19/10/2023
When a patent application is refused by the European Patent Office (EPO), there is the option to appeal.
To pursue an appeal, one must file a notice of appeal and pay the appeal fee within two months of the written decision to refuse the application, and file a statement of grounds of appeal within four months of that decision. The application is then considered by the Boards of Appeal (BoA)
As the BoA are frequently at pains to stress, an appeal is not intended to be a complete re-examination of a case. Under the Rules of Procedure of the Boards of Appeal (RPBA), a party’s appeal case shall be directed to the requests, facts, objections, arguments and evidence on which the decision under appeal was based. Any part of a party’s case that does not relate to this is considered to be an amendment which will only be admitted into proceedings at the discretion of the BoA.
The result of this is that it can be very difficult to introduce new facts, evidence and claim amendments into appeal proceedings that were not filed during first instance proceedings. In the case of patent applications, the first instance proceedings are the proceedings before the Examining Division (ED). Furthermore, the chances of introducing new facts, evidence or amendments can become even more difficult as the appeal proceedings progress.
Despite this, the BoA have considerable discretion in raising new issues that were not raised in the first instance decision.
The BoA must issue a communication in preparation for oral proceedings. 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. This is intended to help in the preparation for oral proceedings. The BoA usually also give a preliminary opinion on the decisive points in such communications. The RPBA states that the BoA “shall endeavour to issue the communication at least four months in advance of the date of the oral proceedings”.
In our experience, when the BoA issues the communication in preparation for oral proceedings, they can undertake a complete re-examination of the application. For example, where an application may be refused by the ED on the sole ground of lack of inventive step (Art. 56 EPC), the BoA can allege that the claims: extend subject-matter beyond the content of the application as filed (Art. 123(2) EPC); lack sufficiency (Art. 83 EPC); lack clarity, conciseness and support (Art. 84 EPC); and lack novelty (Art. 54 EPC). In support of this, the BoA often cite Enlarged Board of Appeal decision G 10/93, which held that the BoA have the power to examine whether the application and the invention to which it relates meets the requirements of the EPC.
Furthermore, the BoA can issue the communication in preparation of oral proceedings extremely late, and much later than the target of at least four months prior to oral proceedings.
Recently we have experienced the BoA issuing such a communication a little over one month before the scheduled oral proceedings, in which they raise many more grounds for objection than were raised by the ED. This is despite the applicant’s grounds of appeal having been filed almost four years prior.
This can be extremely frustrating to the applicant and may put them in a very difficult position, in which they effectively have less than one month in which to reformulate their case, and in which to consider potentially filing new evidence and claim amendments. What may have been viewed as a relatively low-cost appeal dealing with a single issue, quickly becomes a considerably more complex and expensive appeal, which may not provide sufficient time to adequately address all the new issues that have been raised. What if, for example, the new issues raised by the BoA necessitate further experimentation to address?
Technically, at such a late stage of the appeal proceedings, any amendments to the applicant’s appeal case are not to be taken into consideration. However, the RPBA offer a limited exception if there are “exceptional circumstances, which have been justified by cogent reasons”. Although there are no guarantees, it is likely that the BoA’s decision to re-examine the case far beyond the issues which were subject of the initial appeal, would be considered exceptional circumstances.
With the above in mind, one must carefully consider whether appealing a decision from the ED may be the best approach.
Depending on the specific circumstances, another option may be to file a divisional application with claims of different scope to the parent application, which may be formulated to specifically address the reasons raised in the refusal from the ED.
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.
