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T 2321/08: Obligation to acknowledge prior art

This interesting case has already been discussed by the French Blog of Laurent Teyssedre, so I'll keep this very brief.

The situation was such that an applicant did not cite (relevant) prior art in his application as filed, whereas he was very aware of such relevant prior art. The Examining Division therefore refused the application as not complying with Rule 42(1)(b) EPC. Applicant appealed and the Board of Appeal concluded that this refusal was not justified.

Below is the catchword in English:

1. Rule 27(1)(b) EPC 1973, or equivalent Rule 42(1)(b) EPC 2000, does not put a stringent obligation on the applicant to acknowledge prior art known to him, and to cite documents known to him reflecting this prior art, already at the time of filing the application.

2. No requirement of the EPC prohibits amending an application in order to meet the provisions set out in Rule 27(1)(b) EPC 1973 or
Rule 42(1)(b) EPC 2000.

The Board of Appeal refers to G1/05 reasons 3.2 and 3.4. These reasons have been added to the G summary.

As far as relevant and entirely correct, not mentioning relevant prior art in procedures before the USPTO may be regarded as inequitable conduct, which may result in revocation of the patent during litigation proceedings. This is probably a bridge too far to be of relevance for the EQE, yet it is important if your clients file patent applications in the USA.

Read the entire decision here.

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