Posted on 7/10/2019

Changes to the Rules of Procedure of the EPO Boards of Appeal

Changes coming into force on 1 January 2020 will impact appeals pending on or filed after that date.

Revised Rules of Procedure of the Boards of Appeal (RPBA) will come into force on 1 January 2020. The revised Rules are referred to as ‘RPBA 2020’.

The aims of the revision of the Rules of Procedure of the Boards of Appeal are to increase:

(i)            efficiency, by reducing the number of issues to be treated,

(ii)           predictability for the parties and

(iii)          harmonisation.

In addition, important elements of case management have been introduced so as to allow the Boards of Appeal to organise their work and use their resources in a more efficient way.

The RPBA 2020 will, in general, apply to any appeal pending on, or filed after, the date of their entry into force. This means that the changes to the rules will almost certainly affect cases already in the appeals process and oppositions that are currently on foot but which have not been concluded by January 2020, as well as newly filed appeals.

Most of the work done by the Boards of Appeal relate to decisions of the Examining Division (appeals filed by patent applicants for review of decisions made by the Examining Division as to the decisions on patentability prior to allowance) or the Opposition Division (appeals from adverse decisions by either the patent applicant or opponent in an opposition proceeding filed after grant).

Whilst it should be relatively clear that an appeal from a decision should be limited to a review of the contested decision rather than a rehearing of the whole case, appellants have been able to submit a wide variety of new requests, new and supplementary submissions in support of their position and new evidence, at any time up to final submissions for the oral proceedings in the appeal. This clearly is a situation that the Board of Appeals considered was getting out of hand, and so in more recent years, the Board has been tightening the rules regarding newly submitted matter.

The RPBA 2020 is an extension of the tightening of these rules and provides a clear framework that will need to be followed by appellants in future appeals.

The RPBA 2020 outlines changes to formal issues such as the composition of the Board, the responsibility of the rapporteur (the Board member responsible for carrying out a preliminary study of the appeal, drafting communications to the parties ad drafting decisions) to assess whether the appeal should be given priority over or treated together with, other appeals, and also may, on request from a party or a court or other competent authority, accelerate the appeal proceedings.

Importantly, revised Article 12(2) provides a general definition of the nature and scope of the appeal procedure and makes it clear 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’ (underlining added).

Article 12(3) of the RPBA 2020 provides that ‘The statement of grounds of appeal and the reply shall contain a party’s complete appeal case’ and Article 12(4) states 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 Board also has a newly provided discretion not to admit any part of a submission by a party which does not ‘set out clearly and concisely the reasons why it is requested that the decision under appeal be reversed, amended or upheld, and should specify expressly all the requests, facts, objections, arguments and evidence relied on’.

Periods specified by the Board may be extended, provided that they are requested in writing, with reasons and the request is filed before the expiry of the period.

If a party wishes to amend the appeal case after it has filed its grounds of appeal or reply, this is entirely at the discretion of the Board based on the current state of the proceedings, the suitability of the amendment to resolve issues, whether the amendments is detrimental to procedural economy and whether the amendment prima facie overcomes the issues raised without raising new objections.

If proceedings are at an advanced stage, then amendments to a party’s appeal case are not to be taken into consideration unless there are exceptional circumstances, which have been justified with cogent reasons by the party concerned.

The RPBA 2020 is directed to providing a tier approach to the filing of material in the appeal with the statement of grounds of appeal intended to now contain the entire appeal case, limited to matters of appeal without raising new matters or attempting to have the whole case reheard, and any changes or additions to the statement of grounds of appeal becoming increasingly more difficult to make later in the proceedings.

Appellants are therefore advised to take the general intent of the RPBA 2020 on board and file a complete statement of grounds of appeal limited to matters of appeal for any appeal filed after 1 January 2020.

For appeals that are currently in progress, appellants should take action before 1 January 2020 to review their appeals and if necessary, ensure that any amendments are made or additional material filed, before 1 January 2020 (although these will be held to the less formal tightening of the rules regarding newly submitted matter that the RPBA 2020 codifies and may therefore not be allowed).

It is clear that while there is a chance for valid inclusion before 1 January 2020, after that date, the bar will be that much higher to have new matter added or amendments made. If you have any questions about these changes please get in touch to speak to one of our attorneys.

Wilson Gunn