On 1 January 2020 the new Rules of Procedure of the Boards of Appeal (“RPBA”) came into force, affecting substantially all⁽¹⁾ appeals pending on, or filed after 1 January 2020. The revised rules have three main aims: i) to increase the efficiency of the appeals procedure; ii) to improve predictability for parties; and iii) to harmonise the approach of the Boards (particularly in regard to the admissibility of amendments to a party’s case).

The changes to the RPBA clarify that the main objective of appeal proceedings is to review the decision under appeal. The revised rules therefore significantly limit the changes to a case that can be made during the appeal. Importantly, under Article 12(2) RPBA, “a party’s appeal case shall be directed to the requests, facts, objections, arguments and evidence on which the decision under appeal was based”. This is in contrast to the previous approach of many patent attorneys who expected that an appeal automatically includes all earlier submissions. Of particular importance is that no completely new lines of arguments can be entered at the appeal stage. Arguments can be a development of arguments made in the first instance case, but there should be no change in the case itself.

Articles 12 and 13 of the revised RPBA set out the new “convergent approach” which has the aim of increasing efficiency by significantly limiting the scope of amendments that can be entered into appeal proceedings after the grounds of appeal and reply have been filed. If amendments are requested after this time, the onus to justify the amendment lies with the party concerned, and the absolute discretion to admit or deny the amendment lies with the Board. When deciding the admissibility of the amendment, the Board will consider the state of the proceedings, whether the amendment resolves outstanding issues, the need for procedural economy, and whether the proposed amendment overcomes the issues raised (and does not give rise to any further issues). Of particular significance is that amendments will not be admitted after the summons to the hearing has been issued unless there are exceptional circumstances. Quite what these exceptional circumstances are remains to be seen but readers would be wise to consider that amendments requested after the summons has been issued are likely to be refused.

In summary, the ability of a party to amend their case during appeal has been significantly reduced as a result of the new RPBA. It will therefore be of prime importance to “front load” first instance cases by making any and all arguments as completely as possible, and by filing all facts, evidence, and requests before the end of the first instance decision if they are to be taken into consideration during appeal.

8 July 2020

⁽¹⁾ The revised RPBA do not apply to cases where a summons to oral proceedings or a communication under Rule 100(2) EPC has been issued before 1 January 2020. In addition, if the statement of grounds was filed before 1 January 2020, the limitations on the admissibility of new requests, facts, evidence, and objections (Article 12(4) to (6)) will not apply.