2.3. Referral by a board of appeal
2.3.7 Point of law of fundamental importance
The requirement that the referred question must either concern a lack of uniform application of the law by the boards or a point of law of fundamental importance concerns both referrals by a board and referrals by the President (see in this chapter V.B.2.4.1).
G 1/12 (OJ 2014, A114) concerned the correction of errors regarding the identity of the appellant and, in this context, the admissibility of an appeal. The Enlarged Board held that the referred question related to a "point of law of fundamental importance" because it was relevant to a large number of similar cases (see also G 2/21, OJ 2023, A85, T 271/85 date: 1988-03-09, OJ 1988, 341, T 1242/04, OJ 2007, 421 and T 1676/08: "a substantial number of similar cases") and was therefore of great interest not only to the parties to the specific appeal proceedings in question (see also T 590/18 of 4 July 2018 date: 2018-07-04). Settling this point of law was important not only to the users of the European patent system but also to the boards of appeal and the department of first instance in examination and opposition proceedings. A minority of the members of the Enlarged Board disagreed and considered the referral inadmissible. According to the minority, the majority's view implied that "importance" within the meaning of Art. 112 EPC was nothing more than mere relevance. The number of cases affected, however, was neither a suitable nor an appropriate criterion for establishing the admissibility of a referral. In G 1/13 (OJ 2015, A42) and G 2/21 (OJ 2023, A85), the Enlarged Board confirmed the view of the majority in G 1/12.
In G 1/19 the Enlarged Board held that the requirement of fundamental importance was fulfilled despite the small number of board decisions in the field of the application in suit. It added that in an unknown number of cases, the issues at play in the underlying appeal had been avoided through claim drafting techniques; the referred questions could also be pertinent for these cases.
In consolidated cases G 1/22 and G 2/22 the Enlarged Board found that while question II referred to a specific situation, the answer would not necessarily be limited to the viability of the "PCT joint applicants approach" and may cover other situations where the applicant’s entitlement to the priority right was challenged. It added that even if the answer covered only the situation described in question II, the question was considered to touch a point of law of fundamental importance in the terms of Art. 112(1) EPC.
Referring to G 1/84, G 3/93, G 2/04 and G 3/04, the board in T 1286/23 found that party status, whether before the first-instance divisions or in appeal proceedings, was normally a fundamental question of law.
In G 4/19 the Enlarged Board noted that a point of law could be of fundamental importance even where there was no divergence in the case law (see also T 1286/23).
In T 26/88 (OJ 1991, 30) the board held that a question was not sufficiently important when the legal framework upon which the question was based (here: R. 58(5) EPC 1973) had changed in the interim and the question was therefore unlikely to arise again very often (see also T 1286/23). Similarly, in T 2459/12, the board stated that a question regarding a point of law the answer to which would affect only a relatively small number of applicants for a limited period of time, after which it would become obsolete (here: due to an amendment to R. 164 EPC), was not a question relating to a point of law of fundamental importance.
In T 364/20 the board noted that the question concerning university theses to be made available to the public in view of legal provisions or university regulations in Finland was highly specific so that no point of law of fundamental importance arose. Similarly in T 423/22 the board considered the circumstances of the witness hearing defined in the question to be very specific (hearing by videoconference, witness is an employee of the opponent and located at the opponent's office during the hearing) and hence not applicable to the majority of witness hearings during first-instance proceedings. According to the board the question was not of fundamental importance.
The lack of case law on a particular issue is in itself not a sufficient reason to refer a question to the Enlarged Board (T 998/99).
In J 5/81 (OJ 1982, 155) the appellant requested the referral of a question which the Legal Board considered an important point of law. The Legal Board refused the appellant's request regardless, as the question could be answered by reference to the EPC without doubt (see also, for example, J 14/91, OJ 1993, 479; T 1196/08; T 1676/08; T 2477/12). In T 39/05, the board already denied the existence of an important point of law if a question could be answered by reference to the EPC without doubt.
In J 10/15 the Legal Board was of the opinion that the legal situation in the case in hand was clearly to be derived from the EPC and the PCT, so that there was no question of law of fundamental importance which could justify a referral to the Enlarged Board.
- G 0002/24
In G 2/24 the Enlarged Board ("EBA") answered the referred questions as follows: "After withdrawal of all appeals, appeal proceedings may not be continued with a third party who intervened during the appeal proceedings in accordance with Article 105 EPC.
The intervening third party does not acquire an appellant status corresponding to the status of a person entitled to appeal within the meaning of Article 107, first sentence, EPC..
The EBA found the referral admissible. It held that the referral concerned an aspect of fundamental importance and the final decision on the appeal hinged on the answer to the referred questions. It explained that while Art. 21 RPBA allows for the further development of the case law and grants boards ample discretion for referral, in view of the legislative intent of Art. 112 EPC to ensure a uniform application of the law, a board was expected to substantiate why it considers an earlier ruling to have been superseded by a subsequent change in the law, there to be potential gaps in its reasoning or the existence of a new factual or procedural situation. The EBA took note of the referring board’s criticism of G 3/04.
The EBA concluded that the findings of G 3/04 continue to apply. None of the provisions relevant to the referral (i.e. Art. 99(1), 105 and 107 EPC) had been amended in a substantive manner after G 3/04 had been issued.
The EBA reaffirmed that appeal proceedings are of a judicial nature and the appeal is designed as a remedy on facts and law for parties to proceedings before the administrative departments of the EPO with the aim of eliminating an "adverse effect" of the impugned decision. The scope of the appeal proceedings is primarily determined by the decision under appeal, the appellant’s requests submitted with the notice of appeal and the statement of grounds of appeal, and, in inter partes proceedings, the submissions of the other party or parties in reply to the appellant’s statement of grounds of appeal. The appeal is not an ex officio procedure but depends on the appellant to initiate, determine the scope of, and conclude it within that party’s power of disposal, in accordance with the principle of party disposition.
The EBA further held that a party entitled to appeal within the meaning of Art. 107, first sentence, EPC is only the person who formally participated in the proceedings before the administrative department that issued the impugned decision, unless a third party’s entitlement to participate in those proceedings had been ignored due to procedural error or incorrect application of law. An adverse effect within the meaning of this provision only exists if a decision falls short of the request of a party to the proceedings or deviates from it without their consent. Any other "negative " or "disadvantageous " impact or effect on a third party does not fulfil the legal threshold.
On interventions by third parties, the EBA stated that the exceptional nature of this legal remedy inherently precludes an extensive interpretation and application thereof. An intervener at appeal cannot procedurally benefit from any status in the preceding administrative proceedings and becomes a party as of right. Intervention at appeal needs to fit into the legal and procedural framework of the boards of appeal as the first and final judicial instance in proceedings under the EPC. The principle of party disposition, the binding nature of the parties’ requests and the prohibitions of ruling ultra petita and reformatio in peius limit the option for procedural action of all involved in appeal proceedings, including interveners. Parties to appeal proceedings as of right do not have a legal status independent of the appeal. Awarding an intervener such status would require an explicit legal provision in the EPC.
Therefore, if the sole or all appeals are withdrawn, the proceedings end with regard to all substantive issues for all parties involved and cannot be continued with an intervener at the appeal stage or any other non-appealing party.