On 01 July 2019 the European Patent Office (EPO) approved a revised set of Rules of Procedure of The Boards of Appeal (RPBA) which will come into force on 01 January 2020. Significant changes have been made to the rules, and in particular it will now be much more challenging to have new requests, facts, objections, or arguments admitted into proceedings at the appeal stage.
Several of the amendments to the rules aim to improve the efficiency of the appeal process.
There will now be advance publication of a list of cases for each Board of Appeal in which in the coming year the Board of Appeal is likely to hold oral proceedings, issue a communication, or issue a decision in written proceedings.
Article 5(3) specifies that the rapporteur will carry out a preliminary study of an appeal to consider whether it should be given priority over other cases, for example if it is clearly inadmissible or should be treated together with other related appeals. If appeals are connected (for example divisional applications, parent applications and applications based on the same priority application) then the Board of Appeal will endeavour to deal with them one immediately after the other, or deal with them in consolidated proceedings (Article 10(2)). Consent of the parties is no longer required to consolidate proceedings.
New Article 10(3) specifies that the Board of Appeal may accelerate appeal proceedings on the request of a party. Reasons for accelerating proceedings must be provided by the party, together with supporting evidence. Possible suitable reasons for acceleration suggested by the EPO include pending infringement proceedings, or licence negotiations hinging on the outcome of the appeal. A court can also request acceleration of proceedings (Article 10(4)), and the Board may also accelerate proceedings of its own motion (Article 10(5)).
The new RPBA now also state that a Board of Appeal shall not remit a case to the department of first instance unless there are special reasons for doing so (Article 11). Fundamental deficiencies in the first instance proceedings constitute a “special reason” for remittal. This new provision is to avoid a “ping-pong” effect between the Appeal Board and the department of first instance.
Basis of appeal proceedings
Article 12(1) specifies which documents form the basis of the appeal proceedings. This has been amended to include the decision under appeal, and the minutes of the first instance oral proceedings or any video or telephone conference with the party or parties.
Article 12, paragraphs 4 to 6 of the RPBA make it more difficult for parties to get new requests, facts, evidence and/or objections admitted during appeal proceedings.
New Article 12(2) sets out the purpose of EPO appeal proceedings, namely “to review the decision under appeal in a judicial manner”. An EPO appeal is not intended to be a complete re-examination of the case. A party’s appeal case shall be directed to the requests, facts, objections, arguments and evidence on which the decision under appeal was based. Any part of a party’s case which does not relate to “requests, facts, objections, arguments and evidence on which the decision under appeal was based” is considered to be an amendment to the party’s case which will only be admitted into proceedings at the discretion of the Board of Appeal. When deciding whether to allow an amendment the Board of Appeal will consider the complexity of the amendment, the suitability of the amendment to address issues which led to the decision, and the need for procedural economy. The Board of Appeal will not admit requests, facts, objections or evidence which were not admitted during the first instance proceedings or should have been admitted, or which were no longer maintained, unless it is decided that the decision not to admit them was an error or unless the circumstances of the appeal justify their admittance (Article 12(6)).
Article 13 defines the circumstances under which amendments of a party’s case are allowed at a later stage, i.e. after the grounds of appeal or reply have been filed. Again the Board of Appeal will use its discretion. If an amendment to a party’s case is made at a very late stage in proceedings, e.g. in response to a communication under Rule 100 (2) (an invitation from the Board of Appeal to file observations) or after issuance of the summons to oral proceedings, this shall not be taken into account unless there are exceptional circumstances which have been justified with cogent reasons.
Article 15 (1) indicates that the Board of Appeal will endeavour to give at least four months’ notice of oral proceedings. The circumstances under which oral proceedings can be postponed are also codified.
The new RPBA allow the Boards of Appeal to issue decisions in abridged form with the consent of the parties (Article 15(7)). Where it has been indicated that a third party or court has a legitimate interest in the decision not being in abridged form, they shall not be abridged. Article 15(8) also allows for the Board of Appeal to issue the decision in abridged form if they agree with the department of first instance on one or more of the issues. Importantly, the consent of the parties is not required in these circumstances.
Article 15(9)a) indicates that the Board of Appeal will aim to issue a Decision within three months of the oral proceedings, and if it is unable to do so it will inform the parties of when the decision will be despatched.
Entry into force / transitional provisions
The revised version of the RPBA will apply to any appeal that is pending on, or filed after, 01 January 2020, except if:
- a summons to oral proceedings or a communication under Rule 100(2) EPC is issued prior to 01 January 2020.
- Article 12, paragraphs 4 to 6 of the revised RPBA (which relate to the admissibility of new requests, facts, evidence and objections filed during the appeal proceedings) shall not apply to any statement of grounds of appeal filed prior to 01 January 2020.
Clients should review any pending appeals and consider filing any claim requests, evidence, data or arguments which would support their case but have not yet been submitted as soon as possible, and certainly in advance of 01 January 2020. Any grounds of appeal, replies or amendments to a party’s case should be filed in advance of 01 January 2020 if possible.
In relation to first instance proceedings, parties should take care to file all relevant requests, facts, objections or evidence at this stage to avoid them not being admitted at the appeal stage.
It is also now more important than ever to check carefully the minutes of the first instance oral proceedings to make sure that all relevant issues discussed at the oral proceedings are described, in case it is necessary to rely on these on appeal.
Whilst the EPO intends for the amended rules to speed up the appeal process, it remains to be seen whether this will actually be the case. Instead the rules may encourage parties to file an increasing number of requests and documents during first instance proceedings just in case they are needed on appeal.