EPO: New referrals to the Enlarged Board of Appeal

Managing IP is part of Legal Benchmarking Limited, 1-2 Paris Gardens, London, SE1 8ND

Copyright © Legal Benchmarking Limited and its affiliated companies 2026

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

EPO: New referrals to the Enlarged Board of Appeal

Two issues have arisen recently causing the Technical Boards of Appeal to refer questions to the Enlarged Board of Appeal (EBA).

At oral proceedings on February 7 in respect of case T 318/14, the competent Board of Appeal referred questions relating to double patenting to the EBA. More specifically, the EBA is to consider if a European patent application can be refused if it claims the same subject matter as a European patent granted to the same applicant where the granted patent does not form part of the state of the art. In the affirmative, the EBA is further asked what the conditions would be for such a refusal, and if different conditions would have to be applied where the application is (a) filed on the same date as the already granted patent, or (b) a divisional of the parent, or (c) claims priority from that application upon which the parent was granted. Finally, in the case of point (c) above, the EBA is asked to consider if an applicant has a legitimate interest in the grant of the subsequent European patent application in view of the fact that the term of the patent is calculated on the basis of the filing date and not the priority date.

Further, by decision T 831/17 of February 25, an Appeal Board referred questions relating to (1) the right for oral proceedings, (2) a third party's possible right to appeal, and (3) the venue of oral proceedings in appeal. In relation to the third issue, in particular the EBA is to consider if the president or the Administrative Council of the EPO had the powers to move the Boards of Appeals' premises to Munich suburb Haar in 2017. In late 2016 the chairmen of the Boards of Appeal of the EPO adopted a resolution objecting to the relocation of the Boards of Appeal to Haar. At that time the issue appeared to be of a purely political nature, but now the matter is clearly becoming a legal one.

frederiksen-jakob-pade.jpg

Jakob Pade Frederiksen


Inspicos P/SKogle Allé 2DK-2970 HoersholmCopenhagen, DenmarkTel: +45 7070 2422Fax: +45 7070 2423info@inspicos.comwww.inspicos.com

more from across site and SHARED ros bottom lb

More from across our site

Judge Alan Albright is to leave his role at the Western District of Texas, and could return to private practice
Stobbs has successfully seen off a contempt of court application filed against the firm and two of its lawyers
After almost a quarter of a century, Marshall Gerstein has a new managing partner
Abbott winning another round against Sinocare and Menarini, and 'long arm' clarification on the UK's position within the UPC, were also among major developments
Maria Peyman, head of IP at Birketts, explains why the firm is adopting a ‘seamless approach’ for clients by integrating two of its practice areas
Matthew Swinn, who leads the firm’s IP practice, discusses why Mallesons is well-placed to remain a major IP force
Lawyers at A&O Shearman analyse developments regarding UPC’s long-arm jurisdiction, including its scope and jurisdictional limits
Michelle Lee discusses reaching milestones at the USPTO, AI’s role in legal work, and how to empower women in tech and IP
Executive chair Matt Dixon, who reveals a new associate hire, says the firm wants to offer a realistic pathway to partnership while avoiding the ‘corporate machine’ route
Mayer Brown’s role in cardiovascular technology dispute reflects how firms are pursuing precedent-setting cases to try and guide AI and patent law
Gift this article