Saturday, 27 March 2010

R 9/09 - For Pros Only

The present petition for review was filed by the patent proprietor after its appeal against the revocation of the patent by the Opposition Division had been dismissed by the Board of appeal. During the appeal proceedings, the patent proprietor was represented by a professional representative, accompanied by Dr Illescas, its Spanish legal practitioner, who later on represented the patent proprietor before the Enlarged Board (EBA).

[1.4] Pursuant to R 106, a petition under A 112a(2)(a) to (d) is only admissible where an objection in respect of the alleged procedural defect was raised during the appeal proceedings and dismissed by the Board of Appeal, except where such an objection could not be raised during the appeal proceedings.

The present petition refers to three procedural violations :
  • refusal of the request for postponement of the oral proceedings (OPs),
  • admission of Dl0 as a late filed document into the proceedings,
  • refusal of the request to postpone the OPs for carrying out comparative experiments with respect to D10.
It may appear that the first and third alleged violation are based on the same facts as for both violations the refusal of the postponement of the OPs is at issue. Nevertheless the EBA considers both as independent with respect to the fact that the petitioner repeated during the OPs its request for postponement in order to conduct the said tests. Accordingly, all three allegations have to be examined by the EBA in its composition according to R 109(2) (a) with respect to whether the petition is clearly inadmissible or not in view of R 106.

[1.5] The first alleged violation under A 112a refers to the petitioner’s request for postponement of the scheduled OPs with respect to its new representative appointed on 15 September 2008. It argued that this new representative needed a longer period than only one month to get familiar with the complex technical impact of the case and to discuss the case with its client in a meeting in Madrid. Refusing this request with a communication dated 24 September 2009, the Board would have violated the respondent’s right to be heard under A 113.

However, the Technical Board refused this request because serious substantive reasons for postponement of OPS pursuant to items 2.2 and 2.3 of the Notice of the Vice-President DG3 dated 16 July 2007 concerning OPs before the boards of appeal of the EPO were not given. This lack of substantive reasons results from the fact that all the arguments provided by the appellant are the consequence of the appellant’s own decision to change its representative. And indeed the representative of the petitioner did not raise objections pursuant to R 106 against the Board’s decision not to postpone the OPs. Accordingly, as far as the petition is based on this first objection, it is clearly inadmissible (R 109(2) (a) in combination with R 106 and R 108(1))

[1.6] The second alleged violation concerns the admission of D10 although it was late filed. Also in respect of this second objection the EBA has no indication that the requirements of R 106 are fulfilled. The petitioner submitted only the request to refuse Dl0 as late filed before and during the OPs. But there is no hint neither in its petition nor in the minutes nor in the contested decision that it raised during the OPs an objection under R 106 with respect to a procedural defect in the sense of A 112a(2) (c) and (d) after the Board had taken its decision to admit Dl0 into the proceedings.

The EBA has no doubts that during the OPs the petitioner made clear that it does not share the Technical Board’s view on the admission of this document. However this is not an objection in the sense of R 106. This rule requires a separate objection directed to the procedural defect. This is mandatory in order to give the Technical Board an opportunity to revise the alleged procedural defect and to reserve the petitioner’s right according to A 112a. Consequently, also as far as the petition is based on this second objection the petition is clearly inadmissible.

[1.7] The third objection relates to the refusal of the appellant’s request to postpone the scheduled OPs for carrying out comparative tests with respect to D10. The petitioner submitted that the Board hindered it from showing that the requested comparative tests would have been necessary for proving an inventive step in the light of the prior art. But also in respect of the third objection the petition is clearly inadmissible as the petitioner failed to fulfil the requirements of R 106 for the following reasons :

[1.7.1] According to the clear wording of R 106 a petition is only admissible if the objection concerning an alleged procedural defect was raised during the appeal proceedings and dismissed by the Board, except where such an objection could not be raised during the appeal proceedings. However, in the present case the petitioner did not submit in the grounds of its petition that it could not raise an objection pursuant to R 106 before the Board closed the debate in order to deliberate the issue of inventive step. Just at that point in time it should have pointed to an alleged procedural defect when the Board intended to discuss inventive step without having regard to the aspect of the requested comparative tests. An example that such an intervention was not impossible was given by the respondent who requested to take account in the protocol of the OPs that it has not been heard with regard to the question of admissibility of auxiliary requests 1 - 3 concerning amendments made therein.

[1.7.2] The petitioner claims that its representative accomplished the procedural requirement of R 106 by stating the following: The Board asked the appellant’s representative what the purpose of the comparative experiments should be. Dr Illescas then took the floor and began to explain what the purpose would be, but was interrupted by the Chairman of the Board, who stated that the discussion relating to inventive step of the proposed auxiliary request had already been decided by the Board and that, therefore, the appellant was not allowed to argue back on this particular item […] However, apart from the fact that this can hardly be qualified as an objection pursuant to R 106, according to the minutes of the OPs Dr Illescas was not the representative of the petitioner but an accompanying person. In this capacity, he could not validly make procedural declarations, such as one pursuant to R 106. […]

[2] It follows from the foregoing that in the present case the requirements of R 106 have not been met. Therefore, the petition for review has to be rejected as clearly inadmissible.

This decision makes it very clear how important it is to make an explicit objection referring to R 106 during OPs if a petition for review is to be envisaged. This requires some quick-wittedness on behalf of the representative. One may also note that the objection has to be made by the representative (or the party itself) – an objection made by an accompanying person, even if the latter is legally qualified and could represent the party, will not be accepted by the EBA.

Should you wish to download the whole decision, just click here.