1.6.2 Binding nature of national decisions in relation to procedures under Article 61(1) EPC

In J 14/19 the Legal Board noted that, in accordance with Art. 9(2) of the Protocol on Recognition, the jurisdiction of the (national) court whose decision on the right to the grant of a European patent was to be recognised, and the validity of such decision, could not be reviewed. Although primarily addressing the contracting states of the EPC, the Protocol on Recognition was an integral part of the EPC according to Art. 164(1) EPC and thus also binding on the EPO (see J 36/97 and, for the duty to recognise, R. 16(2) EPC). The Legal Board also made reference to G 3/92, in which the Enlarged Board stated that substantive examination of a claim was the preserve of the national court under the Protocol on Recognition and the EPO had no authority in this regard.

In G 1/22 (OJ 2024, A50) the Enlarged Board confirmed that the EPO has no power to decide a dispute as to whether a particular applicant is legally entitled to apply for and be granted a European patent in respect of the subject-matter of a particular application. The determination of questions of entitlement to the right to the grant of a European patent prior to grant is governed by the "Protocol of Recognition".