Posted on 29/10/2019

G2/19: The admissibility of appeals filed by third parties

A decision has been made for referral G2/19 by the Enlarged Board of Appeal of the EPO.

This series of articles considers referrals pending before the Enlarged Board of Appeal of the European Patent Office (EPO). Whilst the outcome of these referrals may be some months or years away, the opinions issued by the Enlarged Board of Appeal may fundamentally change the way the law is interpreted. In this article, we look at referral G2/19.

The Enlarged Board of Appeal of the European Patent Office (EPO) has made a decision on the referral G2/19, relating to the admissibility of appeals filed by third parties, and on whether oral proceedings held in Haar (as opposed to Munich) are in conformance with the European Patent Convention (EPC) following the relocation of the Boards of Appeal in 2017.

The referral was made by the then President of the EPO, and comprised three questions:

1.     In appeal proceedings, is the right to oral proceedings under Article 116 EPC limited if the appeal is manifestly inadmissible?

2.     If the answer to the first question is yes, is an appeal against the grant of a patent filed by a third party within the meaning of Article 115 EPC, relying on the argument that there is no alternative legal remedy under the EPC against the examining division’s decision to disregard its observations concerning an alleged infringement of Article 84 EPC, such a case of an appeal which is manifestly inadmissible.

3.     If the answer to either of the first two questions is no, can a board hold oral proceedings in Haar without infringing Article 116 EPC if the appellant objects to this site as not being in conformity with the EPC and requests that the oral proceedings be held in Munich instead?

G2/19 Decision

The Enlarged Board decided the first question was inadmissible, and thus declined to provide an answer. It may be the subject of a revised future referral if the question remains important and unanswered. The logic behind this refusal to answer is likely that as an inadmissible appeal is rejected immediately, there can be no oral proceedings, as oral proceedings can only take place in appeal proceedings that are admissible.

Despite the fact the first question was not answered, the Enlarged Board proceeded to answer the second and third questions as follows:

2.     A third party within the meaning of Article 115 EPC who has filed an appeal against a decision to grant a European patent has no right to have its request for an order that examination proceedings in respect of the European patent are re-opened for the purpose of removing allegedly unclear claims (Article 84 EPC) heard at oral proceedings before a board of appeal of the European Patent Office. An appeal filed in such a way has no suspensive effect.

Effectively, this decision clarified the position of the EPO that there is no right for a third party who has filed observations under Article 115 EPC to appeal a decision to grant a patent on the grounds that the claims of the granted patent are unclear under Article 84 EPC. This decision was expected by many, as in general there is no right for a third party to appeal a decision before the EPO.

3.     Oral proceedings before the boards of appeal at their site in Haar do not infringe Articles 113(1) and 116(1) EPC.

This decision confirmed that decisions made in Haar are in accordance with the EPC itself. This was expected, as a decision to the contrary would have thrown nearly two years’ worth of appeal decisions into question. This decision likely applies analogously (although this is not confirmed) to decisions made in Rijswijk, Netherlands, rather than in The Hague.

These decisions are largely in line with the amicus curiae briefs filed at with the EPO before the decision, and thus formalises the previous status quo when considering the admissibility of appeals on grounds of clarity and the location of oral proceedings.

The full decision can be read here.

If you have any questions regarding this decision, please get in touch to speak to one of our attorneys.

Wilson Gunn