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Some rules may be about to change, but is this going to change the game?


27th Mar 2018

The European Patent Office (EPO) Boards of Appeal Committee (BOAC) and the President of the Boards of Appeal have invited users to take part in a written consultation regarding proposed revised Rules of Procedure of the Boards of Appeal (RPBA). This is part of a more general process by which the EPO intends to improve the efficiency and predictability of appeal proceedings, which has led to the reorganisation of the Boards as a separate unit within the EPO.

Decisions of the departments of first instance of the EPO can be appealed in writing by any party to proceedings which was adversely affected by a decision. This sets off a judicial procedure in which a Board of Appeal acts as the department of final instance. If the Board decides that the first instance decision was correct, then the appeal is rejected and the first instance decision becomes final. If, on the other hand, the Board chooses to reverse the first instance decision, the case is remitted to the appropriate first instance department with an indication on how to further handle the proceedings.

The role of the members of the Boards is thus essentially comparable to that of a judge of a national court which reviews decisions of administrative bodies. Boards of Appeal are bound only by the European Patent Convention, yet proceedings before a Board of Appeal are governed by a set of Rules of Procedure, which are meant to expedite the proceedings and implement the principle of fairness to all parties involved.   In order to achieve this, the RPBA set certain restrictions as far as the procedural conduct of the parties involved is concerned.

The revisions currently being considered focus, in particular, on Articles 10, 12, 13 and 15 RPBA. Some further minor amendments have been proposed with a view to improving clarity and consistency of the rules as a whole.

As far as accelerated proceedings are concerned (Article 10 RPBA), the proposed revisions appear to bring into the rules what has effectively been consolidated in practice. In addition, it is noteworthy that while, with the present rules, a party needs to show a “legitimate interest” in order to obtain acceleration, the new wording suggests that they will be required to show “objectively verifiable reasons”, and that a request for acceleration will have to be filed as soon as such reasons become known to the party. According to the proposed revisions, the Board will have, in all cases, discretionary power to decide on a request for acceleration, which may be refused – even if the reasons provided for the request would in principle justify acceleration – because of the Board’s general workload.

The revisions to Article 12 RPBA, which relates to the basis of an appeal, specify that the appeal proceedings are meant to judicially review the decision under appeal and, as such, require that a party’s appeal case be directed to requests, facts, arguments and evidence on which the decision under appeal was based. Any part of a submission not complying with such requirement would be regarded as an amendment and may be admitted only at the discretion of the Board. This would apply, in particular, to facts, objections and evidence that could and should have been filed during the first instance proceedings. Their admissibility may, however, need to be reviewed if the circumstances have changed at the appeal stage. The proposed revisions to Article 13 RPBA would also appear to impose further restrictions on a party meaning to amend their case in the appeal phase.

As regards oral proceedings and issuing decisions, the proposed revisions to Article 15 RPBA bring the established practice concerning changing the date set for the hearing into the rules. On such basis, a Board is required to send a communication before oral proceedings drawing attention to the important issues. Further, the revisions set out that the Board shall issue a decision on the appeal in a “timely manner” and “not later than three months” after closure of the oral proceedings.

The consultation will remain open until noon (CEST) on 30 April 2018. Until then, patent professionals, users from the industry, as well as EPO staff members are invited to express how satisfied they are with the proposed changes and are offered an opportunity to provide comments and explanations as to why different changes might be more appropriate.

The purpose of one such consultation is to facilitate the early involvement of the users of the patent system in the law-making process of the EPO. At least in theory, the EPO is meant to take into account any conclusions drawn from the consultation in the envisaged reform. However, it remains to be seen how much of a say users will ultimately have, especially in view of the well-established managerial autonomy and generally superior independence of the Boards of Appeal.

In general, the revision of the RPBA appears to aim at increasing the efficiency and consistency of the Boards. In particular, there is evidence of a new “convergent approach” being brought into appeal proceedings, particularly at the more advanced stages thereof. The basic underlying principle of this approach is that amendments to a party’s appeal case should not be taken into account at a later stage, unless a party can present compelling reasons why the circumstances leading to the amendment are exceptional.

This should help expedite the proceedings, and should hopefully help reduce the backlog in appeals, whilst at the same time safeguarding legal certainty for users. All parties involved should reasonably welcome this, since concerns regarding timeliness, predictability and consistency of the appeal procedure have been repeatedly voiced in the past.

However, the proposed revisions still give the Boards discretionary power to effectively disregard a party’s request for acceleration, under certain circumstances, and so there is still a chance that not all the players in the game will, in practice, be equally pressured to expedite play.  It will be interesting to see what users will have to say and if and how the EPO will ultimately take into account what the various parties involved submit. We will sure keep an eye on it and provide an update when the results of the consultation are published.

This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.

 

 

 

 

 

Author
Andrea Civera
Senior Associate
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Would you like to know more? You can talk to Andrea Civera who will be able to help. Call +44 (0)20 7242 0901

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