2.3. Referral by a board of appeal
2.3.3 Relevance of the referred question for the underlying case
The referred question must not have a merely theoretical significance for the original proceedings which would be the case if the referring board were to reach the same decision regardless of the answer to the referred question (G 3/98, OJ 2001, 62; G 2/99, OJ 2001, 83; see also T 547/08). It must be relevant for deciding the case in question (G 2/04, OJ 2005, 549; T 2136/16), or the Enlarged Board must be satisfied that "answers to the questions referred are necessary for each Board of Appeal to be able to dispose of their respective appeals on the correct legal basis" (G 1/05 date: 2007-06-28, OJ 2008, 271; G 1/06, OJ 2008, 307; see also G 2/06, OJ 2009, 306). In T 154/04 (OJ 2008, 46; see also J 16/90, OJ 1992, 260; and T 1044/07) the board held that the answer to the referred question must be "essential to reach a decision on the appeal in question".
In T 520/01 (see also T 787/06) the board referred to G 3/98, did not maintain the patent on grounds other than those to which the question related, and thus refused the party's referral request. In T 469/92, the board granted the appellant's main request, and therefore did not consider its auxiliary referral request.
In G 1/98 (OJ 2000, 111) one of the questions referred by the board concerned objections of which the appellant had not been made aware before, and the appellant expressed its intention to the Enlarged Board to make the required amendments. As a result, the Enlarged Board doubted the relevance of the referred question and deemed it inappropriate to offer guidance. In G 7/95 (OJ 1996, 626, see also G 9/92 of 22 June 1993 date: 1993-06-22) the Enlarged Board, having regard to the particular facts of the case before the referring board, deemed it not necessary to answer the referred question either.
In G 1/09 (OJ 2011, 336) a board referred a question on whether a rejected patent application was still pending under R. 25 EPC 1973 (R. 36 EPC; divisional applications) when no appeal had been filed but the time limit for filing an appeal had not yet expired. In his comments under Art. 9 RPEBA, the President of the EPO raised two additional questions, namely whether a granted application was still pending in such a situation, and whether the filing of an inadmissible appeal could maintain the pendency of the application beyond the expiry of the time limit for filing an appeal. The first additional question was – although not relevant for the decision in the underlying case – answered by the Enlarged Board in an obiter dictum, whereas the second was considered not to be covered by the referral decision.
In G 2/03 (OJ 2004, 448) the Enlarged Board stated that not all substantive requirements had been examined by the referring Board and that the referred question could, in the end, turn out to be irrelevant. Taking into account the usual order of examination according to which the referred question (on the allowability of disclaimers) was examined before substantive requirements such as inventive step, the Enlarged Board considered the referral nevertheless admissible. In G 2/99 (OJ 2001, 83), the Enlarged Board had doubts whether the answer to the referred question would have an impact on the decision in the underlying proceedings, but deemed the referral nevertheless admissible, for reasons of procedural efficiency. In G 2/07 (OJ 2012, 130) the referrals were considered admissible "irrespective of whether an answer is actually required on all aspects which the referred questions might in theory be seen as embracing".
In G 1/14 the question referred to the Enlarged Board was whether an appeal is inadmissible or deemed not to have been filed if the notice of appeal is filed and the fee for appeal paid after expiry of the time limit (see chapter V.A.11.3. "Appeal deemed not to have been filed"). Until 1 April 2015 the wording of R. 126(1) EPC was limited to "Notification by post ... by registered letter with advice of delivery" (since amended to: "Notification by postal services ... by registered letter with advice of delivery or equivalent"). In the Enlarged Board's view notification of first-instance decisions by the postal service UPS was not covered by R. 126(1) EPC as formerly in force, so the referring board's finding that the appeal had not been lodged in time was inoperative. As this meant there was no need to refer the question, the Enlarged Board dismissed the referral as inadmissible.
- T 758/20
Catchword:
Decision G 1/21 cannot be read as restricting the possibility of summoning for oral proceedings by videoconference contrary to the will of one of the parties only in the case of a general emergency. G 1/21 does not exclude that there are other circumstances specific to a case that justify the decision not to hold the oral proceedings in person.
- T 116/18
Catchword:
- Binding effect of a referring decision (see Reasons, points 9 to 9.4.5)
- Interpretation of order no. 2 of G 2/21 (see Reasons, points 10 to 11.14, in particular points 11.10 and 11.14)
- Submissions based on earlier decisions of the boards of appeal
- admittance into the appeal proceedings (see Reasons, points 32 to 32.4, in particular point 32.3)- T 439/22
Abstract
In T 439/22 the interpretation of the term "gathered sheet" in claim 1 was decisive to assess novelty. In particular, the prior-art document D1 disclosed – in addition to all other features of the claim – a tobacco sheet spirally wound. The board stated that a skilled person in the current technical field would understand the term "gathered sheet", when read in isolation, as defining a sheet folded along lines to occupy a tridimensional space. Accordingly, when assigning this usual meaning to the term, the subject-matter of claim 1 would have to be regarded as novel. However, if the same term was read in a broader but still technically meaningful manner in view of the definition in paragraph [0035] of the description, the subject-matter of claim 1 would lack novelty. Said paragraph [0035] establishes that "the term "gathered" denotes that the sheet of tobacco material is convoluted, folded, or otherwise compressed or constricted substantially transversely to the cylindrical axis of the rod."
The board examined the case law of the boards and concluded that it was divergent on the following questions, which were all decisive for the case in hand:
- legal basis for construing patent claims
- whether it is a prerequisite for taking the figures and description into account when construing a patent claim, that the claim wording, when read in isolation, be found to be unclear or ambiguous
- extent to which a patent can serve as its own dictionary
According to the board, a decision of the Enlarged Board of Appeal was also required because a point of law of fundamental importance had arisen, since claim construction by the EPO had to be seen within the greater context of the patent protection system as a whole. To provide an overview on claim interpretation in validity and enforcement proceedings, the board took into account decisions of national courts in France, Germany and United Kingdom as well as two recent decisions of the Court of Appeal of the Unified Patent Court (Nanostring v 10x Genomics, UPC CoA 335/2023, App 576355/2023 of 26 February 2024; VusionGroup v Hanshow (APL 8/2024, ORD 17447/2024) of 13 May 2024).
The board concluded that, in order to come to a decision in the case at hand, three questions first had to be answered, both to ensure the uniform application of the law and because a point of law of fundamental importance had arisen. The board thus referred the following questions to the Enlarged Board (referral pending under G 1/24 – Heated aerosol):
1. Is Art. 69(1), second sentence EPC and Art. 1 of the Protocol on the Interpretation of Article 69 EPC to be applied to the interpretation of patent claims when assessing the patentability of an invention under Art. 52 to 57 EPC? [see points 3.2, 4.2 and 6.1 of the Reasons]
2. May the description and figures be consulted when interpreting the claims to assess patentability and, if so, may this be done generally or only if the person skilled in the art finds a claim to be unclear or ambiguous when read in isolation? [see points 3.3, 4.3 and 6.2 of the Reasons]
3. May a definition or similar information on a term used in the claims which is explicitly given in the description be disregarded when interpreting the claims to assess patentability and, if so, under what conditions? [see points 3.4, 4.4 and 6.3 of the Reasons]
- 2023 compilation “Abstracts of decisions”