Boards bite back but need real teeth - Guest Contribution

The EPO is not this GuestKat's natural habitat, and so she was glad to be reminded of the consultation on the new rules of procedures of the Boards of Appeal from Katfriend Gwilym Roberts of Kilburn & Strode.  The online consultation is open until 30 April 2018, and readers are able to participate here.  Over to Gwilym for some suggestions and analysis:

"The proposed new rules of procedure of the Boards of Appeal at the EPO are aimed at streamlining matters but should they go further? 

The IPKitten getting her contribution in

The EPO has been streamlining all kinds of things recently with the “early certainty” programme. Search, examination and latterly opposition have all been subjected to efficiency measures, and whilst the balance with quality cannot be ignored (as the 924-Examiner-letter to the Admin Council shows), there is no question that speeding things up is generally welcomed.

As we all know, the Boards of Appeal are independent and, sadly, slow. However, they are taking action themselves by issuing a consultation on various changes to the rules of procedure that they follow in lieu of the Guidelines. The consultation is open until noon on 30 April 2018 and is likely to attract huge interest from national institutes, practitioners and no doubt EPO Appeal Board members and Examiners. It seems, mostly, to address all the right problems, but in some ways possibly could learn from national law in ensuring that the proposed good practices are adequately enforced. Here are some key proposals:

More clarity over acceleration of appeal proceedings

• Proposed amendments to Article 10 codify and replace a Notice in a 2008 OJ regarding accelerated processing
• The grounds for acceleration must be “objectively verifiable”, and examples given mirror the existing reasons, i.e. where there are infringement proceedings or a licensee decision depends on the outcome of the appeal. Accelerated opposition, however, has been dropped as an example ground for accelerating the appeal of that opposition.
• Perhaps the greatest concern is that this can be dependent on various factors including the workload of the Boards. Whilst this pragmatism is welcomed in one sense, the problem at the moment is that the workload of the Boards makes it impossible to accelerate proceedings, so it’s difficult to see how this is going to change. There is also a question mark over transparency. It would be very useful if we could see what the proceedings pipeline looked like so that we could understand the reasons and prospects for acceleration or non-acceleration.

More clarity over “amendment (of everything)” in the proceedings

• The proposed new rules explicitly remind us of the primary object of appeal proceedings: “To judicially review the decision under appeal”. As a result, a range of provisions underpin this declaration, removing or discouraging opportunities for practitioners to reopen cases altogether, as everybody is wont to do at the appeal stage at the EPO. The definition seems reasonable, and the proposals permitting its implementation largely codify existing Board of Appeal practice; in particular as Article 12 makes very clear, “amendments” are extremely unpopular under the new system, whether of requests, facts, objections, arguments and evidence. This becomes progressively more difficult through the appeal proceedings as discussed for example at Article 13 and 15, and in a further useful codification, the minutes of the first instance proceedings are now explicitly part of the appeal proceedings permitting, presumably, easier recognition of when the case is being “amended”. This has interesting ramifications in that the minutes of the first instance proceedings are going to become extremely important for minimising wrangling between parties, and we can only hope that in future the first instance minutes will be structured so that all of these possible areas of amendment can be easily and consistently recognised. It’s also going to be extremely important for practitioners to review the minutes carefully as soon as they’re issued at first instance going forwards. This clampdown on amendment is one area where the Boards of Appeal could perhaps do with more “teeth”. As we all know, they have the ability to award costs, but as we also all know, they rarely ever do because it’s rather difficult to enforce. Where amendments assist with procedural expediency, great. But elsewhere we may see huge and pointless discussions between parties about what constitutes an “amendment” to the case without any real sanction and this becomes an area of significant concern if we are to maintain procedural expediency for the Boards.
• The Boards may be removing some of the practitioner’s freedoms in playing with their appeal cases, but they give something back as well by replacing the word “may” with “shall” in relation to issuance of a preliminary non-binding opinion. This is essential and really helps all the parties understand what’s coming, especially if it could be signed off by the whole Board so that there is less prospect of surprise at the proceedings by the other two members when they find out what they’re supposed to be thinking. There is also mention in the explanatory remarks accompanying the proposed rule changes of case management – so pivotal in UK proceedings - and this is another area where the Boards could really do with some teeth, to ensure that, at every stage of the proceedings, they have control over timings, amendments and general behaviour of the parties, underpinned by a stronger costs regime. This would undoubtedly focus the minds of the parties to the proceedings and contribute to an enhanced procedure.

Postponement

• A minor but potentially important detail is introduced in relation to the reasons which can be presented for postponing Oral Proceedings – a notable omission currently from the proposed list is religious holidays and it would seem to make sense for the Boards simply to reiterate the list of reasons already in the Guidelines for first instance Oral Proceedings.

Transitional Provisions

• Finally, in relation to transitional provisions, whilst there will be some leeway for practitioners to transition to the stricter rules of procedure, it does not look like the Boards currently go far enough and in particular don’t recognise that behaviour right now at first instance could be highly relevant in a future appeal under the new rules of procedure. A simple example would be practitioners not advancing every possible request at first instance (because there is currently a little bit more leeway in introducing them later in appeal, for example) – if this is not taken into account then normal current practice could be penalised unfairly.

We need to see greater speed from the appeal procedure at the EPO, even more so if it is to be a worthy competitor to any UPC that comes into force. Treating appeals a little more classically is certainly a reasonable step in the right direction and largely codifies existing case law, but there seems to be a lot still to be learnt from “tougher” jurisdictions such as the UK to bring parties a little more to heel. Consultation is welcomed, as EPO consultations always are, and everyone should have a good look at the proposed changes and work out how best to feed back if they want to make sure that they get the appeal structure they want rather than the one they deserve!"

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