EPO: Non-proven facts introduced ex officio

Managing IP is part of Legal Benchmarking Limited, 4 Bouverie Street, London, EC4Y 8AX

Copyright © Legal Benchmarking Limited and its affiliated companies 2025

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

EPO: Non-proven facts introduced ex officio

Sponsored by

inspicos-400px recrop.jpg
amy-humphries-2m-sdj-agvs-unsplash.jpg

Jakob Pade Frederiksen of Inspicos P/S explains the findings of a recent decision by the EPO Board of Appeal, which permits the introduction of new facts and evidence in proceedings

In a recent decision of January 25 2021, T 1370/15, one of the EPO’s Technical Boards of Appeal relied on common general knowledge introduced by the Board ex officio, for which there was no documentary evidence on file. According to the decision, an EPO Board of Appeal is allowed to introduce new common general knowledge without evidence of such knowledge that prejudices the maintenance of the patent, to the extent that the board is knowledgeable in the respective technical field from the experience of its members working on cases in this field.

In the case concerned, the patentee had brought an appeal against a first-instance decision in inter partes opposition proceedings revoking the patent concerned. The assessment of non-obviousness on appeal was carried out on the basis that a particular prior art document identified as “the closest prior art” failed to disclose certain features of a user interface (UI) of a broadcast processing apparatus, such as a digital TV.

The Board of Appeal held that these features contributed to increasing user convenience in selecting criteria for searching channels, and that the skilled person seeking to solve that problem would have provided an adequate UI on the basis of their knowledge of grid or drop-down menus as a matter of obviousness. The knowledge of the members of the Board of Appeal to the effect that grid or drop-down menus formed part of the skilled person’s knowledge was not proven by documentary evidence. Yet, the Board relied on such knowledge in holding the claimed subject-matter as non-inventive.

The Board of Appeal referred in its decision to a prior decision, T 1090/12 of 2017, in which another one of the EPO’s Boards of Appeal, in the context of ex partes proceedings, had laid down that there is no general obligation on a board to provide documentary evidence for the existence of a piece of common general knowledge. In line with that decision, the Board held in T 1370/15 that a board is not excluded outright from introducing new facts and evidence in inter partes proceedings.

Jakob Pade Frederiksen

Partner, Inspicos P/S

E: jpf@inspicos.com

more from across site and SHARED ros bottom lb

More from across our site

Deals between five more law firms and President Trump and an antitrust lawsuit against Amgen were also among the top talking points this week
US counsel explain how they win new cleantech IP business and how they’re navigating the industry’s challenges
Leaders at the IP firms, which have joined forces with backing from a PE investor, share their vision of building the number one pan-European IP practice
Firms will steer clients towards other ways of getting quicker examinations, but fear the ramifications of the USPTO’s decision
Melissa Haapala added that returning to client advocacy and the chance to work on patent litigation were reasons for returning to private practice
Michelle Clark, who has a generalist litigation background, plans to focus on IP disputes at Alston & Bird
Philips and Vivo have entered into a licensing agreement, putting an end to a five-year-old telecom SEP dispute in India
Stefan Müller discusses managing deadlines, the importance of reflection, and why IP is more than just a 'nice to have'
The three founders of the IP firm’s new US offering say they plan to offer a unique proposition in a market fixated by the billable hour
The opinion provides useful guidance when it comes to how courts might consider contributory infringement, DMCA claims, and other issues in AI copyright cases
Gift this article