you will be informed accordingly and invited to pay the prescribed fee for publishing an amended specification and to file a translation of the amended limited claims into the other two official languages within a nonextendable period of three months. If considered necessary, the description and drawings have to be adapted additionally. If these acts are not performed in due time, they may still be validly performed within two months of notification of a communication pointing out the failure to observe the time limit, provided that a surcharge is paid within this period.
The procedure for this is the same as in opposition proceedings. If you pay the fees and file the translations as set out above in due time, then the examining division will limit the patent. Subsequently an amended specification as limited will be published and a new certificate will be issued. If not, the request will be refused.
5.6.008 The decision to limit the European patent takes effect on the date on which it is published in the European Patent Bulletin. Its effect is to limit the patent ab initio.
5.7.001 Appeals may be filed against decisions of the Receiving Section, the examining divisions, the opposition divisions and the Legal Division. An appeal has suspensive effect, which means that the contested decision is not yet final (no formal res judicata) and its effects are suspended.
5.7.002 Notice of appeal must be filed in written form within two months after the date of notification of the contested decision. It is not deemed to have been filed until the appeal fee has been paid. Within four months after the date of notification of the decision, a written statement setting out the grounds of appeal must be filed. The above time limits cannot be extended. Further processing under Article 121 is excluded.
5.7.003 As from 1 April 2018 a reduced fee for appeal applies to appeals filed by natural persons and by small and medium-sized enterprises, non-profit organisations, universities and public research organisations.
5.7.004 The notice of appeal and the statement of grounds may be filed in electronic form using the EPO Online Filing software or EPO Online Filing 2.0 but not via the EPO Web-Form Filing service. They may also be filed by post, by hand and by fax. The Registry of the boards of appeal as a rule requests written confirmation only if the quality of the document filed is deficient.
5.7.005 The notice of appeal must contain: R. 99(1)
(a) the name and address of the appellant (b) an indication of the appealed decision, and
(c) a request defining the subject of the appeal.
5.7.006 In the statement of grounds the appellant should indicate the R. 99(2) reasons why the decision should be set aside, or the extent to which it is to be amended. Similarly, the facts and evidence on which the appeal is based should also be filed. All arguments should be presented in writing and not reserved for possible oral proceedings.
The Registry gives each appeal its own reference number, which must be used throughout the appeal proceedings.
5.7.007 If the department whose decision is contested considers an appeal Art. 109 to be admissible and well founded, it must rectify its decision within GL E-XII, 7 three months of receiving the statement of grounds. If the appeal is not allowed within that period, it must be remitted to the board of appeal without delay.
Interlocutory revision is not possible where the appellant is opposed by another party to the proceedings (in particular in opposition proceedings).
5.7.008 The boards of appeal of the EPO decide on appeals as a judicial Art. 23(3) and final instance. The members of the boards are independent in Supplementary their decision-making and bound to comply with the EPC. The publication 1, OJ Rules of Procedure of the Boards of Appeal are published in the EPO 2022 Official Journal and on the EPO website.
The technical boards of appeal are responsible for appeals against Art. 21(3), (4) decisions of the examining divisions concerning the refusal of European patent applications or the granting of European patents and for appeals against decisions of the opposition divisions.
The technical boards normally consist of three members (two Art. 21(3)(a), (b)
technically qualified and one legally qualified). This is increased to five (three technically qualified and two legally qualified) if a legally qualified member was involved in taking the decision or if the board considers that the nature of the appeal so requires (enlarged composition).
Where the technical boards of appeal are not competent – Art. 21(2), (3)(c)
particularly in the case of appeals against decisions of the Receiving Section or the Legal Division – a legal board of appeal consisting of three legally qualified members deals with such procedures.
5.7.009 To ensure uniform application of the law or if an important point of law arises, referrals may be submitted to the Enlarged Board of Appeal. During proceedings on a case and either of its own motion or following a request from a party, a board of appeal may refer any question to the Enlarged Board if it considers that a decision is required for the above purposes. The Enlarged Board's decision is binding on the referring board. The President of the EPO may refer a point of law to the Enlarged Board if two boards of appeal have given different decisions on the issue.
5.7.010 The provisions relating to proceedings before the department which took the appealed decision are essentially applicable mutatis mutandis to appeal proceedings and proceedings for petition for review. In the examination of the appeal, the board of appeal invites the parties to file, within a specified period, observations on communications issued by itself or observations submitted by another party.
Oral proceedings may be held at the request of a party or at the instance of the board of appeal.
5.7.011 In deciding on the appeal, the board may either exercise any power within the competence of the department which took the appealed decision or remit the case to that department for further prosecution. In the latter case, the department is bound by the board's decision, in so far as the facts are the same.
5.7.012 Any party to appeal proceedings adversely affected by the decision of the board of appeal can file a petition for review of the decision by the Enlarged Board of Appeal. Such petitions may be filed on the grounds either that the composition of the board was not correct, or that a fundamental violation of the right to be heard
an impact on the decision. The objections must have been brought up during the appeal proceedings.
As a rule, petitions must be filed within two months of notification of the decision of the board of appeal. A petition is not deemed to be filed until the prescribed fee has been paid.
If a petition for review is admissible and allowable, the Enlarged Board sets aside the decision of the board of appeal and orders re-opening of the proceedings before the responsible board of appeal as well as the reimbursement of the fee for petition for review.
