New Decade, New Rules: Rules of Procedure of the Boards of Appeal 2020 Entered into Force

Less than four years after the substantial structural reform of the Boards of Appeal ("Boards") of the European Patent Office, the new Rules of Procedure of the Boards of Appeal ("RPBA2020" or "New Rules") entered into force on January 1, 2020. The main aim of the New Rules is to improve efficiency and increase predictability of appeal proceedings. Compared to the old RPBA, RPBA2020 emphasize the judicial review nature of the appeal proceedings. Stricter restraints are applied on the introduction of new requests, facts, objections, arguments, and evidence at the appeal stage, which will make the proceedings more frontloaded.

Previously, submissions including requests, facts, objections, arguments, and evidence—that do not form the basis of the first instance decision or that are changed during the appeal procedure—may be admissible at the discretion of the Boards. Under the New Rules, the admission of such changes will become more difficult as they are to be considered as an exception to the general principle that a party may not change its case at second instance.

The appeal proceedings under RPBA2020 are characterized by "three stages of convergence" with Stage 1 (filing of grounds of appeal and the reply thereof), Stage 2 (before summons to oral proceedings), and Stage 3 (after the summons) imposing increasingly stricter restrictions on introducing amendments to the proceedings. The scope of an appeal case is defined by the requests, facts, objections, arguments, and evidence —including minutes of first instance oral proceedings—upon which the first instance decision under appeal is based. Any submission of a party during appeal proceedings, that does not form a basis of the contested decision, is now regarded as an amendment unless it can be demonstrated that such submission was timely filed, substantiated, and maintained at the first instance. At Stage 1, a party is required to clearly identify any amendment to its case and provide reasons for submitting such amendment on appeal. The decision lies within the Boards' discretion, after such factors as complexity of the amendment and its suitability to address the relevant issues, as well as the need for procedural economy have been fully considered. In particular, the Boards will likely not admit submissions which were not admitted, should have been submitted, or were no longer maintained at first instance.

At Stage 2, the party must thoroughly reason and justify any intended amendment to the case. The admittance of any amendment at this stage is solely at the discretion of the Boards. Particularly, applicant/patentee bears the burden to demonstrate not only that the amendments prima facie overcome the objections on file, but also that such amendments do not give rise to new objections. Stage 3 applies the most stringent restraints, establishing that any amendment will in principle no longer be taken into account unless, under exceptional circumstances, justified with cogent reasons by the party concerned.

In the case of announced oral proceedings, the Boards are now expected to give at least four months' notice of the summons. A communication drawing attention to decisive matters to the case is issued at least four months in advance of the oral proceedings and may be accompanied by a preliminary opinion. Previously, such a communication or preliminary opinion was entirely optional. The compulsory communication under the New Rules is welcomed as it may provide some guidance on preparing for the oral hearings and help to avoid last-minute surprises. In opposition-appeal proceedings, the summons are now issued no earlier than two months after the reply to grounds of appeal in order to provide an opportunity for further submissions at Stage 2 before the more restrictive Stage 3 starts.

Furthermore, in terms of case management, under the old Rules, the Boards had broad discretion to remit cases back to the first instance departments. Under RPBA2020, such remittals are expected to be exceptions. This change should reduce the likelihood of a "ping-pong" effect and thus decrease overall duration of the cases. However, it may in practice, counter the goal of strengthening the judicial review nature of the appeal proceedings and lead to more workload being shifted to the Boards to examine issues which were not decided upon at first instance.

RPBA2020 apply to all pending and new appeal cases with transitional provisions concerning rules on admissibility of amendments at Stages 1 and 3. Particularly, the new rules of Stage 1 do not apply to grounds of appeal filed before January 1, 2020, or responses thereto, whereas the new rules of Stage 3 do not apply in cases where the summons to oral proceedings was notified before said date.

It remains to be seen how the Boards will apply RPBA2020 in practice, and new jurisprudence in this regard will be established in the years to come. With the tight restrictions on making amendments at the appeal stage, RPBA2020 will further increase complexity of the first instance proceedings before the examination and opposition divisions. For applicants/patentees and opponents, it is important to be diligent as early as possible (already during the first instance proceedings) by thoroughly considering all possible/suitable claim requests, filing all relevant facts and evidence, as well as making all substantiated objections and arguments.

Mario Teichmann of the Munich Office is a coauthor of this Commentary.