3. Implementing Regulations

In T 39/93 (OJ 1997, 134) the board held that the meaning of an Article of the EPC on its true interpretation as established by a ruling of the Enlarged Board could not be overturned by a newly drafted rule of the Implementing Regulations, the effect of which would be to conflict with this interpretation. This is because, according to Art. 164(2) EPC 1973, in the case of conflict between the provisions of the Convention (the EPC Article) and those of the Implementing Regulations, the provisions of the Convention shall prevail (see also T 885/93; T 83/05 date: 2007-05-22, OJ 2007, 644; G 2/07).

In T 991/04 of 22 November 2005 date: 2005-11-22 the board noted that the fact that requirements stipulated by an Article of the EPC need to be specified by the Implementing Regulations does not create a case of conflict. It stated that the Munich Diplomatic Conference (1973) as the legislator of the European patent system drafted the first versions of the EPC 1973 and the Implementing Regulations as a legal unity which should be read in a consistent way. In this regard the Implementing Regulations had the function of an authentic interpretation of the EPC 1973. According to the board, the interpretation of legal terms lies within the competence of the boards of appeal because of their judicial function, unless the Implementing Regulations to the EPC stipulate an authentic interpretation within the framework set by the EPC. This is because the boards of appeal are not only bound by the EPC but also by the Implementing Regulations as part of the EPC according to Art. 23(3) EPC 1973.

The Enlarged Board in G 2/07 stated that it is the function of the Implementing Regulations to determine in more detail how the articles of the EPC should be applied and that there is nothing in the Convention allowing the conclusion that this would not also apply in the case of Articles governing issues of substantive patent law. The limits to the Administrative Council's law-making powers by means of the Implementing Regulations could be inferred from Art. 164(2) EPC. According to that Article, in case of conflict between the provisions of the Convention and those of the Implementing Regulations, the provisions of the Convention shall prevail. The Enlarged Board referred to G 2/93 (OJ 1995, 275), which accepted that R. 28 EPC 1973 implemented Art. 83 EPC 1973 and was, at least in part, substantive in nature. Furthermore, in its decision G 2/06 (points 12 and 13 of the Reasons), too, the Enlarged Board did not doubt the Administrative Council's power to lay down provisions concerning substantive law in the Implementing Regulations. Thus the Enlarged Board held in G 2/07 that the legislator is entitled to provide for issues of substantive law in the rules of the Implementing Regulations. However, a rule, not having a legal history of its own, must be clear enough to indicate to those applying it in what way the legislator intended the article to be interpreted by means of that rule. This, however, was not the case for R. 26(5) EPC. This Rule did not give any useful guidance on how to interpret the term "essentially biological process for the production of plants" in Art. 53(b) EPC and therefore that term had to be interpreted on its own authority. This was for the Enlarged Board to do.

In T 1063/18, the board considered that R. 28(2) EPC, as amended by decision of the Administrative Council of 29 June 2017, was in conflict with Art. 53(b) EPC as interpreted by the Enlarged Board in decisions G 2/12 and G 2/13. Since in accordance with Art. 164(2) EPC, the provisions of the Convention prevailed, the Administrative Council was not, in the light of Art. 33(1)(b) and 35(3) EPC, competent to amend the Convention, here Art. 53(b) EPC, by amendment of the Implementing Regulations, here R. 28(2) EPC. This led to a referral to the Enlarged Board by the President of the EPO on the interpretation of Art. 164(2) EPC and the assessment of R. 28(2) EPC under said provision. The Enlarged Board in G 3/19 concluded that, in view of the clear legislative intent of the contracting states as represented in the Administrative Council and having regard to Art. 31(4) Vienna Convention, the introduction of R. 28(2) EPC allowed and called for a dynamic interpretation of Art. 53(b) EPC. The Enlarged Board stated that the referring board's conclusion seemed to be based on the notion that in decision G 2/12, the Enlarged Board gave a definitive interpretation of the scope of the exception to patentability, which could only be overturned by a formal amendment of Art. 53(b) EPC itself. However, according to G 3/19, this notion was too strict, bearing in mind that Art. 53(b) EPC was open to interpretation. Furthermore, a subsequently made rule which diverged from a particular interpretation of an EPC article by a board of appeal was not per se ultra vires (see T 315/03). Following a dynamic interpretation of the provision, there was ultimately no conflict between R. 28(2) EPC and the new interpretation of Art. 53(b) EPC. Hence, contrary to the board's view in T 1063/18, Art. 164(2) EPC was not relevant. The interpretation of Art. 53(b) EPC arrived at in G 2/12 was not set in stone either; it could indeed change, and it was inappropriate to disregard the introduction of R. 28(2) EPC, which reflected the contracting states' intention.

In J 5/23, the Legal Board observed that the Implementing Regulations to the EPC 1973 were part of the "text" of the treaty or at least of the "context" to be taken into account pursuant to Art. 31(2) Vienna Convention. The Enlarged Board confirmed that subsequent amendments to the Implementing Regulations are to be taken into account when interpreting an Article of the EPC (see G 2/12, point VII.4(1) of the Reasons and G 3/19, point VI.5.2, VI.5.3 and XXIV of the Reasons). In G 2/12, point VII.4(1) of the Reasons, the Enlarged Board referred to the interpretative means under Art. 31(3) Vienna Convention concerning, in point (a), any subsequent agreement between the parties regarding the interpretation of the treaty or its application and, in point (b), any subsequent practice in the application of the treaty which establishes the agreement of the parties regarding its interpretation. The Legal Board further noted that the mandatory interpretative means to be taken into account for interpretation under Art. 31(3)(a) and (b) Vienna Convention "together with the context" had the same interpretative weight as the "context" under Art. 31(2) Vienna Convention. Hence, regardless of whether the Implementing Regulations to the EPC 2000 and all subsequent amendments were subsumed under Art. 31(2) or under Art. 31(3)(a) and (b) Vienna Convention, they were to be taken into account in a systematic interpretation of an Article of the EPC.