The „consultation “about a possible change to specific articles of the RPBA raises a number of issues. Some are not controversial, some are however highly controversial.
The change in Art 13(2) RPBA20
The only amendment which is not controversial in the present “consultation” is that of Art 13(2) RPBA20 which states that the trigger of the third level of convergence is the communication according to Art 15(1) RPBA21. The proposed amendment does not change the present situation.
The changes in Art 12(1) RPBA20 and Art 15(1) RPBA20
The two other changes aiming at Art 12(1) RPBA20 and Art 15(1) RPBA20 are much more controversial and should not be implemented.
There has not been shown in the slightest that those changes are indeed necessary. “To support the pursuit of more ambitious timeliness objectives” is not a reason sufficient to shorten the time limits at stake. Timeliness might be an important factor, but it is not the determining factor. Such a statement does not define a compelling case requiring amendment.
No figures have been provided whatsoever which could justify the amendments thought.
What has been the evolution of the average time per appeal case in inter-partes procedures over the years? This figures should in any case be normalised in order to take into account the absence of recruitment at the boards for many years.
What would the change actually bring in matters of “more ambitious timeline objectives”? It is only if it can be shown that the measures bring about a large change to the present situation, that this kind of measures should be envisaged.
“To support the pursuit of more ambitious timeliness objectives” might represent an aim for the office and its boards, but is most probably not inducing any improvement for the parties in general and the respondents in particular.
The change in Art 12(1) RPBA20
Reducing, ab initio, the time limit for replying to the statement of grounds of appeal is plainly detrimental to respondents. The appellant has four months to file its statement of grounds of appeal, whereas according to the new Art 12(1) RPBA, the respondent would only have, to start with, two months. Whilst two months might be acceptable when only formal matters have to be dealt with, a minimum of four months appears to be a bare minimum when it comes to substantial matters.
Reducing ex officio the time limit for replying to the statement of grounds of appeal for respondents is actually distorting the balance between the parties in inter-partes appeal procedures. The balance between the parties to the appeal procedure is too precious an asset to be sacrificed on the altar of a supposedly increase of the efficiency of the boards.
Reducing the time limit for replying means also an increase of costs for representation for the respondents. If a representative has to work under pressure, it is clear that the representations costs will increase as the shorter time limit has to be taken into account.
With the upcoming of the UPC, the increase of representation costs due to the short time limits of the procedure before the UPC has been amply discussed in the profession. The necessity for the EPO to go along the same path as the UPC is not understandable.
The EPO is always insisting upon the benefits of the EP system for SMEs. It should then refrain from increasing the costs for the respondents, especially when those are SMEs. Even with the reduced appeal fee for SMEs, indirect costs should also not be increased.
It is true that “any respondent will be able to request an extension of the period up to a maximum of six months in accordance with Article 12(7)”, but the extension of the time limit is left to the discretion of each board. Here the problems start.
Handling of the discretion by various boards
One of the problems induced by the RPBA20 is the large discretion given to the boards. Case law has shown that the discretion of the boards has been exercised in very different ways by different boards.
As examples it is possible to quote the exercise of the discretion given in Art 15a(1) RPBA21 or the different ways boards handle the admissibility of deletions/ combinations of claims under the RPBA20.
Some well-established lines of case law in substantial matters, which were a guarantee for parties are suffering due to the RPBA. The change from a lack of N to a lack of IS once a board has decided that N is given, is still not considered a new ground of opposition, but is now considered a late submission and therefore not admitted in the procedure. It is a catch 22 situation for the opponent which is faced with a decision he could not anticipate when he drafted its statement of grounds of appeal.
As there is no way to check whether the discretion has been correctly applied by the boards, there should not be a further increase of the discretion offered to the boards. Clear limits to the discretion of the boards should rather be introduced.
The appeal procedure should be reliable and predictable, also in procedural matters, and the fate of an application/patent should not depend procedurally wise from the board in charge of the case. .
Circumventing the shortening of the time limit
One way to circumvent the shortening of the time limit to reply to the statement of grounds of appeal would be for all parties in opposition to systematically file an appeal. Such an appeal can later be withdrawn, with the possibility of a partial reimbursement of the appeal fee. The sooner the withdrawal, the higher the reimbursement of the appeal fee. But in the meantime, the time limit for replying to the statement of grounds of appeal of the other party would have been extended.
It is doubtful that such a way of doing, which would be perfectly legal, would at all improve the situation.
This way of doing would be analogous to the situation in the past under PCT Chapter II. Applicants filed a demand under the PCT Chapter II, but lots of them did not react to any communication, so as to simply benefit from a longer delay for entering the regional phase. For large companies this might not be a problem, but it is certainly a problem for SMEs as they do not have the same financial possibilities.
Even if the appeal fee is not covering the actual costs of an appeal, inducing parties to file an appeal when they actually merely want to reply to the appeal of an adversary does not appear reasonable.
The corresponding appeal fees do not appear necessary in order to improve the financial situation of the EPO.
The change in Art 15(1) RPBA20
Instead of two months, the boards might now summon to OP one month after having received the reply to the appeal.
It is difficult to see how an “early notification of a summons to oral proceedings is purely beneficial for parties and representatives, who can make the necessary arrangements”. the contrary seems true. Neither the parties nor their representatives will benefit from the change. “Necessary arrangements” will not be made easier when the time limit is shortened.
The amendment to Art 15(1) RPBA20 has for direct effect to start the application of the third level of convergence earlier. In other words, the purpose of this amendment is clearly to avoid parties filing further submissions after the second level of convergence has been entered.
The second level of convergence already puts a halt to the admissibility of late submissions. Why is it then necessary to further shorten the time of entrance in the third level of convergence?
In the case of accelerated appeal proceedings, a reduction of the time limit for sending the summons to OP appears reasonable. Why should this exceptional circumstance become a standard? How many requests for accelerated appeal proceedings are filed a year? When looking at published decisions, they appear rather infrequent.
In the explanatory remarks for the change it is stated that “where there is more than one party the Board may only apply a shorter timescale for issuing the communication if all the appellants consent to a shorter timescale being adopted”. This not what the rule says and there is no guarantee whatsoever that the boards will act accordingly.
This is best demonstrated by the following sentence: “A longer timescale remains at the discretion of the Board considering all the circumstances of the case”. As far as the discretion given to the boards is concerned, please see above.
The explanatory comments mention “all the appellants”. It fails to mention the respondents, or does the wording “all the appellants” means “all parties to appeal”. There is a big difference between the two meanings. It should be expected that all parties to appeal are concerned, not just “the appellants”.
The necessity of the proposed changes to the RPBA20 is anything but apparent. There is actually no compelling case which justifies any of the changes proposed.
Working under an exacerbated time pressure cannot be considered as being “purely beneficial for parties and representatives”. As explained above here, it increases the costs for the parties, but to what avail?
I would simply refer to an older say: “If it ain’t broke, don’t fix it”
It will be interesting to see what the boards will make with the result of the present consultation. Past experiences allow the reasonable conclusion that results which are not along the envisaged line are more or less ignored or at best belittled.