New Rules of Procedure of the Boards of Appeal of the European Patent Office
The New Rules of Procedure of the Boards of Appeal (RPBA) of the European Patent Office (EPO), which will enter into force on January 1, 2020, will apply to all pending appeals – with a few exceptions – and to all new appeals filed after that day. Among the exceptions, the new provisions relating to the admissibility of amendments of a party’s appeal case will not be applied to: (1) any statement of grounds of appeal filed before January 1, 2020, and (2) any reply to such statement filed in due time, as well as (3) any amendments of a party’s appeal case made in response to a Board’s invitation to file observations or after the notification of a summons to oral proceedings issued before January 1, 2020. In these cases, the current version of the RPBA will still be applicable.
Among the provisions which may have the more significant impact on EPO users (i.e., Applicants of European patent applications, Proprietors of European patents against which opposition proceedings may be initiated and Opponents), the new RPBA appear to further restrict the room for admissible amendments in appeal proceedings. This restriction is in line, however, with several decisions of the Boards of Appeal.
In particular, all EPO users should be aware that the new RPBA commits admissibility of any submissions in the appeal procedure, including submissions made in the statement of grounds of appeal and in the reply thereto, to the discretion of the Boards. This rule change precludes any attempt to use appeals as a continuation of the procedure started in “first instance” departments (original examination and opposition proceedings). With more specific reference to Applicants of European patent applications, we believe that Applicants wishing to increase the chances of obtaining a patent in examination cases where the Examiner is not persuaded of compliance with the substantial and/or formal law requirements should consider filing one or more divisional applications as long as the original application is pending. We further recommend limiting the use of appeal proceedings to obtain a judicial revision of a first instance decision, and refraining from seeking an appeal decision in any case that was substantially amended with respect to the case as examined in the first instance proceeding.
Indeed, according to the new RPBA, even a party’s complete appeal case filed at the very beginning of the appeal procedure, if it contains parts not directed to requests, facts, objections, arguments and evidence on which the decision under appeal was based, will be considered to be an amendment and, as such, will be admitted into the procedure only at the Board’s discretion. The Board will exercise its discretion in view of, inter alia, the complexity of the amendment, the suitability of the amendment to address the issues which lead to the decision under appeal, and the need for procedural economy. The same discretion will be applied to any amendment of a party’s appeal case after the filing of the statement of grounds of appeal or the reply thereto. After the issuance of a Board’s invitation or a summons to oral proceedings, amendments to a party’s appeal case will not be taken into consideration, in the absence of exceptional circumstances, justified with cogent reasons by the party concerned. It thus seems that very late-filed amendments will likely be disregarded by the Boards.
Therefore, in all pending and future examination and opposition cases, it is extremely important to make sure (more than ever before) both to submit any request having strategic importance in the first instance proceedings, without waiting for a possible subsequent appeal, and not to withdraw such a request throughout the first instance proceedings if such request may potentially become the subject of a subsequent appeal against an unfavorable decision issued by a department of first instance, be it an Examining Division or an Opposition Division.