11.6 Judicial patent proceedings and case management
11.6.1 Key features in patent proceedings
The primary objective of proceedings before the Boards of Appeal is to review the decision under appeal in a judicial manner.45 As mentioned above in Section 220.127.116.11, the Boards of Appeal constitute the first and final judicial instance in the procedures before the EPO. In this capacity, they review appealed decisions on points of law and fact.
Parties may amend their cases during appeal proceedings, which also includes the possibility for the applicant or patent proprietor to amend their patent application or patent. However, as appeal proceedings progress, the possibilities for parties to amend their cases become increasingly limited. This has been coined the “convergent approach” and is described in Section 11.6.4 below.
11.6.2 Venue, jurisdiction and case assignment rules
18.104.22.168 Venue and jurisdiction
The Boards of Appeal are located in Haar, near Munich, Germany. Their oral proceedings take place either at the Haar premises or at the EPO’s headquarters in Munich and may also be conducted by videoconference (see Section 22.214.171.124).
The Boards of Appeal have jurisdiction over the decisions taken by the Receiving Section, the Examining Divisions, the Opposition Divisions and the Legal Division of the EPO.46 The Boards of Appeal deal only with patent validity, not with questions of patent infringement (see Section 11.3.3).
126.96.36.199 Case assignment
Technical cases are assigned to each Technical Board according to the business distribution scheme before the beginning of each working year.47 Responsible for this allocation is the Presidium of the Boards of Appeal, extended to include all chairs of the Boards.48 For technical cases, appeals are allocated to each Board based on the main International Patent Classification attributed to the application or patent at the time of the filing of the appeal.
Technical Boards may also share an International Patent Classification class. For Boards that share a class, cases are divided by year of appeal filing (e.g., appeals concerning a specific class filed in 2019 are allocated to one Board, and appeals of the same class but filed in 2020 are allocated to another Board).49 If it is more appropriate to allocate a case to a different Board because of its technical content, the chairs of the two Boards may agree to change the allocation of the case.50
A Technical Board usually consists of four to eight technically qualified members and two to four legally qualified board members. Technically qualified members are allocated to a single Technical Board; legally qualified board members are usually allocated to three different Technical Boards.51
The actual composition of a particular appeal is determined by the chair of the Board according to the criteria set out in the business distribution scheme. In particular, chairs take into account the technical and language requirements of the case and the workload of each member of their Board.52
188.8.131.52 Party representation
As a rule, parties to proceedings before the Boards of Appeal (or to any proceedings before the EPO) are not obliged to be represented by a professional representative.53 However, if parties do not have their residence or principal place of business in a Contracting State, they must be represented by professional representatives and act through them.54 If, in such a case, a representative is not appointed, the procedural steps taken by the non-represented party are deemed not to have been taken.55
The EPO maintains a list of professional representatives who may represent parties in proceedings before the EPO. A professional representative must be a national of a Contracting State, have their place of business or employment in a Contracting State, and have passed the European Qualifying Examination.56 The European Qualifying Examination is organized by the EPO and tests candidates’ knowledge and aptitude to represent applicants in EPO proceedings.
Legal practitioners qualified in a Contracting State can also represent parties in EPO proceedings to the extent that they are entitled in that Contracting State to act as a professional representative in patent matters.57
11.6.3 Statements of case
184.108.40.206 Appellant’s statement setting out the grounds of appeal, and the respondent’s reply thereto
An appellant who seeks to impugn the decision of the EPO’s departments of first instance must file a notice of appeal within two months of the notification of the decision and, additionally, a statement setting out the grounds of appeal within four months of the notification of the decision.58
The notice of appeal must contain the name and the address of the appellant, an indication of the decision impugned and a request defining the subject of the appeal, such as that the patent be revoked or that it be maintained in amended form.59
The statement of grounds of appeal must contain the reasons for setting aside the decision being impugned – or state the extent to which it is to be amended (e.g., in which version the patent should be maintained, in particular with which set of claims) – and the facts and evidence on which the appeal is based.60
The respondent (i.e., the non-appealing party in opposition-appeals proceedings) may file a reply to the appellant’s grounds of appeal. The reply must be filed four months after the grounds of appeal are notified to the respondent.61
220.127.116.11 Parties’ complete appeal cases
An appellant’s statement of grounds of appeal and the respondent’s reply thereto must contain each party’s complete appeal case.62 This ensures a “front-loading” of the appeal proceedings so that the members of the Board, particularly the rapporteur responsible for the case, have all facts and requests on the table when they start examining the cases.
Since the first exchange of briefs must already contain a party’s complete appeal case, the possibility of amending the appeal case later in the appeals proceedings is limited. During the later stages of the proceedings, opponents might attempt to attack the patent by submitting new facts or new evidence, and the patent proprietor might seek to defend the patent in an amended form by filing new auxiliary requests (i.e., new sets of claims). However, such amendments made by the parties to their respective initial pleadings may be admitted only at the discretion of the Board (see the following section).63
11.6.4 Parties’ amendments to their cases on appeal – the Boards of Appeal’s convergent approach
The function of the Boards of Appeal is to review the appealed decision, not to merely continue the examination or opposition proceedings by reexamining the application or the revocation grounds against the patent. One of the consequences of this primary objective is that, as appeal proceedings progress, the possibilities for parties to amend their cases become increasingly limited. This has been coined the “convergent approach,” which consists of three levels, as regulated in the Rules of Procedure of the Boards of Appeal [hereinafter RPBA 2020].64
Which of these provisions applies depends on the point in time at which a party changes its case:
Article 12(4) applies when a party changes its case at the outset of the appeal proceedings (i.e., in its statement of case) with respect to what the party had filed before the Examining or Opposition Division, or with respect to what was decided by the division.
Article 13(1) applies when a party changes its appeal case after the initial stage of the appeal proceedings but before a summons to oral proceedings has been notified.65
Article 13(2) applies when a party changes its appeal case after the summons to oral proceedings has been notified.66
These three levels of convergence are explained in detail in the following sections.
18.104.22.168 First level of the convergent approach
In a party’s statement of grounds or their reply, the case must be directed to the requests, facts, objections, arguments and evidence on which the decision under appeal was based.67 This is in accordance with the primary objective of the appeal proceedings to review the decision under appeal.
If parts of a party’s appeal case are not directed to the requests, facts, objections, arguments and evidence on which the decision under appeal was based, they are regarded as an “amendment.”68 Two situations must be distinguished. In the first situation, the party presents, in its appeal, a case that is amended in comparison to what it had presented before the department of first instance. For example, a patent proprietor files a new claim request (i.e., a new set of claims) in its appeal, or the opponent submits a new prior art document, which had previously not been brought before the Opposition Division. In such a case, the filing of the new request or document is an amendment of the party’s case and may be admitted only at the discretion of the Board.69 The criteria that the Board may use in the exercise of its discretion are, inter alia, the complexity of the amendment, the suitability of the amendment to address the issues that led to the decision under appeal, and the need for procedural economy.70
In the second situation, the appellant’s case on appeal is not changed in comparison to the case it had presented during the first instance proceedings. However, the department of first instance did not base its decision on what was submitted by the party in the first instance proceedings. The submission on appeal is still regarded as an amendment under Article 12(4) of RPBA 2020. If, for example, the Opposition Division found the patent proprietor’s main claim request to fulfill the patentability criteria of the EPC, it had no reason to address the patent proprietor’s auxiliary requests in its decision. It is also possible that the Opposition Division found the disclosure of one prior art document to be novelty-destroying so that it had no reason to consider a second prior art document on which the opponent relied before the Opposition Division and still relies in its appeal. In such cases, the patent proprietor must demonstrate that the auxiliary requests – and the opponent must demonstrate that the second prior art document – were admissibly raised before the Opposition Division and maintained until the Opposition Division took its decision.71 If the party concerned complies with this obligation, the auxiliary requests and second prior art document will be part of the appeal proceedings and cannot be excluded by the Board.
In addition to these two situations, which are governed by Article 12(4) of RPBA 2020, Article 12(5) and (6) of the Rules regulate other typical situations in which a party submission may not be admitted into the appeal proceedings. For example, it is required that the statement of grounds of appeal and the reply thereto clearly and concisely set out the reasons why it is requested that the decision under appeal be reversed, amended or upheld, and it should specify expressly all the requests, facts, objections, arguments and evidence relied upon.72 Any part of the submission not meeting this requirement may not be admitted.73 Moreover, the Board might not admit a request or document if the same request or document was already not admitted by the Opposition Division74 or if a request or document should already have been submitted during the opposition proceedings (or, if they were submitted, no longer maintained).75 Articles 12(5) and (6) of RPBA 2020 are applicable throughout the entire appeal proceedings – that is, they are also applicable at the later levels of the convergent approach.76
22.214.171.124 Second level of the convergent approach
After the initial exchange of briefs (i.e., the appellant’s statement of grounds of appeal and the respondent’s reply thereto), the second level of the convergent approach commences. If parties amend their appeal case at this stage, they must provide reasons as to why their initial case has been amended and why this has been done only at this stage of the appeal proceedings. All amendments of a party’s appeal case at this stage are subject to the Board’s discretion alone.77
The RPBA 2020 contains a list of possible criteria for applying that discretion. In general, the criteria for this stage are stricter than those at the first level of the convergent approach. The Board may consider, for example, whether the amendment is suitable for resolving the issues raised (at the first level of the convergent approach, it may be sufficient that the amendment “addresses” them) or whether the amendment is detrimental to procedural economy.78
The RPBA 2020 also mentions specific requirements for when the patent or patent application is amended on appeal. In these situations, the applicant or patent proprietor must demonstrate why the amendment, prima facie, overcomes the objections raised so far and does not give rise to new objections (such as a new objection of lack of clarity or added subject matter).79
126.96.36.199 Third level of the convergent approach
The third level of the convergent approach imposes the most stringent limitations on a party wishing to amend its appeal case. This level commences at an advanced stage of the proceedings, usually after a summons to oral proceedings has been notified.80
At this late stage of the appeal proceedings, amendments to a party’s appeal case are not to be taken into consideration. However, a limited exception is provided if there are “exceptional circumstances.”81 For this exception to apply, a party must present compelling reasons (“cogent reasons”) why the circumstances of the particular appeal exceptionally justify that the amendment be taken into account at this late stage of the proceedings. This may be the case, for example, if a party submits that the Board raised an objection for the first time in its communication that was sent in preparation for the oral proceedings (on this communication, see Section 188.8.131.52 below). The party must explain precisely why this objection is new and does not fall under objections previously raised by the Board or a party. The Board may then decide that there are exceptional circumstances and admit the amendment in the exercise of its discretion.
11.6.5 Early case management
184.108.40.206 Designation of rapporteur for the preliminary study of appeal
For the early management of a case, the chair of the Board may first designate only the rapporteur before determining the remaining composition of the Board.82 The rapporteur then carries out a preliminary study of the appeal.83 The rapporteur also assesses whether the appeal should be given priority over other appeals – for example, if a remittal to the Examining or Opposition Division seems likely (e.g., because of a fundamental deficiency in the proceedings) or if the appeal appears to be inadmissible. The rapporteur can also suggest that the appeal be treated together with other appeals – for example, because they are clearly connected to each other (e.g., parent and divisional applications or applications based on the same priority application).84
Only when the composition of the Board is complete may the rapporteur draft communications on behalf of the Board to the parties, make preparations for the oral proceedings and draft decisions.85
220.127.116.11 Acceleration of the appeal proceedings
In general, cases are treated based on a first in, first out principle. However, a Board may accelerate the proceedings of its own motion.86 This allows the Boards to give an appeal priority over other pending appeals. A case may, for example, be accelerated because the rapporteur has identified a fundamental deficiency in the proceedings at first instance, which renders the case highly likely to be remitted.
Parties may also request the acceleration of appeal proceedings.87 The requesting party needs to provide reasons and, where appropriate, documentary evidence. Valid reasons for acceleration are, for example, that national infringement proceedings have been brought or are envisaged or that the decision of potential licensees of the patent-in-suit hinges on the outcome of the appeal.
Acceleration can be requested not only by parties but also by a national court. A court does not need to provide specific reasons for requesting acceleration. As a rule, Boards will grant a request for acceleration from a court. The Board will subsequently also promptly inform the court of when oral proceedings are likely to take place.88
When the Board decides to accelerate proceedings, the case is given priority over other cases, and the Board may adopt a strict framework for the purpose of case management,89 subject to the parties’ right to be heard and the principle of fair proceedings. If the parties agree, the minimum notice of two months for summons to oral proceedings can be shortened as well.90
18.104.22.168 Early exchange with the parties
No pre-hearings or case management hearings are organized before the Boards of Appeal. In the written phase of proceedings, the directions on matters of procedure are given by means of written communications.91 In practice, such early directions are rarely given.
The Board may also invite the parties, through a communication, to file observations on specific issues or in reaction to a preliminary view of the Board on patentability issues.92 Such a communication may be useful where parties have not requested oral proceedings. If such an invitation is accompanied by a time limit for reply, the applicant in ex parte proceedings must pay special attention to the communication: if the applicant does not reply to the invitation within the period specified by the Board, the European patent application is deemed to be withdrawn.93
In most cases, the first communication on substantive issues is issued to the parties once the date for the oral proceedings is set (see Section 22.214.171.124 below).
126.96.36.199 Annual list of cases
Before the start of a new calendar year, a list of cases is published, indicating for each Board all the cases that will likely be treated in the coming year, particularly cases where it is likely that oral proceedings will be held or a communication will be issued.94 This advance planning of the expected workload for the coming year is done by the chair of each Board in October of the preceding year. It is intended to increase efficiency for the Boards and the parties and to make the work of the Boards more transparent and predictable. The annual list of cases is published on the Boards of Appeal website.95
11.6.6 Evidence – experts
The EPC provides a nonexhaustive list of how evidence can be obtained and given, such as the production of documents, the hearing of witnesses, opinions by expert, inspection or sworn statements in writing.96
Documents constitute the vast majority of evidence considered in proceedings before the Boards of Appeal. Sworn statements are, in practice, rare; instead, unsworn statements or affidavits are produced by the parties. Regarding the taking of evidence by way of an expert opinion, the Technical Boards of Appeal are composed of technical judges, who are well versed in the technical field of the case, so obtaining an expert opinion will almost never be necessary. The hearing of witnesses before the Boards of Appeal is very rare as well. Witnesses, who play a role in the proceedings particularly when an opponent alleged a public prior use, will normally have already been heard before the Opposition Division.
11.6.7 Confidentiality – public file inspection
Files relating to the proceedings before the Boards of Appeal may be inspected on request.97 Parts of these files are excluded from public inspection, particularly the documents relating to the exclusion of or objections to members of the Boards of Appeal or of the Enlarged Board of Appeal; all draft decisions and notices and other internal preparatory documents;98 and medical certificates filed by the parties.99
Parties can request that documents be excluded from file inspection, particularly if their inspection would be prejudicial to the legitimate personal or economic interests of natural or legal persons.100 Documents may also be excluded by the Board of its own motion for the same reasons, particularly to protect the interests of third parties (i.e., natural or legal persons not parties to the proceedings, or their representatives).101
The public part of the file can be accessed online via the European Patent Register.102
11.6.8 Trial and hearing
188.8.131.52 Right to oral proceedings
Parties to proceedings before the Boards of Appeal have a right to oral proceedings.103 If one party requests oral proceedings, a hearing must take place. If none of the parties requests oral proceedings (which is rather a rare occurrence), the Board may either summon the parties to oral proceedings on its own motion or decide the case in written proceedings.
Parties are usually summoned at least four months before the hearing is to take place.104 They are summoned to the Boards of Appeal premises in Haar or to the EPO’s headquarters in Munich. Oral proceedings may also be held by videoconference (see Section 184.108.40.206 below).105
As a rule, oral proceedings before the Boards of Appeal are public.106 In exceptional cases, a Board may decide to exclude the admission of the public where such admission could have serious and unjustified disadvantages (e.g., for a party to the proceedings).107 It may also be the case, especially in proceedings before the Legal Board, that the European patent application has not yet been published; in this event, oral proceedings will not be public.108
Parties may request a change of date of the oral proceedings.109 However, parties must show serious reasons for such a request to be granted. Typical reasons that may justify a change of the date are the serious illness of the representatives or their firmly booked holiday or business trip, or if they had already been summoned to oral proceedings in other proceedings before the EPO or a national court.110 It is unlikely that reasons such as excessive work pressure or the appointment of a new professional representative will be accepted.111
220.127.116.11 Communication issued by the Board of Appeal in preparation for oral proceedings
The Boards always issue a communication in preparation for oral proceedings.112 This communication is based on a thorough analysis of the case and draws attention to matters that seem to be of particular significance for the decision to be taken. The communication should help the parties to concentrate on the essentials of the case in their preparation of oral proceedings and ensures that the oral proceedings are conducted efficiently. The Boards usually also give a preliminary opinion on the decisive points in their communications.113
These communications are normally issued at least four months in advance of the date of the oral proceedings.114 They may be issued together with the summons or later.
18.104.22.168 Conduct of oral proceedings and languages used
Oral proceedings are presided by the chair in the particular appeal. The chair ensures their fair, orderly and efficient conduct.115 If a party duly summoned to oral proceedings does not appear as summoned, the proceedings may continue without that party,116 and this party may then be treated as relying only on its written case.117
Each case before the EPO has a language of proceedings, which must be one of the official EPO languages (i.e., English, German or French). The language of proceedings is determined by the language in which the European patent application was filed.118 At the oral proceedings, however, parties may use any official language of the EPO.119 If a party chooses to deviate from the language of proceedings at the oral proceedings, they must give notice at least one month before the oral proceedings so that the EPO can organize and then pay for interpretation.120 Parties can, of course, also provide for interpretation into the language of the proceedings at their own expense; at oral proceedings, they can also then use any official language of a Contracting State.121 In practice, oral proceedings before the Boards of Appeal with interpretation from and into one language – or even two or more languages – are quite frequent.
22.214.171.124 Oral proceedings by videoconference
The Boards of Appeal may hold oral proceedings by videoconference.122 Different setups are possible – for example:
In “distributed oral proceedings,” all members, representatives and accompanying persons attend by videoconference.
In “mixed-mode oral proceedings,” some parties, representatives and accompanying persons are physically present in the oral proceedings room with the board members, while others attend by videoconference.123 Exceptionally, one or more of the board members may also attend by videoconference.124
11.6.9 Decisions of the Board of Appeal
126.96.36.199 Decisions announced in oral proceedings
In the great majority of cases, the final decision of the Board is announced at the end of the oral proceedings.125 After the chair closes the debate, they announce the order of the decision – for example, that the appeal is dismissed, that the patent is revoked, that the patent is maintained in a version different from the one granted or that the case is remitted for further prosecution. Once the decision is announced by the chair, it can no longer be changed by the Board.
188.8.131.52 Written decision within three months
The written decision, which includes the summary of the facts, the reasons and the order,126 is issued in a timely manner.127 For the usual case, where the decision is announced at the oral proceedings, this means that the Board must despatch it within three months of the date of the oral proceedings.128
However, it may be that the Board is unable to meet this deadline: for example, because of the sickness of a member or because the case is particularly complex. In such cases, the Board should then inform the parties of the delay and when the decision is likely to be despatched.129
184.108.40.206 Reasons given for decision in abridged form
A Board may put the reasons for a decision, the order of which was announced in the oral proceedings, in an abridged form. However, this is possible only under the condition that the parties have given their consent.132 A Board cannot give the reasons in an abridged form if a third party or a court has informed the Board that it has a legitimate interest in the reasons for the decision not being in abridged form.133
A Board may also decide to put the reasons for the decision in an abridged form if it agrees with all the findings and reasoning of the decision under appeal or with only the findings on one or more specific issues.134 In practice, however, written decisions rarely contain the reasons in an abridged form.
In inter partes proceedings before the Boards of Appeal (and in proceedings before the Opposition divisions), the rule is that each party (i.e., the patent proprietor and the opponent) must bear the costs it incurs.135 An exception to this principle is if the Board, for reasons of equity, decides on a different apportionment of costs.136
Before the Boards of Appeal, the party seeking a different apportionment of costs must file a request.137 Eligible costs include those incurred because a party amended its appeal case at a late stage of the proceedings, because a party’s behavior interfered with the timely and efficient conduct of oral proceedings, or because there has been an abuse of procedure.138
The Board may decide on the apportionment of the costs by indicating a percentage of the costs to be borne or by expressing a specific sum.139 If the total is not already fixed by the Board in the order of the decision as a specific sum, it is subsequently determined in a separate procedure for fixing the costs.140 Eligible costs include, for example, those charged to a party by its professional representative and those of witnesses or experts paid by a party. However, such costs must always be necessarily and reasonably incurred.141
The final cost orders of the Boards of Appeal (or the EPO) are directly enforceable in the Contracting States. They are equivalent to final decisions given by a civil court of the state in which enforcement is to take place.142