8.1. National decisions: taken into account for the sake of harmonisation

In G 5/83 the Enlarged Board stated that in the interpretation of international treaties which provide the legal basis for the rights and duties of individuals and corporate bodies it is, of course, necessary to pay attention to questions of harmonisation of national and international rules of law. This aspect of interpretation, not dealt with by the provisions of the Vienna Convention, is particularly important where, as is the case with European patent law, provisions of an international treaty have been taken over into national legislation. The establishment of harmonised patent legislation in the contracting states must necessarily be accompanied by harmonised interpretation. For this reason, it is incumbent upon the EPO, and particularly its boards of appeal, to take into consideration the decisions and expressions of opinion of courts and industrial property offices in the contracting states. This view was confirmed in G 2/12 and G 2/13, G 3/19.

In G 2/21 (OJ 2023, A85), for instance, the Enlarged Board examined the national legal framework and jurisprudence on the reliance on a purported technical effect for inventive step in Germany, France, the Netherlands, Switzerland, and the UK (England and Wales). It concluded that, like the EPC, none of the legal systems of these EPC contracting states provided for an explicit patentability requirement for "plausibility". The Enlarged Board also observed a certain degree of common ground that the courts of the EPC contracting states, when confronted with the examination of an asserted technical effect in the assessment of inventive step and with the question whether a patent proprietor may rely on post-published evidence to confirm that technical effect, ponder on the technical teaching of the claimed subject-matter that the person skilled in the art, with the common general knowledge in mind, understands from the patent application.

In J 14/19, the Legal Board observed that R. 14(1) EPC did not specify when national proceedings were deemed to have been instituted. Nor was it independently defined anywhere else in the EPC when national court proceedings became pending. The issue of when they became pending was therefore to be assessed under the procedural law of the country whose courts had been asked to take a decision within the meaning of Art. 61(1) EPC (see J 7/00; J 2/14; see also T 1138/11). Article 8 of the Protocol on Jurisdiction and the Recognition of Decisions in respect of the Right to the Grant of a European Patent ("the Protocol on Recognition") supported this interpretation. In the interests of a uniform European standard of interpretation, recourse could be had to the case law of the CJEU on Art. 21 of the 1968 Brussels Convention on Jurisdiction and the Enforcement of Judgments in Civil and Commercial Matters (which both matched Art. 8 of the Protocol on Recognition in content and preceded it). In the context of that provision too, when proceedings were deemed to be pending was to be assessed for each court in line with its own national procedural law (ECJ, Case 129/83).

In T 439/22 (OJ 2024, A104) the board referred questions on claim interpretation to the Enlarged Board (case G 1/24). In its decision the board reviewed the case law of the boards of appeal as well as the approaches on claim interpretation taken by the courts in France, Germany and UK as well as the Court of Appeal of the UPC.