HOFFMANN EITLE Quarterly Newsletter 09/25
出版著作 | 15.09.2025
Dear Colleagues and Friends,
We are excited to present the latest issue of the Hoffmann Eitle Quarterly, offering insights into some of the newest developments in European IP law. The first article explores how to claim an antibody by its epitope at the European Patent Office (EPO) and what information should be included in the description. In the next article, we summarize the requirements relevant to applications for provisional measures before the Unified Patent Court (UPC). The third article reports on an EPO Board of Appeal decision that demonstrates how a negative feature can effectively delimit a claim from the prior art. We then highlight G 1/23, a significant decision of the Enlarged Board of Appeal (EBoA) ruling that a product placed on the market does not have to be reproducible to be considered prior art. Continuing with the EBoA, the fifth article discusses G 1/24, which addresses the interpretation of patent claims at the EPO and the role of the description in this context. Building on these decisions, we also cover G 1/25, a referral to the EBoA on whether the description of a European patent application must be adapted to amended claims. Shifting gears, the seventh article examines the ramifications of AI hallucinations in court documents in the UK. Finally, we launch a new series comparing the substantive law of the UPC with that of the EPO and national courts. As always, we hope you will find this issue of the Hoffmann Eitle Quarterly and we welcome your feedback.
Nicolas Douxchamps
Editor-in-chief of the Hoffmann Eitle Quarterly
Partner - Belgian and European Patent Attorney
HE Electrical Engineering & Digital Technologies Practice Group
Antibody Epitope Claims at the EPO and the UPC
Antibodies have emerged as powerful tools over the past few decades, and today antibodies are at the forefront of modern medicine, playing a central role in both therapeutics and diagnostics. At the EPO, a claim to an antibody can include defining the antibody by its amino acid sequence and/or by functional features, such as its binding affinity, neutralising activity, and so on. Defining the antibody by its epitope, i.e. the site on a target antigen to which an antibody specifically binds, is an attractive option for patent applicants. This article aims to summarise recent case law to provide a practical approach on how an applicant might claim an antibody by its epitope, and what information may be helpful to include in the application.
Provisional Measures Before the UPC: Legal Framework and Practice
Now, more than two years into its existence, the first wave of decisions of various local divisions of the UPC and its Court of Appeal in proceedings concerning provisional measures such as provisional injunctions have been issued, steadily consolidating UPC case law. We summarize here the requirements of applications for provisional measures before the UPC to provide guidance on the circumstances under which provisional measures may be granted.
The Utility of Negative Features at the EPO: A Positive Experience
Patent claims are usually drafted in terms of positive limitations, defining the essential elements or properties of an invention. Sometimes, an invention results from a conscious absence of a feature which would otherwise have been assumed in the state of the art. Although many patent offices do not exclude such claim formulations as a matter of law, such limitations can be challenging to progress to grant. T 784/23, a decision of the EPO's Boards of Appeal, illustrates that such definitions are not only permissible under EPO practice, but can effectively delimit from the state of the art.
G 1/23 – Reproducibility Is Not a Requirement to Make Products Available to the Public in the Sense of Art. 54(2) EPC
Since G 1/92, several decisions of the EPO's Boards of Appeal have ruled that, in particular, reproducibility of the chemical composition of a product is required for the product to form part of the state of the art. G 1/23 partially overturns G 1/92. We look at this important new development in EPO case law.
Roma Locuta, Causa Finita? The Implications of G 1/24 on Claim Interpretation
A legal principle derived from Roman Catholic canon law is "Roma locuta, causa finita", i.e. once the highest judicial body has spoken, the matter is settled. At the EPO, the Enlarged Board of Appeal (its highest judicial body) decided in G 1/24 on whether the description is to be consulted when interpreting the claims. We look at the Enlarged Board’s reasoning and whether all open questions have been settled.
Amendment of the Description at the EPO: The Time Has Come! - Referral G 1/25
Over the past years, diverging EPO case law accumulated on whether the description of a patent application or patent needs to be adapted to amended claims. Technical Board of Appeal 3.3.02 handling opposition appeal case T 697/22 has now seized the opportunity and referred the issue of adapting the description to the Enlarged Board of Appeal.
British Trade Mark Appeal Rules on AI Hallucinations in Court Documents
In a UK Trade Mark Appeal case, AI was explicitly used in confectioning court documents. We look at how the UK is setting a different precedence to the US, and at the importance of striking a fine balance between regulation and the benefits of AI in legal tech.
UPC Substantive Law - Comparisons With the EPO and National Courts
This article is part of a new series in the Hoffmann Eitle Quarterly, in which we compare substantive law at the UPC with that of the EPO and national courts.
Should you have any questions or need more information, please do not hesitate to contact us.
With best regards,
HOFFMANN EITLE