Enlarged Board of Appeal issued its opinion in G3/08

On May 12, 2010, the Enlarged Board of Appeal issued its opinion in case G3/08 (Opinion of the Enlarged Board of Appeal in G3/08).

The ultimate conclusion drawn by the Enlarged Board of Appeal, is that the referral by the President of the European Patent Office does not fullfill the requirements of Article 112(1)(b) EPC, and is therefore not admissable.

The Enlarged Board first elaborates on the conditions required in Article 112(1)(b) EPC. One of the issues is whether the decisions cited by the President were taken by two different Boards of Appeal. The Enlarged Board concluded that it is not required that the “two Boards” constitute two different organisational units within the European Patent Organisation. Instead it suffices that the decisions were taken by Boards having different constitutions, id est, the Boards consisted of different members. As the alleged conflicting decisions were taken by Boards having different constitutions, the Board is of the opinion that this requirement is met in the referral.

The Enlarged Board also elaborated on what constitutes “different decisions”. It came to the conclusion that “different” should be read as diverging. The Enlarged Board acknowledged that the view of the Boards might change over time, especially in relatively new technical fields. This change over time is often the result of the development of case law, wherein older decisions are being left in view of newer insights. The Board also acknowledged that this development does not always progress linearly. As long as normal development of case law takes place, the Enlarged Board is of the opinion that Article 112(1)(b) EPC does not give the President the right to interfere, because the European Patent Office might favour an older decision over a newer decision. Instead, only when two diverging decisions are being taken, which are conflicting and cause legal uncertainty, does the President have a right to refer the issue to the Enlarged Board.

In the question of the referral, the Enlarged Board concluded that the decisions cited only showed the normal development of the case law. Therefore, it regarded the referral unadmissable.