On 15 September 2020, FICPI President Julian Crump along with a number of other FICPI representatives met with Carl Josefsson, President of the Boards of Appeal, and two senior board members virtually.

This was FICPI’s third virtual meeting with an IP5 office, following on from the meeting with the USPTO in May and the EPO on 14 September 2020. The Boards of Appeal delegation included:
• Carl Josefsson, President of the Boards of Appeal
• Ingo Beckedorf, Chair, Technical Board of Appeal 3.2.07
• Wiek Crasborn, Director, Legal Research and Administration of the Boards of Appeal

FICPI’s delegation included:
• Roberto Pistolesi, Secretary General
• Coleen Morrison, President of the Study and Work Committee
• Robert Watson, CET Vice President
• Kim Finnilä, CET Assistant Reporter General
• Antonio Pizzoli, Chair of CET Group 4 (European Patents)
• Sharon Crane, Chair of CET Group 5 (Biotechnology and Pharmaceuticals)
• Brett Slaney, Chair of CET Group 6 (Software, High-Tech, and Computer Related Issues)
• Swarup Kumar, Chair of CET Group 7 (IP Enforcement and Alternate Dispute Resolution)
• Lena Shen, Chair of CET Group 8 (Asian Issues)

FICPI submitted a detailed set of questions and comments in advance of the meeting. These were mostly covered by presentations given by the Boards of Appeal – link can be found here - and a fruitful discussion after the presentations.

President Josefsson opened the meeting with a general overview on the productivity of the Boards and the present and expected influence of the Covid-19 pandemic.

The Boards were on track to reach their ambitious objectives on stock reduction and timeliness in Q1 of 2020. When the pandemic arrived, there was a clear drop in production owing to the inability to hold oral proceedings and related safety measures on site. The target to have fewer than 7000 cases by 2023 will need to be revisited once the full impact of the pandemic becomes clearer. There has also been a dip in incoming cases.

The situation has also affected the recruitment situation. Of the planned 39 posts, 23 will be filled by October 2020. Decisions on the remaining posts will be made when the work-load trends stabilise.

The Boards have held about 50 oral hearings using videoconferencing (ViCo) technology to date (29 scheduled until the end of the year). The Boards are following closely the development of ViCo instruments by the EPO. Inter-partes hearings by ViCo are available for cases involving only two parties, and without interpretation. We also discussed hybrid ViCos (one or more parties on site, others online). These may become possible when the legal and technical issues have been resolved.

Recording and streaming of oral proceedings are under consideration.

The goal of the Boards is to move to digital sending and/or electronic notification of all appeal-related communications. This is a work-in-progress and may be implemented by mid-2021.

The Boards have now operated under the [new] Rules of Procedure of the Boards of Appeal which entered into force at the beginning of the year.

The annual list of cases is available on the Boards’ website, and the list of cases for 2021 will be published in October this year. The criteria for requests (3/2019 vs. 13/2020) for acceleration of cases will be clarified.

The mandatory communication (RPBA, Article 15(1) in advance of proceedings has helped to streamline the work of the Boards. Issuing a preliminary opinion is not mandatory, but these seem to have become standard practice now for most of the Boards.

The Boards have to justify a remittal of a case back to the first instance tribunal. Thus, the effects of this provision will depend on the developing practice in the first instance.

We had a robust discussion over the approach the Boards of Appeal is taking to oral proceedings, and the difficulties this is causing our members.


FICPI’s view and involvement
FICPI’s strong relationships with Offices around the world helps to ensure that the views of FICPI’s independent IP practitioners are represented, and that FICPI is included in discussions with key officials. Through its committee network, FICPI builds knowledge and ensures its members gain a wider perspective and can help influence key developments.

Next steps
• If you’d like to get more involved with FICPI’s committees, visit: https://ficpi.org/organisation/ficpi-commissions
• Keep an eye out for the new dates in FICPI’s webinar series ‘Connect, Share and Grow’ on our Events page: https://ficpi.org/events-and-training/events/
Register for FICPI’s Virtual Open Forum, running from 4-5 November, including technical sessions, networking and social events

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