On 1 January 2020, a revised version of the Rules of Procedure of the Boards of Appeal (RPBA) will enter into force. The new rules include several significant changes and introduce stricter standards for amendments to an appeal case relative to the first instance case. Since they will be retroactively applied to pending appeal cases, it may, in some cases, be prudent to supplement an appeal case by 31 December 2019 with a further submission.
Below we introduce the most important changes.
Remittal will become less common
Under the present rules, the Boards have a broad discretion to remit appeal cases to the first instance and frequently do so where the first instance decision does not address all of the issues the Board considers necessary to reach a final decision. For example, where a patent is revoked in the first instance for lack of novelty without considering inventive step and the Board subsequently overturns the decision on novelty, the case will often be remitted for the consideration of inventive step. New Article 11 RPBA aims to limit remittal by specifying that the Board shall not remit unless special circumstances present themselves. As a result, from 1 January 2020, it will likely become more common for the Boards to reach a final decision without remitting the case.
It will become more difficult to amend the appeal case
The main changes to the RPBA relate to the allowability of amendments to the requests, facts, objections, arguments and evidence making up the appeal case relative to the case on file before the first instance. At present, as the appeal proceeds through three stages towards the decision of the Board, it becomes increasingly difficult to amend the case. This three-stage structure is maintained under the new RPBA, but it will be more difficult to amend the appeal case at each stage, and there are new formal requirements for making such amendments.
The first stage relates to the Grounds of Appeal (GoA) and the response thereto. Under the present rules, everything presented in the GoA and response thereto is admitted to the appeal proceedings, albeit with some notable exceptions. This allows parties a limited degree of flexibility in bringing new requests, facts, objections, arguments and evidence on appeal. New Article 12(4) RPBA makes it more difficult to introduce such changes on appeal, as it broadens the discretion of the Boards to not admit anything not directed to the requests, facts, objections, arguments and evidence on which the first instance decision was based. This new rule requires that the parties identify any such amendments to their cases, and that reasons be provided for submitting the amendment on appeal. Where the application or patent is amended, new Article 12(4) RPBA requires the proprietor to indicate the basis for the amendment in the application as filed and explain why it overcomes the objections raised.
The second stage is the period of time after the GoA, or response thereto, has been filed and before the third stage discussed below. At present, the Board has discretion not to admit any amendment to the appeal case at this stage. In new Article 13(1) RPBA this discretion has been made subject to the justification given for the amendment. In addition, the burden has been placed on the proprietor or applicant to demonstrate not only that any amendment of the claims or description prima facie overcomes the objections on file, but also that it does not give rise to new objections. This raises the bar for making amendments on appeal and further increases the importance of formal aspects such as the admissibility of the amendment.
The third stage begins with the notification of a summons or a deadline set by a communication from the Board. At present, amendments of the case in this final stage are difficult, and are only permitted where they do not raise issues which cannot be dealt with without adjournment of the oral proceedings. New Article 13(2) RPBA has been made more stringent by requiring that such amendments shall not be taken into account unless there are exceptional circumstances. It will therefore be extremely difficult to make amendments at this late stage under the new rules.
The Board must issue a substantive communication prior to oral Proceedings
The rules governing the communication from the Board prior to oral proceedings have also been changed. New Article 15(1) RPBA requires the Board to issue a communication drawing attention to matters of particular significance for the decision. At present, it is not necessary for the Board to issue such a communication, and this amendment is intended to streamline the oral proceedings. It should however be noted that this communication under new Article 15(1) RPBA does not necessarily give the parties an opportunity to respond by amending their cases, because the strict rules in the third stage discussed above apply.
Further notable amendments
Other changes include new Article 1(2) RPBA, which requires the Boards to publish a list each year of the cases in which a summons, Rule 100(2) EPC communication, or decision is likely to be issued in the following year. Articles 15(7) and (8) RPBA provide for abridged decisions, which can be issued where the parties explicitly agree, or where the Board agrees with the first instance decision.
Entry into force
Once the new RPBA enter into force on 1 January 2020, most of the changes discussed above will apply to all cases, including those which are currently pending. The only transitional provisions apply to the first and third stages of the appeal proceedings outlined above. Under these transitional provisions, new Article 12(4) RPBA in the first stage described above will not apply to any GoA or response thereto where the GoA was filed before 1 January 2020. Likewise, new Article 13(2) RPBA in the third stage discussed above will not apply if the summons or Rule 100(2) EPC communication was notified before 1 January 2020.