Appeal procedure before the European Patent Office

Decisions of the first instance departments of the European Patent Office (EPO) can be appealed, i.e. challenged, before the Boards of Appeal of the EPO, in a judicial procedure (proper to an administrative court), as opposed to an administrative procedure.

In October 2017, the Boards of Appeal moved to Haar, a municipality located 12 km east of Munich's city centre.

[3][4] In contrast to the Boards of Appeal, the Examining Divisions and Opposition Divisions, i.e. the first instance departments carrying the examination of patent applications and of oppositions to granted European patents, are not all based in a single location; those may be in Munich, in Rijswijk (a suburb of The Hague, Netherlands), or in Berlin, Germany.

[5] The Enlarged Board of Appeal does not constitute an additional level of jurisdiction in the classical sense.

It is indeed only since December 2007 and the entry into force of the EPC 2000, the revised European Patent Convention, that a petition for review of a decision of a Board may be filed,[10] albeit on limited grounds.

[13][14] It is directed by the President of the Boards of Appeal,[13] a position held as of 2018 by former Swedish Judge Carl Josefsson.

[17][14][18] The Boards of Appeal Committee consists of six members, three of whom are members of the Administrative Council itself (i.e. representatives of the Contracting States within the meaning of Article 26 EPC) and the remaining three are "serving or former judges of international or European courts or of national courts of the Contracting States".

[19][20] The reform was undertaken by the Administrative Council "within the existing framework of the European Patent Convention, without requiring its revision.

[21] The Boards of Appeal are not competent, however, to review decisions taken by the EPO acting as international authority under the Patent Cooperation Treaty.

[35] In other words, in such a case, the first instance department "is not competent to refuse a request of the appellant for reimbursement of the appeal fee.

When doing so, "the boards have competence to review appealed decisions in full, including points of law and fact".

[47] In that context, if the first instance department exercised its discretion (pursuant to Article 114(2) EPC) to admit facts or evidence which were not submitted in due time by a party, the Board "should only overrule such a decision, if it concludes that the department that took it applied the wrong principles, took no account of the right principles, or exercised its discretion in an unreasonable way, thus exceeding the proper limits of its discretion".

[59] The oral proceedings in appeal are held in Haar or Munich, and are public unless very particular circumstances apply.

[64] To prepare the oral proceedings, the Board shall "issue a communication drawing attention to matters that seem to be of particular significance for the decision to be taken".

[72] More generally, a substantial procedural violation is "an objective deficiency affecting the entire proceedings".

[5][85] Outside the European Patent Office, the decisions of the Boards of Appeal are not strictly binding on national courts, but they certainly have a persuasive authority.

[93] This third body would have its own budget, would have its seat in Munich, Germany and would be supervised "without prejudice to its judicial independence" by the Administrative Council of the EPO.

[93] The EPO has also proposed that the members of the Boards of Appeal should be appointed for lifetime, "with grounds for termination exhaustively regulated in the EPC".

[95] According to some experts, the calls to improve the institutional independence of the Boards of Appeal have not received so far the appropriate consideration by the Administrative Council of the European Patent Organisation.

The decision shows the persistent disquietude caused by the integration of the Boards of Appeal into the European Patent Office.

The first letter (or the text "Art 23") of the reference indicates the type of board which took the decision: The number before the oblique is the serial number, allocated by chronological order of receipt at the DG3, the Directorate General 3 (Appeals) of the European Patent Office.

[100] In addition to their alphanumeric reference, decisions are sometimes referred to and identified by their date to distinguish between decisions regarding the same case issued at a different date (e.g. T 843/91 of 17 March 1993 [1] and T 843/91 of 5 August 1993 [2], T 59/87 of 26 April 1988 [3] and T 59/87 of 14 August 1990 [4] or T 261/88 of 28 March 1991 [5] and T 261/88 of 16 February 1993 [6]).