OJ EPO SE 4/2015, p2 - 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

 

2013

 

2012

 

Enlarged Board of Appeal

21

 

23

 

21

 

Referrals

3

 

2

 

2

 

Petitions for review

18

 

21

 

19

 

Legal Board of Appeal

22

 

23

 

25

 

Technical boards of appeal

2.354

100,0%

2.515

100,0%

2.602

100,0%

Examination procedure (ex parte)

996

42,3%

1200

47,7%

1241

47,7%

Opposition procedure (inter partes)

1358

57,7%

1315

52,3%

1361

52,3%

Total protests

 

 

 

 

 

 

Mechanics

728

30,9%

779

31,0%

791

30,4%

Examination procedure

122

 

186

 

166

 

Opposition procedure

606

 

593

 

625

 

Protests

 

 

 

 

 

 

Chemistry

717

30,5%

777

30,9%

786

30,2%

Examination procedure

179

 

236

 

239

 

Opposition procedure

538

 

541

 

547

 

Protests

 

 

 

 

 

 

Physics

253

10,7%

263

10,4%

268

10,3%

Examination procedure

162

 

194

 

201

 

Opposition procedure

91

 

69

 

67

 

Protests

 

 

 

 

 

 

Electricity

656

27,9

696

27,7%

757

29,1%

Examination procedure

533

 

584

 

635

 

Opposition procedure

123

 

112

 

122

 

Protests

 

 

 

 

 

 

Disciplinary Board of Appeal

13

 

9

 

11

 

Total

2.410

 

2.570

 

2.659

 

 

Settled

 

2014

 

2013

 

2012

 

Enlarged Board of Appeal

21

 

17

 

16

 

Referrals

4

 

0

 

1

 

Petitions for review

17

 

17

 

15

 

Legal Board of Appeal

22

 

25

 

19

 

Technical boards of appeal

2.300

100,0%

2.137

100,0%

2.029

100,0%

Examination procedure (ex parte)

1110

48,3%

1013

47,4%

969

47,8%

Opposition procedure (inter partes)

1190

51,7%

1124

52,6%

1058

52,1%

Total protests

 

 

 

 

 

 

Mechanics

656

28,5%

651

30,5%

607

29,9%

Examination procedure

169

 

177

 

178

 

Opposition procedure

487

 

474

 

429

 

Protests

 

 

 

 

 

 

Chemistry

779

33,9%

720

33,7%

724

35,7%

Examination procedure

234

 

226

 

223

 

Opposition procedure

545

 

494

 

499

 

Protests

 

 

 

 

 

 

Physics

276

12,0%

242

11,3%

197

9,7%

Examination procedure

214

 

180

 

152

 

Opposition procedure

62

 

62

 

45

 

Protests

 

 

 

 

 

 

Electricity

589

25,6

524

24,5%

501

24,7%

Examination procedure

493

 

430

 

416

 

Opposition procedure

96

 

94

 

85

 

Protests

 

 

 

 

 

 

Disciplinary Board of Appeal

17

 

8

 

7

 

Total

2.360

 

2.187

 

2.071

 

 

Pending

 

31.12.2014

31.12.2013

Enlarged Board of Appeal

28

 

28

 

Referrals

4

 

5

 

Petitions for review

24

 

23

 

Legal Board of Appeal

28

 

30

 

Technical boards of appeal

7.763

100,0%

7.706

100,0%

Examination procedure (ex parte)

3839

49,5%

3950

51,3%

Opposition procedure (inter partes)

3924

50.5%

3756

48,7%

Total protests

 

 

 

 

Mechanics

1999

25,8%

1933

25,1%

Examination procedure

335

 

384

 

Opposition procedure

1664

 

1549

 

Protests

 

 

 

 

Chemistry

2261

29,1%

2317

30,1%

Examination procedure

649

 

701

 

Opposition procedure

1612

 

1.616

 

Protests

 

 

 

 

Physics

994

12,8%

1016

13,2%

Examination procedure

751

 

802

 

Opposition procedure

243

 

214

 

Protests

 

 

 

 

Electricity

2509

32,3%

2440

31,6%

Examination procedure

2104

 

2063

 

Opposition procedure

405

 

377

 

Protests

 

 

 

 

Disciplinary Board of Appeal

7

 

11

 

Total

7.826

 

7.775

 

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.

 

New cases

Settled

 

2014

2013

2012

2011

2010

2014

2013

2012

2011

2010

Legal Board of Appeal

22

23

25

16

29

22

25

19

15

23

Technical boards of appeal

2 354

2 515

2 602

2 658

2 545

2 300

2 137

2 029

1 875

1 962

Enlarged Board of Appeal

21

23

21

22

25

21

17

16

22

28

Referrals

3

2

2

1

2

4

0

1

1

7

Petitions for review

18

21

19

21

23

17

17

15

21

21

Disciplinary Board of Appeal

13

9

11

11

6

17

8

7

12

16

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

2014

2013

Ex parte cases settled after substantive legal review

578

590

Appeal dismissed

309

53,5%

302

51,2%

Appeal successful in whole or in part

269

46,5%

288

48,8%

Grant of patent

139

24,0%

149

25,2%

Resumption of examination proceedings

130

22,5%

139

23,6%

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

2014

2013

Inter partes cases settled after a decision on the merits

810

747

Appeal dismissed

319

39,4%

321

43,0%

Appeal successful in whole or in part

491

60,6%

426

57,0%

Maintenance of patent as granted

15

1,8%

19

2,5%

Maintenance of patent in amended form

188

23,2%

150

20,1%

Revocation of patent

178

22,0%

191

25,6%

Resumption of opposition proceedings

110

13,6%

66

8,8%

Inter partes cases settled after substantive legal review

2014

3.3 Proceedings before the Disciplinary Board of Appeal

Proceedings before the Disciplinary Board

2014

2013

New cases

13

9

re European qualifying examination

12

8

re professional representatives' code of conduct

1

1

Cases settled

17

8

re European qualifying examination

15

8

re professional representatives' code of conduct

2

0

Cases pending

7

11

re European qualifying examination

7

10

re professional representatives' code of conduct

0

1

3.4 Length of proceedings

Length of technical proceedings

2014

2013

Average length (months)

34

32

Ex parte

36

33

Inter partes

33

30

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:

Number of cases pending for over two years

2014

2013

2005

1

1

2006

1

2

2007

0

0

2008

3

30

2009

80

357

2010

475

1 094

2011

1 280

1 803

2012

1 793

 

Total

3 633

3 287

3.5 Breakdown by language of the proceedings

Breakdown by language of the proceedings

 

Total

English

German

French

Appeals filed before the technical boards in 2014

2 354

72,2%

23,5%

4,3%

Oral proceedings held in 2014

1 254

70,0%

24,1%

5,9%

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).

Number of staff

01.01.15

01.01.14

Vice-President

1

1

Chairmen of the boards of appeal

27

29

Technically qualified members

105

110

Legally qualified members

27

29

Assistants

7

7

Support staff

58

61

Total number of DG 3 staff

225

237

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.

 

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