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The EPO has proposed a revision of the Rules of Procedure of the Boards of Appeal (RPBA) and has dedicated a webpage for user consultation:

https://forms.epo.org/law-practice/consultation/ongoing/boards-of-appeal-consultation-form_de.html

The RPBA are the rules that the Boards of Appeal are required to follow when reviewing and deciding on appeal cases at the EPO. While the recent practice of the Boards of Appeal is developing in a direction which makes it increasingly more difficult to file new requests, evidence, and in some cases arguments in appeal proceedings at the EPO, the RPBA has remained unchanged since 2007.

In an effort to increase efficiency of appeal proceedings and reduce total pendency time, the EPO has suggested the revised RPBA which includes the codification of several of the changes followed in practice. While we at Hoffmann Eitle are not opposed to amendments to the RPBA, it is essential that the changes do not encroach on a party's right to be heard and must be implemented in a manner which ensures high quality appeal decisions.

We encourage you to review the proposed amendments to the RPBA and, if you feel it is appropriate, to participate in the user consultation. We are hopeful that the EPO will duly consider all comments in this process of revising the RPBA.

Hoffman Eitle is preparing detailed comments to these changes. In general our position is:

  • General:
    • Several of the proposed amendments to the Rules of Procedure of the Boards of Appeal (RPBA) introduce lack of clarity, leading to uncertainty for parties.
    • Some of the changes favour opponents, and thus offend against the right to “equally fair treatment” for parties to the appeal referred to in G 9/91.
    • Some of the changes reduce the discretion of the Boards in cases where it is necessary to deliver fair treatment.
    • Some of the changes jeopardize a party's right to be heard.
    • The freedom of the Boards to introduce new arguments, even at a late stage of proceedings, is left unchecked.
  • Art. 12:
    • The newly introduced terms / phrases of “objections”, “procedural economy”, “should have been presented” are not clear and require more definition.
    • It is unclear whether it would be sufficient for an applicant or proprietor to state, in good faith, that no further objections have been identified. If insufficient (as suggested in the explanatory remarks), it would then put the applicant or proprietor in the extremely difficult position of identifying and then refuting any potential objections against amendments to the patent application or patent which have not even been raised by the EPO or the opponents.
    • By striving to fulfil the considerable burden to justify the amendment, the party is placed in the unfortunate position of risking to have the amendment not admitted for the formal reason that the amendment would be complex.
    • The Board should be given discretion for the extension of the period in paragraph 1(c), because there are some cases where restricting the period of response to four months would result in the unfair treatment of the parties.
  • Art. 13:
    • The amended text requires that “The Board must also be satisfied that the amendment enhances procedural economy”. This wording suggests that the Board no longer has discretion to admit an amendment which does not enhance procedural efficiency, which could lead to unfair treatment of the parties.
    • The amended text significantly devalues both the communication of the Board ahead of the oral proceedings including any preliminary comments from the Board, and also the oral proceedings themselves, as it restricts the ability of the parties to respond to issues highlighted by the Board or parties at these stages of the proceedings. This is particularly the case if the summons is issued relatively far in advance of the oral proceedings, as is occurring more often at the EPO.
    • The proprietor is trapped between Article 13(2) and the requirements that requests are convergent. This unfairly skews the system further in favor of the opponent for whom there are no consequences of filing a large number of weak attacks.

Please keep in mind that the final user consultation will be closed noon 30 April 2018 at the EPO.

Hoffmann Eitle