G 1/11

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G 1/11
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Enlarged Board of Appeal of the European Patent Office

Contents

Issued 19 March 2014
Board composition
Chairman: Wim Van der Eijk
Members: A. Klein, R. Menapace, C. Rennie-Smith, M.-B. Tardo-Dino, U. Oswald, M. Vogel
Headword
Non-refund of further search fees/BAUER

G 1/11 is a decision issued on 19 March 2014 by the Enlarged Board of Appeal of the European Patent Office (EPO), holding that 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, which has not been taken together with a decision granting a European patent or refusing a European patent application. [1] In other words, the decision deals with the delimitation of competence between the EPO's Legal Board of Appeal and its Technical Boards of Appeal. [2]

Background

Pursuant to Article 21(3) EPC, appeals at the EPO that deal with technical issues are handled by technical boards of appeal whereas appeals dealing with legal issues are handled by the Legal Board of Appeal. [3] According to Derk Visser however, "[t]he formulation of Art.21(3) EPC in terms of procedure instead of expertise of the boards has resulted in a complicated provision including gaps (...), the interpretation of which has required a large number of decisions of boards of appeals". [3]

In the proceedings that led to referral G 1/11, the applicant of a European patent application had paid four further search fees after the Search Division of the EPO had drawn up a partial search report (because the Search Division had found that the application lacked unity of invention). The applicant then requested their reimbursement under Rule 64(2) EPC because, in the applicant's view, the Search Division had wrongly held that the application lacked unity. The Examining Division, which then became competent, rejected the applicant's request, and the applicant appealed the rejection. [2]

The appeal was assigned to a Technical Board of Appeal, which opted to transfer the case to the Legal Board of Appeal. The Legal Board of Appeal then referred, in its decision J 21/09, the question of its alleged competence (or not) for this issue of refund of search fees to the Enlarged Board of Appeal under Article 112(1)(a) EPC. [2]

Question

Thus, the referral to the Enlarged Board lies from decision J 21/09 [4] by the Legal Board of Appeal. The referred question was:

Is a technical board of appeal or the Legal Board of Appeal competent to hear an appeal against an EPO examining division's decision taken separately from its decision granting a patent or refusing the application not to refund search fees under Rule 64(2) EPC?

Answer to the referred question

In its answer to the referred question, the Enlarged Board of Appeal ruled that "a technical board of appeal is competent to hear an appeal against an EPO examining division's decision – taken separately from its decision granting a patent or refusing the application – not to refund search fees under Rule 64(2) EPC."

In the underlying reasons, the Enlarged Board of Appeal explained "that the Boards of Appeal should have a composition which enables them to decide all technical matters relevant to the decision with their own expertise, without calling in external experts." [5] By doing so, the Enlarged Board of Appeal in effect closed a gap in law by assigning these cases to the Technical Boards of Appeal. [6] According to Rudolf Teschmacher, the lacuna in the law closed by G 1/11 had been known for a long time, and could in fact have been solved in a dogmatically more convincing way by the legislator of the EPC 2000, the diplomatic conference of member states who revised the European Patent Convention (EPC). [7]

See also

Related Research Articles

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The European Patent Convention (EPC), the multilateral treaty instituting the legal system according to which European patents are granted, contains provisions allowing a party to appeal a decision issued by a first instance department of the European Patent Office (EPO). For instance, a decision of an Examining Division refusing to grant a European patent application may be appealed by the applicant. The appeal procedure before the European Patent Office is under the responsibility of its Boards of Appeal, which are institutionally independent within the EPO.

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G 1/03 and G 2/03 are two decisions of the Enlarged Board of Appeal of the European Patent Office (EPO), which were both issued on April 8, 2004.

<span class="mw-page-title-main">Grant procedure before the European Patent Office</span>

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Under case number G 3/08, the Enlarged Board of Appeal of the EPO issued on May 12, 2010 an opinion in response to questions referred to it by the President of the European Patent Office (EPO), Alison Brimelow, on October 22, 2008. The questions subject of the referral related to the patentability of programs for computers under the European Patent Convention (EPC) and were, according to the President of the EPO, of fundamental importance as they related to the definition of "the limits of patentability in the field of computing." In a 55-page long opinion, the Enlarged Board of Appeal considered the referral to be inadmissible because no divergent decisions had been identified in the referral.

Under Article 82 EPC, a European patent application must "...relate to one invention only or to a group of inventions so linked as to form a single general inventive concept." This legal provision is the application, within the European Patent Convention, of the requirement of unity of invention, which also applies also in other jurisdictions.

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The restitutio in integrum or re-establishment of rights under the European Patent Convention (EPC) is a means of redress available to an applicant or patent proprietor who has failed to meet a time limit in spite of exercising "all due care required by the circumstances". The legal basis for this means of redress is provided in Article 122 EPC. If the request for restitutio in integrum is accepted, the applicant or patentee is re-established in its rights, as if the time limit had been duly met.

The fees due at the European Patent Office (EPO) in relation to a European patent application are laid out in the Rules relating to Fees of 20 October 1977, as adopted by decision of the Administrative Council of the European Patent Organisation of 7 December 2006 and as last amended by decision of the Administrative Council of 12 December 2018.

G 2/12 and G 2/13 are two decisions by the Enlarged Board of Appeal of the European Patent Office (EPO), which issued on 25 March 2015. The cases were consolidated and are contentwise identical. The cases concern the patentability of biological products through the description of the procedure for achieving that product. The Enlarged Board of Appeal ruled that such products were patentable and not in conflict with Article 53(b) EPC, which does not allow patents for "essentially biological" processes.

G 1/19 is a decision issued by the Enlarged Board of Appeal of the European Patent Office (EPO) on 10 March 2021, which deals with the patentability of computer-implemented simulations.

G 2/19 is a decision issued by the Enlarged Board of Appeal of the European Patent Office (EPO) on 16 July 2019, which deals with three legal questions, the third relating to whether oral proceedings before the EPO Boards of Appeal may be held in Haar in the Munich district rather than in Munich per se, when a party objects to the oral proceedings being held in Haar. In July 2019, the Enlarged Board of Appeal decided that oral proceedings before the Boards of Appeal may be held in Haar without infringing Article 113(1) EPC and Article 116(1) EPC.

G 1/21 is a decision issued on 16 July 2021 by the Enlarged Board of Appeal of the European Patent Office (EPO) regarding the legality of holding oral proceedings at the EPO by videoconference without the consent of the parties. Namely, the Enlarged Board of Appeal held that "[d]uring a general emergency impairing the parties' possibilities to attend in-person oral proceedings at the EPO premises, the conduct of oral proceedings before the boards of appeal in the form of a videoconference is compatible with the EPC even if not all of the parties to the proceedings have given their consent to the conduct of oral proceedings in the form of a videoconference." The reasoning in the written decision further indicates that, if a party so requests, oral proceedings must be held in person at the EPO premises, except in absolutely exceptional cases.

G 1/10 is a decision issued on 23 July 2012 by the Enlarged Board of Appeal of the European Patent Office (EPO), holding that Rule 140 EPC cannot be used to request corrections of the text of a European patent.

G 1/12 is a decision issued on 30 April 2014 by the Enlarged Board of Appeal of the European Patent Office (EPO), holding that an appellant's identity in a notice of appeal can be corrected under Rule 101(2) EPC, provided the requirements of Rule 101(1) EPC are met. The Enlarged Board of Appeal also held that an appellant's identity can be corrected under Rule 139 EPC, first sentence, under the conditions established by the case law of the Boards of Appeal.

G 1/09 is a decision issued on 27 September 2010 by the Enlarged Board of Appeal of the European Patent Office (EPO), holding that, following refusal of a European patent application, the application remains pending until the expiry of the time limit for filing a notice of appeal, so that a divisional application under Article 76 EPC may be filed before the EPO even after the refusal of an application. More specifically, the divisional application may be filed until expiry of the time limit of two months for filing a notice of appeal under Article 108 EPC.

References

  1. ↑ "Nichtrückzahlung von weiteren Recherchengebühren/BAUER" [Non-reimbursement of further search fees/BAUER]. PMZ - Blatt für Patent-, Muster- und Zeichenwesen (in German). Carl Heymanns Verlag. 7: 267. 2015. Retrieved 4 June 2022.
  2. 1 2 3 Teschemacher, Rudolf (2014). "Aktuelle Rechtsprechung der Beschwerdekammern des EPA – Notizen für die Praxis" [Current case law of the Boards of Appeal of the EPO - Notes for the practice]. Mitteilungen der deutschen Patentanwälte (in German). Carl Heymanns Verlag. 8–9: 379–384. (see section 1.1.2)
  3. 1 2 Visser, Derk (17 December 2018). Visser's Annotated European Patent Convention 2018 Edition. Kluwer Law International B.V. Art.21(3):1. ISBN   978-94-035-0675-3. (referring to G 1/11, especially reasons 9 and 13)
  4. ↑ Decision J 21/09 (Zuständigkeit der Juristischen Beschwerdekammer/BAUER MASCHINEN GMBH) of 1 August 2011
  5. ↑ Teschemacher, Rudolf (2014) - Translation of "(...) dass die Beschwerdekammern eine Zusammensetzung aufweisen, die es ihnen ermöglicht, alle entscheidungserheblichen technischen Sachverhalte mit eigenem Sachverstand, ohne Heranziehung externer Sachverständiger entscheiden zu können."
  6. ↑ Teschemacher, Rudolf (2014) - Source: "(...) so dass eine planwidrige Gesetzeslücke vorliege. Diese wird von der Kammer im Weg der Zuweisung dieser Fälle an die Technischen Beschwerdekammern geschlossen."
  7. ↑ Teschemacher, Rudolf (2014) - Source: "Freilich hätte das schon lange bekannte Problem dogmatisch überzeugender durch den Gesetzgeber des EPÜ 2000 gelöst werden können."

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