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EPO Boards of Appeal Conference – The Highlights

On 22nd-23rd November, the EPO held it’s seventh “Boards of Appeal and key decisions” conference, which provides a unique insight into the EPO’s case law practice.  The conference covered a variety of topics, including priority, the right to be heard, and procedural changes that may be introduced to speed-up appeal proceedings.  We summarise some of the interesting points in this article.

1) New developments in procedural matters

Marcus Müller, a technically qualified member of the Boards of Appeal, explained that, in view of a serious backlog of appeal cases, the EPO has a five-year objective to increase the speed of appeal proceedings (where the appeal is filed either in examination or opposition proceedings).  The goal is to issue a decision on 90% of cases within 30 months of the appeal being filed.

In order to achieve this goal, the Boards of Appeal are considering: (a) revising the Rules of Procedure of the Boards of Appeal of the EPO; (b) reforming the current appeal fee structure; and (c) improving internal workflows and practices.  We discuss these potential changes in turn below.

(a) Revising the Rules of Procedure of the Boards of Appeal of the EPO

The speaker indicated that the Rules of Procedure (specifically Articles 12, 13 and 15) may be revised to improve the predictability, consistency, and efficiency/duration of appeals.  Any changes to the Rules of Procedure will be subject to a user consultation.  Generally, the revised rules will result in a ‘stricter’ approach to appeals than presently, but the right to be heard will be kept in mind.

One proposed change is to force the Board to issue a compulsory communication before oral proceedings, which will draw attention to matters that seem to be of special significance, so that the essentials of the case are focussed upon during oral proceedings.  This will require a modification of Article 15 which currently states that the Board “may” send such a communication.  At the moment, some Boards of Appeal to provide such a communication, while others do not – the proposed change would therefore improve the predictability of proceedings, and consistency among Boards.

The Boards are considering changing the provisions on precisely what is acceptable at each stage of appeal proceedings and, in particular, whether late filed requests and late filed prior art may be accepted at each stage of appeal proceedings.  Again, this is intended to improve the predictability of proceedings.  The revised provisions may specify that all late filed submissions need to be accompanied by a statement justifying why the submissions are being filed late.  The proposed revisions to Articles 12 and 13 of the Rules of Procedure may more clearly specify that the first instance decision (that is being appealed) defined the scope, and that the grounds of appeal and reply must stay within this scope.  Thus, the statement must also say why the late filed submissions extend beyond the scope of the original grounds of appeal or the first reply, and that the late filed submissions are still within the scope of the first instance decision.  Consequently, it will generally not be possible to file new facts and new requests during the appeal proceedings because they will fall outside the scope of the first instance decision.

Under the proposed rule changes, any late filed claim amendments must be prima facie allowable if they are to be admitted into proceedings.  Clear basis for the amendments is required, and reasons explaining why the claim amendments do not give rise to further objections will also be needed.  For example, if the claim amendments are being filed in view of prior art, reasons explaining why the claims are clear, do not add subject matter, and are in compliance with the EPC, will be required. Accordingly, claim amendments filed late, for example in response to the summons to oral proceedings, are unlikely to be admitted into the appeal proceedings unless they are prima facie allowable.

Similarly, anything which was not admitted during first instance proceedings will not be admitted into the appeal proceedings unless specific criteria are satisfied.  The criteria are proposed to be defined in a new Article 13(2) of the Rules of Procedure.

It may be possible to accelerate appeal proceedings under the proposed revised Rules of Procedure.

The proposals may state that a written decision will issue within three months of appeal oral proceedings.

(b) Reforming the current appeal fee structure

Currently, the EPO’s fee for filing an appeal is €1880.  This fee is the same whether the appeal is filed during examination proceedings or during opposition proceedings.  The EPO is considering increasing the appeal fee by 20%, which will presumably reduce the number of appeals filed.  The EPO Boards of Appeal are deciding on the matter in December 2017, and we will report further in due course if a fee increase is planned.

The speaker indicted that SMEs may be offered a different (presumably lower) appeal fee.

(c) Improving internal workflows and practices

Currently, all oral proceedings held during an appeal, whether they are ex parte (i.e. appeals filed during examination proceedings) or inter partes (i.e. appeals filed during opposition proceedings), are scheduled to start at ~09:00.  Oral proceedings may take under an hour to be completed or may be concluded late at night.  Typically, ex parte proceedings are shorter than inter parte proceedings.  Thus, the speaker indicated that ex parte appeal proceedings may be scheduled at both 09:00 and ~13:00, to maximise the number of oral proceedings that can be conducted in a day.  This may not necessarily mean that the Board has already reached a decision prior to the oral proceedings.  The proposal to issue a compulsory communication before oral proceedings may naturally lead to shorter, more efficient oral proceedings, as only a limited, specified set of issues are going to be discussed on the day.

2) Right to be heard

David Rogers, a legally qualified member of the Boards of Appeal, discussed various Board of Appeal decisions on the principle of the right to be heard, which is set out in Article 113(1) EPC.  For example, T1098/07 states that generally speaking, a failure by the EPO/Board of Appeal to consider evidence will normally constitute a substantial procedural violation that deprives a party of its right to be heard under Article 113(1) EPC.  However, whether this is a substantial procedural violation depends on the relevance of the evidence.  In T2235/12, the Board decided that a clear violation of the right to be heard occurred when the Examining Division introduced a new prior art document into the proceedings two days before the scheduled oral proceedings, and refused to postpone the oral proceedings.

The speaker stressed that attendance at oral proceedings is vital to ensure that a party exercises its right to be heard.  If a party does not attend oral proceedings in first instance proceedings (e.g. before the Opposition Division), the Opposition Division cannot base their decision on new facts and evidence, but new arguments can be used (see e.g. G4/92).

In R8/15, a decision of the Enlarged Board of Appeal of 18th July 2016 on the right to be heard, the Enlarged Board states that a party’s right to be heard does not mean that the Boards have to tell them about every conceivable reason for a decision.  Accordingly, “…for the purpose of compliance with the right to be heard, reasons may be incomplete, but as long as they allow drawing the conclusion that the Board, in the course of the appeal proceedings, substantively assessed a certain point being part of the procedure and that it found to be relevant, there will be no violation of Article 113(1) EPC”.

3) Transfer of the priority right

Petra Schmitz, a legally qualified member of the Boards of Appeal, summarised some of the key Boards of Appeal case law of the past year.  The issue of a valid transfer of the priority right appeared in a number of recent decisions, including T205/14, T577/11 and T1201/14.  Article 87(1) EPC states that “any person who has duly filed … an application for a patent, or his successor in title, shall enjoy … a right of priority”.  Thus, the applicant has to be the same for the first application and for the subsequent application for which the right of priority is invoked, and the right of priority must have been transferred before the filing of the subsequent application.  If entitlement to priority is challenged, a successor in title has to prove its entitlement to that right, which includes a valid transfer of the right of priority.

Of course, the EPC does not contain any provisions with regard to the transfer of a priority right – the validity of such a transfer is a matter of national law.  The national law which governs the legal relationship between the original applicant and the party to whom the right of priority has been transferred is the relevant national law for determining the validity of such a transfer.

In T577/11, party A (an Italian company) filed an Italian patent application on 6th September 2002, and party B (a Dutch company) filed a PCT application on 6th September 2003 which claimed priority from the Italian patent application.  The PCT application resulted in a granted European patent, and during opposition of the patent, the validity of the priority claim was challenged.  Party B submitted an assignment showing the transfer of the Italian patent application and the priority right from party A to party B.  However, the assignment was dated 9th September 2003, i.e. after the date of filing the PCT application.  The assignment stated “this agreement has a retroactive effect to commence as from January 1, 2003…”.  Party B also stated that the assignment had retroactive effect under Italian law and Dutch law.  However, the Board of Appeal stated that the retroactive effect under Italian law was not proven, and under Dutch law, economic ownership was transferred but not the legal title.  Accordingly, since the transfer of the priority right must occur before the filing of the subsequent application, the Board of Appeal stated that the priority claim was not valid.  As a result, prior art published between 6th September 2002 and 6th September 2003 was now citeable against the European patent.

Accordingly, it is vital to ensure that any assignments or other documents showing how rights are transferred between parties, must be signed before filing any priority-claiming patent applications.

4) Internet disclosures as prior art

Generally speaking, in cases involving disputes over the date of an internet disclosures, Boards of Appeal have either applied a “beyond any reasonable doubt” approach (e.g. T1134/06) or a “balance of probabilities” approach to determine the date of the disclosure.  Petra Schmitz explained that in T545/08, the Board stated that while these approaches clearly differ on a conceptual level, in most cases adhering to one or the other in judicial practice does not need to lead to divergent results if the standard of “balance of probabilities” is applied with some qualification.  Accordingly, if the Examining Division is to raise an objection with respect to an internet disclosure, the burden of proof regarding the date of the disclosure lies with the Examining Division.  A statement explaining why the internet disclosure has a date earlier than the effective date of the patent application may be required, unless it is self-evident why the document was publicly available.  If the objection is properly raised, the burden of proof shifts to the applicant.

If you have any questions on any of the above, please do not hesitate to contact us at mail@tlip.co.uk.

TLIP Ltd
European Patent Attorneys
Cambridge – Leeds – Dublin