Blog
In-depth articles on the European patent grant procedure (UP and classic), fee structures, and strategic considerations under the EPC, PCT, and the Unitary Patent system.
Conditional Counterclaims for Revocation: The Court of Appeal on Rule 263.3 RoP
The Court of Appeal has clarified the procedural mechanics for making a counterclaim for revocation conditional upon a finding of infringement. The order establishes a framework for conditional appeals to preserve validity attacks.
Retroactive Revocation and Penalty Refunds: The Court of Appeal on Enforcement Costs
The Court of Appeal clarifies that revoking an injunction of the Court of First Instance retroactively revokes associated penalty orders. Claimants enforcing pending appeal bear a significant cost risk if the merits decision is overturned.
Fixed Deadlines Over Subjective Events: T 0712/24 on the Discretion to Admit Late Requests
When an opposition division changes its preliminary opinion during oral proceedings, does it lose the discretion to reject new claim requests? T 0712/24 clarifies the strict boundaries of Article 114(2) EPC.
Public Access and Redaction: The Düsseldorf Local Division on Rule 262 RoP
The Düsseldorf Local Division clarifies the mechanics of public access to the register after proceedings have concluded. The order establishes a staggered disclosure process to manage the administrative burden of redaction.
Search Before Examination: T 0913/25 on Rule 63 EPC and Procedural Violations
The Board of Appeal clarifies that Rule 63 EPC does not provide a standalone ground to refuse an application. Substantive objections cannot justify abandoning a search if the technical subject-matter remains identifiable.
Irregular Use and Conditional Counterclaims: The Munich Local Division on Medical Devices
The Munich Local Division clarifies when the irregular use of a medical device constitutes infringement. The panel also establishes strict cost consequences for counterclaims made conditional at the oral hearing.
Applying G 1/24 to Mathematical Methods: T 2043/23 on Explanatory Claim Interpretation
In T 2043/23, the Board of Appeal applied G 1/24 to confirm that the description may serve an explanatory function to help the skilled reader recognise an embodiment already encompassed by the claim wording.
No Formal Amendment Required: The Court of Appeal on Defending Granted Dependent Claims
The Court of Appeal clarifies that patentees defending granted dependent claims against revocation do not need to file a formal application to amend under Rule 30 RoP, provided they properly substantiate their validity.
Defending Dependent Claims Without Rule 30 RoP: The Court of Appeal in Fujifilm v. Kodak
The Court of Appeal has resolved four parallel appeals in the Fujifilm v. Kodak dispute, clarifying that patentees do not need a formal Rule 30 RoP amendment application to defend granted dependent claims.
The Boundaries of Reformatio in Peius: T 1142/24 Applies G 1/99 to Substituted Features
In T 1142/24, the Board of Appeal applied G 1/99 to reject an auxiliary request that replaced a daily milk yield limitation with a variable reference period, violating the prohibition of reformatio in peius.
Thresholds vs Optimization: The Court of Appeal on Software Method Claims
The Court of Appeal clarifies the distinction between binary threshold checks and continuous optimization algorithms in software method claims, while addressing the admissibility of late-filed non-infringement arguments.
The Limits of G 10/91: T 0967/23 on Fresh Grounds and Appeal Amendments
Board 3.5.01 clarifies that avoiding a fresh ground of opposition under G 10/91 does not guarantee admissibility on appeal. A new inventive step attack based on a prior novelty document is an amendment to the appeal case.