Revision of the Rules of Procedure of the Boards of Appeal at the EPO

C. Mercer (GB), M. Nollen (BE)

In 2007, the Rules of Procedures of the Boards of Appeal (RoPBA) were approved by the Administrative Council. These Rules have since then been used frequently to refuse submissions of parties as late filed and not prima facie relevant. Last year, a project was launched to revise these Rules. A new draft has now been made available. A consultation has been launched to give feedback on these Rules[1]

The proposed changes to the Rules of Procedures relate particularly to the Articles on consolidation of proceedings (Art. 10), on the basis of the proceedings (Art. 12), on amendment to a party’s case (Art. 13) and on oral proceedings (Art 15). An Article on transitional provisions (Art. 25) has been added. The proposed Article 12 facilitates the Boards in being strict about admitting evidence and amendments. Importantly, it now makes explicit that not merely the grounds of appeal, but also the decision under appeal and any minutes of oral proceedings constitute the basis for appeal proceedings. Article 13 now has more focus on amendments during appeal proceedings. Article 15 now specifies a (extendable) three-month term for the written decision after oral proceedings and allows for the provision of an abridged form of the reasons in certain situations.

The epi will submit a response to the draft Rules. The Working Group preparing the response invites all European Patent Attorneys to give input and send comments to eppc@patentepi.org. Although firms and individuals may also respond individually, it is deemed that a joint response on behalf of all European patent attorneys, and particularly those more than incidentally involved in appeal proceedings, will be more useful for the Boards of Appeal.

epi’s letter of September 2017

The starting point of the epi’s response is a letter epi sent to the Boards of Appeal in September 2017. In this letter, the epi addressed the functioning of the appeal procedure in its entirety. The following is an edited version of the letter.

epi believes that any changes in the RoPBA should aim at maintaining high quality of appeal decisions as well as independence of the Boards, but also at enabling the Boards to increase efficiency of appeal proceedings and reduce total pendency time. However, rules and practices of appeal procedures directly correlate with the rules and practices of the first instances (Examining Divisions, Legal Division and Opposition Divisions) whose decisions give rise to appeals, and, as a consequence, meaningful improvements in appeal procedures should be accompanied by corresponding adjustments in the first instance practices. This would apply in particular to opposition procedures.

The principles which epi sees as essential for the RoPBA and any amendments thereof are that:

1. The Boards act as instances of appeal, not tribunals to hear new cases;
   • this implies that new facts, evidence and requests can be introduced only if convincing reasons are provided for the late filing. Thus, criteria should be defined when late filings can be accepted (relevance and solid reasons justifying late filings);
   • -this implies on the other hand that the appeal is not a purely legal review.
2. A case management system ensures timely and effective consideration of appeals;
   • this includes a clear time schedule for the Board and the parties and an early and mandatory preliminary opinion by at least one member of the Board. A significant reduction of the pendency of the average appeals proceedings [by at least 50%] should be the ultimate goal.
3. There is consistent procedural practice across all Boards;
   • this applies especially to the application of criteria for the admissibility of evidence and requests filed after the opposition proceedings or after the start of the appeal.
4. The way in which the Boards are constituted encourages cross-fertilization between the Boards.
5. Transitional provisions that ensure that there are no detrimental effects to pending proceedings have to be provided.
   It is important that any major change of the RoPBA will not be effective for pending cases, where under the presently valid Rules there are still opportunities to react, which won’t be available under the proposed new Rules.

Appeals under Current Practice

The current appeal practice at the EPO is generally experienced as being in average of good quality as to substance. However, many users feel that the average pendency, which is in the order of three years, is too long. Also differences in practice, especially in the application of criteria for allowing parties to adjust their case during the appeal proceedings, are considered by many to be too large. As a result, there is room for improvement of the efficiency and predictability of appeal proceedings.

At the same time, it is recognised that part of the reasons for these difficulties reside in the preceding procedures before the first instances of the EPO. Hence, overcoming these difficulties not only requires an adaptation of the appeal practice, but also of the first instance practice, either by direct changes in the first instance practice or by adjustment of first instance proceedings to changed rules for appeal, or both.

One issue with the current practice of the first instance divisions (Examining and Opposition Division) in the EPO is that it is often difficult for a decision to be taken on all the issues which should be dealt with by the first instance. If such a division takes the view that a set of claims does not meet one of the formal requirements of the EPC (Arts. 83, 84 and 123 and Rule 80 EPC), the application may be refused or the patent may be revoked. Then, the Division does not need to, and typically does not, address any of the substantive grounds (Arts. 52-57 EPC). If the Board overturns the decision of the first instance, it tends to remit the case to the first instance. This clearly is a waste of time as, even with an expedited opposition procedure and an expedited appeal procedure, this can add at least two years to the time needed to resolve the matter. The epi considers it important that a way of dealing with this issue is developed.

With the above in mind, epi provides below some commentary on the principles set out above.

(i) The Boards as instances of appeal

epi considers that, wherever possible, the Boards should aim to decide primarily whether the decision taken by the first instance was technically and legally correct. In principle, any new evidence or request filed during the appeal proceedings would only be admissible if it could not reasonably be filed before, and clearly serves to come to a swift decision.

epi recognises that, in many cases, especially under the present practice, a very strict regime will not be possible and not be desirable. Occasionally, the first instance will make a decision which is a surprise to one of the parties. The first instance may take an unexpected view of, for instance, the meaning of a claim, the common general knowledge of a skilled person, the inherent content of a prior art document or the closest prior art for the purposes of inventive step. In such instances, epi considers that the party(ies) to appeal proceedings should be able to file new evidence or, in the case of a patent proprietor, new auxiliary requests, to address the unexpected situation.

It is within the Boards’ discretion to decide on the admissibility of new auxiliary requests and new evidence. In exercising its discretion, the Board will take into account the whole of the proceedings before the first instance so as to determine whether the decision was unexpected.

epi also considers that auxiliary requests and evidence should be dealt with using different criteria when considering admissibility, and these should be distinguished from new arguments. In this respect, the notion “amendment to a party’s case” of Article 13 RoPBA needs specification.

As regards auxiliary requests, if a new auxiliary request could and should have been filed in the first instance proceedings, then the Board should refuse to admit it. If the auxiliary request could perhaps have been filed in the first instance proceedings but merely involves deletion of a claim, e.g. by combination of an existing independent claim and an existing dependent claim, then that auxiliary request should be admitted at any stage of the proceedings. Also, a new request which does not require any new discussions and clearly allows a swift settlement of the appeal, should in principle always be allowed.

As regards new evidence, such as new documents or declarations, if new evidence could and should have been filed in the first instance proceedings, then the Board should refuse to admit it. In any event, epi considers that the Boards should generally exercise their discretion and admit the new evidence if it deals with an unexpected decision of the first instance or new evidence or argument introduced by the other party (patentee or opponent).

If, in opposition proceedings, any new evidence leads to a new line of attack on the claims[2], then this new evidence should be excluded from the proceedings unless it is occasioned by the decision or submission by the proprietor, or the patent proprietor agrees to its admission. New evidence should not enable an opponent to start a new opposition at the appeal stage, which would frustrate the purpose of an appeal instance.

epi is aware that, occasionally, an opponent will identify a new, novelty-destroying or otherwise highly relevant document which clearly affects the validity of an independent claim. If this is clearly the case, then the Board may admit that document into the proceedings and may order the opponent to pay the proprietor’s costs, if the new document necessitates postponement of the proceedings.

As to new arguments, i.e. new lines of reasoning based on the same, already invoked evidence, these should normally be allowed at all stages.

(ii) New Case Management System

epi considers that a new Case Management System should be instituted. Once a Board has been constituted[3] for the case, much of the preliminary work can be carried out by one member (the Rapporteur) without necessarily involving the other Board members until the case is ready for oral proceedings (or for a decision if oral proceedings have not been requested). The Rapporteur should in the view of epi send out a communication to the party or parties in order to deal with any points which arise during his preliminary review of the case, setting a short deadline (2 months) for responding to the communication. Afterwards, the Rapporteur would send to the party or parties summons to oral proceedings together with the Rapporteur’s preliminary opinion on the case.

epi considers that it should be compulsory for the Rapporteur to send out a preliminary opinion, but it should be made clear that it is the opinion of the Rapporteur and that the Board as such may ultimately have a different view. The preliminary opinion should set out in some detail the Rapporteur’s views and expected outcome. The party or parties may be given a short period (2 months) for filing any comments on the preliminary opinion. After the period for commenting, the Rapporteur will then brief the other members of the Board so that they are fully prepared for the oral proceedings or for a decision.

For oral proceedings, the present procedure for their conduct can be adopted, except that a person (member of the Board or not) other than the Rapporteur should be assigned to prepare the minutes. epi considers that the Rapporteur should be able to concentrate on the issues being discussed at the oral proceedings and not be burdened with taking the minutes. epi also considers that the minutes should be much more comprehensive than they are now in light of the fact that there may be a petition for review.

The proposed system is summarised in the following scheme.

epi considers that placing the responsibility for case management primarily with the Rapporteur and shifting most of his preparatory work to a relatively early stage of the appeal proceedings will strongly enhance procedural efficiency and reduce pendency times, allow the proceeding while maintaining high quality as to substance. Naturally, the Rapporteur should be free to consult other Board members if needed at any stage.

1. See: http://www.epo.org/law-practice/consultation/ongoing.html
2. It may be that an opponent had unsuccessfully attacked a claim under inventive step using, say, D1 as the closest prior art. This gives rise to a first line of attack. If the opponent then files a new document, say D10, and then uses this as the closest prior art, then the opponent is raising a new line of attack under Article 56. This means that, in appeal, the opponent is not appealing against the decision of the first instance but is instead starting a new opposition. This should not be allowed.
3. epi considers that a new method for constituting a Board would be beneficial, as set out below.