CASELAW-EPO - reviews of EPO Boards of Appeal decisions

Preliminary note

This a personal recollection of the discussions and does neither intend to be exhaustive nor to be complete.

Should I have missed important aspects in the respective statements, or worse, having misunderstood some of them, I am prepared to amend this post.

The proprietor’s position

The position of the proprietor can be resumed as follows:

• There is no provision in the EPC requiring adaptation of the description
• There is no provision in the EPC requiring that the scope of the claims must be the same as the scope of the disclosure,

WO 2017/060218 A1 relates to an electrical machine with a resonant circuit in shaft grounding.

Brief outline of the procedure

The MR included an added figure 4 which is based figure 3 as originally filed, but in which the parallel inductor/capacitor (LC) resonant circuit is modified to a series LC resonant circuit.

EP 3 018 978 B1 relates to a “Method for setting up and operating a network of luminaires”.

Brief outline of the procedure

The opposition was rejected and the opponent appealed.

The board held that claim 1+31 as granted infringed Art 123(2).

The patent was eventually maintained on the basis of AR1quater and a description to be adapted.

EP 2 256 579 B1 relates to a solar inverter and control method.

Brief outline of the procedure

Claims 1 and 2 as granted contravened Art 123(2). AR1+2+4-25 idem-AR3 had the same defect. Art 3 contravened Art 123(3). The patent was revoked by the OD.

EP 3 454 785 B1 relates to a heart valve with stent having varying cell densities.

Brief outline of the procedure

Following an opposition, the proprietor filed a new MR. This MRn was infringing Art 123(2).

The OD decided maintenance according to AR1.