Implementation of EPO initiatives call for revised strategies
Jakob Pade Frederiksen, Inspicos
In this article, Jakob Pade Frederiksen of Inspicos reviews the effects of the European Patent Office’s (EPO’s) Early Certainty initiative and the Rules of Procedure of the Boards of Appeal (RPBA) revision to inter partes opposition and appeal proceedings before the EPO, and provides recommendations to parties to safeguard their rights.
Within the framework of the EPO’s so-called Early Certainty initiative, a number of procedural and organisational measures have been launched that will drive parties in opposition proceedings into skipping former habits and developing new ones. Additionally, in consequence of a proposed revision to the Rules of Procedure of the Boards of Appeal (RPBA), which may possibly be adopted in 2018, patentees and opponents alike are well advised to reconsider strategies for first-instance proceedings, as these will be – to a larger extent than before – defining the legal and factual framework of second-instance appeal proceedings.
While these initiatives of the EPO management and the Boards of Appeal will without doubt lead to decisions being reached swiftly, a risk exists that final decisions might be rendered on an insufficient basis, as EPO opposition proceedings are becoming even more frontloaded than hitherto.
This article reviews the effects of both the Early Certainty initiative and the RPBA revision to inter partes opposition and appeal proceedings before the EPO, and provides recommendations to parties to safeguard their rights.
The EPO management has officially communicated that it strives to cut the overall duration of opposition proceedings in straightforward cases to about 15 months. In this respect a streamlined opposition procedure was introduced in mid-2016 with the aim to simplify the procedure and render decisions faster. Extensions of time during the written procedure are now being granted only exceptionally and upon duly substantiated requests. Having regard to article 114(2) EPC, parties are urged to submit all facts, evidence and requests at the beginning of the procedure. In order to allow parties more time to react and prepare for oral proceedings, summons to oral proceedings are, as a general rule, issued with at least six months’ notice. Generally, these initiatives are being implemented in order to ensure that the information needed for the delivery of an informed decision enters the EPO files as early as possible, and to motivate all involved parties to contribute to the rapid conduct of opposition proceedings.
An additional change implemented at the EPO relates to the establishment of specialised opposition teams. Specifically, the EPO aims at assigning opposition cases to examiners who will be dedicating a certain proportion of their time to the examination of oppositions. The aim of this initiative is to accumulate procedural experience with a limited number of examiners in order to harmonise and streamline the conduct of opposition cases further.
At the time of writing, the streamlined opposition procedure has been in existence for about 20 months, thus allowing preliminary conclusions to be drawn on the basis of cases that have been examined under the new regime.
One general trend seems to be that summons to oral proceedings are now issued within just a few months after the proprietor’s initial statement of defence in opposition proceedings. An opponent desiring to file a rejoinder before the issuance of summons to oral proceedings and hence before the opposition division forms and communicates its provisional opinion on the case should thus act immediately upon receipt of the proprietor’s reply to the opposition. Even complex cases involving multiple opponents or difficult issues of evidence, such as in support of a prior public use, are conducted at such high pace. In the author’s experience, most opposition divisions include substantiated and detailed reasons with the provisional opinion ahead of the oral proceedings, even though they are not formally required to do so pursuant to rule 116 EPC. The time limit for making final written submissions prior to the oral proceedings is now typically set two months in advance of the hearing rather than one month as previously.
The ambition to cut the overall duration of opposition proceedings in straightforward cases to about 15 months seems a bit too optimistic, judging on the basis of oppositions completed so far. An average duration of about 18-20 months seems more likely.
The future will reveal the EPO’s way of dealing with a possible discrepancy between rule 116 EPC and section 3 of the EPO’s notice concerning the opposition procedure as from 1 July 2016. While this notice requires the proprietor to file amended documents with his response to the opposition(s), rule 116 EPC allows the proprietor to submit amended claims until the time limit for making written submissions ahead of the oral proceedings. Among these two seemingly contradictory provisions, rule 116 EPC should prevail. However, in future proceedings, oppositions divisions may well exercise their discretionary powers under article 114(2) EPC, pursuant to which facts not submitted in due time may be disregarded, more strictly to the detriment of proprietors who have failed to submit amended documents with their response to the opposition(s). This may particularly be the case in instances where it is clear from the notice(s) of opposition that the validity of the opposed patent is highly doubtful. In such instances, proprietors should file amended claims for at least some of their auxiliary requests with their initial response in order to minimise the risk of not being able to introduce such requests at later stages of the proceedings. It may generally be expected that the opposition divisions’ execution of their discretionary powers to admit or not admit late-filed facts or evidence will largely depend on whether or not the party submitting late-filed documents has acted diligently and in a cooperative manner.
On one procedural aspect, a further EPO initiative could be hoped for. Oral proceedings in first-instance opposition cases have an unfortunate tendency to last excessively long. Even in simple cases, six or eight hours are not uncommon, and hearings in complex cases can rarely be completed within an ordinary working day. An initiative introducing pretrial conferences would be welcomed in order to focus the debate at the oral proceedings on potentially decisive issues.
In addition to the changes to the first-instance opposition procedure outlined above, procedural changes to appeal proceedings have been proposed by the Boards of Appeal, which eventually will impose changes on the way first-instance proceedings are being managed by parties.
More specifically, on 1 February 2018 the Boards of Appeal released a first draft for a revision of its RPBA, ie, the procedural rules governing appeal proceedings. A number of changes therein seem to suggest that the Boards of Appeal, despite their court-like structure and image, strive towards a reform which would seem to re-emphasise the administrative – rather than court-like – nature of EPO appeal proceedings.
In particular, proposed revisions to article 12 RPBA lay down that the primary object of appeal proceedings is to judicially review the decision under appeal, and that a party’s appeal shall be directed to the requests, facts, objections, evidence and even arguments on which the decision under appeal was based. Further proposed amendments suggest that the Boards of Appeal will not consider facts, objections, evidence and requests that were advanced in the first-instance proceedings but not admitted in those proceedings unless the decision not to admit them suffered from a “manifest error in the use of discretion” or unless the circumstances of the appeal justify their admittance.
It will thus be appreciated that the proposed changes to article 12 RPBA render it highly uncertain if claims or evidence presented for the first time on appeal will be admitted into the proceedings at all. Having regard to the increased risk that proprietors and opponents alike face of not having “late-filed” requests or evidence admitted already in the first-instance proceedings, as discussed above, parties have no choice but to present, as early as possible in the first-instance proceedings, a case as complete as possible. For the opponent, this would be at the time of filing the notice of opposition, and for the patent proprietor it would be at the time of filing the response to the opposition.
Whereas the Boards of Appeal seem to be mostly concerned with ensuring that they can concentrate on judicially reviewing the correctness of first-instance decisions and reaching decisions without delay, final appeal decisions risk being rendered on an insufficient basis. In particular, it is an unsettling danger that potentially game-changing requests, facts or evidence will not be admitted into appeal proceedings if not admitted already in the first instance. Though a 50 per cent reduction of the pendency of EPO appeals (currently three to four years) would be welcomed (and possibly necessary in order for the EPO opposition and appeal setup to remain competitive with invalidity proceedings before the UPC), such increased productivity should not be at the cost of quality.
Even if the current proposal for the revised RPBA might not be adapted in its current version, the presently available text presumably sets the future standard for the conduct of appeal proceedings, given the Board’s extensive liberty to define its own procedural rules, be it by virtue of the RPBA or by development of practice through case law.
Other proposed changes to the RPBA revision appear to harmonise and streamline procedural aspects of appeal proceedings to the benefit of users. For example, provisions relating to re-scheduling of oral proceedings in appeal, and conditions for such re-scheduling, are now being formally laid down. Further, the possibility of delivering the reasons for decisions in abridged form has been proposed, subject to the parties’ approval, or in instances where the Board of Appeal agrees entirely with the decision under appeal, including the reasons given in that decision. Finally, a time limit of three months counted from the oral announcement of the decision for communicating the reasons for the decision in writing has been proposed.
The EPO is vigorously carrying its Early Certainty initiative into practice, and parties to opposition and appeal proceedings are well advised to adopt their practices and habits to the new regime of first- and second-instance opposition proceedings alike. In particular, former habits of allowing opposition cases to mature through their initial phases and presenting pivotal submissions, once light has been shed on each case’s decisive core issues, will have to be replaced by practices of managing cases thoroughly and completely from the outset.