The Rules of Procedure of the Boards of Appeal (RPBA) have recently been updated. There has been a wide-scale revision of the rules, with both case management and substantive features of the appeal procedure being revised. The new RPBA will come into force on 1st January, 2020.
In recent years, the case law of the Boards of Appeal in relation to the nature of appeal proceedings themselves has developed. Whereas it was always the intention for appeal proceedings to be a review of the decision under appeal, it is the view of the Boards of Appeal that parties have often treated appeal proceedings simply as a continuation of the examination or opposition procedure. This has led to appeal proceedings being conducted in a less efficient manner, in some cases with parties presenting a fresh case on appeal that does not mirror the approach taken at first instance. As a reaction to this, the Boards have generated case law around the issue of their discretion to find inadmissible the presentation of new facts, evidence, and arguments on appeal. This case law has been codified in the updated RPBA.
The most important aspects of the revision in this respect relate to Articles 12 and 13 RPBA, which define the scope of the appeal and the extent to which it may be amended.
New Article 12 includes:
“(2) In view of the primary object of the appeal proceedings to review the decision under appeal in a judicial manner, a party’s appeal case shall be directed to the requests, facts, objections, arguments and evidence on which the decision under appeal was based.”
“(4) Any part of a party’s appeal case which does not meet the requirements in paragraph 2 is to be regarded as an amendment, unless the party demonstrates that this part was admissibly raised and maintained in the proceedings leading to the decision under appeal. Any such amendment may be admitted only at the discretion of the Board. The party shall clearly identify each amendment and provide reasons for submitting it in the appeal proceedings. In the case of an amendment to a patent application or patent, the party shall also indicate the basis for the amendment in the application as filed and provide reasons why the amendment overcomes the objections raised. The Board shall exercise its discretion in view of, inter alia, the complexity of the amendment, the suitability of the amendment to address the issues which led to the decision under appeal, and the need for procedural economy.”
The highlighted passages from new Article 12(2) indicates that the Boards will consider the admissibility of an Applicant’s appeal in relation to all aspects of the case put forward. The list of aspects now explicitly includes requests, which is not limited to claim amendments, and objections, which should be understood to mean each “line of attack”, rather than simply each ground of opposition.
The highlighted passages from new Article 12(4) indicates an important change of emphasis. It was formerly the case that the Board had the discretion to find inadmissible newly presented facts, evidence, and arguments. It is now necessary for the parties to positively identify any change of case and to argue why the Board should find it to be admissible. This change of emphasis is illustrative of the intention of the Boards of Appeal to more rigidly impose the requirement that the appeal procedure is to be used only as a review of the first instance decision.
There is a similar change of emphasis in new Article 13:
“(1) Any amendment to a party’s appeal case after it has filed its grounds of appeal or reply is subject to the party’s justification for its amendment and may be admitted only at the discretion of the Board. Article 12, paragraphs 4 to 6, shall apply mutatis mutandis. The party shall provide reasons for submitting the amendment at this stage of the appeal proceedings. The Board shall exercise its discretion in view of, inter alia, the current state of the proceedings, the suitability of the amendment to resolve the issues which were admissibly raised by another party in the appeal proceedings or which were raised by the Board, whether the amendment is detrimental to procedural economy, and, in the case of an amendment to a patent application or patent, whether the party has demonstrated that any such amendment, prima facie, overcomes the issues raised by another party in the appeal proceedings or by the Board and does not give rise to new objections.”
As can be seen from the highlighted text, should a party amend its case on appeal, it is necessary for the party to file arguments justifying that change. The Board will take into consideration whether the amendment resolves the disputed issues or introduces further issues that might prolong proceedings. Taking the filing of amended claims as an example, the Board will consider whether those amended claims clearly overcome the objections raised (for example, by adding a clearly inventive feature) and whether they might lead to new objections (for example, added subject-matter or lack of clarity). The Board will also take into consideration the state of proceedings and whether the Board has issued a summons or a preliminary opinion about the issues under appeal.
The Boards view the new procedure as defining three levels at which amendments are to be considered. Level 1: on filing the appeal, any amendments from the case put forward at first instance. Level 2: any amendment during appeal proceedings before a summons or preliminary opinion from the Board (typically, in response to another party). Level 3: any amendment during appeal proceedings after a summons or preliminary opinion from the Board. It is the intention of the Boards that it will become increasingly difficult for a party to amend their case as the appeal progresses through the three levels, with amendments at level 3 only admitted in exceptional circumstances.
A notable change to the Rules of Procedure of the Boards of Appeal is in new Article 11:
“The Board shall not remit a case to the department whose decision was appealed for further prosecution, unless special reasons present themselves for doing so. As a rule, fundamental deficiencies which are apparent in the proceedings before that department constitute such special reasons.”
This rule illustrates the intention of the Boards to use remittal only in exceptional cases. However, It is not at all clear at the present time to what extent the Boards will take the opportunity to decide on issues that were not ruled on at first instance. For example, if a Patent has been revoked for added subject-matter, new Article 11 suggests that the Boards may consider novelty and inventive step instead of remitting the case. On the other hand, this would seem to be contrary to the intention to ensure that the appeal procedure is merely a review of the first instance decision. Time will tell how new Article 11 will be implemented.
Owing to these changes, it is important that cases be prosecuted at first instance with appeal procedure in mind. At first instance, the freedom of party to amend claims, file new arguments, and change a position on some issue is much greater. Once the first instance department has issued a decision, the freedom is much more limited.
It is intended that the new RPBA will come into force on 1st January, 2020. However, there are transitional provisions that mean their applicability will depend on the state of proceedings. Since the new Rules are more onerous than those presently in force, should you be considering any amendments in a pending appeal, it is recommended that you contact your Representative as soon as possible