3. The boards' application of the Guidelines in specific cases

Although the boards are not bound by the Guidelines, this does not mean that they do not take them into account or turn to them for inspiration when reaching their decisions. It should be borne in mind that the edition of the Guidelines referred to in the decisions summarised below to illustrate the related case law is that applied by the board in the specific case concerned and not necessarily that currently in force (March 2022 version).

In T 651/91 the board cited with approval the Guidelines, confirming that a generic disclosure did not normally deprive any specific example falling within that disclosure of novelty.

In T 523/89 the board saw no reason to disagree with the general principle of interpretation laid down in the Guidelines.

In T 631/97 (OJ 2001, 13) the board found that the interpretation of R. 46(1) EPC 1973 (R. 64 EPC) was in agreement with that of the Enlarged Board of Appeal in Opinion G 2/92. It also found that the Guidelines were fully consistent with G 2/92 and R. 46 EPC 1973.

In T 587/98 (OJ 2000, 497) the board found that the claims were not "conflicting" claims within the meaning of the Guidelines.

The Enlarged Board in G 3/14 (OJ 2015, A102) observed that neither the EPC itself nor the Implementing Regulations made any distinction between independent and dependent claims when it came to their compliance with the requirements of the EPC at the examination stage. Although not part of the express legal framework of the EPC, the Guidelines likewise made no distinction between independent and dependent claims when it came to objections of lack of clarity (see e.g. Guidelines F‑IV, 4.1 – November 2014 version; this part is unchanged in F‑IV, 4.1 – March 2022 version).

In the ex parte case T 655/13 (examining division's reasoning based on a pertinent prior-art document in a non-official EPO language), the board based its reasoning partly on the Guidelines.

In T 300/89 (OJ 1991, 480) the board held, in relation to the appellant's complaint as to the failure of the examiner to telephone as requested, that the practice in relation to such informal communications was clearly set out in the Guidelines.

The applicant's request "to render a decision on the record" was not to be construed as a waiver of the right to a fully reasoned first-instance decision, even in the light of the suggested procedure in the Guidelines (see T 1309/05, T 583/04).

In T 1709/06 the board noted that although the Guidelines E‑X, 4.4, suggested a procedure for issuing a decision "on the state of the file" taking a standard form, a number of decisions of the boards of appeal (see T 1309/05, T 1356/05) had pointed out that such a standard decision form did not meet the "reasoned" requirement of R. 68(2) EPC 1973 (R. 111(2) EPC).

In T 1123/04 the board noted that R. 68(2) EPC 1973 (R. 111(2) EPC) stipulated that decisions of the European Patent Office which were open to appeal had to be reasoned. The criteria for the "reasoning" were, for instance, elaborated in the Guidelines.

In T 2068/14 the board had to consider whether the decision of the examining division was adequately reasoned. The board endorsed the following statement in the Guidelines, as it reflected the jurisprudence of the boards of appeal: "It is particularly important that special attention should be paid to important facts and arguments which may speak against the decision made. If not, the impression might be given that such points have been overlooked" (Guidelines of September 2013, then applicable; idem Guidelines E‑X, 2.6 – March 2022 version). The board in T 1998/10 (use of standard form) backed up its reading of the R. 111(2) EPC provision on the need to give reasons for decisions by referring to the same section of the Guidelines E‑IX, 5, according to which the reasons given in a decision should be "complete and independently comprehensible, i.e. generally without references".

In T 833/99, which concerned a number of alleged prior uses, the board observed that, contrary to what the appellant (opponent) had argued, it was not the conditions set out in the first paragraph of Guidelines D‑V, 3.1.3.1 (G‑IV, 7.2.1 – March 2022 version) that applied but those in the last sentence of the final paragraph (in G‑IV, 7.2.1 – March 2022 version: "... however, all concealed features which could be ascertained only by dismantling or destroying the object will not be deemed to have been made available to the public.").

The board in T 2362/13, referring to the Guidelines G‑II, 3.5.3, and T 983/11, stated that logistics was generally considered to fall within the categories of excluded matter in Art. 52(2) EPC.

In J 12/18 the board found that the reasoning in the appealed decision and the guidelines cited there (Guidelines A‑IV, 1.3.4) were in line with its interpretation of Art. 76(2) EPC (reached in accordance with recognised rules of interpretation).

In T 261/15, in respect of the argument that a selected sub-range has inter alia to be sufficiently far removed from the end-points of the known range, the board pointed out that it was not aware of any jurisprudence stating this condition in such a general way. It was true that the Guidelines for Examination, G‑VI, 8, recited under point (ii)(b) this criterion as a condition for acknowledging novelty of a numerical selection. However, neither decision T 198/84 nor T 279/89, which are cited in this passage of the Guidelines, stipulates this condition.

In interpreting R. 116(1) EPC and deciding whether or not the department of first instance had applied it correctly, the board in T 1750/14 applied a literal reading of its provisions in conjunction with those of R. 132(2) EPC, as found in the Guidelines D‑VI, 3.2 – September 2013 version, last sentence.

In T 2431/19, the examining division had invoked R. 137(5) EPC as a basis for exercising discretion. The board was aware that the Guidelines used terminology relating to "admittance" in connection with R. 137(5) EPC (see Guidelines F‑IV, 3.3 – November 2018 version, fourth paragraph: "such amendments may not be admitted"; H‑II, 6.2, third paragraph: "such amendments are not admissible"). However, the board held that R. 137(5) EPC, as opposed to R. 137(3) EPC, did not give the examining division any discretionary power.

In T 944/15 the board disagreed with the statement in the Guidelines G‑II, 4.2.1 – November 2019 version, last paragraph, to which the appellant had referred and which read as follows: "Claims to medical devices, computer programs and storage media which comprise subject-matter corresponding to that of a method for treatment of the human or animal body by surgery or therapy or to that of a diagnostic method practised on the human or animal body are not to be objected to under Art. 53(c) EPC, because only method claims may fall under the exception of Art. 53(c) EPC."

The reasons given in the EPO notice of 8 November 2013 on handwritten amendments for changing a practice that had been applied for years at first instance and was also recognised in the Guidelines do not warrant changing the established practice of the boards of appeal and the related case law (T 37/12, citing T 1635/10, point 5 of the Reasons).

The board in T 736/14, whilst observing that the EPC contains no explicit provisions about how to proceed if an applicant whose application is non-unitary responds unclearly or in a misleading way to an invitation from the examining division to specify which searched invention it wishes to prosecute further, nevertheless found that Guideline H‑II, 7.1 – version 2013 should not have been applied at all when refusing to admit the auxiliary request, since the applicant had not clearly indicated the invention to be further examined at that stage of the examination proceedings.

The board in T 2015/20 stated that neither T 609/02 nor the case law that had developed from that decision signalled a deviation from the established case law or an interpretation differing from the Guidelines F‑III, 1, in particular with respect to the precondition of serious doubts for a convincing argument of lack of sufficiency.

When dealing with internet disclosures, the boards have referred to the Guidelines (see Guidelines G‑IV, 7.5.2 – March 2022 version) and established the balance of probabilities as the applicable standard of proof (T 2227/11, upheld more recently in T 1711/11, T 353/14, T 545/08). Earlier decision T 1134/06 that the stricter standard of proof "beyond reasonable doubt" had to be applied to internet disclosures has been refuted by the later case law cited above.

In T 314/18 the board stated that no provision of the EPC required that an alleged prior use be conclusively proven within the opposition period. When referring to the EPO Guidelines G‑IV, 7.2, and E‑IV, 1.2, and arguing that the lack of adequate substantiation of the prior use in the notice of opposition could not be overcome by hearing the witness, the opposition division had mixed up the submission of facts and the proof required to establish them.

In T 967/17 the board decided that, contrary to what had been implied by the appellant, the Guidelines F‑IV, 4.14, did not state that a claim directed towards a first entity and referring to a second entity that was not part of a claimed first entity could be (re-)directed towards a combination of those two entities. Rather, it had to be verified, for each case individually, whether such a combination fell within the boundaries set by Art. 123(2) EPC.

In T 879/18 the board concluded, with reference to the Guidelines E‑VI, 2.2(a) – 2017 version, that the opposition division had exercised its discretion unreasonably in not admitting the amended main request (now first auxiliary request) in response to the opponent's fresh objection. The board decided to admit the auxiliary request into the appeal proceedings.

The board in T 1121/17 stated (in the catchword) that the criteria set out in the Guidelines H‑IV, 3.5 – November 2016 version, which concerned the allowability of amendments under Art. 123(3) EPC, were inappropriate for the assessment of compliance with Art. 123(2) EPC.