New Rules of Procedure at the EPO Boards of Appeal – what does this mean for patentees and opponents?
By
Emily Hayes
, Mewburn Ellis
Revised Rules of Procedure
for the Boards of Appeal have been approved by The Administrative Council of the EPO. The Rules will come into force on 1 January 2020. With these changes less than 6 months away, parties involved in pending appeals need to review their cases now.A summary of the changes
The new Rules are intended to increase efficiency and predictability of appeal proceedings. Some of the key changes include: (i) stricter measures for dealing with any amendments to a party’s case, (ii) remittal back to the Opposition Division only in special cases, and (iii) the issuance of preliminary comments by the Board at least four months before oral proceedings.
A mindful approach
Both patentees and opponents need to be mindful of the EPO’s changes. The new Rules mean that:
- Parties will need to be more focussed during the first instance proceedings before the Opposition Division, always looking ahead to a future appeal. In particular, any relevant claim requests should be filed during the first instance proceedings, as it is likely to be harder to persuade the Board to admit new claim requests in appeal proceedings under the new Rules.
- Where possible, parties should try to ensure that all grounds are considered in the first instance proceedings, as remittal back to the Opposition Division will be rare under the new Rules.
- More than ever before, parties will need to make sure that they present a complete case when filing their appeal. This is applicable to opponents, as well as patentees, and all associated argumentation should be presented at the outset of an appeal. This includes claim requests, arguments and cited documents.
- Convincing reasons will need to be provided for any amendment to a party’s case on appeal, e.g. a new claim request or a new document.
The new Rules will apply retroactively to pending appeals. Therefore, we recommend reviewing all pending appeals as soon as possible to confirm not only that all grounds have been dealt with thoroughly in the grounds of appeal, but also that that full argumentation has been presented for each claim request. Any amendments to a party’s pending appeal case should be made before the new Rules come into force on 1 January 2020.
