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Is a Prima Facie Inadmissible Appeal an Appeal? And if it is, Where is it?

By Robert Margue, Partner

The Enlarged Board of Appeal of the EPO recently had to decide (G 2/19) an intriguing question arising from the relocation of the Boards of Appeal to the municipality of Haar in the Munich district, which lies outside the boundaries of the city of Munich. The question arose on the back of an Appeal filed by a third party against the grant of a European patent, which had the aim of correcting the allegedly unjustified grant of unclear patent claims.

European Patent EP 2 378 735 B1 was granted on 8th February 2017. During examination proceedings prior to grant of the patent, 3rd party observations had been filed on several occasions by European Patent Attorney P in accordance with Art. 115 EPC. According to the second sentence of this Article, any person who files 3rd party observations does not become party to the proceedings. The only party in the examination proceedings is the sole applicant.

After grant of the European patent, P filed an Appeal against the decision to grant. Art. 107 EPC, which governs the Appeals Procedure, states that only a party to proceedings may appeal a decision. Applied to this case, this means that the P who filed 3rd party observations was not party to the examination proceedings and therefore had no right to appeal the decision to grant a European patent.

In their Grounds of Appeal, P argued that the grant of a patent was unjustified due to lack of clarity of the granted claims. Since lack of clarity is not an admissible Ground of Opposition, an appeal against the grant of a European patent is the only way for a 3rd party to defend their own interests (and those of the general public). In addition, according to P, since the 3rd party observations submitted during the examination proceedings did not prevent the grant of unclear claims, the right to be heard of the 3rd party was violated, causing substantial harm to the interests of the general public.

After receipt of the Grounds of Appeal, the Board of Appeal issued a communication, indicating their preliminary view that P’s Appeal is inadmissible. After further written submissions by P, the Board issued a summons to Oral Proceedings, together with a communication in which they indicated that they still consider the Appeal inadmissible. The Summons indicated that the Oral Proceedings would be held in Haar, the location of the offices of the Boards of Appeal. Haar is outside the boundaries of the city of Munich (while still within the administrative district of Munich). In response to the Summons, the Appellant then requested that the Oral Proceedings be moved to Munich, and that the case be referred to the Enlarged Board of Appeal. The Board reacted by cancelling the Oral Proceedings and issuing an interlocutory decision, referring three questions to the Enlarged Board of Appeal. Questions 1 and 2 concerned the issue whether the Appellant had the right to Oral Proceedings in a case where a case was prima facie inadmissible (1), and whether the constellation of the present case was indeed a case of a prima facie lack of admissibility (2). The third question related to holding Oral Proceedings in Haar.

At the end of Oral Proceedings on 16th July 2019, the Enlarged Board rejected question (1) as inadmissible. Question (2) was reformulated and the answer stated that a 3rd party in the sense of Art. 115 EPC who appealed a decision to grant on the Grounds that the granted claims were unclear under Art. 84 EPC, had no right to Oral Proceedings, and that this Appeal would not have a suspensive effect. Finally, the Enlarged Board found (Question 3) that holding Oral Proceedings in Haar does not contravene Art. 113(1) and 116(1) EPC. The reasons for the decision have not yet published.

The answers given by the Enlarged Board of Appeal suggest that in the present case, where a 3rd party files an appeal against a decision to grant on the grounds of lack of clarity of the granted claims, no Appeal ever existed. Any conditions that the EBA may lay down for an Appeal to be sufficiently close to admissibility to give the would-be appellant the right to oral proceedings will be of interest. One possibility is that a person who is not party to the proceedings, and accordingly has no right to appeal under Art. 107 EPC, in general does not have a claim to having their status as a non-party to the proceedings reviewed in Oral Proceedings, even if they did file submissions under Art. 115 EPC during examination. It is also possible that the reasoning will be more limited in scope, and applied to the present case, where there was no attempt by P to present themselves as party to the proceedings in writing.

Concerning the location of Oral Proceedings in Haar, many have expressed the view that there is nothing in the EPC preventing the European Patent Office from holding Oral Proceedings outside the seat of the Organisation. The questions remains, however, whether a Division of the European Patent Office may decide to summons to oral proceedings anywhere within the territories of the Contracting States (or even outside). It will be interesting to see where the Enlarged Board of Appeal draws the line. One could imagine a case in which the parties to the proceedings, or their representatives, are resident in the same Contracting State and there are practical hurdles for the parties to travel to Munich, Haar, or the Hague to attend proceedings.

The Reasons of the Decision by the Enlarged Board of Appeal should make for some interesting reading.