On 14 September 2021 a FICPI delegation including FICPI officers from all over the world and headed by the FICPI President, Julian Crump, met virtually with a high-profile delegation of the Boards of Appeal at the EPO under the lead of the President of the Boards of Appeal, Mr. Carl Josefsson.

The meeting was held as videoconference owing to the Covid-19 pandemic.

The agenda covered recent developments at the Boards of Appeal (BoA), including an update on Covid-19 measures, Oral Proceedings by videoconference (ViCo), double patenting and also experiences under the amended Rules of Procedure before the Board of Appeal at the EPO (RPBA).

Carl Josefsson gave a lively overview of recent developments and reported inter alia on the very promising news that the Boards’ backlog of cases to be settled is now being reduced again. Almost 20 new members are now active in the BoA, which has been an important factor for achieving the goal of reducing the number of cases waiting to be settled and the pendency of appeals. Here, promising figures showed that the present direction of the BoA is the right one and the BoA is on track to meet their goals in 2023.  We also heard about successful lectures on various topics delivered by Members of the Boards of Appeal to the EPO as a whole.

 

Oral Proceedings via video conference

An open discussion of experiences with Oral Proceedings by video conference followed. It was felt that the ViCos were and are still necessary to get cases settled. Generally, it was agreed that without ViCos – and despite some practical problems – they have generally been shown to be an effective tool to have high quality discussions about subject-matter under appeal, and the BoAs generally are able to discuss with the parties the facts and arguments needed for a decision.

Double patenting

During the discussion of double patenting, reference was made to Art. 125 EPC. Michael Caine, Vice President of CET, presented FICPI’s position and referred to a 2014 Resolution on this topic. In particular, he highlighted that patents with identical scope “were not good”, but patents with merely overlapping scope should be allowed. The BoA listened with great interest, observing that the recent decision by the EBoA in G4/19 includes the same principle; that double patenting occurs when “the same subject-matter” is claimed.

Rules of Procedure of the BoA

With regard to the recently amended Rules of Procedure of the Boards of Appeal, it was reported by Mr Josefsson that it was still too early to draw firm conclusions. However, it was already apparent that some representatives and applicants, who try to continue with “business as usual”, presenting new auxiliary requests for the first time before the BoA after failing to persuade the Examining Division at first instance, were in for a “hard landing” and participants in Appeal Proceedings were reminded to keep in mind the new RPBA and to align their appeal strategies accordingly.


The almost 2-hour meeting wrapped up with the hope of an in-person visit next year.

FICPI’s view and involvement

FICPI’s active programme of engagement with IP Offices around the world helps to ensure a platform for open and frequent discussions and the opportunity to put forward FICPI’s views on topics, representing independent intellectual property attorneys around the world and reinforcing the importance of the work of independent IP attorneys.

Next steps
If you would like to get involved with FICPI’s committees, including CET, PEC and TEC, please visit the links below to find out more:

 

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