In January 2020 the European Patent Office (EPO) introduced the new Rules of Procedure of the Boards of Appeal (RPBA 2020). Now that a substantial number of cases have been dealt with under the new rules the impact on users of the EPO system is becoming more and more evident.


What are the Boards of Appeal?

The Boards of Appeal (BOA) are the organisms which deal with all appeals in the procedures before the EPO.

An appeal can be filed by any party who is adversely affected by a first-instance decision of the EPO, such as a decision of the examining or of the opposition division. For example, when the examining division refuses to grant a patent application, the applicant has the right to file an appeal. Or, when the opposition division maintains a patent for which an opposition has been filed, then the filer of the opposition can file an appeal.


What rules have changed for appeal procedures?

The changes implemented in January 2020 introduced first of all a number of new rules related to case management by the Boards. These mostly aimed to give more flexibility to the Boards in terms of how they organize their overall workload and at improving the overall efficiency and consistency in case management and have limited impact on users of the European Patent System.

From a user perspective the changes which have had the highest impact on users are those related to Articles 12 and 13 and to new Article 15(a) of the Rules.


Impact of new Article 12

Article 12 RPBA defines what can form the basis for an appeal case at the start of the proceedings.

The revised article states that a primary object of the appeal procedure is to review the decision under appeal in a judicial manner and in view of this, a partyꞌs appeal case must be directed to the requests, facts, objections, arguments and evidence on which the decision under appeal was based.

Any part of a party’s appeal case which was raised in the first instance proceedings will be regarded as an amendment and will only be admitted at the discretion of the Board. The Board will exercise its discretion in view of, among other things, the complexity of the amendment, the suitability of the amendment to address the issues which led to the decision under appeal, and the need for procedural economy.

Revised Article 12 means that under the new rules it is much harder for applicants to introduce new arguments in the appeal phase. Decision T 1421/20 is one example. An applicant filed an appeal after the Examining Division refused the patent application. Three auxiliary claims were filed with the statement of grounds of appeal, however the BoA exercised its discretion under Article 12 RPBA 2020 refused to admit the auxiliary claims on the basis that they introduced new clarity issues that led to new objections.


Impact of new Article 13

Article 13 RPBA defines the extent to which a party may make amendments to the appeal case after the start of the proceedings.

Revised Article 13(1) states that any amendment to a party’s appeal case after the filing of the grounds of appeal or reply must be accompanied by justification of why the amendment has only been submitted at this stage and it may be admitted only at the discretion of the Board.

Moreover Art 13(2) states that any amendment to a party’s appeal case made 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”.

Although the boards still have the faculty to determine whether any amendment to the case is justified at any stage of the appeal proceedings, since the implementation of revised Article 13 the Boards of Appeal have refused to accept several requests which had been filed only after the Grounds of Appeal (independently on whether the requests were filed before of the summons to oral proceedings or afterwards) and which were not sufficiently justified.

As an example, in T 0752/16 the Boards issued a summon to oral proceedings in January 2020 accompanied by a preliminary opinion that was positive on inventive step. After the proceedings were postponed due to Covid, the Board of Appeal issued a new summon to oral proceedings and changed its preliminary opinion finding a lack of inventive step. The patentee then filed new auxiliary claims, however these were rejected under Article 13(2) of the new rules, since the BoA stated that the revised preliminary opinion did not raise any new objection but only adopted one of the objections raised earlier by an opponent. Hence the patentee had not reason to file the new claims only at this stage. The patent was eventually revoked.


Oral proceedings by video conference – Art. 15(a)

The RPBA 2020 also introduced new article 15(a) according to which the Board of Appeal can decide to hold oral proceedings by videoconference, either upon request of a party or of its own motion.

In case G1/21 a question around the legality of oral proceedings by video conference without the consent of both parties was referred to the EPO’s Enlarged Board of Appeal (EBA).

On 16 July 2021 the EBA issued an order stating

“During a general emergency impairing the parties’ possibilities to attend in-person oral proceedings at the EPO premises, the conduct of oral proceedings before the boards of appeal in the form of a videoconference is compatible with the EPC even if not all the parties to the proceedings have given their consent to the conduct of oral proceedings in the form of a videoconference.”

This statement was somewhat criticized for not answering the question of whether it would be legal to hold proceedings by video conference without a party’s consent when not in an “emergency” situation. However, a full written decision providing the EBA’s reasoning is yet to be issued and hopefully this will provide more clarity.



In recent years the EPO Boards of Appeal had already started to adopt a stricter approach with regards to the admissibility of amendments late in proceedings. However, it is expected that now that these procedures are codified into the new Rules, all the boards will converge towards the same strict interpretation of what is admissible.

The amendments to Art 12 and 13 make it very difficult for parties to introduce new facts, objections or requests during appeal. It will be essential for Applicants and Opponents to ensure that the strongest possible case is submitted as early as possible and preferably during the first instance (examination, opposition) proceedings. Users should ensure that all possible fall-back positions are considered at the onset of the appeal and filed with the grounds for appeal or the reply.

On the positive side, it is expected that the new Rules will lead to decisions by different Boards being more unified and predictable.


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