Jurisdiction
The Enlarged Board of Appeal has jurisdiction over (A22 EPC):
- legal questions referred by the boards of appeal (A112 EPC).
- such questions may be referred at the discretion of the board of appeal: the parties cannot compel the board of appeal to refer a question;
- such questions must be referred if the board of appeal considers it necessary to depart from an interpretation or explanation given in an opinion or a decision of the Enlarged Board of Appeal (A21 RPBA);
- if a question is referred, the parties to the appeal are the parties to the referral;
- legal questions referred by the President of the EPO if there are divergences in decisions of the boards of appeal (A112 EPC);
- if the decisions are not genuinely divergent, the referral is inadmissible (G3/95).
- petitions for review (A112a EPC).
Opinions and Decisions
Composition
Principle
The Enlarged Board of Appeal is composed of (A22 EPC) 5 legally qualified members and 2 technically qualified members.
Challenge of a Member of the Enlarged Board of Appeal
If a member of the Enlarged Board of Appeal is suspected of partiality, a party may request the challenge of that member (A24(3) EPC).
As a general rule, the fact that a member of the opposition division was a former employee of the applicant is not sufficient grounds to declare that member partial (T143/91). This principle also generally applies to members of the Enlarged Board of Appeal.
If a member of a board has a close family relationship with a party, that member should withdraw (G1/05). This principle also generally applies to members of the Enlarged Board of Appeal.
As a general rule, Presidents or Vice-Presidents of the EPO responsible for a Directorate-General (and thus subordinate to the President of the EPO) cannot be members of the Enlarged Board due to a potential conflict of interest arising from this role (R19/12).
Decision
If a question is referred by a board of appeal (A112(1)(a) EPC), the Enlarged Board issues a decision and thus binds the board of appeal (A112(3) EPC).
The referral to the Enlarged Board (which is a decision of the board of appeal) contains (A23(2) RPBA):
- an indication that it was issued by the board of appeal;
- the date on which it was issued;
- the names of the chairman and the other members of the board of appeal who participated;
- the designation of the parties and their representatives;
- a summary of the facts;
- the question referred to the Enlarged Board of Appeal;
- the question must not relate to points already decided (T79/89);
- an alleged contradiction with the Guidelines or a previous decision of a board of appeal does not justify a referral to the Enlarged Board (T603/89);
- the question must be referred if the board intends to depart from an opinion or interpretation of the Enlarged Board (A21 RPBA);
- the context in which the question arose.
Naturally, for a question to be referred to the Enlarged Board, it is necessary that the appeal be admissible (unless the question specifically concerns admissibility, G3/99).
The appeal proceedings are then suspended and resumed after the decision of the Enlarged Board.
Opinion
If a question is raised by the President of the EPO, the Enlarged Board issues an opinion.
The President may refer a question to the Enlarged Board only if two decisions of two different Boards of Appeal are in conflict on a point of law (A112(1) b) EPC). In the case of the Legal Board, it is sufficient that its composition differs (G4/98, as there is only one Legal Board of Appeal).
If one of the members of the Enlarged Board holds a dissenting opinion from the majority opinion.
Third-party observations are also possible.
The Enlarged Board of Appeal is not bound by its earlier decisions or opinions.
Suspension of first-instance proceedings
First-instance proceedings may be suspended during a referral to the Enlarged Board if (« Notice from the European Patent Office dated 1 September 2006 concerning the suspension of proceedings« , OJ 2006, 538 and Guidelines E-VI 3):
- a party explicitly requests it;
- the first-instance department is of the opinion that the outcome of the proceedings entirely depends on the decision or opinion of the Enlarged Board.
Petition for review
Appealable decisions
Appealable decisions are those of the Boards of Appeal if (A112a(2) EPC):
- a member of the Board of Appeal participated in the decision in breach of A24(1) EPC (i.e., grounds for exclusion):
- has a personal interest,
- has acted as a representative of one of the parties,
- has participated in the decision under appeal.
- a member of the Board of Appeal participated in the decision despite being challenged (in accordance with A24(4) EPC);
- a person not entitled to act as a member of the Boards of Appeal participated in the decision;
- the appeal proceedings were tainted by a fundamental violation of A113 EPC:
- right to be heard not respected (A113(1) EPC);
- decision not based on a text agreed by the applicant/proprietor (A113(1) EPC);
- the appeal proceedings were tainted by another fundamental procedural defect as defined in the Implementing Regulations (R104 EPC):
- the Board of Appeal did not grant oral proceedings when requested by the petitioner (R116(1) EPC),
- the Board of Appeal issued its decision without ruling on a request relevant to that decision.
- A criminal act established under the conditions provided for in the Implementing Regulations (ascertained and not subject to a final judgment, R105 EPC) may have affected the decision (e.g., corruption).
These grounds must have been raised during the appeal stage by the petitioner (R106 EPC) in an unambiguous manner, specifying the defect in question (R4/08) and were rejected by the Board of Appeal.
This principle has two exceptions:
- if the ground concerns a criminal act,
- if the objection could not have been raised during the appeal proceedings.
If this was not the case, the petition is inadmissible (A112a(5) EPC together with R108(1) EPC).
It is necessary that they were issued after 13 December 2007.
Petitioner
The petitioner must be a person adversely affected by the decision of the board of appeal (A112bis(1) EPC).
Otherwise, the Enlarged Board of Appeal rejects the petition for review as inadmissible (A112bis(5) EPC together with R108(1) EPC).
Petition
Content
The petition must include:
- the name of the petitioner and their address (in accordance with the requirements of R41(2) c) EPC) (R107(1) a) EPC);
- the number of the decision to be reviewed (R107(1) b) EPC);
- the grounds for review (see above) (R107(2) EPC);
- the facts and evidence (R107(2) EPC).
Issues regarding the identification of the petitioner
A major error in the identification of the petitioner (e.g., it is impossible to identify the petitioner at all) constitutes an irregularity (under R108(1) EPC) and the petition for review must be rejected as inadmissible (unless the petitioner remedies this within the review period, by analogy with Guidelines D-IV 1.2.2.1 vi): a correction of the error may nevertheless be requested beyond the review period under R139 EPC (by analogy with T219/86).
A minor error in the identification of the petitioner (e.g., formal requirements not met) constitutes an irregularity (under R108(2) EPC) and may be corrected upon invitation by the registry of the Enlarged Board of Appeal (« Decision of the Enlarged Board of Appeal of 12 November 2007 concerning the tasks assigned to the registry of the Enlarged Board of Appeal« , OJ 1/2009, supplement, III.2, A2(2)), even after the review period, by analogy with Guidelines D-IV 1.2.2.2 i)).
A121 EPC applies to this time limit where the review concerns a grant procedure.
A122 EPC applies to this time limit only for the proprietor.
Issues regarding the decision to be reviewed
If no decision is indicated, the petition for review must be rejected as inadmissible (R108(1) EPC and R107(1) b) EPC).
Issues regarding the grounds, facts, and evidence
If the grounds, facts, and evidence are not presented, the petition for review must be rejected as inadmissible (R108(1) EPC and R107(1) b) EPC).
Place of filing
The petition for review must be filed directly with the EPO (R109(1) EPC together with A108 EPC): Berlin, The Hague, or Munich (Guidelines D-III 1).
If the opposition is filed elsewhere (e.g., national office, Vienna agency, etc.), transmission is possible (but there is no obligation under Guidelines D-IV 1.2.2.1 i)), but the relevant date remains the date of final receipt by the EPO (by analogy with T522/94).
Signature
The request for review must be signed in hand by the applicant or the representative (R107(3) EPC and R50(3) EPC).
A scribble or initials are not sufficient (analogy of Guidelines D-III 3.4).
If the request is not signed, the formalities officer invites the applicant to remedy this irregularity within a specified period (R50(3) EPC).
If the irregularity is not corrected within the specified period, the request is deemed not to have been filed (analogy of Guidelines D-IV 1.2.1 ii)).
A121 EPC applies where the review relates to a grant procedure.
A122 EPC applies only to the proprietor.
Requirement
In principle, this request must be typewritten or printed (R107(3) EPC and R50(2) EPC).
The request may be filed electronically (« Decision of the President of the European Patent Office dated 9 May 2018 on the electronic filing of documents« , OJ 2018, A45) or by fax, but confirmation may be requested upon invitation by the EPO (« Decision of the President of the European Patent Office dated 20 February 2019 on the filing of patent applications and other documents by telefax« , OJ 2019, A18).
If this confirmation is not received within the time limits, the request is deemed not to have been filed.
A margin of 2.5 cm must be left on the left side of the sheet (R107(3) EPC and R50(2) EPC).
Otherwise, the request is rejected as inadmissible (R108(1) EPC).
Preference
Preferably, the request for review should comply with the conditions of R49(3) EPC (R107(3) EPC):
- sheets should preferably be in A4 format and used in portrait orientation (except possibly for drawings, tables or mathematical formulae);
- sheets should preferably be numbered with an Arabic numeral centered at the top of the sheet (but not within 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 care should be taken) and in black;
- margins should preferably not be less than the following diagram:
Language
Request for review
The request for review must be filed in an official language of the EPO (i.e. German, French, English, R3(1) EPC).
However, it is possible to file the opposition request in the official language of a member state if the requester has their residence (or registered office) in that state, or if they are a national of that state residing abroad, and that state has an official language other than German, English, or French (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 of the following time limits:
- A time limit of 1 month from the date of submission of the document (R6(2) EPC, and not from the end of the time limit).
- The time limit for the request for review (R6(2) EPC).
A121 EPC is applicable where the review relates to a grant procedure.
A122 EPC is applicable only to the proprietor.
If the required translation is not filed in due time, the request for review shall be deemed not to have been filed (A14(4) EPC, last sentence).
Evidence, prior art, etc.
Other documents serving as evidence may be submitted in any language (even though a translation may also be requested within a time limit that may not be less than 1 month, R3(3) EPC).
Time limit
This request must be filed within 2 months from the written notification of the decision (A112a(4) EPC, except in the case of a criminal offense where the time limit is then 2 months from the establishment of that offense, but without exceeding 5 years).
Prima facie (by analogy with T389/86), the request should be validly filed if it is filed before the notification of the decision.
If the request is filed out of time, it shall be deemed not to have been filed.
A121 EPC is not applicable.
A122 EPC is applicable to the applicant or the proprietor (but probably not for the 5-year time limit), but not to the opponent, inventor, etc.
This restitutio in integrum must be filed within a time limit of 2 months from the expiry of that time limit (R136(1) EPC).
Review fee
Principle
The request for review shall be deemed to have been filed only after payment of the review fee (A112a(4) EPC, i.e. to be paid within the prescribed time limit).
This fee is [montant_epo default= »2760 € » name= »A2(1).11bis RFees »] (A2(1).11bis RFees).
It may be paid after the request (R108 EPC, last sentence).
Generally, the party filing the request for review will not be notified of a failure to pay the fee, unless the omission is evident from the circumstances (G2/97).
If this fee is not paid in due time, the request for review shall be deemed not to have been filed (A112a(4) EPC).
Reduction
Reduction before April 1, 2014
If the request for review was filed in the official language of a member state and if the opponent has their domicile (or registered office) in that state, or is a national of that state with their domicile abroad, and that state has an official language other than German, English, or French, the official fee may be reduced by 20 % (A14 RFees).
The reduction will only be granted if the translation is provided at the earliest together with the request for review (G6/91).
Reduction as of April 1, 2014
For filings (entering the national phase) as of April 1, 2014, no reduction is possible (« Decision of the Administrative Council of December 13, 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).
Examination of the request
Effect of the request
The request for review has no suspensive effect (A112a(3) EPC).
Jurisdiction and composition
The Enlarged Board of Appeal decides on requests for review (A22(1)(c) EPC):
- 2 legally qualified members and 1 technically qualified member (R109(2)(a) EPC),
- when examining requests for review (admissibility) and rejecting those that are manifestly inadmissible or unfounded;
- 4 legally qualified members and 1 technically qualified member (R109(2)(b) EPC),
- during the substantive examination of the request.
- this composition is in fact the same as for admissibility, but supplemented by 2 legally qualified members (A2(3) RPBA).
The chair is held by a legally qualified member.
Examination of the admissibility of the request
Principle
The Enlarged Board of Appeal examines whether the request contains irregularities (see below).
If irregularities exist and can no longer be corrected, the request for review is rejected as inadmissible (R108(1) EPC and R108(2) EPC).
This rejection must be decided unanimously by the 3 members (R109(2)(a) EPC).
If such a rejection is not voted unanimously, the request is referred to the Enlarged Board of Appeal without an opinion on the merits in the composition of 5 members (A17 RPBA).
Irregularities to be corrected within the time limit for filing the request
Initially, the EPO verifies (R108(1) EPC) the compliance of the request with the provisions relating to:
- the capacity of the petitioner (A112bis(1) EPC),
- the validity of the grounds invoked (A112bis(2) EPC),
- the sufficient presentation of the grounds, facts and evidence in the request (R107(2) EPC),
- the date of filing the request (A112bis(4) EPC),
- the presentation of the objection regarding the substantial procedural violation at the appeal stage (R106 EPC), or if the criminal act is established (R105 EPC),
- the designation of the decision under review (R107(1) b) EPC).
These irregularities may/must be corrected within the time limit for filing the petition for review (i.e., 2 months from the notification of the decision, R108(1) EPC).
At this stage of the proceedings, any other parties do not participate (R109(3) EPC).
If, at the end of the time limit for filing the petition for review, irregularities remain, the petition for review is rejected as inadmissible (R108(1) EPC).
Irregularity to be corrected within a set time limit
If the provisions relating to the name and address of the petitioner (R107(1) a) EPC) are not complied with, the EPO sets a new time limit for the petitioner to correct this irregularity, and if it is not corrected within the time limit, the petition for review is rejected as inadmissible (R108(2) EPC).
Admissible request
If the request contains no irregularities as mentioned above, the request is then examined on its merits.
Examination of the merits of the request
Procedure
The procedure is the same as for the boards of appeal (R109(1) EPC).
However, the procedure before the Enlarged Board is a simplified procedure, and certain time limits may be shortened (R109(1) EPC together with R132(2) EPC).
The petitioner may be summoned to oral proceedings if requested or ex officio. The summons period may be shorter than the minimum 2 months (R109(1) EPC together with R115(1) EPC).
Decision
If the request is well-founded, the Enlarged Board of Appeal (A112bis(5) EPC and R108(3) EPC):
- sets aside the decision of the board of appeal;
- orders the reopening of the proceedings before the board of appeal;
- orders the reimbursement of the review fee (R110 EPC) if the proceedings are reopened before the boards of appeal.
A replacement of the members of the board of appeal who participated in the decision set aside may be ordered. Exceptionally, it may also request that the case be handled by another board of appeal.
The rejection of the request is not subject to appeal (A106 EPC).
Annual Fee
It may happen that a due date has not been paid between the decision of the board of appeal and the corresponding review decision.
In this case, it is necessary to pay these annual fees according to the principle detailed (R51(5) a) EPC and R51(5) b) EPC) in the following figure:
Protection of Third Parties
If, between the appeal decision and the review decision, a third party has in good faith begun serious preparations for the purpose of exploiting the subject-matter of the patent (A112a(6) EPC), that party shall be granted a free license:
- for its business;
- or for the needs thereof.