Appeal procedure before the European Patent Office

Decisions of the first instances of the European Patent Office (EPO) can be appealed, i.e. challenged, before the Boards of Appeal of the EPO, in a judicial procedure (proper to an administrative court), as opposed to an administrative procedure. These boards act as the final instances in the granting and opposition procedures before the EPO.

In addition to the Boards of Appeal, the European Patent Office includes an Enlarged Board of Appeal. This board does not constitute an additional level of jurisdiction in the classical sense. This instance takes decisions only when the case law of the Boards of Appeal are inconsistent with each other or when an important point of law arises. Its purpose is "to ensure uniform application of the law" (Art. 112(1) EPC [1]) and to clarify or interpret important points of the European Patent Convention.

Only the Boards of Appeal themselves and the President of the EPO can refer a question to the Enlarged Board of Appeal. In the first case, the Enlarged Board issues a decision, while in the latter case it issues an opinion. The Boards of Appeal are then bound by the decisions and opinions of the Enlarged Board of Appeal.

Appointment and independence

The members of the Boards of Appeal and of the Enlarged Board of Appeal are appointed by the Administrative Council of the EPO, and are employed of the European Patent Organisation. In contrast, members of the search divisions and of the examining divisions of the EPO are employed by the European Patent Office.

Members of the Boards are only bound by the European Patent Convention. They are not bound by any instructions, such as the "Guidelines for Examination in the European Patent Office". They have a duty of independence.

However, there have been calls for creating, within the European Patent Organisation, a third judicial body alongside the Administrative Council and the European Patent Office. This third judicial body would replace the present Board of Appeals and could be called the Court of Appeals of the European Patent Organisation [2]. This change would however need to be approved by a new Diplomatic Conference.

References of decisions and opinions

Each decision issued by the Boards of Appeal or by the Enlarged Board of Appeal, as well as each opinion of the Enlarged Board of Appeal, has an alphanumeric reference, such as decision T 285/93. The first letter of the reference gives an indication of the type of board which took the decision:

• G – Enlarged Board of Appeal
• T – Technical Board of Appeal
• J – Legal Board of Appeal
• D – Disciplinary Board of Appeal
• W – Decision concerning PCT reserves

The last two digits give the year during which the appeal was lodged. Note that the letter "L" does not refer to a decision of a Board of Appeal but to a Legal Advice of the EPO [3], and that the letter "V" refers to decisions of Examination and Opposition Divisions [4].

In addition to their alphanumeric reference, decisions are sometimes referred to and identified by their date. This enables to distinguish between decisions bearing the same alphanumeric reference but issued at a different date (e.g. T 843/91 of March 17, 1993 [5] and T 843/91 of August 5, 1993 [6], T 59/87 of April 26, 1988 [7] and T 59/87 of August 14, 1990 [8] or T 261/88 of March 28, 1991 [9] and T 261/88 of February 16, 1993 [10]). These cases are relatively rare however.

Trivia

• The first group of cases referred to the Enlarged Board of Appeal were cases G 1/83 to G 7/83, relating to the "second medical indications" (among which G 1/83, G 5/83 and G 6/83 have been published, respectively in German, English and French, the three official languages of the EPO).
• The first referral to the Enlarged Board of Appeal by the President of the European Patent Office under Art. 112(1)(b) EPC was G 2/89, considered in consolidated proceedings with G 1/89.
• Enlarged Board of Appeal case G 9/92 (consolidated with G 4/93) led to a minority dissenting opinion.
• Case G 9/93 reversed previous opinion laid out in G 1/84, regarding the allowability of an opposition by the patent proprietor. G 1/84 accepted such type of opinion, G 9/93 then rejected it.

See also

• European Court of Justice, the appeal court of the European Union, but which is not involved in the appeal procedure before the EPO
• Restitutio in integrum in patent law

External links

• Search interface for the Decisions of the EPO Boards of Appeal
• Case Law of the Boards of Appeal
• Administrative Council of the EPO
• Rules of procedure of the Boards of appeal (consolidated version)
• Rules of procedure of the Enlarged Board of appeal (consolidated version)