Monday, November 16, 2020 User consultation on insertion of new Article 15a (oral proceedings by videoconference) in the Rules of Procedure of the Boards of Appeal (RPBA 2020)

The EPO's Boards of Appeal Committee (BOAC) and the President of the Boards of Appeal of the EPO have invited users to take part in the consultation on proposed new Article 15a RPBA. The proposed article is available in the English version. The consultation can be found here.

This online consultation will remain open until 12.00 hrs CET on 27 November 2020.

The proposed text reads:

Article 15a Oral proceedings by videoconference

(1) The Board may decide to hold oral proceedings pursuant to Article 116 EPC by videoconference if the Board considers it appropriate to do so, either upon request by a party or of its own motion.

(2) Where oral proceedings are scheduled to be held in person, the Chair may allow a party, representative or accompanying person to attend by videoconference. In exceptional circumstances, the Chair may decide that a party, representative or accompanying person shall attend by videoconference.

(3) The Chair may allow any member of the Board in the particular appeal to participate by videoconference. 

Par. (1) thus provides that oral proceedings may be held by videoconference.

Par. (2) implicitly provides that oral proceedings may be held in person; par (2) explicitly provides for hybrid oral proceedings where  a party, representative or accompanying person may (voluntarily) or shall (mandatorily) attend in oral proceedings held in person.

Par. (3) provides that any member of the Board, also the Chair, may participate by videoconference; implicitly, it provides that any Board member may participate by videoconference in oral proceedings by video conference as well as in hybrid oral proceeding as well as in oral proceedings where all parties, representatives and accompanying persons and (presumably) some -but not all- Board members attend in person.

The text of the proposed new provision and some explanatory remarks are set out in the document that is available from the Download menu in the original message. 

The text of the invitation on the webpage is duplicated below in its entirety (emphasis added).

Tuesday, July 14, 2020 T 1378/16 - Oral proceedings before the Board held by videoconference

The oral proceedings in the present case took place on 8 May 2020 and were the first held by videoconference in the history of the Boards of the Appeal of the EPO. Unlike some national legal systems, the EPC does not stipulate explicitly the form(s) in which oral proceedings under Article 116 EPC shall take place. For these reasons, the Board considers it appropriate to address briefly the legal basis for oral proceedings within the meaning of Article 116 EPC.

Tuesday, March 05, 2019 T 0831/17 - Haar? Referral. [G 2/19]

A highly intriguing referral to the Enlarged Board, for multiple reasons: it concerns questions regarding the extent of the right to be heard (by a third party) and regarding the proper venue of oral proceedings (in the light of the much-debated relocation of the Boards of Appeal to Haar).

In the present case, during examination proceedings of EP2378735 third party observations (containing objections under Art. 84 EPC) had been filed by private practice firm Jostarndt Patentanwalts-AG. The patent was nevertheless granted. Jostarndt then lodged an appeal against the decision to grant, essentially arguing that, since clarity is not a ground for opposition, it felt deprived of its opportunity to object under Art. 84.

However, the Board found itself bound by the EPC - which only allows an adversely affected party to the proceedings to appeal, the author of third party observations according to Art. 115 EPC not being a party to the proceedings - and deemed the appeal inadmissible.

The appellant saw an unacceptable hiatus in legal protection and demanded clarification of this fundamental question by a decision. It therefore requested oral proceedings on the above question of admissibility.

Surprisingly, after having been summoned on 25 January 2019 for a hearing in the premises of the Board of Appeal in Haar, the appellant then requested transfer of these oral proceedings to Munich, arguing that the European Patent Office is headquartered there and, unlike The Hague, Haar is "not evidently intended as a place for acts or proceedings" in the European Patent Convention.

The move in 2017 of the Boards of Appeal from the Munich Isar building to the municipality of Haar - in a manifest attempt to increase the perceived independence of the Boards of Appeal - was met with dismay and criticism from both the Boards themselves and the public. 

The present Board (3.5.03) considered in particular the question of the right venue of the Boards of fundamental importance for ensuring a uniform application of the law in all appeal proceedings, and decided to refer the following questions (loosely translated from the original German wording) to the Enlarged Board:

(1) In appeal proceedings, is the right to oral proceedings under Article 116 EPC restricted if the appeal is prima facie inadmissible?

(2) If the answer to Question 1 is yes, is an appeal against the decision to grant a patent prima facie inadmissible in this sense, which Appeal has been filed by a third party within the meaning of Article 115 EPC and which has been substantiated by arguing that there is no alternative remedy under the EPC against a decision of the Examining Division not to consider the third party’s objections concerning the alleged contravention of Article 84 EPC?

(3) If the answer to one of the first two questions is no, can the Board hold oral proceedings in Haar without violating Article 116 EPC, if the appellant complains that this location is not in conformity with the EPC and requests that the oral proceedings be moved to Munich?

Questions 1 and 2 are interesting for querying the extent of the right to be heard in proceedings before the EPO. Question 3 is likely to have the greatest impact, as it boils down to whether the President or the Administrative Council of the European Patent Organisation had the power to relocate the Boards (or departments of the Office within the meaning of Article 15 EPC in general) outside the locations mentioned in Art. 6(2) EPC or to whether "Munich" in Art. 6(2) should be interpreted merely as the city with that name (not including Haar) or a (not well-defined) greater Munich area. It would appear that the referring Board favors a more a strict interpretation of “Munich”.

Tuesday, October 24, 2017 T 1972/13 - Examination at an end?

With his response "R3" to summons for oral proceedings, the applicant filed amended claims of respectively a main and an auxiliary request, together with arguments. In addition, the applicant requested "cancellation of the oral proceedings and the continuation of the examination in writing, possibly supplemented by a telephone interview with the primary examiner, if the Examination Division deems it expedient". Subsidiarily it was requested "that the oral proceedings are conducted by video-conference, using IP technology; and that the date of the oral proceedings is changed". Shortly after, the applicant's representative contacted the primary examiner by telephone asking "whether the proceedings could be cancelled, and if not whether they could be postponed ... or held by visio [sic] conference". The examiner replied "that he would have a look at the case and at the internal instructions before giving an answer" (idem). With a communication a few weeks later, the applicant was informed that the oral proceedings were cancelled and that the procedure would be continued in writing. Subsequently, the decision to refuse the application was issued. In its reasons, it said "The examining division consented to the request of the applicant to cancel the oral proceedings and to continue the examination in writing, thereby issuing this decision." The applicant appealed.

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. 

Wednesday, January 25, 2017 T 1205/13 - A request that was not decided upon

In the summons to oral proceedings before the Examining Division, the Examining Division objected under Art.56 EPC (inventive step). The applicant then replaced those claims with two new sets, which were refused because of deficiencies under Art.123(2) and 84 (extension of subject-matter and clarity) caused by the amendments. In appeal, the applicant filed the original claims as main request. What did the Board do? No decision was taken in first instance about this claim set, as the applicant replaced them before a decision could be taken - the applicant was adversely affected by the refusal, but the refusal related to the replaced claim. Also, the refusal was based on Art. 123(2) and 84, and not on Art. 56 that the Examining Division held against these claims in its preliminary opinion.

Tuesday, November 29, 2016 T 628/14 - Within time limit for making written submissions, but too late

In this opposition appeal, an opponent submitted new documents in response of the invitation to oral proceedings under Rule 116(1) EPC ("When issuing the summons, the European Patent Office shall draw attention to the points which in its opinion need to be discussed for the purposes of the decision to be taken. At the same time a final date for making written submissions in preparation for the oral proceedings shall be fixed. Rule 132 shall not apply. New facts and evidence presented after that date need not be considered, unless admitted on the grounds that the subject of the proceedings has changed."). The documents were not admitted in the proceedings as they were late filed and prima facie not relevant. The Board emphasized that the invitation for written submissions should, according to established case law, not be construed as an invitation to file new evidence or other material departing from the legal and factual framework of issues and grounds pleaded as established with the notice of opposition. The Board also reviewed that it is at the first-instance division's discretion to admit late filed documents or not, and concluded that the first instance division did not exercise its discretion in an unreasonable way as it had assessed the prima facie relevance of both documents.

Wednesday, August 03, 2016 T 1717/13 - How many tries should you get in OP?

How many tries should an opposition division allow a proprietor to rectify an added subject matter problem? After the opposition division had maintained its added subject matter objections during the oral proceedings, the proprietor filed three more auxiliary requests. The first two were admitted into the procedure but the third was not. The reasons given in the minutes are that the third request was late filed and did not resolve an earlier objection.

In appeal the proprietor alleged that procedural violations took place. In particular, he claims that:

(a) by not admitting further claim amendments to overcome newly raised objections by the opposition division during the oral proceedings; in this respect, the opposition division exercised its discretion to disregard amendments incorrectly;

(b) by causing the patent proprietor's representative to be taken by surprise during the oral proceedings by giving contradictory reasoning, which made it difficult to react to newly raised objections;

(c) by not giving sufficient time to take into account the newly raised objections during the oral proceedings and to consider a new version of a main claim in order to be able to appropriately react to the newly raised objections.

The board gives the opposition division a wide berth to make its own decisions with respect to admitting auxiliary request or not. Some doubts are expressed about the divisions refusal to allow all  further auxiliary requests, but in the end no substantial procedure is found. 

At the end of the cited part of this decision there is also an interesting analysis of intermediate generalizations.

Sunday, May 15, 2016 T 985/11 Absence of proprietor leading to revocation?

The decision relates to an opposition appeal. The proprietor was absent during the oral proceedings. The Board was willing to allow auxiliary request 3. The appellant requested the patent to be revoked since the description was not adapted to this request and could not be adapted during the oral proceedings because the proprietor had chosen to be absent. The appellant was of the opinion that it was established case law to revoke the patent in such a situation. The Board had to review the case law and came to the conclusion it had a discretion in such matters.

Friday, April 22, 2016 J 12/15 Further processing with brief response to an office action

This case deals with an appeal after the Examining Division refused a request for further processing.

In a second communication, the Examining Division had in a very brief reasoning objected against the claims "While the larger part of the claims are considered now in unity ... it is not understandable how the present claim 12 could result in unity with all the preceding claims". 

The representatve did not respond in time and thus had to request further processing. In an also very brief response to the communication,  the following substantive remarks were made "...the Applicant respectfully disagrees, especially with regard to claim 12. It is believed that the invention as currently claimed is both novel and involves and (sic) inventive step in accordance with Articles 54 and 56 EPC, and the claims should be allowable. Reconsideration of the application is requested, and Oral Proceedings are requested in the event the Examiner is minded to refuse the application".

The Examining Division rejected the request for further processing and gave the following reasons for its decision "Under current EPO practice, as decided in the 50th PPC Meeting of 24-25 September 2009, a reply to a communication from the Examining Division without any substantive observations or amendments, does NOT constitute a reply to a communication under Article 94(3) EPC. The omitted act was not filed within the time limit set in Article 121 EPC. The request for further processing is therefore rejected".

An issue to be settled by the Board of Appeal was whether the request for oral proceedings was phrased in such a way that the Examining Division should have granted it. 

On a personal note from the blogger: to me the approach and argumentation of the Examining Division is highly surprising. A PPC meeting cannot be seen as any legal basis, let alone for a step with serious consequences. Had this response of the applicant been filed in time, no doubt the Examining Division would have gone for  a refusal/oral proceedings, thus accepting that a response was filed and that the applicant had now been heard. It seems unlikely that the Examining Division would have send out a R.112 'deemed withdrawal', which is the proper response of the EPO if no response is timely filed by the Applicant.  In a proper working legal system it cannot be left to the mood of the Examining Division to decide on how to deal with a response. Unfortunately, the Board did not get to the point to comment on this matter.
Catchwords:

An adverse decision issued without granting the aggrieved party's request for oral proceedings must be declared void ab initio and without legal effect. Silence on the part of the appellant cannot be interpreted as withdrawal of the request for oral proceedings - see points 7 and 8 of the Reasons.

Tuesday, April 12, 2016 R 0013/14 - No, no, and again no on relocating the oral proceedings

This petition for review by the Enlarged Board of Appeal under Art 112a(c) and (d) EPC, results from an earlier decision T 1142/12 that was discussed in our DeltaPatents case law blog in June 2014 (read more). The petitioner is of the opinion that the Board of Appeal did not decide on two requests that the petitioner found relevant, namely those that dealt with relocating the location of the oral proceedings from The Hague to Munich. The Enlarged Board of Appeal (in its 5 member composition) thinks otherwise. The EBoA indicates that at first glance, when reading that the BoA held that it was not empowered to refer a question to the Enlarged Board, it could be concluded that the BoA did not decide on this particular request. However, the EBoA is of the opinion that the BoA said that this request was to be “rejected” for the same reason as given for the refusal to challenge the request for relocation of the oral proceedings. According to the EBoA: Whatever the terminology used, the fact remains that the request was rejected, i.e. a decision was made.

Tuesday, November 17, 2015 T 0740/15 - Two substantial procedural violations in one case

It may seem awkward that an opponent wants to continue an opposition even though the opposed patent has lapsed for all designated contracting states during opposition. However, in this particular case, the proprietor did not explicitly surrender his rights in the designated contracting states. Hence, the opponent could not be 100% certain that the proprietor would not try to restore any rights in any of the states as soon as the opposition proceedings would have been terminated. As a result the opponent expressed the wish to continue with the opposition and requested oral proceedings before any decision was reached. Nevertheless, the opposition division terminated the proceedings. This, as the Board in this case clearly indicates, is a substantial procedural violation and is an 'infringement' of Art 116(1) EPC. One may wonder why the opposition division came to their decision although the right to oral proceedings (when requested) is so firmly established in the EPC and the case law of the Boards of Appeal. Even worse, their issued decision did not contain any reasoning, which is also in breach with Rule 111(2) EPC: decisions that are open to appeal should be reasoned. Two substantial procedural violations justifying reimbursement of the appeal fee, in one single case.

Summary of Facts and Submissions

I. The appeal by the Opponent lies from the decision of the Opposition Division dated 18 February 2015 to discontinue the opposition proceedings against European patent No. 2 067 820 (Form 2351).

II. An Opposition had been filed against the patent on 27 January 2012 on the grounds of lack of sufficiency, novelty and inventive step. Oral proceedings were requested as an auxiliary measure.

III. The proprietor responded with a letter dated 17 September 2012, requesting to maintain the patent in amended form according to a new main request or two auxiliary requests filed therewith.

IV. On 11 August 2014, a communication pursuant to Rule 84(1) EPC was sent by the opposition division stating that the opposed patent had been surrendered or lapsed with effect for all the designated contracting states. In the communication it was stated that "the opposition proceedings may be continued at the request of the opponent, provided that within two months from notification of this communication a request is so filed." The communication further advised that the opposition proceedings would be discontinued if no such request was filed in due time "and the state of the files give no grounds for the proceedings to be continued by the European Patent Office".

V. The opponent filed a response to the communication on 15 September 2014, in which it was requested that the opposition proceedings "be continued". It was also stated that "for the avoidance of doubt, the Opponent maintains its previous arguments against the Patent and its request for oral proceedings.".

VI. On 18 February 2015, the opposition division issued the decision to discontinue the opposition proceedings.

Friday, November 13, 2015 T 2068/14: a right to oral proceedings by video conferencing?

AT&T picturephone

During the examination and during the appeal procedure, the appellant (applicant) requested oral proceedings held by video conferencing. The examining division refused oral proceeding by video conferencing. In the appeal procedure, the appellant argues that refusing the oral proceeding by video conferencing is a substantial procedural violation. Not long before the scheduled oral proceedings of the appeal procedure, the appellant requested a re-scheduling of the oral proceedings of the appeal procedure and requested oral proceedings to be held by video conferencing. Also, with respect to "does the applicant have the right to oral proceedings by video conferencing", the appellant requested a referral of three questions to the Enlarged Boards of Appeal. It seems that the appellant finds it unfair that applicants who have appointed a professional representative who is not located close to Munich or The Hague have to bear higher costs for attending the oral proceedings. This decision of the Board discusses whether (and why) one has (or has not) the right to oral proceedings by video conferencing.

Tuesday, June 30, 2015 T 1775/12 - Second Oral Proceedings

If an application is granted on a request filed during oral proceedings, does that applicant have a right to second oral proceedings if that request is refused? 

To set the context, I'll summarize the prosecution history. In 2008 this application was filed as one of four divisionals. During prosecution two official communications were sent under art. 94(3), after each of which an amended claim set was filed. In response to a summons for oral proceedings a further amended claim set was filed. During the oral proceedings, an auxiliary request was filed, followed by an amended auxiliary request. The latter was then granted.

After receiving the intention to grant communication (R.71(3)), the applicant files a new request. The new claim set has been broadened with respect to the granted claim set by deleting a feature. In the ensuing correspondence, the applicant request new oral proceedings "as a matter of precaution", however the Examining division now refuses the application without granting a second oral proceeding.

The board of appeal sides with the applicant and finds that his right to be heard was violated. The case is remitted and a second oral proceeding is to be held. It appears however, that the second oral proceedings may be limited to the issue of admissibility.

The board provided the following catchwords:

Thursday, April 09, 2015 T 0972/13 - Costly absence

The decision is in German. Here first a short part is roughly translated into English.
The appellant does not turn up at oral proceedings, having announced before 'not to be represented'. Since this left open that the appellant would turn up himself, the responded had to prepare the case an turn up.This contributed to costs being awarded to the respondent. 

The appellant (patentee) has appealed against the decision of the Opposition Division, in which the European patent no. 1,127,712 had been revoked. The appellant and respondent II (Opponent 2) had requested oral proceedings.In the summons to the oral proceedings, the Board gives its preliminary opinion that the appeal of appellant is inadmissible. According to the Board the appeal boils down to the mere assertion that the contested decision is not right, without mentioning the legal or factual reasons why the decision should be repealed. This leaves it to the Board and Respondent to speculate about the extent to which appellant could view the contested decision to be defective. This is exactly what the filing of a statement of grounds should prevent.By letter, the appellant had announced that they would not be represented at the oral proceedings. But such an announcement leaves open the question whether the complainant would not actually be present. In exercising its responsibility for the duty of care to their client, the representative of the Respondent II was therefore forced to prepare and be present at the hearing for the simple reason that the appellant might still turn up. Reasons for the Decision1. AdmissibilityThe appellant has not responded to the preliminary opinion of the Board an did not participate in the oral proceedings.Even after a review of their preliminary opinion, the Board sees no reason to deviate from it. Since the statement of grounds does not state the legal nor the factual grounds for overturning the decision, it does not meet the requirements of Rule 99 (2) EPC and is in accordance with Rule 101 (1) EPC to be rejected as inadmissible.2. Request for ReimbursementAccording to Article 104 (1) EPC in opposition proceedings each party bears their won costs. This is also true in opposition appeal proceedings. However, reimbursement would be considered, if it is equitable. This is the case where a party has been lacking in the necessary care and consideration in the process procedure and therefore has caused the other party costs that could easily have been avoided without compromising their own legal position.By letter dated 12 December 2014, the appellant complainant has announced that they would not be represented at the hearing on 28 January 2015. Such announcement leaves open, however, whether the complainant herself will actually be present or holds open still to appear.In exercising its responsibility for the duty of care to their client the representatives of the Respondent II have been thus forced to prepare and to be present at the hearing, to avoid the case that the appellant would still occur.To prevent this, the appellant would have been able to withdraw their request for oral proceedings without further ado, what she did not do. Thus, it is equitable that the appellant bears the costs of respondent II  incurred by participating in the hearing (Article 104 (1) EPC).

For these reasons it is decided:1. The appeal is rejected as inadmissible.2. The appellant shall bear the costs incurred by Respondent II by participating in the oral proceedings of January 28, 2015

In the original German text: