Technical Board Of Appeal

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

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, 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. 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

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"). (section 16.10) 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, 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 and to clarify or interpret important points of law in relation to the European Patent Convention. When fulfilling these two functions, the Enlarged Board of Appeal is composed of seven members, five legally qualified members and two technical members. 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.

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." 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

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". It is directed by the President of the Boards of Appeal, a position held as of 2018 by former Swedish Judge Carl Josefsson. The President of the Boards of Appeal is also the chairperson of the Enlarged Board of Appeal. 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, elected by their peers.

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. 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 ) and the remaining three are "serving or former judges of international or European courts or of national courts of the Contracting States".

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. The reform was undertaken by the Administrative Council "within the existing framework of the European Patent Convention, without requiring its revision."

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. The Boards of Appeal are not competent, however, to review decisions taken by the EPO acting as international authority under the Patent Cooperation Treaty. 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, " 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, " less otherwise provided."

Possible interlocutory revision in ''ex parte'' proceedings

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. This is called an "interlocutory revision", which is said to be a rather unusual procedure within the EPO. Nonetheless, this is a very useful procedure, for procedural expediency and economy, 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.G 3/03, Reasons 2, second sentence.

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".G 3/03, Reasons 3, first sentence. 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.G 3/03, Reasons 3, second sentence. 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". 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." Instead, a Board is competent to decide on the request.

Examination of the admissibility of the appeal

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 shall 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.

Examination of the merits of the appeal

If the appeal is found to be admissible, the Board of Appeal examines whether the appeal is allowable, i.e. the Board addresses the merits of the case