12th August, 2019
The revised rules will apply also to pending appeals (with some exceptions under Article 25, see below) and include a new “convergent approach”, which is aimed to progressively limit the possibility of submitting new arguments or evidence during appeal proceedings, according to the following scheme, based on three levels:
First level – Article 12(2-4): “the primary object of the appeal proceedings” is “to review the decision under appeal in a judicial manner”, so that already at the outset of the appeal proceedings the Boards shall exercise their discretion in admitting “amendments”, i.e. requests, facts, objections, arguments and evidence which were not presented during the proceedings of first instance;
Second level – Article 13(1): “any amendment to a party’s appeal case after it has filed its grounds of appeal or reply” not only may be admitted at the discretion of the Board, as in the first level, but shall also be “subject to the party’s justification for its amendment”;
Third level – Article 13(2): “any amendment to a party’s appeal case made after the expiry of a period specified by the Board in a communication under Rule 100, paragraph 2, of the European Patent Convention (EPC) [i.e. an invitation to file observations] or, where such a communication is not issued, after notification of a summons to oral proceedings shall not, in principle, be taken into account unless there are exceptional circumstances, which have been justified with cogent reasons by the party concerned.”
The revised rules also include the following important changes:
Article 1(2): the President of the Boards of Appeal shall, before the beginning of each working year, publish a list of the cases in which each Board “is likely to hold oral proceedings, issue a communication under Rule 100, paragraph 2, EPC, or issue a decision in written proceedings in that year”;
Article 5(3): each rapporteur “shall, subject to the direction of the Chair of the Board, assess whether the appeal should be given priority over, or should be treated together with, other appeals assigned to the rapporteur”;
Article 10(3-5): the Boards may accelerate an appeal either of their own motion or if a party provides reasons and “documentary evidence” justifying the acceleration or if a court, including the UPC, or other competent authority in a Contracting State, requests acceleration;
Article 11: the Boards shall not remit a case to the department of first instance for further prosecution “unless special reasons present themselves for doing so”, which special reasons include “fundamental deficiencies” in the proceedings of first instance;
Article 12(7): the four-month period for replying to the grounds of appeal may exceptionally be extended up to a maximum of six months “at the Board’s discretion upon a written and reasoned request, presented before the expiry of such period”;
Article 15(1): the Boards shall endeavour to issue the summons to oral proceedings no earlier than two months after receipt of the reply(ies) to the grounds of appeal, shall issue a “communication drawing attention to matters that seem to be of particular significance”, in most cases with a “preliminary opinion”, and shall endeavour to issue this communication and to give notice of the summons at least four months in advance of the date of the oral proceedings;
Article 15(2): the Boards may change the date for oral proceedings only for “serious reasons”, which should relate only to the representative, if a party is represented;
Article 15(7): the Boards may issue the reasons for a decision “in abridged form”, provided that the parties have given “explicit consent” and that a third party or a court does not have a legitimate interest in non-abridged reasons;
Article 15(9): the Boards shall endeavour to issue their decisions within three months from the date of the oral proceedings;
Article 25(2): the first level of the “convergent approach” will not apply to the grounds of appeal filed before 1 January 2020 and any reply thereto filed in due time;
Article 25(3): the third level of the “convergent approach” will not apply if the summons to oral proceedings or a communication inviting a party to file observation has been notified before 1 January 2020.
In view of the above, it is clear that “amending” a case will be more difficult already at the beginning of appeal proceedings, i.e. when filing the grounds of appeal or the reply thereto, and almost impossible at a later stage. Therefore, any possible document, request or argument should be filed during the first instance proceedings or before 1 January 2020 if appeal proceedings have just started.
Moreover, care should be taken if a document, request or argument is considered for the first time by a Board when a case has not been remitted to the department of first instance, since appeal proceedings are the last instance for discussing the validity of a European patent if this patent is then revoked by the Board.