New Year, New Rules: Changes to the Rules of Procedure of the EPO Boards of Appeal January 2020

The rules implement a so-called ‘convergent approach’ that is intended to focus the appeal proceedings on the issues discussed and decided upon in the decision under appeal. This is intended to improve procedural efficiency without compromising quality. From 1 January 2020, the new rules apply to all pending appeal cases and so we should soon see the practical implications of these new rules. In preparation, we consider some of the main features of the new rules.

Changes to an Appeal Case

One overriding effect of the new rules is that it will be more difficult to change your case during an appeal (i.e. change your case after filing an appeal), but it will also be more difficult to change your case when filing an appeal (i.e. employ facts and arguments etc. that were not presented at first instance). Concerning what you can include in an appeal, Article 12(1) indicates that appeal proceedings shall be based on:

• the decision under appeal and the minutes of any oral proceedings held during the first instance;
• the notice of appeal and statement of grounds of appeal;
• any reply to an appeal filed within the specified time limit (in cases having more than one party);
• communications issued by the Board of Appeal and any reply to such communications; and
• the minutes of any video or telephone conference with the party or parties sent by the Board.

It is noteworthy that the new rules make reference to the decision under appeal and the minutes of the first instance proceedings. Perhaps surprisingly, the previous rules made no such mention. Including reference in the new rules to the decision under appeal and the corresponding set of minutes is suggestive that in future, appeal proceedings will be focussed more on the decision under appeal and what was discussed at first instance rather than focussing on the facts and arguments presented by the parties on appeal.

The rules, i.e. Article 12(2), also limit the changes that a party can make to its case during appeal proceedings compared to its case presented at first instance (e.g. examination or opposition). In particular, a party’s appeal must be directed to the requests, facts, objections, arguments and evidence on which the original decision under appeal was based. Parties will therefore find it difficult to raise new objections, submit new documents or file new auxiliary requests (claim amendments) that were not presented during the first instance proceedings. With immediate effect, parties should therefore consider their case carefully during the first instance proceedings and make sure that all objections, documents and claim amendments are on file during the first instance proceedings that they may wish to rely on during an appeal. Given the significance now placed on the objections, arguments and amendments submitted at first instance (and the explicit reference to the minutes of the first instance oral proceedings introduced for the first time into the revised rules), the minutes of the first instance oral proceedings are now more important. Accordingly, from a practical perspective, this makes it advisable for parties to review more carefully the minutes of oral proceedings and request corrections where appropriate.

As in the current rules, the revised rules require that a statement of appeal, or the reply, must contain a party’s complete case indicating all requests, facts, objections, arguments and evidence relied on. The new rules also restrict the amendments that a party can make to their case after their appeal is filed (or after a party has replied to an appeal filed by another party). Anything not filed with either a party’s appeal or reply that is subsequently filed is considered an amendment to a party’s case, i.e. considered late filed. Any such amendment to a party’s case may be admitted into the appeal proceedings but only at the Board of Appeal’s discretion.

Moreover, any amendment to a party’s case must be clearly identified and reasons provided for submitting it only in the appeal proceedings. If the amendment is to a patent application or patent, the party must indicate the basis for the amendment(s) in the application as filed and provide reasons why the amendment overcomes the objections raised.

The emphasis of the new rules suggests that Boards will be less likely to accept any changes to a party’s case. Hence, the new rules introduce significant restrictions on what can and cannot be submitted/argued during appeal proceedings. It will also be much easier for a Board of Appeal to dismiss a late-filed argument, document or claim amendment without having to justify why. The rules aim to make the EPO’s appeal proceedings more focussed on reviewing the decision under appeal and move away from a complete revaluation of the case.

As a result, parties should consider each case carefully during the first instance proceedings to identify any argument and identify any document that they may wish to rely on at any stage of the proceedings, in particular the appeal stage. Under the new rules there is nothing to be gained by keeping any argument/document/claim amendment for the appeal. Any argument, any document or any claim amendment not presented at first instance is likely to be rejected (not admitted) by the Board of Appeal. All arguments, documents and/or claim amendments should be submitted at the earliest opportunity.

Remittal Less Common

Another significant change to the rules is the approach to remittal of a case to the department of first instance. The new rules appear to make it less likely that a case will be remitted. The current version of the rules provide that remittal must occur if fundamental deficiencies are apparent in the first instance proceedings (unless special reasons present themselves for doing otherwise). The new rules address the possibility of remittal in a very different light. Article 11 RPBA 2020 states: “The Board shall not remit the case to the department whose decision was appealed for further prosecution, unless special reasons present themselves for doing so. As a rule, fundamental deficiencies which are apparent in the proceedings before that department constitute such special reasons”.

It is understood that the reason for this is to avoid ‘ping-ponging’ between the Boards of Appeal and the first instance departments. Again, the aim of these changes is to make the whole process more efficient.

However, it is not clear if the new rules will encourage the Boards of Appeal to consider issues that were not discussed/decided on at first instance. Until now, it has been the practice of the Boards of Appeal to remit a case back to the department of first instance if issues had not been discussed. For example, an opposition division may have revoked a patent for added-matter without considering novelty/inventive step. If a Board of Appeal subsequently overturned the opposition division’s decision on added-matter, until now the Board of Appeal would have remitted the case to the opposition decision for consideration of novelty/inventive step.

The new rules regarding remittal suggest that Boards should be dissuaded from remitting cases in these circumstances. On the other hand, remitting a case in such circumstances would seem to run contrary to the intention of these new rules that an appeal should focus on the decision under appeal. Time will tell how the Boards of Appeal intend to interpret these new rules and if their practice in remitting cases will change. In the meantime, given the possibility that Boards will discuss and decide issues not discussed/decided in the decision under appeal, parties must be fully prepared to discuss all possible issues during an appeal.

Oral Proceedings

There are also several changes introduced by the new rules to the holding of oral proceedings, mostly of a formal nature. They include:

1. The new rules require the Boards of Appeal to publish a list of the cases in which the Boards are likely to hold oral proceedings, issue a summons to oral proceedings, or issue a decision in written proceedings in the next working year (Article 1(2)). However, the list is merely a guide and there is no obligation to keep to it. How informative the list is will only become apparent over time.
2. The new rules state that a Board should “endeavour” to provide at least four months’ notice of oral proceedings (Article 15(1)).
3. Prior to oral proceedings, a Board is required to issue a communication drawing attention to the matters that seem to be of particular significance for the decision to be taken. This communication is mandatory, however the new rules do not require that the communication includes a preliminary opinion. The new rules indicate that sending a preliminary opinion is optional (Article 15(1)).
4. The new rules also set out in what circumstances a party may request a change of the date of the oral proceedings (Article 15(2)(b)). Reasons which do not justify a change of date are also listed (Article 15(2)(c)).
5. The new rules also require that a Board of Appeal issues its written decision in a timely manner. For example, in most cases the Board should put their decision in writing and dispatch it within three months of the oral proceedings (Article 15(9)).

Transitional Arrangements

Although the new rules come into force on 1 January 2020, the new rules do not apply to grounds of appeal or replies to an appeal filed before that date. It is therefore worthwhile considering all pending appeals and deciding if any action should be taken before the end of 2019, e.g. filing grounds of appeal and replies to an appeal early, so that the existing, less strict rules are applied. Finally, it should be noted that as they stand, the transitional arrangements appear to allow a situation in which the appellant’s grounds of appeal (filed December 2019) are treated according to the existing rules and the respondent’s reply to the appeal (submitted March 2020) is treated according to the revised, more strict rules. How the Boards of Appeal resolve this will be interesting.