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1. Legal foundations 

On January 1, 2020, the new Rules of Procedure of the Boards of Appeal (RPBA 2020) became effective. They particularly rendered the rules on late submissions more stringent as compared to those of the RPBA 2007. What still applies is that the grounds of appeal and the corresponding reply – i.e. the first brief of each party involved in the appeal proceedings – have to contain the complete appeal case (see Art. 12(2) RPBA 2007 and/or Art. 12 (3) RPBA 2020).

The earlier version of the Rules of Procedure (RPBA 2007), more specifically Art. 12(4) thereof, did admittedly grant the Boards of Appeal the discretion to not admit facts, evidence or requests which could already have been submitted at first instance. However, the general principle was that the entire submission of the grounds of appeal and/or the corresponding response had to be taken into consideration. Now, the RPBA 2020 basically takes the opposite approach: Revised Art. 12 (2) in conjunction with Art. 12 (4) states that a submission which is not directed to issues on which the decision under appeal was based is to be deemed an amendment. Generally, such amendments are not to be taken into account if the Board of Appeal does not admit them exercising its discretion pursuant to Art. 12(4) RPBA 2020. Additionally, not only new facts, evidence or requests may be excluded from admittance now, but also new objections and mere arguments which Art. 12(2) RPBA 2020 explicitly lists.

Similarly, the Rules of Procedure have become more stringent … Read the full article here.

2. Case law – the decisions

As the decisions of the Boards of Appeal presented in this IP Report show, the amendments to Art. 13(1) and (2) RPBA 2020 are strictly applied.

a. In the two decisions T 752 /16 and T 995/18, the Boards of Appeal did not admit amended auxiliary requests which had been submitted after the summons, even though they were directed towards objections by the Board of Appeal which were first raised by the latter. As a reason, each Board of Appeal stated that its objections were based on objections which the opponent had already made at an earlier stage:

In appeal case T 752/16, the Board of Appeal gave a preliminary opinion which was favorable for the patent proprietor in a first communication. This preliminary opinion was revised in a second communication. The auxiliary requests submitted after the summons to the oral hearings, but in response to the second communication, were rejected as being late (Art. 13(2) RPBA 2020). The Board of Appeal stated that an amendment to the preliminary opinion had to be expected at any stage before the decision is pronounced. The Board continued that … Read the full article here.

3. Recommendations

What results from last year’s decision-taking practice by the Boards of Appeal regarding Art. 13(1) and (2) RPBA 2020 is that any attacks and defenses should be submitted as early as possible, i.e. as soon as the corresponding line of defense and/or attack, respectively, becomes present in the proceedings.

Any amendment to the appeal case made only in reaction to … Read the full article here.

Prospects

In view of amended Art. 12 RPBA 2020, where a similarly stringent application as in case of amended Art. 13(1) and (2) RPBA 2020 is to be expected, we recommend making the entire submission, i.e. submitting all requests, facts, objections, arguments and evidence already at first instance, prior to the deadline stipulated in the communication pursuant to Rule 116(1) EPC.

This particularly applies with respect to … Read the full article here.