Appeals

Decisions subject to appeal

Decision

Principle

It can be complex to identify decisions during the various exchanges with the EPO.

It is the content of a document and not its form that indicates whether the document actually contains a decision (J8/81).

By way of illustration, a notification, objectively interpreted in its context, may be understood by its recipients as a final and binding determination of substantive or procedural issues (for example the significance of the date of resumption of the procedure, J12/19).

What is not a decision

The minutes of an oral procedure (T838/92) are not a decision.

A notification under Rule 71(3) EPC, indicating that the main request is rejected but that the auxiliary request meets the conditions of the EPC is not a decision (T1377/15) subject to appeal.

Case of final decisions

A final decision is a decision that ends the procedure (Article 106(2) EPC).

It is possible to file an appeal against these decisions provided that the conditions below are met.

Case of interlocutory decisions

It is possible to file an appeal against an interlocutory decision (Article 106(2) EPC) if said decision provides for a separate appeal.

The separate appeal is allowed, according to the consistent practice of the Boards of Appeal:

• against interlocutory decisions concerning the admissibility of the opposition and
• against interlocutory decisions concerning the maintenance of the patent in an amended form.

In this case, the possibility of filing an appeal against this decision must be included in the order (T756/14).

Rendered by…

An appeal is possible against decisions (Article 106(1) EPC):

• of the Receiving Section,
• of the Examining Division,
• of the Opposition Division (even if the patent is abandoned/lapsed in all countries Rule 98 EPC), and
• of the Legal Division.

Thus, no appeal is possible against decisions:

• of the Search Division,
• of the President of the EPO.

Indication of a possible appeal

Normally, decisions subject to appeal must be reasoned and contain a mention indicating that an appeal is possible (Rule 111(2) EPC).

Parties cannot rely on the omission of this mention (Rule 111(2) EPC) and this does not constitute a substantial procedural defect (T42/84).

Types of decision

Not granting the requests

Principle

An appeal is only possible against decisions that have harmed the party wishing to appeal (A107 EPC together R101(1) EPC).

Case of requests

Regarding auxiliary requests:

• an appeal is possible if an auxiliary request is granted while the main request is not abandoned (T234/86);
  • However, the appeal must be analyzed in concreto: in the appeal, the proprietor must defend the main request that was rejected (otherwise the appeal will be deemed inadmissible).
  • The proprietor cannot simply submit a new request (possibly based on the main request) (T327/13);
• no appeal is possible if the party has abandoned the main request and accepted an auxiliary request (T541/00);
• to truly abandon the main request, it is necessary to submit the complete text of the application / patent to bring it into line with the request (T977/02).
• auxiliary requests filed in response to the provisional opinion of the opposition division, known as « carry-over requests, » are considered to have been validly raised and maintained if they were filed in due time and maintained throughout the procedure (A12(4) RPBA), and therefore cannot be considered as amendments (T951/22).

If an opponent has requested partial revocation of the patent and the request has been granted, they cannot file an appeal to request total revocation (T299/89).

Case of the grant text

If the applicant makes a mistake regarding the grant text and gives their consent, we cannot say that the decision does not meet their claims (T1795/15): in this case, the appeal will be inadmissible.

It may happen that the text of Rule 71(3) is clearly erroneous (e.g., a page is missing out of two) but the proprietor still gives their consent to the text.

Under this hypothesis, the boards of appeal may still accept an appeal against the grant decision by considering that the EPO’s practice of making minor changes to the text and justifying its changes would not be followed: the text attached to the notification under Rule 71(3) EPC could not be the text according to which the examining division intended to grant the patent (T1003/19). However, some other decisions (T2277/19, T265/20) criticize this approach as there would be no legal basis to justify such a discrepancy in treatment.

Ending the procedure

Furthermore, an appeal is only possible if the decision ends the procedure (i.e., final, A106(2) EPC).

For decisions that do not end the procedure, an appeal is only possible (A106(2) EPC):

• if the decision provides for it;
• or with the final decision.

For example, an appeal is only possible with the final decision against:

• the rejection of an extension of a time limit (J37/89);
• the refusal of a priority is not subject to appeal.

Special case of the fixing/allocation of costs

The decision on the allocation of costs is not subject to appeal if it is the sole subject of the appeal (A106(3) EPC together R97(1) EPC).

Moreover, if an appeal is filed concerning the fixing of costs, this appeal will only be admissible if the amount at stake is greater than that of the appeal fee (A106(3) EPC together R97(2) EPC).

Capacity of persons who can file an appeal

Principle

Only parties who have not obtained what they requested can file an appeal (A107 EPC).

By « whose claims have not been allowed » is meant:

• at least the main request has been rejected;
• the fact that a decision has been made while the party has not taken a position on a notification (T457/89, G1/88): the principle that silence implies consent « Qui tacet consentire videtur » does not apply;
• the fact that a previous main request has been rejected (this is debatable but… T537/05).

If the patent is maintained in amended form on the first main request of the party concerned, its appeal is then impossible (T332/06).

If a person is no longer a party to the proceedings during the first instance (e.g., withdrawal of an opposition), then they cannot file an appeal (T789/89).

Similarly, it is impossible to file an appeal if it has been declared in the first instance that we had no arguments regarding the request that was going to be granted by the EPO (T735/13).

Applicant or proprietor

The applicant or the proprietor can very well file an appeal.

Representative

The representative of this party cannot not file an appeal in their own name (J1/92).

If they file an appeal, it is on behalf of their client(s).

Opponent / Intervenor

An opponent can, of course, file an appeal since they are a party to the proceedings.

The intervenor at the opposition stage can also file an appeal (G3/04).

Focus on other possible appellants

We often think of the proprietor, the applicant, or the opponent, but the following persons may also file an appeal:

• the inventor concerning the decision relating to the correction of the designation of the inventors (R21 EPC) ;
• the assignee or the licensee concerning the decision relating to the registration (R22 EPC) of a transfer or a license (R23 EPC) ;
• a third party concerning the decision relating to public inspection (A128 EPC, e.g., a refusal, J27/87).

Case of co-applicants, co-proprietors, or co-opponents

There may be several parties filing an appeal.

Co-applicants or co-opponents who have filed a joint opposition may file an appeal if it is presented by the common representative (G3/99).

If the notice of appeal is not presented by the common representative, the Board of Appeal will consider that the signature (R50(3) EPC) is missing. In this case (G3/99), a letter will be sent to the common representative with a notification giving them the opportunity to comply with the requirements of the EPC.

The appeal must be filed in the name of all the applicants by the duly designated common representative (G3/99, T1154/06, R18/09). Otherwise, the appeal must be considered inadmissible.

If the common representative files an appeal in the name of only one of the co-applicants, the appeal will be inadmissible and the EPO will not send any notification to the common representative to give them the opportunity to correct it (T755/09).

If an appeal is jointly filed by an authorized person and an unauthorized person (not being a party to the first instance proceedings), this joint appeal should be interpreted as an appeal filed by the authorized person only (T158/19).

Non-appellant parties

The other parties to the proceedings are, by law, parties to the appeal proceedings (A107 EPC).

However, if the last person who filed an appeal withdraws, the other parties who have not filed an appeal cannot continue the proceedings (G2/91).

Case of an assignment

If an assignment (other than universal succession, T15/01) has taken place after the decision, it is necessary to register this assignment in the EPO Register before filing an appeal (T656/98) i.e., before the end of the appeal period. It is necessary to provide the documents establishing the transfer, request the transfer, and pay the transfer fee (R22 EPC).

In the case of a partial assignment, the right to appeal can a priori be assigned as an accessory to the assigned department, if the action was brought in the interest of the assigned asset (by analogy with G4/88, T563/89).

Being economically linked is not sufficient to have the right to file an appeal (T298/97).

Case of a deletion

Let’s imagine the following situation: a company X that has been dissolved (without a successor) following a bankruptcy files an appeal against an opposition.

Is this appeal admissible?

To answer this question, we need to look at the national law of company X to see if it can be considered as a legal entity with the capacity to act (T796/12).

Indeed, some laws allow a dissolved company to perform procedural acts such as initiating a lawsuit if the dispute is related to any form of economic interest (e.g., under German law).

Correction of the appellant

Principle

According to the Enlarged Board of Appeal (G1/12), it is quite possible to correct the name of the appellant:

• using Rule 101(2) EPC, if, within the time limit for the appeal, the appellant is identifiable:
  • it is necessary to evaluate the true intention of the appellant, an intention which is evaluated according to the principle of free evaluation of evidence;
• using Rule 139 EPC, under the conditions provided by the case law even outside the appeal period:
  • the appellant bears the burden of proof, which must be of a high standard.

Subsidiary appellant

If there is justifiable legal uncertainty about how to interpret the law, it is possible to file an appeal with an appellant and, subsidiarily, another appellant according to another interpretation (if the legal interpretation was erroneous, G2/04).

Competent body

Principle

The Board of Appeal is competent to hear appeals (ohhhh… surprise!! Article 21 EPC).

The Boards of Appeal are subject to the Rules of Procedure of the Boards of Appeal (RPBA). These rules codify the case law of the Boards of Appeal in terms of procedural practices. Furthermore, the fact that the Praesidium adopts the RPBA (Rule 12(3) EPC) does not deprive it of a legal basis because the RPBA is also approved by the EPO’s Administrative Council (T1100/10).

Composition

This board is composed as follows:

• for ex-parte proceedings:
  • against decisions of the Receiving Section or the Legal Division:
    • of 3 legal experts for appeals (A21(2) EPC);
  • against decisions of the Examining Division:
    • 2 technical experts and 1 legal expert
      • (if refusal of an application, grant, limitation or revocation of a patent and if the decision was made by fewer than 4 members) (A21(3) a) EPC);
      • (if the appeal concerns the rejection of a request for reimbursement of search fees under R64(2) EPC made by fewer than 4 members) (G1/11);
    • 3 technical experts and 2 legal experts
      • (if the decision was made by 4 members or if the Board of Appeal considers that the nature of the appeal requires it) (A21(3) b) EPC);
      • (if the appeal concerns the rejection of a request for reimbursement of search fees under R64(2) EPC made by 4 members) (G1/11);
    • 3 legal experts otherwise (A21(3) c) EPC).
• for inter-partes proceedings:
  • against decisions of the Opposition Division:
    • 2 technical experts and 1 legal expert (if the decision was made by 3 members) (A21(4) a) EPC);
    • 3 technical experts and 2 legal experts (if the decision was made by 4 members or if the Board of Appeal considers that the nature of the appeal requires it) (A21(4) b) EPC).
  • against decisions of the Receiving Section or the Legal Division:
    • of 3 legal experts for appeals (A21(2) EPC).

This board has the status of a judicial body, thus the independence of its members is guaranteed.

In particular, they cannot be part of the Receiving Section or any other division.

Recusal of a member of a Board of Appeal

If a member of the Board of Appeal is suspected of bias, a party may request the recusal of that member (A24(3) EPC), but only before any procedural act if, before this act, the party was aware of the reason for recusal.

A priori, the fact that a member of the Opposition Division is a former employee of the applicant is not a sufficient reason to declare that this member is biased (T143/91). This applies a priori to members of the Board of Appeal.

If a member of a board has a close family relationship with a party, it is appropriate for that member to recuse themselves (G1/05). This applies a priori to members of the Board of Appeal.

One may also suspect that the entire Opposition Division is biased if it informs only one party of the existence of a procedural defect (e.g., an employee of one of the parties attends a private discussion of the division and only that party is informed, T2274/22).

Form and time limit

Notice of appeal

Time limit

The notice of appeal must be filed within 2 months (A108 EPC) from the written notification of the decision (R111(1) EPC, and not its pronouncement during the oral proceedings, Guidelines E-III 9).

It is even possible to file an appeal after the oral proceedings, but before even receiving the notification of the decision (T389/86).

The decision is necessarily sent by registered letter with acknowledgment of receipt, in accordance with R126(1) EPC: if this is not the case (but, for example, via UPS), there is a defect in notification (the first sentence of R126(2) EPC cannot be satisfied) and no time limit can begin to run, even if it is attested that the recipient received this document (G1/14).

A122 EPC applies to the 2-month time limit, but only for the applicant or the proprietor (Guidelines E-VIII 3.1.1), but not for the opponent (Guidelines E-VIII 3.1.2 and T210/89).

If the notice of appeal is filed out of time, the appeal is considered as not filed (A108 EPC and T41/82), even if the appeal fee has been duly paid (G1/18).

Place of filing

The notice of appeal must be filed with the EPO (A108 EPC).

Form

The notice of appeal must be signed by the responsible person (R99(3) EPC together with R50(3) EPC). If the notice of appeal is not signed, the formalities officer will invite the appellant (or, where applicable, their representative) to remedy this irregularity within a specified period (often 2 months EPO Guidelines E-VIII 1.2 i).

Furthermore, and preferably, the conditions of R49 EPC should be respected.

• the sheets should preferably be in A4 format and used in portrait format (except possibly for drawings, tables or mathematical formulas) ;
• the sheets should preferably be numbered with an Arabic numeral centered at the top of the sheet (but not in the margin) ;
• for typewritten texts, the line spacing should preferably be 1.5 ;
• all texts should preferably be in a font where the capital letters are at least 2.1 mm high (the size depends on the chosen font, so be careful) and in black ;
• the margins should preferably not be less than the following scheme :

If the notice of appeal does not comply with the formal requirements (e.g., written, etc.), there is an irregularity but no sanction seems to have been provided (the R101(1) EPC not mentioning the R99(3) EPC).

However, if the signature is missing, the appeal is a priori deemed not validly filed (by analogy with EPO Guidelines D-IV 1.2.1 ii).

Neither A122 EPC, nor A121 EPC is applicable to the specified period.

Filing Method

The notice of appeal must be submitted in writing (A108 EPC), should in principle be typewritten or printed, and should have a margin of 2.5 cm on the left side of the sheet (R99(3) EPC together with R50(2) EPC).

Furthermore, the notice of appeal can be filed:

• by electronic means (« Decision of the President of the European Patent Office dated 9 May 2018 concerning the electronic filing of documents« , OJ 2018, A45 together with R2 EPC) ;
• by fax (« Decision of the President of the European Patent Office dated 20 February 2019 concerning the filing of patent applications and other documents by fax« , OJ 2019, A18).
  • a confirmation by mail may then be requested.
  • If the opponent does not respond to this invitation, the fax is deemed not received and the appeal is deemed not validly filed (R2(1) EPC).

It is theoretically not possible to file a valid appeal via the online form filing system (unless the EPO acts as if the appeal were validly filed, T1633/18).

Language

The notice of appeal may be drafted in an official language of the EPO (R3(1) EPC).

If the appellant has his domicile (or registered office) in one of the Contracting States (or is a national of one of these States with his domicile abroad) and that State has an official language other than German, English or French, he may file the notice of appeal in that language (A14(4) EPC).

A translation must be submitted (A14(4) EPC) at the earliest simultaneously with the untranslated document (G6/91) in one of the official languages of the Office, regardless of the language of the proceedings (Guidelines A-VII 2) and within the latest expiring deadline among:

• a period of 1 month from the date of submission of the document (R6(2) EPC, and not from the end of the deadline).
• the appeal deadline (R6(2) EPC).

A121 EPC applies to these deadlines if the appeal is an ex-parte appeal relating to the granting procedure (i.e. for the applicant).

A122 EPC applies to these deadlines, but only for the proprietor and not for the opponent or the applicant.

In other cases, these deadlines do not benefit from A121 EPC or A122 EPC.

If the translation is not submitted within the deadlines, the appeal is deemed not to have been filed (A14(4) EPC and T323/87).

Content of the notice

General considerations

The notice of appeal contains (R99(1) EPC):

• the name and address of the appellant (according to the provisions of R41(2) c) EPC);
• the indication of the decision under appeal;
• a request defining the subject of the appeal (e.g., « the appeal aims at the revocation of patent No. EPxxxx« ).

Furthermore, case law requires that the notice of appeal contains an indication that the applicant intends to file an appeal (T653/15): the mere fact of paying the appeal fee and indicating « Following the decision of rejection of 27.10.2014, we proceed to the payment of the appeal fee for the European patent application No. 09737080.3 » is not sufficient to explicitly manifest the intention to appeal.

Identification of the appellant

As we mentioned above, the notice of appeal must identify the appellant.

If the appellant’s name is incorrect, there is a minor irregularity (under R101(2) EPC) (G1/12) and this can be corrected after an invitation from the EPO, even after the deadline for filing the appeal.

It should be noted that the omission of the appellant’s name is also considered a minor irregularity that can be corrected under R101(2) EPC (T2561/11 or T624/09).

The appellant is considered sufficiently identified (and therefore there is no irregularity):

• if the appellant is presented as the former opponent, even if their name in the notice of appeal is incorrect and the address is not indicated (T483/90).
• if the letter was signed by the representative of the opponent in the first instance and indicated the patent number and the decision under appeal (T350/13).

It is not necessary for the EPO’s invitation to explicitly mention R101(2) EPC: even if this invitation states that it is for the proper administration of the file, this invitation is valid and a non-response results in the inadmissibility of the appeal (T719/09).

Identification of the decision under appeal

Failure to identify the decision results in the appeal being rejected as inadmissible (R101(1) EPC and R99(1) b) EPC).

In the absence of mention of the decision under appeal, the fact that the EPO registry was able to associate an appeal with a particular file does not necessarily mean that the appeal is admissible (T620/13).

The fact that the date of the decision is incorrect is not such as to call into question the identification of the decision (T2561/11).

Subject matter of the appeal

Principle

The initial notice of appeal defines the subject matter of the appeal (G9/92 and G4/93): is the decision under appeal being contested in whole or in part?

However, it is not necessary for the notice of appeal to contain the exact grounds underlying the contestation of the decision (this is the purpose of the statement of grounds).

Unclear subject matter

If the subject matter is insufficiently clear, the board must attempt to deduce it from the notice of appeal (T7/81).

For example:

• if a decision to refuse is simply appealed, it is likely that the appellant maintains the last request on which the appealed decision was based (T49/99 and T407/02).
• if the appellant requests the cancellation of the decision in its entirety (which had revoked the patent) and, at the same time, requests the revocation of the patent, it is likely that only the first request is valid (T413/13).

Some decisions even consider that the subject matter of an appeal, if not mentioned, is necessarily:

• the annulment of the decision if it is an appeal against a revocation decision (T653/15).
• the revocation of the patent if it is an appeal against a decision rejecting an opposition (T2561/11).

Absurd or unrelated subject matter

If the subject matter of the appeal is « absurd » or unrelated to the decision under appeal, this does not mean that the appeal is inadmissible: the admissibility of the appeal is distinct from the admissibility of the requests (T2599/11).

Nevertheless, in other decisions, it has been indicated that an appeal not specifying how the first instance decision should be annulled must be declared inadmissible: this is the case if the applicant merely submits a new request (possibly based on the request rejected in the first instance, but which was never presented) (T327/13, T1738/11 or T399/13).

Thus, if the proprietor submits four new requests that have never been presented before, it is highly likely that these requests will be deemed inadmissible or that the appeal will be (T438/12).

Missing subject matter

Even if the subject matter of the appeal is considered implicit, it is not possible to omit any mention of the subject matter of the appeal.

Such a practice would amount to admitting that an appeal could be filed by merely paying the appeal fee accompanied by the application or publication number, which is contrary to the jurisprudence of decision J19/90 (T620/13 or T371/92 or T653/15).

In the absence of the subject matter of the appeal, the appeal is rejected as inadmissible (R101(1) EPC and R99(1) c) EPC).

Subject matter that has already been the subject of a decided appeal

It is possible that a board of appeal may take a decision and remand to the first instance for other matters.

In this case, the first instance is bound by the decision of the board of appeal and cannot contradict it (see below).

Nevertheless, it is not possible to appeal against the decision of the first instance to maintain a patent by alleging, in particular, a lack of novelty or inventive step: only an appeal against the other matters is possible here (T2047/14).

Appeal fee

Principle

The appeal is deemed to have been filed only after payment of the appeal fee within the time limit of 2 months (A108 EPC and R101(1) EPC) : 2255 € (A2(1).11 RFR).

The A122 EPC applies to the 2-month time limit, but only for the applicant or proprietor (EPO Guidelines E-VIII 3.1.1), but not for the opponent (EPO Guidelines E-VIII 3.1.2 and T210/89).

Reduced rate

However, this fee is only 1880 € (A2(1).11 RFR) for:

• natural persons;
• small and medium-sized enterprises (see Commission Recommendation 2003/361/EC of 6 May 2003); 
• non-profit organizations, universities and public research institutions.

To benefit from this reduced rate, the declaration to obtain this reduced rate must be submitted at the latest at the time of payment of the reduced amount of the appeal fee (« Notice from the European Patent Office dated 18 December 2017 concerning the reduction in the appeal fee (Article 108 EPC) for an appeal filed by a natural person or an entity referred to in Rule 6(4) EPC« , OJ 2018, A5). However, decision T1060/19 notes that this requirement seems to be supra-legal by adding requirements where there are none. Therefore, it would seem possible to file the declaration until the end of the appeal period.

If the appellant is a group of several persons, the reduction of the fee is only granted if each of them meets the above criterion (« Notice from the European Patent Office dated 18 December 2017 concerning the reduction in the appeal fee (Article 108 EPC) for an appeal filed by a natural person or an entity referred to in Rule 6(4) EPC« , OJ 2018, A5).

If the criterion is met before the filing of the notice of appeal but changes afterwards, this does not affect the validity of the payment (« Notice from the European Patent Office dated 18 December 2017 concerning the reduction in the appeal fee (Article 108 EPC) for an appeal filed by a natural person or an entity referred to in Rule 6(4) EPC« , OJ 2018, A5).

In case of late payment

In case of payment of the appeal fee after the deadline, some boards have considered that the appeal should be declared inadmissible (T1289/10, T1535/10, T2210/10, T79/01). In this case, the appeal fee is not refunded.

Other decisions (which seem to be in the majority today, T1325/15 or T2406/16) believe, on the contrary, that the appeal is not filed and that the fee must be refunded.

The Enlarged Board of Appeal (G1/18) has therefore ruled: the appeal is not filed under this hypothesis.

The refund of the appeal fee is ordered ex officio (G1/18).

No notification of irregularity

The EPO has no obligation to warn the appellant of the failure to pay unless the EPO can deduce that the appellant is going to miss the payment deadline of the fee (G2/97).

Missing/incomplete payment

Principle

As the appeal is not filed (see above), it is then inadmissible (A108 EPC and R101(1) EPC).

Minor error

If only a small part of the amount is missing (approx. 10%, J11/85), the formalities officer may still consider, for reasons of equity, that the payment was made on time (A8 RFR and Guidelines D-IV 1.2.1 i).

Undetected error

If the appellant makes a mistake regarding the amount of the appeal fee (e.g., payment with a reduction when not entitled), the appeal is normally inadmissible if the EPO or the other party notices it quickly (T642/12).

However, if no one notices the error for several years and this issue is raised only later, the Board of Appeal considers that, by virtue of the « principle of legitimate expectation, » the appeal will be deemed filed (T595/11).

Refund

If the appeal is considered as not filed (e.g., notice of appeal filed too late or fee paid too late), any fees paid will be refunded without the need to request it (as it is a payment without cause).

See also below.

Special case of an appeal against a decision affecting several patent applications/patents

There may be situations where a decision by the EPO affects several patent applications/patents.

In this case, an appeal number will be created for each patent application/patent. How many fees must then be paid?

Rest assured: only one fee will need to be paid as only one decision is being challenged (J18/14).

Submission of the statement of grounds

Time limit

The statement of grounds must be submitted within 4 months from the written notification of the decision (A108 EPC).

A122 EPC applies to the 4-month time limit for the applicant or the proprietor, but also for the opponent (G1/86).

If the statement of grounds of appeal is filed out of time, it is rejected as inadmissible (R101(1) EPC together with A108 EPC).

However, if the statement of grounds of appeal is transmitted partially on time (e.g., start of fax transmission at 11:58 PM and end at 12:16 AM), the EPO considers the appeal admissible (since, formally, some pages of the statement were received). The pages filed late must be admitted to give meaning to the pages filed on time (a rejection would constitute an incorrect exercise of the discretionary power under A13(1) RPBA) (T2317/13).

Form

The statement of grounds of appeal must in principle be typed or printed and have a margin of 2.5 cm on the left side of the sheet (R99(3) EPC together with R50(2) EPC).

Furthermore, and preferably, the conditions of R49 EPC must be respected.

• the sheets should preferably be in A4 format and used in portrait format (except possibly for drawings, tables or mathematical formulas) ;
• the sheets should preferably be numbered with an Arabic numeral centered at the top of the sheet (but not in the margin) ;
• for typed texts, the line spacing should preferably be 1.5 ;
• all texts should preferably be in a font where the capital letters are at least 2.1 mm high (the size depends on the chosen font, so be careful) and in black ;
• the margins should preferably not be less than the following scheme :

Furthermore, the statement of grounds of appeal can be filed:

• electronically (« Decision of the President of the European Patent Office dated 9 May 2018 concerning the electronic filing of documents« , OJ 2018, A45 together with R2 EPC) ;
• by fax (« Decision of the President of the European Patent Office dated 20 February 2019 concerning the filing of patent applications and other documents by fax« , OJ 2019, A18).
  • a confirmation by mail may then be requested.
  • If the opponent does not respond to this invitation, the fax is deemed not to have been received and the appeal is rejected as inadmissible (R101(1) EPC together with A108 EPC).

Language

The statement of grounds of appeal may be drafted in an official language of the EPO (R3(1) EPC).

If the appellant has his domicile (or registered office) in one of the contracting states (or if he is a national of one of these states having his domicile abroad) and that state has an official language other than German, English or French, he may file the statement of grounds of appeal in that language (A14(4) EPC).

The language of the statement is completely irrelevant for the reduction of the appeal fee (G6/91) (and if the application was filed or entered the national phase before April 1, 2014, « Decision of the Administrative Council of 13 December 2013 amending Rule 6 of the Implementing Regulations to the European Patent Convention and Article 14(1) of the Rules relating to Fees« , OJ 2014, A4, otherwise, there is no reduction).

A translation must be submitted (A14(4) EPC) at the earliest simultaneously with the untranslated document (G6/91) in one of the official languages of the office, regardless of the language of the proceedings (Guidelines A-VII 2) and within the latest expiring deadline among:

• a period of 1 month from the date of submission of the document (R6(2) EPC, and not from the end of the deadline).
• the deadline for filing the statement of grounds of appeal (R6(2) EPC).

A121 EPC applies to these deadlines if the appeal is an ex-parte appeal relating to the granting procedure (i.e. for the applicant).

A122 EPC applies to these deadlines, but only for the proprietor and for the opponent (G1/86), but not for the applicant.

In other cases, these deadlines do not benefit from A121 EPC or A122 EPC.

If the translation is not submitted within the deadlines, the appeal is rejected as inadmissible (R101(1) EPC and A108 EPC).

Content

The brief details the reasons why the contested decision should be set aside or the extent to which it should be amended, as well as the facts and evidence on which the appeal is based (R99(2) EPC).

This brief must clearly and concisely set out the reasons why the decision is requested to be amended/set aside (A12(2) RPBA). It must expressly and precisely set out the facts, arguments and justifications that are invoked.

There is no obligation to attack each of the dependent claims (T750/18).

In any case, it is normally necessary to rely on these first instance arguments (A12(2) RPBA).

The arguments contained in the brief must enable the Board and the other parties to immediately understand why the first instance decision would be incorrect (T220/83, T213/85, T145/88, T1581/08).

This does not amount to a mere challenge to the contested decision or a general citation of the guidelines without sufficiently showing what is intended to be deduced from them (T220/83).

The content must be related to the contested decision.

Thus, an appeal brief is inadmissible (R101(1) EPC and R99(2) EPC):

• if it is insufficiently reasoned (T1649/10) or more precisely if none of the requests on which the decision is based is sufficiently reasoned (i.e. it is therefore sufficient that the requirements in terms of admissibility are met with regard to a request, T778/16);
• if it merely repeats the arguments developed in the first instance (T2012/16 or T2061/19);
• if it only completes an insufficiently reasoned (and therefore inadmissible) opposition brief without demonstrating the admissibility of the opposition (T213/85);
• if it only sets out a new ground for opposition based on a new document, as this is contrary to the principles of G9/91 (T1007/93);
• if it demonstrates in a very lengthy manner the inventive activity of the invention, but without explaining why the first instance made an erroneous reasoning on this subject (T2536/12);
• if it does not contain any argument against certain grounds for rejection (T899/13);
• if it simply presents new sets of claims without challenging the first instance decision (T2532/11).

If the brief simply indicates that the irregularity that justified the rejection in the first instance is now corrected (e.g. designation of a representative previously missing J18/08 or deletion of a dependent claim deemed insufficiently described T935/12), the board of appeal accepts the appeal as admissible.

If there is a new fact, it must be sufficiently reasoned to meet the requirement of sufficient reasoning, and if it is confirmed, it removes any legal basis for the decision (J902/87, e.g. a time limit must be suspended due to the insanity of the representative). Reasoning that is too light is not sufficient (T559/20).

Submission of evidence

Principle

Normally, documents referred to in the brief must have been presented in the first instance (A12(2) RPBA) and will be rejected if they are presented for the first time on appeal (T241/18).

However, if new documents are presented, they must be attached as an appendix (A12(3) RPBA) and an explanation of the reason for this late introduction must be provided (T2182/17, A12(4) RPBA).

In any case, they must be filed to the extent that the board requests (A12(3) RPBA).

Evidence admitted in the first instance

Normally, a document admitted in the first instance must necessarily (T617/16 and T487/16) be admitted during the appeal.

This principle is notably motivated by the fact that an invalid patent is ultimately maintained (T2049/16).

Re-examination

It may happen that evidence presented in the first instance was not found convincing.

To the extent that there is no error in the application of the law (for example, an incorrect level of proof was applied), a Board of Appeal should not revisit the assessment of the evidence by the first instance (T1418/17) and replace it with its own unless it can be demonstrated that it:

• did not take into account certain material considerations (T1553/07), or
• included considerations foreign to the case, or
• made reasoning errors, such as logical errors and contradictions in the statement of reasons (T2565/11).

It should be noted a divergent decision at this stage: the decision T1604/16 considers that the board of appeal has full discretion to revisit the examination of the evidence without restriction.

Language

Evidence may be provided in any language, but the EPO may require a translation (R3(3) EPC).

Focus on requests for restitutio

Decided during the judicial review

When the conditions for judicial review are met (Guidelines E-VIII 3.3), the instance whose decision is challenged may grant a restitutio in integrum requested:

• if the conditions for granting restitutio in integrum are met (Guidelines E-VIII 3.1.1 to Guidelines E-VIII 3.2);
• if the decision can be made within 3 months (A109(2) EPC);
• and if the conditions allowing the appeal to be granted (i.e., admissible and well-founded appeal) are met (T1973/09).

In all other cases, this issue must be decided by the board of appeal (Guidelines E-VIII 3.3).

Settled by the Board of Appeal

The restitutio decision is not subject to appeal, as it is rendered by the Board of Appeal (A106(1) EPC).

Formation and admissibility

Non-formation

Irregularities

The irregularities resulting in the non-formation of the appeal are as follows:

• The appeal fee was not paid (or insufficiently) within the 2 months from the notification of the decision (A108 EPC);
• The notice of appeal was not filed within the 2 months from the notification of the decision (A108 EPC and T1325/15);
• The missing signature was not corrected within the prescribed time limit (R99(3) EPC and R50(3) EPC);
• The confirmation of the notice of appeal, if requested after filing by fax, was not filed within the prescribed time limit (R100(1) EPC and R2(1) EPC and “Decision of the President of the European Patent Office dated 20 February 2019 concerning the filing of patent applications and other documents by fax”, OJ 2019, A18);
• The authorization of the representative or employee, if requested, was not filed within the prescribed time limit (R152(1) EPC and R152(6) EPC);
• No representative was appointed when required (A133(2) EPC, unless the appeal concerns the filing date, J7/89).
• If the language of the notice of appeal is not an official language:
  • this notice was not filed by a person under A14(4) EPC.
  • this notice was filed by a person under A14(4) EPC, but the translation was not submitted within the prescribed time limit.

Thus, only the payment of the appeal fee within the time limit is not sufficient (T371/92).

Prior notification (analogy with opposition)

If the formalities officer notes such an irregularity and it can still be corrected within the 2 months from the notification of the decision (or within the 1 month from the filing of the notice of appeal in a non-official language for the translation or within the prescribed time limit to correct the lack of signature), a notification is sent to the appellant.

The appellant cannot rely on the absence of notification.

However, for the lack of signature, a notification is systematically sent.

Procedure

If the appeal is deemed not to have been filed, the formalities officer notifies the appellant (A119 EPC) and indicates that a decision can be requested based on R112(2) EPC.

Any appeal fees paid are refunded (as they were paid without cause, J21/80, published in OJ 1981, 101).

Inadmissibility and major irregularities

Irregularities

If the appeal contains a major irregularity (R101(1) EPC) the appeal is inadmissible:

• the contested decision is not subject to appeal (A106 EPC);
• the appellant is not entitled to file an appeal (A107 EPC);
• the identity of the appellant could not be established by the end of the appeal period (major irregularity);
• the appeal was not filed in writing;
• the statement of grounds of appeal was not filed within the 4-month period (A108 EPC);
• the notice of appeal does not identify the contested decision (R101(1) EPC and R99(1) b) EPC);
• the notice of appeal does not sufficiently identify the subject of the appeal (R101(1) EPC and R99(1) c) EPC) or is not sufficiently related to the contested decision (e.g., does not explain why the decision is incorrect but proposes new attacks on inventive step, T399/13);
• if the language of the statement of grounds of appeal is not an official language:
  • this statement not being filed by a person under A14(4) EPC.
  • this statement being filed by a person under A14(4) EPC, but the translation is not submitted within the prescribed time limits.

Prior notification (analogy with opposition)

If the formalities officer notes such an irregularity and it can still be corrected within the 2-month period (or 4 months for the statement of grounds) from the notification of the decision (or within the 1-month period from the filing of the statement of grounds of appeal in a non-official language for the translation), a notification is sent to the appellant.

The appellant cannot rely on the absence of notification.

Procedure

If the formalities officer identifies irregularities that can no longer be corrected:

• if these irregularities have already been notified to the appellant:
  • a rejection is pronounced by the formalities officer (or by the board of appeal if it concerns the facts and evidence).
• if these irregularities have not been notified to the opponent:
  • the formalities officer notifies them and generally gives 2 months to respond (A113(1) EPC, this does not mean that the appellant can correct them) and indicates that the appeal will probably be rejected as inadmissible.
  • the appellant can then contest the existence of this irregularity;
  • a rejection is pronounced by the formalities officer (or by the board of appeal if it concerns the facts and evidence).

If the appeal is considered inadmissible, the appeal is rejected.

The appeal fee is not refunded (T84/89), except in the cases provided for above.

Inadmissibility and minor irregularities

Irregularities

If the appeal contains a minor irregularity (R101(2) EPC) the appeal is inadmissible:

• the forms for the designation of the appellant are not respected.

Prior notification (analogy with opposition)

If the formalities officer notices this irregularity, they notify the appellant and ask them to correct their errors within a set time limit (R101(2) EPC).

The A121 EPC is applicable to this time limit for the applicant only.

The A122 EPC is applicable to this time limit for the proprietor only.

Procedure

If, despite this notification, the irregularity is not corrected, the formalities officer rejects the appeal as inadmissible (R101(2) EPC).

Of course, the appellant can correct this irregularity even before receiving this notification, and this at any time (even after the 2 or 4 month period) without prejudice to themselves.

The appeal fee is not refunded (T84/89).

Admissibility

If the appeal is admissible, a notification is sent, but it does not constitute a decision and therefore does not prevent a subsequent rejection (T222/85).

Examination of the appeal

Suspensive effect

Appeals have a suspensive effect (A106(1) EPC).

In particular, it suspends the entry in the European Patent Register or the publication in the European Patent Bulletin or the publication of the patent specification (Guidelines E-XII 1).

A priori, only admissible appeals have this effect (J28/03).

Nevertheless, if it is known that an application is pending until the end of the appeal period (and therefore that the suspensive effect runs at least until then, G1/09) one may wonder what happens if the appeal is simply filed, but not admissible.

Judicial review

Principle

Judicial review is the review of the decision by the very instance that rendered it.

This review is only possible for ex-parte procedures (A109(1) EPC) for which the appeal is admissible and well-founded.

Exclusion and exceptions to exclusion

Prejudicial review is therefore excluded for:

• appeals on opposition unless:
  • all opponents have withdrawn their opposition and the proprietor files an appeal (EPO Guidelines E-XII 7.1);
  • if an opposition/intervention is rejected as inadmissible before the notification R79(1) EPC is sent to the proprietor, so that the admissibility procedure does not yet oppose the opponent or the intervener to another party.
• appeals relating to a decision to suspend proceedings (R14 EPC);
• appeals relating to a decision to register a transfer (R22 EPC);
• appeals relating to a correction of inventorship if it opposes two inventors (one to replace the other, R21 EPC).

Cases of review

Principle

If the competent body (the one whose decision is being challenged, i.e., the first instance) rules that the appeal is admissible and well-founded, it will grant it (A109(1) EPC).

Indeed, it may be that:

• the competent body realizes that it made a mistake:
  • e.g., it considered a document as 54(2) when it was 54(3);
  • the body did not duly take into account certain documents (EPO Guidelines E-XII 7.1 i or ii);
• the applicant proposes amendments that overcome the last objections of the competent body:
  • e.g., amendment of the claims (T139/87, T47/90 and EPO Guidelines E-XII 7.1 iii);
  • e.g., presentation of an auxiliary request considered patentable as the main request.

It should be noted that if the amendments made address the initial objections, the prejudicial review must be granted, even if new objections may be raised (T682/22).

Case of obiter dictum

In the case of an obiter dictum (i.e., a statement attached to the decision concerning an element, but which is not part of the decision itself, e.g., « in addition to the lack of novelty, the claim is not clear« ), the appeal will be considered well-founded (and thus the prejudicial review must be granted) even if the reasons for the obiter dictum are not overcome (T1060/13, in contradiction with the EPO Guidelines E-XII 7.1 and the EPO Guidelines E-XII 7.4.2).

Review to improve its rejection?

It should be noted that the Examining Division may indeed realize that it made a mistake, but it cannot « improve » the reasoning of its rejection (T955/20).

Cases of non-review

The appeal is referred to the Board of Appeal (A109(2) EPC) :

• if the competent body does not grant the appeal within a period of 3 months ;
• if the competent body considers that the appeal is not admissible and/or is not well-founded.

In the case of auxiliary requests and if only one of them is acceptable, the competent body cannot grant the appeal (Guidelines E-XII 7.4.3 and T919/95).

Furthermore, maintaining objections cannot give rise to a decision by the first instance. In this case, there is a procedural defect (T691/91). An appeal against this « decision » would then be possible.

Appeal against the preliminary review

No appeal is possible against the preliminary review complying with the provisions of A109 EPC, because:

• if it grants the applicant’s claims, no appeal is possible (A106 EPC) ;
• referral to the Board of Appeal is not a decision.

Rejection of the appeal

The competent body cannot reject the appeal, even if it is clearly inadmissible: only referral to the Board of Appeal is possible (A109(2) EPC).

Request for reimbursement of the appeal fee

The competent body may grant a reimbursement of the appeal fee (see below).

Reimbursement for direct referral

In the case of direct referral of a case to the Opposition Division by the Board of Appeal, making it impossible to examine the substance of the appeal, the appeal fee may be fully reimbursed. This reimbursement is granted for reasons of equity and principle, particularly when the direct referral results from a procedural defect or an inability to rule on the substance.

This rule applies even if the referral decision is made after the filing of the notice of appeal and the payment of the fee. The reimbursement covers the fees paid by all parties, including the proprietor and the opponent, provided that the direct referral prevents any regular appeal procedure (T2597/22).

This reimbursement is ordered ex officio by the Board of Appeal, without the need for a formal request from the parties, in accordance with the principles of Rule 103 EPC.

Rejection of the request for reimbursement of the appeal fee

The competent body cannot reject the request for reimbursement of the appeal fee even if it has granted the appeal (J32/95 and G3/03) : only referral to the Board of Appeal is possible (A109(2) EPC) to decide this question.

The request for reimbursement of the appeal fee will only be referred to the Board of Appeal if it was submitted at the same time as the appeal (Guidelines E-XII 7.3 and T21/02).

Withdrawal of the opposition / appeal

Withdrawal of the opposition

An opponent who has not filed an appeal may declare that they do not intend to maintain their opposition, and they cease to be a party to the appeal proceedings (except with regard to the apportionment of costs, T789/89 and T340/05).

The proceedings continue if there is still an appellant (even if it is only the proprietor, T789/89).

If the last opponent who filed an appeal withdraws their opposition, the appeal proceedings are terminated even if the non-appellant proprietor objects (G8/93 and G7/91) because the withdrawal of an opposition is equivalent to a withdrawal of the appeal.

Withdrawal of the appeal

An appeal may be withdrawn at any time until the decision (e.g., before the closure of the oral proceedings, T406/00), as nothing prevents it.

It is even possible to partially withdraw an appeal concerning a specific issue distinct from the decision under challenge (J19/82).

If the sole appellant or the last appellant withdraws their appeal, the appeal proceedings must be terminated (G7/91). If there are still appellants remaining, the proceedings may continue (G2/91), but only concerning the subject matter of the appeals of the remaining appellants (T233/93).

It should be noted that an intervener at the appeal stage is not considered to be an appellant (G3/04).

After the withdrawal of the appeal, it is possible to decide on secondary issues such as the apportionment of costs (T117/86) or the reimbursement of the appeal fee (T41/82).

If the proprietor indicates during the appeal that they are no longer interested in maintaining the patent, the appeal proceedings are terminated by a decision to revoke the patent (T820/94).

Effects of the withdrawal on the interveners at the appeal stage

If the intervention occurs at the appeal stage, the intervener is assimilated to an appellant who has not filed an appeal (G3/04). Thus, if all those who have filed an appeal withdraw, the case disappears.

If the last appellant withdraws their appeal on the same day that the intervener files their statement, it is necessary to look at the exact chronological order of these events to determine whether the intervention is admissible (T517/97):

• if the intervention is declared admissible, the appeal proceedings disappear (G3/04) and the opposition fee is not reimbursed;
• otherwise, the opposition fee is reimbursed, as the intervention is not admissible.

Examination by the Board of Appeal

End of the examination of admissibility

If the Board of Appeal seizes an appeal, the admissibility of the appeal can no longer be challenged by a third party, according to the principle of good faith (T303/05).

Independence of the Boards of Appeal

The Boards of Appeal are not bound by any instructions (A23(3) EPC).

The examination proper

The examination aims to determine whether, on the merits of the case, the appeal can be allowed (A110 EPC).

Any amendment to the framework of the appeal after the filing of its brief is then considered late (A13(1) RPBA) and a justification for this amendment must be provided.

Late filing is not entirely excluded, but remains difficult especially if new issues are raised and they require additional examination:

• general case:
  • discretionary power of the board of appeal taking into account the economy of the procedure: A13(1) RPBA or
• after sending the notification requesting the parties to present their observations / informing them of an oral procedure:
  • exceptional circumstances justified by the party: A13(2) RPBA;
  • or admitted ex officio by the board of appeal, even without justification by the party (T1294/16).

Examination ex officio

It is quite possible for the board to raise ex officio certain grounds (A114(1) EPC) even though the purpose of the appeal is to discuss the contested decision (T996/18 and T862/16).

Admissibility of requests

Late requests

A request is often considered inadmissible if it contains facts, evidence or requests that could have been submitted (A12(4) RPBA, T2061/19) or were not admitted during the first instance proceedings (T556/13), even if it clearly overcomes the objections made (T1802/12).

From the moment any party has already presented a request, an argument, evidence, etc. in the first instance, the latter cannot be considered late (T920/20).

The proprietor must not only have had the abstract possibility of filing the request in the first instance but must rather have had a clear opportunity to do so (T419/12).

In particular, if a request was withdrawn in the first instance, it is unlikely that the board of appeal will accept the reintroduction of this request (T935/12, T523/11) because no reasoned decision will have been taken on it. The same applies to objections not maintained (T2769/19).

This does not mean, however, that amendments to the claims presented at the appeal stage must be systematically excluded from the procedure, their admissibility being judged in the light of A13(1) RPBA or A13(2) RPBA.

An exceptional circumstance may be:

• a substantial procedural violation committed by the examining division due to the major importance of the right to be heard (T545/18);
• an appropriate response to an objection raised for the first time in the notification under A15(1) RPBA 2020 (T545/18) but only to the extent that it responds to the objection (T1869/18).

However, the following is not exceptional:

• the change of a representative (T615/17).

If the proprietor submits four new requests that have never been presented before, it is highly likely that these requests will be deemed inadmissible or that the appeal will be (T438/12, T123/17).

In the case of invoking exceptional circumstances (A13(2) RPBA), it is incumbent upon a party to explain not only the exceptional circumstances but also why its amendment constitutes a justified response to these circumstances, both in terms of content and timing.

When amendments are proposed at an extremely late stage, the compelling reasons under A13(2) RPBA must include the reasons why it was not possible to file the amendments earlier (T1707/17). For example, a new request that is a direct reaction to the exchange of arguments during the oral proceedings and addresses the objections of the opposition division should be admitted (T1790/17).

The decision T574/17 clarifies the application of A13(2) RPBA to late objections raised for the first time during the oral proceedings before the Board of Appeal. It emphasized that the obiter dictum of G10/91 does not impose systematically admitting these objections but allows their examination within the framework of its discretionary power, particularly by evaluating their prima facie relevance in accordance with A13(2) RPBA. This approach has also been confirmed by the decisions T2117/18 and T172/17.

It should be noted that the decision T339/19 provides a fairly flexible definition of exceptional circumstances: these are circumstances that do not compromise either the procedural rights of the opposing party or the efficiency of the procedure (it is not certain that all the boards adhere to this definition).

Reasoned Requests

For a request to be admissible, it is imperative that it be reasoned (T1090/14).

Convergent Requests

The common practice of the EPO is to accept sets of claims only if they are more restricted than the set of claims pending (i.e., sets of claims in a « funnel »).

This practice is also called « the convergence of requests » (T1800/20).

The first level of convergence is that the requests presented on appeal must be based on those of the first instance (A12(2) RPBA, T1120/20).

However, this is not systematic, and the EPO may accept a new set of broader claims if the amendments are not fundamental and do not create a « new case » or « fresh case » (T2599/11, T123/17).

It should be noted that the convergence of requests is analyzed during the examination of the admissibility of the request (T649/14): thus, a request initially convergent may well no longer be so if additional requests are filed.

Furthermore, a request may well be considered non-convergent and therefore inadmissible, even if it had been filed in the first instance and during the appeal brief (T1280/14).

Finally, convergent requests may become non-convergent after the introduction of intermediate auxiliary requests (T1185/17).

Requests not admitted in the first instance

For the reasons mentioned above, requests not admitted in the first instance will be considered late, but the Board of Appeal may verify whether their non-admission is correct or still relevant (T490/13 or T2344/15).

It may happen that the first instance declares the request inadmissible, but in reality the Board of Appeal considers that it has actually considered it admissible (T2026/15): this case may arise if the reasons given in the first instance are so detailed that they are actually substantive arguments.

Auxiliary requests not discussed in the first instance due to a change of order made by the patent proprietor are not automatically admitted on appeal (T396/18)

Requests not related to the contested decision

In reality, these requests are very similar to late requests.

A request is considered inadmissible if it is not sufficiently related to the contested decision: for example, if a patent is maintained following an attack on inventive step (combination of documents D1 and D2), it is not possible to request revocation on appeal for lack of inventive step by the combination of documents D3 and D4 not previously discussed (T1738/11).

Requests not explaining why the decision is wrong

Each request must demonstrate how the decision is wrong.

For example, if a request is a copy-paste of the opposition brief, without explaining why the opposition decision is unfounded, this request will be inadmissible (T2227/14 or T2061/19).

Requests not explicitly presented

If the applicant presents requests that may subsequently be relied upon by the applicant if they so choose (may subsequently choose to rely upon), these requests will be considered as not presented (T1440/12).

Indeterminate requests

It is not possible to make a vague request such as « the maintenance of the patent with any claim that may be deemed acceptable » (T1138/12).

Similarly, it is not possible to make a request indicating « the term xxx is replaced by yyy in the main request or by any other acceptable term » (T1773/10).

According to A113(2) EPC, the EPO is bound by the text proposed by the proprietor. Under A101(3) EPC, the EPO can only maintain a patent in amended form if it meets the requirements of the EPC. If a claim of a request does not meet these requirements, the patent cannot be maintained in this form: that is final.

Requests renumbered during the procedure

If a request is renumbered during the appeal procedure, it will be considered as an amendment to the case and its admissibility will have to be analyzed under the A13(2) RPBA (T1297/16).

Requests aiming to reject an attack

If an attack is made by an opponent, and the proprietor responds on the merits, it is not possible to request the rejection of this attack unless it is considered an amendment to the case: its admissibility will have to be analyzed under the A13(2) RPBA (T1774/21).

Requests deleting claims

In a certain number of decisions, the deletion of claims was not seen as changing the factual situation and therefore did not constitute an amendment to the case within the meaning of A13(2) RPBA (T1480/16), but this is not always the case (T2222/15, T482/19). In particular, if the deletion of a claim avoids a revocation, there is clearly an amendment to the case (T355/19).

If the deletion clearly addresses existing objections without creating new ones and is in the interest of procedural economy, it could even be considered as an exceptional circumstance within the meaning of A13(2) RPBA (T1857/19).

If all requests are inadmissible

If all requests are inadmissible, the appeal is simply rejected (T1162/12, T2061/19).

Absence at a possible oral proceedings

If a party is absent from the oral proceedings, this will not prevent (A15(3) RPBA) :

• the decision from being issued ;
• the presentation of a new document/argument, as the absence of a party is equivalent to waiving its right to be heard (G4/92 indicates that late documents could no longer be added during oral proceedings in which a party is absent, but this decision no longer seems to be applicable since the RPBA is subsequent to this decision).

Appeal during the examination procedure

Procedure

The Board of Appeal may well invite the applicant, if necessary, to submit its observations on the EPO notifications (R100(2) EPC) within a time limit.

A121 EPC applies to this time limit.

If the applicant does not respond to this invitation, the application is deemed to be withdrawn (unless the decision is a decision of the Legal Division, e.g. validity of a priority, R100(3) EPC), even if the contested decision did not reject the application (e.g. non-designation of an additional state, J29/94).

A simple request for oral proceedings is sufficient to validly respond to this notification (T1382/04).

In any case, the Board of Appeal has the power to examine all conditions of the EPC, including those not considered by the Examining Division or considered as fulfilled (G9/92 and G10/93).

Reformatio in pejus

The appeal during the Examination procedure can very well result in a reformatio in pejus (i.e. worse for the applicant, G10/93) : indeed, the Board may examine ex officio certain grounds that seem relevant to it.

Appeal during the opposition procedure

Procedure

The Board of Appeal may invite the parties, if necessary, to submit their observations on the EPO notifications and on the communications from other parties (R100(2) EPC) within a time limit of 4 months (A12(1) RPBA, c)) which can be exceptionally extended upon written and reasoned request (A12(7) RPBA).

Neither A121 EPC nor A122 EPC apply to this time limit, but a response submitted after the deadline may, under certain circumstances, be taken into account.

There is no sanction in case of non-response.

The Board of Appeal must examine and decide whether the appeal can be allowed, even if no request has been formulated or no response has been provided (T501/92).

The appeal cannot be pursued ex officio by the Board of Appeal if all appellants withdraw (even if the patent does not meet the EPC criteria, G8/93).

Reformatio in pejus

The appeal during the opposition procedure cannot result in a reformatio in pejus if:

• the appellant is the only party who has appealed (G9/92 and G4/93);
• this « non reformatio in pejus » is invoked by the appellant (T1544/07).

If there are multiple appellants (a priori, an opponent and the proprietor), it is possible to result in a reformatio in pejus.

Challenge for A123(2) issues

However, this principle of « non reformatio in pejus » (G9/92 and G4/93) can be challenged in the event where (G1/99):

• the opponent appeals;
• the opponent raises an issue of A123(2) EPC concerning the claims as maintained.

Indeed, the proprietor will have to resolve this issue by executing, in order, the steps of the following process (G1/99):

• seek to limit the scope of the claims as maintained with features from the application;
• if such a limitation is not possible, extend the scope of the claims as maintained by adding certain features from the application, but without violating A123(3) EPC;
• if such an extension is not possible, remove the amendment contrary to A123(2) EPC, but without violating A123(3) EPC.

We understand that the resulting claims may, according to this process, have a broader scope than the claims as maintained by the Opposition Division: the prohibition of reformatio in pejus will not be respected since the opponent’s position will be worse than before.

In case T61/10, the Board indicates that to challenge the principle of non reformation in pejus, there must be a causal link between:

• the new objection of the sole appellant and
• the limiting feature to be deleted.

Challenge for A84 issues

Furthermore, the decision T809/99 (then T1380/04 or T648/15) extends this challenge to cases where:

• the opponent appeals;
• the opponent raises a clarity issue under A84 EPC concerning the introduced amendments.

The same process as previously described must be followed by the non-appealing proprietor (point 2.3 of the decision T809/99).

Challenge for A83 issues

In case T1979/11, the Board of Appeal accepted a challenge to the principle of non-reformatio in pejus, if the opponent raises for the first time an objection of sufficiency of disclosure at the appeal stage.

Challenge in case of unsupported disclaimer

If a disclaimer is not supported, we return somewhat to the case of A123(2) (T2277/18).

Challenge to counter new facts/arguments

Finally, the decision T1843/09 extends this challenge to all cases where:

• the proprietor has limited their patent before the appeal,
• and where the application of the non reformatio in pejus would prevent the proprietor from adequately defending their patent against new facts and objections introduced at the appeal stage.

Parties to the proceedings

If the intervention occurs at the appeal stage, the intervener is treated as a party who has not filed an appeal (G3/04). Thus, if all those who have filed an appeal withdraw, the proceedings disappear.

They must pay the opposition fee (A105(1) EPC and R89(2) EPC and A2(1).10 RFR : 745 €).

If the last appellant withdraws their appeal on the same day that the intervener files their declaration, the exact chronological order of these events should be considered to determine whether the intervention is admissible (T517/97) :

• if the intervention is declared admissible, the appeal proceedings disappear (G3/04) and the opposition fee is not refunded ;
• otherwise, the opposition fee is refunded because the intervention is not admissible (Guidelines A-X 10.1).

The intervener may present new arguments and new grounds under A100 EPC that were not previously presented (G1/94). If new grounds are raised, the case is generally remitted to the opposition division (except in special cases G1/94).

Similarly, they may introduce new documents, which will not be considered late-filed (T1235/14).

However, if certain aspects of the opposition have already been decided, the intervener cannot challenge what has already been decided (T694/01).

Thus, if the board of appeal has decided to maintain the patent in amended form, the intervener can only discuss issues of compliance of the description and drawings with the claims (even if the case is remitted to the opposition division, A111 EPC, res judicata).

Late-filed grounds

Principle

A ground not present in the notice of opposition is a late-filed ground.

The following are not late-filed grounds, grounds present in the opposition proceedings:

• but incorrectly substantiated ;
• but abandoned during the opposition proceedings (T274/95, even though there is also a contrary decision T1491/07) ;
• but presented by another party who is no longer a party to the appeal proceedings (T520/01).

A new attack against an auxiliary request will be a late-filed ground (T124/16).

A ground presented in the first instance but whose admissibility has not been decided will also be a late-filed ground (T77/18).

Admission of late-filed grounds

Late-filed grounds for opposition cannot normally be taken into consideration at the appeal stage (G10/91) unless:

• if the proprietor explicitly gives their consent (G10/91) and the document is prima facie relevant;
  • in this case, the case may be (at the discretion of the board of appeal) remitted to the first instance (G9/91), except in special circumstances (e.g. request of the proprietor, G1/94)
• if the claims have been amended with the appeal (G10/91, A13(3) RPBA);
• if these grounds are presented by an intervener who did not participate in the first instance (G1/94);
  • in this case, the case is remitted to the first instance, except in special circumstances (e.g. request of the proprietor, G1/94)
• if they were filed late at the opposition stage and wrongly refused (A114(2) EPC) (T986/93);
• if they were examined of the opposition division’s own motion (T309/92).

However, the board of appeal retains discretionary power under A13(1) RPBA to disregard late-filed grounds under A114(2) EPC. In particular, it is free to admit late-filed grounds not presented by the previous representative who was seriously ill when drafting their statement of grounds of appeal (and who is now deceased, T336/11)

Distinct grounds

Normally, novelty and inventive step are two distinct grounds.

However, if the lack of inventive step with document D1 as the closest prior art has been raised, it is possible, even if it has not been raised, to attack the patent for lack of novelty with respect to D1 (G7/95).

Moreover, it is normal for the lack of inventive step not to be substantiated when the notice of opposition also contains an attack of novelty with the same documents (as this often amounts to a contradiction). In this case, the lack of inventive step can be examined without it being considered as a late-filed ground (T131/01 or T184/17) as it does not change the factual framework.

Late-filed arguments

Previous case law

Similarly, late arguments may be rejected under the discretionary power of the Board of Appeal pursuant to A13(1) RPBA (T1621/09), provided that the proprietor could have foreseen that these arguments could be discussed (T607/10, in this case, the closest prior art had been changed).

For example, a new combination of prior art documents (whereas 10 other combinations have already been submitted) may be rejected (T1019/13) under A13(1) RPBA.

Similarly, a new inventive step attack based on document D17 (whereas a novelty attack based on the same document D17 had been presented) may be considered late (T181/17): care must therefore be taken because even if T131/01 considers that this is not a late ground, it may well be a late argument…

The absence of one of the parties at an oral procedure is a factor to be taken into account for the exercise of the Board’s discretionary power but it should not prevent the Board from admitting the amendments and reaching a decision on the basis of the amended submissions (T1621/09).

Change in case law

It should be noted that a decision T1914/12 challenges this previous position.

According to the Board of Appeal (T1914/12), Article A114(2) EPC does not provide for arguments to be disregarded. If during the initial discussions of the EPC, late arguments could be disregarded, the preparatory work shows that the legislator finally abandoned this idea.

One may wonder about the compliance of Article A12(3) RPBA or A13(1) RPBA with Article A114(2) EPC.

Therefore, the Boards do not have discretionary power to disregard late arguments (provided that they are based on facts already present in the proceedings – otherwise, they will be inadmissible T1684/18).

If these arguments are in fact late allegations of facts (i.e. which are not found in the proceedings), these arguments may be rejected (T1684/16).

Development of arguments already presented

It may happen, particularly in oral proceedings, that a party refines or develops its arguments.

This is perfectly acceptable as long as it is not a modification of the submissions (T247/20).

Late evidence / documents

Principle

Regarding late evidence/documents, the Board of Appeal may exceptionally accept them if they are prima facie relevant and the party introducing them explains the late submission (A13(1) RPBA or A13(2) RPBA).

The Board of Appeal must in any case take into account the arguments of the proprietor who opposes this acceptance (T1002/92).

However, this does not mean that a prima facie relevant document will always be accepted: the Board of Appeal retains full discretionary power to prevent any « circumvention » of the procedure (T712/12). Thus, even if a document is highly relevant, but the late submission is not justified, it may not be admitted (T2696/16).

A priori, if a document/evidence is highly relevant, the case should normally be remitted to the first instance to avoid unfairly depriving the proprietor of a two-level jurisdiction (T258/84 or T1810/13).

If the document could have been submitted before the Opposition Division, it should, in principle, be rejected as inadmissible (T85/93 or T712/12).

However, if the documents submitted aim to respond to a new argument (e.g., identification of an additional difference), they may be accepted (T263/12).

Prior use and abuse of procedure

In the case of late submission of prior use, it will often be considered an abuse of procedure (Guidelines E-III 8.6 and T534/89, T1955/13).

Under this assumption, the prima facie nature of the prior use may not be analyzed (Guidelines E-III 8.6 and T534/89, T1955/13).

It should also be noted that this does not depend at all on whether the person invoking this prior use has just become aware of it or not (T1955/13): insofar as internal prior use has not been raised, whether deliberately or through negligence, and no amendment has justified conducting searches in a particular direction, the principles of fairness and equal treatment of the parties lead the Board to not admit the internally submitted prior art.

Rejection of a document admitted by the Opposition Division

We may wonder if the Board of Appeal can consider as ultimately late a document that had been accepted by the Opposition Division when it should not have been.

In reality, this is not possible: there is no legal basis for rejecting a document that was previously accepted (T487/16 contra T960/15).

Amendments

If the proprietor wishes to submit amendments, they must do so at the earliest opportunity. In any case, late amendments (e.g. during oral proceedings) may only be accepted if the late submission is unambiguously justified by exceptional circumstances (T93/83).

Amendments must, to be accepted, be timely and necessary (T295/87).

In the event of substantial amendments requiring re-examination, the case must be remitted to the first instance (T63/86).

If all parties agree with the proposed amendments (i.e. no party has any objections), the Board of Appeal must examine the amendments (R100(1) EPC).

Apportionment and fixing of costs

Situations that may result in an apportionment of costs are similar to those in opposition proceedings. The same applies to the procedure (R100(1) EPC).

However, during the appeal:

• it is not possible to submit this request (related to the opposition procedure) if it was not submitted during the opposition (T1059/98);
• the Board of Appeal cannot rule on the apportionment of costs of its own motion: a request must be submitted for this purpose (A16(1) RPBA).

Furthermore, the decision on the apportionment of costs in opposition is not subject to appeal if it is the sole subject of the appeal (A106(3) EPC together with R97(1) EPC). Thus, if the decision has granted its claims on the merits, it is not possible to have this apportionment modified (even if the other party files an appeal T1237/05).

In this situation, the appeal is rejected as inadmissible (R101(2) EPC).

An appeal aimed at fixing the costs of the opposition procedure will only be admissible if the amount at stake is higher than that of the appeal fee (A106(3) EPC together with R97(2) EPC). The amount of the appeal fee is 1240 € (A2(1).11 RFE). If an appeal is filed without respecting these conditions, it will be rejected (R101(1) EPC). The principle of non reformatio in pejus applies here (T668/99).

Decision

Principle

Following the examination, the Board of Appeal may (A111(1) EPC):

• either render a final decision;
• or remit to the first instance so that it can complete the examination.

Date of the decision

The date of the decision is:

• in written proceedings:
  • indicated in the notification of the decision (R102 b) EPC);
  • the fiction of delivery to the internal mail service (i.e., 3 days before the date indicated on the mail) set out in G12/91 does not apply.
• in oral proceedings:
  • the date of the pronouncement of the decision (R111(1) EPC).

Reasoning

Decisions must be reasoned (R102 g) EPC).

Remittal to the first instance

Article A11 RPBA provides that remittal to the first instance is only possible in exceptional cases.

This may occur, in particular:

• if a substantial defect has occurred;
• if additional search is required (T943/16);
• if grounds have not been decided in the first instance (T1966/16, T731/17);
• if the claims must have a different interpretation (T607/17).

However, the fact that a new document is cited is not such as to induce a remittal (T1089/17).

Binding effect of the decision

Principle

The decision of the Board of Appeal has a binding effect on the first instance (A111(2) EPC) or on a Board of Appeal subsequently seized (T961/18).

The first instance cannot revisit what has been decided (T843/91(v2) or T2047/14).

However, only the first instance (e.g., the examining division) is bound by this decision: another instance (e.g., an opposition division) is not bound (T21/89).

However, if the first instance is the receiving section, the examining division is bound by the decision of a Board of Appeal (A111(2) EPC).

Limit of the binding effect

The binding effect is limited if the facts of the case are unchanged.

Indeed, if new documents are introduced, it is possible that the first instance is no longer bound by the analysis of the Board of Appeal which had identified a document as the closest prior art (T2337/16).

Res judicata

If the Board of Appeal remits the case to the first instance with the order to maintain the claims as filed (but requests to bring the description into conformity with the claims), it is not possible to appeal against the decision of the first instance on the ground that claim 1 is not novel (for example) (T2047/14).

Indeed, this would amount to an appeal against the decision of the Board of Appeal, which is not possible (res judicata)…

Furthermore, it is not possible to challenge a decision of a Board of Appeal (e.g., clarity of a measurement method because the Board considers that all measurement methods yield the same results) by using a different ground but on the same basis (e.g., the description is insufficiently described because the measurement methods would yield different results) (T308/14).

Of course, the principle of res judicata does not prevent the first instance from rejecting an application for reasons not decided by the Board of Appeal (T736/16): even if it is likely that the Board of Appeal considered the EPC as a whole before remitting to the first instance, the authority of res judicata applies only to the operative part of the decision (there is therefore no implicit res judicata).

The authority of res judicata applies to all parties, including interveners who joined later (T689/19).

Warning, if the applicant chooses to appeal despite the examining division’s intention to grant an auxiliary request, the Board of Appeal is not bound: the Board may reject the application in its entirety (T3241/19 and G10/93).

Decision of the Board of Appeal

Timing of the decision

The Board may rule on the case (A12(8) RPBA):

• if the procedure is ex-parte, at any time after the filing of the statement of grounds (provided that this party has had sufficient opportunity to take a position on the Board’s arguments, A113(1) EPC)
• if the procedure is inter-partes, within a period of 4 months from the notification of the grounds of appeal (A12(1) c) RPBA) (provided that this party has had sufficient opportunity to take a position on the Board’s arguments, A113(1) EPC).

Authentication of the decision

The decision must be authenticated (R102 EPC):

• by the chairman of the Board of Appeal, and
• by the registrar of that Board.

This authentication may be carried out (R102 EPC) by signature or other means (such as electronic means, « Notice dated 1 April 1999 concerning the revision of the Convention on the Grant of European Patents, its Implementing Regulations and the Regulations relating to Fees« , OJ 1999, 301, points 10 and 11 and « Notice from the Vice-President, Directorate-General 3 of the European Patent Office, dated 15 December 2011, concerning the electronic authentication of decisions of the Boards of Appeal of the EPO« , OJ 2012, 14).

Content and form of the decision

Decisions rendered must be reasoned (R102 EPC) especially if there appears to be (or there is) divergence from the guidelines (A20(2) RPBA) or a previous decision (A20(1) RPBA).

If a board considers it necessary to deviate from a decision/opinion of the Enlarged Board, it is normally appropriate to refer the matter to the latter (A21 RPBA).

Refund of the appeal fee

Full refund

There is a full refund of the appeal fee:

• if the appellant’s case is allowed (by interlocutory revision or not), and if there was a substantial procedural violation (R103(1) a) EPC):
  • there is a violation if:
    • the request for oral proceedings is not considered or is rejected (T808/94);
    • not all parties are summoned to the oral proceedings (T209/88);
    • the right to be heard (A113(1) EPC) has been violated (T14/82);
    • the application was rejected for failure to respond to a communication while the EPO does not provide proof of the transmission of this communication (J14/14) because the applicant did not have the opportunity to submit comments before the decision was rendered;
    • the opponent has only 10 minutes to examine the new wording of claim 1 (T783/89);
    • the first instance does not give the parties the opportunity to take a position after the referral of an appeal based on new grounds, even if these new grounds have already been discussed during the appeal proceedings (T892/92);
    • the decision is not sufficiently reasoned (T243/86);
    • the decision does not provide reasons for the rejection of the previous requests not allowed in order of preference over the one that is allowed (T5/89);
    • the decision rejects a late request by simply stating that it was filed late (T755/96);
    • the first instance does not set a time limit for the production of documents submitted in support of a request for correction R139 EPC (J4/82);
    • the composition of a first instance is not in accordance with the convention (T392/92);
    • the decision is taken by a non-authorized formalities officer (J10/82);
    • the first instance conditions its acceptance of a new request on the withdrawal of all previous requests (T1105/96 and T155/88);
    • an inventive step reasoning was developed only during the oral proceedings in which the applicant did not participate (T1448/09);
    • the closest prior art document retained is not the one proposed by the proprietor/opponent without explanation or justification (T427/11) 
    • the duration of the procedure is abnormally long (e.g. 5 years between the RREE and the first notification, then 2 years between the other notifications, T823/11) (contrary decision, T1824/15) but only if the applicant has been more active (e.g. inquiring about the status of the application or requesting an acceleration of the procedure, T2707/16).
  • there is no defect if :
    • at least one of the grounds for appeal is not tainted by defects (T4/98) ;
    • there is a divergence from the consistent jurisprudence of the appeal instance (T208/88) ;
    • the instance erroneously concludes that no request was made for oral proceedings (T19/87, as it is an error of judgment) ;
    • failure to consider a request for an interview with the examiner (T182/90) ;
    • the first instance made a mistake in the assessment of the prior art (T367/91) ;
    • a document was misinterpreted (even grossly, T860/93) ;
• if the appeal is withdrawn before the filing of the statement setting out the grounds of appeal and before the expiry of the time limit for filing this statement (R103(1) b) EPC) (T89/84, the appeal must be expressly withdrawn – the mere indication that the appellant will not submit a statement is not sufficient T193/20),
• if the appeal is not filed (note, not filed is different from inadmissible J18/82) ;
• if the appeal was filed following the violation of the principle of legitimate expectation (J30/94, J38/97 and T308/05).

75% Reimbursement

The appeal fee is reimbursed at 75% when, in response to a notification from the Board of Appeal indicating its intention to commence examination as to the substance of the appeal, the appeal is withdrawn within a period of 2 months from the notification (R103(2) EPC).

50% Reimbursement

Fees are also reimbursed at 50% (R103(3) EPC) if the appeal is withdrawn:

• in the case of oral proceedings
  • within a period of 1 month from the notification of a communication issued in preparation for the oral proceedings;
• in cases without oral proceedings
  • before the expiry of the time limit set by the Board of Appeal inviting the appellant to submit their observations
• before the decision is rendered, in all other cases.

25% refund

Official fees are also refunded at 25% (R103(4) EPC) if the appeal is withdrawn:

• in the case of an oral procedure
  • after 1 month, but before the decision is pronounced during the oral procedure;
• in the case without oral procedure
  • after the expiration of the deadline set by the board of appeal inviting the applicant to submit their observations, but before the decision is rendered;
• within one month from the notification to prepare for the oral procedure and if no oral procedure takes place
  • if only one party has withdrawn their appeal within this period and the oral procedure does not take place in the end, the fee is then refunded to that party only, T1610/15 (on the contrary T488/18 thinks that the fee should be refunded to everyone).
  • in case of announcement of non-attendance at the oral procedure (as this is equivalent to a withdrawal of the request in the oral procedure T517/17).

Authority ordering the refund

The refund is ordered by the authority of the prejudicial review (if the applicant is granted by this authority) or otherwise by the board of appeal.

This refund can be ordered ex officio (J7/82) even without the applicant’s request.

Acceleration of the appeal procedure

See the article concerning the accelerated procedure.