The rules governing the appeals process at the European Patent Office are being changed, with the aim being to speed up the appeals process and the expected effect being to reduce flexibility for appellants.
Here we discuss the expected knock-on effects on first instance proceedings, particularly oppositions, as well as on existing and new appeals.
A party adversely affected by a decision of the European Patent Office (EPO), such as during examination or at the conclusion of the opposition procedure, has a right to file an appeal. Such appeals are heard by the Boards of Appeal of the EPO, a body which acts independently of the rest of the EPO and follows its own rules of procedure. Although the Enlarged Board of Appeal may be asked to consider specific questions relating to the implementation of the law, a decision of a Board of Appeal in relation to a particular patent or application is (in the absence of a procedural violation) final, with no further route to appeal and the potential to trump decisions of national courts.
In the more than 40 years since the EPO and the Boards of Appeal were established, the appeal process has developed a reputation for delivering well-reasoned and consistent jurisprudence. However, in recent years, users of the system have seen ever-increasing delays in the appeals process, with appeals in some technical areas often taking several years to reach a conclusion. Moreover, although efforts have been made to streamline the handling of matters before the EPO (for example, opposition proceedings are now typically concluded in little over a year) this has had the effect of further increasing the pressures on the appeals process.
On 1 January 2020, the new Rules of Procedure of the Boards of Appeal will come into force. Although the changes to the previous rules deal with many aspects of the appeal process, the most significant changes are aimed at reducing the time taken for an appeal to be heard.
The changes designed to expedite the appeal process are primarily focused on reducing the complexity of an appeal by further reducing appellants’ flexibility to amend the case submitted at first instance (e.g. before the Examining or Opposition Division). “Amendment” encompasses introducing new documents (e.g. new prior art); arguments that are substantially different to those previously submitted; and, for a proprietor, new claim requests.
An appellant’s flexibility to amend their case will become progressively more restricted as an appeal proceeds through three key stages:
- the filing of the grounds of appeal, or a response to an appeal;
- the period between the filing of the grounds and response, and the issuance of a summons to an oral hearing (or within a period for response to a communication from the board, if expiring later); and
- the period after a summons has been issued.
At all stages, with the decision at first instance as their reference point, the board will determine whether any amendment to the case is justified, taking account of factors such as the complexity of the arguments, the suitability of the amendment for addressing the issues that led to the appeal and the need for procedural economy. For amendments submitted after stage (i) of the appeal process, the board will also consider whether the amendment could (and, therefore, should) have been submitted earlier. The default position will be that amendments to a case are not admitted into the appeal proceedings unless the board exercises its discretion to do so.
Although the current practice of the Boards of Appeal places considerable restrictions on the ability of an appellant to introduce new documents or claim requests at later stages in the appeal process, it is believed that the amended rules will lead to a still more restrictive approach that will be more consistently applied by individual boards.
As the starting point for the assessment of amendments to a case is the decision issued at first instance, it will become more important than ever to ensure that the strongest possible case is submitted during the first instance proceedings. This may result in increased complexity in first instance submissions (e.g. in filing or responding to an opposition), such as in the filing by proprietors of an increased number of claim requests. However, greater investment in the preparation of a case at that stage should reduce the need to amend the case during appeal.
Of course, there will always be the possibility that new factors will come to light for the first time during the appeal process, in which case the risk of non-admittance of the resulting amendment to case can be minimised by submitting the amendment as soon as possible, with a detailed explanation of its importance to the case and the reasons for not submitting it sooner.
Under the transitional provisions accompanying these changes, the new rules relating to amendment of a case in the earlier stages of the appeals process will only apply to appeals filed on or after 1 January 2020, and those relating to amendments in the final stage will apply only to appeals for which a summons is issued after that date. Therefore, where possible, parties adversely affected by a first instance decision may wish to consider filing their appeal earlier than is strictly necessary in order to have the current, slightly less restrictive rules apply. In respect of appeals currently pending, it may advisable to consider conducting a review of the arguments presented prior to the issuance of a summons to oral proceedings.
As always, your usual Potter Clarkson representative would be happy to advise on matters relating to all aspects of EPO procedure, including the appeal process.