Current G Decisions and Referral Questions to the Enlarged Board of Appeal of the European Patent Office

The Enlarged Board of Appeal (EBA) of the European Patent Office (EPO) addressed fundamental questions regarding the EPO’s competence and priority in PCT applications in its decisions G 1/22 and G 2/22. With the referral of case G 1/23, the question will be answered as to whether the reproducibility of a publicly available product is a prerequisite for it to be considered as prior art. Additionally, the referral of case G 1/24 will clarify how the interpretative rules of Art. 69 EPC apply to patentability, which is expected to ensure the consistent interpretation of patent claims in the future.

Introduction

The Enlarged Board of Appeal (EBA) of the European Patent Office (EPO) plays a central role in ensuring the uniform application of patent law across Europe. It ensures the consistent interpretation of the European Patent Convention (EPC) by addressing fundamental legal questions referred to it by the President of the EPO or a Board of Appeal under Art. 112(1) EPC. The following article discusses recent decisions and pending referrals to the EBA.

Recent G Decisions

G 1/22 and G 2/22

In decisions G 1/22 and G 2/22, the EBA clarified two key questions regarding the EPO’s competence and priority in PCT applications.

The EBA confirmed that the EPO is competent to assess whether the applicant is entitled to claim priority under Art. 87(1) EPC. This includes verifying both the identity of the applicant of the priority application and whether a valid transfer of rights has occurred.

The Board reiterated that there is a rebuttable presumption that the applicant claiming priority in accordance with Art. 88(1) EPC is entitled to do so.

This rebuttable presumption also applies in cases where the European patent application derives from a PCT application, or where the applicants of the priority application and subsequent application are not the same. If party A is the applicant of the priority application and a PCT application is jointly filed by parties A and B, claiming the priority right, party B can also benefit from the priority right to which co-applicant party A is entitled. It is assumed that an implicit agreement exists between parties A and B, allowing party B to also claim the priority. No separate transfer of the priority right to party B is required. This rebuttable presumption is not limited to scenarios involving only two parties.

In practice, this means that for PCT applications with different applicants for different states, no explicit transfer of the priority right is necessary, unless there are indications to the contrary.
The decision strengthens legal certainty for applicants by creating a presumption in favor of the validity of priority claims, particularly in cases where formal transfer documents are missing but collaboration between the applicants is assumed.

Third parties, however, have the opportunity to rebut this presumption by providing substantial evidence that no implicit agreement or entitlement exists.

Pending Referrals to the EBA of the EPO

G 1/23

Technical Board of Appeal 3.3.03 referred questions regarding the prior art to the EBA in its interim decision 0438/19 of June 27, 2023, under Art. 112(1)(a) EPC.

The referral is based on decision G 1/92, where the EBA held that the chemical composition or internal structure of a publicly available product forms part of the prior art if it can be analyzed or reproduced by a skilled person without undue burden. The EBA identified three factors that must be met cumulatively for the composition of a product to be part of the prior art: (1) The product itself is publicly accessible, (2) the skilled person can determine the composition or internal structure of the product without undue burden, and (3) the skilled person can reproduce the product without undue burden. If the possibility of analysis or reproduction is lacking, the composition, despite the product’s availability, does not form part of the prior art.

In the case referred to the EBA in G 1/23, the assessment of inventive step depends on whether the material “ENGAGE 8400,” which was previously available on the market, formed part of the prior art. Various documents introduced into the proceedings, published before the earliest priority date, indisputably show that ENGAGE 8400 meets nearly all the features of the patented invention. The patent holder argues that, regardless, no information on the synthesis conditions has entered the public domain, and reproducing the material would require a time-consuming and costly research project, with no guaranteed success. Therefore, at least the reproduction would not be possible without undue burden as defined in G 1/92.

Practical Significance

The EBA’s decision will clarify whether the lack of reproducibility of a product is an exclusion criterion and how precise the required reproduction must be. This issue particularly affects technical fields where reproduction is difficult. For example in the field of polymer chemistry, where precise synthesis conditions are needed and cannot be deduced through material analysis alone.
If the EBA decides that non-reproducible products can still be considered part of the prior art if their composition is analyzable or publicly known, manufacturers will need to more carefully weigh whether to bring a product to market, as mere market availability could destroy novelty.

G 1/24

In its decision T 439/22, the Technical Board of Appeal referred questions to the EBA regarding the determination of claim scope and the interpretation of Art. 69(1), second sentence, and Art. 1 of the Protocol on the Interpretation of Art. 69 EPC.
It is debated whether the principle that the description and drawings should be used to interpret patent claims applies solely to determining the scope of protection or also in assessing patentability. Many decisions hold that Art. 69(1), second sentence, and Art. 1 of the Protocol apply only within the context of Art. 123(2) EPC. However, some decisions argue that these interpretation rules apply to the EPC as a whole — including the definition of the invention as a preliminary question of patentability. In this regard, the referring Board aligns with the EBA’s statements in G 6/88. Question 1 is intended to unify the inconsistent case law and clarify this matter of fundamental importance.

Another legal principle regarding claim interpretation is the subsidiarity of the description. The description should only be used to interpret the claims when the wording of the claim is unclear or ambiguous on its own. The referring Board discusses conflicting case law on this matter in detail in paragraphs 3.3.3 ff: In some cases, the description is used regardless of whether the claims are ambiguous, but subsidiarity is maintained by giving greater weight to the wording of the claims. Other decisions hold that claims must always be interpreted independently and without regard to the description. Question 2 aims to resolve these contradictions and unify legal practice.

The third question concerns a divergent practice among Boards of Appeal regarding the consideration of definitions and similar information provided in the patent description when interpreting the claims. Generally, the words of the claim are to be given their ordinary meaning in the relevant technical field. Some decisions hold that differing definitions in the patent description should be considered, effectively allowing the patent to serve as its own dictionary. Other decisions, however, argue that the need for legal certainty limits this, asserting that additional reference to the description must not restrict or alter the invention beyond what a skilled person can deduce from the plain wording of the claims. In some cases, a definition in the description is disregarded if it excludes a reasonably conceivable and technically plausible interpretation of the claim language (e.g., T 169/20, reason 1.4). Other decisions disregard such definitions only when they are outright incompatible with the usual meaning of the term (e.g., T 1473/19, reason 3.16.2). Question 3 seeks to resolve these ambiguities.

Practical Significance

The questions concerning the interpretation of patent claims are fundamental. The answers provided by the EBA will be considered in patent grants, as well as in European opposition and national nullity proceedings in the future.

Conclusion

Decisions G 1/22 and G 2/22 establish a clear basis for future cases by introducing a rebuttable presumption in favor of priority entitlement, which can only be overturned by substantial evidence from third parties. Referral G 1/23 raises fundamental questions about the reproducibility of a product, with the potential outcome being that the mere availability of a product on the market may destroy novelty, regardless of its reproducibility. Decision G 1/24 will clarify whether the interpretative rules of Art. 69 EPC and its Protocol apply not only to the determination of claim scope but also to questions of patentability, potentially leading to a unified and clear interpretation of patent claims.

 

Co-Author: Tamar Gelashvili