1.6.1 In principle no binding effect – strive for harmonisation

Proceedings before the boards are independent and decisions of national courts are not binding in law. This does not, however, preclude a degree of interaction between national judicial systems and the European system, particularly with a view to developing harmonious European case law (see R 21/09, point 2.4 of the Reasons, which is very detailed in this respect, and, as examples of decisions dealing with the relationship between national case law and board decisions, T 1904/12, T 885/02, T 202/13, T 231/13, T 488/16, T 926/20).

Case T 2220/14 recalled the relationship between national decisions and procedures before the boards of appeal. In the latter questions of patentability are to be decided solely in accordance with the EPC. As regards decisions made on patentability in contracting states to the EPC, these are not to be cited as if they were binding upon the boards of appeal, and claims should not be refused because their patentability cannot be upheld under the jurisdiction of one member state (T 452/91). Such considerations also apply to decisions of courts of non-member states such as the USA (point 16 of the Reasons).

In G 5/83 (OJ 1985, 64) the Enlarged Board pointed out that in the interpretation of international treaties, which provide the legal basis for the rights and duties of individuals and corporate bodies, it is necessary to pay attention to questions of harmonisation of national and international rules of law. This aspect of interpretation is particularly important where, as is the case with European patent law, provisions of an international treaty have been taken over into national legislation. The establishment of harmonised patent legislation in the contracting states must necessarily be accompanied by harmonised interpretation. For this reason, it is incumbent upon the EPO, and particularly its Boards of Appeal, to take into consideration the decisions and expressions of opinion of courts and industrial property offices in the contracting states (point 6 of the Reasons).

For certain (mostly procedural) sub-issues, however, national law is to be consulted.

In G 1/13 (OJ 2015, A42), for instance, the Enlarged Board stated that legal entities such as companies exist only by virtue of the national legal system which governs their incorporation, subsequent existence and cessation. When determining whether a legal entity exists or has ceased to exist, and has capacity to act, the starting point should be the clearly established principle under the EPC that national law should be referred to (points 5.1 and 6 of the Reasons). The Enlarged Board qualified this by stating that there are limits on the extent to which the EPO should follow national law. For example, a provision of national law which conferred on a company procedural rights which were contrary to the EPC could not be acknowledged by the EPO.

According to J 14/19, the question of when proceedings became pending was to be assessed, in relation to R. 14 EPC, under the (national) procedural law of the state in question. Where the EPO was called on to apply foreign law (here: German law), it had, according to the Legal Board, to do so within the overall context of the foreign legal system, wherever possible. As an international organisation independent of state authorities and courts, the EPO was not bound by the case law of national courts when interpreting the foreign law to be applied but, if aware of such case law, in particular of the highest national courts, it should nevertheless consider and evaluate it in coming to its decision. Since legal commentaries were not official publications and did not form part either of the law created by legislation or of the case law, they were not in themselves to be taken into account when applying foreign law.

As to the binding effect of national decisions, see also chapter III.H.8.2. "National decisions: no binding effect on the boards of appeal".