This chapter discusses the European Patent Office's recent introduction of a streamlined opposition procedure and the general trend of the Boards of Appeal towards restricting the appeal process to being a review of the decision at issue rather than an opportunity to present a fresh case.

The European Patent Office provides an opportunity to file a central opposition against the grant of a European patent within an opposition period of nine months. Opposition proceedings are predominantly written proceedings, but typically will conclude with oral proceedings before an Opposition Division of three members in either Munich, The Hague or, occasionally, Berlin. Decisions of the Opposition Divisions may be appealed to the Boards of Appeal. The Boards of Appeal of the European Patent Office is an autonomous body, consisting of 28 boards that each deal with different subject-matter areas. The Boards of Appeal can exercise any power within the competence of the Opposition Division, or remit the case to the Opposition Division for further prosecution.

With the exception of Poland and Spain, the Member States of the European Union have reached an agreement to create a Unitary Patent and associated Unified Patent Court in which patents granted by the European Patent Office will be litigated. Although for both legal and political reasons, the fate of these agreements is currently uncertain, it is expected that the Unitary Patent and Unified Patent Court will go ahead in some form.

The relationship between European Patent Office opposition and appeal proceedings, and the proposed Unified Patent Court is discussed in other chapters in this Law Review.

The opposition procedure at the European Patent Office is extensively used. According to statistics published by the European Patent Office, in 2017, 4 per cent of granted patents were opposed, with 31 per cent of decisions revoking the opposed patent in its entirety and 42 per cent leading to an amendment. With such a large number of oppositions being filed, there has been a growing backlog of pending cases. Typically, an average length of time for a straightforward case is in the region of 26 months. Although it is likely to be a more expensive procedure, the advent of the Unified Patent Court could potentially offer a faster route to revocation of a European patent.

However, in July 2016, the European Patent Office streamlined the procedure for oppositions, along with a commitment to reduce the duration of the procedure from the expiry of the opposition period until the issuance of a decision by the Opposition Division. The new procedure is intended to reduce the duration of a straightforward case to a maximum of 15 months. The streamlining of the opposition procedure may, therefore, help to avoid the proposed Unified Patent Court negatively impacting the number of oppositions filed, and will reduce the likelihood of revocation proceedings being run in parallel at both the European Patent Office and the Unified Patent Court.

Recent months have seen changes not only to the opposition procedure, but also to the appeals process. In an effort to enhance the independence of the Boards of Appeal, in June 2016, the Implementing Regulations of the European Patent Convention were amended to allow the Boards of Appeal to be organised as a separate unit within the European Patent Office with its own president who is answerable only to the Administrative Council, the body that oversees the work of the European Patent Office. This has been accompanied by the relocation of the Boards of Appeal to Haar in October 2017. The first president of the Boards of Appeal, Carl Josefsson, assumed the role in March 2017. It is possible that the change in structure of the Boards of Appeal could lead to significant changes to the way the Boards operate. In the first annual report of the Boards of Appeal following this organisational change, the new President has indicated his intention to increase the productivity of the Boards such that within five years 90 per cent of cases will be settled within 30 months. In 2017, the average length of appeal proceedings was 38 months and so this target will be quite a challenge. As with prosecution and opposition cases before the Examining and Opposition Divisions of the European Patent Office, the Boards of Appeal have a significant and growing backlog of cases, with the number of appeals pending for more than two years increasing from 3,979 in 2016 to 4,178 in 2017. The two mechanisms intended to implement the increase in productivity are, firstly, an increase in resources and, secondly, 'efficiency measures'. The increase in resources is reported to only be for a limited period of time. Therefore, although an intention to increase manpower has been mentioned, it is not clear whether this will lead to a long-term increase in the number of members of the Boards of Appeal. One of the efficiency measures will be the revision of the Rules of Procedure of the Boards of Appeal.

The Rules of Procedure of the Boards of Appeal define the appeal process. For an opposition case, this typically involves two rounds of written correspondence followed by oral proceedings in Munich. In the first written round, each appealing party files its grounds of appeal: a statement indicating the reasons for setting aside the appealed decision along with any facts and evidence to be relied upon. A patentee may accompany its grounds of appeal with one or more requests, each request including an alternative set of claims for consideration in the proceedings. In the second written round, each party files a reply to the other side's grounds of appeal. The grounds of appeal, together with the reply, are intended to form each party's complete case on appeal. However, it is often the case that further submissions will be made. This may be the case where one party's reply raises a new issue, or when further evidence or prior art becomes available at a later stage. Any such further submissions may be considered an amendment to the party's case.

The provisions of the Rules of Procedure of the Boards of Appeal that most greatly influence practice are those that determine admissibility. Firstly, the Boards can hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the opposition proceedings. Second, any amendment to a party's case after it has filed its grounds of appeal or reply may be admitted, or not, at the Board's discretion.

These two powers give the Boards great flexibility in deciding how to deal with each case. The case law has developed numerous threads that explore the various issues that may be considered by the Board when exercising its discretion. These include:

    1. the prima facie relevance of the new evidence or request;
    2. whether the admission will raise issues not previously considered;
    3. the age of the patent;
    4. the reasons why the new evidence or request was not filed earlier; and
    5. in the case of new prior art, whether it is more relevant than earlier filed art.

Because the Board's powers are entirely discretionary and the issues relating to discretion are numerous, the Boards of Appeal are quite varied in how discretion is exercised. There is, however, a notable and significant recent trend across most Boards towards an application of the discretionary powers in a more restrictive manner, so as to limit the ability to which the parties may develop their case on appeal.

For instance, it is becoming increasingly likely that parties will be punished for treating the appeal process as a continuation of the opposition proceedings, rather than a review of the decision of the Opposition Division. While it is correct that the purpose of an appeal was always intended to be a review of the reasons for the decisions, for many years the practice followed by the parties and by the Boards was more flexible. As a result of the increasingly strict application of discretion in respect of admissibility, the outcome of an increasing number of cases is being decided on procedural grounds rather than for substantive reasons.

One recent case, T1903/13, is illustrative of how far the Boards might take that principal. The respondent (patentee) filed a number of auxiliary requests on appeal that the Boards accepted were essentially already filed during opposition proceedings. However, the requests were not considered by the Opposition Division because a higher-ranking request was allowed. These requests were not convergent with the claims allowed by the Opposition Division, meaning that they were not sequentially narrowed versions of the allowed claims. The Boards, therefore, refused to take the requests into account, because to consider those requests would be to consider inventive concepts that were not the subject of the appeal.

In the past, parties have often used the written opinion of the Boards, where issued, to guide the filing of further requests or to replace requests. However, it is now very clear that parties should not allow a point to be unanswered with the intention of awaiting any written opinion before dealing with the issue. In T1459/11, the Boards stressed that the written opinion is intended to prepare the case for oral proceedings rather than to be an invitation for the parties to make further submissions.

In decision T875/14, the respondent (patentee) filed a request in reply to the Boards' views on novelty and inventive step expressed in the written opinion. The Boards noted that the objections were not raised ex officio, but had already been presented in the appellant's (opponent's) grounds for appeal. Thus, the Boards did not accept that the request filed by the respondent (patentee) was in response to an unexpected development, and so the request was not admitted.

In the event that a new request is responsive to an unexpected development, it is necessary for the request to deal with all outstanding issues (Case Law of the Boards of Appeal, 8th Edition, IV, E, 4.4.1). In T416/12, the Boards indicated that it should be possible to establish this with little or no investigative effort on its part.

The restriction of the scope of appeals is not only applicable to patentees. The Boards apply similar approaches to the admission of documents filed late by opponents as for requests filed late by patentees. For example, in T2384/13, the appellant (opponent) was prevented from filing a new prior art document on appeal when it was apparent during opposition proceedings that the objections were not considered convincing, such that the appellant should have filed the document earlier. In T340/12, the Boards considered that if a prior art document is clearly very relevant, then this should take precedence over the procedural aspects of its late filing. However, this is not always the case. In T2471/13, the Boards refused to admit a prior art document, irrespective of its relevance, owing to the decision of the appellant (opponent) to withhold it during opposition proceedings.

It is also becoming more difficult to raise new attacks, even when the documents used are already in proceedings. In T875/14, the appellant (opponent) attempted to raise a new objection during the oral proceedings that for the first time considered inventive step when starting from a prior art document different from that used as the closest prior art in earlier filed attacks. Although that document was already present in the proceedings, and was considered to deprive the granted claims of novelty, the argument itself constituted an amendment of the appellant's case. The argument was not admitted because the request it was raised against was formed of a subset of the granted claims. Despite there being a large number of independent claims in the granted patent, the Boards concluded that the argument should have been raised earlier. On the other hand, in T1830/11, new evidence was admitted when filed with the appellant's (opponent's) grounds of appeal for use against a request formed by incorporating the subject matter of a dependent claim into claim 1. The Boards, in that instance, considered that there was no requirement for an opponent to provide evidence against every possible fallback position in the granted claims. In case T55/11, a new inventive step objection was raised that combined two documents used in an existing argument. However, the roles of the two documents were switched in the new argument such that the closest prior art document in the new objection was the combination document in the earlier objection. Because the Boards had indicated in their written opinion that the combination of the two documents was to be considered, the patentee could have foreseen the new objection and so the argument was admitted.

Not only should the opponent's intended arguments in respect of the prior art be elaborated at the earliest opportunity, but also the patentee's reasons for filing each of the requests. While it may in some cases be immediately evident that the auxiliary requests overcome all outstanding objections, where this is not the case the Boards have argued that requests should only be considered filed on the dates on which they are substantiated. In T1784/14, a number of the respondent's (patentee's) auxiliary requests were considered inadmissible despite being filed before the Opposition Division and mentioned in the respondent's (patentee's) reply to the grounds for appeal. Since it was not apparent how those requests dealt with the objections against the earlier requests, they were not considered validly filed.

From a patentee's perspective, the wide range of practices among the Boards to not admit requests on appeal because they were not filed during opposition proceedings can be particularly problematic. In view of the risk that the Boards will take a strict view on admissibility, it is often advisable to take a cautious approach. Patentees should now take into consideration the restrictive practices of the Boards of Appeal when deciding their strategy during opposition. The result of the increasingly restrictive approach of the Boards is that the only way for a patentee to be sure that a request may be relied upon on appeal is to ensure that it is filed, and admitted, by the Opposition Division. One way in which to achieve this is to request lower-ranking claim requests to be admitted into the proceedings even if a higher-ranking request has been allowed. This must be done before the opposition proceedings are officially closed.

Moreover, on appeal, it may also be insufficient to merely file arguments in respect of a main request and accompany that with other auxiliary requests without a full discussion of how those additional requests overcome any objections. This can be the case even if they were already filed before the Opposition Division.

In order that a set of requests can be defined during opposition that will subsequently be of use when filing an appeal, it may be advantageous to file multiple auxiliary requests along with the patentee's reply to the notice of opposition. In this way, those requests can be considered by the Opposition Division when preparing a summons and the patentee will have the opportunity to file a refined set of requests in advance of the oral proceedings before the Opposition Division if necessary. That latter set of requests can form the basis of the appeal, perhaps supplemented where appropriate.

As mentioned earlier, the new President of the Boards of Appeal intends to update the Rules of Procedure. Notably, the main purpose of the change appears to be to improve the efficiency of the Boards so as to reduce the time taken to process each case. While it is not yet decided what form the new rules of procedure will take, a consultation has been carried out on a draft set of rules. If the draft rules are implemented, then it is clear that the stricter aspects of the case law on admissibility as exemplified above will be codified so as to be implemented more consistently across all Boards. While a more consistent approach would, of course, be of some benefit to the parties, the more restrictive nature of the anticipated new rules will lead to a procedure in which it will be increasingly important for the parties to commit to their chosen strategy at the earliest opportunity.

In conclusion, the recent practice of the European Patent Office in respect of opposition and appeal practice has been to more strictly apply the rules so as to differentiate the opposition and appeal procedures, and this restriction of the procedure is expected to continue in the updating of the Rules of Procedure of the Boards of Appeal.


Footnotes

1 James Short and Rohan Setna are partners at Boult Wade Tennant LLP.