Decisions of the Enlarged Board of Appeal

Although the applicable law is mainly contained in the Convention and its Implementing Regulations, the clarifications provided by the Enlarged Board of Appeal on the various texts should not be overlooked.

Here is the list, by number, of the decisions of the Enlarged Board of Appeal (updated on 28/03/14).

G1/83 – Second therapeutic application

The decision G1/83 was issued on December 5, 1984.

The question before the Enlarged Board was whether a claim directed to « the use of a compound for therapeutic use » could be accepted. This question was crucial for pharmaceutical companies.

Firstly (point 13 of the reasons), the Enlarged Board recalls that any formulation « Use of a substance for the treatment of the human or animal body » would amount to claiming a therapeutic method, which is considered a non-invention (A52(4) EPC73 and today excluded from patentability by A53 c) EPC): such a formulation is therefore to be excluded.

On the other hand, the Enlarged Board of Appeal indicates that the formulation « Use of a compound X to obtain a medicinal product intended for therapeutic use Y » is acceptable since no exclusion applies to the manufacture of medicinal products. Of course, it is necessary that the use Y be new and inventive (point 23 of the reasons).

This latter formulation is called a « Swiss-type claim ».

It should be noted that this decision is no longer valid due to the change in Article A54(5) EPC, which explicitly authorizes a second therapeutic application.

The decision G2/08 confirmed the end of Swiss-type claims.

G5/83 – Second therapeutic application

The decision G5/83 (December 5, 1984) is in every respect similar to the decision G1/83 (except that it was written in English).

G6/83 – Second therapeutic application

The decision G6/83 (December 5, 1984) is in every respect similar to the decision G1/83 (except that it was written in French).

G1/84 – Opposition by the proprietor

The decision G1/84 was issued on July 24, 1985.

In this case, the proprietor of a patent had filed an opposition against their own patent and this opposition had been declared inadmissible.

The Enlarged Board opposed this inadmissibility by specifying that an opposition is not inadmissible solely on the grounds that it was filed by the proprietor of said patent (point 8 of the reasons).

Indeed, it seems desirable to allow any person (A99(1) EPC73) to file an opposition in order to « ensure as far as possible that the European Patent Office grants and maintains European patents only if they are considered valid » even if this opposition is filed by the proprietor wishing to limit their patent (point 3 of the reasons).

It should be noted that this decision is no longer valid since the decision G9/93, which reverses this case law on the grounds that Article A99 EPC73 consistently provides that the opposition procedure is an inter-partes procedure (in particular A99(4) EPC73).

G1/86 – Re-establishment of rights of an opponent

The decision G1/86 was issued on June 24, 1987.

As you know, when filing an appeal against an opposition, an opponent or the proprietor can file an appeal by submitting a notice of appeal (within a period of 2 months from the date of the decision, A108 EPC73 or A108 EPC) and then by submitting a statement of grounds (within a period of 4 months from the date of the decision).

If the wording of A122(1) EPC73 (i.e., « The applicant for or proprietor of a European patent ») allows the proprietor to benefit from a restitutio in integrum, what about the opponent?

The Enlarged Board indicates that A122(1) EPC73 should not be read strictly. Thus, an opponent may be re-established in their rights under A122(1) EPC73 if they have not filed the statement of grounds of appeal within the time limit (point 15 of the reasons), as any other interpretation would be contrary to the principle of equality (point 3 of the reasons).

However, the opponent does not benefit from the provisions of A122(1) EPC73 for the time limit for filing the appeal (i.e., the first 2-month period to file the notice of appeal, see point 5 of the reasons). If the proprietor benefits from re-establishment of rights for both aforementioned time limits, the Enlarged Board explains this « favoritism » by the fact that:

• the proprietor cannot remain in uncertainty for a long period regarding the extent of their rights;
• the opponent can always bring an action for revocation.

A122 EPC being substantially identical, this decision remains a priori applicable under the EPC 2000.

G1/88 – Silence of the opponent

The decision G1/88 was issued on January 27, 1989.

Let us assume the following situation: an opponent has not, after receiving a notification under R58(4) EPC73 (today R82(1) EPC), submitted any observations within a period of one month on the text in which the EPO intends to maintain the patent.

Does this mean that the opponent agrees with this text (« Qui tacet consentire videtur« ) and does this make any potential appeal from the opponent inadmissible?

The Enlarged Board considers that it would be disproportionate to penalize the silent opponent and to deprive them of their right to appeal (point 7 of the reasons). Indeed, among multiple arguments, the Enlarged Board emphasizes that this sanction would simply not be in the spirit of the EPC:

• when the omission of an act results in a loss of rights, the EPC explicitly provides for it (point 3.1 of the reasons);
• it would then be necessary to send a notification of loss of rights (R69(1) EPC73 or now R112(1) EPC), which is not the case here (point 3.2 of the reasons).

G2/88

The decision G2/88 was issued on December 11, 1989.

As you can see, many questions were referred to the Enlarged Board.

Change of claim categories

In this case, the proprietor had sought, during opposition, to change the category of a claim. Is this modification acceptable and not contrary to A123(2) EPC73.

The Enlarged Board indicates that the change of category (e.g., « compound » or « use of the compound« ), whether it occurs during examination or opposition (without needing to consider any national law, see point 3.3 of the reasons), is a priori not prohibited, but it is necessary to analyze, in concreto, whether an extension of scope occurs as a result of this change (point 4.1 of the reasons).

For example, transforming a claim from « compound » to a claim for « use of this compound » to achieve a given effect is not contrary to A123(2) EPC73 (point 5.1 of the reasons). Caution is needed, as if the use claim aims at obtaining a product, it would be prohibited because it would allow protecting this product due to the provisions of A64 EPC73.

Second non-therapeutic application

In this case, a claim concerned the use of a well-known additive to reduce friction in an engine. This effect was not known, as this additive was only known to limit corrosion.

Should A54 EPC73 be interpreted as allowing a use claim when the only new feature lies in the purpose assigned to this use?

The Enlarged Board of Appeal considers that « the new use of a known compound » actually aims at achieving a new technical effect underlying the new use (see point 9 of the reasons). Consequently, a new implicit technical feature (i.e., the function consisting of achieving the desired purpose) is present in the claim (point 9.1 of the reasons).

Ultimately, « the new use of a known compound » is thus validated by the Enlarged Board (see point 10.3 of the reasons).

G4/88 – Transfer of opposition

The decision G4/88 was issued on April 24, 1989.

The question posed to the Enlarged Board was whether an opposition could be:

• only transferred to the heirs of the deceased opponent;
• freely assigned;
• assigned with the company or a part of the company interested in the field of the invention in question.

For the Enlarged Board (point 6 of the reasons), it is clear that the transfer of the opposition is carried out « naturally » during an assignment of a part of the company (understood in its broadest sense, in the economic sense, point 5 of the reasons), because the opposition constitutes an accessory to this part of the company if the opposition was initiated in the interest of this part (see the operative part of the reasons).

G5/88 – Power of the EPO President to conclude administrative agreements

The decision G5/88 was issued on November 16, 1990.

For historical context, the German Patent Office (Gitschiner Straße 97, 10969 Berlin) and the European Patent Office (Gitschiner Strasse 103, 10969 Berlin) have neighboring premises in Berlin.

Thus, very frequently, absent-minded individuals would file European patent applications (or any other document such as opposition documents) with the German Patent Office and vice versa.

The President of the EPO had sought to address this issue by concluding an administrative agreement with the German Patent Office on June 29, 1981. This agreement provided, in particular, that documents submitted to the German Patent Office would be presumed to have been received by the EPO on the date of receipt by the German Patent Office.

In this case, an opposition had been filed with the German Patent Office but was received by the EPO after the 9-month deadline. We can well understand that the proprietor wishes to have this opposition declared inadmissible.

The question referred to the Enlarged Board of Appeal was therefore whether the President of the EPO had the power to conclude such an agreement having an impact on the rights conferred by the EPC. It should be noted that this agreement was not approved by the Administrative Council.

According to the Enlarged Board, neither the President’s power of representation defined by A5(3) EPC73 (point 2.2. of the reasons), nor his obligation to take « all useful measures… to ensure the functioning of the European Patent Office » under A10(2) EPC73 (points 2.6 and 2.7 of the reasons) can justify such an agreement.

Nevertheless, under a principle of « protection of good faith and legitimate confidence« , the Enlarged Board decided that the ineffectiveness of the agreement would not be retroactive.

G6/88 – Second non-therapeutic application

The decision G6/88 was issued on December 11, 1989.

This decision follows the same reasoning as decision G2/88 issued on the same day.

G7/88 – Power of the EPO President to conclude administrative agreements

The decision G7/88 was issued on November 16, 1990.

This decision follows the same reasoning as decision G5/88 issued on the same day.

G8/88 – Power of the EPO President to conclude administrative agreements

The decision G8/88 was issued on November 16, 1990.

This decision follows the same reasoning as decision G5/88 issued on the same day.

G1/89 – A posteriori lack of unity and PCT application

The decision G1/89 was issued on May 2, 1990.

In this decision, the Enlarged Board recalls that (see point 3 of the reasons), even at the PCT search stage, the search division acting as the ISA must assess the novelty and inventive step of the claims in order to assess the unity of invention in accordance with A17.3.a PCT (even though this assessment does not constitute a true « examination » within the meaning of the EPC or the PCT).

Consequently, it is quite possible for the ISA to raise a posteriori lack of unity objections (point 5 of the reasons) and, in doing so, the EPO can request the applicant to pay an additional search fee (point 7 of the reasons).

G2/89 – A posteriori lack of unity and PCT application

The decision G2/89 was issued on May 2, 1990.

This decision follows the same reasoning as decision G1/89 issued on the same day.

G3/89 – Correction of obvious errors

The decision G3/89 was issued on November 19, 1992.

The R88 EPC73 (now R139 EPC) provides that errors concerning the claims, description or drawings are correctable if the correction is obvious.

In the opinion of the Enlarged Board of Appeal, A123(2) EPC73 is quite applicable to the correction: it is therefore necessary to consider at the filing date what the person skilled in the art could objectively deduce from the description (point 2 of the reasons).

The person skilled in the art must therefore be able, at the filing date (i.e. regardless of any subsequent publication) and based on general knowledge in the field in question:

• to objectively and unequivocally identify the error, and
• to simply deduce the correction to be made.

Consequently, this correction has no retroactive effect: it is a simple finding (point 4 of the reasons).

Any means of evidence is possible (point 8 of the reasons) provided that this means (written, testimony, etc.) demonstrates the general knowledge of the person skilled in the art at the filing date and not afterwards (point 7 of the reasons).

G1/90 – Patent revocation for non-payment of printing fee

The decision G1/90 was issued on March 5, 1991.

In this case, the proprietor of a patent that had just been maintained in amended form (i.e. after opposition) had not paid the printing fee prescribed by A102(3) b) EPC73 within the three-month period provided for by R58(5) EPC73.

The question that arose was whether the revocation of the patent provided for in A102(4) EPC73 or A102(5) EPC73 should be the subject of a decision (subject to appeal, A106 EPC73) or a simple finding provided for by R69 EPC73 (not subject to direct appeal).

The Enlarged Board of Appeal observes preliminarily that if the convention had intended to indicate that the sanction for non-compliance with the payment of the printing fee was the automatic loss of rights, the wording of the article would probably have been « shall be deemed to be revoked » (point 4 of the reasons) or « shall be deemed to be withdrawn » (point 6 of the reasons) as elsewhere in the convention.

For the Enlarged Board of Appeal, the revocation of a patent for non-compliance with the payment of the printing fee (A102(4) EPC73) or production of translations of the claims (A102(5) EPC73) must take the form of a decision. Indeed:

• a revocation decision would not be « meaningless » (point 13 of the reasons) contrary to the assertions of the board of appeal) even if the loss of rights does not concern the substantive rights of patents (i.e. novelty, inventive step, etc.). The appeal can be particularly useful in order to contest factual issues (e.g. effective date of payment).
• the presentation of a request for restitutio in integrum is not really a source of any legal uncertainty (point 14 of the reasons) even if the decision has not yet been issued. The decision rendered concerning a subsequent appeal (which would be formed against the decision) will be merged with the decision concerning the restitutio in integrum.
• there is not an urgent need to cause the loss of rights as soon as possible even for the protection of third parties (point 15 of the reasons).
• the revocation decision is legally simpler (one single step as opposed to notification+decision on request, point 17 of the reasons).

The provisions of R82 EPC are substantially identical to the provisions of A102(4) EPC73 and A102(5) EPC73. Thus, this decision remains applicable under the EPC 2000.

G2/90 – Jurisdiction of the Legal Board of Appeal for decisions rendered by an Opposition Division

The decision G2/90 was rendered on August 4, 1991.

In this case, a patent proprietor had forgotten to pay the publication fees for their patent after publication. The formalities officer had given them two additional months and had then revoked their patent. For the proprietor who filed an appeal, the formalities officer had no legal basis to do so.

This assertion was clearly purely legal.

The legal question that arose was whether the Legal Board of Appeal was competent for appeals directed against decisions made by formalities officers.

The competence of the Boards of Appeal is defined in A21 EPC73. If the Legal Board of Appeal can intervene against a decision rendered by an Examining Division (A21(3) c) EPC73, point 3.2 of the reasons), it is not provided at all that it can intervene for decisions of an Opposition Division (A21(4) EPC73, point 3.3 of the reasons).

In the opinion of the Enlarged Board of Appeal, the text is clear and there is no omission to be seen (points 3.3 and 3.4 of the reasons): only the Technical Board of Appeal is competent for decisions rendered by an Opposition Division.

The A21 EPC being identical, this decision seems to still apply under the EPC 2000.

G1/91 – Unity of invention and maintenance in amended form after opposition

The decision G1/91 was rendered on December 9, 1991.

If, after an opposition, the patent is amended in such a way that the claims no longer present a common inventive concept (A82 EPC73), is it possible to maintain it in amended form? Indeed, A102(3) EPC73 provides that « the patent and the invention to which it relates meet the requirements of this Convention ». Do these requirements include unity of invention (point 2.1 of the reasons)?

In the opinion of the Enlarged Board of Appeal, the reason for the requirement of « unity of invention » is of administrative order (point 4.1 of the reasons): the usefulness is for the classification of patents with the international nomenclature, but also to prevent the applicant from abusively including several inventions in a single application and thereby avoiding significant search and filing fees.

Moreover, the Enlarged Board of Appeal notes that the division, although initially provided for in the preparatory work of the convention until the end of the opposition, had been limited to simple patent applications (point 6.2 of the reasons), because it was « unnecessary » due to the absence of possible opposition for lack of unity of invention.

Consequently, lack of unity should not be taken into account for the maintenance of patents in amended form after opposition.

This decision remains valid under the EPC 2000.

G2/91

The decision G2/91 was rendered on November 29, 1991.

Refund of appeal fees in the case of multiple appellants

In this case, some Boards of Appeal retained the first appeal fee received and refunded the subsequent appeal fees, because the « other parties to the proceedings are as of right parties to the appeal proceedings » as specified in A107 EPC73.

Other Boards retained all the fees paid by each of the appellants.

Who was right?

For the Enlarged Board of Appeal, each of the appellants must pay… and this is justified by the next paragraph.

Right to pursue an appeal upon withdrawal of an appeal by an appellant

Indeed, the Enlarged Board points out that an appellant who has not paid has no right to pursue the appeal alone if the only appellant who has paid withdraws.

Indeed, only the latter can decide on the maintenance of their appeal (point 6.1 of the reasons).

Thus, any refund of the appeal fee would deprive the appellants of their rights.

This decision remains valid under the EPC 2000, as A107 EPC has not changed.

G3/91 – Restitutio in integrum

The decision G3/91 was issued on September 7, 1992.

As you certainly know by heart, the EPC provides:

• that, for European applications:
  • the search fee must be paid (A78(2) EPC73) within one month after the filing of the application and
  • the designation fees must be paid (A79(2) EPC73) within six months from the mention of the publication of the ESR;
  • a request for examination must be filed (A94(2) EPC73) within six months from the mention of the publication of the ESR;
• that, for Euro-PCT applications:
  • the search fee must be paid (A157(2) b) EPC73) within 31 months from the filing of the earliest priority (R107(1) e) EPC73);
  • the national fee (covering the designation fees, A158(2) EPC73) must be paid within 31 months from the filing of the earliest priority (R107(1) d) EPC73);
  • a request for examination must be filed (A150(2) EPC73) within 31 months from the filing of the earliest priority (A39.1.b PCT).

As you can see, there are certain similarities…

But the first three deadlines are explicitly excluded by A122(5) EPC73 while the last three deadlines are not included… Is this an oversight? Should it be considered that these are also excluded from restitutio in integrum?

In the opinion of the Enlarged Board, all these deadlines should be considered in the same way: thus the deadlines for payment of the search fee, the national fee, and the deadline for filing the request for examination do not benefit from restitutio in integrum (for European applications, but also for Euro-PCT applications).

This decision is no longer applicable with the EPC 2000, as the various deadlines mentioned above now benefit from restitutio in integrum.

G4/91 – Intervention

The decision G4/91 was issued on November 3, 1992.

In this case, a third party (against whom an infringement action had been brought) had filed a declaration of intervention in accordance with A105(1) EPC73, while the opposition division had decided to maintain the patent in amended form a few weeks earlier…

Is the intervention valid given that the appeal period was still running (i.e., given that the decision had not become res judicata)?

For the Enlarged Board, intervention is not possible in this hypothesis, unless one of the parties to the opposition proceedings files an appeal: indeed, without this appeal, the opposition procedure is not pending.

This decision is still applicable with the EPC 2000 since R89 EPC includes the same provisions.

G5/91 – Appealable decisions

The decision G5/91 was issued on May 5, 1992.

In this case, the proprietor of an application had alleged that one of the members of the opposition division was not impartial, but the director had refused to recompose the chamber.

Independence of agents of the first instance bodies of the EPO

The Enlarged Board notes that (point 2 of the reasons) A24(1) EPC73 provides for impartiality for members of the boards of appeal and the Enlarged Board, but not explicitly for agents of the first instance bodies such as:

• the examining division,
• the opposition division,
• etc.

However (point 3 of the reasons), this obligation is, in truth, a general principle and must apply to all.

Appealable decisions

Can the proprietor file an appeal against the director’s refusal to recompose the chamber for the opposition?

The Enlarged Board indicates (point 5 of the reasons) that there is no legal basis for such an appeal.

As specified in A106(3) EPC73, it is not possible to file an appeal against a decision that does not conclude a procedure (such as the present decision) unless said decision provides for an independent appeal.

Of course, this issue may be subject to an appeal with the final decision (point 6 of the reasons).

This decision remains valid with the EPC 2000, as A106 EPC has remained unchanged on this point.

G6/91 – Reduction of fees

The decision G6/91 was issued on March 6, 1992.

A14(4) EPC73 and A14(4) EPC73 provide that persons residing in the territory of a member country may file documents in their language (other than French, English, German) and thus benefit from a reduction in fees (R6(3) EPC73).

Submission of the translation simultaneously

In this case, a person had filed an appeal against a decision by simultaneously providing a document written in their language as well as a translation.

As a preliminary point, the Enlarged Board considers that there is no contraindication to filing a translation of the documents filed at the same time as these documents (point 9 of the reasons). However, care must be taken, as these translations must not be taken for the originals and, for example: by way of illustration, the translations cannot be transmitted BEFORE the originals at the risk of being considered as such (point 12 of the reasons).

Plurality of documents and translation limited to only certain documents

What happens if the proprietor files several documents to carry out a procedural act, only some of which are in their language?

In principle, there is no need to consider that all documents must be produced in the language of the applicant in order to benefit from the reduction (point 15 of the reasons). Indeed, when certain documents can be submitted after the payment of the fee, how do we know the amount of the fee to be paid (we are not talking about a refund of the fee, but rather a reduction, point 16 of the reasons)?

For the Enlarged Board, it is sufficient to file in their language the essential document of the first procedural act to benefit from the fee reduction (point 21):

• the request for examination for the examination fee (point 19 of the reasons),
• the notice of appeal for the appeal fee (and not the statement of grounds, point 24 of the reasons),
• etc.

This decision is, in principle, still valid with the EPC 2000, as A14 EPC and R6 EPC have evolved little on this point.

G7/91 – Withdrawal of the appeal

The decision G7/91 was issued on November 5, 1992.

It refers textually to the following decision, decision G8/91.

G8/91 – Withdrawal of the appeal

The decision G8/91 was issued on November 5, 1992.

In this case, an opponent had filed an appeal without the proprietor doing so, and then withdrew it… can the appeal procedure continue ex officio (somewhat like for the opposition R60(2) EPC73, point 6 of the reasons)?

Even if the non-continuation ex officio may leave « surviving » first instance decisions tainted with errors, the Enlarged Board of Appeal does not think it is useful to allow the boards of appeal to continue ex officio an appeal that has been filed.

Indeed:

• There is an opposition procedure open to all if a third party thinks there is an error in a decision (point 10.1 of the reasons)
• A priori, there are not so many errors in first instance (point 10.2 of the reasons);
• Although the office strives to grant valid titles free from defects, it is necessary to close the procedure at some point for the proper management of the office’s resources (point 10.3 of the reasons);
• National procedures to revoke a patent remain open (point 11.1 of the reasons);

This decision remains valid with the EPC 2000, as the principles of the appeal remain identical.

G9/91 – Competence to analyze the validity of claims

The decision G9/91 was issued on March 31, 1993.

Extent of the challenge

Can the opposition divisions or the boards of appeal analyze the validity of claims not attacked by an opponent or an appellant? Are they bound by the opponent’s declaration of R55 c) EPC73 (now R76(2) c) EPC)?

For the Enlarged Board, the applicant’s obligation to declare to what extent he wishes to challenge the patent (R55 c) EPC73) would be meaningless if this extent could be subsequently broadened (point 10 of the reasons).

Consequently, the opposition division or the board of appeal has no right to analyze unchallenged claims (point 11 of the reasons).

On the other hand, it is quite possible to analyze unchallenged dependent claims (point 11 of the reasons):

• if the independent « parent » claim has been challenged;
• if their validity is, prima facie, doubtful.

Grounds for the challenge

Is the reasoning the same for the grounds for the challenge? Are the opposition divisions or the boards of appeal bound by the opponent’s declaration?

For the Enlarged Board, A114 EPC73 allows the opposition division to examine ex officio certain grounds not raised, but this must remain exceptional, in particular if prima facie these grounds oppose, in whole or in part, the maintenance of the patent (point 16 of the reasons).

For the procedure before the boards of appeal, it is appropriate to apply the principle of A114 EPC73 in a much more restrictive manner, as it is a non-inquisitorial judicial procedure (point 18 of the reasons).

Thus, an argument not presented at the opposition stage by the opponent cannot be presented at the appeal stage (unless, of course, it is accepted by the proprietor, point 18 of the reasons).

G10/91 – Competence to analyze the validity of claims

The decision G10/91 was issued on March 31, 1993.

This decision reiterates the reasons of decision G9/91.

G11/91 – Correction of obvious errors

The decision G11/91 was issued on November 19, 1992.

This decision reiterated the substance of the reasons of G3/89 issued on the same day.

G12/91 – Final decision

The decision G12/92 was issued on December 17, 1993.

In this case, the facts were chronologically as follows:

• an opposition had been filed against a patent;
• the opposition division decides to reject the opposition and the three members of the division sign the form provided for this purpose;
• the proprietor proposes to combine claims 1 and 2;
• the form is submitted by the opposition division to the internal mail service without taking into account this last proposal.
• the form is sent by the internal mail service.
  

  

The question that arises then is to determine at what moment the internal decision-making process is completed.

The Enlarged Board recalls that, for an oral procedure (point 2 of the reasons), the internal decision-making process occurs at its pronouncement, i.e., at the end of the oral procedure. Indeed, the body that issued it can no longer revisit it (except in case of a preliminary ruling).

According to the Enlarged Board and for a written procedure, the end of the internal process cannot be:

• the date of sending the reasons by the internal mail service (point 6.2 of the reasons), as it does not reflect the date of the decision-making;
• the date of signature by the three members (point 7.1 of the reasons) as they can still revisit their decision if an important element is brought to their attention;
• the date of submission of the copy to the formalities section by the division for the purpose of service (point 8 of the reasons), as it cannot be determined from the file.

Thus, there remains only « the date of submission to the EPO’s internal mail service by the division’s formalities section » (point 9 of the reasons). This date can, in the opinion of the Enlarged Board, be very easily known from the file since, according to the President of the EPO, it is always three days prior to the stamped date.

G1/92 – Public accessibility of the composition or structure of a disclosed product

The decision G1/92 was issued on December 18, 1992.

The question that arose in this case was whether the composition of a product was accessible to the public by the mere fact that this product was accessible to the public (with analyses being necessary to find the composition)?

For the Enlarged Board, if the person skilled in the art manages to discover the composition or the internal structure of the product and to reproduce it without excessive difficulty, then the product and its composition or its internal structure are comprised in the state of the art (see point 1.4 of the reasons).

The EPC in no way provides that the person skilled in the art is encouraged to analyze the composition or the internal structure of a product, and it is therefore not possible to add this condition (point 2 of the reasons), especially since this condition would be subjective (point 2.1 of the reasons).

Thus, any disclosure of a product also discloses its composition or structure (provided that this discovery by the person skilled in the art does not present excessive difficulty).

This decision has no reason to have been challenged by the EPC 2000.

G2/92 – Non-payment of additional search fees and unsearched claims

The decision G2/92 was issued on July 6, 1993.

Imagine the following situation:

• an application is filed with two inventions present in the claims;
• a non-unity objection is raised at the search stage (A82 EPC73) and the search division requests the payment of an additional search fee (R46(1) EPC73);
• the applicant does not pay this search fee;

In this scenario, can the applicant request an examination on the second invention (which has not been searched)?

The Enlarged Board considers that (point 2 of the reasons), if despite the invitation from the search division, the applicant decides not to pay the new search fee, it will not be possible for them to subsequently make this invention the subject of the claims in their application.

Only a divisional application will be possible.

G3/92 – Unentitled Applicant

The decision G3/92 was issued on June 13, 1994.

A61(1) b) EPC73 provides, in particular, that in the case of an invention « stolen » by an unentitled applicant (e.g., filing by an employee when the invention belonged to the employer), the person from whom the invention was stolen can file a new application.

The question that arose was whether A61(1) b) EPC73 applied even if the application of the unentitled applicant was no longer pending (e.g., failure to file the examination request, omission of a fee, etc.). Indeed, the security of third parties would not be respected in this scenario, as they might legitimately believe that the invention subject to the patents is free.

For the Enlarged Board, if the procedure of A61 EPC73 was no longer applicable when the first application was no longer pending, this would amount to accepting that a court recognizes the right to a patent for a person, but that the EPO refuses such a right for reasons of internal procedures (point 5 of the reasons).

Therefore, there is no reason to refuse a person, who has been recognized as having a right to an invention by a national authority, the filing of an application under A61(1) b) EPC73 (point 5.2 of the reasons).

G4/92 – Basis of decisions and new arguments during oral proceedings

The decision G4/92 was issued on October 29, 1993.

In an inter partes procedure, if a party does not attend the oral proceedings, do they waive their right to be heard? Can new documents or new arguments then be cited against their application or patent?

In reality, this question is much broader because (point 3 of the reasons) it concerns the principle of the right to be heard when the reasons for the decision are given. Indeed, A113(1) EPC73 states « decisions […] may only be based on grounds on which the parties have had an opportunity to present comments. »

Thus, in order to respect the right to be heard, a decision cannot be based on:

• facts invoked for the first time during these oral proceedings;
• new evidence (which has not even been announced, point 9 of the reasons).

However, a decision can be based on:

• evidence announced prior to the oral proceedings (and which confirms the allegations of a party), but produced only during these oral proceedings;
• new arguments (point 10 of the reasons) insofar as they do not modify the grounds on which the decision is based (because it is only a new reasoning invoked in support of the legal and factual means already presented).

There is no reason to believe that the EPC 2000 has changed this decision.

G5/92 – Restitutio in integrum

Decision G5/92 was issued on September 27, 1993.

In this decision, the questions asked are substantially the same as those asked for G3/91, so we will not detail the reasons for the decision (they are therefore identical 🙂 ).

G6/92 – Restitutio in integrum

Decision G6/92 was issued on September 27, 1993.

In this decision, the questions asked are substantially the same as those asked for G3/91, so we will not detail the reasons for the decision (they are therefore identical 🙂 ).

G9/92 – Non-appealing party and reformatio in pejus

Decision G9/92 was issued on July 14, 1994.

In the event that a person files an appeal, can another party to the proceedings (a non-appealing opponent, the non-appealing proprietor, the board of appeal, etc.) request to modify, to the detriment of the appellant, the contested decision?

According to the Enlarged Board of Appeal, the board of appeal must base its decision ultra petita (i.e., without going beyond what is requested by the appeal).

Thus, if the proprietor is the sole appellant, the opponent or the board of appeal cannot request the rejection of a set of claims granted by the opposition division (point 14 of the reasons).

If the opponent is the sole appellant, the patent proprietor cannot incidentally extend the scope of their claims (point 16 of the reasons).

G10/92 – Divisional application and parent application about to be granted

Decision G10/92 was issued on April 28, 1994.

In this decision, the question arose of the deadline for filing a divisional application. In other words, until when is a parent application pending when the latter is about to be granted?

It should be noted that R25(1) EPC73 underwent many changes during the life of the EPC73. In this case, R25(1) read as follows at the time of this decision:

(1) The applicant may file a divisional application in respect of any pending earlier European patent application up to the time when he gives, in accordance with Rule 51, paragraph 4, his approval to the text in which it is intended to grant the European patent.

For the Enlarged Board of Appeal, there is therefore no difficulty of interpretation and if the applicant has given his approval to the text of the parent application, it is no longer possible to divide.

This decision is no longer relevant since the wording of R25(1) EPC73 (then of R36(1) a) EPC, today deleted) has been completely changed.

G1/93 – Restrictive feature, the « 123(2)-123(3) » pincer

The decision G1/93 was issued on February 2, 1994.

Imagine that during the examination, the proprietor adds a limiting feature to a claim. This feature is not, in reality, supported by the description.

Can the proprietor simply remove this feature during opposition?

The Enlarged Board points out that A123(2) EPC73 and A123(3) EPC73 are not interdependent provisions (point 13 of the reasons), a principle which would mean that one or the other provision should apply depending on the case. These provisions are indeed independent and both must apply in case of modification(s) of a patent.

Thus, if, due to the presence in the claims of a feature violating the provisions of A123(2) EPC73, a modification is considered, this modification must comply with A123(3) EPC73:

• the modification is refused if it extends the scope of the claims;
• the modification may be accepted if the modification consists in replacing the feature with a « more restrictive » and supported feature.

This decision remains relevant with the EPC2000, as A123(2) EPC and A123(3) EPC are identical.

G2/93 – Deposit of biological material and deposit number

The decision G2/93 was issued on December 21, 1994.

In certain applications, reference may be made to certain biological material not accessible to the public (R28(1) EPC73 or R31(1) EPC) provided that an indication of the depositary authority and the accession number of the deposited biological material is communicated within a 16-month period from the earliest priority.

The question was whether the provisions of A91 EPC73 (i.e., additional period to correct an irregularity, in particular for the production of priority documents R38(3) EPC73) could apply even though this article did not explicitly mention this case.

For the Enlarged Board, there is a fundamental difference between the requirement to provide the « accession number » (substantive condition for the sufficiency of disclosure) and the requirement to provide priority documents (formal condition). Thus, no analogy is possible.

In conclusion, the period set in R28(2) a) EPC73 is not extendable.

G3/93 – Opposability and validity of priority

The decision G3/93 was issued on August 16, 1994.

The question at issue was whether a document published during the priority period constitutes opposable prior art under A54(2) EPC73 to a European patent application when the priority claim (the application includes elements that were not disclosed in the priority document).

We recall that A87(1) EPC73 defines the right of priority. This right is granted, in accordance with the Paris Convention, for the same invention as that present in the priority document.

A89 EPC73 provides that, when an application validly claims a priority, the priority date is considered as the filing date of the European patent application for the application of A54(2) EPC73, A54(3) EPC73 (opposable state of the art), and A60(2) EPC73 (the right to the patent belongs to the first applicant).

Thus, if a priority is invalid, any intermediate disclosure becomes opposable (point 9 of the reasons).

G4/93 – Non-requesting party and reformatio in pejus

The decision G4/93 (available only in English) was issued on July 14, 1994.

This decision is the English « version » of the reasons G9/92.

G5/93 – Restitutio in integrum

The decision G5/93 was issued on January 18, 1994.

As you know, the decision G3/91 emphasized that the following deadlines do not benefit from restitutio in integrum (Euro-PCT application):

• payment of the search fee (A157(2) b) EPC73) within 31 months from the filing of the earliest priority (R107(1) e) EPC73);
• payment of the national fee (covering the designation fees, A158(2) EPC73) within 31 months from the filing of the earliest priority (R107(1) d) EPC73);
• filing of the request for examination (A150(2) EPC73) within 31 months from the filing of the earliest priority (A39.1.b PCT).

The Enlarged Board confirms its analysis but notes that the EPO itself had published contrary information in the « Notice to PCT Applicants » (OJ EPO 1991, 333). In this notice, it stated that « in the event of loss of a right [due to non-payment of the basic national fee, designation fees, search fee and claim fees], the applicant may, under Article 122 EPC, be reinstated in that right » (point 2.1 of the reasons).

Thus, it would be inequitable if A122 could not be used in such cases at least until the date on which the decision G3/91 was made accessible to the public (point 2.3 of the reasons).

Consequently, the Enlarged Board indicates that restitutio in integrum is indeed not possible for the aforementioned deadlines except if the request for restitutio was filed before the decision G3/91 was made accessible to the public.

G7/93 – Late amendments, after agreement on the text for grant

The decision G7/93 was issued on May 13, 1994.

If an applicant gives their agreement under R51(4) EPC73 (now R71(3) EPC), can they, before the final decision to grant, request an amendment to the claims and withdraw their agreement on the previously approved text?

For the Enlarged Board, A113(1) EPC73 does not give any particular right to the applicant regarding their agreement (no right to amendment in particular), but rather prohibits the EPO from taking a decision on an application text other than « the text proposed or agreed by the applicant or by the patent proprietor » (point 2.1 of the reasons).

In this case, the Enlarged Board emphasizes that R86(3) EPC73 (now R137(3) EPC) gives the EPO discretionary power to accept the amendments proposed by the proprietor during the examination (point 2.3 of the reasons). However, this discretionary power must be exercised with a constructive objective. Thus, both the following must be taken into account (point 2.5 of the reasons):

• the interest of the applicant in obtaining a legally valid patent in all designated states, and
• the interest of the EPO in concluding the examination procedure by deciding to grant the patent.

Thus, it is possible for the EPO to override the « withdrawal » of the applicant’s agreement if the EPO has invited the applicant to pay the grant and printing fees and to file the translation of the claims, and not to take into account the proposed amendments. However, it may also take these amendments into account if it finds them relevant.

This decision was probably challenged by the new wording of R71(3) EPC: indeed, the terms of the applicant’s agreement on the text have changed significantly. However, the withdrawal of this agreement seems to remain the same: the EPO would retain full discretion on the consideration of new claims once this agreement is given.

G8/93 – Withdrawal of the appeal by the appellant and closure of the appeal procedure

The decision G8/93 was issued on June 13, 1994.

What happens if an opponent, the sole appellant, withdraws their appeal? Is the opposition procedure automatically closed or can the opposition division continue this opposition under A114(1) EPC73, particularly if it considers that serious grounds justify the revocation or limitation of the patent?

The Enlarged Board first emphasizes that it is not possible to « withdraw the opposition » at the appeal stage: only the withdrawal of the appeal is possible (the question referred by the board of appeal mixed these concepts, point 2 of the reasons).

Finally, the Enlarged Board confirms its decision G8/91 and indicates that it is not permitted for the boards of appeal to continue an appeal ex officio if a withdrawal of the appeal is made by the sole appellant, regardless of the patent proprietor’s opinion.

G9/93 – Opposition by the proprietor

The decision G9/93 was issued on July 6, 1994.

As in decision G1/84, the question arose as to the legality of the proprietor’s opposition to their own patent. This question arose because the Enlarged Board had considered in decision G9/91 that its analysis of the basis of the opposition procedure was incorrect in decision G1/84 (see point 2 of the reasons):

one may question the correctness of the statement, at least as a generalization, made by the Enlarged Board of Appeal in case G1/84 (OJ EPO 1985, 299, point 4 of the reasons: « … it would be wrong to consider (the opposition procedures provided for by the EPC) as essentially contentious procedures that oppose parties in conflict [… ] ». […]

In any case, the Enlarged Board of Appeal, in its current composition, considers that the post-grant opposition procedure provided for by the EPC must in principle be considered as a contentious procedure between parties normally defending opposing interests, and to whom fair treatment must be accorded.

Thus, did the grounds of the reasons in G1/84, which allowed for self-opposition, remain applicable?

The answer is no! (point 5 of the reasons)

For the Enlarged Board, the « any person » of A99(1) EPC73 should be interpreted in light of the purpose of the procedure (point 3 of the reasons). In particular, the argument of the effort that the EPO must make to « grant and maintain only valid patents » does not seem sufficient (point 4.2 of the reasons).

The absence of limitation (at the time), if it is a problem, should rather be resolved by the legislator and not by legal artifices of interpretation (point 4.1 of the reasons).

G10/93 – Scope of examination and ex-parte appeal procedure against a decision refusing an application

The decision G10/93 was issued on November 30, 1994.

During an appeal against a decision of refusal in examination, does the board of appeal re-perform a complete analysis of patentability or does it limit itself to the grounds for refusal of the first instance (i.e., without re-analyzing the validity conditions that the examining division considered as fulfilled)?

The Enlarged Board first notes that, for an inter-parte procedure, the limited consideration of new grounds was justified by the contentious procedure (point 2 of the reasons) and by the judicial nature of this appeal.

On the contrary, the ex-parte procedure is an administrative procedure and therefore more inquisitorial (point 3 of the reasons). Thus, the boards of appeal can take into account new grounds, new evidence, or new facts.

However, it is not necessary to perform a complete examination (point 4 of the reasons), as this falls within the competence of the examining divisions. If the board of appeal believes that a patentability condition is not met, it can:

• introduce it into the appeal procedure;
• ask the examining division to study the question.

This principle does not violate the non reformatio in pejus (point 6 of the reasons), as no decision can be worse than the refusal of the application.

G1/94 – Intervention in an appeal procedure

The decision G1/94 was issued on May 11, 1994.

A105 EPC73 provides that an alleged infringer may intervene in an opposition. But can they do so during an appeal procedure on opposition (which has a different legal nature from the opposition procedure: judicial and not administrative G8/91!)? Can the intervener raise any ground for opposition or are they bound by those already presented?

In a previous decision (G4/91), the Enlarged Board of Appeal had simply stated that if none of the parties to the opposition procedure filed an appeal on opposition, any intervention would remain without effect (point 1 of the reasons).

Referring to the preparatory work of the EPC (point 8 of the reasons), the Enlarged Board emphasizes that the discussions between the contracting states wished to include the appeal within the scope of A105 EPC73 and had even adopted R57(4) to moderate some negative effects through R57(4) EPC73.

The Enlarged Board thus confirms that the expression « opposition procedure » of A105(1) EPC73 should be understood as also covering the appeal procedure on opposition (point 10 of the reasons).

Furthermore, the Enlarged Board emphasizes that the intervener in such an appeal procedure can present all the grounds, arguments, or evidence they wish, even if these have not previously been invoked (point 13 of the reasons): in this hypothesis, a referral back to the first instance may be possible. Indeed, preventing the intervener from using these means of defense (knowing that they are accused of infringement) would be contrary to the purpose of the intervention.

G2/94 – Speaking before the board of appeal and ex-parte procedure

The decision G2/94 was issued on February 19, 1996.

In this case, an authorized representative had requested a board of appeal to allow a former member of the board (in this case, a former president who had ceased their functions two years previously).

What are the rules governing the speaking by a non-representative? In particular, if they are a former president?

Firstly, the Enlarged Board refers to the decision G4/95 (which was issued earlier) regarding the speaking by an assistant (point 1 of the reasons). Although the decision G4/95 applies to an opposition procedure, the principles remain the same for an ex-parte procedure: the board has full discretion to authorize it if they wish.

However, to authorize an intervention by an intervener, the board must be informed sufficiently in advance, indicating the name, status, and subject to be addressed by the intervener (point 2 of the reasons).

If the intervention is authorized, the assistant then makes their oral presentation under the permanent responsibility and control of the authorized representative (point 3 of the reasons).

Regarding the speaking by a former member of the board, there is no rule formally prohibiting them: it is therefore necessary to be careful to avoid, at least, an « appearance of favoritism » (point 4 of the reasons) concerning simple speeches. Thus, the boards of appeal have (in the absence of other rules) discretion to determine from when a former member can speak before the board (point 7): a priori, 3 years should be a good compromise (point 8).

G1/95 – Number of opposition grounds of A100 a) EPC73

The decision G1/95 was issued on July 19, 1996.

In this case, the Board of Appeal had rejected an application on the grounds that the claimed subject-matter lacked industrial application and was not an invention (A52(1) EPC73 and A52(2) EPC73). However, the opposition filed only mentioned novelty (A54 EPC73) and inventive step (A56 EPC73).

In reality, all the previous articles are mentioned under a single bullet point of A100 EPC73 (listing the possible grounds for opposition):

a) the subject-matter of the European patent is not patentable under Articles 52 to 57;

The question therefore arises: is A100 a) EPC73 a single ground or several grounds (point 2 of the reasons)?

For the Enlarged Board of Appeal, the bullet point a) of A100 EPC73 can only contain a single ground, because the « legal bases » for novelty, inventive step, etc. are different (point 4 of the reasons).

Consequently, the Board of Appeal cannot introduce a new ground (as indicated by decision G9/91) not raised by the opponent, even if this ground is industrial application and the opponent had invoked novelty or inventive step.

G2/95 – Replacement of the entire application due to error

The decision G2/95 was issued on May 14, 1996.

Imagine that an applicant files a first application in France, then files a second EP application claiming priority from the French application. The filing of this second application is completely botched and the description filed does not correspond at all to the invention of the first application (don’t laugh… it happens).

Is it possible, under an error correction according to R88 EPC73, to replace all the parts of an application with other parts (i.e., those that the applicant would have actually wanted to file)?

The Enlarged Board of Appeal recalls that the provisions of A123(2) EPC73 take precedence over the provisions of R88 EPC73 (point 2 of the reasons). Thus, due to the prohibition of extending the subject-matter of an application, it is only possible to use documents other than the description, claims and drawings or documents that confirm the general knowledge of the person skilled in the art at the filing date as set by A80 EPC73 (G3/89): it is therefore not permitted for a correction to use other documents, even if they were produced during the filing of the European patent application, whether they are in particular priority documents, the abstract, etc. (G3/89).

So no! it is not possible…

G3/95 – Inadmissible referral

The decision G3/95 was issued on November 27, 1995.

It is not very interesting, because the question raised by the President was deemed inadmissible, the cited decisions not being contradictory.

G4/95 – Speaking in oral proceedings by a person other than the representative

The decision G4/95 was issued on February 19, 1996.

The question at issue was whether a third party (other than the representative) could speak during oral proceedings in opposition.

The Enlarged Board saw no objection to this but set conditions for this practice, regardless of who is speaking: the relevant body must give its consent, which is granted at its discretion.

The main conditions for this consent are:

• authorization must be requested and must include the name and qualifications of the person wishing to speak and specify the purpose of the oral presentation;
• this authorization must reach the EPO sufficiently early before the oral proceedings: the opposing parties must be able to prepare their response to this presentation. Otherwise, the authorization must be refused (unless the opposing parties agree) (point 10 of the reasons);
• speaking is done under the permanent responsibility and control of the authorized representative (point 8 of the reasons).

Although this decision mainly applies to opposition or appeal on opposition (inter partes procedure), there is no reason why it should not apply ex parte, as pointed out by decision G2/94 (issued later).

G6/95 – Application of R71 bis to the Boards of Appeal

The decision G6/95 was issued on July 24, 1996.

In this case, the Administrative Council of the EPO had added a rule R71bis EPC73 under the powers conferred by A33(1) b) EPC73. R71bis(1) EPC73 provides for a notification, sent at the same time as the summons to oral proceedings, detailing the necessary issues to be examined.

However, a Board of Appeal was surprised by this new article (not so much on the substance, but on the form): the Administrative Council did amend the regulation based on A33(1) b) EPC73 (general power), but it seems to conflict with the Rules of Procedure of the Boards of Appeal (or RPBA, which it itself adopted under A23(4) EPC73, special power), since R11(2) of the RPBA does not mandatorily provide for such notification (only the possibility).

In short, the Board of Appeal is a bit lost… What should be applied?

The Board of Appeal emphasizes that the RPBA does not have to « always conform to the current version of the Implementing Regulations » (point 2 of the reasons). Indeed, the Administrative Council cannot amend the Implementing Regulations (i.e., introduction of R71bis(1) EPC73) in such a way that the effect of an amended rule is in contradiction with the EPC itself (i.e., the validation of the RPBA, the articles being superior to the rules, A164(2) EPC73, point 4 of the reasons).

Thus, R71bis(1) EPC73 cannot apply to the Boards of Appeal, otherwise we would be in the midst of the contradiction mentioned below (point 5 of the reasons).

G7/95 – Challenging novelty in opposition when the ground raised is inventive step

The decision G7/95 was issued on July 19, 1996.

In reality, this decision was issued on the same day as decision G1/95 (on the number of grounds under A100 a) EPC73) and shares largely the same reasoning.

Here, the Enlarged Board indicates that, nevertheless, although inventive step and novelty are two distinct grounds, it is possible to challenge novelty of the invention without having explicitly raised it (by having only raised inventive step) provided that this novelty is analyzed in relation to the closest prior art document.

G8/95 – Correction of a decision to grant and competence of legal/technical boards of appeal

The decision G8/95 was issued on April 16, 1996.

If a « request for correction of the reasons for the decision to grant » (R89 EPC73) is filed by the proprietor and the Examination Division has refused to allow it.

The question was which board of appeal was competent (technical or legal). Does this depend on the subject of the appeal?

The Enlarged Board recalls that the competence of the boards of appeal against decisions of the examining division is defined by A21(3) EPC73 (point 2 of the reasons). Letter a) indicates that the technical board is competent when the contested decision is « relating to […] the grant of a European patent« .

The question is therefore whether the decision on a request for correction of the reasons for the decision to grant « relates to » the decision to grant.

The Enlarged Board notes (point 3 of the reasons) that appeals against decisions to grant aim to obtain what has been refused (A113(2) EPC73), and therefore aim to correct a substantive error: this is why an appeal is possible (A107 EPC73). The « request for correction of the reasons for the decision to grant » (R89 EPC73) also aims to modify a decision, but this concerns a formal error (point 3.2 of the reasons).

Even if it only addresses the form, it is clear that a request for correction of the reasons for the decision to grant is indeed related to the grant of the patent (point 3.3 of the reasons): consequently, the technical board of appeal is indeed competent (point 6 of the reasons)!

G1/97

The decision G1/97 was issued on December 10, 1999.

Appeal on an appeal / request for review

Following a decision of rejection by a board of appeal, an applicant had filed an appeal against this decision, indicating that the decision of revocation had been taken by a board exercising the powers of the opposition division in accordance with A111(1) EPC73 and that, therefore, its decision was subject to appeal.

However, the Enlarged Board does not agree: the decisions of the boards of appeal become final as soon as they are issued, an appeal under A106 EPC73 against these decisions is therefore excluded (point 2.a of the reasons). A111(1) EPC73 does not oblige the boards of appeal to refer cases back to the first instance so that the parties retain a right of appeal: the boards of appeal retain discretionary power to reform decisions.

Such an appeal must be declared inadmissible by the board of appeal that issued the decision whose review is requested: the decision of inadmissibility can be issued immediately without procedural formalities.

A122 and A121 allowing the correction of a violation of a fundamental procedural principle

In addition, the applicant had filed requests for restitutio in integrum (A122 EPC73) and for continuation of the procedure (A121 EPC73). Indeed, he argued that he had not had the opportunity to file additional sets of claims despite all the attention he had paid to the case, because the board of appeal had never indicated its intention to reject.

This reasoning is not possible for the Enlarged Board, because these two articles require the failure to meet a time limit, which is not the case in the present situation (point 2.b of the reasons).

R89 allowing the correction of a violation of a fundamental procedural principle

The applicant had also argued that a review of the reasons was possible based on R89 EPC73 (same arguments as above).

The Enlarged Board indicates that R89 EPC73 allows for formal errors in decisions, but not substantive errors (point 2.c of the reasons).

Court of Cassation

CJEU

The applicant also argued that the preparatory work of the convention showed that the CJEU should be referred to in case of a fundamental violation of the procedure.

The Enlarged Board of Appeal does not share this opinion. On the contrary, the referral to the CJEU was abandoned by the legislator in favor of the Enlarged Board of Appeal, which should suffice as a regulatory body (point 2.e of the reasons).

Creation of a specific path

Furthermore, as the vast majority of the countries of the convention provide for a possible cassation in case of a fundamental violation of the procedure, the applicant argued that A125 EPC73 provides the legal basis for such a cassation in the EPC system:

In the absence of procedural provisions in this Convention, the European Patent Office shall take into account the principles of procedural law generally recognized in the Contracting States.

The Enlarged Board does not believe that this article is sufficient: indeed, it refers to « principles » and would not allow the complete creation of a specific path for cassation (points 3.a to 3.d of the reasons).

Contradiction with TRIPS

The applicant argued that, if no means of cassation were possible, Article 32 TRIPS (which is superior to the convention) would be violated:

Judicial review of any decision to revoke or forfeit a patent shall be available.

The Enlarged Board of Appeal does not share this view, as Article 62(5) TRIPS (specific rule for administrative decisions, unlike Article 32 TRIPS, which applies to all decisions, see point 5.d of the reasons) is actually the applicable article in this case:

Final administrative decisions in any of the procedures referred to in paragraph 4 shall be subject to review by a judicial or quasi-judicial authority. However, there shall be no obligation to provide an opportunity for review of decisions in cases of unsuccessful opposition or administrative revocation, provided that the grounds for these procedures can be the subject of invalidation proceedings.

Indeed, an administrative decision (here the decision of the opposition division), which maintains a patent, can be subject to review (here an appeal) by a judicial or quasi-judicial authority (here an appeal board). Nothing indicates that Article 32 TRIPS must apply to the review decision (otherwise, appeals would be nested endlessly…).

G2/97 – Principle of good faith and failure to pay the appeal fee

The decision G2/97 was issued on November 12, 1998.

If the appellant does not pay the appeal fee, does the principle of good faith require the EPO to warn the « potential appellant » of their oversight?

According to the Enlarged Board (point 4.1 of the reasons), the « protection of the legitimate expectations of users of the European patent system » requires that the EPO notify the applicant of any (potential) loss of rights if the applicant can expect to receive such notice.

For example, if the EPO receives a letter stating « you will find enclosed a check » and no check is present, the EPO must notify this potential irregularity. Similarly, if the applicant’s request is unclear, the EPO must ask the applicant to clarify their request.

But this principle does not go further: the EPO has no obligation to warn the applicant if there is no reason to doubt.

G3/97 – Opposition and « straw man »

The decision G3/97 was issued on January 21, 1999.

The question at hand was whether the use of a « front man » (commonly referred to as a « straw man ») was an acceptable practice in opposition proceedings to conceal the true opponent?

The Enlarged Board points out that the notion of a « true opponent » is legally absurd, as any third party may file an opposition and the notion of an opponent is a procedural one (point 2.1 of the reasons). Thus, the Enlarged Board decided that an opposition is not inadmissible solely on the ground that the opponent is a straw man.

However, it is clear that this practice constitutes a circumvention of the law:

• The opponent acts on behalf of the proprietor of the patent (circumvention of the principle set out in G9/93, point 4.1 of the reasons);
• The opponent acts on behalf of a client in the context of activities that, as a whole, are characteristic of those of a professional representative, without possessing the qualifications required by A134 EPC73 (point 4.2.1 of the reasons).

This does not prevent the following situations:

• A professional representative acts in his own name on behalf of a client (point 4.2.2 of the reasons);
• An opponent having his domicile or headquarters in a state party to the EPC acts on behalf of a third party who does not meet this condition (point 4.2.3 of the reasons).

When determining whether there is an abusive circumvention of the law, the principle of free evaluation of evidence should be applied: this evidence must be provided by the party invoking inadmissibility, it must be clear and unambiguous.

G4/97 – Opposition and « straw man »

The decision G4/97 was issued on January 21, 1999.

It reiterates the same reasons and decisions as decision G3/97.

G1/98

The decision G1/98 was issued on December 20, 1999.

Claims encompassing a plant variety

In this case, the board of appeal did not know whether it should reject a claim for a « transgenic plant » knowing that:

• This claim in fact encompassed certain specific plant varieties (but without claiming them individually);
• A53 b) EPC73 prohibits claims for « plant varieties ».

We recall that a plant variety is (point 3.1 of the reasons) a plant grouping within a single botanical taxon of the lowest known rank which can be:

• Defined by the expression of the characteristics resulting from a certain genotype or a certain combination of genotypes,
• Distinguished from any other plant grouping by the expression of at least one of said characteristics and
• Considered as a unit with regard to its ability to remain true to type.

For the Enlarged Board (point 3.1 of the reasons), the board of appeal confuses the scope and the subject matter (i.e., the underlying invention) of the claim. Only claims whose subject matter is a plant variety are prohibited: the prohibition of A53 b) EPC73 is a prohibition on the subject matter of the claims and not on their scope.

Indeed, the prohibition concerning the scope seems excessive, because if we used similar reasoning with the provisions of A53 a) EPC73, a photocopier could be excluded from patentability (e.g., photocopying of banknotes, etc.).

Furthermore (point 3.4 of the reasons), the Enlarged Board recalls that this prohibition was created to avoid double protection (by patent and by the plant breeder’s right of the UPOV Convention). If this prohibition is rather administrative, the 1991 UPOV Convention no longer prohibits double protection. In any case, this history advocates for a strict interpretation of A53 b) EPC73 to avoid unduly reducing the scope of patentability (point 3.10 of the reasons).

Product obtained by a process for obtaining a plant variety

The question also arose as to whether a claim for obtaining a plant variety should be excluded because of A64(2) EPC73. This article provides that products resulting from a process are also protected by such a claim, which would indirectly amount to protecting plant varieties, which are excluded by A53 b) EPC73.

For the Enlarged Board of Appeal (point 4 of the reasons), there is no problem, because the protection thus granted to the products is not as broad as that granted by a product claim as such. Indeed, the protected product is in reality a « product by process » characterized by its method of manufacture.

Thus, A64(2) EPC73 is inoperable for analyzing the patentability of a claim.

G2/98 – Priority and conditions for being in the presence of the « same invention »

The decision G2/98 was rendered on May 31, 2001.

The president requested some clarifications on the notion of « same invention ».

First, the Enlarged Board of Appeal notes that the EPC (A87 EPC73 and A88 EPC73 in particular) constitutes a « special arrangement » within the meaning of the Paris Convention (provided for by A19 Paris Convention) and therefore must comply with this convention (point 3 of the reasons).

In particular, A88(2) EPC73, first sentence, and A88(3) EPC73 correspond to A4F of the Paris Convention, and A88(4) EPC73 corresponds almost word for word to A4H of the Paris Convention (point 6.1 of the reasons).

In reality, for the interpretation of « same invention », it is possible to have several interpretations (with E being the European application claiming the priority of application P):

• a strict interpretation: if object A is claimed in application E, then the priority is valid if A is disclosed alone in P. If the object A+B is claimed in application E, then the priority is invalid if A+B is not disclosed as such in P.
• a broad interpretation: If the object A+B is claimed in application E, then the priority may be valid if A is disclosed alone in P, but B is unrelated to the function and effect of A, and consequently to the nature of A.

In the case of a strict interpretation, the « same invention » of A87(1) EPC73 corresponds to the notion of « same object » of A87(4) EPC73. This strict interpretation is perfectly in line with A87(4) EPC73 or A88(2) EPC73 to A88(4) EPC73 (point 6.8). (point 6.8).

In the case of a strict interpretation, there are more difficulties. Indeed:

• A54(3) would be meaningless… (point 8.1 of the reasons)
• the notion of first application (A87(4) EPC73) would become more complex to grasp (point 8.2 of the reasons): indeed, if an applicant files A+B then A+B+C, one would have to wonder if C would not be a non-essential characteristic before determining if A+B+C is a first application (and therefore the priorities invoking it could be invalid).
• the notion of first application (A87(4) EPC73) would become subjective (point 8.3 of the reasons): depending on the cited documents, certain characteristics may become non-essential or participate in different technical problems;

As a result, a strict interpretation must be applied: « same invention » means that a claim in a European patent application should only be considered to benefit from priority if a person skilled in the art can, using their general knowledge, directly and unambiguously derive the subject matter of that claim from the previous application considered as a whole.

G3/98 – 6-month period and non-prejudicial disclosures in case of abuse against the applicant

The decision G3/98 was issued on July 12, 2000.

A55(1) EPC73 provides a kind of « grace period » for filing an application in the event of disclosures resulting from abuse against the applicant (e.g., theft, violation of an NDA, etc.).

The question was whether this period should be calculated:

• from the priority date (i.e., taking into account A89 EPC73)
• or from the date on which the European patent application was actually filed.

First, no reference to A55 EPC73 can be found in A89 EPC73, whereas the latter mentions many other articles (point 2.1 of the reasons).

Furthermore, A55(1) EPC73 does not speak of « filing date, » but of « filing » (which is more the act, rather than a date that may be different from the date of the act) (point 2.2 of the reasons). The importance of the term « filing » is reinforced by its use in A55(2) EPC73, a use that leaves no doubt as to the difference with the expression « filing date » (point 2.3).

Moreover, the preparatory work shows (point 2.4 of the reasons) that initially the expression used was indeed « filing date, » but that this was amended at the request of the Dutch delegation in order to clearly indicate that the date on which the patent application was actually filed should be understood.

In conclusion, the decisive date for calculating the six-month period is therefore the date on which the European patent application was actually filed (without taking into account any priorities).

G4/98 – Retroactivity of designation and non-payment of designation fees

The decision G4/98 was rendered on November 27, 2000.

In this referral by the President, the question arose of the effect of non-payment of designation fees… Indeed, both the filing date and the list of designated countries could be affected, and it is important to understand this point.

In reality, A91(4) EPC73 provides that the designation of a country is « deemed to be withdrawn » if the corresponding designation fee is not paid (point 3.1 of the reasons). The preparatory work clearly shows that the non-payment of designation fees has no effect on the filing date (A90 EPC73).

When the EPC wishes to indicate retroactivity, it uses, in the opinion of the Enlarged Board (point 3.2 of the reasons), the terminology « deemed not to have been made » or « deemed not to have been filed » (cf. A94(2) EPC73 for examination, A99(1) EPC73 for opposition, A108 EPC73 for appeal and A136(1) EPC73 for a conversion) rather than « deemed to be withdrawn ».

Furthermore, decision G1/90 (point 6) had already indicated that « deemed to be withdrawn » meant that the loss of rights occurred at the end of the period in question (point 3.3 of the reasons). A different interpretation of the same expression in the EPC would be dangerous.

Retroactivity could have the following effects (point 5 of the reasons) :

• loss of the filing date (which would be contrary to A4A(3) Paris Convention, as this condition is not a condition for having a regular national filing) ;
• retroactive destruction of divisional applications stemming from this application since this application did not exist on the date of filing of the divisional application (which would be contrary to the principle of independence of applications) ;
• retroactive destruction of conversions.

Thus, in the opinion of the Enlarged Board, the non-payment of designation fees cannot have a retroactive effect concerning the list of designated countries (point 6 of the reasons).

The Enlarged Board notes that there are mechanisms for extending time limits (R85 EPC73). Nevertheless, non-designation does not take effect at the end of the extended period, but rather at the end of the « normal » period (point 7.2 of the reasons) !

G1/99 – Exceptions to the principle of non reformatio in pejus

The decision G1/99 was issued on April 2, 2001.

In this case, an opponent was the sole appellant and challenged the decision to maintain the patent in an amended form. The patent had been amended in opposition by adding a feature.

Is it possible for the proprietor to delete this feature during the appeal (in violation of the principle of non reformatio in pejus, since the scope is increased) if this feature poses a problem for the patentability of the patent?

It is recalled that decision G9/92 (or G4/93, which is its English version) deals precisely with reformatio in pejus, an unwritten jurisprudential principle (point 6 of the reasons) derived from the principle of ultra-petita judgment.

An exception to this principle may be made in order to respond to a newly raised objection during the appeal procedure, if the patent as maintained in amended form would otherwise have to be revoked, this revocation being the direct consequence of an inadmissible amendment (A123(2) EPC73) which the opposition division had allowed.

In such circumstances, the patent proprietor may be authorized, in order to remedy this situation, to submit the following requests, in the following order:

• amendments aimed at limiting the scope of the patent as maintained (and which are not contrary to A123(2) EPC73);
• amendments aimed at extending the scope of the patent as maintained (but within the limits of A123(3) EPC73);
• deletion of the inadmissible amendment (but within the limits of A123(3) EPC73).

G2/99 – Six-month period and non-prejudicial disclosures in case of abuse against the applicant

The decision G2/99 was issued on July 12, 2000.

This is the same decision as decision G3/98 (German version).

G3/99 – Admissibility of joint opposition

The decision G3/99 was issued on February 18, 2002.

In this case, several parties had filed a joint opposition and had paid only one opposition fee. Is this practice acceptable?

For the Enlarged Board, there is no reason to reject this practice as long as the formal requirements are met (i.e. the requirements of A99 EPC73 and R55 EPC73) (points 9 and 10 of the reasons).

In the case of a joint opposition, it is the common representative designated in accordance with R100 EPC73 who must file the appeal (otherwise, the board must consider that the appeal is not duly signed and must invite the common representative to sign it within a given period). The unauthorized person who initially filed the appeal must be informed. If the former common representative no longer participates in the procedure, a new common representative must be designated in accordance with R100 EPC73 (points 14 and 20 of the reasons).

If one of the co-opponents withdraws from the procedure, the EPO must be informed by the common representative for this withdrawal to take effect (point 19 of the reasons).

G1/02 – Competence of the formalities officers

Decision G1/02 was issued on January 22, 2003.

In this case, an opposition fee had been paid after the deadline set by A99 EPC73 and the formalities officer had issued a decision declaring the opposition inadmissible (following a notification of loss of rights and a request for a decision under R69(2) EPC73).

This decision was made by the formalities officer in accordance with the communication from the Vice-President in charge of Directorate General 2 dated April 28, 1999 (p507, point 4 and point 6) and « aiming to entrust the formalities officers with certain tasks normally incumbent on the opposition divisions of the EPO ».

For the Enlarged Board of Appeal, R9(3) EPC73 does indeed allow the President of the Office to delegate certain tasks to EPO officers who are not qualified as lawyers or engineers (point 3 of the reasons). Furthermore, A10(2) i) EPC73 allows the President to delegate his powers, in particular to his Vice-Presidents, if he so wishes (point 3.2 of the reasons).

For the Enlarged Board of Appeal, there is no « particular technical or legal difficulty » that would prevent such delegation to formalities officers (point 6 of the reasons).

Consequently, the authorized delegations are not contrary to the provisions of the EPC.

G2/02 – Priority of an application from a non-Paris Convention country, but under the TRIPS Agreement

Decision G2/02 was issued on April 26, 2004.

In this case, an applicant sought to claim an Indian priority, knowing that at the date of filing of the Indian application, India was not a member of the Paris Convention, but was a member of the TRIPS Agreement (note, the EPO is not a member of the TRIPS Agreement, but only a member of the Paris Convention).

Although the content of the Paris Convention and the TRIPS Agreement is substantially identical regarding priorities, A87(1) EPC73 is clear (point 2 of the reasons): priority is only possible for members of the Paris Convention. Any attempt to modify or broadly interpret this point would in fact amount to substituting oneself for the legislator, who alone has the power to correct this error (points 8.3 and 8.6 of the reasons).

Although the provisions of A87(5) EPC73 allow for « ad-hoc » and reciprocal priority, no communication from the Administrative Council has ever validated this priority with India (point 3.2 of the reasons).

This decision is no longer relevant, as A87(1) EPC has changed and now mentions « members of the World Trade Organization » (all of which have ratified the TRIPS Agreement).

G3/02 – Priority of an application from a non-Paris Convention country, but under the TRIPS Agreement

Decision G3/02 was issued on April 26, 2004.

This decision is identical to decision G2/02.

G1/03 – Disclaimers

The decision G1/03 was issued on April 8, 2004.

The question at issue was whether a disclaimer could be allowed, even if it was not supported by the description (A123(2) EPC73).

A « disclaimer » is understood to be an amendment made to a claim with the effect of introducing a « negative » technical feature into the claim, which normally excludes from a general feature specific embodiments or particular areas (point 2 of the reasons).

A disclaimer may be allowed if it aims to:

• restore novelty over prior art A54(3) EPC73 and A54(4) EPC73 (thus today A54(3) EPC only);
• restore novelty over an accidental disclosure A54(2) EPC73 (i.e., if it is so unrelated to and remote from the claimed invention that the skilled person would never have taken it into consideration) (point 2.3.4 of the reasons); and
• exclude subject matter that falls under an exception to patentability under A52 EPC73 to A57 EPC73 for non-technical reasons (point 2.4.3 of the reasons, indeed, and notably for the PCT, knowledge of all the exclusions can be complex for the applicant).

A disclaimer must not remove more than is necessary.

If a disclaimer is relevant to the assessment of inventive step or sufficiency of disclosure, then it is contrary to A123(2) EPC73 (point 2.6.1 of the reasons).

G2/03 – Disclaimers

The decision G2/03 was issued on April 8, 2004.

This decision is identical to decision G1/03.

G3/03 – Refund of the appeal fee and interlocutory revision

The decision G3/03 was issued on January 28, 2005.

R67 EPC73 provides that in the case of interlocutory revision, the appeal fee may be refunded by the department whose decision was appealed. But can it reject this refund?

First, the Enlarged Board notes (point 2 of the reasons) that the interlocutory revision allows the refund (if « the refund is equitable by reason of a substantial procedural violation« ), but the department whose decision was appealed cannot reject this refund nor declare it inadmissible or unfounded (A109(1) EPC73 and A109(2) EPC73).

Of course, it is necessary that the appellant requests this refund for it to be granted (point 3 of the reasons).

From the point of view of procedural efficiency (point 3.4.3 of the reasons), the Enlarged Board thinks that it is preferable to let the board of appeal decide on the rejection or not of the request for refund, even if the department whose decision was appealed has granted it by way of interlocutory revision.

Thus, the first instance department whose decision was appealed does not have the power to reject the request for refund of the appeal fee. The board of appeal is competent (in the composition defined by A21 EPC73, as if it had not been granted by way of interlocutory revision).

G1/04 – Diagnostic method

The decision G1/04 was issued on December 16, 2005.

The reason for this referral was « simply » the lack of clarity in the prohibition of A52(4) EPC73 (now A53 c) EPC): but what exactly is « a diagnostic method« ?

After extensive developments, the Enlarged Board indicates that a claim comprising ALL of the following features is excluded:

• the deductive decision phase in medicine, as a purely intellectual activity (point 5.2 of the reasons),
• the preceding steps that are constitutive of making this diagnosis (point 5.3 of the reasons), and
• the specific interactions « applied to the human or animal body » (without condition of type or intensity, i.e. simply requiring the presence of the body) that occur when implementing those of the preceding steps that are of a technical nature.

If a step is missing, it is, at most, only data processing (point 6.2.2 of the reasons) or data acquisition.

It is irrelevant to know, to determine if a process should be excluded under the « diagnostic method, » whether a practitioner participates or must participate in the operations (presence or responsibility, point 6.1 of the reasons).

G2/04

The decision G2/04 was issued on May 25, 2005.

Transfer/assignment of an opposition

As in the decision G4/88, a board of appeal asked whether an opposition could be freely assigned. For the referring board of appeal, the decision G4/88 did not apply to the case of an assignment of a 100% owned subsidiary, given that the opposition had been initiated by the parent company.

For the Enlarged Board (point 2.1.1 of the reasons), the decision G4/88 did not rule on whether an opposition could be assigned. However, the decision G3/97 (point 2.2 of this decision) did state that an assignment of an opposition was not free.

It is clear that (point 2.1.2 of the reasons) the status of a proprietor is accessory to a patent. Nevertheless, one cannot treat the proprietor and the opponent in the same way, as the legal situations are different: the opposition is an action without title and is therefore not accessory to any entity.

In the decision G4/88, the Enlarged Board validated the transfer of the status of opponent during the transfer of part of the economic activities of a company. Nevertheless, for the Enlarged Board, the notion of « part of the economic activities of a company » cannot be equated with the sale of a subsidiary having its own activities (point 2.2 of the reasons).

Indeed, the subsidiary could very well have filed an opposition (possibly a co-opposition), which was not possible in the situation of the reasons G4/88 (since « the activity of a company » does not have legal personality, point 2.2.1 of the reasons).

Consequently, the status of opponent cannot be freely transferred, even if the opposition is in the interest of one of its assigned subsidiaries.

Identity of the applicant concerning an appeal on the proprietorship of an action

As you have understood, it was not known here whether the opposition could be assigned and therefore it was not known who had the possibility to introduce the action.

The Enlarged Board proposes a pragmatic approach: even if procedural acts should normally not contain conditions (point 3.2.1 of the reasons), it is possible, to avoid any legal uncertainty, to file the appeal in the name of the most likely person (subjective interpretation therefore…) and, alternatively, in the name of another person, according to another possible interpretation.

G3/04 – Intervention during the appeal and subsequent withdrawal of the appeal

The decision G3/04 was issued on August 22, 2005.

In this case, the question was whether an appeal could continue with an intervenor when the sole appellant had withdrawn their appeal.

For the Enlarged Board (point 5 of the reasons), the intervenor must necessarily pay the opposition fee (A105(2) EPC73) in order to be able to intervene, even if it is only at the appeal stage.

However, A107 EPC73 does not provide that the intervenor can acquire the status of appellant if they intervene at this stage of the procedure (point 6 of the reasons). Indeed, only parties to the opposition (and the intervenor was not) can file an appeal.

Being a party to the proceedings as of right does not mean that the intervenor is an appellant.

Thus, if the sole appeal has been withdrawn, the proceedings cannot continue with a party that intervened during the appeal proceedings.

G1/05 (1) – Exclusion and challenge

If a member of an appeal board states, in their declaration of abstention, a reason that could in itself constitute a possible ground for challenge for partiality, the decision regarding the replacement of the concerned member of the board should normally duly take this into account (point 7 of the reasons).

In the proceedings before the Enlarged Board of Appeal, if there are no particular circumstances casting doubt on the ability of a member of the Board to subsequently assess the arguments of a party with impartiality, a member of the Enlarged Board of Appeal cannot raise suspicion of partiality on the grounds that an appeal board of which the concerned member was part had taken a position on the issue in a previous decision (point 27 of the reasons).

G1/05 (2) – Correction of a divisional application when the parent application is no longer pending

The decision G1/05 was issued on June 28, 2007.

As a reminder, A76(1) EPC73 states:

A divisional application […] may only be filed for elements that do not extend beyond the content of the initial application as filed

In this case, the question was whether a divisional application that, at its effective filing date, extends beyond the content of the initial application (i.e., non-compliance with A76(1) EPC73) can be corrected a posteriori, even if the parent application is no longer pending.

The Enlarged Board notes (point 2.6 of the reasons) that, initially, the EPC contained two provisions that respectively aimed to address conflicts with national defense requirements (since divisional applications are filed directly with the EPO) and to prevent the pending application from containing added elements. The current provision of A76(1) EPC73 results from the merger of these provisions, and there is no particular reason to interpret this provision differently. The purpose of this provision is therefore (point 2.7 of the reasons):

• to define a formal condition to prevent applicants from adding new elements to a divisional application that could raise objections under national security and
• to define the substantive condition for the patentability of divisional applications, namely that they cannot contain any added elements compared to the application from which they derive.

Thus, for the Enlarged Board, the fact that a divisional application does not meet the requirements of A76(1) EPC73 at the time of its filing is not a ground for invalidity of that application (point 2.9 of the reasons).

In principle, A96(2) EPC73 applies (point 3.4 of the reasons), and it is possible to amend the divisional application to make it comply with A76(1) EPC73 (point 3.6 and point 7 of the reasons). The preparatory work supports this (point 4.2 of the reasons).

Whether the parent application is pending or not is irrelevant (point 8.1 of the reasons), as the divisional application is a new independent application.

G1/06 – Cascade of divisional applications

The decision G1/06 was issued on June 28, 2007.

It addresses the same facts and reasons as decision G1/05, but the decision is distinct.

The question at issue here was how to handle cascades of divisional applications in view of A76(1) EPC73: should we consider only the previous application or the entire cascade of divisional applications to determine the « elements of the initial application »?

First, the Enlarged Board notes that, although not explicitly mentioned in A76(1) EPC73, divisional applications of divisional applications (i.e., cascades of divisionals) seem possible since a divisional application is an application like any other (point 10.2 of the reasons).

For the Enlarged Board, it is only possible to assign the filing date of the initial application if the divisional application actually contains elements of that initial application and if all intermediate divisional applications also contain these elements.

An element that was omitted during the filing of a previous application in the series cannot be reintroduced into that application or into any divisional application that follows it in the series (point 11.2 of the reasons).

G2/06 – Use of embryos

The decision G2/06 was issued on November 25, 2008.

Following the Directive 98/44/EC of the European Parliament, rules R23ter EPC73 to R23sexies EPC73 were added to the Implementing Regulations (decision dated June 16, 1999, by the Administrative Council, entered into force on September 1, 1999). In particular, R23quinquies c) EPC73 provides that European patents shall not be granted for « uses of human embryos for industrial or commercial purposes » as being contrary to public policy (A53 a) EPC73).

The question was whether R23quinquies c) EPC73 applied retroactively to applications filed before the entry into force of this rule.

On this question, the Enlarged Board was asked to make a preliminary reference to the CJEU. The Enlarged Board considers that nothing obliges it to do so and that nothing even authorizes it (points 3 to 11 of the reasons): if this is the case for national judicial instances (Article 234 of the EC Treaty), the Enlarged Board is rather an international organization whose contracting states are not all members of the EU (point 4 of the reasons).

For the Enlarged Board (point 13 of the reasons), the fact that the Council does not provide for transitional provisions is the clear sign that these rules must be applied immediately to all pending applications. This is reinforced by the reference to A53 a) EPC73: this list simply clarifies an article already present and nothing indicates that the commercial exploitation of human embryos has ever been considered patentable.

The R23quinquies c) EPC73 explicitly excludes « the uses of human embryos »: should it be understood that products that can only be obtained through the use of human embryos (at least at the filing date) are allowed?

For the Enlarged Board, the formulation of the claim (i.e., product vs. process) should not matter (point 22 of the reasons). Otherwise, it would suffice to draft the claim skillfully and judiciously to avoid the exclusion… which would be contrary to the pursued objective: respect for human dignity.

Thus, products obtained through the use of human embryos must also be prohibited (even if after the filing date a method not using human embryos is found, points 33 to 35).

G1/07 – Surgical Method

The decision G1/07 was issued on February 15, 2010 (the French text is not available in HTML, so here is the G1/07 decision in PDF format which was published in the JO 2011, 134).

The question here was whether, in a predominantly non-surgical process, a « small interaction » with the human body (such as injecting a contrast agent into a vein) should be excluded under the exclusion of « surgical methods » (A52(4) EPC73 or A53 c) EPC) even if its purpose was not to heal or keep the person alive.

For the Enlarged Board, it is clear that the claim of a single « surgical » step falls under the prohibition of A53 c) EPC (point 3.2.5 of the reasons).

It is not important to know the purpose of this « surgical » step: whether it is performed to heal, to diagnose or for aesthetic purposes, the answer is the same (point 3.3.2.5 to point 3.3.10 of the reasons). Indeed, if « surgical method » were to be understood as « surgical method for a therapeutic purpose », this exclusion would already be covered by the prohibition of « therapeutic methods » and would therefore serve no purpose.

The fact that decision G1/04 (point 6.2.1 of this decision) stated that « Surgical methods within the meaning of Article 52(4) EPC include any physical intervention on the human or animal body in which the maintenance of the life and health of the subject is of paramount importance » actually means (point 3.3.5 of the reasons) that surgical methods are methods requiring particular attention due to the danger they pose to the person undergoing the intervention.

In short (point 3.4.2.7 of the reasons), the Enlarged Board considers that a surgical step is:

• an invasive step,
• representing a substantial physical intervention on the body,
• which requires professional medical expertise,
• and which poses a health risk, even when carried out with the necessary professional care and expertise.

Note that the risk to health must be related to the mode of administration and not to another element (e.g., the contrast agent injected as such which could be allergenic) (point 3.4.2.3 of the reasons).

It is, of course, possible to provide a « disclaimer » to exclude a surgical application on the human or animal body.

It is also possible to omit a step if the claim remains clear (point 4.3.1 of the reasons). In particular, one can try to use formulations such as « pre-injected », etc.

G2/07 – Essentially Biological Process

The decision G2/07 was issued on December 9, 2010 (the French text is not available in HTML, so here is the G2/07 decision in PDF format, which was published in the JO 2012, 130).

It is called the « Broccoli » decision 🙂

As you know, A53 b) EPC states that « essentially biological processes for the production of plants or animals » are excluded from patentability, even though « microbiological processes » are accepted.

According to R26(5) EPC, a process for the production of plants or animals is essentially biological « if it consists entirely of natural phenomena such as crossing or selection ».

In this case, a non-microbiological process for producing plants was claimed, including a crossing step and a selection step. Is this process patentable if the process includes a « technical » step (in addition to or within a crossing/selection step)?

For the Enlarged Board (point 6.4.2.3 of the reasons):

• shall be excluded a process comprising a crossing step and a selection step and where human intervention aims to enable the execution of these steps.
• shall not be excluded a process comprising a crossing step, a selection step, and an additional technical step:
  • which autonomously introduces a trait into the genome or modifies a trait in the genome (the introduction or modification of this trait does not result from the mixing of genes of the plants chosen for sexual crossing);
  • which is performed as part of the crossing and selection steps (it is therefore appropriate to disregard any additional technical step that is performed either before or after the crossing and selection process).

G1/08 – Essentially Biological Process

The decision G1/08 was issued on December 9, 2010 (the French text is not available in HTML, so here is the G1/08 decision in PDF format, which was published in the JO 2012, 206).

It reiterates the same facts and reasons as the G2/07 decision.

G2/08

The decision G2/08 was issued on February 19, 2010 (the French text is not available in HTML, so here is the G2/08 decision in PDF format, which was published in the JO 2010, 456).

Dosage/Posology of a Medicament

In this case, the Board of Appeal wondered whether a « use of a product X to produce a medicament for the treatment of disease Y by oral administration once a day » could be patentable if this use was known except for the dosage.

As you know, A54(5) EPC (formerly A54(5) EPC73) states that a known substance can be patentable if it can be used as a medicament (this is referred to as the « first therapeutic effect« ).

Furthermore, A54(5) EPC (which had no equivalent in EPC73) states that a known substance can be patentable « for any specific use » previously unknown (this is referred to as the « second therapeutic effect« ). Thus, the legal gap that existed previously (and which was filled by the Enlarged Board of Appeal decision G6/83) no longer exists (point 5.9 of the reasons).

For the Enlarged Board, there is no need to interpret « for any specific use » in a restrictive manner (i.e., « to treat a new disease« , point 5.9.1.1 of the reasons, point 5.10 of the reasons), as this would be contrary to the common interpretation of this expression.

Thus, it is appropriate to accept the patentability of a « different therapeutic treatment » if, of course, the conditions of novelty and inventive step are met (point 5.10.9 of the reasons).

This different therapeutic treatment can very well be a « dosage » (point 6.1 of the reasons). Thus, a new dosage can make a claim patentable (point 6.2 of the reasons).

End of Swiss-type claims

As A54(5) EPC did not exist under the EPC73, the Enlarged Board of Appeal had authorized Swiss-type claims in decision G6/83 (point 7.1.1 of the reasons):

• instead of claiming « Medicament containing the compound X for a therapeutic use Y » ,
• the claim was « Use of a compound X for obtaining a medicament intended for a therapeutic use Y« .

Indeed, the first formulation did not allow overcoming novelty issues. Since the EPC 2000, this issue has disappeared, and there is no longer any need to apply the previous case law (point 7.1.2 of the reasons).

Swiss-type claims indeed posed the problem (point 7.1.3 of the reasons) of the absence of any functional relationship between:

• the therapeutic characteristics (possibly conferring novelty and inventive step) and
• the claimed manufacturing process.

Thus, the formalism of Swiss-type claims should no longer be used (applicable from 3 months following the reasons of the Enlarged Board of Appeal).

G3/08 – Computer Program

The decision G3/08 was issued on May 12, 2010 (the French text is not available in HTML, so here is the decision G3/08 in PDF format which was published in the OJ 2011, 10).

In this case, the President had referred the case to the Enlarged Board of Appeal (under A112(1) b) EPC), as it seemed to him that certain decisions were « divergent » concerning the patentability of software:

• T 1173/97: this decision emphasizes the function of the computer program (does the claimed program have a technical character?) and completely ignores the formulation of the claim (in this case, the board accepts the formulation « computer program« , as it has, in potential, the capacity to produce an additional « technical effect ») ;
• T 424/03: this decision emphasizes the formulation of the claim (in this case, the board refuses the formulation « computer program« , but accepts « computer program product » or « computer-implemented method« )

For the Enlarged Board, « divergent decisions » and « evolution of law » should not be confused: the evolution of law does not allow for a valid referral to the Enlarged Board under A112(1) b) EPC (point 7.3.1 of the reasons).

Indeed, it may happen that the boards of appeal change their approach (possibly radically) by declaring that the previous practice is no longer relevant (point 7.3.5): in this case, there are no divergences, as it is clear that the old practice should no longer be followed.

According to the Enlarged Board (points 10.9 to 10.12 of the reasons), it should be considered that there is no divergence between these two decisions, but rather a natural evolution of case law (because only the legal basis for rejection or grant changes and not the decision itself, point 10.13 of the reasons).

Consequently, the President’s referral is not valid.

G4/08 – Language of the proceedings upon PCT national phase entry

The decision G4/08 was issued on February 16, 2010 (although the decision is in French, here is also the decision G4/08 in PDF format which was published in the JO 2010, 572).

In this case, the question was whether it was possible to freely choose the language of the proceedings (possibly by filing a translation) if the PCT application had already been published in a language of the Office.

A14(3) EPC states that « the official language of the European Patent Office in which the European patent application was filed or translated shall be used as the language of the proceedings » (point 3.2 of the reasons).

For the Enlarged Board (point 3.4 of the reasons), the fact that A153 EPC clearly distinguishes between the languages of the Office and other languages makes it clear that the expression « another language » in A153(4) EPC refers to « another language than the languages of the Office » and not « another language than the one desired by the applicant as the language of the proceedings« . Furthermore, the reference to provisional protection reinforces this point: how else can it be understood that provisional protection is refused on the grounds that it was published in French when the desired language of the proceedings is English?

No provision of the PCT (and in particular its R49.2 PCT) provides for the possibility of choosing the official language if the application is already in one of the authorized languages (point 2.8 and point 3.6 of the reasons).

Thus, it is not possible to freely choose the language of the proceedings (by possibly translating the application) if the PCT publication language is already one of the official languages (point 3.10 of the reasons).

Similarly, the EPO cannot authorize, during the proceedings, the substitution of the language of the proceedings with one of its other official languages as the new language of the proceedings. Indeed, this possibility was removed from R3(1) EPC73 in 1991 and cannot be added by judicial decision (point 4.5 of the reasons).

G1/09 – Pending application and divisional application

The decision G1/09 was issued on September 27, 2010 (the French text is not available in HTML so here is the decision G1/09 in PDF format which was published in the JO 2011, 336).

As you know, R36(1) EPC provides that it is possible to « file a divisional application relating to any earlier European patent application still pending« .

The question was whether an application that has been rejected remains pending until the expiration of the appeal period, when no appeal has been filed. Or before?

Indeed, there is no definition in the EPC of « pending application » (point 3.1 of the reasons).

First, it is important not to confuse « pending proceedings » and « pending application » (point 3.2.2 of the reasons), as the proceedings may be suspended while the application is still pending.

The meaning of « pending application » in R36(1) EPC relates to the applicant’s procedural right to take action: division (point 3.2.3 of the reasons). Thus, the substantive rights conferred by the EPC on the application still exist when the application can be divided (point 3.2.4 of the reasons).

However, A67(4) EPC clearly shows that the substantive rights conferred by the patent application disappear after it « has been rejected by a decision that has become final« . Thus, it is necessary for the rejection decision to be final for the substantive rights to disappear (point 4.2.1 of the reasons).

Consequently, an application can be divided, even if it is rejected, but until the expiration of the appeal period (point 4.2.4 of the reasons) even if no appeal is filed.

G1/10 – Correction of a patent through the correction of a decision

The decision G1/10 was issued on July 23, 2012 (the French text is not available in HTML, so here is the G1/10 decision in PDF format which was published in the Official Journal 2013, 194).

The Rule 140 EPC states:

In decisions of the European Patent Office, only linguistic errors, errors of transcription and obvious mistakes may be corrected.

In this case, an applicant could invoke Rule 140 EPC in order to correct the granted text of a patent (for example, in an opposition procedure). The articulation with the ongoing procedure (ex parte vs. inter partes) was particularly questioned by the Board of Appeal.

For the Enlarged Board (point 5 of the reasons), it is not possible to correct a patent using Rule 140 EPC (and this had already been stated for Rule 89 EPC 1973 in decision G1/97). Indeed, it emerges from the preparatory work that the legislator wanted to prevent third parties from suffering harm.

In any case, from its grant, a European patent no longer falls within the competence of the EPO (point 6 of the reasons).

It should be noted that the applicant can quite correctly correct an obvious error before grant by means of Rule 139 EPC (point 9 of the reasons). Furthermore, the applicant has a period of 4 months to give their agreement on the granted text (point 10 of the reasons). If the EPO issues a decision that does not conform to the applicant’s agreement, the latter can then file an appeal, as they have been harmed by the violation of Article 113(2) EPC (point 12 of the reasons).

In conclusion, Rule 140 EPC allows for the correction of errors contained in decisions of the EPO (excluding grant), and not errors contained in documents produced by a patent applicant or the proprietor of a patent (point 11 of the reasons).

G2/10 – Disclaimer and Article 123(2)

The decision G2/10 was issued on August 30, 2011 (the French text is not available in HTML, so here is the G2/10 decision in PDF format which was published in the Official Journal 2012, 376).

The question that arose was whether a disclaimer could be contrary to Article 123(2) EPC if the excluded embodiment was explicitly described in the application.

In the opinion of the Enlarged Board, although the subject of disclaimers was widely discussed in decision G1/03 (point 3.9 of the reasons), this decision does not address the issue of the present question: that of a disclaimer which targets an embodiment (or more generally, an object) described.

In any case, decision G1/03 never stated that the introduction of a disclaimer never changed the technical content of the application (point 4.4.2 of the reasons).

Thus, and in accordance with the application of Article 123(2) EPC, it is necessary to verify that the introduction of the disclaimer does not provide new technical information to the person skilled in the art (point 4.5.1 of the reasons, direct and unambiguous deduction from the application as filed based on general knowledge).

For example, if the introduction of a disclaimer effectively results in the selection of a sub-range not written in a range, it is likely that this disclaimer should not be allowed (point 4.5.4 of the reasons).

To determine whether this is the case or not, it is necessary to carry out a case-by-case evaluation covering all technical aspects, taking into account:

• the nature and extent of the disclosure in the application as filed,
• the nature and extent of the excluded subject-matter,
• as well as its relationship with the subject-matter remaining in the claim as amended.

A priori, the fact that the excluded embodiment is disclosed in the description is of no importance (point 4.5.5 of the reasons): indeed, the applicant can choose the embodiment they wish and they are not obliged to include all of them.

G1/11 – Jurisdiction of the Legal Boards of Appeal

The decision G1/11 was issued on March 19, 2014.

In this case, a Legal Board of Appeal had been seized to hear an appeal against a decision by which an examining division had refused the refund of search fees (issue of lack of unity of invention).

The Legal Board was concerned because even though formally Article 21(3)(c) EPC designates it as competent (since Article 21(3)(a) EPC and Article 21(3)(b) EPC are not applicable), the lack of unity of invention is a matter of technical assessment.

The Enlarged Board shares the view of this Legal Board of Appeal: it emphasizes that the spirit of Article 21(3)(c) EPC was to entrust the Legal Board with purely legal questions.

Therefore, and faced with this legal void, the Enlarged Board indicates that a Technical Board should be competent for problems concerning the refund of the search fee referred to in Rule 64(2) EPC.

G1/12 – Correction of the Applicant’s Name

The decision G1/12 was issued on April 30, 2014.

In this case, a Board of Appeal wondered if it was possible to correct the name of the applicant (according to Rule 101(2) EPC or according to Rule 139 EPC) if the true intention was to file in the name of the person who should have filed the appeal.

According to the Enlarged Board, it is quite possible to correct the name of the applicant:

• using Rule 101(2) EPC, if, within the time limit for the appeal, the applicant is identifiable:
  • the true intention of the applicant must be evaluated, an intention which is assessed according to the principle of free evaluation of evidence;
• using Rule 139 EPC, under the conditions provided by case law even outside the appeal period:
  • the applicant bears the burden of proof, which must be of a high standard.

G2/12 – Product Obtained by an Essentially Biological Process

The decision G1/12 was issued on March 23, 2015.

It is called the « Tomatoes II » decision.

In this case, the members of a Board of Appeal wondered whether the exclusion from patentability of essentially biological processes for obtaining plants (Article 53(b) EPC) also excluded products obtained by these processes.

The Enlarged Board sees no reason for this exclusion: products obtained by excluded processes can quite well be patented (even if they are claimed in the form of a product-by-process).

G1/13 – Status of a Party / Application of National Law

The decision G1/13 was issued on November 25, 2014.

In this case, the Enlarged Board recalls the supremacy of the national law of the States concerning the qualification of legal entities.

If a company is dissolved, but its legal personality is retroactively restored, the Boards of Appeal have no reason not to take this retroactive restoration into account.

G2/13 – Product Obtained by an Essentially Biological Process

The decision G2/13 was issued on March 23, 2015.

It is called the « Broccoli II » decision.

This decision is identical to decision G2/12.

G1/14 – Notification by means other than registered letter with advice of delivery

The decision G1/14 was issued on November 19, 2015.

In reality, in this case, the Enlarged Board of Appeal ruled the question inadmissible and therefore did not answer the question asked.

However, the Enlarged Board clarifies that if a decision is not delivered by registered letter with advice of delivery, as required by Rule 126(1) EPC (but, for example, using UPS), there is a defect in notification.

Indeed, the first sentence of Rule 126(2) EPC cannot be satisfied: therefore, no time limit can begin to run, even if it is attested that the recipient received this document.

G3/14 – Clarity in opposition

The decision G3/14 was issued on March 24, 2015.

In this case, a Legal Board of Appeal had been seized to consider questions relating to the examination of clarity in opposition proceedings. The question was to what extent the clarity of an amended claim could be examined.

We know that amendments made during opposition must be clear (Article 101(3) EPC together with Article 84 EPC) even if this is not a ground for opposition (T301/87).

However, can the Opposition Division examine the clarity of a simple combination of two existing claims or can it only examine the clarity related to the amendment made (e.g., change of a term)?

The Enlarged Board considers that there cannot be an extensive interpretation of Article 101(3) EPC: clarity objections must originate from the amendments made.

G2/21 — Computer-simulated invention

The decision G2/21 was issued on March 23, 2023.

The question referred was whether a computer-simulated invention can be considered as an invention within the meaning of Article 52(1) EPC.

The Enlarged Board answered in the affirmative, provided that the computer-simulated invention has a technical character and produces a further technical effect that goes beyond the normal interactions between the program and the computer.