Carpmaels engages with EPO consultation on Rules of Procedure of Boards of Appeal
The EPO is proposing revisions to the Rules of Procedure of the Boards of Appeal, but the changes could place undue time pressure on parties

The EPO recently announced draft revisions to its Rules of Procedure of the Boards of Appeal, and opened a three-month public consultation on the proposals. In particular, the stated aim of the revisions was for the EPO to meet more ambitious timeliness targets.

As background, the Boards of Appeal at the EPO have a backlog of around 6000 undecided cases (as of December 2022), and the appeal process generally takes several years to reach a decision (in 10% of decisions, longer than 56 months).

Many parties would welcome and support the EPO’s objective to improve timeliness in appeal proceedings. However, many of the suggested revisions appear likely to impose unreasonable time pressure on parties, with potentially little or no impact on the overall length of EPO appeals. As an established and significant user of EPO appeal proceedings, we commented on three specific rule changes:

    1. The most significant proposal from the EPO was cutting the time period for the respondent’s reply from four months to two months. We commented that: (i) the revision would give appellants an unfair advantage, since an appellant will have four months to file an appeal, while the respondent will have only two months to respond; (ii) the new two-month deadline would cause excessive time pressure for this submission which is crucial since it is the only guaranteed reply for the respondent; and (iii) this change would be unlikely to cut down the overall length of the appeal process, since it should not currently be a rate-determining step.
    2. The EPO proposed that the strictest phase of appeal proceedings – with respect to the ability to file new documents and amendments – should begin only with the issue of the Boards’ preliminary opinion, rather than with the summons. We agreed with this change, as it makes sense for the change to be triggered by a substantive development rather than a procedural one.
    3. The EPO proposed that the “waiting time” between the respondent’s reply and the preliminary opinion should be cut from two months to one month. We disagreed with this change, on the basis that the appellant would feel under time pressure to file any “rejoinder” (further reply) within one month, to avoid it potentially falling under the strictest phase of appeal proceedings. Although the “rejoinder” is not formally recognised within the rules, it is often a key submission, as it is the appellant’s main opportunity to defend any parts of the decision in its favour which the respondent challenges.

We await the outcome of the consultation.