Admissibility of referrals before the Enlarged Board of Appeal of the European Patent Office

G. Wesela-Bauman (PL)

1. Introduction

The purpose of proceedings before the first instance (i.e. the Receiving Section, the Examining Divisions and the Opposition Divisions) is to perform formal and substantive examinations of requests of the parties to the proceedings.^{In view of Art. 16, 18(1) and 19(1) EPC.} During grant proceedings, the Receiving Section and the Examining Divisions, in principle, examine requests to grant patents. On the other hand, the Opposition Divisions examine requests to revoke granted patents. From the first instance decisions, an adversely affected party to the proceedings may file an appeal and request re-examination of a decision in a judicial manner. The Boards of Appeal (BoA) are responsible for handling appeals and they have the power to alter decisions of the first instance.^{As indicated in Art. 21(1) EPC.} Additionally, rulings of the BoA are binding on the first instance in situation where the case is remitted to the first instance for further prosecution.^{In view of Art. 111(2) EPC.}

In view of the above, one might think that the function of the EBoA is to re-examine rulings of the BoA in the same manner as the BoA re-examines decisions of the first instance. However, that is not the case.

Specifically, it was underlined in G3/08 (Point 7.2.5 of the Reasons) that the EBoA are not a further instance above the BoA. This reasoning originates from the Travaux Préparatoires of the EPC where it was noted that there will be no further appeal from the BoA decisions.^{“The Granting of European Patents: Introduction to the Convention on the Grant of European Patents”, Martijn van Empel, Munich, 5 October 1973, p. 239.} However, the Travaux Préparatoires mentions that for uniform application of the law there will be an EBoA. In addition, it was noted in Decision G2301/16 (Point 42 of the Reasons) that the EBoA is 2. . In this regard, the Referral G3/08 noted that the specific function of the EBoA flows from the admissibility criteria of referrals. Thus, said criteria will be discussed in depth in this contribution.

In other words, while the EBoA are not a further instance, their rulings will affect the proceedings before the BoA and, hence, the proceedings before the first instance. The manner in which the proceedings before the BoA are affected will be described further below.

The function of the EBoA requires the highest level of autonomy. Specifically, it was mentioned that a ruling of the EBoA will affect the first and the second instance. However, the EBoA is not bound by a ruling of another EBoA as there is nothing in the EPC to support it. In practice, the EBoA can and will overrule any previous decision or opinion of the EBoA due to e.g. development of law.^{Example of overruling of previous decision can be found in referral G2/08 which overruled referral G5/83. This change of practice made so-called Swiss-type claims obsolete.}

2. The Proceedings before the Enlarged Board of Appeal

The proceedings before the EBoA can be initiated either by referrals under Art. 112 EPC or by a petition for review under Art. 112a EPC.^{There are also proceedings under Art. 23(1) EPC, but said proceedings pertain to the removal from office, or suspension of, members of the BoA. Thus, they are not pertaining to a point of law or uniform application of law.}

The purpose of a petition for review is to provide a judicial review of a decision of the BoA where said decision adversely affected a party to the proceedings. Petition proceedings will not be discussed further in this contribution.

Under EPC2000, there are two possible referrals namely: Art. 112(1)(a) and Art. 112(1)(b) EPC. In essence, both of them are to ensure uniform application of law or to address a point of law of fundamental importance. Both types of referrals will be described in terms of procedure and their impact on the proceedings before the EPO. Each of these types of referrals is discussed below.

2.1. Referral under Art. 112(1)(a) EPC

Initiation and conduct of proceedings

A referral under Art. 112(1)(a) EPC may be initiated by the BoA or by a request from a party to the appeal proceedings. In the former case, the BoA has to provide reasoning behind a referred question.^{Said requirement is mentioned in Art. 22(2) the Rules of Procedure of the Boards of Appeal 2020, OJ EPO 2019, A63 (RPBA2020). Case law also invoked this requirement in referral G1/14, Headnote. 1: “If a board of appeal refers a point of law to the Enlarged Board under Article 112(1)(a) EPC, it is primarily up to the former to explain, in its referral decision, that and why  it believes it needs an Enlarged Board ruling on the point arising in the case before it. This is also clear from Article 22(2), second sentence, RPBA, requiring the referring board to state the context in which the point originated”.} In the latter case, the BoA has discretion to refuse to refer a question to the EBoA and such refusal requires providing grounds (see Art. 112(1)(a) EPC, second sentence).^{It is explained in Travaux Préparatoires EPC 1973 at p. 31 (BR/177) that reasoning is to provide “certain guarantee” to the parties and “a certain degree of standardisation of the jurisprudence” to the BoA.} A decision to refuse making a referral cannot be challenged.^{Lack of possibility to challenge the decision of the BoA to refuse a referral was explicitly stated in the Travaux Préparatoires EPC 1973. Specifically, at p. 51 of document BR/168 it is stated that “the parties should only have the right to ask” and that the BoA is “free either to accept or to reject that request”.} A decision to initiate a referral is issued as an interlocutory decision.^{The form of an interlocutory decision diverges from the form defined in R. 102 EPC. Specifically, an interlocutory decision does not require reasoning or, as expected, the order of the BoA. However, in practice, the BoA still uses order in their interlocutory decision. Additionally, such a decision requires to provide the referred question and a context in which the question arose. See Art. 22(2) RPBA2020.}

When an interlocutory decision is made to refer a question, the proceedings before the BoA which referred the question are stayed.^{Stay of the proceedings before the BoA has no legal basis and originates from case law. See e.g. T1145/09 Point 3 of the Reasons.} Once the EBoA reaches a decision, said proceedings are resumed.

Parties to the appeal proceedings are also parties to the proceedings before the EBoA and, hence, have a right to present their arguments and observations on the Boards findings.^{This flows from Art. 112(2) EPC.} Composition of the EBoA is different when compared with the composition of the BoA that referred a question. Specifically, while a composition of the EBoA consists of five legally and two technically qualified members (in view of Art. 22(1)(a) EPC), four members of the EBoA must not have taken part in the proceedings before the BoA that referred the question.^{This requirement is introduced by Art. 2(4) of the Rules of Procedure of the Enlarged Board of Appeal, CA/D 3/15, published in OJ EPO 2015, A35 (RPEBA).}

During the proceedings before the EBoA, any person may file a written statement pertaining to a referred question. The EBoA may publish an invitation to this end in the Official Journal of the EPO (OJ EPO).^{In view of Art. 10 RPEBA.} Following invitation, the President of the EPO may also file his/her observations in view of Art. 9 RPEBA. Although there is nothing that prohibits filing of third party observations under Art. 115 EPC during proceedings before the EBoA, said observations do not fit the purpose of said proceedings as observations may only pertain to patentability in a broadest sense and not to a point of law.^{Article 115 EPC mentions patentability and, hence, covers Art. 52-57 EPC. However, in the Guidelines for Examination before the EPO (version November 2019) in chapter E-VI, 3 it is pointed that observations may pertain also to Art. 76(1), 83, 84, 123(3) and 123(3) EPC. Hence, the GL are pointing to the broadest interpretation of the word “patentability” and also include deficiencies in the application documents or unallowable amendments.} Therefore, observations under Art. 115 EPC should not be taken into the account until after the proceedings before the EBoA have terminated.

Proceedings before the EBoA ends with a decision which contains reasoning.^{As required by Art. 22(1)(a) EPC and by Art. 18(2) RPEBA.} Said reasoning contains deliberations on admissibility (which will be discussed further) and, if any part of the referral is consider to be admissible, a decision on merits, i.e. an answer to any question that is consider to be admissible. The decision should be issued at the end of oral proceedings following Art. 14(7) RPEBA. However, this rarely happens, and, in practice, a decision is issued typically two months after oral proceedings.^{Said pattern was kept in referrals G2/19 and G1/16. However, in G1/15 it took ca. eight months to deliver a decision.}

Binding effect of the referral

The decision issued by the EBoA is binding on the BoA in the proceedings under appeal (Art. 112(3) EPC). This is so called “direct binding” of the decision of the EBoA. Any decision of the EBoA is also binding indirectly as any BoA which would like to diverge from a previous decision of the EBoA must make a referral to the EBoA following Art. 21 RPBA2020.^{There is nothing about diverging from an earlier petition for review and thus the BoA is free to diverge from any earlier petition for review under Art. 112a EPC. This interpretation was also confirmed in Supplementary publication 2 in OJ EPO 2020.} It follows that, although the first instance is not directly bound by any decision of the EBoA, the first instance will follow the decisions of the EBoA as otherwise any decision of the first instance will be set aside by the BoA.

It seems that the binding effect of a decision is not only restricted to order or reasoning behind a decision, but also to its obiter dictum. Examples of that effect are decisions G1/05 and G1/06 which led to the establishment of a practice to refuse European patents due to double patenting despite the fact that the EPC does not deal with double patenting in examination.^{CLBA II.F.5.} Additionally, an opinion issued in referral G3/08 (Headnote 5) explicitly noted that the grounds of a decision are also relevant and binding and, hence, obiter dictum is also relevant and binding.

2.2. Referral under Art. 112(1)(b) EPC

Initiation and conduct of proceedings

The referral under Art. 112(1)(b) EPC may only be initiated by the President of the EPO in a situation where two BoAs have issued different decisions on the same question. Since only the President can make a referral under Art. 112(1)(b) EPC, it is up to the President to provide reasoning behind the referral.

There are no parties to the proceedings and there are no restrictions on composition of the EBoA similar to the ones present for referrals under Art. 112(1)(a) EPC. Other than that, the composition is identical to the one under Art. 112(1)(a) EPC.

Similar to the proceedings under Art. 112(1)(a) EPC, under Art. 112(1)(b) EPC there is also a possibility to file written statements. Interestingly, the President may also be invited to comment following Art. 9 RPEBA despite that the proceedings being initiated by him. However, there is no purpose in the filing of third-party observations under Art. 115 EPC.

The EBoA concludes the proceedings with an opinion (Art. 22(1)(b) EPC). The opinion (similar to the decision under Art. 112(1)(a) EPC) contains admissibility deliberations and, if applicable, a discussion on merits.

Binding effect of the referral

The binding effect of a decision under Art. 112(1)(a) EPC is different when compared with an opinion under Art. 112(1)(b) EPC. For instance, the binding effect mentioned in Art. 112(3) EPC is only about decisions under Art. 112(1)(a) EPC and not about opinions under Art. 112(1)(b) EPC. An opinion of the EBoA indicates which case law should be endorsed and, if appropriate, which should be abandoned. Any future case pertaining to the same topic should fall under the teachings of an opinion issued under Art. 112(1)(b) EPC. If a BoA wishes to deviate from an earlier opinion of the EBoA, said Board must make a referral under Art. 112(1)(a) EPC (in line with Art. 21 RPBA).

2.3. Stay of the proceedings in the first instance due to a referral under Art. 112(1)(a) and (b)

According to the Guidelines for Examination in the EPO (GL) (November 2019 edition (GL, E-VII, 3)) during a pending referral before the EBoA, examination or opposition proceedings may be stayed if said proceedings depend entirely on an answer to this referral. A motion for stay of the proceedings can be filed by a party to the proceedings or the proceedings may be stayed on the Opposition Division’s or the Examining Division’s own motion.

Since the decision to stay the proceedings is ultimately within the discretion of the first instance that is currently responsible for the case, the stay of the proceedings is not mandatory according to the GL.

In this regard, case law presents a much stronger position on stay of proceedings and notes that, when the outcome of the proceedings depends on a referral and that an Examining Division is aware of it, the examination must be stayed (see T166/84, Headnote).^{See CLBA V.A.9.5.15 and V.B.2.5.3. where it is explicitly stated that lack of stay results in substantial procedural violation and, hence, may result in reimbursement of the appeal fee under R. 103 EPC.} In other words, while the GL indicate that a given instance may stay the proceedings, case law indicates that the proceedings must be stayed. It seems that the teachings of T166/84 should apply to the proceedings before the Opposition Divisions mutatis mutandis.

In line with Art. 113 EPC, a party will have an opportunity to comment on an upcoming stay of the proceedings. It is worth to underline that the party cannot effectively prevent the upcoming stay of the proceedings as a decision to stay is within a discretion of the EPO.

Additionally, the President of the EPO may decide ex officio to stay all proceedings before the first instance (i.e. before the Examining and the Opposition Divisions) which may be affected by the outcome of the referral. This was the case for a decision in referral G4/19^{See OJ EPO 2020, A20.} and that was the case for an opinion in referral G3/19^{See OJ EPO 2019, A34.}.

3. Admissibility of referrals under Art. 112(1)(a) EPC

In case of referral under Art. 112(1)(a) EPC, every referral must be made for uniform application of the law or if a point of fundamental importance arises, during pending proceedings, and the BoA must consider that a decision is required. It is worth noticing that the EBoA will independently examine the premises of admissibility as soon as the case is transferred to it.^{This is actually a requirement imposed by the case law. See referral G1/14 hn.2.} Moreover, the EBoA is not bound by the results of examination of admissibility made by the BoA that referred the question to it.^{See referral G2/19, r. A.II., OJ EPO 2020 A87.}

Said premises will be discussed in detail in the following sections.

3.1. Uniform application of the law or point of law of fundamental importance

The principle of uniform application of the law is to ensure that two or more BoAs will give the same ruling for the same state of facts. Alternatively, a referral to ensure uniform application of the law is needed if a BoA considers a need to deviate from an earlier decision or opinion of the EBoA.

A point of law of fundamental importance arises when a Board considers that the question cannot be answered directly and unambiguously by reference to the EPC. Alternatively, a point of law is also fundamental if the impact of answers to the referred questions will extend beyond the specific case and may affect a large number of cases.^{In line with the teachings of referral G1/12 r.10: “A point of law is also to be regarded as of fundamental importance if its impact extends beyond the specific case at hand. Such importance is established if it could be relevant to a large number of similar cases”.} In this regard, there is no need to provide an estimated number of cases that may be affected as established in referral G2/19.^{See reasons A.III.3.}

3.2. Pending proceedings

Pending proceedings means that an application has to be pending and there has to be pending appeal proceedings.

Pendency of an application means, for example, that an application deemed withdrawn due to lack of payment of renewal fee will result in closing of referral proceedings. That was the case in application 01989207.4 where the lack of payment led to closure of appeal proceedings and termination of referral proceedings in G2/14 regarding appeal deemed inadmissible or deemed not to have been filed.^{See OJ EPO 2015, A13 and appeal no. T2017/12.} As the result, the question about admissibility of appeal pursued in referral G2/14 was abandoned and we had to wait until decision G1/18 to obtain explanations on the topic.^{For an English communication regarding G1/18 see https://www.epo.org/law-practice/case-law-appeals/communications/2019/20190718.html}

Consequences of withdrawal of an appeal were exemplified in referral G3/06 (regarding the possibility in opposition proceedings of amending a patent granted for a divisional application violating Art. 76(1) EPC) where withdrawal led to termination of referral proceedings.^{See OJ EPO 2007, 312 and appeal no. T1040/04.}

3.3. A decision is required

A decision is required only for a legal question and, hence, any referral aimed at establishing the state of facts does not satisfy the premise of a need for a decision.^{The fact that the EBoA has to deal only with question of legal nature was already envisaged in Travaux Préparatoires EPC 1973 at p. 32 (BR/177). Subsequent case law confirmed this approach (see e.g. appeal T287/11 r.3.3 or T181/82 r.14, CLBA V.B.2.3.4).} Case law indicates that interpretation of description for the purpose of inventive step analysis is not a matter of referral.^{See appeal no. T2136/16 r.8.2 and 8.3, CLBA V.B.2.3.3.} On the other hand, it seems that a referral made when a Board considers to deviate from an earlier decision or opinion of the EBoA satisfies this premise.^{Following Art. 21 RPBA2020.}

Case law notes that reasons for referral should be made on objective criteria and should be plausible. Specifically, the referring BoA should explain how different answers to the referred question would influence proceedings before the referring BoA.^{See referral G3/98 r.1.2.3.}

Lack of a need for a decision was, in my opinion, present in referral G1/14 where it was clearly stated that a referral is inadmissible if it is as a result of misapplying the law (Headnote 3). Similarly, there is no need for a decision when the question can be answered by reference to the EPC even if the question itself pertains to an important point of law (see J5/81, Headnote 2).^{CLBA V.B.2.3.7.} Therefore, lack of application of law or misapplication of law results in inadmissible referrals. This indicates that the EBoA should provide guidance where there is an ambiguity in law.

Another aspect of a need for a decision is the relevance of a referred question to the case under appeal. Case law seems not to be so restrictive when it comes to this aspect. For example, when it was not clear on whether a question was relevant or not to the appeal, the EBoA nevertheless considered the question to be admissible for the reasons of procedural efficiency (see referral G3/98 Point 1.2.4 of the Reasons). At the same time, referral G3/98 noted that a referred question cannot be theoretical and that would be the case “if the referring board were to reach the same decision on the basis of the file regardless of the answer to the referred question”.^{See G3/98 r. 1.2.3.} This requirement was followed in T154/04 (Point 2 of the Reasons) where there was specified that a referred question must be essential in order to reach a decision on the appeal in question. As a result, the fact that a question is quite interesting is not relevant for its admissibility. On the other hand, in referral G2/19 (Point A.III.5 of the Reasons), the EBoA considered one of the questions to be admissible despite that the answer to it could only be relevant in a certain scenario.

3.4. Further aspects of admissibility

A further aspect of admissibility was raised in referral G1/12 under Art. 112(1)(a) EPC. Specifically, the EBoA re-formulated one of the questions in view of what the Board considered to be the true intention of the BoA that referred the question. It seems that the EBoA established the “true intention” on the basis of detailed analysis of the current case law. While this was not stated in the grounds of the decision, it seems that the EBoA considered that reformulation is needed for the question to meet the criterion of “a decision is required”.

Rewording was also mentioned in referral G2/19 where the Board noted that rewording was necessary to provide a more precise answer to the referred question. Interestingly, the same Board noted that even the reworded question may be left unanswered in part where it extends beyond what needs to be clarified. As a sidenote, this referral separated admissibility of an appeal from admissibility of a referral. Specifically, in this referral the EBoA decided that the referred questions were admissible even though the appeal was not admissible.

4. Admissibility of referrals under Art. 112(1)(b) EPC

4.1. Uniform application of the law or point of law of fundamental importance

Similar to referrals under Art. 112(1)(a) EPC, referrals under Art. 112(1)(b) EPC require a point of law of fundamental importance, or concern a lack of uniform application of the law by the Boards. Therefore, comments on said premises are the same (as in Section 3.1 above).

4.2. Motion from the President

The discretion to refer a point of law rests with the President of the EPO.

Said discretion cannot be taken away from the President merely because the President changed his/hers view with respect to a need to make a referral in a relatively short period of time. Also, change of presidency cannot be viewed as a pointer to consider a referral inadmissible.^{During the proceedings in referral G3/08, a matter of inadmissibility was raised since Alain Pompidou (at that time the former President of the EPO) refused to refer a point of law on computer-implemented inventions (CIIs) and Alison Brimelow (at that time the President of the EPO) decided to refer said point to the EBoA. Change of views between the former and the current President did not render the referral inadmissible.}

Despite the fact that the referral proceedings are initiated by the President of the EPO, it is up to the EBoA to rule on the admissibility of the referral.

4.3. Two Board of Appeal and two different decisions

The requirement of two BoAs is interpreted broadly in case law. In particular, in referral G3/08, it was stated that the same BoA in two different compositions is treated as two separate BoAs (see Headnote 2). This allows for admissible referrals from the same technical field. Additionally, this interpretation supports admissibility of a referral from the Legal Board of Appeal.^{Admissibility of such a referral was already endorsed in referral G4/98. See reasons point 1.1 in referral G4/98 and CLBA V.B.2.4.4.}

On the other hand, two different decisions are interpreted narrowly. Specifically, the two different decisions should be read as two conflicting decisions (as pointed in referral G3/08, Headnote 3). In this regard, conflict should be separated from a natural development of law (see referral G3/08, Headnote 4 and Headnote 6). In particular, the questions referred in G3/08 were inadmissible due to lack of divergent case law and any case law cited in support of the admissibility of the referral was considered a natural development of law which occurred over a period of time.

Lack of admissibility of a referral does not prevent the EBoA to present its views on the referred questions. Reference is made to referral G3/08 where the Board considered all questions to be inadmissible, but, nevertheless, provided valuable comments.

4.4. Further aspects of admissibility

A recent opinion of the EBoA in referral G3/19 invoked another aspect of admissibility which concerned the re-formulation of the referred questions. The grounds of G3/19 present different reasons behind reformulation of each question.

The first question in this referral was considered to be too general and directed to an abstract legal concept. In the EBoA’s view, that concept should be pursued by the legislator. As a result, the answer to this question as originally formulated would have been a violation of the separation of powers endorsed in the EPC as the EBoA would have acted as the legislator. It seems that the EBoA followed the principle of separation of powers as explained in an earlier referral G3/08.^{See reasons 7.2.1 of G3/08: “The European Patent Organisation is an international, intergovernmental organisation, modelled on a modern state order and based on the separation of powers principle, which the sovereign contracting states have entrusted with the exercise of some of their national powers in the field of patents. Thus the EPC assigns executive power to the Office to grant patents and to its President to manage the Office in organisational respects (Articles 4(3) and 10 ff. EPC), while to the Administrative Council it assigns limited legislative powers restricted to lower-ranking rules (Article 33 EPC), along with financial and supervisory powers”.}

The second question was considered to contain an answer to it. Therefore, the EBoA reformulated the question so as to ensure that it was unencumbered by the opinion of the former President of the EPO.

The above-mentioned aspects of admissibility are of systemic nature and, hence, do not originate from Art. 112(1)(b) EPC, but, rather, from general principles of procedural law recognized in the Contracting States.

5. Currently pending referrals

At the time of writing this contribution, there are two referrals under Art. 112(1)(a) EPC pending before the EBoA. Specifically, a referral regarding patentability of computer implemented simulations (G1/19^{Proceedings relating to application 03793825.5 entitled “Simulation of the movement of an autonomous entity through an environment” and initially filed by The Maia Institute. The application has been transferred to another applicant, i.e. Bentley Systems (UK) Limited.}) and a referral regarding double patenting (G4/19^{Proceedings relating to application 10718590.2 entitled “Prevention and Treatment of Allergic Diarrhoea” and filed by NESTEC S.A.}).

During oral proceedings in referral G1/19, the Board indicated doubts regarding admissibility of one of the referred questions. So far, there are no oral proceedings in G4/19. It follows that the Board has not yet presented any views on admissibility of the referred questions in that referral.

6. Summary

Referrals to the Enlarged Board of Appeal shape the jurisprudence of the EPO.

The referral proceedings before the EBoA can be initiated under Art. 112(1)(a) EPC by the BoA’s own motion or following a motion from a party to the appeal proceedings. Additionally, said proceedings can be initiated under Art. 112(1)(b) EPC under the discretion of the President of the EPO.

Proceedings under Art. 112(1)(a) EPC involve parties to the appeal proceedings in which the referral was made. A decision concluding the proceedings before the EboA directly binds the BoA that referred the question to the EBoA.

Proceedings under Art. 112(1)(b) EPC do not involve parties and are concluded with an opinion of the EBoA.

Both decisions and opinions of the EBoA indirectly bind the first and the second instance of the EPO since ultimately any divergence from any decision or any opinion of the EBoA needs to be referred to the EBoA.

Pending referrals will generally put a stay on proceedings before the first and the second instance in which decisions are to be affected by conclusions of said referrals.

Admissibility of a referral under Art. 112(1)(a) EPC requires a need for uniform application of law or point of law of fundamental importance. Further it requires that the application is pending and that the appeal proceedings are pending. Also, there is a requirement for a need to have a decision on the referred question. Further aspects of admissibility may involve a reformulation of the referred questions in order to meet the true intention of the referral.

Admissibility of a referral under Art. 112(1)(b) EPC also requires a need for uniform application of law or point of law of fundamental importance. Further, there is a need for a motion from the President and that two BoA arrived at two conflicting decisions on the same matter. Further aspects of admissibility may involve reformulation of the referred questions in order to meet general principles of procedural law recognized in the Contracting States such as separation of powers.

Examination of admissibility of a referral is ultimately done by the EBoA that handles the referral.

There are currently two pending referrals before the EPO, i.e. G1/19 and G4/19. Conclusion in these referrals will shed more light on the development of requirements of admissibility of referrals to the EBoA.

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