Friday, 1 July 2016

T 2365/11: arguments to save your patent that fail without proof

In this opposition appeal the patent proprietor tried some interesting procedure related arguments to save his patent. 
A first line of arguments was based on the fact that in a specific letter another opponent was mentioned than the person who filed the opposition. According to the proprietor: "Since the 'true' opponent was therefore not known, and in any case the original opponent had no legal capacity, this constituted a circumvention of law by abuse of due process according to G3/97, rendering the opposition inadmissible." A second line of arguments was that replacing the chairman of the Opposition Division one day before the oral proceedings resulted in a procedural violation. 
The proprietor was not very successful with these arguments. It seems that the problem was that the proprietor could not prove what he argued - at least he did not provide enough evidence and arguments to show that there was a real circumvention of law and that the new chairman was not well-prepared for the oral proceedings.

Summary of Facts and Submissions
I. The appeal of the patent proprietor is directed against the decision of the Opposition Division, posted on 20 October 2011, to revoke the patent. [...]
II. The opposition proceedings had been initiated by the filing of a notice of opposition on 4 December 2009 by the European patent attorney of a natural person, Dr Dorothea Engelhard (hereinafter Dr D.E.).
With letter of 24 August 2011, the same attorney informed the Opposition Division that the representative of the opponent Hisamitsu would be using English at the oral proceedings scheduled for 5 October 2011.
In the oral proceedings on 5 October 2011 the patent in suit was revoked by the Opposition Division in a different composition from the one which had sent out the summons (change of chairperson).
Reasons for the Decision
3. Admissibility of the opposition
The notice of opposition was filed by a natural person (Dr D.E.). According to the appellant (patent proprietor), the difficulty with the admissibility of the opposition arose from the submission of 24 August 2011 (filed by the opponent's attorney to indicate the language which would be used during the oral proceedings before the Opposition Division) referring to Hisamitsu as the opponent. It took the view that the law had been circumvented by abuse of due process, because the opponent mentioned was different from that which had filed the notice of opposition. This created ambiguity, in that the identity of the opponent was not clear. This was different from the situation in which the "true" opponent was not known at all, as in the case leading to G3/97 (OJ EPO 1998, 245). D8 showed that Hisamitsu was active in the same field of technology. Moreover, as the declared opponent was acting on behalf of Hisamitsu it did not have full legal capacity, because it could not for instance withdraw the opposition without asking the true opponent, Hisamitsu. Therefore the opposition was not admissible.
In the Board's opinion, while there is a general obligation for the Board to determine ex officio who is a party in the proceedings should there be any doubt, in the present case, there is no doubt. The opponent Dr D.E. was clearly identified in the notice of opposition. Whether or not the correctly identified opponent is acting on behalf of a third person does not affect the admissibility of the opposition. In decision G3/97 the Enlarged Board of Appeal explained that according to the EPC a third person could act on behalf of a "true opponent": "An opposition is not inadmissible purely because the person named as opponent according to Rule 55(a) EPC (1973) is acting on behalf of a third party.",(Order, 1(a)). According to that decision, such an opposition is inadmissible only if the law has been circumvented by abuse of process, for example if the third person is acting on behalf of the patent proprietor or as a representative (Order, 1(b) and 1(c)). Both these situations can be excluded in the present case: since the patent proprietor is complaining, it seems rather unlikely that the opponent is acting in its name; the opponent is represented by a European patent attorney, and therefore is not itself acting as representative.
No further circumvention of law by abuse of process was established by the appellant in the present case.
The fact that the opponent may get instructions from a "true opponent", or in other words may not be acting on its own in all situations, is in any case only relevant to the internal relationship between the opponent and the "true opponent"; it has no bearing on the opposition proceedings (G3/97, last sentence of point 2.1 and point 3.2.2). Moreover, the Board notes that apart from the similar field of technology no further explanations were given as to why "Hisamitsu" is the "true opponent" in the present case. Anyhow, the fact that a name different from that of the opponent identified in the notice of opposition was additionally mentioned in a letter from the opponent's attorney has no bearing on the correctly identified opponent in the notice of opposition (Rules 76(2)(a) and 41(2)(c) EPC).
For the above reasons, the opposition filed by Dr D.E. is admissible.
4. Substantial procedural violation
According to the appellant (patent proprietor), and not contested by the respondent (opponent), at the beginning of the oral proceedings the chairman of the Opposition Division informed the parties that its composition (chairperson) had changed the day before. The appellant (patent proprietor) regarded this replacement just one day (possibly only hours) before the oral proceedings as a substantial procedural violation: at such short notice the new chairman could not familiarise himself with the case, so there had been a breach of its right to be heard pursuant to Article 113 EPC. Clear evidence of the difficulty encountered by the chairman was the Opposition Division's complete change of mind between the summons and the oral proceedings.
In the Board's opinion, the second argument is not valid, because the Opposition Division clearly indicated in its annex to the summons (page 3 of the annex posted on 26 May 2011) that its opinion on the objection pursuant to Article 100(b) EPC was provisional and non-binding. Moreover, it is in the nature of oral proceedings that the parties' written arguments are heard orally, and possibly expanded on, before all three members of the division. Obviously this can lead to the division changing its mind compared with the opinion it may have expressed before the oral proceedings. Hence, such a change of mind cannot in itself constitute a procedural violation infringing Article 113 EPC.
Concerning the change of composition, the Board would like to point out that, under Rule 11(1) EPC, "Technically qualified examiners acting as members of Search, Examination or Opposition Divisions shall be assigned to Directorates." And according to the Guidelines Part D IV.2, "The director responsible will then designate the three technical members of the competent Opposition Division." Hence, the director has the administrative and hierarchical power to designate the three technically competent members of the Opposition Division in charge of a particular case (Article 19 EPC). By extension, he also has the power to designate alternate members if one of the original members has to be replaced.
It seems self-evident that any new member must be equally competent in the technical field of the case and must be able to familiarise himself with the file. This is a prerequisite for respecting the right to be heard , which presupposes that the content of the file is reasonably known to all the members of the Opposition Division, so that they can each understand the positions expressed by the parties during oral proceedings, and take their own position on every aspect to be decided. In this context the Board would stress that it is not the time available for studying the file which is important, but the objective knowledge of it. That a change in the composition of the opposition division does not in itself lead to a breach of a party's right to be heard has been made clear for instance in T 1652/08 (point 2 of the reasons) cited by the appellant (patent proprietor) itself. The present Board shares the opinion expressed in that decision. In that case, the composition of the opposition division also changed before the oral proceedings, albeit earlier than only one day before, and the Board ruled, in point 2.2, that ,,Die neue Vorsitzende hatte somit Gelegenheit, die gesamten, vor ihrer Einsetzung vorgetragenen Tatsachen und Argumente der Parteien in gleicher Weise zur Kenntnis zu nehmen und zu würdigen wie die ursprüngliche Vorsitzende." ("The new chairwoman thus had the opportunity to note and consider all facts and arguments submitted by the parties before her assignment to the case, in the same way as the original chairwoman"). In the present case, even though the chairman said he had been designated one day before the oral proceedings, neither the appellant (patent proprietor) nor the respondent (opponent) has presented evidence to show that the chairman did not have the requisite knowledge of the file. In the absence of any such evidence, it cannot be assumed that one day was not enough. Whether or not the necessary knowledge can be acquired in one day depends on the technical and legal complexity of the file. This question has to be assessed by the director, together with the member concerned. In the present case, in the absence of objective evidence to the contrary, it has to be assumed that the time available was sufficient.
For these reasons, no infringement of Article 113 EPC and no substantial procedural violation have been established, and there is therefore no need to consider the question of reimbursement of the appeal fee.
For these reasons it is decided that:
1. The decision under appeal is set aside.
2. The case is remitted to the department of first instance for further prosecution.

This decision T 2365/11 (pdf) has European Case Law Identifier:  ECLI:EP:BA:2016:T236511.20160224. The file wrapper can be found here. Photo "Straw Men Parade" by Jonathan Rolande obtained via Flickr under CC BY 2.0 license (no changes made).

1 comment :

  1. The proprietor is just awkward, that’s all. The more so since he obtained that the ground of opposition under Art 100,b) does not prejudice the maintenance of his patent.

    It is not the first time that an opposition is filed by a third party, especially by a professional representative. It is however strange that the name of the real opponent surfaced during the proceedings. It is somehow surprising that a member of a well- known firm or representatives gives away, for no reason at all, the name of the principal, i.e. the true opponent. This should not have happened and can be considered as not very good, but as the EBA said this is a matter of relationship between the strawman and the third party which does not want to appear: The question whether the opponent's acts accord with the intentions or instructions of the principal is relevant only to the internal relationship between the latter and the opponent, and has no bearing on the opposition proceedings, cf. last sentence of 1st § of point 2.1 of G 3/97.

    When one thinks back, the reason why the EBA accepted the filing of an opposition is that the principal is at the mercy of the strawman. If the strawman withdraws the opposition, the principal cannot substitute as “The opponent does not have a right of disposition over his status as a party”, cf. 1st sentence of point 2.2 of G 3/97, or G 2/04.
    It does not matter in which way one looks at the matter, the argument of the proprietor in this respect was ill founded and correctly dismissed by the BA.

    This decision is also interesting for another reason, namely whether the last minute change of a member of the oral proceeding can be considered as a substantial procedural violation? The answer is negative.

    On the one hand, it confirms established case law that a change of opinion of a first instance division at oral proceedings in relation to that expressed in the annex to the summons cannot not be considered as a substantial procedural violation. The opinion expressed in the annex to the summons is purely provisional. See for example T 1758/05, T 1887/12, or T 23781/12.

    On the other hand, the change of a member of the opposition division at the oral proceedings can neither be considered a substantial procedural violation, cf. T 160/09. In T 1207/09, the BA even considered that the applicant had no right to know the reasons why a change in the composition of the division took place. This applies mutatis mutandis to an opposition division.

    In the present case, the new chairman wanted to explain the change in composition of the division. He should have known better. But the BA has put things back in place.