Oppositions (7) – Grounds of appeal

In this article we will look at the general nature of an appeal and the early stages, before going on in future articles to look at specific points for the patentee and opponent.

As discussed in the previous article an appeal from an opposition decision is available to either the patentee or opponent if they have been adversely affected by the decision.  In opposition appeals it is therefore possible for one or both parties to file an appeal, but the initial procedure is the same.  Each party's grounds of appeal deals only with their own case as to why the decision was incorrect, but not any arguments against any appeal the other side may make.  Subsequent to the grounds of appeal each side is invited to reply to the other side's appeal, which is the stage at which a party responds.  If a party to the opposition has not appealed, they are a party as-of-right and will still be invited to respond to the other side's appeal.  Not filing an appeal does not therefore limit a party's chances to argue, although they cannot (except in very limited circumstances) place themselves in a better position than the opposition decision.

The grounds of appeal must be filed within four months of notification of the decision in writing, and must include the appellant's complete case.  In particular, the grounds of appeal must explain why the appealed decision should be set aside and the facts and evidence on which the appeal is based.  It is not enough to simply repeat previous arguments, but rather the decision must be addressed and arguments made why it is incorrect. The boards of appeal are becoming much more rigorous in not reviewing any aspect of a decision which is not addressed in the grounds of appeal.

An appeal can only be based on the decision under appeal and the associated documents. It is not therefore generally possible to add new prior art, arguments, or requests at this stage.  There has been a gradual tightening of this aspect of procedure over the years towards appeals becoming far more a review of the decision, rather than a re-hearing of the case.  This culminated in new rules of procedure that the boards of appeal adhere to which entered force in January 2020 and formalised a much more restrictive approach. The grounds of appeal are often described as the first stage of convergence as the scope of the case is limited by the decision under appeal. As the appeal progresses subsequent stages of convergence are reached which further limit the ability to amend a case.

Any parts of the grounds of appeal that are not directed to the submissions on which the decision was based is considered an amendment, which is only admissible under restricted circumstances. It is therefore essential that the first instance proceedings, and the grounds of appeal, include everything on which the appellant might need to rely on. However, if there are new aspects to a case which have arisen since the opposition decision, or which could not be submitted earlier (for example there was a late amendment permitted during oral proceedings), the details must be included in the grounds of appeal as otherwise they will be completely lost. Full reasons justifying the submissions, why they could not have been made earlier, as well as an explanation how the new aspects overcome issues raised, and why they do not create new issues, must be given.  The board will then consider whether to admit the new details based on the particular facts of the case.

The new rules of procedure were intended to streamline the appeal process to make it more efficient.  One area of focus was avoiding cases bouncing between the opposition division and boards of appeal. For example, if a patent was revoked on grounds of novelty and a board of appeal reversed that decision, the board would often then remit the case to the opposition division for consideration of other grounds such as inventive step that had not yet been discussed in first instance.  Those other grounds could lead to a further appeal drawing out the overall proceedings for a great length of time.  

The new rules of procedure seek to avoid this by only permitting remittal if there are special reasons.  Recent decisions suggest this situation may be a special case justifying remittal, but there have also been plenty of decisions where the board has considered inventive step, even though that ground had not been considered in the decision under appeal.  To ensure they are not taken by surprise, and lose arguments, parties should be prepared for the board to consider all aspects of an opposition and to file against additional objections the board may consider.  Those arguments are most likely to be a repeat of those made in opposition, but they should be included in the grounds of appeal to avoid any risk of them being lost for example by relying on a reference.

Over the next few weeks we will look at specific aspects of the grounds of appeal for the patentee and opponent.

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