• EPO Appeals - New, tighter rules of procedure

    New rules of procedure apply to European Patent Office appeals filed since May 2003. These rules are aimed at streamlining the procedure to reduce the backlog of appeals building up at the European Patent Office by focusing the issues at an earlier stage, limiting the time from parties' further submissions and limiting the scope for amending the respective grounds of appeal or statement of reply. The changes (see panel) are designed to avoid wasting time on facts and arguments not pertinent to the particular issue that resulted in the decision at first instance and to avoid having cases entirely re-heard.

    In the meantime, we report on a case decided under the old rules which explores how far the patience of the Board of Appeal can be stretched.

     

    No "last chance doctrine" on appeal.

    In the past, the appeal procedure has been treated by parties as a re-hearing of the entire application or opposition case, and boards have been tolerant of this. Only in cases of abuse of procedure or late-filing of clearly unallowable amendments or material evidence have boards exercised discretion not to admit these into the proceedings. In part this flexibility has been permitted in recognition of the fact that, for a patent applicant at least, the Boards of Appeal are the highest authority with no recourse for further appeal or action. In at least one case (Decision T 577/97) the board allowed the patentee to enter amended claims during oral proceedings, commenting that "the patentee should normally be allowed a last chance to obtain a patent" by having an opportunity to limit its claims in oral proceedings.

    Encouraged perhaps by this flexibility, a patentee in a more recent case (Decision T 446/00, decided on 3 July 2003) argued that this amounts to a "last chance doctrine" by which a number of auxiliary requests filed just days before the hearing should be admitted. The Board of Appeal refused, saying that there is no such doctrine beyond the literal fact that the oral proceedings on appeal are the applicant's "very last chance" and that the board will nevertheless refuse to exercise its discretion when there is an abuse of procedure. In this case, there were thirteen last-minute requests from the patentee where the board had invited just one.

     

     

    Comment

    Decision T 446/00 did not rule out the opportunity to file one last request in an opportunity to save the patent in response to objections from the Board (as in Decision T 732/98 for example), but it was decided under the old Rules of Procedure. Under the new Rules, last-minute amendments in even these limited circumstances may risk refusal as being inadmissible. Parties need to anticipate objections from the Board and prepare accordingly.

    The changes call for much more thorough analysis of strategy at an early stage and a complete and thorough addressing of all issues from the outset of an appeal. Indeed, preparation for appeal must now begin at first instance. If facts or arguments are likely to be contested on appeal, it is vital that they be introduced at first instance. New facts are likely to be excluded from late admission unless there are good reasons why they were not introduced earlier.

    Selected details of the changes to the EPO Rules of Procedure of the Boards of Appeal

    • The appellant's statement of grounds must set out the complete case for appeal.
    • Amendments to the statement of grounds will only be allowed at the discretion of the Board of Appeal.
    • The respondent's statement of reply (if there is a respondent) must be complete and must be filed within four months of notification.
    • Extensions of time for submissions by either party will be allowed only at the Board's discretion and a reasoned case for extension must be given.
    • Once an oral hearing has been arranged, no further amendment to a party's case will be allowed except on matters that can readily be dealt with by the other parties prior to the hearing.
    • Costs will be accorded awarded in a greater range of circumstances including amendment to a statement of case or of reply.