Reviewing the annual report of the EPO’s Boards of Appeal
The Boards of Appeal of the European Patent Office have issued their annual report for the year ending 2018. We have picked out a few points below that may be of interest to applicants.
Five-year plan to improve timeliness and reduce backlog
The Boards of Appeal have begun a five-year plan aiming to settle 90% of appeal cases within 30 months of receipt and reduce the number of pending cases to less than 7000 by 2023. While over 2018 there was a 20% increase in the number of cases settled, there are currently more than 10,0000 pending appeal cases and the backlog has continued to increase. This is because of a rise in the number of appeals filed in 2018.
But we note that the Boards of Appeal are due to increase the number of technical personnel by one third by 2020. This means there is a good chance of the backlog being reduced and the five-year plan might be achievable, which will be welcome for all parties.
Appeals from the EPO’s examining division
The Boards of Appeal hear appeals from the examining division – in almost all cases these are appeals against a decision by the examining division to refuse a patent application. Of the appeals settled by a decision from the Boards of Appeal, about 35% are successful, leading either to grant of a patent or a return to examination for considering further issues, and about 65% are dismissed. This percentage has increased over the last 5 years – the Boards of Appeal only dismissed 55% of appeals in 2014. This does not include the many appeal cases that are withdrawn by applicants before a decision is made.
There has been a trend in recent years of the Boards of Appeal becoming stricter on procedural matters, such as whether late-filed facts and evidence can be admitted into proceedings, and the Boards stressing that the appeal process is not another round of prosecution but should be focused on whether the first-instance decision to refuse was correct.
But we suspect that the rise in the rate of dismissal is likely due to more appeals being filed on weaker cases. There can be value in appealing a decision to refuse, even if the appeal is not ultimately successful. This is because the appeal has a ‘suspensory’ effect on a decision to refuse and so the application remains technically pending. This means that the applicant can postpone a decision on whether to file divisionals. Also it generates uncertainty in third parties because third parties cannot be sure on the outcome of an appeal, possibly causing them to delay launching infringing products until the appeal process is finished.
Appeals from the EPO’s opposition division
The Boards of Appeal also hear appeals from the opposition division but the statistics are more difficult to interpret because no distinction is drawn between appeals by patent proprietors and appeals by opponents. But we can see that there has been an increase of 20% in the number of opposition appeal cases settled by a decision of the Boards of Appeal, consistent with the overall trend at the Boards of Appeal.
Over the past few years the EPO has introduced measures to speed up the first-instance examination and opposition processes. But with large backlogs before the Boards of Appeal it meant that a final outcome could still be many years away. For example, the benefits of an EPO opposition division issuing a decision in 15 months are wiped out if the appeal process will take many more years. It is good to see that this bottleneck is being addressed.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.