G 1/11: a new referral, but don't get excited

Miggy struggled to contain her excitement
as she considered the awesome prospect
of G 1/11 ...

While the recent decision G 2/10 from the European Patent Office's Enlarged Board of Appeal is complex and technical, at least it has the merit of addressing a practical question which confronts applicants and their representatives from time to time. (In case you missed yesterday's post, the Enlarged Board answered the question of whether you can disclaim an embodiment of your patent application without adding subject-matter, with an authoritative "sometimes").

The latest referral to the Enlarged Board of Appeal - G 1/11 - poses a question which is going to register many notches lower on the interest scale for everyone, other than a small number of EPO officials.  Contain your excitement as you savour the issue at stake, summarised in the IPKat's unofficial translation:

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French to English translation

"Should an appeal against a decision of an Examining Division, refusing the refund of search fees under R.64 (2) EPC, which is not related to a decision to grant a European patent or to refuse a European patent application, be handled by a Technical Board of Appeal or the Legal Board of Appeal?"

While the referring decision J 21/09 is currently available in German only, the file history shows that the appeal was assigned initially to a Technical Board of Appeal and then bounced to the Legal Board, which presumably doubted its own jurisdiction sufficiently to make the referral.

The outcome of this referral will have a practical effect on where future appeals end up but, since this is a matter which is out of the hands of applicants anyway, the eventual decision will likely be of academic interest (if even that) to everyone who is not a Registrar of an EPO Appeal Board.

(Thanks to the anonymous commenter on yesterday's post who mentioned this referral).