Annual report of the boards of appeal of the European Patent Office 2016

Online publication date: 24.2.2017

ANNUAL REPORT OF THE BOARDS OF APPEAL OF THE EPO 2016

1. Introduction

For statistics on the appeal procedure in 2016, see the tables in Section 2 below, together with the further information given in Section 3. General developments in the boards of appeal, and the information products available, are described in Sections 4 to 6.

2. Statistics

2.1 General statistics

For statistics on the appeal procedure by case in 2016 (cases in 2015 are also included), see the tables and charts below.

New cases

2016

 

2015

 

2014

 

Enlarged Board of Appeal
9

 

9

 

21

 

Referrals

 

 

3

 

Petitions for review

 

 

18

 

Legal Board of Appeal
19

 

12

 

22

 

Technical boards of appeal
2 748
100,0%
2 387
100,0%
2 353
100,0%
Examination procedure (ex parte)
934
34,0%
864
36,2%
996
42,3%
Opposition procedure (inter partes)
1 814
66,0%
1 523
63,8%
1 357
57,7%
Mechanics
1 011
36,8%
818
34,3%
728
30,9%
Examination procedure
144 

 

126 

 

122

 

Opposition procedure
867 

 

692 

 

606

 

Chemistry
902
32,8%
768
32,2%
716
30,4%
Examination procedure
208 

 

154 

 

179

 

Opposition procedure
694 

 

614 

 

537

 

Physics
257
9,4%
254
10,6%
253
10,8%
Examination procedure
161 

 

161 

 

162

 

Opposition procedure
96 

 

93 

 

91

 

Electricity
578
21,0%
547
22,9%
656
27,9%
Examination procedure
421 

 

423 

 

533

 

Opposition procedure
157 

 

124 

 

123

 

Disciplinary Board of Appeal
25

 

9

 

13

 

Total

2 801

 

2 417

 

2 409

 

 

Settled

2016

 

2015

 

2014

 

Enlarged Board of Appeal
18

 

14

 

21

 

Referrals

 

 

4

 

Petitions for review
18 

 

10 

 

17

 

Legal Board of Appeal
18

 

27

 

22

 

Technical boards of appeal
2 229
100,0%
2 287
100,0%
2 300
100,0%
Examination procedure (ex parte)
975
43,7%
1 085
47,4%
1 110
48,3%
Opposition procedure (inter partes)
 1 254
56,3%
1 202
52,6%
1 190
51,7%
Mechanics
678
30,4%
678
29,6%
656
28,5%
Examination procedure
124 

 

167 

 

169

 

Opposition procedure
554 

 

511 

 

487

 

Chemistry
723
32,5%
759
33,2%
779
33,9%
Examination procedure
209 

 

220 

 

234

 

Opposition procedure
514 

 

539 

 

545

 

Physics
243
10,9%
258
11,3%
276
12,0%
Examination procedure
178 

 

211 

 

214

 

Opposition procedure
65 

 

47 

 

62

 

Electricity
585
26,2%
592
25,9%
589
25,6%
Examination procedure
464 

 

487 

 

493

 

Opposition procedure
121 

 

105 

 

96

 

Disciplinary Board of Appeal
25

 

7

 

7

 

Total

2 290

 

2 335

 

2 350

 

 

Pending

31.12.2016

31.12.2015

Enlarged Board of Appeal
14

 

23

 

Referrals

 

 

Petitions for review
12 

 

22 

 

Legal Board of Appeal
14

 

13

 

Technical boards of appeal
8 381
100,0%
7 862
100,0%
Examination procedure (ex parte)
3 577
42,7%
3 618
46,0%
Opposition procedure (inter partes)
4 804
57,3%
4 244
54,0%
Mechanics
2 462
29,4%
2 133
27,1%
Examination procedure
312 

 

293 

 

Opposition procedure
2 150 

 

1 840 

 

Chemistry
2 458
29,3%
2 273
28,9%
Examination procedure
585 

 

584 

 

Opposition procedure
1 873 

 

1 689 

 

Physics
1 006
12,0%
992
12,6%
Examination procedure
684 

 

701 

 

Opposition procedure
322 

 

291 

 

Electricity
2 455
29,3%
2 464
31,4%
Examination procedure
1 996 

 

2 040 

 

Opposition procedure
459 

 

424 

 

Disciplinary Board of Appeal
9

 

9

 

Total

8 418

 

7 907

 

New cases 2016

 

 

 

 

Settled cases 2016

 

 

 

 

Appeals pending 31.12.2016

 

 

 

 

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

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

New cases

2016

2015

2014

2013

2012

Legal Board of Appeal

19

12

22

23

25

Technical boards of appeal

2 748

2 387

2 353

2 515

2 602

Enlarged Board of Appeal

9

9

21

23

21

Referrals

1

1

3

2

2

Petitions for review

8

8

18

21

19

Disciplinary Board of Appeal

25

9

13

9

11

 

Settled

2016

2015

2014

2013

2012

Legal Board of Appeal

18

27

22

25

19

Technical boards of appeal

2 229

2 287

2 300

2 137

2 029

Enlarged Board of Appeal

18

14

21

17

16

Referrals

0

4

4

0

1

Petitions for review

18

10

17

17

15

Disciplinary Board of Appeal

25

7

7

8

7

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 was one new referral in 2016 and one decision was issued.

In G 1/15 the Enlarged Board stated that under the EPC, entitlement to partial priority could not be refused for a claim encompassing alternative subject-matter by virtue of one or more generic expressions or otherwise (generic "OR"-claim) provided that said alternative subject-matter had been disclosed for the first time, directly, or at least implicitly, unambiguously and in an enabling manner in the priority document. No other substantive conditions or limitations applied in this respect.

In 2016, one referral was pending before the Enlarged Board of Appeal.

In accordance with Article 112(1)(a) EPC, Technical Board of Appeal 3.3.09 has referred the following points of law to the Enlarged Board of Appeal by interlocutory decision of 17 October 2016 in case T 437/14:

1. Is the standard referred to in G 2/10 for the allowability of disclosed disclaimers under Article 123(2) EPC, i.e. whether the skilled person would, using common general knowledge, regard the subject-matter remaining in the claim after the introduction of the disclaimer as explicitly or implicitly, but directly and unambiguously, disclosed in the application as filed, also to be applied to claims containing undisclosed disclaimers?

2. If the answer to the first question is yes, is G 1/03 set aside as regards the exceptions relating to undisclosed disclaimers defined in its answer 2.1?

3. If the answer to the second question is no, i.e. if the exceptions relating to undisclosed disclaimers defined in answer 2.1 of G 1/03 apply in addition to the standard referred to in G 2/10, may this standard be modified in view of these exceptions?

This referral is pending as G 1/16.

3.1.2 Petitions for review under Article 112a EPC

Article 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 2016, 18 petitions were settled (2015: 10). At 31 December 2016, there were 12 petitions for review pending before the Enlarged Board of Appeals.

In R 2/14 the Enlarged Board noted that the board's decisive line of argument had concerned the aspect of modifying the inactive SEQ ID NO: 4 by means of recloning the desaturase, starting from E. gracilis. The reasons given by the board were limited in so far as, after establishing the need for recloning, it had immediately stated its conclusion that, although the skilled person could in fact perform each of the necessary steps, combining those steps created an undue burden for him. The other two alternative approaches relied upon by the petitioner had not been discussed at all by the board; they had merely been referred to as suffering from the same negative conclusion as the recloning approach. The board had mentioned neither facts nor a sequence of arguments that had led it to its conclusion.

Therefore, the conclusion drawn by the board could not be understood and reproduced by the affected party. Due to a fundamental violation of Article 113 EPC, the Enlarged Board set the decision under review aside, reopened the proceedings and ordered reimbursement of the petition fee.

3.2 Outcome of proceedings before the technical boards of appeal

In 2016, 975 ex parte cases (2015: 1 085) were settled. 461 ex parte cases were settled with decision and the remaining 514 were settled without decision. In 221 of those cases, the appeal was withdrawn after a substantive communication by the board. 439 cases (45%) (2015: 49%) were settled after decision on the merits, i.e. not terminated through rejection as inadmissible, withdrawal of the appeal or application, or the like. The outcome of these 439 cases (2015: 537) was as follows:

Ex parte cases

2016

2015

Ex parte cases settled after decision on the merits

439

537

Appeal dismissed

240

54,7%

303

56,4%

Appeal successful in whole or in part

199

45,3%

234

43,6%

Grant of patent

111

25,3%

132

24,6%

Resumption of examination proceedings

88

20,0%

102

19,0%

Ex parte cases settled after decision on the merits

2016

 

 

In 2016, 1 254 inter partes cases were settled (2015: 1 202). 851 inter partes cases were settled with decision and the remaining 403 were settled without decision. In 107 of those cases, the appeal was withdrawn after a substantive communication by the board. 804 cases (64%) (2015: 69%) were settled after a decision on the merits, i.e. not terminated through rejection as inadmissible, withdrawal of the appeal or application, or the like. The outcome of the 804 cases settled after a decision on the merits (2015: 825) 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

2016

2015

Inter partes cases settled after a decision on the merits

804

825

Appeal dismissed

316

39,3%

351

42,5%

Appeal successful in whole or in part

488

60,7%

474

57,5%

Maintenance of patent as granted

32

4,0%

27

3,3%

Maintenance of patent in amended form

191

23,8%

205

24,8%

Revocation of patent

165

20,5%

164

19,9%

Resumption of opposition proceedings

100

12,4%

78

9,5%

Inter partes cases settled after substantive legal review

2016

 

 

3.3 Proceedings before the Disciplinary Board of Appeal

Proceedings before the Disciplinary Board

2016

2015

New cases

25

9

re European qualifying examination

25

9

re professional representatives' code of conduct

0

0

Cases settled

25

7

re European qualifying examination

25

7

re professional representatives' code of conduct

0

0

Cases pending

9

9

re European qualifying examination

9

9

re professional representatives' code of conduct

0

0

3.4 Length of proceedings

Length of technical proceedings

2016

2015

Average length (months)

37

36

Ex parte

40

38

Inter partes

34

34

The number of cases pending for over two years at the end of the year under review (31.12.2016) – i.e. filed in 2014 or earlier – is as follows:

Number of cases pending for over two years

2016

2015

2006

 

1

2007

 

0

2008

2

2

2009

6

14

2010

33

126

2011

245

679

2012

779

1 314

2013

1 226

1 650

2014

1 688

 

Total

3 979

3 786

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 2016

2 748

71,7%

23,9%

4,4%

Oral proceedings held in 2016

1 168

69,6%

25,0%

5,4%

4. Contacts with national courts, applicants and representatives

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

In June 2016 six national judges participated in a training programme at the EPO, which included a three-week internship with a board of appeal. This programme strengthens interaction between national judges and members of the boards of appeal.

In November 2016 the Academy's seminar for patent law practitioners entitled "EPO boards of appeal and key decisions 2016" was held in Munich. The case law of the boards was presented by staff of the boards of appeal and also commented on from the users' perspective. The event was booked to capacity, with about 280 practitioners attending.

5. Number of staff and distribution of responsibilities

On 1 January 2017, there were 149 chairmen and members of the boards of appeal (01.01.2016: 142). The 96 technically qualified (01.01.2016: 97) and 27 legally qualified members (01.01.2016: 23) were divided amongst 28 technical and one legal board.

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

The total number staff was 204 on 1 January 2017 (198 on 1 January 2016).

Number of staff

01.01.17

01.01.16

Vice-President

0

1

Chairmen of the boards of appeal

26

22

Technically qualified members

96

97

Legally qualified members

27

23

Assistants

0

0

Support staff

55

55

Total number of staff

204

198

6. Information on recent board of appeal case law

The boards of appeal'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 extended search functions such as the possibility of looking up the most recently available decisions or limiting the search to a specific board.

"Information from the Boards of Appeal", a collection comprising the rules of procedure of the boards of appeal and other texts of importance for appeal proceedings, was published as supplementary publication 1, OJ EPO 2017.

The 8th edition of "Case Law of the Boards of Appeal of the European Patent Office" was published in August 2016. This publication is available from the EPO sub-office in Vienna.

All publications of the boards of appeal are available free of charge on the Official Journal website (www.epo.org/official-journal).

 

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