Revised Rules of Procedure of the Boards of Appeal
The revised Rules of Procedure of the Boards of Appeal (RPBA) of the European Patent Office (EPO) came into force at the beginning of 2020. As a result, parties to the EPO appeal proceedings will have to deal with far-reaching changes, and in principle this also applies to pending appeal proceedings. The EPO states that the revision is intended to increase the efficiency of the appeal procedure by reducing the number of issues to be treated. It also aims to improve predictability for the parties involved and to promote harmonization. The amendments to the RPBA are intended to make it clear that the primary objective of the appeal procedure is merely to review the decision under appeal in court. It is expressly intended that the possibilities for parties to amend their case become increasingly limited.
The EPO's desire to streamline the appeal procedure is understandable. The number of pending and incoming appeals has been rising steadily over the past year. An increasing length of proceedings is also becoming apparent. Nevertheless, the changes involve the risk for the parties involved that they will have to reduce themselves to the submission of the appeal, so that even minor changes or the reference to submissions at first instance will no longer be taken into account.
The streamlining of the appeal procedure is particularly evident in the amended Article 12 of the RPBA. Whereas previously it was possible to take into account the entire first-instance submissions of the parties, the appeal proceedings are now based on the decision under appeal and the minutes of oral proceedings from the previous proceedings. Special importance is thus attached to the parties' submissions on appeal, which must contain a complete list of all the requests, facts, objections, arguments and evidence. In addition, requests, facts, objections or evidence which are no longer upheld shall no longer be admitted unless this appears to be justified by special circumstances. Foresight and experience are therefore more important than in before in order to introduce the relevant submissions into the proceedings in a timely manner and within a sufficient scope.
With regard to the primary objective of the appeal proceedings to review the contested decision in court, the parties' submissions must be directed to the requests, facts, objections, arguments and evidence on which the contested decision is based. The party concerned shall clearly identify any amendment and shall state the reasons why it is made in the appeal proceedings. It is for the party concerned to show that this part was presented and maintained in an admissible manner in the proceedings which led to the contested decision. It is therefore necessary to demonstrate the timeliness and sufficient substantiation of the arguments submitted at first instance. In order to avoid possible problems arising from the possibility of proving the timeliness and substantiation at the oral proceedings, it may be advisable to submit relevant submissions early in the written procedure. It is therefore apparent that the revision of the RPBA will not only have an impact on the appeal procedure but will also have an influence on fundamental strategic considerations in the opposition or grant procedure.