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IP Cases & Commentary – Details

1 October 2012

EPO Case Law - Ignoring it is a Procedural Violation

Bénédicte Moulin

At the European Patent Office (EPO), it is almost always the case that the search, examining and opposition divisions will, when making decisions, follow the case law of the Board of Appeal when considering how the EPC ought to be applied. However, a decision of a Board of Appeal is legally binding only on the department of first instance and, likewise, a decision of an Enlarged Board of Appeal in respect of a referral from a Board of Appeal is binding on this Board of Appeal only. It can thus be potentially unclear whether it is required for the divisions to follow established case law rather than, for example, only preferable.

In decision T 313/10, the Board of Appeal considered a situation where the examining division’s reasoning for refusing the application was contrary to the established case law on computer-related inventions. In particular, this reasoning was in opposition to the Enlarged Board of Appeal decision G 3/08, to the now well-established case law of the Boards of Appeal and to the guidelines for examination.

The Board of Appeal found that both a) having a reasoning which was contrary to the established jurisprudence as set out in the guidelines at the time and b) ignoring the applicant’s observations that this approach was in breach of the guidelines were procedural violations.

Despite the appeal being dismissed on other grounds, this decision very helpfully clarifies that well-established case law of the Boards of Appeal has to be taken into account, even though each individual decision forming the case law does not have a binding character on future decisions.

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