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 ros bottom lb

More from across our site

Coke Morgan Stewart previously spent 10 years in various USPTO roles before joining O’Melveny in 2023
Law firm Stephens Scown secured victory for its client in a dispute over two cider products
The Court of Appeal said the UPC can award damages based on a national court’s infringement ruling, giving the last laugh to the lawyer who filed the case
AI
Robert Guthrie at Osborne Clarke runs through the government’s AI and copyright consultation and considers the expected challenges
A lawyer firing Meta as a client has reinforced why the industry should not shy away from losing business from those with questionable ethical standards, even if it comes at a cost
A blow for Getty ahead of its AI showdown with Stability AI and a licensing deal between Nokia and Samsung were among the big talking points this week
The IP Federation has written to the UPC Court of Appeal’s presiding judge ahead of a crucial decision on whether in-house lawyers and attorneys can represent their employers in litigation
A Boies Schiller Flexner partner explains how he helped toy company Tangle prevail in a copyright case concerning a kinetic sculpture
Awards
Submit your nominations for this year's WIBL Americas Awards by February 28
Awards
Research for the annual Women in Business Law Awards has begun – submit your entries by February 28
Gift this article