Appeal

Contents

Chapter 1. Decisions subject to appeal

Section 1.1. Decision

1.1.1. Principle

1.1.2. N & #8217; 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. N & #8217; having not granted claims

1) Principle

2) Case of requests

3) Case of the issue text

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 d & #8217; 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 #8217; an assignment

Section 2.9. Case of & #8217; 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. Deposit method

4.1.5. Language

4.1.6. Content of the deed

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 object of a decided action

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 notification of irregularity

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 #8217; appeal against a decision impacting 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 opposition & opposition)

5.1.3. Procedure

Section 5.2. Inadmissibility and major irregularities

5.2.1. irregularities

5.2.2. Prior notification (analogy with opposition & opposition)

5.2.3. Procedure

Section 5.3. Inadmissibility and minor irregularities

5.3.1. irregularities

5.3.2. Prior notification (analogy with opposition & 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 #8217; exclusion

6.2.3. Revision case

1) Principle

2) Case of the 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 admissibility examination

6.4.2. Independence of the Boards of Appeal

6.4.3. L & #8217; examination itself

6.4.4. Admissibility of applications

1) Late requests

2) Motivated motions

3) Converging requests

4) Rejections not admitted at first instance

5) Motions unrelated to the contested decision

6) Requests n & #8217; not explaining why the decision is wrong

7) Requests not explicitly presented

8) Undetermined requests

9) If all the requests are inadmissible

6.4.5. L & #8217; absence from a possible oral procedure

Section 6.5. Remedies 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

1) Old case law

2) Revival of jurisprudence

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 & #8220; finalization & #8221;

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 & #8217; an application deemed to be 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 #8217;

Chapter 10.

See the latest changes

Chapter 1. Decisions subject to appeal

Section 1.1. Decision

1.1.1. Principle

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

C & #8217; is the content of & #8217; a document and not its form which allows to know if the document actually contains a decision (D8 / 81).

1.1.2. N & #8217; is not a decision

The minutes of #8217; oral proceedings (T838 / 92) is & #8217; 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 & #8217; 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.

Independent appeal is allowed, in accordance with the constant practice of the Boards of Appeal:

  • against the interim decisions concerning the admissibility of the opposition and
  • against the intermediate decisions concerning the maintenance of the patent in a modified form.

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 exam division,
  • of the opposition division (even if the patent is abandoned / expired in all countries R98 EPC), and
  • of the legal division.

Thus, no appeal is possible against decisions:

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

Section 1.3. Indication of a possible remedy

Normally, decisions subject to appeal must be reasoned and contain a statement indicating that & #8217; appeal is possible (R111 (2) EPC).

The parties cannot avail themselves of the oversight of this mention (R111 (2) EPC) and this does not constitute a substantial procedural violation (T42 / 84).

Section 1.4. Types of decision

1.4.1. N & #8217; having not granted claims

1) Principle

An appeal is only possible against a decision against #8217; having injured the party wishing to appeal (A107 EPC together R101 (1) EPC).

2) Case of requests

Regarding auxiliary requests:

  • an appeal is possible if & #8217; an auxiliary 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 abandoned the main request and 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 him his request, he cannot appeal to request the total revocation (T299 / 89).

3) Case of the issue text

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.

It may happen that the text of 71 (3) is manifestly erroneous (eg every other page is missing) but the holder still agrees to the text.

Under this assumption, the boards of appeal can still accept an appeal against the decision to grant by considering that the practice of the EPO to make minor modifications to the text and to justify its modifications would not be followed: the attached text on notification under Rule 71 (3) EPC could not be the text according to which the Examining Division was considering issuing (T1003 / 19).

1.4.2. Ending the procedure

In addition, an appeal is only possible if the decision ends the procedure (ie final, A106 (2) EPC).

For decisions not terminating the proceedings, appeal n & #8217; is possible that (A106 (2) EPC):

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

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

  • rejection of #8217; an extension of time (J37 / 89);
  • the refusal of a priority is not subject to appeal.

1.4.3. Special case of fixing / distribution of costs

The decision to division costs n & #8217; is not subject to appeal if it is the only 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 parts n & #8217; having not got what & #8217; they were asking can appeal (A107 EPC).

We hear by "to the claims of which a decision did not grant":

  • 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 according to which its silence is worth tacit acceptance & #8220;Who tacet consent videtur& #8221; does not apply;
  • the fact that & #8217; a previous main request was rejected (this is debatable but hey… 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 (e.g. withdrawal of an opposition), then they cannot appeal (T789 / 89).

Likewise, it is impossible to appeal if it was declared at first instance that we did not have arguments regarding the request which was going to be issued by the EPO (#8217;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).

S & #8217; he files an appeal, c & #8217; is in the name of his principal (s).

Section 2.4. Opponent / Intervener

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

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

Section 2.5. Focus on d & #8217; other possible applicants

We often think of the holder, 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 relating to registration #8217;R22 EPC) d & #8217; a transfer or d & #8217; license (R23 EPC);
  • a third concerning the decision relating to public inspection (#8217;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 presented 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 common representative, a notice 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 l & #8217; one of co-applicants only, the appeal will be inadmissible and the EPO will not send any notification to the common representative to give him the 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).

However, if the last person to appeal withdraws, the other parties who have not appealed cannot continue the procedure (G2 / 91).

Section 2.8. Case of #8217; an assignment

If an assignment (excluding universal succession, T15 / 01) intervened after the decision, it is necessary to register this assignment in 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 be ceded incidentally with the ceded department, if the action was brought in the interest of the ceded heritage item (by analogy with G4 / 88, T563 / 89).

The fact of being economically linked is not sufficient to have the right to appeal (T298 / 97).

Section 2.9. Case of & #8217; 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, you have to look at the national law of company X to see if it can be considered as a legal person with the capacity to act (1T796 / 12).

Indeed, certain rights authorize a company dissolved from & #8217; to carry out procedural acts such as the & # #8217; initiation of & #8217; a trial if the dispute is related to n & #8217; any form of & # 1 TP38217; economic interest (e.g. 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 #8217; R101 (2) EPCif, within the time limit for the appeal, the applicant is identifiable:
    • the true intention of the applicant must be assessed, intention which is assessed according to the principle of free assessment of the evidence;
  • using #8217;R139 EPC, under the conditions laid down by the case-law even outside the period of recourse:
    • the applicant bears the burden of proof, which must be of a high standard.

2.10.2. Subsidiary Applicant

S & #8217; there is justifiable legal uncertainty as to how to interpret the law, it is possible to appeal with an applicant and, alternatively, another applicant according to another interpretation (if the legal interpretation was incorrect, 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 the latter of a legal basis because the RPCR is also approved by the CA of the EPO (#8217;T1100 / 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 decisions of the examining division:
      • 2 technicians and 1 lawyer
        • (if rejection of #8217; an application, grant, limitation or revocation of a patent and if the decision has been rendered by less than 4 members) (A21 (3) (a) EPC);
        • (if the appeal seeks the rejection of #8217; a request for the reimbursement of search fees according to the R64 (2) EPC made by less than 4 members) (G1 / 11);
      • 3 technicians and 2 lawyers
        • (if the decision has been rendered by 4 members or if the Board of Appeal considers that the nature of the appeal requires it) (A21 (3) (b) EPC);
        • (if the appeal seeks the rejection of #8217; a request for the reimbursement of search fees according to the 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 has been 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 the status of a judicial body, thus the independence of its members is guaranteed.

In particular, they cannot be part of the deposit section or of 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 a priori 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 a priori 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 presented under 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 defect in 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), even if the appeal fee has been paid (G1 / 18).

4.1.2. deposit local

The deed of deposit must be filed with the EPO (#8217;A108 EPC).

4.1.3. Form

L & #8217; notice of appeal must be signed by the responsible person (R99 (3) EPC together R50 (3) EPC). If the appeal document is not signed, the formalities officer invites the claimant (or, if applicable, his representative) to remedy this irregularity within a given period (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:

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

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

Neither l & #8217;A122 EPCnor A121 EPC n & #8217; is applicable to the time limit.

4.1.4. Deposit method

L & #8217; 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).

Furthermore, 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 20 February 2019 concerning the filing of patent applications and other documents by telefax", OJ 2019, A18).
    • a confirmation by mail can then be requested.
    • If the opponent does not respond to this invitation, the fax is deemed not to have been received and the appeal is deemed to have been filed (R2 (1) EPC).

It is theoretically not possible to lodge a valid appeal via the online form submission (unless the EPO acts as if the appeal was validly filed, T1633 / 18).

4.1.5. Language

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

If the applicant has his domicile (or his registered office) in one of the Contracting States (or if he is #8217; he is a national of one of these States having his domicile abroad) and that the latter has an official language other than l & #8217; German, l & #8217; English or French, he can file l & #8217; 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 claimant.

In the other cases, these delays do not benefit from l & #8217;A121 EPC or A122 EPC.

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

4.1.6. Content of the deed

1) General considerations

L & #8217; notice of appeal contains (R99 (1) EPC):

  • the name and address of the applicant (according to the provisions of the R41 (2) (c) EPC);
  • l & #8217; indication of the contested decision,
  • a request defining the subject of the appeal (e.g. & #8220;the appeal relates to the revocation of the patent EPxxxx“).

Furthermore, case law requires that the notice of appeal contains an indication that the claimant intends to appeal (T653 / 15): the simple fact of paying the appeal fee and of & #8217; indicate & #8220;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& #8221; is not enough to express an explicit desire to appeal.

2) Identification of the applicant

As we have 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 invitation from the EPO, even after the time limit for filing an appeal.

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

The applicant is considered as sufficiently identified (and therefore that & #8217; there is no & #8217; there is no irregularity):

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

It is not necessary for the invitation from the EPO to explicitly mention the #8217; R101 (2) EPC : even if this invitation specifies that it is for the proper administration of the file, this invitation is valid and a non-response leads to the inadmissibility of the appeal (T719 / 09).

3) Identification of the contested decision

In the absence of identification of the decision, the appeal is dismissed as inadmissible (R101 (1) EPC and R99 (1) (b) EPC).

In the event of no mention of the contested decision, the fact that the registry of the EPO was 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 (#8217;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?

However, it is not necessary that the notice of appeal contains the exact grounds underlying the contestation of the decision (this is the subject of the brief).

Unclear object

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

For example :

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

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

  • l & #8217; annulment of the decision if it is an appeal against a revocation decision (T653 / 15).
  • revocation of the patent if it is an appeal against a decision rejecting an opposition (#8217;T2561 / 11).
Object absurd or unrelated to the decision

If the object of the appeal is & #8220;absurd& #8221; or not in connection with the decision of the appeal, this does not mean that the appeal is inadmissible: the admissibility of the appeal differs from the admissibility of the complaints (T2599 / 11).

However, in other decisions, it has been indicated that an appeal not indicating how the decision at first instance should be set aside should be declared inadmissible: this is the case if the applicant merely files a new request ( possibly based on the motion dismissed at first instance, but which has never been presented) (T327 / 13, , T1738 / 11 or T399 / 13).

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

Missing object

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

Such a practice would amount to admitting that an appeal may be made to the #8217 using only the 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 object of the appeal, the appeal is dismissed as inadmissible (R101 (1) EPC and R99 (1) (c) EPC).

Object having already been the object of a decided action

It is possible that a Board of Appeal will take a decision and refer back to the first instance for compliance of the text of the description.

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

However, 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 of inventive step: only an action against the adaptation of the description is here possible (T2047 / 14).

Section 4.2. Appeal fee

4.2.1. Principle

Appeal no. #8217; shall be deemed to have been filed only after payment of the appeal fee within the period of 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

However, 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 (& #8220;Notice from the European Patent Office dated 18 December 2017 concerning the reduction of the appeal fee (Article 108 EPC) for an appeal brought 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 reduction in the tax is only granted if each of them meets the above criterion (& #8220;Notice from the European Patent Office dated 18 December 2017 concerning the reduction of the appeal fee (Article 108 EPC) for an appeal brought by a natural person or an entity referred to in Rule 6 (4) EPC“, OJ 2018, A5).

If the criterion is met before the filing of the notice of appeal but this changes afterwards, this does not change the validity of the payment (& #8220;Notice from the European Patent Office dated 18 December 2017 concerning the reduction of the appeal fee (Article 108 EPC) for an appeal brought 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 n & #8217; is not reimbursed.

D & #8217; other decisions (which seem to be in the majority today,  T1325 / 15 or T2406 / 16) believe, on the contrary, that the appeal is untrained and that the tax must be repaid.

The Enlarged Board of Appeal (G1 / 18) has therefore decided: the appeal is untrained under this assumption.

The reimbursement of the appeal fee is ordered by the court (#8217;G1 / 18).

4.2.4. No notification of irregularity

The EPO has no obligation to warn the applicant of default unless the EPO can infer that the applicant will miss the deadline for payment of the fee (G2 / 97).

4.2.5. Payment missing / incomplete

1) Principle

As the appeal n & #8217; is not filed (see above), it is therefore inadmissible (A108 EPC and R101 (1) EPC).

2) Small mistake

S & #8217; it is missing that #8217; a small part of the sum (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 about the amount of the appeal fee (e.g. payment with reduction when he was not entitled to it), the appeal is normally inadmissible if the EPO or the TP38217; the other party sees it quickly (T642 / 12).

However, if no one sees the error for several years and this question is raised only belatedly, the Board of Appeal considers that under #8220;principle of legitimate expectation& #8221; , the appeal will be well-formed (T595 / 11).

4.2.6. Refund

If the appeal is considered not to have been filed (e.g. notice of appeal filed too late or tax paid too late), any taxes paid are refunded without having to request it (because it is a payment without cause).

See also below.

4.2.7. Special case of #8217; appeal against a decision impacting several applications / patents

There may be situations where a decision by the EPO has implications for more than one patent application / patent.

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 in time (e.g. start of fax transmission at 11.58 p.m. and end at 12.16 a.m.), the EPO considers that the appeal is receivable (because, formally, certain pages of the brief were received). Late-filed pages must be admitted to make sense of timely-posted pages (rejection would be an improper exercise of the discretion of l & #8217;A13 (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 20 February 2019 concerning the filing of patent applications and other documents by telefax", OJ 2019, A18).
    • a confirmation by mail can then be requested.
    • If the opponent does not respond to this invitation, the fax is deemed not to have been received and the appeal is dismissed as inadmissible (R101 (1) EPC together A108 EPC).

4.3.3. Language

The appeal brief may be drawn up in an official language of the EPO (#8217;R3 (1) EPC).

If the applicant has his domicile (or his registered office) in one of the Contracting States (or if he is #8217; he is a national of one of these States having his domicile abroad) and that the latter has an official language other than l & #8217; German, l & #8217; English or French, he 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 request was filed or phased in before April 1, 2014, & #8220;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, because 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 l & #8217;opposing (G1 / 86), but not for the applicant.

In the other cases, these delays do not benefit from l & #8217;A121 EPC or A122 EPC.

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

4.3.4. contents

The memorial details the grounds on which it is appropriate to annul the contested decision or the extent to which it must be varied, as well as the facts and evidence on which the action 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 just a simple challenge to the contested decision or a general citation of the directives without sufficiently showing what he intends to deduce from it (#8217;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):

  • s & #8217; he is insufficiently motivated (T1649 / 10) or more precisely if none of the motions founding the decision n & #8217; is sufficiently reasoned (ie it is therefore sufficient that the requirements in terms of admissibility are met in respect of a query, T778 / 16) ;
  • s & #8217; it only repeats the arguments developed at first instance (T2012 / 16) ;
  • s & #8217; it only completes a statement of opposition insufficiently reasoned (and therefore inadmissible) without demonstrating the admissibility of the opposition (T213 / 85);
  • s & #8217; it only exposes a new ground of opposition s & #8217; relying on a new document, as this is contrary to the principles of G9 / 91 (T1007 / 93);
  • s & #8217; it demonstrates for a very long time the inventive activity of the invention, but without explaining why the first instance carried out an erroneous reasoning concerning this subject (T2536 / 12);
  • s & #8217; it does not contain any arguments to #8217; against certain grounds for rejection (T899 / 13);
  • s & #8217; it simply presents new sets of claims without contesting the decision at first instance (T2532 / 11).

If the brief simply indicates that the irregularity which justified the rejection in first instance is now corrected (e.g. designation of & #8217; an agent previously missing J18 / 08 or deletion of a dependent claim deemed insufficiently described T935 / 12), the Board of Appeal accepts the appeal as admissible.

If #8217; there is a new fact, it must be sufficiently reasoned to satisfy the requirement of sufficient reasoning, and if it is confirmed, it withdraws all legal basis for 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 memorandum must be annexed to the extent that they are not documents already filed during the granting, opposition or appeal proceedings, or produced by the Office. #8217; during these procedures (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 can 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 a 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 n & #8217; is not subject to appeal, as 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 was not paid (or insufficiently) within the 2 months from the notification of the decision (A108 EPC);
  • l & #8217; notice of appeal has not been filed within 2 months from the notification of the decision (A108 EPC and T1325 / 15);
  • missing signature n & #8217; was not corrected within the time allowed (R99 (3) EPC and R50 (3) EPC);
  • confirmation of the notice of appeal, if it was requested after filing by fax, was not filed within the time allowed (R100 (1) EPC and R2 (1) EPC andDecision 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);
  • the power of the authorized representative or the employee, if requested, was not filed within the time limits (R152 (1) EPC and R152 (6) EPC);
  • no agent has been appointed, whereas it is necessary to do so (#8217;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 deed not being filed by a person of the & #8217;A14 (4) EPC.
    • this deed being filed by a person from l & #8217;A14 (4) EPC, but that the translation wasn’t produced on time.

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

5.1.2. Prior notification (analogy with opposition & opposition)

If the formalities officer notices such an irregularity and it can still be corrected within the period of 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 the translation or the time limit for correcting the lack of signature), a notification is sent to the applicant.

The applicant cannot rely on the lack of notification.

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

5.1.3. Procedure

If the appeal is deemed not to have been filed, the formalities officer shall notify the applicant (A119 EPC) and indicates to him that a decision may be required on the basis of the 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 n & #8217; is not subject to appeal (A106 EPC);
  • the applicant is not empowered to appeal (A107 EPC);
  • l & #8217; identity of the applicant could not be established at the end of the time limit for appeal (major irregularity);
  • the appeal was not filed in writing;
  • the statement of appeal n & #8217; was not filed within the period of 4 months (A108 EPC);
  • l & #8217; notice of appeal n & #8217; does not identify the contested decision (R101 (1) EPC and R99 (1) (b) EPC);
  • l & #8217; notice of appeal does not sufficiently identify the subject of the appeal (R101 (1) EPC and R99 (1) (c) EPC) or n & #8217; is not sufficiently related to the contested decision (ex. n & #8217; not explain why the decision is incorrect but proposes new attacks of inventive step, T399 / 13);
  • if the language of the statement of appeal is not an official language:
    • this brief not being filed by a person from #8217;A14 (4) EPC.
    • this brief being filed by a person from l & #8217;A14 (4) EPC, but that the translation wasn’t produced on time.

5.2.2. Prior notification (analogy with opposition & opposition)

If the formalities officer notices such an irregularity and it can still be corrected within the period of 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 cannot rely on the lack 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:
    • l & #8217; formalities officer notifies him and generally gives him 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 contest 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 n & #8217; is not reimbursed (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 opposition & opposition)

If the formalities officer notices this irregularity, he notifies the applicant and asks him to correct his errors 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 dismisses the action as inadmissible (R101 (2) EPC).

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

The appeal fee n & #8217; is not reimbursed (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 registration with the REB or publication with the BEB or the publication of the patent specification (Directives E-XII 1).

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

However, if we know that a request is pending until the end of the appeal period (and therefore that the suspensive effect runs at least until #8217), 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 preliminary ruling is the review of the decision by the very body which issued it.

This revision n & #8217; is 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 #8217; 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 is not sent to the holder, so that the admissibility procedure n & #8217; does not yet oppose the & #8217; opponent or the & #8217; intervener to another party.
  • actions relating to a decision to suspend proceedings (R14 EPC);
  • appeals relating to a decision to register a transfer (#8217;R22 EPC);
  • the remedies relating to a rectification of the inventor if this opposes two inventors (the & #8217; one having to replace the & #8217; the other, R21 EPC).

6.2.3. Revision case

1) Principle

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

Indeed, it may be that:

  • l & #8217; competent authority notes that & #8217; it & #8217; was wrong:
    • ex. she considered a document as 54 (2) when & #8217; it was 54 (3);
    • l & #8217; instance n & #8217; did not take due account of certain documents (Directives E-XII 7.1 i or ii);
  • the applicant proposes modifications raising the last objections of the competent authority:
2) Case of the obiter dictum

In case of #8217;obiter dictum (ie d & #8217; an indication attached to the decision concerning an element, but which is not in itself part of the decision, eg & #8220;in addition to the lack of novelty, claim no. #8217; is unclear& #8220;), the appeal will be considered well founded (and therefore the preliminary ruling will have to be granted) even if the reasons of l & #8217;obiter 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 authority does not allow the appeal within a period of 3 months ;
  • if the competent authority thinks that the appeal is not admissible and / or is not founded.

In the event of auxiliary requests and if only one of them is acceptable, the competent authority cannot 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 & #8220; decision & #8221; would then be possible.

6.2.5. Appeal against interlocutory revision

No appeal is possible against preliminary ruling respecting the prescriptions of A109 EPC, because :

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

6.2.6. Rejection of the appeal

L & #8217; 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 authority may grant reimbursement of the appeal fee (see below).

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

L & #8217; 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 appealed may declare that he does not intend to maintain his opposition, he ceases to be a party to the appeal procedure (except as regards the apportionment of costs, T789 / 89 and T340 / 05).

The procedure continues if & #8217; there is still an applicant (even if it & # 1 TP38217; is the owner only, T789 / 89).

If the last opponent who has appealed withdraws his opposition, the appeal procedure is closed even though the non-requesting owner opposes it (G8 / 93 and G7 / 91) because the withdrawal of #8217; an opposition is equivalent to a withdrawal of the appeal.

6.3.2. Withdrawal of the appeal

An appeal may be withdrawn at any time until #8217; until the decision (e.g. before the end of the oral procedure, T406 / 00), because there is nothing to prevent it.

It is even possible to partially withdraw from an appeal as regards a specific question distinct from the decision challenged (J19 / 82).

If the only applicant or the last applicant withdraws his appeal, the appeal procedure must be terminated (G7 / 91). S & #8217; there are still applicants, the proceedings may continue (G2 / 91), but only as regards the subject-matter of the applications of the remaining applicants (T233 / 93).

It is recalled that & #8217; 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 during the appeal that #8217; he is no longer interested in maintaining the patent, the appeal procedure is closed 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 reaches the appeal stage, the intervener is treated as an applicant who has not lodged an appeal (1).G3 / 04). Thus, if all those who lodged an appeal withdraws, the instance disappears.

If the last applicant withdraws his appeal on the same day that the intervener lodges his statement, it is advisable to look at the exact chronological order of these events in order to know whether the intervention is admissible (1).T517 / 97):

  • if the intervention is declared admissible, the appeal procedure disappears (G3 / 04) and the 1PA38217 objection 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 admissibility examination

If the Board of Appeal hears 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

The exam chambers are not bound by any instruction (A23 (3) EPC).

6.4.3. L & #8217; examination itself

The objective of the examination is to determine whether the merits of the action may be granted in the substance of the file (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 completely excluded, but remains difficult especially if new questions are raised and they require further consideration.

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 n & #8217; 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 n & #8217; will have been made about it.

However, this does not mean that changes to the claims presented at the appeal stage must be systematically excluded from the procedure, their admissibility being judged in the light of & #8217;A13 (1) RPCR.

If the holder submits four new requests which have never been presented before, it is very likely that these requests will be declared inadmissible or that the appeal will be (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 requests 12 days before the oral procedure and if this is a legitimate response to the preliminary opinion of the Board of Appeal, these requests may be considered admissible (T407 / 14).

2) Motivated motions

In order for a request to be admissible, it is imperative that it be reasoned. (#8217;T1090 / 14).

3) Converging requests

The common practice of the EPO is to accept claims sets only if they are more restricted than the pending claims set (ie claims sets & #8220;in funnel“).

This practice is also called & #8220; the convergence of requests & #8221 ;.

However, this is not systematic and the EPO can accept a new, wider set of claims if the changes are not fundamental and do not create a & #8220;new case" or "fresh case” (T2599 / 11).

It should be noted that the convergence of 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).

4) Rejections not admitted at first instance

For the reasons mentioned above, requests not admitted at first instance will be considered late, but the Board of Appeal will be able to check whether their refusal is correct or still up to date (#8217;T490 / 13).

It may happen that the court of first instance declares the application inadmissible, but that in reality 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.

5) Motions unrelated to the contested decision

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

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

6) Requests n & #8217; not explaining why the decision is wrong

Each request must show how the decision is wrong.

For example, if a request is a copy and paste of the opposition factum, without explaining why the opposition decision is unfounded, this request will be inadmissible (T2227 / 14).

7) Requests not explicitly presented

If the requester makes requests that can later be used by the requester s & #8217; he decides (may eventually choose to rely upon), these requests will be considered as not submitted (T1440 / 12).

8) Undetermined requests

It is not possible to make a vague request of type & #8220; le maintenance of the patent with n & #8217; any claim that would be deemed acceptable” (T1138 / 12).

Likewise, it is not possible to make a request by indicating & #8220;the term xxx is replaced by yyy in the main query or by any other acceptable term” (T1773 / 10).

According to l & #8217;A113 (2) EPC, l & #8217; EPO is bound by the text proposed by the holder. In application of l & #8217;A101 (3) EPC, 1 & EP38217; EPO can only maintain a patent in modified form if it meets the requirements of the EPC. If a claim of #8217; a request does not meet these requirements, the patent cannot be maintained in this form: period c & #8217; is all. 

9) If all the requests are inadmissible

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

6.4.5. L & #8217; absence from 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 & #8217; a new document / argument, since the & #8217; absence of & #8217; a party amounts to their renunciation of their right to be heard (#8217;G4 / 92 indicates that late documents could no longer be added during an oral procedure during which a party is absent, but this decision no longer seems to be applicable since the RPCR is subsequent to this decision).

Section 6.5. Remedies during the examination procedure

6.5.1. Procedure

The Board of Appeal may very well invite the applicant, if necessary, to submit its observations on the notifications from the EPO (#8217;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, e.g. validity of #8217; a priority, R100 (3) EPC), even if the contested decision did not reject the request (e.g. non-designation of #8217; an additional statement, J29 / 94).

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

In any event, the Board of Appeal has the power to examine any conditions of the EPC, including those not considered by the examining board or considered to be met (G9 / 92 and G10 / 93).

6.5.2. Reformatio in pejus

Recourse during the examination procedure may very well lead to a reformatio in pejus (ie worse for the applicant, G10 / 93): indeed, the Chamber may examine ex officio certain grounds which it considers relevant.

Section 6.6. Appeal during the opposition proceedings

6.6.1. Procedure

The Board of Appeal may very well invite the parties, if necessary, to submit their observations on the notifications from the EPO and on communications from other parties (#8217;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).

Neither l & #8217;A121 EPC neither l & #8217;A122 EPC are not applicable to this time limit, but a response past the deadline may, in certain circumstances, be taken into account.

No penalty exists for non-response.

The Board of Appeal must examine and decide whether & # #8217; the appeal may be granted, even if no request has been made or no answer has been provided (T501 / 92).

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

6.6.2. Reformatio in pejus

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

  • the applicant is the only party who hasG9 / 92 and G4 / 93);
  • this & #8220;no reformatio in pejus& #8221; is invoked by the applicant (T1544 / 07).

S & #8217; there are several applicants (a priori, an opponent and the holder), it is possible to reformatio in pejus.

1) Questioning for problems A123 (2)

However, this principle of & #8220;no reformatio in pejus” (G9 / 92 and G4 / 93) perhaps challenged in #8217; hypothesis where (G1 / 99):

  • l & #8217; opponent appeals;
  • l & #8217; 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 request, but without contravening A123 (3) EPC ;
  • if such an extension is not possible, delete the amendment contrary to A123 (2) EPCbut without contravening A123 (3) EPC.

We understand that the resulting claims may, by this process, have a broader scope than the claims as maintained by the opposition division: 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:

  • l & #8217; opponent appeals;
  • 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 pejus, if the opponent raises for the first time an objection of sufficient 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 reaches the appeal stage, the intervener is treated as an applicant who has not lodged an appeal (1).G3 / 04). Thus, if all those who lodged an appeal withdraws, the instance disappears.

He must pay the tax of #8217; opposition (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 lodges his statement, it is advisable to look at the exact chronological order of these events in order to know whether the intervention is admissible (1).T517 / 97):

  • if the intervention is declared admissible, the appeal procedure disappears (G3 / 04) and the 1PA38217 objection fee is not refunded;
  • otherwise the opposition fee is refunded, because the intervention is not admissible. (#8217; opposition)AX 10.1 Directives).

The intervener may present new arguments and new reasons for the intervention.A100 CBE not shown (G1 / 94). If new grounds are raised, it is generally necessary 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 intervener can no longer return to what has already been decided (ibid.).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 drawings into conformity with the claims (even if the case is referred to the division d & #8217; opposition A111 EPC, res judicata).

6.6.4. New reasons

1) Principle

A reason not present in the act of opposition is a new reason.

The following are not new grounds, grounds present in the opposition proceedings:

  • but incorrectly motivated;
  • but abandoned during opposition proceedings (#8217;T274 / 95, even if & #8217; there is also a contrary decision T1491 / 07);
  • but presented by another party which is no longer a party to the appeal proceedings (T520 / 01).
2) Acceptance of the new reasons

New grounds for opposition cannot 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 n & #8217; who did not participate in the first instance (G1 / 94);
    • in this case, the case is remitted to first instance, except in special circumstances (e.g. request by the owner, G1 / 94)
  • s & #8217; they were presented late at the opposition stage and refused (A114 (2) EPC) wrongly (T986 / 93);
  • s & #8217; they were examined ex officio by the opposition division & #8217;T309 / 92).

Nevertheless, the Board of Appeal retains a discretionary power of l & #8217;A13 (1) RPCR to be able to discard new reasons according to l & #8217;A114 (2) EPC. In particular, she is free to accept new reasons not presented by the previous representative who was seriously ill when writing his appeal brief (and who is now dead, T336 / 11)

3) Separate reasons

Normally, novelty and inventive step are two separate motives.

Nevertheless, if the defect& #8216; inventive step with document D1 as the closest prior art, it is possible, although this has not been raised, to attack 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 during the act of opposition also contains an attack by novelty with the same documents (as this often amounts to contradicting each other). In this case, the absence of inventive step can be examined without this being considered as a new reason (T131 / 01).

6.6.5. New arguments

1) Old case law

Likewise, the new arguments may be considered to be out of time and rejected as such in application of the discretion of the Chamber of l & #8217;A13 (1) RPCR (T1621 / 09), provided that the holder was able to foresee that these arguments could be discussed (T607 / 10, in this case, the closest prior art had been changed).

For example, a new combination of prior art documents (while 10 other combinations have already been submitted) may be rejected (T1019 / 13) in application of l & #8217;A13 (1) RPCR.

Likewise, a new attack on inventive step on the basis of a D17 document (whereas a novelty attack on the basis of this same D17 document had been presented) could be considered to be late (T181 / 17): you have to be careful because even if T131 / 01 considers that this & #8217; is not a new reason, it may very well be a new argument & #8230;

The absence of one of the parties to an oral procedure 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 modifications and from reaching a decision on the basis means thus modified (T1621 / 09).

2) Revival of jurisprudence

It should be noted that & #8217; a decision T1914 / 12 question this previous position.

According to the Board of Appeal (T1914 / 12), l & #8217; article A114 (2) EPC does not provide that arguments can be dismissed. If in the initial discussions of the EPC, the late arguments could be dismissed, the preparatory work shows that the legislator has finally abandoned this idea.

Consequently, the chambers have no discretion to reject new arguments (as long as they are based on facts already present in the proceedings).

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 holder, who opposes this acceptance (T1002 / 92).

However, this does not mean that a document relevant to prima facie will always be accepted: the Board of Appeal retains full discretion to avoid any & #8220; circumvention & #8221; (T712 / 12).

A priori, if a document / evidence is eminently relevant, the case should normally be remitted to first instance so as not to unfairly deprive the holder of #8217; a double level of jurisdiction (T258 / 84 or T1810 / 13).

If the document could have been produced before the opposition division, the opposition must, in principle, be dismissed as inadmissible T85 / 93 or T712 / 12).

However, if the documents produced aim to respond to a new argument (e.g. identification of #8217; an additional difference), they may be accepted (T263 / 12).

2) Prior use and abuse of process

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

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

It should also be noted that this absolutely does not depend on whether the person who invokes this prior use has just come to know about this use or not (#8217;T1955 / 13): insofar as an internal prior use has not been raised, whether deliberately or negligently, and that no modification warranted research in a particular direction, the principles of equity and equality of treatment of the parties lead the Chamber not to admit the internal prior art submitted 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 changes requesting a review, the case must be remitted to first instance (T63 / 86).

If all parties agree to the proposed modifications (ie no party has an objection), the Board of Appeal must examine the modifications (R100 (1) EPC).

6.6.8. Distribution and fixing of costs

The situations which may result in the apportionment of costs are similar with the opposition procedure. Same for the procedure (R100 (1) EPC).

Nevertheless, during the appeal:

  • it is not possible to present this request (linked to the opposition procedure) if it was not presented during the opposition (#8217; opposition (T1059 / 98);
  • the Board of Appeal can not not rule 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 n & #8217; is not subject to appeal if c & #8217; is the sole object of the appeal (A106 (3) EPC together R97 (1) EPC). Thus, if the decision has granted its claims on the merits, it is not possible to have this distribution changed (even if the other party appeals T1237 / 05).

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

An appeal seeking fixation costs of the opposition proceedings will only be accepted if the amount at stake is greater 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 is applicable here (T668 / 99).

Chapter 7. Decision

Section 7.1. Principle

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

  • make a final decision;
  • or send back to the first instance so that it completes the exam.

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 defect which tainted 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 very well waive his right to appeal to two instances, if the subject of the request after the deletion of the irregularity is patentable. In this case, there is no reference (#8217;T274 / 88).

7.4.4. Decision and need for & #8220; finalization & #8221;

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:
    • l & #8217; 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 authorize the claimant or the 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 exam:
    • 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 (e.g. the examining division) is bound by this decision: another body (e.g. an opposition division) is not bound (T21 / 89). However, if the first instance is the filing section, the examining division is bound by the decision of a board of appeal (#8217;A111 (2) EPC).

Section 7.6. Authority of res judicata

If the Board of Appeal refers the case back to first instance with the order to keep the claims pending (but requests it to bring the description into line with the claims), it is not possible to appeal against the decision of the first instance on the ground that claim 1 would not be new (for example) (T2047 / 14).

Indeed, that would amount to appealing against the decision of the Board of Appeal, which is not possible (#8217;res judicata) ...

Furthermore, it is not possible to challenge a decision of a board of appeal (e.g. clarity of a measurement method because the board considers that all measurement methods 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): even if & #8217; it is likely that the board of appeal looked at the EPC as a whole before referring to the first instance, the res judicata only applies to the operative part of the decision (it does & #8217; there is therefore no implicit res judicata).

Section 7.7. Decision of the Board of Appeal

7.7.1. Time of decision making

The chamber can rule on the case (#8217;A12 (3) RPCR):

  • if the procedure is ex-parte, at any time after the submission of the memorial (as long as this party has had sufficient opportunity to take a position on the arguments of the board, 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 this party has had sufficient opportunity to take a position on the board's arguments, 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 registrar's agent of this room.

This authentication can be performed (R102 EPC) by signature or other means (such as electronic means, & #8220;Communiqué dated 1 April 1999 on the amendment of the European Patent Convention, its Implementing Regulation and the Rules relating to Fees” , OJ 1999, 301, points 10 and 11 and & #8220;Notice from the Vice-President responsible for Directorate General 3 of the European Patent Office, dated 15 December 2011, relating to the #8217; electronic authentication of the decisions of the Boards of Appeal of the EPO #8217;” , OCT 2012, 14).

7.7.3. Content and form of the decision

Decisions rendered must be reasoned (R102 EPC) especially if & #8217; it seems to have (or if & #8217; there is) discrepancy with the directives (A20 (2) RPCR) or an earlier decision (A20 (1) RPCR).

If a chamber deems it necessary to deviate from a decision / opinion of the Grand Chamber, it should normally be referred to the latter ((#8217;A21 RPCR)

Chapter 8. Reimbursement of the appeal fee

Section 8.1. Complete refund

There is a refund integral the appeal fee:

  • s & #8217; the applicant is allowed (by preliminary ruling or not), and s & #8217; there was a substantial vice procedure (R103 (1) (a) EPC):
    • there is a vice if:
      • the request for oral proceedings is not considered or dismissed (T808 / 94);
      • not all parties are summoned to the oral proceedings (T209 / 88);
      • the right to be heard (#8217;A113 (1) EPC) has been broken (T14 / 82);
      • the request has been rejected for lack of response to a notification even though the EPO does not provide proof of the transmission of this notification (J14 / 14) because the claimant did not have the opportunity to comment before the decision was made;
      • the opponent has only 10 min to study the new formulation of claim 1 (T783 / 89);
      • the first instance does not give the parties an opportunity to take a position after the referral of an appeal on the basis of new means, even if these new means have already been discussed during the appeal proceedings (#8217;T892 / 92);
      • the decision n & #8217; 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 dismisses a late application by simply indicating that it was filed late (T755 / 96);
      • the first instance does not impose a deadline for producing documents produced in support of a request for correction R139 EPC (J4 / 82);
      • the composition of & #8217; a first instance is not in accordance 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);
      • reasoning of & inventive activity was developed only during the oral proceedings in which the applicant did not participate. (#8217; inventive step)T1448 / 09);
      • the document of the closest state of the art retained is not that proposed by the holder / the opponent without this being explained or justified (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) but only if the requester has had a more active attitude (e.g. s & #8217; inquire into the status of the request or request an acceleration of the procedure, T2707 / 16) .
    • There is no defect if:
      • at least one of the grounds of appeal is not vitiated by defects (T4 / 98);
      • there is a discrepancy with the constant case law of the appeal body (T208 / 88);
      • The court wrongly concludes that no request for oral proceedings has been made (T19 / 87, because c & #8217; is an error in judgment);
      • failure to consider a request for an interview with the examiner (#8217; interview)T182 / 90);
      • the first instance & #8217; was wrong in the & #8217; assessment of the & # 1 TP38217; 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 setting out the grounds for the appeal and before the expiry of the time-limit for filing this memorandum (R103 (1) (b) EPC) (T89 / 84the brief must be expressly withdrawn),
  • if the appeal is untrained (attention, untrained is different from #8217; 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 (from April 1, 2014, & #8220;Decision of the Board of Directors of December 13, 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 which the Board of Appeal set inviting the applicant to submit its observations, or
  • otherwise, before the decision is made.

Section 8.3. Case of & #8217; an application deemed to be withdrawn during the appeal

If an application is deemed to be withdrawn during the appeal (e.g. non-payment of & #8217; an annual fee, even if we are still within the payment period with surcharge), it will not be possible to withdraw the appeal to seek to benefit from & #8217; a reimbursement: the appeal procedure automatically ended due to this loss of rights (T1402 / 13),

Indeed, no refund to 50 % n & #8217; 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 body (if the request is granted by this body) or otherwise by the Board of Appeal.

This refund can be ordered from the office (#8217;D7 / 82) even without the request of the applicant.

Chapter 9. Accelerating the appeal procedure

Section 9.1. Principle

This acceleration is provided for by & #8220;Notice from the Vice-President responsible for General Management 3, dated 17 March 2008, relating to the acceleration of the procedure 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 request it, including the competent courts or departments of & #8217; a Contracting State (& #8220;Notice from the Vice-President responsible for General Management 3, dated 17 March 2008, relating to the acceleration of the procedure 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 procedure (& #8220;Notice from the Vice-President responsible for General Management 3, dated 17 March 2008, relating to the acceleration of the procedure before the Boards of Appeal” , OG 2008, 220).

It must set out the reasons for & #8217; urgency and target the supporting documents (& #8220;Notice from the Vice-President responsible for General Management 3, dated 17 March 2008, relating to the acceleration of the procedure before the Boards of Appeal” , OG 2008, 220).

Section 9.4. Reasons for Emergency #8217;

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

For example (& #8220;Notice from the Vice-President responsible for General Management 3, dated 17 March 2008, relating to the acceleration of the procedure 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;
  • l & #8217; opposition must be dealt with expeditiously;
  • because of the drawbacks produced by the suspensive effect of the appeal (exceptional);
  • etc.

Chapter 10.

Leave a Reply

Your e-mail address will not be published. Required fields are marked *