The EPO’s Boards of Appeal have exclusive jurisdiction to decide upon appeals against so-called first instance decisions handed down by other departments of the EPO, for example decisions in oppositions to granted European patents and decisions refusing European patent applications. The RPBA are binding upon the Boards, “provided that they do not lead to a situation which would be incompatible with the spirit and purpose of the [European Patent] Convention” (Article 23 RPBA, unamended).
The existing RPBA have been in force since 2007 and the extensive revisions to these are part of a suite of reforms affecting the Boards of Appeal that have recently been implemented. These reforms included moving the physical base of the Boards to Haar, a town towards the east of the greater Munich area, and electing an independent president. These changes were intended to strengthen the independence and authority of the Boards. The stated aims in changing the RPBA, on the other hand, are to increase efficiency and predictability and to harmonise decisions between boards, without any decrease in quality.
The RPBA 2020 were discussed at a major seminar organised by the Chartered Institute of Patent Attorneys (CIPA) on 22 July in London, attended by more than 100 people, and addressed both by European patent attorneys as well as an EPO Board of Appeal member and a first instance EPO representative responsible for a centralised opposition team.
So what is changing? Along with a large number of non-substantive amendments to the RPBA to improve the clarity and consistency of the rules and to make them gender neutral (for example by introducing “Chair”), there are many more significant substantive changes, which we now discuss, focusing on what we believe to be the most significant changes.
Introduction of a three-stage “convergent approach” to a party’s appeal caseThe concept of a convergent approach to an appeal case lies at the heart of RPBA 2020, and has been the subject of much comment, including at the CIPA seminar on 22 July.
In the present RPBA, which remain in force until the new rules come into effect, no mention is made about appeal proceedings being based on the decision being appealed or on the minutes of any hearing (so-called Oral Proceedings) that may have taken place before issuance of that decision. Now, as well as appeal proceedings (obviously) being based on:
- a party’s notice of appeal and its substantive case;
- any reply if more than one party is involved; and
- any communication issued by the Board inviting the filing of observations and observations filed in reply to such communications,
- the decision appealed; and
- the minutes of any Oral Proceedings (Article 12(1), RPBA 2020).
“In view of the primary object of the appeal proceedings to review the decision under appeal in a judicial manner, 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(2), RPBA 2020).
Whilst this is intended to be in accordance with established case law, it is this judicial manner to the review of first instance decisions, which concerns both points of law and points of fact, which provides the context for the new convergent approach: the philosophy behind the new rules is that they are intended to apply to any amendments to a party’s case, as it progresses to and through an appeal, and to provide for any amendments to become increasingly difficult to introduce.
First stage of the convergent approach
The convergent approach begins with the party’s appeal case as it is defined in Article 12(2) RPBA 2020 (see above), i.e. from the moment the appeal is filed. It is now prescribed that:
“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 admittedly 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” (except from Article 12(4), RPBA 2020).
The explanatory notes accompanying RPBA 2020 make clear that the revisions to Article 12(4) are intended to change practice: explicit reference is made to this first level of the convergent approach “reversing the approach of current Article 12, paragraph 4” and to state that not everything presented at the outset of the appeal proceedings now being automatically included in them. Generally speaking, existing Article 12(4) RPBA provides that everything presented by a party in its substantive case, any reply of another party and any reply to a communication from the Board shall be taken into account by the Board, without prejudice to the power of the Board to hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the first instance proceedings.
The change in Article 12(4) was the subject of discussion at the CIPA seminar. One contributor suggested that, presently, everything is “in” an appeal except where there is a reason not to admit something whereas, in future, because the convergent approach is to begin right at the start of the appeal process, something may not be “in” unless it was in at first Instance (since, otherwise, that thing will be regarded as an amendment the admissibility of which is discretionary). Depending on how you look at it, this is a change in emphasis or a change in practice.
The remainder of new Article 12(4) RPBA requires a party to clearly identify any “amendment” and provide reasons for submitting it in the appeal (i.e. why it was not submitted before the appeal) and, where the amendment concerns a patent or application, to give basis for the amendment and provide “reasons why the amendment overcomes the objections raised”. In response, factors the Board shall consider when exercising its discretion on whether to admit such amendments are their complexity, their suitability to address the issues which led to the decision under appeal, and the need for procedural economy.
New subparagraphs 5 and 6 of RPBA 2020 specify additional criteria for admissibility: Article 12(5) provides Boards with discretion not to admit any part of a party’s substantive case (either its grounds of appeal or a reply to such grounds) which is not considered to contain a party’s complete appeal case, or to be clear or concise, or to specify material (to be filed inits annexes) relied upon. Article 12(6) generally gives Boards discretion not to admit requests, facts, objections or evidence which were not admitted, or which should have been submitted or which were no longer maintained, in the proceedings leading to the decision under appeal.
So the message seems clear: anything a party – whether an applicant, a patent owner or an opponent – wishes to have considered by a Board of Appeal should in future be part of the pre-appeal proceedings. Otherwise, reliance on such things in appeal proceedings cannot be guaranteed.
Second and third stages of the convergent approach
Where Article 12(4) RPBA 2020 specifies generally what is to be regarded as an amendment to a party’s appeal case, Article 13(1) and (2) RPBA 2020 are specifically concerned with amendments made after a party has filed its grounds of appeal or replied to another party’s grounds. Article 13(1) is concerned with the period between the filing of an appeal (and any reply to such an appeal) and either the issuance of Summons to attend Oral Proceedings or a communication from a Board inviting the filing of observations. Article 13(2) is concerned with amendments made either after the issuance of Summons or a communication from the board inviting the filing of observations. Together, these implement the second and third stages of the convergent approach.
As with the first stage, admissibility of amendments is discretionary, but the factors Boards are to consider when exercising their discretion become ever more stringent. Amongst other things, for example, Article 13(1) stipulates that discretion should be exercised in view of the context of current state of proceedings (and so requires the state of proceedings to play a role in determining admissibility of an amendment rather than merely requiring reasons to be given for submitting an amendment in the appeal proceedings); and whether an amendment is detrimental to procedural economy (Article 12(4) simply referring to the need for procedural economy). Most significantly perhaps, Article 13(1) also requires that, where an amendment concerns a specification (whether an application or a granted patent), the party requesting the amendment has to demonstrate that, prima facie, it overcomes the issues raised by another party in the appeal proceedings or by the Board and does not give rise to new objections. It has been remarked that this last factor implies that a party seeking to amend at this stage in the proceedings is being asked to prove a negative, always an onerous task.
Article 13(2) RPBA is concerned with the third stage of the convergent approach, and provides that an amendment “shall, in principle, not be taken into account unless there are exceptional circumstances, which have been justified with cogent reasons by the party concerned”.
Although RPBA 2020 will, in general, apply not only to appeals filed after 1 January but also those pending on that day (Article 25(1), RPBA 2020), there are some saving provisions to mitigate parties being disadvantaged by this. Firstly, for grounds of appeal or replies to grounds of appeal filed before 1 January 2020, neither the first level of the convergent approach (Article 12(4), RPBA 2020) nor Article 12(5) and (6) RPBA 2020 will apply to such grounds or replies. Instead existing Article 12(4) will apply. These provisions are discussed above. Secondly where a Summons or communication from a Board requiring a party to respond has been notified before 1 January 2020, the second level of the convergent approach (Article 13(2), RPBA 2020, also discussed above) will not apply. Instead, the existing requirements concerning admittance and consideration of amendments to parties’ cases will apply.
Changes to rule on remittal of cases
Before considering possible changes in practice that may result from the convergent approach set out in RPBA 2020, it is appropriate to consider a very significant change to the rule in the RPBA defining the circumstances under which Boards may remit cases for further prosecution. Under Article 111(1) EPC, a Board of Appeal, following examination as to an appeal’s allowability, can exercise any power within the competence of the department responsible for the decision appealed, or remit the case to that department for further prosecution. In opposition proceedings, for example, patents may be revoked without consideration of all grounds of opposition that an opponent may have argued. For example, the claims of an opposed patent may be found to contain added subject-matter and the patent as granted found to be bad for this reason, without an Opposition Division ever considering anything an opponent might have submitted in relation to other grounds of opposition (for example lack of novelty or lack of inventive step). If a Board on appeal reverses an Opposition Division’s finding of added subject-matter, it is quite common for such a case to be remitted for further prosecution, rather than a Board itself to consider and decide upon such substantive issues.
The possibility of remittal provided for in Article 111(1) EPC is the subject of Article 11 RPBA, the current version of which merely provides that remittal must occur if fundamental deficiencies are apparent in the first instance proceedings (unless special reasons present themselves for doing otherwise). The emphasis in Article 11 RPBA 2020 is completely different:
“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” (Article 11, RPBA 2020).
Moreover, the explanatory remarks accompanying RPBA 2020 state that the aim of new Article 11:
“is to reduce the likelihood of a “ping-pong” between the Boards and the departments of first instance, and consequent undue prolongation of the entire proceedings before the EPO. When exercising its
discretion under Article 111 EPC, the board should take account of this aim” (Explanatory note to Article 11, RPBA 2020, revised draft);
“Whether “special reasons” present themselves is to be decided on a case-by-case basis. If all issues can be decided without undue burden, a Board should normally not remit the case” (Explanatory note to Article 11, RPBA 2020, revised draft);
“As a consequence of the convergent approach now implemented in proposed Articles 12 and 13, it is to be expected that more issues will be raised and dealt with in the proceedings at first instance, thereby reducing the need to remit cases”.
It is therefore clear that changes are on the horizon in relation to consideration of remittal after 1 January 2020.
Consideration of the convergent approach and changes to remittal in RPBA 2020
As mentioned above, when discussing the first stage of the convergent approach, a party is clearly going to be on the back foot as soon as he or she attempts to introduce something not considered at first instance. The more advanced an appeal is, the greater the difficulty achieving admissibility is likely to be. Accordingly, a message seems clear: the more comprehensive its submissions at first Instance are, the less likely that a party will need to rely upon the discretion of a Board to admit an amendment according to the new convergent approach.
The inevitable corollary of the new convergent approach is that first instance proceedings, notably, but not only Oral Proceedings in opposition cases, will become more involved. Indeed, this appears to be explicitly anticipated in the third comment quoted above from the explanatory notes concerning the change to Article 11 RPBA.
There was considerable discussion at the CIPA seminar on whether the practice of the Boards of Appeal in relation to remittal will change after 1 January 2020. There seemed to be consensus amongst the panel presenting that the “special reasons” required by new Article 11 will include more than simply fundamental deficiencies in the first instance proceedings. However, it seems that the true scope of “special reasons” will only become clear over time. In the meantime, the existing dilemma faced by appellants – how much to address issues in a case that are not the subject of the appealed decision? – appears to be made worse by the change to Article 11 RPBA: it would be a confident (or foolhardy) European patent attorney who does not spend considerable time preparing for all matters that may be discussed by a Board at Oral Proceedings.
As regards the intimation in the EPO’s explanatory notes about it being expected that more issues will be raised and dealt with at first Instance, a panel member at the CIPA seminar remarked that she can’t see that as very practical. The panel member’s point seems very reasonable: opposition proceedings, particularly Oral Proceedings at which most decisions are ultimately reached, are complicated and frequently lengthy enough without expecting an already busy Opposition Division to convene a discussion and reach a view on the merits of other grounds of opposition, once a given set of claims may have been found to be bad because of another ground, or one line of argument under the same ground.
The EPO attendee speaking on behalf of the departments of first Instance indicated that, for its part, it does indeed expect an increased number of so-called auxiliary requests to be presented by parties at first instance. Without explaining in detail how, she indicated that “these will be dealt with efficiently and fairly, balancing the interests of the parties and the public on the efficiency of the procedure”. Another point made was that DG1 (since 2017 responsible for the entire procedure from filing to granting and opposition) will consistently insist on a convergent approach by the Proprietor when amending the claims. There were murmurs from some in the audience at the CIPA seminar at this point: a requirement for convergency of amendments at first instance is perhaps not universally accepted as a requirement for the structure of auxiliary requests presented at first Instance.
The bottom line to all of this is great uncertainty: it will remain to be seen whether the introduction of the convergent approach achieves one of the stated purposes of the revision of the RPBA as a whole: to increase efficiency. Will this be at the risk of first instance proceedings becoming more inefficient? Or, even if more involved first instance proceedings are not to be regarded as inefficient, does the capacity exist at first instance for its Oral Proceedings to become more involved? The DG1 representative at the CIPA seminar explicitly indicated that the legal framework is considered to provide the necessary tools to deal with any possible change of behaviour by the parties. Only time will tell as to how these tools will be wielded.
Whilst emphasis and discussion in this article has so far been focused on the introduction of the convergent approach and the changes to the rule in the RPBA on admissibility, there are a slew of other changes to the RPBA which should not go unnoticed. These are briefly discussed now:
Introduction of a “list of lies”
Joking, the Board of Appeal representative at the CIPA seminar referred to new Article 1(2) as providing for a list of lies. This new provision requires that, each year, a list of cases will be drawn up and published, on which Boards are likely to hold Oral Proceedings or issue written decisions on, or issue communications seeking responses from parties. The list of lies comment derives from the fact that this list will be provisional, since developments in the handling of appeals will inevitably affect
these predictions. Nevertheless, the list is likely to be of some assistance to parties.
Up to two months’ extension available, exceptionally, for responding to a statement of grounds of appeal
In the drafts of RPBA 2020, it had been proposed that potential respondents would be prevented from requesting extensions to the four-month period for responding to an appellant’s statement of grounds of appeal. Presently, extensions of time may exceptionally be allowed at the Boards’ discretion. In a change to the drafts of RPBA 2020, this will remain the case. However, it is now specified that the four-month period may only be extended, exceptionally, up to a maximum of six months.
Acceleration of appeal proceedings
The possibility of requesting acceleration of appeal proceedings is now explicitly referred to in the RPBA. However, broadly the same provisions were previously provided for in a 2008 Notice published in the EPO’s Official Journal. No significant change in practice is therefore anticipated.
Mandatory written communications to issue from Boards before Oral Proceedings
It is now specified in the RPBA 2020 that four months’ notice must be given of the date of Oral Proceedings (whilst Article 15(1) RPBA 2020 reads that the Board shall “endeavour to give at least four months notice of the summons [sic]” it is clear that what is meant is that the Board shall endeavour to give at least four months notice of Oral Proceedings).
More significantly, Article 15(1) RPBA 2020 now requires Boards to issue communications drawing attention to matters that seem to be of particular significance for the decision to be taken. This was previously only an option open to Boards and will be welcomed by parties preparing for Oral Proceedings. Whilst these communications may accompany summons, they need not do so, but Boards are to endeavour to issue them at least four months in advance of Oral Proceedings. It is still not a requirement for Boards to issue preliminary opinions, although the possibility of doing so is now explicitly specified in RPBA 2020.
Changing the date fixed for Oral Proceedings
Provisions that were previously set out in a Notice published in the EPO’s Official Journal are now included within the RPBA. There are only a few substantive changes that have been made when doing so. Parties still need “serious reasons” when requesting a postponement of a Hearing and the non-exhaustive list of “serious reasons” is essentially unchanged,. Any serious reason given in a request to change the date must relate to the representative, if a party is represented. Notably, however, if that representative has a prearranged serious reason that prevents him or her from attending Oral Proceedings, this should now, on its own, be sufficient for Oral Proceedings to be rescheduled, since it is no longer a requirement to explain why another representative could not stand in for the one prevented from attending. Since representatives generally have expended considerable time and effort on a case by the time Proceedings are convened, this development will no doubt be welcomed
There are still further changes that will come into effect on 1 January 2020, which we have not discussed. These include the possibility for Boards to issue decisions in which the reasons are given in abridged form or partially abridged form; and timescales for Boards to issue decisions. Additionally, if a Board’s rapporteur is asked to do so by the Board’s Chair, (s)he will assess whether or not more than one appeal should be handled together or whether any appeals should be taken out of turn, seemingly for reasons of overall procedural economy.
Conclusions and suggestions
Whilst the effect of the new rules will only be seen with the passage of time, the general consensus is that, particularly the changes concerned with amendments to parties’ cases, the new rules will make amending cases at the appeal stage still more difficult. Accordingly, anyone involved in a pending appeal – whether an appellant or a respondent – would be well advised to consider whether it might be sensible to make any additional submissions now, in order to try to benefit from the possibly greater flexibility to do so under the existing rules.
Likewise, particularly if amendments to a case may be advantageous as part of an appeal yet to be filed, or in response yet-to-be-filed response to an already-filed appeal, it may well be sensible to file a submission before 1 January 2020, even if the appeal or the response is not due until later.
Given that RPBA 2020 will apply to appeals filed in respect of many cases currently at first instance now, such as pending oppositions and indeed pending applications, it would be at the very least sensible to review these as well, particularly opposition files, in case additional submissions may be beneficially made. More generally, presenting as complete a case as possible at first instance is likely to become ever more important, starting now!
Lastly, in view of the future importance of decisions from first instance proceedings on appeal proceedings, not to mention that of the minutes of any first instance Oral Proceedings, these (both decisions and minutes) will need to be considered to a greater extent than before, to minimise the possibility that subject-matter presented on appeal may be regarded as an amendment, which could potentially be inadmissible.