Saturday, 12 December 2009

T 508/08 – We Have No Ways To Make ’Em Talk !

The present decision shows that the Boards are not all-powerful with respect to the first instance divisions.

Two appeals were lodged against the decision of the opposition division (OD) whereby the European patent was maintained on the basis of a request filed during oral proceedings (OPs). [I]

This request was headed “Second amended main request - as amended during OPs” [II]

[The patentee] requested that the written decision as well as several paragraphs of the accompanying minutes of the OPs be corrected. It submitted that the minutes were inaccurate by stating in paragraph 20 that, after discussion of the main request filed on 6 November 2006, “all requests on file” were withdrawn. This should have referred only to withdrawal of “all the auxiliary requests on file” since the main request was not withdrawn but rather the subject of a decision rejecting it for failure to comply with A 123(2) EPC. The errors in the decision were the omission of that rejection of the main request. [III]

The OD has at no time reacted in any way to the requests for correction. [V] […]

It is common ground between the parties that the opposition division should have responded to [the patentee’s] requests for corrections of the minutes of the OPs. The board also agrees.

As was stated in the decision T 1198/97 [7]: “Even when an appeal has been filed, only the department of first instance before which the OPs took place is competent and at the same time also obliged to decide in first instance on a request concerning the contents of the minutes of OPs held before it, firstly because it is their competence and duty under R 76 EPC 1973 to draw up the minutes correctly and completely and secondly because, if anybody, only the members of this department know what has happened and has been said or not during the OPs before it.” [1]

Unfortunately, if the first instance (in this case, the OD) sees fit to ignore its obligation, there is nothing the board can do in this respect. The board has no power to compel the OD to discharge its obligations. Appellant I requested that the board defer consideration of its appeal until after the OD dealt with the request for corrections but it would appear that, if the board had adopted that course, the appeals could have been paralysed by the OD’s permanent inactivity. Moreover, simply deferring all action in appeal proceedings would be contrary to the public interest in resolving disputes over the existence or extent of patent protection. Accordingly, while it is a matter of great regret that the OD did not react to the request for correction, the board must deal with the case as best it can in the absence of such reaction. In this connection, it goes without saying that, while the OD may be open to criticism for ignoring that request, such criticism must not prevent a wholly objective assessment of the evidence provided by the OD’s decision and its minutes of the OPs before it. [2] 

As the parties’ accounts of the OPs are contradictory, the Board goes on to decide which version is, in the light of the available evidence, more likely to be correct. It comes to the conclusion that it is more likely that the patentee’s account is not correct. As a consequence, the patentee is not adversely affected by the decision and its appeal is rejected as inadmissible. 

This decision has already been commented (in French) by Laurent Teyssèdre on his blog. He draws the conclusion that patentees should be very careful when formulating their amendments and/or any withdrawal of requests.

To read the whole decision, click here.