ANNEXES
Annex 3. Table setting out the amendments to the RPBA 2020 and the explanatory remarks
In the table below, the RPBA provisions as in force until 31 December 2023 are set out in the left-hand column.
This table is contained in section VI. of document CA/83/23. The revised version of the RPBA provisions – as proposed by the President of the Boards of Appeal, and subsequently adopted by the Boards of Appeal Committee and approved by the Administrative Council – is presented in the middle column, with the amendments to the text shown as follows: amendments to the provisions are shown in bold, deletions are struck through.
The right-hand column contains the explanatory remarks.
RPBA – current provisions | RPBA – proposed provisions | Explanatory remarks |
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Article 13 Amendment to a party's appeal case |
Article 13 Amendment to a party's appeal case |
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(2) Any amendment to a party's appeal case made after the expiry of a period specified by the Board in a communication under Rule 100, paragraph 2, EPC or, where such a communication is not issued, after notification of a summons to oral proceedings shall, in principle, not be taken into account unless there are exceptional circumstances, which have been justified with cogent reasons by the party concerned. |
(2) Any amendment to a party's appeal case made after the expiry of a period specified by the Board in a communication under Rule 100, paragraph 2, EPC or, where such a communication is not issued, after notification of a summons to oral proceedings communication under Article 15, paragraph 1, shall, in principle, not be taken into account unless there are exceptional circumstances, which have been justified with cogent reasons by the party concerned. |
Currently, the third level of the convergent approach applicable in appeal proceedings may be triggered before a Board sends a substantive communication under Rule 100(2) EPC or under Article 15(1). This is because it may be triggered by notification of a summons to oral proceedings, which may be despatched without a communication under Article 15(1). At times, in particular when the communication under Article 15(1) has been notified considerably later than the summons to oral proceedings, this has been perceived as not being ideal. It is thus proposed to replace notification of a summons to oral proceedings with notification of a communication under Article 15(1) as a trigger for the third level of the convergent approach. The expiry of a period specified by the Board in a communication under Rule 100(2) EPC would remain as a trigger for the third level of the convergent approach. Under the proposed new provision, users of the patent system would benefit from the less strict approach under Article 13(1) until a later stage in the proceedings. This amounts to an extension of the second level of the convergent approach applicable in appeal proceedings. The proposed new Article 13(2) will apply from the date of entry into force of the new provisions. In pending appeals where the third level of the convergent approach set out in Article 13(2) as currently in force applies solely due to the notification of a summons to oral proceedings, but neither the period specified in a communication under Rule 100(2) EPC has expired nor a communication under Article 15(1) was notified to the parties, the conditions of the second level of the convergent approach will, upon the entry into force of the proposed new provisions, by operation of law, be applicable until the third level is triggered by the proposed new Article 13(2). In such cases, any amendment to a party's appeal case (1) after it has filed its (a) grounds of appeal or (b) reply (2) and before (a) the expiry of a period specified by the Board in a communication under Rule 100(2) EPC or (b) notification of a communication under Article 15(1) will be treated under the second level of the convergent approach governed by Article 13(1), irrespective of the amendment being made before or after the entry into force of the new provisions.
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Article 15 Oral proceedings and issuing decisions (1) Without prejudice to Rule 115, paragraph 1, EPC, the Board shall, if oral proceedings are to take place, endeavour to give at least four months' notice of the summons. In cases where there is more than one party, the Board shall endeavour to issue the summons no earlier than two months after receipt of the written reply or replies referred to in Article 12, paragraph 1(c). A single date is fixed for the oral proceedings. |
Article 15 Oral proceedings and issuing decisions (1) Without prejudice to Rule 115, paragraph 1, EPC, the Board shall, if oral proceedings are to take place, endeavour to give at least four months' notice of the summons. In cases where there is more than one party, the Board shall endeavour to issue the summons no earlier than two months after receipt of the written reply or replies referred to in Article 12, paragraph 1(c). A single date is fixed for the oral proceedings. |
Under the proposed new Article 13(2), notification of the summons to oral proceedings does not mean that a stricter approach will apply to the parties' submissions. When fixing the date for oral proceedings, the Board will consider the circumstances of the case, including its complexity and the envisaged length of the proceedings. Under the proposed new Article 13(2), early notification of a summons to oral proceedings is purely beneficial for parties and representatives, who can make the necessary arrangements. This increases the chances of the participants being available on the scheduled date, in particular in cases involving a high number of parties. Having this in mind, it is proposed to delete the second sentence of Article 15(1): "In cases where there is more than one party, the Board shall endeavour to issue the summons no earlier than two months after receipt of the written reply or replies referred to in Article 12, paragraph 1(c)." This sentence currently provides parties with an enhanced possibility to provide comments on the reply or replies to the statement of grounds at the second level of the convergent approach. To continue enabling this under the proposed new Article 13(2), it is proposed to add a sentence to the end of Article 15(1). The proposed new provision strengthens the position of parties to proceedings. The current provision lays down that "the Board shall endeavour", which enables the Board to set a shorter timescale based on the circumstances of the case (e.g. in the case of accelerated proceedings). The proposed new Article 15(1) guarantees ("the Board shall issue") that the third level of convergence will not be triggered before the expiry of one month after receipt of the written reply. Under the proposed new provision, where there is more than one party the Board may therefore only issue the communication less than one month after receipt of the written reply or replies referred to in Article 12(1)(c) with all appellants' prior approval. The proposed one-month timescale after receipt of the written reply or replies gives the parties an adequate opportunity to respond to such reply or replies in standard cases and allows the Board to preliminarily assess the case on the basis of parties' written submissions in preparation of a communication pursuant to Article 15(1). A longer timescale remains at the discretion of the Board, considering all the circumstances of the case. For instance, in cases where the Board considers it appropriate to enable additional exchanges between the parties within the second stage of the convergent approach for a longer time, it may inform the parties that it does not envisage issuing the communication under Article 15(1) before a certain date. Likewise, parties may inform the Board of their intention to file an additional submission in a specified reasonable time and at the same time request that the Board refrain from issuing the communication under Article 15(1) before a certain date. The Board has discretion in deciding on said request. |
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(9) The Board shall issue the decision on the appeal in a timely manner. (a) Where the Chair announces the decision on the appeal orally in accordance with paragraph 6, the Board shall put the decision in writing and despatch it within three months of the date of the oral proceedings. If the Board is unable to do so, it shall inform the parties when the decision is to be despatched. The President of the Boards of Appeal shall also be informed thereof. (b) When a case is ready for decision at the conclusion of the oral proceedings but the Chair does not announce the decision on the appeal orally in accordance with paragraph 6, the Chair shall indicate the date on which the decision on the appeal is to be despatched, which shall not be later than three months after the closure of the oral proceedings. If the Board is unable to despatch the decision on the appeal by that date, it shall inform the parties of a new date or, in exceptional circumstances, shall issue a communication specifying the further procedural steps that will be taken. |
(9) The Board shall issue the decision on the appeal in a timely manner. (a) Where the Chair announces the decision on the appeal orally in accordance with paragraph 6, the Board shall put the decision in writing and despatch it within three months of the date of the oral proceedings. If the Board is unable to do so, it shall inform the parties when the decision is to be despatched. The President of the Boards of Appeal shall also be informed thereof. (b) When a case is ready for decision at the conclusion of the oral proceedings but the Chair does not announce the decision on the appeal orally in accordance with paragraph 6, the Chair shall indicate the date on which the decision on the appeal is to be despatched, which shall not be later than three months after the closure of the oral proceedings. If the Board is unable to despatch the decision on the appeal by that date, it shall inform the parties and the President of the Boards of Appeal of a new date or, in exceptional circumstances, shall issue a communication specifying the further procedural steps that will be taken. |
The context of pursuing more ambitious timeliness objectives speaks in favour of harmonising Article 15(9)(a) and (b). It is thus proposed to add a reference to the President of the Boards of Appeal in Article 15(9)(b). If the Chair does not announce the decision on the appeal at the oral proceedings even though the case is ready for decision, and the decision is not despatched within three months of the closure of the oral proceedings, the attention of the President of the Boards of Appeal will be drawn to this delay in despatching the decision. In the exceptional situation that the Board decides to continue the proceedings, the Board must also inform the President of the Boards of Appeal that further procedural steps will be taken. |
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