In an effort to “increase efficiency” the EPO’s Administrative Council recently approved amendments to the Rules of Procedure of the Boards of Appeal (RPBA). The revisions will come into force on 1 January 2020.
The full text of the revised RPBA can be found here. A summary of the main revisions, and what they mean, is below.
Increased efficiency of the appeal procedure
| Art.1(2) | A list will be published before the beginning of each working year indicating for which cases the Board are likely to hold oral proceedings, issue a communication, or issue a decision. |
| Art.5(3) | The “rapporteur” shall perform a preliminary study of an appeal and assess whether it should be given priority over other appeals. |
| Art.10(2) | If appeals are connected (e.g. applications are based on the same priority document) then the Board will aim to deal with them successively or in consolidated proceedings. The Board no longer require consent of the parties involved to consolidate proceedings. |
| Art. 5(3) | The “rapporteur” shall perform a preliminary study of an appeal and assess whether it should be given priority over other appeals. |
| Art.10(3) | New – on request by a party, the Board may accelerate appeal proceedings. The request must contain a reason justifying acceleration and, where appropriate, be supported by evidence. The Board shall inform the parties of their decision. A court may also request accelerated proceedings (Art. 10(4)), or the Board may accelerate proceedings of its own accord (Art. 10(5)). |
| Art. 11 | The Board shall not remit a case back to the department whose decision was appealed (unless there are special reasons for doing so, e.g. fundamental deficiencies apparent in the proceedings before that department). |
The basis of appeal proceedings
| Art.12 | (1) Appeal proceedings shall be based on |
- the decision under appeal and minutes of any oral proceedings before the department having issued that decision;
- the notice of appeal and statement of grounds
- where there is more than one party, any written reply of the other party filed within four months of notification of the grounds of appeal
- any communication sent by the Board
- minutes of any video or telephone conference with the party sent by the Board.
This revision is therefore to make it more difficult for parties to get new requests, facts, evidence and/or objections admitted during the appeal proceedings.
An EPO appeal is not intended to be a complete re-examination of the case (Art. 12(2)) and so 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” will be considered an amendment to the party’s case and will only be admitted into proceedings at the discretion of the Board.
Furthermore, the Board “shall not admit requests, facts, objections or evidence which were not admitted in the proceedings leading to the decision under appeal, unless the decision not to admit them suffered from an error in the use of discretion or unless the circumstances of the appeal case justify their admittance” (Art. 12(6).
| Art.13(1) | Any amendment to a party’s appeal case after it has filed its grounds of appeal requires justification and will be admitted only at the discretion of the Board. |
The timetable for Oral Proceedings
| Art.15(1) | The Board “endeavour to give at least four months’ notice” of oral proceedings.
Article 15(2)(b)on page 9 of the full text of the revisions (here) also lists reasons which may justify a change of the date of oral proceedings such as a death in the family, marriage or pre-booked holidays or business trips. |
| Art.15(6),(7) | The Board will ensure that each case is ready for decision at the end of the oral proceedings and the decision may be announced orally by the Chair. |
Where the decision has been announced orally, the reasons for the decision may be put in writing in abridged form with explicit consent of the parties.
When do the revisions come into force?
| Art.25(1) | The revised RPBA will apply to any appeal that is pending on, or filed after, 1 January 2020. |
| Art.25(3) | Except, where a summons to oral proceedings or a communication of the Board (Rule 100(2) EPC) is issued prior to 1 January 2020. |
| Art.25(2) | The admissibility of new requests, facts, evidence and objections filed during the appeal proceedings (Art. 12) shall not apply to any statement of grounds of appeal filed prior to 1 January 2020. |
What are the practical implications?
Clients with pending appeals should consider, with their attorney, whether any further submissions of claim amendments, evidence, data, arguments, etc should be made in support of their case before 1 January 2020 because after this date such submission will most likely not be allowed.
Similarly, any grounds of appeal, replies or amendments to a party’s case should be filed before 1 January 2020 if possible.
To avoid not being admitted at the appeal stage all requests, facts, objections, arguments and evidence should be submitted at first instance[i]. Nothing should be held back.
The minutes of the first instance hearing must be checked very carefully to ensure all the relevant issues discussed are accurately described. This is because the minutes will be used as the record to prove what can be appealed.
Any amendments to an appeal case must be submitted with full justification and as early as possible. Late amendments will not be admitted unless they prima facie overcome the objections and raise no new issues. After receiving a summons, amendments will rarely be admitted.
The Board no longer remitting a case back to the department whose decision was appealed (unless there are special reasons for doing so) is a major change and will avoid cases bouncing back and forth between first and second instance and taking many years to resolve.
Conclusion
The EPO have made these fairly considerable revisions to the RPBA with the goal of improving the efficiency of the entire appeal process and, ultimately, speeding things up. The changes will inevitably encourage parties to file many more requests and documents during first instance just in case they are needed on appeal, and this growing trend is already being seen. Only time will tell if the goal of improved procedural efficiency is realised.
