1. Guidelines not binding on boards

The Guidelines for Examination are not binding on the boards of appeal.

In T 1561/05 the board confirmed that the Guidelines for Examination in the EPO were not binding on the boards of appeal (applying T 162/82, OJ 1987, 533). T 1561/05 of 17 October 2006 is also referred to in J 7/10.

In T 740/98 the board noted, among other things, that the legal system established under the Convention did not treat the Guidelines as binding.

In T 1063/06 (OJ 2009, 516), the board held that the appellant could not successfully rely on the Guidelines to support its right to a functional definition of chemical compounds before the boards. It could be left open whether or not the appellant's contentions with respect to the Guidelines' content were correct, because the Guidelines were issued by the President of the EPO and had no normative binding effect on the boards of appeal (with reference to T 162/82 and Art. 23(3) EPC).

In T 1356/05 the board stated that no provision of the Guidelines could override an article or rule of the EPC (see also T 1360/05, and T 861/02, in which the board, while noting the advice in the Guidelines on decisions consisting of references to communications, stated that R. 68(2) EPC 1973 (R. 111 EPC) must always be complied with).

In T 500/00 the appellant argued that the disclaimer had been made in good faith according to the Guidelines and in accordance with the practice of the boards of appeal at the time of making the disclaimer. The board pointed out that the Guidelines were not rules of law and noted that what counted was not whether the opposition division had acted in accordance with the Guidelines, but whether it had acted in accordance with the Convention.

As to the alleged lack of consistency between what was in fact the established case law and the Guidelines for Examination, the board in T 1741/08 noted that it was not bound by the Guidelines, an important factor in the judicial independence of the boards of appeal (Art. 23(3) EPC). An alleged divergence between the Guidelines for Examination and case law therefore could not be a sufficient basis for challenging the case law by means of a referral to the Enlarged Board of Appeal.

In T 1363/12 the board stated that it is to be noted that the principles established by the Enlarged Board of Appeal for the assessment of the requirement of Art. 123(2) EPC could not be changed by issuing amended Guidelines.

In ex parte case T 1090/12, the appellant drew the attention to the Guidelines G‑VII, 3.1 ("an assertion that something is common general knowledge need only be backed by documentary evidence (for example, a textbook) if this is contested") and submitted that this passage was binding on the boards of appeal when exercising the power of the examining division. The appellant requested the referral of the following question to the Enlarged Board of Appeal: "To what extent is a Board of Appeal, when exercising power within the competence of the first instance department which was responsible for the decision appealed under Article 111(1) EPC, subject to the same constraints on that power as the first instance department, such as the duty to follow the Guidelines?". The board refused this request and stated that the Guidelines are not part of the European Patent Convention (see Art. 164(1) EPC 1973) and therefore cannot be binding upon the members of the boards of appeal (see Art. 23(3) EPC 1973).

In T 8/13, as regards the passages of the Guidelines (F‑IV, 2.2, F‑IV, 4.5.3, F‑IV, 6.2 and F‑IV, 4.13 – 2012 version) referred to by the appellant, the board limited itself to pointing out that they could not be applied in the way the appellant has argued and that, anyway, they have no binding effect on the boards of appeal. The scope of protection conferred by the claim(s) of a patent according to Art. 69 EPC and the protocol on its interpretation, is to be distinguished from the disclosure in a patent.

The fact that the Guidelines are not binding on the boards of appeal does not mean that the boards do not apply them or quote them as a source of inspiration (see in this chapter III.W.3.).