The Rules of Procedure of the Boards of Appeal are the rules that govern the way appeals are conducted at the European Patent Office (EPO). The EPO has recently approved changes to these rules, which are due to come into effect from 1 January 2020. The new rules (known as "RPBA 2020") can be found here. The EPO has said that the aims of the revisions are to increase (i) efficiency, by reducing the number of issues to be treated, (ii) predictability for the parties, and (iii) harmonisation.
The basis of appeal proceedings and ability to subsequently amend your case
Under the new rules, the basis of appeal proceedings is governed by Article 12 and the ability to subsequently amend your case is governed by Article 13.
Perhaps the most striking changes introduced with the RPBA 2020 will be the increased discretion given to the Boards to allow them to decide what is or is not admissible in proceedings.
Under new Article 12, a party’s case is to be directed to the requests, facts, objections, arguments and evidence on which the decision under appeal was based1. As such, it is no longer the case that everything presented at the outset of appeal proceedings is included in the appeal proceedings.
Connected with this, both the decision under appeal and the minutes of any oral proceedings before the department of first instance are expressly listed as being documents upon which the appeal proceedings will be based2. It will therefore be important to carefully review the minutes of oral proceedings and the grounds for the first instance decision to ensure that they accurately reflect what was discussed, particularly if there was anything discussed at oral proceedings that you may wish to reply upon or discuss further in the appeal.
Any requests, facts, objections, arguments and evidence on which the decision under appeal was not based will be considered as an amendment to a party’s case3. Such amendments must be identified and justified, and admissibility will be at the discretion of the Boards4. Furthermore, any requests, facts, objections, arguments, or evidence which were not admitted into the first instance proceedings will not be admitted into the appeal proceedings unless the decision not to admit them at first instance suffered from an error in the use of discretion by the first instance division or if the circumstances of the appeal case justify their admittance5.
An amendment of a party’s case in appeal proceedings after a summons to oral proceedings has been issued or after expiry of the Rule 100(2) EPC period will not be taken into account unless there are “exceptional circumstances”, justified with “cogent reasons”.
The new rules also aim to reduce the likelihood of the so-called "ping-pong effect" between the Boards and departments of first instance. The Boards will therefore only remit a case to the first instance if "special reasons present themselves for doing so". If all issues can be dealt with by the Board without undue burden, the Board may not choose to remit the case.
As such, it should become less common for Boards to remit a case back to the Examining or Opposition Division. As a consequence of the stricter rules regarding admissibility of appeal submissions, it might be expected that more issues will be dealt with in first instance proceedings and whether the first instance divisions change their practice in response to this remains to be seen.
Additionally, the Boards will now endeavour to issue a Summons at least four months before oral proceedings. The Summons will be in the form of a communication that will also draw attention to the matters of particular importance. The Boards will also provide a preliminary opinion on the basis of the written submissions unless it is inappropriate to do so. This communication is intended to allow parties to have some understanding of what it likely to be discussed in the oral proceedings and to prepare accordingly.
Priority of appeals & treating appeals together
Currently, parties to an appeal can request accelerated proceedings in light of, for example, infringement proceedings in a contracting state. From 1 January 2020, Boards will be able to accelerate proceedings in response to requests from parties, or of their own motion without the consent of the parties. A national Court may also request acceleration of appeal proceedings and will not need to provide a specific reason for requesting acceleration (contrary to the requirements for a party requesting acceleration).
Boards will have discretion to determine the "priority" of appeals, particularly whether an appeal should be given priority over another appeal. Some guidance suggests that this will be the case if, for example, remittal seems likely or if the appeal appears to be inadmissible. This will allow the Boards to more efficiently deal with inadmissible appeals.
Boards will also have discretion to treat appeals together where they are "clearly connected". In this respect, the Boards will be able to decide to deal with such appeals one immediately after another or to consolidate appeal proceedings where appropriate.
In general, however, cases will still be treated on the basis of the "first in, first out" principle.
In addition to the changes listed below, a list of appeal hearings expected to be heard by each Board will now be published at the beginning of every working year, allowing parties to more effectively budget and plan for hearings.
Applicability of new rules and practical steps
|The new rules will apply to all appeals pending on, or filed after, 1 January 2020 subject to the provisos that:|
|New Article 12(4)-(6) governing the basis of appeal proceedings will not apply to a statement of grounds of appeal filed before 1 January 2020 or to replies filed thereto within the 4 month period (this is even if the 4 month period expires after 1 January 2020)|
|Any submission which is already on file by 1 January 2020 and which is subsequent to the statement of grounds of appeal or the reply filed thereto will be subject to new Article 13(1), which governs amendment to a party’s case|
|In appeals where a summons to oral proceedings has already been issued before 1 January 2020, new Article 13(2), which governs amendment to a party’s case after notification of a Summons, will not apply|
Therefore, the applicability of new Article 12 governing the basis for appeal proceedings will be dictated by when the statement of grounds of appeal is filed.
Thus, for any case where the Notice of Appeal is due up until 1 January 2020, consideration should be given to also filing a statement of grounds of appeal before 1 January 2020 so that new Article 12(4)-(6) will not apply to the statement of grounds of appeal.
For any case where the Notice of Appeal is due after 1 January 2020 or where the deadline has not yet been set but an adverse decision has been issued by the Opposition Division or Examining Division towards the end of 2019, consideration should be given as to what extent it might be possible to file a notice of appeal and statement of grounds of appeal before 1 January 2020 so that new Article 12(4)-(6) will not apply to the statement of grounds of appeal.
Aside from the provisos set out above, the new rules will apply and applicants, opponents and patentees alike should prepare now for this.
For applications where a Summons has been issued by the Examining Division, a review should be undertaken to determine whether additional arguments, facts, evidence or requests should be filed at the first instance level by the Rule 116 deadline in case of refusal and subsequent appeal.
For new oppositions, parties should ensure that statements of grounds of opposition and responses thereto are as complete as possible in terms of arguments, facts and evidence. For patentees, it is also important to include a complete set of Auxiliary Requests containing amendments with their response. For oppositions that are already pending before the Opposition Division, a review should be undertaken to determine whether additional arguments, facts, evidence or requests should be filed at the first instance level.