The Boards of Appeal of the European Patent Office, i.e. the judicial panel of the second instance of the EPO, examine appeals from the decisions of the Receiving Section, the Examining and Opposition Divisions of the European Patent Office. The Technical Boards of Appeal as well as the Legal Board are independent and are bound only by the European Patent Convention (EPC). The procedure before the Boards of Appeal is outlined in the Rules of Procedure of the Boards of Appeal.
Revised rules of procedure of the Boards of Appeal (RPBA) will come into force on 1 January 2020 (“RPBA 2020”). As set out in the following, the RPBA2020 will have considerable impact on proceedings before the Boards of Appeal.
According to the European Patent Office, the aims of the revision of the rules of procedure of the Boards of Appeal are to increase
(i) efficiency by reducing the number of issues to be treated,
(ii) predictability for the parties, and
The text of the RPBA 2020 as well as a table setting out the current version of the RPBA (in force until 31 December 2019) can be found on the homepage of the European Patent Office.
It is important to know that, in general, the RPBA 2020 will apply to any appeal pending on or filed after the date of the entry into force (Art. 25 RPBA 2020).
In the following I would like to address, without any claim to completeness, some aspects which will probably be relevant for participants in future unilateral or bilateral appeal proceedings.
In general, the revised appeal procedure will be the judicial revision of first instance decisions and not simply a continuation of the procedure started in the first instance. In this regard, the RPBA 2020 provides three rings of convergence 1) when entering appeal, 2) once the appeal and the reply to the appeal have been filed, and 3) after a communication under Rule 110(2) EPC.
The statement of grounds of appeal and the reply shall contain a party’s complete case. In particular, in new Art. 12(3) it is specified that besides all facts and arguments also all requests and objections shall be comprised.
However, not “everything which has been presented” at the outset of the appeal procedures will be admitted by the Boards. According to Art. 12(4) RPBA 2020, parts of the statements of grounds of appeal or the respondent’s reply which are not directed to facts etc. on which the decision under appeal was based, will be considered as an “amendment” and will only be admitted subject to the discretion of the Board.
Importantly, this not only applies to the amendments to the application or the patent, but to any submission, i.e. facts, arguments, objections, requests and evidence, which the party submitted before the division of the first instance, but on which that division did not base its first instance decision.
In case of an amendment to the patent application or patent, the applicant or patent proprietor shall also indicate the basis for the amendment in the application as filed, and in particular provide reasons why the amendment overcomes any objections raised.
Limitation on a party amending its case once the appeal has been filed
Any amendment to the party’s appeal case after it has filed its grounds of appeal or reply is subject to the party’s justification for its amendment and may be admitted only at the Board’s discretion.
In case of an amendment to a patent application or patent, the onus on the applicant or patent proprietor is to demonstrate that any such amendment prima facie overcomes the issues raised by another party in the appeal proceedings or by the Board and why the amendment does not give rise to new objections.
After a communication under Rule 110(2) EPC or summons to oral proceedings have been issued
The principle of the third level of the convergent approach is an ultimate limitation on a party amending its appeal case. At this stage of the appeal proceedings, amendments to a party’s appeal are only taken into consideration if
- the Board expressly invites a party to file an observation within a period specified by the Board, or- if the party can present compelling reasons which clearly justify why the circumstances leading to the amendment are indeed exceptional in the particular appeal.
When scheduling oral proceedings, the Boards should give at least four months’ notice. With regard to oral proceedings, in most cases, the Board will issue a preliminary opinion along with its communication. The Communication shall draw attention to matters that seem to be of particular significance for the decision to be taken. However, in some cases, the Board may not consider it appropriate to do so.
The Board may also address additional matters during the oral proceedings.
Remittal to first instance
Another amendment refers to remittal. According to Art. 11 RPBA 2020, the Board shall not remit a case to the division whose decision was appealed for further prosecution, unless there are special reasons for doing so. The aim for the new provision is to reduce the likelihood of a “ping-pong” effect between the Boards and the divisions of the first instance and a consequent undue prolongation of the entire proceedings before the EPO. When exercising its discretion, the Board should take this objective into account.
With RPBA 2020 coming into force it will be more difficult to get new facts, evidence or claim requests admitted into the appeal proceedings even at the stage of entering an appeal. Only “amendments” which are directed to the decision under appeal will be admitted. It remains to be seen to what extent this strict regulation will lead to a more stringent approach with regard to the chambers, some of which are already quite strict. In any case, it seems reasonable to examine minutes and decisions issued at the first instance even more closely as to their content and, if necessary, to request corrections in order to be able to refer to them in appeal proceedings. It might also be helpful to request certain important statements from the hearing to be recorded in the minutes of oral proceedings conducted at first instance.
With regard to the principle of convergence as well as to increasing requirements for appeal proceedings, any requests, facts and evidence should be submitted into the proceedings as early as possible, i.e. at the appeal filing stage.
In accordance with the interim regulations some of the stricter provisions shall not apply to
- any statement of grounds of appeal right before the date of the entry into force, and any reply to it filed in due time (Art. 25 & Art. 12, paragraphs 4-6 RPBA 2020) or
- if summons to oral proceedings or a communication of the Board under Rule 100, paragraph 2, EPC has been notified before the date of the entry into force (Art. 25 & Art. 13 paragraph 2 RPBA 2020).
Thus, any parties involved in ongoing appeal proceedings before the EPO should check whether the revised procedural rules of RPBA 2020 apply in their individual case and if there is any need for action.
As most of the new strict amendments depend on the discretion of the Board, it remains to be seen if the aims of harmonization of the proceedings and predictability for the parties will actually be achieved. At present, it seems possible that even more pro-ceedings will be decided on formal reasons such as admissibility than is the case currently. The new rules considerably restrict the parties’ possibilities to submit further requests during the appeal proceedings, and even before the commencement of appeal proceedings. It is to be expected that in particular the first instance will be confronted with a flood of precautionary submissions and, consequently, will be exposed to a significantly increased workload.