The European Patent Office (EPO) has announced new rules of procedure governing the Appeal procedure. These rules were approved by the Administrative Council last June 2019 and have been published in the Official Journal (OJ 2019, A63).
Before going deep in those changes, it is useful to remind that an appeal procedure has to be preceeded by the main act which is to be appealed. This main act (the Examining procedure, an Opposition procedure) usually involves a long exchange of arguments, where an amount amendments and evidences are used. Once this main act comes to a decision, it is usually clear which is the main idea that has been discussed. The Examining Division and the Opposition Division work hard to consider all the applicant’s arguments and ideas, and to provide (most of the times) a reasoned statement where the decision is justified in view of the guidelines of procedure. The applicant, the asignee and/or the opponent may appeal the decision, but the fact is that there is a lot of work behind.
Until now, appellants have been able to submit new requests, arguments and evidence with hardly any restriction. It is true that the Board of Appeal (BoA) insists on the idea that the Appeal procedure is to review the contested decision instead of starting from zero. The amendments in the Rules of Procedure of the Board of Appeal (RPBA) are set in this direction: now, Art. 12 of RPBA defines an amendment as anything which has not been “raised and maintained” in the main procedure and states that the Board of Appeal will admit an amendment only at their discretion. Further, the BoA will not admit any request or evidence that was not admitted in the main procedure, or any request or evidence that should have been filed at that stage.
Effect in pending procedures
Since these rules will enter into force on 1 January 2020, maybe it would be a good idea for the parties on ongoing appealing procedures to take action just in the event the planned submissions would not be accepted after this date. The new RBPA will apply to cases pending on, or filed after, 01 January 2020, so Arts. 12(4), 12(6) and 13 RPBA will not be applicable to amendments filed on or before 31 December 2019. Hence, amendments of pending cases should be submitted before this date. The old tactic of withholding submissions until the last day may therefore not be useful in these cases.
Further, in view of Art 12(6) RPBA, the practitioner should be very careful when thinking about abandoning any objection or request, or before submitting new requests or documents at main proceedings, since the new matter will be deemed inadmissible for a possible appeal.
This has some consequence on the opposition process, where the EPO strongly recommends to file everything you may need to rely on (even in the future) as soon as possible. Any argument or document that may be helpful to the case should be filed as soon as possible (that reminds about the US’ “duty of candor“). Even if a document does not seem to be useful at this stage, it is worth thinking about the future, in case an appeal is finally requested.
In the event you have any question about a particular case, the European Patent Attorneys of Tribalyte Ideas will be very pleased to help with all of your questions.