EPO appeals — have you changed your prosecution and opposition strategy post-RPBA 2020?

Barry Moore

EPO appeals have you changed your prosecution and opposition strategy post RPBA 2020

The 2020 revision to the EPO’s Rules of Procedure of the Boards of Appeal (RPBA 2020) aimedto increase efficiency by reducing the number of issues to be treated on appeal — increasing predictability for parties and harmonisation across the boards. Two years on, our expert Barry Moore dives into the data to explore its successes and drawbacks, and explains what his findings mean for your EPO prosecution and opposition strategies.

The success of RPBA 2020

Despite being introduced just two years ago, RPBA 2020 had a retrospective effect on any appeal that was pending when the rules came into force. The intent of this — above minimising apparent user frustration and calls for change — was to streamline the appeal process, reduce delays in processing and decrease the backlog of pending cases before the Boards of Appeal.

The Annual Report of the Boards of Appeal 2021 — published earlier this year — applauded the changes that have been achieved so far. These include significant reductions in the numbers of pending and backlogged cases.

The Annual Report detailed that, in 2021, productivity increased by 11.1% over 2020.

When calculating productivity, only cases settled “with action” are taken into account. These are cases settled by a decision or after a communication has been issued by a board member and/or after oral proceedings have taken place”.

In the context of what this means since the five-year plan of 2017 was introduced, the report confirmed that “the productivity increase from 1 January 2017 to 31 December 2021 was 26.6%”.

Changing the nature of engagement

This increase is truly impressive — particularly given the, at least, partial overlap with the pandemic. However, if the level of interaction required by the members of the Boards of Appeal with each case is the same in 2021 as it was in 2016, then this does beg the following questions:

– what changed?
– what tools were provided to the Boards?
– how did they achieve this improvement in productivity — or is it possible that, because of the metrics chosen, productivity is being conflated with throughput?

Since the Boards of Appeal are no different to any other system, their performance is constrained by the rules of operation. Having been involved with appeal cases before the EPO for many years, my ‘gut’ feeling was that the modifications to the rules provided by RPBA 2020 changed the nature of engagement.

Constraining debate

RPBA 2020 provides the Boards with a number of tools that allow cases to be processed differently. At the same time, the changes in the refund mechanism financially motivate Appellants to consider the merits of continuing prosecution — particularly when faced with a particularly difficult appeal.

Data supports the fact that Appellants are actively making use of the refund possibility. Referring to the Annual Report, it is noteworthy that a total of 1,304 ex parte cases were settled in 2021 (compared to 1,331 in 2020). Of these, 553 were settled by a decision. The remaining 751 were settled without a decision. In 545 of these (503 in 2020), the appeal was withdrawn after a substantive examination and communication by the Board. Similar statistics are seen for inter partes cases, where a total of 2,091 were settled in 2021 (1,682 in 2020). Of these, 1,345 were settled by a decision. The remaining 746 were settled without a decision. In 492 of these (453 in 2020), the appeal was withdrawn after a substantive communication by the Board. It is evident that not having to actively write a decision saves time for the Boards of Appeal — that time being usefully deployed in processing other appeal cases.

This is not the only tool, however, as RPBA 2020 also shifted what can actually be presented in appeal proceedings.

Article 12(2), for example, requires:

“In view of the primary object of the appeal proceedings to review the decision under appeal in a judicial manner, a partyꞌs appeal case shall be directed to the requests, facts, objections, arguments and evidence on which the decision under appeal was based.”

Art 12(3) references how the statement of grounds of appeal and reply shall contain a party’s complete appeal case. It details how discretion will be exercised in admitting any change to a party’s case during the appeal process.

Art 12(4) allows the Board to exercise discretion in admitting any amendment in the appeal away from the requests, facts, objections, arguments and evidence on which the decision under appeal was based. The onus is on the party to clearly identify each amendment and provide reasons for submitting it in the appeal proceedings.

In practice, this means that the matters under appeal should be constrained to exactly the subject of the decision under appeal. It appears that the first point considered by the Board is whether there is something new in the appeal that wasn’t considered before — and if so, whether that should be deemed inadmissible. In the event that this hurdle is passed — and the Board identifies a different objection — the onus is again on the Appellant to demonstrate why the amendment or argument needed to address that new objection could not have been presented at first instance. Personal experience tells me that the number of cases on which admissibility has been used to constrain debate on the substantive merit of the subject matter of a case has increased dramatically.

A more judicial review appeal process

To see whether my personal experience was reflective of an unlucky run of cases (which I thought unlikely), I turned to our friends at ipQuants to see whether they could provide any data-driven analytics that point to a shift in approach post-RPBA 2020 that supported this ‘feeling’.

As discussed in a sister article to this blog, ipQuants’ Tony Afram — using the insights and workflow automation platform Qthena — was able to compare published and decided decisions from the Technical Board of Appeals (T-BoA) that cited any of the RPBA Articles 12 or 13 before and after 2020. We looked at Appeals from both the Opposition Division and the Examining Division and the data appears to be clear.

From what was already a relatively high baseline point of 35%, we now see that Opposition Appeal Decisions cite admissibility-related provisions in over 50% of the Boards’ Reasons for Decision. In examination, the change is even more stark — going from a baseline of 18%, we again see admissibility cited in over 50% of Decisions.

It is therefore evident that the early conjecture on how the RPBA 2020 changes would result in a more judicial review appeal process has borne fruit. It is further evident that requests, facts, objections, arguments, and evidence must be presented as early as possible, since the Boards more frequently use admissibility as a criterion to inform Decisions.

Changing your prosecution and opposition strategy

The ability to argue differently — or present new positions — in the course of an appeal is now heavily constrained. If you have not already changed your prosecution and opposition strategy, you need to. The data supports my personal experience that changes to a case at second instance are more challenging than they were before.

The EPO has decided, as a matter of policy, to change the manner in which the appeal process is conducted. While this may allow the Boards to process more cases, it does not necessarily improve the efficiency of the office as a whole. Personally, I see an increase in the number of Auxiliary Requests filed before the Examining and Opposition Division, increasing their burdens while frontloading cost and effort from attorneys. In addition, I see the number of divisional filings increasing, which may be related to the practicality of how to get an amendment or argument reviewed. Are we ultimately moving to a US-style Request for Continued Examination (RCE) process — albeit at a much higher cost when the accumulated annuities are factored in?

In any case, there is an evident requirement to engage early and substantively with objections when raised. Irrespective of whether this is what users wanted from the EPO, this is the rule by which we now play.

To find out more about prosecution and opposition strategies, get in touch with me or your usual Murgitroyd advisor.

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