January 12, 2023 Market Court decision MAO:41/2022 in patent opposition proceedings

Genip Oy represented the appellant in the patent opposition appeal case, after the Finland Patent Office had rejected an opposition. The Market Court overturned the Finland Patent Office decision. The Market Court referred to the established case law of the boards of appeal of the European patent office and concluded that it has to be assumed that the skilled person can choose between two equal alternatives, and that such a choosing is obvious for the skilled person. The Finland Patent Office presented to the Market Court that this would not be obvious for the skilled person. The decision is available at https://www.markkinaoikeus.fi/fi/index/paatokset/teollisjatekijanoikeudellisetasiat/mao412022.html# (in Finnish).

Special in this case is that the technical appeal board of the European patent office maintained in decision T2587/19-3.2.07 the parallel European patent after comparing the independent claim with the same document and dismissed the appeal. We reported about this on November 28, 2022 in the News section of our web page. However, the technical appeal board did not deal with the same embodiment disclosed in the document in contrast to the Market Court, because the objection to the patentability based on this embodiment was not raised already in the opposition proceedings (so-called preclusion). The Market Court decision based its decision on the embodiment that was studied in detail during the appeal proceedings only.