EPO - Letters to the Administrative Council

The Administrative Council (AC) of the EPO has met yesterday and continues its meeting today. The IPKat reports on four remarkable letters which have been sent to the AC in preparation of the meeting, wherein the stakeholders note that the acceptance of the EPO's proposal to reform the Boards of Appeal have has been (wilfully?) overstated when President Batistelli has presented the results of the user consultation in CA 98/15. The move to directly address the AC rather than relying on the president as the spokesperson is a clear sign of increasing mistrust between the president and the boards of appeal.

The recent discussion and events have shown that a reform aiming at increasing the perception of independence of the Boards of Appeal has to avoid any direct or indirect influence of the president of the office on the management of the Boards of Appeal. As correctly stated in the long-awaited letter of epi to the AC, the President should abstain from exercising control on the appointment or re-appointment of the board members and on the budget of the Boards of Appeal.

Above all, this blogger concurs with the epi in that the complete recruitment stop has to be removed immediately to keep the Boards Operational and to avoid a further increasing backlog. Operational Boards of Appeal with independent, experienced and motivated members, sufficient rooms to hold oral proceedings and staff support are a core ingredient of the functioning of the European Patent System to be administered by the AC.  

Good Excuses, Bad Excuses

I have the impression that the EPO Boards of Appeal have an increasing tendency to not admit new documents or requests if the submitting party does not present good reasons for the late filing. Examples include e.g. T1914/08 (cf. item [2], where the Board asks for a "justification having a causal link to the present proceedings") or T1488/08 (cf. item[2.2] asking for "objective reasons").

It may be heretic but I would like to ask whether this approach is justified in view of the  nature of the proceedings before the EPO. The Boards of Appeal do clearly have the discretionary power not to admit new facts or requests. However, this power has to be exercised on the firm basis of the objectivity principle and the overriding interest in fair proceedings.

In my view, there are (at least) two principles limiting the discretionary power of the Boards. Firstly, the decison not to admit an amendment of the case should clearly not violate the right to be heard of the submitting party. Secondly, the boards (just as the opposition division) should not be forced to knowingly take wrong decisions. The first principle requires the admissibility of amendments constituting a reasonable reaction to events inside of or outside of the procedure and the second principle requires that documents of prima facie relevance should be admitted.

Article 13(1) RPBA states that

“Any amendment to a party’s case after it has filed its grounds of appeal or reply may be admitted and considered at the Board’s discretion. The discretion shall be exercised in view of inter alia the complexity of the new subject-matter submitted, the current state of the proceedings and the need for procedural economy”.

What about the excuse? The complexity of the submitted subject-matter is clearly independent of the quality of the excuse.

Further, the procedure will not be the more economical the better the excuse for the late filing is. Rather, the procedural economy allows for the non-admission of amendmens which would clearly not change the result of the procedure (e.g. the admission of the allegedly novelty-destroying Document D99 if the Board holds that the patent is not novel over D1 already). Furhter, procedural economy should not be mixed up with the Board's comfort.

Finally, we are left with the "current state of the proceedings". In my view, this means that the Boards should shift the point of equilibrium of their balance towards the non-admission side in the later the stages of the proceedings. However, this may affect the mechanism of the balance but the weights to put on the balance should remain unchanged.

The fact that the amendment is a direct response to new points raised by the other party may support as a positive weight the admissibility of an amendment for reasons of fairness and for the preservation of the the right to be heard. However, in my view, the lack of such reasons should not constitue a "negative" weight on the balance unless the Board has additional evidence supporting the suspicition that the late-filing is the result of procedural abuse. Procedural abuse is a severe accusation which should not be raised without by the Boards without very good grounds.

In view of these considerations, the reasons for not admitting amendments to the case mentioned in T1488/08 appear to be based on a doubtful exercise of discretion. Here is what the Board has to say:

In the present case, the [opponents] have not submitted any objective reasons justifying the filing of the grounds of added subject-matter and lack of novelty at a later stage than with the appeal (such as e.g. in direct response to new points raised by the [patent proprietors] in their reply). The attempt of the [opponents] to re-introduce these grounds thus may only be regarded as a change of position determined by procedural tactics (so-called “salami” tactics). Already on this basis, the Board considered, in view of procedural economy, that it should exercise its discretion not to admit the later-filed grounds of added subject-matter and lack of novelty.

For the sake of completeness, the Board also considered whether these late-filed grounds would constitute, on a prima facie basis, a valid challenge to the patentability of the claimed subject-matter, and came to the conclusion that this was not the case.(Emphasis added).

 If this way of exercising the discretion was correct, this would imply that every amendment which is determined by procedural tactics is inadmissible. The fact that the prima facie relevance is checked only "for the sake of completeness" and not at the first place implies that this board has set its prioprities in a questionable way. The prima facie test would actually have been entirely sufficent to reject the new grounds.

 

How to claim your right despite of its being exlpicitly foreclosed by law?

In a recent post, I had discussed a notice issued by th 10th senate of the German Federal Patent Court (BPatG) according to which there may be an entitlement of a tird party to appeal a decision to grant provided that very exceptional circumstances are met.

This finding is rather surprising because the German Patent Act leaves no doubt that only the parties involved in the procedure in which the appealed decision was taken are entilted to appeal the latter.

Now, the full text of the decision has been published including a detailed line of reasoning.

While being so exceptional that the importance of this particular case constellation is probably very minute, I found it interesting that the line of reasoning emloyed may well be taken as a blueprint for other cases where no statutory basis for a claim may be found or - even more important - where the law explicitly forecloses the right your client desperately wants to enforce, as was the case here.

The BGH decision "Fischdosendeckel" cited in my previous post, the Supreme Court argued that the statutory foreclosure of 3rd parties from the appeal procedure as set out in §74 of the German Patent Act is the result of a balancing of interests between the interest in a completion of administrative proceedings within an adequate time and the encroachment of the intersts of the 3rd party, which, however, are at least partially preserved by the right to file third-party submissions.

The supremecourt then argues that in cases of grave contraventions of the basic principles of public procedures Jusitita's balance may swing to the other side so as to justify an exception to the written law.

The answer to the question in the title of this post is thus: Identify the balancing of interests on the basis of the foreclosure and prove that the interests being considered predominant as a rule are overbalanced by your interest in this particular case.

All In or Cashing Out - T 144/09 and the ex parte procedure

This week, both K's law and Laurent Teyssèdre's french blog have commented on the decision T 144/09 wherein the failure of the patentee to file a claim suggested by the opposition lead to a refusal of the same claim in the pertinent appeal procedure on the basis of Art 12(4) RPBA.

Article 12(4) RPBA reads as follows:

(4) Without prejudice to the power of the Board to hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the first-instance proceedings, everything presented by the parties under (1) shall be taken into account by the Board if and to the extent it relates to the case under appeal and meets the requirement in (2).

In this case, the patentee had delibeartely chosen not to cancel a feature allegedly offending Art. 123 EPC in any of the requests filed in the opposition and the board finds:
A request can be held inadmissible under Article 12(4) RPBA when added subject-matter held unallowable during proceedings before the opposition division is not removed at least by way of an auxiliary request filed in those proceedings, but only by way of a request filed during the appeal proceedings (Reasons 1.4).

Whilst the diligent patent attorney will immediately learn from this decision that he should better file as many auxiliary requests as possible overcoming the objections raised by the OD in the opposition proceedure, the situation turns out to be more complicated in the ex parte procedure.

In the opposition, if the patent is maintained in amended form according to the auxiliary request, the patentee has the opportunity to consider appealing this decision while relying on the principle of non reformatio in peius to at least have saved the patent according to the auxiliary request as a fallback possition.

In the examinaition procedure, if the applicant follows a "suggestion" of the Examining Division and files amended documents as an auxiliary request, the ED will very likely issue a communiation under R71(3)EPC according to the auxiliary request and, if the applicant apprioves the documents intended for grant, has no possibility to appeal the decision to grant due to his approval.

If, on the other hand, the applicant disapproves the documents of the communication under R71(3)EPC, this is entirely equivalent to a withdrawal of his auxiliary request such that he may be barred from prosecuting this request in the appeal procedure just as if the auxiliary request had not been filed.

There is actually no reliable possibility to keep the ED's suggestion as a fallback position as in the opposition procedure and to have the pertinent questions of law examined by the BoA without risking to lose the entire patent. In poker you would say the suggestion of the ED puts the applicant in an "all in or cashing out" position.