Proposed amendments to the Rules of Procedure of the Boards of Appeal

The EPO Boards of Appeal conducted a consultation on proposed amendments to their Rules of Procedure.

CIPA’s Patents Committee responded on 8 September 2023 as follows.

Introduction

The EPO Boards of Appeal have generally been a great stabilising influence on the development of patent law across Europe, as well as within the EPO. This influence results from the perceived high quality of their decisions, as well as their quantity. CIPA recognises the importance of improving efficiency of the procedure, so that justice is not unduly delayed. However, this is obviously a long-term project and it is not long since the last major revisions of the Rules of Procedure were enacted.

The proposal of June 2023[1] is not accompanied by much in the way of an impact analysis. The only motivation disclosed is to shorten the delay to a final decision. However, with all due respect to the boards, shortening the term for a respondent to reply to grounds of appeal is not tackling the part of the process where the longest delays arise.

Although admirable efforts have been made by the Boards recently to reduce their backlog of cases, the timescale of a typical EPO appeal is nevertheless still measured in years, not months. In nearly all cases, the main factor determining how quickly an appeal case is finally resolved is the time taken by the relevant Board to pick up the case, not the timeliness of the parties’ submissions.

It is therefore highly questionable whether a two-month reduction, in an already short time limit at the very start of the appeal process, will have any measurable impact on the overall pendency of cases. Neither the proposed changes, nor the existing Rules of Procedure, place any obligation on the Boards to expedite their processing of the parties’ submissions, once received.

Moreover, as already mentioned above, the quality of decision-making is critical to the overall functioning of the EPO and the wider European patent system. The consultation document provides no assessment of the impact of the proposals on the quality of decisions.

In that regard, it is noted that the Boards of Appeal have themselves recognised that ‘[t]he quality of decisions is influenced by the quality of the preparatory steps that precede them’.[2] This applies equally to submissions prepared by the parties as it does to preparations by the Board themselves. An unduly short time limit for response to the grounds of appeal can only be to the detriment of the quality of that response.

Putting this another way, we foresee that the newly proposed changes would directly conflict with the aims of the previous revision of the rules of procedure, which deliberately increased the burden on both parties to ensure that they have presented their ‘complete case’ at the earliest stage.

As practitioners before the EPO and the Boards of Appeal, we therefore fear that the present proposal, particularly with regard to Article 12 and, to a lesser extent, Article 15, is likely to undermine the quality of appeal decisions in general and cause individual injustices along the way.

The proposal

Our greatest concern is over the proposed amendment in Article 12(1)(c) RPBA. According to this proposal, a party will have only two months to file a reply to the grounds of appeal where presently they would have four months. (This change is effectively amplified by the forthcoming abolition of the ‘10-day rule’.)

According to the explanatory remarks, the Board will normally give a longer period from the outset, in a case where the proprietor is faced with ‘numerous’ appeals by different proponents.

It is also noted that an extension of the Article 12(1) period may be requested by the respondent, with written reasons.

A similar concern is the shortening of the period in Article 15 (1) to only one month, for parties to file any reply to the replies of others. No mechanism for extension is provided, other than the uncertain delay at the Board side.

Quality and justice

The Boards may ask, why is two months not enough time under Article 12(1), when the respondent already knows the case? This question underestimates the action required, potentially by many actors, at the respondent’s side, before the reply can be filed.

Aside from the work involved in actually preparing the reply, a great deal of work and a number of people may be involved, before it is even decided to file a reply at all. For SMEs especially, the cost of each step in an appeal case can be substantial.

It will be understood that the representative who receives the grounds of appeal is not the respondent itself. In a best-case scenario, the representative works directly in-house, close to the decision-makers of the respondent entity. Perhaps they already know what the case is worth, and can by themselves make a decision whether to proceed in defending the appeal as soon as they have made an analysis of the grounds.

Very often, however, the representative will be an attorney in private practice, who may in turn be reporting to a foreign attorney working in a different time zone, who in turn reports to one or more decision-makers within the respondent entity.

Accordingly, in the real world, a large chunk of the existing four-month period is often needed for the representative simply to analyse the grounds of appeal and provide an opinion on prospects for defending it, and likely costs. These considerations will then be the subject of internal consultation. All of this must happen, before there is even a decision as to whether or not to prepare a reply.

Particularly in view of the requirement of Article 3 RPBA for a respondent to present their ‘complete case’ at the outset, the work of preparing the reply will never be trivial. Dealing in detail with all grounds, all claims, all requests, and so on is onerous. In addition, and partly as a consequence of the previous round of changes in the rules of procedure, preparing the reply also involves scrutinising the grounds of appeal for any argument or evidence that could be challenged as an amendment of the case, as well as careful scrutiny of one’s own arguments and evidence for anything that may be similarly challenged by the other side. Shortening the timescale risks errors and omissions that will deny justice to the respondent, or at least give rise to wasteful debates in the subsequent procedure.

Although, in principle, the purpose of the appeal proceedings is to review the first instance decision, in practice, replying to the grounds of appeal may still require additional research and preparation of evidence. For example, an opposition may have been decided at first instance based on what is or is not accepted to be common general knowledge. If the appellant challenges the evaluation of evidence made by the first instance, the respondent may well need to provide additional evidence, for example identifying and interviewing expert witnesses, where textbook or other materials were deemed sufficient before. Will the Boards always grant an extension in such a case?

The appellant is given four months to prepare the grounds of appeal. As a matter of simple justice, why should the respondent be given less time?

It is noted that the formal notice of appeal reveals nothing about the case that will be pursued, and in fact is no guarantee that an appeal will be pursued at all. The formal notice and fee can be paid at two months purely to keep the option of appeal open. If the grounds are not filed, the fee is reimbursed. The only thing the respondent can do is wait to see if grounds of appeal will be filed, and what they contain. Therefore, until the grounds of appeal are actually received, the respondent can do very little to prepare their substantive response.

The proposed change therefore gives the respondent significantly less time than the appellant to prepare their written case. This is clearly contrary to the generally accepted judicial principle that parties in a dispute should be treated equally.

Although an extension of time can be requested by the respondent, up to a maximum of six months, this in itself imposes an additional decision and potentially a task to be completed within the shortened two-month time period, namely the preparation and filing of a reasoned written request. The making of such a request will require corresponding processing at the Board’s side to render a decision on the request for extension. Requests for extension would no doubt increase greatly if an artificially-shortened two-month time limit were imposed.

Perhaps it is intended that the Boards will adopt a more generous attitude to the granting of extensions, in recognition of the harshness of the two-month term. The explanatory remarks do not provide any guidance on the criteria to be applied for discretionary extensions, so we can only guess and fear. Unless and until that the extension request is granted, the respondent has no option but to treat the two-month deadline as fatal. Will the Board agree to an extension on the basis that the representative and/or the respondent’s personnel are on holiday during the two months, or temporarily unwell? Such temporary absences will not generally cause a problem under the current four-month time limit but could consume a large proportion of the proposed shorter limit.

Even for a case where the Board might grant a four-month period from the outset, this is only set to apply where there are ‘numerous’ appeals. How many is ‘numerous’?

The shortening of the period under Article 15(1) from two months down to only one month raises all the same issues as the change in Article 12. This is a very short time for analysis of procedural issues such as ‘amendment of the case’ which might need to be brought to the attention of the Board before they issue a preliminary opinion and/or summons. Although such issues will often be picked up on by the Board themselves, a party cannot rely on that when seeking to safeguard their own rights. Moreover, since this is not a period specified by the Board, no extension can be requested under Article 12 (7). Will the Board hear favourably any request for a delay in the issue of the preliminary opinion? Will the parties rush to provide comments within one month, only to find that the Board takes much longer in practice to provide the preliminary opinion?

Conclusion

In conclusion, we fear that the reduction in the period for preparing replies in appeal proceedings, coupled with the already increased burden of preparing replies (not to mention the abolition of the 10-day rule) actually risks reducing efficiency of the overall procedure, not least by generating a lot of ‘noise’ such as extension requests, and further risks denying parties access to justice.

Where a party feels badly treated, the number of referrals to the Enlarged Board may increase and/or the consistency of decisions of the Boards in general may be lowered, due to the poorer quality of submissions delivered under unnecessary time pressure.

CIPA therefore request that the time periods specified in Article 12(1) and Article 15(1) be maintained at their current values.

[1] https://www.epo.org/en/law-and-practice/boards-of-appeal/communications/user-consultation-proposed-amendments-rules

[2] See paragraph 11, Board of Appeal Publication 29 June 2020 ‘Quality-focused decision making’, htps://link.epo.org/web/quality_focussed_decision_making_en.pdf