Tuesday, July 14, 2020 T 1378/16 - Oral proceedings before the Board held by videoconference

The oral proceedings in the present case took place on 8 May 2020 and were the first held by videoconference in the history of the Boards of the Appeal of the EPO. Unlike some national legal systems, the EPC does not stipulate explicitly the form(s) in which oral proceedings under Article 116 EPC shall take place. For these reasons, the Board considers it appropriate to address briefly the legal basis for oral proceedings within the meaning of Article 116 EPC.

Thursday, July 18, 2019 G 2/19 - Breaking: Haar belongs to Munich

We refer to our previous blog post about referral G 2/19 (and this related post). In G 2/19, the following questions were referred to the Enlarged Board:

(1) In appeal proceedings, is the right to oral proceedings under Article 116 EPC restricted if the appeal is prima facie inadmissible?

(2) If the answer to Question 1 is yes, is an appeal against the decision to grant a patent prima facie inadmissible in this sense, which Appeal has been filed by a third party within the meaning of Article 115 EPC and which has been substantiated by arguing that there is no alternative remedy under the EPC against a decision of the Examining Division not to consider the third party’s objections concerning the alleged contravention of Article 84 EPC?

(3) If the answer to one of the first two questions is no, can the Board hold oral proceedings in Haar without violating Article 116 EPC, if the appellant complains that this location is not in conformity with the EPC and requests that the oral proceedings be moved to Munich?

Today, the following communication was posted on the EPO website:

Haar, 17 July 2019 

Yesterday the Enlarged Board of Appeal announced its decision in case G 2/19 at the conclusion of the oral proceedings. The first referred question was rejected as inadmissible. The second and third referred questions were reformulated and answered as follows: 

1. Ein Dritter im Sinne von Artikel 115 EPÜ, der gegen die Entscheidung über die Erteilung eines europäischen Patents Beschwerde eingelegt hat, hat keinen Anspruch darauf, dass vor einer Beschwerdekammer des Europäischen Patentamtes mündlich über sein Begehren verhandelt wird, zur Beseitigung vermeintlich undeutlicher Patentansprüche (Artikel 84 EPÜ) des europäischen Patents den erneuten Eintritt in das Prüfungsverfahren anzuordnen. Eine solchermaßen eingelegte Beschwerde entfaltet keine aufschiebende Wirkung. 

2. Mündliche Verhandlungen der Beschwerdekammern an deren Standort in Haar verstoßen nicht gegen die Artikel 113 (1) und 116 (1) EPÜ. 

The reasons for the decision will be issued in writing in due course.

It would appear that the Enlarged Board found that Haar belongs to the greater Munich area, thus not contradicting the provisions of the EPC concerning the location of the EPO.

Furthermore, a third party within the meaning of Article 115 EPC, who has filed an appeal against the decision to grant a European patent, has no right to an oral hearing before a Board of Appeal of the European Patent Office on his request to re-examine allegedly unclear patent claims (Article 84 EPC) in the European patent.

Wednesday, May 25, 2016 T 11/55 Swapping of closest prior art in oral appeal proceedings

This decision gives the criteria for in which situations it is allowable to change closest prior art document, compared to what was argued in response to the summons to oral proceedings in appeal (in this case by swapping two prior art documents around), during the oral proceedings of appeal (see reason 2).

Furthermore, the decision reiterates that the burden of proof against inventive step lies with the opponent and accordingly, if the opponent doesn’t provide proof to the contrary, the board has no other choice than to consider a claim inventive (see reason 5.3).

Tuesday, March 31, 2015 T 37/12 - Scribbling during Appeal

This is an appeal against the decision of the Opposition Division to maintain European Patent Nr. 1 687 159 in amended form. During Oral Proceedings before the Board of Appeal, the proprietor submitted a new auxiliary request 3 which contained handwritten amendments.

Opponent 2 argued that documents submitted during appeal proceedings which contained handwritten amendments did not satisfy the requirements of Rule 49(8) and 99 (3) EPC.

As a reminder, Rule 99(3) states that Part III of the Implementing Regulations shall apply mutatis mutandis to the notice of appeal, the statement of grounds and the documents filed in appeal proceedings, whereas Rule 49(8) states that the request for grant of a European patent, the description, the claims and the abstract shall be typed or printed.  

Headnote [translated by yours truly]

1. When making use of the general reference in Rule 99(3) EPC [to part III of the Implementing Regulations], and when taking into account the Rule's legislative history and purpose, one needs to determine whether and how one of the Rules being referred to is be applied to a particular set of circumstances of an individual case.

2. Applying Rules 49(8) and 50(1) EPC to documents filed during Oral Proceedings before the Boards of Appeal would run counter to procedural economy and [the applying of the Rules] would also not be due for other reasons.

3. The introduction of Rule 99(3) EPC has therefore not given cause to change the practice, which has been practiced over years, according to which documents filed during Oral Proceedings before the Boards of Appeal may contain legible handwritten amendments.