EPO 特許明細への先行技術の記載

権利解釈時の限定解釈を避けるために米国出願用明細にはあまり先行技術と本願の対比は書かない方が良い。その一方で、欧州出願用明細には先行技術との対比を書かなければいけない。
これって、明細作る上でうっとうしいでよね。
では、欧州明細において先行技術との対比を書いていない特許は無効になるのか？
興味ありませんか。


(IPKat)
Patent attorneys will be well aware that not mentioning relevant prior art known at the time of filing cannot of itself make a European application or patent invalid. The examiners for application 06024212.0, however, apparently thought differently, contrary to long-standing EPO practice. From a rather strained interpretation of the German version of the relevant rule, the examining division's view was that not including a reference to relevant prior art known to the applicant at the time of filing would make the application void ab initio. The application was refused as a result.

In the resulting decision T 2321/08, the Board considered that the examining division had got it completely wrong. Rule 42(1)(b) did not put any stringent obligation on the applicant to cite relevant documents known at the time of filing, and failure to do so was in any case correctable after filing by making appropriate amendments.


Rule 42
Content of the description

(1) The description shall:
(a) specify the technical field to which the invention relates;
(b) indicate the background art which, as far as is known to the applicant, can be regarded as useful to understand the invention, draw up the European search report and examine the European patent application, and, preferably, cite the documents reflecting such art;