In a meeting of its Administrative Council on 26 and 27 June,
the European Patent Office (EPO) approved new Rules of Procedure
for its Boards of Appeal (RPBA), which will come into force on 1
January 2020 (“RPBA 2020”). This approval comes
after a consultation process, which saw 140 comments made on a
first draft and a conference held in Munich in December 2018 to
discuss a second draft, amendment of which has led directly to the
RBPA that will now come into force. Although the full effect
of these rules on practice before the EPO, not only in appeals but
probably also in first instance proceedings, will only become clear
once these rules have come into effect, it is generally understood
that the new rules are likely to be more burdensome on parties than
the existing rules and we recommend that cases presently on appeal
at the EPO, or which may be the subject of appeals, be reviewed as
soon as possible in case potentially beneficial action may be taken
before the new rules come into effect.
The EPO’s Boards of Appeal have exclusive jurisdiction to
decide upon appeals against so-called first instance decisions
handed down by other departments of the EPO, for example decisions
in oppositions to granted European patents and decisions refusing
European patent applications. The RPBA are binding upon the
Boards, “provided that they do not lead to a situation which
would be incompatible with the spirit and purpose of the [European
Patent] Convention” (Article 23 RPBA, unamended).
The existing RPBA have been in force since 2007 and the extensive
revisions to these are part of a suite of reforms affecting the
Boards of Appeal that have recently been implemented. These
reforms included moving the physical base of the Boards to Haar, a
town towards the east of the greater Munich area, and electing an
independent president. These changes were intended to
strengthen the independence and authority of the Boards. The
stated aims in changing the RPBA, on the other hand, are to
increase efficiency and predictability and to harmonise decisions
between boards, without any decrease in quality.
The RPBA 2020 were discussed at a major seminar organised by the
Chartered Institute of Patent Attorneys (CIPA) on 22 July in
London, attended by more than 100 people, and addressed both by
European patent attorneys as well as an EPO Board of Appeal member
and a first instance EPO representative responsible for a
centralised opposition team.
So what is changing? Along with a large number of
non-substantive amendments to the RPBA to improve the clarity and
consistency of the rules and to make them gender neutral (for
example by introducing “Chair”), there are many more
significant substantive changes, which we now discuss, focusing on
what we believe to be the most significant changes.
Introduction of a three-stage “convergent approach” to a party’s appeal case
The concept of a convergent approach to an appeal case lies at
the heart of RPBA 2020, and has been the subject of much comment,
including at the CIPA seminar on 22 July.
In the present RPBA, which remain in force until the new rules come
into effect, no mention is made about appeal proceedings being
based on the decision being appealed or on the minutes of any
hearing (so-called Oral Proceedings) that may have taken place
before issuance of that decision. Now, as well as appeal
proceedings (obviously) being based on:
- a party’s notice of appeal and its substantive case;
- any reply if more than one party is involved; and
- any communication issued by the Board inviting the filing of observations and observations filed in reply to such communications,
explicit mention is now made of appeal proceedings being
based on:
- the decision appealed; and
- the minutes of any Oral Proceedings (Article 12(1), RPBA 2020).
Moreover, a general definition of the nature and scope of the
appeal proceedings is now provided:
“In view of the primary object of the appeal proceedings to
review the decision under appeal in a judicial manner, 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(2), RPBA 2020).
Whilst this is intended to be in accordance with established case
law, it is this judicial manner to the review of first instance
decisions, which concerns both points of law and points of fact,
which provides the context for the new convergent approach: the
philosophy behind the new rules is that they are intended to apply
to any amendments to a party’s case, as it progresses to and
through an appeal, and to provide for any amendments to become
increasingly difficult to introduce.
First stage of the convergent approach
The convergent approach begins with the party’s appeal
case as it is defined in Article 12(2) RPBA 2020 (see above), i.e.
from the moment the appeal is filed. It is now prescribed
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 admittedly 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” (except from Article 12(4), RPBA
2020).
The explanatory notes accompanying RPBA 2020 make clear that the
revisions to Article 12(4) are intended to change practice:
explicit reference is made to this first level of the convergent
approach “reversing the approach of current Article 12,
paragraph 4” and to state that not everything presented at
the outset of the appeal proceedings now being automatically
included in them. Generally speaking, existing Article 12(4)
RPBA provides that everything presented by a party in its
substantive case, any reply of another party and any reply to a
communication from the Board shall be taken into account by the
Board, without prejudice to the power of the Board to hold
inadmissible facts, evidence or requests which could have been
presented or were not admitted in the first instance
proceedings.
The change in Article 12(4) was the subject of discussion at the
CIPA seminar. One contributor suggested that, presently,
everything is “in” an appeal except where there is a
reason not to admit something whereas, in future, because the
convergent approach is to begin right at the start of the appeal
process, something may not be “in” unless it was in at
first Instance (since, otherwise, that thing will be regarded as an
amendment the admissibility of which is discretionary).
Depending on how you look at it, this is a change in emphasis or a
change in practice.
The remainder of new Article 12(4) RPBA requires a party to clearly
identify any “amendment” and provide reasons for
submitting it in the appeal (i.e. why it was not submitted before
the appeal) and, where the amendment concerns a patent or
application, to give basis for the amendment and provide
“reasons why the amendment overcomes the objections
raised”. In response, factors the Board shall consider
when exercising its discretion on whether to admit such amendments
are their complexity, their suitability to address the issues which
led to the decision under appeal, and the need for procedural
economy.
New subparagraphs 5 and 6 of RPBA 2020 specify additional criteria
for admissibility: Article 12(5) provides Boards with discretion
not to admit any part of a party’s substantive case (either
its grounds of appeal or a reply to such grounds) which is not
considered to contain a party’s complete appeal case, or to
be clear or concise, or to specify material (to be filed inits
annexes) relied upon. Article 12(6) generally gives Boards
discretion not to admit requests, facts, objections or evidence
which were not admitted, or which should have been submitted or
which were no longer maintained, in the proceedings leading to the
decision under appeal.
So the message seems clear: anything a party – whether an
applicant, a patent owner or an opponent – wishes to have
considered by a Board of Appeal should in future be part of the
pre-appeal proceedings. Otherwise, reliance on such things in
appeal proceedings cannot be guaranteed.
Second and third stages of the convergent approach
Where Article 12(4) RPBA 2020 specifies generally what is to be
regarded as an amendment to a party’s appeal case, Article
13(1) and (2) RPBA 2020 are specifically concerned with amendments
made after a party has filed its grounds of appeal or replied to
another party’s grounds. Article 13(1) is concerned
with the period between the filing of an appeal (and any reply to
such an appeal) and either the issuance of Summons to attend Oral
Proceedings or a communication from a Board inviting the filing of
observations. Article 13(2) is concerned with amendments made
either after the issuance of Summons or a communication from the
board inviting the filing of observations. Together, these
implement the second and third stages of the convergent
approach.
As with the first stage, admissibility of amendments is
discretionary, but the factors Boards are to consider when
exercising their discretion become ever more stringent.
Amongst other things, for example, Article 13(1) stipulates that
discretion should be exercised in view of the context of current
state of proceedings (and so requires the state of proceedings to
play a role in determining admissibility of an amendment rather
than merely requiring reasons to be given for submitting an
amendment in the appeal proceedings); and whether an amendment is
detrimental to procedural economy (Article 12(4) simply referring
to the need for procedural economy). Most
significantly perhaps, Article 13(1) also requires that, where an
amendment concerns a specification (whether an application or a
granted patent), the party requesting the amendment has to
demonstrate that, prima facie, it overcomes the issues
raised by another party in the appeal proceedings or by the Board
and does not give rise to new objections. It has been
remarked that this last factor implies that a party seeking to
amend at this stage in the proceedings is being asked to prove a
negative, always an onerous task.
Article 13(2) RPBA is concerned with the third stage of the
convergent approach, and provides that an amendment “shall,
in principle, not be taken into account unless there are
exceptional circumstances, which have been justified with cogent
reasons by the party concerned”.
Transitional provisions
Although RPBA 2020 will, in general, apply not only to appeals
filed after 1 January but also those pending on that day (Article
25(1), RPBA 2020), there are some saving provisions to mitigate
parties being disadvantaged by this. Firstly, for grounds of
appeal or replies to grounds of appeal filed before 1 January 2020,
neither the first level of the convergent approach (Article 12(4),
RPBA 2020) nor Article 12(5) and (6) RPBA 2020 will apply to such
grounds or replies. Instead existing Article 12(4) will
apply. These provisions are discussed above. Secondly
where a Summons or communication from a Board requiring a party to
respond has been notified before 1 January 2020, the second level
of the convergent approach (Article 13(2), RPBA 2020, also
discussed above) will not apply. Instead, the existing
requirements concerning admittance and consideration of amendments
to parties’ cases will apply.
Changes to rule on remittal of cases
Before considering possible changes in practice that may result
from the convergent approach set out in RPBA 2020, it is
appropriate to consider a very significant change to the rule in
the RPBA defining the circumstances under which Boards may remit
cases for further prosecution. Under Article 111(1) EPC, a
Board of Appeal, following examination as to an appeal’s
allowability, can exercise any power within the competence of the
department responsible for the decision appealed, or remit the case
to that department for further prosecution. In opposition
proceedings, for example, patents may be revoked without
consideration of all grounds of opposition that an opponent may
have argued. For example, the claims of an opposed patent may
be found to contain added subject-matter and the patent as granted
found to be bad for this reason, without an Opposition Division
ever considering anything an opponent might have submitted in
relation to other grounds of opposition (for example lack of
novelty or lack of inventive step). If a Board on appeal
reverses an Opposition Division’s finding of added
subject-matter, it is quite common for such a case to be remitted
for further prosecution, rather than a Board itself to consider and
decide upon such substantive issues.
The possibility of remittal provided for in Article 111(1) EPC is
the subject of Article 11 RPBA, the current version of
which merely provides that remittal must occur if fundamental
deficiencies are apparent in the first instance proceedings (unless
special reasons present themselves for doing otherwise). The
emphasis in Article 11 RPBA 2020 is completely different:
“The Board shall not remit the 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” (Article 11, RPBA 2020).
Moreover, the explanatory remarks accompanying RPBA 2020 state that
the aim of new Article 11:
“is to reduce the likelihood of a “ping-pong”
between the Boards and the departments of first instance, and
consequent undue prolongation of the entire proceedings before the
EPO. When exercising its
discretion under Article 111 EPC, the board should take account of
this aim” (Explanatory note to Article 11, RPBA 2020, revised
draft);
and:
“Whether “special reasons” present themselves is
to be decided on a case-by-case basis. If all issues can be
decided without undue burden, a Board should normally not remit the
case” (Explanatory note to Article 11, RPBA 2020, revised
draft);
and:
“As a consequence of the convergent approach now implemented
in proposed Articles 12 and 13, it is to be expected that more
issues will be raised and dealt with in the proceedings at first
instance, thereby reducing the need to remit cases”.
It is therefore clear that changes are on the horizon in relation
to consideration of remittal after 1 January 2020.
Consideration of the convergent approach and changes to remittal in RPBA 2020
As mentioned above, when discussing the first stage of the
convergent approach, a party is clearly going to be on the back
foot as soon as he or she attempts to introduce something not
considered at first instance. The more advanced an appeal is,
the greater the difficulty achieving admissibility is likely to
be. Accordingly, a message seems clear: the more
comprehensive its submissions at first Instance are, the less
likely that a party will need to rely upon the discretion of a
Board to admit an amendment according to the new convergent
approach.
The inevitable corollary of the new convergent approach is that
first instance proceedings, notably, but not only Oral Proceedings
in opposition cases, will become more involved. Indeed, this
appears to be explicitly anticipated in the third comment quoted
above from the explanatory notes concerning the change to Article
11 RPBA.
There was considerable discussion at the CIPA seminar on whether
the practice of the Boards of Appeal in relation to remittal will
change after 1 January 2020. There seemed to be consensus
amongst the panel presenting that the “special reasons”
required by new Article 11 will include more than simply
fundamental deficiencies in the first instance proceedings.
However, it seems that the true scope of “special
reasons” will only become clear over time. In the
meantime, the existing dilemma faced by appellants – how much
to address issues in a case that are not the subject of the
appealed decision? – appears to be made worse by the change
to Article 11 RPBA: it would be a confident (or foolhardy)
European patent attorney who does not spend considerable time
preparing for all matters that may be discussed by a Board
at Oral Proceedings.
As regards the intimation in the EPO’s explanatory notes
about it being expected that more issues will be raised and dealt
with at first Instance, a panel member at the CIPA seminar remarked
that she can’t see that as very practical. The panel
member’s point seems very reasonable: opposition proceedings,
particularly Oral Proceedings at which most decisions are
ultimately reached, are complicated and frequently lengthy enough
without expecting an already busy Opposition Division to convene a
discussion and reach a view on the merits of other grounds of
opposition, once a given set of claims may have been found to be
bad because of another ground, or one line of argument under the
same ground.
The EPO attendee speaking on behalf of the departments of first
Instance indicated that, for its part, it does indeed expect an
increased number of so-called auxiliary requests to be presented by
parties at first instance. Without explaining in detail how,
she indicated that “these will be dealt with efficiently and
fairly, balancing the interests of the parties and the public on
the efficiency of the procedure”. Another point made
was that DG1 (since 2017 responsible for the entire procedure from
filing to granting and opposition) will consistently insist on a
convergent approach by the Proprietor when amending the
claims. There were murmurs from some in the audience at the
CIPA seminar at this point: a requirement for convergency of
amendments at first instance is perhaps not universally accepted as
a requirement for the structure of auxiliary requests presented at
first Instance.
The bottom line to all of this is great uncertainty: it will remain
to be seen whether the introduction of the convergent approach
achieves one of the stated purposes of the revision of the RPBA as
a whole: to increase efficiency. Will this be at the risk of
first instance proceedings becoming more
inefficient? Or, even if more involved first
instance proceedings are not to be regarded as inefficient, does
the capacity exist at first instance for its Oral Proceedings to
become more involved? The DG1 representative at the CIPA
seminar explicitly indicated that the legal framework is considered
to provide the necessary tools to deal with any possible change of
behaviour by the parties. Only time will tell as to how these
tools will be wielded.
Other changes
Whilst emphasis and discussion in this article has so far been
focused on the introduction of the convergent approach and the
changes to the rule in the RPBA on admissibility, there are a slew
of other changes to the RPBA which should not go unnoticed.
These are briefly discussed now:
Introduction of a “list of lies”
Joking, the Board of Appeal representative at the CIPA seminar
referred to new Article 1(2) as providing for a list of lies.
This new provision requires that, each year, a list of cases will
be drawn up and published, on which Boards are likely to hold Oral
Proceedings or issue written decisions on, or issue communications
seeking responses from parties. The list of lies comment
derives from the fact that this list will be provisional, since
developments in the handling of appeals will inevitably
affect
these predictions. Nevertheless, the list is likely to be of
some assistance to parties.
Up to two months’ extension available, exceptionally, for responding to a statement of grounds of appeal
In the drafts of RPBA 2020, it had been proposed that potential
respondents would be prevented from requesting extensions to the
four-month period for responding to an appellant’s statement
of grounds of appeal. Presently, extensions of time may
exceptionally be allowed at the Boards’ discretion. In
a change to the drafts of RPBA 2020, this will remain the
case. However, it is now specified that the four-month period
may only be extended, exceptionally, up to a maximum of six
months.
Acceleration of appeal proceedings
The possibility of requesting acceleration of appeal proceedings
is now explicitly referred to in the RPBA. However, broadly
the same provisions were previously provided for in a 2008 Notice
published in the EPO’s Official Journal. No significant
change in practice is therefore anticipated.
Mandatory written communications to issue from Boards before Oral Proceedings
It is now specified in the RPBA 2020 that four months’
notice must be given of the date of Oral Proceedings (whilst
Article 15(1) RPBA 2020 reads that the Board shall “endeavour
to give at least four months notice of the summons
[sic]” it is clear that what is meant is that the
Board shall endeavour to give at least four months notice of Oral
Proceedings).
More significantly, Article 15(1) RPBA 2020 now requires Boards to
issue communications drawing attention to matters that seem to be
of particular significance for the decision to be taken. This
was previously only an option open to Boards and will be welcomed
by parties preparing for Oral Proceedings. Whilst these
communications may accompany summons, they need not do so, but
Boards are to endeavour to issue them at least four months in
advance of Oral Proceedings. It is still not a requirement
for Boards to issue preliminary opinions, although the possibility
of doing so is now explicitly specified in RPBA 2020.
Changing the date fixed for Oral Proceedings
Provisions that were previously set out in a Notice published in
the EPO’s Official Journal are now included within the
RPBA. There are only a few substantive changes that have been
made when doing so. Parties still need “serious
reasons” when requesting a postponement of a Hearing and the
non-exhaustive list of “serious reasons” is essentially
unchanged,. Any serious reason given in a request to change
the date must relate to the representative, if a party is
represented. Notably, however, if that representative has a
prearranged serious reason that prevents him or her from attending
Oral Proceedings, this should now, on its own, be sufficient for
Oral Proceedings to be rescheduled, since it is no longer a
requirement to explain why another representative could not stand
in for the one prevented from attending. Since
representatives generally have expended considerable time and
effort on a case by the time Proceedings are convened, this
development will no doubt be welcomed
Further changes
There are still further changes that will come into effect on 1
January 2020, which we have not discussed. These include the
possibility for Boards to issue decisions in which the reasons are
given in abridged form or partially abridged form; and timescales
for Boards to issue decisions. Additionally, if a
Board’s rapporteur is asked to do so by the Board’s
Chair, (s)he will assess whether or not more than one appeal should
be handled together or whether any appeals should be taken out of
turn, seemingly for reasons of overall procedural economy.
Conclusions and suggestions
Whilst the effect of the new rules will only be seen with the
passage of time, the general consensus is that, particularly the
changes concerned with amendments to parties’ cases, the new
rules will make amending cases at the appeal stage still more
difficult. Accordingly, anyone involved in a pending appeal
– whether an appellant or a respondent – would be well
advised to consider whether it might be sensible to make any
additional submissions now, in order to try to benefit from the
possibly greater flexibility to do so under the existing
rules.
Likewise, particularly if amendments to a case may be advantageous
as part of an appeal yet to be filed, or in response
yet-to-be-filed response to an already-filed appeal, it may well be
sensible to file a submission before 1 January 2020, even if the
appeal or the response is not due until later.
Given that RPBA 2020 will apply to appeals filed in respect of many
cases currently at first instance now, such as pending oppositions
and indeed pending applications, it would be at the very least
sensible to review these as well, particularly opposition files, in
case additional submissions may be beneficially made. More
generally, presenting as complete a case as possible at first
instance is likely to become ever more important, starting
now!
Lastly, in view of the future importance of decisions from first
instance proceedings on appeal proceedings, not to mention that of
the minutes of any first instance Oral Proceedings, these (both
decisions and minutes) will need to be considered to a greater
extent than before, to minimise the possibility that subject-matter
presented on appeal may be regarded as an amendment, which could
potentially be inadmissible.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
