2.5.4 Aussetzung des Beschwerdeverfahrens im Anschluss an eine Vorlage

In T 0417/22 an intervention had been filed in August 2024. The intervener had stated that the grounds filed with their intervention constituted grounds for both opposition and appeal. In May 2025, opponent 1 and the patent proprietor withdrew their appeals. The intervener's final main request was that the board stay the proceedings and wait for the outcome of referral G 2/24. The first auxiliary request was that the board refer the same question on the status of the intervener to the Enlarged Board of Appeal (hereinafter referred to as "EBA"). The second auxiliary request was that the board remit the case to the opposition division for further prosecution. The patent proprietor's final main substantive request was that the proceedings be terminated by application of the principles derivable from G 3/04.

The board examined the procedural options available to it. In this context, the board emphasised that there was a pending appeal that the board needed to decide on, even if the decision may only concern the admissibility of the appeal. According to the board, even if it were to grant the patent proprietor’s request and decide to follow the interpretation given by G 3/04, it could not close the proceedings without issuing a formal decision..

Furthermore, the board agreed with the referring board of T 1286/23 that the guiding decision G 3/04 may require revision. The board found that while it was procedurally straightforward for it to make a referral to the EBA for the purpose of reviewing G 3/04, pursuant to Art. 21 RPBA, in view of pending referral G 2/24, the board had an additional option. Rather than referring the case itself, the board could stay the proceedings until the outcome of pending referral G 2/24 is known. The board observed that, despite the lack of an explicit legal basis, staying the proceedings appeared to be a reasonable and pragmatic solution given that the board's own referral would cause more problems without achieving any procedural benefit. It also noted that the case law recognised the stay of the proceedings as a viable procedural option for a board in the event of a pending referral. Furthermore, the board was not aware of any case law that categorically denied the procedural possibility of staying the appeal proceedings as a matter of principle, nor had the parties pointed to any such case law.

The board stated that if it deemed it justified to revise a decision or opinion of the EBA under Art. 112 EPC, and if the referral was expected to address the same legal issues that the board would refer to the EBA, then staying the proceedings offered significant procedural advantages over the board's own referral under Art. 112(1) EPC and Art. 21 RPBA. Therefore, the board concluded that, under the right circumstances, staying proceedings in view of an already pending referral was a legitimate alternative to the board's own referral. As such, it was implicitly covered by Art. 21 RPBA as a legally correct procedure where a board intended to deviate from an interpretation of the EPC given in an earlier decision or opinion of the EBA.

Accordingly, the board held that it effectively had the three procedural options discussed during the proceedings. The board could issue a decision without delay on the basis of the principles derivable from G 3/04, thereby effectively dismissing the intervener's appeal as inadmissible and terminating the substantive proceedings. Alternatively, the board could make a further referral to seek a change to the interpretation of the law given in G 3/04. Further, the board could stay the proceedings until the pending referral G 2/24 answered the question of whether and how an intervener joining the appeal proceedings may obtain appellant status within the meaning of Art. 107 EPC. As neither the parties nor the board itself favoured the board's own referral, there was no need to discuss in detail all the conditions for such a referral. Instead, the board had to choose between staying the proceedings and applying G 3/04 unreservedly. For this, it was sufficient for the board to establish that a hypothetical referral would fulfil the requirements of Art. 112(1)(a) EPC for essentially all the reasons provided in the referring decision T 1286/23, given the relevant similarities between the cases.

After having provided reasons for deviating from G 3/04, the board stated that it saw no convincing substantive argument supporting the patent proprietor's proposition that the case before the board would be less suitable for the board's own referral than the case underlying the decision T 1286/23. Upon weighing up the interests of the parties, the board concluded that it was more equitable to stay the proceedings, which resulted in limited disadvantages for both parties, but did not affect their substantive position in the opposition proceedings. The appeal proceedings were thus stayed until the proceedings in referral G 2/24 are terminated.

In T 2116/22 the interpretation of the terms "coating" and "coated" in claim 1 of the main request was relevant to assess novelty.

The appellants-patent proprietors argued that these terms had to be interpreted taking into account the whole patent. The skilled person would have understood the coating step and the thrombin-coated gelatin granules defined in the claims as being limited respectively to a process as specified in paragraph [0014] of the patent and to thrombin coated gelatin granules prepared thereby.

The board observed that the wording of the claim did not restrict the coating step to the specific coating conditions mentioned in paragraph [0014] of the patent. While the limitation of the final product being a "dry and stable" hemostatic composition may imply some limitations on the process steps, these encompassed any process features resulting in a dry and stable product such as indeed the ones described in paragraph [0014] of the patent but also any other process features providing a dry and stable product. The board further noted that the term "coating" or "coated" had a clear meaning in the field of pharmaceutical preparations and corresponded to the application of a material to the surface of a pharmaceutical solid product. This was usually done by applying the coating material as a solution or suspension to the pharmaceutical solid product and evaporating the vehicle. Paragraph [0014] of the patent did not provide a different definition of the term "coating" or "coated" than the one commonly accepted in the art. The description provided first a description of the process in broad terms as in claim 1 before describing more specific embodiments and preferred features, such as in paragraph [0014]. Whether read alone or in the light of the entire description, the meaning of the coating step or the coated product remained the same.

In the context of the discussion regarding the interpretation of the terms "coating" and "coated", the appellants-patent proprietors had requested that the board stay the proceedings in view of the pending referral G 1/24.

The board stated that the provisions in the EPC concerning a stay of proceedings following a referral to the Enlarged Board only concerned the referring board (Art. 112(3) EPC). There was, however, no legal basis in the EPC nor in the Rules of Procedure of the Boards of Appeal requiring that any other board stay its proceedings to await the outcome of the proceedings before the Enlarged Board. The decision whether or not to stay the proceedings in such cases was thus a discretionary one.

According to the board, the strict approach taken in T 166/84, namely to stay the proceedings whenever the outcome of the proceedings depended entirely on the outcome of the referral, had been applied by some boards (e.g. T 426/00, T 1875/07 and T 1044/07). However, it had also been put into question for lack of a legal basis, and considered not to apply to proceedings before the Boards of Appeal (e.g. T 1473/13 and T 1870/16). The board was of the view that a strict application of the approach taken in T 166/84 would in effect deny a board its discretion as to whether to stay the proceedings. The discretion was however the inevitable consequence of the fact that there was no legal basis for requiring a board that had not referred the relevant questions to the Enlarged Board to stay the proceedings. Moreover, the outcome of the referral G 1/24 was not decisive for the decision in the case at hand.

The board decided not to stay the proceedings in view of the pending referral G 1/24 and concluded that claim 1 of the main request was not novel. During the course of the oral proceedings, the appellants-patent proprietors filed an objection under R. 106 EPC. The board reiterated that the decision to stay the proceedings remained a discretionary one. The appellants-patent proprietors had had ample opportunities to present their comments on the issue of a stay of the proceedings, so that no violation of their right to be heard occurred (Art. 113(1) EPC). Moreover, the outcome of the referral G 1/24 was not decisive for the decision in the present case, including on novelty of the main request. Therefore, the board dismissed the objection under R. 106 EPC.