Bardehle Pagenberg's Contribution To The Public Consultation: EPO Strategic Plan 2023

Author:Mr Tobias Kaufmann
Profession:Bardehle Pagenberg

BARDEHLE PAGENBERG has taken the opportunity to participate in the EPO's public consultation on the Office's Strategic Plan 2023. Amongst others, we propose rethinking the "inescapable trap", which often leads to unacceptable results, establishing solid methods for quality evaluations, including publishing meaningful reports on quality, and improvements on the independency of the EPO's judiciary.


  1. Patentable subject-matter

    There is a lot of criticism in society of the patent system in respect of certain subject-matter.

    Examples are:

    Computer implemented inventions, recently in particular artificial intelligence Living matter Pharmaceuticals The EPO should not ignore this criticism, but actively react.

    While there are overriding legal principles justifying limitations of patentable subject-matter, cf. Art. 27 TRIPs Agreement, there should be international consensus that incentives for innovation are necessary in all fields of technology. As has always been the case, new technologies have to be integrated into the patent system. In this regard, the EPO should avoid the impression to enlarge the boundaries of patentable subject-matter in its own interest. Rather, it should strive for a proper balance between the interests of innovators and society. Taking for example the area of artificial intelligence, the principles as developed over almost two decades with respect to computer implemented inventions by the EPO's Boards of Appeal and implemented into the EPO's Guidelines for Examination, following landmark decisions such as T931/95 (Pension Benefit Systems Partnership) or T641/00 (Comvik), should serve as guidance for differentiating patentable inventions from abstract ideas, which should be free from monopolies.

    In this context, it seems appropriate if the EPO takes part in raising the patent awareness and acceptance in particular among young engineers and scientists, e.g. at universities, or even promoting research projects at school level.

  2. Revocation of patents for formal reasons - The inescapable trap

    The Enlarged Board of Appeal has interpreted Articles 123 (2) and (3) EPC to mean that a limitation introduced into a claim in grant proceedings cannot be removed in opposition proceedings. This has the consequence that a patent has to be revoked if the EPO takes a different position on the formal allowability of an amendment in grant and in opposition proceedings. This approach has met with heavy criticism and in the course of the deliberations on the EPC 2000, the expectation was expressed that the Boards of Appeal would be able to solve the problem. This hope has not been fulfilled. Therefore, it is the role of the legislator to take over this task. One cannot accept that due to diverging views in formal issues between grant and opposition proceedings patents are revoked, without taking into account their innovative value at all and without any need for the public at all.

    A model could be the approach by the German Federal Supreme Court, according to which an added feature which has not been originally disclosed can remain in the claim and limits its scope but is to be ignored when assessing the patentability requirements.


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