CASE LAW OF THE EPO BOARDS OF APPEAL

Centre for Commercial Law Studies (CCLS)

Dates: 6-8pm on Wednesdays from 19 September to 24 October 2018

Venue: Centre for Commercial Law Studies, Queen Mary University of London, 67-69 Lincoln’s Inn Fields, London, WC2A 3JB 

This course will cover the main aspects of procedural and substantive patent law as evolved by the decisions of the European Patent Office (EPO) Boards of Appeal.

Tutors with first-hand experience of EPO proceedings will provide insights into the case law on EPO examination, oppositions and appeals and on patentability issues including novelty, inventive step, industrial application, amendment, exclusions and exceptions. As well as the established case law, particular attention will be given to recent decisions. The tutors are Christopher Rennie-Smith, a former Board of Appeal chairman and Enlarged Board member, and Jeremy Smith, a European patent attorney and Associate at Kilburn & Strode with considerable EPO experience. Between them, the tutors are able to provide insights from both sides of the fence at the EPO, giving a detailed picture of how the case law is used. The possible impact of the proposed changes to the Rules of Procedure of the Boards of Appeal will also be considered.

Please contact ccls-events@qmul.ac.uk to register for the course. For further information read the report below by Christopher Rennie-Smith, or see: www.ccls.qmul.ac.uk/events


EPO Case Law

By Christopher Rennie-Smith

Anyone with some legal education encountering the case law of the EPO for the first time might reasonably assume it was a coherent and readily ascertainable body of information. As those of us with experience of the European patent system know, it is not. Rather, it is a vast accumulation of decisions which grows with no control. Even viewed from within (as I have done) it can seem like jurisprudential bindweed – rampant growth and not susceptible to normal weeding.

No-one can ever read it all, which is why you can find decisions which simply do not take account of other very similar decisions and decisions which pretty much say the opposite of each other on the same subject. The sheer volume of decisions is the core problem – in 2017 the Boards of Appeal disposed of 2,324 cases according to EPO figures. Actually, the true number is a bit lower since that figure includes Enlarged Board cases which are mostly not new cases but just ones that have “moved”. But, allowing for those few and for a larger number of withdrawn appeals (which the EPO still calls “settled” even though it did nothing), about 2,000 decisions are issued annually. How is one supposed to know which of these, or of the similar number issued every year for the last two decades, are important? The EPO itself makes two attempts to tell us.

First, each decision is lettered A-D by the board (that is, the three – or occasionally five – members of the board) which actually made the decision. The letters mean:

(A) Publication in the Official Journal
(B) Distribution to Chairmen and Members
(C) Distribution to Chairmen
(D) No distribution

When I became a member in 1999, there were only A-C. D was added because (I assume – no-one ever said, it just appeared) many cases do not actually add anything to the pre-existing jurisprudence. Certainly, many of us latched on to D as a way of trying to keep our own patch of bindweed within bounds. Of course, the trouble with the A-D categorisation is that it is wholly subjective. One member’s “just another boring added matter” decision might be another member’s “at last a meaningful added matter” decision. And all decisions, whether A, B, C, or D, are available online (http://www.epo.org/law-practice/case-law-appeals/advanced-search.html) in monthly batches far sooner than the few A decisions are published in the Official Journal.

Second, the EPO publishes its own textbook “Case Law of the Boards of Appeal” and, between editions of the book, an annual update of decisions as a supplement to the Official Journal. Everyone is familiar with the case law book since it is the only manageable one-volume source of case law information and it is probably used for citation in proceedings more than actual cases (a risky if understandable practice). It appears every few years and grows larger with every edition – 1,448 pages in the latest 2016 edition of the English version compared to 1,258 pages in the previous edition. The book is prepared by the Boards of Appeal legal research service and they do an amazingly good job considering the ever-growing mountain before them. And their selection is at least objective and produces a limited volume of cases – I counted only 99 in the latest supplement for 2017 so that’s 99 distilled from the 2,000 or so I mentioned above.

There are of course other selective sources of EPO case law, such as European Patent Office Reports (which, despite the name, are not an EPO product but produced by Sweet & Maxwell) and reports appearing each month in the CIPA Journal.

The reason for this short article is background for a course on EPO case law to be launched by Queen Mary University of London. I am fortunate to be one of the lecturers. The other is Jeremy Smith of Kilburn & Strode. We shall cover the decisions we consider significant, especially recent decisions. We hope to spot, among the morass of decisions, trends in the case law or developments in the approach of the Boards of Appeal. We also hope that providing two points of view – that of a Board of Appeal member (albeit now retired) and that of a practising patent attorney – may give some new insights into the case law and generate some interesting discussions.

The course will run from 6pm to 8pm on Wednesday evenings for six weeks from 19 September 2018. Details are at https://eshop.qmul.ac.uk/product-catalogue/ccls/ccls-courses-events/case-law-of-the-epo-boards-of-appeal. We hope to see some of you there.

Christopher Rennie-Smith is a former chairman of a Technical Board of Appeal and member of the Enlarged Board of Appeal.

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