OJ EPO SE 3/2016, p1 - 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
 
2014
 
2013
 
Enlarged Board of Appeal

9

 

21

 

23

 

Referrals

1

 

3

 

2

 

Petitions for review

8

 

18

 

21

 

Legal Board of Appeal

12

 

22

 

23

 

Technical boards of appeal

2 387

100,0%

2 353

100,0%

2 515

100,0%

Examination procedure (ex parte)

864

36,2%

996

42,3%

1 200

47,7%

Opposition procedure (inter partes)

1 523

63,8%

1 357

57,7%

1 315

52,3%

Mechanics

818

34,3%

728

30,9%

779

31,0%

Examination procedure

126

 

122

 

186

 

Opposition procedure

692

 

606

 

593

 

Chemistry

768

32,2%

716

30,4%

777

30,9%

Examination procedure

154

 

179

 

236

 

Opposition procedure

614

 

537

 

541

 

Physics

254

10,6%

253

10,8%

263

10,4%

Examination procedure

161

 

162

 

194

 

Opposition procedure

93

 

91

 

69

 

Electricity

547

22,9%

656

27,9%

696

27,7%

Examination procedure

423

 

533

 

584

 

Opposition procedure

124

 

123

 

112

 

Disciplinary Board of Appeal

9

 

13

 

9

 

Total

2 417

 

2 409

 

2 570

 

 

Settled
2015
 
2014
 
2013
 
Enlarged Board of Appeal

14

 

21

 

17

 

Referrals

4

 

4

 

0

 

Petitions for review

10

 

17

 

17

 

Legal Board of Appeal

27

 

22

 

25

 

Technical boards of appeal

2 287

100,0%

2 300

100,0%

2 137

100,0%

Examination procedure (ex parte)

1 085

47,4%

1 110

48,3%

1 013

47,4%

Opposition procedure (inter partes)

1 202

52,6%

1 190

51,7%

1 124

52,6%

Mechanics

678

29,6%

656

28,5%

651

30,5%

Examination procedure

167

 

169

 

177

 

Opposition procedure

511

 

487

 

474

 

Chemistry

759

33,2%

779

33,9%

720

33,7%

Examination procedure

220

 

234

 

226

 

Opposition procedure

539

 

545

 

494

 

Physics

258

11,3%

276

12,0%

242

11,3%

Examination procedure

211

 

214

 

180

 

Opposition procedure

47

 

62

 

62

 

Electricity

592

25,9%

589

25,6%

524

24,5%

Examination procedure

487

 

493

 

430

 

Opposition procedure

105

 

96

 

94

 

Disciplinary Board of Appeal

7

 

7

 

8

 

Total

2 335

 

2 350

 

2 187

 

 

Pending
31.12.2015
31.12.2014
Enlarged Board of Appeal

23

 

28

 

Referrals

1

 

4

 

Petitions for review

22

 

24

 

Legal Board of Appeal

13

 

28

 

Technical boards of appeal

7 862

100,0%

7 763

100,0%

Examination procedure (ex parte)

3 618

46,0%

3 839

49,5%

Opposition procedure (inter partes)

4 244

54,0%

3 924

50.5%

Mechanics

2 133

27,1%

1 999

25,8%

Examination procedure

293

 

335

 

Opposition procedure

1 840

 

1 664

 

Chemistry

2 273

28,9%

2 261

29,1%

Examination procedure

584

 

649

 

Opposition procedure

1 689

 

1 612

 

Physics

992

12,6%

994

12,8%

Examination procedure

701

 

751

 

Opposition procedure

291

 

243

 

Electricity

2 464

31,4%

2 509

32,3%

Examination procedure

2 040

 

2 104

 

Opposition procedure

424

 

405

 

Disciplinary Board of Appeal

9

 

7

 

Total

7 907

 

7 826

 

 

 

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.

New cases

2015

2014

2013

2012

2011

Legal Board of Appeal

12

22

23

25

16

Technical boards of appeal

2 387

2 353

2 515

2 602

2 658

Enlarged Board of Appeal

9

21

23

21

22

Referrals

1

3

2

2

1

Petitions for review

8

18

21

19

21

Disciplinary Board of Appeal

9

13

9

11

11

 

Settled

2015

2014

2013

2012

2011

Legal Board of Appeal

27

22

25

19

15

Technical boards of appeal

2 287

2 300

2 137

2 029

1 875

Enlarged Board of Appeal

14

21

17

16

22

Referrals

4

4

0

1

1

Petitions for review

10

17

17

15

21

Disciplinary Board of Appeal

7

7

8

7

12

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

2015

2014

Ex parte cases settled after decision on the merits

537

578

Appeal dismissed

303

56,4%

309

53,5%

Appeal successful in whole or in part

234

43,6%

269

46,5%

Grant of patent

132

24,6%

139

24,0%

Resumption of examination proceedings

102

19,0%

130

22,5%

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

2015

2014

Inter partes cases settled after a decision on the merits

825

810

Appeal dismissed

351

42,5%

319

39,4%

Appeal successful in whole or in part

474

57,5%

491

60,6%

Maintenance of patent as granted

27

3,3%

15

1,8%

Maintenance of patent in amended form

205

24,8%

188

23,2%

Revocation of patent

164

19,9%

178

22,0%

Resumption of opposition proceedings

78

9,5%

110

13,6%

Inter partes cases settled after substantive legal review

2015

 

3.3 Proceedings before the Disciplinary Board of Appeal

Proceedings before the Disciplinary Board

2015

2014

New cases

9

13

re European qualifying examination

9

12

re professional representatives' code of conduct

0

1

Cases settled

7

7

re European qualifying examination

7

5

re professional representatives' code of conduct

0

2

Cases pending

9

7

re European qualifying examination

9

7

re professional representatives' code of conduct

0

0

3.4 Length of proceedings

Length of technical proceedings

2015

2014

Average length (months)

36

34

Ex parte

38

36

Inter partes

34

33

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:

Number of cases pending for over two years

2015

2014

2005

2006

2007

2008

2009

14 
80 

2010

126 
475 

2011

679 
1 280 

2012

1 314 
1 793 

2013

1 650 

 

Total

3 786
3 633

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 2015

2 387

72,2%

23,5%

4,3%

Oral proceedings held in 2015

1 282

68,3%

26,2%

5,5%

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).

Number of staff

01.01.16

01.01.15

Vice-President

1

1

Chairmen of the boards of appeal

22

27

Technically qualified members

97

105

Legally qualified members

23

27

Assistants

0

7

Support staff

55

58

Total number of DG 3 staff

198

225

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.