| European Case Law Identifier: | ECLI:EP:BA:1989:T030187.19890216 | ||||||||
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| Date of decision: | 16 February 1989 | ||||||||
| Case number: | T 0301/87 | ||||||||
| Application number: | 81300050.2 | ||||||||
| IPC class: | - | ||||||||
| Language of proceedings: | EN | ||||||||
| Distribution: | A | ||||||||
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| Title of application: | - | ||||||||
| Applicant name: | Biogen | ||||||||
| Opponent name: | Hoffmann La Roche Boehringer Upjohn Hoechst |
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| Board: | 3.3.02 | ||||||||
| Headnote: | 1. When amendments are made to a patent during an opposition, Article 102(3) EPC requires consideration as to whether the amendments introduce any contravention of any requirement of the Convention, including Article 84 EPC; Article 102(3) EPC does not allow objections to be based upon Article 84 EPC, if such objections do not arise out of the amendments made (further to T 227/88, dated 15 December 1988) (cf. Point 3.7 of the reasons) 2. Variations in the construction within a class of genetic precursors, such as recombinant DNA molecules, claimed by a combination of structural limitations and functional tests are immaterial to the sufficiency of the disclosure provided the skilled person could reliably obtain members of the class without necessarily knowing in advance which member would thereby be made available (further to T 281/86 dated 27 January 1988) (cf. Point 4.5 of the reasons). 3. If an entity itself is disclosed to the skilled person, this does not necessarily mean that a component part is also disclosed for the purpose of priority if this is not envisaged directly and unambiguously as such, and requires considerable investigation to reveal its identity (cf. Point 6.3 of the reasons). 4. When priority is claimed for a European patent application, the publication of the content of the priority application in the interval between the filing of that application and the filing of the (final) European patent application cannot be used as state of the art against any claim in the latter application. However, if such publication goes beyond the content of a previously filed application and includes subject-matters not covered by the disclosure of that application, such disclosure may in principle be cited against any claim in the (final) European patent application relying on a priority date subsequent to the publication date (cf. Point 7.8 of the reasons). |
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| Keywords: | Opposition grounds - matters arising from amendments Sufficiency - Reliability for obtaining members of a claimed class Novelty - Gene bank Priority - Entity and component part of it Priority and inventive step - subsequent publication not state of the art against European application Applicability of the Paris Convention |
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Source: http://www.epo.org/law-practice/case-law-appeals/recent/t870301ex1.html
Date retrieved: 17 May 2021
101 references found.
Click X to load a reference inside the current page, click on the title to open in a new page.EPO Guidelines - D Opposition and Limitation/Revocation Procedures
EPO Guidelines - H Amendments and Corrections
Offical Journal of the EPO
XOJ EPO SE 1/2021, p179 - Annex 1 - Index of published decisions of the boards of appeal and the Enlarged Board of Appeal - (as at 31 December 2020)
XOJ EPO SE 1/2020, p174 - Annex 1 - Index of published decisions of the boards of appeal and the Enlarged Board of Appeal - (as at 31 December 2019)
XOJ EPO SE 1/2019, p158 - XVI. - Index of published decisions of the boards of appeal and the Enlarged Board of Appeal - (as at 31 December 2018)
Case Law Book: II Conditions to be met by an Application
XCLR II D 3.1.5 Explicit or implicit disclosure of the features of the invention in the priority document
XCLR II D 5.1 Publications during the priority interval – effect on elements of the European patent application not entitled to priority