Appeal procedure before the European Patent Office
Decisions of the first instances 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. These boards act as the final instances in the granting and opposition procedures before the EPO. Since December 2007 and the entry into force of the EPC 2000, the revised European Patent Convention, a petition for review of a decision of a Board may be filed, [ EPC Article|112a|1 ] on limited grounds. [ EPC Article|112a|2 ]
In addition to the Boards of Appeal, the European Patent Office includes an Enlarged Board of Appeal. This board does not constitute an additional level of jurisdiction in the classical sense. This instance takes decisions only when the
case lawof the Boards of Appeal becomes inconsistent or when an important point of law arises. Its purpose is "to ensure uniform application of the law" [ EPC Article|112|1 ] and to clarify or interpret important points of law in relation to the European Patent Convention. Only the Boards of Appeal themselves and the President of the EPO can refer a question to the Enlarged Board of Appeal. In the first case, the Enlarged Board issues a decision, while in the latter case it issues an opinion. Petitions for review of decisions of the Boards of Appeal are also examined by the Enlarged Board of Appeal. [ EPC Article|112a|5 ]
For an appeal to be admissible, [ EPC Rule|101|1, previously EPC 1973 Rule|65. ] 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 must be filed. [ EPC Article|108] If the appeal is admissible, the Board of Appeal examines whether the appeal is allowable, [ EPC Article|110] i.e. the Board addresses the
merits of the case.
After examining the allowability of an appeal, [ EPC Article|111|1|first sentence ] 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). [ EPC Article|111|1|second sentence ] 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. [ See for instance: [http://legal.european-patent-office.org/dg3/pdf/t060154eu1.pdf Decision T 0154/06] of 11 January 2008, Reasons 7. ]
Parties with a legitimate interest may request accelerated processing of the appeal proceedings. [http://www.european-patent-office.org/epo/pubs/oj008/04_08/04_2208.pdf "Notice from the Vice-President Directorate-General 3 dated 17 March 2008 concerning accelerated processing before the boards of appeal"] ,
Official Journal of the EPO4/2008, pp 220-221. ] Courts and competent authorities of the contracting states may also request accelerated processing. 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".
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, [ 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).] appellant or respondent). [ EPC Article|116|1 ] The oral proceedings in appeal are held in Munich, and are public unless very particular circumstances apply. [ EPC Article|116|4 ] This contrasts with oral proceedings held before an Examining Division, which are not public. [ EPC Article|116|3 ] The list of public oral proceedings in appeal before the EPO is available on its web site. [ EPO web site, [http://www.epo.org/patents/Grant-procedure/proceedings.html "Oral proceedings calendar"] . Consulted on April 30, 2008. ] The right to oral proceedings is a specific and codified part of the procedural right to be heard. [ "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 [http://legal.european-patent-office.org/dg3/biblio/t031012eu1.htm T 1012/03] of December 1, 2006, Reasons 25. ] A decision is often taken at the end of the oral proceedings.
Binding character of decisions
The legal system established under the EPC differs from a
common lawlegal system in that " [it] does not treat (...) established jurisprudenceas binding." [ [http://legal.european-patent-office.org/dg3/pdf/t980740eu1.pdf T 740/98] , Reasons 2.3 ] Under the EPC, there is no principle of binding case law. [http://legal.european-patent-office.org/dg3/pdf/t061099eu1.pdf T 1099/06] , Reasons 1. ] That is, the binding effect of board of appeal decisions is extremely limited. 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). [ EPC Article|111|2|first sentence ] However, " [if] the decision which was appealed emanated from the Receiving Section, the Examining Division shall similarly be bound by the ratio decidendiof the Board of Appeal." [ EPC Article|111|2|second sentence ]
A decision of the Enlarged Board of Appeal (pursuant to EPC Article|112|1|a) 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. In practice however, the Boards of Appeal rarely diverge from the case law established by the Enlarged Board of Appeal.
If "a Board [of Appeal] considers it necessary to deviate from an interpretation or explanation of the [EPC] given in an earlier decision of any Board [of Appeal] , 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. The President of the European Patent Office shall be informed of the Board's decision." [ [http://www.european-patent-office.org/legal/anc_reg/en/ap_i_a23_4_2003_89.htm#OJ_2003_89 Article 15(1) Rules of Procedure of the Boards of Appeal ] ]
Independence of the members of the Boards of Appeal
The members of the Boards of Appeal and of the Enlarged Board of Appeal are appointed by the
Administrative Council of the European Patent Organisationon a proposal from the President of the European Patent Office. [ EPC Article|11|3 ] In contrast, members of the search divisions and of the examining divisions of the EPO are employed by the European Patent Office.
Members of the Boards are only bound by the
European Patent Convention. [ EPC Article|23|3 ] They are not bound by any instructions, such as the "Guidelines for Examination in the European Patent Office". They have a duty of independence. [ EPC Article|23|1 ]
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" EPO web site, [http://www.epo.org/patents/law/legislative-initiatives/autonomy.html Legislative Initiatives in European patent law, Organisational Autonomy of the EPO’s Boards of Appeal] . Retrieved on August 30, 2006. ] , 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" [
Standing Advisory Committee before the European Patent Office(SACEPO), [http://www.ficpi.org/library/singaporeCET/CET-1404annex.pdf "Organisational autonomy of the Boards of Appeal of the European Patent Office within the European Patent Organisation"] June 6, 2003 (pdf)] or the "European Court of Patent Appeals". This third body would have his own budget, would have its seat in Munich, Germanyand would be supervised "without prejudice to its judicial independence" by the Administrative Council of the EPO. 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". These change would however need to be approved by a new Diplomatic Conference.
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
alphanumericreference, 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 EPC Article|112)
*"R" - Enlarged Board of Appeal (petitions for review under EPC Article|112a) [ See "R1/08" (application no 97600009), "R2/08" (application no 00936978), and "R4/08" (application no 98116534), cited in fr icon Laurent Teyssedre, [http://europeanpatentcaselaw.blogspot.com/2008/07/premires-requtes-en-rvision.html "Premières requêtes en révision"] , Le blog du droit européen des brevets, July 6, 2008. Consulted on July 6, 2008.]
*"T" - Technical Board of Appeal
*"J" - Legal Board of Appeal
*"D" - Disciplinary Board of Appeal
*"W" - Decision concerning PCT reserves under PCT Rule|40|2 or PCT Rule|68|3 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). ] 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. The last two digits give the year of receipt of the appeal in DG3. The letter "L" does not refer to a decision of a Board of Appeal but to a Legal Advice of the EPO, [ EPO web site, [http://www.european-patent-office.org/legal/anc_reg/en/ancreg_toc_vi.htm#ANCREG_TOC_VI VI. Legal Advice from the EPO] . Retrieved on August 30, 2006. ] while the letter "V" refers to a decision of an Examination or Opposition Division. [ EPO web site, [http://legal.european-patent-office.org/dg3/help/coverage.htm EPO boards of appeal decisions - help section.] Retrieved on August 30, 2006. ]
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 [http://legal.european-patent-office.org/dg3/biblio/t910843ex1.htm] and T 843/91 of August 5, 1993 [http://legal.european-patent-office.org/dg3/biblio/t910843ex2.htm] , T 59/87 of April 26, 1988 [http://legal.european-patent-office.org/dg3/biblio/t870059eu1.htm] and T 59/87 of August 14, 1990 [http://legal.european-patent-office.org/dg3/biblio/t870059ep2.htm] or T 261/88 of March 28, 1991 [http://legal.european-patent-office.org/dg3/biblio/t880261ep1.htm] and T 261/88 of February 16, 1993 [http://legal.european-patent-office.org/dg3/biblio/t880261eu2.htm] ). These cases are relatively rare however.
References and notes
List of decisions and opinions of the Enlarged Board of Appeal of the European Patent Office
Board of Patent Appeals and Interferences(BPAI), US appeal court
European Court of Justice, the appeal court of the European Union, but which is not involved in the appeal procedure before the EPO
Peter Messerli, Vice-President of the European Patent Office, head of the DG 3 (Appeals)
Reformatio in peius"
* "Restitutio in integrum" in patent law
European Patent Office Reports(EPOR), a case law reporter
* [http://www.epo.org/patents/appeals.html Appeals] on EPO web site
** [http://www.epo.org/patents/appeals/search-decisions.html Search interface for the Decisions of the EPO Boards of Appeal]
** [http://www.epo.org/patents/appeals/case-law.html Case Law of the Boards of Appeal (fifth edition 2006)] incorporating decisions up to the end of 2005, complemented by:
*** [http://www.european-patent-office.org/epo/pubs/oj007/08_07/special_edition_6_case_law_boards_of_appeal.pdf EPO Board of Appeal Case Law 2006 (OJ EPO, Special edition 2007)] , pdf, 1.5 MB
*** [http://www.european-patent-office.org/epo/pubs/oj008/06_08/special_edition_6_case_law_boards_of_appeal.pdf EPO Board of Appeal Case Law 2007 (OJ EPO, Special edition 2008)] , pdf, 1.4 MB
** [http://www.epo.org/patents/law/legal-texts/decisions/archive/25102007c.html Rules of Procedure of the Boards of Appeal] (RPBA) (Approved by the Administrative Council in decision CA/D 35/07 of 25 October 2007)
** [http://www.european-patent-office.org/epo/pubs/oj007/05_07/05_3037.pdf Rules of Procedure of the Enlarged Board of Appeal] (RPEBA) (OJ 5/2007, 303)
* [http://www.ipnewsflash.com/charts.php EPO Board of Appeals Caselaw Statistics] on IP Newsflash
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