JAPAN INTELLECTUAL PROPERTY ASSOCIATION
Nihombashi 3-Chome Square Bldg.
6F, 9-1 Nihonbashi 3-chome,
Chuo-ku, Tokyo 103-0027, JAPAN

TEL:+81-3-6262-1570
FAX:+81-3-6262-5655
URL:http://www.jipa.or.jp/

September 11, 2023
Jorma Hanski
Chairperson of the BOAC
Carl Josefsson
President of the Boards of Appeal
European Patent Office
Richard-Reitzner-Allee 8 | 85540 Haar | Germany

Re: JIPA Comments on the proposed amendments to the Rules ofProcedure of the Boards of Appeal to further enhance the timeliness ofappeal proceedings
Dear Chairperson Jorma Hanski and President Carl Josefsson,
We, the Japan Intellectual Property Association “JIPA”, are a private userorganization with about 990 major Japanese companies as members.
When appropriate opportunities arise, we offer our opinions on theintellectual property system of other countries and make recommendations
for more effective implementation of the systems.
Having learned a consultation, the proposed amendments to the Rules ofProcedure of the Boards of Appeal to further enhance the timeliness ofappeal proceedings, we would like to offer our opinions as follows.
Your consideration on our opinions would be greatly appreciated.
Sincerely yours,

Akitoshi YAMANAKA
Vice President
Japan Intellectual Property Association

JIPA's comments on the draft proposed amendments to the Rules ofProcedure of the Boards of Appeal
We, as applicants, feel that the EPO's objectives of "reducing the numberof pending cases to below 7,000 and settling 90% of cases within 30 months by2023" is beneficial. We welcome the intention of the Boards of Appeal to pursue
more ambitious and timeliness objectives in the future.
With respect to the draft amendments, currently proposed, to the Rules ofProcedure of the Boards of Appeal, we have requests described below.
We are against the amendment to Article 12(1)(c). Reasons are shown
below.
The first reason is that two months is too short as a period to prepare a
written reply of "the other party." Our understanding is that in an appeal, a newassertion or discussion in the middle of the appeal after submission of a written
reply is not permitted as a general rule. Thus, contents of the written reply are
the most important to "the other party", and the step to study the contents of aprevious decision and the contents of an assertion, and prepare the written reply
requires a lot of time.
Further, even though there exists such a general rule, if a new assertion
or evidence is actually submitted for the grounds of appeal, "the other party" will
have to study contents thereof or the validity of submission thereof at the stageof the appeal during the preparation of the written reply.
Furthermore, for applicants residing in states outside the EPC, they spend
a lot of time for discussion with local agents due to differences from a patentsystem of a state of residence, and they need a time for translation or the like ifthey are in the non-English-speaking world (for example, if an appeal is filed inGerman, it is believed that many of Japanese companies have to prepare
documents translated in both English and Japanese).
The second reason is that an imbalance of fairness between "appellant"and "the other party" will occur. According to Article 108 of the EPC, a period offour months of notification of the decision of the Opposition Division is ensured
for the appellant to study contents of assertion for the grounds of appeal.
Meanwhile, according to the existing Article 12(1)(c), the same period of fourmonths as above for the appellant is ensured for "the other party" as acounterpart to study contents of argument against the grounds of appeal. We
consider that the fairness is maintained. However, if a period for "the otherparty" to prepare a written reply is shortened from four months to two months as
currently proposed in the draft proposed amendment of this time, we have animpression that an imbalance would occur toward a disadvantageous state to"the other party."
Before the currently proposed amendment, Article 12(7) has stipulated
that the period for "the other party" to prepare a written reply may be extended
up to a maximum of six months. However, this extension is exceptional and it isat the Board's discretion. It is believed that the fairness is not guaranteed unlessa decision by such discretion is based on the uniform criteria. Thus, we, as
users, feel reluctant to positively utilize this provision for extension and we hope

to maintain the existing provision of Article 12(1)(c), which stipulates that theperiod to prepare a written reply is four months.
END