List of decisions and opinions of the Enlarged Board of Appeal of the European Patent Office

Legal requirements applicable to European patent applications and patents
Note: The above list of legal requirements is not exhaustive.

This is a list of decisions and opinions of the Enlarged Board of Appeal of the European Patent Office (EPO) in chronological order of the dates when the decisions or opinions were issued. The list includes decisions under Article 112(1)(a) EPC (following a referral from a Board of Appeal), opinions under Article 112(1)(b) EPC (following a referral from the President of the EPO), "to ensure uniform application of the law" and to clarify or interpret important points of law in relation to the European Patent Convention[1] and decisions on a request for a proposal of removal from Office of a member of the Boards of Appeal under Article 23(1) EPC. The list does not include any decision relating to petitions for review under Article 112a EPC.

The list is incomplete.

Decided cases

Keys: Decision(s), after referral by a Board of Appeal under Art. 112(1)(a) EPC Opinion, after referral by the President of the EPO under Art. 112(1)(b) EPC Decision and opinion, in consolidated or identical cases Decision in cases under Art. 23(1) EPC

1980 – 1989

Reference Date of decision Keywords and/or comments Sources
G 1/83
G 2/83
G 3/83
G 4/83
G 5/83
G 6/83
G 7/83		 5 December 1984 Patentability - Art. 52(4) - first and second medical indications
(G 1/83, G 5/83 and G 6/83 have been published, respectively in German, English and French, the three official languages of the EPO. The four other decisions have not been published.)

G 1/84 24 July 1985 Opposition by proprietor - overturned by G 9/93
G 1/86 24 June 1987 Although Article 122(1) EPC implies that reestablishment of rights is available only to patent applicants and patent proprietors, "an opponent who files a notice of appeal within the two-month time limit laid down in the first sentence of Article 108 EPC but who fails to file a statement setting out the grounds of appeal within the four-month time limit laid down in the third sentence of Article 108 EPC may apply for reestablishment of rights in respect of that failure".[2]
G 4/88 24 April 1989 Opposition - transfer - part of the business assets
G 2/88 12 November 1989 Art. 123(3) - change of category - use claim novel by its purpose
G 6/88 12 November 1989 Novelty - second non-medical indication yes
(Partially identical to G 2/88.)

1990 – 1994

Reference Date of decision Keywords and/or comments Sources
G 1/89
G 2/89		 21 February 1990 Patent Cooperation Treaty - unity of invention - a priori and a posteriori
G 5/88
G 7/88
G 8/88		16 November 1990 Filing of notice of opposition at the DPMA before July 1, 1989

G 1/91 9 December 1991 The requirement of unity of invention (Article 82 EPC) is not applicable under Article 102(3) EPC when a European patent is amended during opposition proceedings. In other words, "when [a] patent is amended in opposition proceedings, unity no longer has any relevance."[3] Unity of invention under Article 82 EPC is merely an administrative regulation, the function of which being fulfilled during examination proceedings.[4]
G 7/91
G 8/91		 11 May 1992 Once an appeal is withdrawn by the sole appellant, appeal proceedings are terminated at least in so far as substantive issues are concerned. This applies to both ex parte and inter partes proceedings.
G 3/89
G 11/91		 19 November 1992 Art. 123(2) - strictly declaratory nature of Rule 88 corrections
G 1/92 18 December 1992 "1. 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. 2. The same principle applies mutatis mutandis to any other product."
G 9/91 31 March 1993 Framework of opposition and appeal, insofar as the extent of the opposition is concerned: "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 55(c) EPC 1973 [now Rule 76(2)(c) EPC]. However, subject-matters of claims depending on an independent claim, which falls in opposition or appeal proceedings, may be examined as to their patentability even if they have not been explicitly opposed, provided their validity is prima facie in doubt on the basis of already available information." (Underlining in the original; notes within brackets added). If an opponent deliberately limits "the extent to which the patent is opposed to only certain subject-matters", these "subject-matters are therefore, strictly speaking, not subject to any "opposition" in the sense of Articles 101 and 102 EPC".[5]
G 10/91 31 March 1993 Framework of opposition and appeal, insofar as the grounds for opposition are concerned:"
  1. 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 55(c) EPC 1973 [now Rule 76(2)(c) EPC].
  2. 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 55(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.
  3. Fresh grounds for opposition may be considered in appeal proceedings only with the approval of the patentee [By application of the volenti non fit injuria doctrine[6]]."[7] (Notes within brackets added)
G 4/92 22 October 1993 Oral proceedings - party absent - new facts or evidence
G 1/93 21 February 1994 Art. 123(2) & (3) - conflict - inescapable trap
G 9/93 7 June 1994 Opposition by patent proprietor - no - overturning G 1/84
G 3/92 13 June 1994 Unlawful applicant. No requirement that the earlier (usurped) European patent application be pending before the EPO for the lawful applicant to be able to file a new application under Article 61(1) EPC. Dissenting opinion (Reasons for the Decision, points 8.1-8.9).
G 9/92
G 4/93		 14 July 1994 Framework of appeal - extent (decision) - reformatio in peius
(With an indication of a minority opinion.)
G 1/94 5 November 1994 Intervention during pending appeal proceedings - fresh grounds
G 10/93 30 November 1994 Framework of appeal - ex parte - main aim: examination of the contested decision but no ban from introducing new grounds, facts or evidence

1995 – 1999

Reference Date of decision Keywords and/or comments Sources
G 4/9519 February 1996During oral proceedings under Article 116 EPC in the context of opposition or opposition appeal proceedings, submissions by an accompanying person cannot be made as a matter of right, but only with the permission of and at the discretion of the EPO (i.e., under the discretion of the Opposition Division or the Board of Appeal). The submissions by the accompanying person must be made under the continuing responsibility and control of the professional representative. This also applies to oral submissions by "qualified patent lawyers of countries which are not contracting states to the EPC."
G 1/95
G 7/95		19 July 1996Framework of opposition and appeal - Art. 100(a) - collection of grounds
G 3/97
G 4/97		2 January 1999Opposition on behalf of third party - strawman - circumvention of law by abuse of process
G 1/9712 October 1999Appeal - request to review a final decision, not provided for in the EPC

2000 – 2004

Reference Date of decision Keywords and/or comments Sources
G 3/9812 July 2000"For the calculation of the six-month period referred to in Article 55(1) EPC [i.e., for non-prejudicial disclosures], the relevant date is the date of the actual filing of the European patent application; the date of priority is not to be taken account of in calculating this period."[8]
G 4/9827 November 2000Without prejudice to Article 67(4) EPC, the designation of a Contracting State does not retroactively lose effect if the designation fee has not been paid on time. Also, the deemed withdrawal of a designation takes effect upon expiry of the time limits in Article 79(2) and Rules 15(2), 25(2) and 107(1) 1973 EPC as appropriate (and not on expiry grace period for delayed post).
G 1/994 February 2001Framework of appeal -extent (decision) - reformatio in peius - exception
G 3/9918 February 2002A joint opposition only requires one fee. Any appeal must be by a common representative. It must remain clear who the applicant(s)/appellant(s) are especially if one withdraws from proceedings
G 2/9831 May 2001Priority - concept of "the same invention" in Article 87(1) EPC - direct and unambiguous derivation from the previous application required to enjoy the claimed priority right
G 1/03
G 2/03		8 April 2004Allowability of undisclosed[9] disclaimers, i.e. allowability of disclaimers despite the absence of basis for the disclaimer in the application as filed.[9] "An amendment to a claim by the introduction of a disclaimer may not be refused under Art. 123(2) EPC 1973 for the sole reason that neither the disclaimer nor the subject-matter excluded by it from the scope of the claim have a basis in the application as filed".[10]
G 2/0226 April 2004TRIPS does not entitle an applicant to claim priority from filing in a state which was not at the relevant dates a member of the Paris Convention (but was a member of the WTO/TRIPS Agreement).

2005 – 2009

Reference Date of decision Keywords and/or comments Sources
G 2/04 25 May 2005 The status as an opponent cannot be freely transferred;[11] filing of an appeal when "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".
G 1/04 16 December 2005 Diagnostic methods prohibited from patentability by Article 52(4) EPC include: (i) the diagnosis for curative purposes as an intellectual exercise, practiced on the human or animal body (the latter is satisfied if the latter's presence is required). (ii) the preceding constitutive steps for the diagnosis, and (iii) the technical interactions involved in those preceding steps.
G 1/05
G 1/06		 28 June 2007 Divisional applications
G 2/06 25 November 2008 Stem cells, non-patentability of inventions involving the use and destruction of human embryos, Rule 28(c) EPC.

2010 – 2014

Reference Date of decision Keywords and/or comments Sources
G 1/07 15 February 2010 Methods for treatment by surgery
G 4/08 16 February 2010 Language of the proceedings. No change of the language of a Euro-PCT application upon entry into European phase if the language of the PCT application is already in an EPO official language.
G 2/08 19 February 2010 Dosage regimen
G 3/08 12 May 2010 Patentability of programs for computers, referral dismissed
G 1/09 27 September 2010 Pending application. Time limit for filing a divisional application, and meaning of "pending" in Rule 25 EPC 1973 (Rule 36(1) EPC) [12]
G 2/07
G 1/08		 9 December 2010 Essentially biological processes (Tomatoes and Broccoli)
G 2/10 30 August 2011 An amendment to a claim which introduces a disclaimer disclaiming subject-matter that was (positively) disclosed as an embodiment of the invention in the application as filed is not allowable under 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".[13]
G 1/10 23 July 2012 A patent proprietor's request under Rule 140 EPC for a correction of the text of a patent is inadmissible, "irrespective of whether the error was made (or introduced) by the applicant or by the Examining Division" and "independently of when it is filed".[14]
G 1/11 19 March 2014 Competence of the Boards of Appeal: A Technical Board of Appeal -rather than the Legal Board of Appeal- is competent for an appeal against a decision of an Examining Division refusing a request for refund of a search fee under Rule 64(2) EPC.
G 1/12 30 April 2014 Admissibility of the appeal; identity of the appellant; alleged error.
G 1/13 25 November 2014 Opponent company ceased to exist, for all purposes, before issuance of the decision of the Opposition Division, and then restored -with retroactive effect under the governing national law- after filing the appeal. Admissibility of the appeal.

From 2015

Reference Date of decision Keywords and/or comments Sources
G 3/14 24 March 2015 Examination of clarity (Article 84 EPC) in opposition proceedings: "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."[15]
G 2/12
G 2/13		 25 March 2015 Tomatoes II and Broccoli II (Biological processes for the production of plants, Article 53(b) EPC). Product claims directed to plants or plant material are allowable. In other words, "plants or seeds obtained through a conventional breeding methods are patentable."[16]
Art. 23 1/15 (G 2301/15) 17 September 2015 Request for a proposal of removal from Office: "Article 12a(5) RPEBA requires that the request under Article 12a(1) RPEBA specify individual incidents and the evidence for them, and give reasons why they constitute a serious ground within the meaning of Article 23(1) EPC."
G 1/14 19 November 2015 Appeal lodged and appeal fee paid after expiration of the time limit under Article 108(1) EPC. Is the appeal inadmissible or not deemed to have been filed? - Inadmissible referral
Art. 23 2/15 (G 2302/15) 11 February 2016 Request for a proposal of removal from Office: "Case terminated by withdrawal of the request from the Administrative Council. Reimbursement of all respondent's procedural costs proposed, as well as publication"
Art. 23 1/16 14 June 2016 Request for a proposal of removal from Office: "Decision not to propose removal from office after threat by president of the European Patent Office to the Enlarged Board of Appeal; which the Administrative Council did not sufficiently distance itself of."
G 1/15 29 November 2016 Partial priority. "The questions referred [sought] to clarify how Article 88(2), second sentence, EPC is to be applied in the light of the Enlarged Board's decision G 2/98 in cases where a claim encompasses, without spelling them out, alternative subject-matters having all the features of the claim (known as a generic "OR"-claim), and whether parent and divisional applications may be prior art under Article 54(3) EPC against one another in respect of subject-matter disclosed in a priority application but not entitled to priority."[17] The order reads: "Under the EPC, entitlement to partial priority may not be refused for a claim encompassing alternative subject-matter by virtue of one or 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."[18]
G 1/16[19] 18 December 2017 Allowability of undisclosed disclaimers introduced into a patent claim:

"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 non-technical reasons."[19]

Pending cases

As of 3 July 2018, there is one referral pending before the Enlarged Board of Appeal.

Reference Date of referral Keywords and/or comments Sources
G 1/18 8 June 2018 The President of the EPO referred the following question to the Enlarged Board of Appeal: "If notice of appeal is filed and/or the appeal fee is paid after expiry of the two month time limit under Article 108 EPC, is the appeal inadmissible or is it deemed not to have been filed, and must the appeal fee be reimbursed?" (same question as referred to in G 1/14)

See also

References

  1. ↑ Article 112(1) EPC
  2. ↑ T 1171/13, reasons 1.3 (summarizing the case law established under G1/86).
  3. ↑ G 1/91, point 5.2.
  4. ↑ G 1/91, points 4.1 and 4.2.
  5. ↑ G 9/91, point 10.
  6. ↑ G 9/91 (consolidated with G 10/91), point 18.
  7. ↑ G 10/91, Opinion.
  8. ↑ G 3/98, headnote.
  9. 1 2 Legal Research Service for the Boards of Appeal, European Patent Office, Case Law of the Boards of Appeal of the EPO (8th edition, July 2016), ii.e.1.5.2.c : "G 1/03, G 2/03 not applicable to disclosed disclaimers"
  10. ↑ G 1/03 and G 2/03 (OJ 2004, 413 and 448), Headnote 1.
  11. ↑ G 2/04, OJ EPO 2005, 549, headnote
  12. ↑ More comments may be found on: Another EBA referral on divisionals, IPKat, 11 June 2009. Consulted on June 12, 2009 and (in French) Laurent Teyssedre, Demandes divisionnaires : la Grande Chambre est à nouveau saisie, Le blog du droit européen des brevets, June 10, 2009. Consulted on June 12, 2009.
  13. ↑ G 2/10, headnote 1a.
  14. ↑ Petrucci, Luigi (June 2016). "Correcting the Text of a Published Patent" (PDF). epi Journal. Institute of Professional Representatives before the European Patent Office (02/2016): 43–44. ISSN 1434-8853.
  15. ↑ G 3/14, OJ EPO 2015, A102, Order
  16. ↑ Saez, Catherine (1 April 2015). "EPO Backs Patents On Conventional Plants: Broccoli, Tomato Cases Decided". Intellectual Property Watch. Retrieved 6 April 2015.
  17. ↑ "Notice from the European Patent Office dated 2 October 2015 concerning the staying of proceedings due to referral G 1/15". EPO Official Journal November 2015 (A92). European Patent Office. 30 November 2015. Retrieved 30 December 2015.
  18. ↑ G 1/15 Order, European Patent Register, European patent application No. 98203458.9
  19. 1 2 "EPO Enlarged Board of Appeal clarifies standard for examining "undisclosed disclaimers"". Haar: Boards of Appeal of the European Patent Office. 18 December 2017. Retrieved 31 December 2017.
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