Case law - course

Question 1

G1/88 Admissibility of appeal by opponent – Opponent’s silence

Answer 1

The fact that an opponent does not make any observations on the text in which the Opposition
Division intends to maintain a European patent after being invited to do so under Rule 82 EPC does
not render his appeal inadmissible.

Question 2

G2/91 Reimbursement of appeal fees where several parties have filed an appeal

Answer 2

A person who is entitled to appeal but does not do so and instead confines himself to being a party
to the appeal proceedings under Article 107, second sentence, EPC, has no independent right to
continue the proceedings if the appellant withdraws the appeal.
Appeal fees cannot be reimbursed simply because several parties to proceedings before the EPO
have validly filed an appeal against the same decision.

Question 3

G10/91 Examination appeals from decisions of the Opposition Division

Answer 3

An Opposition Division or a Board of Appeal is not obliged to consider all the grounds for opposition
referred to in Article 100 EPC, going beyond the grounds covered by the statement under Rule 76(c)
EPC. In principle, the Opposition Division shall examine only such grounds for opposition which have
been properly submitted and substantiated in accordance with Article 99(1) in conjunction with Rule
76(c) EPC.
Exceptionally, the Opposition Division may in application of Article 114(1) EPC consider other
grounds for opposition which, prima facie, in whole or in part would seem to prejudice the
maintenance of the European patent.
Fresh grounds for opposition may be considered in appeal proceedings only with the approval of the
patentee.
See also G7/95, below – novelty and inventive step are (usually) separate grounds.

Question 4

G7/91 and G8/91 Effect of withdrawal of appeal by the sole appellant

Answer 4

In so far as the substantive issues settled by the contested decision at first instance are concerned,
a Board of Appeal may not continue opposition appeal proceedings after the sole appellant, who
was the opponent in the first instance, has withdrawn his appeal.
See Rule 84(2) EPC for the situation in which an opponent withdraws his opposition during first
instance opposition proceedings.

Question 5

G2/97 Good faith and protection of legitimate expectations

Answer 5

The principle of good faith does not impose any obligation on the Boards of Appeal to notify an
appellant that an appeal fee is missing when the notice of appeal is filed so early that the appellant
could react and pay the fee in time, if there is no indication – either in the notice of appeal or in any other document filed in relation to the appeal – from which it could be inferred that the appellant
would, without such notification, inadvertently miss the time limit for payment of the appeal fee.

Question 6

G1/12 Identity of the appellant

Answer 6

The answer to question 1 – namely whether when a notice of appeal, in compliance with Rule 99(1)(a)
EPC, contains the name and address of the appellant as provided in Rule 41(2)(c) EPC and it is
alleged that the identification is wrong due to an error, the true intention having been to file on behalf
of the legal person which should have filed the appeal, is it possible to correct this error under Rule
101(2) EPC by a request for substitution by the name of the true appellant – is yes, provided the
requirements of Rule 101(1) EPC have been met.
Proceedings before the EPO are conducted in accordance with the principle of free evaluation of
evidence. This also applies to the problems under consideration in the present referral.
In cases of an error in the appellant’s name, the general procedure for correcting errors under Rule
139, first sentence, EPC is available under the conditions established by the case law of the boards
of appeal.

Question 7

G1/14

Answer 7

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 any event, the Enlarged Board must examine whether the referral fulfils the criteria of Article
112(1)(a) EPC (including that a “decision is required”) and is thus admissible.
But if the referral is clearly the result of misapplying the law, and on a correct application an answer
from the Enlarged Board is no longer necessary for the decision in the appeal proceedings, it is to be
dismissed as inadmissible.

Question 8

G2/14 Inadmissible appeal or deemed not filed

Answer 8

If a Board of Appeal refers the Grand Board of Appeal by a reference to Article 112 (1) (a) EPC, it is
primarily for the referring Board to state in the order for reference that and why it considers a
decision of the Enlarged Board of Appeal to be necessary for a ruling in to refer the context of the
questions referred to the Board of Appeal before the Board of Appeal in the order for reference.
In any event, the Enlarged Board of Appeal has to examine whether a bill complies with and is
permitted by the provisions of Article 112 (1) (a) EPC (including the criterion of necessity).
However, if the bill is based on an obvious misapplication of a rule of law, with the result that, if the
provision is properly applied, a reply to the question by the Grand Chamber of Appeal does not
appear to be necessary for the appeal decision, it must be considered inadmissible.
The above is a Google translation from the original German. Despite this decision being issued in
2015, the EPO has not yet translated and published it in the OJ – indicative of its very low relevance.
In this case, the appeal was deemed to be filed on time by the Enlarged Board and so the original
question was not answered. Rule 126(1) EPC previously required certain notifications to be made by
registered letter with advice of delivery (i.e. not including UPS). As the original decision was notified
to the representative by UPS and not registered letter, the date of notification calculated by the
Enlarged Board was later than the date of notification calculated by the original Board and the
Enlarged Board deemed the appeal filed on time. Rule 126(1) has been amended to allow delivery
by registered letter with advice of delivery or equivalent.

Question 9

G1/18 Inadmissible appeal or deemed not filed

Answer 9

1. An appeal is deemed not to have been filed in the following cases:
   (a) where notice of appeal was filed within the two-month time limit prescribed in Article 108, first
   sentence, EPC AND the appeal fee was paid after expiry of that two month time limit;
   (b) where notice of appeal was filed after expiry of the two month time limit prescribed in Article 108,
   first sentence, EPC AND the appeal fee was paid after expiry of that two month time limit;
   (c) where the appeal fee was paid within the two month time limit prescribed in Article 108, first
   sentence, EPC for filing notice of appeal AND notice of appeal was filed after expiry of that two
   month time limit.
2. In the cases referred to in answers 1(a) to (c), reimbursement of the appeal fee is to be ordered ex
   officio.
3. Where the appeal fee was paid within or after the two month time limit prescribed in Article 108,
   first sentence, EPC for filing notice of appeal AND no notice of appeal was filed at all, the appeal fee
   is to be reimbursed.
   G2/19 Right to oral proceedings in the event of an obviously inadmissible appeal and the right
   to be heard in the right place
   A third party within the meaning of Article 115 EPC who has filed an appeal against a decision to
   grant a European patent has no right to have its request for an order that examination proceedings in
   respect of the European patent be reopened for the purpose of removing allegedly unclear claims
   (Article 84 EPC) heard at oral proceedings before a board of appeal of the European Patent Office.
   An appeal filed in such a way has no suspensive effect.
   Oral proceedings before the boards of appeal at their site in Haar do not infringe Articles 113(1) and
   116(1) EPC.

Question 10

G5/88, G7/88 and G8/88 Administrative Agreement

Answer 10

The capacity of the President of the European Patent Office to represent the European Patent
Organisation by virtue of Article 5(3) EPC is one of his functions but is not one of his powers. The
extent of the President’s power is governed by the EPC, but not by Article 5(3) EPC.
To the extent that the Administrative Agreement dated 29 June 1981 between the President of the
EPO and the President of the German Patent Office contains terms regulating the treatment of
documents intended for the EPO and received by the German Patent Office in Berlin, the President
of the EPO did not himself have the power to enter into such an agreement on behalf of the EPO, at
any time before the opening of the Filing Office for the EPO in Berlin on 1 July 1989.
In application of the principle of good faith and the protection of the legitimate expectations of users
of the EPO, if a person had at any time, since publication of the Agreement in the Official Journal and
before 1 July 1989, filed documents intended for the EPO at the German Patent Office in Berlin
(otherwise than by hand), the EPO was bound to treat such documents as if it had received them on
the date of receipt at the German Patent Office in Berlin.

Question 11

G2/90 Responsibilities of the Legal Board of Appeal

Answer 11

Under Article 21(3)(c) EPC, the Legal Board of Appeal is competent only to hear appeals against
decisions taken by an Examining Division consisting of fewer than four members when the decision
does not concern the refusal of a European patent application or the grant of a European patent. In
all other cases, i.e. those covered by Article 21(3)(a), (3)(b) and (4) EPC, the Technical Board of
Appeal is competent.

The provisions relating to competence in Article 21(3) and (4) EPC are not affected by Rule 13(3)
EPC.

Question 12

G3/03 Reimbursement of the appeal fee following interlocutory revision

Answer 12

In the event of interlocutory revision under Article 109(1) EPC, the department of first instance whose
decision has been appealed is not competent to refuse a request by an appellant for reimbursement
of the appeal fee.
Rather, it is the Board of Appeal which would have been competent under Article 21 EPC to deal
with the substantive issues of the appeal if no interlocutory revision had been granted that is
competent to decide on the request.

Question 13

G3/95 Inadmissible referral

Answer 13

The Enlarged Board of Appeal will refuse to rule on a point of law referred by the President of the
EPO if it determines that no conflict between two Board of Appeal decisions has occurred.

Question 14

G8/95 Responsibility for deciding on a correction of a decision to grant

Answer 14

An appeal from a decision of an Examining Division refusing a request under Rule 140 EPC for
correction of a decision to grant is to be decided by a Technical Board of Appeal.

Question 15

G1/02 Formality Officers’ powers

Answer 15

Formalities officers may be empowered by the Vice President of the EPO to refuse applications for
failure to fulfil specified formal matters.

Question 16

G3/08 Patentability of programs for computers

Answer 16

In exercising his or her right of referral a President of the EPO is entitled to make full use of the
discretion granted by Article 112 (1) (b) EPC, even if his or her appreciation of the need for a referral
has changed after a relatively short time.
Different decisions by a single Technical Board of Appeal in differing compositions may be the basis
of an admissible referral by the President of the EPO of a point of law to the Enlarged Board of
Appeal pursuant to Article 112 (1) (b) EPC.
As the wording of Article 112 (1) (b) EPC is not clear with respect to the meaning of
“different/abweichende/divergent” decisions the provision has to be interpreted in the light of its
object and purpose according to Article 31 of the Vienna Convention on the Law of Treaties (VCLT).
The purpose of the referral right under 112 (1) (b) EPC is to establish uniformity of law within the
European patent system. Having regard to this purpose of the presidential right to refer legal
questions to the Enlarged Board of Appeal the notion “different decisions” has to be understood
restrictively in the sense of “conflicting decisions”.
The notion of legal development is an additional factor which must be carefully considered when
interpreting the notion of “different decision” in Article 112 (1) (b) EPC. Development of the law is an
essential aspect of its application, whatever method of interpretation is applied, and is therefore
inherent in all judicial activity. Consequently, legal development as such cannot on its own form the
basis for a referral, only because case law in new legal and/or technical fields does not always
develop in linear fashion, and earlier approaches may be abandoned or modified.
Legal rulings are characterised not by their verdicts, but by their grounds. The Enlarged Board of
Appeal may thus take obiter dicta into account in examining whether two decisions satisfy the
requirements of Article 112 (1) (b) EPC.
T 424/03, Microsoft does deviate from a view expressed in T 1173/97, IBM, concerning whether a
claim to a program on a computer-readable medium necessarily avoids exclusion from patentability
under Article 52(2) EPC. However this is a legitimate development of the case law and there is no divergence which would make the referral of this point to the Enlarged Board of Appeal by the
President admissible.
The Enlarged Board of Appeal cannot identify any other inconsistencies between the grounds of the
decisions which the referral by the President alleges are divergent. The referral is therefore
inadmissible under Article 112(1)(b) EPC.

Question 17

G1/11 Competence to hear an appeal regarding refund of search fees

Answer 17

A technical board of appeal is competent to hear an appeal against a decision of the examining
division not to refund the search fees under Rule 64(2) EPC which is not taken together with a
decision granting a European patent or refusing a European patent application.

Question 18

G2/88 Change of claim category

Answer 18

A change of category of granted claims in opposition proceedings is not open to objection under
Article 123(3) EPC if it does not result in extension of the protection conferred by the claims as a
whole, when they are interpreted in accordance with Article 69 EPC and its Protocol. In this context,
the national laws of the Contracting States relating to infringement should not be considered.
An amendment of granted claims directed to “a compound” and to “a composition including such
compound”, so that the amended claims are directed to “the use of that compound in a
composition” for a particular purpose, is not open to objection under Article 123(3) EPC.
A claim to the use of a known compound for a particular purpose, which is based on a technical
effect which is described in the patent, should be interpreted as including that technical effect as a
functional technical feature, and is accordingly not open to objection under Article 54(1) EPC
provided that such technical feature has not previously been made available to the public.

Question 19

G3/89 and G11/91 Correction of the parts of a European patent application or European patent
relating to disclosure

Answer 19

The parts of a European patent application or of a European patent relating to disclosure (the
description, claims and drawings) may be corrected under Rule 139, second sentence, EPC only
within the limits of what a skilled person would derive directly, unambiguously and objectively, using
common general knowledge as of the date of filing, from the whole of the documents as filed. Such a
correction is of a strictly declaratory nature and thus does not infringe the prohibition of extension
under Article 123(2) EPC.
Evidence of what was common general knowledge on the date of filing may be furnished in
connection with an admissible request for correction in any suitable form.

Question 20

G2/92 Non-payment of further search fees

Answer 20

An applicant who fails to pay the further search fees for a non-unitary application when requested to
do so by the Search Division under Rule 64(1) EPC cannot pursue that application for the subject
matter in respect of which no search fees have been paid. Such an applicant must file a divisional
application in respect of such subject matter if he wishes to seek protection for it.

Question 21

G1/93 Conflicting requirements of Article 123 (2) and (3) EPC

Answer 21

If a European patent as granted contains subject matter that extends beyond the content of the
application as filed within the meaning of Article 123(2) EPC and which also limits the scope of
protection conferred by the patent, the patent cannot be maintained in opposition proceedings unamended, because the ground for opposition under Article 100(c) EPC prejudices the maintenance
of the patent. Nor can it be amended by deleting the limiting subject matter from the claims, because
such amendment would extend the protection conferred in breach of Article 123(3) EPC. Such a
patent can, therefore, only be maintained if there is a basis in the application as filed for replacing
such subject matter without violating Article 123(3) EPC.
A feature not disclosed in the application as filed added to the application during examination which,
without providing a technical contribution to the subject matter of the claimed invention, merely limits
the protection conferred by the patent as granted by excluding protection for part of the subjectmatter
of the claimed invention as covered by the application as filed, is not to be considered as
subject matter that extends beyond the content of the application as filed within the meaning of
Article 123(2) EPC. The ground for opposition under Article 100(c) EPC therefore does not prejudice
the maintenance of a European patent that includes such a feature.

The so-called “inescapable trap” – don’t unthinkingly file the amendments your client instructs!

Question 22

G7/93 Amendment after approval of text for grant

Answer 22

Until issue of a decision to grant a patent, an Examining Division has discretion under Rule 137(3),
EPC, as to whether or not to allow amendment of the application.
When exercising such discretion an Examining Division must consider all relevant factors. In
particular it must consider and balance the applicant’s interest in obtaining a patent which is legally
valid in all of the designated States, and the EPO’s interest in bringing the examination procedure to
a close. Having regard to the underlying objective of concluding the granting procedure on the basis
of a previously approved text, the allowance of a request for amendment at such a late stage in the
granting procedure will be an exception rather than the rule.

Typically amendments are allowed if they do not result in the reopening of examination

Question 23

G2/95 Replacement of application

Answer 23

The complete documents forming a European patent application, that is the description, claims and
drawings, cannot be replaced by way of a correction under Rule 139 EPC by other documents that
an applicant had intended to file with its request for grant.
This decision follows logically from G3/89 and G11/91 above.

Question 24

G1/03 and G2/03 Allowability of disclaimers

Answer 24

An amendment to a claim by the introduction of a disclaimer may not be refused under Article 123(2)
EPC for the sole reason that neither the disclaimer nor the subject matter excluded by it from the
scope of the claim has a basis in the application as filed.
A disclaimer may be allowable in order to:
(i) restore novelty by delimiting a claim against the state of the art under Article 54(3) and (4)
EPC;
(ii) restore novelty by delimiting a claim against an accidental anticipation under Article 54(2)
EPC (an anticipation is accidental if it is so unrelated to and remote from the claimed invention
that the person skilled in the art would never have taken it into consideration when making the
invention); or
(iii) disclaim subject matter which, under Articles 52 to 57 EPC, is excluded from patentability
for non-technical reasons.
A disclaimer should not remove more than is necessary either to restore novelty or to disclaim
subject matter excluded from patentability for non-technical reasons.
A disclaimer that is or becomes relevant for the assessment of inventive step or sufficiency of
disclosure adds subject-matter contrary to Article 123(2) EPC.

A claim containing a disclaimer must meet the requirements of clarity and conciseness of Article 84
EPC.

Question 25

G2/10 Disclaiming disclosed subject-matter

Answer 25

An amendment to a claim by the introduction of a disclaimer disclaiming from it subject-matter
disclosed in the application as filed infringes Article 123(2) EPC if the subject-matter remaining in the
claim after the introduction of the disclaimer is not, be it explicitly or implicitly, directly and
unambiguously disclosed to the skilled person using common general knowledge, in the application
as filed.
Determining whether or not that is the case requires a technical assessment of the overall technical
circumstances of the individual case under consideration, taking into account the nature and extent
of the disclosure in the application as filed, the nature and extent of the disclaimed subject-matter
and its relationship with the subject-matter remaining in the claim after the amendment.

Question 26

G1/16 Disclaimer/OLED

Answer 26

For the purpose of considering whether a claim amended by the introduction of an undisclosed
disclaimer is allowable under Article 123(2) EPC, the disclaimer must fulfil one of the criteria set out
in point 2.1 of the order of decision G 1/03.
The introduction of such a disclaimer may not provide a technical contribution to the subject-matter
disclosed in the application as filed. In particular, it may not be or become relevant for the
assessment of inventive step or for the question of sufficiency of disclosure. The disclaimer may not
remove more than necessary either to restore novelty or to disclaim subject-matter excluded from
patentability for nontechnical reasons.

Question 27

G1/10 Request to correct patent

Answer 27

Since Rule 140 EPC is not available to correct the text of a patent, a patent proprietor’s request for
such a correction is inadmissible whenever made, including after the initiation of opposition
proceedings.

Question 28

G1/05 Correction of divisional applications

Answer 28

So far as Article 76(1) EPC is concerned, a divisional application that at its actual date of filing
contains subject matter extending beyond the content of the earlier application as filed can be
amended later in order that its subject matter no longer so extends, even at a time when the earlier
application is no longer pending. Furthermore, the same limitations apply to these amendments as to
amendments to any other (non-divisional) applications.

Question 29

G1/06 Sequences of divisionals

Answer 29

In the case of a sequence of applications consisting of a root (originating) application followed by
divisional applications, each divided from its predecessor, it is a necessary and sufficient condition
for a divisional application of that sequence to comply with Article 76(1), second sentence, EPC that
anything disclosed in that divisional application be directly and unambiguously derivable from what
is disclosed in each of the preceding applications as filed.

Question 30

G1/09 Pending Application

Answer 30

Even if no appeal is ever filed, a European patent application which has been refused by a decision
of an Examining Division remains pending for the purposes of filing divisional applications until the
end of the expiry of the time limit for filing a notice of appeal against the decision to refuse.

Question 31

G5/91 Suspected partiality of a member of an Opposition Division

Answer 31

Although Article 24 EPC applies only to members of the Boards of Appeal and of the Enlarged Board
of Appeal, the requirement of impartiality applies in principle also to employees of the departments
of first instance of the EPO taking part in decision-making activities affecting the rights of any party.
There is no legal basis under the EPC for any separate appeal against an order of a director of a
department of first instance such as an Opposition Division rejecting an objection to a member of the
division on the ground of suspected partiality. However, the composition of the Opposition Division
may be challenged on such grounds in an appeal against the final decision of the division or against
an interlocutory decision under Article 106(3) EPC allowing separate appeal.

Question 32

G1/05 (interlocutory decision) Exclusion and objection of Board Members

Answer 32

There is no reasonable suspicion of partiality against a member of the Enlarged Board of Appeal
within the meaning of Article 24(3), first sentence, EPC merely because a member has previously
adopted a position on a matter in a prior decision of a Board of Appeal in which the Board member
concerned participated. Only if there are specific circumstances throwing doubt on the ability of a
member of the Enlarged Board of Appeal to approach the parties’ submissions with an open mind on
a later occasion will an objectively justified reason for exclusion exist.
If a member of a Board of Appeal in a notice of withdrawal identifies a ground that may by its nature
constitute a possible ground for an objection of partiality, the Board member concerned should
normally be replaced.

Question 33

G4/91 Intervention in opposition proceedings

Answer 33

It is a prerequisite for intervention in opposition proceedings by an assumed infringer pursuant to
Article 105 EPC that opposition proceedings are in existence at the point in time when a notice of
intervention is filed.
A decision by an Opposition Division on the issues raised by the opposition is a final decision in the
sense that thereafter the Opposition Division has no power to change its decision.
Proceedings before an Opposition Division are terminated upon issue of such a final decision,
regardless of when such decision takes legal effect.
In a case where, after issue of a final decision by an Opposition Division, no appeal is filed by a party
to the proceedings before the Opposition Division, a notice of intervention filed during the two-month
period for appeal provided by Article 108 EPC has no legal effect.

Question 34

G12/91 Conclusion of written proceedings

Answer 34

The decision-making process following written proceedings is completed on the date the decision to
be notified is handed over to the EPO postal service by the decision-making department’s formalities
section.

Question 35

G1/94 Scope of intervention during appeal proceedings

Answer 35

Intervention of the assumed infringer under Article 105 EPC is admissible during pending appeal
proceedings and may be based on any ground for opposition under Article 100 EPC.
In light of G10/91, above, where an intervener introduces a fresh ground of opposition in appeal
proceedings, the case should generally be remitted to the first instance Opposition Division.

Question 36

G3/04 Status of intervener in appeal proceedings

Answer 36

An intervener who intervenes in an opposition when an appeal is pending only acquires the status of
an opponent. Although an intervener is entitled to raise new grounds of opposition, all proceedings
are terminated in respect of all substantive issues, including the new grounds for opposition raised
by the intervener, if subsequently the sole, or each, appeal is withdrawn.

Question 37

G1/86 Re-establishment of rights of opponent

Answer 37

Article 122 EPC is not to be interpreted as being applicable only to the applicant and patent
proprietor. An appellant as opponent may have his rights re-established under Article 122 EPC if he
has failed to observe the time limit for filing the statement of grounds of appeal.

Question 38

G4/88 Transfer of opposition

Answer 38

An opposition pending before the European Patent Office may be transferred or assigned to a third
party as part of the opponent’s business assets together with the assets in the interests of which the
opposition was filed.

Question 39

G1/91 Unity in opposition – legally irrelevant

Answer 39

Unity of invention (Article 82 EPC) does not come under the requirements that a European patent
and the invention to which it relates must meet under Article 102(3) EPC when the patent is
maintained in amended form. It is consequently irrelevant in opposition proceedings whether the
European patent as granted or amended meets the requirement of unity.

Question 40

G9/91 Extent of power to examine opposition

Answer 40

The power of an Opposition Division or a Board of Appeal to examine and decide on the
maintenance of a European patent under Articles 101 and 102 EPC depends upon the extent to
which the patent is opposed in the notice of opposition pursuant to Rule 76(c) EPC. However, the
subject matter of claims depending on an independent claim that falls in opposition or appeal
proceedings may be examined as to patentability even if they have not been explicitly opposed,
provided their validity is prima facie in doubt on the basis of already available information.

Question 41

G8/93 Withdrawal of opposition without withdrawal of appeal

Answer 41

The withdrawal of an opposition by an opponent, who is the sole appellant, immediately and
automatically terminates the appeal proceedings, irrespective of whether the patent proprietor
agrees to termination of those proceedings and even if in the Board of Appeal’s view the
requirements under the EPC for maintaining the patent are not satisfied.

Question 42

G9/93 Opposition by patent proprietor

Answer 42

A European patent cannot be opposed by its own proprietor.

Question 43

G1/95 Fresh grounds for opposition

Answer 43

Where a patent has been opposed on the grounds set out in Article 100(a) EPC, but the opposition
has only been substantiated on the grounds of lack of novelty and lack of inventive step, the ground
of unpatentable subject-matter based upon Articles 52(1) and (2) EPC is a fresh ground for
opposition and accordingly may not be introduced into the appeal proceedings without the
agreement of the patentee.
See G10/91, above, for the criteria to be applied in determining whether new grounds may be
introduced.

Question 44

G7/95 Fresh grounds for opposition

Answer 44

Where a patent has been opposed under Article 100(a) EPC on the ground that the claims lack an
inventive step in view of documents cited in the notice of opposition, the ground of lack of novelty
based upon Articles 52(1) and 54 EPC is a fresh ground for opposition and accordingly may not be
introduced into the appeal proceedings without the agreement of the patentee. However, the
allegation that the claims lack novelty in view of the closest prior art document may be considered in
the context of deciding on lack of inventive step.

Question 45

G3/97 and G4/97 Opposition on behalf of a third party

Answer 45

An opposition is not inadmissible purely because the person named as opponent according to Rule
77(a) EPC is acting on behalf of a third party.
Such an opposition is, however, inadmissible if the involvement of the opponent is to be regarded as
circumventing the law by abuse of process. Such a circumvention of the law arises, in particular, if
the opponent is acting on behalf of the patent proprietor, or if the opponent is acting on behalf of a
client in the context of activities which, taken as a whole, are typically associated with professional
representatives, without possessing the relevant qualifications required by Article 134 EPC.
However, a circumvention of the law by abuse of process does not arise purely because a
professional representative is acting in his own name on behalf of a client or because an opponent
with either a residence or principal place of business in one of the EPC Contracting States is acting
on behalf of a third party who does not meet this requirement.
In determining whether the law has been circumvented by abuse of process, the principle of the free
evaluation of evidence is to be applied. The burden of proof is to be borne by the person alleging
that the opposition is inadmissible. The deciding body has to be satisfied on the basis of clear and
convincing evidence that the law has been circumvented by abuse of process.
The admissibility of an opposition on grounds relating to the identity of an opponent may be
challenged during the course of the appeal, even if no such challenge was raised before the
opposition division.

Question 46

G3/99 Admissibility of joint opposition or joint appeal

Answer 46

An opposition filed in common by two or more persons, which otherwise meets the requirements of
Article 99 EPC and Rules 3 and 76 EPC, is admissible on payment of only one opposition fee.
If the opposing party consists of a plurality of persons, an appeal must be filed by the common
representative under Rule 151 EPC. Where the appeal is filed by a non-entitled person, the Board of
Appeal shall consider it not to be duly signed and consequently invite the common representative to
sign it within a given time limit. The non-entitled person who filed the appeal shall be informed of this invitation. If the previous common representative is no longer participating in the proceedings, a new
common representative shall be determined pursuant to Rule 151 EPC.
In order to safeguard the rights of the patent proprietor and in the interests of procedural efficiency,
it has to be clear throughout the procedure who belongs to the group of common opponents or
common appellants. If either a common opponent or appellant (including the common
representative) intends to withdraw from the proceedings, the EPO shall be notified accordingly by
the common representative or by a new common representative determined under Rule 151(1) EPC
in order for the withdrawal to take effect.

Question 47

G2/04 Transfer of opposition

Answer 47

Status as an opponent cannot be freely transferred. A legal person who was a subsidiary of the
opponent when the opposition was filed and who carries on the business to which the opposed
patent relates cannot acquire the status as opponent if all its shares are assigned to another
company.
If, when filing an appeal, there is a justifiable legal uncertainty as to how the law is to be interpreted
in respect of the question of who the correct party to the proceedings is, it is legitimate that the
appeal is filed in the name of the person whom the person acting considers, according to his
interpretation, to be the correct party, and at the same time, as an auxiliary request, in the name of a
different person who might, according to another possible interpretation, also be considered the
correct party to the proceedings.

Question 48

G3/14 Examination of clarity objections

Answer 48

In considering whether, for the purposes of Article 101(3) EPC, a patent as amended meets the
requirements of the EPC, the claims of the patent may be examined for compliance with the
requirements of Article 84 EPC only when, and then only to the extent that, the amendment
introduces non-compliance with Article 84 EPC.

Question 49

G1/13 Opposition and Appeal status when being restored from administration

Answer 49

Where an opposition is filed by a company which subsequently, under the relevant national law
governing the company, for all purposes ceases to exist, but that company is subsequently restored
to existence under a provision of that governing national law, by virtue of which the company is
deemed to have continued in existence as if it had not ceased to exist, all these events taking place
before a decision of the Opposition Division maintaining the opposed patent in amended form
becomes final, the European Patent Office must recognize the retroactive effect of that provision of
national law and allow the opposition proceedings to be continued by the restored company.
Where, as outlined above, a valid appeal is filed in due time in the name of the non-existent
opponent company against the decision maintaining the European patent in amended form, and the
restoration of the company to existence, with retroactive effect as described above, takes place after
the expiry of the time limit for filing the notice of appeal under Article 108 EPC, the Board of Appeal
must treat the appeal as admissible.

Question 50

G1/98 Article 53(b) EPC does not exclude claims encompassing but not identifying plant
varieties

Answer 50

Only a claim to a specific plant variety is excluded from patentability under Article 53(b) EPC. A claim
that is not directed to a specific plant variety but which embraces multiple plant varieties is not
excluded from patentability under Article 53(b) EPC.

When a claim to a process for the production of a plant variety is examined, Article 64(2) EPC is not
to be taken into consideration.
The exception to patentability in Article 53(b), first half-sentence, EPC applies to plant varieties
irrespective of the way in which they were produced. Therefore, plant varieties containing genes
introduced into an ancestral plant by recombinant gene technology are excluded from patentability.

Question 51

G1/04 Diagnostic methods

Answer 51

In order for the subject matter of a claim relating to a diagnostic method practised on the human or
animal body to fall within the prohibition of Article 53(c) EPC, the claim must include features relating
to:
(i) the diagnosis for curative purposes stricto sensu representing the deductive medical or
veterinary decision phase as a purely intellectual exercise,
(ii) the preceding steps which are constitutive for making that diagnosis, and
(iii) the specific interactions with the human or animal body which occur when carrying those
out among these preceding steps which are of a technical nature.
Whether or not a method is a diagnostic method within the meaning of Article 53(c) does not depend
on the participation of a medical or veterinary practitioner, nor on whether all method steps can also,
or can only, be practised by medical or technical support staff, the patient himself or herself or an
automated system. Moreover, no distinction is to be made in this context between essential method
steps having diagnostic character and non-essential method steps lacking it.
In a diagnostic method under Article 53(c) EPC, the method steps of a technical nature belonging to
the preceding steps which are constitutive for making the diagnosis for curative purposes stricto
sensu must satisfy the criterion “practised on the human or animal body”.
Article 53(c) EPC does not require a specific type and intensity of interaction with the human or
animal body; a preceding step of a technical nature thus satisfies the criterion “practised on the
human or animal body” if its performance implies any interaction with the human or animal body,
necessitating the presence of the latter.

Question 52

G2/06 Stem cells

Answer 52

Rule 28(c) EPC forbids the patenting of claims directed to products which – as described in the
application – could, at the filing date, have been prepared exclusively by a method that necessarily
involves the destruction of the human embryo from which the said products are derived, even if the
said method is not part of the claims. It is not of relevance that after the filing date the same
products could be obtained without having to recur to a method necessarily involving the destruction
of human embryos.

Question 53

G1/07 Treatment by surgery

Answer 53

A claimed imaging method, in which, when carried out, maintaining the life and health of the subject
is important and which comprises or encompasses an invasive step representing a substantial
physical intervention on the body which requires professional medical expertise to be carried out and
which entails a substantial health risk even when carried out with the required professional care and
expertise, is excluded from patentability as a method for treatment of the human or animal body by
surgery pursuant to Article 53(c) EPC.
A claim which comprises a step encompassing an embodiment which is a “method for treatment of
the human or animal body by surgery” within the meaning of Article 53(c) EPC cannot be left to
encompass that embodiment.
The exclusion from patentability under Article 53(c) EPC can be avoided by disclaiming the
embodiment, it being understood that in order to be patentable the claim including the disclaimer
must fulfil all the requirements of the EPC and, where applicable, the requirements for a disclaimer to
be allowable as defined in decisions G 1/03 and G 2/03 of the Enlarged Board of Appeal.

Whether or not the wording of the claim can be amended so as to omit the surgical step without
offending against the EPC must be assessed on the basis of the overall circumstances of the
individual case under consideration.
A claimed imaging method is not to be considered as being a “treatment of the human or animal
body by surgery” within the meaning of Article 53(c) EPC merely because during a surgical
intervention the data obtained by the use of the method immediately allow a surgeon to decide on
the course of action to be taken during a surgical intervention.

Question 54

G2/08 Dosage regime

Answer 54

Where it is already known to use a medicament to treat an illness, Article 54(5) EPC does not exclude
that this medicament be patented for use in a different treatment by therapy of the same illness.
Such patenting is also not excluded where a dosage regime is the only feature claimed which is not
comprised in the state of the art.
Where the subject matter of a claim is rendered novel only by a new therapeutic use of a
medicament, such claim may no longer have the format of a so called Swiss-type claim as instituted
by decision G 5/83.
Note that not all of the national courts agree with this decision…

Question 55

G2/07 and G1/08 Essentially biological processes (Broccoli and Tomatoes)

Answer 55

A non-microbiological process for the production of plants which contains or consists of the steps of
sexually crossing the whole genomes of plants and of subsequently selecting plants is in principle
excluded from patentability as being “essentially biological” within the meaning of Article 53(b) EPC.
Such a process does not escape the exclusion of Article 53(b) EPC merely because it contains, as a
further step or as part of any of the steps of crossing and selection, a step of a technical nature
which serves to enable or assist the performance of the steps of sexually crossing the whole
genomes of plants or of subsequently selecting plants.
If, however, such a process contains within the steps of sexually crossing and selecting an additional
step of a technical nature, which step by itself introduces a trait into the genome or modifies a trait in
the genome of the plant produced, so that the introduction or modification of that trait is not the
result of the mixing of the genes of the plants chosen for sexual crossing, then the process is not
excluded from patentability under Article 53(b) EPC.
In the context of examining whether such a process is excluded from patentability as being
“essentially biological” within the meaning of Article 53(b) EPC, it is not relevant whether a step of a
technical nature is a new or known measure, whether it is trivial or a fundamental alteration of a
known process, whether it does or could occur in nature or whether the essence of the invention lies
in it.

Question 56

G2/12 Tomatoes II

Answer 56

The exclusion of essentially biological processes for the production of plants in Article 53(b) EPC
does not have a negative effect on the allowability of a product claim directed to plants or plant
material such as a fruit.
In particular, the fact that the only method available at the filing date for generating the claimed
subject-matter is an essentially biological process for the production of plants disclosed in the patent
application does not render a claim directed to plants or plant material other than a plant variety
unallowable.
In the circumstances, it is of no relevance that the protection conferred by the product claim
encompasses the generation of the claimed product by means of an essentially biological process
for the production of plants excluded as such under Article 53(b) EPC.
At least partially overruled by G3/19, see below.

Question 57

G2/13 Broccoli II

Answer 57

The exclusion of essentially biological processes for the production of plants in Article 53(b) EPC
does not have a negative effect on the allowability of a product claim directed to plants or plant
material such as plant parts.
The fact that the process features of a product-by-process claim directed to plants or plant material
other than a plant variety define an essentially biological process for the production of plants does
not render the claim unallowable.
The fact that the only method available at the filing date for generating the claimed subject-matter is
an essentially biological process for the production of plants disclosed in the patent application does
not render a claim directed to plants or plant material other than a plant variety unallowable.
In the circumstances, it is of no relevance that the protection conferred by the product claim
encompasses the generation of the claimed product by means of an essentially biological process
for the production of plants excluded as such under Article 53(b) EPC.
At least partially overruled by G3/19, see below.

Question 58

G3/19 Article 164(2) EPC / Pepper

Answer 58

Taking into account developments after decisions G 2/12 and G 2/13 of the Enlarged Board of
Appeal, the exception to patentability of essentially biological processes for the production of plants
or animals in Article 53(b) EPC has a negative effect on the allowability of product claims and
product-by-process claims directed to plants, plant material or animals, if the claimed product is
exclusively obtained by means of an essentially biological process or if the claimed process features
define an essentially biological process.
This negative effect does not apply to European patents granted before 1 July 2017 and European
patent applications which were filed before that date and are still pending.

Question 59

G1/19 Patentability of computer implemented simulations

Answer 59

A computer-implemented simulation of a technical system or process that is claimed as such can,
for the purpose of assessing inventive step, solve a technical problem by producing a technical
effect going beyond the simulation’s implementation on a computer.
For that assessment it is not a sufficient condition that the simulation is based, in whole or in part, on
technical principles underlying the simulated system or process.
The answers to the first and second questions are no different if the computer-implemented
simulation is claimed as part of a design process, in particular for verifying a design.

Question 60

G6/88 Plant growth regulating agent – second non-medical indication

Answer 60

A claim to the use of a known compound for a particular purpose, which is based on a technical
effect that is described in the patent, should be interpreted as including that technical effect as a
functional technical feature, and is accordingly not open to objection under Article 54(1) EPC
provided that the technical feature has not previously been made available to the public.
This case corresponds with G2/88, above.

Question 61

G1/92 Availability to the public

Answer 61

The chemical composition of a product is state of the art when the product as such is available to
the public and can be analysed and reproduced by the skilled person, irrespective of whether or not
particular reasons can be identified for analysing the composition.

The same principle applies mutatis mutandis to any other product.

Question 62

G3/98 and G2/99 Calculation of the six-month period under Article 55(1) EPC

Answer 62

For the calculation of the six-month period referred to in Article 55(1) EPC, the relevant date is the
date of the actual filing of the European patent application. The date of priority is not considered in
calculating this period.

Question 63

G3/93 Status of document published during the priority period

Answer 63

A document published during the priority period, the technical contents of which correspond to that
of the priority document, constitutes prior art citable under Article 54(2) EPC against a European
patent application claiming that priority, to the extent that priority is not validly claimed.
This also applies if a claim to priority is invalid due to the fact that the priority document and the
subsequent European application do not concern the same invention because the European
application claims subject matter not disclosed in the priority document.

Question 64

G2/98 Requirement for claiming priority of the “same invention”

Answer 64

The requirement for claiming priority of “the same invention”, referred to in Article 87(1) EPC, means
that priority of a previous application in respect of a claim in a European patent application in
accordance with Article 88 EPC is to be acknowledged only if the skilled person can derive the
subject-matter of the claim directly and unambiguously, using common general knowledge, from the
previous application as a whole.

Question 65

G1/15 Partial priority

Answer 65

Under the EPC, entitlement to partial priority may not be refused for a claim encompassing
alternative subject-matter by virtue of one of more generic expressions or otherwise (generic “OR”-
claim) provided that said alternative subject-matter has been disclosed for the first time, directly, or
at least implicitly, unambiguously and in an enabling manner in the priority document. No other
substantive conditions or limitations apply in this respect.
This case is regarded as ending the poisonous divisionals argument.

Question 66

G4/92 Right to comment – Party absent from oral proceedings

Answer 66

A decision against a party who has been duly summoned but who fails to appear at oral proceedings
may not be based on facts put forward for the first time during those oral proceedings.
Similarly, new evidence may not be considered unless it has been previously notified and merely
supports the assertions of the party who submits it. In principle, however, new arguments may used
to support the reasons for the decision.
This decision has been overridden for proceedings in front of the Boards of Appeal by RPBA Article
15(3). However, it still applies to first instance departments.

Question 67

G2/94 Oral submissions by an accompanying person

Answer 67

A Board of Appeal has a discretion to allow an accompanying person (who is not entitled under
Article 134(1) or (8) EPC to represent parties to proceedings before the EPO) to make submissions
during oral proceedings in ex parte proceedings, in addition to the complete presentation of a party’s
case by the professional representative.
In ex parte proceedings a professional representative should request permission for the making of
such oral submissions in advance of the day appointed for oral proceedings. The request should
state the name and qualifications of the person for whom permission is requested, and should
specify the subject matter of the proposed oral submissions.
The Board of Appeal should exercise its discretion in accordance with the circumstances of each
individual case. The main criterion to be considered is that the Board should be fully informed of all relevant matters before deciding the case. The Board should be satisfied that the oral submissions
are made by the accompanying person under the continuing responsibility and control of the
professional representative.
During either ex parte or inter partes proceedings, a Board of Appeal should refuse permission for a
former member of the Boards of Appeal to make oral submissions during oral proceedings before it,
unless it is completely satisfied that a sufficient period of time has elapsed following termination of
such former member’s appointment to the Boards of Appeal, so that the Board of Appeal could not
reasonably be suspected of partiality in deciding the case if it allowed such oral submissions to be
made.
A Board of Appeal should normally refuse permission for a former member of the Boards of Appeal
to make oral submissions during oral proceedings before it, until at least three years have elapsed
following termination of the former member’s appointment to the Boards of Appeal. After three years
have elapsed, permission should be granted except in very special circumstances.

Question 68

G4/95 Oral submissions by an accompanying person

Answer 68

During oral proceedings under Article 116 EPC in the context of opposition or opposition appeal
proceedings, a person accompanying the professional representative of a party may be allowed to
make oral submissions on specific legal or technical issues on behalf of that party, otherwise than
under Article 117 EPC, in addition to the complete presentation of the party’s case by the
professional representative.
Such oral submissions cannot be made as a matter of right, but only with the permission of and at
the discretion of the EPO. The following main criteria should be considered by the EPO when
exercising its discretion to allow oral submissions by an accompanying person in opposition or
opposition appeal proceedings:
(i) The professional representative should request permission for such oral submissions to be made.
The request should state the name and qualifications of the accompanying person, and should
specify the subject matter of the proposed oral submissions.
(ii) The request should be made sufficiently in advance of the oral proceedings so that all opposing
parties are able properly to prepare themselves in relation to the proposed oral submissions.
(iii) A request that is made shortly before or at the oral proceedings should in the absence of
exceptional circumstances be refused, unless each opposing party agrees to the making of the oral
submissions requested.
(iv) The EPO should be satisfied that oral submissions by an accompanying person are made under
the continuing responsibility and control of the professional representative.
No special criteria apply to the making of oral submissions by qualified patent lawyers of countries
that are not Contracting States to the EPC.

Question 69

G1/21 Oral proceedings by videoconference

Answer 69

During a general emergency impairing the parties’ possibilities to attend in-person oral proceedings
at the EPO premises, the conduct of oral proceedings before the boards of appeal in the form of a
videoconference is compatible with the EPC even if not all of the parties to the proceedings have
given their consent to the conduct of oral proceedings in the form of a videoconference.

Question 70

G1/89 Non-unity a posteriori

Answer 70

The agreement between the European Patent Organisation and WIPO dated 7 October 1987,
including the obligation under its Article 2 for the EPO to be guided by the PCT guidelines for
international search, is binding upon the EPO when acting as an ISA and upon the Boards of Appeal
of the EPO when deciding on protests against the charging of additional search fees under the provisions of Article 17(3)(a) PCT. Consequently, as foreseen in these guidelines, an international
application may, under Article 17(3)(a) PCT, be considered not to comply with the requirement of
unity of invention, not only “a priori”, but also “a posteriori”, i.e. after taking prior art into
consideration. However, such consideration only has the procedural effect of initiating the special
procedure laid down in Article 17 and Rule 40 PCT and is not, therefore, a “substantive examination”
in the normal sense of that term.

Question 71

G2/89 Non-unity a posteriori

Answer 71

The EPO in its function as an ISA may, pursuant to Article 17(3)(a) PCT, request a further search fee
where the international application is considered to lack unity of invention “a posteriori”

Question 72

G1/90 Revocation of the patent for failure to meet formal requirements when a patent is
maintained in an amended form

Answer 72

The revocation of a patent under Article 102(4) and (5) EPC requires a decision.

Question 73

G6/91 Entitlement to a fee reduction

Answer 73

The persons referred to in Article 14(4) EPC are entitled to the fee reduction under Rule 6(3) EPC if
they file the essential item of the first act in filing, examination or appeal proceedings in an official
language of the State concerned other than English, French or German, and supply the necessary
translation no earlier than simultaneously.
The essential item of the first act in appeal proceedings is the notice of appeal, so to secure
entitlement to the reduction in the appeal fee it suffices that said document be filed in an official
language of a Contracting State which is not an official language of the European Patent Office
provided that it is translated into one of the latter languages, even if subsequent items such as the
statement of grounds of appeal are filed only in an EPO official language.

Question 74

G6/95 Application of Rule 116 EPC vis-à-vis the Boards of Appeal

Answer 74

Rule 116 EPC does not apply to the Boards of Appeal.

Question 75

G3/92 Filing of replacement application by lawful applicant

Answer 75

When a national court has determined by a final decision that a person other than the applicant is
entitled to the grant of a European patent, and that person, in compliance with the specific
requirements of Article 61(1) EPC, files a new European patent application in respect of the same
invention under Article 61(1)(b) EPC, it is not a precondition for acceptance of the new application
that the earlier original usurping application is still pending before the EPO at the time the new
application is filed.

An unusual decision in that it was accompanied by a dissenting opinion

Question 76

G4/08 Language of procedure

Answer 76

If an international patent application under the PCT is filed and published in one of the three official
languages of the EPO, that language will be the language of procedure when the application is
prosecuted before the EPO. The language of procedure cannot by changed by filing a translation of
the application into one of the other two EPO official languages when the application enters the
regional phase. Languages, other than the language of proceedings can be used during the
prosecution of an international patent application during the regional phase before the EPO only to
the extent permitted by Article 14(3) EPC.

Question 77

G4/19 Double patenting

Answer 77

A European patent application can be refused under Articles 97(2) and 125 EPC if it claims the same
subject-matter as a European patent which has been granted to the same applicant and does not
form part of the state of the art pursuant to Article 54(2) and (3) EPC.
The application can be refused on that legal basis, irrespective of whether it
a) was filed on the same date as, or
b) is an earlier application or a divisional application (Article 76(1) EPC) in respect of, or
c) claims the same priority (Article 88 EPC) as the European patent application leading to the
European patent already granted.

Question 78

G 0001/22 (Competence of the European Patent Office to assess whether a party is entitled to claim priority under Article 87(1) EPC (Entitlement to priority))

Answer 78

I. The European Patent Office is competent to assess whether a party is entitled to claim priority under Article 87(1) EPC.

There is a rebuttable presumption under the autonomous law of the EPC that the applicant claiming priority in accordance with Article 88(1) EPC and the corresponding Implementing Regulations is entitled to claim priority.

II. The rebuttable presumption also applies in situations where the European patent application derives from a PCT application and/or where the priority applicant(s) are not identical with the subsequent applicant(s).

In a situation where a PCT application is jointly filed by parties A and B, (i) designating party A for one or more designated States and party B for one or more other designated States, and (ii) claiming priority from an earlier patent application designating party A as the applicant, the joint filing implies an agreement between parties A and B allowing party B to rely on the priority, unless there are substantial factual indications to the contrary.

Question 79

G 0002/21 (Reliance on a purported technical effect for inventive step (plausibility)) 23-03-2023

Answer 79

I. Evidence submitted by a patent applicant or proprietor to prove a technical effect relied upon for acknowledgement of inventive step of the claimed subject-matter may not be disregarded solely on the ground that such evidence, on which the effect rests, had not been public before the filing date of the patent in suit and was filed after that date.

II. A patent applicant or proprietor may rely upon a technical effect for inventive step if the skilled person, having the common general knowledge in mind, and based on the application as originally filed, would derive said effect as being encompassed by the technical teaching and embodied by the same originally disclosed invention.