3.7. Information provided in the Guidelines

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 in hand, the decision to revoke the contested patent would come as a surprise to the patent proprietor.

In T 1946/21 the appellant argued that because the Guidelines had consistently provided that the assignment of the priority right to an applicant had to be effective before the filing date of the subsequent application, there was a legitimate expectation in that respect. The board did not contest that the Guidelines may be a source of legitimate expectation. However, what the law required from applicants for them to enjoy a right of priority could not be determined by what was stated in the Guidelines, whether directly or indirectly by way of creating a legitimate expectation. The requirement “before the filing date” was not provided for in the law. Thus, it was irrelevant that the Guidelines considered this a requirement for a valid transfer (see also this decision in chapter II.D.2.7.4).