4.3. National decisions: no binding effect on the boards of appeal

In decision T 452/91 it was held that in proceedings before the instances of the EPO, questions of patentability were to be decided solely in accordance with the EPC. No national decision should be cited as if it were binding on the EPO, and claims should not be refused by the EPO on the ground that their "patentability cannot be upheld under the jurisdiction of one member state". It could be that the law in most or all other contracting states was different. The reasoning that led the national instance to its conclusion might well lead an EPO instance to a similar conclusion under the EPC, but this would first need a careful assessment of the EPC, and of relevant EPO board of appeal case law, a comparison with the legislation and jurisprudence on which the national instance reached its conclusion, and a study of the position in other contracting states (R 21/09, T 1753/06).

In G 1/19 (Pedestrian simulation), the Enlarged Board observed that in the course of the referral proceedings, reference was made to certain national decisions (from Germany and UK). However, as the referred questions were only understood in the framework of the COMVIK approach, which was specifically established in the case law of the boards of appeal and on which the national decisions are not based, the Enlarged Board did not consider it appropriate to address them in detail.