The EPO has recently revised the Rules of Procedure of the Boards of Appeal (RPBA). The revised RPBA will come into force on 1 January 2020. The revisions are fairly extensive, and are primarily concerned with harmonising the practices of the various different Boards of Appeal. The EPO is also hoping that the changes will increase the overall efficiency of the appeal procedure. Many of the changes may require users of the European patent system to modify their day-to-day practice, both during first instance proceedings and in subsequent appeals.
Together with the European Patent Convention itself, the RPBA govern the appeals procedure at the EPO. The EPO states that the main aims of the current revisions are to "increase (i) efficiency, by reducing the number of issues to be treated, (ii) predictability for the parties and (iii) harmonisation".
The EPO has sought to increase efficiency, predictability and harmonisation by codifying in the RPBA various aspects of Board of Appeal practice that had arisen through case law. These aspects primarily relate to the basis of the appeal proceedings, and the ability of a party to amend its case during the appeal itself. In addition, the amended RPBA contains a number of new provisions that increase the flexibility of each Board of Appeal to actively manage both the progress of individual appeals and their overall workload.
Stricter Approach to Amending an Appeal Case - Articles 12 and 13 RPBA
Article 12 defines what forms the basis of party's case at the outset of the appeal proceedings. Article 13 RPBA defines the extent to which the party's case may be amended during the appeal proceedings. These provisions have been revised significantly in the new RPBA.
New Article 12(2) states that a party's appeal case shall be directed to:
"the requests, facts, objections, arguments and evidence on which the decision under appeal was based"
Article 12(4) as amended then specifies that:
"Any part of a party's appeal case which does not meet the requirements in paragraph 2 is to be regarded as an amendment, unless the party demonstrates that this part was admissibly raised and maintained in the proceedings leading to the decision under appeal. Any such amendment may be admitted only at the discretion of the Board. The party shall clearly identify each amendment and provide reasons for submitting it in the appeal proceedings. In the case of an amendment to a patent application or patent, the party shall also indicate the basis for the amendment in the application as filed and provide reasons why the amendment overcomes the objections raised. The Board shall exercise its discretion in view of, inter alia, the complexity of the amendment, the suitability of the amendment to address the issues which led to the decision under appeal, and the need for procedural economy."
According to new Article 12(6), any requests, facts, objections, arguments or evidence that were filed, but not admitted, during the first instance proceedings shall not be admitted during the appeal proceedings unless "the decision not to admit them suffered from an error in the use of discretion" or "the circumstances of the appeal case justify their admittance".
New Article 12(6) also specifies that any requests, facts, objections, arguments or evidence that should have been filed, or that were filed but not then maintained, during the first instance proceedings shall not be admitted during the appeal proceedings "unless the circumstances of the appeal case justify their admission".
Article 13(1) as amended specifies that any amendment to a party's case after the filing of the grounds of...