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PART I

BOARD OF APPEAL AND ENLARGED BOARD OF APPEAL CASE LAW 2014 - PART I

BOARDS OF APPEAL ACTIVITIES IN 2014

1. Introduction

For statistics on the appeal procedure in 2014, 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 2014, see Part II below. To round off the survey of this period, a number of important decisions have been added from the first quarter of 2015.

2. Statistics

2.1 General statistics

For statistics on the appeal procedure by cases in 2014 (included are also cases in 2013), see tables and charts below.

New cases 2014

Settled cases 2014

Appeals pending 31.12.2014

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.

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 2014 (2013: 2) and three decisions were issued (2013: 0).

In G 1/11, the Enlarged Board of Appeal 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 G 1/12 the Enlarged Board decided that when a notice of appeal contains the name and the address of the appellant 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, it is possible to correct this error under R. 101(2) EPC by a request for substitution by the name of the true appellant, provided that the requirements of R. 101(1) EPC have been met.

In G 1/13 the Enlarged Board held that where an opposition is filed by a company which thereafter ceases to exist, but is subsequently restored to existence under national law with retroactive effect, and all these events happen before the decision of the opposition division becomes final, the EPO must recognise the retroactive effect of that provision of national law and allow the opposition proceedings to be continued by the restored company. Where an appeal is filed in the name of the non-existent opponent company against the decision of the opposition division and the restoration of the company to existence, with retroactive effect, takes place after the expiry of the time limit for filing the notice of appeal, the board of appeal must treat the appeal as admissible.

In 2015, two decisions had been issued at the date of finalising this publication.

In G 3/14, the Enlarged Board analysed whether, and if so to what extent, the requirements of Art. 84 EPC may be examined in opposition and opposition appeal proceedings, in particular if the amended claim is a mere combination of a granted independent claim and granted dependent claims or elements thereof. Its answer to the referred questions was: "In considering whether, for the purposes of Art. 101(3) EPC, a patent as amended meets the requirements of the EPC, the claims of the patent may be examined for compliance with the requirements of Art. 84 EPC only when, and then only to the extent that, the amendment introduces non-compliance with Art 84 EPC."

In the consolidated cases G 2/12 and G 2/13 the Enlarged Board was concerned with the question whether the exclusion of essentially biological processes for the production of plants in Art. 53(b) EPC had a negative effect on the allowability of product claims or product-by-process claims directed to plant or plant material (such as a fruit or plant parts) which are directly obtained and/or defined by an essentially biological process.

The Enlarged Board noted that Art. 31 and 32 of the Vienna Convention on the Law of Treaties are to be applied when interpreting the EPC. It applied the various methodical lines of interpretation which included grammatical, systematic and teleological interpretations as well as a consideration of the Biotech Directive. None of these lines of interpretation led the Enlarged Board to conclude that the term "essentially biological processes for the production of plants" extended beyond the processes to products defined or obtained by such processes. This result was confirmed when the preparatory work of the EPC was taken into account as a supplementary means of interpretation.

At the date of publication, one referral was pending before the Enlarged Board of Appeal.

G 1/14 poses the question: If, after expiry of the time limit under Art. 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, which raised a similar issue, is no longer pending as the underlying application is deemed to be withdrawn.

3.1.2 Petitions 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 2014, 17 petitions were settled (2013: 17). At 31 December 2014, there were 24 petitions for review pending before the Enlarged Board of Appeal.

Concerning the petitions for review received in 2014, interlocutory decision R 19/12, issued on 29 April 2014, concluded that the chairman of the Enlarged Board of Appeal should be excluded from the proceedings because of an objectively justified suspicion of partiality. The main reason for the finding was that the chairman, being also an EPO vice-president, was closely integrated into the administrative structure of the Office. In the reasoning of the decision the Enlarged Board also addressed in more general terms the problem of the judicial status of the boards of appeal and their institutional setting as part of the European Patent Office.

As a direct consequence of this decision and pending further reflection, the President has taken some precautionary measures to enable the chairman of the Enlarged Board and the members of the boards of appeal to continue to exercise their functions. The Council decided to mandate its Board under Art. 28 EPC to prepare a debate on this matter, with a view to proposing possible solutions. Work in this area is ongoing.

In the meantime, objections to the chairman of the Enlarged Board of Appeal have been filed in two other petition for review cases, with reference to R 19/12.

In R 2/14 (interlocutory decision), the Enlarged Board of Appeal considered that the factual circumstances clearly differed from those on which interlocutory decision R 19/12 was based. What remained was that the chairman, in his managerial function as VP3, continued to be subject to the provisions of Art. 10(2)(f) and (3) EPC, according to which the vice-presidents assist the President and are subject to his supervisory authority. These provisions could come into conflict with Art. 23(3) EPC, according to which the chairman, in his judicial function, is not bound by any instructions. Applying the concept of "normative concordance", the Enlarged Board of Appeal stated that the President's power to give instructions to the chairman in his function as VP3 pursuant to Art. 10(2)(f) and (3) EPC is limited by virtue of Art. 23(3) EPC. The Enlarged Board of Appeal concluded that a reasonable, objective and informed person would, after the implementation of the institutional measures adopted following interlocutory decision R 19/12, no longer have good reason to suspect the chairman of partiality.

3.2 Outcome of proceedings before the technical boards of appeal

In 2014, 1 110 ex parte cases (2013: 1 013) were settled. 614 ex parte cases were settled with decision and the remaining 496 were settled without decision. In 224 of those cases, the appeal was withdrawn after a substantive communication by the board. 578 cases (52%) (2013: 58.2%) 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 578 cases (2013: 590) was as follows:

Ex parte cases settled after substantive legal review

2014

In 2014, 1 190 inter partes cases were settled (2013: 1 124). 882 inter partes cases were settled with decision and the remaining 308 were settled without decision. In 98 of those cases, the appeal was withdrawn after a substantive communication by the board. 810 cases (68%) (2013: 66.5%) 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 810 cases settled after a decision on the merits (2013: 747) 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 settled after substantive legal review

2014

3.3 Proceedings before the Disciplinary Board of Appeal

3.4 Length of proceedings

The number of cases pending for over two years at the end of the year under review (31.12.2014) – i.e. filed in 2012 or earlier – is as follows:

3.5 Breakdown by language of the proceedings

Breakdown by language of the proceedings

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 DG 3 also participated as expert speakers in seminars and conferences organised by the European Patent Academy and other EPO departments.

In June 2014 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.

From 9 to 12 September 2014 the biennial judges' symposium took place in Tallinn. The participants were mainly national judges from the contracting states, along with members of the boards of appeal. One of the aims of the symposium is to increase harmonisation in the interpretation of European patent law, and many fruitful discussions on relevant issues of patent law took place.

In October the Academy's seminar for patent law practitioners entitled "EPO boards of appeal and key decisions" was held in The Hague. The case law of the boards was presented by staff of DG 3 and also commented on from the users' perspective. The event was booked to capacity, with about 250 practitioners attending.

The annual MSBA meeting between members of the boards of appeal and SACEPO representatives was held on 7 November 2014.

5. Number of staff and distribution of responsibilities

On 1 January 2015, there were 159 chairmen and members of the boards of appeal (01.01.2014: 168). The 105 technically qualified (01.01.2014: 110) and 27 legally qualified members (01.01.2014: 29) 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 of DG 3 staff was 225 on 1 January 2015 (237 on 1 January 2014).

6. 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 1980 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 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 supplementary publication 1, OJ 2015.

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