As part of measures to improve efficiency and predictability of proceedings before the Boards of Appeal of the European Patent Office (EPO), the EPO has launched a consultation to revise the Boards’ Rules of Procedure.
In essence, the proposed changes published with the consultation mean that parties to an appeal would face a more stringent system, although many of the changes simply reflect the Boards’ current practices. Some of the key changes include:
- The consultation proposes that the four month term for filing the reply to an appeal may not be extended, although the Board would have discretion to extend any other deadlines that it sets the parties.
- Consistent with current practice, appeal proceedings may be accelerated at the request of a party, a court or other competent authority, or simply by the Board of its own motion. In a change to previous practice, a requesting party does not need to show “legitimate interest”. However, the Board now requires the party to provide “objectively verifiable reasons” with “concrete evidence”. The Board has discretionary power to decide on such a request from a party. According to the explanatory remarks released with the consultation, a request for acceleration from a court will normally be granted by the Board. The term “court” is intended to include the proposed Unified Patent Court (UPC).
- Many of the proposed changes relate to amendments to a party’s case. The proposed changes are consistent with recent developments in case law and introduce a “convergent approach” based on the underlying principle that as time passes it should become more difficult to amend an appeal.
- Under the proposed Rules, not everything filed at the outset of the appeal proceedings would be automatically in the appeal proceedings. The appeal case needs to be based on the decision under appeal and any submissions that do not address the appealed decision can be considered an amendment to the party’s case and admitted only at the discretion of the Board. The Board also has discretion not to enter into the proceedings any facts, objections, evidence or requests that that it considers should have been filed in the first instance proceedings, or that were filed at first instance but not entered into the first instance proceedings.
- The statement of grounds of appeal and the reply should contain the party’s complete case, including all the requests, facts, objections, arguments and evidence relied on. Therefore, any changes or additions at a later stage in the appeal will be treated as an amendment to the case, and will be subject to the Board’s discretion. After a Summons to Oral Proceedings has issued, the Board will not take any amendment to the case into account unless there are exceptional circumstances.
- It is common for the result of an Appeal to be announced by the Chairman of the Board at the end of Oral Proceedings. However, under the proposed new Rules, the Board would then be expected to issue its full written decision on the appeal within three months.
- The amended Rules incorporate existing practice relating to changing a date set for oral proceedings before a Board of Appeal. Essentially, any change of date is at the Board’s discretion and is only likely to be granted if justified by “serious reasons”. The “serious reasons” may only apply to the availability of the representative of the party, not the party itself or any other accompanying persons.
To summarise, it appears that the proposed changes are aimed at codifying existing Board of Appeal practice and key developments in the case law of the Boards of Appeal, with a move towards a more stringent system. The consultation is open to the public and is active until noon (CEST) on 30th April 2018.