Appeal procedure before the European Patent Office

Overview

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. 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.

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

In addition to the Boards of Appeal, the European Patent Office has an "Enlarged Board of Appeal" (sometimes abbreviated "EBoA" or "EBA"). 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, 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. 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.

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

Presidium

Within the organisational structure of the Boards of Appeal, a presidium (the "Presidium of the Boards of Appeal") consisting of the EPO Vice-President in charge of the Boards of Appeal and twelve members of the Boards of Appeal, elected by their peers, is notably in charge of adopting the Rules of Procedure of the Boards of Appeal, which then have to be approved by the Administrative Council of the European Patent Organisation.

Procedure

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. 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. An appeal has a suspensive effect, 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". The provisions applicable to the first instance proceedings from which the appeal derives also apply during appeal proceedings, "[u]nless otherwise provided."

Possible interlocutory revision in ex parte proceedings

If an appeal is lodged against a decision in ex parte proceedings (i.e., proceedings involving only one party) and if the first instance department which took the decision regards the appeal to be admissible and well founded, it has to rectify its decision. This is a so-called "interlocutory revision", which is said to be a rather unusual procedure within the EPO. This is a very useful procedure for example if amendments are filed with the appeal, which clearly overcome the objections in the first instance decision. 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.

Admissibility and allowability

For an appeal to be admissible, 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, which must contain the appellant's complete case. The appellant must also be adversely affected by the appealed decision. 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). 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."

The admissibility of an appeal may be assessed at every stage of the appeal proceedings. 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. If the appeal is admissible, the Board of Appeal examines whether the appeal is allowable, i.e. the Board addresses the merits of the case.

Optional remittal

After examining the allowability of an appeal, 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). 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, although "there is no absolute right to have an issue decided upon by two instances." The boards generally take into account as well the need for procedural efficiency when deciding whether to remit a case to the first instance and "the general interest that proceedings are brought to a close within an appropriate period of time".

Accelerated processing

Parties with a legitimate interest may request accelerated processing of the appeal proceedings. 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".

Oral proceedings

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, appellant or respondent). The oral proceedings in appeal are held in Munich, and are public unless very particular circumstances apply. This contrasts with oral proceedings held before an Examining Division, which are not public. The list of public oral proceedings in appeal before the EPO is available on its web site. The right to oral proceedings is a specific and codified part of the procedural right to be heard. 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.

Substantial procedural violation and reimbursement of the appeal fee

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.

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

More generally, a substantial procedural violation is "an objective deficiency affecting the entire proceedings". 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."

Reimbursement of the appeal fee under certain circumstances when the appeal is withdrawn

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." Besides, 50% of the appeal fee is reimbursed if the appeal is withdrawn after expiry of the period for filing the statement of grounds of appeal, but if withdrawal occurs in any of the cases specified in Rule 103(2)(a), (b) and (c) EPC. According to Board of Appeal 3.3.05, such a reimbursement of 50% of the appeal fee is only to be made if "a procedural declaration [is made] that leaves no doubt that withdrawal of the appeal is intended".

Binding character of decisions

The legal system established under the EPC differs from a common law legal system in that "[it] does not treat (...) established jurisprudence as binding." Under the EPC, there is no principle of binding case law. 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). 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." 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."

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. 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.

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.

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 Organisation on a proposal from the President of the European Patent Office. Moreover, during their five-year term, the Board members may only be removed from office under exceptional circumstances.

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

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", 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" or the "European Court of Patent Appeals". 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. 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 changes would however need to be approved by a new Diplomatic Conference.

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. Echoing these concerns, the Enlarged Board of Appeal in its decision R 19/12, with potentially far-reaching effects, regarded an objection of partiality against the Vice-President DG3 (Directorate-General Appeals) as justified on the grounds that he is 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.