On 1st January, new Rules of Procedure of the Boards of Appeal came into force. These rules dictate that way in which all appeals filed with the EPO are carried out, including appeals from decisions of the examining division (e.g. a decision to refuse an application due to a lack of patentability) as well as decisions of the opposition (e.g. a decision to revoke or maintain a granted patent).
The new rules of procedure bring some big changes to the way appeals are handled by the EPO, and will affect not only appeal proceedings themselves, but will also have a significant impact on the way first instance proceedings should and will be handled too.
The new rules of procedure came into force at the start of 2020 but have only minimal transitional provisions. This means that any appeals filed in the last year or so (and possibly even longer, given the backlog at some boards) will ultimately be subject to these new rules of procedure.
Lots of time and words have already been dedicated to discussing what these changes mean for representatives practicing before the EPO, but what exactly are these changes, and how will they affect applicants and opponents?
The most significant changes to the rules of procedure include the publication, at the start of each year, of a list of cases that are likely to be heard. The rules have also been amended to explicitly state that cases will not be remitted to the department of first instance unless there are fundamental deficiencies in the first instance decision. Finally, the rules regarding what can be included in an appeal have been tightened. Specifically, anything not raised at first instance will be admitted to the appeal only at the discretion of the board. This means that the boards will not admit requests, facts, objections or evidence which could or should have been submitted or maintained during the first instance proceedings.
The first of these changes is quite positive for appellants. The conclusion of an appeal – especially opposition appeals – is usually the most expensive stage. The publication of the list of cases at the start of each year should give applicants a reliable indication of whether or not these costs will arise in the coming year, helping applicants to plan their IP budgets accurately.
The second change should also have a positive impact for appellants. It was not uncommon in appeals under the old rules for cases to bounce back and forth between the department of first instance and the boards of appeal when the board decides against the department of first instance on a single point and remits the case to department of first instance, which then issues another decision which can be appealed by one of the parties involved in the case. The reduction in the back and forth, and therefore the number of oral proceedings before a case is resolved, should significantly reduce costs for applicants and opponents. It should also lead to faster resolution of these cases, providing earlier certainty to both applicants and opponents.
The final change may be a double-edged sword. With a tightening of the rules on what can be included in an appeal – new amendments, new prior art etc. – the burden of ensuring an absolutely complete case at first instance is increased. In the examination procedure, particularly when oral proceedings are scheduled, more time and effort will have to be put into considering different amendments that might be needed for every possible outcome, since it is unlikely that further requests would be admitted in appeal proceedings. In opposition proceedings the same considerations apply. Thus, for opponents, even greater emphasis will be placed on filing the complete case before the end of the 9-month opposition period.
In conclusion, the changes to the rules of procedure are likely to lead to faster resolution of appeals. The costs associated with appeals will therefore be concentrated into a shorter time frame, but the overall costs for applicants and opponents may well decrease, which would be a welcome change.