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Information 4 14

G 10904 F | ISSN 1434-8853 | Art.-Nr. 56356404 | Dezember 2014

Institut der beim Europäischen Patentamt zugelassenen Vertreter Institute of Professional Representatives before the European Patent Office Institut des mandataires agréés près l’Office européen des brevets

I – Information concerning epi 126 Editorial

127 Report from the 77th Council Meeting 129 Reform of the European Patent Institute (epi)

II – C ontributions from epi Members and other contributions 156 Guideline for Authors from the Editorial Committee 157 Lack of clarity, a new approach in case law? by T. Godemeyer 160 Report on the “EPO boards of appeal and key decisions” conference held in The Hague on 8-9 October 2014, by M. Nevant 162 Amicus curiae brief of epi concerning case G 3/14, by R. Jorritsma Institut der beim Europäischen Patentamt zugelassenen Vertreter Institute of Professional Representatives before the European Patent Office Institut des mandataires agréés près l‘Office européen des brevets

Redaktionsausschuss /Editorial Committee /Commission de Rédaction Terry Johnson Marc Nevant Maarten Nollen Albert Wiedemann

Postanschrift /Mailing address /Adresse postale epi Bayerstrasse 83 80335 Munich Germany Tel: +49 89 24 20 52-0 Fax: +49 89 24 20 52-20 Email: [email protected] www.patentepi.com

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The trade mark “epi” is theproperty of the Institute of Professional Representatives beforethe European Patent Office. epi is registered internationally,asaCommunity trade mark (CTM) in the EU and nationally in Germany. Information 4/2014 Table of Contents 125

Table of Contents

Editorial ...... 126 Information from the EPO

Resultsofthe 2014 European Qualifying Examination ...... 149 I–Information concerning epi List of Professional Representatives as at 31.10.2014 ...... 150 Report from the 77th CouncilMeeting...... 127 Internship for patent professionals, Reform of the EuropeanPatent Insitute (epi)..129 Praktika Intern2015 ...... 150 Contact Data of Legal Division ...... 151

Committee Reports Information from the Secretariat Report of the By-Laws Committee (BLC), by P. Moutard...... 130 Next Board and Council Meetings...... 152 Report of the Litigation Committee (LitCom), Deadline 1/2015 ...... 149 by A. Casalonga ...... 132 Annual Subscription 2015 ...... 152 Report of the Patent Documentation Committee Direct DebitingMandate...... 153 (PDC), by P. Indahl...... 133 epi Disciplinary bodies and Committees ..... 165 Report of the Disciplinary Committee (DC), epi Board ...... U3 by P. Rosenich...... 134 epi Artists Exhibition 2015 ...... 155 Report of the European Patent Practice Committee(EPPC), by F. Leyder ...... 134 Report of the Committee on Biotechnological Inventions, by A. De Clercq ...... 136 II –Contributions from epi Members and other contributions

Education and training Articles

Obituaryofepi tutor Peter Low ...... 138 Guideline for Authors from the Editorial Tutors’ reportonthe EQE 2014 papers ..... 138 Committee ...... 156 epi presentations on the Unitary Patent and Lack of clarity,anew approach in case law? the Unified Patent Court ...... 145 by T. Godemeyer...... 157 Annual epi Tutors’ Meeting ...... 146 Report on the “EPO boards of appeal andkey Meeting of Tutors with the EQE committees ... 146 decisions“conference held in The Hague PCT at the EPO –Conference for patent on 8–9 October2014, by M. Nevant...... 160 professionals and industry ...... 147 Amicus curiaebrief of epi concerning case G3/14, Boards of appeal and key decisions conference .147 by R. Jorritsma...... 162 Forthcoming epi educational events...... 148 Report from the seminar „Opposition and Appeal“ in Eindhoven...... 148 126 Editorial Information 4/2014

Editorial

T. Johnson (GB)

This year marks the centenary of the start of the Great stakeholdersinthe system. It is importantthereforethat War, the end of that war being marked thismonth, our Institute continues to play aconstructiveand ener- November,asIwritethis. Pat Barker memorably wrote getic roleinthe development of these systems which will about the warinher novel Regeneration. The word effectively lead to aregeneration of the patent system in ’regeneration’ is loosely defined as rebirthor, more Europe. meaningfully for patent attorneys, renewal.Asour As memberswill alsoknow,inelectronics ’regener- readers will know,our Council is concerned that our ation’ has the meaning of the use of positive feedback, in Institute continues to increaseits relevance and import- the sense of increasing the amplification of aradio ance to stake-holders using the patent systemboth in frequency stage. We would be glad to hear from Europe and abroad, while not forgetting the benefit members whocan providepositivefeedback on how membership brings to our members. Agroup of the Institute might continuefor the benefit of all stake- members has been set up to lookinto this. Iamconfident holders. that our Institute does not need arebirth or renewal as such, but the current period is an important one as we This issuebeingthe last one in 2014, thereisanother move on, not least with the unitary patent system and opportunity for reflection and regeneration as we move commensurate Court system soon to be up and running, into aNew Year.Wetake this opportunity of wishingall both of which will have asignificant impact on all our readers aHappy HolidaySeason and afruitful 2015. Information 4/2014 127

Report from the 77th Council Meeting

The 77th Council meeting brought togetherabout 130 staff and epi members to be invited as speakers at patent attorneys from the 38 member states. Under the conferences. For 2015, the following conferences are good guidance of the President, the Council discussed planned: the household of the Institute and the ongoing process –onthe Unified Patent Court (UPC) to bring the Institute to ahigher level of professionalism. –onadded matter (Art. 123(2) EPC) The bookkeeping was improved so as to make the –onOpposition and Appeal financial situation more transparent. Importantly,the These conferences will be held more than once in Institute has in the past years increased itsstafffor various locations throughout Europe. making committees more efficient. In relationthereto, In addition, the epi will be responsible for exam the Institute has rented more space within its building. preparation. The Council agreed with the proposed budgetin2015. An important proposal was to merge the fee for Amajor area of improvementisstill the websiteand pre-registration for the exam into the epi student mem- the informationprovided to all epi members on the bership fee. ongoingactivities of the epi in the field of education and statements made on behalf of the epi by the various European Patent Practice committees. This was stressed also in relation to the outcome of the questionnaire sent out by the epi Reform Mr Leyder presented several activitiesofthe Committee, Group. One of the decisions made in this respect is to in relationtothe UPC, to PCT and an annual meeting convertthe epi Information into adigital publication. with the Board of Appeal. This process will take place from 2016. He obtained approval to present apaper to the Board In view of the increased staff and budget, afirst of Appealtoslightly revise Article 12(4) of the Rules of discussion took place on an increase of the membership Procedures, for better legal security,wherein the word fee. Adecisiononanincrease of the membership fee ’could’ in ’could have been submitted earlier’ is to be starting in 2016 will be made at the next Council meet- replaced by ’should’. In relation thereto, an important ing. It seems that ahigher membership fee than the observation was made on the point how to deal with current EUR 160permember is feasible, but that the documents that were not admittedinto the proceedings members should be made more aware of the activities by the first instance (i.e. opposition). Here the Board and the benefits. replied that non-admittance should be addressed in the Grounds of Appeal. The epi Reform Group Mr Leyder further will send apaper to the Enlarged Board to requestthat at least one external member is Mr Durán Moya presented, as chair of the epi Reform involvedinthe Review Proceduresoastocreate greater Group, the results of the questionnaire sent out to epi independence (in view of R17/12). In fact, Mr Leyder members and gave several recommendations. He was pointedthere out that the review is currently areview happytostate that 20%ofthe epi members had filled in between peers, i.e. of chairmen of Boards of Appeal. the questionnaire. Theresults demonstrated that epi is less visiblethan desired,and that its function as alobby Litigation andOther Committees organisation should be increased. As to the epi Information, highlydesired were contributionson Mr Casalonga presented adraft epi paper in relation to articles on the European Patent Practice and any devel- the four Rules of the UnitaryPatent Regulation, to be opmentsinrelationtoEuropean PatentLaw.MrDurán discussed in ahearing at the end of November.Mr Moya concluded that the current suggestions are not Casalonga made anumber of useful observations on radical and asked the Council to continue the workinthe Rule 5onthe Opt Out, so that the process is clarified. As epi Reform Group up to the next Council meeting. A to Rule 14 on the language, Mr Casalonga proposed more detailed report will be presented in afuture issue of removal of the draft Rule 14(2)(c), in view of the created the epi Information. The Council approved the draw- complexity.Hefurther would specify comments to the ing-up of aCommunication plan and actions on how to Rule 286(1) on representation. improve the provision of information to members. Ms De Clercq gave an overview of developments in the field of biotechnology.Most important is that the epi Professional Education Legal Advisor has coordinated the generation of asum- mary of the national lawsonplants. The Professional Education Committee (PEC) presented the progressonthe cooperation between the epi and Changestothe EQE the EPO (particularly the Academy)inthe organisation of seminars and the financial arrangements thereof. This is Ms Leissler-Gerstl mentioned that the Supervisory Board apositive development.Itnot only allows better decided to changethe A/B paper in the sense that the informationtothe epi members on the EPO educational distinction between electromechanicsand chemistryis activities, but also provides the opportunity for both EPO given up. Mr Tangena added that this is adecision made 128 Information 4/2014 by EPO already.Hewould have preferred that the pro- close to the pass/fail limit (i. e. between 40–60 marks). posal had been discussed first in Council. Thereafter,the Another view was that asecond marker is anyhow Council expressed its surprise and many members needed, because even afirst marker’sview of clearly expressed their disagreement. In the exchange, it fail or pass may not be right. Also asingle marker might becameclear that the arguments in favour of this change lead to more appeals. Furthermore, halfofthe examiners are that there are many subfields,and that the A/B paper are EPO staff,and the other half are patent attorneys. It does not test technical knowledge. The counterargu- would not be appropriate for examstobereviewed by a ments are however that there are two main areas: single marker who is not part of the profession. Par- electronics, mechanics and software on the one hand ticularly,the epi members who have been markers and chemistry and biotechnology on the other hand. expressed that they found that two markers areindis- Furthermore, the exam is not for lawyers, but for can- pensable. The overallview was therefore in favour of two didates with technical or scientific background. markers. Ms Leissler-Gerstl reported thatthereare further plans Further proposals were discussed to increasethe pass to revise the EQE. Afirst proposal is amultiple choice rate. They are all intended to motivatepeople to prepare exam.The Council strongly opposed multiple choice for appropriately.Proposals were limiting the number of severalreasons. Some of those arguments are that sittings, alimited validity of passed papers, fee increase multiple choice testing is merely knowledge testing for resitting. It was observed that thereisnogood data rather than skills. It was further observed that making provided by the EPO, so it would be hard to make useful good multiple choice examsisextremely time-consum- comments. It was furtherobserved that it was not clear ing, and that it is not representative of the workinthe whatthe effecthas been of the changes to the EQE of profession. Furthermore, it could be harmful to repu- five years ago. One comment made was that candidates tation of the examination. that need to resit often have aspecific problem that they Asecond proposal is that apaper be marked by one do not discover.Ifahigher fee were requested, it should examinerrather than by twoexaminers, as currently.It thereforebeused to provide training and support The was observed that two examiners are certainly desired Council rejectedwith abig majority any such proposal for training new examiners and in situations which are that would restrict the options of candidates. Information 4/2014 129

Reform of the European Patent Institute (epi) Report of the Reporting group on the reform of epi

L.-A. Durán (ES), Chair

The Council of epi,inits meeting in Munich on April b) To send reminders for voting at the time of the election 28–29, 2014 decided to set up aReporting Group in and to check the technical problems reportedby order to reviewthe structure, organisation and func- members in the electronic process. tioning of the Institute and submit proposals for c) To review the epi website to make it moreuser friendly improvement. and to incorporate more and better information. Said Reporting Group has beenworking for the last 6 d) To increase the number of articles in the publication months.Inorder to prepareproposals for reform, it was epi Information and to add English abstracts to facili- very important, in the view of the Group to have the tate reading. opinion of the epi membership, and accordingly, a questionnaire was prepared that was launchedonJune e) To organize ahalf aday seminar in combination with 18, 2014 and was open for reply for more than amonth. Council Meetings, open to all members and particu- The participationrate was quite positive and reached larly to members residing in the location of the meet- nearly 20%ofthe membership. Areport about the ing or its neighborhood. result of the survey can be found at the epi website. f) To organize jointmeetings in cooperation with The ReportingGroup looked at the results of the national associations of different member states. survey and decided to prepare afirst set of suggestions g) To attempt to be involved, at an earlier stage, on EPO for reform deriving from the replies received. legislative proceedings to become more impactful. These proposals were presented to the Board at its h) To build up and establish with official organizations meeting of September27, 2014 in Zagreb and to the other than EPO as well as with other IP NGO’s. Council at its meeting in Milan last November 15, 2014. i) To install atool to collect and centrally track member The Council has decided to approveand implement requests and proposals. most of the proposals for reform suggested. Someof these proposals are the following: j) To createand update an email databaseofmembers. a) To request candidates to election for the Council to It was also decided that the ReportingGroup should reply to aquestionnaire with information to be sent to continue the study of proposals for reform, particularly in epi membership so they would knowwho is who the area of structure, organization and functioning, to before voting. improve efficiency.

Information about epi membership and membership subscription or Rules governing payment of the epi annual membership fee is available on the epi website www.patentepi.com 130 Committee Reports Information 4/2014

Report of the By-Laws Committee (BLC)

P. Moutard (FR), Chair

Since the Council meeting in Munich (C 76) several Art. 18.2, 3rd paragraph, questions were referred to the BLC. Ameeting was There was also adiscussionaboutthe translation of organized on October16for finaldiscussionsand deci- “passives Wahlrecht”, in Art. 18.2 3rd paragraph, which sions on these issues and also to decide further amend- does not seem to correspond to the English “passive ments of the By-Laws (BL). vote”. It was decided to postpone this topic to the next Participantstothis meeting were Pascal Moutard By-Laws meeting. (Chair), Terry Johnson, Paolo Gerli, Martin Forsthuber, Another issue concerned the flexibility left to afull María Oliete Ballester (epi Secretariat), Vernessa Pröll member to nominate asubstitute. In some committees, (epi Secretariat). no nomination is made, and this can result in difficult The agenda was the following one: situations, in particular in small committees. It is there- 1. New Belgian Council members after resignation of a fore decided to make the nomination compulsory. BelgianCouncil representative 2. Electronic voting for elections in Council. Art. 18.2, 4th paragraph 3. Art. 18.2,4th §, A.18.3and A. 50 By-Laws. The English and Frenchversions were adapted to the 4. Art. 51 By-Laws. Germanone (reason: see in particular the minutesof 5. Budgetand Financial reportingprocess for commit- C55 (Cannes, 2003), decision 9: tees. The Chairmanofthe By-Laws Committee, Mr EDER, 6. Further amendments to the By-Laws (epi 3.1.1) submitted aproposal for revision of the decision taken at 7. Other issues the Florence Council meeting, concerning the size of All amendmentstothe By-Laws (BL) discussed below committees (epi 68/03, Annex 1). are incorporated in the attached amended By-Laws. PresidentHOLZERrecalled that the Council had 1. New Belgian Council members. decidedthat associate members are appointed by the Committees. They may participate in ameeting if they The Secretary General informed Mr Moutard about the are invited by the Chairman of the Committee. They resignation of the Belgian colleague and Council receive the working papers, can make an input, but do member,MrGilbert Voortmans, from his positionas not take part in the deliberations of the Committee, and Council member. have no right to vote. Council members questioned the After checking the Election results and the nomination limitation of associate members in some committees. M. forms of both candidates theBLC agreed that, according SPEISER pleaded in favour of leaving it to the Chairman to Art. 4.3 BL, Mr Daelemans automatically becomes a of aCommitteetodecide on the number of associate full member and Mr Vandersteen his substitute. members withinhis Committee. 2. Electronic voting Art. 18.3 The next topic on the agenda concerned the electronic It was also decided to amend Art. 18.3, in particular to voting and the system that was used during the Munich make clearthat the correspondence of acommittee Council meeting of April 28–29,2014 (C 76) for the includes emails. elections in Council. Ms Pröll will send an email to the supplier asking all the 4. Art. 51 BL different functions of the software. This information will be forwarded to the BLC. Further to the Munich Council meeting C76, the BLC The BLC finally agreedonseveral amendments with discussed whether Art. 51 should be amended. regardtothe ElectionsinCouncil, see in particular AlthoughArt. 51 seems to be clear, it is not very clear Art. 53.1, 56, 57, 61.1 BL. whether the President can vote during elections in No amendment to Art. 60 appeared to be necessary. Council. For the sake of clarity,the title of Section6was It was concluded that Art. 51 applies to votes on amended. motions, not to electionsinCouncil. Attention is drawn to Art. 4.1 cBLwhich establishes acleardifference 3. Art. 18.2, A. 18.3 and A. 50 between votes and elections and also to the difference Art. 18.2, 1st paragraph and Art. 50 BL: between Art. 59 BL (Method of voting on motions) and Art. 18.2, 1st §refers to Art. 50.3. It was discussed 60 BL (Method of voting at elections in Council). whether Art. 50.3 should also refer to Art. 18.2. BLC Art. 51 contains arule applying in case of equality of decided not to make such areference in A. 50.3. votes. Another rule (Art. 55) applies during electionsin However Art. 50.1 should refer to Art. 18.2. Council in case of equality of votes. Information 4/2014 Committee Reports 131

The Founding Regulation (Art. 87(2) FR) also clearly because the part of Art. 15 FR, applicable in the context stipulates that “Council elects the Board”, which does of Art. 9BL, referred to the first Council Meeting. not exclude the President of the epi. Thereforethe reference to Art. 15 of the FR was Art. 51 contains exceptions, when voting is required deletedfrom Art. 9.1 and 9.2 of the By-Laws. underArt. 50.2 and 50.3 BL, which concerncases where a2/3 majority is required. Another question was there- Art. 10.9 BL fore whether other provisions (for example: Art. 27.3, Art. 10.9 refers to Art. 7(5) of the Founding Regu- Art. 29.2, Art. 43.4, Art. 48, Art. 49.2), where the lation. This Article 7(5) FR was deleted in 2002. Art. 7(6) simple majority does not apply,should also be excluded. was renamed Art. 7(5), and then again changedin The answer is no, because all these other cases concern Art. 7(6). It was decided to amend Art. 10.9 BL so that procedural issues, where the President has been con- it refers to Art. 7(6) (not Art. 7(5)) of the Founding ducting the discussionsand thereforehas been himself Regulation. applyingcertain procedural rules. The BLC has thereforecome to the conclusion that 6.3. Compliance with former amendments to the By- Art. 51 is clear,consistent with the rest of the By-Laws, Laws does not apply to elections in Council, and that there is The By-Laws have been deeply amended by the Vilnius no need to amend it. Council. However, some provisions, which should have been adapted accordingly,had not yet been amended. 5. epi Budgetand financial reporting process for Committees Art. 10.6 BL The original Art. 10.7 (now 10.6) referred to A. 24.2a. The Guidelines drafted and amended by the epi Treas- In C64(Vilnius) it was decidedtodelete the whole urer,should be provided in all three languages (Art. 27.2 initial Art. 23* and the original A. 24(2)a. BL). HenceA.24(2)b(not a) becameA.23(2)a. But A. 10.7 After talking about the different obstacles, the BLC was not adapted accordingly. came to the conclusion that the Guidelines should be adopted by Council. Unfortunately A. 24(2)b was also referring to areport, but it is the audit report of the spring meeting. Therefore 6. Further Amendments the reference, in A. 10.6, to A. 23.2(b), does not make sense. 6.1. References to provisions of the Examination Regu- The expression “the Report on activities referred to in lation Art. 23(2)b and also” was therefore deleted from A. Several articleshad to be adapted to the new Examin- 10.6. ation Regulation: *In one annex to the Vilnius accumulated file,Art. 23 th –The 4 definition at the beginning of the By-Laws; is commented as “deleted, because unworkable”. –Art. 3.1; Actually, the duty of the Counciltodecide the date –Art. 13.1. and place of the next Council meeting is now aduty of In particular,according to the new Examination Regu- the Presidium (A.10B(2)b), and part of the “earlier Coun- lation the President of the Institute: cil meeting” of original A. 23(2) is now in …A.24!! –nominates the epi members of the SupervisoryBoard, aDeputy Chair (Art. 2(1)(c)(i)), or aChairman Art. 14.5 BL (Art. 2(1)(c)(ii)); The original Art. 14.5 referred to former A. 23.2a, –nominates the epi members of the Examination Board which was deleted by Council (C 64, Vilnius). (Art. 42(1)(c)(i)), or aChairman or aDeputy Chairman It was decided to delete, in Art.14.5 BL, the reference (Art. 4(1)(a) and (b)). to Art. 23.2 (a). According to Art. 17 the Institute is consulted by the President of the EPO when laying down the EQE fees. But Art. 30 BL the Institute is represented by its President(Art. 13.1 BL). Art. 30 BL was updated so as to cover the actual The BLC thereforedecided: practiceofsending by email. –Tochange the date to 10 December 2008 in the Art. 43.2 BL definition of the ”Examination Regulations” (see The Germanversion of Art. 43.2 was updated. beginning of the By-Laws); –Todelete any reference, in Art. 3.1, to Art. 2(a) and Art. 48 BL 15(1) BL, to the Examination Regulation. In Art. 48 the reference to Art. 35.2 was wrong, it was –toinclude,inArt. 13.1, references to Art. 2(1), 4(1) amended to areference to Art. 35.3. and 17 of the Examination Regulation. Art. 59 BL 6.2. References to the Founding Regulation (FR) Art. 59 will be adapted only if it is decided to imple- Art. 9BL ment electronic voting for Council meetings other than Art. 9.1 and 9.2 BL refer to Art. 15 of the Founding those where elections in Council are performed. The Regulation. This is confusing and no longer necessary Secretary General is invited to inform the BLC in advance. 132 Committee Reports Information 4/2014

Art. 62.1 BL Treasurer will be asked whether thisexpression should Art.62.1d referstoArt. 10.9, which is obviously not be replacedby“Girokonto”. wrong; according to Art. 13.5, the President may invite third parties to meetings. –Comments weremade on the use of capitallettersin the French version on the By-Laws. The epi Secretariat Art. 67 BL staff will go through the French version regarding Art.67was amended to includethe possibility of capital letters. sending noticesofgeneral meetings by email. –inEnglish the word “chairman” should be employed, 7. Other matters even if the position is held by awoman. The epi Secretariat staff will check the By-Laws accordingly. The Rules for elections (epi 3.1.3) werealsoupdated: only formal amendments were made to these rules. –alist (excel sheet) of allcurrent Board members will be Some formal matters still have to be implemented: established by the Secretariat. The list should mention –InArt. 16.2the Germanversion refers to a“Post- since when they are in the Board and their position. scheckkonto” which is not accepted anymore. The This excel sheet should be available to BLC.

Report of the Litigation Committee (LitCom)

A. Casalonga(FR), Chair

I. Appropriate qualifications and certificate for “The Certificatemay be issued by universities and representation by European patent attorneys other non-profit educationalbodies of higher education (EPLC) in an EPC Member State[as well as by the Unified Patent Court’sTraining CentreinBudapest (hereinafter referred The draft proposal issued by the UPC Preparatory Com- to as TrainingCentre) or by abody fallingunder the mittee concerning the requirements for European patent authority of the European Patent Office(EPO) …” attorneys to be authorised to represent before the UPC has been published for comments on the official web site 2. Content of the course (Rule 3) of the UPC. Explicit mention of professional ethics, privilege and The Litigation Committee prepared aposition paper duties to the court should be included. which was approved by the epi Presidency and sent to the secretariat of the Preparatory Committee. 3. Other appropriate qualifications: The main points of this paper are the following: Beyond the transitional period, the present draft pro- vides only for one alternative to the EPLC,namely alaw 1. European patent litigation course (Rule 2): diploma. While the EPLC will be the logical and preferred wayofgaining entry to thelist, the wording of Article In the contextofthe EPLC, courses and qualification 48(2) UPC requires discretiontorecognize anyappropri- should be available in any EPCmember state. The right to ate qualification even beyondthe transition period. represent underArticle 48(2) UPC applies to all EPA’s Anew Rule11a shouldbeadded, stating: including both those from statesthat are party to the “European Patent Attorneys having other qualifi- UPC and those that are not. All should be able to follow cations and experiencemay,atthe discretion of the an appropriate course and it is in the interests of the Registrar,bedeemed to have appropriate qualifi- system for any training centre that meetsthe required cations.” standard to be accredited, regardless of its specific location. 4. Other qualifications during atransitional In addition, abody (not falling within the definition of period:Rule 12(b) abody of higher education) that falls underthe com- petence of the EPO, such as the European Patent Acad- In the explanatory memorandum of the Preparatory emy could also be included, should they wish to apply. Committee it is statedthat Rule 12 takes into account that “in some member statespatent attorneys are Rule 2ofthe draft should thereforebeamended to already authorised to represent parties in nationalcourts read: in patent infringement cases”. Information 4/2014 Committee Reports 133

However, these are rareexceptions and in the vast 5. Effects of entry on the List (Rule 16): majority of EPC member states, the parties must be For thoseEPAsregisteredonthe List and thus authorised represented by lawyers. Since most lawyersdonot have to representbefore the UPC, it is essential that they can atechnical background, patent litigation in most EPC identify themselves as such and also distinguish them- member statesisateamworkbetween alawyer and an selves from others who are not so authorised. experienced patent attorney,who sits next to the lawyer in court and is involved in all stages of the preparation Those EPAs should be able to refer themselves as and conduct of the case. “European Patent Litigators”. In addition, the experience required under proposed Anew Rule 16(2) should be introduced, stating: Rule 12(b) does not take into accountother actions “European Patent Attorneys registered on the List shall involving apatent such as preliminary injunction pro- be entitled to refer to themselves as European Patent ceduresordeclarations of non infringement as well as Litigator in the course of their professionalactivities in all actions involving supplementary protection certificates. of the Contracting Member States. Persons not regis- All actions stated in Article 32 of the UPCA should be tered on the List shall not be entitled to refer to them- taken into consideration. selves in this manner.” Rule 12(b) should thereforebeamended as follows: “(b)having represented aparty or assistedalawyer or II. Rules of procedureofthe UPC ajudge before the court in at least three actions initiated th before anational court of an EPCMember Stateand It is expected that the 16 draft of Rules of Procedurewill involving apatent or asupplementaryprotection certifi- again be amended after further public consultation. cate, includingatleast one infringement action or one The Litigation Committee is monitoring the situation action for declaration of non-infringement within the and will prepareanew position paper including further five years preceding the application for registration.” comments.

Report of the Patent Documentation Committee (PDC)

P. Indahl (DK), Chair

The PDC would like to report on some developmentsin archive of the OJ in aunified format that allows better the area of patent documentation. searching. The work is in progress and the completion WIPOhas created aPatent RegisterPortal with excel- date has not yet been announced. lent presentation of information on the scope of national The Chinese part of the global dossierisnow active in and regional registers on patents and SPCs. The portal the European Patent Register.The register information may be used as astartingpoint for web access to official on aEuropean patent publication includes apage show- patent registers. The portal is easytouse and quite ing the patent family.When aChinese family member is informative. Youmay find the portal on WIPO’s Patent- presentthe global dossiershown next to the Chinese scope undermenu item ’browse’. document provides aview of the Chinese file and a The number of European granted patent publications possibility for opening both aChinese document and an (EP-B1 and B2) during the first three quarters of 2014 has English machine translation thereof. decreased by 5.4%compared to 2013. The number of patents published afterlimitation procedure (EP-B3) is 26 Arecent initiative, ARABPAT,has focus on adding in thesame three quarters and thus continues to be at an patent documents from Arab speakingcountriesto average rate of less than one per week. Espacenet, andcurrently documents from Egypt, The online version of the Official Journal of the EPO Morocco and Jordan have been includedinthe world- will be improved by making available the complete widecollection. 134 Committee Reports Information 4/2014

Report of the Disciplinary Committee,

P. Rosenich(LI), Chair

The DisciplinaryCommittee is working in it’s Customary Mr Johannes Karcher to offer epi DC– assistance in manner. drafting disciplinary regulations for representatives The Secretary Tuna Yurtseven und Vice Secretary beforethat Court. This is because the epi members Wolfgang Poth visited epi headquarters in Munich in form the first European Profession and therefore epi’s order to update the files and documentation together disciplinary regulation has an international reputation with the Registrar Vernessa Pröll and Deputy Registrar and is properly tested over 35 years. Michele Voth. The Vice-Chairman WernerFröhling was in close contactwith the German Patent Attorneys One interesting case was filed, where an inhouse epi Chamber to exchange opinions and seek harmonisation member downloaded quantities of scientific data of his in the question of file keepingover the time. firm for unclearpurposes.The Chairmanswiftly The Chairman Paul Rosenich contacted –asinstructed entrusted Chamber Smythtodeal with this complaint. by President Tony Tangena –the legal advisor of the UPC

Report of the European Patent Practice Committee (EPPC)

F. Leyder (BE), Chair

This report completed on 07.11.2014 covers the period 2. PCT Working Group (follow-up) since my previous report dated 06.08.2014. At its last meeting, the Committee heard areport on two The EPPC is the largest committee of the epi,but also representation-related topics discussed at the PCT WG, the one with the broadest remit: it has to consider and and decided to specifically report to Council: discuss all questions pertaining to, or connected with, –Nationalphase entry using ePCT(document PCT/ practiceunder (1) the EPC,(2) the PCT,and (3) “the WG/7/12). future EU PatentRegulation”, including any revision –Right to practicebefore RO/IB (documentPCT/ thereof, except all questions in the fields of other com- WG/7/13). mittees: Biotech, OCC, PDC, LitCom, and EPO Finances. The PCT/WG/7 documents are available on the WIPO The EPPC is presently organised with six permanent website: http://www.wipo.int/meetings/en/details.jsp? sub-committees (EPC, Guidelines, MSBA, PCT,Trilateral meeting_id=32424. &IP5, and Unitary Patent). Additionally, ad hoc working The PCT sub-committee has now prepared apaper groups are set up when the need arises. Thematic groups which will be submitted to the EPPC at its next meeting, are also being set up. with aview to seek the views of Council at its Barcelona meeting (C78). 1. Thematic groups 3. SACEPO/WPR 11 For the 2014-2017 term, it seems that only the thematic The 11th meeting of the Working PartyonRules took groups in the field of Pure and Applied Chemistry,which place on 29.09.2014. The provisional agenda mentioned includes medical uses,and in the field of Computer- only oral reports in support of the various items. The ImplementedInventions can be composed from EPPC users indicated that listening to oral reports is not in their members. view abasis for consultation. For all the other groups (corresponding to all other On Rule 147, the EPO asked users to think about a Principal Directorates), Iamnow making acall for can- reasonablepreservation period.Users unanimously men- didates amongst the Council members. tioned that telefax must be retained as an option. Information 4/2014 Committee Reports 135

As to the unitary patent, the issue of surrenders and The topics discussed this year were, as usual, quite the time limit for payingarenewal fee with surcharge varied, from numerous proceduralaspects to the were discussed. application of Article 123(2). As to thelatter,preliminary Finally,wepromised to update our “wish list” for rule findingsofastudy by the IP Federation as to variations amendments (suggestions from the readers of epi between boards were reported and discussed. Informationcan be addressed to [email protected]). Incidentally,noamicus curiae briefs have been sent by epi for pending cases G1/14, G2/14 and G3/14, because 4. European patent with unitaryeffect in the no volunteer stepped forward. participating Member States 6. Guidelines The actions of Spain against both Regulations (C-146/13 and C-147/13) arestillpending beforethe Courtof The Guidelines Subcommittee held ameeting in Copen- Justice of the EU. The opinion of the Advocate General hagen on 05.09.2014for preparing the list of comments was announced to be delivered on 21.10.2014, but this and suggested amendments for the 2015 Guidelines to date has been postponed to 18.11.2014. be discussed at the SACEPOWorking PartyonGuidelines The SC (Select Committee of the Administrative (WPG) on 25.11.2014. Council of the EPOrg) held its 10th meeting on The Subcommittee would like to remind all epi 28–29.10.2014. One agenda item wasparticularly members that we appreciate any comments/suggestions relevant to the EPPC, namelythe decisions on the at any time during the year; please send them to our remaining open items of the draft rules relating to attention at [email protected]. unitary patent protection: The members of the WPG have been informed that –astothe due date for payment of renewal fees with during the next years,the revisions of the Guidelines will surcharge, the European Commission (EC) said it focus in particular on computer-implemented inven- wantedtobepragmatic andensure consistency with tions, and will emphasise the practice relating to Article the EPO practice[i.e. J4/91], however it stated that the 123(2) EPC. In this connection we would in particular present wording (“within six months”) is not entirely request comments on the Guidelines relating to com- devoid of legal risks andthat it is important that the SC puter-implemented inventions (G-II, 3.6 and 3.7) and/or be aware of that; epi repeated that it is in favour of to Article 123(2) EPC (H-IV,2). legal certainty; –astore-establishment of rights, the EC stated that it 7. Patents and standards still has an issue, however immediately added that The European Commission (DG Entreprise) has launched Article 9(1) of the Regulation [whichreferstothe apublic consultation on “Patents and Standards”, open EPO’s internal practice] provides abridge,that the until 31 January 2015: short period (two months)isreassuring, and that Rule http://ec.europa.eu/enterprise/policies/industrial- 22(7) will provide for protection of good faith use; competitiveness/industrial-policy/intellectual-property- –astothe Register,the issue of surrender [is surrender rights/patents-standards/public-consultation/ possible, and if yes how] was not settled; the EC stated index_en.htm that if any member state would provide for anational The members of the EPPC interested in this subject proceduretohandle surrender of aunitary patent, it have been invited to volunteer and join agroup that would request the CJ EU to intervene; the question of wouldprepareanepi submission –ifany –. Other epi further entries in the Register was also left open. members may join the group, depending on its size. The SC then discussed financial aspects (simulation concerning fee reductions for SME’s; estimated costs of 8. IB survey on SIS the EPO in relation to unitary patent protection) and agreed to launch workonthe distribution key. At the request of the PCT Assembly,the International It was announced that the consolidated version of the Bureau (IB)has initiated areview of the Supplementary draft Rules would be made available on the EPO website International Search (SIS) system. As part of this review,it following the Decembermeeting of the SC has sent aquestionnairetoall actorsofthe system, (09.12.2014). including epi as non-governmental organisationrepre- sentingusers of the PCT system. 5. MSBA 21 The PCT Subcommittee of the EPPC is seeking the views of Council and EPPC members in order to prepare This year,the meeting took place on 07.11.2014 in aresponse by thedue date of 19.12.2014. restricted composition, with only 7delegates from epi, two from BusinessEurope,9 chairmen of boards, 9. Next meeting observers from DG5 and support staff from DG3. The meeting was chaired by Mr Vander Eijk. The next meeting is being planned in February 2015. 136 Committee Reports Information 4/2014

Committee on Biotechnological Inventions

A. De Clercq (BE) (Chair)

The below topics were discussed during our Committee It was good news to hear that we can now file meeting of 18 July 2014. sequence listing using the online filing software, once aPCT application has been filed on line at the EPO. 1. Patentability of Plants and Referralstothe EBA One member reported that unexpectedly he had been (G2/12and G2/13) asked by an Examiner to file asequence listing when he inserted accession numbersinthe claims for the first The Enlarged Board of Appeal issued acommunication on time, and he got the standard communication from the G2/12 and G2/13, noting the oral hearing on 27 October EPO asking to file alisting and havingtopay afine. This 2014 and setting out the points for discussion. We think came later in prosecution, and out of the blue, and at the that the pendulum may be swinging towards allowing very least we thought that it was inappropriate to have to products(such as plants), even though they may be pay the fee. produced by an unpatentable process. We note that in both NL and in DE the legislator has excluded protection No Committee members use the EPO’s sequence list- for plants produced by an essentially biological process ing software BISSAP (Patentin is still used widely). (although in NL this is for NL national patents only –for EP(NL) cases the NL courts are following the EPO’s line). 4. Medical use claims Ms Knuth-Lehtola (FI, member of our Committeeand member of the EU Expert Group discussing on the T1780/12 concerned the difference in scope between Biotech Directive) is given input by the epi Biotech Swiss style and EPC 2000 claims. Committee when requested. We would like to point to There is some concernbydoctors,for example in CH, our amicus brief filed to the EPO in name of epi.Wemay that they may infringe the EPC 2000 claims. There is also need to provide further comments.MsKnuth-Lehtola concernregarding infringement for off label marketing. was given permission to send our summary of the We think that there are differences in scope, because national laws concerning plants to the EU Expert Group. Swiss style claims requirethe manufacture of amedic- The epi legal adviser will finalize this document. It was ament: at avery basic levelare two different typesof also the intention to publish this document in epi claims have different wording. One of our memers Information. suggested that EPC2000 claims might cover the use of an intermediate in apharmaceutical formulation 2. Stem Cells which then is metabolized to an active ingredient in the body.That probably would not be covered by aSwiss The EPO decision on the Brustle case is in contrast to the style claim. decisionofthe German Nationalcourt. This had been picked up in the SACEPO document, which had recently 5. Added Matter –Article 123(2)EPC been circulated. This seems to be due to adifference in German national law and the EPC. It was discussed that this issue had been the topic of a The latest opinionfrom the CJEU in C364/13suggests workshop held with the epi,and this is now becoming a that “parthenotes” are not embryos and thereforeare major issue, with it being discussed at SACEPOand also not excluded from patentability. at the annual meeting of epi with the Board of Appeal. T2221/10 appears to followthe EPO’s current prac- There will be afirst batch of changes to the Guidelines in tice, namely that cases filed beforepublication date of October,emphasizing the EPO must not take aphoto- the single blastoma extraction process (SBP) are not graphicview of matters. The EPO should be moving patentable. Ms Knuth-Lehtola is on the expert commis- towards amore liberal view on added matter,even sion formed by the EU, and while other groups from hers thoughthis may have implications on novelty (for are working on stem cells, the epi may be able to example, certain selection inventions may now no longer comment too on this issue. be novel). The Biotech Committee suggests to bring up this matter for discussion with the EPO Directors at the meeting on November 25, 2014. 3. SequenceListings

The decision J8/11 said that applicants do not need to 6. Deposits and the Expert Solution includeprior art sequences in listings, but we need to check that the EPO practice note does indeedfollow this We think the EPOmay have scrapped the expert list. decision. The EPO guidelines have been changed, but we Howeverweare not sure, so we will ask for clarification should check whether they are actually in line with J8/11. at the meeting in November with the EPO Directors. Information 4/2014 Committee Reports 137

7. Procedural matters national law (which does not appear to apply to Euro- pean patents). We have noticed that, regarding patenting of antibodies, In the US, there has been muchconsternation and the EPO want the CDR’s andthe sequences in theclaims. outcry concerning the new natural products guidelines, Far as summons to oral proceedings are concerned, following the Supreme Court of Appeal decision in we are not surewhat criteria the EPO apply.Itseems to Myriad. The EU expert group will be discussing this issue. be very liberal,with few guidelines for Examiners. On aseparate matter it was noted that documents had 9. Associate Members not been scanned by the EPO four weeks after filing by a It was agreed to include,asassociate members: formalities officer in the Biotech group, which prevented Anne Desaix urgent documents appearing on the online file. Philipp Weinzinger We still like to file drawings in colour. Camilla Liden We also thoughtthat in the Examiners’ appraisalsthe Caroline Pallard EPO ought to include the results of any appeals against It is noted that associate members are allowed to their cases. attend the Biotech Committee meetings,but at their own expense. 8. National Developments 10. Next meetings As far as plants are concerned, in the Cresco case in the Netherlands relating to plants there was an interlocutory Next meeting with the EPO directorsand asubpart of our injunction decision in favour of products produced by Committee is on 25 November 2014 at the EPO in essentially biological processes (the claim is in fact in a Munich. Ashort meeting beforehand with the commit- product by process form).The Dutch nationalpatent tee members thatwill be present at said meeting has also was, however,incontrast revoked on the basis of been organised. 138 Education and Training Information 4/2014

Obituary: epi tutor Peter Low

It is with great sorrow that we inform you of the passing of our highlyesteemed friend and colleague, Peter Low,who passed away,on11th October 2014. Peter was aEuropean Patent Attorney and Chartered Patent Attorney who was widely recognised for his professional expertise and enthusiasm which he shared with his epi studentswith great please. He has given CIPAtutorials for the UK Examinations for the last 20 years. In 1989 he set up the Manchester CEIPI basic training course for the European Qualifying Examination. He has been one of the tutors at the Strasbourg seminarsfor preparing candidates for paper Dofthe European Qualifying Examination. He was atutor and examiner for the ManchesterUniversity Postgraduate Certificate in Intellec- tual Property Law and he is also atutor for the epi. Peter was agreat tutor and mentorthroughout his life, he continued to be a model leader even until his last moments and he will be greatly missed in the epi Education section.

Tutors’ report on the EQE 2014 papers

A. Hards (DE),D.Jackson (UK), S. Kirsch (UK), H. Marsman (NL), P. Pollard (NL) and R. van Woudenberg (NL)

Each year in October,the European PatentAcademy and On behalf of the tutors present in Munich, Iwould like the epi arrange ameeting between EQE tutors and the to thank all the members of the Examination Board and Examination Committees. The goals are to discuss Feb- the ExaminationCommittees for their openness, and for ruary’s papers, to improve future EQE’s by openly listeningtoour opinionsand comments. This meeting is exchanging ideasand to help tutors preparecandidates our yearly opportunity to learnfromeach other. for next year’s exam. My thanks also to the tutors who asked questions and The Examination Board has kindly given the tutors contributed to the discussions. My special thanks to permission to publish their own report of the important HarrieMarsman, Derek Jackson, Roel van Woudenberg, points so that candidates can more easily find this Susan Kirsch, and Andrew Hards for finding the time to information. In addition, the comments can greatly assist preparethe individualpaper summaries. when reading and interpreting the official EQE Com- We all wish you good luck in 2015, pendium. Pete Pollard (Editor) This year’s meeting was held in Munich on October 10, and was attended by morethan 100 tutors from 1. Future EQE Changes Austria, Belgium, Bulgaria, Czech Republic, Denmark, •Itwas announced that starting with EQE 2017, there Finland,France, Germany,Italy,Lichtenstein, Malta, The will only be asingle technical specializationfor the A& Netherlands, Poland, Portugal, Romania, Spain, Sweden, Bpapers. The separate chemical and electromechan- Switzerland, Slovenia and United Kingdom. ical papers will be merged following adecision by the This Tutors’ Report appears each year in the end of EQE Supervisory Board. year edition of epi Information. It is also distributed to all •This will be asimilar technical approach to the Cpaper tutors who attended the meeting, as well being posted –atechnical subject that all candidates can under- on the EPO’s EQEForum. stand It contains the following sections: •Anumber of reasons were mentioned for the merging: 1. FutureEQE changes5.C(1) ᭺ the very large overhead in producing,distributing 2. AB CH (1) 6. C(2) and marking two papers 3. AB CH (2) 7. D ᭺ the divergent approach of the electromechanical 4. AB E/M 8. Pre-Exam and chemical EC’s in setting the papers EB is used to refer to the Examination Board, and EC to ᭺ the difficulty of trying to equalize the passing rates the relevant ExaminationCommittee. between the two technical disciplines Information 4/2014 Education and Training 139

᭺ the fact that some technicalbackgrounds have •There were noveltyproblems and there was an issue difficulty with the current papers, such as biotech withanunclear parameter.The client referred to and software specialists. precious metal and to apolymer. One had to deal •Ian Harris (EB) expressed the intention to produce a with Art. 123(2) EPC.Atleast some arguments were mock exam well before EQE 2017 to allow candidates expected for the parameter. and tutors to prepare. •Inthe arguments, you needed to addressthe support in the application (if you combined passages, you were 2. AB CH (1) –byHarrie Marsman expected to argue why thesepassages couldbecom- bined), novelty (a summary of D1 and D2 was EC Irepresentatives: Wimvan der Poel (Coordinator), expected, togetherwithaclear identification of all Thomas Leber (Paper A) and Jeremy Mauger (Paper B) differences), inventive step (allsteps based on all Moderator: Nicolas Favre pieces of information were expected), and the clarity •Papers Aand Bwere fair,but not necessarily easy issue. papers •Inthe marking, arguments had to be based on the Paper A: claims presented. •Pass rate: 51%; compensable fail 6.7% •Problems in this paper were: •The coreofthe paper was dealing with amethod to ᭺ added subject-matter (it was emphasized that you detect proteins in acomplex or in dissociated form. It shouldnot completely alter the wording of the was directedtothe proportion method and the claims presented); screening andinaddition to products and uses. ᭺ drafting of additional independent and dependent •Particularly required was aclaim directed to the pro- claims without giving arguments; and portionmethod; aclaim directed to the screening; a ᭺ definition of the problem (candidates should use all claim to aCHAPS containing solution;aclaim directed information) to an l-argininecomposition; and the use of these •Ifyou make an error in your claims you can “cure” this compositions. (at least partially) with arguments. •D1was dealing with the same method but for another •The Bpaper is intended as responding to an office protein. D2 was on the protein, but with another aim action. It is not an invitation to create claims. (mutated variant). It was relevant in view of novelty; •Inaddition, there was adiscussion on the A&Bpapers the buffer composition containing the protein was no longer being chemical/mechanical as of 2017. known. Thisisreflected in the CHAPS containing ᭺ There will be amock paper. solution; in the use claim the limitation required to ᭺ There were concerns about making acombined bring novelty was not needed. paper A. For example, Paper Achemistry typically •One of the necessities was to broaden the pH range to testsArt. 123(2) and paper Amechanics gives 6.8-7.6. Essential elements were acut-off stability multiple embodimentswhich requiregeneraliza- factor,for which youhad to find limits in the examples, tion. buffer composition and chromatography.However, ᭺ Paper Bshould be possible, given the experience of there were aconsiderable number of unnecessary making the Cpaper. limitations. ᭺ It was mentioned that you have one EPC. However, •Atthe end of quite anumber of papers, quite “cre- the case law created by the Boards of Appeal goes in ative” claims were found which may well have prob- different directions for the different technicalfields. lems with novelty and support. •Reach-through claims should notbemade. 3. AB CH (2) –byAndrew Hards •For the dependent claims,this year you had amaxi- mum number of points “like the last years”. However, Paper A there were not many motivated preferences. •This year,candidates were confronted with atrue •Ifthere is no statement in the Examiners’ Report, the biotech paper.Given the impending EQE changes situationwas not seeninthe candidates’ papers. planned for combining the A/B mechanics and chemis- •Quite some information was given by the EC on how try papers,itseems likely that this will be the last exam the marking was carried out. It is an iterative process for some time to focus on biochemistry.With all due starting with what the drafter expected, but after respect for our mechanically-inclined colleagues, it is seeing the candidate’s solutions,adaptations were hard to imagine thatcombined papers Aand Bwill made. touch on the peculiar case law of biotech reach- through claims. Likewise, it remains amystery to me •Inthe Examiners’ Report aset of claims is present that how the chemists will manage to tackle the intricacies would give you the full number of marks. But it is only of functional definitionsincomplex spatial appar- aset of claims. atuses –time will tell. •Major mistakes: missing category of claims. Method, •Paper Awas in line with previous papers in that achain product, use needstobetaken into account. of products, processes and use claims were expected, Paper B: togethergarnering70points.Dependent claims •Pass rate: 65% accounted for up to 15 marks in total and another 140 Education and Training Information 4/2014

15 marks were allocated for the truncated description. closest prior art is (justifiably)awarded up to 8pts Evidently,candidates mustseek out theindependent and standard phrases will not be enough. claims. •Anexhaustive proof of the effect based on com- •The exam was differentthisyear in thattwo method parative examples was necessary. This also included claims (same category) had to be found.Primarily, the time of catalystapplication, as could be deduced there was an analysis process “proportionmethod” from the table,which was an effect not explicitly for determining the amount of active protein com- mentioned by the client initially. pared to the disintegrated protein by means of chro- •Asfor arguing inventive step proper,while D2 might matography (15 pts). This led to aconsecutive affordthe one missing feature (nanoparticles),it “screening method”, by which it waspossible to couldn’t suggest the increase in polymer wt%, search for protein stabilising solutions that kept the because the beneficial effects of such acombination protein in theactive state for alonger time (20 pts). were not identified in D2. •Finally,the specific stabilising solutions thus found •Note that the higherrange of polymer was also should be claimed (20 pts). However, of course, not required as an essential feature, as was derivable from as reach-through claims claiming any not-yet ident- the table. Again the data table and client’s letter ified solution, but instead with the specific composi- served as Ariadne’s thread, leading the candidates tions of the stabilising solutions determined to be through the maze of information to the right solution, superior. but beware of the Art. 123(2) beast! •Tables illustrated the effects achievedand served to guide candidates to the right compositions. In addi- 4. AB E/M –byDerek Jackson tion, the solutions themselves, werenot new,soonly EC Irepresentatives: David Cousins and Christophe the combination with the protein could be claimed. Chauvet •Use claims were also expected, and these could be Paper A formulated without certainrestrictive features, Independent claim because the use itself was novel (20 pts). •The EC first identified the common features between •Asinprevious years, essential features had to be the two examples of the nutcracker of the invention picked up for each of the methods. This is well (Figures 1-6 and Figures 7-11). established EQE handicraft. These are anutcracker comprising: •Inasense,itisremarkable that although the exam ᭺ two support elements (generalisation from [011]) could in fact be draftedquite differently,time and ᭺ at least three connecting elements (generalisation again the drafters have been keeping to this standard from [022]) exam structure. No surprises here, but the complexity ᭺ each connecting element is movably attached to of the case and the need for detail (noveltyanalysis/ each of the support elements essential features/catching all claim types) are enough ᭺ the support elements and the connecting elements to keep candidates duly challenged. define aspace for receiving anut. Paper B •The differences between the nutcracker of the inven- tion and that of D1 is that movement of one of the •The paper was about aprocess to catalytically support elements relative to the other support hydrogenate fish oils so as to reduce the melting elementcauses at least oneofthe connecting point. However, the number of trans-isomers elements to move relative to another of the connect- shouldbekept low (bad cholesterol). ing elements to restrict the space andtocrack anut in •The applicant’s letter contained much useful the space (see client’s letter [007] according to which information. However, there was no basis for the the rods 3, 4and 5move relative to each other and suggestions made by the client. Claim 2could not compare with D1 [001] according to which pins 6and be saved, because the pore size was given without a 7constrain the movementofthe connecting elements measurement method and the “nitrogenadsorption” 1, 2and 3sothat they cannot move relative to each methodproposed by the client was not disclosed in other). the application. •The difference between the nutcracker of the inven- •Inaddition, the proposed restriction to “polymer” was tion and that of D2 is more difficult to express,but an intermediate generalisation, since only the specific essentially it is that it is movement of the connecting polymers werementioned. elements that causes movement of the support •Nevertheless, the client’s letterdoes point candidates elements towards each other in order to restrict the in the direction of the desired solution and should be space and to crack anut, rather than movement of the followed. Both amendments together, i.e. nanopar- support elements that causes movement of the con- ticles and specific polymer, provide for anovel com- necting elements (see D2 [003]). The support elements bination over D1 and D2, respectively. are then pulled apart to cause relative movement of •Arguing inventive step afforded 38 pts, underscoring the connecting elements (see D2 [004]) which is the the emphasis on detail-focused argumentation using opposite to the functional limitation of the nutcracker the full problem solution approach. Justifying the of the invention. Information 4/2014 Education and Training 141

•The challenges of the independent claim can be ᭺ However, the proposed claims also introduce an summarised as follows: added subject-matter problem relatingtosubject- ᭺ Avoiding unnecessary limitations (such as generalis- matter introduced into claim 1. ing to support elements and connecting elements) ᭺ The amendment required to overcome the second

᭺ Covering all the examples novelty problem also introduces amore serious

᭺ Novelty over D2 in particular added subject-matter problem, due to splitting the subject-matterofdependent claim 3and intro- ᭺ Clarity (suchasunclear definition of relative move- ments, arguable exclusion of second example) ducing part of that subject-matter into claim 1. •Typically,marks lost underclarity are50%of those lost •For EQE 2014, all the features needed for the amend- for lack of novelty.Aclaim that is arguably novel will ment were available in the claims and the description be marked down underlack of clarity (rather than lack and drawings are not required for the amendments, of novelty) and will score correspondingly more marks. although they are required for the justification of the amendments. •Asignificant number of candidates had minor limi- tations overthe ideal claim, butmany of these (such as •Note for EQE 2015 that the new Guidelinesfor Exam- the stiffness of the connecting elements) were not ination appear to introduce anew approach by the considered important and were not penalised. EPO to added subject-matter. Dependent claims 5. C(1) –bySusanKirsch •Dependent claims are requiredtoestablish potential EC II representatives: Joanne Moore, Tessa Donovan- fallbacks in the event the independent claim has to be Beerman, andVagnNissen restricted in scope. •The terms used in the French translations were not as •Only 15 claims will be marked –any additional claims technically similar as the terms used in the English and will be ignored. German versions. Following this issue, aguinea pig will •The structure of dependent claims is important – be used in future to test the paperineach of the 3 grouping claims by topic helpstooptimisestructure languages. and dependencies (although for 2014 most depen- •There was no difference in the length of the paper dent claims were able to refer back to any of the (word count) compared to the 2013 paper,but there preceding claims). were moredocuments and acomplex priorityissue •Toavoid alack of clarity,terminology of dependent which probablygave the impression that it was along claims should be consistent with that of the indepen- paper.Most candidates appeared to be able to finish. dentclaim. •There was anoted reduction in “shot-gun” attacks •Avoid unnecessary limitations:for example, by com- which pleased the EC. Very few superfluous attacks. biningunrelated features in one dependent claim (this •The EC do not penalise if extraattacks are made –the aspect is improving year-on-year). candidate is wasting time however. Description •Candidates are still often only using standard phrases •Acknowledgement of only one piece of prior art is for the justification of the CPAand the reason to expected, preferably D1. combine two documents, which obviously do not •Acknowledgement of both prior art documents does attract marks. not lose marks, but takes time and can make the •A“frightening” number of candidates used A6 as a subsequent explanationofaproblem and howitis document underArt. 54(3) EPC. solved more difficult to present well. This part of the •Itisexpected that all possible novelty attacks should be answer gives acandidate the opportunity to demon- given (in this paper therewere two novelty attacks strate he or she has not arrived at the correctclaim 1 againstclaim 1expected because of the priority issue); by chance. but only ONE inventivestep attack per claim/object. •Claim 2has no effective date (Art. 123(2) EPC) there- Paper B fore no novelty or inventivestep attack can be made. •The main problem with PaperBappears to be the need •Anumber of candidates used acombination of A3 + to handle three sets of claims: the claims as filed, the A5 +A6toattack the second alternativeofclaim 3, claims as amended by the client,and the claims to be which was not necessaryasonly A3 +A6was needed. presented by the candidateinhis or her answer. •Candidates must ensure that they think through each •The claims originally filed have problemsassociated inventive step argumentfromthe beginningtosee with novelty,clarity and unity. what the distinguishing features over the CPAare and ᭺ The claimsproposed by the client dealwith one of how best to plug the gap rather than starting with an the novelty problems, but not with the other (note: argument they may have already run in an earlier “we do not understandthe objection” in the client’s attack and just adding to it piecemeal. letter). •Anattack starting from the “wrong” CPAmay get ᭺ The proposed claims do not resolve the problem good marks if neverthelessargued convincingly. with clarity,although they do address the unity •For example, it was possible to get quite reasonable problem. marks with an attack of A2 +A3rather thanthe 142 Education and Training Information 4/2014

expected A3 +A2inthis paper providing convincing questions. The EC aims to draft not-too-difficult ques- reasons as to why A2 (rather than A3) could be the tions, but that is rather difficult. CPA–closest to the true start point of the inventor and •After the paper is made,the situationsare checked to set out in A1 as the prior art. make surethey are legally correct, and also that they •Candidates should think about what they are doing comply withEPO practice. This second check leadsto and explain why –the explanationisthe key; the some questions being rejected. examiner cannot read their minds! •The Possible Solutioninthe Examiners’ Reportisbased •Itwas noted that the pass mark of the DE candidates on the marking scheme that was used. has dropped. •There is always discussion during this meeting about •This same decline is not seen in the English candidates. how much detail should be given about the procedural It was suggested that this may be because the English steps. were much better at distinguishing between the •The EC indicated that adeliberatechoice is sometimes requirements of the EPO/EQE compared to their madetofocus on either procedural law (for example: national office/exams –for example argued inventive “How…”or“What stepshave to be taken”) or on step very well and followed the problem solution substantive law,(for example: “will apatent be approach exactly rather than use aGerman/EPO granted”). So, if in doubt,look at the question being fusion technique. explicitly asked. •The EC has the freedom to vary the numberofques- 6. C(2) –byRoel van Woudenberg tions on DI. However, they are comfortable with the •Most candidatesappeared to be able to finish in time current number,which is 5–7 questions. as most claims were decently attacked •The EC noticed anew trendthis year: candidates •The attacks were generally wellbalanced.However, passingwith agood DII (> 40 points)and apoor DI standard phrases as “it is the closest prior art because (about 10 points). This is not aproblem –there are no it is the most promising springboard” were still used minimum requirements for DI and DII –itiscompletely too much, and some candidates wasted time on weak unimportant where the points arescored to pass. attacks. •Itseemslike many candidates are putting moreeffort •Most marks were lost in argumentation, especially as into DII by using more than the nominal 3hours for DII. to motivation to combine documents. Many seem to be starting first with DII, although the •Some candidates seem to have overlooked the hintsin EC cannot always see that in sheets handed in –itis the client’s letter and only focused on A1 and the seen often during the exam by the invigilators. other documents. Candidates should also read the •Itwas briefly discussedbythe tutors that candidates letter carefully. shouldbemade aware of this possibility.But, this will •Candidates should do all strong attacks: lack of only work if the candidate knows how to score points novelty underArt. 54(2) and Art. 123(2)/Art. 100(c) on DII and is confident enough at the exam to invest being the strongest. If there is an Art. 54(3) attack, extra time on DII instead of DI. there is often also an inventivestep attack on the same •Many candidates still go to the exam unprepared –it claim. waspointedout by the EC thatifyou cannot get more •Even candidates that indicated upon enrolment/front than 30 points on D, it is hopeless just trying the exam. page that they want to use their own language (non- DPaper in 2015 official EPO language) for answering the exam,can- •The EC reportedthat from EQE 2015, the Dpaper will didates only occasionally do so. explicitly indicate that “Today” the day to consider •Ifthe whole paper is answered in their mother tongue, whether anything can still be done in DI and DII) is the it gets translated before marking starts. actual dateofthe exam.This is somethingthat a •Ifonly some isolatedphrases or aparagraph is in the number of tutors have been requesting for some time mother tongue, it is usually only detected during the as there are many candidates who do not realize this, marking, but it will always be accepted, even if not and hence miss points. indicated on the front page. D2014 results: approx. 37%with 50 or more, approx. 7. D–by Pete Pollard 45%with 45 or more •Weare backtothe passing rate seen in 2012, EC III representatives: Daniel Closa, Dimitrios Roukounas although the passingrate is relatively consistent over (commenting on DII), Brigitte Willems (commenting on the years. It is not clear why this paper was not done as DI) well as D2013. Moderator: Jakob Kofoed •One influenceisthe relative poor performance of many German candidates (candidates resident in Ger- General comments on D, and how the papers are made many) –this was not due to the language in the paper and marked (Austriancandidatesperformed well), anditwas •Most candidates struggle with PCT.But, at the exam, immediately noticeable when the EC was marking PCT questions are generally done as well as the EPC the papers –they clearly had 4–5 points less than the Information 4/2014 Education and Training 143

average. The decline was seeninboth DI and DII –candidates should not rely on this leniency to always scores. be available. •From the officialD2014 statistics, the results for DI Q.4 candidates taking the exam in their nativelanguage: •Anumber of candidates were not familiar with rep- ᭺ Resident in Germany: approx. 33%with 50 or more, approx. 41.5%with 45 or more resentation rules underPCT beforethe EPO. •EPO allows professional representatives or legal prac- ᭺ Resident in France: approx. 51.5%with50ormore, approx. 60%with 45 or more titioners to be “agent” –Art. 49 PCT;Art. 134 EPC.So legally twoanswers arepossible to a). ᭺ Resident in UK: approx. 58.5%with 50 or more, approx. 62.5%with 45 or more •However,adiscussion on “legalpractitioner” was not •Acleardecline was also seen for the Cpaper this year expected by the EC for full points –ifacandidate only for candidates from Germany. discussed the legal practitioner,then no points were •The EC has noticed that the level of candidates in awarded. Germany has been decreasing generally over the •Inthe German paper,“Anwalt” was used to indicate years. Some tutors mentioned that aproblem is that “agent”. There was some discussion about whether many German candidates approach the Dpaperinthe this is confusing for Germancandidates, and may same way as the national patent attorney exam –this encourage the “Rechtsanwalt” interpretation which is not the best way to pass. gave few points.The EC used “Anwalt” because that •Some tutors have noticed that in the last couple of is how “agent” is translated in official communi- years fewer German candidates are following training cations from the EPO. For example, in How To Get a courses. It appears that many companies and law firms European Patent (Part II) paragraph 97 reads: are doing this to save money,and consequently many ᭺ Im Verfahren vor dem EPAals Anmeldeamt sind candidates are just trying the Dpaper with too little zwei Kategorien von Vertretern (“,Anwälte” im preparation. As 45%ofthe candidates areresident in Sprachgebrauch des PCT) vertretungsberechtigt: Germany,this has had an effect on the overall results. – zugelassene Vertreteroder Zusammenschlüsse von Vertretern, die im beim EPAgeführten Ver- DI 2014 –General zeichnis der zugelassenen Vertretereingetragen •Some candidates appear to be doing DI like DII –they sind –ABl. 2013, 500, 535 are beingless diligent in details, and missingpoints. – Rechtsanwälte, die in einem der EPÜ-Vertrags- However, it does not matter to pass where on Dthe staatenzur Vertretung auf dem Gebiet des points are scored. Patentwesens berechtigtsind und dort ihrenSitz •Some candidates spend time reciting law,but they haben. have to apply it to get the marks. •The EC noticed anumber of candidates simply re- DI Q.5 writing the questions.This was seen in both DI and DII. •This question was generally well done. Just doing this does not attract any marks. •Adiscussion on the case being sent to the Board of DI Q.2 Appeal was not required, because there are no indi- •There were many candidates who cited R. 52(3) cations in the question that any objections still exist to instead of R. 52(2) as legal basis for adding apriority claim 1+2. claim –they lost the points for legal basis. •There was adiscussion on admissibility as one of the •Surprisingly every year,thereare candidateswho tutors suggested that aBoard of Appeal may not consider national applications as Art. 54(3) prior art consider the request to amend to claim 1+2because •There was some discussionabout how much detail the request could have been made in first instance should be given about the procedural steps, such as proceedings, but was not –Rules of ProcedureBoA filing acertified copy.The EC indicated that adeliber- 12(4). ate choice was made to focus on substantive law by •Although this is true, the EC explained that in such a asking “whether apatent can be granted” case, the Examining Divisionwill first consider the case •Soitwas not expected to indicate that the certified before sending it on to the BoardofAppeal. It is the copy should be filed no later than 3/4/14. Board of Appeal that ultimately decides on admissi- bility.Inthe case of successful interlocutory revision, DI Q.3 the Board of Appeal is not involved at all. •The interruption calculation is quite complexwith many steps. However, if the correct answer (22/4/14) DI Q.6 was reached using the wrong calculation chain, points •Very few managed to get the number of pages com- were lost for the incorrect part. pletely correct. There were many different reasons •Exceptionally,onthis particular question, aGLrefer- why it went wrong,such as forgettingthe abstract, ence (E-VII, 1.4) was accepted for full legal basis points using the complete English version, or just using the because the decision J7/83 is cited in that section. wrong documents. •The true legal basis was the decision, but the EC •Although this is adifficult questiontoget correct, the sometimes chooses to be lenient for certain questions EC will continue to ask questions on fees. 144 Education and Training Information 4/2014

•Exceptionally,onthis particular question, aGLrefer- were alot of different conclusions aboutwhat needed ence (A-X,6.1) was accepted for full legal basis points to be done next. because the decision J1/81 is cited in that section. •Inprinciple, claim 1may be retained withmultiple •The true legal basis was the decision, but the EC effective dates. sometimes chooses to be lenient for certain questions •Suggesting that claim 1) be amended to two indepen- –candidates should not rely on this leniency to always dentclaims: 1) A+X+ Yand 2) (B,C,D) +X+Ydid not be available. lose marks becausethe scope at the endisthe same. •The EPO at The Hague was actually closed on 5May 2014, but this was not in the calendars included with •Concluding that claim 1could not be saved at all lost the exam.But some candidates knew this, or they had many marks. brought their own calendars, and extended the time DII –Q.2 limit to 6May 2014. They did not lose marks for this. •However, it is not recommended to bring your own •EPFR1 provides protection for both the process, and calendars because the papers are made based upon the directly obtained product Z–Art. 64(2) EPC. the official EQE ones: http://documents.epo.org/ •Most candidates commented on it, but most handled projects/babylon/eponot.nsf/0/92CF8614E15FB90 the extent and possibleenforcement of this protection EC1257BAC002A2B01/$File/Notice_Examination_ very badly. Board_Calendars_DandPre.pdf DII –Q.3 DII 2014 –General •Ingeneral, Q.3 was wellanswered. •Every year there are overlapping patent rights (usually •The paperinforms that no communications were a“dependent” patent situation), and every year there received relating to the EP phase of PCTCZ2. The are many candidates that advise the client that having intended interpretation was either that the EPOhad apatent gives the right to produce/sell. This is funda- not sent it, or that the EPO has sent it and thatGDhas mentallywrong,and is dangerous advice for your not received it. So FP must still available client. •Expect this to be tested every year –make sure you •There was some discussion aboutthis because it is a know this, and always write phraseslegally accurately: little strange that the EPOhad not sent the loss of rights communication almost 5months afterit ᭺ EP1 gives Mthe right to exclude others from exploit- ing X+A in DE occurred. Theyhad apparently also not sent the rene- wal fee reminder letter,althoughthis is acourtesy ᭺ EPX gives Pthe right to exclude others from exploit- ing XinDE communication. ᭺ EP1 is adependent patent •The “closing down of the chemical synthesis depart- •DII is unusual in that the numberofpoints per question ment due to financial difficulties” was not ahint to is never given. The EC explainedthat they need the consider RE (a small number of candidates considered flexibility to change the marking based on the answers this) –the statement “no communications were they see. An initial sample of 5-10 papers is marked by received from the EPO” was intended to mean that each of the EC, and where necessary,the preliminary the whole company GD had received no communi- marking sheet is changed. This can mean that an extra cations and thus GD had not beennotified.The fact 10%will pass based upon the revised marking sheet. that GD “decidednot to enter” any national or When comparing Q1 of 2013 and Q1 of 2014, it is regional phases means that all due carewas not taken. noticeable that in 2013 the questionwas more explicit •Sonopoints were awarded for discussing RE aboutwhat should be dealt with in the answer.The EC •There was also some discussion on how much detail to indicated that thereare no rules for this and they give with regardtothe FP.Asentry had been com- determine it each year based on the paper. pletely missed, there are alot of omitted acts.The DII –Q.1 majority did not go into great detail –asmall minority •For EPCZ1, the translation of the prioritydocument (< 10%) did discuss all omitted acts.The only dis- (CZ1) must be filed, otherwise priority will be lost –R. advantage is losing time. 53(3) EPC.This rule was changed for invitations issued •The question (Q3) does give some guidance as it is on or after 1/4/13 (OJ 2012, 442). directed towards substantive law rather than pro- •Surprisingly,many candidates referred to the old rule cedural law.Compare this with Q1, where procedural which only had asanction mentioned in the Guide- law is expected to be discussed in detail for the cream line’s and adifferent time limit. This was also surprising compositions. for manytutors –anexplanation may be that many candidates simply use their materials from the Pre- DII –Q.4 Exam for the Main Exam without updating anything. •Every year,this type of advice question is answered Candidates are advised to check this even thoughitis badly –most candidates can do the patentability alot of work. analysis,but manyhave problems givingadvice. This •EPCZ1 claim 1does not enjoy priority of CZ1for all the maybebecause it is at the end, and alot run out of combinations. Most candidates saw this, but there time. Information 4/2014 Education and Training 145

8. Pre-Exam –byRoel van Woudenberg Statement 18.4 EC IV representatives: Stefan Kastel, Stefan Götsch, and •Aquestion was sent in arguingthat the closest prior Francesco Rinaldi art teaching is taken into account by the skilled person •ECindicated that they arehappy with the scores. Pass in the problem-solution approach (GL G-VII, 5.2). The rate was 85%. Pass level will stay at 70 marks. There is EC did not agree, and indicated that touching the base no statistics as to number of marks on legal and claims by the endisessential and needs to be included in the analysis part separately. claim to obtain the required effect –reference is made •Atutor providedunofficialstatistics comparingmain to paragraphs 3, 5, 6and 7ofthe client’s letter. exam paper scores with pre-exam score were appreci- ated. The EC commented that one should not forget Questions on inventive step, that candidates have one year betweenthe pre-exam and the main exam to catch-up. •The style of some statementswas somewhat different •There was only abit of PCT in this year’s pre-exam (2 this year compared to the earlier two pre-exams. The statements vs. 3full questions of 4statements each in EC will continue to explore waysofasking questions, 2012 and 2013), but PCT remains important. The EC and may use any style in the future. All aspects of could not give an indication of the number of PCT inventive step will continue to be tested. questions in the coming years –the tutors expect it will •Aquestionwas sent in, proposing to make aprovisio- be 2or3questions again. nal Examiners’ Report available shortly after the exam Statement 10.4 for comments by tutors (to spot e.g. ambiguityissues •The EC was quickly aware about apotential issue after as with 10.4). However, the EC responded that there is the exam. At the tutor’s meeting, the EC did not no room for this in the tight schedule. Furthermore, consider it appropriate to further comment, as the there is no legal room for interference by tutors: the issue is now res judicata.See appeals D2/14, D3/14, D exam is made by the EC and issued by the EB. 4/14, D5/15, D6/16 available from the EPO database •Aquestion was sent in whether the EC can consider to of case law at: http://www.epo.org/law-practice/case- accept both True as False to be correct, in case of law-appeals.html possible ambiguities in interpretation of the question/ Statement 8.2 astatement, to prevent detrimental effects to candi- •The EC emphasized that the questionsare fully self- dates that have adifferent, but not incorrect, inter- contained, with the question containing all pretation than intended by the exam EC (see e.g. the information necessarytoanswer.So, statement 8.2 D-decisions cited above).The EC answered that they was directed to the time limit of Rule 6(1) (only), and R. are not consideringdoing so, as it would water down 58 should not be considered. the multiple choice test format.

epi presentations on the Unitary Patent and the Unified Patent Court

J. Gowshall (GB), member of PEC working group on UP/UPC

epi has recorded two video presentations, entitled “epi At the time of the recordings, the participants video update on the UnitaryPatent”,and “epi video on expected the opinionofthe Advocate General to issue the Unified Patent Court”. epi has prepared these to on 21 October 2014. This has been postponed to 18 update our members on recentdevelopments in both November 2014. areas. The speakers on the Unitary Patentare The “epi video update on the Unitary Patent” lasts 18 Mr FrancisLeyder and Mr Chris Mercer. min. andthe “epi video on the Unified Patent Court” The speakers on the Unified Patent Court are lasts 62,43 min. Both are free of charge. Mr Peter Thomsen andMrBart van Wezenbeek. The presentations add to the information in the EPO webinar on the Unitary Patent and the Unified Patent Please log intothe members section of the epi website Court. We suggest that you watchthe EPO webinar and accessthe videos here: before watchingthe epi presentations. http://www.patentepi.com/en/education-and-training/ To view the EPOwebinar please follow this link here: news-of-the-education/ https://e-courses.epo.org/course/view.php?id= We think you will find them informative and interest- 192&lang=en ing. 146 Education and Training Information 4/2014

Annual epi Tutors’ Meeting, 9October 2014 Munich

epi Educationand Training section

About 35 epi tutors attended the third epi Tutors Meeting on 9October2014.

We were very pleased about the successful gathering of During the morning session, epi expert the epi tutors travelling from different EPC member Mr FrancisLeyder presented the latest developments states to Munich. of the UnitaryPatent system at the EPO. Ms Mihaela Teodorescu, epi Vice-President, wel- In the afternoon sessionparticipants have received an comed all participants togetherwith Mr Paolo Rambelli, insightinto didactical trainingpresented by epi expert chair of the ProfessionalEducation Committee (PEC). Mr CeesMulder. After the welcomeaddress of Ms Mihaela Teodorescu, Afurther presentation was given by Mr Wolfgang Bernhardt, chair of the newly formed PEC Ms Anke Allwardt, chair of the newly formed PEC work- working group“epi tutors” took over in moderating the ing group “epi studentsand EQE candidates” present- meeting. ing some ideas of this working group, how the edu- Before starting withthe first presentation cational programmeoffered by epi can be designed Mr Wolfgang Bernhardt presented an update about more attractivefor candidates. the activities of tutors and coaches within 2013/2014. All presentations resulted in lively discussions and we In addition the statusofthe various current projects such would like to thank all presenters for their contributions. as the successful Candidate Support Programme (CSP) was presented by Ms Mihaela Teodorescu. This pro- The last part of the meeting was reserved for an open gramme has been set up between EPO, CEIPIand epi, discussion between the tutors and the PEC members. with the focus to support EQE candidates from countries After the participants exchanged their opinions on that have less than 5EQE-qualified professional rep- severaltopics of their interestinalively discussion, resentatives in preparing and finally passing the EQE. Mr Rambelli closed the meeting by thanking the tutors Further information aboutthis very valuable programme for their input, the speakersfor their valuable contribu- is available here: http://www.eqe-online.org/CSP/ tions and the epi Education Team for the organisation of In total 13 epi tutors contribute to this programme at this event. the moment, and we would like to thank them for their PEC and the Education Team would like to thank all support and their dedication. tutors for their assistance and support throughout 2014.

Meeting of Tutors with the EQE committees,10October 2014 Munich

P. Pollard (NL)

One of the priorities of the European PatentAcademy These meetings arealways very much appreciated by and its partners is to support the network of tutors the tutors attending, as well as the Committee members. preparing candidates for the European Qualifying Exam- They provide an excellent opportunity for tutors to learn ination. more about where to put particularemphasis when The annual meeting of tutors with EQE committees training candidates for the EQE. allows an exchange of important information aboutthe most recent examination. Tutors can especially benefit Committee members will answer questions and give from the direct contactwith people in charge of prepar- insightinwhat was expected from candidates, which ing the examination papers and marking candidates’ particular aspects were generally answeredwell and answers. what went wrong more often than right. Information 4/2014 Education and Training 147

PCT at the EPO –Conference for patent professionals and industry 1–2 October 2014 European Patent Office, The Hague

G. Arca (IT), European Patent Academy (EPO)

The conference attracted 150 patent professionals from EPO in all its capacities underthe PCT.Inaddition, the many countries conferencelooked at the specifics of entering the The European Patent Academyorganised,incooper- national phases at the JPO, SIPO andUSPTO. ation with directorate International Legal Affairs –PCT, this event offering participants an excellent opportunity As aleading PCT authority the EPO produces approxi- to meet senior expertsfrom the EPO and other major mately 40%ofall international search reports and 50% patent offices, as well as from patent law firms and of international preliminary examinations reports. This industry.The programme spotlighted important aspects conference underlined that the EPO’s involvementwith relating to the filing and processing of applications at the the PCT has always been amatter of top priority.

Boards of appeal and key decisions conference, 8and 9October 2014 European Patent Office, The Hague

A. Rety (FR), European Patent Academy (EPO)

Record attendance in The Hague As far as technical fields were concerned,the focus “Boards of appeal and key decisions”isamajor EPO was on therapeutic and surgical methodsand computer- conference organised by the European Patent Academy. implemented inventions,which allowed participants to This year’s edition, held for the first time in The Hague, explore the boundaries of patentabilityand technicality. saw arecord-breaking 300 patent law professionals (up EPO legal research service staff were on hand as well 30%onlast year) gather for two days on 8and 9 to show participants –including patent attorneys, attor- October to listen to arange of talks andpresentations neys at law,corporate lawyers, judges, members of given by boards of appeal chairmen and members, national boards of appeal and national patent office togetherwith expertpatent attorneys like epi Council staff –how to search decisions in the boardofappeal member Marc Névant. case law database. Topics covered included recentkey decisions of the boards of appeal, the rules of procedureand late filings, Amore detailed report of the conference is presented and the questionofadded subject-matter.Mock pro- in this issue. ceedingswere held to give participantsaninsight into The next conference shall be organised in November exactly what happensathearings. 2015 in Munich. 148 Education and Training Information 4/2014

Forthcoming epi educational events epi seminars with support of the EPO The part on Art. 123(2) EPC will cover ashort theor- etical background, recent caselaw and general Seminar series “Opposition and Appeal” examples, i.e. where no field-specific technical knowl- edge is required to comprehend them. If there is suffi- 24 February 2015–London (GB) cient demand, field-specific examples can be covered in 10 March 2015 –Munich (DE) follow-up virtual classrooms. 14 April2015 –Stockholm (SE) For GL2DAYafew topics relating to the amended 19 May 2015 –Helsinki (FI) Guidelines for Examination will be dealt more in depth, withspecial attention being paidtothe new procedures Pleasevisit our calendar of events on the epi website underR.164, while a30-minute sessionwill be reserved for further information. for ageneral presentation of the practice changes which are not includedbythe Guidelines,but nevertheless EPO seminars with support of the epi relevant to professional representatives (suchasthe limitation to the use of handwritten amendments). In quarter 22015 aseminar series on Art. 123(2) and the new Guidelinesis expected to start, following up the For any updates and developments concerning epi series for EPO2DAYand GL2DAYwhich toured through education and training offers we kindly refer to visit our the member states in the past years. In 2015 the EPO website www.patentepi.com or contactthe epi Educa- plans to cover 10 different cities all overEurope. tion Team by email [email protected].

Seminar “Opposition and Appeal“ in Eindhoven well attended

B. van Wezenbeek (NL)

The yearlyEPO-epi seminar costs).This gave agood in Eindhoven was held on overview,which was more- 21 November 2014. This over supplemented with time, it was directed to the references to relevant topic of ’Opposition and articles, rules, decisions Appeal’which was pre- and to the guidelines. Sig- sented by Marcus Müller,a nificant attention was paid member of the Board of to amendments, and of Appeal at the EPO, and course to late filings, Cees Mulder, who spoke especially in view of the on behalf of epi. Rules of procedure of the The speakers did an Boards of Appeal. The sem- excellent presentation on inar helps attendants to set the subjects. Marcus Müller explained the procedures out astrategy for opposition and appeal proceedings from alegal and EPO point of view,while Cees Mulder and be well prepared from the beginning. interrupted with pertinentquestionsand practical advice.This approach not only was entertaining, but The seminar was attended by about 150 epi members also provided interesting practical information. The from The Netherlands, Belgium, Luxembourg, Germany many questionsfrom the audience addedfurthervalue and the UK. With this it is one of the mostsuccessful to the learning experience. eventsofthe epi education team.The “Opposition and All relevant stages in the procedure got attention, Appeal” seminar will be continued in 2015 in other startingwith admissibility and terminating with special European cities:(please see “forthcoming epi edu- situations afterthe decision (such as apportionment of cational events” above). Information 4/2014 Information from the EPO 149

Results of the 2014 European Qualifying Examination Statistics on the results of the 2014 EQE

Numberofcandidates per country and passespursuanttoArticle 14(1)ofthe Regulation on the European qualifying examination (REE)

Place of Total number Place of Total number residence of candidates Pass residence of candidates Pass AL 00 LV 00 AT 25 7 MC 10 BE 34 11 MK 00 BG 00 MT 10 CH 63 15 NL 77 27 CY 00 NO 12 2 CZ 21 PL 24 4 DE 700 174 PT 20 DK 50 10 RO 30 EE 00 RS 00 ES 73 8 SE 87 21 FI 51 8 SK 00 FR 171 58 SM 00 GB 153 66 TR 13 1 HR 00 IL 10 IE 22 JP 10 IS 00 SG 10 IT 98 16 US 22 LT 00Grand Total 1647 433 Information source: http://www.epo.org/learning-events/eqe/statistics.html

Candidates are free to choose which paper(s) they wish to sit. Candidates who have only sat asub-setofpapers cannot fulfil the conditionsofArticle 14(1) REE (ie have obtained the minimum grades for all four papers) and thus cannot be included in this table. Example: Acandidate hasonly sat papers Aand Band passed both papers. Nonethelessthe conditions of Article 14(1) REE are not yet fulfilled and this candidate is not included in this table. This table includes all candidates who fulfil the conditions of Article 14(1) REE.

Nächster Redaktions- Next deadline for Prochaine date limite pour schluss für epi Information epi Information epi Information

Informieren Sie bitte den Redak- Please inform the Editorial Commit- Veuillez informer la Commission de tionsausschusssofrüh wie möglich tee as soon as possible about the rédaction le plus tôt possible du sujet über das Thema, das Sie veröffent- subject youwant to publish. Dead- que vous souhaitez publier.Ladate lichen möchten. Redaktionsschluss line for the next issue of epi limite de remise des documents pour th für die nächste Ausgabeder epi In- Information is 13 February 2015. le prochain numérodeepi Informa- formation ist der 13. Februar 2015. Documents for publication should tion est le 13 février 2015.Les tex- Die Dokumente, die veröffentlicht have reachedthe Secretariat by this tes destinés àlapublication devront werden sollen, müssen bis zu diesem date. êtrereçus par le Secrétariat avant Datum im Sekretariat eingegangen cette date. sein. 150 Information from the EPO Information 4/2014

List of Professional Representatives as at 31.10.2014

by their place of business or employment in the Contracting states

Contr. Number %ofTotal Repr. Contr. Number %ofTotalRepr. State Total State Total AL 18 0,16 LI 22 0,19 AT 134 1,18 LT 26 0,23 BE 211 1,87 LU 20 0,18 BG 64 0,57 LV 19 0,17 CH 522 4,61 MC 50,04 CY 11 0,10 MK 26 0,23 CZ 92 0,81 MT 50,04 DE 4019 35,53 NL 484 4,28 DK 251 2,22 NO 102 0,90 EE 26 0,23 PL 307 2,71 ES 192 1,70 PT 40 0,35 FI 179 1,58 RO 53 0,47 FR 1053 9,31 RS 51 0,45 GB 2096 18,53 SE 395 3,49 GR 24 0,21 SI 29 0,26 HR 26 0,23 SK 31 0,27 HU 72 0,64 SM 21 0,19 IE 71 0,63 TR 88 0,78 IS 21 0,19 Total: 11313 100,00 IT 507 4,48

Source: Legal Division/Dir.5.2.3 /EPO

Internship for patent professionals Praktika Intern 2015 –working with examiners

16 June–3 July 2015 European Patent Office,The Hague

The Praktika Internprogramme is designedfor pro- this way,participants will get the chance to look at their fessional representativesworking in private practice or daily work from the viewpoint of EPO examiners and industry with experience in drafting and prosecuting gain valuable insights into how the EPO works. European patent applications. Interns spend three weeks For more information, please see the Official Journal in Directorate-General 1, which is responsible for search, November 2014: OJ EPO 2014, A110 examination and opposition. They have the opportunity to workonactual case files and run prior-art searches.In The closing date for applications is 30 January 2015. Information 4/2014 Information from the EPO 151

Contact Data of Legal Division

Update of the European Patent Attorneys database

Please send any change of contactdetails using EPO European Patent Office Form 52301 (Requestfor changes in the list of pro- Dir. 5.2.3 fessional representatives: http://www.epo.org/applying/ Legal Division online-services/representatives.html) 80298 Munich to the European Patent Officesothat the list of Germany professional representatives can be keptuptodate. The list of professional representatives, kept by the EPO, Tel.: +49 (0)89 2399-5231 is also the list used by epi.Therefore, to make sure that Fax: +49 (0)89 2399-5148 epi mailings as wellase-mail correspondence reach you [email protected] at the correct address, please inform the EPO Directorate www.epo.org 523 of any change in your contact details. Kindly note the following contactdata of the Legal Division of the EPO (Dir.5.2.3): Thank you for your cooperation. 152 Information from the Secretariat Information 4/2014

Next Boardand Council Meetings

Board Meetings Council Meetings 92nd Board meeting on March 7, 2015 in Belgrade (RS) 78th Council meeting on April 25, 2015 in Barcelona (ES) 93rd Board meeting on September 19, 2015 in Porto (PT) 79th Council meeting on November 14, 2015 in Cologne (DE) 94th Board meeting on March 12, 2016 in Tallinn (EE) 80th Council meeting on April 30, 2016 in Athens(GR)

AnnualSubscription 2015

The invoices regarding the epi membershipfee 2015 will amount of EUR 190 in accordance with our rules be sent at the beginning of January 2015. Please note governing payment of the annual subscription. that every member will receive an invoice, even if a direct debiting mandate via the EPO accountisset up Account holder:European Patent Institute with epi. Bank Name: Deutsche Bank AG In case the direct debiting mandate does no longer BIC-SWIFT: DEUTDEMMXXX apply to the person indicated in the invoice, please IBAN No: DE49 7007 0010 0272 5505 00 inform the epi Secretariat at the latest by February 15, Address: Promenadeplatz 15 2015, otherwise the amount will be debited from the 80333 München indicated EPO account. The 2015 epi membership fee (160 EUR without 3. PayPal surcharge) can be settled as follows: The link to the online payment tool can be found on our 1. Direct debiting mandate website (www.patentepi.com). –Bydebitingthe EPO depositaccount on February 25, 4. Creditard 2015 –valid only for payment of the 2015 subscription –The form to set up/amend/delete adirect debiting –Bycredit card(Visa or Mastercardonly) mandate can be found on our website(www.patent- –The link to the online payment tool can be found on epi.com). our website (www.patentepi.com). –Incase adirect debit mandate is set up with epi,kindly –For payments with American Express please use Pay- note the following: Pal. The due membership fee will be debited automatically from the EPO accountonFebruary 25, 2015, taking into Kindly note: No cheques accepted! account that the account holder is entitled to amend the direct debiting mandate before15.02.2015. In order to minimisethe workload in processing accu- If you have any questions relating to thedirect debit- rately and efficiently subscriptionpayments, and inde- ing mandate, please get in touch with the epi Secre- pendently of the transmitting way,each payment should tariat. [email protected] be clearly identified indicatinginvoice number,name and membership number.Obviously unidentifiablepayments 2. Bank transfer subsequently cause considerableproblems for the Sec- retariat and in many instances unnecessary protracted –Bybank transfer in Euro (bank charges payable by correspondence. subscriber) –Please note that payment should be on epi’s account at the latest by February 28th, 2015. If payments are João Pereira da Cruz made later,the membership fee is increased to an Secretary General Information 4/2014 Information from the Secretariat 153 154 Information from the Secretariat Information 4/2014 Information 4/2014 Information from the Secretariat 155

epi Artists Exhibition 2015

The epi Artists Exhibition of epi Artists hasbecome a Please note that all contributions to the epi Artist tradition in the cultural life of the epi and of the EPO. The Exhibition have to respect religions and beliefs, political forthcoming exhibitionisplanned to take place from views and take into consideration that children might be visiting the exhibition. Furthermore it is emphasised to 2March to 13 March 2015 present no extensive or heavy exhibitsand you are kindly at asked to abstain from light effects or video/audio art. European Patent Office For information please contact: PschorrHöfe building epi Secretariat Bayerstrasse 34, Munich. Vernessa Pröll Sadia Liebig We would like to take the opportunity to thank those Bayerstraße 83 persons who have already addressed their participation 80335 Munich and would like to invite all creative spiritsamong the epi Germany membership from various countries to join in the Tel: +49 89 24 20 52-0 exhibition. Fax: +49 89 24 20 52-20 e-mail: [email protected]

Nächste Ausgaben ·Forthcoming issues ·Prochaines éditions

Issue Deadline Publication 1/2015 13 February,2015 31 March, 2015 2/2015 8May,2015 30 June, 2015 3/2015 7August, 2015 30 September,2015 4/2015 6November,2015 31 December,2015 156 Articles Information 4/2014

Note from the Editorial Committee –Guidelines for authors

M. Nollen (NL)

The epi Information is aregular publication sent to more 5. Reference to Case Law of the Board of Appeal is highly than 11,000 Professional Representatives before the preferred, where an article addresses asubjectof EPO. With the object of maintaining and improving European Patent Practice. When addressingCase Law, quality of the epi Information, the EditorialCommittee the articleshall contain an analysis or summary of one has adopted following Guidelines for authors. or morerelevant decisions, such that this decision can be followed by aProfessional Representative without Introduction reading it in detail. The epi Information is aregular publication sent to nearly 12,000 potential readers. Nearly all of those – Format of other contributions more than 11,000 –are the Professional Representatives 1. Other contributions shall be in English. beforethe EPO, which are members of the epi.Itgoes 2. Letters shall have alength of at most 500 words. Book without saying that such alarge audience has the right to reviews shall have alength of at most 1200 words (2 apublicationthat meets the standards of quality that our pages in the epi Information). Announcements shall Profession is proud to represent. have alength of at most 600 words (1 page in the epi In view thereof, the Editorial Committee has adopted Information). The Editorial Committee may decide to following Guidelines for authors. These Guidelines are deviate from these maximum lengths, or to shorten a intended for supporting authorsindraftingpapers and contribution. will be used by the Editorial Committee in reviewing 3. Such contributions shall be informative, clearand not draft papers. They areintended as the “Rules of Pro- longer than appropriate in respect of their content. cedure of the Editorial Committee”. Contents Role of editorial committee 1. Contributions to the epi Informationare addressed to 1. The Editorial Committee is responsible for the content Professional Representatives beforethe EPO. This of the epi Information. It may invite epi members and appliestolevel of background knowledge, content others to provide acontribution on asubject deemed and the international character of the audience. relevant. 2. Contributions to the epi Information may be news 2. The Editorial Committee decides on publication of a and information from the epi,articles, book reviews, contribution. Acontribution will be (a) accepted as letters andannouncements. Thearticlesand book such (b) conditionally accepted if amended to meet reviews focus on European patent practiceinits the guidelines (c) likely accepted if rewritten (d) ref- widest sense, including information on other jurisdic- used. tions deemed relevant for European patent practice. 3. The Editorial Committee will inform authors of its 3. Announcements include announcements from the decision. When conditionally accepting acontribu- European PatentOffice, from other professional, non- tion, the Editorial Committee may do amendment commercial organisations in the field of intellectual proposals. When requesting rewriting, the Editorial property and from further third parties.Announce- Committee shall provide areasoned statement with ments from further third parties will be considered as suggestions. When refusing, the Editorial Committee advertisement, unless the editorial committee decides shall provide areason. otherwise. 4. Refusalofacontribution is to be foreseen when the Format of contributions contribution would offend morality,isofaclearly 1. Articles may be submitted in English,French or Ger- commercial nature and/or is not relevant to European man. Articles shall contributetothe permanentedu- patent practice in its widest sense. Refusal shall also be cation of Professional Representatives. foreseen for any contribution constitutingacomplaint 2. Articles shall have amaximum length of 3000 words. to adecisionofthe EPO in relation to aspecific case in The Editorial Committee may decide to allow longer which the author or his firm was involved as arep- articles if it is of the opinion that the article is highly resentative. Acontribution may furthermore be ref- relevant and the length is appropriate for the content. used for editorial reasons, for instance if several con- 3. Articles shall start with an abstract in English. AFrench tributions on asinglesubject aresubmitted. and German translation of the abstractshall be pub- 5. When taking decisions,the Editorial Committee shall lished at the end of the article. Support may be not merely address quality or brilliance, but also shall provided for such translation. provide aforum for any opinion on European Patent 4. Articles shall addressapoint of law,ofprocedural or Practice, particularly from the community of Pro- material nature. Articles shall end withaconclusion or fessional Representatives. discussion section, providing asummary of the reason- 6. Decisions of the Editorial Committee are not open to ing of the article. debate or discussion. Information 4/2014 Articles 157

Lack of clarity,anew approach in case law?

T. Godemeyer (DE)

1. Introduction 2. Legal Basis The legal basis for the requirement of clarity can be The Board of Appeal 3.2.8 of the European PatentOffice found in Art. 84 EPC.This article statesthat claims shall has referred acase to the Enlarged Board of Appeal to define the matter for which protection is sought and clarify the question whether lack of clarity of aclaim can shall be clear and concise and be supported by the be examined in opposition proceedings. description. With regardtothis questionthereisadivergence in The requirement of clarity is an important requirement the decisions of the Board of Appeal. On the one hand, for patent claims because according to Art. 69 EPC the Art. 100 EPC does not include lack of clarityasaground claims define the extent of protection of agranted of opposition. On the other hand, it is established case patent.Thereforeitisimportant that the wording of law that, if amended claims are submitted in opposition suchclaims is clear so that the patentee as wellasthird proceedings, they have to be examined for all require- parties, who may be competitors of the patentee, can ments of the European Patent Convention including the exactly understand whatkind of embodiments fall under requirement of clarity of the claims. the patent. The Board of Appeal 3.2.8 referred the case T373/12 Lack of clarity is not aground for opposition according to the Enlarged Board of Appeal to clarify the question to Art. 100 EPC. The reason for this is that clarityofthe whether lack of clarity of an amended claim may be claims is examinedduring examinationproceedings of examined in opposition proceedings. At present there is the EP patent application. However, this only applies to adivergence in the decisions of the Boards of Appeal. the granted patent and not to any amendment of the Some decisionsonly allow the examination of clarityin patent with limited claims which might come about case there is asubstantial amendment to the claim. during opposition or appeal proceedings by request of Other recent decisions come to the conclusion that any the patentee. amendmenttoaclaim has to be examined during As aconsequence, Art. 101(3)EPC states that, if in opposition proceedings. opposition proceedings apatentisamended by the proprietor,this patent can only be maintained in the The case is pending under G3/14 and the questions amended form if the amendments meet the require- referred to the Enlarged Board of Appeal are the follow- ments of the EPC and the conditions laid down in the ing: implementing regulations. 1. Is the term “amendments” as used in decision G9/91 From this wording of Art. 101(3) EPC can be deduced of the Enlarged Board of Appeal (see point 3.2.1) to be thatamendments of claims in opposition or appeal understood as encompassing aliteral insertion of (a) proceedings have to be examined even for the require- elements of dependent claims as granted and/or (b) ment of clarity although lack of clarity is not aground of complete dependent claims as granted into an inde- opposition. pendent claim, so opposition divisions and Boards of The question, however,isnow how the term “amend- Appeal arerequested by Article 101(3) EPC always to ments”, as used in Art.101(3) EPC,has to be interpreted examine the clarity of independent claims thus in the lightofany change of agranted claim. amended during the proceedings? 3. Possible Amendments in Opposition 2. If the Enlarged Board of Appeal answers question 1in Proceedings the affirmative, is then an examinationofthe clarity of the independentclaim in such cases limited to the In opposition and appeal proceedings the proprietor of a inserted features or may it extend to features already patent canamendagranted claim in many several ways: contained in the unamended independent claim? •They can, for example, amend an independent claim by introducing features from adependent claim, sev- 3. If the Enlarged Board answers question 1inthe eral dependent claims or parts of dependentclaims or negative, is then an examination of the clarity of parts of several dependentclaims as granted. independent claimsthus amendedalways excluded? •They can furthermore add elements or features of the 4. If the Enlarged Board comes to the conclusionthat an application as originally filed. examination of the clarity of independent claims thus •Moreover,they can alsorestrict independent claims by amended is neither always required nor always removing or exchangingoradding specific features excluded, whatthen are the conditions to be applied from aclaim. in deciding whether an examination of clarity is indi- •Furthermore,they can amend aclaim by any com- cated in agiven case? bination of the above possible limitations. 158 Articles Information 4/2014

All this can be done assuming that the other formal In summary,itcan be concluded thatall these deci- requirements of the EPC like Art. 123 (2) and (3) EPC are sions interpret the term “amendment”, as used in the met. decision G9/91 and in Art. 101(3) EPC,inavery narrow Thus it is evident that claims in opposition proceedings way.Asaresult the examination of clarity in opposition can be restricted in many different ways and not only by proceedings for an amended set of claims is limited to including dependentclaims or parts of dependent claims the text changedinthese claims or,asanallowed as granted in the independent claim (see also question1 exception,incase an independent and adependent of the referral to the Enlarged Board of Appeal). granted claim are combined and by this combination a new problem of clarity is caused that did not exist 4. Does the present case law of the Boards of previously in the adopted part (T381/02). Appeal fit with the legal situation on the In my view this interpretation of the term “amend- question of clarity? ment” by the previous case law is too restrictive and not justified by the content of decision G9/91 or any Article In my opinion the present case law of the Boards of or Rule of the EPC. Appeal does not perfectly fit with the legal frame of the Particularly in view of the fact there being numerous EPC regarding clarityofclaims. In the following Iwill give possibilitiesfor apatentee to limittheir independent some arguments for this allegation. claimsinoppositionproceedings(see above),Iconsider it There are several cases of the Board of Appeal, also pointless and not legally justified to differentiate mentioned in the decision T0373/12, interpretingthe between certain amendments permitting examination term “amendment”, used in Art. 101(3) EPC, in anar- of clarity and other amendments not permittingexamin- row manner. ation of clarity. The decision T301/87 did not allow objections based Art. 101(3) EPC is about amendments made by the on Art. 84 EPC unless arisen out of the amendments proprietor of the European patent. Art. 101(3)(a) EPC made. In view of this decision it would seem absurd if states that, if the finding of the OppositionDivision is making aminor amendmentcould enable objections thatthe patent and theinventionitrelates to meetthe outsidethe grounds of opposition according to Art. 100 requirements of the convention, it shall decide to main- EPC. tain the patent as amended. Looking at this wording it seems that amendmentscannot be interpreted in such a It seems to me that this approach restricts the com- narrowway as done by the previous case law.The petence of the Board of Appeal to only examining the previous interpretation of the term “amendment” is amended text of an amended claim. However, features only based on case law and is not supported by any or parts of theclaimsnot changed by the amendments specific articleorrule of the EPC. are not allowedtobeexamined. One of the arguments justifying the present practice is Asimilar view is taken in the decisions T367/96, thatinthe examinationproceedings the clarity of all T472/88, and T381/02. claimsissystematically examined in avery strict way. Afurther but similar approach is taken in the decision However, acloser look at this argument reveals that this T1855/07. In this decision it is stated that basically an is actually not the case. In practiceand according to my examination of clarity did not come into question where experience the clarity of independentclaims is strictly adependent claim as granted was inserted literally into examined during examination of apatent application. an independentgranted claim. As afurther argument However, this does not equally apply to the subclaims. In the decision states, it is the nature of the dependent practicesubclaimsare not examinedinthe same strict claim that it protectsaspecific embodiment of the way as independent claims. Additionally,itisinmy invention already defined in the independent claim. opinion not even possible to examine the clarity of a Therefore, adependentclaim protects exactly the same subclaim with multiple dependencies if it is not clear embodiment as one in which the reference has been which of the other dependent or independent claims are replaced by the complete content of the independent combined with this subclaim. claim. In my view,clarity of subclaims can only be examined if Similarly,the decision T381/02 also comes to the it is apparent how these subclaimsare combined with conclusion that the term “amendment”, as referred to other independentordependent claims. In practice in the Enlarged Board's decision G9/91, always is to be thereforeonly the wording of asubclaim is moreorless understood as asubstantial amendment and not amere examined in the examination proceedings for the combinationofthe respective wording of the indepen- requirement of clarity, if at all, and not the combination dent and dependent claims as granted. This conclusionis of aspecific subclaim with aspecificindependent claim. based on theunderstandingthat all claimsare system- Hence,the assumption that, for example in decision atically examinedbythe Examining Division for the T1459/05, all independentand dependent claims are criterion of clarity.Therefore, it follows that in opposi- examined for the requirement of clarity during the tions the opposition division or the Board of Appeal does examination proceedings is not correct. Contrary to not have the power to repeat this examination. Asimilar the opinionand several decisions of the BoardofAppeal, approach is taken in the decisions T1459/05and subclaims are not fully and strictly examined in examin- T1440/08. ation proceedings. This is not at all possible as it is unclear Information 4/2014 Articles 159 how these subclaims are combined with other indepen- any amendmentofaclaimand not only achange of dent or dependent claims. certain text passages of agranted claim. Afurther argumentagainstthe previous case law is Insofar Isupport the opinion of the recent case law as that it is, in my view,not justified that apatentee for example in T459/09 and in T409/10. In my view, amending their claims in opposition proceedings, for Art. 101(3) EPC grants the Opposition Divisionorthe instance by combining an independentgranted and a Board of Appeal unlimited power to examine the clarity dependent granted claim, is treated in abetter way than of agranted claimwhich has been amended somehow an applicant doingthe same during the examination by either including elements from granted dependent proceedings. If during the examination proceedings an claims or by includingcompletedependent claims or by independent and adependent claim are combined the adding elementsofthe originally filed applicationor combination is examined with regardtoclarity.Ifthe removing features from aclaim or by any combination of same is done in opposition proceedings the resulting the above four possibilities. claim would not be examined for clarity.This is only As aconsequence Isuggest answering the four ques- justified by the assumption that the separate indepen- tions referred to the Enlarged Board of Appeal as follows. dent claim and the subclaim in the granted form have already been examined for the requirement of clarity Question 1: during the examination proceedings. However,this is not The term “amendments” is interpreted in abroad way as the case (see above). defined by Art. 101(3)(a) EPC with the consequencethat Another argument is that, if claims are amended, the any amendmentofagranted claim has to be examined restriction for the Opposition Divisionorthe Board of with respect to clarity.This also applies to the amend- Appeal to examine clarity only in case of substantial ments mentioned in question 1. Thereforequestion 1 amendments is as suchunclear since the question has to be answered in the affirmative. whether or not an amendment is actually substantial depends on the subjective opinion of the Opposition Question 2: Division or the Board of Appeal deciding on an appeal In my view the examination of clarityshould not be case in an opposition. limited to the inserted features of an independent claim. Thisgives way to legal uncertainty for all parties in the It should rather extend to features already contained in opposition proceedings. In my view,the superior goal the unamendedindependent claim. Iamofthe opinion should be to grant apatent or to maintain apatent in the that the examination of clarity only makessense if the amended form having adistinct scope of protection entire claim is examined. Art. 84 EPC is not limited to defined by the claims. This is important to the patentee inserted features of an amended claim. as well as third parties likecompetitors and leads to legal certainty.However, thisgoal is not achieved if, based on Question 3: asubjective assessment, examination of clarity is either allowed or denied. Consideringthis context, Ibelieve it The answer is superfluous because the answer to ques- makes no sense to examine only the changed wording of tion 1isnot negative. an amended claim whilst ignoring the questionwhether the complete claim is clear and defines the scope of Question 4: protection clearly afterachange of the wording. As the examinationofclarityofanamended indepen- ThereforeIam of the opinion that the term “amend- dent claim is always required, the answer to question4is ments” should be interpreted broadly and should cover also superfluous 160 Articles Information 4/2014

Report on the „EPO boards of appeal and key decisions“ conference held in The Hague on 8–9 October 2014,

M. Nevant(FR) –European Patent Attorney

NB: the views expressed in this reportare those of the the BoardsofAppeal seem to show adesire to act more author only. as apure second instance reviewingthe correctness of The now annual conference on the case law of the the first instance decision. Boards of Appeal was held this year in The Hague. The 3. Added subject-matter –MrFritz Blumer (Legally following topics were addressed during this two-day qualified member of the Boards of Appeal) event (it is believed that the presentations will be made Mr Blumer reviewed the allowability of amendments publicly available by the EPO Academy next year). in the context of decision T612/09 (dosage regimen claims). Day 1 Mr Blumer then discussed the “reservoirtheory” 1. Opening speech (according to which the originally filedapplication is a The participants to the conference were welcomed by reservoir of information for amendments) as set out in Mr Wimvan der Eijk, Vice President of DG3. Mr van der T190/83 and furtherdiscussede.g. in T305/87 and more Eijk reported on the efforts made by the Boards of recently in T1544/08 and T1799/12. Appeal to increase efficiency(understand: productivity) Mr Blumer also reviewed decisions dealingwith dis- and reduce the backlog of cases. For example, the claimers (T2464/10, T1870/08, T748/09, T1836/10, number of cases completed in 2013 was substantially T1489/09) in the lightofG1/03 and G2/10 [NB:G2/10 the same as the number of new cases received. has raised the bar quite high with respect to the admissi- 2. Late requests –MrHugo Meinders (Chairman of bility of disclaimers]. Board of Appeal 3.2.07) Mr Blumer finally reviewed T500/11, adecision deal- Mr Meinders’ presentation essentially focused on the ing with intermediate generalization based on the implementation of Articles12(2), 12(4), 13(1) and 13(3) examples (the principles set out in T962/98 are still of the Rules of Procedures of the Boards of Appeal applicable). (RPBA). The conclusion that can be drawnfromthis presen- •According to Art. 12(2) the parties should file their tation is that thereisnothing new underthe sun. The complete case at the first exchange; parties should not EPO still applies very strict criteria when assessing expect the Boardtodotheir work. whetherthe requirements of Art.123(2) EPC are fulfil- •AccordingtoArt. 12(4) everything presented at the led. first exchange is taken into account, and earlier prep- 4. Mock trial aration of submissions (i. e. before an examining div- ision or an opposition division)iscrucial: in particular, In the afternoon of day 1, mock oral hearings were held. the Boardhas the power not to admit in the appeal This concerned an appeal by the Opponent againstthe proceedings requests which could have been pre- decision of the Opposition Division to maintain sented or were not admitted in the first instance EP1562352 in amended form. proceedings. Composition of the Board: Mr Alec Clell and(former •AccordingtoArt. 13(1) any amendment to aparty’s Chairman of Board of Appeal 3.5.03), Mrs Marie-Bern- case after it has filed its grounds of appealorreply may ardette Tardo-Dino (Legally qualifiedmember of the be admitted and consideredatthe Board’s discretion. BoardsofAppeal) and Mr Bernhard Noll (Technically The discretion shall be exercised in view of inter alia: qualified member of the Boards of Appeal). ᭺ the complexity of the new subject-matter sub- Representative for the Proprietor: Mr David Molnia, mitted, EPA. ᭺ the current state of the proceedings and Representative for the Opponent: Mr Markus Herzog, ᭺ the need for procedural economy. EPA. •According to Art. 13(3), anything filed after issueof The mocktrial gave areally goodoverview of what can the summonsisnot admitted if it cannot be dealt with happen during oral proceedings, for example: by the Board or the party without adjournment of the •Change of language at the start of the proceedings. proceedings. •Attempt to recordthe proceedings by one of the Although the way late filed requests are handledmay parties. vary from one BoardofAppeal to another,the political •Late filed submissions/requests/documents. will to increase the productivity of the Boards of Appeal The trial was interrupted at regular intervals by the may have far reachingconsequences for the users of the “mock” Chairman to explain the Board’s processto system. Thus, although not mentioned by Mr Meinders, reach adecision on the various requests on file. Mr Clell Information 4/2014 Articles 161 and also stressed that the way to formulate requests is 6. Sufficiency of disclosure: how much is enough? –Mr very important. Marc Névant (EPA) The mock trial was quite entertaining and apleasant Mr Névant first reviewed what he considered to be way to conclude day 1ofthe conference. This was also a “key” decisions (T409/91, T435/91,T792/00, G1/03) nice opportunity for representatives, who are not given settingout the principles of how sufficiency of disclosure many opportunitiestoattend oral proceedings, to get a is assessed. better understanding of how events can unfold during Mr Névantthen essentiallyfocused on decisions deal- such proceedings. ing with the sufficiency of disclosure of (i) claims includ- ingparameters and (ii) medical use claims. Thedecisions Day 2 on “parameters” showed that the outcomeisvery much decided on acase-by-case basis,hence predictability for 5. Highlights of EPO case law –Mrs Petra Schmitz such cases is (regrettably) low.The decisions on “medical (Legally qualified member of the Boards of Appeal) use” are, conversely,quite consistent in terms of the Mrs Schmitz first discussed R19/12 in which the peti- information needed to satisfy the requirements of tioner objected to the Chairman of the EBA on the Art. 83 EPC. grounds of suspected partiality based on the following Mr Névant ended his presentationbyreviewing grounds: selected decisions by French courts. •The Chairmanofthe EBA must rule on administrative acts for which he was responsible in his formerposi- 7. Crystal clear? The Article 84 issue –MrMarco Alvazzi tion as aseniormember of the EPOmanagement. Delfrate (Technically qualified member of the Boards of •AsVPDG3 he is still involved in the management of Appeal the EPO. Mr AlvazziDelfrate started his presentation by “re- The EBA found that the objection of suspected par- freshing” our memories with T68/65 (“synergistic tiality was justified and the Chairman of the EBA was effect”) in which the Boardheld that afeature must be replaced [NB: “suspected partiality” does not mean defined in the objectively most precise form, without “partiality”]. In the aftermath of the decision the Chair- unjustifiably limiting the scope of the invention or unac- man of the EBA stepped aside from active participation ceptablyrestricting protection. in the governing bodies of the EPO. Mr Alvazzi Delfrate then explainedwhy,inhis view, Mrs Schmitz then discussed G1/12 (“Correction of the there is no clarity test applied by instances of the EPO. He appellant”). In that decision the EBA indicatedthat an quoted twodecisions(T971/10,T637/01)inwhich the incorrect designation of the appellant may be corrected term “substantially” was heldinone case to be unclear underRule 101(2) EPC or Rule 139 EPC(NB: the requi- and clearinthe other case. rements set out in these rules must of course be satis- Mr Alvazzi Delfrate then reviewed decision T1271/05 fied). in which the Boardheld that aclaim has to clear from its Mrs Schmitz finally discussed twodecisions dealing ownwording (except in the case where the description with re-establishment of rights in the contextof/unpaid provides unambiguous definitions of certain terms and renewal fees: J5/13 and J1/13. makesclear that the definitions apply throughout the The first decision (J5/13) sets very high standards to be complete application). met by professional representatives even when they are Mr Alvazzi Delfratethen cited decisions (T18/08, not in charge of the payment of renewalfees. It is indeed T608/07, T2403/11) in which issues arising underArt. 84 questionable whether aprofessional representative EPC are in fact discussed under Art. 100(b) EPC in should bearan“all due care” burden when an applicant opposition proceedings. decides to pay renewal fees on its own (or via acompany Mr Alvazzi Delfrate concludedhis presentation by specialized for that purpose). reviewingthe case law that led to referralG3/14 which (we have been told during the conference) has been 5. Split workshops given top priority by the Enlarged Board of Appeal. 1/ Exclusion of therapeutic and surgical methods: It turns out that in practice, the clarity of all dependent where do we stand –MrAlbert Lindner (Chairmanof claimsisnot systematically examinedbyExamining Div- Board of Appeal 3.3.01). isions.The decision of the EBA might thereforehave a 2/ Exploring the borders of technicality: computer- critical impact on opposition proceedings. In the event implementedinventions –MrDai Rees (Chairman of the EBA decides that the clarity of acombination of a Board of Appeal 3.5.06). granted independent claim with agranted dependent 3/ On aquest for knowledge: searching the EPO claim must always be examined, then OppositionDiv- board of appeal decisions –Mrs Barbara Dobrucki and isions and Boards of Appeal will have adreadful tool to Mr FrédéricBostedt (EPO lawyers). revoke patents without having to look into the substance In the last session the speakers provided helpfultips (i. e. novelty and inventive step) of aclaimedinvention. and advicetosearch the database of the Boards of Let’s hope that the EBA will strike afair balance preserv- Appeal. ing the interests of both opponents and proprieto!rs. 162 Articles Information 4/2014

Amicus curiae brief of epi concerning case G3/14

R. Jorritsma (NL)

Referral G3/14 is of great interest to allofus. epi finally filed an amicus curiae brief prepared by the EPPC afterashort but intense debate, as some of us had different opinions. We thoughtitusefultoshareitwith you. ,R.Jorritsma (NL)

Summary the patent will be revokedif“…the patentand the invention to which it relates …donot meet the require- epi generally agrees withthe position of the President of ments of this Convention …”. the EPO expressed in his comments of 11 August 2014, but has some additional points regarding the application It is noticeable that, whereas Article 101(2) EPC refers of Article 84 EPC andRule 80 EPCinopposition proceed- to thegroundsset out in Article 100EPC,Article ings. 101(3)(a) and (b) EPC refer to meeting the requirements of “this Convention”. G3/14 The question which then arises is whether the refe- rence to “this Convention”inArticle101(3) EPC includes In Decision T373/12 Technical Board of Appeal3.2.08 areference to Article 84 EPC and thus requires the (“the TBA”) referred to the Enlarged Board of Appeal Opposition Divisiontoconsiderwhether apatent which (“the EBA”) the four following questions: has been amended during opposition proceedings meets 1. Is the term “amendments” as used in decision G9/91 the requirements of Article 84 EPC. of the Enlarged Board of Appeal (see point 3.2.1) to be epi considers that the wording of Article 101 EPC is understood as encompassing aliteral insertion of (a) clear and thus requires that, onceapatent is amended elements of dependent claims as grantedand/or (b) during opposition proceedings, it has to be examined to complete dependentclaims as granted into an inde- see whether it meets the requirements of Article 84 EPC. pendent claim, so that opposition divisions and boards This is consistent with the obiterdictum made by the of appeal are required by Article 101(3) EPC always to EBA in Section 19 of the Reasons in Decision G9/91, examine the clarity of independent claims thus which appears to indicate that, in principle, once a amended during the proceedings? patent is amended in opposition proceedings, the 2. If the Enlarged Board of Appeal answers Question 1in amended patent should be examined to see whether it the affirmative, is then an examinationofthe clarity of meets the requirements of the Convention. Section19 the independentclaim in such cases limited to the refers to Article 123(2) and (3) EPC,but this appears to inserted features or may it extendtofeatures already be an example of the Articles in the Convention which contained in the unamended independent claim? need to be considered. 3. If the Enlarged Board answers Question 1inthe As the referringTBA has made clear,thereisalso a negative, is then an examination of the clarity of question as to what constitutesanamendment. Article independentclaims thus amended always excluded? 101(3) EPC itself does not indicate that there may be 4. If the Enlarged Board comestothe conclusion that an different types of amendments. In epi’s view,inprin- examination of the clarity of independent claims thus ciple, the requirement to examine whether the amended amended is neither always required nor always patent meets the requirements of the Convention excluded,what then are the conditions to be applied applieswhatever the amendment may be. in deciding whether an examination of clarity comes Certainly,ifanindependent claim is amended by the into question in agiven case? incorporation of part of adependent claim or afeature from the description, then the Opposition Division or the Background TBA dealing with an appealispresented with anew The questions raised by the TBA relate to Articles 100 constellation of features not contemplated by the claims and 101 EPC. Article 100 EPC limits the grounds on as granted. In such acase, epi considers that it will be which apatent as granted may be attacked and excludes necessary to determine whether the amended indepen- any groundequivalenttoArticle 84 EPC. Article 101(2) dent claim meetsthe requirements of the Convention. EPC confirmsthat an (unamended)patent can only be It could be questioned whether this applies to depen- revoked on the basis of the grounds set out in Article 100 dent claims. Should the totality of adependent claim be EPC and thuscannot be revokedfor failure to meet the incorporated into an independent claim on which it was requirements of Article 84 EPC. originally dependent, the question comes up whether However, Article 101(3)(a) EPC provides that, if a this requires an examination of whether the amended patent is amended during opposition proceedings, the independent claim fulfils the requirements of the Con- patent shall be maintained if “…the patent and the vention. As adependent claim necessarily incorporates invention to which it relates …meet the requirements of all the features of the claim on which it is dependent, it thisConvention …”. Article 103(3)(b) EPC provides that could be said that incorporating the features of the Information 4/2014 Articles 163 dependent claim into the independent claim merely the structural feature becomes unclear or inconsistent, makes explicit what was already implicit in the depen- renderingthe claim as such unclear –see also Decision dent claim. If this view is taken, there has been no T1459/05, item 4.3, where the Board decided it should effective amendment to the dependent claim and so it examine clarity of aclaim amended by the introduction could be argued that Article 101(3)EPC does not apply. of afeature from adependent claim, for essentiallythis However, in other Decisions of TBAs, incorporation of same reason. the features of adependent claim which is dependenton The questionabout where the limitsofthe examina- anumber of higher claims into an independentclaim has tion required by Article 101(3) EPCshould lie (Question been examined to see whether the new independent 4) is an important question. First of all, the law has to be claim meets the requirements of Article 123 EPC,onthe complied with. Second,care shouldbetaken that basis that the dependencies led to the need for such opposition proceedingsare not overly complicated with examination. If this approach is correct, it would appear mattersthat could disproportionally detract from aswift that such new independent claims should also be exam- and effective process to the benefit of all parties and the ined to see whether they meet the requirements of publicatlarge. Article84EPC. The law,inthe form of Article 100 EPC,states that an Thus, in epi’s view Article 101(3) EPC applies to all unamended patent cannot be examinedfor clarity,it amendments, even if they constitute the incorporation beingunderstood that such examination has been done of all the features of adependent claim into an indepen- during pre-grant examination and that this should suf- dentclaim. fice compared to the higher ranked opposition grounds In going beyond the opinion of the President of the of Article 100(a),(b) and (c) EPC.Asnoted above,itcan EPO, epi draws the attention to the assumption that a be argued that the fundamental rule of Article 100 EPC patent granted by the EPOmeets all the requirements of should extend to claims whichare amended with a the Convention. It is thereforeexpected that all the feature or all features from adependent claim, where dependent claims meetthe requirements of Article 84 such adependenthas clearly been effectively examined EPC. For this reason,the onus of proof in opposition underArticle 84 EPC during pre-grant examination and proceedings should rest on the opponenttomakea that combinations of such effectively-examined claims prima facie case that the incorporation of all the features might thereforebeconsidered to be unamended claims of adependent claim into an independent claim on not open to examination under Article 84 EPC. which it dependsdoes not meet the requirements of It can also be argued that the presumption of meeting Article 84 EPC.Merely pointing out that an amendment the requirements of Article 84 EPC should extend to has been madeshould not be regarded as making a claimswhich are amended by incorporation of afeature prima facie case. from adependent claim, where thebasis for the intro- duced feature is already present in the same context in The Questions the unamended claim and the amendment is astraight- As to Question 1, epi does not see afundamental forward limitation. For example, if the independent claim difference between “elements of dependent claims as has the option of AorB,and the dependent claim limits granted” and “complete dependentclaims as granted” this to A, without changing the contextofA,orwhere when inserted into an independentclaim.The possibly the independent claim defines anumerical range and the impliedsuggestion that inserting acomplete dependent dependent claim merely narrows the same numerical claim into an independent claim would qualify the range, it couldbeargued that examination underArticle dependent claim as being agranted claim and thus 84 EPC is inappropriate. being protected from an Article 84 EPCattack, does It could further be argued that qualifications of the not appear to be supported by Article 101(3) EPC. The extent to which examination as to whether an amended only question is whether partial or complete introduction patent meets the requirements of the Convention may of adependentclaim is an effective amendment of what be necessary so as to prevent opposition proceedings has already been examined prior to grant and further from being disproportionally burdened with formality allows Article 84 EPC issues to be raised in opposition. In issues. In this respect, the extent to which added matter epi’s view both partial and complete introduction allow issues under Article 100(c) EPC in conjunctionwith this. Article 123(2)EPC have growntobecome alaborious With regardtoQuestion 2, it should be considered and sometimes dominant element in opposition pro- that aclaim is either clear or it is not. It cannotbepartly ceedings, not mirrored by its position in other jurisdic- clear.Obviously,aclarity problem may originatefrom a tions, is an example to be taken into account. certain term or feature, but it is only in the contextofthe However, sincepre-grant examination underArticle entire definition of the claim to be decided whether the 84 EPC is not consistent, and is not feasiblefor all claim is clearornot. An inserted feature, which itself may combinations of mutually dependentclaims in many or may not be clear,can and usually will have an inter- cases, it could be questioned whether there is any basis action with afeature already present in the independent not to apply Article 101(3) EPC to even the complete claim. For example, an inserted functional feature may introduction of adependent claim into an independent qualify an existing structural feature to the extent that claim. epi considers that the latter situation more often 164 Articles Information 4/2014 appliesand that this is afurther reason why the scope of The Answers Article 101(3) EPC should not be construed narrowly. Question 1 epi acknowledgesthat, while Article 101(3) EPC epi considers that either type of amendmentcan requires aconsideration as to whether an amended potentially introduce or enhance issues underArticle patent meets the requirements of the Convention,the 84 EPC of an amended independentclaim. Therefore, Opposition Divisions and the TBAs at the EPO should amended claims of either type should in principlebe take into account, inter alia,the situations referred to open to examination under Article 84 EPC. above when considering whether there is a prima facie Question 2 relevant objection underArticle 84 EPC so as to ensure epi considers that the second option is correct: exam- that the proceedings arenot burdenedwithclearly ination may extend to features already contained in the unsustainableobjectionswhich would unnecessarily unamended independent claim. complicate the proceedings. Question 3 Further to the commentsbythe President of the EPO, epi considers that this is not applicable: categorically epi would also like to draw attention to Rule 80 EPC. This not examiningamended claims based on dependent provides that amendments are only allowed if they are claimsiscontrarytothe duty under Article 101(3) EPC occasioned by aground for opposition underArticle 100 (whichisconsistent with the obiter dictum in Decision EPC. Astrict interpretation of this provision would mean G9/91). that, if avalid objection underArticle 84 EPC is raised againstanamended claim, it would not be possible to Question 4 amend the claim to meet such an objection as such an epi considers that the first condition would be that objection would not have been occasioned by aground there is apotential issue underArticle 84 EPC in the of opposition. epi submits that such astrict interpre- independent claim thus amended. Asecondcondition tation should not be followed and that the wording would be that such potential Article 84 EPC issue does “occasioned by” of Rule 80 EPC should be interpreted to not entirely and exclusively reside in the set of features of includethe notion of “directly or indirectly” so as to the unamended claim. If the amended feature con- allow patent proprietors to further amendclaimstomeet tributes to the issue under Article 84 EPC in any way valid Article 84 EPC objections following amendments or any significant degree, the amended patent should be made for overcoming aground of opposition under examinedunderArticle 84 EPC,asrequired by Article Article 100 EPC. 101(3) EPC. Information 4/2014 Information from the Secretariat 165

Disziplinarorgane und Ausschüsse Disciplinary Bodies and Committees ·Organes de discipline et Commissions

Disziplinarrat (epi) Disciplinary Committee(epi) Commission de Discipline (epi) AL –NIKA Melina FR –ROUGEMONT Bernard MK –DAMJANSKI Vanco AT –POTH Wolfgang°° GB –GRAYJohn MT –SANSONE Luigi A. BE –DEBLED Thierry GR –TSIMIKALIS Athanasios NL –HOOIVELD Arjen BG –PAKIDANSKA Ivanka HR –KORPER Zˇ EMVADina NO –THORVALDSEN Knut Slavcheva HU –MARKÓ József PL –ROGOZIN´ SKA Alicja CH –REUTELER Raymond IE –SMYTH Shane PT –DIAS MACHADO António J. CY –ROUSOUNIDOU Vasiliki IS –HARDARSON Gunnar Örn RO –TULUCA Doina CZ –FISCHER Michael IT –MURACA Bruno RS –BOGDANOVIC Dejan DE –FRÖHLINGWerner° LI –ROSENICH Paul* SE –KARLSTRÖM Lennart DK –KLINGE Ulla LT –GERASIMOVICˇ Jelena SI –REDENSˇ EK Vladimira EE –KAHU Sirje LU –KIHN Pierre SK –BADˇ UROVÁ Katarína ES –STIEBE Lars Magnus LV –SˇMI¯DEBERGA Inâra SM –MARTINI Riccardo FI –WESTERHOLM Christian MC –AUGARDE Eric TR –YURTSEVEN Tuna**

Disziplinarausschuss (EPA/epi) Disciplinary Board (EPO/epi) Conseil de Discipline (OEB/epi) epi Mitglieder epi Members Membres de l’epi BE –LEHERTE Georges DE –DABRINGHAUS Walter GB –BOFF Jim FR –QUANTIN Bruno Beschwerdekammer in Disciplinary Chambre de Recours Disziplinarangelegenheiten (EPA/epi) Board of Appeal (EPO/epi) en Matière Disciplinaire (OEB/epi) epi Mitglieder epi Members Membres de l’epi DE –LENZ Nanno ES –MOLINÉ PedroSugrañes GB –JOHNSON Terry DK –CHRISTIANSEN Ejvind FR –GENDRAUD Pierre NL –VAN WEZENBEEK Lambertus GB –HALLYBONE Huw George Ausschussfür epi-Finanzen epi-Finances Committee Commission des Finances de l’epi BE –QUINTELIERClaude FR –LAGET Jean-Loup PL –MALEWSKAEwa CH –BRAUN André IT –TAGLIAFICOGiulia RO –TULUCA Doina DE –MAIKOWSKI Michael* LU –BEISSELJean SM –TIBURZI Andrea

Geschäftsordnungsausschuss By-Laws Committee Commission du Règlement Intérieur Ordentliche Mitglieder Full Members Membres titulaires FR –MOUTARD Pascal* GB –JOHNSON Terry IT –GERLI Paolo MC –SCHMALZ Günther

StellvertreterSubstitutes Suppléants AT –FORSTHUBER Martin BE –LEYDER Francis FR –LEVAGUERÈSE Sylvain DE –THESEN Michael Commission de Ausschuss für Standesregeln Professional Conduct Committee Conduite Professionnelle Ordentliche Mitglieder Full Members Membres titulaires AL –SHOMOVjollca GB –NORRIS Tim MT –CAMILLERI Antoine AT –PEHAMAlois HR –BIJELIC´ Aleksandar NL –BOTTEMA Hans BE –VAN DEN BOECK, Wim HU –LANTOS Mihály NO –FLUGE Per BG –KOSSEVARadislava Andreeva IE –LUCEY Michael PL –HUDY Ludwik CH –RÜEDI Regula IS –JÓNSSON Thorlákur PT –BESSA MONTEIRO Cesar CZ –MUSIL Dobroslav IT –CHECCACCI Giorgio RO –PETREA Dana Maria DE –GEITZ Holger LI –WILDI Roland SE –LINDGREN Anders DK –RØRBØL Leif LT –BANAITIENE Vitalija SI –MARN Jure EE –OSTRATJaak LU –KIHN Henri SK –CˇECHVALOVÁ Dagmar ES –ELOSEGUI DE LA PEÑA Iñigo LV –SMIRNOV Alexander SM –BERGAMINI Silvio FI –KUPIAINEN Juhani MC –HAUTIER Nicolas TR –ARKAN Selda FR –DELORME Nicolas MK –KJOSESKA Marija

StellvertreterSubstitutes Suppléants AT –FOX Tobias GB –POWELL Tim* NO –SELMER Lorentz BE –VANHALST Koen HR –DLACˇ IC´ Albina PL –KREKORA Magdalena BG –NEYKOV Neyko Hristov IE –O’NEILL Brian PT –GARCIA João Luis CH –MAUÉ Paul-Georg IS –FRIDRIKSSON Einar Karl RO –BUCSA Gheorghe CZ –ZAK Vítezslav IT –MARIETTI Andrea SE –SJÖGREN-PAULSSON Stina DE –KASSECKERT Rainer LT –DRAUGELIENE Virgina SI –GOLMAJER ZIMA Marjana FI –SAHLIN Jonna LV –FORTUNA Larisa SM –MERIGHI Fabio Marcello FR –TARAVELLA Brigitte NL –PETERS John

*Chair/**Secretary °Vice-Chair/°°Vice-Secretary 166 Information from the Secretariat Information 4/2014

Ausschuss für European Patent Practice Commission pourla EuropäischePatent Praxis Committee Pratique du Brevet Européen AL –NIKA Vladimir FI –WECKMAN Arja MC –HAUTIER Nicolas AL –HOXHA Ditika FR –CALLON DE LAMARCK MC –FLEUCHAUS Michael° AT –VÖGELE Andreas Jean-Robert MK –ILIEVSKI Bogoljub AT –KOVAC Werner FR –LEVAGUERÈSE Sylvain MK –KJOSESKA Marija BE –LEYDER Francis* GB –MERCER Chris NL –AALBERS Arnt BE –COULON Ludivine GB –BOFF Jim NL –JORRITSMA Ruurd BG –BENATOV Samuil Gabriel GR –SAMUELIDES Emmanuel° NO –REKDALKristine BG –VARBANOVASHENTOVA HR –HADZˇ IJA Tomislav NO –THORVALDSEN Knut Violeta HR –TURKALJ Gordana PL –LEWICKA Katarzyna CH –WILMING Martin HU –LENGYEL Zsolt PL –BURY Marek CH –MAUÉ Paul-Georg HU –SZENTPÉTERI Zsolt PT –ALVES MOREIRA Pedro CY –THEODOULOU Christos A. IE –MCCARTHYDenis PT –MAGNO Fernando CZ –JIROTKOVAIvana IE –BOYCEConor RO –NICOLAESCU Daniella Olga CZ –BUCEK Roman IS –FRIDRIKSSON Einar Karl** RO –TULUCA Doina DE –VOGELSANG-WENKE Heike IS –MARLIN Dana RS –PLAVSA Uros DE –VÖLGER Silke IT –MACCHETTA Francesco SE –CARLSSON Fredrik DK –CARLSSON Eva IT –MODIANO Micaela SE –BLIDEFALK Jenny DK –PEDERSEN Søren Skovgaard LI –GYAJA Christoph SI –IVANCˇ ICˇ Bojan EE –TOOME Jürgen LI –KEIL Andreas SI –HEGNER Anette° EE –SARAP Margus LT –BANAITIENE Vitalija SK –MAJLINGOVA´ Marta ES –BERNARDO NORIEGA LT –PAKENIENE Ausˇra SM –TIBURZI Andrea Francisco LU –LAMPE Sigmar° SM –PERRONACEAndrea ES –ARMIJO NAVARRO-REVERTER LU –OCVIRK Philippe** TR –KÖKSALDI Sertac˛Murat Enrique LV –SMIRNOV Alexander TR –DERIS¸Aydin FI –HONKASALO Terhi Marjut LV –FORTUNA Jevgenijs Anneli° Ausschuss für Professional Commission de Berufliche Bildung EducationCommittee FormationProfessionnelle Ordentliche Mitglieder Full Members Membres titulaires AL –DODBIBA Eno FR –COLLIN Jérôme MC –THACH Tum AT –SCHWEINZER Fritz GB –GOWSHALL Jon MK –PEPELJUGOSKI Valentin BE –VAN DEN HAZEL Bart GR –LIOUMBIS Alexandros NL –VAN WEZENBEEK BG –KOSSEVARadislava Andreeva HR –PEJCˇ INOVICˇ Tomislav Lambertus CH –BERNHARDTWolfgang HU –TEPFENHÁRT Dóra NO –BERG Per G. CY –THEODOULOU Christos A. IE –LITTON Rory Francis PL –MALCHEREK Piotr CZ –HARTVICHOVAKaterina IS –INGVARSSON Sigurdur PT –FRANCO Isabel DE –LETZELTER Felix IT –RAMBELLI Paolo* RO –FIERASCU Cosmina Catrinel DK –STAHR Pia LI –ALLWARDT Anke SE –HOLMBERG Martin EE –NELSAS Tõnu LT –SˇIDLAUSKIENE Aurelija SI –FLAK Antonija ES –VILALTA JUVANTENY Luis LU –LECOMTE Didier** SM –PETRAZ DavideLuigi FI –KONKONEN Tomi –Matti LV –LAVRINOVICSEdvards TR –YAVUZCAN Alev

StellvertreterSubstitutes Suppléants AL –KRYEZIN Vjollca FI –NYKÄNEN Terhi LV –SERGEJEVAValentina AT –MARGOTTIHerwig FR –FERNANDEZ Francis NL –SMIT Freek BE –D’HALLEWEYN Nele GB –NORRIS Tim NO –RØHMEN Eirik BG –BENATOV Samuil Gabriel HU –RAVADITS Imre PL –PAWŁOWSKI Adam CH –WAGNER Kathrin IE –HARTE Seán PT –DESAMPAIO José CZ–LANGROVAIrena IS –HARDARSON Gunnar Örn RO –TEODORESCU Mihaela DE –AHRENS Gabriele IT –GUERCI Alessandro SE –JÖNSSON Christer DK –JENSEN Bo Hammer LI –GYAJA Christoph SI –ROSˇ Zlata ES –SÀEZ GRANEROFrancisco LT –KLIMAITIENE Otilija SM –PRIMICERI Maria Vittoria Javier LU –BRUCK Mathias TR –ATALAYBaris¸

Examination BoardMembers on behalf of epi

DK –CHRISTIANSEN Ejvind

*Chair/**Secretary °Vice-Chair/°°Vice-Secretary Information 4/2014 Information from the Secretariat 167

Ausschuss für Committee on Commission pourles BiotechnologischeErfindungen Biotechnological Inventions Inventions en Biotechnologie AL –SINOJMERI Diana FR –TARAVELLA Brigitte MT –SANSONE Luigi A. AT –PFÖSTL Andreas GB –WRIGHT Simon** NL –SWINKELS Bart BE –DECLERCQ Ann* HR –DRAGUN Tihomir NO –THORESEN Liv BG –STEFANOVAStanislava HU –PETHÖ Árpád PL –CHLEBICKALidia Hristova IE –HALLYAnna Louise PT –CANELAS Alberto CH –WÄCHTER Dieter IS –JÓNSSON Thorlákur RO –POPACristina CZ –HAK Roman IT –CAPASSO Olga RS –BRKIC´ Zˇ elijka DE –KELLER Günther LI –BOGENSBERGER Burkhard SE –MATTSSON Niklas DK –SCHOUBOE Anne LT –GERASIMOVICˇ Liudmila SI –BENCˇ INA Mojca ES –BERNARDO NORIEGA LU –SPEICH Stéphane SK –MAKELOVA´ Katarína Francisco LV –SERGEJEVAValentina SM –PRIMICERI Maria Vittoria FI –KNUTH-LEHTOLASisko MK –ILIEVSKI Bogoljub TR –ILDES¸ERDEMAys¸e

Ausschuss für EPA-Finanzen Committee on EPO Finances Commission des Finances de l’OEB Ordentliche Mitglieder Full Members Membres titulaires BE –QUINTELIERClaude CH –LIEBETANZ Michael IE –CASEY Lindsay GB –BOFF Jim*

StellvertreterSubstitutes Suppléants DE –SZYMANOWSKI Carsten ES –JORDÁ PETERSEN Santiago NL –BARTELDS Erik IT –LONGONI Alessandra

Harmonisierungsausschuss Harmonisation Committee Commission d’Harmonisation Ordentliche Mitglieder Full Members Membres titulaires BE –LEYDER Francis** DE –STEILING Lothar IE –GAFFNEY Naoise Eoin CH –BRAUN Axel ES –DURAN Luis Alfonso MC –THACH Tum GB –BROWNJohn*

StellvertreterSubstitutes Suppléants BG –ANDREEVAPETKOVANatasha FI –KÄRKKÄINEN Veli-Matti SE –MARTINSSON Peter DK –JENSEN Bo Hammer FR –CONAN Philippe TR –MUTLU Aydin IT –SANTIFilippo

Ausschussfür Streitregelung LitigationCommittee La Commission Procédure Judiciaire Ordentliche Mitglieder Full Members Membres titulaires AL –PANIDHA Ela FI –ETUAHO Kirsikka MK –DAMJANSKI Vanco AT –KOVAC Werner FR –CASALONGA Axel* NL –CLARKSONPaul Magnus BE –VANDERSTEEN Pieter GB –HEPWORTH John Malcolm NO –SIMONSEN Kari BG –GEORGIEVA-TABAKOVA HR –VUKINA Sanja PL –BURY Lech Milena Lubenova HU –TÖRÖK Ferenc° PT –CRUZ Nuno CH –THOMSEN Peter** IE –WALSHE Triona RO –PUSCASU Dan CY –THEODOULOU Christos A. IS –HARDARSON Gunnar Örn RS –ZATEZALOMihajlo CZ –GUTTMANN Michal IT –COLUCCI Giuseppe SE –LINDEROTHMargareta DE –PFRANG Tilman LI –HARMANNBernd-Günther SI –DRNOVSˇ EK Nina DK –KANVED Nicolai LT –ZˇABOLIENE Reda SK –NEUSCHL Vladimír EE –KOPPEL Mart Enn LU –BRUCK Mathias SM –MASCIOPINTO Gian Giuseppe ES –ARIAS SANZ Juan LV –OSMANS Voldemars TR –DERIS¸Aydin MC –SCHMALZ Günther

StellvertreterSubstitutes Suppléants AT –NEMEC Harald HR –VUKMIR Mladen NO –THUE LIE Haakon BE –MELLET Valérie IE –WHITE Jonathan PL –KORBELA Anna BG –PAKIDANSKAIvanka IS –FRIDRIKSSON Einar Karl PT –CORTE-REAL CRUZ António Slavcheva IT –DEGREGORI Antonella RO –VASILESCU Raluca CH –DETKEN Andreas LI –MARXER Amon SE –MARTINSSONPeter CZ –HALAXOVÁ Eva LT –KLIMAITIENE Otilija SI –KUNIC´ TESOVIC´ Barbara DE –MOHSLER Gabriele LU –LECOMTE Didier SK –BADˇ UROVÁ Katarína DK –CHRISTIANSEN Ejvind LV –FORTUNA Jevgenijs SM –MAROSCIA Antonio ES –JORDÀ PETERSEN Santiago MC –THACH Tum TR –CORAL Serra Yardimici FI –VÄISÄNEN Olli Jaakko NL –STEENBEEK Leonardus FR –GENDRAUD Pierre Johannes

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Redaktionsausschuss Editorial Committee Commission de Rédaction

DE –WIEDEMANN Albert FR –NEVANT Marc NL –NOLLEN Maarten GB –JOHNSON Terry*

Ausschuss für Online Commission pourles Online-Kommunikation Communications Committee Communications en Ligne DE –ECKEY Ludger FR –MÉNÈS Catherine NL –VAN DER VEERJohannis DK –INDAHL Peter GB –DUNLOP Hugh Leendert FI –VIRKKALAAnteroJukka* IE –BROPHYDavid Timothy** SM –MASCIOPINTO Gian IT –BOSOTTI Luciano Giuseppe

Ausschuss für Patentdokumentation Patent Documentation Committee Commission Documentation Brevets Ordentliche Mitglieder Full Members Membres titulaires

AT –GASSNER Birgitta DK –INDAHL Peter* IE –O’NEILL Brian FI –LANGENSKIÖLD Tord

StellvertreterSubstitutes Suppléants

DE –WINTERAndreas GB –GRAYJohn NL –VAN WEZENBEEKBart IT –GUERCI Alessandro

Interne Rechnungsprüfer Internal Auditors Commissaires aux Comptes Internes Ordentliche Mitglieder Full Members Membres titulaires

CH –KLEY HansjörgFR–CONAN Philippe

Stellvertreter Substitutes Suppléants

DE –TANNER Andreas IT –GUERCI Alessandro

WahlausschussElectoral Committee Commission pour les Élections

CH –MÜLLER Markus* IS –VILHJÁLMSSON Árni

Ständiger Beratender Standing Advisory Committee Comité consultatif permanent Ausschuss beimEPA (SACEPO) before the EPO (SACEPO) auprès de l’OEB (SACEPO)

epi-Delegierte epi DelegatesDélégués de l’epi BE –LEYDER Francis GB –BOFF Jim LU –LAMPE Sigmar DE –LEISSLER-GERSTL Gabriele GB –MERCER Chris NL –TANGENAAntonius FI –VIRKKALAAntero GB –WRIGHT Simon RO –TEODORESCU Mihaela IT –BOSOTTI Luciano

SACEPO – SACEPO – SACEPO – Arbeitsgruppe Regeln Working Party on Rules Groupe de Travail Règles BE –LEYDER Francis GB –MERCER Chris LU –LAMPE Sigmar

SACEPO – SACEPO – SACEPO – Arbeitsgruppe Richtlinien Working Party on Guidelines Groupe de Travail Directives DE –LEISSLER-GERSTL GabrieleDK– HEGNER Anette GR –SAMUELIDES Manolis

SACEPO – SACEPO – SACEPO – PDI PDI PDI AT –GASSNER Brigitta DK –INDAHL Peter IR –O’NEILLBrian FI –TordLangenskiöld

*Chair/**Secretary °Vice-Chair/°°Vice-Secretary So erreichenSie dieAnzeigenabteilung: WoltersKluwerDeutschland GmbH LuxemburgerStraße449 50939Köln Tel.:0221/94373-77 97 E-Mail:[email protected]

Anzeigenschluss fürHeft1/2015ist am 20.02.2015.

Vorstand /Board /Bureau

Präsident /President /Président NL –TANGENA Antonius Gerardus

Vize-Präsidenten /Vice-Presidents /Vice-Présidents DE –LEISSLER-GERSTL Gabriele RO –TEODORESCU Mihaela

Generalsekretär /Secretary General /SecrétaireGénéral PT –PEREIRA DA CRUZ João

Stellvertretender Generalsekretär / Deputy Secretary General /SecrétaireGénéral Adjoint FI –HONKASALO Terhi Marjut Anneli

Schatzmeister /Treasurer /Trésorier CH –THOMSEN Peter René

Stellvertretender Schatzmeister /Deputy Treasurer Trésorier Adjoint EE –SARAP Margus

Mitglieder /Members /Membres

AL –NIKA Vladimir AT –FORSTHUBER Martin BE –LEYDER Francis BG –ANDREEVAPETKOVANatasha CH –LIEBETANZ Michael CY –THEODOULOU Christos A. CZ –GUTTMANN Michal DE –MOHSLER Gabriele DK –HØIBERG Susanne ES –SÁEZ GRANERO Francisco Javier FR –BAUVIR Jacques FR –NUSS Laurent GB –WRIGHT Simon Mark GB –MERCER Christopher Paul GR –BAKATSELOU Lila HR –BOŠKOVIC´ Davor HU –TÖRÖK Ferenc IE –CASEY Lindsay Joseph IS –JÓNSSON Thorlákur IT –RAMBELLI Paolo LI –HARMANN Bernd-Günther LT –PETNIU¯ NAITE Jurga LU –BEISSEL Jean LV –FORTUNA Jevgenijs MC –SCHMALZ Günther MK –PEPELJUGOSKI Valentin MT –SANSONE Luigi A. NO –THRANE Dag PL –KORBELA Anna RS –PETOŠEVIC´ Slobodan SE –ESTREEN Lars J. F. SI –BORŠTAR Dušan SK –MAJLINGOVÁ Marta SM –AGAZZANI Giampaolo TR –ARKAN Selda Mine epi / Bayerstrasse 83 / 80335 Munich, Germany