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The changes in Article 10(1) and (2) are for reasons of clarity/consistency only.
Proposed new paragraphs 3 to 6 of Article 10 replace the Notice from the Vice-President Directorate-General 3 dated 17 March 2008 concerning accelerated processing before the boards of appeal, OJ EPO 2008, 220.
Proposed new paragraph 3 gives the Board the discretionary power to decide on a party's request for acceleration. The party must give objectively verifiable reasons to enable the Board to decide whether to accelerate or not. Typical reasons for acceleration are that infringement proceedings have been brought or are envisaged, or that the decision of potential licensees of the patent in suit hinges on the outcome of the appeal. A mere statement that there is such a situation is not sufficient; rather, in the case of a pending infringement action, for example, the requester should provide concrete indications such as a copy of the writ of summons indicating the case reference and the names of the parties. However, the party no longer needs to show a "legitimate interest" (requirement of the current Notice).
A Board may also decide not to accelerate the appeal proceedings, even if the reason provided by the requester would in principle justify acceleration. For example, a Board may refuse a request for acceleration because of its general workload. Another reason could be that there are already several accelerated cases pending before it: the more such requests are accepted by a Board, the greater the risk that the treatment of non-accelerated cases is further delayed.
Even if there is no request from a party, a Board may accelerate the appeal proceedings of its own motion, see proposed new paragraph 5.
The party requesting acceleration may also apply to the Board to have the request excluded from file inspection (see Article 128(4) EPC, Rule 144(d) EPC and decision of the President of the EPO, Special edition No. 3, OJ EPO 2007, J.3.).
Proposed new paragraph 4 allows a court to request acceleration. The term "court" is intended to include the UPC. A court does not need to provide a specific reason for requesting acceleration. Boards will normally grant a request for acceleration from a court of a Contracting State or the UPC.
Proposed new paragraph 5 codifies the Boards’ inherent power to accelerate their own proceedings. Contrary to the situations regulated by proposed new paragraphs 3 and 4, there is no need in this case to inform the parties. For example, a Board could accelerate the appeal if the case is highly likely to be remitted because of a fundamental deficiency in the proceedings at first instance (Article 11).
Proposed new paragraph 6 lays down the twofold effects of accelerated processing: the case is given priority over other cases, and the Board may adopt a strict framework, subject always to the parties' right to be heard and the principle of fair proceedings. Thus the Board may, for example, give parties directions, set strict time limits for their submissions, and summon them at an early date. If parties do not adhere to this framework, the Board may decide to discontinue the acceleration.
Article 12(1) to (3)
In view of the nature of the appeal proceedings as reflected in proposed new Article 12, paragraph 2 (i.e. judicial review of the impugned decision), new paragraph 1(a) clarifies that these documents are to be taken into account.
According to proposed new paragraph 1(e), if an exchange of information between the party or parties and the Board via video or telephone conference takes place (e.g. for case management or settling minor issues) the Board’s written minutes of the conference are the relevant part to be taken into account.
Proposed new paragraph 2 provides a general definition of the nature and the scope of the appeal proceedings in accordance with the established case law.
Current paragraph 2 is amended and renumbered as paragraph 3.
The term "requests" in this context is not limited to amended texts of patent applications or patents.
The term "objection" in these Rules does not mean a ground of opposition but may be an attack made under a ground of opposition. Hence the Enlarged Board of Appeal's findings in the decision G 9/91 (OJ EPO 1993, 408) and the opinion G 10/91 (OJ EPO 1993, 420) continue to apply. However, the term "objection" does include e.g. what is sometimes referred to by Boards or parties as a "line of attack" or a "line of argument".
In proposed new paragraph 3, the terms "requests" and "objections" are added for reason of consistency with paragraphs 2 and 6.
Article 12(4): Convergent approach – first level
At the outset of the appeal proceedings, reversing the approach of current Article 12, paragraph 4
Proposed new paragraph 4 implements, at the outset of the appeal proceedings, the first level of the convergent approach applicable in these proceedings (for the second and third levels, see new Article 13(1) and (2), respectively). This new paragraph replaces current paragraph 4. Accordingly, not everything filed at the outset of the appeal proceedings is now automatically in the appeal proceedings. The admissibility of the appeal continues to be examined on the basis of all the documents filed by the appellant at this stage, even if they are not admitted under this paragraph for the purpose of examining the merits of the appeal.
Parts of the statement of grounds of appeal or the respondent’s reply which are not directed to facts, etc. on which the decision under appeal was based are considered to be an amendment to the case pursued by that party in the proceedings at first instance. Therefore, the party must clearly identify and justify such an amendment, which is to be regarded as the exception and as such is subject to the Board’s discretion. In the case of a claim amendment, the applicant or patent proprietor must explain why the amended claim does not, for example, raise issues under Article 84 or 123(2) EPC.
The non-exhaustive list of criteria that the Board can apply when exercising its discretion under proposed new paragraph 4 is based on the established case law and includes elements of current Article 13 RPBA.
The term "part of a submission" can also include the complete submission.
Article 12(5) and (6)
Under proposed new paragraph 5, even if the statement of grounds of appeal or the reply contains a part which is not considered to be an amendment within the meaning of proposed new paragraph 4, the Board can nevertheless decide not to admit that part for not meeting the criteria mentioned in proposed new paragraph 3. It may be that a party's submission meets neither the requirements of proposed new paragraph 4 nor those of proposed new paragraph 3.
The term "part of a submission" can also include the complete submission.
Proposed new paragraph 6, first sentence, takes up the section of current paragraph 4 and the established case law which concern the admittance of facts, etc. which were not admitted in the proceedings at first instance. It still allows for their admittance in cases where the way in which the department of first instance exercised its discretion suffered from a manifest error; such a manifest error may be seen to have occurred, for example, if the department of first instance did not exercise its discretion at all, if, when exercising its discretion, it omitted a relevant factor, or if it exercised its discretion in an unreasonable way.
Even if there was no such manifest error, a Board may nevertheless still admit facts, etc. because the circumstances have changed at the appeal stage. For example, where an opposition division correctly exercised its discretion not to admit a document for lack of relevance, a Board may still decide to admit this document because it has now become relevant in view of a claim amendment made at the appeal stage.
Proposed new paragraph 6, second sentence, takes up the section of current paragraph 4 and the established case law which relate to facts, etc. that could and should have been filed during the proceedings at first instance, or were not pursued during those, thereby preventing the department of first instance from taking a decision on them. It still allows for their admittance because the circumstances have changed at the appeal stage
The provisions of proposed new paragraphs 4, 5 and 6 apply in parallel throughout the appeal proceedings (see also proposed new Article 13, paragraph 1, second sentence).
Article 12(7) and (8)
Proposed new paragraph 7, which adapts and replaces current paragraph 5, clarifies that only periods specified by the Board may be extended and thus not the duration of a period which is specified in a legal provision. The wording is aligned with Rules 100(2) and 132(2) EPC and the paragraph applies throughout the appeal proceedings. Extension of the period in proposed new paragraph (1)(c) is expressly excluded to stress equal treatment of the parties with regard to the respective time limits at the outset of the proceedings: four months for filing the statement of grounds of appeal (Article 108 EPC) and four months for the reply.
It is to be noted that a reply to the statement of grounds of appeal filed by the respondent after expiry of said time limit would normally fall under the provisions of Article 13 below.
The provisions of proposed new paragraph 8 have been moved here from current paragraph 3 and amended for reasons of clarity/consistency.
Article 13(1): Convergent approach – second level
Limitation on a party amending its appeal case after the initial stage of the proceedings, but before the period set in a communication has expired and/or the summons to oral proceedings has been notified
Proposed new paragraph 1 implements the second level of the convergent approach applicable in appeal proceedings. It defines the conditions under which a party may amend its appeal case after the initial stage of the proceedings and before the period set in a communication has expired and/or the summons to oral proceedings has been issued (see also proposed new paragraph 2 below). The party must file a reasoned request for admittance of its amendment at this stage of the appeal proceedings. The admittance is subject to the Board’s discretion alone. A non-exhaustive list of criteria for applying that discretion is given. By way of specific reference to proposed new paragraphs 4 to 6 of Article 12, it is clarified that the criteria set out in those provisions also apply to any submissions made at this stage.
The term "prima facie allowable" follows the established case law, i.e. to be prima facie allowable an amendment must overcome all objections raised up to that point and must not give rise to new objections.
Article 13(2): Convergent approach – third level
Ultimate limitation on a party amending its appeal case
Proposed new paragraph 2 implements the third level of the convergent approach applicable in appeal proceedings. It imposes the most stringent limitations on a party wishing to amend its appeal case at an advanced stage of the proceedings, either after expiry of a period set in a communication of the Board or after the summons to oral proceedings has been issued. The basic principle is that amendments to a party’s appeal case are not to be taken into consideration at a later stage. However, a limited exception is provided for: it requires a party to present compelling reasons which justify clearly why the circumstances leading to the amendment are indeed exceptional in the particular appeal ("cogent reasons"). For example, if a party submits that the Board raised an objection for the first time in a communication, it must explain precisely why this objection is new and does not fall under objections previously raised by the Board or a party.
Current paragraph 2 is renumbered as proposed new paragraph 3.
Proposed revised Article 14 now stresses that, if a notice of intervention is filed in appeal proceedings, the extent to which proposed revised Articles 12 and 13 may be applied will fully depend on the circumstances of the individual appeal case.
The intervener may, for example, present a new ground for opposition at the appeal stage (G 1/94, OJ EPO 1994, 787), meaning that the principle of proposed new Article 12, paragraph 2, is no longer pertinent. The case-by-case application of the rules is in line with Rule 79(4) EPC, applicable in appeal proceedings in view of Rule 100(1) EPC.
Proposed revised paragraph 1 provides that a communication is to be issued by the Board as the rule, with its content being dependent on the status of the file. To be noted is that in the communication a time limit (i.e. period) for response by the party/parties concerned can be set.
Proposed new paragraph 2 deals with fixing the date for oral proceedings and the possibility of changing the date. It replaces current paragraph 2 and supersedes the Notice of the Vice-President of Directorate-General 3 of the EPO dated 16 July 2007 concerning oral proceedings before the boards of appeal of the EPO ("Notice"), OJ EPO 2007, Special Edition No. 3, 115.
According to proposed new paragraph 2, it is within the Board's discretion to change the date at the request of a party. The party has to show "serious reasons". Where the party is represented, the reasons must relate to the representative. For the situation in which oral submissions by a party or an accompanying person are relevant for deciding the case, see explanatory remarks to proposed new paragraph 2(c) below.
Proposed new paragraph 2(a) sets out the requirements for the request. If the requirements are not met, the Board may reject the request for this reason alone. In addition, the requester should (but is not obliged to) indicate already in the request dates on which he is not available. This will make it easier for the Board to find a suitable replacement date.
Proposed new paragraph 2(b) sets out a non-exhaustive list of examples of serious reasons which may justify a change of date. These examples have been taken, with slight adaptations, from the Notice: in (i) the proposed new wording clarifies the term "previous notification" as used in the Notice; in (iv) mention is now made of both marriage and the formation of a similar recognised partnership; in (vi) business trips have been added to holidays.
Proposed new paragraph 2(c) sets out a non-exhaustive list of examples of serious reasons which, as a rule, do not justify a change of date. However, it is within the Board's discretion to change the date of oral proceedings in these situations too, for example, if the Board considers that oral submissions by the party or an accompanying person, such as a technical expert, are particularly relevant for deciding the case.
The obligation mentioned in the Notice to state in the request why another representative cannot stand in for the one prevented from attending has been dispensed with.
Proposed new paragraph 7 provides the Board with an option to issue a decision in which the reasons are given in abridged form.
The provision applies to the decision on the appeal, meaning the decision which is taken in order to conclude the appeal proceedings, if it has been announced in the oral proceedings and provided that the parties give their consent.
Following the summary of the facts (Rule 102(f) EPC), the reasons (Rule 102(g) EPC) may consist only of the bare essential findings on which the decision is based.
However, if the Board has been made aware of a legitimate interest in the written decision containing the Board’s full reasoning, the reasons will not be given in abridged form.
In appropriate cases, the reasoning for the decision may already be included in the minutes of the oral proceedings, and then subsequently referred to in the abridged written decision (to meet the requirements of Rule 102 EPC).
Proposed new paragraph 8 provides a further option for the reasons for the decision to be put in abridged form (see explanatory notes to proposed new paragraph 7, above). In contrast to proposed new paragraph 7, in this case the explicit consent of the parties is not required.
However, if in this situation the statement of grounds of appeal contains submissions not presented before the department of first instance, the Board may normally be expected to address these in the reasons for its decision.
Proposed new paragraph 9 regulates the issuing of the "decision on the appeal", meaning the decision which is taken in order to conclude the appeal proceedings. This excludes, for example, decisions which refer a question of law to the Enlarged Board, decisions to take evidence or decisions to postpone oral proceedings.
Proposed new paragraph 9 sets out the general rule that all decisions on the appeal, including any issued in the course of the written proceedings, should be issued in a timely manner.
Proposed new paragraph 9(a) governs the usual case in which the decision on the appeal is announced at the oral proceedings. In such a case, "in a timely manner" for the purposes of proposed new paragraph 9 means that the decision will be issued within three months.
However, if the Board is unable to do so, the parties will be informed of when it will be despatched. Typical cases in this regard are, for example, the sickness of a member, a particularly complex case, or a decision that is foreseen for publication in the EPO Official Journal.
The Board does not have to inform the parties of the reasons why the issuing of its decision is delayed. The Board should however inform the parties of a delay as soon as possible after it becomes aware that the three-month period cannot be met and should normally do so before expiry of that period. Any further delay (that is, if the Board is unable to meet the later date communicated to the parties) would have to be communicated separately.
No sanction is foreseen in the event that the Board does not issue its decision within the relevant period or by the relevant date, but the new provision nevertheless emphasises the ongoing commitment of the Boards to issuing their decisions in good time.
Proposed new paragraph 9(b) regulates the situation in which the Chairman does not announce the decision on the appeal at the oral proceedings, even though the case is essentially ready for decision. In such a case, the Chairman has to indicate when the complete written decision (order and reasons) concluding the appeal proceedings will be sent to the parties.
The maximum period is again three months. If the Board realises after the oral proceedings that the case is not yet ready for a (final) decision, it has to send a communication informing the parties of how the proceedings will be continued (e.g. appointment of further oral proceedings or a referral to the Enlarged Board of Appeal).
Pursuant to proposed Article 24, the revised version of the Rules of Procedure (the revised version) is to enter into force on a date still to be specified, which will depend on when the revised version is put to the Administrative Council for approval.
This date will be at least six months after the date of approval by the Administrative Council, so that parties will have time to familiarise themselves with the new provisions before they become applicable.
Proposed new Article 25 lays down the transitional provisions. The revised version of the Rules of Procedure of the Boards of Appeal will in principle apply to all appeals pending on the date of its entry into force. Therefore, as submissions already on file may be affected, two exceptions are foreseen in order to protect legitimate expectations which parties may have had at the time of filing such earlier submissions.
An exception is made with respect to revised Article 12, paragraphs 4 to 6. These provisions will not apply retrospectively to a statement of grounds of appeal filed before the date of entry into force of the revised version, or to replies thereto filed within the four-month period, irrespective of whether this period expires before, on or after the date of entry into force of the revised version. Any submission which is already on file before the entry into force of the revised version, and which is subsequent to the statement of grounds of appeal or the reply thereto, will however be subject to all the provisions of revised Article 13, paragraph 1, including the analogous application of revised Article 12, paragraphs 4 to 6.
A further exception is made with respect to the strict provision of revised Article 13, paragraph 2. It will only apply to a submission filed after the statement of grounds of appeal or reply thereto if, at the date of entry into force of the revised version, the summons to oral proceedings has not yet been notified, or a period specified in a communication has not yet expired. Otherwise, Article 13 of the Rules of Procedure of the Boards of Appeal in the version valid until the date of the entry into force of the revised version will continue to apply.
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