HOFFMANN EITLE Quarterly Newsletter 3/22

Publication | 27.04.2022

Dear Colleagues and Friends,

In this first issue of Hoffmann Eitle Quarterly for 2022, we begin by concluding our two-part series on the Rules of Procedure of the EPO Boards of Appeal (RPBA) with looking at how the Boards of Appeal remit cases to first instance under the revised RPBA, based on statistical data and analysis of individual cases. We then report on an interesting decision of the UK High Court on the obviousness of a new salt form, and a decision of the Court of Justice of the European Union on the design protection of LEGO building blocks. The next article discusses a recent decision by an EPO Board of Appeal challenging the EPO’s practice of requiring applicants to adapt the description whenever claims are amended. The fifth article examines two recent referrals to the EPO Enlarged Board of Appeal on the right to priority under the European Patent Convention (EPC), and in particular on the "joint applicants' approach". This is followed by an article which presents recent changes to the national phase of PCT applications in Germany and Italy. We conclude with an article on the expected timeline for preparing for the start of operations of the Unified Patent Court (UPC).

We hope that you will find this issue of Hoffmann Eitle Quarterly informative, and, as always, we welcome your comments.

Nicolas Douxchamps
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 II)

Part I of this series discussed how parties should present their case in appeal proceedings at the European Patent Office (EPO) under the new Articles 12 and 13 of the Rules of Procedure of the Boards of Appeal (RPBA), which entered into force on January 1, 2020. This article now focuses on the remittal of cases to the first instance under Article 11 RPBA 2020. Discussing first the purpose behind the reformulation of Article 11 RPBA in 2020, we conclude based on a statistical review of cases that, in practice, the rate at which cases are remitted to the first instance remained the same under the new RPBA (around 80 % of cases in which remittal came into consideration), and that remittals were frequently justified by the presence of open issues on material aspects not decided (or incorrectly decided) at the first instance, by the appeal proceedings having as a primary object a "review in a judicial manner" of a decision, or by the presence of fundamental deficiencies in first instance proceedings.

Link to the article

Teva v Bayer - UK High Court Decides New Salt Form is Obvious

In the recent decision in Teva v Bayer Healthcare, the High Court of England and Wales found Bayer’s patent EP (UK) 2 305 255 invalid for the reason that it claimed a specific salt form of a drug which was considered obvious in view of preliminary clinical trial data relating to an unknown form of the drug. This decision illustrates the UK courts' willingness to find patents in the pharmaceutical field invalid on the basis that they claim the outcome of routine drug development.

Link to the article

LEGO: General Court Judgment of 24 March 2021 - T 515/19

On March 24, 2021, the General Court of the Court of Justice of the European Union overturned the decision of the European Union Intellectual Property Office (EUIPO) that had found the design of the LEGO brick ineligible for protection. On the one hand, the EUIPO had not observed the exception in Art. 8 (3) Community Design Regulation (CDR). In addition, it had not sufficiently taken into account all the essential appearance features of the contested design.

Link to the article

Amendment of the Description: Is It the EPO's Guidelines That Require Adaptation?

One of the peculiarities of EPO practice is the requirement to adapt the description for agreement with the claims. Controversially, the EPO adopted a much more stringent approach to this requirement last year. However, in a recent appellate decision - T 1989/18 - the competent Board of Appeal (Board 3.3.04) held that the requirement to adapt the description lacks legal basis in the EPC. The Board's decision calls into question the legitimacy of the EPO’s approach but it remains to be seen whether the EPO will alter its practice in view of the Board’s findings.

Link to the article

Update on Entitlement to Priority under the European Patent Convention (EPC) and Joint Applicant Approach

On January 28, 2022, an EPO Board of Appeal referred two questions to the Enlarged Board of Appeal (EBA) regarding the requirement of Article 87(1) EPC that priority can only be claimed by the person who has duly filed the priority application or its successor in title. In a previous article (HOFFMANN EITLE Quarterly, June 2021, pp. 2-4), we provided some background and best practice recommendations in relation to this requirement. We provide here a brief update on this new development.

Link to the article

Changes in Germany and Italy to the National Phase of PCT Applications

Changes to the national provisions in Germany and Italy for PCT applications will enter into force soon or important deadlines are approaching in that regard. This article summarizes the background of these changes and provides practical advice to applicants. In a nutshell: In Germany, as of May 1, 2022, the term for entry into national phase is extended from 30 to 31 months. In Italy, PCT applications with an international filing date on or after July 1, 2020 are entitled to enter into the Italian national phase through the direct national route, with a non-extendable deadline for entry into the national phase of 30 months from the earliest priority date.

Link to the article

Preparing for the UPC: What to do when

With the Unified Patent Court (UPC) and the European Patent with Unitary Effect (EP-UE), a new patent system will come to Europe at the end of 2022 or in 2023, introducing a major change in the European patent litigation system. On January 19, 2022 the provisional application period (PAP) began. The UPC has come into existence as a legal entity and is conducting the necessary preparations before the new system can commence.

Link to the article

Should you have any questions or need more information, please do not hesitate to contact us.

With best regards,