Dangers of Copy & Paste



The fist embodiment

In the case T395/13, the technical board of appeal of the EPO had to deal with a case where the appellant - who had not participated in the oral proceedings of the 1st instance -  argued that the decision was not sufficiently reasoned.

According to the appellant,

Sections 11.4 and 11.5 of the decision under appeal did not relate to the present case, but could instead be seen to have been copied from the decision in one of the parallel cases involving the same parties and opposition division (specifically the opposition against European patent No. XXXXXXXXX). The document referred to in those sections as E2 was clearly not that identified as E2 in the section "Facts and submissions" in the decision under appeal, but was instead the document now referred to as E2A. That these sections were not relevant to the present case was also apparent from the fact that it used terminology (specifically the expression "local client printer module") which appeared only in the parallel case, not in this one.

 The board adds that:

It is also clear that ..... sections 11.4 and 11.5 are exact copies of the corresponding sections of the decision taken by the same opposition division in the parallel opposition procedure against the European patent No. XXXXXXX, including even the repetition of mistakes (such as "The fist embodiment" in section 11.5.2). (emphasis added, cf. reasons, item 2.1)

The decision was set aside and remitted to the 1st instance.

No Copy & Paste of Preliminary Opinion - T 1312/10

In the decision on the basis of the appeal T 1312/10, the Examining Division of the EPO had merely copied the reasoning given annex to the summons to oral proceedings and did not discuss the additional arguments filed in response thereto in arriving at its decision to refuse the application.

The Board judges that this constitutes a substantial procedural violation and ordered that the appeal fee be refunded although a refund was not even requested. The Board of appeal was very assiduous not only in this point but further introduced new documents D4 and D5 into the procedure (wherein D5 was not even prior art) but finally found that the claim 1 complies with the substantial requirements of the EPC.

Right to Oral Proceedings? Not Always!

According to §46(1) of of the German Patent Act, the Examining Division of the German PTO (DPMA) has to grant a request for oral proceedings provided that the latter is relevant to the case ("sachdienlich").

It is well-established case law that this relevance/pertinence is given, as a rule, for a first hearing, and a non-compliance with this requirement is generally considered a violation of the applicant's right to be heard. I have not learned of any exception to this rule - until now.

The 20th senate of the Bundespatentgericht had to decide on an appeal against a decision to reject an application in 20 W (pat) 94/05. The examining division had rejected the patent without scheduling oral proceedings despite of the applicant's auxiliary request to be heard orally.

The examining division had objected against the unity of multiple independent claims and had won the impression that the applicant would not be willing to react on these objections during oral proceedings. This impression was based on the resolute position the applicant took during the procedure in writing. As a consequence, the oral proceedings were considered not relevant to the case.

Surprisingly, the 20th senate has confirmed this ruling. This will surely increase the legal incertainty in the german application procedure. It is the primary task of patent attorneys to represent the cases of their client in a convincing, resolute and determined way. Shall we now express our doubts in our own arguments in the written submissions in order to avoid a rejection without oral proceedings?

The right to oral proceedings is based on the fact that an oral discussion has a nature different from a procedure in writing and I think that not only the applicant has to account for the possibility that the examining division changes its mind during the discussion but the examining divion also has to account for the possibility that it will be able to convince the applicant - no matter how determined the applicant appears in writing. Depriving the applicant of his right to oral proceedings is clearly a violation of the right to be heard and I hope that this decision will remain isolated.