EPO: Non-proven facts introduced ex officio

Managing IP is part of Legal Benchmarking Limited, 1-2 Paris Gardens, London, SE1 8ND

Copyright © Legal Benchmarking Limited and its affiliated companies 2026

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

Cookies Settings

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

François Pochart, Grégoire Desrousseaux and Lionel Martin, long-standing figures in the firm’s patent litigation team, are set to help launch a Paris-based litigation offering
The Unitary Patent has passed 100,000 registrations, but new data raises the question of whether 30% uptake is a ceiling or a staging post for further growth, say Michael Nielsen and Darren Smyth of EIP and Andrew Samm at Patently
The new generation of in-house IP leaders want commercial judgment, accessibility and flexibility, with AI raising expectations around both fees and delivery
The firm launched a San Diego office earlier this month, but California investment and expansion is far from complete
The industry’s response to AI requires an unfamiliar ingredient as firms battle to shape their futures
The firm is looking beyond replacing recently departed talent, betting instead on senior leaders to strengthen and expand its patent litigation platform
Olga Partington, director in Sterne Kessler’s biotechnology and chemical practice group, shares why a patent's vulnerability peaks when it is young, rather than when it is most valuable, under the PTAB's new framework
IP experts gathered in San Francisco last week to discuss the changing global SEP landscape and new licensing models for AI infrastructure
SKW Schwarz partner Daniel Kendziur explains how new green claims rules are changing his workload and bringing him into direct contact with marketing, PR and government affairs teams
The government is targeting earlier resolution of SEP disputes while ruling out a standalone IPEC rate determination track and restrictions on injunctions
Gift this article