14 November 2013Europe

CIPA Life Sciences: How to navigate the EPO boards of appeal

The European Patent Office boards of appeal are unlikely to be able to reduce the case backlog anytime soon, but attorneys should be wary of possible changes in board practice, former board head Alec Clelland told the Chartered Institute of Patent Attorneys (CIPA) Life Sciences conference.

Clelland, who retired from the EPO earlier this year, explained some of the difficulties faced by the boards of appeal and gave advice on what they might do in the future. He also outlined some dos and don’ts for patent attorneys who find themselves before a board.

The facts are stark. In 2012, 2,659 appeals were filed with the boards and just 2,071 were settled. If that trend continues, the backlog will grow rather than reduce, especially since, Clelland said, "the president has not unreasonably decided that enough is enough” in terms of recruiting large numbers of extra staff.

Depending on which of the 28 boards of appeal you find yourself dealing with, “you’re going to have a long, long wait”, he said.

However, while “very few new staff … are being brought in”, there are various ideas on the table to speed things up, and patent attorneys have a role to play as well.

For example, especially in the field of business method patents, “appeals are being filed that frankly are a complete waste of time”, Clelland said, because the message that just because something is patentable in the US doesn’t mean it will be in the EU “simply has not got through”.

Solutions to the backlog, he said, could include increased fees, leaning more on the first instance proceeding or streamlining the appeal procedure.

One “idea whose time has come”, he said, “is that an appeal is [just] and appeal and not a re-examination”. This means that in the future appeals may allow no new prior art, even no new arguments. The “only point of discussion would be whether the original decision is right or wrong”.

Boards are already becoming tougher on changing hearing dates, filing late requests or filing documents late, he said.

Clelland’s advice is to file everything as early as possible, “make submissions short and precise” and be careful about informal contact with the boards. Additionally, attempts to game the system by using US attorneys as technical experts are not looked on favourably.

For oral hearings, he recommended dressing smartly, making sure to speak to the board and not to the other side, and avoiding powerpoint presentations.

Indeed, there is no right to a laptop in board hearings, and a powerpoint presentation is in effect a “written submission”, which the board may accept at its discretion.

Finally, Clelland said, the boards are in desperate need of more British members, and he urged patent attorneys to seriously consider moving to the EPO.

The CIPA Life Sciences conference is taking place on November 14 and 15 in Eastbourne, UK.

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