Enlarged Board of Appeal

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Chapter 1. Skills

The Enlarged Board of Appeal has jurisdiction overA22 CBE):

  • the questions of law submitted by the Boards of Appeal (A112 EPC).
    • these questions can at the discretion of the Board of Appeal: the parties can not compel the Board of Appeal to put a question;
    • these questions have to if the Board of Appeal deems it necessary to depart from an interpretation or explanation contained in an opinion or decision of the Enlarged Board of Appeal (A21 RPCR);
    • if a question is asked, the parties are those of the appeal;
  • the questions of law submitted by the President of the EPO if there are divergent decisions issued by the Boards of Appeal (A112 EPC);
    • if the decisions are not really divergent, the question is inadmissible (G3 / 95).
  • Requests for review (A112bis EPC).

Chapter 2. Notices and decisions

Section 2.1. Composition

2.1.1. Principle

The large Board of Appeal is composed ofA22 CBE) 5 lawyers and 2 technicians.

2.1.2. Challenge of a member of the Enlarged Board of Appeal

If a member of the Enlarged Board of Appeal is suspected of bias, a party may request the disqualification of that member (A24 (3) EPC).

On the face of it, the fact that a member of the opposition division is a former employee of the applicant is not a sufficient reason to declare that member to be biased (T143 / 91). This applies in principle to the members of the Enlarged Board of Appeal.

If a member of a chamber has a close family relationship with a party, that member should beG1 / 05). This applies in principle to the members of the Enlarged Board of Appeal.

A priori, the presidents or vice-presidents of the EPO in charge of a General Directorate (and therefore subordinate to the EPO President) can not be a member of the Grand Chamber because a conflict of interest could arise from this function (R19 / 12).

Section 2.2. Decision

If a question is put by a Board of Appeal (A112 (1) (a) EPC), the big room makes a decision and therefore binds the Board of Appeal (A112 (3) EPC).

The referral to the Grand Chamber (which is a decision of the Board of Appeal) contains (A23 (2) RPCR):

  • the indication that it was issued by the Board of Appeal;
  • the date on which it was rendered;
  • the names of the chairman and other members of the Board of Appeal who took part;
  • the designation of the parties and their representatives;
  • a summary of the facts;
  • the question that the Chamber refers to the Enlarged Board of Appeal;
    • the question should not be asked in relation to points already settled (T79 / 89);
    • an alleged contradiction with the directives or an earlier decision of a Board of Appeal does not allow the matter to be referred to the Grand Chamber (T603 / 89);
    • the question must be asked if the Chamber thinks it deviates from an opinion or an interpretation of the Grand Chamber (A21 RPCR)
  • the context in which the question arose.

Of course, for a question to be put to the Grand Chamber, it is necessary that the appeal is admissible (unless precisely the question is related to this admissibility, G3 / 99).

The appeal procedure is then suspended and resumed after the decision of the Grand Chamber.

Section 2.3. view

If a question is asked by the President of the EPO, the large chamber makes a view.

The President can only seize the Grand Chamber if two decisions of two different rooms of appeal are divergent on a question (A112 (1) (b) EPC). Concerning the legal chamber, it is sufficient that its composition is different (G4 / 98because there is only one legal board of appeal).

If one of the members of the Grand Chamber has a dissenting opinion of the main opinion.

Third party observations are also possible.

The Enlarged Board of Appeal is not bound by its previous decisions or opinions.

Section 2.4. Suspension of first instance proceedings

The proceedings of the first instance may be suspended during the seizure of the Grand Chamber if ("Notice from the European Patent Office dated 1 September 2006 concerning the stay of proceedings” , OJ 2006, 538 and E-VI Guidelines 3):

  • a party explicitly requests it;
  • the first instance is of the opinion that the outcome of this proceeding depends entirely on the decision or opinion of the Grand Chamber.

Chapter 3. The Request for Review

Section 3.1. Decisions open

The decisions to be challenged are those of the Boards of Appeal, if (A112bis (2) EPC):

  • a member of the Board of Appeal participated in the decision in breach of theA24 (1) EPC (ie condition of revocation):
    • has a personal interest,
    • intervened as representatives of one of the parties
    • took part in the decision which is the subject of the appeal.
  • a member of the Board of Appeal participated in the decision despite his challenge (taken in accordance withA24 (4) EPC);
  • a person who was not a member of the boards of appeal participated in the decision;
  • the appeal proceedings were vitiated by a fundamental violation of theA113 EPC ;
    • right to be heard not respected (A113 (1) EPC);
    • decision not based on a text accepted by the applicant / holder (A113 (1) EPC);
  • the appeal procedure was vitiated by another fundamental procedural flaw as defined in the Implementing Regulation (R104 EPC):
    • the Board of Appeal did not grant an oral procedure even though it was required by the applicant (R116 (1) EPC),
    • the Board of Appeal rendered its decision but without ruling on a relevant request for that decision.
  • a criminal offense established under the conditions laid down in the Implementing Regulation (found and not condemned in a judgment which has become res judicata, R105 EPC) may have had an impact on the decision (eg corruption).

These grounds must have been raised at the appeal stage by the applicant (R106 EPC) unambiguously and indicating which defect isR4 / 08) and was rejected by the Board of Appeal.

This principle has two exceptions:

  • if the reason relates to a criminal offense,
  • if the objection could not be raised during the appeal proceedings.

If this has not been the case, the complaint is inadmissible (A112bis (5) EPC together R108 (1) EPC).

It is necessary that they have been returned after December 13, 2007.

Section 3.2. petitioner

The applicant must be a person to whom the appeal decision has not allowed (A112bis (1) EPC).

Otherwise, the Grand Chamber rejects the request for revision as inadmissible (A112bis (5) EPC together R108 (1) EPC).

Section 3.3. Request

3.3.1. contents

The request must include:

1) Problems with the identification of the opponent

A mistake most identification of the applicant (eg the applicant can not be identified at all), there is an irregularity R108 (1) EPC) and the request for review must be rejected inadmissible (unless the complainant has remedied it within the revision period, analogy Directives D-IV 1.2.2.1 (vi): a correction of the error may nevertheless be requested beyond the revision period under the R139 EPC (analogy of T219 / 86).

A mistake minor identification of the applicant (eg formal conditions not respected), there is an irregularity R108 (2) EPC) and this can be corrected after the invitation of the registry of the Grand Chamber ("Decision of the Enlarged Board of Appeal of 12 November 2007 concerning the tasks entrusted to the registry of the Enlarged Board of Appeal” , OJ 1/2009, supplement, III.2, A2 (2)), even after the revision period, analogy of Directives D-IV 1.2.2.2 i)).

TheA121 EPC shall apply to this time limit in the case of a review of a grant procedure.

TheA122 EPC is applicable to this time limit only for the holder.

2) Problems with the decision to be revised

If no decision is indicated, the request for review must be rejected as inadmissible (R108 (1) EPC and R107 (1) (b) EPC).

3) Problems with reasons and evidence

If the reasons, facts and evidence are not stated, the request for review must be rejected as inadmissible (R108 (1) EPC and R107 (1) (b) EPC).

3.3.2. deposit local

The request for review must be filed directly with the EPO (R109 (1) EPC together A108 EPC): Berlin, The Hague or Munich (Directives D-III 1).

If the opposition is filed elsewhere (eg national office, Vienna agency, etc.), a transmission is possible (but there is no obligation Directives D-IV 1.2.2.1 i), but the important date remains the date of final receipt by the EPO (analogy of T522 / 94).

3.3.3. Signature

The petition for review must be signed by the petitioner or the agent (R107 (3) EPC and R50 (3) EPC).

Initials or initials are not enough (analogy of Directives D-III 3.4).

If the request is not signed, the formalities officer invites the complainant to remedy the irregularity within a specified time (R50 (3) EPC).

If the irregularity is not corrected within the prescribed period, the application is deemed not to have been filed (analogy Directives D-IV 1.2.1 ii)).

TheA121 EPC is applicable in the case of a review of a grant procedure.

TheA122 EPC is applicable only to the holder.

3.3.4. Obligation

In principle, this request must be typed 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 concerning the electronic filing of documents” , OJ 2018, A45) ou par télécopie, mais une confirmation peut être demandée sur invitation de l’OEB (“Decision of the President of the European Patent Office dated 20 February 2019 concerning the filing of patent applications and other documents by telefax", OJ 2019, A18).

If this confirmation is not received in time, the request is deemed not presented.

A margin of 2.5 cm must be reserved on the left of the sheet (R107 (3) EPC and R50 (2) EPC).

Otherwise, the request is rejected as inadmissible (R108 (1) EPC).

3.3.5. Preference

For preference, the request for review must comply with the conditions of the R49 (3) EPC (R107 (3) EPC):

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

Section 3.4. Language

3.4.1. Request

The request for review must be filed in an official language of the EPO (ie German, French, English, R3 (1) EPC).

However, it is possible to file the opposition petition in the official language of a Member State if the petitioner has his domicile (or registered office) in that State, or if he is the national of that State whose domicile is abroad, and that the latter 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 piece (G6 / 91) in one of the official languages of the Office, irrespective of the language of the proceedings (Directives A-VII 2) and within the period expiring later from

  • a delay of 1 month from the date of delivery of the coin (R6 (2) EPC, and no from the end of the period).
  • the request for review (R6 (2) EPC).

TheA121 EPC is applicable in the case of a review of a grant procedure.

TheA122 EPC is applicable only to the holder.

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 phrase).

3.4.2. Evidence, prior art, etc.

Other documents that serve as proof may be produced in any language (although a translation may also be requested within a time limit that can not be less than 1 month, R3 (3) EPC).

Section 3.5. Time limit

This request must be submitted under 2 months from service of the decision in writing (A112bis (4) EPCexcept in the context of a criminal offense where the time is then 2 months from the establishment of this offense, but without exceeding 5 years).

A priori (by analogy with T389 / 86), the motion should be validly made if it is made before service of the decision.

If the request is filed out of time, it should be deemed not presented.

TheA121 EPC is not applicable.

TheA122 EPC is applicable for the applicant or holder (but probably not for the 5 year period), but not for the opponent, the inventor, etc.

This restitutio in integrum must be submitted within a 2 months from the expiry of that period (R136 (1) EPC).

Section 3.6. Revision fee

3.6.1. Principle

An application for review is deemed to be made only after payment of the review fee (A112bis (4) EPC, ie to pay within the prescribed time).

This tax is 2910€ (A2 (1) .11bis RRT).

It can be paid after the request (R108 EPC, last phrase).

In general, the party making the petition for review will not be notified of a failure to pay the tax unless it is obvious from the circumstances (G2 / 97).

If this tax is not paid in due time, the petition for review is deemed not to have been filed (A112bis (4) EPC).

3.6.2. Reduction

1) Discount before April 1, 2014

If the request for review has been submitted in the official language of a Member State and the opponent has his domicile (or registered office) in that State, or if he is the national of that State whose domicile is abroad, and that the latter has an official language other than German, English or French, the tax may be reduced by 20% (A14 RRT).

The reduction will only be granted if the translation is provided at the earliest at the same time as the request for review (G6 / 91).

2) Reduction as of April 1, 2014

For applications filed (incoming in phase) from 1 April 2014, no reduction is possible ("Decision of the Administrative Council of 13 December 2013 amending Rule 6 of the Implementing Regulation to the European Patent Convention and Article 14 (1) of the Rules relating to Fees” , OY 2014, A4).

Section 3.7. Examination of the request

3.7.1. Effect of the request

The request for review shall not have suspensive effect (A112bis (3) EPC).

3.7.2. Skills and compositions

The Grand Chamber rules on petitions for review (A22 (1) (c) EPC):

  • 2 legal members and 1 technician member (R109 (2) (a) EPC),
    • reviewing applications for review (admissibility) and rejects those which are manifestly inadmissible or unfounded;
  • 4 legal members and 1 technician member (R109 (2) (b) EPC),
    • during the analysis of the merits of the request.
    • this training is in fact the same as for the admissibility, but completed by 2 legal members (A2 (3) RPGCR).

The presidency is held by a legal member.

3.7.3. Examination of the admissibility of the complaint

1) Principle

The Grand Chamber examines whether the application contains irregularities (see below).

If irregularities exist and can no longer be corrected, the request for review is rejected as being inadmissible (R108 (1) EPC and R108 (2) EPC).

This rejection must be taken unanimously by the 3 members (R109 (2) (a) EPC).

If such rejection is not voted unanimously, the request is transmitted to the Grand Chamber without any opinion on the substance in the 5-memberA17 RPGCR).

2) Irregularities to be corrected within the deadline for submitting the request

As a first step, the EPO verifiesR108 (1) EPC) the compliance of the application with the provisions relating to

  • the quality of the applicant (A112bis (1) EPC),
  • the validity of the grounds invoked (A112bis (2) EPC),
  • sufficient disclosure of the reasons, facts and evidence in the application (R107 (2) EPC),
  • at the date of submission of the application (A112bis (4) EPC),
  • submission of the objection of substantial defect at the appeal stage (R106 EPC), or if the criminal offense is established (R105 EPC)
  • the designation of the contested decision (R107 (1) (b) EPC).

These irregularities can / should be corrected within the time limit for filing the request for review (ie 2 months from the notification of the decision, R108 (1) EPC).

At this stage of the procedure, any other parties do not participate (R109 (3) EPC).

If, at the end of the deadline for submitting the request for review, irregularities remain, the request for review is rejected as being inadmissible (R108 (1) EPC).

3) Irregularity to be corrected within a given period

If the provisions concerning the name and address of the applicant (R107 (1) (a) EPC) is complied with, the EPO sets a new deadline for the applicant to correct this irregularity and if it is not corrected in due time, the request for review is rejected as being inadmissible (R108 (2) EPC).

4) Admissible request

If the request does not contain any irregularities mentioned above, the request is then examined on the merits.

3.7.4. Examination of the merits of the complaint

1) Procedure

The procedure is the same as for the Boards of Appeal (R109 (1) EPC).

Nevertheless, the procedure before the Grand Chamber is a simplified procedure and certain deadlines can be shortened (R109 (1) EPC together R132 (2) EPC).

The applicant may be summoned to oral proceedings if he so requests or ex officio. The quotation period may be shorter than the 2 months minimum (R109 (1) EPC together R115 (1) EPC).

2) Decision

If the application is well founded, the Enlarged Board of Appeal (A112bis (5) EPC and R108 (3) EPC):

  • annul the decision of the Board of Appeal;
  • order the reopening of the proceedings before the Board of Appeal;
  • order the refund of the revision 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 annulled decision may be ordered. It may also exceptionally request that the case be dealt with by another Board of Appeal

The rejection the application is not subject to appeal (A106 EPC).

Section 3.8. Annuity

It may happen that a deadline has not been paid between the decision of the Board of Appeal and the corresponding revision decision.

In this case, it is necessary to pay these annuities according to the detailed principle (R51 (5) (a) EPC and R51 (5) (b) EPC) in the following figure:

taxeannuellerevision

Section 3.9. Third party protection

If, between the appeal decision and the review decision, a third party has begun in good faith serious preparations for the purpose of exploiting the subject-matter of the patent (A112bis (6) EPC), this one will be granted a free license:

  • for his business;
  • or for the needs of the latter.

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