Updates on EPC, PCT, EPO case law and the e-EQE

Following T 1989/18 according to which the description does not have to be adapted, T 1444/20 approves T 1989/18 and also quotes R 42(1,c)  and R 48(1,c).  

The decision of the ED

In the communication under R 71(3) the applicant was informed that the division intended to grant a patent whereby pages 29 to 41 of the description were to be deleted.

AR 1 to 4 and 6 to 8 were submitted with letter dated 07.11.2019 replacing AR 1 to 4 and 6 to 8 filed with the reply to the statement setting out the grounds for appeal of the opponent.

The proprietor put forward, in relation to these AR, that the filing was prompted by an obvious error by mistakenly including certain features in claim 3 of its previous AR 1 to 4 and 6 to 8 of 17 July 2019 and,

Reminder – Before opposition divisions

It should be kept in mind that before an opposition division combining claims as granted even during oral proceedings is not considered late but is rather considered admissible as the opponent cannot be surprised with such a combination

T 1267/14

A combination of granted claims is admissible and the discretion of the opposition division was correctly exercised.

The present decision is interesting for two aspects:

• Holding OP in the form of a ViCo in the future and discretion given to the BA in Art 15a(1) RPBA20.
• Common general knowledge without any evidence but the personal knowledge of members of the BA.

OP by ViCo

In view of the pandemic developments and the resulting high incidences in Bavaria at the relevant time (21.03.2022),

T 527/17 shows what appears reasonable and advisable in matters of deletion of claims.

In T 527/17 the board admitted the main and the second request but not the first auxiliary request.

Both the main and the second request result from the deletion of claims 7 to 9 (main request) and 6 to 9 (second auxiliary request) from auxiliary request 9A filed with the statement of grounds of appeal

The board held that these amendments do not change the patent proprietor’s case as put forward in its statement of grounds of appeal: they do not raise any new issue and stay within the legal and factual framework established at the outset of the appeal proceedings for the claims remaining on file.