Rules of Procedure of the Boards of Appeal under revision

Among other things, the Rules of Procedure of the EPO Board of Appeal have so far been used to refuse submissions by parties as late rather than credible. A new draft is now available – the Rules of Procedure are to be revised.

Revision of the Rules affects many areas

The proposed revision of the Rules of Procedure aims to improve the efficiency and predictability of appeal proceedings before the Boards of Appeal of the European Patent Office (EPO). The proposed amendments to the Rules of Procedure concern in particular:

the consolidation of procedures (Article 10)
Evidence based on the procedure (Art. 12)
Changes in the appeal procedure concerning the amendment of a party’s case (Art. 13)
the oral hearing (Art. 15); a (renewable) three-month period for the written decision after the oral hearing is provided for. Abridged justification is possible in individual cases. At the same time, a third person who is not a member of the Chamber should be appointed to keep the minutes. In this way, the protocol can quickly become much more comprehensive than it is now.

New evidence before Boards of Appeal

If new evidence could have been and should have been submitted in the first instance proceedings, the current draft provides that any new evidence must be refused admission. Exceptions to this would be in the case of an unexpected decision of the first instance or new evidence or arguments of the other party. One can imagine that this would also be used specifically in the process. However, new evidence should not allow an opponent to lodge a new appeal during the appeal phase.

The Rules of Procedure for new evidence are therefore less problematic if a potential exception or delimitation is disclosed in the application (disclosed disclaimer). However, the situation becomes difficult as soon as there is no explicit or implicit disclosure (undisclosed disclaimer). Find here more about the previous jurisdiction on the subject of disclaimers: Info Blog: Undisclosed disclaimer – permissible extension in German patent law?

Procedure more efficent after revision?

Is the envisaged revision appropriate to improve the appeal procedures before the Boards of Appeal of the EPO?

It’s not safe. In particular, there is a risk that the disputes in the appeal procedure could be shifted to procedural issues – without efficiency gains. The proposed amendments would limit the parties’ ability to make further requests in the course of the appeal procedure and even at the beginning of the appeal procedure. However, this could lead to both the first instance and the subsequent appeal proceedings being overloaded with precautionary submissions.

The revision of the Rules of Procedure also takes into account the concerns of procedural participants to reduce backlogs. The present draft seems to answer this request with less time per case and more summary decisions. However, a careful examination of the case with a sufficient number of staff in the Board of Appeal was probably more desirable.

Nothing has been decided yet, a user survey was conducted by the EPO until May 2018, the results of which will certainly lead to further changes in the first draft for revision.