2.3. Referral by a board of appeal
2.3.6 Ensuring uniform application of the law
In order to be admissible, the referred question must either concern a non-uniform application of the law by the boards or, alternatively, a point of law of fundamental importance (see in this chapter V.B.2.3.7). According to Art. 112 EPC, this requirement concerns not only referrals by a board but also referrals by the President, which, however, must in any case concern "different decisions" of the boards (see in this chapter V.B.2.4.3).
In T 154/04 (OJ 2008, 46) the board found that deviating from an opinion given in another decision of a board of appeal or a deviation from national jurisprudence are not per se valid reasons for referral under Art. 112(1)(a) EPC (see also T 314/20). According to the board, the legal system of the EPC allows for the evolution of the case law, which is not case law in the Anglo-Saxon meaning of the term. In T 15/01 (OJ 2006, 153) the board did not consider a referral to the Enlarged Board necessary, because only one previous decision of the boards deviated from its own conclusion as to the exhaustion of priority rights. In T 248/88 the board also held that a single and isolated non-uniform decision did not qualify under Art. 112(1)(a) EPC. According to the board in T 314/20 a referral would only be appropriate if two or more conflicting lines of interpretation existed, which would lead, in the case in hand, to diverging outcomes.
In T 438/22 the board admitted that the wording of Art. 112(1)(a) EPC may appear to suggest that the removal of a discrepancy between the Guidelines and the case law could also be understood as "ensuring uniform application of the law" and as such be a good reason for an admissible referral. However, the board held that a referral whose sole purpose was to correct the Guidelines and which was not necessary either for ensuring a uniform case law within the boards or for the board's decision was inadmissible. See also in this chapter V.B.2.3.1.
In T 712/10 the board stated that the Enlarged Board does not have the power to ensure uniform application of the law between the boards of appeal and national courts. However, a lack of uniformity between the law as applied by the boards of appeal and national courts could, in theory, bring to the fore a point of law of fundamental importance.
With regard to T 712/10 the board in T 447/22 remarked that, although a lack of uniformity between the law as applied by the boards of appeal and national courts could, in theory, bring to the fore a point of law of fundamental importance, the purpose of referring a question to the Enlarged Board could not be to ensure uniform application of the law between national courts.
In T 2477/12 the board held that the application of the same legal principles and criteria may lead to different results in different cases. This is a consequence of the specific facts of each individual case and not, however, an indication of a contradictory interpretation or an inconsistent application of the law. See also T 314/20 and T 364/20.
In G 1/12 (OJ 2014, A114), the Enlarged Board considered the requirement of non-uniform application of the law to be fulfilled because some decisions allowed deficiencies in the appellant's name to be remedied under R. 101(2) EPC, whereas in other decisions on analogous situations the boards applied R. 139 EPC. A minority of the members of the Enlarged Board were of the opinion that this merely demonstrated that, as long as the removal of the deficiency did not lead to a change of the appellant's true identity, both procedures were available according to consistent case law.
In G 2/21 (OJ 2023, A85) the Enlarged Board accepted the referring board’s perception of divergencies in the case law, if only for the use of different conceptual and terminological approaches underlying the referred questions. According to the Enlarged Board, confronted with these approaches, the referring board considered itself unable to arrive at a clear conclusion for the case at hand.
In consolidated cases G 1/22 and G 2/22 the Enlarged Board considered the condition that an answer to referred question I was required to ensure uniform application of the law met. The Enlarged Board reasoned that the EPO’s jurisdiction concerning the entitlement to the priority right had been questioned by boards of appeal in several cases and was arising in various other cases before different boards.
- T 0745/23
In case T 0745/23 the board had summoned the parties to oral proceedings on the EPO premises. The respondent had requested that the oral proceedings be held by videoconference. The appellant had requested, in response, that the oral proceedings be held in person, or, alternatively, that the board refer to the Enlarged Board the following questions:.
"1. Is the conduct of oral proceedings as a videoconference in appeal proceedings outside a general emergency situation without the consent of the parties in accordance with the provisions of the EPC.
2. If yes, on which criteria should the discretion be exercised if a Board of Appeal decides on its own motion to hold oral proceedings as a videoconference pursuant to Art. 15a(1) RPBA against the request of a party?.
In the communication under Art. 15(1) RPBA, the board had found the case in hand suitable for being heard by videoconference. The appellant had not responded to this communication, and hence, according to the board, had not objected to the board’s intention to grant the respondent’s request for a videoconference. Therefore, the board had changed the venue of the oral proceedings to videoconference.
At the oral proceedings, the appellant argued that Art. 15a RPBA did not define the criteria for exercising the board’s discretion. This gave rise to different practices and legal uncertainty. Since, according to G 1/21, oral proceedings in person were the gold standard, there could be doubt as to whether Art. 15a RPBA was actually in line with the EPC.
The board disagreed. Art. 15a RPBA provided the board with the discretion to decide to hold oral proceedings pursuant to Art. 116 EPC by videoconference if the board considered it appropriate to do so, either upon a party's request or of its own motion. Its scope was general and not limited to a pandemic situation. In G 1/21, the Enlarged Board had expressly acknowledged that oral proceedings in the form of a videoconference were oral proceedings within the meaning of Art. 116 EPC. The board failed to see how Art. 15a RPBA as such violated any EPC provisions governing the fair conduct of proceedings and the right to be heard.
Furthermore, the board stated that it interpreted the discretionary power set out in Art. 15a RPBA within the framework of decision G 1/21. This decision had not excluded videoconference oral proceedings a priori, but had set certain limitations and restrictions, especially when a party did not give its consent. The board exercised its discretion in view of the particular circumstances of the case and of the reasons provided by each party in support of their opposing requests as to the format. Thus, also the party not consenting to a videoconference should provide some reasons as to why it considered that videoconference, in the case in hand, was not suitable or why the party was otherwise disadvantaged. In the case in hand, the appellant, however, had not submitted any objective or subjective reason why the case in hand should not be heard by videoconference. In the absence of any further submissions by the appellant regarding the format of the oral proceedings, the board had had no reason to (again) change the format of the oral proceedings.
The board rejected the appellant’s request for referral. The first question proposed for referral had already been answered by the Enlarged Board in section C.5 of G 1/21. This section undoubtedly had a general character, despite the judgement essentially being limited to the pandemic (as also acknowledged in T 2432/19). The board held that in the case in hand, it failed to identify a departure from the teaching of G 1/21, and thus a need to (again) refer the first question in order to decide the present case. The posed question thus did not warrant a referral, which would otherwise be of theoretical interest only.
With regard to the second question proposed for referral, the board found that any answer to it depended on the specific case and providing anything more than general instructions would risk compromising the principle of judicial discretion. The board held that, for this reason alone, it could not be regarded as a point of law suitable for being referred to the Enlarged Board.