The Patent Litigation Law Review: Oppositions and appeals before the European Patent Office
This chapter discusses the European Patent Office's 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, which has now been codified in the updated Rules of Procedure of the Boards of Appeal.
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. 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.
The opposition procedure at the European Patent Office is extensively used. According to statistics published by the European Patent Office, in 2018, 3.2 per cent of granted patents were opposed, with 27 per cent of decisions revoking the opposed patent in its entirety and 41 per cent leading to an amendment. With such a large number of oppositions being filed, there has been a growing backlog of pending cases. 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 streamlined procedure is intended to reduce the duration of a straightforward case to a maximum of 15 months. The streamlined procedure appears to be having the desired effect. In 2016, the average length of time for a straightforward case was in the region of 26 months. According to the EPO's annual report 2019, the average time to a decision has been reduced to less than 19 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.
Recently, there have been 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.
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 pending appeals increasing from nearly 8,000 in 2015 to over 9,000 in 2019. In the first annual report of the Boards of Appeal following this organisational change, the new President 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. The early signs indicate that the steps taken are having the desired effect. According to the Annual Report of the Boards of Appeal, from 2015 to 2018 the pendency of 90 per cent of cases increased from 58 months to 67 months, and so this target will be quite a challenge. However, the figures for 2019 show a modest reduction in this pendency metric to 65 months. The two mechanisms implemented to increase productivity are, first, an increase in resources and, second, 'efficiency measures'. The increase in resources has led to the recruitment of an additional 17 technical board members in 2019, and a further increase of 16 technical board members has been included in the 2020 budget. One of the efficiency measures is the revision of the Rules of Procedure of the Boards of Appeal, discussed below.
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 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 mainly influence practice are those that determine admissibility. First, the Boards can hold inadmissible facts, evidence or requests that 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:
- the prima facie relevance of the new evidence or request;
- whether the admission will raise issues not previously considered;
- the age of the patent;
- the reasons why the new evidence or request was not filed earlier; and
- 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 have been quite varied in how discretion is exercised. However, there has been 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 has become 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 decision, 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.
For example, in T156/15, the appellant (patentee) twice filed a new Auxiliary Request after hearing the Board's decision in respect of the preceding request. The Board admitted the first of these, but refused to consider the second, indicating that a request may be found inadmissible because of such a use of the procedure even if the request is prima facie allowable. That is, procedural issues can take precedence over substantive issues.
Another 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 a similar case, T 1280/14, the respondent (patentee) maintained 15 auxiliary requests that had been filed during the opposition procedure, but again had not been considered. The respondent only intended to pursue two of those requests. However, because the respondent chose not to abandon the other requests in advance of the oral proceedings, those requests were not admitted.
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, 9th Edition, IV, E, 4.12.1). 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. Because it was not apparent how those requests dealt with the objections against the earlier requests, they were not considered validly filed.
On 1 January 2020, a revised version of the Rules of Procedure of the Boards of Appeal came into force, with the aim of improving the efficiency of the Boards so as to reduce the time taken to process each case. Although many of the changes to the rules appear to be minor differences in emphasis, when considered in the context of the recent trend towards restricting the parties' scope for changing their case on appeal, it appears likely that the trend will only continue.
For example, in cases considered under the old rules, the Boards are able to find inadmissible facts, evidence or requests that could have been presented, or were not admitted, at first instance. Under the revised rules, however, the default is reversed. The Board's power is to admit requests, facts, objections, arguments and evidence that were not pursued in first instance proceedings. In fact, those aspects of the case must have been both admissibly raised and maintained at first instance. Moreover, under the new rules, the parties are expected to identify any changes to their case on appeal and provide reasons why they were not submitted at first instance. In the case of the patentee, any amendments of the specification should be accompanied by an indication of the basis for the amendments along with an explanation of how they deal with the objections in the decision.
Arguments and objections have been added to the existing list of facts, evidence or requests that define a party's case. Accordingly, it will be necessary to argue in support of the admissibility of new lines of attack or defence presented on appeal. This hurdle of admissibility is now at the level previously set only for amendments of a party's case after filing the grounds of appeal and reply.
The Rules of Procedure of the Boards of Appeal have also been changed in relation to amendments made after the filing of grounds of appeal or the reply to the grounds of appeal of the other party. Under the old rules, any amendments to a party's case on appeal may be admitted at the Board's discretion in accordance with the criteria defined in the case law discussed above. In the updated rules, these developments in the case law have been codified to provide a non-exhaustive list including the state of proceedings, the suitability of the changes to resolve the issues of the appeal, procedural economy and, for an amendment of a patent, whether it overcomes the objections raised without raising others.
More notably, the rules have changed in respect of amendments to a party's case made after a summons to oral proceedings or the Board's written opinion. Previously, such amendments were inadmissible if the Board or other party could not be expected to deal with them before the oral proceedings. Under the updated rules, the bar is higher; such amendments will only be taken into account if the party can convince the Board that there are exceptional circumstances that justify an amendment of their case at this stage.
In view of the updated rules, since 1 January 2020, the tasks of preparing a statement of grounds of appeal and the reply to another party's grounds of appeal, in most cases, involves a greater emphasis on the procedural aspects of the case that justify or challenge any change in strategy by the other party. Although the rules have changed in tone, clearly with the intention of restricting the parties' ability to amend, the same element of discretion remains, and so it remains to be seen whether the changes will eliminate the wide range of practices among the Boards.
In view of the need to justify on appeal any aspect of the case that has changed since first instance, it is necessary for both parties to take this into consideration when deciding their strategy during opposition.
From the patentee's perspective, 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 to achieve this may be to request that lower-ranking claim requests 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 is now clearly 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.
For an opponent, it should be remembered that a new line of argument, even if based on the prior art documents relied upon at first instance, may be found inadmissible on appeal. It is often the case that such new lines of argument may occur to an opponent in preparation for oral proceedings. The minutes of oral proceedings before the Opposition Division can potentially therefore become the only record of lines of argument raised at that stage. The minutes produced by the Opposition Divisions rarely capture all of the important details raised. It is therefore expected that parties will increasingly request during oral proceedings that new lines of attack are recorded as such. In addition, it is advisable that the minutes be scrutinised more closely and that important errors or omissions be challenged before the appeal is filed.
There have been a number of further changes in the updated Rules of Procedure of the Boards of Appeal, and one in particular is notable. It was previously the case that remittal to the department of first instance would be likely where the parties agreed and where there were unexplored grounds such as novelty and inventive step, or unexplored attacks such as a different combination of prior art documents. The updated rules indicate that the default position of the Boards, from 1 January 2020, is to not remit the case unless there are 'special reasons' for doing so. The denial of remittal by the Boards of Appeal could be a useful tool for reducing the backlog by preventing cases from being shuttled backwards and forwards between the departments of first instance and the Boards of Appeal. There was initially concern that, contrary to the old practice, the Boards may decide that the updated rules mean that they should, if possible, consider all grounds on appeal, even if those grounds were not decided upon at first instance. However, the early decisions issued under the new rules seem to indicate that there is little change in the Boards' practice in relation to remittal; in so far as the Decision of the Opposition Division does not consider a ground of opposition, remittal remains a likely outcome.
Until 2020, it was normal for each of the opposition and inter partes appeal procedures to conclude at oral proceedings held in person, either in Munich, The Hague or, occasionally, Berlin for oppositions, and in Haar for appeals. Hearings by video conference were previously available for ex parte oral proceedings before the Examining Divisions, but were not widely used. The coronavirus pandemic led to the postponement of in-person oral proceedings for several months of 2020 and has motivated the EPO to carry out a pilot project for oral proceedings by video conference before the Opposition Divisions. In parallel, the Boards of Appeal have begun to use video conference for inter partes oral proceedings. Presently, all parties must consent to the use of video conference for oral proceedings both for oppositions and appeals. Whilst this is a recent change, and it is perhaps too early to discern a significant effect, it is anticipated that following the conclusion of the pilot project, video conference may possibly become mandatory for straightforward oral proceedings, such as those forming the majority of cases, which do not require the taking of evidence by the hearing of witnesses or the inspection of non-documentary evidence.
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 when the updated Rules of Procedure of the Boards of Appeal come into force.
1 James Short and Rohan Setna are partners at Boult Wade Tennant LLP.