OJ EPO SE 1/2021, p109 - X.4 - Introducing a consolidated list and discontinuation of the practice of forwarding cited documents

Originally published in OJ EPO 2020, A131:

Notice of the President of the Boards of Appeal dated 31 October 2020 on introducing a consolidated list of documents submitted by parties during inter partes appeal proceedings and on discontinuing the forwarding of cited documents to the other parties

With effect from 1 December 2020, the Boards of Appeal will introduce the following two changes to their practice in inter partes appeal proceedings:

1. Consolidated list of documents submitted for the first time during inter partes appeal proceedings

In inter partes appeal proceedings, a Board of Appeal may create a consolidated list of documents (patent and non-patent literature) cited by the parties during these proceedings if it considers such a list to contribute to the efficient processing of the appeal. The list is entitled "Consolidated list of documents submitted in the appeal proceedings".

The consolidated list contains the documents which a party cites for the first time during the appeal proceedings, each new document being assigned a reference number. Thus, citations which were submitted before the opposition division and are resubmitted during the appeal proceedings are not included in the list or assigned a new number.

The list can be consulted in the electronic file in the European Patent Register, where, for ease of retrieval, each cited document is also labelled with its reference number ("citation in appeal procedure – 001", "citation in appeal procedure – 002", etc.). In the interests of procedural efficiency, parties are recommended to adopt the assigned reference numbers when referring to cited documents.

Consolidated lists will be introduced from 1 December 2020.

2. Discontinuation of the practice of forwarding documents cited by parties to the other parties to the appeal proceedings

In all inter partes appeal proceedings, the Boards of Appeal will simplify their practice with respect to informing the parties of submissions and documents which are filed by another party.

Party submissions, in particular the notice of appeal, the statement of grounds of appeal and the reply to the statement of grounds, will continue to be communicated to the other parties. However, copies of documents (patent and non-patent literature) cited in and attached to party submissions are no longer to be forwarded automatically. All cited documents contained in the electronic file can be downloaded from the European Patent Register. They will be provided to the parties free of charge in paper form upon request only.

The Boards' practice of informing the other parties of the filing of items or documents which are not available for inspection in the electronic files of the European Patent Register (e.g. non-scannable objects, non-public documents) or are not easily legible (e.g. documents filed in colour) is retained.

If oral proceedings are to take place, parties are advised to check the electronic file via the European Patent Register in advance of the hearing to ensure that they are in possession of all relevant documents.

This change in practice applies to documents filed on or after 1 December 2020.


President of the Boards of Appeal


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