The European Patent Office has recently approved the revised Rules of Procedure of the Boards of Appeal (RPBA) which will come into force to any pending or newly filed appeals relating to European patents or applications from 1 January 2020 onwards. This article provides a brief overview of the more important rule changes, governing the appeals procedure, and what they mean in practical terms.
According to the EPO, the new RPBA aims to increase “(i) efficiency, by reducing the number of issues to be treated, (ii) predictability for the parties and (iii) harmonisation”.
Following the rule change, parties will typically be given at least four months’ notice for oral proceedings. A decision will be issued within three months of the oral proceedings (or if later, parties will be informed of that date).
According to Article 10, it is now possible for an appeal to be accelerated on request by a party. Grant of the acceleration is at the EPO’s discretion and reasons justifying the acceleration, such as infringement proceedings, and supporting evidence should be provided with the request. It is now also possible for the EPO to accelerate proceedings of its own motion.
Another significant rule change in Article 12, paragraphs 4 to 6, sees restrictions on new requests, facts, lines of attack, arguments, and evidence being admitted during appeal proceedings. The new RPBA further emphasises that the primary object of the appeal proceedings, which is to review the contested decision rather than retry the case.
Furthermore, any part of a party’s case which does not relate to the material on which the contested decision was based will only be admitted into proceedings at the discretion of the EPO, according to new Article 13. Amendment to a party’s case after filing of its grounds of appeal or reply can only be admitted at the EPO’s discretion, taking into account whether the amendment is suitable to resolve the issues concerned and procedural economy. The bar is set even higher for an amendment made at a very late stage of proceedings – it will not be taken into account unless there are exceptional circumstances justified with cogent reasons.
Exceptions to the Application of the new RPBA
There are certain circumstances to which the new RPBA do not apply:
– Article 12, paragraphs 4 to 6, in particular, will not apply to any statement of grounds of appeal filed before 1 January 2020; or
– if a summon to oral proceedings or a communication under Rule 100(2) EPC (invitation by the EPO to file observations during examination of the appeal) is issued before 1 January 2020.
It is more important than ever to ensure anything you may wish to rely on is included in the proceedings as early as possible. This applies to cases already in the appeal process and is also likely to be pertinent to cases that are appealable, such as cases in examination or opposition proceedings.
For cases already in appeal, it makes sense to submit any material you may wish to rely on, and certainly any grounds of appeal or replies, before 1 January 2020.
Care should also be taken to ensure all relevant facts, lines of attack, arguments and evidence, as well as any material that may be helpful, are on file for cases in opposition or examination proceedings. You want to reply on these materials if an appeal is necessary in the future.
The new RPBA will likely encourage the front loading of appeal proceedings as well as comprehensive preparation of the file for first instance proceedings to pre-empt any possible appeal in the future.
If you would like advice on this or on any other aspect of intellectual property, please do not hesitate to contact Albright IP on 01242 691 801.