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

The first credible UPC spinouts are growing, and they are coming from elite patent litigation teams, suggesting specialist litigators may no longer need large platforms to compete
Voyage IP has hired a veteran IP leader from Spruson & Ferguson as its head of trademarks, as well as another consultant who will boost the firm’s commercial offering
Lawyers say unwritten appearance expectations can disproportionately affect women and junior talent, making proactive guidance a growing responsibility for law firm leaders
Apple’s lawsuit against OpenAI, which features Tier 1-ranked disputes firms on both sides, reflects how trade secrets litigation is becoming a prominent competition feature
Drew & Napier’s leadership appointments show one way full-service firms can back up claims about the strategic importance of IP
Strike-out application will hear claims that the copyright aspect of an IP infringement claim brought by a gambling and sports betting group should be dropped
Amongst a sea of mergers, Lathrop GPM and HG Law have set out plans to combine, positioning themselves to compete with both IP boutiques and full-service firms
Patrícia Paias explains why she loves the science and business behind an idea and why potential rights owners must avoid the ‘file and forget’ philosophy
Lawyers eagerly await news of what IP specialist Sir Colin Birss will bring to one of the England and Wales judiciary’s most important roles
María Aurora García of Berken IP explains how intellectual property rights holders can use customs monitoring and online enforcement tools to identify parallel imports and support compliance with consumer protection rules
Gift this article