Appeal procedure before the European Patent Office

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The European Patent Convention (EPC), the multilateral treaty instituting the legal system according to which European patents are granted, contains provisions allowing a party to appeal a decision issued by a first instance department of the European Patent Office (EPO). For instance, a decision of an Examining Division refusing to grant a European patent application may be appealed by the applicant. The appeal procedure before the European Patent Office is under the responsibility of its Boards of Appeal.

Contents

Overview [edit]

EPO headquarters in Munich, Germany

Decisions of the first instance departments of the European Patent Office (EPO) can be appealed, i.e. challenged, before the Boards of Appeal of the EPO, in a judicial procedure (proper to an administrative court), as opposed to an administrative procedure.[1] These boards act as the final instances in the granting and opposition procedures before the EPO. The Boards of Appeal have been recognized as courts, or tribunals, of an international organization, the EPO.[2]

The Boards of Appeal of the EPO, including the Enlarged Board of Appeal, are based at the headquarters of the EPO in Munich, Germany. This contrasts with the Examining Divisions and Opposition Divisions, the first instance departments carrying the examination of patent applications and of oppositions to granted European patents, which may be in Munich, in Rijswijk (a suburb of The Hague, Netherlands), or in Berlin, Germany.

Enlarged Board of Appeal [edit]

In addition to the Boards of Appeal, the European Patent Office has an "Enlarged Board of Appeal".[3] This board does not constitute an additional level of jurisdiction in the classical sense. The Enlarged Board of Appeal, which is fundamentally a legal instance in charge of deciding on points of law,[4] has the following three functions.

The first two functions of the Enlarged Board of Appeal are to take decisions or to issue opinions when the case law of the Boards of Appeal becomes inconsistent or when an important point of law arises, either upon a referral from a Board of Appeal (first function of the Enlarged Board of Appeal), in which case the Enlarged Board issues a decision, or upon a referral from the President of the EPO (second function of the Enlarged Board of Appeal), in which case the Enlarged Board issues an opinion. Its purpose is "to ensure uniform application of the law" and to clarify or interpret important points of law in relation to the European Patent Convention.[5] The referral of a question of law by a Board of Appeal to the Enlarged Board of Appeal is fairly similar to a referral by a national court to the European Court of Justice.[6]

The third function of the Enlarged Board of Appeal is to examine petitions for review of decisions of the Boards of Appeal.[7] The third function is relatively recent. It is indeed only since December 2007 and the entry into force of the EPC 2000, the revised European Patent Convention, that a petition for review of a decision of a Board may be filed,[8] albeit on limited grounds.[9]

Procedure [edit]

An appeal may be filed against a decision of a first instance department of the EPO, i.e. a decision of the Receiving Section, of an Examining Division, of an Opposition Division or of the Legal Division. An appeal has a suspensive effect,[10] which means that, for example, "[i]n the case of a refusal of an application, the filing of an appeal will have the effect of suspending the effect of the order refusing the application".[11] The provisions applicable to the first instance proceedings from which the appeal derives also apply during appeal proceedings, "[u]nless otherwise provided."[12]

Admissibility and allowability [edit]

For an appeal to be admissible,[13] amongst other requirements, notice of appeal must be filed at the EPO within two months of notification of the contested decision, and the fee for appeal must be paid. In addition, within four months of notification of the decision, a statement setting out the grounds of appeal (i.e., the appeal grounds) must be filed,[14] which must contain the appellant's complete case.[15] The appellant must also be adversely affected by the appealed decision.[16] A party is only adversely affected by an appealed decision if the order of the appealed decision does not comply with its request (i.e. what the party requested during the first instance proceedings).[17] For instance, when "the order of the decision of the opposition division is the revocation of the patent, an opponent who requested revocation of the patent in its entirety is not "adversely affected by" said decision... irrespective of the reasons given in the decision."[18]

The requirements for admissibility must not only be satisfied when lodging the appeal, they must be sustained throughout the duration of the appeal proceedings.[19] If the appeal is admissible, the Board of Appeal examines whether the appeal is allowable,[20] i.e. the Board addresses the merits of the case.

Optional remittal [edit]

After examining the allowability of an appeal,[21] a Board has the discretion to either "exercise any power within the competence of the department which was responsible for the decision appealed" (correction of a decision) or "remit the case to that department for further prosecution" (cassation of a decision).[22] When a board remits a case to the first instance, it does so notably to give the parties the possibility of defending their case as to the substance in front of two instances.[23]

Accelerated processing [edit]

Parties with a legitimate interest may request accelerated processing of the appeal proceedings.[24] Courts and competent authorities of the contracting states may also request accelerated processing.[24] Exceptionally the Board of Appeal may itself decide to accelerate the proceedings, ex officio, "for example in view of the disadvantages which could ensue from the suspensive effect of the appeal in the case in question".[24]

Oral proceedings [edit]

During an appeal, oral proceedings may take place at the request of the EPO or at the request of any party to the proceedings, i.e. the applicant (who is, in pre-grant appeal, the appellant), or the patentee or an opponent (who are, in opposition appeal,[25] appellant or respondent).[26] The oral proceedings in appeal are held in Munich, and are public unless very particular circumstances apply.[27] This contrasts with oral proceedings held before an Examining Division, which are not public.[28] The list of public oral proceedings in appeal before the EPO is available on its web site.[29] The right to oral proceedings is a specific and codified part of the procedural right to be heard.[30] A decision is most often taken at the end of the oral proceedings, since the purpose of oral proceedings is to come to a conclusion on a case.[31][32]

Substantial procedural violation and reimbursement of the appeal fee [edit]

The EPC provides that, if the Board of Appeal finds out that a substantial procedural violation took place during the first instance proceedings and if the Board considers the appeal to be allowable, the appeal fee shall be reimbursed if such reimbursement is equitable.[33]

A substantial procedural violation may for instance occur during the first instance proceedings if the right of the parties to be heard were violated (Article 113(1) EPC) or if the first instance decision was not properly reasoned (Rule 111(2) EPC[34]). To be properly reasoned, "a decision must contain, in logical sequence, those arguments which justify its order"[35] "so as to enable the parties and, in case of an appeal, the board of appeal to examine whether the decision was justified or not".[36]

More generally, a substantial procedural violation is "an objective deficiency affecting the entire proceedings".[37] The expression "substantial procedural violation" is "to be understood, in principle, as meaning that the rules of procedure had not been applied in the manner prescribed by the EPC."[37]

Binding character of decisions [edit]

The legal system established under the EPC differs from a common law legal system in that "[it] does not treat (...) established jurisprudence as binding."[38] Under the EPC, there is no principle of binding case law.[39] That is, the binding effect of board of appeal decisions is extremely limited.[39]

A decision of a Board of Appeal is only binding on to the department whose decision was appealed, insofar as the facts are the same (if the case is remitted to the first instance of course).[40] However, "[if] the decision which was appealed emanated from the Receiving Section, the Examining Division shall similarly be bound by the ratio decidendi of the Board of Appeal."[41] However, if "a Board consider[s] it necessary to deviate from an interpretation or explanation of the [EPC] given in an earlier decision of any Board, the grounds for this deviation shall be given, unless such grounds are in accordance with an earlier opinion or decision of the Enlarged Board of Appeal."[42]

A decision of the Enlarged Board of Appeal (pursuant to Article 112(1)(a) EPC) is only binding on the Board of Appeal in respect of the appeal in question, i.e. on the Board of Appeal which referred the question to the Enlarged Board of Appeal.[43] Furthermore, in the event that a Board considers it necessary to deviate from an opinion or decision of the Enlarged Board of Appeal, a question must be referred to the Enlarged Board of Appeal.[44]

Outside the European Patent Office, the decisions of the Boards of Appeal are not strictly binding on national courts, but they certainly have a persuasive authority.[45][46]

Independence of the members of the Boards of Appeal [edit]

The members of the Boards of Appeal and of the Enlarged Board of Appeal are appointed by the Administrative Council of the European Patent Organisation on a proposal from the President of the European Patent Office.[47][48] Moreover, during their five year term, the Board members may only be removed from office under exceptional circumstances.[49][48]

According to Sir Robin Jacob, the members of the Boards of Appeal are "judges in all but name".[50] They are only bound by the European Patent Convention.[51] They are not bound by any instructions, such as the "Guidelines for Examination in the European Patent Office". They have a duty of independence.[49]

However, since "the [appeal] boards' administrative and organisational attachment to the EPO which is an administrative authority obscures their judicial nature and is not fully commensurate with their function as a judicial body",[52] there have been calls for creating, within the European Patent Organisation, a third judicial body alongside the Administrative Council and the European Patent Office. This third judicial body would replace the present Boards of Appeal and could be called the "Court of Appeals of the European Patent Organisation" [53] or the "European Court of Patent Appeals".[52] This third body would have his own budget, would have its seat in Munich, Germany and would be supervised "without prejudice to its judicial independence" by the Administrative Council of the EPO.[52] The EPO has also proposed that the members of the Boards of Appeal should be appointed for lifetime, "with grounds for termination exhaustively regulated in the EPC".[52] These changes would however need to be approved by a new Diplomatic Conference.[54]

According to some experts, the calls to improve the institutional independence of the Boards of Appeal have not received so far the appropriate consideration by the Administrative Council of the European Patent Organisation.[55]

Case references [edit]

Each decision of the Boards of Appeal and the Enlarged Board of Appeal, as well as each opinion of the Enlarged Board of Appeal, has an alphanumeric reference, such as decision T 285/93. The first letter of the reference indicates the type of board which took the decision:

  • G - Enlarged Board of Appeal (decisions and opinions under Article 112 EPC)
  • R - Enlarged Board of Appeal (petitions for review under Article 112a EPC)[56]
  • T - Technical Board of Appeal
  • J - Legal Board of Appeal
  • D - Disciplinary Board of Appeal
  • W - Decision concerning PCT reserves under Rule 40.2 PCT or Rule 68.3 PCT [57]

The number before the oblique is the serial number, allocated by chronological order of receipt at the DG3, the Directorate General 3 (Appeals) of the European Patent Office.[57] The last two digits give the year of receipt of the appeal in DG3.[57] The letter "V" is sometimes used to refer to a decision of an Examination or Opposition Division.[58]

In addition to their alphanumeric reference, decisions are sometimes referred to and identified by their date. This enables to distinguish between decisions bearing the same alphanumeric reference but issued at a different date (e.g. T 843/91 of March 17, 1993 [1] and T 843/91 of August 5, 1993 [2], T 59/87 of April 26, 1988 [3] and T 59/87 of August 14, 1990 [4] or T 261/88 of March 28, 1991 [5] and T 261/88 of February 16, 1993 [6]). These cases are relatively rare however.

See also [edit]

References and notes [edit]

  1. ^ "In decision G 1/99 (OJ 2001, 381) the Enlarged Board held that the appeal procedure is to be considered as a judicial procedure (see G 9/91, OJ 1993, 408, point 18 of the reasons) proper to an administrative court (see G 8/91, OJ 1993, 346, point 7 of the reasons; likewise G 7/91, OJ 1993, 356)." in Legal Research Service for the Boards of Appeal, European Patent Office, Case Law of the Boards of Appeal of the EPO (sixth edition 2010), vii.e.1 : "Legal character of appeal procedure".
  2. ^ G 2/06, Reasons 4, Official Journal EPO 5/2009 page 318 par. 4: "Whereas EPO Boards of Appeal have been recognized as being courts or tribunals, they are not courts or tribunals of an EU member state but of an international organization whose contracting states are not all members of the EU."
  3. ^ Sometimes abbreviated as "EBoA" or "EBA".
  4. ^ Kevin Garnett QC (23-24 March 2011). Case law of the EPO boards of appeal: a review by internal and external experts, The Enlarged Board of Appeal: structure and function, its rules of procedure, pending referrals, the procedure for petition for review under Article 112a EPC with an overview of relevant decisions, Part 2: The first two functions of the EBoA. Munich, Germany: European Patent Office. 0:50 to 1:15 minutes in. Retrieved August 5, 2012. 
  5. ^ Article 112(1) EPC
  6. ^ Kevin Garnett QC (23-24 March 2011). Case law of the EPO boards of appeal: a review by internal and external experts, The Enlarged Board of Appeal: structure and function, its rules of procedure, pending referrals, the procedure for petition for review under Article 112a EPC with an overview of relevant decisions, Part 2: The first two functions of the EBoA. Munich, Germany: European Patent Office. 7:32 to 7:45 minutes in. Retrieved August 5, 2012. 
  7. ^ Article 112a(5) EPC
  8. ^ Article 112a(1) EPC
  9. ^ Article 112a(2) EPC
  10. ^ Article 106(1) EPC
  11. ^ Decision J 4/11 of 25 November 2011, Reasons 14.
  12. ^ Rule 100(1) EPC
  13. ^ Rule 101(1) EPC, previously Rule 65 EPC 1973.
  14. ^ Article 108 EPC. Regarding the calculation of the two-month deadline for filing the notice of appeal and paying the appeal fee, see also The EPC "Ten Day Rule" - how not to use it, IPKat blog, 27 April 2009, referring to Board of Appeal decision T 2056/08 of 15 January 2009.
  15. ^ Article 12(2) RPBA
  16. ^ Article 107 EPC
  17. ^ "A party is only adversely affected if the order of the appealed decision does not comply with its request." in Decision T 0193/07 of 11 May 2011, Reasons for the Decision 2.1.2, first sentence; "A party is adversely affected if a decision does not accede to its requests (established jurisprudence; see T 961/00 of 9 December 2002, point 1 of the Reasons)" in decision T 0109/08 of 27 January 2012, Reasons for the Decision, 3.2, second sentence.
  18. ^ Decision T 0193/07, Reasons for the Decision 2.3, referring to "decisions T 0854/02 of 14 October 2002 (points 3.1 and 3.2 of the reasons), decisions T 0981/01 of 24 November 2004 (points 5 and 6 of the reasons), T 1147/01 of 16 June 2004 (point 2 of the reasons), T 1341/04 of 10 May 2007 (points 1.2(i) and 1.3 of the reasons) and T 0473/98 (points 2.2 to 2.8 of the reasons)."
  19. ^ "The requirements for admissibility must be sustained throughout the duration of the appeal proceedings (see Singer/Stauder, EPÜ, 4th ed., Art. 110, margin number 6), i.e. approximately until a decision is issued in written proceedings or delivered at the end of oral proceedings." in Decision of the Legal Board of Appeal dated 31 March 2008, J 10/07 – 3.1.01, Official Journal EPO 12/2008, p. 567, reasons 1.2., 2nd paragraph.
  20. ^ Article 110 EPC
  21. ^ Article 111(1)(first sentence) EPC
  22. ^ Article 111(1)(second sentence) EPC
  23. ^ See for instance: Decision T 0154/06 of 11 January 2008, Reasons 7.
  24. ^ a b c Notice from the Vice-President Directorate-General 3 dated 17 March 2008 concerning accelerated processing before the boards of appeal, Official Journal of the EPO 4/2008, pp 220-221.
  25. ^ A patentee may also be the sole appellant in an ex parte appeal proceedings following a decision of an Examining Division in limitation and revocation proceedings. Decisions of an Examining Division in such proceedings are open to appeal (OJ 2007, Special edition 4/2007, page 118, item 6, and Articles 106(1) and 21 EPC).
  26. ^ Article 116(1) EPC
  27. ^ Article 116(4) EPC
  28. ^ Article 116(3) EPC
  29. ^ EPO web site, Oral proceedings calendar. Consulted on October 28, 2012.
  30. ^ "The right to oral proceedings according to Article 116 EPC is a specific and codified part of the procedural right to be heard according to Article 113(1) EPC." in Decision T 1012/03 of December 1, 2006, Reasons 25.
  31. ^ Article 15(6) RPBA
  32. ^ Giovanni Pricolo (23-24 March 2011). Case law of the EPO boards of appeal: a review by internal and external experts, Oral proceedings before the EPO boards of appeal, Part 2: Before the oral proceedings. Munich, Germany: European Patent Office. 3:05 to 3:25 minutes in. Retrieved August 5, 2012. 
  33. ^ Rule 103(1)(a) EPC (formerly Rule 67 EPC 1973). See also Article 11 RPBA, relating to the remission of a case to the first instance in the event of a fundamental deficiency amounting to a substantial procedural violation "unless special reasons present themselves for doing otherwise".
  34. ^ formerly Rule 68(2) EPC 1973
  35. ^ Decision T 689/05 of 7 September 2010, point 4.1. See also decision T 0306/09 of 25 April 2012, reasons 2:
    "According to established jurisprudence of the boards of appeal, to satisfy the requirement of Rule 111(2) EPC, a decision should contain, in logical sequence, those arguments which support it. The conclusions drawn by the deciding body from the facts and evidence must be made clear. Therefore, all the facts, evidence and arguments which are essential to the decision must be discussed in detail in the decision including all the decisive considerations in respect of the factual and legal aspects of the case. The purpose of the requirement to reason the decision is to enable the parties and, in case of an appeal, also the board of appeal to examine whether the decision could be considered to be justified or not (see T 278/00, OJ EPO, 2003, 546; T 1366/05, not published in OJ EPO)".
  36. ^ Decision T 1205/12 (Optimization of decisions/LANDMARK GRAPHICS) of 14 December 2012, Reasons 1.2.
  37. ^ a b Case Law of the Boards of Appeal of the European Patent Office, Fifth Edition, December 2006, p. 654.
  38. ^ T 740/98, Reasons 2.3
  39. ^ a b T 1099/06, Reasons 1.
  40. ^ Article 111(2)(first sentence) EPC
  41. ^ Article 111(2)(second sentence) EPC
  42. ^ Article 20(1) RPBA
  43. ^ Article 112(3) EPC
  44. ^ Article 21 RPBA
  45. ^ Lord Hoffmann in Merrell Dow Pharmaceuticals v Norton [1996] RPC 76 at 82: "… the United Kingdom Courts … must have regard to the decisions of the European Patent Office ("EPO") on the construction of the EPC. These decisions are not strictly binding upon courts in the United Kingdom but they are of great persuasive authority; first, because they are decisions of expert courts (the Boards of Appeal and Enlarged Board of Appeal of the EPO) involved daily in the administration of the EPC and secondly, because it would be highly undesirable for the provisions of the EPC to be construed differently in the EPO from the way they are interpreted in the national courts of a Contracting State."
  46. ^ Peter Messerli (23-24 March 2011). Case law of the EPO boards of appeal: a review by internal and external experts, Opening address. Munich, Germany: European Patent Office. 2:16 to 4:01 minutes in. Retrieved August 3, 2012. 
  47. ^ Article 11(3) EPC
  48. ^ a b Peter Messerli (23-24 March 2011). Case law of the EPO boards of appeal: a review by internal and external experts, Opening address. Munich, Germany: European Patent Office. 1:19 to 2:16 minutes in. Retrieved August 3, 2012. 
  49. ^ a b Article 23(1) EPC
  50. ^ Sir Robin Jacob, National Courts and the EPO Litigation System, GRUR Int. 2008, Vol. 8-9, pages 658-662, referring to what he said in Lenzing's Appn. [1997] RPC 245 at p. 277 and repeated in Unilin v. Berry [2007] EWCA Civ. 364. See also Leith, P, "Judicial and Administrative Roles: the patent appellate system in a European Context", Intellectual Property Quarterly, Issue 1, 2001.
  51. ^ Article 23(3) EPC
  52. ^ a b c d EPO web site, Legislative Initiatives in European patent law, Organisational Autonomy of the EPO’s Boards of Appeal. Retrieved on August 30, 2006.
  53. ^ Standing Advisory Committee before the European Patent Office (SACEPO), Organisational autonomy of the Boards of Appeal of the European Patent Office within the European Patent Organisation June 6, 2003 (pdf), archived on April 9, 2005 by the Internet Archive.
  54. ^ Peter Messerli (23-24 March 2011). Case law of the EPO boards of appeal: a review by internal and external experts, Opening address. Munich, Germany: European Patent Office. 4:52 to 6:17 minutes in. Retrieved August 3, 2012. 
  55. ^ Joseph Straus, Re: Case No. G3/08, Referral of the President of the European Patent Office under Article 112 (1) (b) EPC of October 22, 2008, Statement According to Article 11 b Rules of Procedure of the Enlarged Board of Appeal, Munich, April 27, 2009, and in particular, points 6.3.2 and 6.3.3: "Since the Sedemund-Treiber/Ferrand Study was submitted to the Administrative Council of the European Patent Organisation, nothing has happened to improve the institutional independence of the Boards of Appeal. Rather, the opposite seems to be the case."
  56. ^ See R1/08 (application no 97600009), R2/08 (application no 00936978), and R4/08 (application no 98116534), cited in (French) Laurent Teyssedre, Premières requêtes en révision, Le blog du droit européen des brevets, July 6, 2008. Consulted on July 6, 2008.
  57. ^ a b c European Patent Office, Case Law of the Boards of Appeal of the European Patent Office, 5th edition, 2006, p. XXXII (Reader's Guide) (ISBN 3-89605-084-2).
  58. ^ EPO web site, EPO boards of appeal decisions - help section. Retrieved on August 30, 2006.

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