Oppositions (13) – The Appeal Oral Proceedings

Usually the board of appeal is a three person panel comprising technically and legally qualified members, but it can be enlarged by the addition of technical or legal specialists if the case is particularly complex.

Up until the start of the COVID-19 pandemic, all appeal oral proceedings were held in person at the Boards of Appeal building in Haar, Germany. However, due to travel restrictions the Boards of Appeal have passed new rules permitting oral proceedings to be held by video conference, and while travel restrictions continue most proceedings are being held in this format. At the time of writing the EPO’s Enlarged Board of Appeal are considering a referral as to whether it is permissible to hold oral proceedings by video conference even if the parties do not give their consent. The outcome of this referral will define conduct going forwards.

The oral proceedings follow the same structure as during opposition, with each ground of opposition being considered in turn and decided sequentially. In many cases appeal proceedings are shorter than opposition proceedings because the issues have narrowed, but in others they can be significantly more complex as the relationship of the case to prior decisions is analysed and considered in detail.

The Boards of Appeal are being more pro-active in case management and will now often schedule more than one case to be heard together where the parties and issues are the same. For example, it is common for appeals concerning patents in the same family to be heard together (albeit they remain separate and independent cases).

At the end of the oral proceedings, a decision is announced which is immediately final. That decision may maintain, modify, or reverse the opposition decision. As with opposition decisions only brief or no reasons will be given, and a full written decision will be issued later. Where the decision agrees with the first-instance decision, or with the parties consent, the Board of Appeal can issue an abridged decision which simply refers to the earlier decision or includes basic details.

It is worth noting that a refund of 25% of the appeal fee is available until the final decision is taken. This means that an attentive party can withdraw their appeal in the period between the final topic being decided and the formal decision being announced. However, this should only be done if the decision is entirely against the party (ie their appeal is dismissed), as otherwise any points on which they won will not apply and the decision will be maintained.

The decision can conclude proceedings or can remit the case to the opposition division for further examination. For example, if the original opposition decision revoked the patent on added matter, but the appeal has reversed that, the appeal decision may remit the case for other grounds of opposition to be heard. Such a remittal can then lead to a further appeal resulting in “ping pong” between the opposition division and board of appeal. The boards of appeal are trying to reduce this occurrence by remitting fewer cases, but there are still many cases where it necessary to ensure a party is not deprived of the right to be heard.

Next week we will look at referrals to the Enlarged Board of Appeal.

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