Guidelines not binding on boards 
III.S.1. Guidelines not binding on boards 

The Guidelines for Examination are not binding on the boards of appeal (settled case law; see, for instance, T 1561/05 of 17 October 2006, point 1.5 of the Reasons).

In T 1561/05 the board confirmed that the Guidelines for Examination in the EPO were not binding on the boards of appeal (applying T 162/82, OJ 1987, 533). T 1561/05 of 17 October 2006 is also referred to in J 7/10.

In T 740/98 the board noted, among other things, that the legal system established under the Convention did not treat the Guidelines as binding.

In T 1356/05 (also T 1360/05) the board stated that no provision of the Guidelines could override an article or rule of the EPC.

In T 500/00 the appellant argued that the disclaimer had been made in good faith according to the Guidelines and in accordance with the practice of the boards of appeal at the time of making the disclaimer. The board pointed out that the Guidelines were not rules of law and noted that what counted was not whether the opposition division had acted in accordance with the Guidelines, but whether it had acted in accordance with the Convention. In any event, the principle of good faith could not have been successfully invoked in this case.

In T 552/02 the appellants (proprietors) essentially based their assertion on a passage in the Guidelines. They also submitted that Art. 15(2) RPBA (as in force until 12 December 2007) obliged the board to state its grounds if it gave a different interpretation of the EPC 1973 to that provided for in the Guidelines. On the latter point the board said (a) that the members of the board were not bound by any instructions and had only to comply with the provisions of the EPC 1973, which meant the board was not bound by the Guidelines, and (b) that Art. 15(2) RPBA 2003 did not oblige the board to state grounds for deviating from the Guidelines but simply stipulated that it should "state the grounds for its action if it consider[ed] that [its] decision [would] be more readily understood in the light of such grounds".

As to the alleged lack of consistency between what was in fact the established case law and the Guidelines for Examination, the board in T 1741/08 noted that it was not bound by the Guidelines, an important factor in the judicial independence of the boards of appeal (Art. 23(3) EPC). An alleged divergence between the Guidelines for Examination and case law therefore could not be a sufficient basis for challenging the case law by means of a referral to the Enlarged Board of Appeal.

The board in T 2311/10, unlike the examining division, found that in connection with amendments the three-point or essentiality test (see Guidelines H‑V, 3.1 and 3.2.1 – June 2012 version) was unhelpful or even misleading when assessing the admissibility of an intermediate generalisation taken from the description for the purpose of delimitation from subsequently identified prior art. Since the November 2014 version, the Guidelines no longer refer to the three-point or essentiality test (T 331/87) in the context of intermediate generalisations.

The appellant (applicant) in T 1363/12 relied on the revised Guidelines (H‑IV, 2.3 – November 2014 version [NB: Guidelines H‑IV, 2.2, last paragraph – November 2015 version]) in support of a general submission that a more lenient standard than the "gold" standard should be applied when assessing compliance with Art. 123(2) EPC. Quite apart from the fact that the boards of appeal are not bound by the Guidelines for Examination, as was acknowledged by the appellant, it is to be noted that the principles established by the Enlarged Board of Appeal for the assessment of the requirement of Art. 123(2) EPC could not be changed by issuing amended Guidelines. Consequently, the appellant's suggestion that the above statement was somehow applicable at the time of the oral proceedings before the board was wrong: there had been no change in the standard to be applied under Art. 123(2) EPC. Furthermore, while the passage from the Guidelines might well be correct when applied to particular factual situations similar to that which arose in T 2619/11, any more general principle could not be derived from this decision.

The fact that the Guidelines are not binding on the boards of appeal does not mean that the boards do not apply them or quote them as a source of inspiration (see in this chapter III.S.3).

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