New Rules of Procedure of the Boards of Appeal

The revised Rules of Procedure of the Boards of Appeal (RPBA) were adopted by the Boards of Appeal Committee on 4 April 2019, were unanimously approved by the Administrative Council on 26 and 27 June 2019 and have been published in OJ 2019, A63.

The aims of the revision of the RPBA are to increase efficiency, by reducing the number of issues to be dealt with, predictability for the parties and harmonisation. Document CA/3/19 explains in detail all the amendments and indicates that these can be divided into two broad categories.

First, amendments have been introduced in relation to the management of the overall case load of the Boards and the management of the individual cases.

Second, amendments have been introduced to clarify that the primary object of appeal proceedings is to review the decision under appeal in a judicial manner and consequently to limit the possibilities of the parties to amend their cases as the appeal proceedings progress.

The main impact on practice will result from this undoubtedly stricter treatment of amendments of a party’s case. Everything beyond a strict review of the decision under appeal is considered an amendment. This includes new requests and new documents as well as new arguments. The Boards of Appeal have a discretionary power to not admit amendments, even at early stages of the procedure. Any party making an amendment to its case must clearly specify its amendments and provide a justification for the amendment.

The severity of the requirements for the justification increase as the procedure progresses. For amendments filed with the grounds of appeal or the first reply, it is enough to provide reasons why the amendment overcomes the objections raised (new Article 12 (4), 2nd par RPBA). Stricter rules apply for requests, facts, objections or evidence which were not admitted, or which should have been submitted or were no longer maintained in the 1st instance proceedings (new Article 12 (6) RPBA). These shall not be admitted unless the “circumstances of the appeal case justify their admittance”, even where filed with the grounds of appeal. For amendments filed after the filing of the grounds of appeal or the reply, the party must further provide reasons for submitting the amendment at this stage of the proceedings (new Article 13 (1) RPBA). Finally, amendments filed after the deadline for written submissions or after receipt of the summons “shall, in principle, not be taken into account unless there are exceptional circumstances, which have been justified by cogent reasons by the party concerned” (new Article 13 (2) RPBA).

It should also be noted that there is a new rule defining the circumstances in which a case may be remitted to the first instance (new Article 11 RPBA). It appears that less cases will be remitted than previously.

As regards case management, the main points are that there will be:

• publication of a list of cases that are likely to be dealt with in the following year (new Article 1(2) RPBA);
• greater flexibility in designating members for a particular board composition (new Article 1(3) and Article 5(1) RPBA);
• more tasks for the case rapporteur (new Article 5 RPBA);
• hearings of connected cases one after the other and consolidation of appeal proceedings (new Article 10(2) RPBA);
• the possibility to request acceleration of appeal proceedings (new Article 10(3) to (6) RPBA);
• the possibility for the Boards to extend the period for filing a reply to the statement of grounds of appeal up to a maximum of six months (new Article 12(7) RPBA);
• a mandatory communication, but not necessarily a preliminary opinion, and a new timescale for the Boards when preparing for oral proceedings (new Article 15(1) RPBA);
• detailed provisions on the possibility for parties to request a change of the date of oral proceedings (new Article 15(2) RPBA);
• possibility for the Boards, in specific circumstances, to draft the reasons for a decision in abridged form (new Article 15(7) and (8) RPBA); and
• a new timescale for the Boards to issue the written decision to the parties (new Article 15(9) RPBA).

The new RPBA will apply to cases pending on or filed after 1 January, 2020. However, the stricter rules in Art. 12(4) and (6) and Art. 13 RPBA will not be applicable to amendments filed prior to this date.

epi members will be well advised to review their pending cases and submit amendments, if any, before the end of this year. Though the new RPBA are, by and large, a codification of the stricter side of the case-law of the EPO Boards of Appeal, it must be expected that the risk that new matter will be excluded will sharply increase.

epi has actively contributed to the revision of the RPBA through an EPPC Woking Group which was set up specifically for this purpose. The EPPC Working Group sent a letter to Mr Josefsson on 7 September 2017, prior to the user consultation launched in 2018 by the Boards of Appeal Committee (BOAC) and the President of the Boards of Appeal. It later sent a second letter dated 22 April 2018 as a response to the user consultation. Besides, Mrs Heike Vogelsang-Wenke (epi Vice President) and Mr Chris Mercer (EPPC Chair) took part in the panel discussions organized at the user consultation conference held on 5 December 2018.

This newsflash is based on an article prepared by Mr Michael Thesen (DE) which has been recently published in epi Information 3/2019.