CASELAW-EPO - reviews of EPO Boards of Appeal decisions

T 2194/21 – No referral to EBA on the application of Art 69 and 123(3)

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T 2194/19 was already commented in this blog, on the adaptation of the description. The case is interesting for another reason. The proprietor suggested to refer a number of questions to the EBA about the relationship between Art 69 and 123(3).

The proprietor’s point of view

The proprietor submitted that the scope of protection of granted claim 1 must at least include the “Third Embodiment” presented in the description. The proprietor contrasted the “stricter approach” of T 1896/11 and T 626/16 with the “more liberal” approach of T 131/15 and G 2/88, OJ 1990, 093, and concluded that “diverging case law and practice seem to exist concerning the way when and how to apply Art 69(1) and its Protocol to examine the requirements of Art 123(3).”

The proprietor proposed that the board refer the following two questions to the EBA:

Question 1

If a claim in itself imparts a clear and credible technical teaching, is the scope of protection of the patent – when analysing the requirements of Art 123(3) – to be determined by interpreting the claim in the light of the description and the figures of the patent, i.e. are Art 69 EPC and its Protocol to be applied?

Question 2

Where an expression in a granted claim, taken literally and in isolation, would have the effect of excluding all of the disclosed embodiments from the scope of protection, should the scope of protection be considered to include at least some of the disclosed embodiments within the ambit of the claim and provided such claim interpretation is in compliance with the normal meaning of the words used in the claim and is not manifestly unreasonable, in judging compliance with the requirements of Art 123(3)?

In other words, the proprietor suggested that the EBA should make a choice between the two possible approaches of  T 1896/11 or T 626/16 and T 131/15.

The board’s decision

According to Art 112(1)(a), a board shall either of its own motion or following a request from a party to the appeal, refer any question to the EBA if it considers that a decision is “required” for ensuring uniform application of the law, or if a point of law of fundamental importance arises.

Moreover, pursuant to Art 21 RPBA, a question shall be referred to the EBA if a board considers it necessary to deviate from an interpretation or explanation of the EPC contained in an earlier decision or opinion of the EBA according to Art 112(1).

It is not sufficient for a referral that a question is of general interest: an answer to it must also be “necessary” to a decision on the appeal in question. The board referred to J 16/90, Reasons 1.2.

For the present, it is not relevant to the decision on the case at hand whether or not claim 1 as granted encompasses the “Third Embodiment”. Thus, a referral of the above questions is not necessary, i.e. not “required”, for deciding this appeal case. In this context, the board also did not deviate from an interpretation or explanation of the EPC contained in an earlier decision or opinion of the EBA.

For these reasons, the board sees no merit in referring the case and, consequently, refused the proprietor’s request for referral to the EBA.


The board’s have a large discretion when accepting to refer questions to the EBA. That it dismissed the request for referral is thus not surprising.

Most probably, the board found the questions raised too specifically linked to the actual case. There were too few decisions which looked to be diverging.

Nevertheless, an important question remains, which ought to be answered one day by the EBA: in how far is Art 69 and its Protocol applicable in any procedure before the EPO, besides when applying Art 123(3).

Diverging case law

The following lines of case law can be distinguished.

1) No recourse to the description to interpret a claim

T 175/98, T 515/19, T 2370/16, T 1778/17, T 1583/17, T 21/16, T 1853/19, T 19/18 or T 1989/18.

2) Systematic interpretation of the claims in the light of the description under Art 69

T 16/87, T 416/87, T 684/95, T 587/95, T 942/96, T 275/10, T 1473/19, T 450/20.

2a) Recourse to the description only in case of ambiguity

T 481/95, T 169/20.

3) Neither one nor the other – Use of Art 69 in opposition

T 274/94, T 1271/05, T 2309/11, or T 42/22, a bit of both.

4) Use of Art 69 only in opposition when assessing Art 123(3)

T 1271/05, T 1896/11,  T 131/15 T 626/16 or T 42/22.

5) Use of Art 69 only when assessing IS

T 274/94.

If a board does not want to refer such a question, it could be done by the president of the EPO.

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