.2.03 09.02.99 ......................................140
T 443/97 - 3.2.04 17.09.99 ......................................510
1997 T 445/97 - 3.3.01 01.04.98 ......................................620
T 450/97 - 3.3.02 05.02.98 (OJ 1999, 67).................251
T 1/97 - 3.2.01 30.03.99 ......................................619 T 465/97 - 3.3.07 14.03.01 ......................................185
T 10/97 - 3.4.02 07.10.99 ......................................244 T 479/97 - 3.3.04 06.09.01 ..............................295, 296
T 13/97 - 3.4.02 22.11.99 ..............................257, 258 T 497/97 - 3.2.02 25.07.97 ......................................247

721
Table of cases

T 500/97 - 3.2.02 15.01.01 ......................................621 T 998/97 - 3.3.02 11.07.01 ......................................185

T 517/97 - 3.2.05 25.10.99 (OJ 2000, 515)...............600 T1046/97 - 3.3.01 02.12.99 ........................................93
T 524/97 - 3.3.01 16.05.00 ......................................167 T1051/97 - 3.3.02 19.05.98 ......................................127
T 541/97 - 3.2.04 21.04.99 .............................183, 186, T1067/97 - 3.4.02 04.10.00 ......................................240
257 T1070/97 - 3.3.05 04.03.99 ......................................388
T 550/97 - 3.5.01 21.09.99 ......................................162 T1071/97 - 3.3.02 17.08.00 ..............................256, 640
T 552/97 - 3.5.02 04.11.97 .............................333, 415, T1074/97 - 3.3.01 20.03.03 ......................................213
652 T1100/97 - 3.2.05 08.05.98 ......................................619
T 568/97 - 3.3.02 21.02.02 ..............................196, 204 T1126/97 - 3.4.01 13.12.01 ..............................642, 643
T 577/97 - 3.3.05 05.04.00 .............................391, 641, T1129/97 - 3.3.01 26.10.00 (OJ 2001, 273).......187, 209
645 T1137/97 - 3.3.04 14.10.02 ...............................53, 583,
T 584/97 - 3.3.02 05.12.01 ..............................109, 110 597
T 586/97 - 3.3.01 14.09.00 ..............................186, 204 T1148/97 - 3.2.01 09.12.99 ......................................644
T 594/97 - 3.2.04 12.10.01 ......................................604 T1149/97 - 3.4.02 07.05.99 (OJ 2000, 259)......267, 268,
T 596/97 - 3.2.04 10.06.98 ......................................200 276
T 611/97 - 3.5.02 19.05.99 ........................................64 T1150/97 - 3.3.02 06.09.00 ......................................640
T 613/97 - 3.3.01 26.05.98 ......................................615 T1164/97 - 3.3.02 22.03.01 ......................................212
T 623/97 - 3.5.01 11.04.02 ......................................161 T1165/97 - 3.2.06 15.02.00 ................................27, 172
T 631/97 - 3.4.03 17.02.00 (OJ 2001, 13).........232, 511 T1167/97 - 3.2.01 17.11.99 ......................................189
T 633/97 - 3.4.02 19.07.00 ..............................391, 643 T1171/97 - 3.5.01 17.09.99 ......................................583
T 636/97 - 3.3.04 26.03.98 ......................................630 T1173/97 - 3.5.01 01.07.98 (OJ 1999, 609)......2, 5, 6, 8,
T 641/97 - 3.3.01 17.10.00 ......................................152 14, 16, 141, 142, 487
T 642/97 - 3.3.07 15.02.01 ..............................346, 662 T1177/97 - 3.5.01 09.07.02 .................................7, 142,
T 644/97 - 3.3.03 22.04.99 .............................123, 128, 145, 146
622 T1180/97 - 3.2.01 19.10.99 ..............................548, 565
T 647/97 - 3.3.02 01.02.01 ......................................297 T1191/97 - 3.2.04 10.04.00 ......................................429
T 649/97 - 3.2.05 08.12.00 ......................................199 T1194/97 - 3.5.02 15.03.00 (OJ 2000, 525)........7, 8, 13,
T 652/97 - 3.2.03 16.06.99 ..............................469, 470 145
T 666/97 - 3.3.03 01.10.99 ......................................268 T1198/97 - 3.3.05 05.03.01 .............................327, 347,
T 679/97 - 3.2.03 04.01.99 ......................................628 595, 652
T 686/97 - 3.3.03 12.05.98 ......................................377 T1203/97 - 3.2.03 09.05.00 ......................................122
T 701/97 - 3.3.05 23.08.01 ..............................283, 284 T1208/97 - 3.3.04 03.11.00 ..............................207, 208
T 702/97 - 3.3.05 28.03.01 ......................................597 T1212/97 - 3.3.04 14.05.01 ........................................54
T 710/97 - 3.4.02 25.10.00 ......................................122 T1221/97 - 3.4.02 13.10.98 ......................................283
T 712/97 - 3.3.01 27.01.00 ..............................344, 654 T1225/97 - 3.5.01 06.11.98 ......................................528
T 713/97 - 3.3.01 18.02.98 ......................................125
T 714/97 - 3.3.03 27.06.00 ......................................120 1998
T 747/97 - 3.3.03 01.02.00 ......................................128
T 774/97 - 3.2.04 17.11.98 ......................................535 T 4/98 - 3.3.02 09.08.01 (OJ 2002, 139).......107, 653
T 775/97 - 3.2.02 03.04.01 ..................................33, 34 T 26/98 - 3.4.01 30.04.02 ..............................135, 139
T 777/97 - 3.2.02 16.03.98 ..............................471, 478 T 27/98 - 3.4.01 07.05.99 ......................................388
T 784/97 - 3.2.03 16.06.00 ......................................265 T 45/98 - 3.2.02 06.06.00 ......................................592
T 792/97 - 3.3.03 09.09.99 ......................................123 T 51/98 - 3.3.01 24.07.01 ......................................154
T 793/97 - 3.3.01 01.03.00 ..............................125, 162 T 68/98 - 3.3.03 10.05.00 ......................................391
T 799/97 - 3.2.03 04.07.01 ..............................541, 597 T 70/98 - 3.3.06 15.11.01 ......................................331
T 802/97 - 3.4.02 24.07.98 .............................506, 514, T 71/98 - 3.3.05 21.12.99 ......................................161
515 T 80/98 - 3.2.04 26.09.00 ......................................287
T 805/97 - 3.2.04 13.01.00 ......................................154 T 91/98 - 3.3.04 29.05.01 ..............................133, 431
T 818/97 - 3.2.03 26.05.99 ......................................173 T 97/98 - 3.3.05 21.05.01 (OJ 2002, 183)...............619
T 838/97 - 3.3.04 14.11.00 ..................................57, 63 T 111/98 - 3.3.05 10.07.01 ..............................403, 628
T 859/97 - 3.4.03 02.03.01 ......................................658 T 128/98 - 3.2.04 15.03.00 ......................................608
T 864/97 - 3.5.01 14.06.00 ..............................390, 391 T 135/98 - 3.3.02 20.11.02 ..............................388, 395
T 885/97 - 3.2.04 03.12.98 ......................................132 T 149/98 - 3.3.04 15.01.03 ......................................192
T 887/97 - 3.3.02 28.11.00 ......................................250 T 177/98 - 3.2.04 09.11.99 ......................................658
T 899/97 - 3.3.05 28.11.01 ......................................452 T 191/98 - 3.2.06 04.03.03 ......................................330
T 903/97 - 3.4.02 31.01.01 ......................................298 T 201/98 - 3.5.01 27.07.99 ......................................324
T 904/97 - 3.4.02 21.10.99 ......................................286 T 203/98 - 3.5.01 27.07.99 ......................................189
T 906/97 - 3.4.02 10.06.99 ..............................239, 248 T 210/98 - 3.3.03 19.12.00 ......................................588
T 909/97 - 3.3.07 13.06.02 ......................................298 T 226/98 - 3.3.01 07.02.01 ......................................187
T 919/97 - 3.3.01 29.01.98 ........................................64 T 228/98 - 3.3.03 04.04.01 ......................................263
T 920/97 - 3.3.04 19.12.00 ......................................615 T 238/98 - 3.3.05 07.05.03 ......................................212
T 931/97 - 3.2.06 08.01.01 ......................................581 T 241/98 - 3.2.04 22.03.99 ......................................461
T 934/97 - 3.2.02 06.06.01 ......................................258 T 247/98 - 3.3.05 17.06.99 .............................437, 439,
T 935/97 - 3.5.01 04.02.99 ..................................5, 141 485, 486
T 937/97 - 3.5.01 28.10.98 ......................................477 T 249/98 - 3.2.01 11.01.00 ......................................561
T 948/97 - 3.4.01 09.01.02 ......................................291 T 254/98 - 3.2.06 26.09.00 ..............................433, 437
T 950/97 - 3.4.03 26.03.02 ..............................192, 213 T 268/98 - 3.3.05 16.05.01 ......................................159
T 951/97 - 3.4.01 05.12.97 (OJ 1998, 440)......326, 345, T 274/98 - 3.3.01 05.02.02 ......................................187
466, 509 T 287/98 - 3.3.06 05.12.00 ......................................237
T 967/97 - 3.5.01 25.10.01 ......................................121 T 319/98 - 3.3.01 19.02.02 ......................................118
T 970/97 - 3.3.05 20.09.00 ......................................163 T 338/98 - 3.4.02 02.03.99 ......................................380
T 976/97 - 3.3.03 16.08.00 ..............................332, 482 T 342/98 - 3.3.04 20.11.01 ......................................295
T 986/97 - 3.2.04 25.02.00 ......................................189 T 351/98 - 3.3.04 15.01.02 ......................................259
T 994/97 - 3.3.06 24.08.01 ......................................604 T 376/98 - 3.2.01 09.03.99 ......................................327

722
 Table of cases

T 400/98 - 3.3.06 19.09.02 ..............................128, 160 T1022/98 - 3.3.05 10.11.99 ......................................324

T 406/98 - 3.2.03 26.09.00 ......................................147 T1041/98 - 3.2.02 22.10.01 ......................................199
T 411/98 - 3.2.04 11.01.00 ........................................67 T1043/98 - 3.2.01 11.05.00 ..............................140, 141
T 414/98 - 3.2.04 30.11.99 .............................131, 132, T1053/98 - 3.5.01 22.10.99 ..............................127, 146
149 T1055/98 - 3.3.05 04.04.01 ......................................183
T 425/98 - 3.3.01 12.03.02 ......................................187 T1056/98 - 3.2.01 02.02.00 ......................................540
T 428/98 - 3.3.05 23.02.01 (OJ 2001, 494)......311, 313, T1059/98 - 3.2.01 19.02.02 ......................................592
363, 365, 374, 375, 377, 429 T1097/98 - 3.2.01 02.02.00 ......................................557
T 432/98 - 3.3.02 28.11.01 ......................................160 T1105/98 - 3.2.01 19.09.00 .............................345, 644,
T 437/98 - 3.3.08 29.01.03 ..............................186, 205 645
T 438/98 - 3.3.03 12.10.00 ......................................276 T1130/98 - 3.2.01 12.07.99 ......................................412
T 445/98 - 3.2.01 10.07.00 .............................317, 621, T1146/98 - 3.2.03 20.09.01 ......................................258
651
T 464/98 - 3.3.05 12.09.00 ......................................124 1999
T 471/98 - 3.4.01 02.07.02 ......................................149
T 473/98 - 3.5.02 05.09.00 (OJ 2001, 231)......469, 618, T 5/99 - 3.2.01 16.05.00 ......................................183
629 T 24/99 - 3.3.03 05.12.02 ......................................641
T 480/98 - 3.2.04 28.04.99 ..............................187, 195 T 35/99 - 3.2.02 29.09.99 (OJ 2000, 447).................33
T 484/98 - 3.3.04 13.09.99 ......................................196 T 42/99 - 3.4.01 21.01.04 ......................................589
T 502/98 - 3.3.06 07.06.02 ......................................389 T 43/99 - 3.3.03 29.01.01 ......................................256
T 513/98 - 3.5.02 07.07.00 ..........................................6 T 49/99 - 3.5.01 05.03.02 .................................6, 210,
T 515/98 - 3.2.04 14.09.99 ........................................78 620
T 517/98 - 3.3.05 17.01.02 (OJ 2003, 385)...............176 T 52/99 - 3.3.02 22.08.00 ......................................642
T 534/98 - 3.2.03 01.07.99 ..............................557, 559 T 60/99 - 3.2.04 26.04.01 ........................................69
T 541/98 - 3.5.01 10.02.00 ......................................403 T 71/99 - 3.4.02 20.06.01 ......................................427
T 552/98 - 3.3.03 07.11.00 ......................................400 T 76/99 - 3.4.02 09.10.01 ......................................604
T 564/98 - 3.2.01 06.06.00 ......................................421 T 79/99 - 3.3.02 03.12.99 ......................................352
T 587/98 - 3.5.02 12.05.00 (OJ 2000, 497).......281, 288 T 91/99 - 3.3.02 24.01.03 ..............................584, 586
T 590/98 - 3.3.02 30.04.03 ......................................604 T 119/99 - 3.3.06 25.05.00 ......................................486
T 621/98 - 3.5.01 18.06.99 ......................................452 T 131/99 - 3.4.02 19.07.01 ......................................305
T 656/98 - 3.3.04 18.05.01 ......................................598 T 151/99 - 3.5.01 24.10.01 ................................63, 434
T 685/98 - 3.5.02 21.09.98 (OJ 1999, 346)......325, 518, T 168/99 - 3.5.01 12.12.00 ..............................421, 422
637, 664 T 172/99 - 3.3.03 07.03.02 ......................................175
T 687/98 - 3.3.03 11.01.01 ......................................203 T 190/99 - 3.2.04 06.03.01 ..............................205, 250
T 690/98 - 3.2.01 22.06.99 ......................................610 T 194/99 - 3.4.01 07.05.04 ......................................188
T 693/98 - 3.2.01 25.04.02 ......................................608 T 201/99 - 3.3.06 10.09.04 .............................195, 255,
T 713/98 - 3.3.03 17.01.02 ..............................183, 184 297
T 717/98 - 3.3.06 04.11.02 ......................................207 T 231/99 - 3.2.04 31.08.00 .............................347, 613,
T 718/98 - 3.3.06 26.11.02 ......................................393 662
T 728/98 - 3.3.01 12.05.00 (OJ 2001, 319)........94, 186, T 240/99 - 3.2.03 12.12.02 ......................................604
187, 199, 212, 263 T 241/99 - 3.5.02 06.12.01 ................................66, 561
T 733/98 - 3.4.03 14.12.99 ..............................382, 624 T 263/99 - 3.2.02 20.06.00 ......................................122
T 740/98 - 3.3.01 09.11.04 ......................................320 T 264/99 - 3.2.01 14.11.00 ......................................248
T 745/98 - 3.3.06 27.09.02 ......................................389 T 275/99 - 3.3.02 25.07.00 ..............................514, 629
T 748/98 - 3.3.04 23.05.01 ......................................212 T 276/99 - 3.5.01 26.09.01 ..............................174, 700
T 777/98 - 3.3.07 30.03.01 ......................................386 T 304/99 - 3.2.01 07.05.01 ......................................633
T 778/98 - 3.3.03 07.08.00 ..............................322, 655 T 308/99 - 3.3.02 02.06.03 ......................................160
T 828/98 - 3.2.04 28.03.00 ......................................550 T 314/99 - 3.3.03 21.06.01 ...............................53, 129,
T 862/98 - 3.4.02 17.08.99 ..............................328, 458 430
T 869/98 - 3.3.06 09.05.00 ......................................629 T 317/99 - 3.3.02 06.02.02 ......................................205
T 872/98 - 3.2.01 26.10.99 ......................................162 T 323/99 - 3.3.01 17.10.01 ......................................161
T 875/98 - 3.3.03 26.10.01 ......................................660 T 329/99 - 3.3.06 05.04.01 ......................................262
T 877/98 - 3.2.03 05.10.00 ........................................52 T 363/99 - 3.3.02 19.04.04 ......................................187
T 881/98 - 3.4.01 23.05.00 ......................................382 T 372/99 - 3.2.05 17.11.00 ......................................650
T 887/98 - 3.2.04 19.07.00 ......................................629 T 410/99 - 3.3.06 20.01.03 ........................................70
T 892/98 - 3.5.01 23.03.00 ..............................390, 391 T 427/99 - 3.3.01 15.11.01 ......................................642
T 910/98 - 3.2.02 30.10.01 ......................................116 T 433/99 - 3.2.02 24.11.00 ......................................200
T 911/98 - 3.5.01 09.04.03 ......................................161 T 438/99 - 3.5.02 24.01.02 ......................................280
T 914/98 - 3.2.01 22.09.00 ..............................538, 628 T 468/99 - 3.3.06 16.05.03 ..............................388, 642
T 915/98 - 3.5.01 17.05.00 ......................................629 T 478/99 - 3.2.04 07.12.00 ................................60, 597
T 925/98 - 3.2.03 13.03.01 ......................................262 T 481/99 - 3.2.06 21.06.02 ......................................398
T 927/98 - 3.2.04 09.07.99 ......................................561 T 484/99 - 3.3.03 25.07.00 ......................................345
T 928/98 - 3.2.06 08.11.00 ......................................347 T 485/99 - 3.3.02 29.04.04 ..............................109, 110
T 937/98 - 3.4.01 04.02.03 ......................................641 T 491/99 - 3.2.01 24.10.00 ........................................82
T 939/98 - 3.3.03 17.01.02 ......................................199 T 537/99 - 3.3.01 13.01.05 ......................................642
T 942/98 - 3.3.01 13.02.01 ..............................153, 241 T 543/99 - 3.3.06 24.10.00 ..............................554, 650
T 954/98 - 3.5.01 09.12.99 ..............................352, 461 T 553/99 - 3.2.01 21.02.01 ......................................276
T 962/98 - 3.3.01 15.01.04 ......................................262 T 588/99 - 3.3.06 27.03.03 ......................................160
T 965/98 - 3.3.04 26.08.99 ......................................473 T 592/99 - 3.3.02 01.08.02 ......................................245
T 985/98 - 3.2.04 21.10.04 ......................................166 T 596/99 - 3.3.03 05.12.01 ......................................438
T1001/98 - 3.4.02 10.09.03 ........................................48 T 598/99 - 3.4.03 17.12.02 ......................................602
T1012/98 - 3.3.03 27.06.01 ......................................188 T 609/99 - 3.5.02 13.11.01 ......................................391
T1017/98 - 3.2.06 18.06.01 ......................................192 T 613/99 - 3.2.01 30.08.99 ......................................510
T1020/98 - 3.3.01 27.06.03 (OJ 2003, 533).......188, 200 T 620/99 - 3.3.04 08.05.03 ......................................212

723
Table of cases

T 647/99 - 3.3.02 04.04.00 ......................................654 T 268/00 - 3.3.01 16.12.03 ..............................152, 515

T 653/99 - 3.3.04 18.09.02 ......................................556 T 269/00 - 3.5.01 16.03.05 ......................................657
T 663/99 - 3.2.01 06.02.01 ......................................324 T 270/00 - 3.5.01 18.09.01 ......................................411
T 668/99 - 3.2.03 14.09.04 ..............................591, 593 T 278/00 - 3.3.01 11.02.03 (OJ 2003, 546)......469, 470,
T 686/99 - 3.3.01 22.01.03 ......................................262 657
T 688/99 - 3.3.03 11.07.01 ......................................284 T 285/00 - 3.3.06 22.10.04 .............................195, 254,
T 702/99 - 3.3.02 03.12.03 ..............................168, 431 255
T 710/99 - 3.4.03 11.02.03 ......................................642 T 289/00 - 3.2.03 20.06.01 ......................................294
T 711/99 - 3.3.07 21.10.03 (OJ 2004, 550)...............542 T 328/00 - 3.4.02 17.09.02 ........................................53
T 717/99 - 3.3.03 18.11.04 ......................................254 T 335/00 - 3.2.06 08.10.02 ......................................551
T 724/99 - 3.3.02 24.10.01 ......................................604 T 336/00 - 3.2.06 08.10.02 ......................................551
T 736/99 - 3.5.02 20.06.02 ......................................400 T 349/00 - 3.5.01 05.04.01 ......................................622
T 744/99 - 3.5.01 15.01.02 ..............................294, 299 T 375/00 - 3.2.07 07.05.02 ..............................322, 425
T 758/99 - 3.5.01 25.01.01 ......................................591 T 380/00 - 3.4.02 07.05.02 ......................................398
T 767/99 - 3.5.02 13.03.02 ........................................17 T 395/00 - 3.3.04 22.04.04 ......................................151
T 809/99 - 3.2.06 22.10.02 ......................................604 T 402/00 - 3.3.01 05.05.04 ..............................281, 283
T 832/99 - 3.2.05 17.09.04 .............................362, 363, T 405/00 - 3.3.06 14.10.04 ......................................206
385 T 426/00 - 3.2.04 20.10.04 ......................................195
T 864/99 - 3.2.01 18.09.01 ......................................398 T 427/00 - 3.2.04 10.05.01 ........................................87
T 877/99 - 3.3.01 31.07.01 ..............................161, 186 T 434/00 - 3.3.02 29.06.01 ......................................615
T 932/99 - 3.3.07 03.08.04 ......................................208 T 446/00 - 3.3.02 03.07.03 ..............................396, 641
T 934/99 - 3.2.02 18.04.01 ......................................557 T 479/00 - 3.3.05 15.02.02 ......................................126
T 945/99 - 3.3.02 17.12.04 ......................................208 T 481/00 - 3.3.02 13.08.04 ......................................388
T 947/99 - 3.3.02 27.11.03 ................................55, 398 T 499/00 - 3.3.06 28.01.03 ..............................185, 440
T 952/99 - 3.3.03 10.12.02 .............................118, 192, T 500/00 - 3.3.07 17.06.04 .............................253, 312,
641 320
T 964/99 - 3.4.01 29.06.01 ..................................23, 35 T 508/00 - 3.2.07 29.06.04 ......................................399
T 966/99 - 3.2.06 03.12.02 ......................................466 T 515/00 - 3.2.05 25.06.03 .............................176, 294,
T 971/99 - 3.3.04 19.04.00 ......................................388 300
T 998/99 - 3.3.02 15.09.03 (OJ 2005, 229).......290, 638 T 521/00 - 3.2.03 10.04.03 ......................................559
T1001/99 - 3.2.03 27.06.02 ..........................................2 T 523/00 - 3.2.03 10.07.02 ......................................209
T1008/99 - 3.4.02 04.05.00 .............................278, 281, T 532/00 - 3.3.09 01.06.05 ......................................130
410 T 552/00 - 3.3.04 30.10.03 ......................................205
T1019/99 - 3.5.01 16.06.04 ..............................125, 128 T 555/00 - 3.2.05 11.03.03 ..............................285, 286
T1022/99 - 3.2.01 10.04.01 ................................56, 561 T 558/00 - 3.5.01 18.02.04 ..............................121, 161
T1049/99 - 3.3.02 09.11.04 ...............................75, 116, T 561/00 - 3.3.05 17.07.02 ......................................281
254 T 594/00 - 3.3.04 06.05.04 ......................................655
T1050/99 - 3.3.08 25.01.05 ..............................254, 255 T 611/00 - 3.3.06 18.09.01 ......................................404
T1062/99 - 3.2.01 04.05.00 ..............................549, 612 T 631/00 - 2.4.02 05.05.04 ......................................121
T1065/99 - 3.3.02 19.09.01 ..............................628, 658 T 641/00 - 3.5.01 26.09.02 (OJ 2003, 352)......135, 138,
T1080/99 - 3.5.01 31.10.01 (OJ 2002, 568).........69, 340 141-143, 146
T1086/99 - 3.3.02 10.11.04 ......................................254 T 643/00 - 3.5.01 16.10.03 .................................14, 19,
T1101/99 - 3.3.07 10.04.01 ......................................480 145
T 659/00 - 3.5.02 01.07.03 ......................................159
2000 T 660/00 - 3.4.02 17.04.02 ......................................157
T 664/00 - 3.3.02 28.11.02 ......................................341
T 4/00 - 3.2.06 17.01.03 ........................................70 T 665/00 - 3.3.07 13.04.05 ................................66, 307
T 9/00 - 3.3.02 18.12.01 (OJ 2002, 275).......541, 552 T 687/00 - 3.3.07 05.10.04 ......................................188
T 12/00 - 3.4.02 07.11.02 ..............................433, 621 T 692/00 - 3.3.06 13.05.03 ......................................340
T 13/00 - 3.3.02 27.06.03 ......................................298 T 699/00 - 3.3.07 25.04.05 ......................................642
T 36/00 - 3.3.08 02.10.03 ......................................179 T 706/00 - 3.2.03 15.05.03 ..............................331, 332
T 48/00 - 3.3.02 12.06.02 ......................................628 T 708/00 - 3.5.01 05.12.03 (OJ 2004, 160).......511, 512
T 54/00 - 3.5.02 19.12.00 ......................................615 T 714/00 - 3.3.03 06.08.02 ......................................240
T 55/00 - 3.5.01 10.10.00 ......................................473 T 725/00 - 3.2.04 16.06.04 ......................................332
T 60/00 - 3.4.01 03.07.03 ......................................633 T 727/00 - 3.3.06 22.06.01 ......................................241
T 65/00 - 3.3.07 10.10.01 ..............................556, 559 T 735/00 - 3.3.04 23.03.04 ......................................642
T 74/00 - 3.4.02 15.03.05 ..............................432, 541 T 740/00 - 3.2.06 10.10.01 ......................................347
T 97/00 - 3.3.01 25.09.03 ......................................438 T 747/00 - 3.3.01 01.03.05 ..............................195, 255
T 98/00 - 3.3.01 18.03.03 ..............................489, 628 T 751/00 - 3.3.08 21.05.03 ......................................185
T 100/00 - 3.3.03 07.03.03 ........................................95 T 778/00 - 3.2.04 06.07.01 (OJ 2001, 554)......314, 317,
T 111/00 - 3.3.04 14.02.02 ......................................133 621, 651
T 112/00 - 3.4.02 26.06.02 ........................................95 T 786/00 - 3.3.03 19.12.01 ........................................95
T 113/00 - 3.5.02 17.09.02 ......................................126 T 792/00 - 3.3.04 02.07.02 .............................176, 177,
T 134/00 - 3.3.06 05.09.03 ..............................130, 196 185, 439
T 141/00 - 3.3.05 30.09.02 ......................................189 T 818/00 - 3.3.06 18.07.03 ......................................299
T 165/00 - 3.2.01 30.11.00 ..............................622, 625 T 824/00 - 3.5.02 24.03.03 (OJ 2004, 5)...................616
T 188/00 - 3.4.03 05.05.03 ......................................222 T 835/00 - 3.3.03 07.11.02 ......................................123
T 196/00 - 3.3.01 11.07.02 ......................................642 T 848/00 - 3.3.02 13.11.02 ......................................616
T 204/00 - 3.4.02 13.11.02 ......................................434 T 860/00 - 3.3.06 28.09.04 ......................................235
T 208/00 - 3.2.01 06.10.00 ......................................659 T 866/00 - 3.3.01 30.09.03 ......................................177
T 244/00 - 3.5.01 15.11.01 ................................19, 146 T 915/00 - 3.4.02 19.06.02 ......................................161
T 248/00 - 3.3.07 17.02.04 ......................................660 T 920/00 - 3.2.06 16.06.03 ......................................205
T 250/00 - 3.3.06 24.03.03 ......................................208 T 923/00 - 3.3.02 01.08.06 ......................................293
T 263/00 - 3.2.03 25.05.00 ..............................532, 612 T 926/00 - 3.3.02 26.02.04 ......................................160

724
 Table of cases

T 931/00 - 3.3.05 19.05.03 ......................................245 T 433/01 - 3.3.03 04.06.03 ......................................265

T 937/00 - 3.4.02 12.06.03 ..............................573, 583 T 475/01 - 3.3.08 15.06.04 .................................41, 43,
T 946/00 - 3.3.01 24.11.04 ......................................128 452
T 952/00 - 3.2.03 27.11.02 ......................................588 T 486/01 - 3.3.04 03.09.03 ..............................109, 113
T 959/00 - 3.3.03 21.01.05 ......................................657 T 493/01 - 3.3.08 04.06.03 ......................................138
T 961/00 - 3.3.05 09.12.02 ......................................616 T 500/01 - 3.3.04 12.11.03 .............................205, 208,
T 966/00 - 3.3.03 06.03.03 ......................................118 237, 641
T 968/00 - 3.3.08 19.04.05 ......................................196 T 514/01 - 3.2.07 11.09.03 ..............................580, 592
T 970/00 - 3.4.02 15.09.04 ..............................121, 131 T 520/01 - 3.2.07 29.10.03 .............................607, 609,
T 979/00 - 3.3.03 20.03.03 ......................................123 638
T 986/00 - 3.5.02 25.02.03 (OJ 2003, 554)...............331 T 545/01 - 3.2.01 16.09.03 ......................................199
T1016/00 - 3.2.07 12.04.02 ......................................657 T 554/01 - 3.3.09 20.10.05 ......................................583
T1023/00 - 3.4.03 17.09.03 ......................................185 T 579/01 - 3.3.04 30.06.04 ......................................269
T1029/00 - 3.3.02 29.05.01 ..............................314, 412 T 584/01 - 3.3.02 21.04.05 ......................................254
T1030/00 - 3.3.01 22.07.03 ........................................53 T 594/01 - 3.3.01 30.03.04 ........................................99
T1031/00 - 3.3.02 23.05.02 ......................................104 T 604/01 - 3.5.03 12.08.04 .............................401, 651,
T1038/00 - 3.3.04 26.03.02 ......................................599 657
T1039/00 - 3.2.04 15.01.01 ..............................322, 655 T 611/01 - 3.3.02 23.08.04 ..............................460, 656
T1048/00 - 3.2.03 18.06.03 ......................................333 T 622/01 - 3.2.02 08.05.02 ......................................377
T1074/00 - 3.3.04 13.05.04 ..............................186, 198 T 643/01 - 3.4.03 07.07.04 ......................................445
T1076/00 - 3.3.04 05.08.03 ..............................106, 203 T 650/01 - 3.4.01 14.10.04 ......................................122
T1084/00 - 3.3.08 11.04.03 ......................................205 T 652/01 - 3.4.02 12.09.02 ........................................74
T1102/00 - 3.3.08 01.06.04 .............................136, 254, T 655/01 - 3.4.03 25.05.03 ......................................332
255, 642 T 657/01 - 3.3.03 24.06.03 ......................................276
T1164/00 - 3.3.06 02.09.03 ......................................539 T 669/01 - 3.3.04 22.05.02 ......................................113
T1172/00 - 3.5.02 05.09.01 ......................................377 T 694/01 - 3.3.04 04.07.02 (OJ 2003, 250)...............600
T1173/00 - 3.5.02 05.06.03 (OJ 2004, 16).................176 T 708/01 - 3.5.03 17.03.05 ......................................635
T1176/00 - 3.5.02 23.07.03 ......................................406 T 713/01 - 3.3.03 07.10.03 ......................................438
T1177/00 - 3.5.02 24.07.03 ......................................406 T 715/01 - 3.3.04 24.09.02 ......................................619
T1188/00 - 3.3.03 30.04.03 ..............................130, 152 T 736/01 - 3.3.09 04.08.05 ......................................404
T1195/00 - 3.2.02 24.05.04 ......................................159 T 785/01 - 3.2.01 30.09.03 ..............................374, 377
T1201/00 - 3.2.01 07.11.02 ......................................650 T 788/01 - 3.3.03 13.06.03 ......................................298
T 794/01 - 3.3.03 28.08.03 ......................................166
2001 T 796/01 - 3.3.05 09.01.06 ......................................189
T 803/01 - 3.3.03 09.09.03 ...............................95, 159,
T 10/01 - 3.3.08 09.03.05 ..............................195, 255 212
T 14/01 - 3.3.06 03.11.04 ......................................254 T 836/01 - 3.3.04 07.10.03 ......................................108
T 15/01 - 3.3.04 17.06.04 (OJ 2006, 153)......289, 291, T 846/01 - 3.5.01 17.09.02 ......................................613
569, 598, 619 T 866/01 - 3.3.02 11.05.05 ........................................38
T 30/01 - 3.4.02 29.06.04 ..............................298, 299 T 872/01 - 3.3.03 14.07.04 ......................................641
T 31/01 - 3.4.02 23.05.03 ........................................83 T 906/01 - 3.2.02 28.09.04 ........................................63
T 55/01 - 3.5.01 11.02.03 ........................................66 T 933/01 - 3.2.06 28.06.04 ......................................213
T 56/01 - 3.5.01 21.01.04 ......................................200 T 942/01 - 3.3.06 12.08.04 ..............................276, 277
T 79/01 - 3.3.04 25.03.03 ......................................411 T 948/01 - 3.3.01 08.04.04 ..............................125, 135
T 125/01 - 3.5.01 11.12.02 ..........................................6 T 991/01 - 3.4.02 14.10.03 ......................................627
T 129/01 - 3.2.06 25.06.03 ......................................651 T1003/01 - 3.2.01 08.12.03 ......................................633
T 131/01 - 3.2.01 18.07.02 (OJ 2003, 115).......402, 609 T1004/01 - 3.3.07 01.09.04 ..............................245, 645
T 133/01 - 3.3.01 30.09.03 ......................................168 T1011/01 - 3.5.01 16.11.04 ......................................173
T 134/01 - 3.3.01 27.01.05 ......................................254 T1052/01 - 3.2.01 01.07.03 ......................................268
T 135/01 - 3.5.02 21.01.04 ......................................567 T1056/01 - 3.2.02 04.06.03 ......................................435
T 136/01 - 3.4.03 30.11.05 ......................................298 T1064/01 - 3.3.01 25.03.04 ......................................152
T 151/01 - 3.3.02 09.02.06 ......................................198 T1069/01 - 3.2.01 12.08.02 ......................................189
T 193/01 - 3.4.02 04.06.04 ..............................186, 199 T1080/01 - 3.3.08 24.10.03 ......................................389
T 211/01 - 3.3.06 01.12.03 ......................................124 T1081/01 - 3.3.01 27.09.04 .................................. 56-58
T 214/01 - 3.5.01 07.03.03 ......................................392 T1092/01 - 3.3.04 26.04.05 ......................................116
T 230/01 - 3.3.02 26.04.05 ........................................79 T1098/01 - 3.3.02 13.04.05 ......................................605
T 231/01 - 3.2.06 05.09.01 ........................................66 T1122/01 - 3.4.02 06.05.04 ......................................346
T 260/01 - 3.2.03 22.01.02 ..............................189, 190 T1146/01 - 3.3.03 02.09.04 ..............................242, 254
T 283/01 - 3.3.05 03.09.02 ......................................375 T1156/01 - 3.3.09 21.06.05 ..............................188, 210
T 295/01 - 3.3.04 07.09.01 (OJ 2002, 251)...............549 T1157/01 - 3.3.06 01.09.04 ......................................442
T 311/01 - 3.2.03 04.11.01 ......................................425 T1158/01 - 3.4.02 13.07.04 (OJ 2005, 110)...............286
T 314/01 - 3.5.01 18.12.03 ......................................360 T1174/01 - 3.2.03 12.12.02 ......................................332
T 320/01 - 3.3.01 12.03.04 ......................................152 T1182/01 - 3.3.03 14.06.05 ......................................582
T 351/01 - 3.3.08 02.07.03 ..............................295, 296 T1200/01 - 3.5.02 06.11.02 ......................................436
T 373/01 - 3.5.03 14.10.04 ......................................208 T1206/01 - 3.3.01 23.09.04 ..............................259, 274
T 377/01 - 3.5.01 14.10.03 ......................................512 T1212/01 - 3.3.02 03.02.05 .............................122, 161,
T 379/01 - 3.5.01 24.03.04 ......................................481 162, 164
T 380/01 - 3.3.06 28.05.04 ......................................205 T1228/01 - 3.3.04 23.04.03 ..............................237, 295
T 386/01 - 3.4.02 24.07.03 ......................................545 T1239/01 - 3.3.01 07.01.04 ......................................153
T 393/01 - 3.3.02 13.07.04 ......................................160 T1250/01 - 3.3.05 14.05.03 ......................................177
T 396/01 - 3.5.01 25.05.04 ......................................208 T1281/01 - 3.5.02 23.01.03 ..............................484, 620
T 397/01 - 3.3.06 14.12.04 ......................................642 T1285/01 - 3.3.01 06.07.04 ......................................125
T 402/01 - 3.5.01 21.02.05 ......................................628 T1288/01 - 3.3.03 26.03.04 ......................................175
T 423/01 - 3.3.04 25.03.04 ......................................297

725
Table of cases

2002 T 720/02 - 3.4.02 23.09.04 .............................282, 284,

286
T 6/02 - 3.3.07 03.02.05 ......................................163 T 749/02 - 3.4.03 20.01.04 .............................628, 657,
T 14/02 - 3.2.07 05.11.03 ......................................646 661
T 21/02 - 3.3.01 20.02.06 ......................................663 T 767/02 - 3.4.03 01.06.05 ......................................129
T 23/02 - 3.3.03 19.07.05 ......................................236 T 779/02 - 3.4.02 24.11.04 ......................................163
T 50/02 - 3.3.01 29.06.04 ................................57, 642 T 796/02 - 3.3.08 01.04.04 ......................................646
T 64/02 - 3.2.06 19.01.05 ..............................345, 641 T 797/02 - 3.4.02 23.09.04 .............................282, 284,
T 67/02 - 3.3.02 14.05.04 ......................................195 286
T 70/02 - 3.2.04 15.03.02 ......................................467 T 799/02 - 3.2.04 27.07.04 ......................................128
T 84/02 - 3.2.06 27.09.02 ......................................615 T 833/02 - 3.3.01 16.11.04 ......................................125
T 107/02 - 3.3.06 15.06.05 ......................................160 T 838/02 - 3.3.07 29.01.03 ..............................457, 628
T 109/02 - 3.2.02 20.01.05 ......................................339 T 844/02 - 3.2.01 06.02.04 ......................................189
T 133/02 - 3.5.01 27.09.05 ......................................201 T 845/02 - 3.2.02 07.06.05 ..............................129, 130
T 143/02 - 3.2.05 08.01.04 ......................................178 T 853/02 - 3.2.04 26.11.04 ......................................575
T 149/02 - 3.4.03 25.07.03 ......................................602 T 861/02 - 3.5.01 25.06.04 ......................................470
T 161/02 - 3.3.08 13.09.04 ......................................195 T 890/02 - 3.3.08 10.10.04 (OJ 2005, 497).........48, 185
T 174/02 - 3.4.01 15.11.04 ......................................199 T 900/02 - 3.3.08 28.04.04 .............................458, 460,
T 181/02 - 3.2.04 13.10.03 ..............................339, 572 661
T 226/02 - 3.2.07 13.07.04 ......................................475 T 910/02 - 3.4.03 22.06.04 ......................................336
T 241/02 - 3.2.07 24.09.04 ......................................268 T 914/02 - 3.4.01 12.07.05 ...................................2, 19,
T 250/02 - 3.3.04 28.04.05 ......................................298 141, 142, 190
T 283/02 - 3.2.04 09.04.03 ......................................544 T 922/02 - 3.2.03 10.03.04 ......................................324
T 287/02 - 3.2.03 03.09.04 ......................................202 T 924/02 - 3.3.01 04.11.04 ......................................152
T 288/02 - 3.4.03 22.04.04 ......................................213 T 929/02 - 3.4.02 09.12.04 ......................................154
T 295/02 - 3.3.03 01.12.03 ..............................196, 205 T 934/02 - 3.2.01 29.04.04 ......................................623
T 302/02 - 3.3.04 12.03.04 ..............................151, 451 T 948/02 - 3.3.03 05.04.05 ......................................241
T 315/02 - 3.2.02 12.09.03 ........................................53 T 951/02 - 3.4.03 09.11.04 ......................................146
T 326/02 - 3.3.03 11.05.04 ......................................118 T 963/02 - 3.4.03 29.09.04 ......................................470
T 343/02 - 3.5.01 20.01.03 ......................................413 T 966/02 - 3.2.04 01.12.04 ..............................325, 552
T 357/02 - 3.3.03 30.07.04 ......................................130 T 970/02 - 3.2.06 25.10.04 ......................................255
T 362/02 - 3.3.02 26.06.02 ..............................657, 661 T 977/02 - 3.5.02 16.06.04 ......................................118
T 369/02 - 3.3.07 07.07.05 ......................................168 T 979/02 - 3.4.02 08.10.03 ..............................331, 646
T 374/02 - 3.2.07 13.10.05 ......................................424 T 982/02 - 3.3.03 11.05.05 ......................................389
T 378/02 - 3.3.04 12.10.05 ......................................199 T 988/02 - 3.3.03 30.10.03 ......................................200
T 401/02 - 3.5.01 15.01.04 ......................................345 T 991/02 - 3.2.01 26.09.03 ......................................661
T 404/02 - 3.2.05 17.06.04 ......................................389 T 992/02 - 3.3.01 22.11.05 ......................................210
T 407/02 - 3.4.03 12.11.03 ......................................620 T1001/02 - 3.2.03 06.07.04 ......................................144
T 408/02 - 3.5.01 07.04.05 ......................................590 T1008/02 - 3.2.06 11.01.05 ......................................642
T 412/02 - 3.3.03 16.06.04 ......................................210 T1018/02 - 3.5.01 09.12.03 ..............................208, 235
T 413/02 - 3.5.01 05.05.04 ......................................597 T1024/02 - 3.2.05 12.05.04 ......................................375
T 435/02 - 3.2.01 01.04.04 ......................................587 T1028/02 - 3.2.04 07.12.04 ..............................157, 196
T 441/02 - 3.3.03 19.05.04 ......................................159 T1045/02 - 3.5.02 13.11.03 ......................................621
T 442/02 - 3.3.01 26.10.04 ......................................149 T1063/02 - 3.5.02 16.06.04 ......................................347
T 457/02 - 3.3.09 16.11.05 ......................................206 T1067/02 - 3.3.08 30.11.04 ......................................242
T 482/02 - 3.5.01 09.02.05 ......................................555 T1081/02 - 3.5.01 13.01.04 ..............................313, 324
T 496/02 - 3.3.03 11.01.05 ..............................123, 168 T1090/02 - 3.3.04 30.09.04 ......................................118
T 497/02 - 3.3.04 27.05.04 ......................................515 T1091/02 - 3.3.04 23.07.04 (OJ 2005, 14).................542
T 499/02 - 3.3.07 24.06.05 ......................................196 T1121/02 - 3.2.04 24.11.03 ..............................143, 145
T 502/02 - 3.5.01 17.01.03 ......................................633 T1124/02 - 3.2.06 20.01.05 ......................................389
T 506/02 - 3.3.08 18.01.05 ......................................254 T1151/02 - 3.2.02 04.11.03 ......................................209
T 511/02 - 3.2.03 17.02.04 ......................................560 T1175/02 - 3.3.07 16.03.05 ......................................160
T 552/02 - 3.2.04 15.10.03 ......................................372 T1183/02 - 3.5.02 17.02.03 (OJ 2003, 404)...............655
T 553/02 - 3.3.06 14.07.04 ........................................14 T1202/02 - 3.2.07 09.12.04 ......................................642
T 556/02 - 3.2.04 19.02.03 ......................................207 T1212/02 - 3.4.02 12.04.05 ......................................453
T 564/02 - 3.3.03 30.09.04 ......................................212 T1216/02 - 3.5.02 24.02.03 ......................................653
T 569/02 - 3.2.07 02.06.04 ......................................396
T 574/02 - 3.3.09 26.04.05 ..............................388, 406 2003
T 576/02 - 3.2.04 27.03.03 ......................................300
T 587/02 - 3.5.01 12.09.02 ..............................322, 514 T 3/03 - 3.3.06 19.10.04 ......................................241
T 609/02 - 3.3.08 27.10.04 ......................................178 T 12/03 - 3.2.05 03.02.04 ..............................654, 659
T 619/02 - 3.4.02 22.03.06 (OJ 2007, ***) .......1, 3, 142, T 25/03 - 3.2.06 08.02.05 ......................................240
144 T 39/03 - 3.4.02 26.08.05 (OJ 2006, 362)...............282
T 643/02 - 3.2.04 16.09.04 ......................................287 T 45/03 - 3.3.03 19.01.05 ......................................641
T 646/02 - 3.2.03 21.09.04 ......................................605 T 60/03 - 3.2.03 13.07.05 ......................................265
T 653/02 - 3.3.03 09.07.04 ......................................605 T 61/03 - 3.3.04 12.04.05 ......................................209
T 668/02 - 3.3.01 08.03.05 ......................................168 T 64/03 - 3.3.03 01.02.05 ......................................209
T 671/02 - 3.3.06 10.08.04 ......................................378 T 66/03 - 3.3.03 07.04.05 ......................................389
T 677/02 - 3.2.05 22.04.04 ......................................377 T 81/03 - 3.5.01 12.02.04 ..............................267, 643
T 681/02 - 3.4.02 05.06.03 ..............................345, 644 T 90/03 - 3.3.08 17.03.05 ..............................284, 287
T 696/02 - 3.4.02 02.11.04 ..............................336, 597 T 131/03 - 3.4.02 22.12.04 ......................................440
T 703/02 - 3.5.02 29.04.05 ......................................196 T 152/03 - 3.2.02 22.04.04 ........................................63
T 713/02 - 3.3.01 12.04.05 (OJ 2006, 267)......501, 502, T 168/03 - 3.3.02 07.03.03 ......................................636
612

726
 Table of cases

T 172/03 - 3.5.01 27.11.03 .............................121, 138, T 910/03 - 3.2.05 07.07.05 ......................................293

142, 143 T 922/03 - 3.2.01 11.05.05 ......................................642
T 175/03 - 3.3.03 03.11.05 ......................................293 T1020/03 - 3.3.04 29.10.04 (OJ 2007, ***) .......107, 109,
T 190/03 - 3.5.01 18.03.05 (OJ 2006, 502)...............462 110
T 217/03 - 3.3.06 02.03.05 ......................................254 T1027/03 - 3.2.01 10.01.05 ..............................336, 389
T 255/03 - 3.2.04 31.08.04 ......................................124 T1063/03 - 3.3.04 16.12.04 ......................................365
T 258/03 - 3.5.01 21.04.04 (OJ 2004, 575).......1-3, 7, 8, T1067/03 - 3.5.01 04.05.05 ..............................341, 640
18, 142, 143, 145 T1110/03 - 3.5.02 04.10.04 (OJ 2005, 302).......346, 429
T 267/03 - 3.4.02 28.09.05 ................................53, 392 T1172/03 - 3.2.02 04.05.05 ........................................34
T 274/03 - 3.2.01 08.07.04 ......................................512 T1184/03 - 3.5.02 23.06.05 ......................................406
T 285/03 - 3.4.03 10.05.05 ......................................255 T1200/03 - 3.3.07 15.06.05 ......................................119
T 309/03 - 3.3.07 30.07.03 (OJ 2004, 91).........414, 633 T1213/03 - 3.3.06 24.05.05 ..............................127, 168
T 315/03 - 3.3.08 06.07.04 (OJ 2006, 15)............38, 39, T1241/03 - 3.3.04 01.09.05 ..............................205, 242
43, 45, 555 T1247/03 - 3.3.03 03.05.05 ......................................212
T 318/03 - 3.5.03 12.07.05 ......................................147 T1248/03 - 3.3.03 20.04.05 ......................................389
T 323/03 - 3.3.06 26.11.04 ..............................121, 131
T 324/03 - 3.2.06 08.09.05 ......................................425 2004
T 335/03 - 3.4.02 26.07.05 ......................................275
T 339/03 - 3.3.10 11.11.05 ......................................125 T 20/04 - 3.3.08 16.03.05 ......................................302
T 353/03 - 3.4.02 25.08.03 ......................................511 T 24/04 - 3.2.03 01.07.05 ......................................363
T 354/03 - 3.2.06 15.09.06 ......................................125 T 32/04 - 3.2.03 27.10.05 ......................................364
T 355/03 - 3.3.01 30.10.03 ......................................333 T 49/04 - 3.4.03 18.10.05 ........................................19
T 361/03 - 3.4.03 21.06.05 ..............................389, 404 T 56/04 - 3.4.03 21.09.05 ..............................209, 210
T 382/03 - 3.5.01 20.07.04 ......................................449 T 95/04 - 3.4.03 29.09.04 ......................................335
T 383/03 - 3.2.02 01.10.04 (OJ 2005, 159).................33 T 125/04 - 3.5.01 10.05.05 ........................................19
T 384/03 - 3.3.02 17.01.06 ......................................112 T 126/04 - 3.2.01 29.06.04 .............................479, 620,
T 394/03 - 3.4.02 04.03.05 ..............................212, 599 651
T 412/03 - 3.3.01 16.06.05 ......................................209 T 165/04 - 3.5.01 13.05.05 ......................................375
T 423/03 - 3.3.03 10.10.03 ..............................281, 283 T 170/04 - 3.2.03 01.07.05 ..............................362, 363
T 424/03 - 3.5.01 23.02.06 .............................2, 8, 142, T 188/04 - 3.3.04 31.05.05 ..............................219, 223
145 T 221/04 - 3.2.03 05.05.04 ..............................375, 383
T 427/03 - 3.3.02 13.10.04 ......................................657 T 292/04 - 3.3.04 17.10.05 ......................................115
T 455/03 - 3.3.01 05.07.05 ......................................641 T 300/04 - 3.5.01 21.04.05 ......................................205
T 466/03 - 3.5.02 21.09.04 ......................................313 T 388/04 - 3.5.02 22.03.06 (OJ 2007, 21).......2, 18, 142
T 476/03 - 3.2.07 30.09.04 ..............................640, 642 T 431/04 - 3.3.08 13.09.04 ......................................613
T 492/03 - 3.3.08 11.03.05 ......................................326 T 449/04 - 3.2.02 25.02.06 ......................................304
T 494/03 - 3.3.08 18.05.05 ......................................298 T 474/04 - 3.3.07 30.06.05 (OJ 2006, 129).......323, 426
T 507/03 - 3.5.02 07.10.05 ......................................582 T 479/04 - 3.3.03 20.10.05 ......................................460
T 525/03 - 3.4.02 27.09.05 ......................................201 T 489/04 - 3.5.02 08.09.05 ......................................375
T 531/03 - 3.4.03 17.03.05 .............................141, 142, T 505/04 - 3.3.08 07.10.05 ......................................208
144 T 509/04 - 3.3.04 05.07.05 ......................................112
T 537/03 - 3.2.03 10.11.05 ......................................298 T 627/04 - 3.3.08 15.09.05 ......................................204
T 571/03 - 3.5.01 22.03.06 ......................................657 T 659/04 - 3.5.02 06.04.05 ........................................14
T 599/03 - 3.3.03 06.09.05 ......................................123 T 711/04 - 3.4.03 12.07.05 ..............................605, 640
T 637/03 - 3.5.01 21.07.05 ......................................203 T 781/04 - 3.5.03 30.11.05 ..............................317, 618
T 653/03 - 3.2.04 08.04.05 ......................................242 T 799/04 - 3.3.06 29.06.05 ......................................186
T 658/03 - 3.3.03 07.10.04 ......................................235 T 812/04 - 3.5.01 18.11.05 ..............................364, 485
T 659/03 - 3.2.01 04.10.04 ......................................201 T 870/04 - 3.3.08 11.05.05 ......................................170
T 664/03 - 3.3.09 20.10.04 ......................................277 T 908/04 - 3.3.03 15.02.06 ......................................210
T 674/03 - 3.2.03 19.12.05 ......................................585 T 911/04 - 3.2.02 10.02.05 ......................................333
T 719/03 - 3.2.03 14.10.04 ......................................380 T 934/04 - 3.4.01 17.06.05 ......................................118
T 731/03 - 3.3.01 28.07.05 ......................................259 T 937/04 - 3.3.06 21.02.06 ......................................586
T 748/03 - 3.4.01 26.01.06 ..........................................2 T 991/04 - 3.3.05 22.11.05 .............................317, 490,
T 749/03 - 3.4.02 15.09.05 .............................205, 250, 618
251 T1040/04 - 3.2.03 23.03.06 (OJ 2007. ***) ................282
T 764/03 - 3.4.03 10.02.05 ..............................640, 648 T1142/04 - 3.4.02 04.03.05 ......................................634
T 772/03 - 3.5.03 22.04.04 ......................................342 T1154/04 - 3.3.08 21.04.05 ..............................322, 323
T 803/03 - 3.3.03 21.04.04 ......................................443 T1181/04 - 3.3.06 31.01.05 (OJ 2005, 312).......521, 522
T 808/03 - 3.5.02 12.02.04 .............................362, 376, T1216/04 - 3.2.04 22.04.05 ......................................650
377, 477 T1255/04 - 3.3.01 16.03.05 (OJ 2005, 424)...............522
T 813/03 - 3.5.02 07.01.04 ......................................189 T1321/04 - 3.2.04 28.02.05 ......................................207
T 818/03 - 3.4.03 06.07.05 ......................................190 T1329/04 - 3.3.08 28.06.05 ......................................127
T 830/03 - 3.5.02 21.09.04 .............................313, 465, T1374/04 - 3.3.08 07.04.06 (OJ 2007, ***) ........ xxxiii, 41
621
T 843/03 - 3.3.04 25.10.04 ......................................302 2005
T 849/03 - 3.5.03 19.08.04 ......................................324
T 5/05 - 3.3.01 09.11.05 ..............................290, 291
T 853/03 - 3.3.01 12.10.05 ......................................152
T 29/05 - 3.3.08 13.03.06 ......................................198
T 859/03 - 3.3.06 06.07.05 ..............................122, 205
T 308/05 - 3.5.03 27.02.06 ......................................651
T 861/03 - 3.3.02 28.11.03 ......................................663
T 514/05 - 3.4.03 08.09.05 (OJ 2006, 526).......317, 621
T 874/03 - 3.2.04 28.06.05 .............................389, 394,
T 739/05 - 3.3.06 03.11.05 ......................................321
400, 406
T 752/05 - 3.5.01 31.01.06 ......................................650
T 897/03 - 3.3.08 16.03.04 .............................469, 470,
T1309/05 - 3.4.02 10.10.06 ......................................470
658
T1356/05 - 3.4.03 16.02.06 ..............................470, 658
T 909/03 - 3.2.05 01.02.05 ......................................657

727
Table of cases

T1360/05 - 3.4.03 16.02.06 ..............................470, 658 W 57/91 - 3.3.01 28.01.91 ......................................684

T1375/05 - 3.3.04 10.01.06 ......................................650 W 2/92 - 3.3.01 04.02.92 ......................................680
T1409/05 - 3.4.03 30.03.06 (OJ 2007, ***) ........282, 283 W 3/92 - 3.3.02 21.09.92 ..............................681, 682
W 5/92 - 3.5.01 28.02.92 ......................................215
W 7/92 - 3.4.01 18.05.92 ......................................681
PCT Protests W 9/92 - 3.3.03 08.04.92 ......................................681
W 10/92 - 3.3.02 30.10.92 ..............................224, 682
W 4/85 - 3.2.01 22.04.86 (OJ 1987, 63).................681 W 14/92 - 3.4.01 21.07.92 ......................................682
W 7/85 - 3.3.02 05.06.87 (OJ 1988, 211).......218, 681 W 16/92 - 3.2.04 06.05.92 (OJ 1994, 237).......684, 690
W 7/86 - 3.3.01 06.06.86 (OJ 1987, 67).................681 W 18/92 - 3.3.02 22.07.93 ......................................682
W 9/86 - 3.3.01 11.08.86 (OJ 1987, 459)...............681 W 22/92 - 3.3.02 16.11.92 ..............................219, 682
W 3/87 - 3.4.01 30.09.87 ......................................217 W 23/92 - 3.2.03 03.11.92 ......................................681
W 4/87 - 3.2.02 02.10.87 (OJ 1988, 425)......371, 683, W 29/92 - 3.2.02 19.10.93 ......................................227
687 W 32/92 - 3.2.02 15.10.92 (OJ 1994, 239).......226, 227
W 2/88 - 3.5.01 10.04.89 ......................................217 W 33/92 - 3.3.01 12.08.92 ......................................219
W 3/88 - 3.3.01 08.11.88 (OJ 1990, 126).......216, 219 W 34/92 - 3.2.02 23.11.93 ......................................227
W 29/88 - 3.3.01 28.11.88 ......................................216 W 38/92 - 3.3.02 22.10.93 ......................................228
W 31/88 - 3.3.01 09.11.88 (OJ 1990, 134).......223, 682 W 40/92 - 3.5.01 01.03.93 ......................................217
W 32/88 - 3.4.01 28.11.88 (OJ 1990, 138)...............216 W 45/92 - 3.2.02 15.10.93 ......................................227
W 35/88 - 3.5.01 07.06.89 ......................................219 W 52/92 - 3.3.02 02.04.93 ......................................219
W 44/88 - 3.4.01 31.05.89 (OJ 1990, 140)...............219 W 2/93 - 3.3.01 31.03.93 ..............................681, 688
W 3/89 - 3.3.01 11.04.89 ......................................216 W 3/93 - 3.3.01 21.10.93 (OJ 1994, 931)......362, 371,
W 7/89 - 3.3.01 15.12.89 ......................................223 681, 687, 689
W 8/89 - 3.2.03 11.12.90 ......................................684 W 4/93 - 3.3.01 05.11.93 (OJ 1994, 939)......222, 685,
W 11/89 - 3.3.02 09.10.89 (OJ 1993, 225)......223, 682, 690, 691
683 W 8/93 - 3.2.04 24.03.94 ..............................227, 682
W 12/89 - 3.3.01 29.06.89 (OJ 1990, 152)...............223 W 9/93 - 3.3.01 14.07.94 ......................................228
W 13/89 - 3.3.02 12.07.90 ......................................216 W 11/93 - 3.3.03 31.03.94 ..............................685, 691
W 14/89 - 3.3.01 26.01.90 ..............................223, 682 W 12/93 - 3.2.03 30.05.94 ......................................685
W 16/89 - 3.4.01 29.11.89 ......................................216 W 1/94 - 3.3.01 29.07.94 ......................................229
W 17/89 - 3.2.02 02.03.91 ..............................224, 227 W 3/94 - 3.3.01 15.12.94 (OJ 1995,775).......229, 682,
W 19/89 - 3.3.01 14.11.91 ..............................225, 233 686
W 21/89 - 3.4.02 13.06.91 ......................................220 W 4/94 - 3.3.02 16.01.95 (OJ 1996,73).........682, 685,
W 23/89 - 3.3.02 23.07.91 ......................................681 688, 691
W 27/89 - 3.2.02 21.08.90 ......................................224 W 5/94 - 3.3.03 07.06.94 ......................................685
W 30/89 - 3.3.02 07.06.90 ......................................217 W 6/94 - 3.3.04 11.04.95 ......................................686
W 32/89 - 3.4.02 07.08.90 ......................................217 W 8/94 - 3.3.03 21.11.94 ..............................223, 682
W 34/89 - 3.3.01 13.08.90 ......................................681 W 9/94 - 3.5.02 29.11.94 ......................................689
W 6/90 - 3.2.02 19.12.90 (OJ 1991, 438)......219, 224, W 11/94 - 3.2.04 30.03.95 ......................................682
225, 227, 228 W 12/94 - 3.2.02 01.03.95 ..............................689, 690
W 18/90 - 3.2.01 17.08.90 ......................................224 W 2/95 - 3.4.01 18.10.95 ..............................228, 681
W 19/90 - 3.2.01 02.10.90 ......................................224 W 3/95 - 3.2.01 23.11.95 ......................................691
W 24/90 - 3.2.01 05.10.90 ......................................224 W 4/95 - 3.5.01 20.08.96 ..............................690, 692
W 26/90 - 3.2.02 09.11.90 ......................................217 W 6/95 - 3.3.01 16.07.96 ......................................229
W 33/90 - 3.2.03 14.03.91 ......................................681 W 1/96 - 3.3.04 22.05.96 ......................................219
W 36/90 - 3.3.01 04.12.90 ......................................233 W 3/96 - 3.5.02 29.11.96 ..............................681, 685
W 38/90 - 3.2.02 13.03.91 ......................................226 W 4/96 - 3.3.02 20.12.96 (OJ 1997, 552)...............230
W 39/90 - 3.4.02 12.02.91 ......................................219 W 6/96 - 3.3.01 15.04.97 ......................................230
W 48/90 - 3.3.01 22.04.91 ..............................227, 684 W 1/97 - 3.3.04 15.11.97 (OJ 1999, 33)........224, 233,
W 50/90 - 3.3.02 06.05.91 ..............................227, 681 686
W 51/90 - 3.2.03 25.03.91 ......................................681 W 6/97 - 3.3.01 18.09.97 .............................218, 223,
W 59/90 - 3.3.01 21.06.91 ..............................223, 682 227, 230
W 60/90 - 3.2.03 05.02.91 ......................................684 W 6/98 - 3.4.02 17.12.98 ......................................217
W 3/91 - 3.3.02 21.09.92 ......................................685 W 6/99 - 3.3.02 07.04.00 (OJ 2001, 196)...............687
W 5/91 - 3.3.02 10.09.91 ......................................216 W 7/99 - 3.3.02 30.06.00 ......................................683
W 6/91 - 3.3.01 03.04.92 ..............................223, 682 W 11/99 - 3.3.05 20.10.99 (OJ 2000, 186).......228, 683
W 8/91 - 3.2.02 26.02.92 ......................................217 W 13/99 - 3.3.01 10.08.00 ......................................687
W 14/91 - 3.2.04 03.06.91 ..............................223, 682 W 16/99 - 3.3.02 31.03.00 ......................................684
W 16/91 - 3.3.02 25.11.91 ..............................224, 681 W 2/00 - 3.3.02 18.10.00 ......................................690
W 17/91 - 3.3.02 08.08.91 ......................................223 W 8/01 - 3.2.04 28.04.03 ......................................686
W 21/91 - 3.3.02 19.02.92 ......................................224 W 18/01 - 3.5.02 23.01.02 ......................................689
W 22/91 - 3.2.02 10.02.92 ......................................227 W 20/01 - 3.3.04 01.10.02 ......................................687
W 23/91 - 3.3.02 08.09.92 ..............................216, 224 W 3/02 - 3.3.02 31.07.03 ......................................679
W 26/91 - 3.3.02 08.09.92 ......................................681 W 3/03 - 3.5.01 30.09.03 ......................................688
W 28/91 - 3.3.02 27.02.92 ......................................216 W 9/03 - 3.5.03 22.12.03 ......................................226
W 31/91 - 3.3.02 20.12.91 ......................................227 W 17/03 - 3.5.01 20.09.04 ..............................223, 224
W 32/91 - 3.5.01 18.02.92 ......................................681 W 21/03 - 3.5.02 23.04.04 ......................................680
W 35/91 - 3.3.01 28.09.92 ..............................218, 229 W 27/03 - 3.3.04 26.08.04 ......................................684
W 41/91 - 3.5.01 02.01.92 ......................................684 W 4/04 - 3.4.03 30.04.04 ..............................681, 685
W 43/91 - 3.3.03 09.04.92 ..............................224, 681
W 50/91 - 3.2.03 20.07.92 ..............................219, 682
W 52/91 - 3.3.02 19.10.92 ......................................682
W 53/91 - 3.3.02 19.02.92 ..............................234, 686
W 54/91 - 3.2.01 28.01.92 ......................................217

728
 Index of cited provisions

INDEX OF CITED PROVISIONS Art. 54(3) ...............47, 48, 50, 69, 70, 73, 120, 193, 238,
252, 255, 259, 289, 290, 416, 500, 560
Art. 54(4) ..................... 47, 101, 104, 193, 238, 252, 416
1. European Patent Convention Art. 54(5) ....................................................101-104, 112
Art. 2(2) ..................................................................... 353 Art. 55..........................................................................50
Art. 55(1) .......................................................50, 51, 487
Art. 5(3) ..................................................................... 697
Art. 55(1)(a) ........................................... 50, 51, 435, 436
Art. 10(2)(a)............................................................... 697
Art. 14 ............................................................... 479, 492 Art. 56....................47, 73, 120, 129, 131, 132, 136, 139,
Art. 14(1) ................................................... 236, 492, 668 141, 143, 152, 161, 243, 469, 606
Art. 14(2) ....................236, 237, 413, 478, 479, 491, 492 Art. 57........................ 4, 20, 21, 23, 26-28, 34, 102, 107,
Art. 14(4) ........................................... 413, 478, 479, 551 141, 168-172, 185, 193, 195, 252,
566, 606
Art. 14(5) ................................................... 479, 620, 651
Art. 60........................................................................483
Art. 15 ....................................................................... 458
Art. 16 ........................................490, 491, 494, 495, 505 Art. 60(1) ...................................................................495
Art. 18 ....................................................... 490, 494, 495 Art. 60(3) ........................................... 356, 387, 486, 495
Art. 18(1) ........................................................... 490, 494 Art. 61................................................ 309, 410, 483, 495
Art. 18(2) ................................................................... 517 Art. 61(1) ...........................................................309, 483
Art. 19 ....................................................................... 456 Art. 61(1)(b) ...............................................................309
Art. 64................................................................185, 531
Art. 19(2) ....................................456, 457, 459, 628, 661
Art. 64(1) ................................................... 271, 529, 596
Art. 20 ....................................................................... 482
Art. 20(1) ................................................................... 360 Art. 64(2) .............................. 42, 116, 211, 214, 271-273
Art. 21 ....................................................... 614, 637, 663 Art. 65........................................................................675
Art. 21(1) ........................................... 474, 593, 613, 630 Art. 65(3) ...................................................................524
Art. 21(2) ................................................................... 482 Art. 67(4) ...........................................................409, 497
Art. 68........................................................ 532, 545, 635
Art. 21(3) ................................................................... 614
Art. 69.................. 24, 176, 185, 205-209, 266, 267, 270,
Art. 21(3)(a)....................................................... 474, 614
Art. 21(3)(b)....................................................... 474, 614 574, 605
Art. 21(3)(c)............................................................... 614 Art. 69(1) ...................207, 209, 267, 268, 270, 273, 489,
Art. 21(4) ................................................................... 614 574
Art. 23(3) ........................................................... 489, 698 Art. 70(2) ...................................................................237
Art. 72........................................................................481
Art. 23(4) ........................................................... 343, 698
Art. 74........................................................................353
Art. 24 ....................................................... 458, 459, 462
Art. 75........................................................................479
Art. 24(1) ........................................................... 459, 461
Art. 24(3) ........................................................... 458, 461 Art. 75(1) ...................................................................493
Art. 24(4) ................................................................... 461 Art. 75(1)(a) ...............................................................349
Art. 25 ............................................................... 358, 612 Art. 75(1)(b) ...............................................................493
Art. 33 ....................................................................... 488 Art. 76......................................... 278, 284-287, 406, 410
Art. 76(1) ....................................................281-287, 291
Art. 33(1)(b)............................................................... 698
Art. 76(2) ...........................................................409, 497
Art. 33(4) ................................................................... 698
Art. 52 ....................... 4, 26, 93, 141, 145, 185, 193, 195, Art. 76(3) ...................................................................408
243, 252, 507, 566, 606 Art. 77(5) ...................................................................360
Art. 52(1) ...............1, 2, 4-7, 9, 12, 16-19, 21, 35, 36, 43, Art. 78(1)(a) ...............................................................514
130, 142, 144, 168, 169, 172, 211, Art. 78(2) ............................ 348, 368-370, 409, 493, 497
Art. 78(3) ...................................................................519
422, 566, 567, 606
Art. 79(1) ...................................................................357
Art. 52(2) ...............1-3, 6, 11, 12, 14-19, 21, 26, 35, 141,
Art. 79(2) ............................. 368-371, 409, 411, 496-498
142, 144, 169, 488, 566, 567, 606
Art. 52(2)(a)................................................................... 6 Art. 80.................................................312, 479, 491-493
Art. 52(2)(b)........................................................... 19, 20 Art. 80(b) ...................................................................497
Art. 52(2)(c).................................... 4-6, 9-12, 15-18, 169 Art. 80(c)....................................................................495
Art. 52(2)(d)...................................................... 11-14, 20 Art. 80(d) ...........................................................236, 492
Art. 82......................... 129, 215-218, 220-222, 226, 229,
Art. 52(3) ........................ 1-6, 9-12, 14-21, 142, 169, 488
230, 232, 469, 520, 683
Art. 52(4) ....................1, 20-37, 101, 102, 104, 107, 109,
110, 115, 119, 172, 190, 273, 274, 566 Art. 83......................2, 3, 38, 77, 81, 120, 139, 169, 170,
Art. 53 ........................................................... 37, 40, 566 173-184, 203, 204, 302, 303, 539,
Art. 53(a) ................................................................38-41 559, 574, 622
Art. 53(b) ............................................ 38, 39, 42-46, 487 Art. 84..................... 23, 36, 120, 172, 183-192, 194-200,
203-206, 208-210, 214, 238, 253, 263,
Art. 54 ....................50, 58, 79, 84, 92-94, 113, 114, 140,
267, 273, 559, 574, 575, 644, 659
143, 243, 260, 434, 436, 566, 567, 606
Art. 54(1) ................ 46, 75, 101, 104, 112, 113, 118, 560 Art. 86........................................................................357
Art. 54(2) ................47, 48, 52, 53, 56-58, 60, 62, 70, 71, Art. 86(2) ...........................................................350, 351
74, 75, 79, 92, 98, 113, 114, 120, 125, Art. 86(3) ...................................................................373
126, 143, 193, 252, 253, 255, 286, Art. 87........................201, 289, 291, 293, 301, 302, 304,
289, 290, 305, 429, 502, 559, 561 348, 488

729
Index of cited provisions

Art. 87(1) .....................290-293, 299, 301, 303, 304, 306 Art. 104(1) .................339, 578, 583, 584, 586, 589, 591,
Art. 87(3) ................................................................... 293 593
Art. 87(4) .................................... 290-292, 303, 304, 435 Art. 104(2) .................................................................591
Art. 87(5) ................................................................... 488 Art. 105...................................... 546, 547, 596, 599, 600
Art. 88 ............................................................... 291, 292 Art. 105(1) .................................................................599
Art. 88(2) ........................................... 291, 299, 305, 306 Art. 105(2) .................................................................546
Art. 88(3) .................................................... 291, 305-307 Art. 106.............................. 464, 465, 593, 614, 617, 699
Art. 88(4) ............................................ 293-295, 299, 305 Art. 106(1) .................465, 482, 483, 507, 546, 594, 612,
Art. 89 ....................................................................... 289 619, 630, 651, 660, 699
Art. 90 ............................................................... 491, 495 Art. 106(3) ................. 353, 416, 519, 577, 578, 612, 613
Art. 90(1)(a)............................................................... 491 Art. 106(4) .................................................................593
Art. 90(2) ................................................................... 491 Art. 107...................... 408, 467, 520, 546, 592, 596-598,
Art. 90(3) ........................................................... 368, 479 600-604, 614-618
Art. 91 ....................................................... 236, 491, 495 Art. 108......................313, 316, 317, 359, 361, 362, 366,
Art. 91(2) ........................................................... 368, 502 373, 378, 381, 382, 400, 411, 464,
Art. 91(4) ................................................... 368, 409, 497 465, 547, 582, 598, 611, 618-622,
Art. 91(5) ................................................................... 355 625, 637, 650, 651
Art. 92 ............................................................... 221, 479 Art. 109......................332, 361, 463, 523, 619, 636, 637,
Art. 93 ......................................................... 47, 480, 502 653, 662, 663, 685, 691
Art. 93(1) ................................................................... 260 Art. 109(1) .................. 362, 477, 614, 635-637, 663, 664
Art. 94 ....................................................................... 503 Art. 109(2) .................................................................637
Art. 94(1) ................................................... 479, 495, 503 Art. 110...................................................... 601, 640, 643
Art. 94(2) .................................... 357, 368-370, 479, 503 Art. 110(1) .................................................................627
Art. 94(3) ................................................................... 503 Art. 110(2) ........................................... 21, 313, 502, 595
Art. 96 ....................................................................... 520 Art. 110(3) ................................................. 502, 518, 595
Art. 96(1) ....................................490, 494, 495, 504, 505 Art. 111.............................................. 593, 601, 629, 660
Art. 96(2) .................... 323-325, 360, 361, 495, 505-508, Art. 111(1) ................. 334, 352, 360, 393, 403-405, 418,
513, 516, 518, 525, 527, 612 484, 487, 502, 526, 583, 591, 627,
Art. 96(3) ....................................325, 352, 505, 518, 664 629, 630, 650
Art. 97 ....................................................... 473, 519, 624 Art. 111(2) ..................................................525, 629-632
Art. 97(1) ................... 232, 326, 332, 416, 495, 511, 514, Art. 112......................................................................640
518, 519, 521, 525, 658, 664 Art. 112(1) .................................................................637
Art. 97(2) ....................................483, 495, 524, 529, 530 Art. 112(1)(a) .............................................................638
Art. 97(2)(a)....................................................... 521, 616 Art. 112(1)(b) ............................................... 35, 497, 576
Art. 97(2)(b)............................................................... 529 Art. 113......................327, 328, 513, 514, 534, 535, 537,
Art. 97(3) ................................................................... 520 539, 628
Art. 97(4) ....................................277, 478, 483, 529, 530 Art. 113(1) ................. 322-327, 329, 330, 334, 372, 400,
Art. 97(5) ................................................................... 520 428, 429, 451, 505-508, 511-515, 518,
Art. 98 ............................................................... 473, 529 525, 534-540, 591, 628, 655-657, 659,
Art. 99 ................................531, 547, 554, 555, 562, 600 664, 673
Art. 99(1) ....................360, 396, 436, 529, 532, 549-554, Art. 113(2) .................. 331-333, 416, 418, 466, 522-524,
556, 560, 563, 564 577, 634, 635, 637, 656, 664
Art. 99(4) ................................................................... 596 Art. 114........................ 67, 532, 562, 564, 574, 610, 634
Art. 100 ......................440, 532, 552, 553, 565-567, 569, Art. 114(1) ................. 326, 349, 390, 392, 393, 400-403,
572-575, 600, 602, 645, 646 405, 532, 538, 553, 562-568, 594,
Art. 100(a) ..................539, 552, 566, 567, 606, 609, 622 601, 606, 610, 632, 633
Art. 100(b) ................. 170, 176, 203, 559, 560, 566, 608, Art. 114(2) ......................... 342, 344, 389-402, 539, 579,
656 607-610, 626, 645, 657, 659
Art. 100(c) ................. 245, 265, 275, 281, 282, 286, 287, Art. 115.............................. 527, 533, 564, 567, 597, 600
566-568, 580, 608 Art. 116......................325, 334, 336, 337, 450, 451, 516,
Art. 101 ............................................. 456, 532, 563, 640 517, 656
Art. 101(1) ................................................................. 557 Art. 116(1) .......... 325, 333, 334, 337-339, 517, 540, 589
Art. 101(2) ...................325, 400, 534-536, 538, 616, 661 Art. 116(2) .................................................................334
Art. 102 ..................................................... 456, 532, 563 Art. 117...................................... 423, 424, 427, 428, 454
Art. 102(1) ..................245, 286, 469, 574, 575, 577, 629 Art. 117(1) .................................. 423-425, 428, 429, 578
Art. 102(2) ................................................................. 575 Art. 117(1)(c) .............................................................423
Art. 102(3) ..........................222, 574, 575, 577, 578, 608 Art. 117(1)(d) .............................................................424
Art. 102(3)(a)............................................................. 577 Art. 117(1)(e) .............................................................425
Art. 102(3)(b)............................................................. 577 Art. 117(1)(g) .............................................................426
Art. 102(4) ................................................. 362, 576, 613 Art. 118......................................................................486
Art. 102(5) ................................................. 362, 576, 613 Art. 119......................................................................486
Art. 104 ............................................................. 347, 583 Art. 121...................................................... 352, 353, 693
Art. 121(1) .................................................................352

730
 Index of cited provisions

Art. 121(2) ................................................. 353, 369, 693 Art. 164(2) ................................... 40, 480, 490, 617, 698
Art. 122 ...................... 314, 357-360, 364, 366, 368-372, Art. 167(2) .................................................................527
374, 376, 378, 386-388, 407, 499, Art. 167(2)(a) .....................................................569, 570
687, 693 Art. 172......................................................................488
Art. 122(1) ..................357-359, 372, 373, 377, 379, 382, Art. 177......................................................................488
383, 387, 388 Art. 177(1) ................................................... 44, 367, 488
Art. 122(2) ...................316, 318, 355, 362, 365-368, 387
Art. 122(3) .................................................. 366-368, 436
Art. 122(4) .................................................. 360-362, 477
2. Implementing Regulations to the EPC
Art. 122(5) .................................................. 368-371, 693 R. 1............................................................................555
Art. 122(6) ......................................... 371, 387, 388, 418 R. 1(1) ....................................................... 479, 595, 596
Art. 123 ..................... 208, 236, 274, 275, 277, 344, 437, R. 2(1) ............................................... 347, 348, 595, 596
489, 573, 575, 578, 633, 641, 644 R. 2(5) .......................................................................348
Art. 123(2) ................. 110, 129, 130, 157, 193, 194, 196, R. 3............................................................................595
201, 213, 235-242, 244, 245, 247-254, R. 6(1) .......................................................................479
256-270, 274-278, 280-285, 292, 293, R. 6(3) ...............................................................413, 478
298, 422, 492, 571, 572, 575, 607-609 R. 9(3) ....................................................... 477, 549, 614
Art. 123(3) ................. 210, 213, 214, 245, 250, 251, 259, R. 10(2) .....................................................................698
265-277, 329, 421, 435, 489, 571, R. 11..........................................................................698
572, 575, 603 R. 13.......................................................... 483, 484, 596
Art. 125 ..................... 342, 360, 400, 439, 460, 512, 670, R. 13(1) ............................................. 482, 483, 594, 679
673 R. 13(3) .....................................................................484
Art. 127 ............................................................. 387, 481 R. 15(2) .............................................................351, 498
Art. 128 ..................................................................... 480 R. 16..........................................................................483
Art. 128(2) ......................................................... 342, 480 R. 20..................................................................597, 598
Art. 128(4) ................................................... 53, 480, 481 R. 20(1) ..................................................... 481, 482, 597
Art. 129(a) ................................................................. 387 R. 20(2) .....................................................................482
Art. 133 ............................................................. 450, 454 R. 20(3) ............................. 356, 387, 410, 482, 597, 598
Art. 133(1) ................................................................. 442 R. 23a..................................................................47, 496
Art. 133(2) ................................................. 356, 442, 443 R. 23b....................................................................38, 39
Art. 133(3) ................................................. 443, 453, 615 R. 23b(4) .....................................................................42
Art. 133(4) ......................................................... 446, 555 R. 23b(5) ...............................................................44, 45
Art. 134 ......................356, 443, 447, 449, 453, 454, 553 R. 23b(6) .....................................................................46
Art. 134(1) ...................380, 441, 443-445, 450, 665, 667 R. 23c(b)......................................................................44
Art. 134(2) ......................................................... 441, 444 R. 23d....................................................................39, 40
Art. 134(2)(c)............................................. 441, 665, 666 R. 23d(d) ...............................................................39, 40
Art. 134(4) ................................................................. 444 R. 23e....................................................................38, 39
Art. 134(7) .................................. 443-446, 450, 665, 667 R. 23e(2) .....................................................................40
Art. 134(8)(c) ............................................................. 673 R. 24..........................................................................493
Art. 138 ..................................................................... 532 R. 24(2) .....................................................................493
Art. 138(1) ................................................................... 50 R. 25.................................................. 281, 285, 406, 408
Art. 138(1)(a)............................................................... 50 R. 25(1) ...................... 282, 358, 406-408, 414, 419, 420
Art. 139 ....................................................................... 50 R. 25(2) ..................................................... 281, 351, 498
Art. 139(2) ................................................................... 50 R. 26(2)(c) .................................................................550
Art. 141 ..................................................................... 675 R. 27.......................................................... 130, 214, 221
Art. 150 ..................................................................... 678 R. 27(1)(b) ................................................. 194, 251, 252
Art. 150(2) ................................................................. 678 R. 27(1)(c) ..................................... 3, 120, 121, 126, 221
Art. 150(3) ..................................311, 369, 678, 679, 695 R. 27(1)(d) .................................................................221
Art. 153 ............................................................. 692, 695 R. 27(1)(e) .................................................................175
Art. 153(1) ................................................................. 694 R. 28..........................................................................182
Art. 153(2) ................................................................. 693 R. 28(1) .............................................................181, 182
Art. 154(3) ......................................... 215, 677, 680, 686 R. 28(1)(c) .................................................................182
Art. 155 ..................................................................... 678 R. 28(2) .....................................................................371
Art. 155(3) ..........................215, 677, 680, 687, 690, 691 R. 28(2)(a) .........................................................182, 371
Art. 157(1) ................................................................. 505 R. 29.................................. 185, 190, 200, 202, 203, 214
Art. 157(2)(b)..................................................... 369, 370 R. 29(1) ...................6, 11, 185, 189, 193, 194, 201, 202,
Art. 158(1) ................................................................... 48 212, 270
Art. 158(2) ........................................... 48, 369, 370, 379 R. 29(1)(a) .................................................................203
Art. 158(3) ................................................................... 48 R. 29(2) ............................................. 200, 201, 406, 661
Art. 163 ............................................................. 441, 442 R. 29(2)(a) .................................................................201
Art. 163(1) ................................................................. 442 R. 29(2)(c) .................................................................201
Art. 163(5) ................................................................. 442 R. 29(3) ..................................................... 173, 189, 192
Art. 163(6) ................................................................. 442 R. 29(4) .............................................................188, 192

731
Index of cited provisions

R. 29(6) ..................................................... 188, 189, 210 R. 67..........................285, 359, 416, 509, 513, 517, 593,
R. 29(7) ..................................................................... 189 598, 636, 640, 650-655, 658, 659,
R. 30 ......................................................... 215, 216, 230 661, 663
R. 30(1) ............................................................. 215, 228 R. 68.................................................. 464, 465, 470, 473
R. 31 ......................................................................... 370 R. 68(1) ............................................. 457, 464, 466, 536
R. 31(1) ..................................................................... 214 R. 68(2) ............... 55, 344, 347, 457, 464-470, 511, 517,
R. 31(2) ..................................................................... 422 653, 657, 658, 670
R. 34(1)(c)................................................................. 221 R. 69..........................................................................576
R. 35(12) ................................................................... 531 R. 69(1) ..................... 318, 353, 362-365, 373, 455, 546,
R. 36 ......................................................................... 317 576, 577, 612, 693
R. 36(3) ......................................415, 443, 446, 447, 551 R. 69(2) .....................334, 361, 410, 448, 455, 477, 546,
R. 37(1) ............................................................. 350, 351 577, 619
R. 38(3) ............................................. 358, 435, 480, 502 R. 70.......................................................... 464, 465, 470
R. 39 ......................................................................... 491 R. 70(2) .....................................................................471
R. 40 ......................................................................... 491 R. 71..........................................................................698
R. 41(1) ..................................................................... 502 R. 71(1) .............................................................342, 547
R. 43 ......................................................... 236, 491, 493 R. 71(2) .....................................................................330
R. 46 ................................................. 220, 221, 232, 233 R. 71a................. 326, 343-345, 392, 570, 571, 658, 698
R. 46(1) ..............................221, 222, 231, 232, 422, 511 R. 71a(1) ............................ 326, 343-345, 402, 659, 698
R. 46(2) .............................................................. 220-222 R. 71a(2) .................................... 326, 344-346, 640, 644
R. 48(1) ..................................................................... 502 R. 72.......................................................... 423, 454, 477
R. 51 ..................................382, 406, 516, 520, 523, 526 R. 72(1) .............................................................424, 454
R. 51(1) ..................................................................... 504 R. 76.......................................................... 346, 423, 454
R. 51(2) ............................................. 325, 505, 518, 658 R. 76(1) .....................................................................347
R. 51(3) ................................55, 322, 507, 513, 515, 612 R. 77..........................................................................486
R. 51(4) .............................332, 358, 382, 408, 414, 415, R. 77(1) .....................................................................486
472-474, 520-527, 616, 623, 624, 664 R. 77(2) .....................................................................486
R. 51(5) ............................................. 521, 524, 525, 624 R. 78..........................................................................485
R. 51(6) .......................334, 415, 471, 521, 524, 526-528 R. 78(2) .....................364, 365, 439, 440, 448, 485, 486,
R. 51(8) ..................................................................... 520 620
R. 51(11) ................................................................... 528 R. 78(3) ............................................. 362, 365, 439, 486
R. 55 ......................................................... 552, 553, 555 R. 81..........................................................................448
R. 55(a) ......................................435, 550, 553, 555, 556 R. 81(1) ..................................................... 364, 484, 485
R. 55(b) ..................................................... 550, 551, 556 R. 82..................................................................485, 620
R. 55(c) ......................390, 391, 478, 532, 550, 556-565, R. 83..........................................................................348
575, 594, 604, 607-610 R. 83(1) .....................................................................351
R. 56(1) ...................................... 548-553, 555, 558, 564 R. 83(2) .....................................................................348
R. 56(2) ............................................................. 550, 555 R. 83(3) .....................................................................348
R. 57(1) ......................324, 466, 532, 535, 548, 570, 612 R. 83(4) .............................................................348, 350
R. 57(2) ..................................................................... 539 R. 83(5) .....................................................................348
R. 57(3) ..................................................... 534, 535, 537 R. 84.......................................................... 352, 502, 537
R. 57a ........................267, 268, 569-572, 602, 605, 640, R. 85(1) .............................................................349, 350
641, 645 R. 85(2) ............................................. 349, 350, 388, 493
R. 58(1) ..................................................................... 616 R. 85(3) .....................................................................493
R. 58(2) ..................................................... 466, 574, 645 R. 85(4) .....................................................................350
R. 58(3) ..................................................... 534, 535, 616 R. 85a................. 312, 350, 351, 368-370, 411, 498, 693
R. 58(4) ..............................415, 536, 543, 577, 578, 617 R. 85a(1) ................... 318, 350, 365, 448, 491, 661, 662
R. 58(5) ......................360, 374, 415, 416, 519, 577, 578 R. 85a(2) ................................................... 350, 351, 498
R. 60(1) ............................................................. 545, 635 R. 85b........................ 350, 353, 368, 369, 485, 503, 662
R. 60(2) ............................................. 541, 543, 544, 632 R. 86..................................................................334, 569
R. 61a ....................................................... 415, 550, 551 R. 86(1) .....................................................................504
R. 63(1) ..................................................... 580, 590, 591 R. 86(2) .............................................................504, 508
R. 63(3) ..................................................................... 591 R. 86(3) .....................332, 334, 338, 416, 420, 464, 476,
R. 64 ................................................. 373, 593, 611, 621 504, 508, 509, 514, 515, 519, 520,
R. 64(a) ............................................................. 618, 619 522-528, 570, 627, 640, 641, 646, 649
R. 64(b) .............................................................. 618-620 R. 86(4) ..............................................................509-512
R. 65 ................................................. 490, 582, 621, 627 R. 87.......................................................... 267, 569, 570
R. 65(1) ............................................. 362, 477, 479, 480 R. 88.......................... 213, 249, 277-280, 410, 417, 418,
R. 65(2) ..................................................... 490, 615, 619 424, 473, 475, 478, 490, 493-496,
R. 66(1) ..................... 420, 446, 563, 566, 574, 593, 608, 498-502, 523, 524, 526, 530, 550,
640 551, 614, 616, 617, 695
R. 66(2) ..................................................................... 466 R. 89................... 471-475, 529, 612, 614, 617, 657, 671
R. 90.................................................. 353, 354, 356, 387

732
 Index of cited provisions

R. 90(1)(a).................................................. 353-356, 373 4. Patent Cooperation Treaty (articles

R. 90(1)(b)......................................... 356, 357, 373, 387
R. 90(1)(c).......................................................... 353-356
and rules)
R. 90(2) ..................................................................... 357
R. 90(3) ..................................................................... 354
PCT Articles
R. 90(4) ............................................................. 353, 357 Art. 2(xiii) PCT ...........................................................694
R. 92(1)(n)......................................................... 387, 481 Art. 3(4)(iii) PCT.........................................................218
R. 92(1)(r) ......................................................... 387, 481 Art. 4 PCT..................................................................694
R. 92(1)(u)......................................................... 387, 481 Art. 4(1)(ii) PCT .........................................................695
R. 93 ......................................................................... 480 Art. 6 PCT..................................................................682
R. 95a ....................................................................... 428 Art. 11(1) PCT ...........................................................316
R. 100 ............................................... 446, 447, 555, 615 Art. 11(3) PCT ...........................................................695
R. 100(1) ....................................446, 447, 554, 555, 615 Art. 11(4) PCT ...........................................................369
R. 100(2) ................................................................... 446 Art. 14(1)(b) PCT .......................................................693
R. 101(1) ................................................................... 445 Art. 15(5)(a) PCT .......................................................232
R. 101(2) ........................................................... 363, 448 Art. 17 PCT........................................................224, 682
R. 101(4) ................................................................... 447 Art. 17(2)(a) PCT .......................................................682
R. 101(6) ........................................................... 364, 485 Art. 17(3)(a) PCT ....... 219-221, 223, 224, 231, 233, 371,
R. 101(9) ........................................................... 449, 489 679-681, 683, 684, 687-689
R. 104 ....................................................................... 677 Art. 18 PCT................................................................505
R. 104a(3) ......................................................... 685, 691 Art. 19 PCT................................................................505
R. 104b ............................................. 320, 370, 679, 693 Art. 19(1) PCT ........................................... 685, 686, 688
R. 104b(1) ..................................350, 505, 679, 693, 694 Art. 22(1) PCT ...................................................379, 677
R. 104b(1)(b)............................................. 369, 370, 693 Art. 22(3) PCT ...........................................................677
R. 104b(1)(c)............................................. 369, 370, 693 Art. 24(1)(i) PCT ........................................................694
R. 104b(3) ................................................................. 480 Art. 24(2) PCT ...................................................693, 695
R. 104c.............................................................. 677, 679 Art. 25 PCT................................................................693
R. 105 ....................................................................... 677 Art. 26 PCT................................................................695
R. 105(3) ........................................................... 685, 691 Art. 27(7) PCT ...........................................................356
R. 106 ............................................................... 369, 370 Art. 28 PCT................................................................505
R. 106a ..................................................................... 677 Art. 31(3) PCT ...........................................................679
R. 107 ....................................................... 320, 505, 693 Art. 31(4)(a) PCT .......................................................694
R. 107(1) ................................................... 350, 498, 677 Art. 31(6)(a) PCT .......................................................679
R. 107(1)(c)....................................................... 369, 370 Art. 34 PCT........................................................679, 692
R. 107(1)(e)............................................................... 369 Art. 34(1) PCT ...........................................................678
R. 110 ....................................................................... 370 Art. 34(2)(a) PCT .......................................................690
R. 111(2) ................................................................... 480 Art. 34(3) PCT ...........................................................229
R. 112 ............................................................... 233, 677 Art. 34(3)(a) PCT ............... 220, 680, 687, 689, 690, 692
Art. 39 PCT................................................................679
3. Rules relating to Fees Art. 39(1)(a) PCT ...............................................678, 679
Art. 39(1)(b) PCT .......................................................677
Art. 5 RRF ................................................................. 412 Art. 48(2) PCT ........................................... 311, 371, 687
Art. 5(2) RRF............................................................. 411 Art. 48(2)(a) PCT ....................................... 371, 693, 695
Art. 7 RRF ................................................................. 411 Art. 49 PCT................................................................356
Art. 7(2) RRF..................................................... 411, 412 Art. 56 PCT................................................................220
Art. 8 RRF ......................................................... 351, 412 Art. 56(3)(ii) PCT .......................................................220
Art. 8(1)(a) RRF ........................................................ 412
Art. 8(2) RRF............................................................. 411
Art. 8(3) RRF............................................. 351, 352, 412
PCT Rules
Art. 8(3)(a) RRF ........................................................ 351 R. 2.xiii PCT ..............................................................694
Art. 8(4) RRF..................................................... 351, 352 R. 3.4(iii) PCT............................................................218
Art. 9 RRF ................................................................. 411 R. 4 PCT....................................................................694
Art. 9(1) RRF............................................................. 413 R. 4.1(ii) PCT.............................................................695
Art. 9(2) RRF..................................................... 411, 412 R. 6 PCT....................................................................682
Art. 10 RRF ............................................................... 475 R. 11.1 PCT...............................................................316
Art. 10(2) RRF........................................................... 232 R. 11.3 PCT...............................................................695
Art. 12 RRF ............................................................... 413 R. 11.4 PCT...............................................................369
R. 14.1(b) PCT ..........................................................693
R. 15.5(a) PCT ..........................................................232
R. 17 PCT..........................................................224, 682
R. 17.2(a) PCT ..........................................................682
R. 17.3(a) PCT .......... 219-221, 223, 224, 231, 233, 371,
679-681, 683, 684, 687-689

733
Index of cited provisions

R. 18 PCT ................................................................. 505 Art. 15 REE .......................................................665, 668

R. 19 PCT ................................................................. 505 Art. 15(3) REE ...........................................................668
R. 19.1 PCT .............................................. 685, 686, 688 Art. 16 REE ............................................... 669, 670, 672
R. 22.1 PCT ...................................................... 379, 677 Art. 17(1) REE ...........................................................670
R. 22.3 PCT .............................................................. 677 Art. 24(2) REE ...........................................................665
R. 24.1(i) PCT ........................................................... 694 Art. 25 REE ...............................................................666
R. 24.2 PCT ...................................................... 693, 695 Art. 27 REE ...............................................................665
R. 25 PCT ................................................................. 693 Art. 27(1) REE ...................................................671, 672
R. 26 PCT ................................................................. 695 Art. 27(2) REE ...................................................665, 671
R. 27.7 PCT .............................................................. 356 Art. 27(3) REE ...........................................................665
R. 28 PCT ................................................................. 505 Art. 28(1) REE ...........................................................665
R. 31.3 PCT .............................................................. 679 R. 5 REE ...................................................................670
R. 31.4(a) PCT .......................................................... 694 R. 5(1) REE ...............................................................670
R. 31.6(a) PCT .......................................................... 679 R. 5(3) REE ...............................................................670
R. 34 PCT ......................................................... 679, 692
R. 34.1 PCT .............................................................. 678
R. 34.2(a) PCT .......................................................... 690
6. Regulation on discipline for
R. 34.3 PCT .............................................................. 229 professional representatives
R. 34.3(a) PCT ...................220, 680, 687, 689, 690, 692
R. 39 PCT ................................................................. 679 Art. 1 RDR .................................................................675
R. 39.1(a) PCT .................................................. 678, 679 Art. 1(1) RDR.............................................................674
R. 39.1(b) PCT .......................................................... 677 Art. 1(2) RDR.............................................................674
R. 48.2 PCT .............................................. 311, 371, 687 Art. 2 RDR .................................................................675
R. 48.2(a) PCT .......................................... 371, 693, 695 Art. 4(1)(e) RDR ........................................................674
R. 49 PCT ................................................................. 356 Art. 5 RDR .................................................................665
R. 56 PCT ................................................................. 220 Art. 8 RDR .................................................................665
R. 56.3(ii) PCT .......................................................... 220 Art. 8(2) RDR.............................................................674
Art. 18 RDR ...............................................................675
Art. I RDR ..................................................................675
5. Regulation on the European
qualifying examination for professional 7. Rules of Procedure of the Boards of
representatives Appeal
Art. 2 REE ................................................................. 666 Art. 3(2) RPBA...........................................................462
Art. 4 REE ................................................................. 666 Art. 7(1) RPBA...........................................................328
Art. 7 REE ................................................................. 667 Art. 10 RPBA ............................................. 458, 628, 653
Art. 7(1) REE............................................................. 667 Art. 10a RPBA ...........................................................389
Art. 7(1)(b) REE ........................................................ 667 Art. 10a(2) RPBA.......................................................640
Art. 7(1)(b)(i) REE ......................................................... Art. 10b RPBA ...................................................389, 640
667 Art. 10b(3) RPBA...............................................394, 640
Art. 8(b) REE............................................. 669, 670, 672 Art. 11(1) RPBA.................................................331, 343
Art. 10 REE ............................................................... 667 Art. 11(2) RPBA......................................... 340, 343, 698
Art. 10(1) REE........................................... 441, 666, 667 Art. 11(3) RPBA.................................................331, 640
Art. 10(2) REE.................................................... 666-668 Art. 11(6) RPBA.........................................................643
Art. 10(2)(a) REE ...................................................... 667 Art. 15(2) RPBA.........................................................372
Art. 10(2)(b) REE ...................................................... 667
Art. 10(4) REE........................................................... 667
Art. 11(3) REE........................................................... 668
Art. 14 REE ............................................................... 665

734
 Cross-reference list

CROSS-REFERENCE LIST EPC 1973 - EPC 2000

The concordance list compares the thematically corresponding provisions of the current
Convention and Implementing Regulations with the Articles and Rules of the EPC 2000.
Article EPC 1973: Convention on the Grant of European Patents of 5.10.1973, text as
amended by the Act revising Article 63 EPC and by decisions of the Administrative
Council of 21.12.1978, 13.12.1994, 20.12.1995, 5.12.1995, 10.12.1998 and 27.10.2005
Article EPC 2000: European Patent Convention 2000 as adopted by decision of the
Administrative Council of 28.6.2001
Rule EPC 1973: Implementing Regulations to the EPC 1973, as last amended by
decision of the Administrative Council of 9.12.2004
Rule EPC 2000: Implementing Regulations to the EPC 2000 as adopted by decision of
the Administrative Council of 7.12.2006
elmts: Only certain elements of the provisions correspond

Article EPC 1973 → Article / Rule EPC 2000

- ................................... Art. 4a Art. 95...........................-

Art. 16 (elmts).............. R. 10 Art. 96(1) ......................R. 70
Art. 18(1) (elmts) ......... R. 10 Art. 96(2), (3) ................Art. 94(3), (4)
Art. 52(4) ..................... Art. 53(c) Art. 99(3) ......................R. 75
Art. 54(4) .................... - Art. 99(4), (5) ................Art. 99(3), (4)
Art. 54(5) .................... Art. 54(4) Art. 102(1), (2) ..............Art. 101(2)
- ................................... Art. 54(5) Art. 102(3) ....................Art. 101(3)(a)
Art. 61(1) (elmts) ......... R. 16 Art. 105 (elmts).............R. 89
Art. 77(elmts)............... R. 37 - ....................................Art. 105a - c
Art. 78(2) ..................... R. 38 Art. 106(2) ....................R. 98
Art. 79(2), (3) ............... R. 39 Art. 106(4), (5) ..............R. 97
Art. 80.......................... R. 40 Art. 110(2), (3) ..............R. 100(2), (3)
Art. 88(1) (elmts) ......... R. 53 - ....................................Art. 112a
Art. 91(1) - (3).............. Art. 90(3) - (5); Art. 115 (elmts).............R. 114
R. 57
Art. 117(2) ....................R. 119
Art. 91(5) ..................... Art. 90(5); R. 60
Art. 117(4) - (6).............R. 120
Art. 92(2) ..................... R. 65
Art. 121(2), (3) ..............R. 135
Art. 93(2) ..................... R. 68
Art. 122(2) - (5).............R. 136
Art. 94(2), (3) ............... R. 70
Art. 126.........................-

735
Cross-reference list

Art. 134(8) ................... Art. 134a Art. 157(1) - (3).............Art. 153(6), (7)
Art. 135(2) ................... R. 155 Art. 158.........................Art. 153(3) - (5)
Art. 136(1), (2) (elmts) .. R. 155 Art. 159.........................-
Art. 136(2) ................... Art. 135(2), (4) Art. 160.........................-
- ................................... Art. 149a Art. 160(2) ....................Art. 11(5)
Art. 151(1) ................... R. 157 Art. 161.........................-
Art. 152........................ R. 157 Art. 162.........................-
Art. 153(2) ................... R. 159 Art. 163(1) - (4), (6) ......Art. 134(3), (4), (7)
Art. 154........................ Art. 152 Art. 163(5), (7) ..............-
Art. 155........................ Art. 152 Art. 167.........................-
Art. 156........................ Art. 153(1)

Rule EPC 1973 → Rule EPC 2000

- ................................... R. 1 R. 16(1), (2) ..................R. 18

- ................................... R. 2 R. 16(3) ........................R. 78
R. 1.............................. R. 3 R. 17.............................R. 19
R. 2.............................. R. 4 R. 18.............................R. 20
R. 4 (elmts).................. R. 36(2) R. 19.............................R. 21
R. 5.............................. R. 5 R. 20.............................R. 22
R. 6.............................. R. 6 R. 21.............................R. 23
R. 7.............................. R. 7 R. 22.............................R. 24
R. 8.............................. R. 8 R. 23.............................R. 25
- ................................... R. 10 R. 23a...........................-
R. 9.............................. R. 11 R. 23b...........................R. 26
R. 10............................ R. 12 R. 23c...........................R. 27
R. 11............................ R. 13 R. 23d...........................R. 28
R. 12............................ R. 9 R. 23e...........................R. 29
R. 13(1) - (3), (5) ......... R. 14 R. 24.............................R. 35
R. 13(4) ....................... R. 78 R. 25.............................R. 36
R. 14............................ R. 15 R. 26 ............................R. 41
- ................................... R. 16 R. 27.............................R. 42
R. 15(1), (2) ................. R. 17 R. 27a(1), (4) ................R. 30
R. 15(3) ....................... - R. 27a(2), (3) ................-

736
 Cross-reference list

R. 28(1), (2) ................. R. 31 R. 52.............................R. 72

R. 28(4), (5) ................. R. 32 R. 53 ............................R. 73
R. 28(3), (6) - (9) ......... R. 33 R. 54.............................R. 74
R. 28a.......................... R. 34 - ....................................R. 75
R. 29............................ R. 43 R. 55.............................R. 76
R. 30............................ R. 44 R. 56.............................R. 77
R. 31............................ R. 45 - ....................................R. 78
R. 32............................ R. 46 R. 57.............................R. 79
R. 33............................ R. 47 R. 57a...........................R. 80
R. 34............................ R. 48 R. 58(1) - (3).................R. 81
R. 35............................ R. 49 R. 58(4) - (8).................R. 82
R. 36............................ R. 50 R. 59.............................R. 83
R. 37............................ R. 51 R. 60.............................R. 84
R. 38(1), (2), (6)........... R. 52 R. 61.............................R. 85
R. 38(3) - (5)................ R. 53 R. 61a...........................R. 86
R. 38a.......................... R. 54 R. 62 ............................R. 87
R. 39............................ R. 55 R. 62a...........................R. 87
R. 40............................ R. 57 R. 63.............................R. 88
R. 41............................ R. 57; R. 58 - ....................................R. 89 - 98
- ................................... R. 59 R. 64.............................R. 99
R. 42............................ R. 60 R. 65.............................R. 101
R. 43............................ R. 56 R. 66(1) ........................R. 100(1)
R. 44............................ R. 61 R. 66(2) ........................R. 102
R. 44a.......................... R. 62 R. 67.............................R. 103
R. 45............................ R. 63 - ....................................R. 104 - 110
R. 46............................ R. 64 R. 68.............................R. 111
- ................................... R. 65 R. 69.............................R. 112
R. 47............................ R. 66 R. 70.............................R. 113
R. 48............................ R. 67 - ....................................R. 114
R. 49 ........................... R. 68 R. 71.............................R. 115
R. 50............................ R. 69 R. 71a...........................R. 116
R. 51(1) ...................... R. 70(2) R. 72(1) ........................R. 117
R. 51(2) - (11).............. R. 71 R. 72(2) ........................R. 118

737
Cross-reference list

R. 72(3), (4) ................. R. 119 R. 91.............................-

- ................................... R. 120 R. 92.............................R. 143
R. 73............................ R. 121 R. 93.............................R. 144
R. 74............................ R. 122 R. 94.............................R. 145
R. 75............................ R. 123 R. 95.............................R. 146
R. 76............................ R. 124 R. 95a...........................R. 147
R. 77............................ R. 125 R. 96.............................-
R. 78............................ R. 126 R. 97.............................R. 148
- ................................... R. 127 R. 98.............................R. 149
R. 79............................ R. 128 R. 99.............................R. 150
R. 80............................ R. 129 R. 100...........................R. 151
R. 81............................ R. 130 R. 101...........................R. 152
R. 82............................ R. 125(4) - ....................................R. 153
R. 83............................ R. 131 R. 102...........................R. 154
R. 84............................ R. 132 - ....................................R. 155
R. 84a.......................... R. 133 R. 103...........................R. 156
R. 85............................ R. 134 R. 104...........................R. 157
R. 85a.......................... - R. 105...........................R. 158
R. 85b.......................... - R. 106...........................-
- ................................... R. 135 R. 107...........................R. 159
- ................................... R. 136 R. 108...........................R. 160
R. 86............................ R. 137 R. 109...........................R. 161
R. 87............................ R. 138 R. 110...........................R. 162
R. 88............................ R. 139 R. 111...........................R. 163
R. 89............................ R. 140 R. 112...........................R. 164
R. 90............................ R. 142 - ....................................R. 165

Rule EPC 2000 → Article or Rule EPC 1973

R. 1.............................. - R. 6...............................R. 6
R. 2.............................. - R. 7...............................R. 7
R. 3.............................. R. 1 R. 8...............................R. 8
R. 4.............................. R. 2 R. 9...............................R. 12
R. 5.............................. R. 5 R. 10.............................Art. 16; Art. 18(1)

738
 Cross-reference list

R. 11............................ R. 9 R. 44 ............................R. 30
R. 12............................ R. 10 R. 45.............................R. 31
R. 13............................ R. 11 R. 46.............................R. 32
R. 14............................ R. 13(1) - (3) , (5) R. 47.............................R. 33
R. 15............................ R. 14 R. 48.............................R. 34
R. 16............................ Art. 61(1) R. 49.............................R. 35
R. 17............................ R. 15(1), (2) R. 50.............................R. 36
R. 18............................ R. 16(1), (2) R. 51.............................R. 37
R. 19 ........................... R. 17 R. 52.............................R. 38(1), (2), (6)
R. 20............................ R. 18 R. 53.............................R. 38(3) - (5)
R. 21............................ R. 19 R. 54.............................R. 38a
R. 22 ........................... R. 20 R. 55.............................R. 39
R. 23............................ R. 21 R. 56.............................R. 43
R. 24............................ R. 22 R. 57.............................Art. 91(1);
R. 40, 41
R. 25............................ R. 23
R. 58.............................Art. 91(1);
R. 26............................ R. 23b
R. 40, 41
R. 27............................ R. 23c
R. 59.............................-
R. 28............................ R. 23d
R. 60.............................R. 42
R. 29............................ R. 23e
R. 61.............................R. 44
R. 30............................ R. 27a(1), (4)
R. 62.............................R. 44a
R. 31............................ R. 28(1), (2)
R. 63.............................R. 45
R. 32............................ R. 28(4), (5)
R. 64.............................R. 46
R. 33 ........................... R. 28(3),(6) - (9)
R. 65.............................Art. 92(2)
R. 34............................ R. 28a
R. 66.............................R. 47
R. 35............................ R. 24
R. 67.............................R. 48
R. 36............................ R. 4; R. 25
R. 68.............................Art. 93(2); R. 49
R. 37............................ Art. 77
R. 69.............................R. 50
R. 38............................ Art. 78(2)
R. 70.............................Art. 94(2), (3);
R. 39 ........................... Art. 79(2), (3) Art. 96(1); R. 51(1)
R. 40............................ Art. 80 R. 71.............................R. 51(2) - (11)
R. 41............................ R. 26 R. 72.............................R. 52
R. 42 ........................... R. 27 R. 73.............................R. 53
R. 43 ........................... R. 29 R. 74.............................R. 54

739
Cross-reference list

R. 75............................ Art. 99(3) R. 108...........................-

R. 76 ........................... R. 55 R. 109...........................-
R. 77............................ R. 56 R. 110...........................-
R. 78............................ R. 13(4); R. 16(3) R. 111...........................R. 68
R. 79............................ R. 57 R. 112...........................R. 69
R. 80............................ R. 57a R. 113...........................R. 70
R. 81............................ R. 58(1) - (3) R. 114...........................Art. 115
R. 82............................ R. 58(4) - (8) R. 115...........................R. 71
R. 83............................ R. 59 R. 116...........................R. 71a
R. 84............................ R. 60 R. 117...........................R. 72(1)
R. 85............................ R. 61 R. 118...........................R. 72(2)
R. 86............................ R. 61a R. 119...........................Art. 117(2);
R. 72(3), (4)
R. 87............................ R. 62; R. 62a
R. 120...........................Art. 117(4) - (6)
R. 88............................ R. 63
R. 121...........................R. 73
R. 89............................ Art. 105
R. 122...........................R. 74
R. 90............................ -
R. 123...........................R. 75
R. 91............................ -
R. 124...........................R. 76
R. 92............................ -
R. 125...........................R. 77; R. 82
R. 93............................ -
R. 126...........................R. 78
R. 94............................ -
R. 127...........................-
R. 95............................ -
R. 128...........................R. 79
R. 96............................ -
R. 129...........................R. 80
R. 97............................ Art. 106(4), (5)
R. 130...........................R. 81
R. 98............................ Art. 106(2)
R. 131...........................R. 83
R. 99............................ R. 64
R. 132...........................R. 84
R. 100.......................... Art. 110(2), (3);
R. 66(1) R. 133...........................R. 84a
R. 101.......................... R. 65 R. 134...........................R. 85
R. 102.......................... R. 66(2) R. 135...........................Art. 121(2), (3)
R. 103.......................... R. 67 R. 136...........................Art. 122(2) - (5)
R. 104.......................... - R. 137...........................R. 86
R. 105.......................... - R. 138...........................R. 87
R. 106.......................... - R. 139...........................R. 88
R. 107.......................... - R. 140...........................R. 89

740
 Cross-reference list

R. 141.......................... Art. 124(1) R. 154...........................R. 102

R. 142.......................... R. 90 R. 155...........................Art. 135(2);
Art. 136(1), (2)
R. 143.......................... R. 92
R. 156...........................R. 103
R. 144.......................... R. 93
R. 157...........................Art. 151(1);
R. 145.......................... R. 94
Art. 152; R. 104
R. 146.......................... R. 95
R. 158...........................R. 105
R. 147.......................... R. 95a
R. 159...........................Art. 153(2); R. 107
R. 148.......................... R. 97
R. 160...........................R. 108
R. 149.......................... R. 98
R. 161...........................R. 109
R. 150.......................... R. 99
R. 162...........................R. 110
R. 151.......................... R. 100
R. 163...........................R. 111
R. 152.......................... R. 101
R. 164...........................R. 112
R. 153.......................... -
R. 165...........................-

741
 General Index

General Index entitlement to file an opposition,551

examination by the EPO of its own motion,548
interest of the opponent,552
A joint oppositions,554
notice of opposition,556
A posteriori opposition by the patent proprietor,553
unity,221, 231 Advertising
unity of invention,217, 219-222, 224, 226, 229, 231, 233, representatives,675
680, 682, 683, 687, 688 Aesthetic creations,1, 19, 290
A priori Affidavit,426
unity of invention,219, 226, 680-682 law of evidence,427
Abandonment of parts of an application or patent,419 Age of document
Abandonment with substantive effect,419 inventive step,161, 163, 164
Abandonment without substantive effect,420 time factor,163
Abstracts of documents Aggregate time limits,350
availability to the public,54 Aggregation of features
interpretation,69 inventive step,147, 148
Abuse Agreement between the EPO and WIPO,680
abuse of the law,483 Agreement on Trade-related Aspects of Intellectual Property
availability to the public,50, 51 Rights (TRIPS),487
evident abuse,50, 51 Agricultural methods,169
examination proceedings,509 Aids virus,176, 302
opposition proceedings,554 Alleged advantages,127
oral proceedings,334, 340 Allocation of responsibilities
standard of proof,495 interpretation of the EPC,490
Abuse of procedure Allowability of claims under Article 52(4) EPC,21
examination procedure,512 Allowability of the appeal
opposition proceedings,552, 553, 558 reimbursement of appeal fees,650, 651
oral proceedings,343 Alloy composition
reimbursement of appeal fee,652 availability to the public,72
Accelerated processing Alternative solution to a known problem,131
pending infringement proceeding,546 Amended claims (see Amendments, Claims and Appeal
Acceleration of proceedings in the case of pending infringement procedure)
proceedings,546 appeal proceedings,627, 640, 642
Accidental disclosure change of parties,648
amendment,256, 257 circumstances extraneous to the proceedings,648
state of the art,80 criteria,641, 642
Accidental anticipation difficulty of examination,645
amendments,253, 254 genetic engineering,643
novelty,80 late filing,641, 646
Accordance of a date of filing oral proceedings,640, 641
preliminary and formalities examination,491 remittal,627, 649
language of the filed documents,491 time limit,641
Additional fees time of filing,643
partial reimbursement in protest procedure (IPEA),692 Amendments, 235-281
re-establishment of rights,384 "is it essential" test,263
Additional search,576 absence of any relationship among features,240-242
Adjournment of oral proceeding abstract,235
opposition proceedings,547 addition of a feature,242
Administration regimen additional method claim,238
second medical use,107, 109 admissibility, 56
Administrative Agreement with the German Patent Office, 412, admissibility after reply to the first communication,508
413, 697 admissibility in opposition proceedings,326
Administrative Council,408, 665, 666, 671, 673 advertising literature,251
of the EPO,488, 489, 698, 700 after completion of examination procedure, 528
Administrative Instructions under the PCT,219, 229, 678 after oral proceedings,328
unity of invention,229, 682 ambiguous subject-matter,247
Administrative procedure amended definition,237
opposition proceedings,531, 532 amendment based on errors,249
Admissibility of amendments (see Amendments),569 apparatus inventions,271
Admissibility of applications for re-establishment of rights,360 approximate drawings,247
Admissibility of evidence,328, 424, 657 arbitrary new links between parameters,245
Admissibility of filing amended claims in appeal proceedings,640 arbitrary range,240
Admissibility of opposition based on public prior use,561 Art. 123(3) EPC,266
Admissibility of the appeal,611 average particle diameter,236
appeal filed within the time limit,611 bar on improving one's position,242
appealable decision,612 burden of proof,245
form and content of notice of appeal,619 calculation errors,249
form and time limit of the appeal,611, 618 change of claim category,214, 270, 272, 273
formal aspects,614 clarity,573
party adversely affected,615 combination of compounds,242
Admissibility of the opposition combination of features pertaining to separate
competence to decide,549 embodiments,239
designating the opponent,555 common general knowledge,279

743
General Index

conflict,274 protest procedure (IPEA),688

consent in examination proceedings,508, 513, 514, 524, protest procedure (ISA),685
526 Protocol on the Interpretation of Article 69 of the
content of the application as originally filed,235 Convention,266, 267, 270
cross-references,248 reference to prior art,251
cut-off point,267, 268 reformulation of the technical problem,239
definition of the claimed product,268 relationship between Art. 123(2) and (3) EPC,274
definition of the content of the application,247 reservoir,239, 262
definitive test,260 Rule 88, second sentence, EPC, 277, 524
deletion of a feature,242, 244, 259, 262 schematic drawing,247
deletion of meanings of residues,241 solution of the conflict between Art. 123(2) and (3) EPC,276
description,235 standard of proof,280
description of the prior art,251 structural feature,263
different sets of claims,236 subsequent addition of details,251
direct and unambiguous deducibility,259 substantive examination of the opposition,575
disclaimer,252 sufficiently precise figures,247
disclosure in drawings,246 technical contribution,237, 242
divisional applications,283, 509, 649 tests for allowability,259
drawings,235, 236 time of filing in the opposition proceedings,570
effects of technical feature,252 translation,235, 237
elimination of contradictions,250 undisclosed equivalents,238
equivalents,238 unwarrented advantage,242
errors,249 use claim,271, 272
essential features,245, 248 value of drawings,246
examination proceedings,504, 506 values taken from examples,242
exemplified feature,246 Amendments - divisional applications,235
explicit or implicit disclosure,262 Amendments after receipt of the European search report (Rule
extent of protection,269-271 86(2) EPC),504
extraction of features,240 Amendments after receipt of the first communication (Rule
features from drawings,246 86(3) EPC),508
filing date,236 Amendments and disclaimers,293
footnote solutions,275 Amendments filed before the boards of appeal,519
functional feature,246, 263 Amendments filed in reply to a communication under Rule
general range,262 51(4) EPC,523
generalisation,241, 242 Amendments in opposition proceedings,569
generalisation of a feature,239, 268, 269 Amendments relating to unsearched subject-matter,509
generalisation of the subject-matter of an application,259 Amendments to divisional applications,283
generic formula,241, 244 Amount lacking
generic group of compounds,241 small,413
graph representing a mathematical equation,247 Analogy process
implicit disclosure,235, 237, 243 inventive step,158
implicit feature,262 envisageable product,158
incorrect structural formula,249 Animal varieties
independent lists,241 exceptions to patentability,38, 43
individual values disclosed in the examples,240 Animals
inescapable trap,274 exceptions to patentability,38, 43
interaction with other features,246 medical methods,26, 29, 32
interests of third parties,242 non-therapeutic treatment,115
intermediate generalisation,263 Appeal fees
international application,235 protection of legitimate expectations,315
introduction of an isolated feature,238 re-establishment of rights,360
inventive selection,243, 245, 246 Appeal procedure,593-664
isolated steps,240 amended claims,640
language,236 appeal filed within the time limit,620, 640
limitation of the protection conferred,242 appealable decision,612
limiting extensions,275 arguments under examination,611
limiting feature,243, 266 binding effect of requests,601
moving features,270 change of circumstances after delivery of the decision,624
multiple selection,262 closure of substantive debate,626
new range,240, 242, 245 competence of board to hear the case,614
non-inventive selection,243 conclusion of the decision-making process,626
novelty test,259, 260, 265 consent to new grounds for opposition,601, 606
obviousness of the error and the correction,278 decision taken as the file stands,626
opposition proceedings,569, 573 devolutive effect,595, 602
particular combination,262 discretion,484, 609, 627, 641, 642
particular technical embodiment,262 entitlement to appeal,614
preamble,270 extent of scrutiny,594, 601
preferred embodiment,240 facts under examination,610
preferred range,245, 262 fees payable by intervener,600
priority,293 independent procedure,594, 596
priority documents,235 interlocutory revision,635
process of making a product,272 interpretation,635, 637
product-by-process claim,268, 273 language,595
production costs,243 late filing (see Late filing),646

744
 General Index

late submission,646 Area of a shipyard

legal character,593 availability to the public,55, 65
notice of appeal,619 Arguments under examination,611
obligation of the EPO to examine of its own motion,608 Ascertaining differences,82
observations by third parties,600 Ascertaining novelty,47, 82
party adversely affected,615 comparing each individual item,82
patent expired in all designated states,635 composition,85
patentability requirements,606, 609 difference in wording,84
principle of party disposition,594 differences in value,84
procedural statements,594 distinguishing features,83
procedure proper to an administrative court,594, 633 functional features,86
proceedings after the delivery of a decision,626 generic disclosure,84, 87
referral to the Enlarged Board of Appeal,637 inevitably obtained products,86
reformatio in peius,601 integral teaching of the document,74, 83, 96, 99
reformulation of the technical problem,129 product claim with process features,87
remittal,628, 649 reference to a second prior document,82
request for revocation of the patent,634 Assessing lack of unity on invention,218
review of first-instance discretionary decisions,611, 649 Assessment of inventive step,141
right to have issues considered at two instances,627, 628 Assessment of lack of unity by the International Searching
separate appeal,613 Authority (ISA),219
silence,617 Assessment of lack of unity in examination proceedings,220
statement of grounds of appeal,621 Assessment of prior uses,75
subject-matter under examination in opposition appeal Auction,145
proceedings,604, 606 Authorisation
substantial procedural violation (see Reimbursement of filing,615
appeal fees),637 protection of legitimate expectations,314
suspension of first-instance proceedings following association of representatives,449
referral,321, 637, 639 appointment of a representative,447
suspensive effect,483, 633 Auxiliary request
termination,632 oral proceedings,335, 337, 338, 655
time limits,620 Availability to the public,51
transfer of party status,597 abstract of a Japanese patent document,54
withdrawal of appeal,632 abstracts of documents,54
Appealability of decisions in disciplinary matters,674 abuse,50, 51
Appealable decisions,612 alloy composition,72
Appeals against decisions of the Examination Board and the area of a shipyard,55, 65
Examination Secretariat,671 availability free of charge,53
Applicability of Article 110(3) EPC,502 balance of probabilities,54, 64, 66, 212
Applicability of re-establishment of rights (Article biological material,56
122(1) EPC),357 book,52, 53
Application,303 brochure,64
abandonment of parts,419 burden of proof,54, 55, 62, 64, 94
abandonment of subject-matter,231 company papers,52
first application in a Paris Convention country,290 company's own staff,58
giving rise to a right of priority,232, 289, 290 conference,62, 63
publication,480 confidential relations,59
withdrawal of application as a whole,417, 419 congress,62
Application as a whole date of publication,47, 52
sufficiency of disclosure,173, 184, 203, 204 degree of purity,94
Application documents demonstration,59, 75
language,236, 491 diploma thesis,53, 63
preliminary and formalities examination,492 document,57
Application of Rule 90 EPC by the EPO of its own motion,353 equivalents,73
Appointment of a common professional representative (Rule 100 evidence,54
EPC),446 exhibition,50, 76
Apportioning the burden of proof,437 file inspection,52
Apportionment of costs,347, 405, 578 fungicide,114
abuse of oral proceedings,347, 589 general public,56, 220, 319, 320
abuse of procedure,588 German patent,52
apportionable costs,590 growth regulation,76
drawings,582 hidden feature,77, 78
due care,586 implicit disclosure,99, 100
equity,339, 578 implicit features,71
late submission,580 interaction with outside conditions,73, 77
non-appearance in oral proceedings,339, 347, 585 intermediate product,55, 81
principle of equal treatment,592 intrinsic features,73, 78, 113, 114, 117
prior use,580 joint venture agreement,63
withdrawal of the appeal,415, 585 letter,61
withdrawal of the opposition,585 library,53
withdrawal of the request,584 limited circle of people,57, 59
Approval of the text,332, 414, 416, 634 making available for test purposes,61
Approval of the text by the applicant,520 man in the street,57
Approved version of the patent market test,62
right to be heard,331, 332, 656 microchip,76

745
General Index

mistakes in the disclosure,79 Book

nature of the evidence,64 availability to the public,52, 53
obligation of the EPO to examine of its own motion,67 Borderline cases
operation instructions,53 European qualifying examination,670
oral disclosure,55, 57 Breeding process,41, 44-46
patent application,53 library,42
periodical,53, 65 Broad claims
permission to publish a text,52, 58 clarity of claims,191
person not skilled in the art,56, 58 inventive step,152, 153
pharmacological tests,68 priority,293
prima facie evidence,54, 63, 64 state of the art,78
prior use,55, 59, 60, 62-65, 67, 75, 78, 80 sufficient disclosure,180
procedural violation,55 support by the description,204
production process,56, 95 Brochure
prototype,56, 60, 63, 64 availability to the public,64
publication,51 evidence,64
publicity notice,65 Budapest Treaty,182
quotations,60, 61 Bundle of national patents,529
repetition of oral disclosures,55 Burden of proof,94, 185, 212, 303, 437, 598
report,51 amendments,245
sale,56, 76 availability to the public,54, 55, 62, 64
sale for test purposes,61 ex parte proceedings,437
selection inventions,81, 92 inventive step,130, 168, 438
shipyard,65 knowledge of the skilled person/s,64
small-ads newspaper,52 novelty,438
standard of proof,65 objection under R. 29(2) EPC,201
standards working party,62 opposition proceedings,184, 185, 437, 440
talk,54, 57 procedural questions,342, 439, 441
technical journal,53 product-by-process claims,212
theoretical possibility,51, 52 reproducibility of the invention,439
undue burden,49, 50, 52, 76-78 shifting the burden of proof,440
weapons manufacturer,61 Business assets
transfer,541
B
Balance of probabilities
C
availability to the public,54, 66 CAFC,679
evidence,51, 64-66 Calculation of time limits,348
novelty,68, 212 Cases of conflict,274
protection of legitimate expectations,314 Cases where the EPO is uncertain or mistaken about the
sufficiency of disclosure,185 approval of the text,332
Balance of probabilities and standard of proof - case groups,433 Categories of claims,186, 215, 216
Bank account product-by-process claims,214
fees,314, 412 Change of circumstances after delivery of the decision,624
Basic considerations in the interpretation of the same appeal proceedings,624
invention,292 Change of claim category
Binding effect amendments,270, 273
appeal proceedings,601, 629, 632 Change of composition of opposition division,456, 458, 555, 656
remittal for adaptation of the description,631 Change of parties,541
remittal for further prosecution,631, 632 Change of representative
Binding effect of requests - no reformatio in peius,601 re-establishment of rights,375
Binding effects of requests,601 Changes after oral proceedings,328
Bioisosterism Characterising portion
inventive step,152 two-part claim,201-203
Biological material,56 Chemical compounds,34, 88, 227, 229-231, 284
Biological processes Chemical inventions,87
essentially biological processes,38, 44 inventive step,151
Biotechnology selection inventions,87, 88, 96
deficiency in deposit,182 unity of invention,216-218
deposit of biological material,181 Chemical inventions and selection inventions,87
DNA,40, 45, 134 Civil court
exceptions to patentability,38, 41, 42 disciplinary measures,674
expectation of success,132-134 Claim in two-part form,202
identity of applicant and depositor,182 Claiming the invention disclosed in the earlier application in the
inventions contrary to morality,39 subsequent application,299
ordre public,39 Claims,185-215
reproducibility,181 amended,640
research,133, 136 amended, divisional application, pending, 649
skilled person,136, 181 amendment after examination procedure, 528
substances,170 change of claim category,270, 273
sufficiency of disclosure,38, 178 clarity,185, 186, 573
Board competent to hear a case,614 dependent (see Dependent claim),571
Bonus effect device,14, 16, 37, 186, 203, 216
inventive step,130, 166, 167 form of,104, 201

746
 General Index

function,204, 206 Combination of product and process features,213

independent (see Independent claims),571 Combinations within a prior art document,70
late filing (see Late filing),641 Commercial success
medical methods,21 inventive step,161, 164
one-part claim,202 Commercial use
process (see process claims),3 industrial application,169-171
two-part claim,202 Communication
unity of invention,218, 221, 225 ambiguous,311, 661
wording of,29, 107, 172, 185, 186 Communication and invitation to file observations under
Claims fees,214 Rule 58(4) EPC,536
re-establishment of rights,370 Communication under Article 11(1) RPBA
surrender of patent,422 oral proceedings,343
Claims supported by the description,203 Communication under Article 11(2) RPBA
adaptation of the description to the claims,205 oral proceedings,343, 698
apparatus claim,203 Communication under Article 96 EPC
broad claims,204 examination proceedings,324, 325, 360
claims,179, 185 Communication under Article 96(1) EPC and Rule
clarity of claims,183 51(1) EPC,504
essential feature,203, 204 Communication under Rule 51(4) EPC,382
extent of protection,204 Communication under Rule 51(6) EPC
provisional description,205 right to be heard,334
reproducibility,203, 204 Communication under Rule 58(4) EPC
sub-combination,203 opposition proceedings,536
sufficiency of disclosure,183 Communication under Rule 69(1) EPC,353, 362-364, 373, 455
technical contribution,183, 190 protection of legitimate expectations,318
undue burden,205 Communication under Rule 85a EPC
Clarity and completeness of disclosure,175, 178 protection of legitimate expectations,312, 318, 661
Clarity of claims,172, 185, 186 Company papers
absence of an upper or lower limit,198 availability to the public,52
apparatus claim,192 Company's own staff
broad claims,191 availability to the public,58
categories of claims,192 Comparative tests
complexity,188 inventive step,156, 167
conciseness of claims,189, 199 Comparing each individual item from the prior art,82
diagnostic methods,190 Competence
disclaimer,193 Legal Board of Appeal,482, 679
essential features,184, 189 Competence of the boards of appeal in proceedings under the
functional features,196 PCT,677-679
generally accepted meaning in the relevant art,187 Competence to correct a decision under Rule 89 EPC,474
interpretation of claims,184 Competence to decide
legal certainty,186, 187, 190 PCT,678, 679
method for measuring a quality,188, 210 Competence to decide on inadmissibility,549
omnibus claims,188 Competent departments,427
opposition proceedings,183, 573 Complete search report
process claim,190, 192, 193 unity of invention,234
reference signs,189 Completion of the internal decision-making process,463
reference to a patent specification,187, 195 Composition for manufacturing a medicament,33, 109
reference to the description or drawings,188 essential feature,216
relative qualities,198, 199 Composition of a review panel,690
support by the description,183 Composition of opposition division,328, 468, 656, 661
Swiss-type-claim,198 Composition of the competent departments of first instance,456
trade mark,187, 195 Composition of the product
undue burden,188, 194, 196, 197, 200 ascertaining novelty,76, 78
unity of invention,223, 682 Compounds
unspecified features,198 anticipation of certain compounds,89, 94
use claim,192 functional relationship,231
Closest prior art,121 structural relationship,231
Closure of the substantive debate unity of invention,215-217, 219, 226, 229, 230
appeal proceedings,626 Comptroller
decisions of EPO departments,463 right to a European Patent,309
Code of Professional Conduct,674 Computer programs
advertising,675 exclusion from patentability,142
professional obligations,674 industrial application,169
professional secrecy,675 technical character,3-5, 9, 12, 16, 142, 143
representatives,675 Computer-generated presentations
Combination inventions oral proceedings,346
inventive step,131, 147, 155 Computer-implemented inventions,3, 15
Combination of documents apparatus claim,3
inventive step,151 technical problem,4-6
two instances,122 Concept of "the same invention"
Combination of features priority,291, 292, 299, 304
amendments,195, 239-241 Concept of legal incapacity (Rule 90(1)(a) and (c) EPC),353
inventive step,149 Concept of novelty,47, 101
novelty,70, 100

747
General Index

Conciseness of claims,185, 199 Date of decision

clarity,199 EPO departments,463
independent claims of the same category,200 protection of legitimate expectations,312
method claims,200 Date of filing
multiple claims,200 amendments,463
superfluous claim,200 divisional application,281, 286, 287, 291, 406
use claims,200 language privilege,479
Conclusion of the decision-making process,626 preliminary and formalities examination,491, 495
Conditions for enrolment,666 priority,289, 291, 294
Conditions to be met by an application,173 protection of legitimate expectations,312
Conference Date of payment,412
availability to the public,62, 63 Decision,518
Consequences of interruption of proceedings (Rule appealable,347, 612
90(4) EPC),357 binding effect,630
Consequences of non-payment of a further search fee,231 competence to correct a decision,474, 475
Consideration of late submissions,390 composition of examining division,456
Consolidation of proceedings,528 composition of opposition division,456, 468, 656
Consultation by telephone,335, 516 correction of errors,471, 474, 475
Consultation by telephone not part of the formal procedure,313 date of decision,463
Content of the application as originally filed,235 decision to grant a patent,471
contentious proceedings discretion,462, 466, 474, 475, 509, 527
opposition proceedings,531 entry into force of decisions,463
Contentious proceedings,531 errors in patent specification,472
Contents of a communication according to Article 96(2) EPC and form of decisions,463, 612
Rule 51(3) EPC,507 formalities officer,463, 465, 473, 475, 477, 661
Continuation of proceedings,545, 631 inadequate reasons given in the decision,467, 470, 652,
Continuation-in-part-application,500 657
Contraception,21, 22, 28, 29, 119, 171 inconsistency between oral and written decisions,660
Contracting state of the Paris Convention interlocutory decision,519, 577, 613, 639
priority,289, 303 main and auxiliary requests,466
Contribution approach minutes of the oral proceedings,459, 472, 613
technical character,3 missing signature,471
Correction,410, 418 protection of legitimate expectations,313, 320
amendments,513 reasons,217, 466, 656, 658
competence,494 remittal for adaptation of the description,631
evidence,499 representation of members of the departments,455-457
Correction of decisions right to be heard,514
protection of legitimate expectations,313 signatures on a decision,456, 470
Correction of deficiencies in the application for re- suspected partiality,458
establishment,368 Decision of the President of the EPO
Correction of designation of states in Euro-PCT applications,498 documents excluded from file inspection,481
Correction of errors,671 Decision taken as the file stands
divisional application,410 appeal proceedings,626
Correction of errors in decisions,471, 474, 528, 529, 612 examination proceedings,470, 658
Correction of errors in filed documents,491, 494, 523 Decision to grant a patent,407
Correction of priority declarations,499 errors,471
Cosmetic examination proceedings,527
industrial application,169 Decision with the force of res judicata (see Final decision),614
Cosmetic treatment Decisions of EPO departments,455-478
medical methods,30-34, 119 right to a decision,455
novelty of use,119 Decisions of the Administrative Council concerning a question of
Costs,347 interpretation,489
apportionment of costs,578 Decisions of the opposition division,576
Could-would approach,131, 132, 147 Declarations regarding procedure,544
ex post facto analysis,131 appeal proceedings,594
Court,633 Deficiencies and mistakes in a disclosure,79
Courtesy services performed by the EPO,374, 662 Defining the state of the art,47
protection of legitimate expectations,318 Definition of common general knowledge,48
Courts,700 Definition of the skilled person,135
Criteria for determining lack of unity,223 Definitions of limits
Criteria for taking amendments to claims into consideration,641 priority,297
Cross-appeal,604 Degree of purity
Cross-references novelty,94, 212
amendments,248 Delay within the EPO
Curtailment of notice in the summons procedural violations,660
oral proceedings,342 Delivery of mail,349
delay,349, 386, 493
D interruption,349, 388
re-establishment of rights,386, 388
Data collection Demand for international preliminary examination
examination phase - diagnostic methods,35 time limits,678, 679
Data processing Demonstration
computer programs,4, 5 availability to the public,59, 75
Database,49 Department competent to decide upon the application,360

748
 General Index

Departure from previous case law amendments,252, 293

protection of legitimate expectations,312 case law prior to G 1/03,256
Dependent claim,305, 306, 605 clarity of claims,193
opposition proceedings,571 combination of features arising from different
unity of invention,217 documents,195
Dependent claims,217 definition,254, 255
Deposit of biological material,181 drafting of disclaimers,194
late submission of deposit number,182 excluding non-working embodiments,193
Deposit of living material,181 inventive step,157, 195
Description,169, 171, 235 law applicable to disclaimers,252
divisional application,281, 285, 287 medical methods,32
inventive step,126, 129 novelty,195
unity of invention,218, 219, 221-223, 228 restoring novelty,253, 255
Desideratum scope of protection,255
inventive step,159 transitional provisions,253
Design Disclosure,169, 171
inventive step,150 availability to the public,67
Designated office,219, 224, 692, 695 clarity and completeness,175, 178
EPO,219, 233, 677, 678, 692-695 combination of features,70, 100
Designating the opponent,550 defective,124
Designation fees,411 disclosure in a prior art document,67, 96, 99
divisional application,409 divisional application,283, 288
preliminary and formalities examination,496 drawings,74, 246
re-establishment of rights,368, 369 implicit,71, 72, 90, 99, 100, 292, 295, 299
time limits,350, 351, 497 in a precise manner,175, 299
Designation in Euro-PCT applications non-prejudicial (see non-prejudicial disclosure),50
preliminary and formalities examination,498, 695 patent specification,84
Designation of a representative previous application, 293
international application,485 pharmacological tests,68
Designation of contracting states,417, 496 priority,293, 297
divisional application,409 reproducibility,80
Designation of receiving Offices state of the art,47, 67-69, 91, 99
due care,380 teaching of examples,71, 74
Designation of states Disclosure in the earlier application of the invention claimed in
preliminary and formalities examination,496 the subsequent application,292
re-establishment of rights,357 Disclosure in the previous application as a whole,293
Designation of states in divisional applications,497 Disclosure test under Article 123(2) EPC
Determination of closest prior art in general,121 priority,292, 293, 299, 300
Determination of the technical problem,126, 223 Discovery,1, 117
Determining legal incapacity of the applicant or patent proprietor Discretion
for the purpose of Rule 90(1)(a) EPC,354 appeal proceedings,484, 609, 611, 627, 637, 641, 642,
Determining legal incapacity of the representative for the 644, 649
purpose of Rule 90(1)(c) EPC,354 decisions of EPO departments,462, 466, 474-476, 658
Determining the content of the relevant prior art,67 examination proceedings,505, 508, 509, 515, 519,
Development of the art in a different direction 523-525, 658, 659
inventive step,162 late submission,344, 345, 392, 660
Devolutive effect,602 opposition proceedings,570, 660
appeal proceedings,595 oral proceedings,333, 334, 336, 337, 698
preliminary and formalities examination,502 PCT procedure,695
protest procedure (ISA),686 protest procedure (IPEA),689
re-establishment of rights,361 reimbursement of appeal fees,663
Devolutive effect of the appeal,595 Discretionary decisions
Diagnosis review,611
industrial application,172 Dispensing with further search fee,233
medical methods,34-37 Distinction between presentation of facts and evidence and
Diagnostic methods,1, 20-23, 25-27, 34, 37, 101 presentation of arguments,454
medical methods,20, 22, 23 Distinguishing features,83
Dictionaries,48, 69 Division of a divisional application,282-285
Different priorities for different parts of a European patent Divisional application,281-288, 406-411
application,305 amended claims,649
Diploma thesis amendments,283, 510, 511, 649
availability to the public,63 appeal against decision to grant a patent on the parent
Directive 98/44 EC application,595
exceptions to patentability,38 correction of errors,410
Disciplinary Board of Appeal,665-676 date of filing,281, 286, 287, 406
power of review,671 description,281, 285, 287
Disciplinary Committee,665, 674 designation fees,409
Disciplinary matters,673 designation of contracting states,409, 497
appealability of decisions in disciplinary matters,674 examination proceedings,281, 282, 414, 510, 511
Disciplinary measures,673 filing,281, 358, 408, 410, 419, 422
European Convention for the Protection of Human Rights inventive step,126
(ECHR),673 opposition,281
Disclaimer parent application,281, 283-286, 288, 406, 407, 409, 410
accidental anticipation,193, 253, 254 preliminary and formalities examination,496, 497

749
General Index

priority,406 EQE Examination Board,665, 669-671, 673

procedural questions,406 Equity
protection of legitimate expectations,319 apportionment of costs,339, 578, 579
Rule 25(1) EPC,407 fees,233, 413
subject-matter of a divisional application,281 oral proceedings,333, 339, 341
unity of invention,231, 510 reimbursement of appeal fees,650, 651, 663, 664
validity,282 Equivalents,185
Divisional application in the name of not all the applicants for amendments,238
parent application,486 availability to the public,73
DNA,40, 45, 134, 296, 297, 302, 307 inventive step,154
Documents cited in the patent or the search report,402 state of the art,73
Double function Error margins
opposition proceedings,563 priority,297
Double patenting,285, 287 Error margins and definitions of limits,297
Drawing,235, 236 Error of judgement by a department of first instance
apportionment of costs,582 reimbursement of appeal fees,470, 659
preliminary and formalities examination,493 Errors,663
unity of invention,221, 228 address of the appellant,619
Due care,374 amendments,249
applicant,378 calculation errors,249
apportionment of costs,586 correction,278, 695
assistants,366, 383 date of priority,500
client's true wishes,380 decisions of EPO departments,471
designation of receiving Offices,380 drawings,493
individual applicant who had no representative,378 error of transcription,498, 500
non-authorised representative,379, 382 name of the appellant,619
private mail delivery services,386 Patent Bulletin,478,530
professional representatives,378, 379, 381 priority claim,501
re-establishment of rights,362, 363, 373, 374, 376, 388 priority declaration,499
short time working,377 reimbursement of appeal fees,654
substitutes replacing assistants,385 Errors in the disclosure,249
technically qualified assistant,385 Errors in the printed version of the European patent
transfer of cases,380 specification,473
Duties not entrusted to formalities officers,477 Erythropoietin,137
Duty of persons without residence nor place of business within a Essentially biological processes
contracting state to be represented by a professional exceptions to patentability,44
representative,442 Euro-PCT application,289, 692
European Convention for the Protection of Human Rights,486,
E 673
European Patent Bulletin,387, 407, 417, 478, 481
Easily remediable deficiencies European Patent Convention
protection of legitimate expectations,315 special agreement,289-291
Effect of non-payment of designation fees,497 European prior rights,416
Elected Office state of the art,47
EPO,677, 678, 692, 694 European qualifying examination,665, 666
Electronic filing of documents borderline cases,670
protection of legitimate expectations,317 conditions for enrolment,666
Embodiments of the invention,175, 178 EPO examiner,667, 668
Enabling disclosure in the priority document,301 Examination Board,665, 666, 669-671, 673
Enantiomers examination committee,666, 669
novelty,93 examination conditions,668
Encyclopaedias,48, 69 examination secretariat,665-667, 669, 671
Ensuring uniform application of the law,638 legal practitioner,665, 667
Entitlement to appeal,614 legitimate interest,672
Entitlement to file an opposition,551 marking,669
Entry into force of a decision to grant a European patent,529 marks awarded,671, 672
Entry into force of decisions,463 official languages of the EPO,668
Entry into the European phase,677 patent attorney under national law,667
Entry of payment in an account principle of equal treatment,667-669
fees,412 right to be heard,673
Envisageable product substantiation of EQE decisions,670
inventive step,158 time limit for appeal,671
EPC 2000,141, 479, 488 training period,667
divisional application,285 university-level qualification,666, 667
protest procedure,677, 680, 684, 687, 691 European register of patents,597
Epi,665 withdrawal of the application,481
Epilady case Evaluation of evidence,428
prior use,78 standard of proof,39, 41, 65, 66
EPO acting as PCT authority,678-696 Every day items
EPO communications to take note and sufficient time to submit a inventive step,140, 141
response,536 Evidence,40, 54, 367
EPO Disciplinary Board,665, 673, 674 admissibility,424, 657
EPO postal service affidavits,426
handing over the decision,324, 464, 547 availability to the public,54

750
 General Index

balance of probabilities,65, 66, 433 Examples

burden of proof,54, 94, 245, 437 state of the art,74, 96
comparative tests,431 Examples of the legitimate expectations principle,312
evaluation of evidence,350 Examples of the obligation to draw attention to easily remediable
hearing parties, witnesses and experts, 424 deficiencies,315
hearsay,431 Examples on the denial of inventive step,159
internal document,431 Exceptions to patentability,37-46
inventive step,130, 168 animal varieties,38, 43
oral proceedings,326, 328, 338, 342 animals,38, 43
post-published,127 breeding process,38, 41, 42, 44-46
prior use,433 Directive 98/44/EC,38
probative value,429 essentially biological processes,44
procedure for the taking of evidence,427 hybrid plants,43
relevance of evidence,428 Interpretation,38-40, 42-44
right to be heard,322, 323, 326, 328 inventions contrary to morality,37-39
standard of proof,433 living matter,38
sufficiency of disclosure,185 microbiological processes,38, 43, 45
unfettered consideration of the evidence,423, 428 norms of the European society and civilisation,39, 41
Evidence of inventive step in the field of medicine,158 ordre public,37-39
Evident abuse (see abuse),50 plant cells,43, 45
Examination after remittal for further prosecution,525 plant varieties,38, 42, 43, 45, 46
Examination as to novelty and inventive step,223 plant variety protection,42, 46
Examination as to relevance,392 plants,40, 42, 45, 46
Examination by the EPO of its own motion,349, 548 process patent,42
appeal proceedings,604 processes of genetic engineering,42, 44, 45
opposition proceedings,562, 604 product claim,14, 44
Examination conditions,668 product-by-process claims,45
Examination fees products of a microbiological process,43, 45
examination proceedings,503, 505 ratio legis,38
re-establishment of rights,368, 370 Regulation on Plant Variety Rights,42, 46
time limits,357, 370, 678 risks to the environment,41
Examination of admissibility of opposition,548 selective breeding,41, 42, 45
Examination of the factual framework of the opposition,568 UPOV Convention,42, 46
Examination of the legal framework of the opposition,563 Excluded national prior rights,50
Examination procedure,503-531 Exclusion from patentability,20
abuse of procedure,509, 512 computer programs,142
amendments,506, 508, 509, 519, 523, 526 industrial application,169, 170
amendments after receipt of the European search Interpretation,21
report,504 medical methods,20-22, 24-26, 29, 30, 33-37, 110
approval of the text,520, 523, 525, 526 process claims,21, 22
consent to amendments,508, 514, 524, 526 Exercise of discretion (see Discretion)
consolidation of proceedings,528 Exhaustion of priority,291
decision to grant a patent,521, 523, 528, 529 Exhibition
discretion,505, 508, 509, 515-517, 523, 524, 527, 658, 659 availability to the public,76
divisional application,281, 282, 510 non-prejudicial disclosure,50
errors in the Patent Bulletin,478, 530 Expectation of success in the field of biotechnology
informal communications,516 inventive step,132-134
interest of parties,504, 508, 523, 525, 527, 528, 530 Explicit or implicit disclosure of the essential features in the
interviews,335, 516 priority document,295
invitation to file observations,505, 506, 524 Ex-post-facto analysis,121, 123, 124, 128, 131, 132, 137
legal certainty,521 Extension
main request and auxiliary request,415 time limits,351-353, 381, 493
metric or SI units,531 Extension agreement,698
national patent law,527, 529 Extension of European patents,698
oral proceedings,508, 512, 515, 517 Extension of protection conferred by product-by-process
priority,289 claims,213
procedural declarations,521 Extension of time limits ipso jure on account of public holidays or
procedural principles,512 technical failures,349
public interest,530 Extension of time limits on request and further processing,352
request for examination,503-505 Extension Ordinances on the extension of European patents,698
res judicata,529 Extension states,699
resumption of substantive examination,525 Extent of competence of the Receiving Section,494
right to be heard,514, 515, 518, 522 Extent of examination
substantial procedural violation,467, 509, 511, 513, 517, appeal proceedings,601
518, 522 Extent of protection,183, 185, 186, 204, 206, 208
substantive examination,504, 505 amendments,269-271
telephone conversations,506, 516, 655 interpretation of claims,68, 69, 210
unity of invention,221, 510 medical methods,24, 37
unsearched subject-matters,509 Extent of scrutiny,601
Examination proceedings after issue of the Rule 51(4) EPC appeal proceedings,594
communication,520 Extent to which the European patent is opposed,563
Examiner
protection of legitimate expectations,314

751
General Index

F Fixing and postponing the date

oral proceedings,340
Facts Fixing of costs,591
examination,610 Fixing or postponing the date for oral proceedings,340
Facts under examination - applying Article 114 EPC in appeal Forfeiting a right
proceedings,610 right to be heard,325
Factual framework of an opposition,568 Foreseeable disadvantageous or technically non-functional
Failure to reply to the communication pursuant to Article modifications,149
96(1) EPC,505 Forfeiting a right
Failure to reply to the communication pursuant to Article oral proceedings,330, 518
96(2) EPC,518 Form and time limit of appeal,618
Fair procedure Form of decisions,464
opposition proceedings,531, 533 Form of the claims,201
right to be heard,322, 323 Formal requirements for opposition and filing in due time,549
Fairness,651 Formalities officer
Family of compounds competence,475, 477, 480, 549, 661
state of the art,92 opposition proceedings,480, 549
Feature Formulation of technical problem,126-128, 135, 142
addition of a feature,284 technical and non-technical features,19, 146
clarity of claims,184 Functional features,37, 186
deletion,244 amendments,263
essential,189, 203, 204, 245, 248, 295, 301 ascertaining novelty,86
generalisation,239, 269 clarity of claims,196
missing - priority,300 generalisation from the particular examples,197, 204
technical,143-145 novelty of use,112, 114, 116, 117, 119
unity of invention,215, 223-228, 230 routine trials,197, 198
unspecified,198 standard test,198
Features missing with respect to the earlier application,300 support by the description,204, 205
Features not contributing to the solution of the problem,149 technical character,5, 9, 10, 14, 197
Federal German Constitutional Court,486, 671 Functional interdependence
Fee reduction inventive step,147, 148
language privilege,478, 479 Fungicide
Fee-monitoring system novelty of use,113
re-establishment of rights,375 Further invitations to pay additional search fees,233
Fees, 411-414 Further oral proceedings before the same department,337
administrative agreement,412, 413 Further processing
bank account,314, 412 time limits,348, 352
compare also Fees payable by intervener,600 Further processing under Art. 121 EPC,352
date of payment,412
debit orders,411 G
entry of payment in an account,412
equity,233, 413 Gene (see DNA),40
payment,411 General authorisations,448
payment in due time,650 General professional obligations,674
protection of legitimate expectations,316-318 General public,138
purpose of payment,412 availability to the public,56, 220, 319-321
small amount lacking,413 interest of,194, 341, 417, 419, 500, 501, 668
Fees for re-establishment of rights,362, 388 preliminary and formalities examination,500
fees payable by intervener re-establishment of rights,387
appeal proceedings,600 General rules of interpretation,67
Field of medicine Generalisation of a feature,269
inventive step,158 Generic defined group
Filing and admissibility of the appeal,611 state of the art,101
Filing and search fees Generic disclosure
time limits,493 ascertaining novelty,84, 87
Filing and substantiation of the application (Article 122(2) and priority,298, 299
(3) EPC),366 Generic formula
Filing fees novelty,88, 89, 91, 92
re-establishment of rights,368 priority,306, 307
Filing of amended claims in appeal proceedings,640 German patent
Filing of application documents,492 availability to the public,52
Filing of priority documents,502 Grant fees
Filing of the authorisation,447 re-establishment of rights,360
Filing of the opposition Grounds for opposition,556-559, 606
extent,563 agreement of the patent proprietor,601, 606
Final decision,458 divisional application,282, 606
Financial difficulties intervention,600
re-establishment of rights,372 new grounds for opposition,566, 606
First and further communications pursuant to Article 96(2) EPC new grounds for opposition in appeal proceedings,606
and Rule 51(2) EPC,505 scope of the examination,565, 606
First application in a Paris Convention country,303 Groups of substances
First medical use,216 novelty,88, 91-93
novelty,101 Growth regulation
availability to the public,76

752
 General Index

Guidelines for examination,3, 14, 32, 99, 120, 131, 135, 154, secondary indicia,171
281-283, 288, 289, 319, 406, 470, 472, 506, 512, 515, 517, Industrial design
519, 523, 532, 534, 537, 545, 546, 655, 659, 670 priority,290
unity of invention,220, 221, 230, 232, 233 Inevitable result
novelty,72, 73, 75, 82, 86, 88, 91, 100
H Informal communications,516
Information
Handbook by telephone,313
knowledge of the skilled person/s,48, 69 erroneous,311
Hearing parties, witnesses and experts, 424 protection of legitimate expectations,311-313, 315, 319
High Court of England and Wales,488 Infringement of Article 123(2) EPC
Holiday technical problem,130
re-establishment of rights,385 Infringement proceedings,546, 628
Hope to succeed Infringer,546
inventive step,133 In-house knowledge
Hybrid plants state of the art,48
exceptions to patentability,43 In-house knowledge not published before the priority date,48
product-by-process claims,213 Insolvency
Hybrid seeds interruption of proceedings,356
product-by-process claims,213 re-establishment of rights,387
Inspection of files,480
I availability to the public,52
withdrawal of application,419
Identity of invention Institutional matters,697-700
priority,291, 305 administrative agreement,697
Identity of the applicant Administrative Council,700
preliminary and formalities examination,495 contracting states,700
Illness,108, 171 extension agreement,698
oral proceedings,340, 341 extension of European patents,698
re-establishment of rights,364, 385 extension ordinances,698
Impact of withdrawal of opposition on proceedings before the extension states,699
EPO,543 fax,697
Impartiality,598 national applications,699
appeal proceedings,598 national law,699
decisions of EPO departments,458, 462 time limit,697
opposition proceedings,533 Interaction with outside conditions
see also Suspected partiality,458 availability to the public,73, 77
Implementing Regulations,490, 617, 699 Interest of the opponent,552
interpretation of the EPC,490 Interest of third parties (see General public)
Implicit disclosure Interlocutory decision,416, 519
amendments,237, 243, 262 appeal proceedings,613, 627, 639
Implicit features opposition proceedings,324, 544, 577
availability to the public,71 Interlocutory revision,635
priority,299 reimbursement of appeal fees,636, 650, 662
state of the art,71 Intermediate compound
Important points of law,638 unity of invention,228
improvement in commercially used process Intermediate products
inventive step,158 availability to the public,55, 81
Improvement of a production process for a known product,125 inventive step,153, 159
Improvement of properties unity of invention,217, 218
inventive step,156 International application,677, 693
Inability to observe a time limit,372 interpretation,694
Inadmissible oppositions protection of legitimate expectations,316, 318
right to be heard,338 state of the art,48, 219, 220, 223, 225, 226, 230
Inconsistency between oral and written decision,466, 660 time limits,677
Inconsistency between oral and written decisions,466 withdrawal of priority claims,695
Incorrect debit orders,411 International Court of Justice,488
Independence International Preliminary Examining Authority (IPEA),215, 219,
boards of appeal,343 224
Independent claims,23, 284, 288, 305, 604 unity of invention,219, 224
of the same category,200 International Preliminary Examining Report
unity of invention,215, 217, 226 right to be heard,322, 658
Independent procedure International Searching Authority (ISA),215, 219, 220, 223, 224,
appeal proceedings,594, 595 233
opposition proceedings,531 unity of invention,219, 220, 223, 224, 233, 681
Indication of purpose of payment,412 Interpretation,21, 227
Indicia in determining industrial applicability,171 claim,107, 114, 205
Industrial application,20, 23, 168 context of the document as a whole,67, 74, 83
commercial use,169-171 EPC,40, 42-44, 312, 367, 371, 374, 486, 488, 489
exclusion from patentability,169, 170 exceptions to patentability,38-40, 42-44
formulation of claims,172 exclusion to patentability,21
manufacture of a substance,170, 171 international application,694
medical methods,20, 23, 25, 26, 28, 101 medical methods,36
novelty of use,101 request for grant,692

753
General Index

Rule 46(1) EPC,232 expectation of success in the field of

unity of invention,215, 683 biotechnology,132-134
Interpretation and application of Rule 71a EPC,343 ex-post-facto analysis,121, 123, 124, 128, 131, 132, 137
Interpretation of Article 87 EPC in the light of TRIPS,488 features not contributing to the solution of the problem,149
Interpretation of claims,84, 85, 205 field of medicine,158
clarity of claims,184, 208 formulation of the technical problem,135, 142
definition of terms in the description,207, 208 functional interdependence,147, 148
description,206 hope to succeed,133
drawings,206 improvement in commercially used process,158
essential feature,114 Improvement of properties,156
extent of protection conferred by the patent,68, 69, 210 intermediate products,153, 159
inconsistent claims,209 knowledge of the skilled person/s,151
relevance of Article 69 EPC,207 level of knowledge of the skilled person,135, 139
technical character,17 monopoly,120
unclear term,207, 209, 210 most promising springboard,123
Interpretation of requests most promising starting point,121, 124
appeal proceedings,637 neighbouring field,135, 138, 139
Interpretation of the EPC,486 new use of a known measure,155
re-establishment of rights,380 obvious new use,156
Interpretation of the EPC by the boards of appeal,489 old prior art documents,125
Interpretation of the state of the art,67 one-way-street situation,166
obverse inference,68 optimisation of parameters,157
relevant point in time,70 partial problems,129, 147, 148, 151, 166
Interpretation of the various language texts of the EPC problem and solution approach,122-124, 126, 129, 131,
(Article 177 EPC),488 135, 142, 146
Interrelation between Article 122 EPC and Rule 85(2) EPC,388 problem inventions,127, 154, 159
Interruption product-by-process claims,211, 212
delivery of mail,349 production process for a known product,125
Interruption of proceedings,356 reversal of procedural steps,159
re-establishment of rights,373, 387 rights of joint use,165
time limits,348, 353 routine experiments,137, 160
Intervention,546, 599 secondary indicia,137, 161
admissibility,546, 599 secondary indicia age of documents,161, 163, 164
appeal proceedings,599 secondary indicia commercial success,161, 164
grounds for opposition,600 secondary indicia cost of advertising,161
infringer,546 secondary indicia development of the art in a different
intervener's rights,600 direction,162
time limit,599 secondary indicia licensing,161
Intervention of an alleged infringer,546 secondary indicia prejudice in the art,150, 161
Interview,334 secondary indicia satisfaction of a long felt need,161, 163
examination proceedings,335, 513, 516 secondary indicia simple solution,165
Intrinsic features secondary indicia surprising effect,166
availability to the public,73, 78, 113, 114, 116, 117 secondary indicia time factor,163, 164
state of the art,73, 78 simple solution,131, 154
Inventions contrary to morality simplification of complicated technology,160
biotechnology,39 skilled person (see Skilled person),132, 135, 142, 143
exceptions to patentability,37-39 state of the art (see State of the art),143
opinion polls,39 structural similarity,122, 151
standard of proof,39 substitution of materials,150
transgenic animals,38, 39 sufficiency of disclosure,174
transgenic plants,40, 41 technical and non-technical features,141
Inventions contrary to ordre public,39 technical character of the invention,6, 7, 13, 17, 141, 145
Inventive character of the single general concept,227 technical disclosure in a prior art document,149
Inventive step,120-168 technical effect,122, 128-131
aggregation of features,147, 148 technical problem (see Technical problem),126, 144
alleged advantages,127, 167 technical progress,120, 127, 128
alternative solution,131 technically non-functional modifications,149
analogy process,158 unity of invention,219, 221, 223, 227, 228, 682
automation,160 Viagra,162, 164
bioisosterism,152 Inventor
bonus effect,130, 166, 167 aggregation of features,290
broad claims,152, 153 Invitation to file observations,325, 504-506, 524, 534
chemical inventions,151 IPC classification,151
combination invention,131, 147, 155 Is it essential test
combination of documents,122, 151 amendments,263
common general knowledge,162 Issuance of a further communication under Article
comparative tests,156, 167 113(1) EPC,512
could-would approach,131, 132, 147 Issues of proof,64
date of priority,161
desideratum,159 J
disclaimer,157
envisageable product,158 Japanese patent attorney
equivalents,154 re-establishment of rights,379
every day items,140, 141

754
 General Index

Japanese firm legal framework,393

re-establishment of rights,379 obligation of the EPO to examine of its own motion,390
Japanese patent document obligation to maintain secrecy,398
abstracts,54, 69 oral proceedings,389
Joint oppositions,554 procedural economy,344
Joint venture agreement proceedings before the boards of appeal,391
availability to the public,63 proceedings before the opposition divisions,390
Jurisdiction,478 public prior use,396, 398
relevance of the tests,396
K remittal to the first instance,403, 404, 627, 649
right to be heard,400
Keeping of evidence,428 search report,402
Knowledge of skilled person relevant for assessing sufficiency of specification of the patent,402
disclosure,173 statement of reasons,392
Knowledge of the skilled person/s,48, 79, 81, 83, 94, 99 subject-matter of the appeal procedure,393
burden of proof,64 The meaning of "late",389, 398
database,49 volenti non fit iniura,401
inventive step,151 Late-filed arguments,401
priority,291, 292, 294, 297, 299-301, 303 Law of evidence,423-441
sufficiency of disclosure,176, 177, 179 Legal advice,528
Nr. 11/82,418
L Nr. 15/84,382
Nr. 15/98,416
Language Nr. 16/85,455
appeal proceedings,479, 595 Nr. 4/80,509
application documents,491 Nr. 5/80,350
European qualifying examination,668 Nr. 5/93,350, 351
language privilege,478 Nr. 8/80,417
of a contracting state,478, 492 protection of legitimate expectations,314
official language of the EPO,347, 478, 488, 492, 595 Legal Board of Appeal
oral proceedings,347 competence,482, 679
Language of the proceedings,595 Legal capacity,353
Language privilege,478 of the applicant/ patent proprietor,354, 387
date of filing,479 of the representative,354, 355
Lapse of a patent,545, 635 Legal certainty,25, 36, 44, 283, 292, 365, 418, 514
Lapse of an application,285 examination proceedings,514, 521
Large firms/companies interpretation of claims,186, 187, 190
re-establishment of rights,377, 386 procedural steps,414
Laser right to be heard,329
medical methods,26 Legal character of appeal procedure,593
Late amendments under new Rule 51(6) EPC Legal framework of opposition,563
communication,526 Legal incapacity of a representative from outside the contracting
Late filing states,355
claims,344-346, 420, 641 Legal nature
documents,330 opposition proceedings,531
new arguments,340 Legal nature of opposition proceedings,531
new evidence,340 Legal practitioner
oral proceedings,326 European qualifying examination,665, 667
requests,331, 344-346, 658 representation,443
Late submission,388-406 Legal practitioners entitled to act as professional
abuse of procedure,390, 393, 394, 396, 399 representative,443
acceleration of the proceedings,389 Legal principle
admissibility of a fresh ground for opposition,394 protection of legitimate expectations,311
apportionment of costs,405, 580 re-establishment of rights,358
arguments,327, 328 Legal status of the Guidelines for Examination in the EPO,476
change of representatives,397, 399, 400 Legitimate expectations (see Protection of legitimate
clear explanation,398 expectations)
comparative tests,396, 401 Lenticule
complexity,391 medical methods,26
concept of "facts",401, 402 Letter
counter-experiments,389, 401 availability to the public,61
delaying the proceedings,390 Level of knowledge
discretion,344, 345, 389, 660 inventive step,135, 139
estoppel,396 skilled person,143
examination as to relevance,390, 392, 396 sufficiency of disclosure,175
examination proceedings,508 Library,53
experiments,395, 400, 401 Licences
factual framework,393 registration,481
fairness in the proceedings,389, 394, 395 Licensing
fresh experimental data,394 inventive step,161
in due time,389 Limitation of the extent of the protection
justified late submission,399 priority,292
lack of reasons,395 Limits of the obligation to draw attention to easily remediable
late filing,390, 646 deficiencies,317

755
General Index

List of professional representatives,441, 665, 673 Merit of applications for re-establishment of rights,372
Literature Method claims,21-23, 186
technical,48 aesthetic creations,19
Loss of rights,334, 351, 352, 358, 363, 371, 372, 385, 388, 477, clarity of claims,190, 192
502, 524 computer-implemented inventions,3
right to a decision,455 Exceptions to patentability,42
Exclusion from patentability,21, 22
M medical methods,30, 37
novelty of use,105, 113
Main and auxiliary requests,415, 466 technical character,18
examination proceedings,415 unity of invention,215, 216, 226, 228
opposition proceedings,416 Methods applied in the private and personal sphere,171
Maintenance in the case of prior European rights,416 Methods for doing business
Maintenance of the patents as amended,420, 421, 577 industrial application,169
unity of invention,222 technical character,14-16
Making available for test purposes Methods of paying,412
availability to the public,61 Metric or SI units,531
Making good the omitted act,366 Microbiological processes
Man in the street exceptions to patentability,38, 43, 45
availability to the public,57 Microbiological processes and the products thereof,45
Manufacture of a substance Microchip
industrial application,170, 171 availability to the public,76
Market competitor,283, 288, 301 Micro-organisms
Market test exceptions to patentability,45
availability to the public,62 sufficiency of disclosure,178, 179, 181, 182
Marking the answer papers,669 Minutes,471, 472
Markush claims correction,346, 472, 613
unity of invention,229, 683 oral proceedings,333, 342, 346, 459, 468, 595, 613
Markush formulae,87, 200 wrong,346, 662
Mathematical methods Missed time limit for filing the protest,687
technical character,1, 5, 17 Mistakes in a disclosure,79, 81
Meaning of terms,206 Misunderstanding (giving rise to)
Measurement error protection of legitimate expectations,311, 313, 314, 319
clarity of claims,186 Monitoring time limits
Measuring methods re-establishment of rights,375, 385
sufficiency of disclosure,184 Monopoly
Medical methods,20 inventive step,120
animals,26, 29, 32 Most promising springboard
claims,21 inventive step,123
composition for manufacturing a medicament,33 Most promising starting point
contraception,21, 22, 28, 29 inventive step,121, 122, 124
cosmetic treatment,30-34 Motor vehicle for demonstration
diagnostic methods,20-23, 25-27, 34-37 availability to the public,55
disclaimer,32 Multiple exercise of the right of priority for one contracting
exclusion from patentability,20-22, 24-26, 29, 30, 33-36, state,290
109, 110 Multiple priorities,305, 306
extent of protection conferred by the patent,37 Multiple priorities for one claim,306
industrial application,20, 23, 25, 26, 28 Multi-step methods
laser,26 microbiological processes,46
lenticule,26
medical character of the methods,25
method claims,30, 37
N
national law,26, 28 National applications,699
novelty of use,101 National court,340, 342, 414
pain,27, 28 suspension of proceedings,483
prophylactic treatment,27, 32 National decisions
skilled person,25 interpretation of the EPC,489
snoring,31 National deposit of industrial design,290
surgery,32 National fee
surgical methods,32-35, 37 re-establishment of rights,369
technical and non-technical features,21, 23, 36 National law,359, 418, 484, 699
therapeutic and non-therapeutic indications,29, 31, 32 medical methods,26, 28
therapeutic effect,24, 29-31 opposition proceedings,532
therapeutic methods,27, 35, 37 right to a European Patent,309
treatment by surgery,20-24, 26, 27, 33, 37 National offices,699
treatment by therapy,20-31, 33 National patent
Medical practitioner,24-27, 36, 107, 109, 110, 172 opposition proceedings,531
Medicament National patent law
composition for manufacturing a medicament,33 unity of invention,220
novelty of use,101 National prior rights
process for the manufacture of a medicament,105 state of the art,50
second medical use,33, 104 Nature of the evidence
Mental acts availability to the public,64
technical character,10 Ne ultra petitia (see Principle of party disposition),532

756
 General Index

Need to improve properties,156

Neighbouring technical field
O
inventive step,135, 138, 139 Obiter dictum,469
New facts,405 opposition proceedings,460
New grounds for opposition (see Grounds for opposition),606 Obligation of the EPO to examine of its own motion
New use of a known measure appeal proceedings,608
inventive step,155 availability to the public,67
No assessment of lack of unity in opposition proceedings,222 opposition proceedings,532, 533
No definitive itemisation of admissible evidence,424 protest procedure,682, 683
No reformatio in peius Obligation to draw attention to easily remediable deficiencies,315
appeal proceedings,601 Obligation to give notice if not attending oral proceedings,339
Non-appearance Obligation to maintain secrecy
oral proceedings,328-331, 336, 339 burden of proof,62, 64
Non-invention,2, 6, 18, 19, 141, 142, 144 conference,62, 63
Non-payment of claims fees,422 express agreement,58
Non-payment of further search fees in the case of lack of making available for test purposes,61
unity,422 market test,62
Non-prejudicial disclosures,50 prototype,56, 60, 63, 64
Non-therapeutic treatment,195 tacit agreement,58-63
Norms of European society and civilisation,39, 41 Obligation to maintain secrecy (see also secrecy),56-58
Notice of opposition,532, 549, 554, 556, 568 Observations by third parties
Notifications,484 appeal proceedings,600
postal despatch,485 Obvious new use,156
time when the document was despatched,485 Obviousness of the error and the correction,278
Notion of industrial application,168 Offer of new oral proceedings,458
Novelty,46-120 Official forms,377
accidental anticipation,80 protection of legitimate expectations,312, 313, 316
achieving a higher degree of purity,94 Old prior art documents
alternatives,87, 90 inventive step,125
broad range,96 Old prior art documents as closest prior art,125
burden of proof,64, 94 Omission of acts
chemical compounds and groups of compounds,88 re-establishment of rights,359, 362, 366
chemical inventions,87 Omission of acts by applicant,359
combination of features,70, 100 Oncogene
compositions of substances,90, 95, 102 exceptions to patentability,44
degree of purity,94, 212 sufficiency of disclosure,38
examples of how the invention is carried out,74, 96 One-part form of a claim,202
family of substances,92 One-part or two-part claim,202
first medical use,101 One-way-street situation
functional features,114, 116, 117, 119 inventive step,166
functional limitation,97 Opinion polls,39
generically defined group,101 Opponent status
groups of substances,88, 91-93 transfer,541, 597
hidden matters,77, 78, 98 Opportunity to comment
method claims,56, 65, 70, 80, 83, 86-88, 95, 97-101, 105, case groups,538
113 examination proceedings,335, 653
multiple selection,99 opposition proceedings,324, 458, 535, 538
narrow selection,96, 97, 99-101 principle of equal rights,533
overlapping ranges,81, 88, 92, 93, 97, 101 right to be heard,322-327, 331, 339, 655, 656
parameters of substances,88, 89, 92, 212 Opposition division,456
preferred numerical range,96 composition,661
preparation in the form of a kit-of-parts,103 Opposition fees,551
product-by process claims,211, 212 re-establishment of rights,360
purposive selection,96 Opposition filed by the patent proprietor,321, 532, 553
second (further) medical use,104 Opposition procedure,531-593
second (further) non-medical use,113 administrative procedure,531, 532
selection of parameter ranges,88, 96 admissibility of amendments,569
starting substances,81, 88-91, 95 admissibility of observations,534
structural formula,88, 89, 91, 92 admissibility of straw man,553
substances,92, 102 amendments,569
technical effect,73, 78, 98, 108, 111, 112, 114, 115, 117, burden of proof,184, 185, 548, 554, 560
118 clarity,573
treatment by therapy,101 communication pursuant to Rule 58(4) EPC,536
two lists,90, 91 communications of the EPO,480
unambiguous disclosure,67, 68, 70, 71, 74, 93 competence to decide,549
unity of invention,219, 221, 223 contentious proceedings,531
use,101, 108-113 dependent claim,571
Novelty test designating the opponent,550
amendments,259, 260, 265 entitlement to file an opposition,551
priority,292, 293 evidence,531, 533, 540, 542, 543
examination by the EPO of its own motion,562
examination of admissibility by the EPO of its own
motion,548
extension of the opposition,563, 565, 572, 574

757
General Index

factual framework for an opposition,568 standard of proof,39, 41

further opportunity to present comments,535 transgenic animals,38-40
grounds for opposition,556, 565 transgenic plants,40, 41
impartiality,533 Other criteria - formulation of claims,172
independent claims,531, 571 Other evidence,427
interest of the opponent,552 Other procedural questions,478-486
interlocutory decisions,544, 577 Outdated technology
invitation under Article 101(2) EPC,325, 534, 535 state of the art,125, 126
joint oppositions,554 Overlapping ranges
lapse of a patent,545 novelty,81, 92, 93, 97, 101
legal framework,563
legal nature,531 P
main request and auxiliary request,416
maintenance of the European patent as amended,577 Pacemaker
new ground for opposition,566 medical methods,23, 25
notice of opposition,532, 556, 568 Pain
obligation of the EPO to examine of its own motion,532, medical methods,27, 28
533 Parameter ranges
opportunity to make comments,538 amendments,240, 242, 245
opposition based on prior public use,561 novelty,88, 92, 96
opposition filed by the patent proprietor,553 Parent application
prior use,561 unity of invention,231
ratio legis,222 Paris Convention,171, 289, 290, 662
revocation by decision,576 Partial and multiple priorities,305
right to be heard,324, 325, 328, 333, 533 Partial priority,305, 306
scope of the examination,565 Partial problems
straw man,553 inventive step,129, 147, 148, 151, 166
substantial procedural violation,468 Partiality,458
substantive examination,562 Particular issues in connection with two-part claims,202
substantive examination in case of amendments,575 Parties to appeal proceedings,596
surrender of a patent,545 Parties to proceedings,372
suspensive effect,531 interests of,596
unity of invention,222 procedural status in appeal proceedings,596
Optimisation of parameters right to be heard,372, 596
inventive step,157 rights in appeal proceedings,596
Oral disclosure Parts of the application relevant for assessing sufficiency of
availability to the public,55, 57 disclosure,173
Oral proceedings,333 Party adversely affected,506, 516, 519, 520, 615
Oral Proceedings,333-348 applicant,616
abuse,334, 340 opponent,617
apportionment of costs,347, 585 patent proprietor,616
auxiliary request,335, 337, 338, 655 surrender,617
communication under Article 11(1) RPBA,343 Patent
communication under Article 11(2) RPBA,343 surrender,545
computer-generated presentations,346 Patent attorney under national law
curtailment of notice in the summons,342 European qualifying examination,667
examination proceedings,508, 515 Patent expired in all designated states
fixing or postponing the date for oral proceedings,340 appeal proceedings,635
minutes,333, 342, 346, 459, 468, 472, 595, 613 Patent in jeopardy,404
national holiday,341 Patent proprietor
non-appearance,328-331, 336, 339 approval of fresh grounds for opposition,606
postponement of the date,340, 341 Patent register,418, 481, 613
reasons for changing the date,340 Patent specification
Receiving Section,334 errors,471, 472
reimbursement of appeal fees,654 knowledge of the skilled person/s,48
remittal,338 sufficiency of disclosure,173
representation,341 Patentability,1-172
request,333-335, 340, 654 Patentability of animals and animal varieties,43
right to,333, 334, 338 Patentability of plants and plant varieties,42
right to be heard,324, 325, 333, 335, 339, 342 Patentability requirements under examination
Rule 71a EPC,326, 343, 641 appeal proceedings,606, 609
same parties and subject,337 ex-parte proceedings,609
translation,347 Patentable inventions,1-37
wording of request,335, 338 Payment
Oral proceedings before the Receiving Section,334 fees paid in due time,412
Oral submissions by an accompanying person,450 Payment of fee,411
Oral submissions by former members of the boards of PCT application,48, 677
appeal,453 PCT applications as state of the art,48
Oral submissions by qualified patent lawyers of non-EPC PCT guidelines binding on the ISA and IPEA,679
contracting states,454 PCT International Search and Preliminary Examination
Ordre public Guidelines,215, 220, 231, 233, 680, 683, 688, 691
biotechnology,39 PCT procedure,217, 222, 677
exceptions to patentability,37-39 competence of the boards of appeal,677, 680, 685, 687
physical integrity of individuals,41 international phase,677, 678

758
 General Index

national phase,678 Preparation in the form of a kit-of-parts

principle of equal treatment,695 novelty,103
regional phase,679 Presentation of information
PCT search guidelines,215, 219, 220, 229, 231, 233 technical character,1, 11-13, 20
binding on the ISA,679 Presentations of information,11
PCT time limits excluded under Article 122(5) EPC,369 Presidium,698
Period of grace Presumption of validity,507, 532
fees under Rule 85a EPC,350, 368, 369, 498 Prima facie evidence,54, 64, 303, 375
renewal fees,350 Principle of equal treatment,292, 335, 346, 411, 533, 598
Periodical appeal proceedings,598
availability to the public,53 apportionment of costs,592
Pharmaceutical product European qualifying examination,667-669
industrial application,172 PCT procedure,695
Pharmacological tests re-establishment of rights,359
disclosure,68 right to be heard,323
Plant cells Principle of ex officio examination,532
exceptions to patentability,43, 45 Principle of good faith (see Protection of legitimate
Plant varieties expectations),455, 506, 513, 699
exceptions to patentability,38, 42, 43, 45, 46 Principle of impartiality (see Suspected partiality),458, 533
Plant variety rights Principle of legitimate expectations where the previous case law
exceptions to patentability,42, 46 is departed from,319
Plants Principle of party disposition,532, 594
exceptions to patentability,40, 42, 45, 46 Principle of proportionality,388
Plurality of independent claims,215 Principle of reformatio in peius,601, 602
Plurality of inventions and further search fees,231 Principle of unfettered consideration of evidence,428
Point in time from which a new decision which deviates from Principle that each party must bear its own costs,578
existing practice becomes generally applicable,320 Principles for the exercise of discretion,475
Possibility of services offered by an enterprise,172 Principles governing the text of claims,186
Postdating of the previous application,290 Printing fees
Postdating the application re-establishment of rights,360
priority,290 Prior claim
Postponement prior national rights,50
oral proceedings,327, 344, 352 Prior use,307
Postponement of oral proceedings,346 apportionment of costs,580
Power under Article 23(4) EPC to amend the RPBA,698 availability to the public,55, 59, 60, 62-65, 75, 78, 80
Preamble composition of the product,76, 78
two-part claim,201-203 evidence,64, 65
Preferred numerical range ground for opposition,561
novelty,96 information content,75
Prejudice in the art late submission,396
inventive step,137, 150, 161 obligation of the EPO to examine of its own motion,67
Preliminary and formalities examination,491-503 state of the art,55, 63-65, 75, 78, 80
accordance of a date of filing,491 substantiation,561
applicability of Article 110(3) EPC,502 Priority,289-308
competence of Receiving Section,494 amendments,293
continuation-in-part application,500 applications giving rise to a right of priority,289-291
correction,494-496, 498, 499, 501, 502 concept of the same invention,291, 292, 299, 304
correction of priority declaration,499 date of filing,289, 291, 294
designation fees,496 definitions of limits,297
designation in Euro-PCT applications,498, 695 different priorities,305
designation of states,496 differing ranges,298
devolutive effect,502 disclosure,295
divisional applications,496, 497 disclosure in previous application,293
errors,498 disclosure of essential features,296
errors concerning claim of priority,501 disclosure test under Art. 123(2) EPC,292, 293, 299, 300
errors concerning date of priority,500 divisional application,291, 406
errors concerning priority declaration,499 enabling disclosure in the priority document,301, 302
errors in drawings,493 error margins,297
filing of application documents,492 essential features in the priority document,295, 301
filing of divisional application,496 examination proceedings,289
filing of priority documents,502 exhaustion of priority,291
identity of the applicant,495 features missing with respect to the earlier application,300
interruption in the delivery of mail,493 first application in a Paris Convention Country,290, 303-305
language of application documents,491 generic disclosure,298, 299
non-payment of designation fees,497 identity of invention,291-303, 305
postal delay,493 implicit disclosure,292, 299
protection of legitimate expectations,316, 491 implicit features of the technical teaching,299
public interest,500, 501 industrial design,290
publication of the application,491, 501, 502 lack of disclosure of an essential feature,295
Receiving Section,491 limitation of the extent of protection,292
replacing the invention,493 multiple exercise of the right of priority,290
subsequent filing of drawings,493 multiple priorities for one claim,305, 306
Preparation and conduct of oral proceedings novelty test,292, 293
availability to the public,340 omission of indispensable features,300

759
General Index

omission of non-essential features,300 products obtained directly by the process,211

partial and multiple priorities,305-308 Product
postdating the application,290 medical methods,37
previous application,299 Product claim,186
priority date,289, 307 aesthetic creations,19
publications during the priority interval,305 exceptions to patentability,14, 44
skilled person,293, 294, 298 technical character,18
Snackfood decision,292, 295 unity of invention,215, 216
state of the art,305 Product claim with process features
sufficiency of disclosure,301-304 ascertaining novelty,87
Swiss patent law,290 Product claim with purpose characteristics
time limits,348, 678 ascertaining novelty,119
unity of invention,305 Product parameters
Priority date,176, 180, 289, 307 novelty,88, 89, 212
inventive step,161 Product-by-process claims,89, 211
Priority document,235, 293, 295-297, 299-303, 306, 307, 480 amendments,213, 268, 273
preliminary and formalities examination,491 antibodies,213
Priority interval,306 burden of proof,212
protection of legitimate expectations,305 categories of claim,45, 214
Priority right,287 claimed product cannot be described in any other way,213
Priority right of the applicant or his successor in title,289 combination of product and process features,213
Priority test,294, 300 exceptions to patentability,45
Probative value of evidence - individual cases,429 extent of protection,213
Problem and solution approach hybrid plants,213
inventive step,120-124, 126, 129, 131, 135, 142, 146 hybrid seeds,213
unity of invention,216, 223, 224, 689 inventive step,211, 212
Problem invention,127, 154, 159, 226 novelty,211, 212
Procedural aspects,592 products obtained by the process,45
Procedural economy,494, 664 requirement that the product must be patentable,211
examination proceedings,508 Production process
late submission,344 availability to the public,56, 95
oral proceedings,333, 337, 346 Production process for a known product
re-establishment of rights,361 inventive step,125
remittal,629 Products directly obtained by the claimed process,211
right to be heard,331 Products for use in medical methods,37
unity of invention,685 Products obtained by the process
Procedural principles,182, 311, 322, 324, 332, 334, 596, 629, implicit disclosure,72
637, 664 Products of a microbiological process
appeal proceedings,594, 598, 610 exceptions to patentability,43, 45
contracting states,342, 358, 359 Professional representative,344, 354, 441
oral proceedings,333 during the transitional period,442
protest procedure (IPEA),687 Professional secrecy,675
protest procedure (ISA),234, 686 Prophylactic treatment
Procedural questions,406, 478-486 medical methods,27, 30, 32
burden of proof,342 Protection of legitimate expectations,311-322
Procedural status of the parties,596 correction of decisions,313
Procedural steps,414-417 courtesy services performed by the EPO,318
legal certainty,414 decisions of EPO departments,311, 455
substantial procedural violation,693 decisions taken by the Enlarged Board of Appeal,312
Procedural steps performed by a person other than the departure from previous case law,312
professional representative,443 easily remediable deficiencies,315, 368
Procedural violations,334, 335, 338, 347, 653 electronic filing of documents,317
appeal proceedings,628, 637 established practice,311, 320
decisions of EPO departments,456, 457, 459, 460, Euro-PCT proceedings,311, 320
465-470, 477, 652 examiner,314
delay within the EPO,660 examples,312
examination proceedings,509, 511, 513, 517, 518 ex-parte proceedings,311
file inspection,480 fees,315-318
procedural steps,416 information,311-313, 315
re-establishment of rights,359, 361 inter-partes proceedings,311
reimbursement of appeal fees,650, 653 limits of the principle,313
remittal,628, 660 official statements,312
right to be heard,322, 323, 328, 332, 333, 345, 469, 516 preliminary and formalities examination,316, 491
Procedure for the taking of evidence,427 reimbursement of appeal fees,651, 652
Procedure proper to an administrative court re-establishment of rights,315, 317
appeal proceedings,594, 633 requirement of proof,314
Procedure stage prior to substantive examination,504 single decision of a board of appeal,312, 320
Proceedings after delivery of the decision sources,311
appeal proceedings,626 Protein
apportionment of costs,626 novelty,89
Proceedings before the Disciplinary Board of Appeal,665-676 Protest
Proceedings before the EPO,491-664 review of protest by board,222, 677, 678, 680
Process patent Protest fee
exceptions to patentability,42 refund,686

760
 General Index

time limits,684, 691 Reasons for the decision,466

Protest procedure right to be heard,322, 328, 330, 655
EPC 2000,677, 680, 684, 687, 691 Receiving section,410
EPO acting as IPEA,687 oral proceedings,334
EPO acting as ISA,681 Re-establishment of rights,334, 357-388
new provisions,680 additional fees,384
suspension of the grant proceedings,679 admissibility of application,360, 366
Protest procedure (IPEA),691 American representative,363, 378, 382, 383
additional reasons,691 appeal fees,360
amendments,688 Article 48(2) a) PCT,371
composition of review panel,690 change of representative,375
discretion,689 claims fees,370
oral proceedings,690 competence,360
partial reimbursement of additional fees,692 competence in interlocutory revision,361
procedural principles,687 deficiencies of request,368
review of protest by a board,691 delivery of mail,386, 388
substantiation of invitation,688 designation fees,368, 369
substantiation of protest,689 designation of states,357
Protest procedure (ISA),233, 684 devolutive effect,361
additional reasons,685 due care,362, 363, 373, 376, 388
amendments,685 evidence,367
composition of review panel,684 examination fees,368, 370
devolutive effect of protest,686 fee-monitoring system,375
missed time limit for filing,685, 687 fees for re-establishment of rights,362
obligation of the EPO to examine of its own motion,682, filing fees,368
683 financial difficulties,372
procedural principles,234, 686 grant fees,360
review of protest by a board,234, 685 holiday,385
review of protest by a review panel,234, 684 illness,364, 385
review of protest by the review body,680 insolvency,387
substantiation of invitation,681, 684, 685 interpretation of the EPC,380
substantiation of protest,683, 685 interruption of proceedings,373, 387
Protocol on Recognition,483 Japanese firm,379
Protocol on the Interpretation of Article 69 of the Convention,24, Japanese patent attorney,379
207, 208, 266, 267, 270, 574 large firms/companies,377, 386
Prototype,56, 60, 63, 64 legal fiction of deemed notification,364
Provisional opinion legal principle,358
right to be heard,328, 539 loss of rights as a direct consequence by virtue of the
Public international law,486 EPC,358, 385
Public prior use (see Prior use),561 merit of application,372
Publication monitoring time limits,375, 385
availability to the public,51 national basic fee,369
specification of the European patent,550 omission of acts,359, 362, 366
Publication date opposition fees,360
availability to the public,47, 52 opposition period,360
Publication of the application parties to proceedings,372
preliminary and formalities examination,491, 501, 502 PCT time limits excluded,369, 693
Publication of the mention of the grant,407, 483, 595 posting,364, 687
Publications during the priority interval,305 principle of equal treatment,359
Publicity notice principle of proportionality,378, 388
availability to the public,65 printing fees,360
Purpose procedural economy,361
second (further) non-medical use,119, 120 protection of legitimate expectations,368
Purpose of payment protection of the general public,371
fees,412 public interest,358, 387
Purpose-related product claim reference in the Register of Patents,387
novelty,102 renewal fee payment agency,363
renewal fees,361, 363, 373, 375, 379
Q representatives,363
rights of use under Article 122(6) EPC,387
Qualifying conditions according to Article 134(7) EPC,445 search fees,368, 369
Quotations small firms/companies,376
availability to the public,60, 61 statement of grounds of appeal,359, 361, 362, 366, 373,
376, 380, 381
R substantial procedural violation,359, 361
supervision of assistants,383
Ratio decidendi system for monitoring time limits,374-377, 381
binding effect,629 tactical considerations,373
decision,507, 525 takeover,375
Ratio legis,420 time limit for appeal,359, 380
exceptions to patentability,38 time limits,357, 362, 365, 371-373, 376, 381
opposition proceedings,222 time limits excluded,368
Reasonable expectation of success (see Expectation of transfer,364, 482
success),133 translation,360

761
General Index

Reference to common general knowledge,294 oral submissions by former members of the boards of
Referral to the Enlarged Board of Appeal,35, 219, 223, 231, 319, appeal,453
637 oral submissions by patent lawyers of non-EPC contracting
divisional application,282, 283 states,454
Referrals to the Court of Justice of the European Communities place of business,445
under the EC Treaty - legal status of the EPO boards of procedural steps,443
appeal,700 register of legal practitioners,444
Reformulation of the technical problem,127, 129, 146 sub-authorisation,449
Reformulation of the technical problem,129, 239 transitional period under Article 163(6) EPC,442
Refusal of a European patent application (Article 97(1) EPC),518 Representatives
Refusal of oral proceedings,334 advertising,675
Register of legal practitioners,444 American,378
Register of Patents,481 appointment of a common,446, 615
Registrar association of,449
protection of legitimate expectations,313, 316, 382 authorisation,364, 615
Registration of licences,481 common professional representative,615
Regulation on Plant Variety Rights disciplinary measures (see Disciplinary measures),674
exceptions to patentability,42, 46 general professional obligations,667
Reimbursement of appeal fees,285, 650 legal practitioner,667
allowability of the appeal,650, 651 list of professional representatives,443, 665, 666
competence of boards of appeal,663 of non-EPC contracting states - legal capacity,355
competence of formalities officers,661 re-establishment of rights,363
composition of opposition division,457 Reproducibility,174, 175
discretion,663 biotechnology,181
equity,650, 651, 664 claims supported by the description,183, 204
error of judgment by a department of first instance,470, 659 industrial application,170
examination proceedings,470 state of the art,73, 76-81
inadmissibility of the appeal,650, 651 sufficiency of disclosure,173, 176-178, 180, 181, 185
interlocutory revision,636, 650, 662 technical character of the invention,3
oral proceedings,654 undue burden,73, 76-78, 177
protection of legitimate expectations,651, 652 Reproducibility of the content of the disclosure,80
right to be heard,333, 655, 663 Reproducibility of the invention,176, 178
substantial procedural violation,359, 470, 637, 650, 653 Reproducibility without undue burden,177
withdrawal of the appeal,650 Request
Reinstatement of claims,420 further oral proceedings,337
Relationship between Article 123(2) and Article 123(3) EPC,274- maintenance in the case of prior European rights,416
277 oral proceedings,333-335, 340, 508, 515, 517, 654
Relative qualities,198, 199, 207 revocation of patent,330
Relevant criteria when time limits are extended,352 withdrawal of request for oral proceedings,336
Relevant point in time,47 Request for examination
Remittal examination proceedings,503-505
amended claims,649 Request for grant
appeal proceedings,627, 649 interpretation,692
late submission,649 Request for oral proceedings,335
oral proceedings,338 new citations,337
resumption of proceedings,339 remittal,339
substantial procedural violation,628, 660 right to be heard,325, 515, 517
Remittal to the department of first instance,403, 627 Request for oral proceedings in further prosecution
Remittal to the department of first instance because of proceedings,339
substantial amendments to claims,649 Request for re-establishment of rights
Renewal fee payment agency protection of legitimate expectations,315-318, 320
re-establishment of rights,363 time limits,362, 365
Renewal fees Request for revocation of a patent,634
re-establishment of rights,361, 363, 373, 375, 379 Requirement that the claimed product cannot be described in
time limits,351, 357 any other way,213
Re-opening examination after approval of the text for grant,525 Requirement that the claimed product must be patentable,211
Repetition of oral disclosures Persons required to exercise due care,378
availability to the public,55 Res judicata,473, 502, 614, 630
Replacing the invention,493 examination proceedings,529
Representation,441-455 Research
applicants not having residence or place of business within biotechnology,133, 136, 137
a contracting state,442 Reservation under Art. 167(2)(a) EPC,569
association of representatives,449 Reinstatement of broader claims
authorisation,444, 445, 447 opposition appeal proceedings,421
common professional representative,446 opposition division,420
discretion,445, 450 Resolving the conflict in exceptional cases,276
European qualifying examination,441 Restitutio in integrum - Interruption of proceedings,387
filing,447 Reversal of procedural steps
general authorisation,448 inventive step,159
legal practitioners,443, 445 Review of first-instance discretionary decisions,611
list of professional representatives,441, 443, 444 Review of protests,684, 691
national law,445 Review panel
oral proceedings,341, 450 protest procedure (IPEA),690
oral submissions by accompanying person,450 protest procedure (ISA),684

762
 General Index

Revision Act Search

EPC,491, 495 additional,345
Revocation of a European patent by way of a decision,576 Search fees
Revocation of patent,286, 421, 603 re-establishment of rights,368, 369
opposition proceedings,327, 418, 545, 576 unity of invention,215, 220, 221, 223, 231-233, 510, 680,
Revocation of withdrawal of the application,417, 418 681, 683, 687
Revocation proceedings,360 Search report,504, 505
Revolutionary inventions unity of invention,220, 221, 231, 232, 234, 689
industrial application,170 Second medical use,33, 104, 216
Right to a decision administration regimen,107, 109
decisions of EPO departments,455 concept of therapeutic application,107-110
Right to a European patent,309, 495 medical device,107, 112
Right to be heard,322-333, 598 mode of administration,111
composition of opposition division,328 novelty,107
decisions of EPO departments,469 Second non-medical use
European qualifying examination,673 novelty,113
evidence,322, 323, 326, 328 Secondary indicia (see Inventive step),
examination proceedings,322-327, 333, 518 industrial application,171
expiry of a time limit,324 Secrecy
fair procedure,322, 323 non-prejudicial disclosures,51
forfeiture,325, 518 Selection from generic disclosure,298
inadmissible oppositions,338 Selection inventions,81, 87, 88, 96
International Preliminary Examining Report,322, 658 Selection of most promising starting point,124
interpretation of requests,522 Selection of parameter ranges,96
invitation under Article 101(2) EPC,325 Selective breeding,41, 42, 45
legal certainty,329 Self-collision,73
opportunity to make comments,322, 323, 325-327, 331, prior European rights,47
339, 655, 656 Shifting of the burden of proof,440
opportunity to make comments in opposition Shipyard
proceedings,324, 325 availability to the public,65
opposition proceedings,324, 325, 328, 333, 533 Short time working
oral proceedings,324, 325, 332, 333, 335, 339, 342 due care,377
patent in the text agreed to,331, 332, 656 Signature,415, 551
principle of equal treatment,323 decisions of EPO departments,456, 470, 471
procedural economy,331 Signatures,415
procedural violation,322, 323, 328, 332, 333, 345, 515, Signatures on a decision,470
518, 522 Silence
provisional opinion in opposition proceedings,539 oral proceedings,336
reasons for the decision,322, 328, 330, 655 Similarity of the technical problem,122
reimbursement of appeal fees,333, 655, 663 Simple solution
request for oral proceedings,325 inventive step,131, 154, 165
summoning a witness,323, 657 Simplification of complicated technology
timing of decisions,324, 660 inventive step,160
Right to file a divisional application,410 Single general concept
Right to oral proceedings,325, 333, 338, 508 unity of invention,215, 218, 219, 223-225, 227, 229, 230,
Right to present comments and non-attendance of a party by 681, 682
choice,339 Skilled person,170, 185, 227, 381
Rights of joint use biotechnology,136, 181
inventive step,165 computer-implemented inventions,138
Rights of parties under Article 107 EPC,598 divisional application,281, 284
Rights of use inventive step,17, 120-122, 132, 135, 142, 143, 148, 154,
re-establishment of rights,387 162
Rights of use under Article 122(6) EPC,387 level of knowledge,48, 143
Risks to the environment,41 medical methods,25
Routine experiments priority,293, 294, 298
inventive step,137, 160 state of the art,48, 67, 71, 79
Rules common to all proceedings before the EPO,311-490 sufficiency of disclosure,139, 176-178, 183
Rules of procedure of the Enlarged Board of Appeal,282 team of experts,135-137, 144
Rules relating to Fees,232, 411-414 Small firms/companies
re-establishment of rights,376
S Small improvement in commercially used process,158
Small-ads newspaper,52
Sale Snackfood decision
availability to the public,56, 76 priority,292, 295
Sale for test purposes Software
availability to the public,61 technical character,18
Satisfaction of a long felt need Sources of legitimate expectations,311
inventive step,161, 163 Special features of the opposition procedure,541
Schemes, rules and methods for performing mental acts, playing Standard of proof
games or doing business, 14 amendments,280
Scope of the claim availability to the public,65
divisional application,284 Standard of proof for allowing amendments and corrections,280
support by the description,204 Standards working party
availability to the public,62

763
General Index

Starting substances,81, 88-91, 95, 97, 170, 217 Successor in title

State of the art,171 priority,289, 290
accidental disclosure,80 Sufficiency of disclosure,81, 170, 173-185
broad claims,78 application as a whole,173, 184, 203, 204
combinations within a prior art document,70 availability to the public (see also Disclosure),174
content,67, 69 balance of probabilities,185
defining,47, 50, 51 biotechnology,38, 178
determination of the closest,121, 125 broad claims,175, 180
disclosure,47, 67-69, 74, 91 chance,179
drawings,74 common general knowledge of the skilled person/s,173,
equivalents,73 176, 177, 179
European prior rights,47 evidence,170, 185
examples,74, 96 examples of the invention,174, 179, 180, 185
general rules of interpretation,67 fundamental scope of the invention,176
generically defined group,101 inventive step,174
implicit features,71 knowledge of the skilled person,139, 173
in-house knowledge,48 method for measuring,184
international application,48, 219, 220, 223, 225-228, 230 micro-organisms,178, 179, 181, 182
intrinsic features,73, 78 oncogene,38
inventive step,120, 121 patent specifications,173
mistakes in a disclosure,79, 81 priority,176, 180, 301-304
most promising starting point,122 reference to another document,174
national prior rights,50 relevant parts of the application,173
non-prejudicial disclosures,50 reproducibility,173, 176-178, 180, 181, 185
outdated technology,125, 126 support by the description,183
overlapping ranges,81, 97, 101 technical literature,173
PCT applications,48, 689 undue burden,177, 179, 181
prior use,55, 63-65, 67, 75, 78, 80 Summoning a witness
priority,305 right to be heard,323, 657
relevant point in time,47 Supervision
reproducibility,73, 76-80 assistants,383, 384
same purpose,122, 124 Surgery
selection inventions,81 medical methods,32
similarity of technical problem,80 Surgical methods,32, 35, 37
two-part claims,202 protection of legitimate expectations,101
unambiguous disclosure,67, 68, 70, 71, 74, 93 Surprising effect
State of the art (see also availability to the public),47, 51, 143 inventive step,166
Statement of grounds of appeal,621 Surprising effect - bonus effect,166
Statutory periods of grace and the fiction of observance of a time Surrender of patent as a whole,418
limit for fee payments,350 Surrender of the patent,417-419
Straw man opposition proceedings,545
opposition proceedings,553 Suspected partiality,458, 661
Structural similarity Suspension of first-instance proceedings following referral to
inventive step,122, 151 Enlarged Board,639
Structure of the EPC provisions relating to international Suspension of proceedings under Rule 13(1) EPC,482
applications under the PCT since 1 March 2000,677 Suspension of the grant proceedings
Sub-authorisations,449 protest procedure,679
Subject-matter group,101 Suspension of the proceedings,406, 482, 596, 639
Subject-matter of a divisional application,281 Suspensive effect
Subject-matter under examination appeal proceedings,483, 594
opposition appeal proceedings,604, 606 opposition proceedings,531
Subsequent inclusion of new grounds reimbursement of appeal fees,660
protest procedure (IPEA),691 Suspensive effect of the appeal,594
protest procedure (ISA),685 Swiss-type-Claim,104, 107, 111, 115
Substance Switzerland
novelty of use,78, 102 patent law,50
Substantial procedural violation (see Procedural violation) System for monitoring time limits
Substantiation of EQE decisions,670 re-establishment of rights,374-377, 381
Substantiation of invitation
protest procedure (IPEA),688 T
protest procedure (ISA),681, 684, 685
Substantiation of protest Tactical considerations
protest procedure (IPEA),689 re-establishment of rights,373
protest procedure (ISA),683, 685 Takeover of a company
Substantiation of the opposition,556 re-establishment of rights,375
Substantiation pursuant to Rule 55 c) EPC,604 Taking drawings into account,74
opposition proceedings,556 Taking equivalents into account,73
Substantive examination Taking examples into account,74
examination proceedings,504 Taking implicit features into account,71
Substantive examination in case of amendments,575 Taking intrinsic features into account,73
Substantive examination of the application,505 Taking national decisions into account,489
Substantive examination of the opposition,562 Taking of evidence - scope,427
amendments,575 Taking of minutes,346
Substitution of materials - analogous use,150

764
 General Index

Talk Therapeutic or prophylactic effect

availability to the public,54, 57 medical methods,24
Teaching of examples Time factor
availability to the public,71 inventive step,163, 164
Team of experts,135-137, 144 Time limit for appeal,618
Technical and non-technical features re-establishment of rights,359, 380
computer-implemented inventions,4 Time limits,348, 357, 697
inventive step,141 aggregate time limits,350
medical methods,21, 23, 36 application of Rule 90 EPC by the EPO of its own
technical character,16 motion,353
technical effect,144, 145 calculation,348, 351, 366, 381, 388
Technical character of the invention,1, 169 consequences of interruption of proceedings,357
aesthetic creations,19 demand for international preliminary examination,678, 679
computer programs,3, 9 designation fees,350, 351, 497
computer-implemented inventions,142, 143 examination fees,357, 370, 678
inventive step,6, 7, 13, 17, 141, 145 expiry date,348
mathematical methods,1 extension,351-353, 381, 493
methods for doing business,14-16 extension of time limits ipso jure,349
presentation of information,1, 11-13, 20 extension of time limits on request,352
reproducibility,3 fiction of observance of a time limit,350, 351
technical and non-technical features,16 filing and search fees,493
technical effect,14, 16 from the last day of the month to the last day of the
technical problem,19 month,350
word-processing,9 further processing,348, 352
Technical contribution,1, 2, 11, 12, 131, 169, 237, 242 international application,677
computer-implemented inventions,6, 7 interruption in the delivery of mail,349
inventive step,120 interruption of proceedings,348, 353
Technical contribution - addition or deletion of a feature,242 interruption of proceedings because of insolvency,356
Technical disclosure in a prior art document,149 intervention,599
Technical effect legal incapacity,353
computer-implemented inventions,5 national holiday,351
inventive step,122, 128-131 period of grace,350, 370, 693
novelty,73, 78, 98, 108, 111, 112, 114, 115, 117, 118 priority,348, 678
patentable inventions,8, 14 protest fee,684, 691
technical and non-technical features,144, 145 public holiday in the filing location,349
technical character,14, 16, 20 re-establishment of rights,357, 362, 365, 371-373, 376, 381
Technical feature reimbursement of fees for further processing,352
definition,186 renewal fees,351, 357
Technical journal start of the time limit,348, 362
availability to the public,53, 65 Time limits excluded from re-establishment under Article
Technical nature of an invention,1 122(5) EPC,368
Technical prejudice,161 Time limits for the European phase entry of an international
Technical problem,126 application (Rule 107(1) EPC),677
alternative solution to a known problem,131 Time of filing of amendments,345, 346, 504, 508, 643
artificial and technically unrealistic,128 Timing of decisions
computer-implemented inventions,4-6, 8 right to be heard,324, 660
determination of the technical problem,126 Title of the invention,550
formulation,19, 126-128, 135, 146 Trade mark
infringement of Article 123(2) EPC,130 clarity of claims,187
inventive step,120, 121, 144 Training period
methods for doing business,16 European qualifying examination,667
presentation of information,13 Transfer,597
reformulation of the technical problem,127, 129, 146 opponent status,541, 597
similarity of technical problem,122 re-establishment of rights,364, 482
technical character,19 register of patents,481
unity of invention,217, 219, 223, 225, 228, 230, 682, 683 Transfer of a party's rights
word-processing,9 opposition proceedings,541
Technical progress Transfer of cases
inventive step,120, 127, 128 due care,380
Technical teaching,183 Transfer of opponent status,541
Technically non-functional modifications Transfer of opposition,541
inventive step,149 Transfer of party status,597
Telefax,386, 486 Transgenic animals,38-40, 43, 44
protection of legitimate expectations,318 Transgenic plants,40-42, 45, 46
Telephone conversations Translation,237, 479, 620
examination proceedings,513, 516, 655 amendments,526
Termination of appeal proceedings,632 costs,347
Tests for assessing the allowability of an amendment,259 international application,235
Textbooks oral proceedings,347
sufficiency of disclosure,173 reimbursement of appeal fees,651
Therapeutic effect Transposition of features,270
medical methods,24, 29, 31, 32 Travaux préparatoires
Therapeutic methods EPC,356, 487
medical methods,27, 35, 37 unity of invention,222

765
General Index

Treatment by surgery,1, 20-24, 26, 27, 32, 33, 37 technical problem,217, 219, 223, 225, 227, 228, 230, 682,
medical methods,20, 22-24 683
Treatment by therapy,1, 20-27, 33, 172 technical relationships,215, 218, 219, 223, 224, 226-230,
medical methods,20-24, 27-31 689
novelty of use,101 travaux préparatoires,222
Treatment of non technical aspects (see Technical and non- use claims,215, 216
technical features),141 Unity of single claims defining alternatives (Markush claims),229
Treatment of technical and non-technical features,141 Unity of the European patent application,486
TRIPs,289, 487, 488, 629, 662 Universal succession
Two instances,649 opposition proceedings,541
right to,628 Unsearched subject-matters
Type of remittal,631 examination proceedings,509
Unsworn witness declarations (affidavits),426
U UPOV Convention
exceptions to patentability,42, 46
UK Patents Act Use
right to a European patent,309 novelty,78, 109
Undue burden Use claims,186, 192
availability to the public,49, 50, 52, 76-78 amendments,271, 272
biotechnology,181 industrial application,172
clarity of claims,188, 194, 196, 197, 200 novelty of use,104, 108, 110-113
conciceness of claims,200 unity of invention,215, 216
knowledge of the skilled person/s,49, 50 Using description and drawings to interpret the claims,206
sufficiency of disclosure,177, 179, 181 Utility models
support by the description,205 priority,289, 290, 306
Unity in the context of different types of claims,215
Unity of invention,215-234
a posteriori,217, 219-222, 224, 226, 229, 231, 233, 680,
V
682, 683, 687, 688 Validity of divisional applications,282
a priori,219, 226, 680-682 Vaporiser
administrative instructions under the PCT,219 availability to the public,75
chemical inventions,216-218 Venire contra factum proprium
clarity of claims,223, 682 protection of legitimate expectations,313, 319
Committee for Technical Cooperation,220 Viagra
complete search report,234, 686 inventive step,162, 164
dependent claim,217 Vienna Convention on the Law of Treaties,486, 489
divisional application,231
examination proceedings,221, 510 W
feature,223-228, 230
first written opinion,688 Weapons manufacturer
functional relationship of compounds,231 availability to the public,61
independent claims,215, 217, 226 Whole contents,74, 75, 83, 86
intermediate compound,228 national prior rights,50
intermediate products,217, 218 self-collision,73
International Preliminary Examining Authority (IPEA),219, Withdrawal of appeal,600, 632
224 Withdrawal of application and surrender of patent,417
International Searching Authority (ISA),219, 220, 223, 224, Withdrawal of patent application as a whole,417
233, 681 Withdrawal of priority claims
inventive nature,227 international application,695
inventive step,129, 219, 221, 223, 227, 228, 682 Withdrawal of request for oral proceedings,336
Markush claims,229, 683 Withdrawal of the appeal,632
national patent law,220 apportionment of costs,585
novelty,219, 221, 223 reimbursement of appeal fees,650
opposition proceedings,222 Withdrawal of the application,417-423
parent application,231 European register of patents,418
priority,305 public interest,417
problem and solution approach,216, 223, 224, 689 search fees,368
procedural economy,685 Withdrawal of the opposition,543
process claims,216, 226, 228 appeal proceedings,544, 634
product claim,215, 216 apportionment of costs,585
search fees,215, 219-221, 223, 231-233, 680, 681, 683, Withdrawal of the opposition during appeal proceedings,634
687 Wording of request
search report,220, 221, 231, 232, 234, 510, 689 oral proceedings,335, 338
single general concept,215, 218, 219, 223-225, 227, 229, Word-processing
230, 681, 682 technical character,9
structural relationship of compounds,231

766