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08.02.2021

1 year Rules of Procedure of the Boards of Appeal (RPBA 2020) and its effects on practice

The amended Rules of Procedure of the Boards of Appeal of the EPO (RPBA 2020) have now been in force for over one year. The overriding aim of the new version of the RPBA was to increase the efficiency of the boards of appeal by streamlining the appeal procedure. The implementation of this aim should be realized through a three-step convergence procedure, which is essentially regulated in Art. 12(4), Art. 13(1) and Art. 13(2) RPBA 2020. The convergence is that the already limited scope for new submissions in the appeal proceedings (requests, documents and party's case) decreases further as the proceedings take longer.

The 1st convergence step concerns the period until the submission of the reply of appeal from the opposite side. The statement of grounds of appeal and the reply must contain the complete case of the parties and must clearly and concisely set out the reasons why it is requested that the decision under appeal be reversed, amended or upheld. Any part of a party's appeal case which does not meet these requirements, i.e. does not refer directly to a factual or legal argument that has already been presented in the first instance, is to be regarded as an amendment. It is at the Board's discretion to allow such amendments (Art. 12(4) RPBA 2020).

Art. 13(1) RPBA 2020 implements the 2nd convergence step. This concerns the period subsequent to the first one up to the notification of the summons to the oral proceedings or up to the time limit specified in the communication under Rule 100(2) EPC. More restrictive criteria apply to the 2nd convergence step than to the 1st step. The parties involved must justify why amendments should be allowed exceptionally at this stage of the appeal procedure. The admission of the amendments is also at the discretion of the Board.

The 3rd convergence step regulated by Art. 13(2) RPBA 2020 relates to the period after notification of the summons to oral proceedings or after the expiry of the period specified in the communication under Rule 100(2) EPC. In this step, amendments are, in principle, not taken into account unless there are exceptional circumstances, which have been justified with cogent reasons by the party concerned.

In the past year, a number of Board of Appeal decisions have been made which give more details on individual criteria of the convergence procedure.

In T 1501/15 the Board stated that contesting discretionary decisions of the first instance by way of appeal requires at least the assertion that the first instance exercised its discretion in accordance with the false criteria, disregarding the correct criteria or in an arbitrary manner and has thus exceeded its granted discretion. Since such a submission was missing with regard to a document which was supposed to support a lack of inventive step and was almost a pure repetition of the first-instance presentation, the board saw no reason to abandon the decision of the opposition division and to consider the document in the proceedings.

In T 1004/18 the Board had exercised its discretion taking into account the criteria specified in Art. 13(1) RPBA 2020 and had not admitted the auxiliary requests submitted shortly before the oral hearing into the proceedings. The Board came to the conclusion that the respondents had neither given a reason why the new auxiliary requests had been submitted so late in time, nor why these amendments were suitable to overcome the objections included in the appellant's statement of grounds.

In its decision T 1482/17 the Board came to the conclusion that the auxiliary requests submitted during the oral proceedings would be admitted to the proceedings in accordance with Art. 13(2) RPBA 2020. This is because the amendments were a direct reaction to an argument that was first put forward by the Board of its own motion during the oral proceedings. The Board took the view that even at this late stage in the proceedings, the patent owner should be entitled to an opportunity to overcome the newly raised objections.

T 0752/16 is concerned the withholding of changes. Here the Board decided that a change in the preliminary opinion of the board on a particular ground for opposition is not an exceptional circumstance within the meaning of Art. 13(2) RPBA 2020. Therefore, the patent owner cannot withhold amendments in response to the objections raised by an opponent for so long until he is confronted with a preliminary opinion of a Board that is negative for him.

In practice, the new version of the RPBA has considerable effects on the increasingly complex first-instance proceedings and of course on the appeal proceedings themselves, in which there is hardly any room for amendments due to the more restrictive criteria.

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