Appeals at the EPO

Introduction to Appeals at the EPO

Any party to proceedings at the European Patent Office (EPO) who is adversely affected by a decision, may appeal the decision. Examples of decisions which adversely affect a party include the refusal of a patent application by an Examining Division, through which refusal the applicant is adversely affected, and any decision from an Opposition Division, through which at least one, and possibly all, parties are adversely affected. Once an appeal has been filed, any party to the original proceedings is, as of right, party to an appeal.

Appeal procedure governed by EPC

The Boards of Appeal (BoA) form a department within the EPO responsible for the examination of appeals against decisions taken within the EPO. The independence of the members of the Boards is assured through the European Patent Convention (EPC). As part of this independence the members of the Boards in their decisions are only bound by the provisions of the EPC. The Guidelines for Examination, which provide guidance in respect of the practice in proceedings before the EPO in accordance with the European Patent Convention and its Implementing Regulation, are, for example, not legally binding for the Boards. Independence notwithstanding, Rules of Procedure of the Boards of Appeal (as approved by the Administrative Council of the EPO) are in place and further govern procedure.

Location

Since 2017, the Boards have been located in the municipality of Haar, 12km east of central Munich. The idea behind this location was to strengthen the appearance of independence from the rest of the EPO where the decisions being appealed are made. However, the practicalities of travelling to Haar, for example to attend an oral hearing, meant that the site was never universally popular. Sometime in 2025/2026 the Boards are expected to relocate to the main EPO complex near the Central Railway Station in Munich.

Appeal fee

A party wishing to appeal a decision of the EPO must file a notice of appeal and pay the appeal fee (currently €2,925, or €2,015 for a micro-entity) within two months of the notification of the decision. Within four months of notification of the decision a statement setting out the grounds of appeal must also be filed. A staggered reimbursement of the appeal fee may be available for an appeal withdrawn at specific points in the procedure. Dependent on certain conditions, reimbursement of the appeal fee can be expected if an appeal results in the identification of a substantial procedural violation at first instance.

Justice delayed is justice denied

The main focus of an appeal will be the decision under appeal. That is to say, an appeal should not be viewed as an opportunity to extend the first instance proceedings. The maintenance of timeliness will also be a driver of the procedure. The time scale of an appeal can be gauged by one of the strategic objectives of the BoA, viz. to settle 90% of cases within 30 months. The background to this is Article 6 of the European Convention on Human Rights (1950), Right to a fair trial, but also of relevance to procedural efficiency here is the recent establishment of the Unitary Patent Court (UPC). The current Rules of Procedure of the Boards of Appeal (RPBA) are based on a major revision which entered into force in January 2020. From the outset, the aims of the revision of the RPBA were clear: (i) to increase efficiency, by reducing the number of issues to be treated; (ii) to increase predictability for the parties; and (iii) to increase harmonisation. It is significant that the aim first referenced is efficiency. Although what may be accepted into a procedure at any point will depend on the preferences of the particular Board, it would be prudent to assume that attempts to present new arguments and evidence at the appeal stage will generally be resisted.

Oral hearing

It would not be unusual for the first communication relating to substantive issues and issued to the parties of an appeal from the Board tasked with examining the appeal to be a summons to oral proceedings. The communication shall draw attention to matters that seem to be of particular significance for the decision to be taken. At this time the Board may also – but is not obliged to and indeed may not - provide a preliminary opinion.

Currently over half of oral hearings in front of a Board take place with all participants accessing the proceedings remotely using video-conferencing facilities. However, in-person hearings also take place, as do mixed-mode proceedings.

If a decision is given orally at the end of an oral hearing, the decision will follow in written form, typically within three months of the date of the oral proceedings.

Large Board of Appeal

There is a clear interest in maintaining uniform application of the law, relevant both at appeal and at first instance level at the EPO. For this the Enlarged Board of Appeal is convened from time to time. If a Board of Appeal considers that a decision from the Enlarged Board of Appeal is required during proceedings on a case (an appeal), and if such a decision is provided, it shall be binding on the Board of Appeal in respect of the appeal in question.

Accelerating and decelerating procedures

The date on which oral proceedings can be held is dependent on many factors, not least the availability of the Board members and indeed of facilities. Currently, without any acceleration of the appeal procedure, it would not be unusual for a summons to call parties to an oral hearing in one year’s time. However, acceleration of the appeal proceedings is also possible. Appeal proceedings which are accelerated will be given priority over other appeals. Appeal proceedings which are not accelerated will inevitably be slowed down.

Courts may accelerate proceedings; parties may request acceleration

In respect of the acceleration of an appeal procedure, the UPC may request acceleration of appeal proceedings at the EPO and is not required to provide any specific reason. The same is true for a national court, or other competent body (such as a national patent office, as appropriate) in an EPC contracting state. Such requests will as a rule be granted. A party to an appeal proceeding may also request acceleration, although in this circumstance the request must be justified. If a request for acceleration is granted by the Board, the parties will be informed accordingly, and the proceedings will be given priority over others.

Summary

The Board treating an appeal case can be expected to keep the focus on dealing with the decision under appeal. The exploration of new avenues by a party who is seeking to achieve a particular outcome, or perhaps delay proceedings, will not be encouraged. Submissions from parties are generally expected to be presented in their entirety at the outset of the appeal process, either in the statement of the grounds of appeal, or in the reply. The discretion not to admit further submissions lies entirely with the Board. Furthermore, unless circumstances dictate otherwise, a party can expect that requests, facts, objections or evidence not admitted in the proceedings leading to the decision under appeal will not be admitted into the appeal proceedings. What can be expected is that the case will be dealt with efficiently and on its merits.

Author: Douglas Purdie

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