2.5.4 Stay of appeal proceedings following a referral

It follows from Art. 112(3) EPC that the proceedings before the referring board are stayed until the Enlarged Board gives its decision. Proceedings before other boards of appeal may also be stayed.

In T 417/22 of 7 July 2025 the board clarified that, under the right circumstances, staying proceedings in view of an already pending referral is a legitimate alternative to the board's own referral. As such, it was implicitly covered by Art. 21 RPBA as a legally correct procedure where a board intends to deviate from an interpretation of the EPC given in an earlier decision or opinion of the Enlarged Board (see also in this chapter V.B.2.5.1).

In T 426/00 of 27 June 2003 date: 2003-06-27, the board had to answer questions that were identical to the questions raised in a referral pending before the Enlarged Board (concerning Art. 123(2) EPC, disclaimers). The board raised the purpose of ensuring a uniform application of the law under Art. 112 EPC and the need to comply with the spirit of Art. 16 RPBA 1980 (Art. 21 RPBA; see in this chapter V.B.2.3.7). In order not to anticipate the Enlarged Board's evaluation of the questions before it, the board suspended the appeal proceedings.

In T 1875/07, the board acknowledged the patentability of the invention under Art. 52(2) EPC but did not consider the claimed subject-matter to be inventive. A referral on Art. 52(2) EPC was pending before the Enlarged Board. According to the board, the legal basis on which an application is refused determines only the reasons for the decision, but not the decision itself. Since the decision in the appeal proceedings did not depend entirely on the outcome of the referral, the board refused the request to suspend the appeal proceedings (see also T 787/06, T 1044/07 and T 1961/09).

In T 1021/23 the board did not stay the appeal proceedings. It considered that the possibility that decision G 1/24 (OJ 2025, A60) would be relevant to the case in hand was only hypothetical. Furthermore, it would be unsuitable to stay all proceedings where claim interpretation is necessary. Any considerations on staying the proceedings in the case in hand had to be balanced with the need for procedural efficiency in the proceedings, which were accelerated due to parallel proceedings in national courts, and the request of the appellant not to stay the proceedings.

The board in T 2116/22 considered that a strict application of the approach taken in T 166/84 (OJ 1984, 489; see in this chapter V.B.2.5.3) would in effect deny a board the exercise of its discretion when deciding whether to stay the proceedings. The discretion was, however, the inevitable consequence of the fact that there was no legal basis for requiring a board which had not referred the relevant questions to the Enlarged Board to stay the proceedings. The board concluded that, even if the strict approach of T 166/84 was applied to the case in hand, the proceedings were not to be stayed, since the outcome of the case did not depend on the outcome of the referral.