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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

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.

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 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 settled after substantive legal review

2016

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 (31.12.2016) – i.e. filed in 2014 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 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).

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).