T1687/17 is an early example of what an abridged decision under the new Rules of Procedure of the Boards of Appeal (RPBA) looks like: very short and published only a week after the oral proceedings, thereby also being timely in accordance with Art. 15(9) RPBA.

The current RPBA contain new provisions allowing the Boards to issue written decisions in abridged form, either with consent of the parties for decisions given at oral proceedings or – if agreeing with the first instance decision – without needing consent of the parties.  New Art 15(9) RPBA also introduces the somewhat vague requirement for decisions to be issued “in a timely manner”.  Readers will recall that appeal decisions can sometimes take months to be issued in writing following oral proceedings, so it is good to have an early example of just how quickly decisions might be issued with the abridged format.

The decision notes that the parties confirmed at the hearing that no new arguments were raised during the appeal proceedings – providing a clear reasoning for the abridged form of the decision.  The reasoning of the Board merely refers to passages from the first instance decision and even the minutes of the decision are rather short, referring again to the facts put forward in the appealed decision.

Parties to appeal, especially appellants, should take note that the Boards are ready to use the new RPBA to provide speedy decisions on appeals and will not hesitate to call out repetitive argumentation by representatives.  In this case, the Board made use of Art. 15(8) RPBA, thereby not needing explicit consent of the parties to abridge the decision.  Nevertheless, in case the Board seeks consent of parties (Art. 15(7) RPBA) to make an abridged decision then a legitimate reason to have an unabridged decision should ideally be at the ready.  Also for third parties who may be watching in the wings, a legitimate reason can be indicated to try and force an unabridged decision on an appeal case, although it is not apparent at what stage such indication should be filed to avoid an abridged version.

The subtext of this decision may also be noted: the purpose of an EPO appeal is not to have a second go at arguing the same case.  Appellants must show why the first instance decision was wrong, which is not the same as why the patent is still valid or invalid according to the appellant.  Even after hearing arguments at oral proceedings, the Board in T1687/17 still found there to be no new position taken by the parties compared to the first instance procedure and therefore dismissed the appeal.


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5 comments

  1. There was T 1684/18, and now this … It feels like Board 3.2.1 is going rogue to boost its production. In the present case, one is surprised: if the appellant had not submitted new arguments (at least arguments as to why the first instance was wrong), the appeal should have been declared inadmissible. And if they did, the Board should have explained why it did not share this view. Sloppy work, to say the least.

    Frankly, if the Boards of Appeal were the Titanic, this particular Board would be the engine room. Full speed ahead! We know how it ended…

  2. I note that some Boards are having problems implementing the new procedural rules, in particular Article 15(1).

  3. @ guy

    I find your language derogatory and misplaced. Have you seen some requests refused or oppositions rejected by Board 3.2.01, for you to be so vindictive?

    An abridged decision does not mean that there has been no discussion in writing or before the Board during an oral proceeding. The new (and the old) rules of procedure do not replace the right to be heard, cf. Art 113(1). But the procedure is streamlined.

    On the one hand there are complaints about the long time it takes for an appeal to be decided, but now, when they are quick, it is also not right. Some people are never satisfied.

    For a long time now, it has been clear that an appeal is not the continuation of opposition. The role of the Boards is to check whether the decision of first instance was correct and not to continue arguing a further time.

    T 1684/18 is perfectly correct. If you did not prepare well your case before the OD, you will not be able to compensate your shortcomings in appeal. At the EPO you are not at the BPatG or at the BGH.

    Have you ever heard of T 1914/12 and T 1359/14? Arguments, or lines of argumentation, are not late if they are based on facts which are already in the procedure. You are allowed to amplify your argumentation, but not to bring a new one. T 1621/09 was much more restrictive in this respect.

    @ Light Blue

    Some Boards were against issuing an annex to the summons. This goes back to G 6/95, OJ 1996, 649, about the interpretation of Rule 71a(1) EPC 1973. If the summons were issued before the 01.01.2020, I take it that there are under no obligation to resend a summons with an annex. Patience, or examples would help understanding your point.

    It will however have to be seen if the annex to the summons will be more than just announcing the points to be discussed. On the other hand an annex to the summons will not be, unless provided for, an invitation to file further submissions. A vast majority of the boards already provided a comprehensive annex to the summons. The problem is thus concentrated on some boards.

  4. Given the criteria set up for the renomination of members of the boards, one must expect implementation of the new procedural rules by individual boards to be largely dependent on whether a majority of their members will reach retirement age before the end of their current term or whether they still need to be renominated.

  5. The problem of re-appointment is directly linked with the lack of independence of the Boards. This is the more so since the condition for re-appointment are not public.

    In view of the increasing backlog at the Boards, the new RP were inevitable.They might increase the efficiency of the boards, but certainly not those of the EPO as a whole, as the number of of auxiliary requests in first instance will be proliferating.

    We all know who we have to thank for this intrusion into separation of powers. It is high time that an end is made to this situation. A conference as foreseen in Art 4a EPC 2000 is overdue. It was not worth adding this provision to the EPC if it is to be ignored, not to say counteracted by those at the helm of the EPO. They should be the guardians of the EPC, not their undertakers.

    Techrights and zoobab: FINGERS OFF! Directly or indirectly. You know exactly what I mean. Respect other people’s IP.

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