UK: Is A Prima Facie Inadmissible Appeal An Appeal? And If It Is, Where Is It?

Last Updated: 29 August 2019
Article by Robert Margue

The Enlarged Board of Appeal of the EPO recently had to decide (G 2/19) an intriguing question arising from the relocation of the Boards of Appeal to the municipality of Haar in the Munich district, which lies outside the boundaries of the city of Munich. The question arose on the back of an Appeal filed by a third party against the grant of a European patent, which had the aim of correcting the allegedly unjustified grant of unclear patent claims.

European Patent EP 2 378 735 B1 was granted on 8th February 2017. During examination proceedings prior to grant of the patent, 3rd party observations had been filed on several occasions by European Patent Attorney P in accordance with Art. 115 EPC. According to the second sentence of this Article, any person who files 3rd party observations does not become party to the proceedings. The only party in the examination proceedings is the sole applicant.

After grant of the European patent, P filed an Appeal against the decision to grant. Art. 107 EPC, which governs the Appeals Procedure, states that only a party to proceedings may appeal a decision. Applied to this case, this means that the P who filed 3rd party observations was not party to the examination proceedings and therefore had no right to appeal the decision to grant a European patent.

In their Grounds of Appeal, P argued that the grant of a patent was unjustified due to lack of clarity of the granted claims. Since lack of clarity is not an admissible Ground of Opposition, an appeal against the grant of a European patent is the only way for a 3rd party to defend their own interests (and those of the general public). In addition, according to P, since the 3rd party observations submitted during the examination proceedings did not prevent the grant of unclear claims, the right to be heard of the 3rd party was violated, causing substantial harm to the interests of the general public.

After receipt of the Grounds of Appeal, the Board of Appeal issued a communication, indicating their preliminary view that P's Appeal is inadmissible. After further written submissions by P, the Board issued a summons to Oral Proceedings, together with a communication in which they indicated that they still consider the Appeal inadmissible. The Summons indicated that the Oral Proceedings would be held in Haar, the location of the offices of the Boards of Appeal. Haar is outside the boundaries of the city of Munich (while still within the administrative district of Munich). In response to the Summons, the Appellant then requested that the Oral Proceedings be moved to Munich, and that the case be referred to the Enlarged Board of Appeal. The Board reacted by cancelling the Oral Proceedings and issuing an interlocutory decision, referring three questions to the Enlarged Board of Appeal. Questions 1 and 2 concerned the issue whether the Appellant had the right to Oral Proceedings in a case where a case was prima facie inadmissible (1), and whether the constellation of the present case was indeed a case of a prima facie lack of admissibility (2). The third question related to holding Oral Proceedings in Haar.

At the end of Oral Proceedings on 16th July 2019, the Enlarged Board rejected question (1) as inadmissible. Question (2) was reformulated and the answer stated that a 3rd party in the sense of Art. 115 EPC who appealed a decision to grant on the Grounds that the granted claims were unclear under Art. 84 EPC, had no right to Oral Proceedings, and that this Appeal would not have a suspensive effect. Finally, the Enlarged Board found (Question 3) that holding Oral Proceedings in Haar does not contravene Art. 113(1) and 116(1) EPC. The reasons for the decision have not yet published.

The answers given by the Enlarged Board of Appeal suggest that in the present case, where a 3rd party files an appeal against a decision to grant on the grounds of lack of clarity of the granted claims, no Appeal ever existed. Any conditions that the EBA may lay down for an Appeal to be sufficiently close to admissibility to give the would-be appellant the right to oral proceedings will be of interest. One possibility is that a person who is not party to the proceedings, and accordingly has no right to appeal under Art. 107 EPC, in general does not have a claim to having their status as a non-party to the proceedings reviewed in Oral Proceedings, even if they did file submissions under Art. 115 EPC during examination. It is also possible that the reasoning will be more limited in scope, and applied to the present case, where there was no attempt by P to present themselves as party to the proceedings in writing.

Concerning the location of Oral Proceedings in Haar, many have expressed the view that there is nothing in the EPC preventing the European Patent Office from holding Oral Proceedings outside the seat of the Organisation. The questions remains, however, whether a Division of the European Patent Office may decide to summons to oral proceedings anywhere within the territories of the Contracting States (or even outside). It will be interesting to see where the Enlarged Board of Appeal draws the line. One could imagine a case in which the parties to the proceedings, or their representatives, are resident in the same Contracting State and there are practical hurdles for the parties to travel to Munich, Haar, or the Hague to attend proceedings.

The Reasons of the Decision by the Enlarged Board of Appeal should make for some interesting reading.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions