Oppositions (14) – The Enlarged Board of Appeal

The Enlarged Board of Appeal is the EPO’s highest body and is only accessible on very limited grounds. Cases heard by the Enlarged Board are not actually appeals in the conventional sense, but rather are decisions or opinions on questions referred by a Board of Appeal in order to resolve fundamental issues. A party can request a Board of Appeal to refer a point to the Enlarged Board, but cannot directly refer questions to the Enlarged Board (subject to next week’s discussion of petitions for review). Referrals can be made from any appeal and are not restricted to opposition appeals.

Any Board of Appeal can refer questions to the Enlarged Board which it considers necessary to resolve the case before it. Questions are referred while the case is under consideration such that the case is stayed pending a response. The Boards of Appeal can make a referral of their volition, or in response to a request by a party to the case. Where a Board of Appeal considers an answer necessary to resolve a case, the EPC requires the Board of Appeal to make a referral.

Referrals can only be made to ensure uniform application of the law, or to resolve a point of law of fundamental importance. These are high thresholds and so there are very few referrals, particularly as the EPC has been stable for many years and with such an extensive body of previous decisions. In 2019 there was a glut of four referrals, but in the preceding years there were typically around two per year, and there were none in 2020.

Generally for a question regarding uniform application of the law to occur, there must be previous conflicting Board of Appeal decisions. However, decisions are not conflicting if they relate to different circumstances, only if they are contradictory on the application of a point of law. Similarly, an isolated decision, deviating from the general case law, may not be a contradictory decision which permits a referral. Some examples of recent referrals in this area include whether double patenting is permissible, whether computer simulations are patentable, and whether a claim can have a partial claim to priority.

A question is only of fundamental importance if its resolution is generally applicable. If the point is too closely tied to the facts of a case, then no suitable questions will arise. The most recent referral under this heading has been whether oral proceedings in appeal can be heard by video conference even if the parties do not consent (the answer being yes, but restricted to situations where there is a state emergency).

It is also possible for the President of the EPO to refer a point of law that is unrelated to any specific ongoing appeal to the Enlarged Board if the President considers that two Boards of Appeal have given different decisions on a particular point. This is very rarely utilised.

Assuming the Enlarged Board considers the referred questions admissible they will typically invite input from any third parties, and the President, before calling oral proceedings to hear the parties (which may include representatives of the President). Since such cases are generally complex, unlike the Boards of Appeal, the Enlarged Board will usually not announce a decision at the end of the oral proceedings and instead will issue a written decision when they are ready. In the course of reaching their decision, the Enlarged Board may reformulate the referred questions or may even decline to answer a referred question.

Once the Enlarged Board has issued their decision, the answers become binding on the EPO and Boards of Appeal. Due to the potential of Enlarged Board decisions to vary the status quo, it is common for any pending proceedings which may be affected by the referral to be stayed pending the outcome. Assuming the referral is from a Board of Appeal, the proceedings will resume and the Board of Appeal will apply the answers to their case.

Since there are so few referrals, and referrals are largely out of a party’s hands, there are no real tactics or strategies to consider, other than to be alert to the possibility of a referral if suitable exceptional circumstances arise.

Next week we will look at the other role of the Enlarged Board – petitions for review of Board of Appeal decisions.

This article is a part of our EPO Practice and Peculiarities series. Click here to explore.