Appeal procedure before the European Patent Office
Encyclopedia
Decisions of the first instances of the European Patent Office
(EPO) can be appeal
ed, 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, on limited grounds. The Boards of Appeal have been recognized as courts, or tribunals, of an international organization, the EPO.
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 law
of the Boards of Appeal becomes inconsistent or when an important point of law arises. 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. 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.
The Boards of Appeal of the EPO, including the Enlarged Board of Appeal, are based at the headquarters of the EPO in Munich
, Germany
.
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 as to the substance in front of two instances.
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".
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 often taken at the end of the oral proceedings.
If the Board of Appeal finds out that a substantial procedural violation took place during the first instance proceedings, reimbursement of the appeal fee may be ordered for reasons of equity. A substantial procedural violation may for instance occur during the first instance proceedings if the right of the parties to be heard were violated or if the first instance decision was not properly reasoned . To be properly reasoned, "a decision must contain, in logical sequence, those arguments which justify its order". 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 had not been applied in the manner prescribed by the EPC."
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."
A decision of the Enlarged Board of Appeal (pursuant to ) 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."
on a proposal from the President of the European Patent Office. In contrast, members of the search divisions and of the examining divisions of the EPO are employed by the European Patent Office.
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.
reference, such as decision T 285/93. The first letter of the reference indicates the type of board which took the decision:
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, while the letter "V" refers to a decision of an Examination or Opposition Division.
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.
European Patent Office
The European Patent Office is one of the two organs of the European Patent Organisation , the other being the Administrative Council. The EPO acts as executive body for the Organisation while the Administrative Council acts as its supervisory body as well as, to a limited extent, its legislative...
(EPO) can be appeal
Appeal
An appeal is a petition for review of a case that has been decided by a court of law. The petition is made to a higher court for the purpose of overturning the lower court's decision....
ed, i.e. challenged, before the Boards of Appeal of the EPO, in a judicial
Judiciary
The judiciary is the system of courts that interprets and applies the law in the name of the state. The judiciary also provides a mechanism for the resolution of disputes...
procedure (proper to an administrative court), as opposed to an administrative
Public administration
Public Administration houses the implementation of government policy and an academic discipline that studies this implementation and that prepares civil servants for this work. As a "field of inquiry with a diverse scope" its "fundamental goal.....
procedure. These boards act as the final instances in the granting
Grant procedure before the European Patent Office
The grant procedure before the European Patent Office is an ex parte, administrative procedure, which includes the filing of a European patent application, the examination of formalities, the establishment of a search report, the publication of the application, its substantive examination, and the...
and opposition
Opposition procedure before the European Patent Office
The opposition procedure before the European Patent Office is a post-grant, contentious, inter partes, administrative procedure intended to allow any European patent to be centrally opposed...
procedures before the EPO. Since December 2007 and the entry into force of the EPC 2000
EPC 2000
The EPC 2000 or European Patent Convention 2000 is the version of the European Patent Convention as revised by the Act Revising the Convention on the Grant of European Patents signed in Munich on November 29, 2000. On June 28, 2001, the Administrative Council of the European Patent Organisation...
, the revised European Patent Convention
European Patent Convention
The Convention on the Grant of European Patents of 5 October 1973, commonly known as the European Patent Convention , is a multilateral treaty instituting the European Patent Organisation and providing an autonomous legal system according to which European patents are granted...
, a petition for review
Petition for review under the European Patent Convention
Under the European Patent Convention , a petition for review is a request to the Enlarged Board of Appeal of the European Patent Office to review a decision of a board of appeal. The procedure was introduced in when the EPC was revised in 2000, to form the so-called "EPC 2000". A petition for...
of a decision of a Board may be filed, on limited grounds. The Boards of Appeal have been recognized as courts, or tribunals, of an international organization, the EPO.
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 law
Case law
In law, case law is the set of reported judicial decisions of selected appellate courts and other courts of first instance which make new interpretations of the law and, therefore, can be cited as precedents in a process known as stare decisis...
of the Boards of Appeal becomes inconsistent or when an important point of law arises. 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. 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.
Munich
Munich The city's motto is "" . Before 2006, it was "Weltstadt mit Herz" . Its native name, , is derived from the Old High German Munichen, meaning "by the monks' place". The city's name derives from the monks of the Benedictine order who founded the city; hence the monk depicted on the city's coat...
, Germany
Germany
Germany , officially the Federal Republic of Germany , is a federal parliamentary republic in Europe. The country consists of 16 states while the capital and largest city is Berlin. Germany covers an area of 357,021 km2 and has a largely temperate seasonal climate...
.
Procedure
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 must be filed. The statement setting out the grounds of appeal (the appeal grounds) must contain the appellant's complete case. 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.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 as to the substance in front of two instances.
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".
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 often taken at the end of the oral proceedings.
If the Board of Appeal finds out that a substantial procedural violation took place during the first instance proceedings, reimbursement of the appeal fee may be ordered for reasons of equity. A substantial procedural violation may for instance occur during the first instance proceedings if the right of the parties to be heard were violated or if the first instance decision was not properly reasoned . To be properly reasoned, "a decision must contain, in logical sequence, those arguments which justify its order". 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 had not been applied in the manner prescribed by the EPC."
Binding character of decisions
The legal system established under the EPC differs from a common lawCommon law
Common law is law developed by judges through decisions of courts and similar tribunals rather than through legislative statutes or executive branch action...
legal system in that "[it] does not treat (...) established jurisprudence
Jurisprudence
Jurisprudence is the theory and philosophy of law. Scholars of jurisprudence, or legal theorists , hope to obtain a deeper understanding of the nature of law, of legal reasoning, legal systems and of legal institutions...
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
Ratio decidendi
Ratio decidendi is a Latin phrase meaning "the reason" or "the rationale for the decision." The ratio decidendi is "[t]he point in a case which determines the judgment" or "the principle which the case establishes."...
of the Board of Appeal."
A decision of the Enlarged Board of Appeal (pursuant to ) 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."
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 OrganisationAdministrative Council of the European Patent Organisation
The Administrative Council of the European Patent Organisation is one of the two organs of the European Patent Organisation , the other being the European Patent Office . The Administrative Council acts as the Organisation's supervisory body as well as, to a limited extent, its legislative body...
on a proposal from the President of the European Patent Office. In contrast, members of the search divisions and of the examining divisions of the EPO are employed by the European Patent Office.
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
European Patent Convention
The Convention on the Grant of European Patents of 5 October 1973, commonly known as the European Patent Convention , is a multilateral treaty instituting the European Patent Organisation and providing an autonomous legal system according to which European patents are granted...
. 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.
Case references
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 alphanumericAlphanumeric
Alphanumeric is a combination of alphabetic and numeric characters, and is used to describe the collection of Latin letters and Arabic digits or a text constructed from this collection. There are either 36 or 62 alphanumeric characters. The alphanumeric character set consists of the numbers 0 to...
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 )
- R - Enlarged Board of Appeal (petitions for review under )
- T - Technical Board of Appeal
- J - Legal Board of Appeal
- D - Disciplinary Board of Appeal
- W - Decision concerning PCTPatent Cooperation TreatyThe Patent Cooperation Treaty is an international patent law treaty, concluded in 1970. It provides a unified procedure for filing patent applications to protect inventions in each of its contracting states...
reserves under or
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, while the letter "V" refers to a decision of an Examination or Opposition Division.
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.
See also
- Board of Patent Appeals and InterferencesBoard of Patent Appeals and InterferencesThe Board of Patent Appeals and Interferences is an administrative law body of the United States Patent and Trademark Office , which decides issues of patentability. The Chief Administrative Patent Judge is James Donald Smith.-Structure:...
(BPAI), US appeal court - Case Law of the Boards of Appeal of the European Patent OfficeCase Law of the Boards of Appeal of the European Patent OfficeThe Case Law of the Boards of Appeal of the European Patent Office is a book, published by the European Patent Office , which summarizes the body of case law on the European Patent Convention developed by the Boards of Appeal of the EPO since the EPC entered into force at the end of the '70s. Its...
, also known as 'White Book' - European Court of JusticeEuropean Court of JusticeThe Court can sit in plenary session, as a Grand Chamber of 13 judges, or in chambers of three or five judges. Plenary sitting are now very rare, and the court mostly sits in chambers of three or five judges...
, the appeal court of the European UnionEuropean UnionThe European Union is an economic and political union of 27 independent member states which are located primarily in Europe. The EU traces its origins from the European Coal and Steel Community and the European Economic Community , formed by six countries in 1958...
, but which is not involved in the appeal procedure before the EPO - European Patent Office ReportsEuropean Patent Office ReportsThe European Patent Office Reports are a series of law reports, with decisions of the Boards of Appeal of the European Patent Office. The series has been published since 1979, and since at least 1989 by Sweet & Maxwell. - List of editions :...
(EPOR), a case law reporter - List of decisions and opinions of the Enlarged Board of Appeal of the European Patent Office
- Peter MesserliPeter MesserliPeter Messerli is the current Vice-President of the European Patent Office and head of the Boards of Appeal of the EPO known as DG3 since 1996...
, Vice-President of the European Patent Office, head of the DG 3 (Appeals) - Petition for review (in the article EPC 2000EPC 2000The EPC 2000 or European Patent Convention 2000 is the version of the European Patent Convention as revised by the Act Revising the Convention on the Grant of European Patents signed in Munich on November 29, 2000. On June 28, 2001, the Administrative Council of the European Patent Organisation...
) - Reformatio in peiusReformatio in peiusis a Latin phrase used in law meaning that a decision from a court of appeal is amended to a worse one....
- Restitutio in integrum in patent law
External links
- Case law and appeals on EPO web site
- Searching Boards of Appeal decisions: basic search, advanced search
- Case Law of the Boards of Appeal (sixth edition 2010) (available online)
- Rules of Procedure of the Boards of Appeal (RPBA) (Approved by the Administrative CouncilAdministrative Council of the European Patent OrganisationThe Administrative Council of the European Patent Organisation is one of the two organs of the European Patent Organisation , the other being the European Patent Office . The Administrative Council acts as the Organisation's supervisory body as well as, to a limited extent, its legislative body...
in decision CA/D 35/07 of 25 October 2007) - Rules of Procedure of the Enlarged Board of Appeal (RPEBA) (OJ 5/2007, 303): Appeal procedure
- EPO Board of Appeals Caselaw Statistics on IP Newsflash