As the clock strikes midnight on 31 December 2019, we hope that the new Rules of Procedure of the Boards of Appeal (RPBA) will not be the first thing on our minds. Nevertheless, the beginning of this new decade will mark the entry into force of these new rules, which look set to have a significant impact on appeal proceedings.
When first announced, the new RPBA were presented as part of the plan to increase the efficiency of the Boards without reducing the quality of the decisions issued. Several of the amendments will contribute towards these goals by changing the internal organization of the Boards. However, there is a growing realization that several of the other amendments concerning the appeal procedure as it is experienced by EPO users are unlikely to improve efficiency, and may even be detrimental to overall quality if they are not applied prudently.
In the following, we will discuss the most important changes to the appeal proceedings for EPO users, and will provide our analysis on whether they are likely to help achieve these twin goals of the EPO of increased efficiency while maintaining quality.
1.Remittal of case to the first instance
The Boards of Appeal (BOA) currently have a broad discretion to remit appeal cases to the first instance, and frequently do so where the first instance decision does not address all of the issues necessary to reach a final decision. New Article 11 RPBA aims to reduce the broad discretion of the BOA to remit the case, by stating that remittal is generally not permitted:
The Board shall not remit a case to the department whose decision was appealed for further prosecution, unless special reasons present themselves for doing so. As a rule, fundamental deficiencies which are apparent in the proceedings before that department constitute such special reasons.
The explanatory remarks accompanying this amendment make clear that it seeks to reduce the number of remittals, and that the BOA will not be expected to remit where they can decide the case “without undue burden”. As a result, from 1 January 2020, it will likely become more common for the BOA to reach a final decision without remitting the case.
The shift towards settling cases without remittal means that more cases will be decided based on issues only discussed before the BOA. There is a risk that this change is contrary to the goal that efficiency will not lead to a decrease in the quality of BOA decisions, as having a case discussed by two instances is in our view more likely to lead to identification of the key issues for a sound decision. It is also uncertain whether this shift will reduce the workload of BOA members and thus reduce pendency times: if parties cannot expect a remittal, they may feel encouraged to make detailed submissions on all possible opposition grounds, regardless of whether they have been discussed in the first instance decision. This might be expected to lead to longer submissions on appeal, and more complex appeal proceedings. It also means that the BOA will have to consider more issues afresh, without being able to make use of findings by the first instance.
Thus, while the intention of the new Art. 11 RPBA certainly is laudable and the BOA have perhaps tended to unnecessarily remit too many cases in the past, it would probably be welcomed by the parties if they received case management directions by the BOA very early in the appeal proceedings, informing them which points of contention will be dealt with during the appeal procedure and which points need not be addressed by the parties in view of a planned remittal should they become relevant. Whether this is feasible at all and likely to happen remains to be seen.
2. Allowability of amendments
Perhaps the most significant change to the RPBA are the restrictions of the allowability of amendments to the requests, facts, objections, arguments and evidence making up the appeal case relative to the case on file before the first instance. The present three-stage structure is maintained under the new RPBA, under which it becomes increasingly difficult to amend the case as it proceeds towards the decision of the Board. However, it will be more difficult to amend the appeal case at each stage, and there are new formal requirements for making such amendments.
2.1 Amendments during first stage of appeal
The Grounds of Appeal (GoA) and the response thereto are filed during the first stage of appeal. The present RPBA state that everything presented in the GoA and response thereto is admitted to the appeal proceedings. Although there are some notable exceptions to this, parties currently have some flexibility in bringing new requests, facts, objections, arguments and evidence on appeal. New Articles 12(2) and (4) RPBA work together to make it more difficult to make any changes on appeal relative to the first instance case as they give more discretion to the BOA not to admit anything not directed to the requests, facts, objections, arguments and evidence on which the first instance decision was based.
(2) In view of the primary object of the appeal proceedings to review the decision under appeal in a judicial manner, a party’s appeal case shall be directed to the requests, facts, objections, arguments and evidence on which the decision under appeal was based.
(4) Any part of a party’s appeal case which does not meet the requirements in paragraph 2 is to be regarded as an amendment, unless the party demonstrates that this part was admissibly raised and maintained in the proceedings leading to the decision under appeal. Any such amendment may be admitted only at the discretion of the Board.
The party shall clearly identify each amendment and provide reasons for submitting it in the appeal proceedings. In the case of an amendment to a patent application or patent, the party shall also indicate the basis for the amendment in the application as filed and provide reasons why the amendment overcomes the objections raised.
The Board shall exercise its discretion in view of, inter alia, the complexity of the amendment, the suitability of the amendment to address the issues which led to the decision under appeal, and the need for procedural economy.
The new RPBA therefore require that the parties identify any such amendments to their cases, and that reasons be provided for submitting the amendment on appeal. For example, this means that if an argument is made on appeal which was not made in the first instance, it is necessary both to identify it and to explain why it is only being submitted on appeal.
Once again, it is questionable whether these changes will achieve the goals of the EPO. They require that more of the appeal case is spent on purely formal issues, such as determining whether an argument is indeed new, or whether it was already made during the first instance. This seems likely to increase, and not decrease the workload of the BOA members, as more time will need to be devoted to these new formal issues. The changes also increase the importance of purely formal aspects relative to substantive issues. It is our view that such increased formalism is not in line with maintaining the quality of the decisions: after all, the good reputation of BOA decisions is not based on their strict implementation of the formal aspects of the RPBA, but rather on their well-reasoned conclusions on matters of substantive patentability based on the EPC.
2.2 Amendments during second stage of appeal
After the GoA and response thereto has been filed, the second stage of the appeal begins. This lasts until the notification of a summons or the deadline set by a communication from the Board, which marks the beginning of the third stage discussed below. Under the current RPBA, the Board has discretion not to admit any amendment to the appeal case at this stage, such as new amendments or documents.
In new Article 13(1) RPBA this discretion has been made subject to the justification given for the amendment:
Any amendment to a party’s appeal case after it has filed its grounds of appeal or reply is subject to the party’s justification for its amendment and may be admitted only at the discretion of the Board…
The party shall provide reasons for submitting the amendment at this stage of the appeal proceedings.
The Board shall exercise its discretion in view of, inter alia, the current state of the proceedings, the suitability of the amendment to resolve the issues which were admissibly raised by another party in the appeal proceedings or which were raised by the Board, whether the amendment is detrimental to procedural economy, and, in the case of an amendment to a patent application or patent, whether the party has demonstrated that any such amendment, prima facie, overcomes the issues raised by another party in the appeal proceedings or by the Board and does not give rise to new objections.
The new RPBA expressly places a burden on the proprietor or applicant to demonstrate that any amendment to the text of the patent or application “prima facie” overcomes the existing objections, without giving rise to new objections. This further increases the importance of formal issues in the appeal proceedings, as it increases the amount of reasoning that must accompany any such amendments made. It also puts the proprietor or applicant in the difficult position of having to identify and then refute objections which may not have been raised by another party or the EPO. In our opinion, the burden placed on the patent proprietor should not be made too high – it would be unfair for him to be expected to anticipate and refute any kind of objection a diligent and combative opponent may come up with. For the same reason, the term “without giving rise to new objections” should probably be qualified as “without giving rise to new well-founded objections”.
Are these changes to the RPBA likely to achieve the goals of the EPO of reducing the pendency times without reducing the quality of the decisions issued? Our comments from the first stage apply: they seem likely to increase the workload of BOA members by increasing the length of appeal submissions and importance of formal aspects on appeal. Again, the shift in focus onto formal issues may reduce the quality of decisions due to less attention being paid to substantive issues, unless the Boards apply their discretion with care and a degree of caution.
2.3 Amendments during third stage of appeal
As explained above, the third stage begins with the notification of a summons or a deadline set by a communication from the Board. Under the current RPBA, amending the case at this late stage is difficult, and is generally only permitted where it does not raise issues which cannot be dealt with without adjournment of the oral proceedings.
New Article 13(2) RPBA makes amendments at this stage even more difficult by requiring that such amendments cannot be taken into account unless there are exceptional circumstances:
Any amendment to a party’s appeal case made after the expiry of a period specified by the Board in a communication under Rule 100, paragraph 2, EPC or, where such a communication is not issued, after notification of a summons to oral proceedings shall, in principle, not be taken into account unless there are exceptional circumstances, which have been justified with cogent reasons by the party concerned.
It will therefore be extremely difficult to make amendments at this late stage under the new RPBA. It seems likely that this new extremely strict approach will help with the first goal identified above of reducing the workload of BOA members, as the new RPBA makes it easier for them to ignore material filed at this stage, potentially reducing the complexity of the decisions. It seems less likely to achieve the second goal of maintaining the quality of the decisions. This is because the substantive communication from the BOA about the case is generally issued after the summons and therefore after the beginning of the third stage. These changes therefore make it more difficult for parties to respond effectively to any points highlighted by the BOA. Restricting debate in this way therefore risks decreasing the quality of the final decision, as the parties may not be able to properly respond to the substantive communication from the BOA, if the Boards exercise their discretion not to allow even reasonable amendments at this late stage in a too expansive fashion.
Putting procedural law before substantive law and over-emphasizing the character of the Boards of Appeal as a review instance as well as the need for procedural efficiency may also tend to have an impact on the ongoing discussion of whether the BOA are a proper independent “court” to review Office decisions, as required by the constitutions of several EPO member states .
3. Mandatory substantive communication prior to oral proceedings
The RPBA have also been changed concerning the substantive communication from the Board prior to oral proceedings. At present, it is not necessary for the Board to issue such a communication, and it is not uncommon for oral proceedings to take place without the parties to the appeal having a concrete idea of the key issues to be discussed in the hearing or the likely outcome, even though most Boards have already sent out such communications in the more recent past. New Article 15(1) RPBA requires the Board to issue a communication drawing attention to matters of particular significance for the decision, which may include a preliminary opinion. It therefore seems likely to achieve the first goal of the EPO described above of decreasing the workload of BOA members: appellants are more likely to drop their cases before the hearing if the preliminary opinion makes clear that they have a weak case.
That said, this communication under new Article 15(1) RPBA does not necessarily give the parties an opportunity to respond by amending their cases by e.g. introducing new arguments, because the strict rules in the third stage apply. Therefore, the way that this change to the rules works together with Article 13(2) RPBA means that it is not certain that the quality of the current decisions will be maintained for the reasons discussed above.
4. Impact of other amendments
New Article 1(2) RPBA mandates the publication each year of a list of the cases in which a summons, Rule 100(2) EPC communication, or decision is likely to be issued in the following year. This will be a useful indicator for parties to the appeal when the third stage of the appeal proceedings is likely to begin. Although it is a welcome change, it is not clear that it will necessarily help the EPO reduce the appeal backlog.
New Articles 15(7) and (8) RPBA provide for abridged decisions, which can be issued where the parties explicitly agree, or else where the Board agrees with the first instance decision. This could certainly help to achieve the first goal of the EPO discussed above, i.e. reducing the workload on BOA members, as it could reduce the number of decisions which have to be written. However, such abridged decisions where the parties agree might be seen as disadvantageous to third parties or national courts, who might otherwise have been able to review the reasoning of the BOA.
5. Conclusion
When the new RPBA enter into force next year, the changes discussed above will apply to all cases, including those which are currently pending, with only a few minor exceptions. As described above, we remain sceptical that the changes will achieve the goals set by the EPO of reducing the pendency times without reducing the quality of the decisions issued. Instead, there is a risk that the increased focus on formal issues will actually increase the workload of BOA members due to longer submissions being filed by the parties to the appeal in an attempt to address the various new found requirements discussed above. This may also distract from substantive issues, which risks reducing the quality of decisions. Our expectations are not without basis: research by Anetsberger et al published in EPI Information 2/2015 suggests that the stricter approach to formal issues is correlated with an increase in the number of auxiliary requests filed, the length of BOA decisions, and also the fraction of patents revoked on formal grounds.
When challenged on this point at a conference in 2018 concerning these rule changes, some of the authors of the new RPBA acknowledged that there may be a short period in which more time needs to be devoted to formal issues, until EPO users become familiar with the new strict standards. However, the hope is that once the new rules have been accepted such that parties to appeal do not try to change their case relative to the first instance, then the formal issues will no longer need to be discussed to the same extent and efficiency will increase. Only time will tell whether this will indeed prove to be the case.
So if you are an EPO user, it should be clear what your New Year’s resolution should be: Frontload your case! More emphasis needs to be placed on filing a complete case during the first instance since it will become even more difficult to introduce new requests, facts, objections, arguments and evidence when filing an appeal and also during the appeal proceedings. And when making changes to your case on appeal, it will now be even more important to identify these changes and explain why they are a suitable response to the development of the case. As the transitional provisions are fairly restricted, many of the new rules apply also to pending cases. So in addition to these New Year’s resolutions, perhaps it would not be a bad idea to wish for a time machine for Christmas.
Merry Christmas and Guten Rutsch!
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So, the EPO intends to save money on the few appeal cases, and increases its coats for many first instance applications/oppositions, as those get frontloaded?
Sounds like a solid, smart, and financially sound decision made by external consultants.
Prima facie it sounds like it makes the EPO more efficient, but will lead to a general decrease for the EPO as a whole…
Thank you, Battistelli.
“DG1 knows what is expected from them” – Yes, more products, the rest can’t be quantified and does not count…
I am not convinced that Art 11 NRPBA will lead to longer submissions on appeal, and more complex appeal proceedings. It does not mean at all that the BOA will have to consider more issues afresh, without being able to make use of findings by the first instance.
The best reasons for it not to be like this are the three rings of convergence which have reduced the possibility to bring new matter in appeal, as appeal proceedings are now clearly limited to a judicial review of first instance proceedings, and what has not been discussed in first instance has barely a chance to be admitted and discussed in the appeal proceedings.
The aim of Art 11 is to reduce the likelihood of a “ping-pong” effect between Boards and departments of first instance and to avoid any undue prolongation of the entire proceedings before the EPO. If all issues can be decided without an undue burden a Board should normally not remit the case. The aim is laudable, but is this aim at all achievable is a quite different.
This new provision has apparently been strongly suggested by the external judges who are members of Boards of Appeal Committee. Those being present at the conference of December 5th 2018 will remember the explanation given by the German member of the BOAC: at the German Federal Court (BGH) we do not have technical judges, so that we have to remit, but at the EPO there are technical judges, so that there is no reason to remit. Mr Birss did agree. British representatives were well in favour of this, as it is practised by British Courts. In German proceedings, the notion of late filings is hardly a problem.
Originally remittal should be more or less prohibited, with the only exception of a substantial procedural violation. This has been attenuated in the present wording.
As simple question: how can a decision upon novelty and inventive step be taken in case of added subject-matter, or when the disclosure is manifestly insufficient?
Depending how it is applied Art 11 NRPBA could have quite a direct influence on the way the divisions of first instance exercise their discretion, and certainly not make things more difficult for the Boards.
This amendment might have far reaching consequences going above the already expected increase of auxiliary requests in first instance.
Some questions arise:
Can a division be forced to decide on novelty and/or inventive step of a claim which manifestly offends Art 123(2)? What is then the prior art to take into account?
Shall the division simply ignore the offending amendment and decide on the claim as a whole, i.e. with the offending part, and by taking as effective date, the effective date of the not offending reminder of the claim? Or shall the division merely ignore the offending amendment when deciding upon novelty and inventive step. This is presently not the position of the EBA, cf. G 1/93.
Can a division refuse to admit and examine a late filed request which manifestly offends Art 123(2) but the applicant/proprietor wants to have examined?
Can a division refuse to decide upon novelty and/or inventive step when an invention is not sufficiently disclosed? It seems to me that it is difficult to decide upon novelty and inventive step of claims relating to an insufficiently disclosed invention
Can a division refuse to decide when a claim is manifestly lacking clarity? If one does not know what the substance of the claim is, it seems moot to discuss novelty and/or inventive step.
If there is only a decision on novelty taken on the basis of a piece of prior art under Art 54(2), should the division also decide or even be forced to decide also on inventive step on the basis of the same document taken as closest prior art? The Board of Appeal could be of a different opinion with respect to novelty
When deciding that a claim offends Art 83, Art 123(2) or in examination Art 84, will a division be requested to systematically make an obiter dictum to discuss novelty and/or inventive step?
If an opponent bases grounds of opposition on a public prior use and the opposition division comes to the conclusion that it is not properly supported, can the opposition division be forced to take a decision in which the public prior use is considered properly supported?
From the three criterions when-what-how which one is the most important and has to be correctly supported?
Is an opposition division obliged to hear a witness in every case in which an opponent proposes a witness to corroborate a public prior use?
It is common practice nowadays that the Boards of Appeal remit to the first instance in order finalise grant or maintenance of the patent, and especially to adapt the description.
Can this type of remittal, which is common practice, be considered falling under the criterion of an exceptional circumstance?
Can the parties therefore request from the Boards not to remit in such a situation?
The new rules of case management and the three rings of convergence will be such that the NRPA will have the effect of heavily increasing the workload of the first instance divisions, rather than those of the Boards.
Whether the whole efficiency of the EPO will therefore increase remains to be seen, as only what has been discussed in first instance is susceptible to be reviewed in appeal, cf. Art 12(4) NRPBA. As the Boards have now the discretion to refuse anything they consider not belonging to the appeal procedure, I doubt very much that the Boards will have to consider more issues afresh.
This leads to a further consideration: the discretion of the Boards has been tremendously increased in the NRPBA, but which instance will check whether this discretion has been properly applied? When one looks at the case law of the Enlarged Board under Art 112a, one can have strong doubts that the latter will be wanting to take up this duty. If a party has been heard about the non-admissibility, the right to be heard has been respected for the EBA, and that’s it. But the Boards can decide whether the discretion of the first instance has been correctly applied.
The publication of the list of cases a Board intends to decide in the next year is a nice thought, but since there is no sanction if the cases listed are not dealt with, what good is it for? The UPC complaint before the German Constitutional Court has been on the list of cases for a number of years, and in spite of some announcement, I doubt it will be decided in 2020.
Abridged decisions do not necessarily require the approval of the parties. If the decision is announced at the end of the Oral Proceedings, then the approval of the parties is needed, cf. Art 15(7) NRPBA. If the Board agrees with the decision of first instance, then it is irrelevant whether the decision is announced at the end of the Oral Proceedings. The Board can then decide to deliver an abridged decision, cf. Art 15(8) NRPBA.
There are however some positive aspects in the NRPBA.
When summoning to Oral Proceedings, it will become mandatory for the Boards to send an annex with the summons.
When requesting a change of date of Oral Proceedings, it will be not any longer be necessary to explain why another representative cannot take over, with however a big caveat: when substantive submissions have been made by several representatives of an association this will be taken into account, or in other words, one those will have to turn up. This like in the Guidelines E-III, 7.1.1.
Techrights: FINGERS OFF!!!
In England, only about one in three decisions by the court of first instance are appealed to the court of appeal yet, at the EPO, nearly all losers appeal. Why is that? I would suggest four reasons. First, judges at first instance crave promotion to the court of appeal, and write their decisions accordingly. They address the issues sequentially, finishing off each one with words like “But if I am wrong on this, I shall now go on to consider novelty (or whatever)”. Second, an appeal can succeed only when the judge at first instance went wrong, on the law, in principle. And the judges seldom come anywhere near doing that. Third, you can’t base your appeal on an auxiliary request never considered by the first instance. Fourth, and perhaps most important, the judges in England have all “cut their teeth” as litigators. After 20 years as a patent barrister, plotting with your client (alternately patent owner and opponent) how best to win the case, upon elevation to judge-ship, you are so wise to the wiles of the litigator that no litigator has any chance to pull the wool over your eyes and get you to do what he wants.
Is it any wonder then, that English judges on the BOAC think there is no need for remittals or games of ping-pong.
The EPO knows best how to make oppositions and appeals more efficient. Problem is, the different national backgrounds of top people at the EPO steer the EPO in opposite directions. External consultants lack the necessary deep immersion in prosecution of clients’ cases at the EPO. As litigators and their clients get ever more skilful at manipulating the proceedings, while the EPO stays just as gullible as ever, I see ever more expense and delay in inter Partes proceedings at the EPO despite the best efforts of well-meaning but closeted Rule-writers.
One would think that it is relatively simple to manage complexity simply by awards of costs. He who causes extra and unnecessary procedural costs (like large numbers of auxiliary requests) pays for it, proportionately. Trouble is, that requires a master of procedure, to be able to levy fairly any award of costs high enough to hurt the guilty party, and such masters are simply not available…
The NRPBA make the Boards more “efficient” by shifting burdens onto the 1st instance and the applicant / patentee / opponent. Whether or not this makes sense is debatable. However, to combine this with non-trivial hikes in the appeal fee is just a kick in the teeth for the users of the system.
The only outcome of the new rules that is truly inevitable is an increase in costs for conducting 1st instance proceedings. Thus, recent changes to the managements of, and fees for, appeals at the EPO mean that the users will see VERY significant costs increases for oral proceedings at 1st instance AND for appeals against decisions stemming from those proceedings.
At 1st instance, it is obvious that the NRPBA will have the effect of significantly increasing the time and effort that the parties spend on preparing their case in advance of oral proceedings. Absent any sensible case management at 1st instance (of which there is as yet no sight), a significant increase in the average number of auxiliary requests is inevitable. As a consequence, the average number of days allocated to 1st instance oral proceedings will increase, as will the average number of hours that the parties spend at even single day 1st instance proceedings. For the participants, none of this comes for free.
Whilst I am not aware of any official figures that confirm the above effects, I have already seen evidence of those effects in individual cases. Whilst EP representatives might well be happy with the extra income that those effects will bring, there is no doubt that the increased costs (at least at 1st instance) will make it more difficult for many SMEs to gain proper access to justice. This may not have been the intent of the NRPBA but it will certainly be the result.
I would have hoped for better from BOAC. However, given that their set-up does not allow for any joining of the dots (ie adjusting the fees and procedures for appeals only in coordination with counter-balancing adjustments to the fees and procedures for applications and oppositions), I guess that, in future, we will have no reason to expect anything other than yet more buck-passing and burden-shifting between 1st and 2nd instances in which the only ones to lose out are the users of the system. We can also expect patentees with deep pockets to do their best to take advantage of the cost increases for 1st and 2nd instance proceedings in ways that will help them to fend of oppositions from SMEs to weak but problematic patents.
Especially given the official figures showing significant increases in “non-compliant” grant decisions, is this really the direction of travel that we want to see at the EPO?
How a group of brilliant people come up with an obscure criterium like “admissibly raised” (article 12(4) NRPCR) remains mysterious to me.
Filing a large number of claims has a price, either at filing, cf. R 45(1), or when grant is decided, cf. R 71(4). For a Euro-PCT application entering the regional phase, R 162(1) applies.
Nothing is foreseen should the number of fees exceed 15 during prosecution, be it in examination or in opposition. However every auxiliary request has a cost, and it does not seem adequate that an applicant/proprietor files an inordinate number of auxiliary requests without having to compensate for the extra work.
Should the number of claims filed by an applicant/proprietor during prosecution exceeds 15, he should then be invited to pay an extra search fee for all the claims above 15, i.e. the number of claims of all requests should be totted up and examination of all claims above 15 should only be carried out if a claim fee is paid.
One could foresee that the claims fee could be reimbursed for all claims in requests which did not have to be decided upon, when for instance those requests need not be considered as a higher ranking request is deemed allowable.
Another possibility would be to limit the number of auxiliary requests to a reasonable number. Anything over 10, at a pinch 15, requests does not appear reasonable.
There is old case law saying that the applicant proprietor cannot repeatedly modify its requests until an acceptable set of claims is found, cf. T446/00, T 891/05, T 1617/08 or T 137/09. Those decisions were applicable in appeal at the time, i.e. before the RPBA in the present version were applicable. The applicant/proprietor should know early in the procedure what he wants or does not want.
Another interesting decision is T 221/06 (+ R11/08) where the Board did not agree on the “Pick and mix” approach taken by the proprietor. Here 30 requests had been filed (15 but each with an alternative), with all requests comprising a plurality of independent claims. Some of the lower order requests were not really fall back positions, but more for fishing around what may be patentable.
Even the UPC provides that the number of requests, if conditional, must be reasonable in number in the circumstances of the case, cf. R 30 (1, c) UPC.
“If there is a will there is way”! It is not that I agree on this stance, but this could be a good slogan, not for the UPC, but for amending the Rules of Procedure of the EPC in order to limit the potential flood of auxiliary requests which is to be expected with the new RPBA.
I expect to be heavily criticised, and wanting to limit the possibilities of applicants/proprietors to amend. This is not the case, but if one follows the philosophy of the claim fees, that is more claims = more work, something similar during the procedure imposes itself.
After all, auxiliary requests are not foreseen at all in the EPC, and it is a tolerance, but abuses should be contained.
Techrights: FINGERS OFF!!!
I have a reaction to Attentive’s Dec 20 thoughts on auxiliary requests, namely, that the EPO is, for the time being, the author of the misfortune imposed on all those (Rapporteur, Opponent) who have the burden of addressing the multiplicity of a hundred or so AR’s.
As patent owner defending your property against an Opponent who is throwing at you all of Art 100 (a) (b) and (c) EPC, what else are you supposed to do than put in, early in the proceedings before the OD, an AR to meet ANY eventuality that might arise during the proceedings? Otherwise, you risk having your “fix” dismissed for the reason that “you could have filed it earlier, but didn’t”.
Nearly every patent application is amended during prosecution. The Boards concede that this, as such, is natural, expected, and not to be criticised. Yet EVERY amendment is, these days, going to attract a 100(c) attack and nobody knows, these days, what “fix” if any, the OD will find acceptable. And then there’s the TBA, which will likely disagree with the OD on the matter, find the OD “fix” to be not in compliance with Art 123(2), or (3), and only consider another “fix” if it was present as an AR early in the proceedings.
What is needed is an ever-present pragmatic administration of the inter Partes proceedings that balances fair treatment of the patent owner with fair treatment of the Opponent, to balance their legitimate interests in i) getting commensurate scope of protection with ii) reasonable legal certainty for competitors, while at the same time, iii) expeditiously upholding claims that are not invalid and iv) swiftly despatching invalid claims to the shredder.
All this can be done but, boy, it requires discipline, gravitas, sure-footedness, an implacable and reliable sense of fairness and years of experience at Rapporteur/Chair level, inside the EPO. With the demise of the EPLA, it has just become even more important that the EOPO fulfils its role as premier international patent validity forum in Europe. I wonder, does i) the President ii) the Administrative Council and iii) the EPO’s Management Consultants, have any idea what that means, and what they have to do to get the EPO to that point?