Rules of Procedure of the Boards of Appeal 2020 – a stricter approach for amendments to appeal cases

The EPO’s new Rules of Procedure of the Boards of Appeal (RPBA) came into force on 1 January 2020. Following on from our previous review examining recent case law decisions relating to changes regarding remittance, this briefing highlights two recent cases, T1625/17 and T890/17, which were decided under the new rules.

Amongst other things, the new RPBA codified a stricter approach to the ability of an appealing party to amend their case, which even prior to the new rules had already been developing in the jurisprudence of the Boards of Appeal.

As a very general summary of the new rules, in any appeal the parties must put forward their complete case at the earliest possible opportunity. New evidence and even new arguments may be ruled inadmissible by a Board of Appeal if they could have been filed earlier. Whilst a Board of Appeal does have discretion in this regard, the rules are themselves very strict, and the Boards are using their discretion to apply them strictly, as the two cases summarised below illustrate.

T1625/17

In the decision of the Board of Appeal in T1625/17, a patent proprietor had filed a series of requests for amendment of the claims (so called Auxiliary Requests), but submitted only a cursory argument as to why the amended claims were inventive. The Board of Appeal refused to consider any of these requests for amendment because the notice of appeal did not provide properly reasoned problem and solution arguments for each request.

T890/17

In T890/17, an opponent had raised an objection of lack of novelty based on a prior art document, but had mentioned inventive step only to say that if the claim was found to be novel it would be obvious. The Board found the claim novel, but refused to consider the question of inventive step because the inventive step arguments were deemed not to be properly reasoned and new arguments would not be admitted.

These decisions are not surprising, because they are in line with the new rules and with the jurisprudence which had been developing before the rules came into effect. In practice, parties must make their complete case, including properly substantiated reasoning on all foreseeable issues at the earliest possible opportunity.