The new Rules of Procedure of the Boards Of Appeal

Revisions to the Rules of Procedure of the Boards of Appeal (the Rules) entered force in 2020 with the aim of streamlining the appeal process. It was clear at the time that the new rules could curtail parties’ freedom to redirect their case, but the full extent of the risks is only now becoming apparent as decisions are taken under the new rules. Although there are transitional provisions which ease some requirements for on-going appeals they are not particularly strong and existing appeals are caught by many aspects of the new rules.

Although the Rules apply to both examination and opposition appeals, it is in opposition that they have the biggest consequences. A key feature is that they push the parties to set out their case at an early stage and that amendments to that case become more and more difficult as the appeal proceedings progress. The restrictions apply to many aspects of the appeal process, including new objections, new prior art, and new amendment requests. It is this latter aspect which has caused parties the most problems, and which presents the biggest risk as it can prevent a patentee making an amendment which would save a patent.

To explore how the rules operate we will use an example in which a patent was opposed with a single objection to which the patentee responded with argument, but no auxiliary requests. The opposition division then rejected the opposition and maintained the patent as granted.

If the opponent appeals the decision and the board of appeal agrees with the original objection, the patentee may be prevented by procedural rules from filing an auxiliary request which would fix the substantive problem. The difficulties in filing such a request become greater as proceedings move from the start of the appeal to the oral proceedings.

In this situation, the first opportunity for the patentee to make submissions in the appeal is their reply to the opponent’s grounds of appeal. This stage is governed by Article 12 of the Rules which defines the basis of the appeal proceedings. Section 2 of that Article requires:-

(2) In view of the primary object of the appeal proceedings to review the decision under appeal in a judicial manner, a partyꞌs appeal case shall be directed to the requests, facts, objections, arguments and evidence on which the decision under appeal was based.

Since the only request on file during the opposition proceedings was the claims as granted any auxiliary request filed by the patentee with their reply to the appeal does not fall within this article and hence is not within the basis for the appeal case.

A related aspect to this is that Article 12(3) of the Rules requires that the grounds of appeal or reply to the appeal must contain a party’s complete case. This rule has been used to exclude requests which were part of the opposition proceedings but in relation to which the party did not submit full arguments on appeal. It has therefore proven possible for a party to lose requests which were validly part of opposition proceedings because arguments were not set out within the appeal.

Turning back to the situation where a request was not filed in opposition, the ability to make that request in appeal is initially limited by Article 12(4) of the Rules which states such a request would be an amendment to the case which is only admitted at the discretion of the party. The article goes on to require:-

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.

This rule has been applied by the boards of appeal in a very binary manner – if reasons are not provided, requests are refused. Parties must therefore be very careful to provide the required reasons (both procedural and substantive) when filing the request; it is not sufficient to make such arguments only later in proceedings.

This is, realistically, the last point at which a patentee has reasonable prospects of a new request being admitted. After this stage the restrictions become tighter and where a request is dealing with an existing objection the prospects are negligible. The boards have been particularly clear that a change of view announced for the first time in the preliminary opinion is not a sufficient justification – the party should not wait for an indication whether an objection is valid before making a request. This practice is in direct contrast to the opposition procedure where a change of view between the preliminary opinion and oral proceedings is justification for admission of a late request.

The same considerations apply to new requests filed after the reply to the appeal, the admission of which is governed by Article 13(1) of the rules (in addition to the requirements discussed above). At this stage the party must also explain why the request is submitted at this stage of the proceedings (ie why it was not submitted with the reply to the appeal), and why the request, prima facie, overcomes the issues raised in the appeal proceedings and does not give rise to new issues. The board also considers whether admission of the request is detrimental to procedural economy. These requirements are set at a high level and there must be good reasons given, particularly in relation to why the request was not submitted earlier.

A key reason for admitting requests at this stage is that there has been an (admissible) change of case which justifies the new request – for example a new objection or line of reasoning has been raised. If a new explanation can be found in the preliminary opinion (issued before a summons) that had not been given before, that may give the required hook.

The hurdle becomes greater once the summons to oral proceedings has been issued, or the period for comment under Rule 100(2) EPC has passed. At this stage new requests will, in principle, not be taken into account unless there are “exceptional circumstances” which have been justified with cogent reasons. Realistically the only reason for admission at this stage is a change in the case that is admitted and which could not be foreseen – for example a new line of argument or reasoning that appears for the first time at the oral proceedings.

The overriding message is that admission of new requests during the appeal process is difficult, and should not be relied upon. Delaying the submission of requests until they are needed due to a negative opinion or decision is no longer viable, and requests dealing with all objections should be made as soon as the objection is clear. There is a strong preference to make all such requests during the opposition proceedings so that they are automatically part of the appeal proceedings. However, it is essential that full reasoning for the requests is given with the grounds of appeal, or reply to the appeal, otherwise they could still be deemed inadmissible. A simple reference to the opposition proceedings, or a bland statement of novelty, may not be sufficient.

Following ideal practice carefully will lead to a proliferation of requests during opposition proceedings “just in case” they are needed, but this really is the only sure way of mitigating the risk requests being inadmissible during appeal.