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Maucher Jenkins obtains a positive decision from the Enlarged Board of Appeal in case 05/19

Date: 17 June 2021

In special situations, the European Patent Office offers the possibility that a decision issued by a Board of Appeal may be reviewed. The Enlarged Board of Appeal is responsible for this.


In the present case, an appeal had been filed against a decision issued by an opposition division. The competent Board of Appeal pointed out in its summons to oral proceedings that the problem-solution approach would be used in the oral proceedings. This is not unusual. The problem-solution approach is "the" method used by the European Patent Office to assess whether an invention involves an inventive step.


It was clear from the minutes of the oral proceedings that several attacks had been discussed at the hearing, but not a particular attack, which had previously been considered important in the summons.


The Board of Appeal dismissed the appeal. Unusual was the reasoning of the decision. There, the above-mentioned attack on inventive step was ignored on the grounds that the problem-solution approach had allegedly not been used by the in the grounds of appeal.


The opponent was of the opinion that its right to be heard had been seriously violated because the arguments submitted in writing were completely ignored by the Board of Appeal. The opponent instructed Maucher Jenkins to file a petition for review with the Enlarged Board of Appeal.


Due to a change in the examination guidelines, the problem-solution approach at the level of the first instance is now mandatory for the examination for inventive step. However, as there is no legal provision in the European Patent Convention that would dictate this method, the Boards of Appeal, which are not bound by the examination guidelines, had so far mostly applied the problem-solution approach only "regularly". It therefore appeared that the Board of Appeal had gone a step too far in the present case, so it was decided to have this being reviewed.


In the petition, we argued, inter alia, that the assessment of inventive step is a question of law, the assessment of which falls within the responsibility of the European Patent Office. The applicant himself would only be obliged to provide the technical facts.


The Enlarged Board of Appeal agreed and decided that the principle of "iura novit curia" ("the court knows the law") also applies before the Boards of Appeal. The Boards of Appeal would therefore have to apply the problem-solution approach based on the facts put forward by the parties, irrespective of whether the submissions of the submitting party are already structured according to the problem-solution approach.


The right to be heard was considered to have been violated seriously. The decision of the Board of Appeal was annulled and the reopening of the proceedings before the Board of Appeal was ordered.


This decision sends an important signal. Important arguments before the European Patent Office often fail due to hurdles that are of a purely formal nature and which often have nothing to do with the achievement that is created by an invention. With this decision, the Enlarged Board of Appeal sends the signal that for a patent, it is not the word but the invention that is important. The applicant can focus on the presentation of the technology. The European Patent Office then has the task of assessing whether the invention is patentable. However, the fact that this distinction between what the applicant should do an what the European Patent Office should do is not always clear in practice, shows how important it is to seek legal expertise when it comes to filing and defending patents before the European Patent Office.


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