|European Case Law Identifier:||ECLI:EP:BA:2010:G000308.20100512|
|Date of decision:||12 May 2010|
|Case number:||G 0003/08|
|Language of proceedings:||EN|
|Download and more information:||
|Title of application:||-|
|Headnote:||1. In exercising his or her right of referral a President of the EPO is entitled to make full use of the discretion granted by Article 112 (1) (b) EPC, even if his or her appreciation of the need for a referral has changed after a relatively short time.
2. Different decisions by a single Technical Board of Appeal in differing compositions may be the basis of an admissible referral by the President of the EPO of a point of law to the Enlarged Board of Appeal pursuant to Article 112 (1) (b) EPC.
3. As the wording of Article 112 (1) (b) EPC is not clear with respect to the meaning of Âdifferent/abweichende/ divergentÂ decisions the provision has to be interpreted in the light of its object and purpose according to Article 31 of the Vienna Convention on the Law of Treaties (VCLT). The purpose of the referral right under 112 (1) (b) EPC is to establish uniformity of law within the European patent system. Having regard to this purpose of the presidential right to refer legal questions to the Enlarged Board of Appeal the notion Âdifferent decisionsÂ has to be understood restrictively in the sense of Âconflicting decisionsÂ.
4. The notion of legal development is an additional factor which must be carefully considered when interpreting the notion of Âdifferent decisionÂ in Article 112 (1) (b) EPC. Development of the law is an essential aspect of its application, whatever method of interpretation is applied, and is therefore inherent in all judicial activity. Consequently, legal development as such cannot on its own form the basis for a referral, only because case law in new legal and/or technical fields does not always develop in linear fashion, and earlier approaches may be abandoned or modified.
5. Legal rulings are characterised not by their verdicts, but by their grounds. The Enlarged Board of Appeal may thus take obiter dicta into account in examining whether two decisions satisfy the requirements of Article 112 (1) (b) EPC.
6. T 424/03, Microsoft does deviate from a view expressed in T 1173/97, IBM, concerning whether a claim to a program on a computer-readable medium necessarily avoids exclusion from patentability under Article 52(2) EPC. However this is a legitimate development of the case law and there is no divergence which would make the referral of this point to the Enlarged Board of Appeal by the President admissible.
7. The Enlarged Board of Appeal cannot identify any other inconsistencies between the grounds of the decisions which the referral by the President alleges are divergent. The referral is therefore inadmissible under Article 112(1)(b) EPC.
|Relevant legal provisions:||
Date retrieved: 17 May 2021
143 references found.Click X to load a reference inside the current page, click on the title to open in a new page.
EPO Guidelines - F The European Patent Application
XGL F IV 3.9.1 Cases where all method steps can be fully implemented by generic data processing means
EPO Guidelines - G Patentability
Offical Journal of the EPO
XOJ EPO SE 1/2021, p179 - Annex 1 - Index of published decisions of the boards of appeal and the Enlarged Board of Appeal - (as at 31 December 2020)
XOJ EPO SE 1/2020, p174 - Annex 1 - Index of published decisions of the boards of appeal and the Enlarged Board of Appeal - (as at 31 December 2019)
XOJ EPO 2020, A104 - Interlocutory Decision of Technical Board of Appeal 3.3.01 dated 7 February 2019 - T 318/14
XOJ EPO SE 1/2019, p158 - XVI. - Index of published decisions of the boards of appeal and the Enlarged Board of Appeal - (as at 31 December 2018)
XOJ EPO 2019, A86 - Interlocutory decision of Technical Board of Appeal 3.5.07 dated 22 February 2019 - T 489/14