Get Your Act Together

The New Rules of Procedure of the Boards of Appeal are coming

M. Thesen (DE), European Patent AttorneyM. Thesen (DE), European Patent Attorney

The revised Rules of Procedure of the Boards of Appeal (RPBoA) were adopted by the Boards of Appeal Committee on 4 April 2019 and were unanimously approved by the Administrative Council on 26 and 27 June 2019 and have been published in OJ 2019, A63.

The aims of the revision of the RPBoA are to increase efficiency by reducing the number of issues to be treated; predictability for the parties; and harmonisation. In addition, important elements of case management have been introduced so as to allow the Boards of Appeal to organise their work and use their resources more efficiently.[1] The target is to contribute to the goal of deciding 90% of all new appeals within 30 months, which is still a long way to go from the current 62 months.

Some procedural changes, such as the possibility to request an acceleration of the appeal proceedings (Art. 10(3) to (6) RPBoA) or to combine connected cases (Art. 10 (2) RPBoA), will likely improve the flexibility.

The main impact on the practice will result from the undoubtedly stricter treatment of amendments of the case, wherein everything beyond the strict review of the decision under appeal is considered an amendment. This would include new requests and new documents as well as new arguments. The parties shall clearly specify, and provide justification for, their amendments. For amendments filed with the grounds of appeal or the first reply, it is enough to provide reasons why the amendment overcomes the objections raised (Art. 12 (4), 2nd par RPBoA). Stricter rules apply for subsequent requests, facts, objections or evidence which had not been admitted; or which should have been submitted; or were no longer maintained in the 1st instance proceedings (Art. 12 (6) RPBoA). These shall not be admitted unless the “circumstances of the appeal case justify their admittance”, even where filed with the grounds of appeal.

In any case, the Boards of Appeal have a discretionary power to not admit amendments, even at early stages of the procedure.

For amendments filed after the filing of the grounds of appeal or the reply, the parties must further provide reasons for submitting the amendment(s) at this stage of the proceedings (Art. 13 (1) RPBA). Finally, amendments filed after the deadline for written submissions or after receipt of the summons “shall, in principle, not be taken into account unless there are exceptional circumstances, which have been justified by cogent reasons by the party concerned.

The new RBPA will apply to cases pending on, or filed after, 01 January 2020, although the stricter rules in Art. 12(4) and (6) and Art. 13 RPBA will not be applicable to amendments filed no later than 31 December 2019.

The practitioner is well advised to review their pending cases and submit amendments, if any, before 31 December 2019. Though the new RBPoA are, by and large, a codification of the stricter side of the case-law of the EPO Boards of Appeal, it must be expected that the risk that new matter will be precluded will sharply increase.

Noting the stricter requirements in Art 12(6) RPBoA, the practitioner should be extra vigilant before abandoning any objection or request, or before submitting new requests or documents at a very late stage of the 1st instance proceedings. Not filing the request or document might result in a finding that it “should have been submitted”, whereas filing the request or document might entail a decision not to admit it. In both cases, the new matter will be deemed inadmissible for a possible appeal.

The author doubts that the increase in formalism and additional discussions on whether the reasons or justification for filing amendments late are sufficient, or what circumstances of the appeal case justify their admittance, will lead to a streamlined procedure. It has been shown that this is likely not to be the case[2]. A reasonable and flexible application of Art. 114(2) EPC should be sufficient for the purpose of policing procedural abuses and tactical delays (which was the original purpose of Art. 12(4)  of the (current) RPBoA)[3]. Undue limitations of the subject-matter of the proceedings beyond what is necessary for the latter purpose will inevitably be detrimental to the quality of the decision. Some of the previously stricter provisions in the original draft have been attenuated by allowing certain amendments under exceptional circumstances of the appeal case as a result of users’ observations. The overall impression is that the stricter framework will hamstring not only the parties but also the Boards of Appeal and is likely to be fodder for the complainants in their challenges to the constitutionality pending at the Bundesverfassungsgericht[4].

  2. Anetsberger/Wegner/Ann et al. epi Information 2015, 63
  3. Teschemacher, Mitteilungen der deutschen Patentanwälte, Heft 7-8 2017, 319 - 325
  4. Vissel, GRUR Int. 2019, 25