Monday, 6 July 2015

T 756/09 - Surprising: an Australian patent attorney was allowed to present the case!?

In first oral proceedings in opposition appeal, the Board had admitted a new line of attack under Article 100(c) EPC into the appeal proceedings, and, after having heard the parties the Board expressed the opinion that the patent could not be maintained as granted because claim 1 violated Article 123(2) EPC. The respondent's representative then declared that he intended to file an auxiliary request. However, this required a prior consultation with the patent proprietor and its Australian representative. The Board informed the parties that, having taken into account the admission of the appellant's new line of attack at a very late stage in the proceedings and the need to give the respondent a fair chance to defend its patent, it was willing to continue in writing and exceptionally conduct second oral proceedings in the present case. Both parties agreed to hold second oral proceedings after the second week of March 2015. 
Only ten days before these second oral proceedings, the respondent informed the Board that Dr. Andrew Morton, an Australian patent attorney would join the respondent's representative in attending the oral proceedings on 18 March 2015. The respondent asked that Dr. Morton be allowed to speak in its name under the supervision of its representative. In support of its request, the respondent essentially submitted that Dr. Morton would not make submissions in the capacity of a technical expert, but as a patent attorney who was very familiar with the case, had advised the professional representative before the oral proceedings and would continue to do so during the oral proceedings. The Board made an -in my view- surprising decision as to this request, which seems to be difficult to reconcile with the criteria formulated by the Enlarged Board of Appeal in G 4/95, r. 10, last sentence & hn. II-b-iii and r.13 & hn.II-c. 


Summary of Facts and Submissions
I. The original opponent Simpoe SAS who is the legal predecessor of the current opponent/appellant (see below section XIII and point 1) filed an appeal against the decision of the Opposition Division rejecting the opposition against the European patent no. 0 968 47 [editors's comment: owned by an Australian company, the Australian company being represented by a European patent attorney based in Munich]. In the present decision the terms "the opponent" or "the appellant" will generally be used without making a distinction between the current opponent/appellant and its predecessor.
II. Claim 1 of the patent in suit reads as follows: [...]
III.-VI. [...]
VII. In a letter dated 2 September 2014, the appellant objected that claim 1 of the patent in suit contained subject-matter which extended beyond the content of the application as filed and thus violated Article 123(2) EPC. According to the appellant, the ground for opposition under Article 100(c) EPC had been raised before the Opposition Division and thus was still in the proceedings. Furthermore, the appellant pointed out that the new substantiation of this ground had been occasioned by the interpretation of claim 1 given by the patent proprietor in the infringement proceedings which were pending in Germany.
VIII. In reply to the appellant's new submissions, the respondent requested with letter dated 14 October 2014 that the appellant's new arguments and evidence be dismissed, or alternatively that the case be remitted to the department of first instance for further prosecution, in case the Board considered the new arguments and evidence allowable.
IX. With letter dated 28 October 2014, the appellant acknowledged that the new objection under Article 123(2) EPC raised after the submission of the statement of grounds of appeal was late-filed. However, its relevance justified its admission into the appeal proceedings.
X. On 14 November 2014 oral proceedings were held as scheduled before the Board.
The parties were heard on the question of whether the new line of attack under Article 100(c) EPC, put forward by the appellant for the first time in the letter dated 2 September 2014, should be admitted into the appeal proceedings.
After an interruption, the Board informed the parties that the new line of attack under Article 100(c) EPC was admitted into the appeal proceedings.
Having heard the parties on the question of whether the subject-matter of claim 1 of the contested patent extended beyond the content of the application as filed (Articles 100(c) and 123(2) EPC), the Board, after deliberation, expressed the opinion that the patent could not be maintained as granted because claim 1 violated Article 123(2) EPC. The respondent's representative then declared that he intended to file an auxiliary request. However, this required a prior consultation with the patent proprietor and its Australian representative.
The Board informed the parties that, having taken into account the admission of the appellant's new line of attack at a very late stage in the proceedings and the need to give the respondent a fair chance to defend its patent, it was willing to continue in writing and exceptionally conduct second oral proceedings in the present case.
Both parties agreed to hold second oral proceedings after the second week of March 2015.
The Chairman of the Board then announced that the appeal proceedings would be continued in writing.
XI.-XIV. [...] 
XV. On 18 March 2015, second oral proceedings were held as scheduled before the Board.
[...]
XVII. - XIX. [...]
Reasons for the Decision
Admissibility of appeal and status of appellant
1. The appeal is admissible. Dassault Systèmes SA has validly acquired the status of opponent and appellant from the original opponent Simpoe SAS through universal succession, as shown by the written evidence submitted with the letter dated 26 February 2015.
Oral submissions by an accompanying person
2. By fax dated 9 March 2015 [editor's note: so only 10 days before the oral proceedings], the respondent informed the Board that Dr. Andrew Morton, an Australian patent attorney, would join the respondent's representative in attending the oral proceedings on 18 March 2015. The respondent asked that Dr. Morton be allowed to speak in its name under the supervision of its representative.
2.1 With letter dated 10 March 2015, the appellant declared that Dr. Morton should not be allowed to speak at the oral proceedings because the respondent had requested permission for oral submissions by an accompanying person only ten days before the oral proceedings and thus had failed to meet the one-month deadline for making such a request. In this respect, the appellant referred to the case law of the boards of appeal and in particular to G 0002/94 (OJ EPO 1996, 401), G 0004/95 (OJ EPO 1996, 412) and T 0334/94 of 25 September 1997. Furthermore, the appellant noted that Dr. Morton was not a technical expert, but an Australian patent attorney.
3. As held by the Enlarged Board of Appeal in G 0004/95, oral submissions by a person accompanying the professional representative cannot be made as a matter of right, but only with the permission of and at the discretion of the EPO. According to one of the criteria to be considered by the EPO when exercising its discretion, a request made shortly before the oral proceedings should, in the absence of exceptional circumstances, be refused unless the opposing party has agreed to the making of the oral submissions requested.
3.1 In the present case, the request for oral submissions was made only ten days before the oral proceedings and the appellant had denied its agreement both in writing and at the beginning of the oral proceedings. Hence, according to the case law of the boards of appeal, a person accompanying the professional representative should not be allowed to make oral submissions unless exceptional circumstances could be identified.
3.2 In support of its request, the respondent essentially submitted that Dr. Morton would not make submissions in the capacity of a technical expert, but as a patent attorney who was very familiar with the case, had advised the professional representative before the oral proceedings and would continue to do so during the oral proceedings.
3.3 Taking into account the circumstances of the case, in particular that Dr. Morton was not a technical expert and thus was not expected to elaborate on technical aspects of the case in a manner which might take the appellant by surprise, the Board concluded that submissions made directly by Dr. Morton under the supervision of the professional representative would not put the appellant at a disadvantage and might contribute to an efficient debate. Hence, despite its late filing, the Board decided to accede to the respondent's request for oral submissions by an accompanying person with the proviso that such submissions would be stopped if new technical facts or arguments were introduced into the debate.
[...]
The author wishes to thank one of the readers to this blog to draw his attention to this decision, which -despite its deviation from important practice as to what non-EPC state attorneys can do in oral proceedings in opposition/ opposition appeal- surprisingly only got a D distribution code, and -more surprisingly- did not comment as to why it deviated from earlier decisions and the Guidelines despite Art.20(1) and Art. 20(2) RPBA, not why it did not refer to the EBoA despite Art. 21 RPBA, as to the conditions under which an accompanying person can speak. The argument that a non-EPC attorney is more/most familiar with the case cannot really be considered an exceptional situation...

This decision T 756/09 (pdf) has European Case Law Identifier: ECLI:EP:BA:2015:T075609.20150318. The file wrapper can be found here. Photo "Rock Wallaby Sign" by Peter Firminger obtained via Flickr under CC BY 2.0 license (no changes made).

7 comments :

  1. This decision is problematic in several respects because it goes against two key provisions of decision G 4/95:
    1) if the request to hear an accompanying person is not filed in due time, and the other party refuses the accompanying person to be heard, then the EPO has no discretion allowing it it to hear an accompanying person!
    G 4/95 clearly states in the summary 2.b.iii) "A request which is made shortly before or at the oral proceedings should in the absence of exceptional circumstances be refused, unless each opposing party agrees to the making of the oral submissions requested." It is difficult to see which exceptional circumstances
    Given the refusal of the other party, the Chamber had no authority to allow the presentation of Mr. Morton.
    2) according to the summary 2.dc) “No special criteria apply to the making of oral submissions by qualified patent lawyers of countries which are not contracting states to the EPC”. This means that the qualified patent lawyers of countries which are not contracting states to the EPC are nothing more than accompanying persons.
    However, the board took pretext of the quality of Australian representative to allow Mr Morton to speak!

    It will not be surprising if in future European agents will be forced by their American clients to request the right to speak for American patent attorneys before Opposition Divisions or Boards of Appeal by referring to this decision. There is even no need to meet the deadline of a month!

    I believe that the Board committed a substantial procedural violation by not respecting the criteria set out in G 4/95 on the hearing of accompanying persons. The Board did neither respect the letter nor the spirit of G 4/95.
    The representative should have filed a request under R 106, which he manifestly did not do.

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  2. To me it seems like the Board made a serious misjudgment to not discuss explicitly and well-argued why it deviated from the GL and -even worse- why the Board did not refer to the Enlarged Board as it is clear that they deviate from G 4/95.
    Is there something the appellant could have done to "force" such a referral? If they had explicitly requested so, could the Board have refused that request? Seems a procedural violation to me that the Board did not refer, also substantial and equitable -- but it the Board took the request into account and refused it, Rule 104(b) seems not to give any valid ground for a successful petition, or? Moreover, as the proceedings continued, it looks like the chance for a successful petition for review are zero, as the appellant should immediately have raised the objection (R.106) in an explicit and specific manner (e.g. R 4/08).

    W

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  3. Further comments

    It is interesting to compare this decision with two previous decisions of Boards in which the Boards refuse to hear as accompanying person two candidates for the EQE, cf. T 840/95 and T 378/08. An Australian patent attorney seems thus more capable of representing a client than candidates to the EQE……
    I think that a petition for review should have been possible, as the procedure set out in G 4/95 has not been respected.
    The request was clear, and merely ignoring it was in my opinion an error. It would be too easy for Boards to ignore what was decided by the enlarged Board. Knowing however the propensity of the enlarged Board to dismiss petitions for review, it is doubtful that it would have had a chance of success. They could easily have said it was an error of judgement.
    The whole discussion about the fact that the Australian patent representative was not a technical expert and hence the opponent would not be surprised is very odd to say the least.
    It is clear that in G 4/95 the Enlarged Board did not say expressis verbis that qualified patent lawyers of countries which are not contracting states to the EPC are not technical experts, but in the framework of the decision the intention of G 4/95 was clear: protect qualified patent representatives in the meaning of Art 134(2) vis-à-vis qualified patent lawyers of countries which are not contracting states to the EPC.
    This aspect has been completely ignored by the Board.
    Wait and see if further requests of that kind turn up in the future. I am not sure that many Boards share the view of this one with respect to “foreign” patent lawyers. I would take bets to the contrary.

    ReplyDelete
    Replies
    1. If no petition is filed, is there another possibility how Board 3.5.07 can be told that they made an error to allow the Australian attorney to speak and not comply with the requirement of G 4/95 that the Australian should not have been allowed to speak because the other party objected (G 4/95, hn II(b)(iii) "(iii) A request which is made shortly before or at the oral proceedings should in the absence of exceptional circumstances be refused, unless each opposing party agrees to the making of the oral submissions requested."), and to consider the statements not made?
      Can the the Enlarged Board or the President interfere out of own motion?
      What is the value of the Rules of Procedure of the Boards of Appeal if the Boards seem to rather easily not act according to them: here Art.20(1), Art. 20(2) and Art. 21 RPBA seem to be violated?

      W

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  4. It's not the first case that either Opposition Division or BofA ignore important decisions, specially Op.Div. And they do not give convincing arguments.

    ReplyDelete
  5. Such a sweeping statement is by no means helpful and does not bring matters forward. Why then publish it?
    There is at least a recent decision in which a BoA has considered that by not abiding to case law and to the Guidelines, the examining division committed a substantial procedural violation: T 129/14.
    Even the mere quotation of case law cannot replace a proper argumentation: T 1205/12.

    ReplyDelete
  6. This reminds me of a certain examination case.

    The person in charge of the case was a lawyer and national of non-EPC country A, but was admitted to the bar in EPC-state B, of which he was presumably also a citizen. However, he practiced in an IP firm of EPC-state C, where on the face of it he wasn't a legal practitioner. He had been in charge of several files, including one for which oral proceedings were summoned in the next days.

    The 1st examiner noticed the embarrassing problem with Art. 134(8) when he looked at the person's CV on the firm's web site. He raised issue with the person in question, who in the end traveled accompanied by a bona-fide EPA. However the accompanying person said nothing whatsoever beyond stating his ID. The substance of the case was otherwise entirely handled by the problematic person.

    As far as this case was concerned, all ended well, but if you think about it, all procedural acts performed by this person in that and other cases were nevertheless formally invalid...

    The person in question has since cleaned up his act.

    ReplyDelete

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