Revisions to the Rules of Procedure of the Boards of Appeal (RPBA) came into force on 1st January 2020. The EPO’s stated aims are to increase efficiency, predictability for the parties concerned and harmonisation in the way appeals are handled by the Boards of Appeal. Additionally, the revised RPBA introduce changes to the way cases are managed to allow the Boards of Appeal to organise their resources appropriately.
Perhaps the most significant change to the RPBA is the introduction of the so-called “convergent approach” which is to be adopted when considering the admissibility of amendments introduced to a party’s case during appeal proceedings. The convergent approach can be divided conceptually into three levels reflecting the increasing onus placed on a party to demonstrate the admissibility of any amendments as the appeal progresses. This approach effectively formalises and reinforces the approach hitherto adopted by the Boards when considering the admissibility of amendments at different stages of the appeal proceedings.
First Level – Article 12(4)
In the past, at the outset of the appeal proceedings the Board would consider “everything presented” by the parties in order to determine the basis of the appeal without prejudice to the power of the Board to hold inadmissible facts, evidence or requests which could have been presented or were not admitted at first instance. This had given the parties some leeway to introduce amendments, while the Board had the discretion to consider whether such amendments should be admitted or not.
New Article 12(4) makes it clear that the party should provide reasons for submitting such amendments in the appeal proceedings. The Board will then consider those reasons to decide whether the amendment should be admitted or not. The Board “shall exercise its discretion in view of inter alia, the complexity of the amendment, the suitability of the amendment to address the issues which led to the decision under appeal and the need for procedural economy”.
As such, the new provisions place a greater onus on the party to demonstrate that an amendment should be admitted to the proceedings.
Second Level – Article 13(1)
Article 13(1) of the revised RPBA deals with the admissibility of amendments after the initial stage of the proceedings. The Boards will adopt a stricter approach than that adopted with respect to amendments submitted at the outset of proceedings under the First Level of the convergent approach.
In particular, “the suitability of the amendment to resolve the issues” is taken into account. Note that this wording is stronger than the requirement to assess the “suitability of the amendment to address the issues” under the provisions of Article 12(4) relating to the First Level of the convergent approach.
Furthermore, the Board will consider whether, for “an amendment to a patent application or patent, the party has demonstrated that any such amendment, prima facie, overcomes the issues raised by another party in the appeal proceedings or by the Board and does not give rise to new objections.”
Third Level – Article 13(2)
Article 13(2) applies to amendments made at a late stage of the appeal proceedings, specifically after the expiry of a period for responding to observations of the Board or of another party, or, if no invitation was issued to do this, after notification of a summons to oral proceedings. Any amendments submitted at this time “shall, in principle, not be taken into account unless there are exceptional circumstances, which have been justified with cogent reasons by the party concerned”.
At such a late stage of proceedings, the onus on the party to demonstrate the admissibility of the amendment thus becomes considerably greater.
The revised RPBA also introduce changes in the way appeals are managed.
Consolidation & Acceleration
The Board will try to deal with appeals that are clearly connected “one immediately after the other” and may also consolidate such appeals into a single set of proceedings. The parties’ consent is no longer required. Consolidation of proceedings may also be requested by the parties.
As before, a party can request acceleration. A court or other competent authority can now also request acceleration, including the Unified Patent Court once it has been established. The Board can furthermore accelerate proceedings of its own motion.
In order to reduce the “ping pong” effect and to encourage more issues to be dealt with at first instance the Board will not remit a case to the department of first instance “unless special reasons present themselves for doing so”.
Oral proceedings and issuing decisions
New Article 15 sets out some of the timescales that the Boards of Appeal shall endeavour to meet for the purposes of providing some certainty to the parties and to facilitate efficient use of the EPO’s own resources.
The Board will try to provide at least 4 months’ notice of oral proceedings. Where there are two parties, the Board will try to issue the summons to oral proceedings no less than 2 months after receipt of any written reply or replies. This allows parties to react to submissions under the second level of the convergent approach described above rather than the more onerous third level.
If a decision is announced orally, the decision may be given in abridged form with the explicit consent of both parties. However, if a third party or a court has a legitimate interest then the decision will not be abridged. If the Board agrees with an earlier decision with respect to one or more issues (and with the reasons therefor) then the decision may be abridged (with respect to those issues) without the parties’ consent.
Whilst, in general, the revised RPBA came into force on 1st January 2020 and apply to any appeal pending on that date and to any subsequently filed appeals, there are some exceptions.
Firstly, the first level of the convergent approach described above will not apply to any statement of grounds of appeal filed before 1st January 2020. Furthermore, any response to a statement of grounds of appeal filed in due time (even if this is after 1st January 2020) will also not fall within the ambit of the first level of the convergent approach.
Secondly, if a communication inviting a response to observations of the Board or of another party had been notified or if a summons to oral proceedings had been notified, when the revised RPBA came into force, then the third level of the convergent approach described above will not apply.
If you have any questions about the revised Rules of Procedure of the EPO Boards of Appeal then Reddie & Grose are happy to advise.
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.