M. Névant (FR), Editorial CommitteeM. Névant (FR), Editorial Committee

Exceptional circumstances?

The reform of the Rules of Procedure of the Boards of Appeal (RPBA) was supposed to bring harmonization of the hitherto sometimes divergent practices of the EPO Boards of Appeal (BoA) and, by way of consequence, more certainty for users of the EPO and for third parties. That is, as far as I can remember, how the reform was in particular presented to stakeholders.

Quite sadly, it has to be said that almost three years after the entry into force of the new Rules, harmonization of the practice of the Boards of Appeal is still wishful thinking.

A blatant example of lack of harmonization is the issue of whether deleting one or more claims in a request during appeal proceedings is an amendment in the sense of Article 12(4) RPBA 2000. According to some BoAs the deletion of a claim is not an amendment of a party’s case (see T1480/16, T1857/19, T2201/19), whereas other BoAs have decided otherwise (see T494/18, T2091/18, T2920/18).Acknowledgement is given to Laurent Teyssèdre for his review in “Le Blog du Droit Européen des Brevets”

In the same vein, Article 12(2) RPBA 2000 makes it quite clear in my view that the primary object of the appeal proceedings is to review the decision under appeal. Yet, it is not uncommon for BoAs to raise objections, in the Communication sent in preparation for oral proceedings, which have not been addressed in the appealed decision (e.g. if a patent (application) has been revoked (refused) on the sole ground of lack of novelty, the BoA raises an additional objection under e.g. Article 83 or 123(2) EPC).

Another example is whether the description needs to be adapted to the claims. While some BoAs seem to be of the view that this is required under Article 84 EPC, other BoAs tend to dissent. In this respect it is noted that the BoAs have long ruled that interpreting the extent of protection was a matter for national courts dealing with infringement cases (Case Law of the Boards of Appeal 10th Edition 2022, part II 6.3.6). This might add fuel to those who believe that adapting the description to the claims is not a requirement of the EPC.

While it is arguably understandable that BoAs may have a different view on how to assess substantive matters (e.g. sufficiency of disclosure or added subject-matter), this should not be the case for more “procedural” matters as set forth in the RPBA 2020. On the latter point, let’s hope that the BoAs will deliver the promised harmonisation before the next reform takes place!