Having received not less than three referrals of points of law in the first few months of 2019, and a fourth one being announced to come, the Enlarged Board of Appeal (EBA) started to reduce its backlog in July by deciding two of the pending cases.

Reported by Dr. Rudolf Teschemacher, Bardehle Pagenberg

Referral G 1/18

1. Referral G 1/18 concerning the legal consequence if the notice of appeal and/or the appeal fee is not received within the two-month time limit.

The question referred to by the President of the EPO are answered as follows:

1. An appeal is deemed not to have been filed in the following cases:

(a) where notice of appeal was filed within the two‑month time limit prescribed in Article 108, first sentence, EPC AND the appeal fee was paid after expiry of that two‑month time limit;

(b) where notice of appeal was filed after expiry of the two‑month time limit prescribed in Article 108, first sentence, EPC AND the appeal fee was paid after expiry of that two‑month time limit;

(c) where the appeal fee was paid within the two‑month time limit prescribed in Article 108, first sentence, EPC for filing notice of appeal AND notice of appeal was filed after expiry of that two‑month time limit.

2. In the cases referred to in answers 1(a) to (c), reimbursement of the appeal fee is to be ordered ex officio.

3. Where the appeal fee was paid within or after the two‑month time limit prescribed in Article 108, first sentence, EPC for filing notice of appeal AND no notice of appeal was filed at all, the appeal fee is to be reimbursed.

The most interesting aspect for users of the European patent system is in points 2 and 3, i.e. that the appeal fee is to be reimbursed in all relevant situations. The decision follows the mainstream in the case law as well as the position taken in the referral of the President and by the authors of the amicus curiae briefs.

However, the question had been referred before twice in decisions favoring a dismissal of the appeal as inadmissible.

In G 1/14, OJ EPO 2016. A95, the referral was dismissed as inadmissible because the underlying decision of the Opposition Division had not been properly notified and in G 2/14, OJ EPO 2016, A13, the referral became pointless because the underlying application was deemed to be withdrawn due to non-payment of a renewal fee. Those interested in the secrets of the different types of interpretation of Convention law will profit from reading the decision. Those interested in the practical outcome will be satisfied that cases of this type can be most efficiently disposed of in the simple procedure foreseen in Rule 112 EPC.

A copy of the decision (in French) can be read here.
A copy of the press release can be read here.

Referral G 2/19

2. G 2/19 on the question whether an obviously inadmissible appeal gives the appellant a right to oral proceedings and whether the appointment of oral proceedings in Haar is compatible with the EPC.

The questions referred in decision T 831/17 are answered as follows:

1. A third party within the meaning of Article 115 EPC who has filed an appeal against the decision to grant a European patent has no right to the treatment in oral proceedings before a Board of Appeal of the EPO of his request that reopening of the examination be ordered in order to remove allegedly unclear patent claims. An appeal filed in this way does not have suspensive effect.

2. Oral proceedings of the Boards of Appeal at their location in Haar do not violate Article 113 (1) and 116 (1) EPC.

[Original in German, translation by the author] 

The procedure in G 2/19 is remarkable in several respects. It seems to be the shortest proceedings ever in the history of referrals, at least as far as a decision on the merits has been taken. The referring decision is dated February 25, 2019. Thus, the procedure as a whole lasted less than 5 months.

The EBA did not even announce an opportunity for filing amicus curiae briefs as foreseen in its Rules of Procedure and as usual in referral proceedings. In addition, it seems to be the first decision which has been announced in oral proceedings. Furthermore, a decision was given on the question of the location in Haar, although it was, considering the third party’s lacking right to oral proceedings, pointless for the case underlying the referral.

The reasoned decisions is not yet available. A copy of the press release can be read here.