Translation from Danish of "Bekendtgørelse nr. 892 af 21. september 2009: Bekendtgørelse om Ankenævnet for patenter og varemærker"

Order No. 892 of 21 September 2009

Order on the Board of Appeal for Patents and Trademarks

Pursuant to section 7 (2) and (4) of the Patents Act, cf. Consolidated Act No. 91 of 28 January 2009, and section 17 (1) and (2) of the Protection of the Topographies of Semiconductor Products Act No. 778 of 9 December 1987 it is laid down that:

Part 1

Powers of the Board of Appeal

Section 1

The Board of Appeal shall consider appeals from decisions made by the Patent and Trademark Office. An appeal may relate to:

(i) patents, cf. sections 25 and 67 of the Patents Act,

(ii) supplementary protection certificates, cf. section 91 of the Patents Act,

(iii) utility models, cf. section 25 of the Utility Models Act,

(iv) designs, cf. section 22 of the Designs Act No. 251

(v) designs, cf. section 34 of the Designs Act No. 1259,

(vi) trade marks, cf. section 46 of the Trade Marks Act,

(vii) collective marks, cf. Section 2 of the Collective Marks Act,

(viii) topographies of semiconductor products, cf. section 17 of the Protection of the Topographies of Semiconductor Products Act and

(ix) requests for inspection of files relating to paragraphs (i)-(viii) above.

Part 2

Composition and organisation

Section 2 

(1) The Board of Appeal shall consist of not more than 18 members appointed by the Minister for Economics and Business Affairs. Appointments shall be for a term not exceeding 5 years. At least two of the members, including the chairman and vice-chairman, shall meet the general requirements for being appointed High Court judges, while the other members shall jointly possess an optimum expert knowledge of patents, utility models, designs, trade marks and topographies of semiconductor products. The members shall be graduates from the Technical University of Denmark or another institute of higher education or have acquired the necessary expertise in another manner.

(2) Members of the Board of Appeal shall be eligible for reappointment.

Section 3

(1) The chairman of the Board of Appeal shall ensure that the Board conducts its work in an appropriate manner and may lay down further rules governing the activities of the Board. In the absence of the chairman, the vice-chairman shall deputise. The chairman shall be assisted by a Secretariat.

(2) In the absence of the chairman, the vice-chairman shall exercise the powers vested in the chairman under this Order.

Section 4

(1) The chairman may convene a joint meeting of all members of the Board of Appeal to provide information on and to discuss the administrative affairs of the Board and other issues of importance to the activities of the Board.

(2) A minority group of three members may convene a joint meeting of all members with a view to making a binding decision on issues relating to the activities of the Board of Appeal. The joint meeting shall constitute a quorum if attended by at least half of the Board members. Decisions shall be taken by a simple majority. In the event of parity of votes, the vote of the chairman shall be decisive.

Section 5

The chair of the Board of Appeal shall decide whether and to what extent the decisions of the Board shall be published.

Part 3

Secretariat

Section 6

(1) The Ministry for Economics and Business Affairs shall place the services of a Secretariat at the disposal of the Board of Appeal.

(2) Experts may be made available to the Secretariat as consultants.

Section 7

The Secretariat shall assist the Board of Appeal in its work, including the regular updating of the Internet homepage of the Board and the preparation of its annual report.

Part 4

 Preparation of the appeal proceedings

Section 8

(1) An appeal shall be filed with the Board of Appeal by the appellant or his agent.

(2) The appeal shall state:

(i) the decision appealed from,

(ii) the claim of the appellant and

(ii) the allegations and evidence of the appellant.

(3) If the appellant intends to submit evidence not previously submitted, such evidence shall be indicated in the appeal. If the appellant wishes to make further submissions, a request to that effect shall be made in the appeal. The Board of Appeal shall fix a time limit therefor.

(4) The appeal shall be accompanied by a fee for appeal of DKK 8,000 for appeals in respect of patents, cf. section 1(i), DKK 5,000 for appeals in respect of utility models, cf. section 1 (iii), and DKK 4,000 for appeals in respect of the other rights referred to in section 1. If payment is not made before the expiry of the time limit for the appeal, the appeal shall be rejected as inadmissible.

(5) In the circumstances referred to in section 27 in which a request is made for the reopening of an appeal case, an appeal fee of DKK 4,000 shall be paid.

(6) No fee shall be payable for an appeal against a refusal of a request for the inspection of files.

(7) If the appeal is rejected as inadmissible, the fee shall be reimbursed. If the appeal is allowable, the Board of Appeal may decide to reimburse the fee wholly or in part.

(8) If the Board of Appeal so requests, the appeal shall be accompanied by a power of attorney for the agent, if any.

Section 9

(1) If the appellant is opposed by another party, the Board of Appeal shall inform the latter about the appeal.

(2) If the appeal is not rejected as inadmissible, a copy of the appeal and the accompanying annexes and other submissions which the appellant may have made shall be forwarded to the opposite party, who shall be given the opportunity within a time limit to be fixed by the Board of Appeal to file observations on the appeal. The provisions of section 8 (1) to (3) shall apply mutatis mutandis.

(3) The respondent shall forward his written submissions and annexes thereto to the appellant and to the Board of Appeal.

Section 10

(1) If any party, except in the circumstances referred to in sections 8 and 9, wishes a respite to make further submissions in the case, he shall file a request to that effect in writing without delay. Such a request may be accommodated only to the extent it is deemed necessary in view of the nature of the case.

(2) If additional submissions are made, they shall be forwarded to the other parties to the case.

Section 11

The preparation of the proceedings and the deliberation by the Board of Appeal shall be in writing. As an exception, the chairman may in specific cases decide oral proceedings to take place, cf. Part 5.

Section 12

The Board of Appeal may ask for observations from the Patent and Trademark Office, the parties to the appeal or special experts. The parties shall be given the opportunity to comment on such observations within a time limit to be fixed by the Board.

Section 13

(1) When the preparation of the proceedings is concluded, the parties to the appeal shall be given the opportunity within a time limit to be fixed by the Board of Appeal to indicate whether they wish oral proceedings to take place or to uphold an earlier request to that effect. A party failing to respond by the expiry of the fixed time limit shall be deemed to have waived oral proceedings.

(2) When the Board of Appeal has declared the exchange of written communications to be concluded, material submitted subsequently shall not be included in the examination of the appeal by the Board unless expressly permitted by the chairman. In the event that the chairman permits new material to be included, it shall be sent to the other parties to the appeal.

Section 14

If the appellant wishes to withdraw his appeal, the chairman shall decide whether the withdrawal may be allowed. The appellant, the other parties to the appeal, and the Patent and Trademark Office shall be notified thereof.

Part 5

Oral proceedings

Section 15

(1). Oral proceedings shall be convened in writing at no less than six weeks’ notice. Before oral proceedings take place, the Secretariat of Board of Appeal shall arrange for the time, place and agenda to be published on the Board’s homepage.

(2) Not later than two weeks before oral proceedings are due to take place, the parties shall forward a statement of claims to the Secretariat of the Board of Appeal with a copy to any opposite party. The statement of claims shall contain the party’s claims and allegations, a list of the documents, which the party intends to submit in support thereof, and any evidence, which is intended to be, submitted during the appeal proceedings.

(3) In the event that a party during oral proceedings wishes to discuss or to substantiate individual annexes to the appeal, copies of such annexes or extracts thereof shall be enclosed with the statement of claims.

Section 16

Oral proceedings shall be public. The chairman of the Board of Appeal may, however, decide that proceedings shall be conducted in camera if it is considered necessary in order to prevent the disclosure of commercial secrets or if otherwise indicated by special circumstances.

Section 17

If any party, witness or expert is not sufficiently familiar with the Danish language, the services of an interpreter shall be employed in the oral proceedings unless the chairman decides otherwise. The chairman shall decide who shall bear the associated costs.

Section 18

(1) During the oral proceedings a party may not amend his claim or submit new claims or evidence. If the Board of Appeal finds it excusable that the amended claim or the new allegations or evidence have not been submitted earlier, the submission thereof shall be permitted as an exception. The same shall apply if the Board of Appeal finds that the amended claim may be considered included in the existing claim or simply clarifies the latter.

(2) If the Board of Appeal permits a party to amend his claim or to submit new allegations or new evidence, the Board may of its own motion or upon request decide to postpone the appeal proceedings.

(3) Witness statements shall not be permitted unless the Board of Appeal exceptionally so permits.

(4) If the Board of Appeal during the oral proceedings wishes to produce material or to include issues which may be essential to the appeal and to which the parties have not previously been introduced, the appeal proceedings shall be postponed if so requested by any of the parties, and postponement is not obviously unnecessary.

Part 6

Deliberation and decision

Section 19

(1) With due regard to the nature of the individual case, the chairman shall decide which and how many of the members of the Board of Appeal apart from the chairman shall participate in the examination of and decision on the appeal, cf. however subsections (2) and (3).

(2) In the examination of and decision on appeals from decisions of the Patent and Trade Mark Office in respect of patents, normally the chairman, one legal and three technical expert members shall participate, the minimum participation being the chairman and one technical expert member.

(3) In the examination of and decision on appeals from other decisions, the minimum participation shall be the chairman and one expert member, cf. however section 14.

Section 20

A member may not participate in the examination of an appeal if the member is disqualified under part 2 of the Public Administration Act.

Section 21

If oral proceedings have taken place, no member who has not participated at all stages of the proceedings shall participate in the decision.

Section 22

Following exchange of written communications, the Board of Appeal shall decide on the appeal by approving the draft decision formulated on the basis of the deliberation. If oral proceedings take place, the decision shall be made by oral deliberation after conclusion of the oral proceedings.

Section 23

(1) Decisions shall be taken by a simple majority. In the event of parity of votes, the vote of the chairman shall be decisive.

(2) If the decision requires a vote on more than one issue, the members who were in the minority on one issue shall be bound to participate in subsequent votes.

Section 24

(1) The decision of the Board of Appeal shall be formulated in writing and signed by the chairman.

(2) The decision shall state:

(i) the date of the decision

(ii) the names of the parties and their agents,

(iii) the claims and allegations of the parties,

(iv) the production of evidence and

(v) the grounds and conclusion.

(3) If the decision is not unanimous, it shall include a statement of the minority opinion.

Section 25

The Board of Appeal may correct errors appearing in the decision if such errors are of a formal nature.

Section 26

The decision of the Board of Appeal on the appeal shall be forwarded to the parties involved. The decision shall, moreover, be forwarded to the Patent and Trademark Office, which shall take such steps as arise from the decision of the Board.

Part 7

Reopening of the appeal

Section 27

If so requested, the chairman may in exceptional cases decide that an appeal case shall be reopened within two months of the date of the decision of the Board of Appeal.

Part 8

Special provisions

Section 28

The rules of this Order shall apply to applications for patents to be granted with a secret status to the extent that it is compatible with the provisions relating to such applications.

Part 9

Provisions as to entry into force

Section 29

(1) This Order shall enter into force on 1 October 2009.

(2) Order No.735 of 27 August 2002 on the Board of Appeal for Patents and Trademarks is repealed.

The Ministry for Economics and Business Affairs,

21 September 2009

Lene Espersen

/ Katrine Winding