Event Report: CIPA seminar on the revised Rules of Procedure of the Board of Appeal

On Monday, this Kat escaped the London heatwave by retreating to the pleasantly air conditioned offices of Kilburn & Strode LLP and the patent event in town: CIPA's seminar on the Rules of Procedure of the Boards of Appeal (RPBA) of the EPO. The seminar was the first since the approval of the revised RPBA by the Administrative Council in June. The discussion was chaired by Gwilym Roberts of Kilburn & Strode LLP. The speakers were Peter Guntz of the EPO Boards of Appeal (who was involved in drafting the revised RPBA), Lucy Samuels, a patent attorney from Gill Jennings & Every LLP and Suzanne Herrera, Director of Opposition at the EPO.

The discussion at the event centred around the potential implications of the changes in the RPBA for EPO practitioners and the EPO itself.

Peter Guntz began by explaining that the main aim of the revised RPBA is to improve the efficiency of appeal proceedings at the EPO. The Boards of Appeal have a reputation for being very slow. The long-term goal is to reduce the number of pending cases to less than 7,000 by 2023 (the number of pending cases in 2018 was over 10,000). However, despite efforts to reduce the significant back-log at the Boards of Appeal, pending cases continue to rise year-on-year (Annual Report of the Boards of Appeal 2018). A small increase in efficiency reported in recent years has been off-set by a rise in the number of appeals filed.

Following a user consultation (IPKat post here), the revised RPBA were unanimously approved by the Administrative Council (AC) at the end of June this year. The revised RPBA come into force on 1 January 2020 (Article 24). The revised RPBA will apply to any appeal pending or filed after the date the revised RPBA come into force on 1 January 2020.

Kilburn & Strode LLP, The Lacon Building

Some fear that any increase in efficiency provided by the revised RPBA will come at a cost to applicants and patentees. In particular, the revised RPBA are significantly stricter on the issue of late filed arguments and evidence in appeal proceedings. The CIPA seminar included much discussion on this point.

The three levels of convergence

Peter Guntz first took the audience through the most significant changes in the revised RPBA. The key message was that, under the revised RPBA, the possibility for parties to present new requests, facts, objections, arguments and evidence will become much more restrictive.

Articles 12 and 13 set out a new three-level convergent approach by which the admissibility of changes to an appeal case will be progressively curtailed as proceedings progress. The 1st stage of convergence is at the outset of the appeal. If a party includes in their grounds of appeal issues that were not raised at first instance, the onus will now be on the party to justify this change (Article 12(4)). The Board of Appeal will have discretion over whether to admit a change, taking into account the complexity and suitability of the amendment for addressing the issues of the case (Article 12(5)).

The 2nd level of convergence applies to a party's submissions before the summons to oral proceedings is issued (Article 13(1)). At this stage, the party must justify any changes they make to their appeal case as filed. Introduction of arguments from the first instance case that were not raised in the grounds of appeal will be considered a change (Article 12(5)). In order for changes to the case to be admitted, the party will have to show that 1) the change prima facie overcomes the issues at hand, and 2) does not give rise to a new objection. Again, the Board of Appeal will have discretion over whether to admit a change.

The 3rd level of convergence takes effect after the summons to oral proceedings (Article 13(2)). At this stage, a change to the appeal case, in principle, shall not be taken into account, except in exceptional circumstances.

Rise in requests

It was predicted by the chair, Gwilym Roberts, that the most likely effect of the three levels of convergence will be the front loading of cases. Indeed, Suzanne Herrera of EPO commented that the Opposition Division has already seen a rise in the number of auxiliary requests at first instance. Lucy Samuels agreed that the Opposition Division should expect much more arguments to be presented in writing before first instance oral proceedings, as parties attempt to ensure all potential back-up positions are on file. Patentees can thus expect a rise in the number of arguments from opponents. It was however noted the number of auxiliary requests may be curtailed, given that the EPO has the discretion not to consider what they view to be excess auxiliary requests (Guidelines for Examination H-III-3.3.1.1).

Given that the revised RPBA will apply to any appeal pending or filed after 1 January 2020, the advice from Lucy Samuels was that EP representatives should take action now. Particularly, they should file review all their pending appeals and think about any further auxiliary requests that they may wish to file.

The importance of the minutes of oral proceedings

The revised RPBA clarify that the oral proceedings minutes from the appealed decision are to be taken into account when determining what arguments, facts and evidence were presented in first instance (Article 12(1)(a)). The oral proceedings minutes may therefore become of crucial importance for the admissibility of arguments on appeal. Given this, members of the audience asked how the EPO will deal with disagreements on the content of the minutes. It is not uncommon for minutes of oral proceedings to be incomplete. Peter Guntz of the EPO indicated that there were no thoughts at the EPO to move to system in which hearings are minuted by an official stenographer or recorded. It seems that practitioners are advised to take scrupulous notes of their own, and to challenge the minutes when necessary.

Reduction in remittal

Peter Guntz indicated that another aim of the revised RPBA is to reduce the likelihood of a "ping-pong" effect between the department of first instance and the Boards of Appeal. The aim is that remittal should very much be the exception (recent statistics indicate that remittal occurs in about 8% of cases). The issue of remittal was the subject of some controversy at the user consultation. According to the revised RPBA, the Boards of Appeal shall not remit a case to the department of first instance, unless there are "special reasons" for doing so (Article 11). The revised RPBA give an example of a special reason as being fundamental deficiencies which are apparent in the proceedings before the department of first instance. But do special reasons include the issue not being dealt with at first instance (e.g. because the case was deemed invalid for another reason)? The issue of whether it is possible to consider all grounds, even if a case falls on, for e.g. added matter, has also led to some heated discussion here on IPKat (see comments here).

Arguments about arguments

The revised RPBA do leave plenty of scope for argument. Gwilym Roberts, the chair, predicted that in future we will see considerable argument as to what constitutes a "request, fact, objection, argument or evidence" (Article 12(2)), and thereby the subject matter of a non-admissible change to an appeal case. It was also expected that there will be considerable argument as to the "special reasons" according to which a case may be remitted back to the department of first instance (Article 11).

Another interesting point from the chair was that, whilst the Guidelines for Examination are fit for purpose, it was possible that the time scale for updating of the Guidelines is perhaps not so. It was suggested that, as the case law on the revised RPBA rapidly develops, a more timely update of the Guidelines would be helpful.

We will undoubtedly hear a lot more about the potential impact of the revised RBPA before they come into force on 1 January 2020. During the networking session at the end of the seminar, this Kat encountered a degree of scepticism in some attendees as to whether the revised RBPA will in fact improve efficiency. An increase in auxiliary requests and arguments may merely shift the burden back to the opposition division (which has had some success in improving efficiency in recent years). The emphasis on reducing remittal, may similarly increase work load at first instance by requiring a full discussion of all the substantive issues in a case, even if the case has already fallen because of, for example, added matter. The boards of appeal may also themselves be burdened with extensive arguments on the whether a submission is or is not a change to a case, and does or does not prima facie address the objections.

If the user consultation is anything to go by, the revisions are certainly the subject of some strong opinions amongst practitioners and are likely to make life harder for patentees and applicants. Will the right balance be struck between efficiency and fairness? Over to readers...