**2. European patent office**

The first relevant point of appeal procedure in the European patent system is that, unlike in the USPTO and INPI, appeals are not administrative proceedings. Although they exist in the EPO organizational structure, they are legal procedures under the responsibility of the boards of appeal [2, 3].

Boards of appeals are the second and final instances of the EPO, being independent of such office and only governed by the European Patent Convention (EPC). They are divided into four boards: enlarged board of appeal; legal board of appeal; technical boards of appeal; and disciplinary board of appeal.

Any party to the first-instance proceedings that led to the contested decision and that have been adversely affected by a decision of the receiving section, examining divisions, opposition divisions, and the legal division of the EPO may appeal to the Boards of Appeal.1 In this regard, appeals may be divided into *ex parte* procedures, i.e., there is only one party to the appeal procedures, and *inter partes*, i.e., there are two or more parties to the appeal procedures. *Inter partes* appeal procedures occur when appealed decisions are taken by the opposition divisions, while *ex parte* procedures occur when the decisions are taken by the examining division. When there is more than one party to the appeal, the party filing the appeal is called the appellant, while the other parties are "parties of right" [2–4].

Although decisions taken by any of the EPO departments already mentioned can be appealed, technical decisions related to the patentability of a patent application or a patent already granted are those taken by the examining and opposition divisions. Examples of these types of decisions are those rejecting a patent application, in case of examining divisions, or decisions to revoke a patent or reject an opposition, in case of opposition divisions. It is worth noting that the European patent

<sup>1</sup> Articles 106 and 107, EPC.

#### *Comparative Analysis of Appeal Procedures in the European, American and Brazilian Patent… DOI: http://dx.doi.org/10.5772/intechopen.98413*

system, unlike Brazil, allows for filing an appeal against the granting of a patent in cases in which the grant was based on a text not previously approved by the applicant [4].

Appeals in the European patent system have suspensive and devolutive effects. The suspensive effect suspends the effects of the appealed decision until a decision on the appeal is rendered by the boards of appeal. For example, if the opposition division decides to cancel a patent and the patentee files an appeal, the patent shall continue having its effects until the boards of appeal take a decision. On its turn, the devolutive effect, except for the interlocutory revision procedure to be addressed below, transfers the power to decide such case from the first-instance examining division to the boards of appeal [3].

Three actions are required to begin the appeal procedure: (a) filing of a notice of appeal within two months of notification of the appealed decision; (b) payment of an appeal fee, within the same period; and (c) within four months of notification of the decision, a statement setting out the grounds of appeal shall be filed.<sup>2</sup> If the appellant fails to file the notice of appeal or to pay the fee within the established period, the appeal is deemed not filed [2, 4].

Once the appeal is filed, in case of *ex parte* procedures, it is forwarded to the division responsible for assessing the possibility of an interlocutory revision.3 This procedure consists in an evaluation of the appeal by the examining division responsible for the appealed decision itself. If this division considers the appeal to be admissible and well-founded, it may rectify its decision or, if new objections are raised and not previously discussed, proceed with the examination. Three reasons, for example, may explain a change in a decision under appeal by the own first-instance division responsible for the decision: (a) the division made a mistake by not considering a certain part of the material available; (b) the division did not receive the material filed within the EPO on time due to an error by the EPO itself, or; (c) the division's decision is not incorrect, but the presentation of new evidence, facts, or changes in the application overcomes the objections that led to the appealed decision [5].

Nonetheless, if the appeal is not examined or allowed by the examining division within three months of receipt of the statement of the grounds of appeal, it shall be remitted to the Board of Appeal without delay, and without comment as to its merit. As it only applies to *ex parte* procedures, this mechanism is not valid for decisions by the opposition divisions that, as already mentioned, always have at least two parties, the opponent and the patentee. If the appeal is received by the boards of appeal, the examining division cannot interfere thereon anymore. The mechanism of interlocutory revision is very useful to prevent cases that can be easily reversed from getting to the boards of appeal, saving quite some time.

Upon filing of the appeal, it will be examined for admissibility and, among other factors, the following points will be assessed: (a) if the decision is appealable, (b) if the appellant has the right to appeal, (c) if the deadlines were respected, (d) if the fee was paid, (e) if the notice of appeal and the statement of grounds meet the requirements in Rule 99 of the EPC [2, 4].

The statement of grounds of appeal shall contain a party's complete appeal case. Accordingly, it shall set out clearly and concisely the reasons why it is requested that the decision under appeal be reversed, and should specify expressly all the facts,

<sup>2</sup> Article 108 of the EPC.

<sup>3</sup> Article 109 of the EPC.

arguments and evidence relied on.4 Pursuant to rule 12 [4] of the rules of procedure of the boards of appeal (RPBOA), these boards may use their discretion when admitting new submissions in the appeal procedure, i.e., when admitting facts, evidence, and/or objections not submitted during the first-instance procedure. Nonetheless, such submissions should be made preferably at the beginning of the appeal procedure, and the acceptance thereof by the board of appeals during the second-instance proceeding is at the board's discretion. In this sense, these boards have been adopting a restrictive stance in accepting late submissions. In order to accept or not late submissions to the appeal procedure, the boards consider, among others, the following factors: the stage of processing of the appeal or whether the submission is detrimental to procedural economy and the complexity of the case5 [6].

Some other principles not expressly defined in the EPC or the RPBOA, but that were established by decisions of the enlarged board of appeal, have been governing the appeal procedure in Europe. One of these principles establishes an important distinction between decisions by examining divisions and those by opposition divisions. When appeals come from opposition divisions, the boards of appeal cannot examine reasons that were not presented by the opponent during the first-instance proceeding and/or were not discussed by the opposition divisions, unless expressly authorized by the patentee. Nonetheless, the same restriction does not apply if the opposed decision is taken by the examining divisions, as in the case of an application rejection decision. In these cases, appeals are not restricted to the reasons that led to rejection of the patent application, and the boards of appeal may broaden their examination to patentability requirements or conditions that were not discussed at first instance.

During the appeal phase in the EPO, oral proceedings may occur at the request of the EPO itself or at the request of any other party to the appeal. When oral proceedings occur during the appeal, they are public, unlike those occurring before the examining divisions.6 In cases of oral proceedings, the Board of Appeal may provide a preliminary opinion on the matter within four months of this proceeding, enabling the appellant to assess its chances of success in the appeal.7

Regarding the powers of the boards of appeal in deciding appeals, article 111 (1) of the EPC determines that the boards may either exercise any power within the competence of the first-instance department which was responsible for the decision appealed or remit the case to that department for further prosecution. At this point, article 11 of the RPBOA advices the board not to remit a case to the department whose decision was appealed for further prosecution, unless special reasons present themselves for doing so. As a rule, fundamental deficiencies which are apparent in the proceedings before that department constitute such special reasons [2, 6]. The decisions of the boards of appeal are unappealable. Nonetheless, as an exception, it is possible, under certain conditions, to request review by the enlarged board of appeal.8

**Figure 1** shows a schematic presentation of the procedures for appeal against rejections in the EPO.

<sup>4</sup> Article 99 (2) of the EPC and Article 12 (3) of the RPBOA.

<sup>5</sup> Article 13 of the RPBOA.

<sup>6</sup> Article 116 of the EPC.

<sup>7</sup> Article 15 of the RPBOA.

<sup>8</sup> Article 112a of the EPC.

*Comparative Analysis of Appeal Procedures in the European, American and Brazilian Patent… DOI: http://dx.doi.org/10.5772/intechopen.98413*

#### **Figure 1.**

*Schematic representation of the procedure for appeal against rejection in the EPO.*
