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. 

Monday, June 04, 2018 T 1668/14 - Stretching what an accompanying person can do?

G 4/95 is generally understood as providing quite strict requirements as to when and how to announce an accompanying person and as to his/her role and type of contribrutions to oral proceedings in opposition. Citing and just relying on its headnotes has the risk of taking the conclusions out of context and not interpeting the words of the headnote as they are to be understood in the light of the whole decision, but in view of the limited space in an introduction, I just cite the headnotes and refer to the complete decision here. G 4/95's headnotes read: 
"1. During oral proceedings under Article 116 EPC in the context of opposition or opposition appeal proceedings, a person accompanying the professional representative of a party may be allowed to make oral submissions on specific legal or technical issues on behalf of that party, otherwise than under Article 117 EPC [giving or obtaining evidence], in addition to the complete presentation of the party's case by the professional representative.
2. (a) Such oral submissions cannot be made as a matter of right, but only with the permission of and under the discretion of the EPO.
(b) The following main criteria should be considered by the EPO when exercising its discretion to allow the making of oral submissions by an accompanying person in opposition or opposition appeal proceedings:
(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.
(c) [...]"
G 4/95's reason 10 clarifies that the requirement that "if during oral proceedings before either an opposition division or a board of appeal a party wishes that, in addition to the complete presentation of its case by its professional representative, oral submissions should be made on its behalf by an accompanying person, the professional representative should request permission for such oral submissions to be made, well in advance of the oral proceedings. When making such a request, the professional representative should state the name and qualifications of the person for whom permission to make additional oral submissions is requested, and should specify the subject-matter on which such person wishes to speak" is an implementation of Art. 113(1) EPC. 
In the current case, the opponent requested that an accompanying person would be allowed to speak on technical issues in his qualification as Elektrotechniker. But it took an unexpected twist - at least for me. Although it seems to me that it was not announced/requested in advance that he would, in his other qualification as German patent attorney, also talk on legal matters - legal matters he is not qualified for in my view as his qualification is German patent law, not the EPC. Further, in my understanding, he presents the admissibility case completely by himself, rather than "in addition to the complete presentation by the professional representative". I am interested to hear your opinions. 

Friday, October 13, 2017 T 0231/13 - No inventor needed, a professional representative is enough

At the opening of the oral proceedings their postponement was requested, because one of the inventors, who wished to accompany the professional representative, could not be present due to serious illness that required medical intervention. This was proven by a medical certificate dated 28 July 2017 and filed during the oral proceedings. The applicant submitted that the request for postponement could not have been made before because the need for medical intervention had been sudden and the representative had been informed of it only the evening before the oral proceedings. The Board denied the request, as it was not made as soon as possible, and because the party was duly represented. 

Monday, July 06, 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.