EPO to Amend Rules of Procedure of the Boards of Appeal (RBPA), effective January 1, 2020

The attached publication from the EPO EPO Appeal Rule Changes 1JAN2020 includes a chart showing the rule in its current form, the rule showing the proposed changes, and explanatory remarks.

The amendments are mainly directed to case management and provides means to accelerate the appeal proceedings.  Acceleration can be requested by either party, or by the board, and valid exemplary reasons to accelerate are said to be anticipated infringement proceedings or potential licensees, with the rules noting that a mere statement of reasons is not sufficient, and must be supported by documentary evidence.  The grant of requests for acceleration is completely within the Board’s discretion and the Board may refuse such a request even if an acceptable reason is set forth and supported.  Requests for acceleration can be excluded from the file as made available for inspection.

The amended rules further reverse the position of the previous rules on remitting cases – whereas the previous rules stated that the Board should do so in the case of fundamental deficiencies unless “special reasons exist” the new rules state that the Board shall not remit a case unless special reasons exist.  The corresponding explanation states   “If all issues can be decided without an undue burden, a Board should not normally remit the case.” 210

Perhaps the biggest changes occur in Article 12,  “Basis of Appeal Proceedings”, which has been amended to require that “…a party’s appeal case shall be directed to the requests, facts, objections, arguments and evidence on which the decision under appeal was based.”  While the explanation states that this amendment serves to bring the nature and scope of appeal proceeding in line with established case law, the effect of the unamended rule was that parties could wait to submit new requests, arguments and evidence during appeal.  With this change to Article 12, the Boards of Appeal make clear that an appeal is no longer effectively a rehearing of the whole case,

In preparation for the effective date of the amended RBPA, Applicants with applications already on Appeal before the EPO would be well-advised to attempt to enter any and all submissions on which they may wish to rely prior to January 1, 2020.  Although admittance is not guaranteed, admissions after January 1, 2020 will be even harder to get admitted.  For those with cases in opposition, steps should be taken to ensure that all facts, arguments or evidence currently on hand, whether or not deemed necessary at this time, are made of record in case appeal becomes necessary.