Oppositions (6) – The decision and appeal

At the end of oral proceedings in opposition the decision is announced verbally and becomes binding, but does not include any reasons.  Those reasons are communicated in the written decision which can take a few months to be issued.  The opposition division's written decisions are generally comprehensive and include an explanation of each party's case leading to a reasoned explanation of the final view of the opposition decision.  The decision will only cover those topics and requests that were discussed in the oral proceedings and does not comment on anything not discussed.  As explained in the previous article, oral proceedings move through the issues sequentially and so it is not unusual for some arguments and requests not to be discussed. For example, if a patent is revoked on added matter, novelty and inventive step may never be discussed.  If those other issues were discussed in the preliminary opinion, but not at the oral proceedings, the opposition division's preliminary opinion remains merely an opinion and not a decision.

The opposition division also issues minutes of the oral proceedings which in theory recount everything that happened during the oral proceedings.  However, the quality of the minutes is highly variable and ranges from "The parties discussed novelty." through to a nearly verbatim recollection of the discussion.  

It is very rare that the minutes are actually relied-upon in later proceedings, so although they can look a bit odd this rarely has an effect. It is possible to request correction of the minutes so they should always be reviewed to ensure there are no errors that contradict anything said by the parties, or that any specific points that may be important are included. The main use of the minutes is to demonstrate to the Boards of Appeal what was, or was not, discussed in the oral proceedings.  The scope of appeals is limited to issues that were discussed and decided at the oral proceedings, so if it can be shown that an argument was not maintained by a party at the oral proceedings the argument may not be available on appeal.

Notification of the written decision starts the two-month period for filing a notice of appeal.  Appeals are available to any party (in the case of an opposition the patentee or opponent) who was adversely affected by the Decision.  A patentee therefore has a right of appeal if the patent was maintained in amended form or revoked (but not if it was maintained as granted), and an opponent has a right of appeal if the patent was maintained as granted or in amended form (but not if it was revoked in its entirety).  A non-appealing patentee or opponent becomes a party 'as of right' to the appeal proceedings as a respondent, and has full rights of participation, but cannot seek to put itself in a better position compared to the decision (except for one extremely narrow exception).

A notice of appeal must be filed within two months of notification of the decision. This can be accompanied by the grounds on which the appeal is based, or the grounds must be filed within four months of notification of the decision.

If no appeal is filed, the opposition decision becomes final and the patent is maintained or revoked as set out in the written decision.  If the claims were amended the decision is only an interim decision until the patentee files translations of the claims into the other two official languages and pays the fee for publishing a new specification.

If the patent is maintained in amended form, it may then be necessary to update the translations at national patent offices dependent on the relevant national laws.

We will continue this series looking at the stages of appeal through to a final decision.

This article is a part of our EPO Practice and Peculiarities series. Click here to explore.