Monday, 25 January 2010

T 1053/06 – Cheekiness At Its Best

This decision deals with an appeal against the refusal of an application for lack of inventive step.

In a reply [to the Board’s provisional opinion] the appellant announced that it would not pay the renewal fee under R 51(2) which would be due in May 2008. It also announced it would not attend the scheduled oral proceedings (OPs). Furthermore it was requested that, in order to avoid unnecessary time and effort in preparing for the OPs these be rescheduled to a date after expiration of the six months surcharge period after which the application would be deemed to be withdrawn. The appellant also requested that this letter should not be included in the part of the file open to public inspection. [VI]

[…] As regards the appellant’s request to postpone the OPs, a change of date for OPs “may exceptionally be allowed in the Board’s discretion following receipt of a written reasoned request” (see Article 15(1) RPBA). It appears from the use of the word “exceptionally” that the reason or reasons given for a postponement must be out of the ordinary and must outweigh any other considerations the board may take into account. In the present case the reasons given clearly indicated that the appellant had chosen not to pursue this case further and would prefer its patent application to be lost for non-payment of the next renewal fee at a later date rather than by an adverse decision of the board now. Those reasons are directed entirely to the convenience of the appellant which, until it received the board’s negative preliminary opinion, had preferred to pursue the appeal proceedings and had indeed itself requested OPs. [2]

Against those reasons the board must consider the interests of the public and of justice. It would clearly not be in the interest of efficient administration of appeals for the board to allow parties to decide whether or not OPs they have requested should in fact be held and if so when. Further, in cases such as the present when it would be too late to give another party or parties the requisite two months notice of OPs for the date appointed in this case, a postponement would unfairly prejudice by delay other appeals pending before the board. Perhaps most importantly, it would be unfair on the public for the board, without receiving any reasons from an appellant applicant, to extend the life of a patent application which it considers likely to fail beyond the date on which the public has, until now, expected a final decision. Accordingly, the board considered the request for postponement had to be refused. [3]

The appellant’s further request to exclude its request for postponement from the public part of the file was also not allowable. Under A 128(4) there is a general right to inspection of the file of any published European patent application or patent subject only to restrictions laid down in the Implementing Regulations. Those restrictions are to be found in R 144 and are limited to:
(a) the documents relating to the exclusion of or objections to members of the Boards of Appeal or of the Enlarged Board of Appeal;
(b) draft decisions and notices, and all other documents, used for the preparation of decisions and notices, which are not communicated to the parties;
(c) the designation of the inventor, if he has waived his right to be mentioned under R 20(1);
(d) any other document excluded from inspection by the President of the European Patent Office on the ground that such inspection would not serve the purpose of informing the public about the European patent application or the European patent.

None of (a),(b) or (c) can apply in the present case and, as regards (d), the appellant has not relied on any exclusion by the President. Since OPs before the boards of appeal are public and the summonses thereto and the dates thereof are public information, it would appear highly unlikely that any documents relating to the appointment or postponement of such proceedings could be the subject of such an exclusion since such documents, for example the appellant’s request for postponement, necessarily serve the purpose of informing the public about the European patent or patent application in question. [4] 

Some have a lot of nerve.

To read the whole decision, click here.