The examining division is obliged to give a "technical opinion" upon request. This means that the division is bound to give an opinion only in so far as the questions put are of a technical character. However, the examining division may not be too restrictive in this regard but will attempt to assist the national court as much as is reasonably possible, while remembering that the actual decision on infringement or revocation is exclusively a matter for the national court.
Generally speaking, the examining division attempts to give a technical opinion on any question which is similar to those normally dealt with in European substantive examination work, even when the question has a legal, as well as a technical, aspect. On the other hand, the examining division will decline to make any specific statement on whether a patent is valid or on whether it is infringed. It also does not give any opinion on the extent of protection (Art. 69 and the accompanying Protocol).
A request from a national court is to be expected to be clearly and precisely formulated, so that the examining division will be in no doubt as to the questions on which the court wishes to have an opinion. Since the court is responsible for deciding the issues of law involved in the questions and since most questions include a mixture of legal and technical aspects, the court is expected where possible to separate clearly the legal aspects from the technical aspects upon which it seeks the opinion of the EPO.
Date retrieved: 17 May 2021