T 18/09 – Speed Up, The Judge Said

The present decision is so rich that I cannot possibly treat it in one single post. The first interesting aspect is of a procedural nature and can be summarised in one sentence: national jurisdictions may ask for acceleration of proceedings before a Board of appeal. As such requests are very rare (this is the first case I am aware of), I found it interesting to have a closer look at how things played out.

The decision as such deals with an appeal against the decision of the Opposition Division (OD) to revoke the opposed patent.

The opponent had also commenced proceedings in England against the appellant seeking a declaration that the patent was invalid. The first instance decision in those proceedings, issued on 31 July 2008, held that the patent was invalid for lack of industrial application, insufficiency and lack of inventive step. The [patentee] also filed an appeal against that national court decision. When the present appeal to the board of appeal was commenced, the national appeal was pending before the Court of Appeal of England and Wales and was scheduled to be heard in July 2009. [V]

On 22 January 2009 the board received a request from the national court to accelerate the proceedings in order to dispose of the present appeal before the hearing of the appeal in the parallel English proceedings. The national court informed the board that the parties were in agreement with the acceleration request. [VI]

On 6 February 2009 the board issued a communication to the parties informing them that it would only be possible to give effect to the national court’s request if they would agree that the time limits for filing the written statement of grounds of appeal and reply be at least halved and enclosing a schedule proposing a timetable and other directions based on such abridged time limits which would lead to oral proceedings (OPs) on 17 and 18 June 2009. The parties were directed to inform the board, by no later than 16 February 2009, that they agreed to adhere to that timetable and told that, if so agreed, the schedule would take immediate effect and the summons to OPs would be issued immediately thereafter; however, if either party did not so agree, the usual time limits would apply. The board sent a copy of its communication to the national court. [VII]

The [patentee] replied by fax on 12 February 2009 that it supported the proposal and agreed to OPs on 17 and 18 June 2009 but “subject to the agreement of an acceptable timeline for written submissions”. The only indications as to what time it would consider “acceptable” were the statements that it could not file its statement of grounds of appeal by the suggested date of 28 February 2009 but would use its best endeavours to submit the statement “as much before the 13 April 2009 deadline as possible” (13 April 2009 being the due date in the absence of acceleration). [VIII]

The [opponent] replied by fax also on 12 February 2009 agreeing the timetable proposed by the board and, in a further fax of 13 February 2009, it answered the [patentee’s] submission by observing that, if the statement of grounds of appeal was not filed until or shortly before 13 April 2009, the even shorter time it would have to prepare and file an appropriate reply would be neither adequate nor equitable. [IX]

In a further communication to the parties of 18 February 2009 the board informed them that, in view of the situation, the usual time limits would apply. The board also informed the national court (to which a copy of the communication was sent) that its request for acceleration of this appeal could not be met. [X]

On 18 February 2009, the national court asked the board for its best estimate of when it could hold OPs on the basis that the previously proposed dates of 17 and 18 June were not possible. The board replied on 19 February 2009 that its best estimate was late October 2009 if the parties did not agree to any reduction in time for their written submissions and early September 2009 if the parties should agree to such reduced time. On 23 February 2009, a hearing took place in the national court at which the national court postponed its own hearing from July 2009 to December 2009. The parties in the present proceedings were invited by the national court to co-operate with the board about fixing a date for OPs as soon as possible. OPs were subsequently appointed for 20 and 21 October 2009. [X]

Although less frequent than acceleration requests from parties, such requests from national courts are possible (see the “Notice from the Vice-President DG3 dated 17 March 2008 concerning accelerated processing before the boards of appeal” at OJ EPO 2008, 220 - hereafter “the Notice”). [1]

In the present case, the practical and economic reasons behind the national court’s acceleration request were clear. The board’s decision would affect the patent for all its designated states. On the one hand, if that decision should be to dismiss the appeal, with the effect that the decision of the opposition division (OD) to revoke the patent was upheld, the appeal in the national proceedings would become redundant. The saving of court time - five days according to the national court’s judgment of 23 February 2009 would be significant. Further, the saving of costs by the parties if one of the two pending appeals should prove to be unnecessary would be substantial. On the other hand if, as has in fact proved to be the case, the board should allow the appeal then, not least because the parties have raised all the relevant issues in both the national and European appeal proceedings, [the board] should assist [the parties] to have a final decision for states unaffected by the national proceedings before the appeal in those proceedings is prosecuted further. [2]

The board agrees entirely with the national appeal court that parties to such parallel proceedings should inform both tribunals of the position as early as possible and ask the appropriate tribunal for acceleration in order to avoid duplication of proceedings. Whether acceleration is requested by one party, or both or all parties in agreement, or by a national court, all parties must accept a strict procedural framework including short time limits (see the Notice, final paragraph). It must also be understood that acceleration can have no effect on the equal treatment of all parties and cannot confer any advantage on any one party. [3]

In the present case, as a result of the national appeal court’s further inquiries of the board and its postponement of its own hearing until December 2009, the objective of the acceleration request was achieved and the appeal proceedings were concluded considerably more swiftly than is usual, which would not have been possible without the co-operation between the national court and the board. [4] 

As already mentioned, there is much more to be said on this decision. Stay tuned.

NB: This decision has also been reported here (in French).

To read the whole decision, click here.