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CHAPTER XI APPEALS 1. Suspensive effect The Boards of Appeal are not bound by any instructions. Therefore this chapter deals in detail only with those questions which are relevant for interlocutory revision. In this stage of proceedings the department of first instance is still competent. »»Art. 23(3) »»Art. 109 "An appeal shall lie from decisions of the Receiving Section, Examining Divisions, Opposition Divisions and the Legal Division." »»Art. 106(1) The appeal "shall have suspensive effect". This means that decisions may not yet become final and their effects are suspended. As the decision may not then be enforced, the following do not take place: entry in the Register of European Patents, mention in the European Patent Bulletin and, where appropriate, publication of a new specification of the European patent. 2. Appeals after surrender or lapse of the patent »»Art. 106(2) "An appeal may be filed against the decision of the Opposition Division even if the European patent has been surrendered or has lapsed for all the designated States." 3. Appeals against the apportionment of costs »»Art. 106(4) "The apportionment of costs of opposition proceedings cannot be the sole subject of an appeal." A party to the proceedings who feels that he has been adversely affected by the apportionment of costs may therefore only file an appeal against the decision on costs if he also lodges an appeal against the decision on the opposition on other admissible grounds. 4. Appeals against the decision of the Opposition Division on the fixing of costs »»Art. 106(5) In accordance with Art. 106(5) the decision of the Opposition Division fixing the amount of costs of opposition proceedings may be appealed if the amount is in excess of the fee for appeal. »»Art. 11, RFees 5. Persons entitled to appeal and to be parties to appeal proceedings »»Art. 107 "Any party to proceedings adversely affected by a decision may appeal. Any other parties to the proceedings shall be parties to the appeal proceedings as of right." 6. Time limit and form of appeal »»Art. 108 "Notice of appeal must be filed in writing at the EPO within two months of the date of notification of the decision appealed from. The notice shall not be deemed to have been filed until after the fee for appeal has been paid" to the amount laid down in the Rules relating to Fees under the European Patent Convention. "Within four months after the date of notification of the decision, a written statement setting out the grounds of appeal must be filed." 7. Interlocutory revision »»Art. 109 "If the department whose decision is contested considers the appeal to be admissible and well founded, it shall rectify its decision. This shall not apply where the appellant is opposed by another party to the proceedings." The obligation or possibility of rectification will thus arise in connection with a decision by the Receiving Section, Legal Division or an Examining Division. In opposition proceedings, it only arises in the special case that all the notices of opposition have been withdrawn and the proprietor of the patent files an appeal. The department concerned will rectify its decision if convinced in the light of the grounds of appeal that the appeal is admissible and well founded. This could arise, for example, because: (i) the department failed to take duly into account some of the material available to it at the time the decision was made; or (ii) the department did not receive material filed in the Office in due time before the issue of the decision, owing to an Office error. Interlocutory revision also arises where the decision of the department concerned does not appear to be incorrect, but the applicant presents new information or evidence or files amendments to the application, which overcome the objections of the decision under appeal (see T 139/87, OJ 3/1990, 68). In the case of newly submitted amendments which meet the substantive objections dealt with in the decision under appeal, the decision must be rectified. This could be the case, for example, if the amendments were ones which were actually suggested by the Examining Division in the course of the proceedings, but which the applicant was previously unwilling to make. If the amendments meet the objections contained in the decision under appeal, but raise new ones not yet discussed, interlocutory revision must also be allowed as the applicant has the right to two instances (see T 219/93, not published in OJ). For the advantages of the decision covering more than one objection, see X, 5, last paragraph. 8. Reimbursement of appeal fees »»Rule 67 In the event of interlocutory revision, the reimbursement of appeal fees will be ordered by the department whose decision has been impugned, "if such reimbursement is equitable by reason of a substantial procedural violation". This is particularly the case when in arriving at a decision essential facts or evidence were not taken into consideration e.g. where a document filed at the EPO in good time by the party concerned is not placed in the file before a decision is reached or where the decision is based on facts or evidence on which the party concerned had no opportunity of presenting his comments. If the decision is rectified by an interlocutory revision not because of any substantial procedural violation but e.g. because the party concerned submits amendments at the time of filing the appeal, there will be no reimbursement of appeal fees. 9. Remittal to the Board of Appeal »»Art. 109(2) "If the appeal is not allowed within three months after receipt of the statement of grounds, it shall be remitted to the competent Board of Appeal without delay, and without comment as to its merit." Three months are available for the rectification of the decision by the department of the first instance. Furthermore, when the appeal is not allowed by this department, it is to be remitted without comment to the competent Board of Appeal. It is therefore necessary that the department of the first instance consider the appeal with the highest priority and start immediately the examination on admissibility and in case the appeal is considered admissible in the form in which it has been filed the competent department will start its examination on allowability immediately. It will only rectify its decision if this is possible without further contacts with the party involved. In all other cases the appeal will be remitted to the competent Board of Appeal. 10. Rules of Procedure for the departments of the second instance Details of the proceedings before the Boards of Appeal will be found in the Rules of Procedure of the Boards of Appeal (OJ 1/1983, 7 as amended 10 October 1988, OJ 9/1989, 361; see also Guidance for appellants and their representatives, OJ 6/1981, 176). The Enlarged Board of Appeal has also adopted Rules of Procedure (OJ 1/1983, 3 as amended in OJ 9/1989, 362 and in OJ 7/1994, 443).

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