3. Dezember 2019
Hans Blöchle, Head of the Global IP unit Inventio AG

Vote for an Effective Interpretation of Revised Rules of Procedure of the EPO Boards (RPBA)

The Boards of Appeal (BoA) of the European Patent Office want to shorten the currently too long proceedings by new formal requirements. The intent is to cut down the number of arguments to be considered. Prima facie this idea sounds logical, but there is another requirement, namely predictability and quality of the decisions, as both emphasized by the presidents of BoA Carl Josefsson and BoAC Roland Grossenbacher.

If this is taken serious, decision making must not be impeded by an artificial limitation of the facts of a case. In the European patent system, quality means sustained yield, i.e. all available documents and arguments shall be considered so that a later appealed national court would reach the same conclusion. In such «downstream» nullity proceedings there is no belated argument, simply because they usually start only after the EPO proceedings.

In Europe we have a unique legal base to determine the patentability of a technical solution, namely two instances at the EPO and thereafter two national instances. This comprehensive process reflects the importance of invention protection for Europe. In view of large investments in scientific and technical solutions it is more than justified to firstly investigate the facts in fair manner as well as exhaustively and secondly to reason the decisions legally correct and with a lasting effect. Here a double fold stitching is better than a simple one. Even if the second double stitching is not demanded – and this would be the preferable case – it is available as a safety net, however on the cost of very long proceedings. Therefore, it is important for patent owning entrepreneurs that the first «stitching» fits and one knows early whether an IPR [intellectual property right] exists or not.

The EPO consequently should make the greatest efforts in the appeal proceedings – what they in fact do currently! This practice should not be changed because of wrong staffing policy in the past, which is the underlying reason for long proceedings. It is not late submissions of the parties, which by the way are already limited by the current rules. A further exclusion of facts is poison in the interest of well sounded decisions for the users.

Further improvements in efficiency can be achieved by articles 1 to 10 and 16 to 24 but not by 12 and 13. For the change of the latter the Boards did not provide any proof that something is gained. To the contrary, it can be expected that parties concentrate on eliminating arguments by querying compliance to formal requirements. Such discussions would further inflate the proceedings without any benefit to the heart of the matter. Furthermore, in fear of being too late with submissions, attorneys will precautionarily file additional pages which the Board has to consider even if not relevant at the end. Such general practice will prolongate all proceedings and must be paid for by the parties.

What is the result of the new articles 12 and 13? Certainly more work for the Boards and most probably a quality degradation of decisions. In the future, judges will be rated every five years and those who terminate more cases are better off. Thus they will use the rules to rid themselves of belated submissions, even if relevant. Such practice should not be accepted neither by applicants nor by the President of the BoA.

To accelerate the proceedings, I propose another measure:

Experience suggests that if the Board evaluates the case in a preliminary statement, as already recommended in Art 15 (1), the finding of justice is expediated by showing the parties up front how the case is understood. Thereafter a short deadline (ending at most) two months before the oral hearing should be set, so that both parties can respond within another month, still early enough before the Board finally prepares the hearing. This procedure of fourfold exchange of written arguments before the decision finding hearing is well proven in German infringement proceedings. An intensive exchange of arguments before the personal meeting of the parties in the final hearing is in any case clarifying and serves the Boards as the understanding of the case is facilitated and the need of discussions in the hearing is reduced.
Currently both parties have a common final deadline one month before the hearing. Such late «reminders» virtually generate late submissions which complicate the work of the Boards.
On a positive note one can expect that the above ideas in the interest of the users of the system are recognized. My original German vote published in the Swiss sic! 7/8 2019, has been shared within the Boards of Appeal.