Master of Intellectual Property Law Introduction to the European Patent Convention

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© Thierry Debled, CEIPI, 2011-2012

Master of Intellectual Master of Intellectual

Property LawProperty LawIntroduction to the European Patent Introduction to the European Patent

ConventionConvention

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Outline

• Introduction to European Patent LawIntroduction to European Patent Law• Fundamentals of European Claim Drafting Fundamentals of European Claim Drafting

and interpretationand interpretation• Opposition and AppealOpposition and Appeal

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Part IPart I

Thierry DebledEuropean Patent Attorney

Introduction to European Introduction to European Patent LawPatent Law

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Outline

• Europe ?• History• Legal Resources• Interpretation of the EPC• Structure of the EPC• The Institutions• Substantial Patent Law (Patentability)• Common Provisions

•OutlineOutline•Europe•History•Legal Resources•Interpretation•Structure•Institutions•Patentability•Common

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Europe ?

• European Union• About 500 million inhabitants • Union of 27 independent member states• Unlike PRC, India, USA, Russian Federation,

…• No Common Law for all the Member States• In particular: 27 different patent laws !

•OutlineOutline•EuropeEurope•History•Legal Resources•Interpretation•Structure•Institutions•Patentability•Common

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History (1)

• Individual nature of the national IP laws regarded as an obstacle for the economic development of Europe.

• Attempts/discussions to create an Union on IP have started in 1949 with the Longchambon plan

• All attempts have failed until…

•Outline•Europe•HistoryHistory•Legal Resources•Interpretation•Structure•Institutions•Patentability•Common

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History (2)

• The Härtel proposal (1962):- Common Proceedings until grant - then split into national patents (governed by the national Laws of the Member States)

• Still today: core principle of the European Patent Convention !


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History (3)

• European Patent Convention

• Munich Diplomatic Conference 1973

• Entry into force Oct. 7, 1977

• Second Diplomatic conference Nov. 29, 2000: significant revision

• Entry into force: Dec. 13, 2007

• Reference to EPC1973 or EPC2000


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Europe ?• European Patent Organization• EU + Switzerland

LichtensteinMonacoTurkey IcelandCroatia NorwayMacedoniaSan MarinoAlbaniaSerbia

•OutlineOutline•EuropeEurope•History•Legal Resources•Interpretation•Structure•Institutions•Patentability•Common

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RS

AL

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Legal Resources (1)

• European Patent Convention (EPC2000)• Set of 175 articles (1-178) +

– Implementing Regulations– Protocol on Recognition– Protocol on Privilege and Immunities– Protocol on Centralisation– Protocol on Interpretation of Art. 69– Protocol on staff complement

• Integral part of the EPC (Art. 164)

•Outline•Europe•History•Legal ResourcesLegal Resources•Interpretation•Structure•Institutions•Patentability•Common

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Legal Resources (2)

• Decisions/Opinions of the Enlarged Board of Appeal of the EPO

• Decisions of the Boards of Appeal of the EPO

• Legal Advices from the EPO• Guidelines for Examination at the EPO• Ancillary Regulations to the EPC• Decisions of the President of the EPO


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Legal Resources (3)

• National Patent/IP Laws• Community Laws (Regulations, Directives)• International Agreements

(London agreement, Patent Cooperation Treaty, Vienna Convention…)


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Interpretation of the EPC (1)

• Principles of the Vienna Convention on the Law of Treaties– (see OJ EPO, 1984, pp.193-197)– http://untreaty.un.org/ilc/texts/instruments/

english/conventions/1_1_1969.pdf– Accession by MK on July 8, 1999– Not "directly" applicable to the EPC

• entry into force: 27 Jan 1980 (Art. 84 VC)• non-retroactivity (Art. 28 VC)

– Applicable anyway ! (G5/83, points 3-5)

•Outline•Europe•History•Legal Resources•InterpretationInterpretation•Structure•Institutions•Patentability•Common

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• G5/83 summarises Art. 31 VC• (1) Treaty must be interpreted in good faith. • (2) Terms shall be given ordinary meaning. • (3) The context, for this purpose, is the text

(including the Preamble and Implementing Regulations) and any agreement made between all the parties in connection with the conclusion of the treaty (e.g. the Protocol to Article 69 EPC).


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Interpretation of the EPC (3)• G5/83

• (4) Also to be taken into account: - any subsequent agreement regarding interpretation or application. - any subsequent practice establishing agreement of the parties. - any relevant rules of public international law.

• (5) Preparatory documents and circumstances.


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• Elements outside of the EPC– Principles of procedural law generally recognized

in the Contracting States (Art. 125)

• Good faith• Equality of treatment of parties• Exclusion of the “Reformatio in peius”• Exclusion of “double patenting”


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The European Patent Convention (1)

I. General and Institutional Provisions– Functioning of the EPO

II. Substantive Patent Law– Patentability– Right to the patent– Effect of the Patent / patent application– Patent as an object of property

•Outline•Europe•History•Legal Resources•Interpretation•StructureStructure•Institutions•Patentability•Common

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III. The European Patent Application– Filing and requirements of the application– Priority

IV. Procedure up to grantV. Opposition and Limitation ProcedureVI. Appeals ProcedureVII. Common Provisions

– Common provisions re. procedure– Information to the public– Representation


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VIII. Impact on National Law– Conversion– Revocation and prior rights– Priority

IX. Special Agreement

X. PCTXI. Transitional Provisions (deleted)

XII. Final Provisions


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The Institutions (1)

European patent European patent OrganisationOrganisation

Art. 4

Executive BodyExecutive Body

European Patent European Patent OfficeOffice

Art. 4.2.a)

Administrative Administrative CouncilCouncil

Art. 4.2.b)

Art. 4.3

Legislative BodyLegislative Body

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The Task of the Organisation shall be to grant The Task of the Organisation shall be to grant European Patent.European Patent.


Art. 4.2.a)


Art. 4.2.b)

Art. 4.3


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This shall be This shall be carried out by the carried out by the European Patent European Patent

OfficeOffice


Art. 4.2.b)

Art. 4.3

The Task of the Organisation shall be to grant The Task of the Organisation shall be to grant European Patent.European Patent.•Outline

•Europe•History•Legal Resources•Interpretation•Structure•InstitutionsInstitutions•Patentability•Common

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The Task of the Organisation shall be to grant The Task of the Organisation shall be to grant European Patent.European Patent.

This shall be This shall be carried out by the carried out by the European Patent European Patent

OfficeOffice

Supervised by Supervised by the the

Administrative Administrative Council.Council.

Art. 4.3


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Art. 4


Art. 4.2.a)


Art. 4.2.b)

Art. 4.3


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Art. 4.2.b)


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Art. 4.2.b)

Representatives of the Representatives of the Contracting StatesContracting States

Art. 26 Art. 27

ChairmanChairmanDeputyDeputy(Board)(Board)

Chairman: Mr. Kongstad (DK)Chairman: Mr. Kongstad (DK)

Deputy: Mr. Miklós BENDZSEL (HU)Deputy: Mr. Miklós BENDZSEL (HU)


Provisions

Mr Safet EMRULI, Director, State Mr Safet EMRULI, Director, State Office of Industrial Property Office of Industrial Property

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• Competence (Art. 33)– Amend the EPC to bring [it] into line with an

international treaty relating to patents or European Community legislation relating to patents

– amend time limits of the EPC;– amend the Implementing Regulations;– rules relating to fees;– …


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Art. 4


Art. 4.2.a)


Art. 4.2.b)

Art. 4.3


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Art. 4.2.a)


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Art. 4.2.a)

5 Vice-presidents5 Vice-presidents

Art. 10.2.(i) and Art.10.3

PresidentPresident

Art. 10

6818 Employees6818 Employees

Art. 10.2.(i) and Art.10.2.(f)

Enlarged Enlarged Board Of Board Of AppealAppeal

Art. 22

Boards Of Boards Of AppealAppeal

Art. 21


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PresidentPresident

Peter Vermeij Directorate-General Operational Support

Raimund LutzDirectorate-General Legal/International

Affairs

Brian McGinleyDirectorate-General Administration

Guillaume Minnoye (BE)Directorate-General OperationsDirectorate-General Operations

Wim van der EijkDirectorate-General Appeals

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Patentability (1)

• Art. 52(1) – European patents shall be granted for any

inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application.

•Outline•Europe•History•Legal Resources•Interpretation•Structure•Institutions•PatentabilityPatentability•Common

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Patentability (2)• Inventions ? No definition but…• Art 52(2)

– The following in particular shall not be regarded as inventions within the meaning of paragraph 1:(a) discoveries, scientific theories and mathematical methods;(b) aesthetic creations;(c) schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers;(d) presentations of information.


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Patentability (3)• Certain inventions cannot be patented• Art. 53

European patents shall not be granted in respect of: (a) inventions the commercial exploitation of which would be contrary to "ordre public" or morality; such exploitation shall not be deemed to be so contrary merely because it is prohibited by law or regulation in some or all of the Contracting States; (b) plant or animal varieties or essentially biological processes for the production of plants or animals; this provision shall not apply to microbiological processes or the products thereof;(c) methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body; this provision shall not apply to products, in particular substances or compositions, for use in any of these methods.


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Patentability (4)

• Novelty• Art. 54

(1) An invention shall be considered to be new if it does not form part of the state of the art.(2) The state of the art shall be held to comprise everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the European patent application.


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Patentability (5)

• Novelty• Art. 54

(3) Additionally, the content of European patent applications as filed, the dates of filing of which are prior to the date referred to in paragraph 2 and which were published on or after that date, shall be considered as comprised in the state of the art.


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Patentability (6)• Novelty• Art. 54

4) Paragraphs 2 and 3 shall not exclude the patentability of any substance or composition, comprised in the state of the art, for use in a method referred to in Article 53(c), provided that its use for any such method is not comprised in the state of the art.(5) Paragraphs 2 and 3 shall also not exclude the patentability of any substance or composition referred to in paragraph 4 for any specific use in a method referred to in Article 53(c), provided that such use is not comprised in the state of the art.


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Patentability (7)

• Inventive Step• Art. 56

An invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art. If the state of the art also includes documents within the meaning of Article 54, paragraph 3, these documents shall not be considered in deciding whether there has been an inventive step.


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Patentability (8)

• Industrial Application• Art. 57

An invention shall be considered as susceptible of industrial application if it can be made or used in any kind of industry, including agriculture.


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Common Provisions

• Pillars of the EPC:– Right to be heard

(right to know - right to comment) (Art. 113 (1) EPC)

– Principle of inquisitorial proceedings(Art. 114 EPC)

– Right to control the proceedings(Art. 113 (1) EPC)

•Outline•Europe•History•Legal Resources•Interpretation•Structure•Institutions•Patentability•Common Common

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Part IIPart II


Fundamentals of European Fundamentals of European Claim Drafting and Claim Drafting and

interpretationinterpretation

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Outline

• Function of the claims• Categories and kinds• Form of the claims• Interpretation• Wording of the claims

•OutlineOutline•Function•Categories•Form•Interpretation•Wording

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Functions of the claims (1)

• Art. 84The claims shall define the matter for which protection is sought.

• Rule 43(1)The claims shall define the matter for which protection is sought in terms of the technical features of the invention.

•Outline•FunctionFunction•Categories•Form•Interpretation•Wording

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InventorInventor PublicPublic

InformationInformation

MonopolyMonopoly

NovelNovel

InventiveInventive

Industrial Industrial Appl. Appl.


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Functions of the claims (2)

• Art. 84• Rule 43(1)• Art. 69 (1)

The extent of the protection conferred by a European patent or a European patent application shall be determined by the claims. Nevertheless, the description and drawings shall be used to interpret the claims.


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Categories and Kinds (1)

• Categories (Rule 43(2), GL C-III-3.1)– Physical entity:

product, object, apparatus, device, compound, composition, …

– Activity:process, use, …

•Outline•Function•CategoriesCategories•Form•Interpretation•Wording

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• Kinds– Independent

Essential feature of the inventionOnly one independent claim in each category (exceptions) (Rule 43(2), GL C-III-3.2)

– DependentA claim which includes all the features of any other claim (Rule 43(4))Particular embodiments (GL C-III.3.4Reference to another dependent claim and multi-dependency is admissible


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• The following are examples of typical situations falling within the scope of the exceptions from the principle of one independent claim per category:– (i) examples of a plurality of inter-related products

(Rule 43(2)(a)):• plug and socket;• transmitter – receiver;• intermediate(s) and final chemical product;• gene – gene construct – host – protein – medicament;


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– (ii) example of a plurality of different inventive uses of a product or device (Rule 43(2)(b)):

• claims directed to second or further medical uses when a first medical use is known (see IV, 4.8);

– (iii) examples of alternative solutions to a particular problem (Rule 43(2)(c)):

• a group of chemical compounds;• two or more processes for the manufacture of such

compounds.


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Form of the claims (1)

• Preferably: “two-parts” form (Rule 43(1)) with as first part– (a) a statement indicating the designation of the

subject-matter of the invention and those technical features which are necessary for the definition of the claimed subject-matter but which, in combination, form part of the prior art

– Sometimes called: the “preamble”

•Outline•Function•Categories•FormForm•Interpretation•Wording

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• The first part should contain a statement indicating "the designation of the subject-matter of the invention" i.e. the general technical class of apparatus, process, etc. to which the invention relates. (GL C-III-2.2)

• Ex. :– A photographic camera…– A refractory nozzle...


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• Preferably: “two-parts” form (Rule 43(1)) with as second part– (b) a characterising portion, beginning with the

expression "characterised in that" or "characterised by" and specifying the technical features for which, in combination with the features stated under sub-paragraph (a), protection is sought.

– Sometimes called: the “characterizing part”


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Form of the claim (4)

• Sometimes, two-part form unsuitable– (i) combination of known integers of equal status,

the inventive step lying solely in the combination;– (ii) modification of, as distinct from addition to, a

known chemical process e.g. by omitting one substance or substituting one substance for another; and

– (iii) complex system of functionally inter-related parts, the inventive step concerning changes in several of these or in their inter-relationships.


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Form of the claim (5)

• Sometimes, two-part form unsuitable• In such cases, one-part form is admissible

(GL. C-III-2.3) • Then, the description should clearly indicate

the characteristics known from the prior art


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• Example• Prior art:

Nozzle comprising a cylindrical body and a square head located at one end of the body. The head comprises flat upper and lower faces. The lower face of the head is connected to the body. The cylindrical body is provided with an axial bore. The head is provided with an orifice in fluid communication with the body bore.


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• Improvement:• The edges of the head lower face are

truncated. • Draft an independent claim (using the two-

part form).


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Interpretation of the claims

• GL C-III-4.2• Each claim should be read giving the words

the meaning and scope which they normally have in the relevant art, unless in particular cases the description gives the words a special meaning, by explicit definition or otherwise.

•Outline•Function•Categories•Form•InterpretationInterpretation•Wording

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Wording of the claims (1)

• Functional Features (GL C-III-6.5)• Technical features can be defined

– Structurally (definition of the structure of the element)

• Example: “a cylindrical body”

– Functionally (definition of the function of the element)

• Example: “means for the transfer of molten material …”

– Parameters– Product by Process

•Outline•Function•Categories•Form•Interpretation•WordingWording

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• Functional Features (GL C-III-6.5)• Admissible if the skilled reader would

appreciate that means other than those disclosed in the application could be used for the same function.


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• Optional Features (GL C-III-4.9)– Expressions like "preferably", "for example", "such

as" or "more particularly“ should be looked at carefully to ensure that they do not introduce ambiguity.

– Expressions of this kind have no limiting effect on the scope of a claim; that is to say, the feature following any such expression is to be regarded as entirely optional.


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• Relative terms (GL C-III-4.6)It is preferable not to use a relative or similar term such as "thin", "wide" or "strong" in a claim unless the term has a well-recognised meaning in the particular art, e.g. "high-frequency" in relation to an amplifier, and this is the meaning intended.


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• Relative terms (GL C-III-4.6)An unclear term cannot be allowed in a claim if the term is essential having regard to the invention.

Equally, an unclear term cannot be used by the applicant to distinguish his invention from the prior art.


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• Terms like “about” and “approximately”(GL C-III-4.7

Particular attention is required whenever the word "about" or similar terms such as "approximately" are used.

Admissible only if the meaning is sufficiently clear in the context of the application read as a whole.

However, the word can only be permitted if its presence does not prevent the invention from being unambiguously distinguished from the prior art with respect to novelty and inventive step.


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• Apparatus for … (GL C-III-4.13)– If a claim commences with such words as:

"Apparatus for carrying out the process etc..." this must be construed as meaning merely apparatus suitable for carrying out the process. Apparatus which otherwise possesses all of the features specified in the claims but which would be unsuitable for the stated purpose or would require modification to enable it to be so used, should normally not be considered as anticipating the claim.


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• Apparatus for … (GL C-III-4.13)– Similar considerations apply to a claim for a

product for a particular use. For example, if a claim refers to a "mold for molten steel", this implies certain limitations for the mold. Therefore, a plastic ice cube tray with a melting point much lower than that of steel would not come within the claim.


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• Apparatus for … (GL C-III-4.13)– Similarly, a claim to a substance or composition

for a particular use should be construed as meaning a substance or composition which is in fact suitable for the stated use; a known product which prima facie is the same as the substance or composition defined in the claim, but which is in a form which would render it unsuitable for the stated use, would not deprive the claim of novelty.


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• Apparatus for … (GL C-III-4.13)– However, if the known product is in a form in

which it is in fact suitable for the stated use, though it has never been described for that use, it would deprive the claim of novelty.


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• “Method for …” (GL C-III-4.13)– In contrast to an apparatus or product claim, in

case of a method claim commencing with such words as: "Method for remelting galvanic layers" the part "for remelting ..." should not be understood as meaning that the process is merely suitable for remelting galvanic layers, but rather as a functional feature concerning the remelting of galvanic layers and, hence, defining one of the method steps of the claimed method.


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• Product by process (GL C-III-4.12)– Claims for products defined in terms of a process

of manufacture are allowable only if the products as such fulfil the requirements for patentability, i.e. inter alia that they are new and inventive.

– A product is not rendered novel merely by the fact that it is produced by means of a new process.

– A claim defining a product in terms of a process is to be construed as a claim to the product as such.


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• Product by process (GL C-III-4.12)– The claim may for instance take the form "Product

X obtainable by process Y". Irrespective of whether the term "obtainable", "obtained", "directly obtained” or an equivalent wording is used in the product-by-process claim, it is still directed to the product per se and confers absolute protection upon the product.


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• “Comprising” vs. “Consisting” (GL C-III-4.21)– In drafting patent claims, the word "comprise" is to

be interpreted by the broad meaning "include", "contain" or "comprehend". (open)

– If a claim for a chemical compound refers to it as "consisting of components A, B and C" by their proportions expressed in percentages, the presence of any additional component is excluded and therefore the percentages should add up to 100%.


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Opposition and AppealOpposition and Appeal

Part III. Part III.


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Outline• Opposition

– Principles– Opponent– Grounds– Procedure– Decision

• Appeal– Principles– Procedure– Board of Appeals and Enlarged Board of Appeal– Case Law– Petition for Review

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Opposition - Principle

• The public may oppose a granted European patent on the basis of one or more grounds (mentioned in Art. 100).

• Art. 99 (1)Within nine months of the publication of the mention of the grant of the European patent in the European Patent Bulletin, any person may give notice to the European Patent Office of opposition to that patent, in accordance with the Implementing Regulations.

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• The grounds on which the opposition is based may arise for example from circumstances of which the EPO was not aware when the patent was granted (e.g. prior use or a publication which was not contained or not found among the material available to the EPO).

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• Opposition is therefore a means by which any person may obtain the limitation or revocation of a wrongly granted patent.

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• The opposition applies to the European patent in all the Contracting States in which that patent has effect. (Art. 99 (2))

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• The effect of an opposition may differ as between Contracting States. This may arise where the claims must take account of different art under the provisions of Art. 54(3) and (4).

• Thus the patent may be differently amended in respect of different Contracting States and may be revoked in respect of one or more Contracting States and not in respect of others.

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Opposition – Opponent

• The opponent:– any person (Art. 99 (1))– becomes party to the opposition proceedings (Art.

99(2)). – must be identified (Rule 76 (2) b.)– straw-man ? (G4/97)– Intervention of the assumed infringer (Art. 105)

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Opposition – Grounds (Art. 100)

• Opposition may only be filed on the grounds that:

(i) the subject-matter of the European patent is not patentable within the terms of Art. 52 to 57, because it

•is not new (Art. 52(1), 54, 55),•does not involve an inventive step (Art. 52(1), 56),•is not susceptible of industrial application (Art. 52(1), 57),

•is not regarded as an invention under Art. 52(1) to (3), or

•is not patentable under Art. 53;

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(ii) the European patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art (cf. Art. 83);

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(iii) the subject-matter of the European patent extends beyond the content of the application as filed, or, if the patent was granted on a divisional application or on a new application filed in accordance with Art. 61 (new application in respect of the invention by the person adjudged in a final decision to be entitled to the grant of a European patent), beyond the content of the earlier application as filed (cf. Art. 123(2)).

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Opposition - Procedure

• Time Limit: 9 months from the publication of the mention of the grant (Art. 99 (1))

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• Filing of the opposition brief and payment of the opposition fee (705 EUR)

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Opposition - Procedure• Form and content of the opposition (R. 76)

(1) Notice of opposition filed in a written reasoned statement.

(2) The notice of opposition shall contain:(a) particulars of the opponent

(b) the number/title of opposed patent, name of proprietor ;

(c) statement of the extent to which the EP opposed and of the grounds + indication of the facts and evidence presented in support

(d) particulars of representative (if any).

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• Examination for deficiencies– Deficiencies which, if not remedied, lead to the

opposition being deemed not to have been filed• Opposition fee not paid• Notice of opposition unsigned• Missing Authorization• Language issue

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• Examination for deficiencies – If opposition deemed to have been filed– Deficiencies which, if not remedied (within 9

month period), lead to the opposition being rejected as inadmissible Rule 77 (1)

• Opposition filed after expiry of the nine-month period or filed at wrong place

• Insufficient identification of the opposed patent• No statement of the extent of the opposition• No statement of the ground• No indication of the facts, evidences• No indications about opponent identity

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• Examination for deficiencies – If opposition deemed to have been filed– Deficiencies which, if not remedied on time, lead

to the opposition being rejected as inadmissible Rule 77 (2)

• Formally incorrect statement of name, address and nationality of opponent or its representative

• No indication of the opposed patent number, title or proprietor

• Problem of representation• Formal aspects of the documents

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• The formalities officer submits the files to the competent directorate as soon as possible.

• The director responsible will then designate the three technical members of the competent Opposition Division.

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• Opposition Division• An Opposition Division consists of three

technical examiners, at least two of whom must have taken no part in the proceedings for grant of the patent to which the opposition relates (Art. 19 (2)).

• Might be enlarged by the addition of a legally qualified examiner who has taken no part in the proceedings for grant.

• Chairman (technically qualified)

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• Invitation to the proprietor of the patent to submit comments (Art. 79(1)) and communication of opposition to the other parties concerned (Art. 79 (2)).

• Deadline: generally 4 months

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• Proprietor can– submit comments

• challenge admissibility

• contest opponent’s arguments

– file amendments• Only admissible if required to overcome a ground for

opposition (T127/85)

– request oral proceedings– wait for the opinion of the opposition division– abandon the patent (withdraw approval of text)

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• In examining the opposition, the Opposition Division will invite the parties, as often as is necessary, to clarify the substance of the case, to file observations on communications from another party or issued by itself. (Art. 100(1))

• Submissions are communicated to all other parties

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• Oral Proceedings (Art. 116)• If oral proceedings have to be arranged, the

parties must be summoned to them as quickly as possible at reasonable notice

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Opposition - Procedure• Summons• Together with the summons, the Opposition Division

will draw attention to and explain the points which need to be discussed for the purposes of the decision to be taken.

• Normally, the annex will also contain the provisional and non-binding opinion of the Opposition Division on the positions adopted by the parties.

• Date fixed up to which written submissions may be made (normally one month before the date of the oral proceedings).

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• Examination of opposition– Extent of the examination– Examination of the grounds– Confined within the scope of the notice of

opposition– … But Art. 114(1)

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Opposition - Decision

• The Opposition Division has to take a final decision on the opposition, by revoking the European patent or rejecting the opposition or ruling that the European patent is to be maintained as amended.

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• If the only admissible opposition or all the admissible oppositions are withdrawn and the Opposition Division takes the view that as the case stands there is no reason for the Office to continue the proceedings of its own motion, the proceedings are closed by means of a formal decision (Rule 84(2), second sentence).

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• If the Opposition Division is of the opinion that at least one ground for opposition as set out in Art. 100 prejudices the maintenance of the European patent, it will revoke the patent under Art. 101(2).

• Analogously, if the Opposition Division is of the opinion that the patent as amended during the course of the opposition proceedings does not meet the requirements of the Convention, it will revoke the patent under Art. 101(3)(b).

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Opposition - Decision• If the Opposition Division is of the opinion that the

grounds for opposition mentioned in Art. 100 do not prejudice the maintenance of the European patent unamended, it will reject the opposition.

• If the Opposition Division is of the opinion that, taking into consideration the amendments made by the proprietor of the patent during the opposition proceedings, the patent and the invention to which it relates meet the requirements of the EPC, it will issue a decision to maintain the European patent as amended.

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• Apportionment of costs (Art. 104(1))• Each party to the proceedings must bear the

costs it has incurred.• However, an Opposition Division may, for

reasons of equity, order a different apportionment of such costs, which may have been incurred during the taking of evidence, in oral proceedings or under other circumstances.

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• Statistics (EPO Annual Report 2009)• 4.7% of the granted European patents are

the subject of oppositions• 43.6 %: revoked• 30.1%: maintained amended• 26.3%: opposition rejected

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Appeal - Principle

• Decisions subject to appeal• Art. 106 (1)

An appeal shall lie from decisions of the Receiving Section, Examining Divisions, Opposition Divisions and the Legal Division. It shall have suspensive effect.

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Appeal - Principle

• Boards of Appeal are independent but part of the EPO

• Art. 21 (1)The Boards of Appeal shall be responsible for the examination of appeals from decisions of the Receiving Section, the Examining Divisions and Opposition Divisions, and the Legal Division.

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Appeal - Principle

• Composition of the Board depends on the appealed decision

• Legally or technically qualified members

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Appeal - Principle

• For appeals from decisions of the Receiving Section or the Legal Division, a Board of Appeal shall consist of three legally qualified members. (Art. 21(2)).

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Appeal - Principle

• For appeals from a decision of an Examining Division, a Board of Appeal shall consist of either:(a) two technically qualified members and one legally qualified member, or (b) three technically and two legally qualified members, or (c) three legally qualified members in all other cases. (Art. 21(3)).

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Appeal - Principle

• For appeals from a decision of an Opposition Division, a Board of Appeal shall consist of either(a) two technically qualified members and one legally qualified member; or(b) three technically and two legally qualified members. (Art. 21(4)).

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Appeal - Principle

• Exclusions and Objections (Art. 24)• In case of personal interest or previous

involvement (Art. 24(1))• Members of the Boards may be objected to

by any party (personal interest, previous involvement or suspicion of partiality) (Art. 24(3))

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Appeal - Principle

• Art. 106 (2)A decision which does not terminate proceedings as regards one of the parties can only be appealed together with the final decision, unless the decision allows a separate appeal

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Appeal - Principle

• Persons entitled to appeal (Art. 107)• Any party (possibly several parties) to

proceedings adversely affected by a decision may appeal.

• Any other parties to the proceedings shall be parties to the appeal proceedings as of right.

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Appeal - Principle

• Interlocutory revision (Art. 109)• (1) If the department whose decision is contested

considers the appeal to be admissible and well founded, it shall rectify its decision. This shall not apply where the appellant is opposed by another party to the proceedings.

• (2) If the appeal is not allowed within three months of receipt of the statement of grounds, it shall be remitted to the Board of Appeal without delay, and without comment as to its merit.

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Appeal - Procedure

• Time limits (Art. 108)• Notice of appeal :

to be filed within two months of notification of the decision (+ fee; 1180€)

• Appeal Brief : to be filed within four months of notification of the decision (written statement setting out the grounds of appeal)

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Appeal - Procedure

• Content of the notice of appeal• Rule 99(1):

(a) the name and the address of the appellant (b) an indication of the decision impugned; and(c) a request defining the subject of the appeal.

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Appeal - Procedure

• Content of the Appeal Brief• Rule 99(2):

- the reasons for setting aside the decision impugned, or - the extent to which it is to be amended, and

- the facts and evidence on which the appeal is based

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Appeal - Procedure

• The Board of Appeal shall invite the parties, as often as necessary, to file observations, within a period to be specified, on communications issued by itself or observations submitted by another party (Rule 100).

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Appeal - Procedure

• Examination of admissibility (R. 101)- nature of the decision- identity of appellant- time limits- content of the notice of appeal- content of the appeal brief

• In case of (unremedied) deficiency the Board of Appeal shall reject the appeal as inadmissible.

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Appeal - Procedure

• Basic Principles applied– Right to be heard (Art. 113)– Examination of its own motion (Art. 114)

to a limited extent !– Control of the proceedings by the Parties (extent

of the appeal, requests, …)

• Other General Principles– No reformatio in peius

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Appeal - Decision

• Art. 111 (1)• Following the examination as to the

allowability of the appeal, the Board of Appeal shall decide on the appeal.

• The Board of Appeal may either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further prosecution.

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Appeal - Decision

• Art. 111 (2)• In case of remittal for further prosecution, first

instances bound by the ratio decidendi of the Board of Appeal.

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Appeal - Decision• Form of decision of the Board of Appeal (Rule 102)

• The decision shall be authenticated by the Chairman of the Board of Appeal and by the competent employee of the registry of the Board of Appeal, either by their signature or by any other appropriate means. The decision shall contain:

(a) a statement that it was delivered by the Board of Appeal;(b) the date when the decision was taken;(c) the names of the Chairman and of the other members of the Board of Appeal taking part;(d) the names of the parties and their representatives;(e) the requests of the parties;(f) a summary of the facts;(g) the reasons;(h) the order of the Board of Appeal, including, where appropriate, a decision on costs.

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Appeal - Decision

• Reimbursement of the appeal fee (Rule 103)– interlocutory revision – or where the Board of Appeal deems an appeal

to be allowable, if such reimbursement is equitable by reason of a substantial procedural violation

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Appeal - Decision

D Disciplinary Board of AppealsG Enlarged Board of AppealsJ Legal Board of AppealsR decisions relating to petitions for reviewT Technical boards of appealW Decisions on protest cases

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Appeal - Decision

• 2010 Statistics – ± 2580 new appeals filed

2542 Technical appeal

± 20 Legal cases

± 20 Disciplinary cases

– 1961 Decisions

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Appeal - Decision

• The Decision of the Board of Appeal is final (no further appeal) but…

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Appeal - Petition for Review

• Petition for Review by the Enlarged Board of Appeal (Art. 112a)

• Any party to appeal proceedings adversely affected by the decision of the Board of Appeal may file a petition for review of the decision by the Enlarged Board of Appeal.

• Limited grounds

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• The petition may only be filed on the grounds that: (a) member of the Board of Appeal should have been excluded;(b) Board of Appeal included a person not appointed;(c) fundamental violation of Article 113;(d) fundamental procedural defect in the appeal proceedings; or(e) a criminal act may have had an impact on the decision.

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• No suspensive effect• Time limit (two months of notification of

decision)• Fee (2625 EUR)

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Appeal - Petition for Review• Introduced with EPC2000 (Dec. 13, 2007)• 2008: 11 petitions filed

– all have been withdrawn or rejected as inadmissible or not allowable

• 2009: 21 petitions filed– 20 cases have been withdrawn or rejected as inadmissible or not

allowable– R7/09: decision set aside

• 2010: 23 petitions filed– 21 have been withdrawn or rejected as inadmissible or not

allowable– R3/10: decision set aside– 1 is pending

• 2011: 21 petitions filed – 8 have been withdrawn or rejected as inadmissible or not allowable– 13 are pending

• 2012: 2 petitions filed – all are pending

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Appeal - Petition for Review• Introduced with EPC2000 (Dec. 13, 2007)

Year Petitions filed

Positive decisions

Negative decisions

Pending

2008 11 0 11 0

2009 21 1 20 0

2010 23 1 21 1

2011 21 0 8 13

2012 2 0 0 2

Total 78 2 60 16

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Enlarged Board of Appeal

• Art. 22(1) The Enlarged Board of Appeal shall be responsible for: (a) deciding on points of law referred to it by Boards of Appeal under Article 112;(b) giving opinions on points of law referred to it by the President of the European Patent Office under Article 112

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• Five legally and two technically qualified members.

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• In order to ensure uniform application of the law, or if a point of law of fundamental importance arises:– (a) the Board of Appeal shall, during proceedings

on a case and either of its own motion or following a request from a party to the appeal, refer any question to the Enlarged Board of Appeal if it considers that a decision is required for the above purposes.

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• In order to ensure uniform application of the law, or if a point of law of fundamental importance arises:– (b) the President of the European Patent Office

may refer a point of law to the Enlarged Board of Appeal where two Boards of Appeal have given different decisions on that question.

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• So far, more than 80 decisions or opinions• From Dec. 5, 1984

– G1/83, G5/83 and G6/83 (second medical indication)

• To Aug. 30, 2011– G2/10 Disclaimer

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• 3 referrals are pending before the Enlarged Board of Appeal

Documents

Master of Intellectual Property Law Introduction to the European Patent Convention