Can you appeal further from an EPO Appeal decision? 

In this article we discuss if it is possible to Appeal further from an EPO Appeal decision.

In the rare circumstances noted below, you can. An “Enlarged Board” of Appeal is then constituted.

Take diagnostic methods for example, the Enlarged Board ruled that methods involving interactions with a human or animal body are excluded by statute (G1/04). In a further decision, the Enlarged Board examined whether a computer-implemented simulation qualifies as a patentable invention. The Board held that such simulations can possess technical character if, and only if, they produce further technical effect beyond the mere execution of software on a computer (G1/19). 

These are not merely theoretical enquiries. They go to the heart of how legal certainty is maintained in a complex and evolving technological landscape. One of the core purposes of the Enlarged Board is to maintain consistent legal interpretation among the various Boards of (regular) Appeal, which hear Appeals from decisions made by first instance divisions of the EPO.

When can such an Appeal of an Appeal be considered by the Enlarged Board?  

If there are diverging (regular) Appeal decisions on legal issues, the Enlarged Board helps resolve such inconsistencies. In addition, when legal questions arise that are of fundamental importance to the interpretation of the EPC, the Enlarged Board is constituted to provide an authoritative answer. These questions typically concern complex or novel points of the law with implications beyond an individual case.  A Board of (regular) Appeal may refer a case either ex officio or at the request of a party. However, even if a party requests a referral, the board is not obliged to grant it unless the legal criteria are met.

Consideration from the Enlarged Board to address these matters, may be precipitated by the President of the European Patent Office (EPO).

If a Board of (regular) Appeal committed a substantial procedural violation, the parties may file petitions for review by the Enlarged Board.

However, the Enlarged Board is only constituted in exceptional circumstances, with an average of two cases heard per year. Therefore, it is difficult to have an Appeal decision overturned by reference to the Enlarged Board. Typically, once an Appeal has been heard in the European patent office and a decision made, it cannot be taken any further; although in some circumstances an Appeal board will remit the matter back to the first instance division, such as the Opposition Division.

Once published, these decisions can have wide-ranging implications across all future EPO proceedings. For example, the key findings from G1/04 (supra) were that the exclusion only applies to methods that include all the steps necessary for making a medical diagnosis – namely, the examination, data collection, comparison with standard values, finding any significant deviation (symptom), and finally, the attribution of that deviation to a particular clinical picture (i.e. the diagnostic conclusion). Crucially, only one of these steps must be performed on a human or animal body and carried out by a medical or veterinary practitioner for the exclusion to apply. If one or more of these diagnostic steps is missing, or the method only involves preliminary steps (e.g. data acquisition or processing) the method may not fail under the exclusion and may be patentable.

In G1/19 (supra) the Board emphasized that the technical effect must be assessed on a case-by-case basis and that the simulation’s contribution to solving a technical problem is determinative for patent eligibility.  The decision conclusively clarified that simply using simulations does not automatically confer technical character; rather, the simulation’s purpose and implementation must demonstrate a tangible technical contribution.

The Enlarged Board strives to maintain the stability and predictability of European patent law. It is rarely constituted, and so it is only in exceptional circumstances that an applicant can appeal to the Enlarged Board from an earlier Appeal Decision from the EPO.  For better or worse, most Appeal decisions at the EPO are final. 

Emma Buchan
Patent Engineer
Cranach Patent Attorneys