2.3. Referral by a board of appeal
2.3.7 Ensuring uniform application of the law
This section has been updated to reflect case law up to 31 December 2025. For the previous version of this section please refer to the "Case Law of the Boards of Appeal", 11th edition (PDF). |
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.2.3.8). 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. Similarly, the board in T 745/23 did not consider a referral to the Enlarged Board necessary, arguing inter alia that only a few decisions had taken a different approach to the majority of the jurisprudence. 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 (OJ 2024, A50) 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.
In G 1/24 (OJ 2025, A60) the referring decision identified diverging lines of case law. The Enlarged Board confirmed that its decision would serve to bring about a uniform application of the law.
- T 0873/24
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?"
- T 1899/23
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.