Thursday, 18 July 2019

G 2/19 - Breaking: Haar belongs to Munich

We refer to our previous blog post about referral G 2/19 (and this related post). In G 2/19, the following questions were referred to the Enlarged Board:

(1) In appeal proceedings, is the right to oral proceedings under Article 116 EPC restricted if the appeal is prima facie inadmissible?

(2) If the answer to Question 1 is yes, is an appeal against the decision to grant a patent prima facie inadmissible in this sense, which Appeal has been filed by a third party within the meaning of Article 115 EPC and which has been substantiated by arguing that there is no alternative remedy under the EPC against a decision of the Examining Division not to consider the third party’s objections concerning the alleged contravention of Article 84 EPC?

(3) If the answer to one of the first two questions is no, can the Board hold oral proceedings in Haar without violating Article 116 EPC, if the appellant complains that this location is not in conformity with the EPC and requests that the oral proceedings be moved to Munich?

Today, the following communication was posted on the EPO website:
Haar, 17 July 2019 
Yesterday the Enlarged Board of Appeal announced its decision in case G 2/19 at the conclusion of the oral proceedings. The first referred question was rejected as inadmissible. The second and third referred questions were reformulated and answered as follows: 
1. Ein Dritter im Sinne von Artikel 115 EPÜ, der gegen die Entscheidung über die Erteilung eines europäischen Patents Beschwerde eingelegt hat, hat keinen Anspruch darauf, dass vor einer Beschwerdekammer des Europäischen Patentamtes mündlich über sein Begehren verhandelt wird, zur Beseitigung vermeintlich undeutlicher Patentansprüche (Artikel 84 EPÜ) des europäischen Patents den erneuten Eintritt in das Prüfungsverfahren anzuordnen. Eine solchermaßen eingelegte Beschwerde entfaltet keine aufschiebende Wirkung. 
2. Mündliche Verhandlungen der Beschwerdekammern an deren Standort in Haar verstoßen nicht gegen die Artikel 113 (1) und 116 (1) EPÜ. 
The reasons for the decision will be issued in writing in due course.

It would appear that the Enlarged Board found that Haar belongs to the greater Munich area, thus not contradicting the provisions of the EPC concerning the location of the EPO.

Furthermore, a third party within the meaning of Article 115 EPC, who has filed an appeal against the decision to grant a European patent, has no right to an oral hearing before a Board of Appeal of the European Patent Office on his request to re-examine allegedly unclear patent claims (Article 84 EPC) in the European patent.


  1. Dear Delta,
    Could you write a little bit about beckground of the second reffered question?
    How dose third party (art. 115 EPC) is possible to file appeal against patent, based on clarity issues (art. 84 EPC)?

  2. If and how this is possible is one of the questions underlying this referral. For background: during examination of the patent concerned (EP2378735) a third party filed observations under Art. 115 EPC which, among others, contained objections under Art. 84 EPC. The patent was nevertheless granted. The third party felt deprived of its opportunity to object under Art. 84 EPC (since clarity is not a ground for opposition), and felt - as a last resort - compelled to appeal the decision to grant. It turns out that this is indeed not possible. We'll await the written decision for the Enlarged Board's reasoning.

  3. I am really excited about the reasoning of the EBoA. In my view, the case is quite clear:

    According to A. 107, 1st sent., "any party to the proceedings adversely affected by a decision may appeal".

    According to A. 115, last sent., the third party is a person which "shall not be a party to the proceedings".

    It follows that a third party cannot appeal, i.e. an appeal is not even available (in German: "statthaft") for a third party. I completely agree that in these cases, there can be no suspensive effect because there is legally no effective appeal (proceedings).

    One funny question remains: Is the EBoA even allowed to anwer questions having been referred to it (based on A. 112(1)(a) EPC) during an appeal which is legally non-existant? At least, A. 112(1)(a) EPC seems to require that questions by a BoA shall be referred "during proceedings of a case". If there are legally no proceedings of a case (i.e. no appeal proceedings pending), the whole referral would be legally non-existant. :-)

    1. Fair enough, that seems to be the law.

      But on the other hand it is very frustrating that so little can be done to ensure that granted claims are clear. One can send a third party observation, but that's more or less it. If the examiner ignores it, or has a different opinion, there is nothing else to be done.

      This may be good for applicants, but not for society as a whole.