Abstract on Article 112(1) EPC for the decision T0873/24 of 03.02.2026

In T 873/24 the board explained that if, in the underlying case, Art. 123(2) EPC was not complied with, the main request and most of the (over one hundred) auxiliary requests would fall. This objection therefore had the greatest impact on the outcome of the proceedings. Against this background, the board decided to assess the question of compliance with Art. 123(2) EPC before dealing with the objections under Art. 56 EPC. It concluded that a decision of the Enlarged Board was required to determine which approach should be followed regarding the extent to which the description is to be relied upon when interpreting claims (questions 2 and 3 referred to the Enlarged Board, included in the abstract under Art. 123(2) EPC).

The board noted that the answers to questions 2 and 3 touched upon fundamental principles of the EPC and would become relevant in a multitude of cases before the divisions of the EPO and the boards of appeal. These questions thus related to points of law of fundamental importance and were relevant not only during the grant procedure but also to any later proceedings before the courts of the member states throughout the lifetime of a patent. To clarify these points of law and to ensure the future uniform application of the law in view of the divergent case law listed by the board in the present decision, the board considered a decision of the Enlarged Board to be required within the meaning of Art. 112(1)(a) EPC.

The board further recalled that, according to Art. 112(1)(a) EPC, a board shall refer any question to the Enlarged Board if it considers that a decision is "required for the above purposes", namely harmonisation of the case law and clarification of fundamental points of law. Case law had read into the term "required" the further requirement that, for a referral to be admissible, the referred questions need to be relevant to the referring board's decision. Some boards had interpreted this requirement very strictly, meaning that, where several grounds for opposition had been raised by the opponent(s), the referral was admissible only when the board had concluded that the patent would be maintained despite the other invoked grounds for opposition which were not the subject of the referral, see e.g. T 116/18 of 28 July 2023 (T 116/18) with reference to G 3/98. In G 3/98 it had been stated that "the referred question may not have a merely theoretical significance for the original proceedings ... as would be the case if the referring board were to reach the same decision on the basis of the file regardless of the answer to the referred question". The board acknowledged that, according to T 116/18, a referral in the case in hand would not yet be admissible, but saw a need to diverge from that view.

The board also stated that the requirements under which divergent case law may be clarified by referring questions to the Enlarged Board constituted a point of law of fundamental importance and were central to the effective functioning of the whole system. This was particularly true at present, as a second transnational court applying the EPC entailed new challenges for achieving a harmonised pan-European interpretation of the articles and rules of the EPC. Hence, in this context, not only the questions of substantive law referred to in the present decision but also the admissibility issue itself concerned a point of law of fundamental importance.

The board considered that a referral to the Enlarged Board was necessary in order to clarify whether T 116/18 was indeed the relevant test for the admissibility of a referral. As reasons for not following T 116/18, the board indicated, inter alia, that (a) the board in T 116/18 had drawn a conclusion from G 3/98 which could not be derived from that decision in such general terms and (b) this was in line with other decisions of the Enlarged Board, some of which were even less strict (G 1/24, G 2/07, G 2/03).

Question 1 referred to the Enlarged Board (referral pending under G 1/26 – "Coated steel strips") reads as follows:

"1. May a decision be considered to be "required" for the purposes of Article 112(1) EPC, if the referring Board demonstrates that the point of law in question arises out of the context of the case pending before it and, in the circumstances of the proceedings, it is reasonable for the Board to examine it and decide on it next?"