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Practical approaches to appeals before the European Patent Office Paul Chapman Elizabeth Crooks
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
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
What are the boards of appeal? • 24 technical Boards of Appeal • Legal Board • Disciplinary Board • Enlarged Board
What are the boards of appeal? • Technical Board of Appeal • 2 technically qualified members • 1 legally qualified members
What decisions can be appealed? • Receiving section • Examining Division • Opposition Division • Legal Division
Who can appeal? • Any party to the proceedings adversely affected by a decision
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
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
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
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
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
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?
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?
General procedure and Timings • What happens next? - Respondents set term for response - “Black Hole” - Communication from the Board, opinion or summons
Oral Proceedings • Where? - Munich • How long? - One day to one week(?) • When do you receive decision - That day
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
Oral Proceedings • Procedure - Are all issues discussed? - What happens at end of appeal?
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
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?
Special Considerations • What is the expert for? - Establishing what was known in the art? - Refuting statements by the other side?
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?
Thank You Any Questions?