Thursday, 26 August 2010

T 369/08 – Let’s Talk Money … Later

[7.1] D7 was cited at a very late stage of the procedure, i.e. after oral proceedings (OPs) had been convened. This fact is not in dispute.

[7.2] The patent proprietor objected to the manner in which D7 had been introduced to the procedure, i.e. the tardiness, which ultimately resulted in the decision to remit and requested that all future costs of the procedure be borne by the appellant/opponent […].

[7.3] In considering whether to order an apportionment of costs it has to be examined whether there is a cogent reason, e.g. strong mitigating circumstances for the late submission of this document (see for example T 611/90 [5], T 874/03 [5], and T 931/06 [6.3].)

[7.4] D7 was cited, according to the opponent […] in response to the communication issued by the Board accompanying the summons to attend OPs […]. In this communication the Board indicated that it - provisionally - concurred with the conclusions given in the decision under appeal […] and also with arguments put forward by the patent proprietor in the rejoinder to the statement of grounds of appeal […] with respect to the relevance of the teachings of D1.

[7.5] D7 had been cited in the pre-grant proceedings (designated “D3”) and played a prominent role in those proceedings:

[7.5.1] In the International Preliminary Examining Report (IPER) the International Preliminary Examining Authority (IPEA) indicated that an inventive step could probably be recognised with respect to this teaching if the thermal stability was to be defined more precisely, indicating in particular the features oriented film and the nature of the measurement, i.e. the mechanical properties specified in the operative claim.

[7.5.2] During the examining proceedings before the EPO, the examining division (ED) followed this approach, and further required definition of the temperature at which the aging was to be carried out be introduced into the claim.

[7.5.3] Thus the opponents at the time of formulating the notices of opposition would have been aware from the examination file - which was publicly available and consultable online - of the teachings of D7 and the role this document had played in the pre-grant proceedings.

[7.6] It may well have been the case that when formulating the oppositions the opponents had come to the conclusion, in the light of the correspondence from the examination proceedings, that the teachings of D7 were not likely to lead to revocation of the patent. However in its rejoinders to the notices of opposition the patent proprietor argued that D1 did not relate to the stability of the polyesters per se but to the phosphorus compounds during the manufacture of the polyesters. This view was also taken by the opposition division (OD) in its communication accompanying the summons to attend OPs. Also in the decision this assessment of the relevance of D1 remained, as explained herein above.

[7.7] Thus at the very latest after receipt of the decision of the OD the opponents would have been aware that D1 on its own was unlikely to result in revocation of the patent precisely because (in the view of the opposition division) the teaching of D1 was restricted to the stability of the phosphorus compounds during the preparation of the polyesters and not to the stability of the ultimate copolyesters.

[7.8] The arguments of the patent proprietor in its rejoinder to the appeal were […] consistent with this finding of the decision under appeal.

[7.9] Thus the opponent has failed to demonstrate that there was any development during the appeal proceedings themselves which would have - on its own - led to a reappraisal of the significance of the prior art cited in the notices of opposition, in particular D1. On the contrary the only reason advanced was an internal one, i.e. that it had reviewed the documents upon receipt of the communication of the Board and changed its assessment of the significance of D7 […].

In this context it is important to recall that the Board in its communication merely reflected the findings of the decision under appeal with respect to D1 but did not offer any new insights of its own.

[7.10] Consequently the Board has to conclude that no mitigating circumstances or cogent reason for the late submission of D7 can be identified […].

[7.11] The late citing of D7 in effect has, furthermore, resulted in an entirely new case being presented for the patent proprietor to answer and this only 6 weeks before the OPs before the Board. The consequence of this tardiness is that a further procedure before the OD and possibly the Board of appeal is required, which might not have been the case had this document been cited in a more timely fashion, i.e. at the latest at the outset of the appeal proceedings.

[7.12] However it is apparent that the costs arising will depend on the course of the future proceedings. The consequence of this is that the Board necessarily is not in possession of the necessary facts to decide upon an apportionment of costs. Consequently the Board considers it appropriate not to make an “open ended” order of apportionment of costs as was done in the aforementioned T 611/90 but instead to follow the approach adopted in T 758/99 [5] in which the Board responsible refrained from making an “open-ended” award of costs and concluded that the appropriate course of action was to order that a decision on the request for apportionment of costs be taken at a later stage.

[8] It is therefore incumbent upon the OD in its further prosecution of the case consequent upon the remittal to it by the Board, to consider and decide upon the issue of apportionment of costs in the light of the facts before it, in accordance with the power conferred upon it by A 104(1).

If you wish to download the whole decision, please click here.

NB: This decision was also reported on Le blog du droit européen des brevets.