2. Referral under Article 112 EPC

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?"

In T 1899/23 the board, composed of three former members of Board 3.3.06, had already issued the communication under Art. 15 (1) RPBA and the summons to oral proceedings before the new business distribution scheme (BDS) of the Technical Boards of Appeal of 27 June 2025 entered into force on 1 September 2025. According to that scheme, the IPC class of the present case (C11D) was allocated to Board 3.3.02 as of 1 December 2025. In view of the retirement of the Chair of Board 3.3.06, all other members were assigned to other boards with effect from 1 December 2025. The case was transferred to Board 3.3.02 with effect from 1 December 2025. The composition of the board in the present case remained unchanged..

The board rejected the appellant's request that the case be continued with a panel composed of Board 3.3.02 and its Chair or Vice Chair. It noted that the competence of the panel of a technical board of appeal to assess whether its composition was correct pursuant to the RPBA and the relevant BDS had been acknowledged in T 281/03. However, in G 1/21 of 28 May 2021 and G 1/21 of 16 July 2021, the Enlarged Board held that it was not competent to change its composition or to declare itself to lack competence to deal with the case because of an allegedly incorrect application of the BDS. The board considered the conclusions of the Enlarged Board to be applicable when the party requests to change the composition of the panel of a technical board of appeal. It stressed that the appellant's final request was not to the effect that the board declare itself to lack competence to deal with the case, but rather that the case be continued with members of Board 3.3.02. The panel held that it had no competence to decide on that request. Since the Chairman of Board 3.3.02 had also confirmed that the composition of the board for the present case remained unchanged, there was no basis for continuing the case with members of Board 3.3.02 and its Chair or Vice Chair. The board noted that this finding was not challenged by the appellant's reference to Art. 8 RPBA, which merely addresses the consequences of a change in the board's composition after oral proceedings, but does not deal with the replacement as such.

The board found the composition of the panel to be in accordance with the relevant provisions of the applicable BDS, the RPBA and the EPC. The amendment in the BDS of 27 June 2025 did not presuppose a new composition of the panel. The board explained that Art. 8 BDS serves to ensure that the board and the composition of the panel, determined objectively on the basis of the BDS before the decision-making process started, remain unaffected by amendments made therein. This prevents interference in the decision-making process due to changes in the responsibility for a specific case triggered by amendments to the BDS. It also ensures that the designated judges can only be replaced pursuant to the specific provisions set out in the BDS, the RPBA or Art. 24(4) EPC. The board underlined that this enhances judicial efficiency constituting an essential element of the right to have fair proceedings (J 15/04).

The board observed that the peculiarity of the present case was that Board 3.3.06 remained in the BDS as an empty shell and became de facto ineffective. As no provision in the BDS explicitly covered this specific constellation, the board applied Art. 8 BDS by analogy, taking into account the following aspects. The BDS is an important element of an independent, reliable and efficient judicial system (R 15/11). Any change in a board's composition without good reason would be contrary to the evident purpose of the BDS and thus detrimental to the public's confidence in the judicial character of appeal proceedings (R 15/11). According to the board, to ensure that this objective is safeguarded for changes during the working year, Art. 8 BDS provides that the responsibility of the board and/or the panel shall not be affected if the BDS is changed and if a communication has already been sent or oral proceedings have been appointed. Replacing the members of a panel that was originally composed on the basis of objective criteria set out in the BDS would run counter to the principle that responsibilities shall be determined before the assessment of a specific case begins..

Furthermore, the board did not see any need for a referral under Art. 112(1)(a) EPC, because the legal loophole in the BDS could be closed by the analogous application of Art. 8 BDS, in line with established legal methodology. Nor did it consider a referral necessary to ensure the uniform application of the law.