At the European Patent Office (EPO), any party to proceedings adversely affected by a decision may appeal the decision. Particularly, an appeal before a Board of Appeal at the EPO is the last instance of grant or opposition proceedings at the EPO, thereby giving rise to a determinative decision. The decision could be, for example, grant of a patent, maintenance of a granted patent revoked in opposition proceedings or revocation of a granted patent. That is, the decision may have very significant consequences.

In their decisions, the members of the Boards of Appeal shall comply only with the provisions of the European Patent Convention (EPC). In turn, the members shall comply with the Rules of Procedure of the Boards of Appeal (RPBA). The RPBA define inter alia what may be admitted, including discretionally, into appeal proceedings, such as facts, evidence or requests.

In April 2018, the EPO undertook a consultation regarding originally-proposed revisions to the RPBA. The originally proposed revisions further limit the scope of an appeal by enforcing a convergent approach to the appeal proceedings, via three levels of increasing restriction. In this way, the originally proposed revisions are intended to streamline appeal proceedings, by tightly constraining the appeal proceedings to only a review of the appealed decision.

More than 40 user groups and 150 users participated in the consultation, resulting in newly proposed revisions to the RPBA. These newly proposed revisions are the subject of a conference, to be hosted by the EPO in Munich on 05 December 2018. About 150 participants will join the conference, including patent attorneys, representatives from national patent offices, members of the Boards of Appeal and national court judges. It is expected that these newly proposed revisions will be presented for adoption in March 2019, with entry into force six months later i.e. September 2019. We will update you from and after the conference.

The newly proposed revisions are welcomed, clarifying certain aspects of the originally proposed revisions. However, these newly-proposed revisions still appear to go beyond even the most restrictive practices today under the current RPBA. Articles 12(4), 12(6), 13(1) and 13(2) RPBA are particularly relevant, constraining admissibility of objections and arguments, as well as facts, evidence and requests, from the filing of the grounds of appeal through to oral proceedings. The newly proposed revisions to these Articles, together with the originally proposed revisions, are detailed below. Changes are tracked over the previous version, with additions underlined and cancellations in strikethrough.

Article 12(4)
Newly proposed
(4) Any part of a party’s appeal case submission which does not meet the requirements in paragraph 2 is to be regarded as an amendment, unless the party demonstrates that this part was admissibly raised and maintained in the proceedings leading to the decision under appeal. Any such amendment may be admitted only at the discretion of the Board. The party shall clearly identify each amendment and provide reasons for submitting it in the appeal proceedings, and, in the case of an amendment to a patent application or patent, shall also indicate the basis for the amendment in the application as filed and provide reasons why the amendment overcomes the objections raised does not give rise to further objections. The Board shall exercise its discretion in view of, inter alia, the complexity of the amendments, the suitability of the amendments to solve address the issues which led to the decision under appeal, and the need for procedural economy.

Originally proposed
(4) Any part of a submission which does not meet the requirements in paragraph 2 is to be regarded as an amendment and may be admitted only at the discretion of the Board. The party shall clearly identify each amendment and provide reasons for submitting it in the appeal proceedings, and, in the case of an amendment to a patent application or patent, shall indicate the basis for the amendment in the application as filed as well as reasons why the amendment does not give rise to further objections. The Board shall exercise its discretion in view of inter alia the complexity of the amendments, the suitability of the amendments to solve the issues which led to the decision under appeal, and the need for procedural economy.

Article 12(6)
Newly proposed
(6) The Board shall not admit facts, objections, evidence or and requests which were advanced not admitted in the proceedings leading to the decision under appeal but not admitted in those proceedings, unless the decision not to admit them suffered from a manifest an error in the use of discretion or unless the circumstances of the appeal case justify their admittance. The Board shall not admit facts, objections, evidence or requests which should have been presented, or which were withdrawn or no longer pursued submitted, or which were no longer maintained, in the proceedings leading to the decision under appeal, unless the circumstances of the appeal case justify their admittance.

Originally proposed
(6) The Board shall not admit facts, objections, evidence and requests which were advanced in the proceedings leading to the decision under appeal but not admitted in those proceedings unless the decision not to admit them suffered from a manifest error in the use of discretion or unless the circumstances of the appeal case justify their admittance. The Board shall not admit facts, objections, evidence or requests which should have been presented, or which were withdrawn or no longer pursued, by the party concerned in the proceedings leading to the decision under appeal unless the circumstances of the appeal case justify their admittance.

Article 13 (1)
Newly proposed
(1) Any amendment to a party’s appeal case after it has filed its grounds of appeal or reply is subject to the party’s justification for its amendment and may be admitted only at the discretion of the Board. Article 12, paragraphs 4 to 6, shall apply mutatis mutandis. The party shall provide reasons for submitting the amendment at this stage of the appeal proceedings. The Board shall exercise its discretion in view of, inter alia, the current state of the proceedings, the suitability of the amendments to solve resolve the issues which were admissibly raised by the other party or parties in the appeal proceedings or which were raised by the Board, whether the amendment is detrimental to procedural economy, and, in the case of an amendment to a patent application or patent, it is for the party to satisfy the Board that any such amendment is prima facie allowable whether the party has demonstrated that any such amendment, prima facie, overcomes the issues raised by the other party or parties in the appeal proceedings or raised by the Board and does not give rise to new objections. The Board must also be satisfied that the amendment enhances procedural economy.

Originally proposed
(1) Any amendment to a party’s appeal case after it has filed its grounds of appeal or reply may be admitted and considered at the Board’s discretion is subject to the party’s justification for its amendment and may be admitted only at the discretion of the Board. The discretion shall be exercised in view of inter alia the complexity of the new subject- matter submitted, the current state of the proceedings and the need for procedural economy. Article 12, paragraphs 4 to 6, shall apply mutatis mutandis. The party shall provide reasons for submitting the amendment at this stage of the appeal proceedings. The Board shall exercise its discretion in view of inter alia the current state of the proceedings and the suitability of the amendments to solve the issues which were admissibly raised by the other party or parties or which were raised by the Board. The Board must also be satisfied that the amendment enhances procedural economy. In the case of an amendment of a patent application or patent, it is for the party to satisfy the Board that any such amendment is prima facie allowable.

Article 13(2)
Newly proposed
(2) Any amendment to a party’s appeal case made after the expiry of a period specified by the Board in a communication under Rule 100, paragraph 2, EPC or, where such a communication is not issued, after notification of a summons to oral proceedings shall, in principle, not be taken into account unless there are exceptional circumstances, which need to be justified with cogent reasons by the party concerned.

Originally proposed
(2) Any amendment to a party’s case made after the expiry of a period specified by the Board in a communication or after notification of a summons to oral proceedings shall, in principle, not be taken into account unless there are exceptional circumstances, which need to be justified with cogent reasons by the party concerned.

While streamlining the appeal proceedings is welcomed generally, the proposed revisions still appear to disadvantage Applicants and Patentees. This is particularly concerning in inter partes appeal proceedings. We continue to seek a more equitable approach, for those potentially disadvantaged by the proposed revisions. For specific advice on how to plan for the entry into force of the revisions, get in touch.