Many intellectual property articles relating to European patent law cover specific “cases” and “decisions” from the European Patent Office (EPO) such as “T 1473/19”. Some instead cover broader trends in areas of “caselaw” such as “Patentability of second medical use claims at the EPO”. This article aims to provide a helpful understanding of the wider system from which these new interpretations of law emerge.
Where does European caselaw come from?
As a brief background, the EPO contains several departments which carry out particular functions, as required by the European Patent Convention (Article 15, European Patent Convention (EPC)). First instance departments which deal with different aspects of the patent granting process include: (a) a Receiving Section; (b) Search Divisions; (c) Examining Divisions; (d) Opposition Divisions; and (e) a Legal Division.
An appeal to review the decision of any first instance department (except a search division’s) may be filed with the Boards of Appeal (BoA) of the EPO. The BoA are expert patent courts that include 28 “Technical“ BoA, 1 “Legal” BoA, and 1 “Disciplinary” BoA. The decisions of the BoA are independent of the EPO (and the first instance departments) and they are bound only by the EPC.
A BoA can, upon issuing decisions, revert cases they hear back to the first instance departments that referred them. In these situations the first instance department is generally bound by the decision of the BoA.
There is a further Board of Appeal called the Enlarged BoA. The EBoA is, as the name suggests, composed of additional members and decides only on points of law. Referrals to the EBoA are from one of the BoA or by the President of the EPO. In these matters the EBoA is a senior legal authority over the other BoA.
In some limited circumstances a party adversely affected by a decision of a BoA may file a petition for review of the decision by the EBoA. The grounds for filing such a petition generally require a fundamental violation of a party’s rights, a procedural defect such as a conflict of interest, or some kind of criminal act affecting the decision. If accepted, the EBoA may set aside the decision of the first BoA and re-open appeal proceedings before another BoA.
The caselaw that BoA create, and their interpretations of the EPC are a core basis for EPO examination guidelines and opposition practices. Their decisions are binding on the first instance departments. Although the decisions of BoA are not legally binding on future boards they will usually be persuasive, particularly if many previous Boards have decided similar cases in the same way.
Additionally, national court proceedings in many EPO member states (including the UK) may deem BoA decisions highly persuasive.
The decisions of these Boards form European caselaw and the most important decisions are periodically summarised in a published book called the Case Law of the Boards of Appeal, currently in its tenth edition.
What are the different types of European caselaw?
The decisions issued by the Technical Boards of Appeal (TBoA) are referred to as “T-decisions” (e.g. T 1688/20) and form the vast majority of BoA decisions. These tend to arise from appeals of decisions of either an Examining Division or an Opposition Division concerning the refusal of a European patent application or the grant, limitation or revocation of a European patent and typically relate to matters of patentability. TBoA usually have two technically qualified members and one legally qualified member.
Decisions issued by the Legal Board of Appeal are referred to as “J-decisions” (e.g. J 0005/23). In contrast to T-decisions, J-decisions generally concern formality or procedural issues, i.e., those that do not relate to patentability, but may still lead to the refusal of a European patent application or the revocation of a European patent.
Decisions issued by the Enlarged Board of Appeal (EBoA) are referred to as “G-decisions” (e.g., G?0002/21). These are quite rare and only issued to ensure uniform application of the EPC, or if a point of law of fundamental importance arises. G-decisions generally arise when several previous T- or Jdecisions in a particular area of caselaw have begun to diverge, such that there is uncertainty on the outcome of future decisions. In these cases, either of its own motion or at the request of a party to the appeal, a Technical or Legal BoA may refer a specific point of law i.e.: a question; to the EBoA. If the EBoA accepts this referral then the EBoA will decide on this point only, and then send the case back to the original referring BoA, which is legally bound by the EBoA’s decision on the referred point. As mentioned above, the EBoA may also accept referrals from the President of the EPO on points of law where two BoA have given different decisions on a question. In such cases the EBoA issues an opinion, rather than a decision, on the question of law referred.
T-, J- and G-decisions are recommended for different levels of distribution by the EPO, depending on their perceived importance. These range from “no distribution” (D); which are published only on the EPO website; to (A) which are published in the EPO’s monthly Official Journal. G-decisions are nearly always given an (A) distribution as they often relate to very important points of law.
How do we stay up to date on the latest caselaw at Appleyard Lees?
Around 3000 decisions can be published by the EPO each year and it is essential that European patent attorneys are aware of the latest caselaw developments and the impact these can have on their clients. It is therefore also a crucial part of a trainee’s training as there is lots of caselaw to catch up on!
At Appleyard Lees there are several ways we ensure we remain up to date regarding these developments. For example, our offices run monthly technical lunches which include trainee presentations and discussions of recent important decisions, including both UK and EPO caselaw. We have further periodic caselaw review meetings which provide a more in-depth look at important recent caselaw, and we have access to several excellent resources that collate and summarise recent decisions such as the EPO’s Official Journal, The Chartered Institute of Patent Attorneys (CIPA) monthly Journal, The European Patent Institution’s (EPI) Information journal and even online IP blogs including The IPKat. We are also encouraged to attend external meetings, for example those organised by CIPA, to learn about caselaw and other important legal issues.
In the ever-evolving landscape of European patent law, we know that staying current is not just a matter of professional diligence but a crucial component of our exemplary service to clients. Encouraging and providing continuous education ensures that our legal practitioners are correctly equipped to navigate complex legal terrains and therefore provide informed counsel to effectively safeguard our clients’ innovations and interests in the dynamic European market.
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