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INFORMATION FROM THE EPO

Guidance for parties to appeal proceedings and their representatives¹

Preliminary remarks

These notes have been written to assist parties to appeal proceedings and their representatives in filing appeals under Articles 21 and 106 EPC and pursuing their rights in proceedings before the boards of appeal. They are intended to expedite the appeal procedure and take account of the relevant board of appeal case law.

Additional information is available from the following DG 3 (Appeals) publications:

• Regulations implementing the European Patent Convention - Selection - 1995
• Case law of the boards of appeal of the European Patent Office 1987-19922
• Annual EPO board of appeal case law reports (annual special edition of the Official Journal of the European Patent Office).

Queries should be addressed to the head of the Boards of Appeal Registry, European Patent Office, Erhardtstrasse 27, D-80331 Munich (Tel.: (+49-89) 2399-3910 or 3921; telex 523 656 epmu d; Fax: (+49-89) 2399-4465).

1. Filing an appeal

1.1 Admissibility

A board of appeal can only consider the merits of an appeal (see section 3) if it is admissible (see below). The board will not begin its examination until a reply to the appeal has been received or the deadline for replying (usually 4 months) has expired.

1.1.1 Decisions subject to appeal

The appeal must be against a decision of the Receiving Section, an examining division, an opposition division or the Legal Division (Art. 106(1), first sentence, EPC; see also G 1/90, OJ EPO 1991, 275). A decision is usually identified as such and, in accordance with Rule 68(2) EPC, indicates that an appeal is possible.

Interlocutory decisions which do not terminate proceedings as regards one of the parties can only be appealed if the decision allows separate appeal (Art. 106(3) EPC).

A mere communication, an interim communication issued in preparation for a decision, or a communication notifying a loss of rights under Rule 69(1) EPC, does not give rise to a right of appeal. Under Rule 69(2) EPC a decision by the EPO may be applied for in response to a communication notifying a loss of rights. Attention is drawn to the possibility of a re-establishment of rights and the deadline for filing the application under Article 122(2) EPC (see 1.5).

1.1.2 Entitlement to appeal

An appeal may only be lodged by a party to the proceedings in which the decision was given. The appellant must be adversely affected by the decision (Art. 107 EPC).

A party is adversely affected if the decision does not correspond to what the party had expressly requested. This is also the case, for example, where only the auxiliary request, but not the main request, was granted.

1.1.3 Other parties to the proceedings

Under Article 107, second sentence, EPC, any other parties to the proceedings who are not adversely affected by the contested decision or who have not lodged an appeal are also parties to the appeal proceedings as of right. They do not however have any independent right to continue the proceedings if, for example, the appeal is deemed not to have been filed because the appellant did not pay the appeal fee, if the appeal is inadmissible or if it is withdrawn (see G 2/91, OJ EPO 1992, 206). In such cases, only a party having lodged an the appeal may continue the proceedings.

Parties to the proceedings under Article 107, second sentence, EPC are asked by the Boards of Appeal Registry whether or not they wish to receive any further communications in connection with the appeal proceedings (EPO Form 3349). This declaration may be revoked at any time.

Third parties may intervene in appeal proceedings under Article 105 EPC as long as appeal proceedings are still pending (G 4/91, OJ EPO 1993, 707; G 1/94, OJ EPO 1994, 787).

1.1.4 Appeal period, appeal fee

The appeal must be lodged with the EPO in the form of a notice of appeal (see 1.1.9) within two months of the date of notification3 of the decision appealed from (Art. 108, first sentence, EPC). The time limit cannot be extended. The decisive date in assessing whether the time limit has been adhered to is the date of receipt of the notice of appeal by the EPO.

The notice of appeal is not deemed to have been filed until after the appeal fee4 has been paid within the two-month appeal period (Art. 108, second sentence, EPC). Payment can be made by any of the methods described in Article 5 of the Rules relating to Fees (RFees). The date of payment is determined by Article 8 RFees.

Appellants from contracting states having a language other than English, French or German as an official language, and nationals of these states who are resident abroad (Art. 14(2), first sentence, EPC) are entitled to a reduction in the appeal fee of 20% if they file at least the notice of appeal - the essential document at the first stage in appeal proceedings - in that language (R. 6(3) EPC in conjunction with Art. 12(1) RFees). This reduction may however only be claimed if the translation required under Article 14(4), second sentence, and Rule 6(2) EPC is filed no earlier than simultaneously with the notice of appeal itself (see G 6/91, OJ EPO 1992, 491). A reduction in the filing fee under Rule 6(1) EPC does not automatically result in a reduction in the examination or appeal fee (G 6/91 op. cit.).

1.1.5 Reimbursement of appeal fees

The appeal fee is reimbursed under Rule 67 EPC if the appeal is deemed allowable, there has been a substantial procedural violation and reimbursement is equitable.

The appeal fee is also refunded if it was paid with no legal basis, such as when the appeal is deemed not to have been filed for legal reasons (Art. 108, second sentence, EPC: late payment of the appeal fee; Art. 14(5) EPC: documents not filed in an EPC official language in due time; R. 101(4) EPC: authorisation not filed in due time).

The appeal fee is not refundable if the appeal, although validly filed, is inadmissible, unsubstantiated or subsequently withdrawn.

If an appeal is lodged by several parties to the proceedings at first instance, the appeal fee is not refunded simply because another party has filed an appeal and paid the fee. Each appellant must pay an appeal fee (G 2/91, OJ EPO 1992, 206).

1.1.6 Form of the appeal

Article 108 EPC requires that the notice of appeal and the statement of grounds of appeal be filed in writing. They may also be filed by telex, telegram or fax (see R. 36(5) EPC). The Boards of Appeal Registry will request written confirmation if the quality of the document filed is deficient. Details on supplying written confirmation and on other matters relating to the use of technical means of communication for filing documents (eg signing of documents and establishing the date of receipt) are set out in the decisions of the President of the European Patent Office dated 26 May 1992 (OJ EPO 1992, 299) and 2 June 1992 (OJ EPO 1992, 306).

See Rule 36(4) EPC concerning the filing of additional copies of documents.

1.1.7 Language

An appeal may be filed in any official language of the EPO (English, French, German) (Rule 1(1), first sentence, EPC).

Appellants from contracting states in which a language other than English, French or German is the official language, and nationals of these states resident abroad (Art. 14(2), first sentence, EPC) may file the appeal in an official language of that state (Art. 14(2) EPC). The translation required under Article 14(4) EPC may be filed in any official language of the EPO.

The one-month time limit for filing the translation may be extended to the end of the appeal period (R. 6(2) EPC). If the translation is not filed in due time, under Article 14(5) EPC the notice of appeal is deemed not to have been filed, in which case the appeal fee is refunded.

Documents intended for use as evidence before the EPO - in particular publications - may be filed in any language. The EPO may however require that a translation be filed, within a given time limit of not less than one month, in one of the EPO's official languages (R. 1(3) EPC).

1.1.8 Filing office, registration

In order to expedite the procedure it is recommended that appeals be sent to the filing office at the European Patent Office's main building in Munich (point 2.2 of the Notice of the President of the European Patent Office dated 2 June 1992, OJ EPO 1992, 306)5. Attention is also drawn to the possibility of using the automatic night letter-box.6

The Boards of Appeal Registry gives each appeal a separate reference number which is to be used in all correspondence with the board of appeal and the Registry throughout the appeal proceedings.

1.1.9 Content of the notice of appeal

The content of the notice of appeal referred to in Article 108, first sentence, EPC is laid down in Rule 64 EPC. The notice of appeal must contain the name and address of the appellant in accordance with the provisions of Rule 26(2)(c) EPC and a statement sufficiently identifying the decision contested and the extent to which it is contested.

1.2 Statement of grounds of appeal

An appeal cannot be considered on its merits until the statement of grounds is received.

A statement of grounds of appeal must be filed in writing within four months after the date of notification of the decision appealed from (Art. 108, third sentence, EPC). The statement of grounds may also be filed by telex, telegram or fax (see 1.1.6). If the statement of grounds of appeal is not filed in due time and the requirements for re-establishment of rights have not been met (see 1.5), the appeal must be rejected as inadmissible. The appeal fee is not then refunded (see 1.1.5).

1.2.1 Content of the statement of grounds

The statement of grounds must indicate the points of law and of fact on which the contested decision should be set aside or the appeal allowed. Its content should not be restricted simply to stating that the contested decision is incorrect. It is not therefore sufficient merely to re-state points made during proceedings before the department of first instance. Appellants should always state what in their view are the issues in dispute and give sufficient grounds for their view.

The statement of grounds should be a succinct but full statement of the appellant's arguments. Ideally it should follow a logical sequence - for example, with numbered paragraphs, each dealing with a separate issue, and with underlined sub-headings, etc. Passages which are necessarily lengthy should be concluded with a brief summary.

1.2.2 New submissions

If any allegations of fact or law are being made that were not argued in the previous proceedings, this should be made clear. Since it lies within the board of appeal's discretion whether or not to admit late-filed facts and evidence into the proceedings, the appellant should indicate why the new submission was not filed earlier. New grounds for opposition cannot as a matter of principle be submitted at the appeal stage (see 3.1.2).

1.2.3 Quotations and references

Reference may be made to the decision appealed against, the European Patent Convention, the Implementing Regulations, the Rules of Procedure of the Boards of Appeal, the Guidelines for Examination, the patent application in suit or any other document contained in the file of the case. References should only be cited in detail to the extent that this is necessary to the development of the argument.

If reference is made to international treaties (other than the European Patent Convention, the Patent Cooperation Treaty and the Paris Convention), national law (other than the patent laws of the contracting states) or the judgment of any national or international court, a complete copy of the treaty, law or judgment in question should be provided unless the board of appeal concerned agrees that extracts will be sufficient.

1.2.4 Submission of documents, samples, models, etc.

The purpose of introducing any new documents into the proceedings should be stated briefly and a legible copy of each such document should be appended to the statement of grounds and identified as an appendix. No copies need be supplied of European patent applications or European patent specifications. Similarly, graphs, diagrams, photographs, tables of figures and the like should not be incorporated into the text but placed in an appendix. Where handwritten documents are submitted, they should be accompanied by typewritten copies.

Any party wishing to submit objects such as models, samples or documents that cannot conveniently be placed in an appendix should consult the Registry about how best they should be submitted.

1.3 Correction of errors

If, after filing a notice of appeal or statement of grounds, the appellant notices errors in them within the meaning of Rule 88 EPC, the Registry should be informed without delay.

If the appeal does not comply with Articles 106 to 108, Rule 1(1) or Rule 64(b) EPC, the error may only be corrected within the period for appeal or the period for filing the statement of grounds under Article 108 EPC (R. 65(1) EPC).

If the appellant's name and address have not been given correctly, a time limit is set for correcting this error.

1.4 Interlocutory revision

Under Article 109 EPC interlocutory revision of an appeal is conducted by the department which issued the contested decision. If this department does not allow the appeal, it is remitted to the board of appeal without delay and without comment as to its merit (Art. 109(2) EPC).

1.5 Binding time limits, re-establishment of rights

The time limits for filing the notice of appeal, paying the appeal fee and filing the statement of grounds may not be extended. Under the conditions laid down in Article 122 EPC, however, the applicant or proprietor of a European patent who, in spite of all due care required by the circumstances having been taken, was unable to observe a time limit, may apply for a re-establishment of rights (restitutio in integrum). The opponent may not apply for re-establishment of rights with respect to the two-month appeal period, but re-establishment under Article 122 EPC is possible where the opponent has failed to observe the four-month time limit for filing the statement of grounds of appeal (G 1/86, OJ EPO 1987, 447).

2. Withdrawal of the appeal

An appeal may be withdrawn at any time while appeal proceedings are pending. The appeal fee is not refunded, even where the appeal is withdrawn after the notice of appeal has been correctly filed and the appeal fee paid in due time, but before the statement of grounds has been filed.

If an appeal is filed by only one party and that party withdraws the appeal, the proceedings are terminated in so far as they relate to the substantive issues settled by the contested decision at first instance (see G 8/91, OJ EPO 1993, 346, 478). The decision of the department of first instance accordingly becomes final.

Where several parties have filed an appeal, proceedings are only terminated by all appeals being withdrawn. Where this is not the case, appeal proceedings continue with the remaining appeals (see G 2/91, OJ EPO 1992, 206).

2.1 Withdrawal of the opposition by the appellant

The filing by an opponent, who is sole appellant, of a statement withdrawing the opposition immediately and automatically terminates the appeal proceedings, because the withdrawal of the opposition is also a withdrawal of the appeal (see G 8/93, OJ EPO 1994, 887). This renders the decision of the opposition division final.

2.2 Withdrawal of the opposition by the respondent

Where the patent proprietor is the appellant and the opposition is withdrawn by the respondent during appeal proceedings, the appeal proceedings continue without the opponent/respondent. However, the status of the opponent/respondent as a party to proceedings with regard to the awarding of costs under Article 104 EPC remains unaffected.

3. Examination of the appeal

3.1 Scope of examination

As a judicial procedure, appeal proceedings differ significantly from examination and opposition proceedings (see G 7/91 and G 8/91, OJ EPO 1993, 346, 356, 478). The procedure before the boards of appeal offers an opportunity to examine the contested decision of the department of first instance within the scope of the parties' request and offers the appellant the possibility of recourse to a further instance competent to rule on the facts of the case.

3.1.1 Ex parte proceedings

In ex parte appeal proceedings the board of appeal is restricted neither to examination of the grounds for the contested decision of the examining division nor to the facts and evidence on which this decision was based. The board incorporates into the proceedings patentability requirements which the examining division did not take into consideration or held to have been met but which the board has reason to believe may not have been met (G 10/93, OJ EPO 1995, 172).

3.1.2 Opposition appeal proceedings (inter partes proceedings)

In opposition appeal proceedings the board of appeal's examination of the contested decision is in principle restricted to the extent to which the European patent is opposed pursuant to Rule 55(c) EPC. However, claims dependent on a claim which has not been allowed may be examined, even if they have not been explicitly opposed, provided their validity is prima facie in doubt on the basis of information already available (G 9/91, OJ EPO 1993, 408).

Grounds for opposition referred to in Article 100 EPC which have not been properly submitted during opposition proceedings in accordance with Article 99(1) in conjunction with Rule 55(c) EPC are not as a rule considered in opposition appeal proceedings. The position is somewhat different however if the patent proprietor agrees to this and the ground in question is considered by the board to be prima facie highly relevant (G 9/91 and G 10/91, OJ EPO 1993, 408, 420).

3.1.3 Prohibition of reformatio in peius

If the patent proprietor is the sole appellant, neither the opponent after expiry of the period for appeal nor the board of appeal may challenge the version of the patent as approved by the opposition division (G 9/92 and G 4/93, OJ EPO 1994, 875).

If the opponent is the sole appellant against an interlocutory decision maintaining a patent in amended form, the patent proprietor is primarily restricted to defending the patent in the form in which it was maintained by the opposition division. Amendments proposed by the patent proprietor as a party to the proceedings under Article 107, second sentence, EPC, may be rejected by the board if they are neither appropriate nor necessary. Amendments may well be considered appropriate if they have arisen from the appeal (G 9/92 and G 4/93, OJ EPO 1994, 875).

3.2 Written procedure

The appeal procedure is primarily a written procedure. Parties should therefore always develop their arguments in writing and not reserve them for a possible oral hearing. After the statement of grounds and any observations by the other parties have been received the board of appeal will give any necessary directions for the parties to present further arguments.

3.3 Submission of amendments, auxiliary requests

The submission of amendments to the description, claims or drawings of a patent application or patent is regulated by Article 123 EPC in general terms, Rules 51 and 86 EPC for the examination procedure and Rules 57 and 57a EPC for the opposition procedure.

A party wishing to submit amendments to the patent documents in appeal proceedings should do so as early as possible. It should be borne in mind that the board concerned may disregard amendments which are submitted after a time limit set by the board has expired or are not submitted in good time prior to oral proceedings (as a rule four weeks before the date set for the oral proceedings).

Auxiliary requests should be filed as early as possible.

3.4 Evidence

Evidence should, wherever possible, already have been made available to the department of first instance. While evidence may still be introduced at the appeal stage, the board may disregard evidence not submitted in due time (Art. 114(2) EPC).

If evidence is not submitted until the appeal proceedings, it should indicate the facts it is intended to elucidate and state the name and exact address of witnesses.

If the evidence is not in documentary form, the board should be notified of the nature of the evidence and the board's directions sought before it is submitted.

3.5 Oral proceedings

3.5.1 Reaching the decision-making stage

Oral proceedings concentrate on the essential points of the appeal. The case should be ready for decision at the close of oral proceedings. The parties involved and their representatives should therefore be prepared to deal with any problems that may arise during the hearing (see Art. 11(3) Rules of Procedure of the Boards of Appeal).

3.5.2 Fixing a date for oral proceedings

Requests for oral proceedings should be submitted as early as possible. Parties requesting oral proceedings to consider individual points only (eg admissibility of the appeal) should make this clear when filing the request. A request for oral proceedings made before the department of first instance does not also apply to appeal proceedings. A separate request must therefore be made if a party desires oral proceedings before the board of appeal.

The procedure for fixing a date for oral proceedings is set out in the Notice of the Vice-Presidents Directorates-General 2 and 3 dated 14 February 1989 (OJ EPO 1989, 132).

Parties invited to attend oral proceedings must inform the European Patent Office as early as possible if they are unable to attend, regardless of whether they themselves requested oral proceedings or not. Failure to provide timely notification can justify the awarding of costs under Article 104 EPC to the party attending the proceedings.

3.5.3 Simultaneous interpreting

If a language other than the language of proceedings is to be used at oral proceedings, the Registry must be informed at least one month before the date set for oral proceedings, if the party concerned is not making provision for interpreting into the language of proceedings (R. 2(1), first sentence, EPC). In proceedings before the boards of appeal this obligation to give notice also applies if the party concerned has already lawfully used an alternative language to that of the proceedings in oral proceedings before the department of first instance (Communication from the Vice-President Directorate-General 3 of the European Patent Office dated 19 May 1995, OJ EPO 1995, 489).

3.5.4 Notice of summons, acknowledgment of receipt

The period for issuing the summons to oral proceedings is at least two months unless the parties agree to a shorter period (R. 71 EPC).

The summons to oral proceedings is sent with an advice of delivery and accompanied by an acknowledgment of receipt (EPO Form 2936). This should be returned to the Registry without delay in order to ensure that oral proceedings can be held on the date fixed (see Notice in OJ EPO 1991, 577).

3.5.5 Submission of information and documents

The parties should provide all relevant information and documents in good time, ie at the latest one month before the hearing (see Art. 11(1) Rules of Procedure of the Boards of Appeal).

If the board concerned considers it unnecessary to pursue certain lines of argument or deal with certain aspects of a case, it will, whenever possible, advise the parties to that effect in advance of the hearing, or, at the latest, at the commencement of the hearing (Art. 11(2) Rules of Procedure of the Boards of Appeal).

3.5.6 Conduct of the oral proceedings

Arguments presented at oral proceedings should be succinct and limited to the points at issue or those raised by the board.

It is within the board's discretionary powers to decide whether or not to disregard new facts or evidence which could have been submitted in good time prior to oral proceedings (Art. 114(2) EPC). If a party has been duly summoned but fails to appear, the decision issued may not be based on facts put forward for the first time during those oral proceedings. In these circumstances new evidence may not be considered unless it has been previously notified and it merely supports the assertions of the party who submits it. New arguments, on the other hand, may in principle be used to support the reasons for the decision (G 4/92, OJ EPO 1994, 149).

3.5.7 Sound recording devices

At oral proceedings before a board of appeal only EPO employees may bring any kind of sound recording device into the hearing room (see Notice of the Vice-Presidents Directorates-General 2 and 3 dated 25 February 1986, OJ EPO 1986, 63).

3.6 Representation

If a party to appeal proceedings is represented, the representative must meet the requirements of Article 134 EPC.

Professional representatives within the meaning of Article 134 EPC need only file an authorisation in certain circumstances7, in particular if there is a change of representative and the EPO is not notified of the previous representative's authorisation having terminated.

The Boards of Appeal Registry must be notified of any change of representative as early as possible and the relevant documents must be submitted.