The purpose of appeal in the patent system: dissenting opinions, oversight and law-making

This article is mostly about appeal procedures at the European Patent Office (EPO). For those readers who are not familiar with how the EPO organises itself, here is a simplified structure:

First Instance: Examining Divisions and Opposition Divisions.

Second Instance: Boards of Appeal which deal with appeals from the First Instance.


Something terrible needs to have happened
for a Petition for Review to succeed

The Enlarged Board of the EPO decides on referrals from the Boards of Appeal on important points of law. The Enlarged Board also deals with Petitions for Review as discussed below.

Petition for Review is not a third instance

This Kat recently read decision R 5/14 which concerns a Petition for Review. A Petition for Review is a relatively new procedure at the (EPO) in which a party can ask the Enlarged Board to review a decision of a Board of Appeal. However for a Petition to succeed there normally needs to be a fundamental procedural defect, and this happens rarely. In the case of R 5/14 the Petitioner had a long list of complaints against a Board of Appeal, but no real chance of success. In its decision the Enlarged Board said:

'The review procedure is an exceptional means of redress created by the legislator in the amended EPC 2000 with a view to rectifying intolerable procedural violations. It was never intended to operate as a third instance. These principles were established in the first decisions taken on petitions for review (see e.g. R 0001/08 of 15 July 2008, Reasons 2 and 3). The right to be heard does not mean that the Board must accept argumentation; it must merely consider it. Equally, it does not mean that the Board has to allow requests; it simply has to give reasons when refusing them. If the Board's response does not satisfy a party, that is not a procedural violation; it simply means that the Board took a different view of the facts. And that is not a matter for the Enlarged Board.'

This statement is a comment both on the function of Petition for Review and also on the extent to which a Board of Appeal needs to ‘indulge’ a party. It made this Kat wonder about the different functions that the appeal process serves within the patent system.

Different types of appeal procedure

There are two types of appeal procedures. Appeals ‘on the record’ or ‘de novo’. Appeals which are ‘on the record’ consider whether something went wrong in the original decision-making process, and this is what happens in a Petition for Review. In ‘de novo’ appeal there is essentially a re-hearing of a case, and to an extent this is what the Boards of Appeal do.

The way the EPO Boards of Appeal work

In this Kat’s experience EPO Appeal Boards have a better understanding of the case law and the principles behind it compared to Examining and Opposition Divisions. That means Appeal Boards can be flexible in applying case law, going beyond a formulaic approach, presumably due to their years of experience compared to the First Instance.


Having the correct perspective
lets you see the bigger picture

An Appeal Board has before it the decision made at First Instance, and is in essence going to look at the correctness of that decision. Appeal Boards are becoming more reluctant to allow new evidence or claims requests to be filed during the appeal proceedings. Whilst this makes it more difficult for the parties in appeal one can see the logic behind it. Within these constraints Appeal Boards do essentially re-hear a case and will often make decisions on the relevant issues which are different from the First Instance decisions.

As an aside it is interesting to note that whilst Appeal Boards are becoming increasingly strict in allowing new claim requests, the introduction of the Central Limitation Procedure at the EPO has created a means for the claims be amended between First Instance and Second Instance in national court proceedings (here).

What are Boards of Appeal correcting?

Many patent decisions can go either way. There will be reasonable arguments for and against, but a decision has to be taken for or against the parties. The concept of the ‘Dissenting Opinion’ (though it does not happen at the EPO) reflects this reality of legal decision-making and allows an alternative version of what could have been decided to be recorded in the decision so that it may benefit the development of case law in some way.

Given that patent decisions are often close to the borderline and made on the basis of complex facts and arguments the means to review them thoroughly needs to be available. Inevitably a proportion will be incorrect. Many decisions are improved simply by having a second set of eyes look at them.

In this Kat’s experience a Board that has in front of them a First Instance decision together with the views of the parties about the decision is well placed to focus on the most relevant issues and arrive at the best perspectives. Thankfully, Boards of Appeal are normally prepared to reconsider any issue that needs to be looked at again, and will do so as is needed to arrive at the most correct outcome. This Kat has found the Boards of Appeal to be more probing in their analysis, more appreciative of the subtleties of a case and better able to match the contribution with the appropriate claim scope in comparison with the First Instance.

When the appeal process creates new law and new directions

This Kat is fascinated by the power that the highest courts have in making new law, and really changing things. There are numerous examples of the EPO Enlarged Board doing this, but equally the US Supreme Court (here) and the UK Supreme Court (previously the Law Lords of the House of Lords) have the ability to make substantial changes to case law or to create new principles. The Court of Justice of the European Union (CJEU) also has this role and for example has recently been interpreting what an ‘embryo’ is (here).


It's not always easy to see the

reasoning behind a decision

This Kat believes the UK Supreme Court’s first patent decision was an interesting one in this respect. In Human Genome Sciences Inc. v Eli Lilly and Company [2011] UKSC 51 the Supreme Court reversed the findings of the High Court and Court of Appeal. These lower courts had viewed the invention to be at the level of a ‘research project’ and not yet at the point of being a patentable product. However the Supreme Court felt a much more lenient view was needed, and I believe introduced a more balanced and nuanced view of how a ‘contribution’ gives rise to patentable claim scope. Similarly in Conor Medsystems Inc v Angiotech Pharmaceuticals Inc. [2008] UKHL 49 the House of Lords tried to change inventive step case law in the UK to be more in line with EPO thinking.

The correcting guidance of oversight

The US Committee on Oversight and Government Reform (here) keeps an eye on the activities of the US government. Its existence shows that every structure with the power to make decisions needs overseeing. At the EPO the Boards of Appeal have the function of keeping Examining and Opposition Divisions in line, and the Enlarged Board in turn oversees the work of the Appeal Boards. The existence of oversight will in itself improve the performance of the First and Second Instances as they bear in mind the possibility of review of their decisions.

The need for ‘good’ reasoned decisions

As mentioned above the existence of a First Instance decision will help an Appeal Board in its work to possibly come to a more correct view. However I believe a Board is helped if the First Instance decision explains its reasoning as fully as possible. Clearly a decision is most helpful when it can be seen how the relevant Instance came to that view and which principles were followed or developed. In this respect this Kat has pondered whether Mr Justice Arnold’s decision Warner -Lambert Company, LLC v Actavis Group Ptc EHF & Others [2015] EWHC 72 (Pat) is a good one in respect of the interpretation of Swiss style claims (Katpost here). It may have been the correct decision but Mr Justice Arnold does not explain why Swiss style claims are directed to an actual manufacture of a product, rather than representing a legal fiction. Swiss style claims are complex (Katpost here) and ignoring that complexity means the decision has arguably not tackled what it should have done. Had Mr Justice Arnold put his reasoning down on paper it would have allowed a more complex debate to happen than has been the case. Perhaps, though he felt it was always for the Court of Appeal to tackle the crucial issue of what a Swiss style claim really means. However this Kat believes that had Mr Justice Arnold provided more reasoning it would have assisted the appeal process for this case.