For the half-year to 31 December 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Rebecca Gulbul, Lucas Michels and Marie-Andrée Weiss.

Regular round-ups of the previous week's blogposts are kindly compiled by Alberto Bellan.

Tuesday, 15 July 2014

What is precedent and does the EPO have it?

From time to time in the comments of the IPKat there arise debates, sometime heated, about the question of precedent – whether a case, decision or instruction is “binding” on some tribunal or other.  Particularly at the European Patent Office (EPO) the issue is contradictory and confusing.  At first instance there exist the “Guidelines for Examination in the European Patent Office” – what force do these have?  At second instance there is apparently no system of precedent discernible in the black letter law of the European Patent Convention itself, and yet the EPO publishes a book called “Case Law of the Boards of Appeal” at regular intervals, and Boards frequently cite prior decisions of themselves or other Boards.

Where the Boards of Appeal hang out
Frequently to this Kat it seems that the two sides talk across each other, setting up an exaggerated version of a position in order to attack it.

Practitioners from a common law background are treated as seeing a system of precedent where there is none, and not appreciating that decisions of the Boards of Appeal of the EPO, or the Guidelines, are not “binding”.  Practitioners from a civil law background are treated as not seeing the persuasive force of prior decisions and instructions even though they may not be “binding”.

This Kat, in an irenic mood, takes the view that these two apparently opposed positions are not as distinct as they seem, and that the real position is rather more nuanced.  In fact, use of terms that bear the baggage of the legal system in which they are rooted leads to misunderstanding.  Therefore this Kat would like to look at the concept of precedent and see what it means in reality, as opposed to jurisprudential theory.

Binding precedent
In common law jurisdictions such as England and Wales, there is a rule that courts are bound by certain previous court decisions (for present purposes the details of which ones does not matter).  That is, a court is obliged to follow the operative part (ratio decidendi) of a previous decision, in principle even if it considers the previous case was wholly wrongly decided.

Does this mean that judges in London frequently follow cases against their better judgement? Well, no, for several reasons.  First, the majority of cases are not generally seen as having been wrongly decided.  Secondly, there is always the tactic of “distinguishing”, i.e. arguing that the present case differs from the prior case in a materially relevant fact, and that this difference allows a different rule to be applied (this means, to Merpel’s amusement, that calling a case “highly distinguished” usually means the opposite of the compliment that the words might seem to mean).

Practically, the system of binding precedent means that a good way to argue a case under the system is to find a case with analogous facts that has an outcome corresponding to the one that you desire, and then demonstrating the correspondences of your case with it.

Judges do sometimes feel bound to follow decisions that they disagree with, and eventually the only way out is to elevate the case to a court high enough to reverse the precedent.  This happened in the Virgin/Zodiac case, on the question of whether damages are due if a patent is found valid and infringed, but the patent in question is later revoked, where the Supreme Court reversed the rule that had previously applied (criticised by Lord Justice Neuberger [as he then was] and the IPKat here).

Persuasive precedent
Where the Patents Court lurks
Courts whose decisions are not binding may nevertheless be persuasive.  That means that a court is not obliged to follow them, but may choose to do so.  Decisions of the EPO Boards of Appeal can be persuasive in the Patents Court.

What does “persuasive” really mean in practice?  It is important for the present purposes, because it is this model of precedent that this Kat thinks helpful in modelling the EPO system.  Well, first and most obviously, it means that the prior decision is not binding, so the later court can simply choose not to follow it.  Nevertheless a court may be reassured by the earlier finding of a different tribunal, and often will need reasons for diverging from the persuasive decision; as is often the case for UK Courts in relation to EPO Board of Appeal decisions.  This Kat thinks that, in the final analysis, it means that it will assist your case if you can find a suitably analogous case for the subsequent tribunal to follow; and, conversely, that if the analogous case was decided the opposite way from that which will assist you, then you will need to find convincing reasons for the tribunal to take a different line.

No precedent
It seems to this Kat that it is only meaningful to say that there is no precedent in the case that the citation of a prior case will make no material difference, or will be completely ignored.

Caselaw of the Boards of Appeal
Decisions of the Enlarged Board of Appeal
So how then are we to see the “caselaw” of the EPO Boards of Appeal?  Let us consider in turn decisions of the Enlarged Boards of Appeal and then of the Boards of Appeal.  On the face of it, according to the black letter law (and leaving aside petitions for review for the present purpose), an Enlarged Board of Appeal decision only binds a referring Board of Appeal, according to Article 112(3) EPC:
The decision of the Enlarged Board of Appeal referred to in paragraph 1(a) shall be binding on the Board of Appeal in respect of the appeal in question.
However, Article 21 of the Rules of Procedure of the Boards of Appeal give a different story:
Should a Board consider it necessary to deviate from an interpretation or explanation of the Convention contained in an earlier opinion or decision of the Enlarged Board of Appeal, the question shall be referred to the Enlarged Board of Appeal.
This means, in practice, that a Board of Appeal cannot diverge from an Enlarged Board decision without a further reference to the Enlarged Board.

This is stated and arises in a markedly different manner from common law binding precedent, but in practical terms, the outcome is very similar, in that Enlarged Board decisions are pretty much always followed or distinguished (G2/88, on second non-medical use, seems for example to be often “distinguished”).

On the other hand, it does not seem to have been questioned that an Enlarged Board can make an erga omnes statement of law that changes practice universally, applying to all applications and not just the case that is the subject of referral (might might be thought to contravene Article 112(3) EPC, but apparently does not).  For example Decision G 2/08 held that Swiss-type second medical use claims were no longer permissible, not least because their patentability had always been questionable (Reasons 7.1.3). However to ensure legal certainty, and to avoid invalidating many very valuable granted patents, the Board decreed that “the abolition of [the possibility of using the Swiss-type claim format] by the interpretation of the new law given by the Enlarged Board in this decision shall therefore have no retroactive effect”, and set an implementation date of three months from OJ publication before it would apply to future applications. This recognises that the Board’s legal interpretation would be fully binding on all parties to EPO proceedings for any cases filed after the chosen date.

Decisions of the Boards of Appeal
Turning now to the decisions of the Boards of Appeal, again the black letter law suggests a very narrow binding nature of the decision in Article 111(2) EPC:
If the Board of Appeal remits the case for further prosecution to the department whose decision was appealed, that department shall be bound by the ratio decidendi of the Board of Appeal, in so far as the facts are the same. If the decision under appeal was taken by the Receiving Section, the Examining Division shall also be bound by the ratio decidendi of the Board of Appeal.
Once again, however, the Rules of Procedure of the Boards of Appeal paint a different picture, and Article 20 states as follows:
Should a Board consider it necessary to deviate from an interpretation or explanation of the Convention given in an earlier decision of any Board, the grounds for this deviation shall be given, unless such grounds are in accordance with an earlier opinion or decision of the Enlarged Board of Appeal. The President of the European Patent Office shall be informed of the Board's decision.
How is this to be understood?  It is possible to focus on the limitation of this provision – clearly the Board of Appeal can choose to disagree with a previous Board, and “only” has to give its reasons.  But there are several other points to consider.  First, to disagree with an earlier decision, one needs to have read and considered it, so already we are dealing with a system that is more complex than simply a “no precedent” situation:  the earlier decision is not simply irrelevant. Secondly, there must be grounds for the deviation from the prior decision.  The later Board cannot simply choose to take a different path.  So practically, the Board may choose to follow the earlier decision, or depart from it if it has reasons (which it must state).  To this Kat, the criteria are generally analogous to those that are termed “persuasive precedent” in common law systems.

From the point of view of the practitioner, it means that selective and suitable citation of earlier Board of Appeal cases that support the case at hand can assist. Thus practically, the “non precedental” system of the EPO Boards of Appeal ends up being not so different from the “precedental” system of the common law.

There is a hierarchy of decisions of the Boards of Appeal, and they do seem to carry more “weight” depending on their ranking in this hierarchy.  Top of the ranking are those published in the Official Journal of the EPO (albeit that this decision is made by the deciding Board, and not after any independent review). Merpel has noticed however that publication of decisions in the Official Journal has greatly tailed off in recent years.  Have readers noticed this as well, and does anyone know why?

Next are those published in the Caselaw of the Board of Appeal, or the periodic updates, most recently this one (noted by fellow Kat David Brophy here)

Then there is the  distribution indicated on the decision itself, which, in reducing order of importance, is “Chairman and members”, “Chairman”, and then finally “No distribution”.  Also, J decisions (from a Legal Board of Appeal) may be seen to have a gravitas above that of T decisions (from a Technical Board of Appeal), although this may simply be that J decisions are often less fact-specific and therefore of more general applicability.

A very important further consideration is the number of Board of Appeal decisions taking the same line in interpreting a point of law.  A point that is supported by a large number of previous Board of Appeal decisions has more weight than one that is supported only by an isolated case.  When a sufficiently large number of decisions take the same line, it can be elevated to the status of the "established caselaw of the Boards of Appeal", whereupon frequently individual cases are not referred to.  For example, in decision G2/07, where where the Enlarged Board considered the possible effect on third parties if it were to depart from an interpretation given by a lower Board, it was stated:
There can be no "legitimate expectation" that an interpretation of a substantive provision governing patentability given in a decision of the boards of appeal will not be overruled in the future by the Enlarged Board, since recognising such an expectation as legitimate would undermine the function of the Enlarged Board of Appeal. This holds particularly true for issues on which there is no solid body of decisions all to the same effect but where instead the relevant jurisprudence consists only of a very limited number of individual decisions, as is presently the case.
This passage, while confirming that the Enlarged Board can always overrule the interpretation of a lower Board, also confirms that where there is a "solid body of decisions" one can be more confident that a precedental line has been established.  On the other hand, there is less confidence in the precedental value of a "limited number of individual decisions".

National court decisions
It may be worth mentioning as an aside that, while UK courts recognise persuasive precedent in EPO Board of Appeal decisions, the converse is not true. While in the first group of decisions of the Enlarged Board of Appeal it was stated in G5/83 (Reasons, para 6):
The establishment of harmonised patent legislation in the Contracting States must necessarily be accompanied by harmonised interpretation. For this reason, it is incumbent upon the European Patent Office, and particularly its Boards of Appeal, to take into consideration the decisions and expressions of opinion of courts and industrial property offices in the Contracting States.
this view has not prevailed, and in T 0452/91 (as cited in the Case law of the Boards of Appeal; III-H, 3.3) for example it is stated:
The questions of patentability are to be decided solely in accordance with the EPC. No national decision should be cited as if it were binding on the EPO; claims should not be refused by the EPO on the ground that their patentability could not be upheld under the jurisdiction of one member state (point 5.4.1).
At least for issues relating to patent law, it is pretty hopeless to argue on the basis of a national decision.  For wider legal principles, however, national caselaw is sometimes considered relevant, as for example in the recent partiality decision of the Enlarged Board of Appeal in R19/11.

Guidelines for Examination in the EPO
A question related to precedental force of Board of Appeal decisions is that of the legal status of the Guidelines for Examination in the EPO. Several commentators have pointed out that these are “not binding”. Well, yes to a point: in the strict and technical sense, that may be so.  However, they are not without legal force.  First, they are internal administrative instructions to employees from the President of the EPO under Art. 10(2)(a) EPC

The Guidelines themselves state:
The application of the Guidelines to individual European patent applications or patents is the responsibility of the examining staff and they may depart from these instructions in exceptional cases. Nevertheless, as a general rule, parties can expect the EPO to act in accordance with the Guidelines until such time as they – or the relevant legal provisions – are amended. Notices concerning such amendments are published in the Official Journal of the EPO and on the EPO website. 
The reference to “exceptional cases” places the Guidelines, in the opinion of this Kat, high in the “persuasive” category of precedent, so that reference to the Guidelines if they support your case is highly likely to be effective, while achieving at first instance an outcome that conflicts with the Guidelines is likely to be challenging.  While, as David’s post noted, the Guidelines sometime lag behind the caselaw, in general the EPO updates them when a landmark decision emerges.

This Kat was taught as a kitten a distinction, which still seems to hold good in principle, that at first instance an attorney should primarily rely on the Guidelines which are directly aimed at the first instance divisions of the EPO, and that Board of Appeal decisions were not directly relevant except to the extent that they are reflected in the Guidelines. On the other hand, on appeal, it is the Board of Appeal decisions themselves that are relevant, and the Guidelines become of lesser importance, as is reflected by the difference in their treatment in the second paragraph of Article 20 of the Rules of Procedure of the Boards of Appeal:
If, in its decision, a Board gives a different interpretation of the Convention to that provided for in the Guidelines, it shall state the grounds for its action if it considers that this decision will be more readily understood in the light of such grounds.[Emphasis added by IPKat] 
The point is that in contrast to the first part of Article 20 referring to Board of Appeal decisions (see above), reasons for different interpretation do not have to be given.  This reflects the fact that the Guidelines, being "instructions", do not apply to Board of Appeal members when reaching their decisions, reflecting Article 23(3) EPC:
In their decisions the members of the Boards shall not be bound by any instructions and shall comply only with the provisions of this Convention.
This Kat concludes that what is precedental or binding at the EPO is a more nuanced question than it is often treated as being, and that parallels with the common law concept of precedent are not misplaced.  As usual, dear readers, over to you for your views and experiences.

Merpel points out that whether a decision is non-binding and non-influential, non-binding but influential, or binding, is a matter that has a substantial impact on players other than the relevant court or tribunal: it affects the decisions of parties whether to file, oppose, litigate and so on.  It also affects the decisions of legislators as to whether a rule needs changing or not. If it is consistently applied with a consequence that is considered undesirable, legislative intervention is more likely than where bad decisions are distributed among good ones because the latter are not binding.  Therefore, she points out, lack of consistent understanding and terminology between practitioners before the EPO is highly undesirable.

This Kat is very grateful to fellow Kats Jeremy Phillips and David Brophy for extremely helpful comments and contributions in response to the first draft of this post, some of which are incorporated in this final version.

37 comments:

Anonymous said...

Top post!

My problem is that the whole issue of precedent at the EPO is a microcosm of the EPO's judicial side as a whole, i.e., it is a law unto itself and it does what it d**n well likes, with nobody to overrule it. There is no appeal from a BoA decision (although there have recently been some challenges at the Bundespatentgericht). Perhaps we really do need a UPC that can smack the EPO around the head when it gets silly.

Anonymous said...

This is very subtle and reasoned but the more I read the more it appears likely that any legal decision will fall outwith the financial means of all but the wealthiest companies who will in effect become untouchable. While murder is treated seriously regardless of the social status of the victim, with I.P. transgressions satisfaction can only be achievable if the victim has the financial means to pursue the matter. If law is not accessible to all then some people will likely seek other means of redress, abandoning the law because it is not available to them. You describe an orderly legal tussle between two large companies - I foresee an increasing number choosing to spend £20k on a group of hackers rather than blow all their money employing lawyers. If people do not have access to law then that undermines the common respect people have for the law. Perhaps that is as important as the legal process you describe. T.C.

MaxDrei said...

Blogs in the USA demand a definition of "technical" to be laid down NOW, by a Binding Precedent from Europe's Supreme Court. Is that helpful? Or is Darwinian Evolution a better way for the meaning of "technical" to emerge, from the carpet of hundreds of EPO Decisions that is laid down each year. I mean, a degree of fuzziness at the margin of patent eligibility, a degree that steadily diminishes, is to my mind better than a clodhopping Supreme Court of non-patent judges screwing the whole thing up for a generation or more, by telling us that the test of eligibility is whether or not the claimed inventive concept is or is not significantly more than an abstract idea. I ask you! Are they serious in DC?

Or is SCOTUS deliberately NOT laying down a "Binding" precedent, because it is well aware how counter-productive that can be. Instead, they are leaving it to the USPTO and the CAFC to put flesh on the abstract bone.

What say you, gentle readers?

Anonymous said...

Of course, Max, nearly everyone now lacks the greatest of all precedents:

http://www.austlii.edu.au/cgi-bin/sinodisp/au/cases/cth/HCA/1959/67.html?stem=0&synonyms=0&query=%5ENational%20Research%20Development%20Corporation

Anonymous said...

MaxDrei @18:13,

You use the term "Darwinian Evolution" in apparent disregard for the article that you comment falls under.

Only in a true binding precedent environment would Darwin's strict evolutionary winner take all principle be applicable.

You also indicate a "steadily diminishing" when without binding precedent, no such diminishing is possible, as mere persuasion cannot change the possibility of a sea-shift in views from one day to the next.

I do hope this this is said gently enough not to offend. My apologies aforehand if offense is taken.

Anonymous said...

Re: Perhaps we really do need a UPC that can smack the EPO around...

in principle, an appeal to the UPC from a decision of the EPO's BoA, from a legal point of view, is justifiable. it is like, an administrative decision -> an appeal within the same institution -> an appeal to an independent court.

Anonymous said...

maybe it will be very general or obvious for the readers, nevertheless, there is something intrinsically binding in a decision of an appeal board.

please correct me if i'm wrong, a decision is usually binding for the same court and lower courts. it has to do with a legal certainly.

as far as, I understand a deviation from the earlier decision is made in case there is a new understanding of the subject of the appeal. it can be seen that some core legal categories are redefined with time by the court.

somebody mentioned category "technical". a general definition probably would be difficult to provide, but it would be more visible to define what is clearly technical or define a set of viewpoints for assessment what is "technical".

MaxDrei said...

Thanks for the (thus far) 4 replies, Readers. I understand the first as a reference to a case in Australia on an NRDC pat appln, but why is is the Daddy precedent, and why everybody now "lacks" it, I can't see. The other 3 gentle responses look as if they are coming from outside Europe, from an English law jurisdiction, from a person with no knowledge of proceedings at the EPO, one who hopes this thread will educate him about them. I wouldn't know where to begin.

Come on, other Readers. You can do better than that

Ron said...

The quoted passage from the guidelines "The application of the guidelines to individual European patent applications ... " is found in the general part which precedes part A , at page 5. The paragraph which follows it reads:


"It should be noted also that the Guidelines do not constitute legal provisions. For the ultimate authority on practice in the EPO, it is necessary to refer firstly to the European Patent Convention itself including the Implementing Regulations, the Protocol on the
Interpretation of Article 69 EPC, the Protocol on Centralisation, the Protocol on Recognition, the Protocol on Privileges and Immunities and the Rules relating to Fees, and secondly to the interpretation put upon the EPC by the Boards of Appeal and the Enlarged Board of
Appeal. ".


I had understood that this was the basis for precedents not being binding.

Anonymous said...

Excellent post.

I don't think it is useless to cite decisions of national courts of member states. Probably won't help to overturn "established case law", but where the EPO case law is less clear it should imho be given consideration.

I note that T 452/91, point 5.4.1 continues as follows:
it could be that the law in most or all other Contracting States was different. The reasoning that led the national instance to its conclusion might well lead an EPO instance to a similar conclusion under the EPC, but this would first need a careful assessment of the EPC, and of relevant EPO Board of Appeal case law, a comparison with the legislation and jurisprudence on which the national instance reached its conclusion, and a study of the position in other Contracting States, a task on which the first instance of the EPO should not lightly embark.

So:
- the reasoning found in a decision of a national court may well be persuasive;
- unsurprisingly, such decisions are not binding on the EPO;
- the criticism in point 5.4.1 is directed mainly at the opposition division in that case.

@Anonymous:
If people do not have access to law then that undermines the common respect people have for the law.

EPC
Case Law book
Seach BoA decisions

Do you have any particular problem accessing these sources?

Anonymous said...

RE: Ron "It should be noted also that the Guidelines do not constitute legal provisions. For the ultimate authority on practice in the EPO, it is necessary to refer firstly to the European Patent Convention itself including the Implementing Regulations, the Protocol on the
Interpretation of Article 69 EPC, the Protocol on Centralisation, the Protocol on Recognition, the Protocol on Privileges and Immunities and the Rules relating to Fees, and secondly to the interpretation put upon the EPC by the Boards of Appeal and the Enlarged Board of
Appeal. ".


From reading, only the priority of legal sources is established, nothing on binding.

In other words, the EPC and etc. prevail over BoA's decisions. Nothing more.

Anonymous said...

RE: Anonymus 23:46

law and law source are two different terms. therefore, the final part of your comment is incorrect.

Anonymous said...

@Anonymous:
please correct me if i'm wrong, a decision is usually binding for the same court and lower courts. it has to do with a legal certainly.

If it is only "usually", then "binding" is not the correct word. Binding precedent means a court has no choice but to follow the decision (unless the cases can be distinguished on the facts). There is no such binding precedent in the EPC legal system (nor in the that of other continental legal systems).

Anonymous said...

I would beg to differ on the interpretation of the guidelines.

As provided for in A. 10(2)(a), the President has the power to ensure the adoption of instructions. The Guidelines are indicated to "give instructions about the practice and procedure to be followed" and accordingly are binding on the examination and opposition divisions.

MaxDrei said...

Does not this thread (thus far) reveal a gulf of misunderstanding, between the English patent law world and everybody else (like,mainland Europe, China, Korea, Japan?)

Anonymous said...

MaxDrei, you have a point there. For example, in French legal tradition, the whole concept of binding precedent is almost taboo. The reason for this goes back to the Ancien Régime, where magistrates (including, but not only, the highest magistrate, the King) took great liberties with the statutory texts, "legislating from the bench" in an often aberrant manner.

Consequently, the French Revolution comprehensively took that power away from judges, implementing a strict separation of the legislative and judiciary powers. French judges are supposed to base their decision only on statutory texts, as passed by the legislator, and never on judicial precedent. Of course, there is a big difference between theory and practice, and a French judge who ignored previous decissions of the "Cour de cassation" would be very reckless indeed, but the notoriously concise decissions of French judges still remain very coy on their sources other than statute.

While few other civil law jurisdictions are as extreme as the French in this respect, the big difference between common law and civil law systems is and remains the binding character of judicial precedent in common law.

Anonymous said...

RE: There is no such binding precedent in the EPC legal system (nor in the that of other continental legal systems).

Indeed, you won't find in a civil process book a provision to a binding affect of a decision. However, this is what will happen in practice. A lower court will follow an earlier decision of a appeal court otherwise the lower court risks to have its decision reverted by the appeal court.

On the other hand, the appeal court usually follows its own decisions because these decisions are law sources. Making a different decision means creating new/different law. Must be a reason for that.

Besides, what is usually stated in the civil process provisions is motivation obligation for a court to motivate a decision. For the similar case, a motivation to a different (from earlier) decision might provide a ground for an appeal.

@ MaxDrei, if you point to any particular misunderstanding, we can discuss it. General statements to "no knowledge" can't be addressed.

MaxDrei, please not that the EPO practice has a certain specifics, namely, it is more difficult to establish similar cases, due to a nature of a patent application. That might explain, in some respect, a low rate of stable decisions. It is the only difference I've noticed with a legal process outside the EPO.


MaxDrei said...

Anonymous, at 16/7 11:04 hr:

Particular misunderstandings? Yes, two, and both very particular. No more than this, and no less.

First one. The concept of a "precedent". What's that then?

Second one. What does "binding" mean (in the context of a legal "precedent")?

In reply to the anonymous who thinks that Binding Precedent is the only significant difference between civil law and English law I say that fact-finding under English law is very different from that under civil law. On the European mainland, nobody has the foggiest idea how effectively discovery and cross-examination keeps witnesses honest. In patent validity trials, civil law deals with the absence of X-exam by having the judge as the "Person skilled in the art". This is the real explanation of the need for "technical judges" at the UPC (and at the EPO).

Anonymous said...

RE: MaxDrei, First one. The concept of a "precedent". What's that then?
Second one. What does "binding" mean (in the context of a legal "precedent")?


Definitions see above at Darren's post. There is no difference in definition of "binding" between systems. It seems that MaxDrei overestimates a difference between a common law system and a civil law system in practice.

Here, I need to repeat myself for MaxDrei, in civil law, an earlier decision of an appeal board is usually followed unless there is a new understanding of the subject of an appeal. In my previous comment, I explained the reasons for that. You might call it "quasi binding" or "binding in practice".

By the way, this is exactly the same effect what Rules of Procedure before BoA and Art 111 EPC cited by Darren have. The only thing, I can't see why Darren wrote "suggests a very narrow binding nature". (1) BoA can't deviate from ABoA. (2) BoA needs motivation why an earlier decision of BoA, for the similar case, is not followed. This is exactly where it becomes difficult to make a deviating decision, because BoA creates 2 different decisions for the same case and some problem with a legal certainty. What then? The later decision goes for the earlier?





Anonymous said...

MaxDrei at 11:20,

Your two listed misunderstandings swallow whole the topic under consideration.

I must apologize as I am not helped by saying that such misunderstanding is the problem.

Perchance you can set us all at ease and inform us what these words mean and eliminate the misunderstandings.

From this vantage point, it looks as if the slippery slope of common law is fully engaged, and if nothing is truly bound, then, well, nothing is bound and anything goes. Hints of "but practically" which indicate a rather loose social pressure lose their footing on the slope, and are as equally unhelpful in resolving what the terms mean.

After much travel, we arrive at our starting point. Going in circles is a sign of being lost, n'cest ces pa?

MaxDrei said...

Readers, we are not getting on very well, are we?

Darren's advice is best: The Guidelines is holy writ for DG1 but beneath the consideration of DG3. DG3 has its own Bible, namely the White Book. Try shifting the beggars from their respective "established law" No chance! Basta!

Citing to a TBA a lone DG3 Decision, a "precedent" that happens to help you, don't impress them, at all. Why? Because for every one you cite, they say, the other side can cite one that says the opposite.

But look at succeeding Editions of the White Book, and successive annual update Special Caselaw Editions of OJEPO. On the substantive provisions of patentability, there is less and less to add. With each succeeding Edition, the content shifts remorselessly towards matters of procedure. Plenty of mileage there still, to sharpen up legal certainty at the EPO.

One more thing. Each time one of the many "anonymous" writers tells me to look at "their" earlier post, I sigh. Which one then? And when?

Anonymous said...

RE: Citing to a TBA a lone DG3 Decision, a "precedent" that happens to help you, don't impress them, at all. Why? Because for every one you cite, they say, the other side can cite one that says the opposite.

You can always request to refer to EBoA based on a case law + Rules before BoA, Article 20.

Anonymous said...

"One more thing. Each time one of the many "anonymous" writers tells me to look at "their" earlier post, I sigh. Which one then? And when?"

Because it is too much bother to understand the context of what each "Anonymous" is talking about....?

The thread is not so long as to make that task such an arduous one, MaxDrei.

Besides which, 21 posts above.
15 by Anonymous – NONE request MaxDrei to look at “their” earlier posts. Kibitz for the sake of kibitz?

Anonymous said...

I've filed granted European patents on a couple of EP applications I was handling to try and persuade an Examiner. That seemed to have been helpful, and I think that's how the EPO works a lot of the time. One builds up arguments and evidence that shows the merits of one's position using the Guidelines, Board of Appeal decisions etc. I think Examiner's don't want to appear too silly granting what you want, and once they have been taken beyond that initial psychological barrier a lot of the work is done. I'm not sure this is precedent, but the Guidelines are 'trusted' and individual Examiners want to do what other Examiners are doing and not be reprimanded too much by a Board of Appeal.

Anonymous said...

@ MaxDrei Come on, other Readers. You can do better than that

It seems that your words finally have been heard by Anonymous at Wednesday, 16 July 2014 15:13:00 BST.

Anonymous said...


"(3)
The decision of the Enlarged Board of Appeal referred to in paragraph 1(a) shall be binding on the Board of Appeal in respect of the appeal in question."

To say it is 'only' binding is not an accurate statement of the law.

Anonymous said...

Would it be too cheekish to say that "accuracy" of statements of law are only in the eye of the beholder?

Anonymous said...

It isn't necessarily cheekish, but in the context of my comment it is just incorrect. My reference is to the text of the law and not to its interpretation.

Anonymous said...

Anon @ 12:59,

You quite miss the cheekiness.

Re-read the Lewis Carroll novel and understand that the text of the law means whatever the "beholder" wants the text to mean - you cannot separate out interpretation from determining accuracy.

Anonymous said...

You assume I have already read said Lewis Carroll novel!

Again, however it is the simple text not its interpretation, or in your means what it means'.

Be therefore as cheekish as you wish, but my comment refers to the photographic, machine-readable, identical text copy reproduced without alteration or spin and without passing through any wormholes or other imaginary passageways reminiscent of the works of Lewis C.

Anonymous said...

ANon @ 21:41,
I suggest that you read the novel then, as even your "simple text" falls to be meant by what the holder will mean it to mean, nothing more and nothing less - and most assuredly, nothing within your control to impart any meaning whatsoever.

It matters not how pristine the text is, the text will at some point be picked up by the holder and thus render your version inconsequential.

Anonymous said...

If I understand correctly, the anonymous of 16 July 19:04 is bothered by the absence of "only" in Art. 112(3) EPC.

It is of course true that this provision does not say "only", but that does not mean that it would not be a correct statement of law that G-decisions are only binding on the referring board.

From T 724/99:
4.3. Second, the Respondents' argument would suggest case-law is binding unless otherwise stated which is contrary to the accepted practice. In the legal system established under the EPC there is no principle of absolute or binding case-law. Earlier decisions are authoritative and often followed, but the absence of any general obligation to treat earlier decisions as binding is highlighted not just by the specific saving the Enlarged Board considered necessary in G 9/93 (see paragraph 4.4 below) but also, and more importantly, by the presence in the EPC and its subsidiary legislation of provisions to deal with the inevitable differences of opinion non-binding case-law may produce (Article 112(1)(b) EPC; Articles 16 and 17 RPBA) and of provisions as to when, exceptionally, decisions do have a binding effect (Articles 111(2) and 112(3) EPC). Those exceptions, it should be noted, only relate to further proceedings in the particular cases in question and not to all subsequent decisions with the same issues.

Anonymous said...

RE: It is of course true that this provision does not say "only", but that does not mean that it would not be a correct statement of law that G-decisions are only binding on the referring board.

(after three glasses of Prosecco), I see also another interpretation of Art. 112(3) EPC, i.e., an EBoA-decision is binding at least on the referring board.

(if we apply a systematic interpretation of the EPC and related provisions, that is analysing Art. 112(3) EPC and related provisions), we will also look into Article 21 of the Rules of Procedure of the Boards of Appeal:
Should a Board consider it necessary to deviate from an interpretation or explanation of the Convention contained in an earlier opinion or decision of the Enlarged Board of Appeal, the question shall be referred to the Enlarged Board of Appeal.

is it prosecco or a Board of Appeal can't deviate from an earlier decision of an Enlarged Board of Appeal without involving EBoA, what makes the earlier decision of EBoA de facto binding for BoA.

Meldrew said...

I'm a bit late jumping in, but here goes with both boots.

Anonymous stated "I would beg to differ on the interpretation of the guidelines.

As provided for in A. 10(2)(a), the President has the power to ensure the adoption of instructions. The Guidelines are indicated to "give instructions about the practice and procedure to be followed" and accordingly are binding on the examination and opposition divisions."

Utter tosh. Article 10(2)(a) empowers the President to adopt "internal administrative instructions" for the purpose of ensuring the "functioning of the European Patent Office". This does not include the power to make substantive law, and the Guidelines themselves recognise this in stating in the general part "It should be noted also that the Guidelines do not constitute legal provisions".

The Guidelines are not binding, never have been binding, but nevertheless represent established practice such that "as a general rule, parties can expect the EPO to act in accordance with the Guidelines until such time as they – or the relevant legal provisions – are amended".

So, the guidelines are extremely useful, and their accuracy and revision is extremely important, but they are not binding.

MaxDrei said...

Meldrew raises a super point, that, according to the EPO, parties can expect that the goalposts won't be moved even while the game is going on.

Except that, just recently, DG3 is increasingly bold, in moving the goalposts.

I refer of course to the increasing seductiveness to the TBA of the line "Why are you making this Request now? It is a Request you could have made below. Because you did not, we refuse it admission now".

Only trouble is, the Decision of the Opposition Division was rendered back in the days, years and years ago, when DG3 admitted pretty much any Request, however late it was filed.

As I say, these days the caselaw still developing at the EPO is much more procedural than substantive.

Anonymous said...

RE: So, the guidelines are extremely useful ...

certainly, as well as BoA's decisions the guidelines originated from ...

Anonymous said...

The Guidelines certainly are instructions issued under Art. 10(2)(a) EPC. According to the General Part:
In accordance with Art. 10(2)(a) of the European Patent Convention (EPC), the President of the European Patent Office (EPO) had adopted, effective as at 1 June 1978, the Guidelines for Examination in the European Patent Office.

I'd say in terms of Art. 10(2)(a) the Guidelines are both "internal administrative instructions" and "information to the public".

The Guidelines are binding on examiners, but they allow deviation "in exceptional cases". The binding effect is however between examiners and the president, not between examiners or EPO and applicants. In appeal it won't help to argue that the first instance failed to follow the Guidelines on a substantive point if the first instance did not violate the EPC. On procedural points, in particular where the EPC leaves discretion to the first instance, the "legal force" of the Guidelines will be somewhat stronger.

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