If you find yourself involved in filing and prosecuting an appeal at the European Patent Office (EPO), knowing a little about the procedure can make matters run more smoothly. Please note that this handout is intended as a guide only, and should not be used as a substitute for legal advice.

To provide you with a little background

An appeal can be filed to dispute almost any decision taken by the EPO. The appeal may be ex parte (between the EPO and the applicant only) or inter partes (between the applicant, the EPO, and one or more third parties).

Appeal proceedings are conducted before a Board of Appeal, which consists of at least three members of the EPO that are completely unrelated to the members of the EPO whose decision is being appealed.

Appeal proceedings are the last instance of proceedings before the EPO. This means that the decision reached by the Board of Appeal is final, and cannot be appealed.

When considering filing an appeal the following is important

Only a person who was a party to the first instance proceedings may appeal against a decision. Successors in title to a patent/patent application/party to the proceedings must be considered carefully as can have a big impact on the filing of an appeal.

A party must be adversely affected by the decision in order to be able to file an appeal. The EPO take this to mean that the decision must disagree with an explicit request of that party.

The word ‘decision’ is important, as a document that does not decide anything cannot be appealed.

Step one: file notice of appeal

Notice of appeal from a decision must be filed within two months from the date the decision is notified. This is the date on the letter from the EPO, plus the EPO’s ten day postal rule. This time period is not extensible.

A notice of appeal must detail the name and address of the party filing the appeal, and set out in brief the decision being appealed and the extent of the appeal, for example all or part of the decision.

Oral proceedings should be requested early in the proceedings to ensure that opportunity for argument in person is kept open.

The notice of appeal carries an official fee of slightly over €1000, and both the fee and the notice of appeal must reach the EPO before the deadline, or the appeal is deemed not to have been filed.

Step two: prepare and file grounds for appeal

The notice of appeal must be supported by a statement of grounds, which must be filed within four months from the date the decision is notified. It is important to set out as full a case as possible initially.

It is not sufficient to simply state that the decision is wrong – legal and factual reasons why the decision should be set aside must be included.

New arguments, amendments and even prior art can be raised on appeal but the Board of Appeal will always determine whether these should be admitted and fairness to all parties is something that they have to consider.

Brief summary of the appeal procedure

The division that made the decision under appeal (e.g. the Examining Division) will review the appeal filed, and their own decision. If the appeal addresses all of the issues that lead to their adverse decision, that division can allow the appeal and overturn the earlier decision (known as interlocutory revision).

More commonly, however, the appeal will not obviously address all of the issues, and will be sent to the Board of Appeal to be considered in full.

The Board of Appeal will assess both the allowability and the admissibility of the appeal. The EPC states that the Board of Appeal ‘shall invite the parties, as often as necessary, to file observations’. This usually means the Board will send the applicant an opinion on the appeal, and the applicant will be given an opportunity to comment on the Board’s opinion. The Board may issue further opinions, before summoning the applicant to oral proceedings, or may issue a summons immediately after the first opinion. This can take a number of years.

Proceedings can be accelerated but only if the applicant can give a legitimate reason why acceleration might be preferable. For example, a pending infringement action might be considered to be a legitimate reason.

Decision time

Once the board feels all issues have been considered fully, it will issue a final decision. The Board of Appeal has the power to grant any remedy that could have been granted by the Division whose decision is under appeal (such as grant or refusal of a patent application). Each party usually pays its own costs.

Please contact your usual Barker Brettell attorney for further information.