Efficiency is key

Efficiency is key - the amended Rules of Procedure of the Boards of Appeal (RPBA) effective from 1 January 2024

The Rules of Procedure of the Boards of Appeal (RPBA) at the European Patent Office (EPO) have been amended, effective from 1 January 2024. Specifically, Articles 13(2), 15(1) and 15 (9)(b) have been amended. The amendments aim to improve the efficiency of the appeal procedure. The EPO hopes that this can help clear backlogs and ensure new cases are dealt with promptly. In general, this should be welcomed by the parties involved in the appeal proceedings. However, these changes also mean that the parties will need to manage their cases more diligently and adhere to stricter procedural requirements.

This article explains the major amendments and their practical consequences.

One of the key changes is to Article 15(1). Previously, the Boards of Appeal endeavoured to issue a summons to oral proceedings no earlier than two months after receipt of the written reply from the party, or in case of inter-partes proceedings, after the respondent has filed his/her reply. The two-month waiting period has now been removed. This change gives the Board more flexibility to issue a summons, which is essentially an official notice setting a date and location for an oral hearing. It is noted that substantive tasks such as preliminary study of the appeal cases need not to be carried out before the summons is issued. This means the Board can now set hearing dates earlier, which could lead to quicker resolution of cases. From this perspective, this change shows the EPO’s commitment to improving efficiency and reducing delays. Accordingly, those involved in the proceedings will need to be more proactive in preparing their arguments to present a compelling case during the hearing.

That being said, the real impact of this change will depend on when the summons is issued. If there are delays from the EPO in scheduling the hearings, it could prolong the appeal process and frustrate those seeking timely resolutions. Therefore, it remains to be seen if removing the ‘two-month’ waiting period will speed up the appeal.

In addition, Article 15(1) now requires the Boards of Appeal to issue ‘a communication drawing attention to matters that seem to be of particular significance’ on the case ‘no earlier than one month’ after the respondent has filed his/her reply. The communication is usually accompanied by the Board’s preliminary opinion on the merits of the case. Now, this opinion can be shared as early as one month after the reply from the respondent has been filed. It is noted that the Board’s opinion usually provides useful guidance to the parties with respect to effectively preparing their arguments for the hearings. On that account, an early opinion would assist the parties in diligently managing their resources, focusing on the issues that would be discussed and decided upon during the hearings.

However, those who wish to file amendments to their cases may find it more difficult to do so from 1 January 2024. The Board may still invite the parties to file observations and set a deadline for their filings. However, if the invitation is not issued, according to the amended Article 13(2), any amendments made ‘after notification of the communication under Article 15(1), shall, in principle, not be taken into account unless there are exceptional circumstances, which have been justified with cogent reasons by the party concerned.’

As mentioned above, the trigger to apply stricter rules for admitting amendments could be the notification of ‘the communication drawing attention to matters that seem to be of particular significance.‘ Referring back to the amended Article 15(1), this means the trigger could be effected as early as one month after the respondent’s case has been submitted. In practice, it may be wise to mark this one-month period and take action as soon as the respondent has replied. If the parties have been notified of the Communication, the Board can decline to admit amendments unless there are exceptional circumstances or the parties have been invited by the Board to submit their comments.

These changes show that the EPO is making a positive move to make the appeal process quicker and more efficient. However, it also means that those involved in the appeal need to prepare their cases more diligently and stick to a heightened procedure deadline. In practice, these changes seem to encourage the parties to front-load all their requests, as late attempts to alter their cases are likely to be blocked by the amended rules. As such, timely submission of a party’s case remains crucial for a successful appeal.

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