News from the EPO - Report about the VPP Conference in October 2018

Dr. D. Herrmann (DE), Dr. J. Schmid (DE), Members of the Editorial Committee

VPP is an Association of Intellectual Property Experts in Germany and organizes two annual meetings in spring and autumn. On October 25-26, 2018, the autumn annual conference took place in Mannheim, Germany. Both instances of the EPO presented updates about current developments and ongoing projects such as (user-driven) early certainty, IP5 and the revision of the Rules of Procedures of the Boards of Appeal. Furthermore, legal challenges of Internet of Things, Blockchain and 3D printing were also discussed.

1. Revised Rules of Procedure of the EPO Boards of Appeal

In a first session, Dr. Peter Guntz, member of the EPO's Legal Board of Appeal, provided an overview of the current situation regarding the admission of late submissions in proceedings before the Boards of Appeal. In particular, he presented an update on relevant recent case law and discussed the upcoming revision of the Rules of Procedure of the Boards of Appeal (RPBA). A first draft of said revision had been published in February 2018 and formed the basis of this presentation. On December 5, 2018, a user consultation conference on the RPBA took place at the EPO in Munich and a revised draft was made available via the conference webpage in November 2018.

First, Dr. Guntz gave an introduction on the relevant legal provisions in the EPC and in the RPBA and highlighted recent decisions of 2017 and 2018 applying these regulations. In T 1719/13 it was decided that a request aiming only at "polishing a claim" is not admissible in opposition appeal proceedings. In T 1578/13 it was decided that a request aiming at solving a problem with Art. 123 (3) EPC by returning to the granted claim version that was not submitted in the first instance in spite of being obvious is not admissible. In T 2598/12 an auxiliary request that was only filed after the Board had issued a first communication was rejected for lack of substantiation. In T 1162/12 it was decided that a new set of claims that could have been filed in the first instance can be rejected in opposition appeal proceedings even if it is filed after a communication of the Board. In T 1280/14 it was decided that a subset of a larger set of non-converging auxiliary request corresponding to different lines of defence cannot be admitted into the proceedings, although the original larger set had been filed in the first instance. In T 649/14 the Board decided to not admit an originally converging auxiliary request which was rendered non-converging upon filing further requests during oral proceedings. In T 156/15 it was decided to reject an auxiliary request which was submitted after an internal discussion of the Board. In T 360/13 a request that was filed after the debate was closed was rejected. In T 158/14 the Board decided to admit new evidence into the proceedings after it was found that the late filing could not be considered a misuse of the appeal proceedings. In T 2187/14 a second machine translation that was filed to replace an initial incomprehensible machine translation was not admitted. In T 884/18 it was decided to not admit a public prior use by the appellant that was only introduced in the appeal proceedings. In T 1914/12 it was found that a mere argument, even it has not been presented before, cannot be rejected based on Art. 114 (1) EPC. Dr. Guntz closed this first part of his talk by emphasizing that in spite of the presented decisions the number of decisions in which a late submission was not admitted is small in comparison with the cases in which late submissions were allowed.

With respect to the revision of the RPBA, Dr. Guntz lined out that the revision aims at improving appeal proceedings with respect to predictability, consistency, efficiency and duration. A first change will be that a compulsory communication of the Boards of Appeal prior to oral proceedings will be codified. Further, it will be stipulated that appeal proceedings correspond to a judicial review of the decision under appeal. In this respect, various new regulations relating to late submissions of new subject-matter (such as a new request or a new document) during appeal proceedings will be introduced, allegedly codifying the prevailing case law.

In particular, the burden to justify a late submission of new subject-matter in the appeal proceedings will be shifted to the parties. New subject-matter will only become part of the proceedings if explicitly admitted by the Boards of Appeal after consideration of the reasoning in support of the admission of the new matter, which must proactively be submitted by the party. The statement setting out the grounds of appeal should be directed to the requests, facts, arguments or evidence that form the basis of the first instance decision. According to the revised rules, any other subject-matter will be considered late filed under normal circumstances. If a request is amended, reasons have to be proactively provided as to why the amended request is nevertheless to be admitted into the proceedings and why the amended request does not give rise to further objections. Any subject-matter that could have been introduced or that has been abandoned in the first instance will only be admitted under special circumstances.

Already now, all arguments why the first instance decision is to be revoked should preferably be included in the initial statements of appeal or defence, respectively, to reduce the risk that arguments initially not submitted become rejected since they are only filed later on in course of the appeal proceedings. However, the situation with respect to amendments to a party's appeal case may be stricter in the future. According to the revised rules, any subject-matter going beyond a party's appeal case will be considered late under normal circumstances. If a request is amended, reasons have to be proactively provided as to why the amended request is nevertheless to be admitted into the proceedings and why the amended request is prima facie allowable. The later along the appeal proceedings a party files new subject-matter, the higher the probability will be for the Boards of Appeal to reject the new matter for reasons of procedural economy only.

Apart from the revised RPBA, Dr. Guntz also presented that the Boards of Appeal would currently assess whether or not requests filed during opposition proceedings but filed after the deadline set by Rule 79 EPC and before the deadline set by Rule 116 EPC, could be rejected by an Opposition Division as being late filed.

Dr. Guntz finished his presentation by pointing out that the revised RPBA will enter into force at the earliest six months after the approval by the Administrative Council. Possibly, the Administrative Council will approve the draft in March 2019 so that the revised RPBA could enter into force in early 2020. The above topics presented by Dr. Guntz lead to a controversial discussion between the participants and the speaker, and among the participants during the breaks.

2. Current developments at the first instance of the EPO

In another session, the vice president of the EPO, Raimund Lutz, presented updates from the first instance of the EPO, such as (user driven) early certainty, online filings and IP5. With regard to early certainty, Mr. Lutz explained the increases of patent grants by about 40% in 2016 and 10% in 2017 with consequences of "raising the bar" from 2010, the establishment of the new Rule 70a EPC and the new practise that applications ready for grant are immediately granted. Mr. Lutz emphasized that, from the EPO's point of view, this increase in granted patents is not going along with a reduced quality of the grant proceedings, even though the perception of applicants and attorneys may be different. Mr. Lutz showed that the average time for search, examination and opposition would be 4.5 months, 22.4 months and 19.6 months, respectively. Examiners would also be encouraged by the EPO to use telephone consultations with the applicants more frequently. Mr. Lutz indicated that a 20% increase in divisional filings would have been observed in the last six months, which may be a reaction to the increased speed of examination. The initially planned user driven early certainty, according to which applicants could defer examination, would currently not be pursued anymore by the EPO due to a lack of international support. However, another user consultation is planned in the near feature and this initiative may be picked up again by the EPO. Mr. Lutz reminded the audience about the validation states, Morocco, Moldova, Tunisia and Cambodia, where European patents can be validated although these states could not become EPC members. With regard to online filing, Mr. Lutz described that 98% of all EP applications would be filed online, wherein the current web browser-based system would be replaced by a new web browser-based system "online filing 2.0" in 2020. Mr. Lutz emphasized some of the achievements of IP5, namely the "global dossier", which allows to access the patent registers of IP5 patent family members via Espacenet, and the "common citation document". The IP5 offices will run a test phase for a "collaborative search and examination" during which applicants can participate and can have all IP5 offices contribute to the ISR and the WO-ISA of their PCT applications. The audience thanked Mr. Lutz, who will leave office as planned end of 2018, for his work over the past years.

3. Other legal topics: Internet of Things, Blockchain and 3D printing

Apart from the updates from the EPO, the VPP conference provided, as usual, high quality presentations about various current legal challenges. This time, Internet of Things, Blockchain and 3D printing were covered by experienced presenters from private practise. The legal challenges for obtaining and enforcing IP rights in these fields by patents, designs, trademarks and copyrights were discussed.

VPP consistently provides a well-organized platform for attorneys at law, patent attorneys, in-house councils, judges, examiners and other IP professionals to exchange IP viewpoints. The next VPP spring annual conference will take place in Bamberg on May 9-10, 2019.