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Johanna Gibson

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Marcus O. Müller and Cees A.M. Mulder

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Marcus O. Müller and Cees A.M. Mulder

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Marcus O. Müller and Cees A.M. Mulder

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).

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Marcus O. Müller and Cees A.M. Mulder

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.

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Marcus O. Müller and Cees A.M. Mulder

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.

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Marcus O. Müller and Cees A.M. Mulder

As set out in Chapter 1, numerous choices have to made even during the drafting and prosecution stage of a European patent application that influence, if not determine, the outcome of opposition and appeal proceedings. In the present chapter, these choices will be dealt with in more detail. This chapter should, however, not be considered to be a complete presentation of the drafting and prosecution stage before the European Patent Office. On the contrary, its sole purpose is to address those issues during drafting and prosecution that may have an impact on opposition and appeal. When intending to file a European patent application, the normal procedure is to first draft and file a priority application which within 12 months is followed by filing a European patent application or an international (PCT) application for which entry into the regional phase before the European Patent Office must be carried out within 31 months from the priority date. Having a valid priority claim may decide the life or death of a patent in opposition or appeal proceedings.

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Marcus O. Müller and Cees A.M. Mulder

Normally, each party bears the costs they have incurred. However, according to Article 104(1) and (2) EPC, the opposition division can order a different apportionment of costs and, on request, can fix the amount of costs. The decision on the apportionment of costs defines the type of costs to be paid by the other party while the decision fixing the amount of costs defines the actual amount. The decision on the apportionment of costs can be appealed, provided the apportionment of costs is not the sole subject of the appeal. Also, the decision fixing the amount of costs can be appealed provided the amount exceeds that of the fee for appeal. However, if no request for apportionment of costs has been made in first instance proceedings and no decision was taken on this issue, the apportionment of costs during first instance proceedings cannot be an issue in the grounds of appeal and the board cannot decide on any such issue (T 1059/98). Furthermore, if the opposition division has decided on the apportionment of costs, but in the notice of appeal this decision of the opposition division is not objected to, this part of the opposition division’s decision becomes final and a later extension of the appeal to this part, i.e. the apportionment of costs, is not admissible (T 448/09).

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Marcus O. Müller and Cees A.M. Mulder

One of the core aspects of a patent attorney’s job, when representing his or her clients before the European Patent Office, are opposition and appeal proceedings. The patents litigated in these proceedings are mostly of high commercial value for both the patent proprietor and the opposing parties. Success in these proceedings is therefore extremely important. A saying often quoted by patent attorneys is ‘expect the unexpected’, which reflects the difficulties attorneys are confronted with in these proceedings. This is partly linked to a lack of knowledge and, more importantly, a lack of understanding of the legal framework within which opposition and appeal proceedings take place. Another important reason is a lack of practical experience with these types of proceedings before the European Patent Office. The first objective of this book is therefore to set out in detail the legal framework for opposition and appeal proceedings before the European Patent Office. Knowing and understanding the legal framework is a necessary but not a sufficient precondition for success. More specifically, this legal framework leaves the parties with ample room for manoeuvre, and success very often depends on which of the many options available within this legal framework are chosen. Accordingly, the second objective of this book is to give practical advice on which choices are appropriate in which circumstances. This does not only concern choices available in opposition and appeal proceedings. On the contrary, during the filing and prosecution stage many options are already available and a wrong choice at this stage may have a detrimental effect later on in opposition and appeal proceedings. Therefore the book also tries to give advice about what should be done when drafting and prosecuting European patent applications with a view to opposition and appeal. To emphasize these practical aspects at all stages of the proceedings, the book contains numerous ‘practical advice’ paragraphs for each topic and tries to set out the consequences of wrong or right choices by means of ‘example cases’. In most example cases the case is presented as it evolved with emphasis on the issues relevant for the book. In some examples an existing case was modified by adding the authors’ own thoughts beyond what was in the decision. For these latter examples, it was decided not to mention the case number. Throughout the book the practical advice and example cases have been cast in a different lay-out to distinguish them from the main text.

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Marcus O. Müller and Cees A.M. Mulder

Grant proceedings start with a search followed by substantive examination which hopefully results in the grant of a European patent. Thereafter, opposition proceedings may be initiated. Such opposition proceedings can lead to three possible outcomes, namely, first, the patent can be maintained as granted, implying that the opposition is rejected, second, the patent can be maintained in amended, i.e. in restricted form, and third, the patent can be revoked (see Figure 3.1). At the start of the opposition proceedings, the opposition will be allocated to an opposition division. As a first step, the admissibility of the opposition will be checked and, if the opposition is admissible, substantive examination will start. In principle, three possible ways to proceed are available to the opposition division in this respect (see Figure 3.2).