T 2271/08 – No Referral For Review

From time to time the Boards are confronted with legal creativity. In the present case, the patent proprietor filed a hybrid request mixing elements of legal means provided under A 112 and A 112a. The resulting request could be qualified as “referral for review”.

** Translation from the German **

[4] The third auxiliary request filed during the oral proceedings reads:

“Alternatively it is requested, as a third auxiliary request, that the decision be referred to the Enlarged Board of appeal (EBA) for review, in order to ensure uniform application of the law concerning inventive step, and in particular of the interpretation and the application of the so-called “could-would approach”.”

It is to be noted that the Board is not competent to decide on a petition for review based on A 112a. The Board understands from the explanations of the [patent proprietor] that a request for referral under A 112(1)(a) is meant as it aims at uniform application of the law and as the request was filed during the proceedings before the Board. Moreover, none of the grounds referred to in A 112a(2) have been given.

Referrals to the EBA are governed by A 112. The aim of a referral is to ensure uniform application of the law (if there are contradictory decisions of the Boards) or to answer legal questions of fundamental importance (which, if necessary, can also be referred if the legal question arises for the first time). However, it is established case law of the Boards of appeal that no technical questions but only legal questions of fundamental importance can be considered for a referral (see “Case Law of the Boards of Appeal of the EPO, 5th edition (2008), chapter VII.D.13.2). According to A 112(1)(a) the Board concerned can also refer a question to the EBA following a request from a party to the appeal if the Board considers that a – preceding – decision of the EBA is needed in order for it to come to a decision on the substance of the case (see also T 520/01 [4.1]).

It can be deduced that a referral to the EBA is only possible if the Board cannot answer a question that is relevant for its decision or sees itself unable to derive a uniform answer to such a question from the case law. It follows that the decision of the EBA (and a fortiori the referral) in any case has to precede the decision by the Board.

In contrast, the request of the [patent proprietor] explicitly (ausweislich) aims at the review of the decision of the Board by the EBA, which would only be possible after [a decision has been taken] (nachträglich). As a consequence, the request aims at something that has not been provided for by the lawmaker under A 112.

Consequently, the request has to be dismissed.

To read the whole decision, please click here.