An International Guide to
Patent Case Management for Judges

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11.4 Patent invalidity proceedings and invalidity grounds

As noted above in Section 11.2.2, the EPC provides an exhaustive list of grounds for opposition (i.e., grounds on which a European patent may be revoked). These are that:

  • the patent’s subject matter is not patentable (e.g., because the claimed subject matter is not novel, does not involve an inventive step or is excluded from patentability);

  • the patent does not disclose the invention clearly and completely enough for it to be carried out by a person skilled in the art; or

  • the patent’s subject matter extends beyond the content of the (earlier) application as filed.40

In opposition and opposition appeal proceedings, the patent proprietor may file amendments to the patent. The Opposition Division or the Board of Appeal will then assess whether the amended patent and the invention to which it relates meet the requirements of the EPC.41 An important requirement is that an amendment may not extend the protection conferred by the European patent.42 If it does, the European patent cannot be maintained on the basis of the amendment, and it may eventually be revoked.

The EPC also provides an exhaustive list of grounds for revocation of the national part of a European patent in national invalidity proceedings. These possible grounds for revocation correspond to the grounds for opposition mentioned above43 and further include:

  • that the protection conferred by the European patent has been extended (which must also be assessed by the EPO in case of amendments during opposition or opposition appeal proceedings); and

  • that the proprietor is not entitled to the right to the European patent.44