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BoA of the EPO expands the transitional provisions regarding the revised Rules of Procedure of the Boards of Appeal (RPBA) 2020 of the EPO

13. Oktober 2020

Transitional provisions – applicability of Article 13(1) RPBA 2020 to cases where the summons to oral proceedings was notified before the entry into force of the RPBA 2020. (Catchword of the Board)

BoA, Decision of January 20, 2020 – T 1386/18; Article 13(1) RPBA 2020

The appellant filed requests with the BoA before the revised RPBA 2020 was into force

The appellant (applicant) lodged an appeal within the prescribed period and in the prescribed form against the decision of the examining division to refuse the European patent application No. 10840300.7.

  • In 2018 the appellant filed his statement of grounds of appeal.
  • In 2019 to prepare the oral proceedings, the BoA communicated its preliminary assessment.
  • In 2019 the appellant filed a response.
  • On January 20, 2020, the oral proceedings took place.

The revised RPBA 2020 is in force from January 1, 2020. Therefore, the written submissions of the appellant mentioned above have been filed before the RPBA 2020 came into force. The oral proceeding was held after the RPBA 2020 came into force.

The BoA notes in its decision the transitional provisions of the RPBA 2020

In its decision, the BoA noted that the RPBA 2020 applies, except for “new” Articles 12(4) to (6) and 13(2) RPBA 2020. Instead of which the “old” Articles 12(4) and 13 RPBA 2007 remain applicable.

This is laid down in the transitional provisions according to Article 25 RPBA 2020. “New” Articles 12(4) to (6) RPBA 2020 refer to the first stage (filing stage) of the appeal, see Fig. 1 below.

“New” Article 12(4) RPBA 2020 defines that a request, fact, objection, argument, and/ or evidence on which the decision under appeal was/were not based is considered as an amendment. Any such amendment may be admitted only at the discretion of the Board. Nevertheless, if the party demonstrates that the request, fact, objection, argument, and evidence was/ were admissibly raised and maintained in the proceedings leading to the decision under appeal, then it is not considered as an amendment. Compared to this, the “old” Article 12(4) RPBA 2007 –here applicable – has less stringent limitations on amendments at the first stage.

“New” Article 13(2) RPBA 2020 refers to the third stage of the appeal, see Fig. 1 above. This Article imposes the most stringent limitations on appeal submissions which are made at an advanced stage of the proceedings. Advanced stage means after the expiry of a period set by the board of appeal in communication under Rule 100(2) EPC or, where no such communication is issued, after notification of a summons to oral proceedings. In contrast, the “old” Article 13 RPBA 2007 – here applicable – has less stringent limitations.

BoA considers “new” Article 13(1) RPBA 2020 applicable

In the present decision, the BoA clarified, that the “new” Article 13(1) RPBA 2020 applies to the present proceedings because this Article is not excluded by the transitional provisions defined in Article 25 RPBA 2020. “New” Article 13(1) RPBA 2020 refers to the second stage of the appeal – see Fig. 1 above – and to amendments before notification of a summons or before the expiry of a time-limit of a communication. “New” Article 13(1) RPBA 2020 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 under Rule 100(2) EPC has expired or before a summons to oral proceedings has been notified. The party must provide reasons as to why the amendment is submitted at this stage of the appeal proceedings. Its admittance is subject to the Board’s discretion alone.

Other Boards of Appeal have different views regarding the application/ interpretation of “new” Article 13(1) RPBA 2020

According to a further recent decision T 0032/16 of a different BoA, when compared, the revised wording in “new” Article 13(1) RPBA 2020 is more detailed in listing out the requirements on the party making an amendment to its appeal case and the criteria to be used by the Board when exercising its discretion. The difference however merely reflects much of the case law developed under “old” Article 13(1) RPBA 2007. Therefore, according to T 0032/16 no contradiction can be found in the wording of “new” Article 13(1) RPBA 2020 compared to “old” Article 13 RPBA 2007.

In a further recent BoA decision, T 0989/15 the Board saw no reason to apply the criteria of “new” Article 13(1) RPBA 2020 in addition.

Conclusion
  • If the first stage took place before RPBA 2020 came into force then the “old” Article 12(4) RPBA 2007 for the first stage applies instead of “new” Articles 12(4) to (6) RPBA 2020. Therefore, for such cases, there are less stringent limitations on amendments at the first stage of the appeal proceeding.
  • Where the summons to oral proceedings or a communication of the Board under Rule 100(2) EPC has been notified before the date of the entry into force (1 January 2020) “old” Article 13 RPBA 2007 instead of “new” Article 13(2) RPBA 2020 for the third stage applies. Hence, for such cases, there are less stringent limitations on amendments at the third stage of the appeal proceeding.
  • Further, the “new” Article 13(1) RPBA 2020 for the second stage applies according to T 1386/18, irrespective of the fact that the summons to oral proceedings was notified before 1 January 2020. But according to T 0032/16 this “new” Article 13(1) RPBA 2020 is not stricter compared to the “old” Article 13(1) RPBA 2007 in combination with the developed case law which is good News.
Reasons for the decision
  1. Revised Rules of Procedure of the Boards of Appeal (RPBA 2020) – Transitional provisions
    The present proceedings are governed by the revised version of the Rules of Procedure which came into force on 1 January 2020 (Articles 24 and 25(1) RPBA 2020), except for Articles 12(4) to (6) and 13(2) RPBA 2020 instead of which Articles 12(4) and 13 RPBA 2007 remain applicable (Article 25(2) and (3) RPBA 2020). The general applicability of the RPBA 2020 to the present proceedings includes Article 13(1) RPBA 2020, irrespective of the fact that the summons to oral proceedings was notified before 1 January 2020 (cf. T 2227/15, T 32/16 and T 634/16, none of them published in the OJ EPO)
  2. […]

Decision T 1386/18: https://www.epo.org/law-practice/case-law-appeals/pdf/t181386eu1.pdf
RPBA 2020: https://www.epo.org/law-practice/case-law-appeals/communications/2019/20190704.html

WINTER BRANDL Partnerschaft mbB, Patent Attorney Michael Schüller

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