New rules of procedure for the EPO Boards of Appeal will enter force on 01 January 2020 - parties should start preparing now.
The Boards of Appeal of the European Patent Office are an independent body to which decisions made by the EPO can be appealed. This includes decisions by the Examining Divisions to refuse a patent application, as well as inter-partes Opposition Division decisions.
The Boards of Appeal currently have a large backlog, with appeals commonly taking five years to complete. Against an increase in speed of examination and opposition processes, this a significant roadblock to efficient conclusion of cases. The new rules of procedure are intended to improve the efficiency of the appeals process and increase predictability.
The new rules will enter into force on 01 January 2020, and unusually will apply retrospectively to all appeals pending at that date, albeit some provisions are withheld to avoid too much harm to parties. Even if the rules are not formally applied until 01 January 2020, it is possible the Boards will start to apply the spirit of them earlier under their current wide-ranging discretion and so it is advisable for parties to review all pending appeals and where appropriate take corrective action as soon as possible.
Below we discuss they key changes which will impact how parties should handle appeals.
Amendments of case
The most important changes to the rules relate to amendments to a party’s case compared to first-instance. Currently the admission of requests and details which were not considered at first-instance, or which change during the appeal procedure, are admitted at the discretion of the Board. Under the new rules the admission of changes and requests will become much harder as they are to be an exception to the general principle of non-admission.
The rules focus on three stages of the appeal proceedings, with admission becoming harder at each stage.
With the appeal
The initial stage relates to materials filed with the appeal. The rules specify that the appeal is to be based on “requests, facts, objections, arguments, and evidence on which the decision under appeal was based”. Any other materials are considered an amendment to the party’s case and will only be admitted at the Board’s discretion. That is, not everything filed with an appeal is automatically admitted into proceedings.
This makes it much more important to present all possible requests prior to the oral proceedings at first instance. Parties often hold-off filing fall-back positions on every possible point on the basis they will be admitted when needed. However, this is no longer the case and the Boards of Appeal are more likely to decline to admit any request (or any document) not filed at first instance.
It is also now a requirement that all requests must be explained as to why they overcome the objections raised.
Practical point - Parties should therefore ensure all evidence they wish to rely on is filed at first-instance, and importantly all possible requests are submitted, even if they appear very unlikely to be needed. This will inevitably lead to an increase in the requests made during first-instance proceedings, but that seems to be the only way to avoid problems in appeal.
Amendments prior to Summons
The second stage is the phase between an appeal being filed and the summons to oral proceedings.
During this period any change is considered an amendment of case and will only be admitted at the discretion of the Board. All amendments must be reasoned to explain why they overcome the objections, and why they do not give rise to new objections.
Practical point - Review pending appeals now to see if any amendments to the case should be made. Filing these before 01 January 2020 might benefit from leniency under the current rules.
After invitation to comment, or a summons to oral proceedings
The rules specify that after a summons to oral proceedings amendments to a party’s case are not to be taken in to consideration. The only exceptions are if the Board expressly invites a party to file observations, or a party can show compelling reasons why the circumstances are exceptional and justify late admission.
Practical point - The same message continues - front-load all stages with all possible requests and arguments, because admission later-on may be refused.
Currently, the Boards of Appeal do not always provide a preliminary opinion prior to oral proceedings which means that it can be difficult to know which issues the Board’s decision will hinge on.
Under the new rules, it will become mandatory for the Board to issue a preliminary opinion prior to oral proceedings. The preliminary opinion will be of the whole Board (not only the rapporteur) and should be issued at least four months before the oral proceedings. This will be very helpful to guide preparation for oral proceedings and avoid last-minute surprises that can currently occur when parties do not know what the Board’s view is before appearing.
Practical point - Thoroughly review the preliminary opinion as soon as it is received. If there are points that need addressing with further auxiliary requests those should be filed as soon as possible, and not left until the formal deadline for responding.
One problem currently afflicting the appeal process is the potential for a game of ping-pong to develop between the first-instance department and the Boards of Appeal. It is standard practice for the first-instance departments at the EPO to handle issues sequentially, and to stop when they reach an issue that terminates proceedings. For example, in opposition matters it is common to hear added matter first. If the patent is revoked under this ground of opposition, further issues relating to sufficiency, novelty, and inventive step are not heard. The case then proceeds to the Board of Appeal and if the decision on added matter is reversed the case can be remitted for consideration of the other issues (before another trip to the Boards of Appeal for the further issues). Clearly this is inefficient and extends proceedings significantly.
The new rules specify that Boards of Appeal “shall not remit a case …. unless special reasons present themselves for doing so”. Although there is no formal announcement of what constitutes “special reasons”, there is wide-spread expectation that non-consideration of an issue by a first-instance department will not be “special reasons”. That is, it is expected that Boards will take decisions on topics not yet considered in full by a department to first instance. This issue is significant as it removes the possibility of two-instances of judicial review which many consider fundamental to a proper system of justice. However, the Boards of Appeal are commonly found to say that access to two-instances is not a fundamental right under the European Patent Convention and hence it is reasonable for the Boards to decide on issues directly.
The hope seems to be that this mode of operation will force the first-instance departments to consider all issues in one go. However, in my view, this is fundamentally flawed. Firstly, the Boards of Appeal are independent, and are trying to promote this independence, so they have no way of directing how the first-instance departments should handle cases. Secondly, the consideration of issues sequentially, with the possibility of multiple auxiliary requests, has been at the heart of the EPO process for 40 years. The entire method of handling cases would need to change for first-instance departments to be able to consider all issues in one go. Thirdly, it will lead to an explosion of the complexity and time required on each case as it will need the first-instance to consider every request under every ground based on a hypothetical assumption that other grounds are met. With commonly over 10 requests and 4 grounds of opposition this leads to a large number of hypothetical decisions, all of which must be reasoned in writing. Compounding this problem, the number of requests at first instance is now expected to increase, due to the stricter requirements to admit new requests on appeal (see above). It seems unlikely the first-instance departments are going to be keen on this approach, particularly when they have done so well at speeding up processing and reducing backlogs.
Practical point - This is the change that is hardest for Appellants to prepare for, and the only advice is to ensure all arguments are reasoned fully with no stone left unturned such that the Board can take the correct decision in your favour.
This document (and any information accessed through links in this document) is provided for information purposes only and does not constitute legal advice. Professional legal advice should be obtained before taking or refraining from any action as a result of the contents of this document.