G 2/24 - Referral - Intervention in appeal - T 1286/23

Key points

• The proprietor (only) appeals the (interlocutory) decision that the patent can be maintained in amended form. An admissible intervention is filed in appeal. The proprietor withdraws the appeal.
• G 3/04 held that (headnote) : "After withdrawal of the sole appeal, the proceedings may not be continued with a third party who intervened during the appeal proceedings." 
• Following G 3/04, the current appeal would have to be closed without decision, such that the decision of the OD that the patent can be maintained in amended form becomes final. The proprietor can then file the amended claims under Rule 82 EPC and the formal decision to maintain the patent in amended form can be issued.
• The present Board requests the EBA to reconsider the holding of G 3/04 and refers a corresponding question to the EBA.
• "if the intervener is permitted to enter at the appeal stage, and the intervener is to be considered an opponent with full rights (consistent with the above-mentioned case law), then it is inequitable to demand from the intervener the impossible, namely to retroactively establish themselves as parties who have also been parties to the earlier proceedings, in order to satisfy the requirements of Article 107 EPC, either first or second sentence."
• " Based on the above, the intervener should thus be regarded as satisfying the requirements of Article 107 EPC alone by way of the fiction derived from Article 105 EPC: the intervener becomes either one of the parties of the "any party to proceedings adversely affected by a decision" or simply an "other party to the proceedings". 
• "The adverse effect requirement can be retained and the expected adverse effect can also be defined in a straightforward manner. This can be done without requiring the intervener to have been a party to the proceedings, namely by defining the adverse effect in substantive terms as the continued existence of the very patent the intervener is alleged to have infringed."
• "Accordingly, depending on the outcome of the appealed decision, the intervener must be given the choice of entering the proceedings in any party position open to them, as above. In particular, they must be given the opportunity to file their own appeal in a given case, of course upon payment of the appeal fee."
• "In the Board's view, it follows from the above that the intervener Geske by advancing their grounds of opposition and by properly paying the opposition and appeal fee within the three-months time period of Article 105 EPC is entitled to continue appeal proceedings even upon a withdrawal of Beurer's appeal. This result is however at odds with decision G 03/04. "
• " For all these reasons, the Board decides to refer a question to the Enlarged Board of Appeal for decision, as set out in the order. It is understood that the term "all appeals" is intended to cover all appeal situations, irrespective of the number of original appellants, whether only one or several, so that the question referred encompasses the situation of the "sole appeal" within the meaning of G 03/04."
• Question presented: "After withdrawal of all appeals, may the proceedings be continued with a third party who intervened during the appeal proceedings? In particular, may the third party acquire an appellant status corresponding to the status of a person entitled to appeal within the meaning of Article 107, first sentence, EPC?"
• In case you wonder, there is no divergence in the case law. That is no requirement for a referral by a TBA (Article 112 EPC) as confirmed by Art. 21 RPBA: "Should a Board consider it necessary to deviate from an interpretation or explanation of the Convention contained in an earlier decision or opinion of the Enlarged Board of Appeal according to Article 112, paragraph 1, EPC, the question shall be referred to the Enlarged Board of Appeal".
• 
  
• EPO 

The link to the decision and an extract of it can be found after the jump.

D 0003/20 - No referral to EBA from DBA

 Key points

• I usually don't discuss EQE appeals to the DBA. However, one puzzle to solve is whether the AC has taken a decision in the sense of Rule 12b(6) EPC ("The Administrative Council may allocate duties under Article 134a, paragraph 1(c), to the Boards of Appeal.").
• Art. 134a(1)(c) is about disciplinary proceedings only, the EQE is established under 1(b). (2025.08.16)
• 
  
• The DBA  indicates that at least in EQE appeals it can not refer questions to the Enlarged Board of Appeal. This is the same conclusion as arrived at in D5/82 hn.4 not cited in the present decision.
• My view currently is that the Disciplinary Board of Appeal is not a Board of Appeal in the sense of the EPC, in view of in particular D 5/82, and that no decision under Rule 12b(6) EPC was taken by the AC in the past. (edit 02.09.2021)
• Gunzel/Kinkeldey in Benkard EPU Art.112 no 3 also states that the DBA is not a Board of Appeal in the sense of Art. 15 and Art. 112 EPC. Idem Teschemacher in Singer/Stauder/Luginbuhl, Art.21 note 18, adding that Rule 12(c) would clarify that the DBA is merely administratively grouped together with the Boards.
• My analysis is that there is no EPC Article using the term ‘Board of Appeal’ in a meaning including the DBA. In other words, the DBA is not a Board of Appeal in the sense of any provision of the EPC.
• The Regulation setting up the DBA (OJ 1978, p.91) referred to Art. 134(8)(c) EPC 1973 but not to Rule 10(4) EPC 1973 (link, p.212 PDF) which stated that “The Administrative Council may allocate duties under Article 134, paragraph 8(c), to the Boards of Appeal.
• However, comments are welcome.
• Addendum 02.09.2021: Visser Art.21:1 also indicates that no decision under R.12b(6) has been taken (and said the same already in the 20th edition).
  
  
• The present decision: “ Zuständig für Beschwerden gegen Entscheidungen des Sekretariats ist gemäß Artikel 24 (3) Satz 2 VEP die Beschwerdekammer in Disziplinarangelegenheiten des EPA. Die hierfür anwendbaren verfahrens- und materiellrechtlichen Vorschriften ergeben sich aus den Vorschriften über die europäische Eignungsprüfung (VEP), den Ausführungsbestimmungen hierzu (ABVEP), der ergänzenden Verfahrensordnung der Beschwerdekammer in Disziplinarangelegenheiten (VOBKD) sowie, über die Verweisung in Artikel 24 (4) Satz 1 VEP, aus Teil IV (also Artikel 12 bis 25) der Vorschriften in Disziplinarangelegenheiten von zugelassenen Vertretern (VDV).  Dagegen finden auf das Verfahren vor der Beschwerdekammer in Disziplinarangelegenheiten die Vorschriften des EPÜ grundsätzlich keine Anwendung, sofern auf diese nicht explizit verwiesen wird. ”
• “Das EPÜ sieht gemäß Artikel 15 g) EPÜ als eines der Organe im Verfahren vor dem EPA die Große Beschwerdekammer vor; die möglichen Verfahren vor diesem Organ sind in Artikel 22 EPÜ in Verbindung mit den Artikeln 112 und 112a EPÜ geregelt. Keine der oben in Ziffer 7.3 genannten Vorschriften der VDV und VOBKD, welche auf das EPÜ verweisen, enthält jedoch einen Verweis auf die Artikel 15 g), 22, 112 oder 112a EPÜ.”

D 0003/20 - 

https://www.epo.org/law-practice/case-law-appeals/recent/d200003du1.html

7. Befassung der Großen Beschwerdekammer

7.1 Der Beschwerdeführer beantragte schließlich hilfsweise, gemäß den Vorschriften des Europäischen Patentübereinkommens (EPÜ) die Große Beschwerdekammer

G 4/19 - Referral - Double patenting - T 0318/14

Key points

• The Board refers question to the Enlarged Board about double patenting. The questions were already announced during the oral proceedings of 07.02.2019, see here. The Board has now issued the written decision to refer the questions.
• The questions are stated below. The more important thing is the extensive legal analysis of the Technical Board of Appeal, which stops shortly before concluding that there is no legal basis in the EPC for a prohibiting double patenting.
• "The main conclusions by the [Technical Board of Appeal]  can be summarised as follows:
• - There is no express provision in the EPC which prohibits double patenting.
• - It is not clear whether such a prohibition became an implicit part of the Convention by way of an agreed statement or similar instrument adopted at the Munich Diplomatic Conference.
  - The legislator did not introduce an express prohibition on double patenting at the Diplomatic Conference for the revision of the EPC in 2000. Article 139(3) EPC remained unchanged.
• - A prohibition on double patenting cannot be based on Article 60(1) EPC.
  - Neither Article 63(1) EPC nor Article 76(1) EPC offers scope for the idea of a prohibition on double patenting.
  - It is questionable whether Article 125 EPC is appropriate as a legal basis for a prohibition on double patenting. This provision cannot serve to introduce a new condition for patentability (or a ground for refusal). [...]
• - If a prohibition on double patenting with respect to European patent applications may be introduced at all, this could be by way of case law filling an unintended gap in the law. 
• However, in view of the policy considerations involved, it appears that a proper legislative procedure would offer a more favourable context for establishing a sound legal basis for a prohibition on double patenting."

The following questions are referred to the Enlarged Board of Appeal:

1. Can a European patent application be refused under Article 97(2) EPC if it claims the same subject-matter as a European patent which was granted to the same applicant and does not form part of the state of the art pursuant to Article 54(2) and (3) EPC?

2.1 If the answer to the first question is yes, what are the conditions for such a refusal, and are different conditions to be applied depending on whether the European patent application under examination was filed
a) on the same date as, or
b) as a European divisional application (Article 76(1) EPC) in respect of, or
c) claiming the priority (Article 88 EPC) in respect of a European patent application on the basis of which a European patent was granted to the same applicant?

2.2 In particular, in the last of these cases, does an applicant have a legitimate interest in the grant of a patent on the (subsequent) European patent application in view of the fact that the filing date and not the priority date is the relevant date for calculating the term of the European patent under Article 63(1) EPC?


EPO T 0318/14 - T0318/14 - link

File wrapper here

EPO T0318/14 Double patenting
EPO G4/19 Double patenting
EPO G 4/19 Double patenting
EPO G 0004/19 Double patenting
EPO G0004/19 Double patenting
Note the case number was confirmed on 16.01.2020 (link).

Summary of Facts and Submissions

I. This appeal is against the decision of the examining division by which European patent application No 10718590.2, based on an international application published as WO 2010/130661, was refused under Article 97(2) EPC "in conjunction with Article 125 EPC".

II. The examining division found that claim 1 of the sole claim request on file was directed to subject-matter which was "100% identical" to the subject-matter claimed in European patent No 2 251 021, which was granted on European patent application No 09159932.4, the priority document of the present application. This was held to be contrary to the principle of the prohibition on double patenting referred to in decisions G 1/05 and G 1/06.