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Case Law of the Boards of Appeal

 
 
2. Guidelines binding (in principle) on departments of first instance

The Guidelines state (June 2012 edition, General Part, page 5, point 3.2): "The Guidelines are intended to cover normal occurrences. They should therefore be considered only as general instructions. The application of the Guidelines to individual European patent applications or patents is the responsibility of the examining staff and they may depart from these instructions in exceptional cases. Nevertheless, as a general rule, parties can expect the EPO to act in accordance with the Guidelines. … It should be noted also that the Guidelines do not constitute legal provisions. For the ultimate authority on practice in the EPO, it is necessary to refer firstly to the European Patent Convention".

In T 647/93 (OJ 1995, 132) the board stated that it was normally desirable for examining divisions to act in accordance with the Guidelines, but pointed out that these were not rules of law, so failure to follow a procedure set out in them was not in itself a substantial procedural violation (T 51/94, T 937/97).

In T 162/82 (OJ 1987, 533) and T 42/84 (OJ 1988, 251), two boards of appeal ruled on the discretionary power of examining divisions to depart from the EPO Guidelines. According to these two decisions, the Guidelines were only general instructions intended to cover normal occurrences. Thus, an examining division could depart from them provided it acted in accordance with the EPC. In reviewing the decision of an examining division, a board of appeal would wish to ensure uniform application of the law and judge whether the division had acted in accordance with the Convention, not whether it had acted in accordance with the Guidelines.

In T 500/00 the board noted that what counted was not whether the opposition division had acted in accordance with the Guidelines, but whether it had acted in accordance with the Convention.

In T 1388/10, the board observed that the Guidelines merely offered general guidance covering normal occurrences. Their application in specific individual cases was the responsibility of the examining division, which could depart from them in exceptional cases. Also, the Guidelines were not the law – unlike the EPC and its Implementing Regulations. When reviewing examining division decisions, the boards did not assess whether the division had complied with the Guidelines. Rather, they considered whether it had exercised its discretion within the limits set by the EPC and its Implementing Regulations.

In T 905/90 (OJ 1994, 306, Corr. 556) the board held that specific communications or other actions within the framework of particular proceedings and official statements such as guidelines were not the only sources of legitimate expectations; these could also properly arise from the actual general conduct or established practice of organs of the EPO. All changes in these practices should be officially announced at the earliest possible moment in order to avoid misleading the parties.

In J 27/94 (OJ 1995, 831) the board stated that there might be cases in which the public had a legitimate expectation that the department of first instance would not deviate from the established case law. This might apply if the relevant case law had become enshrined in the consistent practice of the department of first instance, and in particular if this had been made known to the public in published Guidelines, Legal Advice or Notices from the EPO. In such a situation, an applicant might legitimately expect that a practice allowing or even recommending a particular way of proceeding would not be changed without appropriate advance information. In the case at issue, the Guidelines had remained unchanged, which in fact led to the reasonable expectation that the practice based on them would likewise not be changed. The department of first instance processing this case had therefore not been obliged by the principle of the protection of legitimate expectations.

The board in T 1607/08 recalled that the Guidelines published by the EPO were one of the sources of legitimate expectations. Therefore, where the Guidelines gave the clear indication that the continuation of the opposition proceedings had to be communicated to the patent proprietor, the latter was entitled to expect that such information would be given before a decision on the substantive issues was issued. Otherwise, as in the case at issue, the decision to revoke the contested patent would come as a surprise to the patent proprietor.

In T 182/90 (OJ 1994, 641), T 119/91, T 523/91, T 366/92 and T 397/94 the boards of appeal stated that it was not a substantial procedural violation within the meaning of R. 67 EPC 1973 if a request to be called back by or have an interview with the primary examiner was ignored. It was a matter for the examiner's discretion to decide whether to conduct such informal discussions in accordance with the Guidelines, bearing in mind the particular circumstances of the case (see also T 300/89, OJ 1991, 480).

The examining division's failure to follow a procedure set out in the Guidelines is not in itself a substantial procedural violation unless it also constitutes a violation of a rule or principle of procedure governed by an article of the Convention or one of the Implementing Regulations. This is because the Guidelines are not legally binding (T 42/84, OJ 1988, 251; T 51/94, J 24/96, OJ 2001, 434).

In T 246/08 the board noted that the Guidelines for Examination indicated Art. 113(2) EPC 1973 as the legal basis for refusing an application in the circumstances of the case before it, i.e. in which no agreed claim text existed. The board, however, preferred the approach of the examining division (see Art. 78(1)(c) EPC 1973). It held that although an examining division should normally apply the Guidelines, failure to do so was neither a mistake in law nor a procedural violation. For the reasons set out, in this particular instance the board saw the deviation as a matter for approval rather than reproach.

In T 313/10 the examining division had argued, using their own criteria, that a method performed by a computer was excluded. This was contrary to the established jurisprudence as set out in the Guidelines.

In J 29/10, point 2.3 of the Reasons, the Legal Board referred to the General Part of the Guidelines, as then worded, before going on to explain what matters, in its view, the Guidelines were not intended to cover.