In 2020 the EPO revised the rules that govern the procedure at the EPO Boards of Appeal. As we reported here, these new rules of procedure apply stricter standards regarding the admissibility of amendments filed during the appeal proceedings.
We recently attended the EPO’s 2023 Boards of Appeal and Key Decisions Conference where Marcus Müller, chair of one of the EPO Boards of Appeal, provided his comments on how these more stringent rules have been applied over the past few years and also gave some tips to avoid falling foul of them. Five key points that we took from this presentation are set out below.
1. Appeal proceedings are separate to first instance proceedings: anything you want to rely on before the board should explicitly form part of your appeal
Appeals are distinct to the first instance proceedings before e.g. the Examining or Opposition Division at the EPO. This means that any requests, objections and defences that were used in first instance proceedings do not automatically form part of the appeal procedure.
Parties should include all relevant requests, objections and defences explicitly in their first submission in the appeal proceedings. The speaker discussed how general references to submissions made in the first instance proceedings may not be enough; it is always safer to include the complete argument in writing in the appeal.
2. File and substantiate your claim requests with your appeal
Similar to the above point, it is important to both file and substantiate any claim request that you may want to rely on with the appeal or reply to the appeal. A failure to substantiate any claim requests filed on appeal can lead to that claim request not being admitted.
3. “Exceptional” means exceptional – don’t wait to make your appeal submissions
After the summons is issued by the board, the admittance of new amendments becomes even stricter and will only be allowed if “exceptional circumstances” are present. An amendment at this stage may be admitted if it is triggered by exceptional circumstances, for example caused by an entirely new objection raised by the board at a late stage. T 2295/19 was also discussed, where the late deletion of claims that did not run counter to procedural economy was considered an exceptional circumstance. However, examples where exceptional circumstances have been found are few and far between. It was emphasised that parties should ensure that their appeal submissions are made as early and as completely as possible and not to wait until the preliminary opinion from the board to make submissions that could have been made at an earlier stage.
4. New arguments can be made at any time, but the distinction between new arguments and new allegations of fact is not always clear
New arguments can be brought at any time before the board of appeal; it is only new allegations of fact that the board has discretion over their admittance. However, the distinction between arguments and allegations of facts is not always clear. Examples of situations that may be considered a new argument and therefore allowed even if made at a late stage include referring to new case law or interpretation of law (e.g., T 325/16), and the refinement of a defence that remains within the framework of the defence filed with the appeal (e.g., T 247/20).
5. Procedural rules are (almost) as important as substance
Finally, Marcus Müller also talked about the importance of procedural rules in providing fairness to all parties, even if it can sometimes result in a highly relevant amendment not being admitted into proceedings. For example, if it was the case that a highly relevant document was always admitted into proceedings regardless of timing, there is a risk that this would lead to parties always waiting for the last possible moment to surprise the other side with this document, which would be contrary to ensuring fair appeal proceedings.
