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ANNUAL REPORT OF THE BOARDS OF APPEAL OF THE EPO 2015

1. Introduction

For statistics on the appeal procedure in 2015, 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.

2. Statistics

2.1 General statistics

For statistics on the appeal procedure by cases in 2015 (included are also cases in 2014), see tables and charts below.

New cases 2015

Settled cases 2015

Appeals pending 31.12.2015

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 was one new referral in 2015 and four decisions were issued.

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.

In G 1/14 the question referred to the Enlarged Board was whether an appeal is inadmissible or deemed not to have been filed if the notice of appeal is filed and the fee for appeal paid after expiry of the time limit. Until 1 April 2015 the wording of R. 126(1) EPC was limited to "Notification by post ... by registered letter with advice of delivery" (since amended to: "Notification by postal services ... by registered letter with advice of delivery or equivalent"). In the Enlarged Board's view, notification of first-instance decisions by the postal service UPS was not covered by R. 126(1) EPC as formerly in force, so the referring board's finding that the appeal had not been lodged in time was inoperative. As this meant there was no need to refer the question, the Enlarged Board dismissed the referral as inadmissible.

In 2015, one referral was pending before the Enlarged Board of Appeal.

In the light of the differing approaches adopted in the various decisions both before and after G 2/98, the board in T 557/13 decided to refer the following questions to the Enlarged Board:

1. Where a claim of a European patent application or patent encompasses alternative subject-matters by virtue of one or more generic expressions or otherwise (generic "OR"-claim), may entitlement to partial priority be refused under the EPC for that claim in respect of alternative subject-matter disclosed (in an enabling manner) for the first time, directly, or at least implicitly, and unambiguously, in the priority document?

2. If the answer is yes, subject to certain conditions, is the proviso "provided that it gives rise to the claiming of a limited number of clearly defined alternative subject-matters" in point 6.7 of G 2/98 to be taken as the legal test for assessing entitlement to partial priority for a generic "OR"-claim?

3. If the answer to question 2 is yes, how are the criteria "limited number" and "clearly defined alternative subject-matters" to be interpreted and applied?

4. If the answer to question 2 is no, how is entitlement to partial priority to be assessed for a generic "OR"-claim?

Concerning the further issue of whether parent application D1 could be opposed as state of the art under Art. 54(3) EPC to claim 1, the board referred the following question to the Enlarged Board:

5. If an affirmative answer is given to question 1, may subject-matter disclosed in a parent or divisional application of a European patent application be cited as state of the art under Article 54(3) EPC against subject-matter disclosed in the priority document and encompassed as an alternative in a generic "OR"-claim of the said European patent application or of the patent granted thereon?

This referral is pending as G 1/15.

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 2015, 10 petitions were settled (2014: 17). At 31 December 2015, there were 22 petitions for review pending before the Enlarged Board of Appeal.

In the inter partes proceedings under review in R 16/13 the petitioner had filed a document with comparative test results. In its written decision, the board of appeal stated that this document did not prove the advantages of the claimed substance because some of the parameters referred to in the claim had not been specified in the document. This issue had not been raised in the proceedings and according to the Enlarged Board it had not been possible for the petitioner to infer the board's reasoning, on the basis of his own expertise, from the way the proceedings developed. The Enlarged Board allowed the petition, stating that the right to be heard is violated when a board gives, ex officio, reasons in its decision without having given the party adversely affected an opportunity to comment on these reasons, and, as far as the patentee is concerned, an opportunity to submit new requests.

3.2 Outcome of proceedings before the technical boards of appeal

In 2015, 1 085 ex parte cases (2014: 1 110) were settled. 573 ex parte cases were settled with decision and the remaining 512 were settled without decision. In 243 of those cases, the appeal was withdrawn after a substantive communication by the board. 537 cases (49%) (2014: 52%) 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 537 cases (2014: 578) was as follows:

Ex parte cases settled after decision on the merits

2015

In 2015, 1 202 inter partes cases were settled (2014: 1 190). 883 inter partes cases were settled with decision and the remaining 319 were settled without decision. In 91 of those cases, the appeal was withdrawn after a substantive communication by the board. 825 cases (69%) (2014: 68%) 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 825 cases settled after a decision on the merits (2014: 810) 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

2015

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 (31.12.2015) – i.e. filed in 2013 or earlier – is as follows:

3.5 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 2015 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 the Academy's seminar for patent law practitioners entitled "EPO boards of appeal and key decisions 2015" was held in Munich. 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.

5. Number of staff and distribution of responsibilities

On 1 January 2016, there were 142 chairmen and members of the boards of appeal (01.01.2015: 159). The 97 technically qualified (01.01.2015: 105) and 23 legally qualified members (01.01.2015: 27) 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 198 on 1 January 2016 (225 on 1 January 2015).

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 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 2016.

The 8th edition of "Case Law of the Boards of Appeal of the European Patent Office" is expected to be published in July this year.

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