Journal of Intellectual Property Law & Practice Advance Access originally published online on October 23, 2009
Journal of Intellectual Property Law & Practice 2009 4(12):876-892; doi:10.1093/jiplp/jpp168
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© The Author (2009). Published by Oxford University Press. All rights reserved.
Practice Point |
Petitions for review of European Patent Office (EPO) Appeal Board decisions by the EPO Enlarged Board of Appeal
Legal context: With the amendment to the European Patent Convention which came into effect in December 2007, there arrived the possibility for those unhappy with a decision by one of the European Patent Office's Boards of Appeal to petition the Enlarged Board of Appeal to review the decision, and return the case for re-hearing.
Key points: The grounds on which such a petition could be founded are limited but for a patentee whose European Patent has been revoked, a petition represents the only possible way to have his patent reinstated. Unsurprisingly, the majority of petitioners in the first year and a half of the new system have been patentees. Only 1 petition out of the 16 disposed of has been successful and the Enlarged Board of Appeal has shown itself to be expeditious but firm.
Practical significance: In this article, the decisions thus far taken by the Enlarged Board of Appeal are reviewed as are the petitions which are either pending or have been withdrawn in order to draw guidance as to how to avoid the necessity of petitioning or how to increase the chances of a petition being successful.
Correspondence: * European Patent Attorney, Frank B Dehn & Co, Oxford, UK. This article represents the views of the author, not his firm. The author, while not involved in the relevant appeal proceedings, was the representative of record of the patentee in R-8/09 Schering; he has attempted to refrain from commenting on the strengths or weaknesses of the petitioner's case. Email: jcockbain{at}frankbdehn.com