10 July 2019

Will the revised EPO rules improve efficiency?

In this article for Managing Intellectual Property, Mathys & Squire Associate Alex Robinson provides expert commentary on whether the revised rules of procedure at the EPO’s Boards of Appeal are likely to improve efficiency.

Revised rules of procedure at the EPO’s Boards of Appeal and their focus on avoiding late amendments and submissions could see parties ‘front-load’ their arguments at an earlier stage, causing a headache for first instance divisions, lawyers say.

The revised rules were adopted after the latest meeting of the EPO’s oversight body, the Administrative Council (AC), at the end of June.

Among the changes are stricter measures for dealing with submissions made during an appeal and a tweaking of the rules on when cases can be remitted back to the decision of first instance.

The revised rules, intended to combat the EPO’s backlog, will come into force in January next year. Alex Robinson, patent attorney at Mathys & Squire in London, says the tightening up of amendments at the appeal stage could result in a “precautionary front-loading” of requests, amendments and supporting evidence into first instance proceedings.

Article 12 of the revised rules clarifies that any amendment to a party’s appeal case after it has filed its initial grounds of appeal will be “subject to the party’s justification and may be admitted only at the discretion of the board.”

Robinson says parties may take a precautionary approach in light of this and try to account for “every possible permutation of issues in documents filed in first instance proceedings.”

This, he says, would allow parties to keep the opportunity to address every possible point should the need arise during a subsequent appeal. He notes, however, that this could increase the workload of the first instance divisions.

Robinson says the boards were already quite strict on this, but that “by putting it into the black letter of the rules,” the EPO has taken away some of the discretion that the boards theoretically have under the current rules.

The new rules will not apply to cases where the grounds of appeal are filed before the start of 2020, or where a summons to oral proceedings has already been issued by then.

Robinson says this may prompt “a flurry of activity” in the next six months as attorneys whose cases would otherwise be subject to the new rules try and get in as many arguments and amendments as they can now, so as not to fall foul of any stringency in the revised rules.

Patent ping pong

A major reason behind the rule changes – approved during the AC meeting of June 26 to 27 – is to avoid first instance decisions being appealed and patents then entering a ‘ping-pong scenario’ between the first instance and appeal stages, adding to the office’s overall backlog.

Article 11 of the revised rules now says the board shall not remit a case unless ‘special reasons present themselves for doing so’.

Previously this part of the rules stated that the board shall remit a case to the department of first instance if fundamental deficiencies are apparent in the first instance proceedings, ‘unless special reasons present themselves for doing otherwise’.

Robinson notes that if a patentee appeals against a first instance decision, the boards will quite often send a case back, but that the new rules clarify that this will only happen if special procedural reasons are highlighted.

Robinson says: “The backlog is notorious and it’s a laudable objective to try and combat this. But some of the rules could be seen as using a sledgehammer to crack a nut.”

The EPO’s backlog is regularly bemoaned. However, critics have previously told Managing IP that the office’s latest strategic plan shows there is too much focus on trying to grant patents quickly rather than ensuring they are of sufficient quality.

The revised rules, although positive in limiting the scope for reassessment, could muddle things further by overloading first instance divisions with claims that may not be relevant at the time.

This article was first published in Managing Intellectual Property – click here to read the full piece via their website (login required).