APPEAL PROCEEDINGS
UNDER THE EUROPEAN PATENT CONVENTION
AND UNDER GERMAN PATENT LAW
1.
Judicial Review
Decisions of a Patent Office are decisions of a public administration. It is a
fundamental right in modern constitutional states that the citizen may have
administrative decisions reviewed by independent courts1. This is part of the principle
of separation of powers developed already in the ancient world by the Greek
philosopher Aristoteles and taken up in the European age of enlightenment by the
French philosopher Montesquieu. The guarantee of access to judicial review applies in
patent matters as in any other branch of public administration.
2.
Appeal Bodies - Art. 21 to 24 EPC, § 65 PA
In Germany, the Federal Patent Court in Munich was established in 1961. It is a
special court having exclusive competence for appeals against decisions of the
German Patent and Trademark Office (DPMA). In addition, the Federal Patent Court
deals in first instance with actions for revocation of a patent. Last instance in patent
matters is the Federal Supreme Court, the highest instance in civil matters in Germany.
In the European patent system, there is only a single and final instance of judicial
review, i.e. the Boards of Appeal. Although the Boards of Appeal are part of the
European Patent Office (EPO), appropriate legislative measures have been taken in
order to guarantee their court-like status, in particular by the provisions in Article 23
EPC. The members of the Boards are not appointed by the President of the EPO but by
the Administrative Council composed of the delegates of the contracting states. They
are appointed for a period of five years and may not be removed from office during
this term. Re-appointment is possible and usual. The status of a member of the Boards
is incompatible with a function in the departments of first instance. In their decisions,
1
Cf. Art. 19(4) of the German Constitution
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board members are not bound by any instructions and shall comply only with the
provisions of the EPC. Within the Boards of Appeal, the Presidium, consisting of
chairmen and members of the Boards, is the autonomous authority responsible
pursuant to Rule 10 EPC inter alia for adopting the Boards’ Rules of Procedure and
for allocating duties to the Boards and designating their members in the Business
Distribution Scheme.
Considering the above status of the Boards of Appeal, national courts have recognised
them as a proper judiciary body complying with internationally accepted standards.
Hence, decisions of the Boards of Appeal are not subject to any further review by a
national or European body2.
3.
Decisions Subject to Appeal - Art. 106(1) EPC, § 73(1) PA
Any final ruling by which a party is adversely affected is subject to appeal.
The most important decisions are in
grant proceedings (ex parte)
o refusal of the application
o decision confirming the noting of a loss of rights
e.g. the fiction of withdrawal of the application after non-payment of a
renewal fee, or after a failure to observe the time limit for reply to an
examination report
opposition proceedings (inter partes)
o rejection of an opposition
-
adverse to the opponent
o revocation of the patent
-
adverse to the proprietor
o maintenance of the patent
-
possibly adverse to both
in limited form
parties
Different from some other patent systems, final decisions of the DPMA or the EPO are
not related to individual claims or individual sets of claims but to the application or the
E.g. UK High Court of Justice – Queens Bench Division and Patents Court, R.P.C. 1997, 245 – Lenzing AG’s
European Patent; Bavarian Administrative Court, OJ EPO 2000, 205 – National Review of EPO decisions II.
2
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patent as a whole. This means that the application or the patent as a whole is the object
of the appeal proceedings.
Decisions not terminating the proceedings are not subject to appeal, unless a separate
appeal is allowed. An example may be in ex parte proceedings a decision stating the
loss of right of priority or in inter partes proceedings an interim decision that one of
several oppositions is considered admissible.
4.
Appeal Procedure
4.1
Sources of Law
The most important procedural provisions to be applied in appeal proceedings are for:
the EPO:
Provisions of the Convention exclusively related to appeal proceedings:
Article 106 to 112, Rules 64 to 67 EPC
Common provisions of the Convention governing procedure:
Articles 113 to 126, Rules 68 to 91 EPC
Provisions of the Convention relating to first instance proceedings
to be applied mutatis mutandis pursuant to Rule 66(1) EPC.
Rules of Procedure of the Boards of Appeal (RPBA)
Business Distribution Scheme of the Boards of Appeal
Principles of procedural law generally recognised in the contracting states to be
taken into account pursuant to Art. 125 EPC in the absence of relevant
provisions in the Convention
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the Federal Patent Court:
Provisions of the Patent Act (PA) exclusively related to appeal proceedings
§§ 73 to 80 PA
Institutional provisions for the Federal Patent Court
§§ 65 to 72 PA
Common provisions of the Patent Act for all proceedings
before the Federal Patent Court
§§ 86 to 99 PA
Law of civil procedure to be applied mutatis mutandis according to § 99 PA
Neither the EPO Boards of Appeal nor the Federal Patent Court is bound by any
Directives or Guidelines issued by the administration for the departments of first
instance.
4.2
Requirements of Admissibility
4.2.1 Entitlement to Appeal - Art. 107 EPC, § 74 PA
An appeal may be filed by any party to the first instance proceedings which is
adversely affected by the contested decision. A party is adversely affected by a
decision which does not accede to its main request. Therefore, the applicant or the
proprietor is not entitled to appeal if the patent was granted or maintained in
accordance with his main request. On the other hand, an opponent is not entitled to
appeal if the Opposition Division maintained the patent in a version to which he did
not object.
Parties to the first instance proceedings having not filed an admissible appeal are
parties as of right in appeal proceedings. In general, a party as of right has the same
procedural rights as an appellant. It has the right to be heard and to make comments on
the relevant issues as well as the right to file procedural or substantive requests. The
only exception to full party status is that a party as of right cannot continue
proceedings if no further admissible appeal remains pending.
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The body having rendered the contested decision is not a party to the proceedings.
Therefore the Examining or Opposition Division cannot defend its decision in appeal
proceedings. In Germany, the President of the DPMA may make submissions in
appeal proceedings pursuant to § 77 PA. Under § 78 PA, the Federal Patent Court may
give the President the opportunity to accede to the proceedings. The purpose of these
provisions is to give the President the possibility to introduce aspects of public and
general interest into the proceedings. In the case of accession, the President acquires
party status and may lodge an appeal on a point of law to the Federal Supreme Court.
4.2.2 Formal Requirements of an Appeal - Art. 106 to 108 EPC, § 73(2) PA
In EPO proceedings, a notice of appeal must be filed within 2 months after the date of
the notification of the contested decision. The notice of appeal has to contain the
details specified in Rule 64 EPC in order to identify the parties, the contested decision
and the object of the appeal proceedings. Within the same time limit a fee for the
appeal of € 1065 has to be paid, otherwise the notice of appeal is deemed not to have
been filed.
Within 4 months from the notification of the decision, a statement of grounds of
appeal has to be filed. It has to state the legal and factual reasons why the decision
under appeal should be set aside and the appeal allowed. A mere reference to the
submissions made in first instance proceedings is not sufficient.
In his grounds of appeal, the appellant may submit that the contested decision was
wrong in its assessment of the facts or the application of the law. However, the
appellant may also change the factual basis of the case in relying on new facts or in
changing his requests. For example, the opponent may file test results showing that the
alleged advantages of the claimed subject-matter are not obtained or the proprietor
may file limited claims for distinguishing the invention from the prior art.
In German law, the time limit for filing the appeal and paying the appeal fee is only 1
month. The amount of the appeal fee is € 500 or € 200 depending on the object of the
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appeal proceedings. Filing of a statement of grounds of appeal is not a requirement of
admissibility but reasons for the appeal are usually filed.
4.3
Interlocutory Revision - Art. 109 EPC, § 73(3) PA
In ex parte proceedings, the department whose decision is under appeal may rectify its
decision if it considers the appeal to be admissible and well founded. An appeal is well
founded if the reasons for the contested decision no longer apply. This will rarely
happen if the appeal is only based on arguments. Interlocutory revision does not imply
that a decision favourable to the applicant will automatically follow.
Typical situations for interlocutory revision are:
o The appellant files as a main request an amended text of the application
which overcomes the objections made previously. This applies even if the
new version gives rise for new objections.
o The department of first instance committed a procedural error violating the
applicants procedural rights, e.g. by not taking account of an amended
version of the application or not following a request for oral proceedings.
Interlocutory revision is not at the discretion of the department concerned. Rather, the
contested decision has to be rectified if the legal conditions therefor are present.
4.4
Representation - Art. 133, 134, Rule 101 EPC, § 97, 25 PA
The provisions for representation in appeal proceedings are in essence the same as
those applying in first instance proceedings.
This means in EPO appeal proceedings:
o Parties not residing in a member states to the EPC need a representative
within the meaning of Article 134 EPC, they are not entitled to act
themselves;
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o Parties residing in a member state need not be represented,
they may act themselves or act through an employee;
o Representation may only be undertaken by
-
professional representatives entered on a list maintained by the EPO, in
accordance with Article 134 EPC (European patent attorneys), who

either have passed the European qualifying examination, or

have been entered on the list within one year from the
entering into force of the Convention for a new contracting
state under the conditions of Article 163(6) EPC. This is
possible for persons who were entitled to undertake
representation before the national patent office in the
respective state (grandfather clause);
-
legal practitioners (attorneys at law) entitled to act before the
national patent office in accordance with Article 134(7) EPC.
o Employees and legal practitioners have to file an authorisation.
European patent attorneys entered on the list have to file an authorisation
only if required to do so by the EPO.
o Notifications by the EPO have to be addressed to the duly appointed
representative.
European patent attorneys shall be members of the Institute of Professional
Representatives before the EPO (epi). The annual fee for the membership is at
present € 170. Payment of the fee is part of the member’s professional obligations.
Non-payment may entail disciplinary action including deletion from the list of
professional representatives.
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In proceedings before the Federal Patent Court, the following applies:
o Parties residing outside Germany have to appoint a patent attorney or
attorney at law residing in Germany. The requirement of representation
does not exclude a party from acting itself.
o An authorisation has to be filed only on invitation by the Court.
German patent attorneys shall be members of the Chamber of German patent
attorneys. The annual membership fee depends on the size of the office. € 500
have to be paid for each attorney, € 150 for each employee. In case of nonpayment rules corresponding to those of the epi apply.
4.5
Substantive Examination of the Appeal - Art. 110 EPC
Appeal proceedings are not a mere continuation of first instance proceedings. They are
wholly separate and independent from first instance proceedings. Their function is to
give a judicial decision upon an earlier decision of the department of first instance.
This function limits in appeal proceedings the principle of ex officio examination
which is applicable to all first instance and appeal proceedings. Therefore, the appeal
body does not conduct own investigations in order to clarify the relevant facts. For
example it does not carry out or order a supplementary search. On the other hand, an
appeal body is not prevented from using information not evident from the file of which
it is aware, be it from other sources like a parallel appeal case be it on the basis of the
technical expertise of its members.
As a consequence of the suspensive effect of the appeal, the contested decision has no
legal effect and must not be implemented until the appeal is resolved.
As a consequence of the devolutive effect of the appeal, the first instance loses its
competence for the further prosecution of grant or opposition proceedings. Unless
interlocutory revision is possible and allowed, the department of first instance cannot
interfere in the appeal proceedings by setting aside the decision under appeal.
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4.6
Late Submissions - Art. 114(2) EPC
In proceedings before the EPO, the principle of examination ex officio pursuant to
Article 114(1) EPC3 is supplemented by the possibility that late submissions are
disregarded under Article 114(2) EPC. A more specific provision for appeal
proceedings stipulates in Article 10a (2) of the Rules of Procedure for the Boards of
Appeal (RPBA) that the statement of grounds of appeal and the reply thereto shall
contain a party’s complete case. They shall set out clearly and concisely the reasons
why it is requested that the decision under appeal be reversed, amended, or upheld,
and should specify expressly all the facts, arguments and evidence relied on.
Accordingly, Art 10b (1) RPBA stipulates that any later amendment of a party’s case
may be admitted and considered at the Board’s discretion. The discretion shall be
exercised in view of inter alia the complexity of the new subject matter submitted, the
state of the proceedings and the need for procedural economy. Eventually, Article 10b
(3) RPBA stipulates that amendments sought to be made after oral proceedings have
been arranged shall not be admitted if they raise issues which the Board or the other
parties cannot be reasonably be expected to deal with without adjournment of the oral
proceedings.
In contrast, late submissions are normally not refused in German appeal proceedings.
Whereas the procedural rules generally applicable in civil procedure provide for the
possibility of refusing late submissions, the provisions for appeal proceedings in patent
matters do not. According to German case law, a refusal of late submissions is
considered contrary to the principle of ex officio examination.
4.7
Oral Proceedings - Art. 116 EPC, §§ 69, 78, 89, 90 PA
Proceedings before a patent office are normally written proceedings. The application is
filed in writing, communications are issued in writing, decisions are rendered in
writing and also the final product, the patent is a written document. Oral proceedings
are an exception to this written procedure.
3
For the Federal Patent Court: § 87 PA
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4.7.1 Appointment of Oral Proceedings
In the EPO, the parties are entitled to have oral proceedings, except in first instance
proceedings before the Receiving Section (Examination on filing and as to formal
requirements). In appeal proceedings the right to have oral proceedings is not limited
at all.
Oral proceedings are an aspect of the parties’ right to be heard since they give a party
the possibility to argue its case in an efficient and convincing way. Oral proceedings
are also an important tool for the deciding body. It gives the opportunity to speed up a
case by clarifying the facts by putting appropriate questions to the parties and their
experts and by considering arguments and immediate counterarguments in inter partes
proceedings. It allows to separate contested issues from non-contested issues and to
avoid lengthy discussions about points which turn out to be irrelevant. The parties
have the possibility to adapt their requests to the development of the case in a flexible
way. Oral proceedings are indispensable if evidence is to be taken, e.g. by hearing a
witness.
Appeal proceedings are judicial proceedings to which Article 6(1) of the European
Convention on Human Rights applies according to which ”in the determination of his
civil rights (…) everyone is entitled to a fair and public hearing within a reasonable
time by an independent and impartial tribunal established by law”. Hence, proper oral
proceedings are an aspect of generally accepted legal principles according to the Law
of Treaties.
For these reasons, oral proceedings have to be appointed on a party’s request. A
request cannot be refused because the appeal body considers oral proceedings
unnecessary or inappropriate.
Quite often oral proceedings are appointed ex officio in order to come to an end with a
case, in particular if a case is legally or technically complex or if a party seems to
apply delaying tactics. If a duly summoned party does not appear, oral proceedings
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can be continued in its absence. The absent party is treated as relying on its written
submissions.
It is not up to the parties to choose the point of time for holding oral proceedings. It is
intended that a case is ready for decision at the conclusion of the oral proceedings.
Therefore, it is proper case management that the relevant legal questions are properly
addressed and factual questions clarified before oral proceedings are held. Although
the EPO Boards of Appeal are not obliged to issue communications accompanying the
summons, in the majority of cases such communications are sent in order to
concentrate the oral proceedings on the decisive issues. On the contrary in proceedings
before the German Federal Patent Court, communications preparing the oral
proceedings are rare.
The right of a party is restricted to have oral proceedings once. An exception applies if
the composition of the appeal body, the identity of the parties or the subject of the
proceedings changes.
Once oral proceedings are appointed, they are cancelled and another date fixed only if
the requesting party advances serious reasons justifying the postponement. Examples
of such reasons are serious illness or the previous summons to oral proceedings in
another case. Documents establishing the reasons put forward may be required.
Pressure of work is not accepted as a reason for postponement.
4.7.2 Language of the Proceedings - Art. 14, Rule 2 EPC, § 126 PA
According to German law, the language of the proceedings is German.
Under the EPC, the situation is a bit more complicated.
The EPO has the 3 official languages, i.e. English, French and German. According to
Article 14 (3) EPC, the language in which the application was filed remains the
language of the proceedings. However, under Rule 2 EPC any party may use any other
official language in oral proceedings if it informs the EPO accordingly, at the latest 1
month before the fixed date. In this case, the EPO has to provide for interpretation. In
the worst case scenario, interpretation is necessary in six directions: EN -> FR, FR ->
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EN, GE -> EN, EN -> GE, FR -> GE, GE -> FR. In daily practice, often English is
used by non-native speakers restricting thereby the need for interpretation.
4.7.3 Participation
Oral proceedings are public, unless the application has not yet been published.
Therefore, participation is not restricted to parties and their representatives. Quite
often several persons accompanying the parties are present. An exception applies in ex
parte proceedings if the case concerns an unpublished application. In such a case, oral
proceedings are not public in order to keep the content of the application secret until
its publication.
In EPO appeal proceedings accompanying persons may be given the opportunity to
take the floor at the discretion of the board. However, the identity and qualification of
the person as well as the technical or legal topic on which his or her intervention is
intended have to be announced early enough to give any other party the opportunity to
avail itself of a corresponding assistance. The accompanying person is not allowed to
present the whole case. His or her submissions have to remain under the control and
supervision of the authorised representative.
4.7.4 Course of Oral Proceedings
o The Registry checks the identity of the parties and their representatives.
o The Chairman of the Board opens the oral proceedings. He gives an
introduction into the case at the end of which the parties are invited to
confirm their written requests or to submit any additional requests.
o The parties are given the opportunity to make their submissions.
The Chairman indicates the sequence in which the relevant questions are to
be discussed.
Sometimes as a preliminary point, the meaning of certain terms in the
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claims or the question what is to be considered as the core of the invention
are discussed.
As a rule, discussion takes place in the following structure:
-
Admission of late submissions (EPO only)
The question of the admission may also be left open at this stage
because the late submissions may turn out to be irrelevant in
substance, which makes a separate procedural discussion
superfluous
-
Formal allowability of the claims including any amendments

New subject-matter pursuant to Article 123(2) EPC,
§ 38 PA

Extension of protection pursuant to Article 123(3) EPC,
§ 22(1) PA

-
Clarity pursuant to Article 84, Rule 29 EPC
Substantive requirements, Art. 52 to 56, 83 EPC,
§§ 1 to 5, 34(4) PA

Subject-matter eligible for patent protection,
e.g. business methods

Sufficiency of disclosure

Novelty

Inventive step
according to the problem-solution-approach
As a rule, first the appellant speaks and thereafter the respondent.
A reverse order may be appropriate if the respondent/proprietor has submitted
new claims. He may be given an opportunity to start with an explanation of his
new request.
After the submissions of the parties, the Chairman or the other members of the
Board may ask supplementary questions to the parties.
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There is no fixed number of rounds of discussion. It is up to the Chairman to
prevent parties from submitting repetitive arguments.
When the discussion is finished the Chairman states the final requests of the
parties and declares the debate closed. This has the consequence that the parties
are prevented from making further oral or written submissions.
The Chairman interrupts the oral proceedings for the deliberation of the Board.
The proceedings may also be interrupted several times for the deliberation of
separate issues. In this case, the Chairman may close the debate for the specific
issue.
o After the deliberation of the Board following the discussion of all topics,
the Chairman resumes the oral proceedings. If the Board sees a need for
further discussion, the debate may be reopened. Also a party may at this
stage request that the debate be reopened. Without reopening of the debate
no further submissions of the parties are allowed.
o If the Board has come to final conclusions, the Chairman announces the
decision of the Board. He may announce a final decision but also order that
the proceedings are to be continued in writing or that a date for announcing
the final decision is fixed. Having announced the Board’s decision, the
Chairman closes the oral proceedings.
4.7.5 Minutes - Rule 76 EPC, § 92 PA
The minutes of the oral proceedings contain details about the parties and the persons
present in the proceedings, the requests and the order of the decision. Details about the
course of the discussion are normally not in the minutes of oral proceedings in appeal
cases. Rather, a summary of the parties’ submissions appears in the section Facts and
Submissions of the written decision as far as they appear relevant to the final decision.
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4.8 Content of Final Decisions - Art. 111 EPC, § 79 PA
As indicated above, the object of appeal proceedings is the application or the patent as
a whole. This implies that the power to deal with all issues relating to the application
or the patent passes from the department of fist instance to the appeal body.
Therefore, the appeal body is not restricted to render a decision setting aside the
contested decision and to remit the case for further prosecution, it can also give a
positive decision on the application or the patent on a basis different from that of the
contested decision, e.g. on the basis of amended claims. The appeal body may exercise
any power within the competence of the department responsible for the contested
decision or it may remit the case to the first instance for further prosecution.
In exercising its discretion in this respect, the appeal body will consider a party’s
interest in having two instances deciding the respective question or in having a speedy
decision, the possible delay in the proceedings and a possible need for further search
or substantive examination.
5.
Organisation - Workload
5.1
Federal Patent Court
Technical appeal cases in patent matters are at present allocated to 13 Senates deciding
in panels with a technically qualified chairman, two technically and one legally
qualified members.
For the year 2005, the statistical data for technical appeal cases matters are as follows:
Cases received: 920 Cases settled: 540
Cases remaining pending: 1846
The average pendency of settled cases by the Senates for technical appeals was
25 months.
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Over the recent years, the statistical data are somewhat distorted since for a
transitional period from January 2002 until 2006 the Court was in charge of first
instance proceedings for oppositions. Therefore, on the hand the Court had an
additional task, on the other hand from oppositions filed during this period no appeals
have arisen.
5.2
EPO Boards of Appeals
Appeal cases are at present allocated to 24 Technical Boards of Appeal deciding in
panels with two technically and one legally qualified members, the Chairman being
technically or legally qualified. A Board can be enlarged by two members, one legally
and one technically qualified.
For the year 2005, the statistical data for technical appeal cases are as follows:
Cases received: 1598
Cases settled: 1395
Cases remaining pending: 3340
The percentage of ex parte cases is increasing from previously some 33% to more than
40%.
The average pendency of the settled cases was in ex parte cases 24 months and in
inter partes cases 31 months.
The number of oral proceedings held exceeded 1000.
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