Appeal

Contents

Chapter 1. Decisions subject to appeal

Section 1.1. Decision

1.1.1. Principle

1.1.2. Is not a decision

1.1.3. Case of final decisions

1.1.4. Case of intermediate decisions

Section 1.2. Made by ...

Section 1.3. Indication of a possible remedy

Section 1.4. Types of decision

1.4.1. Not having made the claims

1.4.2. Ending the procedure

1.4.3. Special case of fixing / distribution of costs

Chapter 2. Quality of people who can appeal

Section 2.1. Principle

Section 2.2. Applicant or holder

Section 2.3. Representative

Section 2.4. Opponent / Intervener

Section 2.5. Focus on other possible applicants

Section 2.6. Case of co-applicants, co-holders, or co-opponents

Section 2.7. Non-petitioning parties

Section 2.8. Case of an assignment

Section 2.9. Case of a radiation

Section 2.10. Correction of the applicant

2.10.1. Principle

2.10.2. Subsidiary Applicant

Chapter 3. Competent body

Section 3.1. Principle

Section 3.2. Composition

Section 3.3. Challenge of a member of a board of appeal

Chapter 4. Form and deadline

Section 4.1. Act of appeal

4.1.1. Time limit

4.1.2. deposit local

4.1.3. Form

4.1.4. Language

4.1.5. Content of the act

1) General considerations

2) Identification of the applicant

3) Identification of the contested decision

4) Object of the appeal

Principle

Unclear object

Object absurd or unrelated to the decision

Missing object

Object having already been the subject of a lodged remedy

Section 4.2. Appeal fee

4.2.1. Principle

4.2.2. Reduced rate

4.2.3. In case of late payment

4.2.4. No irregularity notification

4.2.5. Payment missing / incomplete

1) Principle

2) Small mistake

3) Error not detected

4.2.6. Refund

4.2.7. Special case of an appeal on a decision affecting several applications / patents

Section 4.3. Provision of the dissertation

4.3.1. Time limit

4.3.2. Form

4.3.3. Language

4.3.4. contents

Section 4.4. Provision of evidence

4.4.1. Principle

4.4.2. Language

Section 4.5. Focus on restitutio queries

4.5.1. Taken during preliminary ruling

4.5.2. Decided by the board of appeal

Chapter 5. Training and admissibility

Section 5.1. Non-training

5.1.1. irregularities

5.1.2. Prior notification (analogy with the opposition)

5.1.3. Procedure

Section 5.2. Inadmissibility and major irregularities

5.2.1. irregularities

5.2.2. Prior notification (analogy with the opposition)

5.2.3. Procedure

Section 5.3. Inadmissibility and minor irregularities

5.3.1. irregularities

5.3.2. Prior notification (analogy with the opposition)

5.3.3. Procedure

Section 5.4. admissibility

Chapter 6. Review of the appeal

Section 6.1. Suspensive effect

Section 6.2. Interlocutory revision

6.2.1. Principle

6.2.2. Exclusion and exceptions to exclusion

6.2.3. Revision case

1) Principle

2) Case of obiter dictum

6.2.4. Cases of non-review

6.2.5. Appeal against interlocutory revision

6.2.6. Rejection of the appeal

6.2.7. Application for reimbursement of the appeal fee

6.2.8. Rejection of the request for reimbursement of the appeal fee

Section 6.3. Withdrawal of opposition / appeal

6.3.1. Withdrawal of opposition

6.3.2. Withdrawal of the appeal

6.3.3. Effects of the withdrawal on the responders at the appeal stage

Section 6.4. Examination by the Board of Appeal

6.4.1. End of the examination of the admissibility

6.4.2. Independence of the Boards of Appeal

6.4.3. The actual exam

6.4.4. Admissibility of applications

1) Late requests

2) Converging requests

3) Motions not admitted at first instance

4) Motions unrelated to the impugned decision

5) Queries not explicitly presented

6) Undetermined requests

7) If all the complaints are inadmissible

6.4.5. Absence to a possible oral procedure

Section 6.5. Appeal during the examination procedure

6.5.1. Procedure

6.5.2. Reformatio in pejus

Section 6.6. Appeal during the opposition proceedings

6.6.1. Procedure

6.6.2. Reformatio in pejus

1) Questioning for problems A123 (2)

2) Challenging for A84 problems

3) Challenging for problems A83

4) Challenging to counter new facts / arguments

6.6.3. speakers

6.6.4. New reasons

1) Principle

2) Acceptance of the new reasons

3) Separate reasons

6.6.5. New arguments

6.6.6. New evidence / documents

1) Principle

2) Prior use and abuse of process

6.6.7. modifications

6.6.8. Distribution and fixing of costs

Chapter 7. Decision

Section 7.1. Principle

Section 7.2. Date of the decision

Section 7.3. Motivation

Section 7.4. Referral at first instance

7.4.1. Requiring a referral

7.4.2. Not requiring referral

7.4.3. Waiver

7.4.4. Decision and need for "finalization"

7.4.5. Order at first instance

Section 7.5. Binding effect of the decision

Section 7.6. Authority of res judicata

Section 7.7. Decision of the Board of Appeal

7.7.1. Time of decision making

7.7.2. Authentication of the decision

7.7.3. Content and form of the decision

Chapter 8. Reimbursement of the appeal fee

Section 8.1. Complete refund

Section 8.2. 50% refund

Section 8.3. Case of an application deemed withdrawn during the appeal

Section 8.4. Body ordering repayment

Chapter 9. Accelerating the appeal procedure

Section 9.1. Principle

Section 9.2. Who can require

Section 9.3. Request

Section 9.4. Reasons for emergency

Chapter 10.

Chapter 1. Decisions subject to appeal

Section 1.1. Decision

1.1.1. 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 makes it possible to know if the document actually contains a decision (D8 / 81).

1.1.2. Is not a decision

The minutes of oral proceedings (T838 / 92) is not a decision.

Notification R71 (3) EPC, indicating that the main request is rejected but that the auxiliary request fulfills the conditions of the EPC is not a decision (T1377 / 15) subject to appeal.

1.1.3. Case of final decisions

A final decision is a decision that terminates the proceedings (A106 (2) EPC).

It is possible to appeal against these decisions as long as the following conditions are met.

1.1.4. Case of intermediate decisions

It is possible to appeal against an intermediate decision (A106 (2) EPC) if the decision provides for an independent appeal.

In this case, the possibility of appealing against this decision must be included in the scheme (T756 / 14).

Section 1.2. Made by ...

An appeal is possible against decisions (A106 (1) EPC):

  • the deposit section,
  • of the Examination Division,
  • of the opposition division (even if the patent is abandoned / extinguished in all countries R98 EPC), and
  • of the legal division.

Thus, no appeal is possible against decisions:

  • of the research division,
  • from the President of the EPO.

Section 1.3. Indication of a possible remedy

Normally, appealable decisions must be reasoned and contain a statement indicating that an appeal is possible (R111 (2) EPC).

Parties can not avail themselves of the omission of this reference (R111 (2) EPC) and this does not constitute a substantial procedural violation (T42 / 84).

Section 1.4. Types of decision

1.4.1. Not having made the claims

An appeal is possible only against the decisions having injured the party wishing to appeal (A107 EPC together R101 (1) EPC).

Regarding auxiliary requests:

  • an appeal is possible if a subsidiary request is granted while the main request is not abandoned (T234 / 86);
    • Nevertheless, it is necessary to analyze the recourse in concreto : in his appeal, the holder must defend the main request that has been rejected (otherwise the appeal will be declared inadmissible).
    • It can not be content to 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 has accepted a subsidiary request (T541 / 00);
  • to truly abandon the main one, it is necessary to present the complete text of the application / patent to bring it in line with the request (T977 / 02).

If an opponent has requested a partial revocation of the patent and has granted his request, he may not appeal to request the total revocation (T299 / 89).

If ever the plaintiff is mistaken about the grant text and agrees with it, we can not say that the decision does not satisfy his claim (T1795 / 15): the action will therefore be inadmissible.

1.4.2. Ending the procedure

Moreover, an appeal is only possible if the decision terminates the procedure (ie final, A106 (2) EPC).

For decisions that do not terminate the proceedings, an appeal is possible onlyA106 (2) EPC):

  • if the decision so provides;
  • or with the final decision.

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

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

1.4.3. Special case of fixing / distribution of costs

The decision to division expenses is not subject to appeal if it is the sole object of the appeal (A106 (3) EPC together R97 (1) EPC).

Moreover, if an appeal is lodged concerning the fixation costs, this appeal will only be accepted if the amount involved is higher than the appeal fee (A106 (3) EPC together R97 (2) EPC).

Chapter 2. Quality of people who can appeal

Section 2.1. Principle

Only the parties not obtained what they asked for can appeal (A107 EPC).

We hear by " to the claims of which a decision has not been successful »:

  • at least the main request was rejected;
  • the fact that a decision was taken while the party did not take a position on a notification (T457 / 89, G1 / 88): the principle that his silence is tacit acceptance " Who tacet consent videtur " Not Applicable ;
  • the fact that a previous main request was rejected (this is questionable but ... T537 / 05).

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

If a person is no longer a party to the proceedings at the first instance (eg withdrawal of an opposition), then they can not appeal (T789 / 89).

Similarly, it is impossible to appeal if it was stated at first instance that we had no arguments as to the application to be issued by the EPO (T735 / 13).

Section 2.2. Applicant or holder

The applicant or the owner may very well appeal.

Section 2.3. Representative

The agent of this party can not not appeal in his own name (J1 / 92).

If he lodges an appeal, it is in the name of his client (s).

Section 2.4. Opponent / Intervener

An opponent can, of course, appeal because it is a party to the proceedings.

The intervener at the opposition stage may also lodge an appeal (G3 / 04).

Section 2.5. Focus on other possible applicants

We often think of the owner, the applicant, or the opponent, but these people can also appeal:

  • theinventor concerning the decision on the rectification of the designation of inventors (R21 EPC);
  • theacquiring where the licensee concerning the decision on registration (R22 EPC) a transfer or license (R23 EPC);
  • a third concerning the decision on public inspection (A128 CBE, ex. a refusal, J27 / 87).

Section 2.6. Case of co-applicants, co-holders, or co-opponents

There may be several recourse parties.

Co-applicants or co-opponents who have made a joint objection may appeal if it is submitted by the common representative (G3 / 99).

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

The appeal must be brought in the name of all applicants by the duly appointed common representative (G3 / 99, T1154 / 06, R18 / 09). If not, the appeal must therefore be considered inadmissible.

If the common representative lodges an appeal on behalf of one of co-applicants onlythe appeal will be irreceivable and the EPO will not send any notification to the common representative to give him an opportunity to correct (T755 / 09).

Section 2.7. Non-petitioning parties

The other parties to the proceedings are, of right, parties to the appeal proceedings (A107 EPC).

Nevertheless, if the last person making the appeal withdraws, the other parties who have not appealed can not continue the proceedings (G2 / 91).

Section 2.8. Case of an assignment

If an assignment (excluding universal succession, T15 / 01) intervened after the decision, it is necessary to register this transfer to the REB before to appeal (T656 / 98) before the end of the appeal period, the documents establishing the transfer, requesting the transfer and paying the transfer fee must be provided (R22 EPC).

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

Being economically connected is not enough to have the right to appeal (T298 / 97).

Section 2.9. Case of a radiation

Imagine the following situation: a company X having been dissolved (without successor) following a bankruptcy forms an appeal on opposition.

This appeal is admissible?

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

Indeed, certain rights allow a dissolved company to perform procedural acts such as the commencement of a lawsuit if the dispute is related to any form of economic interest (eg in German law).

Section 2.10. Correction of the applicant

2.10.1. Principle

According to the Grand Chamber (G1 / 12), it is quite possible to correct the name of the applicant:

  • using the R101 (2) EPCif, within the time limit for the appeal, the applicant is identifiable:
    • the true intention of the applicant must be assessed, which is evaluated on the basis of the principle of free evaluation of the evidence;
  • using theR139 EPC, under the conditions laid down by the case-law even outside the period of recourse:
    • the complainant bears the burden of proof, which must be of a high standard.

2.10.2. Subsidiary Applicant

If there is justifiable legal uncertainty as to the way of interpreting the law, it is possible to bring an action with an applicant and, alternatively, another claimant with a different interpretation (if the legal interpretation was wrong, G2 / 04).

Chapter 3. Competent body

Section 3.1. Principle

The Board of Appeal is competent to host the appeals (ohhhh ... surprise !! A21 EPC).

The boards of appeal are subject to Rules of Procedure of the Boards of Appeal (RPCR). This regulation codifies the case law of the Boards of Appeal as regards procedural practices. Moreover, the fact that the Praesidium stops the RPCR (R12 (3) EPC) does not deprive it of legal basis as the RPCR is also approved by the EPOT1100 / 10).

Section 3.2. Composition

This room is composed of:

  • for ex-parte proceedings:
    • against the decisions of the Receiving Section or the Legal Division:
    • against the decisions of the Examining Division:
      • 2 technicians and 1 lawyer
        • (if rejection of an application, grant, limitation or revocation of a patent and if the decision was rendered by less than 4 members) (A21 (3) (a) EPC);
        • (if the action seeks the dismissal of a request for the refund of search R64 (2) EPC made by less than 4 members) (G1 / 11);
      • 3 technicians and 2 lawyers
        • (if the decision was rendered by 4 members or if the Board of Appeal considers that the nature of the appeal so requires) (A21 (3) (b) EPC);
        • (if the action seeks the dismissal of a request for the refund of search R64 (2) EPC made by 4 members) (G1 / 11);
      • 3 lawyers otherwise (A21 (3) (c) EPC).
  • for inter-party proceedings:
    • against the decisions of the Opposition Division:
      • 2 technicians and 1 lawyer (if the decision was made by 3 members) (A21 (4) (a) EPC);
      • 3 technicians and 2 lawyers (if the decision was rendered by 4 members or if the Board of Appeal considers that the nature of the appeal so requires) (A21 (4) (b) EPC).
    • against the decisions of the Receiving Section or the Legal Division:

This chamber has judicial status, so the independence of its members is guaranteed.

In particular, they can not be part of the filing section or another division.

Section 3.3. Challenge 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 disqualification of that member (A24 (3) EPC), but only before any procedural act if, prior to that act, the party had knowledge of the ground for recusation.

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 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 Board of Appeal.

Chapter 4. Form and deadline

Section 4.1. Act of appeal

4.1.1. Time limit

The notice of appeal must be submitted 2 months (A108 EPC) from the service in writing of the decision (R111 (1) EPC, not its delivery at the oral proceedings, Directives E-III 9).

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

The decision is necessarily delivered by LRAR, in accordance with the R126 (1) EPC : if this is not the case (but, for example, using UPS), there is a vice of meaning (the first sentence of the R126 (2) EPC can not be satisfied) and no delay can begin to run, even if it would be attested that the addressee would have received this document (G1 / 14).

TheA122 EPC is applicable to the period of 2 monthsbut only for the applicant or holder (Directives E-VIII 3.1.1), but not for the opponent (Directives E-VIII 3.1.2 and T210 / 89).

If the notice of appeal is filed out of time, the appeal is considered to be untrained (A108 EPC and T41 / 82).

4.1.2. deposit local

The deed of deposit must be filed with the EPO (A108 EPC).

4.1.3. Form

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

The notice of appeal must be signed by the person responsible (R99 (3) EPC together R50 (3) EPC). If the notice of appeal is not signed, the formalities officer invites the applicant (or, where appropriate, his representative) to remedy the irregularity within a specified period of time (often 2 months Directives E-VIII 1.2 i).

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

  • 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:

In addition, the notice of appeal 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 together R2 EPC);
  • by fax (" Decision of the President of the European Patent Office dated 12 July 2007 concerning the filing of patent applications and other documents by telefax », OG 2007, Special Edition No. 3, A.3, A7 (2)).
    • a confirmation by mail can then be requested.
    • If the opponent does not respond to this invitation, the fax is deemed not received and the appeal is deemed unformed (R2 (1) EPC).

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

However, if the signature is missing, the appeal is a priori renowned untrained (by analogy with Directives D-IV 1.2.1 ii).

NeitherA122 EPCnor A121 EPC is not applicable to the time limit.

4.1.4. Language

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

If the claimant has his domicile (or registered office) in one of the Contracting States (or if he is the national of one of those States domiciled abroad) and that State has an official language other than German, English or French, it can file the notice of appeal in this language (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 time limit for appeal (R6 (2) EPC).

TheA121 EPC is applicable to these time limits if the appeal is an ex-parte appeal relating to the grant procedure (ie for the applicant).

TheA122 EPC is applicable to these deadlines, but only for the holder and not for the opponent or the plaintiff.

In other cases, these periods do not benefit from theA121 EPC or A122 EPC.

If the translation is not produced on time, the appeal is deemed untrained (A14 (4) EPC and T323 / 87).

4.1.5. Content of the act

1) General considerations

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

  • the name and address of the applicant (in accordance with the provisions of R41 (2) (c) EPC);
  • indication of the contested decision,
  • a request defining the subject of the appeal (ex. the appeal relates to the revocation of the patent EPxxxx").

In addition, the case-law requires that the notice of appeal contain an indication that the applicant intends to bring an action (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 settlement of the appeal fee of the European patent application n ° 09737080.3 Is not enough to express explicitly his willingness to appeal.

2) Identification of the applicant

As we said above, the notice of appeal must identify the applicant.

If the name of the applicant is incorrect, there is a minor irregularity (under the R101 (2) EPC) (G1 / 12) and this can be corrected after an invitation by the EPO, even after the deadline for lodging an appeal.

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

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

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

The invitation of the EPO need not explicitly mention the R101 (2) EPC : even if this invitation specifies that it is for the good administration of the file, this invitation is valid and a non-response causes the inadmissibility of the appeal (T719 / 09).

3) Identification of the contested decision

If the decision is not identified, the appeal is dismissed as inadmissible (R101 (1) EPC and R99 (1) (b) EPC).

In the absence of mention of the contested decision, the fact that the EPO registry has been able to associate an appeal with a particular file does not mean that the appeal is necessarily 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).

4) Object of the appeal
Principle

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

Nevertheless, it is not necessary for the notice of appeal to contain the exact grounds underlying the contestation of the decision (this is the subject of the memorandum).

Unclear object

If the object is insufficiently clear, the board must try to deduce from the notice of appeal (T7 / 81).

For example :

  • if a decision of rejection is simply attacked, it is probable that the applicant will maintain the last application on which the contested decision was based (T49 / 99 and T407 / 02).
  • if the applicant seeks the annulment of the decision in its entirety (who revoked the patent) and, at the same time, requests the revocation of the patent, it is likely that only the first application is valid (T413 / 13).

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

  • 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 opposition (T2561 / 11).
Object absurd or unrelated to the decision

If the subject of the appeal is absurd Or not in connection with the appeal decision, this does not mean that the appeal is inadmissible: the admissibility of the appeal is different from the admissibility of the applications (T2599 / 11).

However, in other cases, it has been indicated that an appeal which does not state how the decision of the first instance should be annulled should be declared inadmissible: this is the case if the applicant merely submits a new application ( possibly based on the motion dismissed at first instance but never presented) (T327 / 13, , T1738 / 11 or T399 / 13).

Thus, if the holder submits four new applications that have never been submitted before, it is highly likely that the applications will be declared inadmissible or that the appeal will be (T438 / 12).

Missing object

Even if the subject-matter of the appeal is regarded as implicit, it is impossible to omit any mention of the subject-matter of the appeal.

Such a practice would be tantamount to admitting that recourse can be brought only by payment of the appeal fee accompanied by the filing or publication number, which is contrary to the case-law of the decision J19 / 90 (T620 / 13 or T371 / 92 or T653 / 15).

In the absence of an appeal, the action is dismissed as inadmissible (R101 (1) EPC and R99 (1) (c) EPC).

Object having already been the subject of a lodged remedy

It is possible for a Board of Appeal to make a decision and refer in the first instance to bring the text of the description into conformity.

In this case, the first instance is bound by the decision of the Board of Appeal and can not contradict it (see below).

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

Section 4.2. Appeal fee

4.2.1. Principle

The appeal is deemed to be filed only after the payment of the appeal fee within the 2 months (A108 EPC and R101 (1) EPC): 2225 € (A2 (1) .11 RRT).

TheA122 EPC is applicable to the period of 2 monthsbut only for the applicant or holder (Directives E-VIII 3.1.1), but not for the opponent (Directives E-VIII 3.1.2 and T210 / 89).

4.2.2. Reduced rate

Nevertheless, this tax is only 1880 € (A2 (1) .11 RRT) for :

To benefit from this reduced rate, the declaration to obtain this reduced rate must be produced at the latest when the reduced amount of the appeal fee is paid (" Notice from the European Patent Office dated 18 December 2017 concerning the reduction of the appeal fee (Article 108 EPC) for an appeal by a natural person or an entity referred to in Rule 6 (4) EPC«, OJ 2018, A5).

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

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

4.2.3. In case of late payment

In the event of late payment of the appeal fee, some chambers 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 now the majority,  T1325 / 15 or T2406 / 16) believe, on the contrary, that the appeal is untrained and that the tax must be repaid.

4.2.4. No irregularity notification

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

4.2.5. Payment missing / incomplete

1) Principle

Since the appeal is not made (see above), it is therefore inadmissible (A108 EPC and R101 (1) EPC).

2) Small mistake

If only a small part of the sum is missing (about 10%, J11 / 85), the formalities officer may still consider, for reasons of fairness, that the payment is made on time (A8 RRT and Directives D-IV 1.2.1 i).

3) Error not detected

If the applicant is mistaken as to the amount of the appeal fee (eg payment with reduction where he was not entitled), the appeal is normally inadmissible if the EPO or the other party sees it promptly (T642 / 12).

Nevertheless, if no one sees the error for several years and this question is raised only belatedly, the Board of Appeal considers that under the legitimate expectation The appeal will be well-formed (T595 / 11).

4.2.6. Refund

If the appeal is considered untrained (eg notice of appeal filed too late or tax paid too late), any taxes paid will be refunded without having to ask for it (because it is a payment without a cause).

See also below.

4.2.7. Special case of an appeal on a decision affecting several applications / patents

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

In this case, an appeal number will be created by patent / patent application. How many taxes do you have to pay?

Rest assured: only one fee will have to be paid because only one decision is contested (J18 / 14).

Section 4.3. Provision of the dissertation

4.3.1. Time limit

The brief must be provided under 4 months from service of the decision in writing (A108 EPC).

TheA122 EPC is applicable to the period of 4 months for the applicant or holder, but also for the opponent (G1 / 86).

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

Nevertheless, if the appeal partially on time (eg start of fax transmission at 23:58 and end at 00:16), the EPO considers that the appeal is receivable (because, formally, some pages of the memory have been received). The belated pages must be admitted to make sense of the pages filed on time (a rejection would be an improper exercise of the discretionary power of theA13 (1) RPCR) (T2317 / 13).

4.3.2. Form

The appeal brief must in principle be typewritten or printed, and include a margin of 2.5 cm on the left of the sheet (R99 (3) EPC together R50 (2) EPC).

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

  • 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:

In addition, the appeal brief 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 together R2 EPC);
  • by fax (" Decision of the President of the European Patent Office dated 12 July 2007 concerning the filing of patent applications and other documents by telefax », OG 2007, Special Edition No. 3, A.3, A7 (2)).
    • a confirmation by mail can then be requested.
    • If the opponent does not respond to this invitation, the fax is deemed not received and the appeal is dismissed as inadmissible (R101 (1) EPC together A108 EPC).

4.3.3. Language

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

If the claimant has his domicile (or registered office) in one of the Contracting States (or if he is the national of one of those States domiciled abroad) and that State has an official language other than German, English or French, it can file the appeal brief in this language (A14 (4) EPC).

The language of the dissertation is totally irrelevant for the reduction of the appeal fee (G6 / 91) (and if the application was filed or phased in prior to April 1, 2014, " 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, A4because otherwise there is no reduction).

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 time limit for filing the appealR6 (2) EPC).

TheA121 EPC is applicable to these time limits if the appeal is an ex-parte appeal relating to the grant procedure (ie for the applicant).

TheA122 EPC is applicable to these deadlines, but only for the holder and for theopposing (G1 / 86), but not for the applicant.

In other cases, these periods do not benefit from theA121 EPC or A122 EPC.

If the translation is not filed on time, the appeal is dismissed as inadmissible (R101 (1) EPC and A108 EPC).

4.3.4. contents

The memorandum details the grounds on which the contested decision must be annulled or the extent to which it must be amended, as well as the facts and evidence on which the appeal is based (R99 (2) EPC).

This brief must clearly and concisely state the grounds on which it is requested to modify / annul the decision (A12 (2) RPCR). It must expressly and precisely state the facts, arguments and justifications invoked.

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

This is not simply a challenge to the contested decision or to a general quotation of the directives without showing enough what it intends to infer (T220 / 83).

The content must be linked to the contested decision.

Thus, a statement of appeal is inadmissible (R101 (1) EPC and R99 (2) EPC):

  • if he is insufficiently motivated (T1649 / 10);
  • if it merely repeats the arguments developed in the first instance (T2012 / 16) ;
  • if it completes only an insufficiently reasoned objection (and therefore inadmissible) without demonstrating the admissibility of the opposition (T213 / 85);
  • if it only exposes a new ground of opposition based on a new document, as this is contrary to the principles of G9 / 91 (T1007 / 93);
  • if it demonstrates in a very long way the inventive step of the invention, but without explaining why the first instance made an erroneous reasoning on this subject (T2536 / 12);
  • if it does not contain arguments against certain grounds for rejection (T899 / 13);
  • if it simply presents new sets of claims without challenging the decision of first instance (T2532 / 11).

If the brief merely states that the irregularity which justified the rejection in the first instance is now corrected (eg appointment of an agent previously missing J18 / 08 or deletion of a dependent claim not sufficiently described T935 / 12), the Board of Appeal accepts the appeal as admissible.

If there is a new fact, it must be sufficiently motivated to satisfy the requirement of sufficient reasoning, and if it is confirmed, it withdraws any legal basis to the decision (J902 / 87, ex. a deadline must be suspended because of the madness of the agent).

Section 4.4. Provision of evidence

4.4.1. Principle

Normally, the documents referred to in the pleadings must be attached as they are not documents already filed during the grant, opposition during these proceedings (A12 (2) RPCR).

In any event, they must be lodged to the extent that the Chamber so requests (A12 (2) RPCR).

4.4.2. Language

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

Section 4.5. Focus on restitutio queries

4.5.1. Taken during preliminary ruling

Where the conditions for the preliminary ruling are fulfilled (Directives E-VIII 3.3), the body whose decision is challenged may grant restitutio in integrum requested:

In all other cases, this question must be decided by the Board of Appeal (Directives E-VIII 3.3).

4.5.2. Decided by the board of appeal

The decision to re can not be appealed because it is rendered by the Board of Appeal (A106 (1) EPC).

Chapter 5. Training and admissibility

Section 5.1. Non-training

5.1.1. irregularities

The irregularities leading to the non-formation of the appeal are:

  • the appeal fee has not been paid (or insufficiently) in the 2 months from the notification of the decision (A108 EPC);
  • the notice of appeal was not lodged in the 2 months from the notification of the decision (A108 EPC and T1325 / 15);
  • the missing signature was not corrected within the specified time (R99 (3) EPC and R50 (3) EPC);
  • the confirmation of the notice of appeal, if it has been requested after a fax filing, has not been filed in due time (R100 (1) EPC and R2 (1) EPC and Decision of the President of the European Patent Office dated 12 July 2007 concerning the filing of patent applications and other documents by telefax " OG 2007, Special Edition No. 3, A.3, A7 (2));
  • the power of the representative or the employee, possibly requested, has not been filed in time (R152 (1) EPC and R152 (6) EPC);
  • no agent has been appointed when necessary (A133 (2) EPCunless the appeal is against the filing date, D7 / 89).
  • if the language of the notice of appeal is not an official language:
    • this act not being deposited by a person of theA14 (4) EPC.
    • this act being filed by a person of theA14 (4) EPCbut that the translation is not produced within the prescribed time.

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

5.1.2. Prior notification (analogy with the opposition)

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

The applicant can not rely on the absence of notification.

Nevertheless, for the default of signature, a notification is systematically sent.

5.1.3. Procedure

If the appeal is deemed to be unformed, the formalities officer informs the complainant (A119 EPC) and indicates that a decision may be required on the basis of R112 (2) EPC.

Any appeal fees paid will be refunded (because paid without cause, J21 / 80, published in the OJ 1981, 101).

Section 5.2. Inadmissibility and major irregularities

5.2.1. irregularities

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

  • the contested decision is not subject to appeal (A106 EPC);
  • the applicant is not entitled to appeal (A107 EPC);
  • the identity of the applicant could not be established at the end of the appeal period (major irregularity);
  • the appeal was not made in writing;
  • the appeal was not lodged within the time limit of 4 months (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 (eg does not explain why the decision is incorrect but proposes new attacks of inventive step, T399 / 13);
  • if the language of the appeal brief is not an official language:
    • this memory not being deposited by a person of theA14 (4) EPC.
    • this memoir being filed by a person of theA14 (4) EPCbut that the translation is not produced within the prescribed time.

5.2.2. Prior notification (analogy with the opposition)

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

The applicant can not rely on the absence of notification.

5.2.3. Procedure

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

  • if these irregularities have already been notified to the applicant:
    • a rejection is pronounced by the formalities officer (or by the Board of Appeal if it concerns facts and evidence).
  • if these irregularities have not been notified to the opponent:
    • the formalities officer notifies him and gives him in general 2 months to pronounce (A113 (1) EPCthis does not mean that the applicant can correct them) and indicates that the appeal will probably be dismissed as inadmissible.
    • the applicant can then challenge the existence of this irregularity;
    • a rejection is pronounced by the formalities officer (or by the Board of Appeal if it concerns facts and evidence).

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

The appeal fee is not refunded (T84 / 89), except as provided above.

Section 5.3. Inadmissibility and minor irregularities

5.3.1. irregularities

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

  • the forms of the applicant's appointment are not respected.

5.3.2. Prior notification (analogy with the opposition)

If the formalities officer finds this irregularity, he notifies the complainant and asks him to correct his mistakes in a deadline (R101 (2) EPC).

TheA121 EPC is applicable to this time limit for the applicant only.

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

5.3.3. Procedure

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

Of course, the applicant can correct this irregularity even before receiving this notification at any time (even after 2 or 4 months) without prejudice to him.

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

Section 5.4. 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).

Chapter 6. Review of the appeal

Section 6.1. Suspensive effect

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

In particular, it suspends the registration in the BWR or the publication at the BEB or the publication of the patent specification (Directives E-XII 1).

A priori, only the remedies admissible have this effect (D28 / 03).

Nevertheless, if we know that an application is pending until the end of the appeal period (and therefore the suspensive effect runs at least until then, G1 / 09) one can ask what happens if the appeal is simply made, but not admissible.

Section 6.2. Interlocutory revision

6.2.1. Principle

The interlocutory revision is the revision of the decision by the body that rendered it.

This revision is not possible only for the procedures ex-parte (A109 (1) EPC) for which the appeal is admissible and well-founded.

6.2.2. Exclusion and exceptions to exclusion

The preliminary ruling is therefore excluded for;

  • opposition proceedings except:
    • all opponents withdrew their opposition and the proprietor appealed (Directives E-XII 7.1);
    • if an opposition / intervention is rejected as inadmissible before the notification R79 (1) EPC sent to the holder, so that the admissibility procedure does not yet oppose the opponent or the intervener to another party.
  • actions relating to a decision to suspend proceedings (R14 EPC);
  • appeals relating to a decision to register a transfer (R22 EPC);
  • remedies for an inventor's rectification if it contravenes two inventors (one to replace the other, R21 EPC).

6.2.3. Revision case

1) Principle

If the competent body (the one whose decision is contested, ie the one of first instance) considers that the appeal is receivable and basedshe does it right (A109 (1) EPC).

Indeed, it may be that:

  • the competent body finds that it was mistaken:
    • ex. she considered a document as 54 (2) while it was 54 (3);
    • the proceeding did not take due account of certain documents (Directives E-XII 7.1 i or ii);
  • the applicant proposes amendments removing the last objections of the competent body:
2) Case of obiter dictum

In case of'obiter dictum (ie an indication attached to the decision concerning an element, but which is not part of the decision itself, eg " in addition to the lack of novelty, the claim is unclear"), The appeal will be considered well-founded (and therefore the interlocutory revision will have to be granted) even if the reasons for theobiter dictum are not overcome (T1060 / 13, in contradiction with the Directives E-XII 7.1 and the Directives E-XII 7.4.2)

6.2.4. 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 3 months ;
  • if the competent authority thinks that the appeal is not admissible and / or is unfounded.

In the case of subsidiary requests and if only one of them is acceptable, the competent body can not grant the appeal (Directives E-XII 7.4.3 and T919 / 95).

Moreover, the fact of maintaining its objections can not give rise to a decision on the part of the first instance. In this case, there is a procedural violation (T691 / 91). An appeal against this "decision" would then be possible.

6.2.5. Appeal against interlocutory revision

No appeal is possible against a preliminary ruling that complies with the requirements of A109 EPC, because :

  • if it allows the applicant's claims, no remedy is possible (A106 EPC);
  • the dismissal at the Board of Appeal is not a decision.

6.2.6. Rejection of the appeal

The competent body born can not dismiss the appeal, even if it is clearly inadmissible: only the deferment to the Board of Appeal is possible (A109 (2) EPC).

6.2.7. Application for reimbursement of the appeal fee

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

6.2.8. Rejection of the request for reimbursement of the appeal fee

The competent body born can not dismiss the application for reimbursement of the appeal fee even if she allowed the appeal (J32 / 95 and G3 / 03): only deferment to the Board of Appeal is possible (A109 (2) EPC) to decide this question.

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

Section 6.3. Withdrawal of opposition / appeal

6.3.1. Withdrawal of opposition

An opponent who has not lodged an appeal may declare that he does not intend to maintain his opposition, he ceases to be a party to the appeal proceedings (except as regards the apportionment of costs, T789 / 89 and T340 / 05).

The proceeding continues if there is still an applicant (even if it is the owner only, T789 / 89).

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

6.3.2. Withdrawal of the appeal

An appeal may be withdrawn at any time until the decision (eg before the closure of the oral proceedings, T406 / 00), because nothing opposes it.

It is even possible to withdraw an appeal in respect of a specific question which is distinct from the decision in question (J19 / 82).

If the only applicant or the last applicant withdraws his appeal, the appeal procedure must be terminated (G7 / 91). If there are still applicants, the procedure may continue (G2 / 91), but only as regards the subject-matter of the applications of the remaining applicants (T233 / 93).

It is recalled that an intervener at the appeal stage is not considered to be an applicant (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 in the appeal that he is no longer interested in the maintenance of the patent, the appeal proceedings are terminated by a decision to revoke the patent (T820 / 94).

6.3.3. Effects of the withdrawal on the responders at the appeal stage

If the intervention comes to the appeal stage, the intervener is treated as an applicant who has not lodged an appeal (G3 / 04). Thus, if all those who have appealed withdraws, the instance disappears.

If the last applicant withdraws his appeal on the same day that the intervener files his statement, it is appropriate 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 procedure disappears (G3 / 04) and the opposition fee is not refunded;
  • otherwise the opposition fee is refunded because the intervention is not receivable.

Section 6.4. Examination by the Board of Appeal

6.4.1. End of the examination of the admissibility

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

6.4.2. Independence of the Boards of Appeal

Exam rooms are not bound by any instruction (A23 (3) EPC).

6.4.3. The actual exam

The purpose of the examination is to determine whether, on the merits of the case, the appeal may be granted (A110 CBE).

The board shall notify the parties of the deadline after which arguments or exhibits will be considered late (A13 (1) RPCR).

Late filing is not totally excluded, but remains difficult especially if new issues are raised and require further review.

6.4.4. Admissibility of applications

1) Late requests

An application is often considered inadmissible if it contains facts, evidence or requests that could have been produced (A12 (4) RPCR) or were not admitted during the proceedings at first instance (T556 / 13), although it clearly overcomes the objections made (T1802 / 12).

The Holder must not only have had the abstract opportunity to file the motion at first instance but must instead have had a clear opportunity to do it (T419 / 12).

In particular, if an application has been withdrawn at first instance, it is unlikely that the Board of Appeal will accept the reintroduction of that request (T935 / 12, T523 / 11) because no reasoned decision has been taken on it.

This does not mean, however, that amendments to the claims made at the appeal stage must be systematically excluded from the proceedings, since their admissibility is judged in the light of theA13 (1) RPCR.

If the holder submits four new petitions that have never been submitted before, it is highly likely that the petitions will be declared inadmissible or that the petition will be irreceivable (T438 / 12).

A Board of Appeal proposed a three-step test to check whether a late request should be accepted (T419 / 12 or T416 / 12):

  • is late filing motivated by a serious reason (eg new means)?
  • does the late application enlarge the scope of the discussion, as determined by the appeal brief and the reply to the said brief?
  • is the late application clearly admissible, in the sense that it quickly appears that the amendments respond to the objections raised without bringing new ones?

By way of illustration, if an applicant submits new applications 12 days before the oral proceedings and if this is a legitimate answer to the preliminary opinion of the Board of Appeal, these requests may be considered admissible (T407 / 14).

2) Converging requests

The current practice of the EPO is to accept claims sets only if they are narrower than the current set of claims (ie sets of claims in funnel").

This practice is also called "query convergence".

However, this is not systematic and the EPO can accept a new and broader set of claims if the changes are not fundamental and do not create a new case " or " fresh case »(T2599 / 11).

It should be noted that the convergence of the requests is analyzed during the analysis of the admissibility of the request (T649 / 14): thus an initially convergent request may very well not become so if additional requests are filed.

Furthermore, an application may very well be considered non-convergent and therefore inadmissible, even if it had been lodged at first instance and in the appeal brief (T1280 / 14).

3) Motions not admitted at first instance

For the reasons mentioned above, applications not admitted at first instance will be considered as late, but the Board of Appeal may check whether their non-admission is correct or still relevant (T490 / 13).

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

4) Motions unrelated to the impugned decision

In fact, these queries are very similar to late queries.

An application is considered inadmissible if it is not sufficiently linked to the contested decision: for example, if a patent is maintained following an inventive step (combination of documents D1 and D2), it is not possible to seek the annulment in appeal for lack of inventive step by the combination of documents D3 and D4 not previously discussed (T1738 / 11).

Each request must show how the decision is wrong.

5) Queries not explicitly presented

If the applicant submits requests that may be subsequently used by the applicant if he decides to do so (may eventually choose to rely upon), these requests will be considered as not submitted (T1440 / 12).

6) Undetermined requests

It is not possible to make a vague request of the type "lmaintaining the patent with any claim that would be acceptable »(T1138 / 12).

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

According to'A113 (2) EPCthe EPO is bound by the text proposed by the holder. In application of theA101 (3) EPCthe EPO can only maintain a patent in modified form if it meets the requirements of the EPC. If a claim for a claim does not satisfy those requirements, the patent can not be maintained in that form: a point that is all. 

7) If all the complaints are inadmissible

If all the complaints are inadmissible, the appeal is simply dismissed (T1162 / 12).

6.4.5. Absence to a possible oral procedure

If a party is absent from the oral proceedings, this will not preventA15 (3) RPCR):

  • the pronouncement of the decision;
  • the presentation of a new document / argument, because the absence of a party is equivalent to its renunciation of its right to be heard (G4 / 92 indicates that late documents could no longer be added during an oral procedure during which a party is absent, but this decision does not seem to be applicable anymore since the RPCR is subsequent to this decision).

Section 6.5. Appeal during the examination procedure

6.5.1. Procedure

The Board of Appeal may well invite the applicant, if necessary, to comment on the EPO's notifications (R100 (2) EPC) in one deadline.

TheA121 EPC is applicable to this time limit.

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

A simple request for oral proceedings can validly answer this notification (T1382 / 04).

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

6.5.2. Reformatio in pejus

Recourse during the Examination procedure may very well result in a reformatio in pejus (ie worse for the applicant, G10 / 93): indeed, the board may examine of its own motion certain grounds that appear to it to be relevant.

Section 6.6. Appeal during the opposition proceedings

6.6.1. Procedure

The Board of Appeal may well invite the parties, if necessary, to comment on EPO notifications and communications from other parties (R100 (2) EPC) in one deadline of 4 months (A12 (1) RPCR, (b)) which may be extended exceptionally on written and reasoned request (A12 (5) RPCR).

NeitherA121 EPC nor theA122 EPC are not applicable to this time limit, but a response past the deadline may, in certain circumstances, be taken into account.

No sanction exists in case of non-response.

The Board of Appeal must examine and decide whether the appeal may be granted, even if no request has been made or no reply has been provided (T501 / 92).

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

6.6.2. Reformatio in pejus

Appeal during the opposition proceedings can not lead to a reformatio in pejus if :

  • the applicant is the only party who hasG9 / 92 and G4 / 93);
  • this " no reformatio in pejus Is invoked by the applicant (T1544 / 07).

If there are several applicants (a priori, an opponent and the holder), it is possible to arrive at a reformatio in pejus.

1) Questioning for problems A123 (2)

Nevertheless, this principle of no reformatio in pejus »(G9 / 92 and G4 / 93) perhaps challenged assuming (G1 / 99):

  • the opponent makes recourse;
  • the opponent raises a problem of A123 (2) EPC concerning the claims as maintained.

Indeed, the incumbent will have to solve this problem by executing, in order, the steps of the following process (G1 / 99):

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

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

In the case T61 / 10, the chamber indicates that to challenge the principle of no reformation in pejus, it takes a causality link enter :

  • the new objection of the sole applicant and
  • the limiting characteristic to be deleted.
2) Challenging for A84 problems

In addition, the decision T809 / 99 (then T1380 / 04 or T648 / 15) expands this challenge in the event that:

  • the opponent makes recourse;
  • the opponent raises a problem of clarity A84 CBE concerning the changes introduced.

The same process as previously described will have to be followed by the non-applicant holder (point 2.3 of the decision T809 / 99).

3) Challenging for problems A83

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

4) Challenging to counter new facts / arguments

Finally, the decision T1843 / 09 broadens this challenge in all cases where:

  • the holder has limited his patent before the appeal,
  • and when the application of the no reformatio in pejus prevent the proprietor from adequately defending his patent against new facts and objections introduced at the appeal stage.

6.6.3. speakers

If the intervention comes to the appeal stage, the intervener is treated as an applicant who has not lodged an appeal (G3 / 04). Thus, if all those who have appealed withdraws, the instance disappears.

He must pay the opposition fee (A105 (1) EPC and R89 (2) EPC and and A2 (1) .10 RRT : 785 €).

If the last applicant withdraws his appeal on the same day that the intervener files his statement, it is appropriate 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 procedure disappears (G3 / 04) and the opposition fee is not refunded;
  • otherwise the opposition fee is refunded because the intervention is not admissible (AX 10.1 Directives).

The intervener may make new arguments and new reasons for theA100 CBE not shown (G1 / 94). If new grounds are raised, it is generally appropriate to refer the case to the Opposition Division (except in special cases G1 / 94).

Likewise, it can quite introduce new documents, which will not be considered late (T1235 / 14).

Nevertheless, if certain aspects of the opposition have already been decided, the speaker can not go back on 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 the problems of bringing the description and the drawings into conformity with the claims (even if the case is referred to the division opposition A111 EPC, res judicata).

6.6.4. New reasons

1) Principle

A ground not present in the notice of opposition is a new ground.

There are no new grounds, reasons in the opposition proceedings:

  • but incorrectly motivated;
  • but abandoned during the opposition proceedings (T274 / 95, even if there is also a contrary decision T1491 / 07);
  • but submitted by another party who is no longer a party to the appeal procedure (T520 / 01).
2) Acceptance of the new reasons

New grounds of opposition can not normally be taken into consideration at the appeal stage (G10 / 91) except :

  • if the holder explicitly agrees (G10 / 91) and that the document is prima facie relevant ;
    • in this case, the case may be (at the discretion of the Board of Appeal) returned at first instance (G9 / 91), except in special circumstances (eg request of the holder, G1 / 94)
  • if the claims have been modified with the appeal (G10 / 91);
  • if these reasons are presented by an intervener who did not participate in the first instance (G1 / 94);
    • in this case, the case is remitted at first instance, except in special circumstances (eg request of the holder, G1 / 94)
  • if they were submitted late at the opposition stage and refused (A114 (2) EPC) wrongly (T986 / 93);
  • if they have been examined ex officio by the Opposition Division (T309 / 92).

Nevertheless, the Appeal Board of Appeal retains a discretionary power ofA13 (1) RPCR to be able to discard new motive according to theA114 (2) EPC. In particular, she is free to accept new reasons not presented by the previous representative who was seriously ill when writing her appeal brief (and who is now dead, T336 / 11)

3) Separate reasons

Normally, novelty and inventive step are two distinct reasons.

Nevertheless, if the defectinventive activity with D1 as the closest state of the art, it is possible, although not raised, to challenge the patent for lack of novelty has been raised in relation to D1 (G7 / 95).

Moreover, it is normal that the defect of inventive activity is not motivated in the notice of opposition also contains an attack of novelty with the same documents (as this is often contradictory). In this case, the lack of inventive step can be examined without being considered as a new ground (T131 / 01).

6.6.5. New arguments

Similarly, the new arguments may be considered as late and rejected as such in application of the discretionary power of the Chamber of theA13 (1) RPCR (T1621 / 09), provided that the holder was able to foresee that these arguments could be discussed (T607 / 10in this case, the closest state of the art had been changed).

For example, a new combination of documents of the prior art (while 10 other combinations have already been submitted) may be rejected (T1019 / 13) pursuant toA13 (1) RPCR.

Similarly, a new inventive step attack based on a D17 document (whereas a novelty attack based on the same D17 document was submitted) may be considered late (T181 / 17): you have to be careful because even if T131 / 01 considers that this is not a new motive, it may very well be a new argument ...

The absence of one of the parties to oral proceedings is a factor to be taken into account in exercising the discretion of the Chamber, but it must not prevent the Chamber from accepting the amendments and reaching a decision on the basis of means thus modified (T1621 / 09)

6.6.6. New evidence / documents

1) Principle

As regards new evidence / document, the Board of Appeal may exceptionally accept them if they are prima facie relevant. The Board of Appeal must in any event take into account the arguments of the proprietor opposing such acceptance (T1002 / 92).

Nevertheless, this does not mean that a relevant document prima facie will always be accepted: the Board of Appeal retains full discretion to avoid any "circumvention" (T712 / 12).

On the face of it, if a document / proof is eminently relevant, the case should normally be returned at first instance so as not to unfairly deprive the holder of a dual level of jurisdiction (T258 / 84).

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

Nevertheless, if the documents produced aim to answer a new argument (eg identification of an additional difference), they can be accepted (T263 / 12).

2) Prior use and abuse of process

In the case of the presentation of late prior use, it will often be regarded as an abuse of process (Directives E-III 8.6 and T534 / 89, T1955 / 13).

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

It should also be noted that this does not depend at all on the fact that the person invoking this prior use has just come to know of this use or not (T1955 / 13): to the extent that an earlier internal use has not been raised, whether deliberately or negligently, and that no change has warranted research in a particular direction, the principles of fairness and equal treatment of the parties lead the Chamber not to admit the prior art filed late 

6.6.7. modifications

If the licensee wishes to submit amendments, it is required to do so as soon as possible. In any case, late amendments (eg during the oral proceedings) can only be accepted if this late submission is justified unambiguously by exceptional circumstances (T93 / 83).

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

In the event of substantial amendments requesting a review, the case must be remitted to the first instance (T63 / 86).

If all parties agree with the proposed amendments (ie no party objects), the Board of Appeal must consider the amendments (R100 (1) EPC).

6.6.8. Distribution and fixing of costs

Situations that may lead to a breakdown of costs are similar to the opposition procedure. Same on the procedure (R100 (1) EPC).

Nevertheless, during the appeal:

  • it is not possible to present this request (related to the opposition procedure) if it has not been presented during the opposition (T1059 / 98);
  • the Board of Appeal can not not decide ex officio on the apportionment of costs: a request must be made to this effect (A16 (1) RPCR).

In addition, the decision to division costs in opposition is not subject to appeal if it is the sole object of the appeal (A106 (3) EPC together R97 (1) EPC). Thus, if the decision has upheld his claims on the merits, it is not possible to modify this division (even if the other party T1237 / 05).

In that situation the action is dismissed as inadmissible (R101 (2) EPC).

An appeal seeking fixation opposition costs will only be allowed if the amount involved is higher than that of the appeal fee (A106 (3) EPC together R97 (2) EPC). The amount of the appeal fee is 2225 € (A2 (1) .11 RRT). If an appeal is submitted without respecting these conditions, it will be rejected (R101 (1) EPC). The principle of no reformatio in pejus applies here (T668 / 99).

Chapter 7. Decision

Section 7.1. Principle

Following the examination, the Board of Appeal mayA111 (1) EPC):

  • make a final decision;
  • be dismissed at first instance to complete the Examination.

Section 7.2. Date of the decision

The date of the decision is:

  • in written procedure:
    • indicated in the notification of the decision (R102 (b) EPC);
    • the fiction of delivery to the internal mail service (ie 3 days before the date indicated on the mail) stated by the G12 / 91 Not Applicable.
  • in oral proceedings:
    • the date of the pronouncement of the decision (R111 (1) EPC).

Section 7.3. Motivation

Decisions must be motivated (R102 g) CBE).

Section 7.4. Referral at first instance

7.4.1. Requiring a referral

If substantial changes are found to be admissible at the appeal stage (see above), it is necessary to refer to the first instance (T63 / 86).

If documents produced at the appeal stage are accepted, it is necessary to refer back to the first instance (T273 / 84). These documents will then be examined ex officio.

7.4.2. Not requiring referral

The fact that there is a substantial procedural flaw in the contested decision does not always lead to the referral of the case to the first instance (T427 / 11), for example because of the length of the procedure.

7.4.3. Waiver

The applicant may waive his right to appeal to two instances if the subject matter of the request after the defect is patentable. In this case, there is no referral (T274 / 88).

7.4.4. Decision and need for "finalization"

If the Board of Appeal decides to grant the patent (respectively to maintain it in modified form or to limit it), the board may remit at first instance for it to implement the measures of the R71 EPC (respectively R82 EPC or R95 EPC):

  • tax collection,
  • receiving translations,
  • etc.

7.4.5. Order at first instance

The Board of Appeal may also issue orders to the first instance (Directives E-XII 9.1 and Directives E-XII 9.2):

  • order to grant a patent or to maintain the patent as amended or limited by the Board of Appeal:
    • the order to issue or maintain the patent is executed by the formalities officer.
    • only the classification and title can be verified by the first instance.
    • the first instance can also add references to additional technical information (STIN) or bibliographic data relating to new prior art (CDOC).
  • order to put the description in accordance with the claims already decided by the Board of Appeal:
    • the division can no longer modify the claims or allow the plaintiff or holder to do so, even if new facts are discovered (T113 / 92, T1063 / 92).
    • corrections under the R139 EPC may nevertheless be allowed.
    • Applicants and patentees must limit the modifications of the description to the bare necessaries (T113 / 92).
  • order to continue the examination:
    • the first instance is bound by the grounds and the operative part of the Board of Appeal's decision in so far as the facts of the case are the same (A111 (2) EPC).
    • newly discovered material or important facts may be taken into consideration.
    • parties have the opportunity to submit new applications.

Section 7.5. Binding effect of the decision

The decision of the Board of Appeal has a binding effect for the first instance (A111 (2) EPC) or for a board of appeal subsequently entered.

The first instance can not return what has been decided (T843 / 91 (v2) or T2047 / 14).

However, only the first instance (eg the examining division) is bound by this decision: another instance (eg 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).

Section 7.6. Authority of res judicata

If the Board of Appeal remits the case at first instance with an order to maintain the pending claims (but asks it to bring the description into conformity with the claims), it is not possible to appeal the decision of the first instance on the ground that claim 1 would not be new (for example) (T2047 / 14).

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

Moreover, it is not possible to call into question a decision of a Board of Appeal (eg clarity of a measurement method because the board considers that all the measurement methods give the same results) using a reason different but on the same basis (eg the description is insufficiently described because the measurement methods would give 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): although it is likely that the Board of Appeal has considered the EPC as a whole before referring to the first instance, res judicata only applies to the operative part of the decision (it does not there is no implied res judicata).

Section 7.7. Decision of the Board of Appeal

7.7.1. Time of decision making

The chamber may rule on the case (A12 (3) RPCR):

  • if the procedure is ex-parteat any time after the filing of the factum (as long as that party has had sufficient opportunity to take a position on the arguments of the Chamber, A113 (1) EPC)
  • if the procedure is inter partes, in a delay of 4 months from the service of the grounds of appeal (A12 (1) (b) RPCR) (as long as that party had enough opportunity to take a position on the arguments of the Chamber, A113 (1) EPC).

7.7.2. Authentication of the decision

The decision must be authenticated (R102 EPC):

  • the President of the Board of Appeal, and
  • of the registry officer of this chamber.

This authentication can be performed (R102 EPC) by signature or other means (such as electronic means, Notice dated April 1, 1999, concerning the amendment of the European Patent Convention, the Regulations and the Rules 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 EPO boards of appeal », OCT 2012, 14).

7.7.3. Content and form of the decision

Decisions rendered must be reasoned (R102 EPC) especially if it appears to have (or if there is) conflict with the guidelines (A20 (2) RPCR) or an earlier decision (A20 (1) RPCR).

If a Chamber deems it necessary to depart from a decision / opinion of the Grand Chamber, it should normally be seised (A21 RPCR)

Chapter 8. Reimbursement of the appeal fee

Section 8.1. Complete refund

There is a refund integral the appeal fee:

  • whether the complainant is entitled (by interlocutory revision or not), and if there is a substantial vice procedure (R103 (1) (a) EPC):
    • there is a vice if:
      • the request for oral proceedings is not considered or rejected (T808 / 94);
      • not all parties are summoned to the oral proceedings (T209 / 88);
      • the right to be heard (A113 (1) EPC) has been broken (T14 / 82);
      • the request was rejected for failure to reply to a notification while the EPO does not provide proof of the transmission of this notification (J14 / 14) because the applicant did not have the opportunity to comment before the decision was made;
      • the opponent only has 10 minutes to study the new wording of claim 1 (T783 / 89);
      • the first instance does not give the parties an opportunity to take a position after referral on the basis of 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 motivate the rejection of the previous non-accepted requests in order of preference which is accepted (T5 / 89);
      • the decision rejects a late application simply stating that it was filed late (T755 / 96);
      • the first instance does not set a deadline for producing documents filed in support of a request for correction R139 EPC (J4 / 82);
      • the composition of a first instance is not in conformity with the Convention (T392 / 92);
      • the decision is taken by an unauthorized formalities officer (J10 / 82);
      • the first instance conditions its acceptance of a new request by 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 state-of-the-art document chosen is not the one proposed by the proprietor / opponent without explanation or justification (T427 / 11);
      • the duration of the procedure is abnormally long (eg 5 years between the RREE and the first notification, then 2 years between the other notifications, T823 / 11) (contrary decision, T1824 / 15).
    • there is no vice if:
      • at least one of the grounds of appeal is not flawed (T4 / 98);
      • there is a discrepancy with the constant jurisprudence of the appeal body (T208 / 88);
      • the case wrongly concluded that no request for oral proceedings had been lodged (T19 / 87because it is an error of judgment);
      • not considering a request for interview with the examiner (T182 / 90);
      • the first instance erred in assessing the state of the art (T367 / 91);
      • a document has been misinterpreted (even roughly, T860 / 93);
  • if the appeal is withdrawn before the submission of the brief stating the grounds of appeal and before the expiry of the time limit for filingR103 (1) (b) EPC) (T89 / 84the brief must be expressly withdrawn),
  • if the appeal is untrained (caution, untrained is different from inadmissible J18 / 82);
  • if the appeal was brought following the violation of the principle of legitimate expectation (J30 / 94, J38 / 97 and T308 / 05).

Section 8.2. 50% refund

Taxes are also refunded to 50% (R103 (2) EPC) if the appeal is withdrawn (as of 1 April 2014, " Governing Body decision of 13 December 2013 amending Rule 103 of the Regulations under the European Patent Convention (CA / D 16/13) », OY 2014, A3):

  • at least 4 weeks before the date of oral proceedings, if such a date has been fixed, or
  • otherwise, before the expiry of the time limit set by the Board of Appeal to invite the applicant to submit his observations or
  • otherwise, before the decision is made.

Section 8.3. Case of an application deemed withdrawn during the appeal

If an application is deemed withdrawn during the appeal (eg non-payment of an annual fee, even if we are still in the period of payment with surcharge), it will not be possible to withdraw the appeal to seek a reimbursement: the appeal procedure has automatically ended because of this loss of rights (T1402 / 13),

Indeed, no refund at 50% is possible because the conditions of the R103 (2) EPC concerning the withdrawal can not be fulfilled.

Section 8.4. Body ordering repayment

Reimbursement is ordered by the preliminary ruling authority (if the claimant is entitled to this claim) or otherwise by the Board of Appeal.

This reimbursement may be ordered ex officio (D7 / 82) even without the request of the applicant.

Chapter 9. Accelerating the appeal procedure

Section 9.1. Principle

This acceleration is provided by the " Communiqué of the Vice-President of Directorate-General 3, dated 17 March 2008, on the acceleration of the proceedings before the Boards of Appeal », OG 2008, 220 (Directives E-VIII 5).

Section 9.2. Who can require

Any party which has a legitimate interest has expedited the proceedings may require it, including the courts or competent services of a Contracting State (" Communiqué of the Vice-President of Directorate-General 3, dated 17 March 2008, on the acceleration of the proceedings before the Boards of Appeal », OG 2008, 220).

Section 9.3. Request

The request must be addressed to the competent board of appeal at any time during the proceedings (" Communiqué of the Vice-President of Directorate-General 3, dated 17 March 2008, on the acceleration of the proceedings before the Boards of Appeal », OG 2008, 220).

It must state the grounds of urgency and the supporting documents (" Communiqué of the Vice-President of Directorate-General 3, dated 17 March 2008, on the acceleration of the proceedings before the Boards of Appeal », OG 2008, 220).

Section 9.4. Reasons for emergency

The reasons must be related to the nature of the case.

For example (" Communiqué of the Vice-President of Directorate-General 3, dated 17 March 2008, on the acceleration of the proceedings before the Boards of Appeal », OG 2008, 220):

  • an action for infringement is instituted or contemplated;
  • the decision to subscribe to a license is subject to the outcome of the appeal;
  • the opposition must be dealt with in an accelerated manner;
  • because of the inconvenience of the suspensive effect of the (exceptional) remedy;
  • etc.

Chapter 10.

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