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Practical approaches to appeals before the European

Patent Office

Paul Chapman

Elizabeth Crooks

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Practical approaches to appeals before the EPO

What are the Boards of Appeal? What decisions can be appealed? Relationship of the BoA’s to the

Enlarged Board General procedure/timings Oral proceedings Special considerations

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What are the boards of appeal?

Proceedings before the boards of appeal are wholly separate and independent from the proceedings at the first instance.

Provide a judicial decision on the correctness of a separate earlier decision

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What are the boards of appeal?

24 technical Boards of Appeal Legal Board Disciplinary Board Enlarged Board

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What are the boards of appeal?

Technical Board of Appeal

– 2 technically qualified members– 1 legally qualified members

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What decisions can be appealed?

Receiving section Examining Division Opposition Division Legal Division

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Who can appeal?

Any party to the proceedings adversely affected by a decision

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Decisions of Boards of Appeal

Decisions published:T – Technical Board of Appeal

J – Legal Board of Appeal

D – Disciplinary Board of Appeal

W – Decisions concerning the PCT

http://www.epo.org/patents/appeals.html

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Relationship of the Board of Appeals to the Enlarged Board

To ensure uniform application of the law and to consider any point of law of fundamental importance

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Relationship of the Board of Appeals to the Enlarged Board

Referrals to the EBA:

– Board of Appeal: Can refer a question to the EBA if it considers that a decision is required to ensure uniform application of the law or if a point of law of fundamental importance arises

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Relationship of the Board of Appeals to the Enlarged Board

Referrals to the EBA:

– President of the EPO: Can refer a point of law to EBA where two BoA have given different decisions

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Relationship of the Board of Appeals to the Enlarged Board

Referrals to the EBA:

– Under EPC 2000 – Any party adversely affected by the

decision of the BoA– Very limited grounds

• Fundamental procedural defect • Board member• Impact of criminal act

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General Procedure and Timings

Timing of appeals- File appeal and pay fee within two months of decision

- File grounds within four months of decision

- All parties become parties to the appeal

- What happens if not all affected parties file an appeal?

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General Procedure and Timings

Scope of Appeal- what are you appealing against?

- can you ask the board to look at other things?

- New documents and arguments

- is there a difference between an appeal from an Examining Division and one from an Opposition Division?

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General procedure and Timings

What happens next?

- Respondents set term for response

- “Black Hole”

- Communication from the Board, opinion or summons

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Oral Proceedings

Where?

- Munich

How long?

- One day to one week(?)

When do you receive decision- That day

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Oral Proceedings

Procedure- Requests

- Issues reviewed in turn

- Appellant speaks first

- proceedings adjourned after each discussion; decision given before proceeding to next issue or new request

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Oral Proceedings

Procedure- Are all issues discussed?

- What happens at end of appeal?

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Special Considerations

Are Appeals like Litigation?- No, because no cross examination (although the Board often asks questions)

- No, because Boards of Appeal consider the procedure to be mainly a written one

- No, because experts not considered necessary

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Special Considerations

Should you use an expert?

- As with many things, depends on the case

- Need to define area of expertise and establish expert’s credentials

- Remember, if your expert is too “clever” is he/she really something beyond the skilled person?

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Special Considerations

What is the expert for?- Establishing what was known in the art?

- Refuting statements by the other side?

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Special Considerations

Requests

- Applicant/Patentee Appellant, number and timing

- To be remitted or not remitted, that is the question

- Is there a difference between an appeal from an Examining Division and one from an Opposition Division?

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Thank You

Any Questions?