In our recent article we reviewed EPO Boards of Appeal’s 2017 Annual Report. The report discussed the Boards’ five-year objective to reduce the backlog of almost 9000 cases to below 7000, and settle 90% of cases within 30 months. In this article, we ask whether these ambitious targets can be achieved, and consider potential impacts for patentees and opponents.
As previously noted, the Boards’ plan to reduce the backlog rests upon increasing the efficiency of the appeal procedure – by reformulating the Rules of Procedure to restrict the introduction of new arguments which diverge from a party’s original case – and employing additional staff. The question however is whether these measures will be enough to reduce the backlog if the number of appeals being filed continues to increase at the present rate, particularly given that the factors which influence the filing of new appeals are entirely out of the Boards’ control.
In recent months there has been a noticeable increase in the speed of examination at the EPO, with summons to oral proceedings being issued earlier in the procedure. Since applicants are having fewer opportunities to try out different arguments and amendments, it seems likely that this change in practice will lead to an increase in the number of examination appeals. On the other hand, Examiners are also engaging more readily with representatives to try to resolve any issues which are preventing applications from proceeding to allowance. While this approach will be welcomed by patentees, a faster examination procedure may lead to an increase in the rate of oppositions being filed and, as a consequence, a further increase in the rate of appeals. Thus the procedure upstream has begun to accelerate before the downstream process has even started to implement its new efficiency measures. Even if the Boards are able to increase efficiency by the planned 32%, they will still be fighting an increasing tide of new filings.
It is of course worth noting that it is not only the speed of the examination procedure that will influence the number of appeals, but the quality of decisions at first instance. While the EPO has a reputation for high quality search and examination, many attorneys (this author included) will have experienced an adverse decision based on an apparent lack of understanding on the part of the examining or opposition division.
It therefore seems that a more holistic approach to reducing the backlog of appeal cases is needed, one which addresses the speed and quality of examination and opposition in conjunction with the appeal system rather than focusing on appeals in isolation. It would also have made more sense for the Boards to put in place the additional resources and efficiency measures needed to reduce the backlog prior to the examining directorates changing their practice. However, such a cooperative approach may not be realistic in view of the increased independence of the Boards of Appeal.
Returning to factors which are within the Boards’ control, it is recognised that a significant number of additional Board members will be needed in the coming years to maintain proper functioning of the appeal system. What is not yet clear is how the Boards plan to appoint suitably qualified new members. Only highly experienced Examiners are accepted to the Boards, and clearly such experience cannot be manufactured within a few years. Understandably, some will be concerned that in order to appoint the number of new Board members required to achieve the targets set, there will be an inevitable lowering of the bar to entry and, as a result, a drop in the quality of decisions. It remains to be seen whether these concerns are warranted.
The proposed changes to the RPBA clarify that the appeal procedure should focus on the arguments and evidence presented at first instance, and introduce a “convergent approach” under which it becomes increasingly difficult for parties to present new arguments as the appeal procedure progresses. These changes may be seen by some as unduly restricting parties’ rights in what may be the final opportunity to have a patent granted or maintained in Europe. In our view, however, the changes are positive in that they should discourage parties from presenting spurious arguments based on late-filed documents, which leads to uncertainty as well as unnecessary costs for both sides. Moreover, if the proposed changes are effected the Boards will retain discretion to admit an amendment to a party’s case, even at an advanced stage of the proceedings, if the circumstances are exceptional. Patentees and opponents should therefore be reassured that truly prima facie prior art, or other evidence that could not have previously been made available, will be admitted.
The news of increased efficiency and, in theory, greater certainty for applicants and opponents in appeal proceedings should be welcomed. However, the apparent increase in the speed of prosecution seems likely to hamper the Boards’ efforts to reduce the backlog of cases, and may even add to it.
This article first appeared in Intellectual Property Magazine.