10 Points on the EPO Boards of Appeal

These points are gleaned from a talk by Alexander Clelland (ex-head of a Board of Appeal) given at the CIPA Life Sciences Conference on 14 November 2013.

1. Statistics

There 28 Technical Boards of Appeal, as well as an Enlarged Board, Legal Board, Disciplinary Board and Legal Research & Admin Unit.  In 2012 a total of 2,659 appeals were filed and 2,071 were settled (i.e. decided or otherwise terminated).  On average ex parte appeals take 27 months and inter partes take 26 months.  However there are wide variations of 8 to 36 months depending on the workload of the Boards.  The average Board deals with 80 appeals per year.

2.  Backlogs of Appeal Cases

The backlog of appeals is increasing by about 600 a year and there is no immediate prospect of this decreasing.  The reason for this is that the number of appeals filed is increasing as more applications are filed. However the EPO does not wish to keep expanding indefinitely and so recruitment has been limited. The problem of ensuring uniformity of procedure and case law across the Technical Boards of Appeal. This would get more difficult if the number of Boards was increased.

Previous EPO President Alison Brimelow had the idea of ‘raising the bar’, i.e. improving the quality of granted patents.  This led to the theory that more Examiner rejections have led to more appeals, but not everyone thinks this is the case.

3.  Backlogs in the Area of Business Method Inventions

There are still many US originating patent applications being filed to subject matter which is not patentable in Europe, particularly business method inventions.  This is essentially considered a waste of time by the Boards and an area where the backlogs are highest.  The Boards were hoping that by ‘sitting’ on these long enough US applicants would get the message.  However that has not worked and appeals continue to be filed at the same rate for business method inventions.

4.  Possible Solutions for Decreasing the Backlog

Each appeal costs the EPO around €40,000.  Should the appeal fees be increased?

Should the first instance approach be changed to make better use of procedure (e.g. interlocutory revision)? So far this approach has not succeeded and there does not seem to be much scope for using it to reduce appeal backlogs.

Should the appeal procedure be streamlined? For example by:

- reducing or abolishing auxiliary requests or charging for them

- aggressive case management, e.g. no extensions, but this does not make sense unless the Boards also speed up

- appeals should not be a re-examination, so strictly limited to first instance decision, i.e. no new requests or documents, and perhaps even no new arguments.  This is already being implemented by Boards to different degrees.

5.  Uniformity Across Boards

Each Board has own character.  The Enlarged Board exists to improve uniformity in jurisprudence and Presidium has the task of keeping procedure in uniformity.

6. Divergence Across Boards

Boards differ in:

- providing opinions on patentability before Oral Proceedings

- actively debating with parties about the issues

- admitting late filed requests, documents or new arguments

- changing the hearing date (many Boards will not be sympathetic if another attorney is available at that firm)

- strictness on the issue of added matter (generally the Boards are becoming stricter, and it is very convenient for a Board to reject a case based on added matter).

7.  Best Practice for Attorneys

File everything as soon as possible in the appeal process, and be aware that after the initial filing of the appeal the Board’s discretion applies.  The attorney should be aware of the character of Board on such issues.  In general Boards are becoming much stricter on this. The criteria for exercising discretion are complexity of the late filed matter, the current state of the proceedings and the need for procedural economy.

Be aware of the possibility of requesting accelerated processing.  Clearly there are specific grounds for this, such as infringement, but sometimes Boards will be lenient towards accelerated processing for other reasons.

8.  General Advice for Patent Attorneys

Keep your submissions short, so that important points do not get lost in noise.  Being concise comes across better.  The Board will be alert to what you don’t seem to believe yourself (‘my client believes’).  It might be better to admit what can’t be denied.  Don’t come across as acting as post box.

Don’t call a Board member for advice.  A Board is not like an Examining Division in the way the members interact.  They have less informal contact with each other.  This is clearly not appropriate in inter partes cases. If you really need to call then the registrar for the case should be contacted, and they can contact Board members if required.

9. Changing Dates for Oral Proceedings

Request a change of date immediately if you need to, due to the shortage of hearing rooms at the EPO.  Tuesdays and Thursday are favourite days for a hearing as then you don’t need to travel at the weekend.  There needs to be 2 months 10 days notice for a change in date to be possible (based on the way room bookings work).

10.  Oral Proceedings General Points

Bear in mind providing interpreters is expensive for the EPO.  If you request translation you should use it.

The Boards are alert to US Patent Attorneys masquerading as technical experts, and are averse to US Patent Attorneys speaking.  However Boards can be lenient towards trainee European Patent Attorneys speaking.

Boards really do not like being faxed the night before about a party not turning up.  There have been cases of the EPO reporting Attorneys to the epi on disciplinary grounds for failing to turn up without informing the Board.

Ties and jackets are expected at Oral Proceedings.

You should address yourself to the Board, not another party.

The Boards are vigilant to use of recording devices during breaks which may hear what they are discussing in private whilst the parties have been sent out.

Ask for a break when needed.  Sometimes new arguments, documents or difficult questions need thinking time.

Using projection devices tends to be troublesome.  Try to do avoid having to do PowerPoint presentations using them.

You may also wish to see related posts Top 10 Tips for Success in EPO Appeals on Biotech Cases and Tips for Opposition Success.