Case Law 2012 and 2013 Supplementary publication – Official Journal EPO 5 l 2014 EPO Board of Appeal Case Law

PART I

BOARDS OF APPEAL ACTIVITIES IN 2012 AND 2013

1. Introduction

For statistics on the appeal procedure in 2012 and 2013, see the tables in Section 2 below, together with the further information given in Section 3. General developments in Directorate-General 3, and the information products available, are described in Sections 4 to 6.

For the boards' case law in 2012 and 2013 see Part II below. To round off the survey of this two-year period, a number of important decisions have been added from the first quarter of 2014.

2. Statistics

2.1 General statistics

For statistics on the appeal procedure by cases in 2012 and 2013 (included are also cases in 2011), see tables and charts below.

 

New cases

 

2013

 

2012

 

2011

 

Enlarged Board of Appeal

23

 

21

 

22

 

Referrals

2

 

2

 

1

 

Petitions for review

21

 

19

 

21

 

Legal Board of Appeal

23

 

25

 

16

 

Technical boards of appeal

2 515

100,0%

2 602

100,0%

2 658

100,0%

Examination procedure (ex parte)

1 200

47,7%

1 241

47,7%

1 311

49,3%

Opposition procedure (inter partes)

1 315

52,3%

1 361

52,3%

1 347

50,7%

Total protests

0

0,0%

0

0,0%

0

0,0%

Mechanics

779

31,0%

791

30,4%

794

29,9%

Examination procedure

186

 

166

 

205

 

Opposition procedure

593

 

625

 

589

 

Protests

0

 

0

 

0

 

Chemistry

777

30,9%

786

30,2%

827

31,1%

Examination procedure

236

 

239

 

258

 

Opposition procedure

541

 

547

 

569

 

Protests

0

 

0

 

0

 

Physics

263

10,4%

268

10,3%

315

11,8%

Examination procedure

194

 

201

 

251

 

Opposition procedure

69

 

67

 

64

 

Protests

0

 

0

 

0

 

Electricity

696

27,7%

757

29,1%

722

27,2%

Examination procedure

584

 

635

 

597

 

Opposition procedure

112

 

122

 

125

 

Protests

0

 

0

 

0

 

Disciplinary Board of Appeal

9

 

11

 

11

 

Total

2 570

 

2 659

 

2 707

 

 

 

Settled

 

2013

 

2012

 

2011

 

Enlarged Board of Appeal

17

 

16

 

22

 

Referrals

0

 

1

 

1

 

Petitions for review

17

 

15

 

21

 

Legal Board of Appeal

25

 

19

 

15

 

Technical boards of appeal

2 137

100,0%

2 029

100,0%

1 875

100,0%

Examination procedure (ex parte)

1 013

47,4%

969

47,8%

864

46,0%

Opposition procedure (inter partes)

1 124

52,6%

1 058

52,1%

1 010

53,9%

Total protests

0

0,0%

2

0,1%

1

0,1%

Mechanics

651

30,5%

607

29,9%

627

33,5%

Examination procedure

177

 

178

 

170

 

Opposition procedure

474

 

429

 

457

 

Protests

0

 

0

 

0

 

Chemistry

720

33,7%

724

35,7%

629

33,5%

Examination procedure

226

 

223

 

203

 

Opposition procedure

494

 

499

 

425

 

Protests

0

 

2

 

1

 

Physics

242

11,3%

197

9,7%

202

10,8%

Examination procedure

180

 

152

 

143

 

Opposition procedure

62

 

45

 

59

 

Protests

0

 

0

 

0

 

Electricity

524

24,5%

501

24,7%

417

22,2%

Examination procedure

430

 

416

 

348

 

Opposition procedure

94

 

85

 

69

 

Protests

0

 

0

 

0

 

Disciplinary Board of Appeal

8

 

7

 

12

 

Total

2 187

 

2 071

 

1 924

 

 

 

Pending

 

31.12.2013

31.12.2012

Enlarged Board of Appeal

28

 

22

 

Referrals

5

 

3

 

Petitions for review

23

 

19

 

Legal Board of Appeal

30

 

31

 

Technical boards of appeal

7 706

100,0%

7 328

100,0%

Examination procedure (ex parte)

3 950

51,3%

3 763

51,4%

Opposition procedure (inter partes)

3 756

48,7%

3 565

48,6%

Total protests

0

0,0%

0

0,0%

Mechanics

1 933

25,1%

1 818

24,8%

Examination procedure

384

 

382

 

Opposition procedure

1 549

 

1 436

 

Protests

0

 

0

 

Chemistry

2 317

30,1%

2 250

30,7%

Examination procedure

701

 

688

 

Opposition procedure

1 616

 

1 562

 

Protests

0

 

0

 

Physics

1 016

13,2%

992

13,5%

Examination procedure

802

 

784

 

Opposition procedure

214

 

208

 

Protests

0

 

0

 

Electricity

2 440

31,6%

2 268

31,0%

Examination procedure

2 063

 

1 909

 

Opposition procedure

377

 

359

 

Protests

0

 

0

 

Disciplinary Board of Appeal

11

 

10

 

Total

7 775

 

7 391

 

 

New cases 2013

 

 

New cases 2012

 

 

Settled cases 2013

 

 

Settled cases 2012

 

 

Appeals pending 31.12.2013

 

 

Appeals pending 31.12.2012

 

 

2.2 Situation of the boards of appeal in the last five years

For statistics on the appeal procedures by case in the last five years, see the table below.

 

 

New cases

Settled

 

2013

2012

2011

2010

2009

2013

2012

2011

2010

2009

Legal Board of Appeal

23

25

16

29

20

25

19

15

23

21

Technical boards of appeal

2 515

2 602

2 658

2 545

2 484

2 137

2 029

1 875

1 962

1 918

Enlarged Board of Appeal

 

 

 

 

 

 

 

 

 

 

Referrals

2

2

1

2

1

0

1

1

7

0

Petitions for review

21

19

21

23

21

17

15

21

21

16

Disciplinary Board of Appeal

9

11

11

6

17

8

7

12

16

24

 

3. More about the boards' activities

3.1 Proceedings before the Enlarged Board of Appeal

3.1.1 Referrals to the Enlarged Board of Appeal under Article 112 EPC

There were two new referrals in 2012 and two in 2013 (2011: 1). Since February 2014, there have been two new referrals to the Enlarged Board of Appeal. During the period 2012 to 2013 one decision was issued (2011: 1).

The latest decision of the Enlarged Board of Appeal was handed down in March 2014 (G 1/11). It held that a technical board of appeal was competent to hear an appeal against an EPO examining division's decision – taken separately from its decision granting a patent or refusing the application – not to refund search fees under R. 64(2) EPC.

In July 2012, the Enlarged Board of Appeal took its decision in the case G 1/10. It was concerned with the procedural issue of whether the patent proprietor's request for correction of the grant decision under R. 140 EPC, which was filed after the initiation of opposition proceedings, was an admissible remedy on which only the examining division has the power to take a binding decision.

The Enlarged Board of Appeal answered that, since R. 140 EPC is not available to correct the text of a patent, a patent proprietor's request for such a correction is inadmissible whenever made, including after the initiation of opposition proceedings.

The Enlarged Board's decision is limited to corrections within grant decisions of the description, claims and drawings (patent documents), but is not concerned with corrections to bibliographic data. Therefore, the Enlarged Board concluded that R. 140 EPC is not available for correcting patents, including during opposition or limitation proceedings. However, it is always open to a patent proprietor to seek to amend his patent during opposition or limitation proceedings and such an amendment could remove a perceived error. Such an amendment would have to satisfy all the legal requirements for amendments including those of Art. 123 EPC.

At the date of publication, seven referrals were pending before the Enlarged Board of Appeal.

G 1/12 concerns the following procedural issue: when a notice of appeal, in compliance with R. 99(1)(a) EPC, contains the name and the address of the appellant as provided in R. 41(2)(c) EPC and it is alleged that the identification is wrong due to an error, the true intention having been to file on behalf of the legal person which should have filed the appeal, is a request for substituting this other legal or natural person admissible as a remedy to "deficiencies" provided by R. 101(2) EPC?

G 1/13 concerns the issue of party status, in particular whether the EPO must recognise the retroactive effect of a provision of national law restoring a company which had been dissolved to the register of companies.

G 2/13, also referred to as "Broccoli II", concerns similar issues to those referred to in case G 2/12 ("Tomato II"), namely whether the exclusion of essentially biological processes for the production of plants in Art. 53(b) EPC can have a negative effect on the allowability of a product claim directed to plants or plant material. Two of the questions referred involve new aspects. These two cases G 2/12 and G 2/13 have been consolidated.

G 1/14 poses the question: If, after expiry of the time limit under Article 108, first sentence, EPC a notice of appeal is filed and the fee for appeal is paid, is the appeal inadmissible or is it deemed not to have been filed?

G 2/14 puts the following closely related question: Where a notice of appeal is filed but the appeal fee is paid after expiry of the time limit of Art. 108, first sentence, EPC is this appeal inadmissible or deemed not to have been filed?

G 3/14 poses the following questions:

1. Is the term "amendments" as used in decision G 9/91 of the Enlarged Board of Appeal (see point 3.2.1) to be understood as encompassing a literal insertion of (a) elements of dependent claims as granted and/or (b) complete dependent claims as granted into an independent claim, so that opposition divisions and boards of appeal are required by Article 101(3) EPC always to examine the clarity of independent claims thus amended during the proceedings?

2. If the Enlarged Board of Appeal answers Question 1 in the affirmative, is then an examination of the clarity of the independent claim in such cases limited to the inserted features or may it extend to features already contained in the unamended independent claim?

3. If the Enlarged Board answers Question 1 in the negative, is then an examination of the clarity of independent claims thus amended always excluded?

4. If the Enlarged Board comes to the conclusion that an examination of the clarity of independent claims thus amended is neither always required nor always excluded, what then are the conditions to be applied in deciding whether an examination of clarity comes into question in a given case?

3.1.2 Petition for review under Article 112a EPC

Art. 112a EPC allows parties adversely affected by a decision of the boards of appeal to file a petition for review by the Enlarged Board on the grounds that a fundamental procedural defect occurred in the appeal proceedings or that a criminal act may have had an impact on the decision.

In 2013, 17 petitions were settled (2012: 15) (2011: 21). At 31 December 2013, there were 23 petitions for review pending before the Enlarged Board of Appeal.

3.2 Outcome of proceedings before the technical boards of appeal

In 2013, 1 013 ex parte cases (2012: 969) were settled. 58.2% (2012: 59.4%) were settled after substantive legal review, i.e. not terminated through rejection as inadmissible, withdrawal of the appeal or application, or the like. The outcome of these 590 cases (2012: 576) was as follows:

 

Ex parte cases

2013

2012

Ex parte cases settled after substantive legal review

590

576

Appeal dismissed

302

51,2%

304

52,8%

Appeal successful in whole or in part

288

48,8%

272

47,2%

Grant of patent

149

25,2%

150

26,0%

Resumption of examination proceedings

139

23,6%

122

21,2%

 

Ex parte cases settled after substantive legal review

2013

 

2012

 

In 2013, 1 124 inter partes cases were settled (2012: 1 058). 66.5% (2012: 70.4%) were settled after substantive legal review, i.e. not terminated through rejection as inadmissible, withdrawal of the appeal or application, or the like. The outcome of these 747 cases (2012: 745) was as follows (no distinction is drawn between appeals by patentees and appeals by opponents; furthermore, for the number of cases referred to below no account is taken of the number of parties who have filed an appeal):

 

Inter partes cases

2013

2012

Inter partes cases settled after substantive legal review

747

745

Appeal successful in whole or in part

321

43,0%

276

37,0%

Appeal dismissed

426

57,0%

469

63,0%

Maintenance of patent as granted

19

2,5%

22

3,0%

Maintenance of patent in amended form

150

20,1%

161

21,6%

Revocation of patent

191

25,6%

200

26,9%

Resumption of opposition proceedings

66

8,8%

86

11,5%

 

Inter partes cases settled after substantive legal review

2013

 

2012

 

 

3.3 Proceedings before the Disciplinary Board of Appeal

 

Proceedings before the Disciplinary Board

2013

2012

New cases

9

11

re European qualifying examination

8

11

re professional representatives' code of conduct

1

0

Cases settled

8

7

re European qualifying examination

8

7

re professional representatives' code of conduct

0

0

Cases pending

11

10

re European qualifying examination

10

10

re professional representatives' code of conduct

1

0

 

3.4 Length of proceedings

 

Length of technical proceedings

2013

2012

Average length (months)

32

31

Ex parte

33

32

Inter partes

30

30

 

The number of cases pending for over two years at the end of the year under review (31.12.2012 and 31.12.2013) – i.e. filed in 2011 or earlier – is as follows:

 

Number of cases pending for over two years

2013

2012

2005

1

1

2006

2

4

2007

0

13

2008

30

176

2009

357

892

2010

1 094

1 653

2011

1 803

 

Total

3 287

2 739

 

3.5 Breakdown by language of the proceedings

 

Breakdown by language of the proceedings

 

 

Total

English

German

French

Appeals filed before the technical boards in 2013

2 515

73,4%

22,1%

4,5%

Oral proceedings held in 2013

1 177

70,1%

24,1%

5,8%

 

Breakdown by language of the proceedings

 

 

Total

English

German

French

Appeals filed before the technical boards in 2012

2 602

73,1%

22,5%

4,4%

Oral proceedings held in 2012

1 188

68,7%

24,5%

6,8%

 

4. Contacts with national courts, applicants and representatives

The annual MSBA meeting between members of the boards of appeal and SACEPO representatives was held on 8 November 2013 (2012: on 3 December 2012).

The boards of appeal received a number of high-level visitors from contracting and non-contracting states. Representatives of DG 3 also participated as expert speakers in seminars and conferences organised by the European Patent Academy and other EPO departments.

The third conference "EPO boards of appeal and key decisions" took place at the EPO headquarters in Munich on 22 and 23 October 2013. A large number of participants gathered to attend the conference, organised by the European Patent Academy, on the case law of the boards of appeal and recent developments. This major event involved professional representatives, judges, staff of national IP offices and corporate professionals originating from all continents. Within three years, the number of participants has grown from approx. 100 in 2011 to 240 in 2013.

5. Developments in DG 3

A Notice from the Vice-President Directorate-General 3 dated 10 February 2014 concerning the use of portable computers or other electronic devices in oral proceedings before the boards of appeal was published in the February 2014 issue of the Official Journal (OJ EPO 2014, A21). According to the Notice of VP 3, in order to clarify the practice of the boards of appeal on the use of portable computers and other electronic devices in hearing rooms, it was decided to inform all parties to oral proceedings and their representatives that they are allowed to have with them and to use portable computers such as laptops, tablets or other electronic devices, provided that their use does not create any nuisance or disturbance.

A scheme allowing DG 1 examiners to be allocated to technical boards of appeal as an assistant for a period of two years was launched in DG 3. This scheme is believed to be beneficial both for DG 1 and the boards of appeal.

6. Number of staff and distribution of responsibilities

On 31 December 2013, there were 166 chairmen and members of the boards of appeal (2012: 159). The 110 technically qualified (2012: 101) and 27 legally qualified members (2012: 30) were divided amongst 28 technical and one legal board.

 

Number of staff

2013

2012

2011

Chairmen and members of the boards of appeal

166

159

157

  Technically qualified members

110

101

101

  Legally qualified members

27

30

28

 

The composition of each board is published in the EPO Official Journal (supplementary publication 1, OJ EPO, R. 12(4) EPC). Amendments to the business distribution scheme are published on the EPO's website.

The total number of DG 3 staff was 229 on 31 December 2013 (224 on 31 December 2012).

 

Number of staff

2013

2012

2011

Total number of DG 3 staff

229

224

224

 

7. Information on recent board of appeal case law

DG 3's efforts to develop information tools to provide information on board of appeal case law to the public are continuing. All the decisions handed down since 1979 are available free of charge on the EPO's website (www.epo.org). There are now extended search functions such as the possibility of looking up the most recently available decisions or limiting the search to a specific board. The decisions are also available on the ESPACE® LEGAL DVD, which is published twice a year.

The seventh edition of the "Case Law of the Boards of Appeal of the European Patent Office", a comprehensive overview of all the case law of the boards of appeal in the three languages, was published in September 2013. It incorporates decisions written by the end of 2012 and also takes account of a number of important decisions issued at the beginning of 2013. For this edition, the chapters' internal structure was revised or refined and, where appropriate, introductions summarising the most important decisions were added.

"Information from DG 3 Appeals", a collection comprising the rules of procedure of the boards of appeal and other texts of importance for appeal proceedings, was published as a supplementary publication 1, OJ EPO 2014.

These DG 3 publications are available from the EPO sub-office in Vienna.

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