CLR V A Appeal procedure

1.
Legal character of appeal procedure
1.1.
General
1.2.
Rules of Procedure of the Boards of Appeal (RPBA)
1.3.
Suspensive effect of the appeal
1.4.
Devolutive effect of the appeal
1.5.
Accelerated processing before the boards of appeal
2.
Filing and admissibility of the appeal
2.1.
Transitional provisions
2.2.
Appealable decisions
2.2.1
Departments
2.2.2
Decisions
a)
Examples of appealable decisions
b)
Examples where the communication was not an appealable decision
2.2.3
Interlocutory decisions
2.2.4
Appeals against decisions of the boards of appeal
2.3.
Board competent to hear a case
2.3.1
Technical or Legal Board of Appeal
a)
General
b)
Technical board of appeal competent
c)
Legal Board of Appeal competent
2.3.2
Specific cases
a)
Interruption of proceedings
b)
Request for a search-fee refund
2.4.
Entitlement to appeal
2.4.1
Formal aspects under Article 107 EPC
a)
Appeal filed by wrong company
b)
Appeal filed in name of representative
c)
Party consisting of plurality of persons
d)
Company in receivership
e)
Death of the appellant (opponent)
2.4.2
Party adversely affected (Article 107 EPC)
a)
General
b)
Patent applicant
c)
Patent proprietor
d)
Opponent
2.4.3
Procedural status of the parties
a)
Parties to appeal proceedings
b)
Rights of parties under Article 107 EPC
c)
The boards' duty of impartiality in inter partes proceedings
d)
Existence of a company
2.5.
Form and time limit of appeal
2.5.1
Electronic filing of appeal
2.5.2
Form and content of notice of appeal (Rule 99(1) EPC)
a)
Rule 99(1)(a) EPC
b)
Rule 99(1)(b) EPC
c)
Rule 99(1)(c) EPC
d)
Rule 99(3) EPC
2.5.3
Appeal filed within the time limit
2.5.4
Payment of appeal fee
2.6.
Statement of grounds of appeal
2.6.1
Legal provisions
2.6.2
Form of statement of grounds of appeal
2.6.3
Content of the statement of grounds of appeal
a)
General
b)
Causal relationship
c)
Refusal of the application
d)
Statement of the legal or factual reasons
e)
Grounds to be analysed vis-à-vis reasons in decision
f)
Objection not raised at first instance
g)
Duty of board to be impartial
2.6.4
References
a)
References to earlier submissions
b)
References to other documents
2.6.5
New case raised
a)
Appeal based on the same ground for opposition
b)
New facts and evidence
c)
Amended claims filed
2.6.6
Arguments need not be new or relevant
2.6.7
Exceptional circumstances warranting admissibility of appeal
a)
Immediately apparent the contested decision cannot be supported
b)
Patent proprietor requests revocation
c)
Substantial procedural violation
2.6.8
No partial admissibility of appeal
2.7.
Admissibility of appeal to be checked in every phase of appeal proceedings
2.8.
Cases where admissibility of appeal need not be considered
2.9.
Interlocutory revision
2.9.1
General
2.9.2
The department of first instance's obligation to rectify the decision
3.
Substantive examination of the appeal
3.1.
Binding effect of requests – no reformatio in peius
3.1.1
Reformatio in peius does not apply separately to each point
3.1.2
Reformatio in peius and devolutive effect of appeal
3.1.3
Cases where reformatio in peius does not apply
3.1.4
Exceptions to reformatio in peius to be construed narrowly
3.1.5
Patentee as sole appellant
3.1.6
Opponent as sole appellant
3.1.7
Revocation of patent
3.1.8
Exceptions to the rule
3.1.9
Reformatio in peius and lack of cross-appeal in the EPC
3.2.
Subject-matter under examination
3.2.1
Opposition appeal proceedings
a)
Admissibility of opposition
b)
The notice of appeal
c)
Unopposed subject-matter not reviewed
d)
Dependent claims
e)
Appeal by patentee against revocation
f)
Removal of references in dependent claims
g)
Abandonment of subject-matter
h)
Fresh ground for opposition on appeal
i)
Ground not properly substantiated by the patentee
j)
Ground not properly substantiated by the opponent
k)
Ambiguities in the claims
3.3.
Patentability requirements under examination in ex parte proceedings
3.4.
Facts under examination – applying Article 114 EPC in appeal proceedings
3.4.1
Boards to examine facts of own motion
3.4.2
Circumstances where the board need not examine facts of its own motion
3.5.
Review of first-instance discretionary decisions
3.5.1
Principles applying to the review of first-instance discretionary decisions
a)
General
b)
Proper exercise of discretion
c)
Review of first-instance discretionary decisions taken on substantive grounds
3.5.2
Development of the case law on reviewing first-instance discretionary decisions
a)
Early case law on exercising discretion
b)
Recent case law on exercise of discretion under Art. 12(4) RPBA 2007
3.5.3
The boards' own discretion
a)
Submissions refused at first instance admitted on appeal
b)
Submissions not admitted by the boards
c)
Discretion misused by the department of first instance
3.5.4
Submissions admitted at first instance are part of the appeal proceedings
3.5.5
Review of an opposition division's discretionary decision (not) to admit a new ground for opposition
3.5.6
Review of discretion – stay of proceedings
4.
New submissions on appeal
4.1.
Introduction
4.1.1
Legal basis
4.1.2
Rules of Procedure of the Boards of Appeal (RPBA)
4.2.
Principles applying to late submissions
4.2.1
Inter partes proceedings
4.2.2
Ex parte proceedings
4.3.
The boards' discretion
4.4.
State of proceedings
4.4.1
General
4.4.2
Procedural economy
a)
Late-filed requests
b)
Late-filed facts and evidence
4.5.
Amendments after arrangement of the oral proceedings
4.5.1
Late-filed requests
a)
Filing of requests after arrangement of the oral proceedings
b)
Filing of requests during the oral proceedings
4.5.2
Late-filed documents and evidence
4.5.3
Absence from the oral proceedings
a)
Absence of applicant (patent proprietor) from oral proceedings
b)
Absence of opponent from oral proceedings
4.5.4
New submissions after the end of oral proceedings
4.6.
Parties' right to submit observations on amendments – Article 13(2) RPBA 2007
4.7.
Communication of a board of appeal
4.8.
Circumstances extraneous to proceedings
4.8.1
Introduction
4.8.2
Change of representative
4.8.3
Illness of representative
4.8.4
Change of ownership
4.8.5
Business reasons
4.9.
New submissions in proceedings resumed before the boards
4.10.
Late submission of new arguments and lines of attack
4.10.1
New arguments on appeal
4.10.2
New arguments and lines of attack admitted
4.10.3
New arguments and lines of attack not admitted
4.10.4
Reinforcement of arguments
4.11.
Article 12(4) RPBA 2007
4.11.1
General principles
4.11.2
Relationship between Article 12(4) and Article 13 RPBA 2007
4.11.3
Inter partes appeal procedure
a)
Not filing documents and evidence at first instance
b)
Documents and evidence not admitted by the opposition division
c)
Documents and evidence admitted under Art. 12(4) RPBA 2007
d)
Requests not submitted by proprietor in opposition proceedings
e)
Broadening of claims considered by the opposition division
f)
Resubmission of requests withdrawn at opposition stage
g)
Request admitted as a normal procedural development
4.11.4
Ex parte appeal procedure
a)
Admission of requests already refused by the examining division
b)
Requests not submitted in examination proceedings
c)
Resubmission of requests withdrawn during examination
d)
Feature re-introduced on appeal
e)
Interlocutory revision
4.12.
Criteria for consideration of amended claims
4.12.1
Principles applicable to amended claims
4.12.2
Clear allowability of amended claims
a)
General
b)
Examples
4.12.3
Response to objections
4.12.4
Converging or diverging versions of claims
4.12.5
Unsubstantiated requests
4.12.6
Discretion to admit amended claims at any stage of the appeal proceedings
4.12.7
Last chance
4.12.8
Change of subject-matter
4.12.9
Need for additional search
a)
General
b)
Features taken from the description – Art. 13(3) RPBA 2007
c)
Carrying out an additional search
4.12.10
Dependent claims
4.12.11
Number of auxiliary requests
4.12.12
Amended claims not admitted with divisional applications pending
4.12.13
Reinstating broader claims in appeal proceedings
4.12.14
Patent revocation
4.13.
Criteria for considering late-filed facts and evidence
4.13.1
Legitimate reaction to the first-instance decision
a)
General
b)
Late-filed submissions admitted
c)
Evidence of common general knowledge
4.13.2
Relevance
4.13.3
Complexity of new subject‑matter
4.13.4
Cases of abuse of procedure
a)
No abuse of procedure
b)
Abuse of procedure (yes)
4.13.5
Late submission of experimental data
a)
Test reports admitted into the proceedings
b)
Test reports not admitted into the proceedings
4.13.6
Public prior use
a)
No consideration of late-filed evidence of public prior use
b)
Consideration of late-filed evidence of public prior use
4.13.7
Admission of submissions relating to Article 55(1)(a) EPC
5.
Parallel proceedings
6.
Termination of appeal proceedings
6.1.
Closure of the substantive debate
6.1.1
Decision taken as the file stands
6.1.2
Proceedings after delivery of the decision
6.2.
Interlocutory decisions of a board
6.3.
Withdrawal of the appeal
6.3.1
Article 114(1) EPC and withdrawal of the appeal
6.3.2
Board's duty to issue decision when appeal is withdrawn after the decision is announced
6.3.3
Board's powers to decide on issues after withdrawal of the appeal
6.3.4
Partial withdrawal of appeal by sole appellant and opponent
6.3.5
No withdrawal of appeal with retrospective effect
6.3.6
Request for withdrawal of appeal to be unambiguous
6.3.7
Conditional withdrawal of appeal
6.3.8
Correction of withdrawal of appeal under Rule 139 EPC
6.4.
Deemed withdrawal of patent application
7.
Remittal to the department of first instance
7.1.
General
7.2.
Exercise of discretion to remit
7.2.1
No absolute right to have issue decided on at two instances
7.2.2
TRIPS
7.2.3
Criteria applied when exercising discretion
7.3.
Procedural economy
7.3.1
Delay in procedure
7.3.2
Final decision after patent expiry
7.3.3
Obiter dicta
7.3.4
Requests for remittal
7.3.5
Commercial uncertainty
7.3.6
Presentation of new points of view
7.4.
Non-examined patentability issues
7.5.
Remittal where new submissions filed on appeal
7.5.1
Admission of new submissions alters legal and factual framework
7.5.2
Opposition appeal proceedings
7.5.3
Ex parte appeal proceedings
7.5.4
Patent at risk
7.5.5
Remittal to department of first instance ordered
7.5.6
No remittal to department of first instance
7.6.
Remittal following substantial amendments to claims
7.7.
Remittal following fundamental deficiencies
7.7.1
Legal basis
7.7.2
Fundamental deficiencies
a)
Violation of right to be heard
b)
Reasons for decision deficient
c)
Violations of Article 19(2) EPC (composition of the opposition division)
d)
Appellant adversely affected
e)
Content of requests unclear
f)
Failure to hold oral proceedings
g)
Witnesses not heard
7.7.3
Special reasons not to remit under Article 11 RPBA 2007
a)
Special reason identified – no remittal to department of first instance
b)
No special reasons – remittal to department of first instance
7.8.
Remittal for adaptation of the description
8.
Binding effect of decision remitting case to department of first instance
8.1.
Notion of res judicata
8.2.
Department of first instance bound by decision of board of appeal
8.3.
Binding effect in opposition proceedings after remittal to an opposition division
8.4.
Board of appeal bound in subsequent appeal proceedings following remittal
8.5.
Remittal for the continuation of proceedings
8.6.
Remittal only for adaptation of the description
8.7.
Remittal to a differently composed department of first instance
9.
Reimbursement of appeal fees
9.1.
Introduction
9.2.
Examination ex officio
9.3.
Appeal deemed not to have been filed or inadmissible appeal
9.3.1
Appeal deemed not to have been filed due to late payment of the appeal fee
9.3.2
Notice of appeal not filed in due time but appeal fee paid within 2 month period
9.3.3
Appeal inadmissible
9.3.4
Inadmissible or deemed not to be filed – diverging case law and G 1/18
9.3.5
Translation of notice of appeal
9.3.6
No legal ground for payment
9.3.7
Reimbursement of the appeal fee in case of a request for re-establishment
9.3.8
No legal basis for retaining appeal fee in case of intervention in opposition appeal proceedings
9.3.9
Several appellants
9.4.
Allowability of the appeal
9.5.
Substantial procedural violation
9.5.1
Violation must be of a procedural nature
9.5.2
Violation must be substantial and affect the entire proceedings
9.5.3
Procedural violation must be committed by the department whose decision is under appeal
9.5.4
Search
9.5.5
Guidelines
9.5.6
Request for interview
9.5.7
Oral proceedings
a)
Failure to summon for oral proceedings
b)
Submissions of parties as response to summons
c)
No reasons for refusal of request for postponement
d)
No reasons for refusal of request to change location for oral proceedings
e)
Repeated postponements of oral proceedings
f)
Minutes
9.5.8
Right to be heard
9.5.9
Inadequate reasons given in the decision at first instance
9.5.10
Error of judgment by a department of first instance
a)
Communications
b)
Wrong assessment of prior art or technical content
c)
Error in the application of the law
d)
Board reaches a different conclusion than the department of first instance
e)
Exercising of discretion
f)
Wrong procedure adopted
g)
Following earlier decisions
9.5.11
Cases concerning the decision-making process and the decision
a)
Issuing of decision
b)
Content of decision
c)
Requests
d)
Amendments
e)
Signature on decision and minutes
f)
Composition of opposition division
9.5.12
Partiality
9.5.13
Suspensive effect of appeal
9.5.14
Non-compliance with order of the board
9.5.15
Referral pending before Enlarged Board
9.5.16
Refusal of application on one ground only
9.5.17
Cases concerning documentation and communications passing between the EPO and the parties
a)
Ambiguous communication or wrong form
b)
No reply to communication under Article 101 EPC
c)
Wrong type of communication
d)
Period set for opponent to reply to patentee's response
e)
Observations not forwarded to other party
f)
Appointment of professional representative
g)
Warning in relation to a grace period
9.6.
Reimbursement of appeal fee in case of interlocutory revision
9.6.1
Requirements
9.6.2
Competence to decide on reimbursement
9.6.3
Examining division should have rectified decision
9.6.4
A rectification decision maintaining earlier decision
9.6.5
Re-opening examination after rectification
9.7.
Reimbursement must be equitable
9.7.1
Causal link between substantial procedural violation and filing of appeal
9.7.2
Conduct of appellant
a)
Reimbursement held not to be equitable
b)
Reimbursement held to be equitable
9.7.3
Violation of the principle of the protection of legitimate expectations
9.8.
Withdrawal of appeal
9.8.1
Withdrawal of appeal under Rule 103(1)(b) EPC
9.8.2
Withdrawal of appeal under Rule 103(2) EPC
 

Source: http://www.epo.org/law-practice/legal-texts/html/caselaw/2019/e/clr_v_a.htm

Date retrieved: 17 May 2021

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Case Law Book: V Priority