The EPO’s Boards of Appeal underwent comprehensive reform in 2017, one of the aims of which was to enshrine their independence by delegating power to the President of the Boards of Appeal. Another aim of the reform –one that will be of particular interest to patentees and opponents - was to increase the efficiency of the Boards. A five-year objective has been set to settle 90% of cases within 30 months, and reduce the number of pending cases to below 7000. However, with almost 9000 appeals pending by the end of 2017, this is no small task.
One question is whether this is realistic; another is the effect that this drive to efficiency could have on the quality of decisions.
The number of new cases filed with the Technical Boards of Appeal in 2017 was 2798, an increase of 1.8% from 2016 and 11% compared to 2013, indicating an upward trend in the number of appeals being filed. Of those filed in 2017, 39% were examination appeals and 61% were opposition appeals. Notably, opposition appeals are slightly quicker to be settled, taking on average 35 months compared to 42 months for examination appeals. While the majority of cases have only been pending for two or three years, some appeals are yet to be decided which were filed as early as 2009. Given the significant length of time of appeal proceedings, it is unsurprising that by the end of 2017 the backlog had grown to over 5200 pending opposition appeals, and over 3600 examination appeals. Furthermore, with an apparent increase in the speed of examination of patent applications by the EPO, it seems likely that the number of appeals being filed will continue to rise.
So, how do the Boards plan to reduce the backlog?
Firstly, by increasing the efficiency of the Boards by an ambitious 32%. The aim is to achieve this through a combination of improving working methods, developing specific objectives for each technical board and timelines for the main stages of the appeal procedure, drafting standard clauses for decisions and improving planning for oral proceedings.
In addition, the Rules of Procedure of the Boards of Appeal are being reviewed in order to increase efficiency and predictability for parties to the proceedings. Earlier this year the EPO consulted on a draft set of revised rules. The most significant of the proposed changes are to Articles 10, 12 and 13. Parties may now have requests for acceleration of proceedings granted if they can provide objectively verifiable reasons (Art. 10). This replaces the previous Notice (OJ EPO 2008, 220) which required parties to show a legitimate interest to request acceleration.
Proposed new Art. 12(2) clarifies that the object of appeal proceedings is to judicially review the decision under appeal, and states that a party’s case should be directed to the arguments and evidence on which the first instance decision was based. The revised rules also implement a new three-tiered “convergent approach” to restrict the introduction of new arguments during appeal proceedings. At the first level, any arguments in the statement of grounds of appeal which extend beyond the facts and evidence on which the first instance decision was based are considered to be an amendment to the case and are only admitted at the discretion of the Board (Art. 12(4)). The second level specifies that any amendment to a party’s case after the initial stage (i.e. the grounds of appeal or reply) is subject to a party’s justification (Art. 13(1)). At the third level, the rules stipulate that any amendment to a party’s case at an advanced stage of proceedings (e.g. after issuance of a summons to oral proceedings) will not be taken into account except in exceptional circumstances.
These changes are likely to be welcomed by many applicants, proprietors and opponents who at present are faced with an extensive period of legal and commercial uncertainty during the pendency of appeal proceedings. However, the changes also put the onus on appellants to put their complete case forward from the start, not just in the grounds of appeal but in the first instance proceedings, since broadening the scope of the appeal later on will be even more difficult if the proposed changes come into force.
While the proposed rule changes and other measures to improve efficiency of the Boards are positive steps, it is recognised that increased efficiency alone will not be enough to clear the backlog of pending cases while maintaining the high standard of decisions. At present the number of staff of the Boards of Appeal is just 202, including 28 chairmen, 93 technically qualified and 27 legally qualified members. The report acknowledges that significant additional resources in terms of both staff and facilities are needed in coming years to ensure proper functioning of the appeal system. However, no specific targets for staff levels appear to have been set, and the bar to new entrants to the Boards is extremely high. It could therefore be some time before we see a noticeable increase in the speed of appeal proceedings.
This article first appeared in Intellectual Property Magazine.