The Petition for Review procedure at the European Patent Office (EPO) is a limited form of judicial review enabling parties to have the Enlarged Board of Appeal review decisions made by an EPO Board of Appeal and vacate such decisions if it is established that a fundamental procedural error has occurred. The review is strictly limited to a procedural review and does not involve a review of technical or legal matters considered by the Board of Appeal.
Prior to 2020, these Petitions for Review were typically resolved in about 10 months, providing parties with a swift resolution as to whether or not a Board of Appeal decision might be vacated. However, since then, the EPO has experienced a significant increase in the volume of petitions leading to a substantial backlog.
At the end of 2019, 23 Petitions for Review were pending before the Enlarged Board. In contrast, at time of writing in November 2024, that number had almost exactly doubled to 45.
At the same time, the processing times for resolving Petitions for Review have increased significantly.
By way of example in the second half of 2024, the Enlarged Board of Appeal issued decisions on three Petitions for Review: R13/22, R4/22 and R1/20 which had been pending for over two and a half years; over three years; and four and a half years respectively.
Further investigation of the pending Petitions for Review reveals that the lengthy processing times of R13/22, R4/22 and R1/20 are far from being unusual.
11 Petitions for Review relating to Board of Appeal decisions from 2021 and 2022 were still pending as of November 2024. Oral Proceedings to resolve these cases have now been scheduled and the cases should now all be resolved in 2025.
Of the 22 pending Petitions for Review relating to decisions issued in 2023, Oral Proceedings have been scheduled for only 8 of those cases. This includes R 13/24 where Lord Justice Richard Arnold specifically requested accelerated processing in view of pending infringement and revocation proceedings before the Court of Appeal of England and Wales which had been stayed pending the outcome of this review.
Although further Oral Proceedings may be scheduled, this would seem to indicate that the majority of 2023 Petitions are unlikely to be resolved next year. Where Oral Proceedings have been scheduled on average more than 19 months will elapse between the filing of a Petition against a decision from 2023 and Oral Proceedings actually being held.
Finally, with only one exception – R17/24 in which a summons for Oral Proceedings was issued uncharacteristically fast – just one month after commencement of proceedings, none of the pending Petitions for Review relating to decisions from 2024 have been scheduled for consideration at Oral Proceedings. That is not entirely unexpected given that such Petitions will have been filed recently and have been pending for only a few months.
The following table shows the average times for certain events to take place during review proceedings for Petitions for Review filed from 2018 to 2024. It is clear that the time taken after the initial filing of the Petition for Review for proceedings to commence increased significantly from an average of 25 days in 2018 to 85 days in 2023. Although, processing times in 2024 for the commencement of proceedings were significantly reduced.
By far the most serious source of delay has been the time taken for Oral Proceedings to be scheduled, with this figure steadily trending upwards. As not all cases from 2023 have yet to have Oral Proceedings scheduled, the figures in the table below for 2023 will increase in due course.
*for a more accurate view of what Applicants can expect, a major outlier (R 8/19) has been removed from this average.
When depicted graphically, a trend of increasing processing time from filing to Oral Proceedings taking place is apparent (with the figure from 2023 being omitted in the following as, as noted above, that data set is not yet complete).
The increasing processing times for Petitions for Review are concerning for several reasons.
Delays in resolving Petitions for Review create prolonged uncertainty for the parties involved. When a patent’s status remains unresolved, it complicates business decisions related to product development, market entry, licencing agreements and investment. For businesses, in rapidly evolving sectors, such uncertainty can hinder innovation and market growth as companies hold off critical decisions until they have clarity on their patent rights.
Filing a Petition for Review does not cause a challenged decision to be suspended. This presents particular problems for patentees whose rights may have been incorrectly invalidated. If an opponent’s patent challenge is erroneously dismissed, an opponent always has the option to pursue such a challenge through the national courts or now potentially through an invalidation action in the Unified Patent Court. However, where a patent is erroneously revoked, a patentee’s patent ceases to exist and is not reinstated unless and until the Enlarged Board rules in the patentee’s favour. Even then the restored patent is subject to intervening rights of third parties who make substantial preparations to implement an invention during the period between the erroneous revocation and the patent being re-established.
Although very few Petitions for Review are successful, it is important for the EPO to rule on petitions promptly to ensure that the window of opportunity for third parties to establish intervening rights is as limited as possible, particularly as if a Petition for Review is successful, that will have established that the original erroneous revocation occurred due to a fundamental error on the part of the EPO.
When the European Patent Convention was revised in 2008 to include the Petition for Review procedure, the explanatory remarks to the EPC 2000 stated that: “the possibility of filing a petition for review must not cause long-lasting legal uncertainty for third parties” and that the establishment of a special three-member panel of the Enlarged Board to screen petitions for review was in the “interest of quick and effective” processing and that it was intended that “the proceedings before [the] panel shall be as simple and short as possible.”
With a minority of Petitions for Review now being resolved in less than 18 months and the processing time for some Petitions reaching or exceeding 4 years, it is clear that the original promise of a quick and simple resolution of Petitions for Review, which the EPO previously was admirably achieving, is no longer being met.
In a much-anticipated decision, Technical Board of Appeal 3.3.04 has held that there is no requirement under the EPC for an applicant to amend the description of a patent application before grant (T 56/21). This case is the latest in a developing line of decisions from the EPO’s Technical Boards of Appeal to go against the Office’s long-standing practice of requiring amendments to the description before grant for consistency with the claims.
Of particular interest, the Board declines to refer questions to the Enlarged Board of Appeal which could help resolve this issue, despite having indicated its intention to do so earlier in appeal proceedings. In a detailed decision (running to 90 pages), the Board concludes that a referral is unnecessary, among other things because of recent developments from the Court of Appeal of the UPC and because it views the EPO case law as “evolving” rather than divergent. Ultimately, the Technical Board takes the view that “[t]he wording of Article 84 EPC as well as its context leave no room for requiring, in examination, that the description be adapted to allowable claims to match their subject-matter.” The Board takes the clear view that Article 84 is a requirement to be met by the claims and cannot impose any conditions on the content of the description. Rules 42, 43 and 48, which have previously been suggested by some as a legal basis for requiring description amendments, are also dismissed.
A notable feature of the decision is that the Board sees a clear separation between the assessment of claims for compliance with the clarity and support requirements under Article 84 EPC on the one hand, and on the other hand the principles governing the interpretation of those claims post-grant under Article 69 EPC to determine of the extent of protection which they confer. The Board concludes that Article 69 EPC has no relevance in grant proceedings, and criticises the EPO’s current practice as “encroach[ing] on the competence of national courts and legislators” in seeking to use description amendments to “reduce the variability in the determination of the extent of protection of a patent … and to arrive at a more “harmonised” determination of the extent of protection”. Given that the relevance of Article 69 is already the subject of a pending referral to the Enlarged Board (G 1/24), it seems surprising that the Board in this instance has reached such an unequivocal conclusion. This suggests that the Board in the present instance might be seeking to influence that debate, and raises a question as to whether its view on description amendments might change if the Enlarged Board does not see such a clear separation between the rules for claim interpretation pre- and post-grant.
This decision provides applicants with further legal support for refusing an order to amend a description before grant, but it seems unlikely that the EPO will change its Guidelines or its practice unless and until a referral to the Enlarged Board is eventually made on this topic.
We are delighted to announce that Mathys & Squire has upheld its position in the 2025 edition of The Legal 500 for both PATMA: Patent Attorneys and PATMA: Trade Mark Attorneys categories.
Patent Partners Chris Hamer, Alan MacDougall, Martin MacLean, Jane Clark, Paul Cozens, Dani Kramer, Philippa Griffin, James Wilding, Sean Leach, James Pitchford, as well as Alexander Robinson, Peter Arch, Laura Clews, who are newly ranked, are all featured in the 2025 edition of the directory.
Mathys & Squire’s trade mark team has also received recognition in the directory. From our trade mark practice, Partners Margaret Arnott, Rebecca Tew and Gary Johnston, and Helen Cawley who is listed, and Managing Associate Harry Rowe, have been ranked.
The firm received glowing testimonials for its patent and trade mark practices:
”M&S have a very deep technical and legal experience that covers areas very relevant for green carbon sequestration technologies. They also have representation in key markets in Germany and the UK, which makes it very relevant. The team work very well together and drafted in a quick time period our patent application.”
”M&S team of IP experts provides unparalleled knowledge and experience in all areas of intellectual property, including patents, trademarks, design protection, and litigation. The firm’s versatile team of attorneys, scientists, and strategists possesses deep experience navigating complex IP landscapes for high-growth, technology-driven industries.”
”The Mathys & Squire team have been excellent in providing focused and pertinent advice on tricky issues and have shown considerable technical and commercial ability in fintech patent issues.”
”From my first call till today, I have seen a kind and professional approach from Mathys & Squire. Despite my language barriers, their patience and understanding makes me feel comfortable and confident through the communication process. I have worked on two patent applications with them in the last year.”
“The entire team at Mathys & Squire is very professional, welcoming and very patient. We pose some difficult issues sometimes and we always get a prompt, detailed response which enables us to take a final decision with the client. We are very pleased both professionally and administratively.”
“I’ve worked with Mathys & Squire for the last 15 years. They mostly deal with our patent work and some design registration. I’m impressed with the way they deal with all our patent office issues. On a personal level, they are easy to work with and, when we write new patents, they make the process straightforward and painless.”
“I have not found any scientific area of focus where [the] team aren’t comfortable. The Mathys & Squire team do excellent legal work for us and are always on the lookout for information that will help further our understanding of European legal issues.”
”Paul Cozens demonstrates a masterful grasp of the subject area and is solution driven to problem solving.”
”Alan MacDougall has been my trusted business partner for more than 10 years. Alan is diligent person who provides helpful, accurate, and timely answers to questions that are unclear for us. Alan has a wealth of knowledge and experience in the intellectual property field and his useful and appropriate advices has always been of great help to us. We look forward to working with him to further expand our business.”
“If intellectual property is or could be important to your business, and you want to be assured of the best possible advice, then look no further than Mathys & Squire and Dani Kramer in particular, you will be hard pressed to find any better.”
”Sean Leach is technically and legally competent, approachable and responsive.”
“The trade mark team is supportive, available, and interested in supporting the business to grow.”
”Gary Johnston has oodles of experience and is sensible and commercial.’
”Harry Rowe is fantastic and really helps us to secure trade marks and to pursue other IP protections. Harry has integrity and is genuinely interested in our business, which is a tech-start with ambition for global growth and societal change. He gets the importance of the latter also. He helps us to map a pathway forward to support our business to grow.”
”Harry Rowe has excellent communication skills, often having to translate complicated legal agreements for me in a way that I will understand them. He makes sure to get a very clear understanding of what’s unique about our business and can think laterally to identify issues that might become an issue for us in the future.”
For full details of our rankings in The Legal 500 2025 guide, please click here.
We extend our gratitude to all our clients and connections who participated in the research, and we extend our congratulations to our individual attorneys who have earned rankings in this year’s guide.
Mathys & Squire Managing Associate Harry Rowe was recently featured in ‘’Claiming X: lessons from the controversial rebrand that cost Twitter $3.2 billion in brand value ‘’ article by World Trademark Review (WTR) and provided commentary on how the company’s trademark protection strategy looks a year on.
Harry Rowe says: ’’…Trademark examiners at the EUIPO have, in recent years, adopted a stricter approach regarding the level of distinctiveness required for a trademark to be registrable…’’
This comment was first written for and published in WTR on 24 July 2024, to read the full article click here.
As we reported on in 2022, the UKIPO has been working with stakeholders to assist in the challenges faced by industry with respect to standards essential patents (SEPs). This work has resulted in the recent launch of the UKIPO’s “SEPs Resource Hub”.
As many readers will be aware, patents which protect a technology which are deemed essential to implementing a technical standard are known as SEPs. Such technical standards set out how devices interact with each other, such as cellular communication devices which operate in accordance with wireless communication standards (e.g. 3GPP). Use of these standards enable devices to seamlessly communicate with one another, wherever they are located in the world, as long as they are using (and hence implement) the same technical standards.
The SEPs Resource Hub (Hub) seeks to provide a one-stop repository of guidance and signposting for UK businesses as they interact with technical standards and standard setting organisations, enter negotiations in respect of SEPs, as well as matters relating to dispute resolution in the context of SEPs. Having such a Hub will assist businesses to better understand and traverse the often-complex world of SEPs.
The Hub also provides a very useful summary of UK SEPs Case Law, a glossary of SEP related terms, and international SEPs-specific resources. The IPO have noted that the Hub will continue to be updated and evolve over time.
On 19 July 2024, the Court of Appeal under Lord Justice Birss handed down its judgement on the case of Comptroller – General of Patents, Designs and Trade Marks v Emotional Perception AI Limited [2024] EWCA Civ 825. The Court of Appeal judgement overturns the first instance decision of the High Court and upholds the decision of the UKIPO Hearing Officer.
The judgement held that:
The full Court of Appeal decision can be found here.
In response to the issuance of the decision, the UKIPO has suspended its guidance on the examination of patent applications relating to artificial intelligence. It remains to be seen whether the UKIPO’s practice will now revert to that before the first instance decision was issued last November, whereby ANNs are treated no differently to any other form of computer implemented invention.
The EPO Board of Appeal in decision T 0439/22 of 24 June 2024 referred new questions to the Enlarged Board of Appeal on whether and to what extent the description and drawings can be taken into account when interpreting claims for the purposes of assessing patentability. The referral G 1/24 (“Heated Aerosol”) seeks to resolve a long-standing conflict between Articles 69(1) and 84 EPC relating to how claims are to be interpreted before the EPO.
At the EPO, the extent of protection conferred by a patent is governed by Article 69(1) EPC and the requirements for the form and content of patent claims are governed by Article 84 EPC. Article 69(1) EPC states that “The extent of the protection conferred by a European patent or a European patent application shall be determined by the claims. Nevertheless, the description and drawings shall be used to interpret the claims”. The use of the description and drawings to help understand and construe the true meaning and scope of a patent claim is a fundamental principle of claim interpretation applied in infringement proceedings in the national courts throughout Europe (and most if not all other patent jurisdictions) and underpins the “purposive construction” approach applied by the UK courts. At the same time, according to Article 84 EPC the subject matter of the invention for which protection is sought is defined by the claims (and only the claims). The question thus arises whether the claims should be interpreted in the light of the description and drawings as provided for in the second sentence of Article 69(1) EPC merely in order to determine the extent of protection, e.g. for infringement proceedings in the national courts, or whether it is also possible to do so in order to establish whether the requirements of patentability and clarity have been satisfied. EPO case law is divided on this fundamental point, and the referral G 1/24 (“Heated Aerosol”) seeks to clarify the situation.
The EPO’s current practice
In contrast to practice at the UKIPO where claims can be interpreted in light of the description and drawings when assessing patentability and clarity, EPO examining and opposition divisions have long followed the practice set out in the EPO Guidelines for Examination (see GL F-IV 4.1-4.2) whereby the claims of a European patent application must be clear in themselves without reference to description and drawings, because it is only the claims of the European patent, not the description, which are published in all the official languages of the EPO. As such, under current EPO practice before the examining and opposition divisions, the claims are generally read in isolation, giving the words the meaning and scope which they normally have in the relevant art, and only in particular cases where the description gives the words in a claim a special meaning by explicit definition or otherwise, or where the claim wording is particularly ambiguous, will the EPO look to the description to interpret the claims. In this regard, the patent document may be ‘its own dictionary’. However, during prosecution, the EPO will in any case typically require the claim to be amended such that its meaning is clear from the wording of the claim alone.
This practice is supported by a long line of case law in which the EPO Boards of Appeal generally rely on Article 84 EPC as the legal basis for focusing on the claim wording alone to ensure future legal certainty, and often express the view that Article 69(1) EPC concerns only the extent of protection, which in turn is relevant only for the purposes of Article 123(3) EPC and national court infringement proceedings (see e.g. T 1279/04 and T 169/20). On the other hand, there is also another line of case law where the Boards of Appeal have endorsed the opposite view, based on the second sentence of Article 69(1) EPC, that the claims should be interpreted in light of the description and drawings to identify their subject-matter for the purposes of assessing patentability (see e.g., T 1473/19, T 450/20, T 1494/21 and T 367/20). Further, even in the body of case law that generally supports the “claims only” approach, there are decisions which hold that the description, including any definitions therein, should be ignored if the claims are clear on their own merits (see e.g. T 197/10, T 1266/19), and others that go as far as to suggest the claims should always be interpreted on their own merits without consulting the description (see, e.g. T 675/22, T 1924/20). There is thus a clear divergence in the case law on how claims should be interpreted in proceedings before the EPO.
The referral
In the referred case T 0439/22, claim 1 included the term “gathered sheet”, which if given its usual meaning in the art confers novelty to claim 1 in light of prior art which disclosed a spirally wound sheet, whereas if read in a broader but still technically meaningful manner in view of the description, the Board held that claim 1 lacks novelty. Specifically, the description included a broad definition stating that “the term ‘gathered’ denotes that the sheet of tobacco material is convoluted, folded, or otherwise compressed or constricted substantially transversely to the cylindrical axis of the rod“, wherein the Board held that the dictionary definition of at least the term “convoluted” includes “coiled”, such that claim 1, when interpreted in light of the definition set out in the description, encompasses the spirally wound arrangement of the prior art. Thus, the question arose of how to interpret the term and whether the description should be used to interpret what is otherwise considered to be a clear claim.
The exact referral questions in G 1/24 (“Heated Aerosol”) are:
1. Is Article 69 (1), second sentence EPC and Article 1 of the Protocol on the Interpretation of Article 69 EPC to be applied on the interpretation of patent claims when assessing the patentability of an invention under Articles 52 to 57 EPC?
2. May the description and figures be consulted when interpreting the claims to assess patentability and, if so, may this be done generally or only if the person skilled in the art finds a claim to be unclear or ambiguous when read in isolation?
3. May a definition or similar information on a term used in the claims which is explicitly given in the description be disregarded when interpreting the claims to assess patentability and, if so, under what conditions?
Comments
The case for referral put forward by the referring Board in T 0439/22 is compelling and shines the spotlight on an large body of conflicting EPO case law on claim interpretation. Indeed, from an outside observer’s point of view, it may seem surprising that after 50 years the EPO is apparently still wrestling with how to handle such fundamental issues of claim interpretation. The Enlarged Board of Appeal (EBA) will now have to decide whether and to what extent the referral questions are admissible. Meanwhile the EPO has issued a press release stating that practice at the EPO will continue as set out in the current guidelines while the referral is pending, highlighting the significance of the case.
Claim interpretation is clearly a point of law of fundamental importance and, based on the divergent case law on the matter, an EBA decision on the matter would be welcome to ensure uniform application of the law. However, it remains to be seen whether the facts of the case are deemed to warrant the specific referral questions – indeed, the EBA have a habit of dodging or narrowing tricky questions such as these (e.g. as they did in G 1/19). As an example in this regard, it might be queried whether answers to all of the referred questions are really required by the referring Board to reach a decision on the specifics of the case, or whether instead if an answer to question 3 (relating to the extent to which a patent can be its own dictionary) would suffice. The issue of whether the description affects the interpretation of what is otherwise considered to be a clear claim is also relevant to the EPO’s (often criticized) current strict guidelines to adapting the description to the granted claims, which also concerns Articles 84 and 69(1) EPC, and for which a referral to the EBA is hotly anticipated from the ongoing appeal case T 56/21.
Managing IP has released its 2024 guide of the IP STARS legal directory, which recognises the most outstanding practitioners covering several IP practice areas and more than 50 jurisdictions. Each year, the research analysts obtain information through firm submissions, client interviews, as well as online surveys, to identify the leading IP STARS.
We are delighted to announce that Partners Jane Clark, Hazel Ford and Paul Cozens have been named as ‘Patent Stars’ and Partners Gary Johnston, Rebecca Tew as well as Consultant Margaret Arnott have been recognised as ‘Trade Mark Stars.’ Additionally, Partners Philippa Griffin, Nicholas Fox, David Hobson, Martin MacLean and Andrew White have been featured as ‘Notable Practitioners’ in the latest guide. The 2024 Rising Star rankings are due to be released in September 2024.
The firm is also pleased to have maintained its rankings for ‘Patent prosecution’ and ‘Trade mark prosecution’ in the 2024 directory.
For more information, and to view the rankings in full, visit the IP STARS website here.