Pages 419-430

BOARDS OF APPEAL

Guidance for parties to appeal proceedings and their representatives¹

(edited by the Legal Research Service of the Boards of Appeal)

Preliminary remarks

These notes should be seen as a working tool intended to assist parties in proceedings before the Boards of Appeal. However, these notes are intended neither to lay down legal Rules in themselves nor to override the relevant provisions in force.

Relevant information is also available from the following publications

• Ancillary Regulations to the European Patent Convention 2003, which include the Rules of Procedure of the Boards of Appeal (OJ EPO 2003, 61) (RPBA)
• Case law of the Boards of Appeal of the European Patent Office (4th edition, 2001)
• 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)2399-3010;

Fax (+49-89)2399-4465).

1. Filing an appeal and reply

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).

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).

1.2 Entitlement to appeal

Any party to proceedings adversely affected2 by a decision may appeal. Any other parties to the proceedings shall be parties as of right (Art. 107 EPC).

1.3 Transfer of party status

A party to proceedings may change, provided the succession in title is documented for the EPO (R. 20 EPC, R. 61 EPC, R. 66 EPC).

It is not necessary for the other party to agree to the change. The previous party to the proceedings retains its rights and obligations until the transfer has been documented3.

Party status is transferable at any stage during pending appeal proceedings if transferred together with the business assets or the assets in whose interests the appeal has been filed4.

1.4 Appeal period, appeal fee

The appeal must be lodged with the EPO in the form of a notice of appeal within two months5 of the date of notification of the decision appealed from6. 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 fee has been paid within the two-month appeal period (Art. 108, second sentence, EPC)7.

1.5 Form of the appeal

Art. 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)8. The Registry will request written confirmation if the quality of the document filed is deficient. E-mail has no legal force in proceedings under either the EPC or PCT and thus cannot be used validly to perform any procedural act and in particular to comply with time limits9.

1.6 Language

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

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).10

The translation required under Art. 14(4) EPC may be filed in any official language of the EPO. Where appropriate, 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 Art. 14(5) EPC the notice of appeal is deemed not to have been received.

1.7 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, D-80298 Munich1112. Urgent faxes should only be addressed to (+49-89) 2399-3014. Attention is also drawn to the possibility of using the automatic night letter-box.13

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

1.8 Content of the notice of appeal

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

1.9 Statement of grounds of appeal

A statement of grounds of appeal must be filed in writing within four months 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 1.5).

1.10 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 Art. 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 Art. 122 EPC is possible where the opponent has failed to observe the four-month time limit for filing the statement of grounds of appeal.14

1.11 Reply

Under Art. 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.

Parties to the proceedings under Art. 107, second sentence, EPC are asked by the Registry whether or not they wish to receive any further communications in connection with the appeal proceedings. Their declaration that they wish so may be revoked at any time.

In inter partes proceedings, any party wishing to contest the appeal in whole or in part should file a reply within four months of notification to it of the grounds of appeal (Art. 10a(1)(b) RPBA).

1.12 Intervention

Third parties may intervene in appeal proceedings under Art. 105 EPC as long as appeal proceedings are still pending.

2. Written proceedings

Parties should develop their arguments in writing and not reserve them for a possible oral hearing.

2.1 Content of the statement of grounds and reply

The statement of grounds or reply must contain respectively an appellant's or respondent's complete case. This should include, in clear and concise terms, why the decision under appeal is contested or supported. Any and all facts, arguments and evidence relied on and all requests made must be expressly set out or, if previously advanced in first instance proceedings, incorporated by specific reference (eg document, date, page and paragraph number) to those proceedings. Any documents, of whatever nature, relied on must be annexed to the grounds of appeal or reply unless, for some special reason (eg exceptional length), the Board allows an exception (Art. 10a(2) RPBA).

2.2 Quotations and references

Quotations from the decision under appeal, the European Patent Convention, the Implementing Regulations, the Rules of Procedure of the Boards of Appeal, the Guidelines for Examination, the patent or the patent application in suit or any other document contained in the file of the case should only be made if, and if made, only 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 concerned agrees that extracts will be sufficient.

2.3 Evidence

If evidence is submitted, the facts it is intended to elucidate should be indicated.

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).

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 (see also 3.7). Evidence by means of witnesses should further state the name and exact address of witnesses.

2.4 Submission of documents, samples, models, etc.

The introduction of any new documents into the proceedings should be explained briefly and a legible copy of each such document should be annexed to the statement of grounds or reply (see 2.1). 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 contact the Registry about how best they should be submitted.

2.5 Further written submissions and amendments to a party's case

After receipt of the statement of grounds or the reply or replies of any other parties, the Board will give any necessary directions for the parties to present further submissions (see Art. 10a(1)c RPBA).

The admission of any amendments to a party's case is a matter for the Board's discretion (see Art. 10b RPBA).

Amendments to a case after oral proceedings have been appointed will not be permitted if the Board or other parties cannot reasonably deal with them without an adjournment of the oral proceedings (Art. 10b(3) RPBA).

3. Oral proceedings

The case should be ready for decision at the close of oral proceedings (Art. 11(6) RPBA). The Board may, by a communication (which may be sent with the summons to oral proceedings or at some other point in time), indicate matters which appear to be significant or no longer contentious or make other observation. The parties involved and their representatives should therefore be prepared to deal with any problems that may arise during the hearing (see Art. 11(1) RPBA). A decision may be announced at the end of oral proceedings.

3.1 Fixing a date for oral proceedings

Requests for oral proceedings should be made in the statement of grounds or reply. 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.

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 1 September 2000 (OJ EPO 2000, 456). As to possible changes of that date see that Notice and Art. 11(2) RPBA.

3.2 Language

In oral proceedings, derogations from the provisions concerning the language of the proceedings (Art. 14 EPC) can be made according to R. 2 EPC.

The party has to inform the Registry at least one month before the date set for oral proceedings if they intend to use a language other than the language of the proceedings at oral proceedings and if it is not making provision for interpreting into the language of the proceedings. 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 instance15.

3.3 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 can be sent with an advice of delivery and accompanied by an internal 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 fixed16.

3.4 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.

3.5 Absence of a party

Absence of a party at oral proceedings does not oblige the Board to delay any step in the proceedings, including its decision (R. 71(2) EPC, Art. 11(3) RPBA). Decision G 4/92 (OJ EPO 1994, 149), regarding new facts or new evidence presented at oral proceedings in the absence of a party, is thus no longer applicable. But the presentation of new facts, indeed any amendment to a party's case, at oral proceedings is also subject to the limitation in Art. 10b(3) RPBA.

3.6 Sound recording devices

At oral proceedings before a Board only EPO employees may bring any kind of sound recording device into the hearing room17.

3.7 Costs of taking of evidence

The taking of evidence by the EPO may be made conditional upon deposit with it, by the party who requested the evidence to be taken, of a sum the amount of which shall be fixed by reference to an estimate of the costs (R. 74 EPC).18

3.8 Accompanying persons

During oral proceedings, a person accompanying the professional representative of a party may be allowed to make oral submissions on specific legal or technical issues on behalf of that party, otherwise than under Art. 117 EPC, in addition to complete presentation of the party's case by the professional representative. Such oral submissions can only be made with the permission of and at the discretion of the Board. The criteria to be considered when exercising the discretion are set down in decision G 4/95 (OJ EPO 1996, 412).

3.9 Mobile phone

The use of mobile phones in the hearing rooms is not permitted; they must be switched off.

4. Representation

4.1 If a party to appeal proceedings is represented (see Art. 133 EPC), the representative must meet the requirements of Art. 134 EPC.

4.2 Professional representatives within the meaning of Art. 134 EPC need only file an authorisation under certain circumstances, in particular if there is a change of representative and the EPO is not notified of the previous representative's authorisation having terminated (see R. 100 to 102 EPC).19

5. Costs

5.1 In appeal proceedings each party usually bears its own costs but exceptionally for reasons of equity the Board may order a different apportionment of costs incurred in the taking of evidence or in oral proceedings (Art. 104 EPC).

5.2 Subject to Art. 104(1) EPC, a Board may order one party to an inter partes appeal to pay some or all of another party's costs. Under Art. 11a(1) RPBA, such costs may be those incurred by

(a) amendment to a party's case

(b) extension of a time limit

(c) an act or omission which prejudices the timely or efficient conduct of oral proceedings

(d) failure to comply with a direction of the Board

(e) abuse of procedure.

5.3 An apportionment of costs may only be made following a request. While requests should normally be made as early in the proceedings as possible, requests relating to costs may necessarily only be prompted by matters arising at or towards the end of an appeal, but a request must in any event be made before the close of oral proceedings (if oral proceedings take place) or before a decision is issued (if no oral proceedings take place). A party making a request for apportionment of costs should, in doing so, identify the matters for which it seek costs, the reasons why it has incurred costs as a result and, if it wants to request the Board to order a specific sum, the amount of costs incurred and produce sufficient information to allow the Board and the other party or parties to comment on the reasonableness of the costs incurred and to assess whether the costs claimed fall within those allowable which include

(a) costs charged to a party by its professional representative (for example, in attending oral proceedings on behalf of a party)

(b) costs incurred by a party itself whether or not acting through such a representative (for example, appearing on its own behalf at oral proceedings or attending oral proceedings to give instructions to its representative)

(c) costs of witnesses or experts paid for by a party.

5.4 Any costs which are the subject of an order for apportionment of costs must be limited to those necessarily and reasonably incurred (Art. 11a(2) RPBA).

6. Accelerated processing before the Boards of Appeal

6.1 According to the notice from the Vice President Directorate General 3 dated 19 May 1998 (OJ EPO 1998, 362), parties with a legitimate interest, eg when infringement proceedings have been brought or are envisaged, may ask the Boards to deal with their appeals rapidly.

6.2 Requests for accelerated processing must be submitted to the competent Board either at the beginning of or during proceedings. They should contain reasons for the urgency together with relevant documents; no particular form is required.