Decision from the Enlarged Board of Appeal in G2/19

3 October 2019

The EPO has issued a press release (see here), which summarises the full decision (currently only available in German here) from the Enlarged Board of Appeal in G2/19. 

Decision G2/19 arises from a referral in March this year of three questions from the Board of Appeal in decision T0831/17.  That case had somewhat unusual facts, as summarised in our earlier news item here.  In July 2019, the Enlarged Board announced its final decision in G2/19.  The Enlarged Board reformulated the questions it had been posed and then answered those questions as summarised in our earlier news item here.  The EPO’s press release has now provided an official English version of the Enlarged Board’s answers as follows: 

  1. A third party within the meaning of Article 115 EPC who has filed an appeal against a decision to grant a European patent has no right to have its request for an order that examination proceedings in respect of the European patent are re-opened for the purpose of removing allegedly unclear claims (Article 84 EPC) heard at oral proceedings before a board of appeal of the European Patent Office. An appeal filed in such a way has no suspensive effect.
  2. Oral proceedings before the boards of appeal at their site in Haar do not infringe Articles 113(1) and 116(1) EPC.

The first answer relates to a scenario where a third party files an appeal against a decision to grant the patent on the basis that the claims lack clarity.  The Enlarged Board has decided that such a third party does not have the right to be heard at oral proceedings before the Board of Appeal.  The Enlarged Board referred to earlier decision G3/14 and confirmed that the unamended claims of a granted patent may not be examined for lack of clarity.  The Enlarged Board also referred to earlier decision G1/97 and held that such an appeal is inadmissible.  Given that the third party does not have a right to oral proceedings, such appeals can be immediately rejected as inadmissible in writing without the need for further procedural formalities.  Thus, the decision rules out the possibility of a third party being able to seek recourse by appealing the decision to grant in the situation where an objection of lack of clarity was made unsuccessfully in pre-grant third party observations.

The second answer relates to the relocation of the Boards of Appeal to Haar from Munich.  Interestingly, the Enlarged Board indicated that it was only required to rule on this matter insofar as it was related to the possible infringement of the procedural right of a party.  The Enlarged Board concluded that holding oral proceedings in Haar does not infringe a party’s right to be heard and that mere perceived inconvenience does not injure the right to be heard.

Although they considered it unnecessary, the Enlarged Board did nevertheless also consider the effect of Article 6(2) EPC, which states that “The European Patent Office shall be located in Munich. It shall have a branch at the Hague.”  It had been argued by the appellant that Haar is not in Munich and thus locating the Boards of Appeal in Haar contravenes Article 6(2) EPC.  The Enlarged Board did not accept that argument, commenting that as the main EPO body responsible for granting patents is in Munich, the requirements of Article 6(2) EPC are met.  The Enlarged Board also observed that separating the Boards of Appeal geographically from the EPO administrative departments in Munich highlights the independence of the Boards of Appeal and, in view of this, it is not necessary to limit the location of the Boards of Appeal to the city of Munich itself.  The Enlarged Board also noted that the Boards of Appeal in Haar are “only located slightly outside the boundaries of the city of Munich”.  It therefore seems unlikely that any future challenges to the location of the Boards of Appeal in Haar will succeed.

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