There are a number of mechanisms for having a point of law decided by the Enlarged Board of Appeal at the EPO. One of these is through a referral from a Board of Appeal in accordance with Art 112(1)(a) EPC. This provides a mechanism for referral if:
The referring Board believes that a decision requires a clarification of a point of law of fundamental importance.
The referring Board identifies a divergence in the case law and needs the Enlarged Board to resolve the conflicting decisions.
This route typically arises in appeal cases when the Board of Appeal is confronted with a legal question that needs authoritative interpretation, or when case law has developed inconsistently.
Such a situation has recently arisen in case T439/22 where a Technical Board of Appeal has referred points of law to the Enlarged Board of Appeal by interlocutory decision of 24 June 2024. This interlocutory ruling lies from the decision of an opposition division to maintain the claim of European patent EP3076804 as granted. The case number is now referenced as G1/24.
Justification for Referral
The Technical Board of Appeal acknowledges that the outcome of the underlying case appears to hinge on whether the term “gathered sheet” of the claim is given its usual meaning in the art, or whether the same term is read broadly in view of the description. While examining the issue of how the claim should be interpreted for the purpose of assessing patentability, the Technical Board of Appeal identified diverging lines of case law of the European Patent Office.
In view of ensuring a uniform and harmonised application of the law, and in light of the above referenced second mechanism for seeking guidance, the Board of Appeal referred the following three questions to the Enlarged Board of Appeal.
1. Is Article 69 (1), second sentence EPC and Article 1 of the Protocol on the Interpretation of Article 69 EPC to be applied to the interpretation of patent claims when assessing the patentability of an invention under Articles 52 to 57 EPC?
2. May the description and figures be consulted when interpreting the claims to assess patentability and, if so, may this be done generally or only if the person skilled in the art finds a claim to be unclear or ambiguous when read in isolation?
3. May a definition or similar information on a term used in the claims which is explicitly given in the description be disregarded when interpreting the claims to assess patentability and, if so, under what conditions?
These questions are fundamental as the claims of a patent determine the extent of protection, and it is encouraging that the Enlarged Board have decided that the referral is admissible and will be heard. In this regard we understand that it has recently appointed members to deal with this case.
Latest Updates
The EPO announced that it is awaiting the decision of the Enlarged Board of Appeal, and that it will immediately implement its findings in the practice of examining and opposition divisions. For the time being, however, examination and opposition proceedings will continue, per the Communication from the EPO:
“Considering the need for legal certainty, ensuring the functioning of the EPO and the interests of all stakeholders, the President has decided that proceedings in examination and opposition should continue while the referral is pending. Examining and opposition divisions will therefore continue to apply the practice set out in the Guidelines for Examination in the EPO, according to which they will, so far as possible, require a claim to be amended such that, in cases where the description gives a specific meaning to words used in the claims, the meaning is clear from the wording of the claim alone..”
What this means for now
It is not unusual for the EPO to elect to stay proceedings on pending applications where there is a referral to the Enlarged Board that may affect the ultimate decision on these pending applications. This case is different, in that the EPO have effectively stated that it is business as usual. We have no visibility as to when the Enlarged Board will come to an ultimate decision, but will of course update here when we hear further.
