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Friday, March 16, 2007

Despite UK Suggestion - EPO EBA Won't Discuss Patentability of CIIs.

In the (meanwhile well-known) Supreme Court of Judicature Court of Appeal (Civil Division) on Appeal from the High Court of Justice Chancery Division (Patents Court) concerning patent applications of Aerotel and Macrossan - Neutral Citation Number:

[2006] EWCA Civ 1371 - given by The Hon Mr Justice Lewison, The Rt Hon Lord Justice Jacob, and by The Rt Hon Lord Justice Neuberger, a suggestion had been made to invoke the Enlarged Board of Appeal of the EPO:

"[...] The decisions of the EPO Boards of Appeal are mutually contradictory. To say that is not to criticise anyone. On the contrary the Boards of Appeal have each done what they think is right in law - as befits tribunals exercising a judicial function. But surely the time has come for matters to be clarified by an Enlarged Board of Appeal. Under Art.112(1)(b) of the EPC the President of the EPO has the power to refer a point of law to an Enlarged Board where two Boards of Appeal have given different decisions on that question. That is now clearly the position. There are indeed at least four differing points of view. We have no power to refer any question and must reach our decision now independently of what any Enlarged Board might decide if and when there is a reference. Nonetheless we have ventured to formulate questions which might be asked of an Enlarged Board in the hope of encouraging a reference. We add that the Comptroller supports us in this course. [...]"

Now, it does not really come to me as a surprise that the President of the EPO officially has

declined:

"Dear Lord Justice Jacob,

I am writing to you to let you know that the above-mentioned decision has led to a discussion within the EPO as to the possibility of referring questions regarding the exclusions to patentability set out in Article 52(2) EPC to the Enlarged board of Appeal.

On the basis of these discussions I have decided that at the moment there is an insufficient legal basis for a referral under Article 112(1)(b) EPC. Leaving aside Board of Appeal case law the line of reasoning of which has been abandoned by later case law, I believe there are insufficient differences between current Board of Appeal decisions dealing with Article 52 EPC exclusions on important points of law that would justify a referral at this stage.

This of course does not mean that a clarification of certain issues by the Enlarged Board of Appeal would not be welcomed. The EPO will continue to monitor case law closely, whereby I believe the appropriate moment for a referral would be where the approach taken by one Board of Appeal would lead to the grant of a patent whereas the approach taken by another Board would not.

I am sending a copy of this letter to the Comptroller General of the United Kingdom Patent Office.

Yours sincerely

Professor Alain Pompidou
President"

It would have been a delicate and quite surprising precedent if the President of a trans-national institution like the European Patent Office would have accepted a suggestion to go into that disputed matter uttered by a national court and/or authority. Seen from the viewpoint of the top level executives of the EPO, there might perhaps be a continous development of case law over the years but no contradicting decisions of different Boards of Appeal. See also

Mr. Joff's comment on the

IAM Blog.

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