Appeal proceedings before the EPO: Amendments of the Rules of Procedure

On 1 January 2020 a recast of the Rules of Procedure of the Boards of Appeal entered into force. It will also be applied to pending appeal cases in appeal proceedings before the EPO. Changes in the appeal procedure will be more difficult from now on.

Amendments to requests in appeal proceedings

The most important changes of the RPBA 2020 (Rules of Procedure of the Boards of Appeal (RPBA)) concern the admissibility of changes to the applications in the appeal procedure.
The previous three-tier structure of an appeal procedure will be maintained in the new RPBA 2020, but it will become more difficult to change the appeal case at each stage.

In particular, the new Article 12(4) RPBA makes it more difficult to introduce changes in the appeal, as it extends the Boards of Appeal’ discretion not to admit anything that is not based on the claims, arguments and evidence on which the first instance decision is already based. The former Article 12(4) has now been extended to paragraphs 4 to 6.

However, the Boards of Appeal have so far rarely included new documents in the appeal proceedings under Article 12 of the Rules of Procedure. Therefore, the new Article 12 of the Rules of Procedure in a certain sense only reflects more precisely and in a more defined manner what has been the practice so far.

When amending Article 11 of the Boards of Appeal, it is expected that this will shorten the duration of the appeal procedures. It remains to be seen how this will be reflected in practice.

New version of the Rules of Procedure applies with immediate effect

In addition, the new rules of the RPBA 2020 Rules of Procedure apply with immediate effect, i.e. since their entry into force on 1 January 2020, and therefore only those provisions that specifically govern the initial and final phases, i.e. the first and third stages of the appeal procedure, are excluded from immediate application of the RPBA 2020 (Article 12(4) to (6) and 13(2) RPBA 2020). Transitional provisions apply to the initial and final phases, since a change in the rules of procedure may of course affect submissions already submitted.

Transitional rules for submission of the appeal before 1 January 2020

According to these transitional provisions, the new Article 12(4) of the FPBA will not apply in the first stage described above to all cases of complaint or reply thereto if the complaint was lodged before 1 January 2020. Similarly, the new Article 13(2) RPBA will not apply in the third stage if the summons or communication under Rule 100(2) EPC was served before 1 January 2020.

However, the intermediate stage, i.e. the second stage of appeal proceedings, will be dealt with immediately under the new Rule in Article 25(1) RPBA 2020. Previously, it was at the discretion of the Board of Appeal not to allow any change in the appeal case at this stage, but from now on this discretion will depend on the grounds for the change.

Remittal will be less frequent

In the previous version of the Rules of Procedure, which was valid until the end of 2019, the Boards of Appeal had a relatively large margin of discretion in deciding whether to remit appeal cases to the first instance. This often resulted in referrals back to the first instance when unresolved aspects of patentability became relevant. A classic example was the revocation of a patent at first instance due to lack of novelty – but without assessment of inventive step in the first instance proceedings. If the Board of Appeal subsequently annulled the first instance decision on novelty, the case was referred back to the first instance to have the inventive step assessed.

The new Article 11 RPBA aims at limiting the number of referrals. Art. 11 RPBA stipulates that the Board of Appeal shall only refer a case back to the Board of Appeal in special circumstances. A corresponding special reason is given if the proceedings show substantial deficiencies. However, the Board could and may still invoke Article 13 of the RPBA and allow changes in the party’s submissions.

It follows that the Boards of Appeal will from now on take a final decision in appeal proceedings much more frequently than before. Changes in the appeal procedure will from now on become much more difficult and only with good reasoning in the appeal under Article 12(4).

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