At a glance
The take home message of the rule changes for EPO users is that the Board can now issue a summons earlier, and the threshold for when the strict admission criteria applies for amendments filed on appeal is now triggered by the written opinion of the Board, rather than the summons. While this has sensible practical benefits, in many cases it will place a heightened procedural burden on the parties to appeal, and over time is likely to give rise to a more abbreviated appeal procedure.
The EPO’s Boards of Appeal are an independent judiciary body responsible for hearing appeals from parties adversely affected by decisions handed down by the EPO. Proceedings before the Boards of Appeal are conducted according to the Rules of Procedure of the Boards of Appeal. In June 2023, the EPO invited users to take part in a consultation on proposed amendments to the Rules of Procedure. The consultation process concluded in September 2023 having attracted submissions from a variety of interested parties and, in a bulletin dated 13 December, the EPO outlined the amendments that had been approved, which relate to Articles 13(2), 15(1) and 15(9)(b). These changes have now come into force as of 1st January 2024 and so EPO practitioners should be mindful of them and their consequences.
The changes are intended to improve the efficiency with which the Boards can bring appeal proceedings to a conclusion and should help the EPO reduce the backlog of appeal cases that is presently acting as a barrier to more timely handling of appeals by the Boards. As the outcome of litigation actions before national courts in Europe are sometimes dependent on the issuance of a final decision of the EPO’s Boards of Appeal, and with the need for timely processing of appeal matters before the EPO becoming increasingly relevant in view of the advent of the Unified Patent Court (UPC), the new rule changes will be welcome news to EPO users. The EPO’s bulletin linked above includes all changes to the rules, which will apply to all pending appeal cases on or after 1 January 2024, and the most noteworthy practical consequences of these rule changes are discussed here.
Firstly, in an amendment made to Article 15(1) RPBA 2020, the Board can now issue a summons to oral proceedings at any time in the appeal procedure. The issuance of the summons in opposition appeal proceedings is no longer limited to being at least two months from when the respondent(s) have filed their reply to the Statement of Grounds of Appeal. The intention is that this will free up Boards to set hearing dates within shorter timeframes. Whether this will have the effect of increasing efficiency will ultimately depend on how quickly the Boards can process substantive examination of the backlog of appeals before it, which will be the key factor dictating oral hearing dates. It seems therefore that this change is not likely to have an immediate impact on appeal timelines, but is likely to become more relevant and impactful once the backlog begins to clear.
However, the most noteworthy change to the Rules of Procedure of the Boards of Appeal for EPO practitioners concerns the point in proceedings at which the strictest procedural restriction for admitting amendments applies, as laid out in Article 13(2) RPBA 2020. Article 13(2) as amended 1 January 2024 now states that it is not the summons to oral proceedings, but instead the Board’s communication under Article 15(1), that will trigger the strict requirements of Article 13(2). After that point any amendments to the appeal case “shall, in principle, not be taken into account unless there are exceptional circumstances, which have been justified with cogent reasons by the party concerned”. This is a significant and welcome change. Prior to the 1 January 2024 rule change, Article 13(2) was triggered merely by the issuance of the Board’s summons to oral proceedings. The problem with this was that issuance of the summons by the Board is typically an administrative task that can occur very early in the appeal proceedings, merely setting a date and location for the hearing. Unlike before the EPO’s opposition divisions, where a summons is typically accompanied by a detailed non-binding preliminary opinion of the EPO on the merits of the case (meaning that the Division had by then had to take due time to assess the file and give consideration to the arguments and documents presented at the point of issuing the summons), summonses issued by the EPO’s Boards of Appeal are typically not accompanied by such substantive analysis. The Board’s substantive analysis is usually issued later in the procedure (sometimes much later) by virtue of the Board’s communication under Article 15(1). Moreover, the summons can often set a date for oral appeal hearings well into the future, sometimes over a year into the future. This meant that the strict rules of Article 13(2) often came into effect arbitrarily early in the appeal procedure. Amended Article 13(2) now makes more procedural sense in being instead tied to issuance of the Board’s Article 15(1) communication, which is the point in proceedings at which the Board will have performed a detailed review of the appeal file and considered the merits of the case.
Caution should however be applied by EPO practitioners during opposition appeal hearings because the changes to Article 15(1) include a change to the time frame for when the communication under Article 15(1) can be issued. This change has the effect of placing a heightened procedural burden on parties in opposition appeal proceedings in cases where amendments are to be filed but the strict measures of Article 13(2) are to be avoided. In particular, the Board’s Article 15(1) communication can now be issued at the earliest one month from when the respondent(s) have filed their reply to the Statement(s) of Grounds of Appeal. Previously, Article 13(2) was tied to issuance of the summons, but the summons could not be issued less than two months after the party or parties had filed their replies to the Statement(s) of Grounds of Appeal. This means that in theory, the date at which the strict restrictions of Article 13(2) can be triggered is now one month earlier in the appeal proceedings than before the rule change. Whilst it is expected, at least in the short term, that the practical effect of the rule change will be that Article 13(2) will not in fact be triggered until later in the appeal proceedings (on the basis that it is currently common for the substantive communication under Article 15(1) to be issued much later in the appeal proceedings than the summons), parties acting before the Board are now faced with the harsh reality that any amendments made after the respondents’ replies to the Statement of Grounds of Appeal must now be filed within only one month from those replies to be certain of avoiding the strictest admission criteria set out in Article 13(2). Those used to handling appeals will be aware that one month is an exceedingly short period in which to react to respondents’ replies, especially where those replies might be lengthy or provide numerous Auxiliary Requests to be dealt with, or where there are many respondents to reply to, or where expert testimony may be required to rebut assertions made in the respondent’s replies, etc. This one month can be cut even shorter in practice in instances where there are multiple stakeholders (e.g. licensees or distributors) that must be consulted before an appeal strategy can be approved. EPO practitioners should therefore be mindful to docket this one month period and act without delay once respondent replies are filed, so that any amendments to an appeal case, if any are occasioned, can if necessary be filed within one month of the replies (given a communication under Article 15(1) could theoretically be issued at any time after that, triggering Article 13(2)).
Jonathan Stafford is a European Patent Attorney and Partner specialising in chemistry, life sciences and med tech, and is one of our EPO opposition and appeal experts appearing frequently before the EPO’s opposition divisions and Boards of Appeal. If you wish to have more information in relation to this rule change or matters before the EPO’s Boards of Appeal more generally, please contact Jonathan or your usual Marks & Clerk contact.