Wednesday, December 05, 2018 T 1890/15 - Giving oral evidence, or replacing representative's pleading

In the present case, the patent proprietor (appellant) lodged an appeal against the decision of the opposition division revoking the European patent and requests oral submissions of a technical expert as accompanying person to explain the skilled person's understanding. The Board applies the criteria of G 4/95 and concludes that these were not complied with, and exercises its discretion referred to in G 4/95 by not permitting the technical expert as an accompanying person to make oral submissions.

Additionally, the Board deliberates whether the Enlarged Board in G 4/95, and specifically when considering that Art. 117 EPC did not provide a legal basis for hearing oral submissions by an accompanying person involving the presentation of facts and evidence, means that the Enlarged Board considered that an accompanying person, in particular a technical expert, gives oral evidence by way of making oral submissions at the oral proceedings, or merely presents (legal or technical) arguments in place of the presentation of the case (pleading) by the professional representative.

The Board concludes that should oral submissions by an accompanying person be considered and intended to be oral evidence comparable to a written statement ("affidavit") of said person, the same criteria as for the admission of late filed facts and evidence should apply. 

Summary of Facts and Submissions

I. The patent proprietor (appellant) lodged an appeal against the decision of the opposition division revoking the European patent No. 1 765 800.

(...)

X. The appellant's arguments, as far as they concern the decisive issues of the present decision, can be summarised as follows:

- Oral submissions of an accompanying person

The appellant's technical expert should be allowed to make oral submissions. He would merely explain the skilled person's understanding of the examples, in particular example 3, and elucidate the real pointer provided by example 3. The respondents could have brought their own expert. The fact that they decided against it should not have an impact on the hearing of the appellant's expert.

(...)

XI. The respondents' arguments, as far as they concern the decisive issues of the present decision, can be summarised as follows:

- Oral submission by an accompanying person

The appellant's technical expert should not be allowed to make oral submissions. Since example 3 contained no data, a discussion on issues, such as the right balance of production and selectivity, were bound to bring in new facts and information. The appellant had had ample opportunity to provide all necessary data and evidence. Relevant explanations could have been filed in writing as the issue whether example 3 of the application as originally filed provided a pointer towards the claimed combination had already been raised.

(...)

XIV. At the end of oral proceedings, the decision of the board was announced.

Reasons for the Decision

1. The appeal is admissible.

2. Oral submissions by an accompanying person

2.1 According to the decision G 4/95 of the Enlarged Board of Appeal (see OJ EPO, 1996, 412) oral submissions by a person accompanying the professional representative can only be made with the permission, and under the discretion, of the EPO. In exercising its discretion, the board should consider the following main criteria (see G 4/95, headnote and points 10 and 11 of the Reasons):

(i) The professional representative should request permission for such oral submissions to be made. The request should state the name and qualifications of the accompanying person, and should specify the subject-matter of the proposed oral submissions.

(ii) The request should be made sufficiently in advance of the oral proceedings so that all opposing parties are able properly to prepare themselves in relation to the proposed oral submissions.

(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.

(iv) The EPO should be satisfied that oral submissions by an accompanying person are made under the continuing responsibility and control of the professional representative.

2.2 In its letter dated 17 November 2017, the appellant notified the board that it will be accompanied by Mr Yeates, one of the inventors, as technical expert and requested permission for Mr Yeates to be allowed to make technical submissions, if required, on a number of issues, such as the background of the invention, common general knowledge, the disclosure the skilled person would derive from the application as filed, the invention, the prior art and the experimental data in the patent in suit. Any such submissions would be made under the continuing responsibility and control of the professional representative.

2.3 In the board's judgement, the subject-matter of the proposed oral submissions was rather generally defined and broadly covered all potential issues of discussion without indicating particularly relevant aspects or details. Indeed, it was only at the oral proceedings that the appellant specified the particular subject-matter of the expert's oral submission, namely the skilled person's understanding of the balance between reduction in catalyst selectivity and increase in olefin production, derivable from example 3 of the patent in suit. According to the appellant, this addressed the question as to the real pointer derivable from that example.

2.4 In decision G 4/95, the Enlarged Board pointed out that, when exercising its discretionary control in respect of a request for an accompanying person to present oral submissions, a board has to ascertain that all opposing parties are able to properly prepare themselves in relation to the proposed oral submissions and to reply to such oral submissions (G 4/95, OJ 1996, 412, point 10 of the Reasons). Therefore, the subject-matter of the proposed oral submissions must be clearly and exactly stated sufficiently in advance of the oral proceedings. This was at present not the case. Moreover, the question of a pointer towards the claimed subject-matter had already been an issue in the decision under appeal and was addressed in detail in the respondents' replies to the statement of grounds of appeal. If further evidence concerning this particular aspect was required, for example in the form of technical expertise, the appellant could and should have filed this evidence much earlier.

Criteria (i) and (ii) of decision G 4/95 were therefore not met. Since the respondents objected to Mr Yeates making oral submissions, criterion (iii) was also not complied with.

2.5 In view of the above, the board exercised its discretion referred to in G 4/95 by not permitting Mr Yeates as an accompanying person to make oral submissions.

2.6 Although not relevant for its decision, the Board notes that in decision G 4/95, the Enlarged Board did not accept that Article 117 EPC provides a legal basis for hearing oral submissions by an accompanying person involving the presentation of facts and evidence (G 4/95, OJ 1996, 412, point 8 of the Reasons). In view of the reference to Article 117 EPC in general, it is not entirely clear whether the Enlarged Board considered that an accompanying person, in particular a technical expert, gives oral evidence by way of making oral submissions at the oral proceedings, or merely presents (legal or technical) arguments in place of the presentation of the case (pleading) by the professional representative. Should oral submissions by an accompanying person be considered and intended to be oral evidence comparable to a written statement ("affidavit") of said person, the same criteria as for the admission of late filed facts and evidence should apply. Indeed, submissions by an accompanying person involving the presentation of oral evidence will by definition relate to factual circumstances which will require that the opposing party be given an adequate and proper opportunity to present facts, evidence and arguments in reply (Article 13(2) RPBA). In the absence of exceptional circumstances and of an agreement by the opposing party, a request for hearing an accompanying person on specific facts which is filed either shortly before the date appointed for oral proceedings, or at the oral proceedings, will therefore be refused. This is in line with the conclusions in point 10 of the Reasons of G 4/95.

(... remainder omitted ...)

Order

For these reasons it is decided that:

The appeal is dismissed.

This decision T 1890/15 (pdf) has European Case Law Identifier: ECLI:EP:BA:2017:T189015.20171219. The file wrapper can be found here. Photo obtained via Pixabay under CC0 license (no changes made).