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29 February 2024

Changes to the Rules of Procedure of the Boards of Appeal

Updated Rules of Procedure of the Boards of Appeal (RPBA) entered into force on 1 January 2024. A number of proposed changes to the Rules were under consultation, including a potential shortening of the period of reply to the Grounds of Appeal from 4-months to 2-months. Thankfully, this proposed change did not make it to the final version of the updated Rules, which would otherwise have placed significant time pressure on Respondents in setting out their case in reply to an appeal.

The latest update does however revise the timeline of the “convergent approach” regarding what is admissible in appeal proceedings, changing when the strictest third stage of this approach is triggered.

Overview of convergent approach:

(1) The first stage of the convergent approach requires that any new requests, facts, objections, arguments and evidence (e.g. new arguments for or against a claim, new prior art, or new claim amendments) that were not raised in first instance proceedings are deemed to be an “amendment” to a party’s case that must be justified. The amendment will only be admitted at the discretion of the Board. In deciding whether to admit the amendment, the Board will consider factors such as 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.

(2) The second stage requires that any amendment to each party’s case over what is set out in the Grounds of Appeal and the Reply must also be justified and again only admitted at the discretion of the Board. Admissibility of an amendment at the second stage is judged against stricter criteria. For example, an amendment to the claims must additionally be demonstrated to prima facie overcome the issues raised and does not itself give rise to new objections (whereas under the less-strict first stage the Board instead considers the “suitability” of the claim amendment to address the issues).

(3) The third stage previously applied after notification of the summons to oral proceedings, at which point any amendment to a party’s case would not be admitted unless there were “exceptional circumstances”. This exceptional circumstances criteria is applied very strictly. A potential example of exceptional circumstances would be a Patentee submitting new amended claims in response to an objection raised for the first time by the Board in the preliminary opinion or during oral proceedings.

The convergent approach is intended to streamline appeal proceedings to be a review of the same issues put forward during the first instance opposition proceedings, unless there are good reasons that justify an amendment to a party’s case. The approach places an emphasis on parties putting forward a complete case in first instance proceedings and, where this is not practical and an amendment to a party’s case is required, the amendment should be entered at the earliest opportunity in appeal proceedings to have the best chance of being admitted into proceedings. It becomes increasingly difficult to enter an amendment to a party’s case as the appeal progresses.

Timeline of each stage

The first stage applies at the outset of the appeal proceedings, and therefore is relevant to the Appellant when filing the Grounds of Appeal and to the Respondent when filing the Reply to the Grounds. Once the Grounds of Appeal / Reply has been filed, any further submissions are subject to the stricter second stage of the convergent approach (and the three stages are cumulative, so the party would additionally need to justify why an amendment at the second stage was not entered in first instance proceedings).

Under the old Rules, the strictest third stage applied after notification of the summons to oral proceedings. For post-grant opposition-appeal proceedings (i.e. not pre-grant examination appeals), the Rules required that the Board did not issue the summons for at least two-months from receipt of the Reply to the Grounds of Appeal.

According to the latest Rules, in opposition-appeal proceedings the Board shall issue the summons no earlier than one-month from receipt of the Reply to the Grounds of Appeal. However, for both opposition and examination appeals, the strictest third stage will now apply from when the Board issues the Article 15(1) RPBA communication that draws attention to the issues that the Board considers to be of particular significance to the appeal (in many cases this communication takes the form of a non-binding preliminary opinion of the Board).

Consequences

The above change is significant because it is desirable to get all submissions on file before the strictest third stage is triggered and thus the “exceptional circumstances” criteria applies. For example, if an opponent-appellant files an appeal, and in reply the patentee files amended claims as a new auxiliary request, it would be advantageous for the opponent to file any arguments against this new request before the strictest third stage applies. Otherwise, it would be necessary to argue that there were exceptional circumstances that meant the opponent could not file these arguments sooner.

The old Rules meant that parties in opposition proceedings had at least two-months to file a response to the reply before the Board issued the summons to oral proceedings (triggering the third stage of the convergent approach). Under the new Rules, the Board could in theory now issue the summons and Article 15(1) RPBA communication as quickly as one-month after the Reply to the Grounds is filed, at which point any “amendment” to a party’s case would only be permitted in exceptional circumstances. It is therefore worthwhile keeping the new shortened timeframe in mind when a Reply to a Grounds of Appeal is received.

In practice, there is currently a backlog of appeal cases at the EPO, and it is therefore unlikely that most Boards are going to begin issuing Article 15(1) RPBA communications within one or two months of receipt of the Reply (which now triggers the strictest third stage). It seems more likely that, at least for now, parties may receive an earlier summons setting a date for oral proceedings and then the Board will follow-up with the Article 15(1) RPBA communication with a substantive review of the case. Nevertheless, it is likely the Boards will begin to issue the Article 15(1) RPBA communication more quickly as the backlog of cases is cleared, and the EPO has a target for 90% of appeals to be dealt within a 24-month timeframe by the end of 2025.

The other takeaway is that receipt of the summons (if not accompanied by the Article 15(1) RPBA communication) is no longer reason to despair if a party was planning on filing further submissions, because it is no longer the summons that triggers the strictest third stage of the convergent approach.

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