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Practical approaches to appeals before the European Patent Office

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

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Practical approaches to appeals before the European Patent Office

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  1. Practical approaches to appeals before the European Patent Office Paul Chapman Elizabeth Crooks

  2. 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

  3. 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

  4. What are the boards of appeal? • 24 technical Boards of Appeal • Legal Board • Disciplinary Board • Enlarged Board

  5. What are the boards of appeal? • Technical Board of Appeal • 2 technically qualified members • 1 legally qualified members

  6. What decisions can be appealed? • Receiving section • Examining Division • Opposition Division • Legal Division

  7. Who can appeal? • Any party to the proceedings adversely affected by a decision

  8. 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

  9. 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

  10. 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

  11. 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

  12. 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

  13. 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?

  14. 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?

  15. General procedure and Timings • What happens next? - Respondents set term for response - “Black Hole” - Communication from the Board, opinion or summons

  16. Oral Proceedings • Where? - Munich • How long? - One day to one week(?) • When do you receive decision - That day

  17. 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

  18. Oral Proceedings • Procedure - Are all issues discussed? - What happens at end of appeal?

  19. 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

  20. 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?

  21. Special Considerations • What is the expert for? - Establishing what was known in the art? - Refuting statements by the other side?

  22. 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?

  23. Thank You Any Questions?

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