Dear Colleagues and Friends,
This issue of Hoffmann Eitle Quarterly begins with a review of some of the legal provisions of the EPO's Rules of Procedure of the Boards of Appeal (RPBA), two years after their revision, including interesting statistics on Art. 13(1) and (2) RPBA. We then discuss recent case law of the EPO Boards of Appeal on sufficiency of disclosure in the wake of pending referral G 2/21 to the Enlarged Board of Appeal. In the third article, the risks associated with the inclusion of speculative examples in patent applications are discussed, particularly in relation to medical use applications. The next article reviews a recent decision dealing with three-dimensional trademarks in the EU, which is then followed by a discussion exploring the differences between "broadness" and "vagueness" at the EPO. The final article then provides a brief update on the progress of the establishment of the Unified Patent Court (UPC).
We very much hope that you will find this issue of Hoffmann Eitle Quarterly informative, and, as always, we welcome your comments.
Editor-in-chief of the Hoffmann Eitle Quarterly
Ir. (Electrical Engineering)
Partner - Belgian and European Patent Attorney
HE Electrical Engineering & IT Practice Group
The EPO Rules of Procedure of the Boards of Appeal (RPBA) - An Update Two Years After the Entry Into Force of the RPBA 2020 (part I)
The Rules of Procedure of the Boards of Appeal (RPBA) set out how parties must present their case in appeal proceedings at the European Patent Office (EPO). Non-compliance with the RPBA may lead to submissions being rejected as inadmissible. The present article provides some guidance on how to avoid common pitfalls at the early stage of the appeal proceedings and then goes on to examine the impact of the changes introduced into the RPBA 2020 (i.e. the new version of the RPBA which entered into force on January 1, 2020) on amendments to a party's case at later stages of the appeal proceedings.
Recent EPO Case Law on Sufficiency: How Much Disclosure is Enough?
Sufficiency of disclosure is one of the fundamental requirements for the grant of a European patent, and lack of sufficiency is one of the grounds on which a patent may be revoked in opposition proceedings before the EPO. Recent decisions of the Technical Boards of Appeal shed some light on the sufficiency assessment. However, uncertainty remains.
Speculative Examples at the EPO - a Road to Nowhere?
In the EPO Board of Appeal decision T 2842/18, the Board considered that a statement about a hypothetical therapeutic effect in the application as filed could not constitute a direct and unambiguous disclosure for claiming the therapeutic effect. This has implications on how to draft patent applications to be prosecuted at the EPO, in particular with regard to medical use applications.
Three-Dimensional Trademarks in the European Union - Guerlain v EUIPO, General Court of the European Union, Judgment of July 14, 2021, Case T-488/20
Guerlain recently succeeded in obtaining trademark protection for a three-dimensional EU trademark for the shape of one of their lipsticks - a remarkable victory since the EUIPO's requirements for obtaining a 3D-mark have become increasingly strict and are currently very hard to fulfil. The decision provides hope for obtaining trademark protection for product shapes which deviate from the norms and customs of their sector.
Clarity of Claims at the EPO: Pursuing Broad Claims Without Being Vague
Article 84 EPC stipulates that the claims shall be clear and concise and be supported by the description. In practice, this clarity requirement is of high relevance as many examiners at the European Patent Office (EPO) raise clarity objections which often appear to be guided more by a tendency to require the applicant to incorporate technical details of implementation into the claim. Despite many decisions by the Boards of Appeal on the issue of clarity, there is no robust and definite test that can be used to effectively contain this tendency, and applicants therefore often choose to further limit the claims to avoid dragging out the examination procedure.
UPC Update: Austria's Federal Council Approved Ratification of the Protocol for Provisional Application - Unified Patent Court About to Be Established and Preparatory Phase to Commence
Should you have any questions or need more information, please do not hesitate to contact us.
With best regards,