G 3/08 – The Right To Differ

There are farewell gifts you’d rather not receive. I cannot help thinking that Mrs Brimelow would have preferred another answer to her last referral to the Enlarged Board of appeal (EBA). In substance, the EBA found this referral inadmissible because the alleged divergences in case law were inexistent or of a kind that cannot justify a referral to the EBA. Welcome back to square one. 

Although this outcome is not unexpected, the opinion is not without interest because the EBA dwells on how case law is elaborated and what sort of divergences may arise in the process before convergence is finally reached.

[7] The key to assessing the referral’s admissibility is determining the meaning to be assigned to the undefined legal term “different decisions” / “abweichende Entscheidungen” / “décisions divergentes” in A 112(1)(b).

Do decisions differ if for example they come to the same verdict on different grounds? What about two decisions that are far apart in time? In such cases, does a Technical Board clearly stand by earlier case law cited in support of a difference, or has it explicitly or implicitly abandoned it in the meantime? What if the claimed differences are the result of long-term legal developments affecting the patentability assessment of new subject-matter? How do different decisions relate to other case law of the Boards?

[7.1] The meaning to be assigned to the key term “different decisions” as this expression is used in A 112(1)(b) must initially be determined on the basis of the provision’s wording in all official versions of the EPC, these all having equal status (A 177(1)).

Yet the wording does not seem to give a clear answer. The English, German and French terms used (“different”, “abweichend” and “divergent” respectively) do not appear to have entirely the same connotations. Cassell’s English-German Dictionary, 1978 edition, translates “different” with German words such as “anders, verschieden, andersartig, abweichend, ungleich, verschiedenartig”, whereas according to Harrap’s Shorter Dictionary French-English (1988 Reprint) the French term “divergent” equates to “divergent” in English, not “different”, and in German is according to Larousse Grand Dictionnaire Allemand- Français, 1999 edition, equivalent to terms like “divergierend, auseinanderlaufend, abweichend”. This results in variations in semantic content (abweichend/different/divergent) between the three language versions. “Different decisions” could apparently be ones that are far apart in time, regardless of whether they actually still have a claim to validity in view of intervening changes in case law. “Divergent decisions” by contrast would suggest ones which do not take the same line, which in other words vary in their substantive content, while being close together in time. Thus a clear answer cannot be derived from the wording of the provision alone.

[7.2] Ambiguous wording in international treaties, including industrial property conventions, has to be interpreted in the light of its object and purpose (Article 31 of the Vienna Convention on the Law of Treaties (VCLT) whose rules for the interpretation of treaties are to be applied to the EPC (see G 5/83 [3 ff.]; G 2/02 and G 3/02 [5.2 ff.]; G 1/07 [3.1]; G 2/08 [4]), and if we consider the object and purpose of A 112(1)(b) in the context of the EPC, there is much to suggest that it means divergent decisions in the second sense mentioned in paragraph (a) above […].

[7.2.1] According to current constitutional thinking, the predictability and verifiability of all state action are indispensable elements of a democratic legal order based on the separation of powers, the rule of law and respect for human rights including fundamental procedural rights. These principles have been subscribed to in substance at national level by all the EPC contracting states, despite differing constitutional traditions and despite several reservations made by different states. As a democracy is prohibited from signing an international treaty which would undermine its citizens’ constitutional guarantees, the EPO must therefore support these fundamental principles either explicitly (e.g. A 113) or implicitly (e.g. liberty, equality) (see for example G 3/98 [2.5.3]; G 2/02 and G 3/02 [7.2]; T 377/95 [33-36]; T 1193/02 [10]; T 190/03 [10]).

The European Patent Organisation is an international, intergovernmental organisation, modelled on a modern state order and based on the separation of powers principle, which the sovereign contracting states have entrusted with the exercise of some of their national powers in the field of patents. Thus the EPC assigns executive power to the Office to grant patents and to its President to manage the Office in organisational respects (A 4(3) and A 10 ff.), while to the Administrative Council it assigns limited legislative powers restricted to lower-ranking rules (A 33), along with financial and supervisory powers. Finally, the Boards of Appeal, which in their decisions are bound only by the EPC (A 23(3)), are assigned the role of an independent judiciary in this patent system (A 21 to A 23; see also G 6/95 [2 ff.]), even if for the present, pursuant to A 4(2) and to EPC Part 1 Chapter III, they are not an independent organ of the Organisation but structurally integrated departments of the Office under A 15.

[7.2.2] Like the judiciary of any democratic entity based on the separation of powers principle, the EPO’s Boards of Appeal as an independent judiciary guarantee the due process of law within the Organisation. They are also assigned interpretative supremacy with regard to the EPC in terms of its scope of application (see also A 23(3)). Under A 21(1) they are responsible for reviewing decisions taken by the Office in grant and opposition proceedings. Their interpretation of the EPC is the basis for the practice established by the Office for the examination of patent applications and oppositions to granted patents. Otherwise there would be no need for the President’s right of referral.

On the other hand, the interpretation of the EPC or equivalent national regulations by the courts of the Contracting States has no direct consequences for Office departments; but that does not mean that in interpreting the Convention the Boards of Appeal should not take account of relevant national decisions on harmonised European patent law, in keeping with normal practice. This is implied by the harmonisation philosophy behind the EPC.

[7.2.3] Another essential element of a democratic legal order is the principle that a public authority is bound by law and justice. This is supplemented by the principle of uniform application of the law. Both principles are designed to ensure predictability of jurisdiction and hence legal certainty by preventing arbitrariness. Those subject to the law, in the case of the EPC the parties to proceedings before the Office, but also the public, must be able to expect that the Office as patent granting authority and consequently the Boards of Appeal will settle cases of the same nature in the same way and will apply comprehensible arguments and methods to justify any substantive differences in such decisions. For the stated reasons, these principles also constitute essential precepts for administration and jurisdiction in the European patent system as codified in the EPC. Ensuring compliance with them is ultimately the task of the Boards of Appeal, including the EBA, the latter though only in the context of referrals by the Boards of Appeal and the President under A 112(1) and concerning petitions for review (A 112a).

[7.2.4] In keeping with these principles, A 112 - like corresponding provisions in the legal orders of the Contracting States - defines the conditions in which legal uniformity within the European patent system may be established by means of a referral to the EBA of Appeal. It requires the Boards (A 112(1)(a)) or the President (A 112(1)(b)) to deem the referral necessary in order to ensure uniform application of the law or if points of law of fundamental importance arise, and a further admissibility criterion for a referral by the President is that two Boards of Appeal must have given different decisions on the question referred. Hence the EBA does not rule on abstract points of law, but only ever on real issues arising from the cited differing decisions, as well as on specific legal questions adduced in the referral […]. It is to be noticed that the President is not a party in a referral procedure because she or he can not be adversely affected by answers given by the EBA.

[7.2.5] Thus it is clear that the interpretation of the EPC is primarily the responsibility of the Boards of Appeal. As a rule they have interpretative supremacy with regard to the EPC because their decisions are subject to review only under the narrowly defined conditions of A 112(1) and A 112a(2). It is only when these apply that the EBA has the last word. The fact that the EBA takes action only on a referral from the Boards of Appeal or the President (with the exception of petitions for review under A 112a, which however concern procedural matters and have a very narrow scope) and thus does not constitute a further instance ranking above the Boards of Appeal within the EPC judicial system is a clear indication of the extent of its significance for legal uniformity. The exhaustive list of admissibility criteria for a referral under A 112(1)(a) and (b) implies that the EBA takes decisions on specific legal questions and that neither the Boards of Appeal nor the President are authorised to consult it whenever they so wish in order to clarify abstract points of law. For that purpose the President can call upon a separate Legal Department within the Office.

[7.2.6] On the same restrictive grounds, A 112(1)(b) as an additional constraint for a referral by the President as opposed to one by a Board of Appeal requires there to be differences in the rulings of two Boards of Appeal (in the sense already discussed) on a point of law. The “different decisions” criterion would appear to show that the President is only intended to be allowed to refer a question to the EBA when there is a divergence or, better, conflict in the case law making it difficult if not impossible for the Office to bring its patent granting practice into line with the case law of the Boards of Appeal. It is of course immaterial whether the initiative behind the referral comes from a third party, as long as there is objective evidence of divergent applications of the law.

[7.2.7] Given its object and purpose, the right of referral does not extend to allowing the President, for whatever reason, to use an EBA referral as a means of replacing Board of Appeal rulings on CII patentability with the decision of a putatively higher instance. For example, a presidential referral is not admissible merely because the European Parliament and Council have failed to adopt a directive on CII patenting or because consistent Board rulings are called into question by a vocal lobby […]. Even the essentially commendable desire for harmonisation expressed by Lord Justice Jacob in the Aerotel/Macrossan judgment can be taken up by the EBA only to the extent possible under the EPC, even if his suggestion might significantly advance the cause of legal uniformity in Europe. When judiciary-driven legal development meets its limits, it is time for the legislator to take over.

[7.3] The notion of legal development is an additional factor which must be carefully considered when interpreting the notion of “different decisions” in A 112(1)(b), as has occasionally been pointed out in the literature […] and various amicus curiae briefs.

[7.3.1] Development of the law is an essential aspect of its application, whatever method of interpretation the judge applies, and is therefore inherent in all judicial activity. In that light an element of legal development can even be seen whenever a specific case is subsumed under an abstract regulation. That is especially true of Anglo-Saxon law, where a decision on an individual case has far greater implications as a precedent than judgments in continental civil law. Consequently, legal development as such cannot on its own form the basis for a referral, only because case law in new legal territory does not always develop in linear fashion, and earlier approaches may be abandoned or modified. Otherwise the “different decisions” feature of A 112(1)(b) would lose its meaning. While the development of the law may superficially appear to give rise to different decisions within the meaning of that provision, on its own it cannot justify a referral to the EBA. A referral is justified only if at least two Board of Appeal decisions come into conflict with the principle of legal uniformity. The object and purpose of A 112(1)(b) is to have an EBA decision re-establish legal uniformity when it has clearly been disrupted, not to intervene in legal development. This is discussed in more detail in the following.

[7.3.2] The EPC as it stands assigns interpretation of the EPC with its numerous undefined legal terms ultimately to the Boards of Appeal (see [7.2.5] above). They are responsible for defining how the law is to be applied and where appropriate adapted to developments in patent law. To a greater or lesser extent the issue in every case is whether or not the situation is covered by an abstractly formulated regulation. Thus over time case law has given e.g. the notions of invention, novelty, inventive step and industrial applicability increasingly precise meanings with which the Office and other patent system stakeholders can align themselves in their daily practice. Hence in view of the direction that patent law has taken by means of the Boards’ case law, appeals against decisions of the Examining and Opposition Divisions mostly operate within legally secure bounds.

[7.3.3] Particularly in the field of new technologies, the Technical Boards often have to subject their established case law to critical review, applying accepted judicial procedure and general legal principles to decide whether the often broadly formulated undefined legal terms in the EPC are applicable to the specific nature of the new field, i.e. in particular whether the existing widely accepted case law also yields acceptable solutions in the new field. It is entirely conceivable that the interpretation of undefined legal terms in the light of the EPC’s purpose and principles will necessitate drawing further distinctions which, depending on what they include or exclude, may determine whether a patent is granted or refused in a specific case.

[7.3.4] Where jurisprudence enters new legal territory, caution is required to avoid making statements that will prove untenable in the very next case to arise. Yet it cannot be ruled out that repeated amendments will be necessary in the course of time if legal solutions that the Boards initially deem correct prove to be mistaken in new situations and cease to be convincing jurisprudence. Such changes of direction in legal development are a normal part of judicial activity, and there is no need to speak of different decisions within the meaning of A 112(1)(b) simply because departures from earlier practice are deemed necessary when homing in on the right solution to a specific case […].

[7.3.5] Thus even a radical shift in jurisprudence need not necessarily be construed as a different decision within the meaning of A 112(1)(b) vis-à-vis earlier case law, provided that the Board corrects itself and - mostly in explicit fashion - declares its earlier practice to be no longer relevant. The President does not acquire the right of referral simply because he prefers the earlier decision […]. Such corrections are a normal part of the application and development of the law and do not constitute a difference that could be corrected by means of a presidential referral to the EBA, overriding the interpretative power of the Boards. In fact, shifts of this kind when identified as such leave the Office as patent granting authority in no doubt how the EPC is to be interpreted according to the Boards’ latest findings. This may entail altering the Examination Guidelines, but not having the case law reviewed by the EBA. It is another matter if the Boards themselves see a need to refer points of law to the EBA in the light of a change in their practice.

[7.3.6] The same should apply where the Boards’ case law has developed over an extended period and in the course of several decisions has gradually arrived at solutions which clearly and justifiably move away from the initial premise, even if the public and the patent granting authority have found earlier solutions acceptable. In that way, too, legal development has followed a course which, while not entirely linear, as long as it is transparent does not justify speaking of different decisions that could be grounds for a referral.

[7.3.7] Legal rulings are characterised not by their verdicts, but by their grounds. That is the only way of assessing the courts’ opinion, and the ability to assess that is in turn the key to legal certainty. The EBA has already taken this line in its decision G 3/93 [2], where it took obiter dicta into account in examining a divergence […].

[7.3.8] The conclusion that must be drawn is that the EBA cannot develop the law in the same way as the Boards of Appeal, because it does not have to decide on facts of pending appeals, but only in specific instances and only in the aforementioned context of points of law referred to it under A 112(1). This applies a fortiori to referrals by the President, which do not even arise from a specific appeal. If, as required for a referral by the President, there are different decisions on points of law, the EBA may follow the legal approach of one of the decisions and reject the other as inappropriate, or it may find a third way appropriate. Thus the only way it can influence the assessment of individual issues is by breaking with previous practice and pointing in a new direction or by confirming the approach adopted by a Board. In the process however the EBA must also consider whether the divergent decisions might not be part of a constant development, possibly still ongoing, in jurisprudence on recent patent law issues, in the course of which older decisions have lost their significance and so can no longer be considered in connection with newer decisions. Such putative differences do not justify presidential referrals, legal development being one of the principal duties of the Boards of Appeal, in particular in new territory.

Hence the President has no right of referral under A 112(1)(b) simply in order to intervene, on whatever grounds, in mere legal development if on an interpretation of the notion of “different decisions” in the sense of conflicting decisions there is no need for correction to establish legal certainty.

You can download the whole decision here.

NB: I owe the knowledge of the publication of the opinion to Laurent Teyssèdre’s blog twitter. Meanwhile most patent related blogs have spread the news.