Browse by title

The previous chapter addressed issues relevant to inter partes appeals, i.e. appeals against decisions of opposition divisions. This chapter will deal with ex parte appeals, in particular appeals against decisions of examining divisions (see Figure 5.1). To a large extent, the observations made above for inter partes appeals apply equally to these ex parte appeals. Therefore in the present chapter only those points that distinguish ex parte appeal from inter partes appeal proceedings will be mentioned. Some statistical data: the number of ex parte appeals received in 2018 by the European Patent Office was 1,169 (see Figure 5.2). Figure 5.3 shows the distribution of the decisions taken by the technical boards of appeal in ex parte appeal proceedings (in 2018).

The boards of appeal are responsible for the examination of appeals from decisions of the receiving section, the examining divisions, the opposition divisions and the legal division. The appeal has suspensive effect. Appeals against decisions of the opposition division (see Figure 4.1) are referred to as inter partes appeals since more than one party is involved, while appeals against decisions of an examining division to refuse a patent application are referred to as ex parte appeals. The present chapter refers to inter partes appeal proceedings. The observations in relation to this type of appeal largely apply in the same way to ex parte appeals. In the next chapter (Chapter 5), aspects of ex parte appeals will be discussed in as far as they are different from inter partes appeals.

Representing clients before the European Patent Office has aspects of playing a game of chess. Moves that you make at the beginning of the proceedings may have, sometimes, an irreparable impact on issues that become relevant at a later stage. For instance, as set out in Chapter 2, the way you draft a patent application may determine the outcome of later proceedings since the application as filed is basically the only resource you can rely on later in view of, e.g., any prior art cited by the opponent. As in a chess game, if moves are not made in a prudent way, you may end up in a catch-22 situation, such as the Article 123(2)/123(3) EPC trap, where no matter what you do, the game is lost. Also like chess, in order to make every move in a well-considered way, it is necessary to know in detail the rules of the game. Hence, detailed knowledge of the legal framework of opposition and appeal proceedings is required to know which options are available at each stage of the proceedings.