Appeals: cases received and settled
To help cope with the increased workload two new boards of appeal in chemistry and electricity took up their duties in October. Thus 24 technical boards of appeal are currently active.
In the course of the year the EPO’s boards of appeal registered 1 684 new cases, a 9.8% increase on the year before (2004: 1 533), and they settled 1 499 appeals (as against 1 451 in 2004). That brought the number of appeals filed since the EPO was established to 23 835, of which 20 425 have been settled. Fig. 1
The technical boards received 1 625 new cases (2004: 1 491) and settled 1 432 appeals (2004: 1 401). At the end of the year, 753 appeals had been pending for over two years, a 9% improvement (2004: 832). The number of new PCT protests filed with the technical boards was lower than the year before, 27 compared with 43, and 37 cases were settled. Fig. 2
Twenty new cases were brought before the Legal Board of Appeal, the same number as in 2004, and 36 appeals were settled (2004: 33), while the Disciplinary Board received 38 new cases (2004: 19) and settled 27 appeals (2004: 12).
There was one new referral to the Enlarged Board of Appeal (2004: 3), which also settled four outstanding cases (2004: 5).
Enlarged Board of Appeal
To ensure uniform application of the law, or if an important point of law arises, a question can be referred to the EPO’s Enlarged Board of Appeal, either by a technical board of appeal under Article 112(1)(a) EPC or by the President under Article 112(1)(b) EPC.
There is currently one case pending before the Enlarged Board, G 1/05, in which a technical board of appeal referred questions concerning the validity of divisional applications.
In 2005 the Enlarged Board handed down four decisions. In G 3/03 of 28 January 2005 it held that in the event of interlocutory revision under Article 109(1) EPC the department of first instance whose decision had been appealed was not competent to refuse a request from the appellant for reimbursement of the appeal fee. The Enlarged Board ruled that the board of appeal which would have been competent to deal with the substantive issues of the appeal if no interlocutory revision had been granted was competent to decide on the request.
In G 2/04 of 25 May 2005 the Enlarged Board held that opponent status could not be freely transferred and that a legal person who was a subsidiary of the opponent when the opposition was filed and who carried on the business to which the opposed patent related could not acquire opponent status if all its shares were assigned to another company.
In G 3/04 of 22 August 2005 the Enlarged Board held that appeal proceedings could not be continued by a third party that had intervened during the appeal proceedings in the event that the sole appellant had withdrawn his appeal.
In G 1/04 of 16 December 2005 the Enlarged Board held inter alia that in order for the subject-matter of a claim relating to a diagnostic method practised on the human or animal body to fall under the prohibition of Article 52(4) EPC, the claim had to include the features relating to: (i) the diagnosis for curative purposes stricto sensu representing the deductive medical or veterinary decision phase as a purely intellectual exercise; (ii) the preceding steps which were constitutive for making that diagnosis; and (iii) the specific interactions with the human or animal body which occurred when carrying those out among these preceding steps which were of a technical nature. Whether or not a method was a diagnostic method may not depend on the participation of a medical or veterinary practitioner.