List of decisions and opinions of the Enlarged Board of Appeal of the European Patent Office

This is a list of decisions and opinions of the Enlarged Board of Appeal of the European Patent Office (EPO) in chronological order of their date of issuance. The list includes decisions under (following a referral from a Board of Appeal), opinions under (following a referral from the President of the EPO), "to ensure uniform application of the law" and to clarify or interpret important points of law in relation to the European Patent Convention, and decisions on a request for a proposal of removal from Office of a member of the Boards of Appeal under . The list does not include decisions on petitions for review under .

The list is incomplete.

Decided cases Keys: Decision(s), after referral by a Board of Appeal under Art. 112(1)(a) EPC Opinion, after referral by the President of the EPO under Art. 112(1)(b) EPC Decision and opinion, in consolidated or identical cases Decision in cases under Art. 23(1) EPC

1980 – 1989 Reference Date of decision or opinion Keywords and/or comments Sources G 1/83 G 2/83 G 3/83 G 4/83 G 5/83 G 6/83 G 7/83 5 December 1984 Patentability - Art. 52(4) and 54(5) EPC 1973 - No substantive distinction between method claims and use claims, allowability of second medical indications, although Art. 54(4) EPC 1973 appeared to only deal with first medical indications. (G 1/83, G 5/83 and G 6/83 have been published, respectively in German, English and French, the three official languages of the EPO. The four other decisions have not been published.) G 1/84 24 July 1985 Opposition by proprietor - overturned by G 9/93 G 1/86 24 June 1987 Although implies that reestablishment of rights is available only to patent applicants and patent proprietors, "an opponent who files a notice of appeal within the two-month time limit laid down in the first sentence of but who fails to file a statement setting out the grounds of appeal within the four-month time limit laid down in the third sentence of Article 108 EPC may apply for reestablishment of rights in respect of that failure".T 1171/13, reasons 1.3 (summarizing the case law established under G1/86). G 4/88 24 April 1989 Opposition - transfer - part of the business assets G 2/88 12 November 1989 Art. 123(3) - change of category - use claim novel by its purpose G 6/88 12 November 1989 Novelty - second non-medical indication yes (Partially identical to G 2/88.)

1990 – 1994 Reference Date of decision or opinion Keywords and/or comments Sources G 1/89 G 2/89 21 February 1990 Patent Cooperation Treaty - unity of invention - a priori and a posteriori G 5/88 G 7/88 G 8/88 16 November 1990 Filing of notice of opposition at the DPMA before July 1, 1989 G 1/91 9 December 1991 The requirement of unity of invention () is not applicable under when a European patent is amended during opposition proceedings. In other words, "when [a] patent is amended in opposition proceedings, unity no longer has any relevance."G 1/91, point 5.2. Unity of invention under Article 82 EPC is merely an administrative regulation, the function of which being fulfilled during examination proceedings.G 1/91, points 4.1 and 4.2. G 5/91 5 May 1992 Suspected partiality of a member of an Opposition Division or an Examining Division. "(...) the requirement of impartiality applies in principle also to employees of the departments of the first instance of the EPO taking part in decision-making activities affecting the rights of any party." (headnote 1) G 7/91 G 8/91 11 May 1992 Once an appeal is withdrawn by the sole appellant, appeal proceedings are terminated at least in so far as substantive issues are concerned. This applies to both ex parte and inter partes proceedings. G 3/89 G 11/91 19 November 1992 Art. 123(2) - strictly declaratory nature of Rule 88 corrections G 1/92 18 December 1992 "1. The chemical composition of a product is state of the art when the product as such is available to the public and can be analysed and reproduced by the skilled person, irrespective of whether or not particular reasons can be identified for analysing the composition. 2. The same principle applies mutatis mutandis to any other product." G 9/91 31 March 1993 Framework of opposition and appeal, insofar as the extent of the opposition is concerned: "The power of an Opposition Division or a Board of Appeal to examine and decide on the maintenance of a European patent under Articles 101 and 102 EPC depends upon the extent to which the patent is opposed in the notice of opposition pursuant to [now ]. However, subject-matters of claims depending on an independent claim, which falls in opposition or appeal proceedings, may be examined as to their patentability even if they have not been explicitly opposed, provided their validity is prima facie in doubt on the basis of already available information." (Underlining in the original; notes within brackets added). If an opponent deliberately limits "the extent to which the patent is opposed to only certain subject-matters", these "subject-matters are therefore, strictly speaking, not subject to any "opposition" in the sense of Articles 101 and 102 EPC".G 9/91, point 10. G 10/91 31 March 1993 Framework of opposition and appeal, insofar as the grounds for opposition are concerned:" An Opposition Division or a Board of Appeal is not obliged to consider all the grounds for opposition referred to in Article 100 EPC, going beyond the grounds covered by the statement under [now ]. In principle, the Opposition Division shall examine only such grounds for opposition which have been properly submitted and substantiated in accordance with Article 99(1) in conjunction with Rule 55(c) EPC. Exceptionally, the Opposition Division may in application of Article 114(1) EPC consider other grounds for opposition which, prima facie, in whole or in part would seem to prejudice the maintenance of the European patent. Fresh grounds for opposition may be considered in appeal proceedings only with the approval of the patentee [By application of the volenti non fit injuria doctrineG 9/91 (consolidated with G 10/91), point 18.]."G 10/91, Opinion. (Notes within brackets added) G 4/92 22 October 1993 Oral proceedings - party absent - new facts or evidence G 1/93 21 February 1994 Art. 123(2) & (3) - conflict - inescapable trap G 7/93 13 May 1994 Amendments after approval of an application under Rule 51(6) EPC 1973; discretion of Examining Division G 9/93 7 June 1994 The Enlarged Board decided that an opposition to a European patent by its own proprietor is not admissible, thereby overturning earlier decision G 1/84. The decision later led to the introduction, with the EPC 2000, of the limitation and revocation proceedings. G 3/92 13 June 1994 Unlawful applicant. No requirement that the earlier (usurped) European patent application be pending before the EPO for the lawful applicant to be able to file a new application under . Dissenting opinion (Reasons for the Decision, points 8.1-8.9). G 9/92 G 4/93 14 July 1994 Framework of appeal - extent (decision) - reformatio in peius (With an indication of a minority opinion.) G 2/93 21 Decembre 1994 Time limit for deposits of biological material G 1/94 5 November 1994 Intervention during pending appeal proceedings - fresh grounds G 10/93 30 November 1994 Framework of appeal - ex parte - main aim: examination of the contested decision but no ban from introducing new grounds, facts or evidence

1995 – 1999 Reference Date of decision or opinion Keywords and/or comments Sources G 4/95 19 February 1996 During oral proceedings under in the context of opposition or opposition appeal proceedings, submissions by an accompanying person cannot be made as a matter of right, but only with the permission of and at the discretion of the EPO (i.e., under the discretion of the Opposition Division or the Board of Appeal). The submissions by the accompanying person must be made under the continuing responsibility and control of the professional representative. This also applies to oral submissions by "qualified patent lawyers of countries which are not contracting states to the EPC." G 8/95 16 April 1996 "An appeal from a decision of an Examining Division refusing a request under [, now ] for correction of the decision to grant is to be decided by a technical board of Appeal." G 1/95 G 7/95 19 July 1996 Framework of opposition and appeal - Art. 100(a) - collection of grounds G 3/97 G 4/97 2 January 1999 It is admissible to file an opposition on behalf of third party (the "principal"), i.e. it is admissible to act as a straw man when filing an opposition. The principal can under no circumstances be regarded as a party to the proceedings. The straw man opponent has the status of opponent. Exception if there is a circumvention of law by abuse of process; in such case the opposition may be rejected as inadmissible. G 1/97 12 October 1999 A request to review a final decision of a Board of Appeal is not provided for in the EPC (at that time). With the entry into force of the EPC 2000 on December 13, 2007, a petition for review of a decision of a Board of Appeal may now be filed. G 1/98 20 December 1999 Headnote: "I. A claim wherein specific plant varieties are not individually claimed is not excluded from patentability under Article 53(b) EPC even though it may embrace plant varieties. II. When a claim to a process for the production of a plant variety is examined, Article 64(2) EPC is not to be taken into consideration. III. The exception to patentability in Article 53(b), first half-sentence, EPC applies to plant varieties irrespective of the way in which they were produced. Therefore, plant varieties containing genes introduced into an ancestral plant by recombinant gene technology are excluded from patentability."

2000 – 2004 Reference Date of decision or opinion Keywords and/or comments Sources G 3/98 12 July 2000 "For the calculation of the six-month period referred to in [i.e., for non-prejudicial disclosures], the relevant date is the date of the actual filing of the European patent application; the date of priority is not to be taken account of in calculating this period."G 3/98, headnote. G 4/98 27 November 2000 Without prejudice to , the designation of a Contracting State does not retroactively lose effect if the designation fee has not been paid on time. Also, the deemed withdrawal of a designation takes effect upon expiry of the time limits in Article 79(2) and Rules 15(2), 25(2) and 107(1) 1973 EPC as appropriate (and not on expiry grace period for delayed post). G 1/99 4 February 2001 Framework of appeal -extent (decision) - reformatio in peius - exception G 3/99 18 February 2002 A joint opposition only requires one fee. Any appeal must be by a common representative. It must remain clear who the applicant(s)/appellant(s) are especially if one withdraws from proceedings G 2/98 31 May 2001 Priority - concept of "the same invention" in - direct and unambiguous derivation from the previous application required to enjoy the claimed priority right G 1/03 G 2/03 8 April 2004 Allowability of undisclosed: "Principles established in G 1/03 and G 2/03 for undisclosed disclaimers" disclaimers, i.e. allowability of disclaimers despite the absence of basis for the disclaimer in the application as filed. "An amendment to a claim by the introduction of a disclaimer may not be refused under Art. 123(2) EPC 1973 for the sole reason that neither the disclaimer nor the subject-matter excluded by it from the scope of the claim have a basis in the application as filed".G 1/03 and G 2/03 (OJ 2004, 413 and 448), Headnote 1. G 2/02 26 April 2004 TRIPS does not entitle an applicant to claim priority from filing in a state which was not at the relevant dates a member of the Paris Convention (but was a member of the WTO/TRIPS Agreement).

2005 – 2009