Some Thoughts after the Conference on the New Rules of Procedure of the Boards of Appeal
D. Thomas (FR), Former Director DG1, EPO
Although this résumé aims to be as factual as possible, it should not be forgotten that it represents the personal view of the author and hence should not be taken as carved in stone.
The conference held in Munich on 5 December 2018 was interesting as one could gain some information as how the working group NRPBA of the Presidium and the BOAC came to its conclusions and proposals, and of the dissenting views of certain representatives, not to say lobbying groups, e.g. Business Europe, which had a strong delegation led by its President.
There were presentations by members of the working group NRPBA, mainly Chairpersons of the BoA, followed by panel discussions among some selected speakers from the user’s side, see above, and the members of the BoA having given presentations. There were also Q&A session for the audience.
The whole session was moderated by Sir Colin Birss who is well known in the profession, and who has also moderated a conference at the MPI a few months ago. Sir Colin Birss is member of the BOAC and Dr Bachert, judge at the BGH, as well member of the BOAC was present as well, and gave some comments. Mr Grossenbacher, Chairman of the BOAC opened the session.
First, something about the timing. It was pretty clear that the NRPBA will come as they appear in the second draft. According to Mr Josefsson the BOAC should adopt them at the beginning of 2019, with then approval by the AC before mid-2019, so as to ensure an entry into force on 01.01.2020. Transitional provisions are very limited and will not have a great impact.
Following the consultation earlier this year, 140 comments were filed. It was clear that some of them were taken into consideration, but others clearly not followed.
In a nutshell, the present situation with Art 12(2), 12(4), 13(1) and 13(3) RPBA will certainly not be relaxed. The contrary is to be expected, but this should not be a surprise for any reader. The thrust of the whole appeal procedure will be the judicial revision of first instance decision, not simply to continue the procedure started in first instance.
There are also interesting developments in respect of transparency of the BoA when it comes to their workload, designation of the members of a BoA, and remittals.
An important factor which also came to light is the large discretion the Boards will have in deciding on the admission of submissions at any moment during appeal procedure. Let’s hope that this discretion will be properly exercised, as there is no instance able to check whether it has been correctly exercised. In view of its case law, the EBA will most probably not help.
From the presentations and the comments made during those presentations, it appears clearly that the BOAC played an important role in the drafting of the NRPBA.
The three rings of convergence
The NRPBA provide three rings of convergence 1) when entering appeal, 2) once the appeal and the reply to the appeal have been filed, and 3) after a communication under R 110(2) or Summons to Oral Proceedings have been issued.
They correspond to the existing situation, but they have been heavily strengthened.
1) When entering appeal
An important aspect is that not “everything which has been presented” at the outset of the appeal procedures will be admitted. In Art 12(4) NRPBA parts of the statement of grounds of appeal or the respondent’s reply, i.e. parts of a party’s appeal case, which are not directed to facts, etc. on which the decision under appeal was based are considered as an “amendment” and will only be admitted at the discretion of the Board.
This applies not only to amendments to the application or to the patent, but to any submission, i.e. requests, facts, objections, arguments and evidence which the party submitted before the department of first instance but on which that department did not base its decision!
In the case of an amendment to the patent application or the patent, the applicant or patent proprietor must explain why the amended claim overcomes the objections raised, i.e. raised in the decision under appeal, or by the opponent in its statement of grounds.
Mainly, it is only in case the first instance did not exercise its discretion correctly that submissions might be admitted, provided they have not been abandoned in first instance procedure.
2) Limitation on a party amending its appeal case after the initial stage of the proceedings
A reasoned request for admittance of any “amendment” at this stage of the appeal proceedings is mandatory. The admittance is subject to the Board’s discretion alone. Where an amendment to a patent application or patent is concerned, the onus on the applicant or patent proprietor is to demonstrate both
- why the amendment overcomes the objections raised, cf. first level of the convergent approach,
- and why the amendment does not give rise to new objections.
3) After a communication under R 110(2) or Summons to Oral Proceedings have been issued
The basic principle of the third level of the convergent approach is that, at this stage of the appeal proceedings, amendments to a party’s appeal case are not to be taken into consideration.
The only exception is
- when the Board expressly invites a party to file observations within a period specified by the Board, or
- if a party is able to present compelling reasons which justify clearly why the circumstances leading to the amendment are indeed exceptional.
Needless to say that the measures envisaged under this heading, met a certain resistance from the side of the audience, especially when representing the applicant/proprietor.
Transparency of the Boards of Appeal and of the designation of its members – case management
1) Advanced planning
As it happens in some national jurisdictions, e.g. the German Federal Constitutional Court (BVerG), for each Board, a list of cases will be published in which, in the coming year, the Board is likely to hold oral proceedings, issue a communication, or issue a decision in written proceedings.
The list is not binding and might change during the year, if for instance, appeals are withdrawn. No rights can be derived from the list.
The advance planning of the expected workload for the coming year is intended to increase efficiency for the Boards and the parties.
In order to draw up the list, it has been made clear that each rapporteur will have a target of decisions to achieve at the end of the year. The (unofficial) figures seems to be 22 cases/year/rapporteur, whereby at the end of the day the president of the Boards insisted upon the fact that the quality of the work done will be a more important factor than the mere production figure.
One aim of this measure seems also to achieve a better distribution of the workload of legal members.
2) Designation of the members of a given Board
The Chair of each Board will continue to determine the composition of the Board for each particular case in accordance with the business distribution scheme, but will designate the rapporteur before determining the remaining composition of the Board.
The Chair of the Board will as well designate a member of the Board or himself, to consider the admissibility of the appeal. In most cases, the Chair of the Board will designate a legally qualified member to consider the admissibility of the appeal. Where the rapporteur (i.e. in most cases a technically qualified member) has been designated before the composition of the Board has been completed, the Chair of the Board may decide to designate the legally qualified member to consider the admissibility of the appeal only once the complete composition of the Board has been determined.
3) Consolidation of appeal proceedings
The main change here is that the parties will not any longer asked to give their consent in case of consolidation of appeals.
4) Extension of periods set by the Boards
Only periods specified by the Boards can be extended following a reasoned request. In general they will be of 4 months.
The period, 4 months, for the respondent to reply to the grounds of appeal cannot be extended. This has led on the spot to strong protests from the audience, especially in the case of a proprietor confronted with a plurality of appealing opponents.
5) Acceleration of appeal proceedings
Whilst acceleration was already possible under the present RPBA. In case of acceleration at the request of a party, the other parties will be informed and may comment, but will not normally not be invited to comment.
A Board may also accelerate an appeal at its own motion. In such a case, the Board will not inform the parties.
If acceleration is decided, time lines will be set and the parties will have to abide by in a much stricter manner.
6) Summons to oral proceedings
It will become mandatory for a Board to send a communication in annex to the summons. According to the information given, the annex to the summons will represent the view of the whole board, not just that of a rapporteur. The summons will be issued in general with a time lead of four months.
7) Change of date of Oral proceedings
The reasons given in the Notice of VP3 have now been entered in the RPBA. The serious reasons for requesting a change of date must relate to the representative. Giving reasons why another representative cannot take over will not be any longer necessary. That substantive submissions have been made by several representatives of a firm will however be taken into account, i.e. like in Guidelines E-III, 7.1.1.
When requesting a change of date, the dates at which a representative is not available will have to be given. This applies as well to the other parties.
There is not, like in first instance, a set rule about days to be kept free between oral proceedings. This is left to the discretion of the Boards.
In the future, the rule should be that remittals will be an exception, unless there are special reasons like a fundamental deficiency in first-instance proceedings.
The aim is to avoid ping-pong between the Boards and the departments of first instance. It has been a wish of numerous representatives that first instance divisions should decide on all possible issues, even if for instance the main problem is a problem of sufficiency or added subject-matter.
One suggestion was for the first instance divisions may be to decide on one point, but to give an opinion on all others contentious points. As the thrust of the appeal procedure is the judicial revision of first instance decisions, it might not be the judicial review of opinions.
It will have to be seen if this is at all practical, and some scepticism appears not to be misplaced. The comment fell that sufficiency and inventive step are linked, so that it might be possible to decide on both. Dr Bachert brought forward that whilst the BGH has to remit in the absence of technical members, as the Boards of Appeal have technical members remittal should not be necessary.
Since a claim suffering from added subject-matter does in principle not have an effective date, clear instructions as to which theoretical date should be taken into account when assessing novelty or inventive step should be given.
What good is it to discuss the novelty or inventive step of a non-enabled invention?
9) Abridged decisions
If the decision is announced at the end of oral proceedings, and the parties have given their consent, it may be in abridged form.
Under the condition that the provisions of Art 113(1) have been respected, and if the Board agrees with the decision of first instance and all its findings, it can, without the consent of the parties, decide in abridged form. In such a situation, it is irrelevant whether the decision has been announced orally in oral proceedings.
Reservations came from the audience in relation with abridged decisions as a Board of Appeal is not the only forum of discussion possible.
10) Issuance of decisions after oral proceedings
A time limit of three months has been set, but as there is no sanction in case the time limit is not respected, some scepticism came up from the audience.
11) Video or telephone conferences before the Boards?
Art 12(1,e) NRPBA mentions video or telephone conferences between a Board and parties, but no specific rules of procedure for such video or telephone conferences are to be found in the NRPBA. Oral proceedings in the form of video conferences are certainly not on the agenda.
The NRPBA will apply to all pending appeals with two exceptions:
- Art 12(4-6) NRPBA will not apply retrospectively to grounds of appeal or replies filed before the date of entry into force of the revised version, irrespective of whether this period expires before, on or after the date of entry into force of the revised version.
- Art 13(2) NRPBA will only apply to a submission filed after the statement of grounds of appeal or a reply thereto if, at the date of entry into force of the NRPBA, summons to oral proceedings or a communication of the Board under R 100(2), has not been notified.
Effect on the procedure of first instance
In the explanatory notes the drafting committee acknowledges that as a consequence of the convergent approach now implemented in Art 12 and 13 NRPBA, it is to be expected that more issues will be raised and dealt with in the proceedings at first instance. Hence, this should reduce the need to remit cases.
It is manifest that the number of auxiliary requests filed in first instance will increase. Even at present, not filing, or worse, withdrawing a request in first instance, means that the chances for it to be admitted during appeal are very remote. They well be even less in the future.
Whether the efficiency of the whole procedure before the EPO will be increased remains thus to be seen.
During the discussion, the President of the BA indicated that the Boards have been in discussion with DG1 when revising the RPBA, and that in any case, the President of the EPO is represented in the BOAC.
This fine report was published before in the “Blog du Droit Européen des Brevets” (https://europeanpatentcaselaw.blogspot.com).
- NRPBA = New Rules of Procedure Boards of Appeal
- BOAC = Boards of Appeal Committee, a newly-established subsidiary body of the Administrative Council
- MPI = Max Planck Institute
- BGH = Bundesgerichtshof (German Federal Court of Justice)