EPO Boards of Appeal – new rules of procedure

It has now been 9 months since the new rules of procedure entered force and their consequences are starting to be felt. There is a long way to go before the full effects have percolated through all cases, but we now have a good indication of how the new rules will be applied and how we may need to adopt our practice to accommodate them. This article focuses mainly on appeals from the opposition division as that is where the author’s experience mainly lies, and where the effects are felt most keenly. This is not intended as a review of the case law, and as far as possible I have avoided that, but tries instead to focus on the practical effect on parties’ prospects and behaviour.

As set out in more detail here, the new rules were intended to make the appeal process more efficient, principally by reducing the possibility for parties to change or redirect their case. The appeal process was to be brought back towards a judicial review of the decision under appeal, rather than a re-run of the first-instance proceedings which some felt it was moving towards. This was implemented by applying three stages of restrictions to the scope of an appellant’s case. The appeal should be directed to only those matters considered by the first-instance body, after filing the grounds of appeal amendments to the case were to be more difficult, and then after a summons to oral proceedings amendments to the case were only permitted in exceptional circumstances. The overall effect of these restrictions is to force a narrowing of the case over time and avoid divergence or change of direction.

In the sections below I have tried to cover some of the key areas I feel have been affected by the changes, and how best to conduct proceedings under the new rules. The final section deals with changes being adopted due to the pandemic. One over-arching theme is that opposition & appeal practice is becoming (even) more specialised and success is more than ever dependent on a well-defined strategy implemented from the very start of an opposition. Of course, every qualified European Patent Attorney will do a great job for their client, but the intricacies of the new rules of procedure mean a specialist can make more difference than previously to the ultimate outcome.

Transitional Provisions

The new rules of procedure contained transitional provisions which restricted the application of some rules to appeals where the grounds of appeal, or reply, were filed after 1 January 2020. However, not all elements were subject to the transitional provisions and some notable exceptions have largely neutered any softening of the transition.

Articles 12(4) to (6) of the rules implement the above-noted restrictions on the scope of an appeal and amendments thereto and are only applicable to cases where the grounds of appeal were filed after 1 January 2020. However, Article 13(1) does still apply and this article states “Any amendment to a party’s appeal case after it has filed its grounds of appeal is subject to the party’s justification for its amendment and may be admitted only at the discretion of the board. … whether the party has demonstrated that any such amendment, prima facie, overcomes the issues raised by another party in the appeal proceedings or by the Board and does not give rise to new objections.” These requirements are being construed strictly, to the extent that they seem no different to applying the full new rules.

The particular difficulty presenting patentees (less so opponents) is the requirement for “justification”, coupled with the final requirement that an amendment “does not give rise to new objections”. This has been construed in a rather academic sense with requests being refused due to a failure to mention that no new objections are created, even if no such objections are raised. For example, a minor amendment to address a new added matter concern may be refused because the supporting letter did not mention that it does not create a clarity problem, even though there is no suggestion of an actual clarity problem. Technically, yes, the party has not demonstrated that no new objection arises and there is an academic reason to decline the request, but equally the lack of a clarity objection from the other side, or the Board, gives a very practical reason to admit the request – there is no actual clarity problem.

The requirements for justification of amendments are particularly tough since the relevant submissions may have been made years ago (possibly even before the new rules were contemplated). Although attorneys did have notice of the rules and did their best in advance to supplement arguments as necessary, unavoidably (with a set of cases that could be up to 7 years old) not every letter was supplemented and cases are falling into difficulties. The only possible approach is to argue fully and comprehensively, and as early as possible, in support of all requests. It is still worth a retroactive review to identify cases which may have problems because it is still a case of the sooner the better.

Given the relative weakness of the transitional provisions it is safest to simply assume all appeals are operating under the new rules, and then be pleasantly surprised if you benefit from an older, softer, rule. Operating under the new rules, every request should be fully argued to explain why it addresses objections and why it complies with all other requirements of the EPC (as well as why it meets the requirements of admission at the relevant stage).

Requests

The first stage of convergence is in the Grounds of Appeal, which require them to be restricted to “...the requests, facts, objections, arguments and evidence on which the decision under appeal was based.” This, in principle, is absolutely right – the appeal is a review of the earlier proceedings, not a rehearing. Many national Court systems function extremely well under exactly this principle, and so one would think the same should be true of EPO proceedings. However, I believe there are features of opposition (and to a degree examination) proceedings which set them apart from Court proceedings and lead to a rigid restriction being inappropriate.

The opposition process is a dynamic beast, with arguments and viewpoints ebbing and flowing throughout the proceedings right up to the decision on the day of the oral proceedings (unlike many national Court systems, there is no active case management in EPO oppositions). Many points and grounds of opposition are in the air and being juggled by both parties and the opposition division. Opponents are free to submit as many objections as they wish and there is almost no narrowing of the open issues until the decision is issued at the oral proceedings. For Patentees, to try and submit fallback positions for every possible angle is almost impossible, particularly while being encouraged by the Opposition Divisions to reduce the number of requests. Where an issue appears minor, and the preliminary opinion is in the Patentee’s favour, it has become common not to submit a fallback request. Should the Opposition Division’s view change on the day a new request will be admitted and the case can be saved.

However, if in this situation the Decision remains in the Patentee’s favour, and no fallback request is filed, it becomes very difficult to introduce the request on appeal. The request was not in the opposition proceedings and so it is open to the discretion of the Board whether to admit it. The objection has been in the case from the start and so arguably the request “could and should” have been submitted during the opposition. If the request is not admitted, and the opposition decision is reversed, the Patentee has no request to save them. “Could and should” is being interpreted broadly by the Boards of Appeal, and any hint of an objection is taken as reason for the party to have filed the request sooner. This is particularly tough given the brevity of most minutes of oral proceedings – hours of discussion can be condensed to a couple of pages, making it impossible to ascertain what was really discussed and what objections were live and “could” have been addressed.

The catch in this case is a change of principle – during opposition a change of view of the division is a reason to admit a new request, but on appeal this is not the case and a new request is no longer possible. A change of view is considered something that should have been foreseen, Perversely, this can result in a Patentee who easily wins a case at first instance actually being in a weaker position on appeal for lack of adequate fallback requests on file.

The practice point is that it is now necessary to submit all possible requests as early as possible; certainly prior to the opposition oral proceedings and preferably with a reply to an opposition. Once into appeal you are locked into the requests you have, even if nothing in the case has previously hinted a different request may be needed. How to balance this need for lots of requests against the opposition divisions’ push to fewer requests is a significant challenge.

Precisely the same considerations apply as Opponent, but it is less common for new objections or prior art to arise late in the day and so the issues are fewer.

Grounds of Appeal

Article 12(3) starts by stating “The statement of grounds of appeal and the reply shall contain a party's complete appeal case.” This seemingly innocuous sentence has the potential for a real sting to the party trying to be efficient with volumes of documents – arguments included by reference to another document may not be part of the grounds of appeal and hence may be ignored by the Board. It is often tempting to save some trees by stating “The arguments in support of this request are found in Document XYZ from the opposition proceedings.”, but here that could lead to loss of arguments or requests. Coupled with the difficulty of amending arguments and requests during the appeal, this can leave a party trapped.

It is therefore critical that everything is captured directly within the Grounds of Appeal.

Remittal

Now some good news. The new rules state that a case shall only be remitted to the first-instance department if “special reasons” present themselves. Due to the structure of the opposition process it is common that not all grounds are considered – if a patent is revoked under added matter rules, novelty and inventive step are not considered. Previously, if the appeal on added matter was successful, the case would be remitted for the other grounds. There was concern that this situation would not be considered a special case and the Boards of Appeal would also hear the other grounds, depriving the parties of two levels of consideration.

Thankfully, the Boards have retained the existing practice and see this as a special reason for remittal such that all grounds will be considered by two instances. An exception may be where novelty has been considered at first instance, but not inventive step, in which case the Boards have continued to hear inventive step. Again, this is in alignment with previous practice.

The hope that restrictions on remittal would lead to opposition divisions considering more grounds do not appear to be having any effect, and the opposition divisions are continuing with the status quo. In my view this is correct; the idea of trying to deal with other grounds on a claim that has already been found invalid is not sensible and would lead to a wide range of problems and wasted time dealing with hypothetical requests.

Preliminary Opinions

The Boards should be commended on the improvement in quality and thoroughness (mostly) of preliminary opinions. This is a genuine help to all parties in understanding the Board’s views and focussing arguments in useful directions. It is a shame the improved opinions do not come with an improved chance to make requests dealing with points that have changed, but that would be very much against the thrust of the new rules.

Video Conferencing

The Boards of Appeal have been adaptable in the current climate and have held appeals by video conference where this is accepted by all parties and where it is agreed it is viable for the content concerned. I believe this is the correct approach. It should provide a way of improving the throughput of oral proceedings, while maintaining the option of an in-person hearing. There are a number of reasons why in-person or video conference hearings are more appropriate for each case and the choice should be available, but with in-person being the default to avoid any possible reduction of a party’s right to be heard.

The opportunity to conduct oral proceedings by video conference may greatly affect the timing of oral proceedings due to the improved ability of representatives to attend. It is wrong in the current climate to force representatives to travel and so there could be a long delay before in-person proceedings are possible, when proceedings by video conference could be conducted much sooner. Agreeing to a video conference may therefore allow cases to proceed much more quickly, particularly based on anecdotal evidence that some Boards are largely booked up for 2021 and so losing a scheduled date could lead to a delay of more than 12 months.

Summary

Overall the appeal process has continued as expected and there haven’t been any major changes to the general proceedings. However, the devil is very much in the detail and the new rules provide ample opportunities for the unwary to be caught out, the consequences for which can be severe. Issues can stem from the very outset of proceedings and so it is essential to think ahead and foreshadow problems that could arise in a few years when you arrive at the Board of Appeal.