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EPO Boards of Appeal’s rules of procedure in chemical cases

Posted: June 24, 2022

Introduction

The EPO Boards of Appeal amended their rules of procedure as from 1 January 2020. The EPO’s stated aims of the revisions to the Rules of Procedure of the Boards of Appeal (“RPBA 2020”) was to increase efficiency by reducing the number of issues to be treated on appeal, increasing predictability for the parties and harmonisation across the boards.

Now that the RPBA 2020 have had more than two years to bed in, appeal decisions are starting to be published making use of the new provisions. In this article we take a brief look at how the Boards of Appeal in the chemistry sector have been implementing the new rules of procedure, in particular regarding amendment of the parties’ case at the appeal level and the filing of new objections and evidence on appeal. When are amendments and new materials deemed late filed, and when are they not admitted into proceedings?

Summary of the changes

We focus here on just some of the changes that were made in the RPBA 2020 which are relevant to “late filed amendments”:

Article 12(1) states, in essence, that appeal proceedings shall be based on the materials from first instance as well as the notice and grounds of appeal and written reply if there is a further party (e.g. patent proprietor and opponent). A party’s appeal case shall be directed to requests, facts, objections, arguments and evidence on which the decision under appeal was based (Article 12(2)). Further, the statement of grounds of appeal must contain the party’s complete appeal case (Article 12(3)).

According to Article 12(4) any part of the party’s appeal case which is not based on the materials from first instance shall be considered an amendment; such amendment has to be justified by reasons and is subject to the Board’s discretion for admissibility.

The Board has discretion not to admit any part of a submission at appeal level which was not contained in the grounds of appeal and reply (Article 12(5)).

Article 12(6) insists that the Board shall not admit requests, facts, objections or evidence which should have been submitted at first instance unless circumstances of the appeal case justify admittance.

Article 13(1) states that any amendment to a party’s appeal case after filing the grounds of appeal or reply is subject to the party’s justification and may be admitted only at the discretion of the Board. The party has to provide reasons for submitting the amendment at a late stage and the Board will exercise its discretion to admit amendments. Moreover, later in the proceedings if the Board has already issued a preliminary opinion or summons to oral proceedings, any amendment shall, in principle, not be taken into account unless there are exceptional circumstances which have been justified with cogent reasons (Article 13(2)).

Recent decisions in the field of chemistry

Decision T0550/18 concerned stable formulations of insulinotropic peptides. The opposition division maintained the patent in amended form with the claims of the second auxiliary request filed during opposition proceedings. At the appeal level the opponent (respondent) submitted for the first time an attack under Article 123(2) EPC (added subject matter) based on the feature “insulinotropic derivative of GLP-1(7-37)”. They argued that the feature was disclosed only in a list of three alternatives on page 8, lines 28 and 29 of the application as filed. By selecting only one of the alternatives in the claim, its subject-matter was allegedly defined by a combination of features which was not disclosed in the application as filed i.e. a new combination of features.

Because this attack was presented for the first time at oral proceedings it constituted an amendment to the respondent’s case as referred to in Article 13(2) RPBA 2020. It could only be taken into account in exceptional circumstances, justified with cogent reasons.

The respondent opponent submitted that the passage of the application (page 8, lines 28 and 29) was mentioned in the decision under appeal and is therefore part of the appeal proceedings i.e. did not constitute a change to their case. However, in the decision the opposition division had not referred to that passage of the description to indicate basis for the objected feature but for a different reason. The Board concluded that the new attack was an amendment to the respondent’s case and was not justified by cogent reasons. Therefore, the attack based on page 8 of the application as filed was not admitted.

Decision T1330/20 concerned methods of using microneedle vaccine formulations to elicit protective immunity against rabies virus in animals. In this case, the examining division refused a European patent application and the applicant appealed. With the statement of grounds of appeal the appellant submitted a new main request and new auxiliary requests 1-4. In accordance with Article 12(4) RPBA 2020 these must be considered an amendment to the appellant’s case because they were not part of the first instance proceedings, and therefore may only be admitted at the discretion of the Board. Under Article 12(6) RPBA 2020 the Board must not admit requests which should have been submitted at first instance proceedings unless the circumstances of the appeal justify their admittance.

In fact the appellant had already filed the same main request during examination proceedings but had replaced it, therefore effectively withdrawing it. The appellant’s argument that the previous main request was maintained because it had been submitted at some point during examination proceedings was not persuasive to the Board.

The appellant also did not provide any reasons for submitting auxiliary claim sets 1-4 only at the appeal proceedings and not during examination proceedings. A negative decision by the examining division does not necessarily provide justification for submitting new claim sets only at the appeal stage. Therefore, the Board of Appeal did not admit the main request or auxiliary requests 1-4.

The Board of Appeal was only willing to discuss auxiliary requests 5 and 6 which had already been filed during examination proceedings. However, the Board decided that these requests did not involve an inventive step and the appeal was dismissed, with revocation of the patent.

Conclusions and practice

The summary of changes to the rules of procedure shows the level of strictness that the Boards should apply to late filed submissions, requests, claim amendments and evidence. In both decisions discussed in this article, the Boards refused to entertain new matters on appeal. This matches our own practical experience of appeal proceedings at the EPO – it is more difficult than ever to have materials admitted which were not filed (and could have been filed) at first instance opposition or examination proceedings, or in the first stage of the appeal proceedings.

It is therefore important, as far as possible, to ensure that everything that might be relied upon in (potential) appeal should be filed at first instance. For example, if an examining division intends to refuse an application and issues a summons to attend oral proceedings, auxiliary request claim sets responding to all objections should be filed. Otherwise, they are unlikely to be admitted by the Boards, who may well decide that these claims should have been filed at first instance. Likewise, all objections, as opponent, must be included in the grounds of appeal or reply at the start of the appeal procedure.

Finally, it is best practice to avoid withdrawing requests at first instance because the Boards will resist re-introducing them on appeal. These rules apply to all fields of technology, but our feeling is that the Boards are particularly strict about late filed materials on appeal, in the field of chemistry.