Global Patent Prosecution - June 2020: Considerations When Appealing a Patent Application at the EPO

Sterne, Kessler, Goldstein & Fox P.L.L.C.

This article discusses aspects of ex parte appeals of patent applications before the European Patent Office (EPO). A patent applicant may appeal an examiner’s decision on refusing to grant a patent application to the EPO Board of Appeals. Four points of consideration related to the EPO appeal process are discussed below.

First, similar to the USPTO appeal process, patent applicants may consider the tradeoffs in pursuing the appeal process. In circumstances where an examiner is firmly entrenched in its positions, the appeal process provides patent applicants an opportunity to address the examiner’s positions before the EPO Board of Appeals. Patent applicants must file a notice of appeal within two months of the date of notification of the decision of first instance being appealed. Within four months after the date of notification of the decision, patent applicants must file a written statement setting out the grounds of appeal. The Board closely review the records—including the written statement submitted by patent applicants—to determine the reasonableness of the examiner’s arguments. But, the time and costs associated with the appeal process should also be considered when deciding to pursue the appeal process.

Second, patent applicants may consider filing a divisional application during the appeal process. The EPO Board of Appeals provides a preliminary opinion on decisive matters to the appealed matter at least four months in advance of oral proceeding, thus providing patent applicants an opportunity to gauge the likelihood of success of the appeal. If the likelihood of success appears low based on the preliminary opinion, patent applicants may consider filing the divisional application before oral proceeding. If patent applicants forego oral proceedings, they can recover 50% of the appeal fee.

Third, patent applicants may consider filing claim amendments with their appeal. Submission of substantive claim amendments during the EPO appeal process can be an advantage compared to the USPTO appeal process, which does not permit such claim amendments. However, patent applicants may need to carefully consider the scope of their claim amendments because “a party’s appeal case shall be directed to the requests, facts, objections, arguments and evidence on which the decision under appeal was based.” EPO Article 12(2). Accordingly, during the EPO appeal process, patent applicants may consider submitting extensive evidence, including evidence supporting various claim amendments they might wish to pursue, to ensure flexibility when submitting claim sets. The EPO requires patent applicants to rank their claim sets. Each claim set is considered in turn until the application is allowable or no claim set remains. Patent applicants, however, may want to avoid submitting a large number of claim sets because the EPO may consider it an abuse of procedure.

Fourth, patent applicants may consider submitting a conditional request for oral proceedings at the start of the appeal process. Patent applicants can submit this request to avoid receiving an adverse decision from the EPO Board of Appeals without warning. In addition, patent applicants may find it beneficial to preserve their right to attend oral proceedings while they gauge the likelihood of success of the appeal. For example, patent applicants may submit a conditional request for oral proceedings and then schedule a telephone interview with the examiner after filing their written submissions. Alternatively, patent applicants may submit a conditional request for oral proceedings and then want to wait to receive a preliminary opinion from EPO Board of Appeals prior to the oral proceedings. Patent applicants can review the preliminary opinion to gauge the likelihood of success of the appeal. Patent applicants can also review the preliminary opinion to determine whether oral proceedings will move the matter forward and, if so, what type of arguments will be persuasive to the EPO Board of Appeals. For arguments that may be nuanced or challenging to express in writing, patent applicants may find the oral hearing beneficial to express such arguments verbally to the EPO Board of Appeals.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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