The revised Rules of Procedure at the EPO’s Boards of Appeal (RPBA), known as ‘RPBA 2020’, came into force on 1 January 2020. The revised rules apply to any appeal pending on, or filed after, this date, as Valérie Stephann explains.
A decision by the EPO’s first instance departments (Receiving Section, Examining Division, Opposition Division or Legal Division) can be appealed (i.e. contested) before the EPO’s Boards of Appeal. The primary object of the appeal proceedings is to review the decision under appeal in a judicial manner (Article 12(2), RPBA). The Boards act as the final instances in granting and opposition procedures before the EPO. The Rules of Procedure of the Boards of Appeal provide details of the relevant procedures. These were revised in 2019, with the changes coming into effect as of 1 January this year.
The EPO states that it revised the Rules of Procedure to: “increase (i) efficiency, by reducing the number of issues to be treated, (ii) predictability for the parties and (iii) harmonisation”.
In fact, RPBA 2020 codifies various aspects of the current practice and case law of the Boards of Appeal; in particular, regarding the basis of the appeal proceedings (Article 1,2 RPBA 2020) and the ability of a party to amend an appeal case after the appeal has started (Article 13, RPBA 2020).
Article 12, RPBA 2020: Basis of appeal proceedings
Article 12 defines what forms the basis of a party’s case in the appeal proceedings.
- Article 12(2) states that: “a party’s appeal case shall be directed to the requests, facts, objections, arguments and evidence on which the decision under appeal was based”.
- Article 12(4), as amended, introduces the notion of an amendment to a party’s case and further specifies that any such amendment may be admitted only at the discretion of the Board:
“Any part of a party’s appeal case 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. In the case of an amendment to a patent application or patent, the party shall also indicate the basis for the amendment in the application as filed and provide reasons why the amendment overcomes the objections raised.
“The Board shall exercise its discretion in view of, inter alia, 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.”
Article 13, RPBA: Amendment to an appeal case during proceedings
Article 13 defines how a party can amend its case during the appeal proceedings, after the first stage of filing the grounds of appeal.
- Article 13(1) specifies that any amendment to a party's appeal case after filing the grounds of appeal or reply to the grounds of appeal must be justified by the party and may be admitted only at the discretion of the Board. When the Board of Appeal exercises its discretion, it will consider whether the amendment resolves the issues in question. When a patent application or a patent is amended, the party will have to show that it “prima facie overcomes the issues…and does not give rise to new objections”.
- Article 13(2) specifies that any amendment to a party’s case filed after a summons to oral proceedings “shall, in principle, not be taken into account unless there are exceptional circumstances, which have been justified with cogent reasons by the party concerned”.
What do the changes to Articles 12 and 13 mean in practice?
In practice, the revised Articles 12 and 13 mean that the same information – based on the same requests, facts, objections, arguments and evidence – will be considered again in appeal, unless the Board admits an amendment to a party’s case. Typically, new documents, new requests, new lines of attack presented for the first time in appeal will be considered as an 'amendment to a party’s case', and their admission will be at the discretion of the Board. In addition, the new rules expressly require the party to clearly and proactively identify each amendment made, and provide reasons for submitting it at this stage of the procedure (in the appeal proceedings).
The above aspects apply at the stage of filing the grounds of appeal (‘first level’). Then, during the appeal proceedings themselves, the later a party applies to submit an amendment to the case, the more difficult it will become to admit the amendment into the procedure.
When an amendment to a party’s case is submitted after the stage of filing the grounds of appeal (‘second level’), the new rules require the party to justify the amendment at that stage. The Board of Appeal will then exercise its discretion by considering whether the amendment resolves the issues in question. When a patent application or a patent is amended, the party will have to show that it “prima facie overcomes the issues… and does not give rise to new objections”.
When an amendment to a party’s case is submitted after a summons to oral proceedings (‘third level’), the new rules state that the amendment will not be taken into account unless 'exceptional circumstances' are justified by the party.
Codifying current practice
The articles 12 and 13 have been changed to reaffirm more explicitly that the primary object of the appeal proceedings is “to review the decision under appeal in a judicial manner”. The appeal proceedings are not a continuation of the first instance proceedings, relying upon new requests, facts, objections, arguments and/or evidence, but should be based on the requests, facts, objections, arguments and evidence upon which the decision of first instance was based.
Therefore, parties will have to ensure that they have a complete case (requests, facts, arguments and evidence) filed and admitted during the first instance proceedings. Furthermore, a complete case should be submitted as early as possible if it is to be admitted during the first instance proceedings.
Other changes in RPBA 2020
- Article 11 limits remittal to the first instance department unless there are 'special reasons' justify it. Remittal to the first instance is now the exception.
- Articles 5 and 10 give the possibility to the Board to consolidate several appeal proceedings, to deal with several appeals connected to each other one immediately after the other, and to accelerate the appeal proceedings (on request of a party).
- Article 12(7) states that the four-month deadline for replying to the grounds of appeal may exceptionally be extended by a maximum of two months at the Board’s discretion “upon a written and reasoned request”.
- Article 15 gives the Board the possibility to issue abridged decisions in writing, with the explicit consent of the parties.
Valérie Stephann is a Patent Attorney at Novagraaf in Geneva.