List of decisions and opinions of the Enlarged Board of Appeal of the European Patent Office

This is a list of decisions and opinions of the Enlarged Board of Appeal of the European Patent Office (EPO) in chronological order of the dates when the decisions were issued. The list is incomplete.

Decided cases

Keys: Decision(s), after referral by a Board of Appeal under Art. 112(1)(a) EPC Opinion, after referral by the President of the EPO under Art. 112(1)(b) EPC Decision and opinion, in consolidated or identical cases

1980 – 1989

Reference Date Keywords and/or comments Sources
G 1/83
G 2/83
G 3/83
G 4/83
G 5/83
G 6/83
G 7/83 		12 May 1984 Patentability - Art. 52(4) - first and second medical indications
(G 1/83, G 5/83 and G 6/83 have been published, respectively in German, English and French, the three official languages of the EPO. The four other decisions have not been published.)

G 1/84 24 July 1985 Opposition by proprietor - overturned by G 9/93
G 1/86 24 June 1987 Art. 122 - Restitutio in integrum - opponent not barred - time limit statement grounds of appeal
G 4/88 24 April 1989 Opposition - transfer - part of the business assets
G 2/88 12 November 1989 Art. 123(3) - change of category - use claim novel by its purpose
G 6/88 12 November 1989 Novelty - second non-medical indication yes
(Partially identical to G 2/88.)

1990 – 1994

Reference Date Keywords and/or comments Sources
G 1/89
G 2/89 		21 February 1990 Patent Cooperation Treaty - unity of invention - a priori and a posteriori
G 5/88
G 7/88
G 8/88 		16 November 1990 Filing of notice of opposition at the DPMA before July 1, 1989

G 1/91 9 December 1991 The requirement of unity of invention (Article 82 EPC) is not applicable under Article 102(3) EPC when a European patent is amended during opposition proceedings. In other words, "when [a] patent is amended in opposition proceedings, unity no longer has any relevance."[1] Unity of invention under Article 82 EPC is merely an administrative regulation, the function of which being fulfilled during examination proceedings.[2]
G 7/91
G 8/91 		11 May 1992 Appeal - withdrawal of sole appellant - termination
G 3/89
G 11/91 		19 November 1992 Art. 123(2) - strictly declaratory nature of Rule 88 corrections
G 1/92 18 December 1992 Novelty - availability to the public - prior use
G 9/91 31 March 1993 Framework of opposition and appeal, insofar as the extent of the opposition is concerned: "The power of an Opposition Division or a Board of Appeal to examine and decide on the maintenance of a European patent under Articles 101 and 102 EPC depends upon the extent to which the patent is opposed in the notice of opposition pursuant to Rule 55(c) EPC 1973 [now Rule 76(2)(c) EPC]. However, subject-matters of claims depending on an independent claim, which falls in opposition or appeal proceedings, may be examined as to their patentability even if they have not been explicitly opposed, provided their validity is prima facie in doubt on the basis of already available information." (Underlining in the original; notes within brackets added). If an opponent deliberately limits "the extent to which the patent is opposed to only certain subject-matters", these "subject-matters are therefore, strictly speaking, not subject to any "opposition" in the sense of Articles 101 and 102 EPC".[3]
G 10/91 31 March 1993 Framework of opposition and appeal, insofar as the grounds for opposition are concerned:"
  1. An Opposition Division or a Board of Appeal is not obliged to consider all the grounds for opposition referred to in Article 100 EPC, going beyond the grounds covered by the statement under Rule 55(c) EPC 1973 [now Rule 76(2)(c) EPC].
  2. In principle, the Opposition Division shall examine only such grounds for opposition which have been properly submitted and substantiated in accordance with Article 99(1) in conjunction with Rule 55(c) EPC. Exceptionally, the Opposition Division may in application of Article 114(1) EPC consider other grounds for opposition which, prima facie, in whole or in part would seem to prejudice the maintenance of the European patent.
  3. Fresh grounds for opposition may be considered in appeal proceedings only with the approval of the patentee [By application of the volenti non fit injuria doctrine[4]]."[5] (Notes within brackets added)
G 4/92 22 October 1993 Oral proceedings - party absent - new facts or evidence
G 1/93 21 February 1994 Art. 123(2) & (3) - conflict - inescapable trap
G 9/93 7 June 1994 Opposition by patent proprietor - no - overturning G 1/84
G 9/92
G 4/93 		14 July 1994 Framework of appeal - extent (decision) - reformatio in peius
(With an indication of a minority opinion.)
G 1/94 5 November 1994 Intervention during pending appeal proceedings - fresh grounds
G 10/93 30 November 1994 Framework of appeal - ex parte - main aim: examination of the contested decision but no ban from introducing new grounds, facts or evidence

1995 – 1999

Reference Date Keywords and/or comments Sources
G 4/95 19 February 1996 Oral proceedings - representation - accompanying person ("Oral submissions by an accompanying person in opposition or opposition appeal proceedings")
G 1/95
G 7/95 		19 July 1996 Framework of opposition and appeal - Art. 100(a) - collection of grounds
G 3/97
G 4/97 		2 January 1999 Opposition on behalf of third party - strawman - circumvention of law by abuse of process
G 1/97 12 October 1999 Appeal - request to review a final decision, not provided for in the EPC

2000 – 2004

Reference Date Keywords and/or comments Sources
G 1/99 4 February 2001 Framework of appeal -extent (decision) - reformatio in peius - exception
G 2/98 31 May 2001 Priority - same invention - direct and unambiguous derivation
G 1/03
G 2/03 		8 April 2004 Allowability of disclaimers

2005 – 2009

Reference Date Keywords and/or comments Sources
G 2/04 25 May 2005 Transfer of opposition (i.e., of the status as an opponent), filing of an appeal when "there is a justifiable legal uncertainty as to how the law is to be interpreted in respect of the question of who the correct party to the proceedings is".
G 1/05
G 1/06		 28 June 2007 Divisional applications
G 2/06 25 November 2008 Stem cells, non-patentability of inventions involving the use and destruction of human embryos, Rule 28(c) EPC.

2010 – 2014

Reference Date Keywords and/or comments Sources
G 1/07 15 February 2010 Methods for treatment by surgery
G 4/08 16 February 2010 Language of the proceedings. No change of the language of a Euro-PCT application upon entry into European phase if the language of the PCT application is already in an EPO official language.
G 2/08 19 February 2010 Dosage regimen
G 3/08 12 May 2010 Patentability of programs for computers, referral dismissed
G 1/09 27 September 2010 Pending application. Time limit for filing a divisional application, and meaning of "pending" in Rule 25 EPC 1973 (Rule 36(1) EPC) [6]
G 2/07
G 1/08		 9 December 2010 Essentially biological processes
G 2/10 30 August 2011 Allowability of disclaimers under Article 123(2) EPC if the disclaimed subject-matter was (positively) disclosed as an embodiment of the invention in the application as filed
G 1/10 23 July 2012 Request to correct a patent under Rule 140 EPC. A patent proprietor's request for a correction of the text of a patent under Rule 140 EPC is inadmissible.
G 1/11 19 March 2014 Competence of the Boards of Appeal: A Technical Board of Appeal -rather than the Legal Board of Appeal- is competent for an appeal against a decision of an Examining Division refusing a request for refund of a search fee under Rule 64(2) EPC.
G 1/12 30 April 2014 Identity of Appellant
G 1/13 25 November 2014 Opponent company ceased to exist, for all purposes, before issuance of the decision of the Opposition Division, and then restored -with retroactive effect under the governing national law- after filing the appeal. Admissibility of the appeal.

From 2015

Reference Date Keywords and/or comments Sources
G 3/14 24 March 2015 Examination of clarity (Article 84 EPC) in opposition proceedings: "In considering whether, for the purposes of Article 101(3) EPC, a patent as amended meets the requirements of the EPC, the claims of the patent may be examined for compliance with the requirements of Article 84 EPC only when, and then only to the extent that the amendment introduces non-compliance with Article 84 EPC."
G 2/12
G 2/13		 25 March 2015 Tomatoes II and Broccoli II (Biological processes for the production of plants, Article 53(b) EPC). Product claims directed to plants or plant material are allowable. In other words, "plants or seeds obtained through a conventional breeding methods are patentable."[7]

Pending referrals

Reference Date Keywords and/or comments Sources
G 1/14[8] referred 20 February 2014 Appeal lodged and appeal fee paid after expiration of the time limit under Article 108(1) EPC. Is the appeal inadmissible or not deemed to have been filed?

See also

Legal requirements applicable to European patent applications and patents
Note: The above list of legal requirements is not exhaustive.

References

  1. ↑ G 1/91, point 5.2.
  2. ↑ G 1/91, points 4.1 and 4.2.
  3. ↑ G 9/91, point 10.
  4. ↑ G 9/91 (consolidated with G 10/91), point 18.
  5. ↑ G 10/91, Opinion.
  6. ↑ More comments may be found on: Another EBA referral on divisionals, IPKat, 11 June 2009. Consulted on June 12, 2009 and (French) Laurent Teyssedre, Demandes divisionnaires : la Grande Chambre est à nouveau saisie, Le blog du droit européen des brevets, June 10, 2009. Consulted on June 12, 2009.
  7. ↑ Saez, Catherine (1 April 2015). "EPO Backs Patents On Conventional Plants: Broccoli, Tomato Cases Decided". Intellectual Property Watch. Retrieved 6 April 2015.
  8. ↑ "Communication from the Enlarged Board of Appeal concerning case G 1/14". European Patent Office. 22 May 2014. Retrieved 24 May 2014.

External links