A recent decision (T0458/22) by an EPO Board of Appeal provides fresh guidance as to when arguments directed to the admissibility of an appeal should be filed.
Background
European Patent No. 2757423 (“the patent”) was granted in 2018 and subsequently opposed. During opposition, the Opposition Division (“the OD”) found the claims of the patent to be insufficiently disclosed and decided to revoke the patent. The proprietor appealed the decision of the OD.
In a letter filed after the Board of Appeal (“the Board”) had issued its preliminary opinion on the appeal, the opponent respondent argued that the proprietor’s appeal was inadmissible due to being insufficiently reasoned. The proprietor, with reference to Article 13(2) RPBA, argued that there were no exceptional circumstances to justify the respondent filing this new objection at such a late stage of the appeal proceedings. The respondent countered that, according to established jurisprudence of the Boards of Appeal, the admissibility of an appeal should be examined ex officio at every stage of the appeal proceedings.
The principle that the admissibility of an appeal should be examined ex officio at every stage of the appeal proceedings was originally formulated in decision T0289/91. Since this decision, several Boards of Appeal have interpreted the principle as meaning that Boards of Appeal do not have the discretion to refuse to admit a late-filed objection to the admissibility of an appeal. However, in this recent decision, the Board considered this common interpretation to be incorrect.
The Board’s decision
In reaching the conclusion that it had the discretion as to whether to admit the arguments of the respondent concerning the admissibility of the appeal into the proceedings, the Board argued that it does not naturally follow from the principle of ex officio examination that late-filed facts concerning admissibility of an appeal must always be taken into consideration.
Furthermore, the Board also considered, contrary to earlier decisions, that the fundamental importance of the question of admissibility cannot lead to the conclusion that a Board of Appeal is required to take into account objections to the admissibility of an appeal at any stage of the appeal proceedings. Rather, the Board found the fundamental importance to support a requirement for admissibility of an appeal to be questioned at an early stage and prior to the commencement of substantive examination of the appeal.
The Board expressed the view that Article 12(2) RPBA uses the term “requests” such that a late-filed procedural request, e.g., a request concerning the admission of the appeal, can be considered as an amendment to an appeal case only admissible at the discretion of the relevant Board of Appeal.
Generally, all of the facts on which an appeal is based, i.e., the grounds of appeal, are available at the start of the appeal proceedings. As such, it is difficult to justify filing an objection to the admissibility of an appeal late. Therefore, the Board sided with the proprietor, finding there to be no exceptional circumstances and not admitting the respondent’s late-filed arguments concerning the admissibility of the appeal into the proceedings.
Practice points
This decision, which is the first on this issue since the 2020 revisions to the RPBA aiming to streamline the appeal process, highlights the need for parties to raise admissibility objections at the earliest possible stage in appeal proceedings.
While most earlier cases have decided in the opposite, this more recent decision may reflect the overall shift of the Boards of Appeal toward limiting amendments so as to improve procedural efficiency, and could, therefore, represent the likely approach that will be adopted by the Boards of Appeal moving forward.
