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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, which are institutionally independent within the EPO.

Overview

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EPO headquarters in Munich, Germany, where the Boards of Appeal were based until 2017.

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 recognised as courts, or tribunals, of an international organisation, the EPO.[2]

The Boards of Appeal of the EPO, including the Enlarged Board of Appeal, were until 2017 based at the headquarters of the EPO in Munich, Germany. In October 2017, the Boards of Appeal moved to Haar, a municipality located 12 km east of Munich's city centre.[3][4] In contrast to the Boards of Appeal, the Examining Divisions and Opposition Divisions, i.e. the first instance departments carrying the examination of patent applications and of oppositions to granted European patents, are not all based in a single location; those may be in Munich, in Rijswijk (a suburb of The Hague, Netherlands), or in Berlin, Germany.

Enlarged Board of Appeal

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In addition to the Boards of Appeal (i.e., the Technical Boards of Appeal and the Legal Board of Appeal), the European Patent Office also has an "Enlarged Board of Appeal" (sometimes abbreviated "EBoA" or "EBA").[5] The Enlarged Board of Appeal does not constitute an additional level of jurisdiction in the classical sense. It is fundamentally a legal instance in charge of deciding on points of law,[6] and has the four following functions.

The first two functions of the Enlarged Board of Appeal are to make 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 European Patent Convention[5] and to clarify or interpret important points of law in relation to the European Patent Convention.[7] When fulfilling these two functions, the Enlarged Board of Appeal is composed of seven members, five legally qualified members and two technical members.[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.[8]

The third function of the Enlarged Board of Appeal is to examine petitions for review of decisions of the Boards of Appeal.[9] 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,[10] albeit on limited grounds.[11]

The fourth function is to propose the removal from office of a member of the boards of appeal. Under Article 23(1) EPC, a member of the Enlarged Board or of a Board of Appeal may not be removed from office during the five-year term of appointment, other than on serious grounds and if the "Administrative Council, on a proposal from the Enlarged Board of Appeal, takes a decision to this effect."[12] The Enlarged Board has been requested on three occasions to propose the removal from office of the same Board member, but did so in none of these cases.

Organisational structure, and supervision

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The Boards of Appeal, the Enlarged Board of Appeal, as well as their registries and support services, form a separate unit within the European Patent Office, the so-called "Boards of Appeal Unit".[13][14] It is directed by the President of the Boards of Appeal,[13] a position held as of 2018 by former Swedish Judge Carl Josefsson.[14] The President of the Boards of Appeal is also the chairperson of the Enlarged Board of Appeal.[13] The "Presidium of the Boards of Appeal" is the autonomous authority within the Boards of Appeal Unit, and consists of the President of the Boards of Appeal and twelve members of the Boards of Appeal,[15] elected by their peers.[16]

Furthermore, a "Boards of Appeal Committee" has been set up by the Administrative Council of the European Patent Organisation to adopt the Rules of Procedure of the Boards of Appeal (and of the Enlarged Board of Appeal), and to assist the Administrative Council in supervising the Boards of Appeal.[17][14][18] The Boards of Appeal Committee consists of six members, three of whom are members of the Administrative Council itself (i.e. representatives of the Contracting States within the meaning of Article 26 EPC) and the remaining three are "serving or former judges of international or European courts or of national courts of the Contracting States".[17]

The current organisational and managerial structure of the Boards of Appeal resulted from a reform undertaken by the Administrative Council as a reaction to Enlarged Board of Appeal decision R 19/12 of 25 April 2014.[19][20] The reform was undertaken by the Administrative Council "within the existing framework of the European Patent Convention, without requiring its revision."[14][notes 1]

Procedure

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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.[21] The Boards of Appeal are not competent, however, to review decisions taken by the EPO acting as international authority under the Patent Cooperation Treaty.[22] Most appeals are filed (i.e., lodged) against decisions of Examining Divisions and Opposition Divisions, with a relatively small number of cases being appeals against decisions of the Receiving Section and Legal Division.[23] An appeal has a suspensive effect,[21] 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".[24] The provisions applicable to the first instance proceedings from which the appeal derives also apply during appeal proceedings, "[u]nless otherwise provided."[25]

Possible interlocutory revision in ex parte proceedings

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If an appeal is lodged against a decision in ex parte proceedings (i.e., proceedings where the appellant is not opposed to another party) and if the first instance department that took the decision regards the appeal to be admissible and well founded, it has to rectify its decision.[26][27] This is called an "interlocutory revision",[26][27] which is said to be a rather unusual procedure within the EPO.[28] Nonetheless, this is a very useful procedure, for procedural expediency and economy,[29] for example if amendments are filed with the appeal, which clearly overcome the objections in the first instance decision.[28] If the appeal is not allowed by the first instance department within three months of receipt of the statement of grounds, the first instance department has to transfer the case to the Board of Appeal without delay, and without comment as to its merit.[30][31]

In the event of an interlocutory revision, the appeal fee is reimbursed in full "if such reimbursement is equitable by reason of a substantial procedural violation".[32][33] Whether the appeal fee is to be reimbursed in the event of an interlocutory revision must be examined "regardless of whether or not the appellant has actually submitted" a request for reimbursement of the appeal fee.[34] If the first instance department decides to grant the interlocutory revision but not a request of the appellant for reimbursement of the appeal fee, the first instance department has to remit "the request of the appellant for reimbursement of the appeal fee to a board of appeal".[35] In other words, in such a case, the first instance department "is not competent to refuse a request of the appellant for reimbursement of the appeal fee."[36] Instead, a Board is competent to decide on the request.

Examination of the admissibility of the appeal

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For an appeal to be admissible,[37] 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,[38] which shall contain the appellant's complete case.[39] The appellant must also be adversely affected by the appealed decision.[40] 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).[41] 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."[42]

The admissibility of an appeal may be assessed at every stage of the appeal proceedings.[43] Furthermore, the requirements for admissibility must not only be satisfied when lodging the appeal, they must be sustained throughout the duration of the appeal proceedings.[44]

Examination of the merits of the appeal

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If the appeal is found to be admissible,[notes 2] the Board of Appeal examines whether the appeal is allowable,[46] i.e. the Board addresses the merits of the case. When doing so, "the boards have competence to review appealed decisions in full, including points of law and fact".[47]

In that context, if the first instance department exercised its discretion (pursuant to Article 114(2) EPC) to admit facts or evidence which were not submitted in due time by a party, the Board "should only overrule such a decision, if it concludes that the department that took it applied the wrong principles, took no account of the right principles, or exercised its discretion in an unreasonable way, thus exceeding the proper limits of its discretion".[48]

Optional remittal

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After examining the allowability of an appeal,[49] 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).[50] When a board remits a case to the first instance, it does so notably to give the parties the possibility of defending their case before two instances, i.e. at two levels of jurisdiction,[51][52] although there is no absolute right to have an issue decided upon by two instances.[53] The boards generally take into account as well the need for procedural efficiency when deciding whether to remit a case to the first instance[52] and "the general interest that proceedings are brought to a close within an appropriate period of time".[53]

Accelerated processing

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Appeal proceedings conducted at the EPO may be accelerated "by giving a case priority over others".[54] A party to the proceedings may request accelerated processing of the appeal proceedings.[54] The request must be reasoned.[54][55] The Board has the discretion to grant or refuse the request.[54][56] Courts, competent authorities of the contracting states, and the Unified Patent Court (UPC) may also request acceleration of proceedings relating to a specific patent, without providing a specific reason.[54][57] The Board may also decide to accelerate the proceedings of its own motion.[54][58]

Oral proceedings

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During appeal proceedings, 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,[notes 3] appellant and/or respondent).[59] The oral proceedings in appeal are held in Haar or Munich, and are public unless very particular circumstances apply.[60] This contrasts with oral proceedings held before an Examining Division, which are not public.[61] The list of public oral proceedings in appeal is available on the EPO web site.[62] The right to oral proceedings is a specific and codified part of the procedural right to be heard.[63] Oral proceedings may also be held by videoconference.[64]

To prepare the oral proceedings, the Board shall "issue a communication drawing attention to matters that seem to be of particular significance for the decision to be taken".[65] Together with such a communication, "[t]he Board may also provide a preliminary opinion" on the merits of the case.[66] A decision may be, and often is, announced at the end of the oral proceedings, since the purpose of oral proceedings is to come to a conclusion on a case.[67][68]

Substantial procedural violation and reimbursement of the appeal fee

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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.[69]

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[70]). To be properly reasoned, "a decision must contain, in logical sequence, those arguments which justify its order"[71] "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".[72]

More generally, a substantial procedural violation is "an objective deficiency affecting the entire proceedings".[73] The expression "substantial procedural violation" is to be understood, in principle, as meaning "that the rules of procedure have not been applied in the manner prescribed by the [European Patent] Convention."[74]

Full or partial reimbursement of the appeal fee upon withdrawal of the appeal

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The appeal fee is reimbursed in full "if the appeal is withdrawn before the filing of the statement of grounds of appeal and before the period for filing that statement has expired."[75] Besides, the appeal fee is partially reimbursed, at a rate of 75%, 50%, or 25%, if the appeal is withdrawn at certain stages of the appeal proceedings.[76] The withdrawal of an appeal must be explicit and unambiguous.[77][78]

Binding character of decisions

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The legal system established under the EPC differs from a common law legal system in that "[it] does not treat (...) established jurisprudence as binding."[79] Under the EPC, there is no principle of binding case law.[80] That is, the binding effect of board of appeal decisions is extremely limited.[80]

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).[81] 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."[82] 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 decision or opinion of the Enlarged Board of Appeal (...)."[83]

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 that referred the question to the Enlarged Board of Appeal.[5][84] 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.[5][85]

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.[86][87]

Correction of a Board's decision under Rule 140 EPC

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Under Rule 140 EPC, "only linguistic errors, errors of transcription and obvious mistakes may be corrected" in decisions of the EPO. This possibility to correct a decision is also available for decisions of the EPO Boards of Appeal.[notes 4]

Independence of the members of the Boards of Appeal

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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.[88][89] Moreover, during their five-year term, the Board members may only be removed from office under exceptional circumstances.[89][90]

According to Sir Robin Jacob, the members of the Boards of Appeal are "judges in all but name".[91] They are only bound by the European Patent Convention.[92] They are not bound by any instructions, such as the "Guidelines for Examination in the European Patent Office". They have a duty of independence.[90]

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",[93] 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"[94] or the "European Court of Patent Appeals".[93] This third body would have its 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.[93] 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".[93] These changes would however need to be approved by a new Diplomatic Conference.[95]

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.[96] Echoing these concerns, the Enlarged Board of Appeal in its decision R 19/12 regarded an objection of partiality against the Vice-President DG3 (Directorate-General Appeals) as justified on the grounds that he was acting both as chairman of the Enlarged Board of Appeal and as a member of the Management Committee of the EPO. The decision shows the persistent disquietude caused by the integration of the Boards of Appeal into the European Patent Office. This question, namely the question of the independence of the Boards of Appeal, was also raised by Spain "against the Regulations on the unitary patent" in cases C-146/13 and C-147/13.[97]

Case references

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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 (or the text "Art 23") 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)[98]
  • 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[99]
  • Art. 23 – Enlarged Board of Appeal (proposals to the Administrative Council under Article 23 EPC for removal from office of a member of the Boards of Appeal)

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.[99] The last two digits give the year of receipt of the appeal in DG3.[99] The letter "V" is sometimes used to refer to a decision of an Examining or Opposition Division.[100]

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

See also

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Notes

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  1. ^ A revision of the European Patent Convention necessitates a Conference of the Contracting States, see Article 172 EPC.
  2. ^ A Board may also choose to leave open the question of admissibility of the appeal if none of the appellant's requests are considered to be allowable. An example of such a case is T 255/22.[45]
  3. ^ 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).
  4. ^ See for example decision T 17/22 of 20 September 2022, which was followed by a decision of 23 September 2022 correcting an error in the decision of 20 September 2022.

References

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  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 (9th edition, July 2019), v.a.1.1 : "Legal character of appeal procedure" > "General".
  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. ^ "New location for the Boards of Appeal". European Patent Office. 2017. Retrieved 1 August 2017.
  4. ^ "Boards of Appeal starting work at their new location". European Patent Office. 2 October 2017. Retrieved 6 October 2017.
  5. ^ a b c d e Hugo Meinders; Philipp Lanz; Gérard Weiss (28 February 2020). Overview of the Appeal Proceedings according to the EPC. Wolters Kluwer. ISBN 978-94-035-2090-2. (section 16.10)
  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. 0:50 to 1:15 minutes in. Archived from the original on 22 February 2014. Retrieved 5 August 2012.
  7. ^ Article 112(1) EPC
  8. ^ 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. Archived from the original on 22 February 2014. Retrieved 5 August 2012.
  9. ^ Article 112a(5) EPC
  10. ^ Article 112a(1) EPC
  11. ^ Article 112a(2) EPC
  12. ^ Article 23(1) EPC
  13. ^ a b c Rule 12a(1) EPC
  14. ^ a b c d "Supplementary publication 1, Official Journal 2018, Information from the Boards of Appeal Presidium, business distribution and texts relating to the proceedings". European Patent Office. January 2018. pp. 2 (Note to readers). Retrieved 4 February 2018.
  15. ^ Rule 12b(1) EPC
  16. ^ Rule 12b(2) EPC
  17. ^ a b Rule 12c EPC
  18. ^ "Boards of Appeal Committee". European Patent Office. Retrieved 4 February 2018.
  19. ^ Klett, Kathrin (2017). "Neuorganisation der Beschwerdekammern in der Europäischen Patentorganisation" [Reorganisation of the Boards of Appeal in the European Patent Organisation] (PDF). Sic! (in German) (3): 119. Retrieved 4 February 2018.
  20. ^ Baldan, Federica; Van Zimmeren, Esther (2015). "Exploring Different Concepts of Judicial Coherence in the Patent Context: The Future Role of the (New) Unified Patent Court and its Interaction with other (Old) Actors of the European Patent System". Review of European Administrative Law. 8 (2): 377–408. doi:10.7590/187479815X14465419060785. hdl:10067/1308360151162165141. In particular, organisational and managerial reforms for a separation of the judiciary from the executive branches of the EPOrg were required following decision R 19/12 of the Enlarged Board of Appeal (EBoA) of 25 April 2014 (...)
  21. ^ a b Article 106(1) EPC
  22. ^ "J 0010/15 (PCT Anmeldung) of 30.1.2018" (in German). Legal Board of Appeal of the European Patent Office. 30 January 2018. Entscheidungsgründe, 2. Retrieved 12 February 2018. Auch nach ständiger Rechtsprechung sind die Beschwerdekammern grundsätzlich nicht zuständig, um die vom EPA als internationale Behörde getroffenen Entscheidungen zu überprüfen (J 14/98, Nr. 2.1 der Entscheidungsgründe; J 20/89, Nr. 2 der Entscheidungsgründe, ABl. 1991, 375; J 15/91, Nr. 2 der Entscheidungsgründe).
  23. ^ Yvonne Podbielski (8–9 November 2012). EPO boards of appeal and key decisions, The appeal procedure from A to Z (Part 1 of 3). Munich, Germany: European Patent Office. 0:51 to 1:58 minutes in. Retrieved 30 June 2013.
  24. ^ Decision J 4/11 of 25 November 2011, Reasons 14.
  25. ^ Rule 100(1) EPC
  26. ^ a b Article 109(1) EPC
  27. ^ a b "Decision G 3/03 of the Enlarged Board of Appeal dated 28 January 2005". European Patent Office. Reasons 2, first sentence. Retrieved 22 October 2019.
  28. ^ a b Yvonne Podbielski (8–9 November 2012). EPO boards of appeal and key decisions, The appeal procedure from A to Z (Part 3 of 3). Munich, Germany: European Patent Office. 1:30 to 3:03 minutes in. Retrieved 7 July 2013.
  29. ^ G 3/03, Reasons 2, first sentence.
  30. ^ Article 109(2) EPC
  31. ^ G 3/03, Reasons 2, second sentence.
  32. ^ Rule 103(1)(a) EPC (formerly Rule 67 EPC 1973); Rule 103(6)(first sentence) EPC
  33. ^ G 3/03, Reasons 3, first sentence.
  34. ^ G 3/03, Reasons 3, second sentence.
  35. ^ G 3/03, Reasons 3.4.3; now codified in Rule 103(6)(second sentence) EPC.
  36. ^ G 3/03, Order I; Rule 103(6)(second sentence) EPC.
  37. ^ Rule 101(1) EPC, previously Rule 65 EPC 1973.
  38. ^ 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.
  39. ^ Article 12(3) RPBA 2020, first sentence: "The statement of grounds of appeal and the reply shall contain a party's complete appeal case."
  40. ^ Article 107 EPC
  41. ^ "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.
  42. ^ 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)."
  43. ^ Decision T 15/01 (Mystery Swine Disease/SDLO), reasons, point 1 (Technical Board of Appeal 3.3.04 17 June 2004) ("(...) admissibility issues can and have to be examined at every stage of the appeal procedure. According to established case law, the admissibility of an opposition must be checked ex officio in every phase of the opposition and ensuing appeal proceedings (T 522/94, point 3, OJ EPO 1998, 421). The same principles apply a fortiori to the examination of the admissibility of an appeal.").
  44. ^ "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.
  45. ^ "T 0255/22 10-05-2023 | Epo.org". new.epo.org. Reasons 1.2. (...) In the favour of the appellant, the Board left open the question of the admissibility of the appeal. It is not necessary to decide on the appeal's admissibility since the appeal can be dismissed for the reason alone that none of the appellant's requests is allowable.
  46. ^ Article 110 EPC
  47. ^ Decision T 1604/16 of 7 December 2020, point 3.1.7; see also Supplementary publication OJ EPO 2/2020, p. 55, explanatory remarks to Article 12(2) RPBA 2020: "The Boards of Appeal constitute the first and final judicial instance in the procedures before the European Patent Office. In this capacity, they review appealed decisions on points of law and fact."
  48. ^ "T 0960/15 (Radiotherapeutic treatment plan adaptation / Philips) of 22.12.2021". www.epo.org. European Patent Office. Retrieved 4 May 2022. The decision, reasons 3, refers in particular to: "for example, G 7/93 Late amendments OJ EPC 1994 775, reason 2.6; T 677/08, Payment Processing/SAP, reason 4.3; T 1883/12, No-spill drinking cup/Philips, reason 3.1.2; Case Law of the Boards of Appeal of the European Patent Office, 9th edition, IV.C.4.5.2, V.A.3.5.1 and V.A.3.5.4; and with particular reference to the review of a discretionary decision to admit a document into the proceedings, T 1209/05, Refrigerator oil/NIPPON MITSUBISHI, reason 2". This is considered to be "long-established jurisprudence" (reasons 4).
  49. ^ Article 111(1)(first sentence) EPC
  50. ^ Article 111(1)(second sentence) EPC
  51. ^ Decision T 154/06 of 11 January 2008, Reasons 7.
  52. ^ a b Legal Research Service for the Boards of Appeal, European Patent Office, Case Law of the Boards of Appeal of the EPO (9th edition, July 2019), v.a.3.2.1 : "Opposition appeal proceedings".
  53. ^ a b Legal Research Service for the Boards of Appeal, European Patent Office, Case Law of the Boards of Appeal of the EPO (9th edition, July 2019), v.a.7.2.1 : "No absolute right to have issue decided on at two instances".
  54. ^ a b c d e f "Notice from the Boards of Appeal on accelerating proceedings | Epo.org". www.epo.org. 19 January 2024. Retrieved 28 January 2024.
  55. ^ Article 10(3) RPBA 2020
  56. ^ Supplementary publication OJ EPO 2/2020, p. 52, explanatory remarks to Article 10(3) RPBA 2020: "Proposed new paragraph 3 gives the Board the discretionary power to decide on a party's request for acceleration."
  57. ^ Article 10(4) RPBA 2020
  58. ^ Article 10(5) RPBA 2020
  59. ^ Article 116(1) EPC
  60. ^ Article 116(4) EPC
  61. ^ Article 116(3) EPC
  62. ^ EPO web site, Oral proceedings calendar. Consulted on 19 December 2021.
  63. ^ "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 1 December 2006, Reasons 25.
  64. ^ "Oral proceedings before the Boards of Appeal – continuation of the measures adopted due to the coronavirus (COVID-19) pandemic and revised practice on oral proceedings by VICO". epo.org. Boards of Appeal of the EPO. 15 December 2020. Retrieved 19 December 2020.
  65. ^ Article 15(1), fourth sentence, RPBA
  66. ^ Article 15(1), sixth sentence, RPBA
  67. ^ Article 15(6) RPBA: "The Board shall ensure that each case is ready for decision at the conclusion of the oral proceedings, unless there are special reasons to the contrary. Before the oral proceedings are closed, the decision may be announced orally by the Chair."
  68. ^ 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. Archived from the original on 7 April 2014. Retrieved 5 August 2012.
  69. ^ Rule 103(1)(a) EPC (formerly Rule 67 EPC 1973). See also Article 11 RPBA 2020: "The Board shall not remit a case to the department whose decision was appealed for further prosecution, unless special reasons present themselves for doing so. As a rule, fundamental deficiencies which are apparent in the proceedings before that department constitute such special reasons."
  70. ^ formerly Rule 68(2) EPC 1973
  71. ^ 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)".
  72. ^ Decision T 1205/12 (Optimization of decisions/LANDMARK GRAPHICS) of 14 December 2012, Reasons 1.2.
  73. ^ Legal Research Service for the Boards of Appeal, European Patent Office, Case Law of the Boards of Appeal of the EPO (9th edition, July 2019), v.a.9.5 : "Substantial procedural violation"
  74. ^ Legal Research Service for the Boards of Appeal, European Patent Office, Case Law of the Boards of Appeal of the EPO (9th edition, July 2019), v.a.9.5.1 : "Violation must be of procedural nature"
  75. ^ Rule 103(1)(b) EPC
  76. ^ Rule 103(2), (3), and (4) EPC
  77. ^ T 1402/13 of 31 May 2016, Catchword 3.
  78. ^ "Decision T 193/20 of Technical Board of Appeal 3.3.02 of 13 March 2020" (PDF). epo.org. Retrieved 3 May 2020. ... the withdrawal of the appeal must be expressed by an explicit and absolutely clear statement. (reasons 2.2)
  79. ^ T 740/98, Reasons 2.3
  80. ^ a b T 1099/06, Reasons 1.
  81. ^ Article 111(2)(first sentence) EPC
  82. ^ Article 111(2)(second sentence) EPC
  83. ^ Article 20(1) RPBA 2020
  84. ^ Article 112(3) EPC
  85. ^ Article 21 RPBA 2020
  86. ^ 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."
  87. ^ 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. Archived from the original on 7 April 2014. Retrieved 3 August 2012.
  88. ^ Article 11(3) EPC
  89. ^ 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. Archived from the original on 7 April 2014. Retrieved 3 August 2012.
  90. ^ a b Article 23(1) EPC
  91. ^ 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.
  92. ^ Article 23(3) EPC
  93. ^ a b c d "Autonomy of the boards of appeal". Legislative initiatives > Organisational autonomy of the boards of appeal. European Patent Office. 2004–2006. Archived from the original on 3 March 2011. Retrieved 6 February 2018.
  94. ^ 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 6 June 2003 (pdf), archived on 9 April 2005 by the Internet Archive.
  95. ^ 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. Archived from the original on 7 April 2014. Retrieved 3 August 2012.
  96. ^ 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, 27 April 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."
  97. ^ Teschemacher, Rudolf (5 May 2014). "EPO – Vice-president DG3 as Chairman of the Enlarged Board of Appeal – Conflict of interests between the tasks as member of the management and as a presiding judge in review cases". EPLAW Patent Blog. Retrieved 12 May 2014.
  98. ^ See R1/08 (application no 97600009), R2/08 (application no 00936978), and R4/08 (application no 98116534), cited in (in French) Laurent Teyssedre, Premières requêtes en révision, Le blog du droit européen des brevets, 6 July 2008. Consulted on 6 July 2008.
  99. ^ 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).
  100. ^ "EPO boards of appeal decisions - help section". European Patent Office. Archived from the original on 29 September 2007.

Further reading

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  • Marcus O. Müller; Cees A.M. Mulder (27 February 2015). Proceedings Before the European Patent Office: A Practical Guide to Success in Opposition and Appeal. Edward Elgar Publishing. ISBN 978-1-78471-010-1.
  • Meinders, Hugo; Lanz, Philipp; Weiss, Gérard (28 February 2020). Overview of the Appeal Proceedings according to the EPC. Kluwer Law International B.V. ISBN 978-94-035-2090-2.
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