The EPO has recently revised the Rules of Procedure of the Boards of Appeal (RPBA)1. The revised RPBA will come into force on 1 January 2020. The revisions are fairly extensive and are primarily concerned with harmonising the practices of the various different Boards of Appeal. The EPO is also hoping that the changes will increase the overall efficiency of the appeal procedure. Many of the changes may require users of the European patent system to modify their day-to-day practice, both during first instance proceedings and in subsequent appeals.
Introduction Together with the European Patent Convention itself, the RPBA govern the appeals procedure at the EPO. The EPO states that the main aims of the current revisions are to “increase (i) efficiency, by reducing the number of issues to be treated, (ii) predictability for the parties and (iii) harmonisation”2 . The EPO has sought to increase efficiency, predictability and harmonisation by codifying in the RPBA various aspects of Board of Appeal practice that had arisen through case law. These aspects primarily relate to the basis of the appeal proceedings, and the ability of a party to amend its case during the appeal itself. In addition, the amended RPBA contains a number of new provisions that increase the flexibility of each Board of Appeal to actively manage both the progress of individual appeals and their overall workload. Stricter Approach to Amending an Appeal Case – Articles 12 and 13 RPBA Article 12 defines what forms the basis of party’s case at the outset of the appeal proceedings. Article 13 RPBA defines the extent to which the party’s case may be amended during the appeal proceedings. These provisions have been revised significantly in the new RPBA. New Article 12(2) states that a party’s appeal case shall be directed to: “the requests, facts, objections, arguments and evidence on which the decision under appeal was based” Article 12(4) as amended then specifies that:
“Any part of a party’s appeal case which does not meet the requirements in paragraph 2 is to be regarded as an amendment, unless the party demonstrates that this part was admissibly raised and maintained in the proceedings leading to the decision under appeal. Any such amendment may be admitted only at the discretion of the Board. The party shall clearly identify each amendment and provide reasons for submitting it in the appeal proceedings. In the case of an amendment to a patent application or patent, the party shall also indicate the basis for the amendment in the application as filed and provide reasons why the amendment overcomes the objections raised. The Board shall exercise its discretion in view of, inter alia, the complexity of the amendment, the suitability of the amendment to address the issues which led to the decision under appeal, and the need for procedural economy.” According to new Article 12(6), any requests, facts, objections, arguments or evidence that were filed, but not admitted, during the first instance proceedings shall not be admitted during the appeal proceedings unless “the decision not to admit them suffered from an error in the use of discretion” or “the circumstances of the appeal case justify their admittance”. New Article 12(6) also specifies that any requests, facts, objections, arguments or evidence that should have been filed, or that were filed but not then maintained, during the first instance proceedings shall not be admitted during the appeal proceedings “unless the circumstances of the appeal case justify their admission”. Article 13(1) as amended specifies that any amendment to a party’s case after the filing of the grounds of appeal or reply to the grounds of appeal must be justified by the party and will be admitted only at the discretion of the Board of Appeal. In deciding whether or not to exercise its discretion, the Board of Appeal will consider whether the amendment to the party’s case “resolves” (rather than merely “addresses”) the issues in question. When the amendment to the party’s case involves an amendment to a patent application or patent, the party will have to show that it “prima facie overcomes the issues … and does not give rise to new objections”. New Article 13(2) states that any amendment to a party’s case filed after a summons to oral proceedings “shall, in principle, not be taken into account unless there are exceptional circumstances, which have been justified with cogent reasons by the party concerned”. The Practical Implications of The Amendments to Article 12 and 13 RPBA The intention of the changes to Article 12 and 13 is to make it the primary object of appeal proceedings “to review of the decision under appeal in a judicial manner”3 . In other words, the appeal proceedings should not simply be a continuation of the first instance proceedings, with the parties relying upon new requests, facts, objections, arguments and evidence, but rather should be primarily based on the requests, facts, objections, arguments and evidence upon which the first instance decision was based. The case law of the Boards of Appeal had already been moving in this direction in recent years. Specifically, it had become increasingly difficult to introduce new requests, facts, objections, arguments and evidence on appeal. Indeed, some (though not all) Boards of Appeal had already BRIEFING PATENTS TRADE MARKS DESIGNS IP LITIGATION © J A Kemp 3 www.jakemp.com adopted a similarly strict practice to that now codified in Articles 12 and 13. It is to be hoped that the practices of the various different Boards of Appeal when considering admissibility of new materials submitted during appeal proceedings now converge and become more predictable in the future. In terms of practical implications for users of the European patent system, it will be ever more important for parties to ensure that their complete case is filed, and admitted, during the first instance proceedings. In practice, the easiest way to ensure that requests, facts, objections, arguments and evidence are admitted during the first instance proceedings is to file those requests, facts, objections, arguments and evidence as early as possible. For example, during opposition proceedings, opponents should try where possible to file their complete case with the opposition statement, whilst patentees should seek to file their complete case with the response to the opposition. Any requests, facts, objections, arguments and evidence filed at these stages will be admitted into proceedings, whereas the admission of anything filed later is subject to the discretion of the Opposition Division. It will continue to be very difficult to persuade Boards of Appeal to admit materials that were not admitted at first instance. It will usually be clear from the written submissions of the parties and the resulting written decision whether or not a given request, fact, objection, argument or piece of evidence was “admissibly raised and maintained” in the first instance proceedings. However, complications may arise if, for example, arguments/objections are raised for the first time during first instance oral proceedings. In such cases, it will now be more important to check that the new arguments/objections appear in the written decision and/or minutes of the first instance oral proceedings4 . If those arguments/objections do not appear in the written decision and/or minutes, then it may be necessary to challenge the content of the minutes. It will be interesting to see how departments of first instance deal with requests to change the minutes of oral proceedings, particularly in inter partes proceedings where the parties do not agree on how the minutes should be changed. Given that the EPO prohibits recording of oral proceedings, it is at present not clear what type and weight of evidence the department of first instance will require in order to change the minutes, and to what extent (in inter partes proceedings) counter-evidence from other parties will be taken into account. Anecdotal reports of recent attempts to have the minutes changed suggest that it is generally difficult, precisely because there is no indisputable evidence available afterwards that a particular argument or objection was raised. Good notetaking by attorneys during the first instance hearing might potentially lead to some documentary evidence that can be submitted if the minutes need to be challenged later. When a party does wish to file new requests, facts, objections, arguments or evidence during the appeal proceedings, this is considered to be an amendment to the party’s case and should be submitted as early as possible. As the appeal proceedings progress, it will be increasingly difficult to persuade Boards of Appeal to admit amendments to a party’s case into the proceedings. BRIEFING PATENTS TRADE MARKS DESIGNS IP LITIGATION © J A Kemp 4 www.jakemp.com When a party does wish to amend its case during the appeal proceedings, it will be necessary both to identify the amendment and explain why it should be admitted into the appeal proceedings. As part of this assessment, and consistent with the approach currently taken by many Boards, the Board of Appeal will consider whether the requests, facts, objections, arguments or evidence in question should have been submitted at first instance5 . This part of the assessment is another reason why it is important for parties, where possible, to file their complete case early during the first instance proceedings. Overall, although the approach to admissibility set out in Article 12 and 13 as amended is similar to the approach already used by the stricter Boards of Appeal, we expect that the practices of all of the different Boards of Appeal will now converge on that stricter standard. Remittal to The Department of First Instance Article 11 states that: “The Board shall not remit a case to the department whose decision was appealed for further prosecution, unless special reasons present themselves for doing so. As a rule, fundamental deficiencies which are apparent in the proceedings before that department constitute such special reasons.” (Emphasis added) Previously, the default position was that cases would be remitted to the department of first instance if appropriate and unless there were “special reasons” for doing otherwise. By contrast, the revised wording means that remittal is now the exception, rather than being the default position. The intention of these changes is clearly to increase “efficiency” by reducing the number of cases that are remitted to the department of first instance, and then need to be considered by the Board of Appeal a second time following the subsequent decision of the department of first instance. However, the revised wording of Article 11 could, and likely will, result in Boards of Appeal considering issues that were not decided upon at first instance far more often than at present, which would seem to be in conflict with the stated aim of the appeal procedure, namely to review the first instance decision. For example, if an Opposition Division revokes a patent for added subject matter without considering novelty and inventive step at all, then it now seems more likely than before that the Board of Appeal will consider novelty and inventive step during the appeal. It will be interesting to see how practice in this regard develops. Other Changes The remaining changes to the RPBA are generally likely to have less of an impact on users of the European patent system, but the following modifications may be of interest. The EPO will, at the beginning of each working year, publish6 a list of cases for which it is BRIEFING PATENTS TRADE MARKS DESIGNS IP LITIGATION © J A Kemp 5 www.jakemp.com intended that, during the upcoming year: (a) oral proceedings will be held, (b) a written communication under Rule 100(2) EPC inviting observations from the parties will be issued, or (c) a written decision will be issued. The Boards of Appeal will have greater flexibility to (a) give one appeal priority over another7 , and (b) deal with appeals from different decisions that are clearly connected one immediately after the other, and potentially consolidate those proceedings8 . The purpose of these changes is to increase efficiency. The approach taken by the Boards of Appeal with regard to acceleration of the appeal proceedings has been codified9 . These changes will hopefully result in a more consistent approach with regard to acceleration. The practice of the Boards of Appeal with regard to summons to oral proceedings and changes in the date of oral proceedings has been codified10. Notably, although the Board of Appeal must issue a communication setting out the issues to be considered at the oral proceedings, there is still no obligation for the Boards of Appeal to issue a preliminary opinion (in contrast to the position for Opposition Division proceedings). In addition, specific examples of what does, and does not, constitute a valid reason for changing the date of oral proceedings are provided. The four-month deadline for replying to the grounds of appeal may exceptionally be extended by a maximum of two months at the Board of Appeal’s discretion, upon a written and reasoned request11 . The Boards of Appeal will be able to issue “abridged” decisions under certain circumstances. In particular, an abridged decision may be issued if all the parties agree, unless it has been indicated to the Board of Appeal that a third party or court has a legitimate interest in the decision not being abridged12. In addition, an abridged decision may also be issued if the Board of Appeal agrees with the finding and reasoning of the department which issued the decision under appeal13. There is no requirement for the agreement of the parties in this scenario. It will be interesting to see how often Boards of Appeal decide to issue abridged decisions, particularly in the latter case. Transitional Provisions The new RPBA will apply to any appeal pending on or filed after 1 January 2020, subject to transitional provisions which apply to Articles 12(4) to 12(6)14 and Article 13(2)15 . The transitional provisions mean that Article 12(4) to 12(6) will not apply to any grounds of appeal filed prior to 1 January 2020 or to any reply timely filed to such a grounds of appeal. Consequently, and particularly if the Board of Appeal in question currently assesses admissibility relatively leniently, it may be a prudent precaution to file the statement of grounds of appeal BRIEFING PATENTS TRADE MARKS DESIGNS IP LITIGATION © J A Kemp 6 www.jakemp.com prior to 1 January 2020 where possible. Doing so may increase the likelihood of new requests, facts, objections, arguments or evidence being admitted into those appeal proceedings. In addition, the transitional provisions mean that a party may be able to gain an advantage in some cases by delaying filing the grounds of appeal until on or after 1 January 2020. Specifically, it may be desirable to do so in cases where it is expected that the respondent to the appeal will seek to file new requests, facts, objections, arguments or evidence with the reply to the appeal. The chances of such new materials being admitted under the new regime may be somewhat lower than under the current regime. The new wording of Article 13(2) shall not apply to any cases where a summons to oral proceedings has been notified prior to 1 January 2020: rather the existing wording of Article 13 shall continue to apply to such cases. On any existing appeals where a summons to oral proceedings has not yet issued, and particularly if the Board of Appeal in question currently assesses admissibility relatively leniently, it may be advisable to consider whether there are any new requests, facts, objections, arguments or evidence that should be filed prior to 1 January 2020, under the current regime. Conclusions The efforts to codify many aspects of Board of Appeal practice currently governed by the case law are very welcome, and will hopefully result in the various different Boards of Appeal taking a more consistent and predictable approach. Further, the Boards of Appeal are sending a message that parties should present their entire case as early as possible during proceedings, and should not expect to have changes to their case admitted later in proceedings as a matter of course.