Thursday, 28 October 2010

T 138/08 – Two Will Do

Imagine that you have filed an opposition and that the patent proprietor has made substantive observations, which the EPO has just transmitted to you for information. How much time do you have for reacting? I always presumed that unless there were particular reasons not to do so, the Opposition Division (OD) would wait for four months, the time you normally have to respond to a substantive notification. The present decision has now disabused me of this idea.

[6] The appellant complains that he was not given sufficient time to reply to the observations of the patentee filed in response to the opposition.

On the basis of the documents on file, the circumstances are the following:
− During opposition proceedings the patentee filed observations with letter dated 25 July 2007, received by the EPO on 26 July 2007;
− the letter was forwarded by the EPO for information to the opponent with communication of 6 August 2007 and received by him on 9 August 2007 […];
− the decision in opposition proceedings was signed on 1 November 2007, is dated 21 November 2007, was communicated to the opponent by fax on 19 November 2007, was sent to the opponent by post on 21 November 2007 and received on 27 November 2007.

Starting from the earlier date on which the decision was taken (1 November 2007), the above means that the OD waited 2 months and 21 days from the opponent’s receipt of the observations of the patentee (9 August 2007) before it took its decision.

The question is whether the opponent had sufficient time to comment or, more specifically, whether 2 months and 21 days represent a sufficient time to do so.

The appellant referred to the Guidelines for examination in the EPO (December 2007) E-VIII 1.2 - to be applied by analogy - which stated that the length of the time period explicitly given for reply should be based in principle on the amount of work which is likely to be required to perform the operation in question. The uniform practice adopted by the Guidelines was as follows:
− if simple acts are requested: two months;
− for communications from the OD raising matters of substance: four months.

The appellant argued that in this case four months should have been given, since the communication raised matters of substance.

This view however cannot be shared. The communication of the observations of the patentee was made merely for information (see in the communication: “Please take note”). The OD did not raise any matter of substance in the communication. The opponent was free to decide whether to comment on it or to remain silent. Had he decided to remain silent no act would have been required; had he decided to react to the letter of the patentee, the simple act of sending a request for the time considered necessary for the reply would have sufficed. For that simple act a period of two months as indicated in the Guidelines is considered sufficient by the Board.

The objection of the appellant that the communication of the OD raised matters of substance, as proved by the complexity of the reply of the appellant himself of 22 March 2010, is not convincing since the proof cannot consist in an action lying within the freedom sphere of the appellant.

Accordingly, reimbursement of the appeal fee under R 103(1)(a) is not justified. Remittal to the first instance is justified only in order to maintain the patent on the basis of the version established with the present decision.

So in order to avoid trouble, it might be wise (i) to react quickly, or (ii) if this is not possible, to explicitly ask for time, and (iii) to request oral proceedings, if you have not already done so when filing the opposition.

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


Myshkin said...

What about the following hypothetical scenario:
- the application enters examination;
- the ED issues a communication under Art. 96(2) with a time limit of 4 months;
- the applicant replies in time and files amendments overcoming the objections raised in the communication;
- the ED issues a notice for information (i.e. no time limit) informing the applicant of some new objection to the amended claims;
- two months later the ED refuses the application.

I guess this would be legal, provided there was no request for oral proceedings.

oliver said...

Do such communications "for information (i.e. no time limit) informing the applicant of some new objection to the amended claims" exist? I've never seen this animal before.

Assuming that such communications exist, we have no guidance whatsoever, because all we have is R 132, which refers to periods specified by the EPO, and the Guidelines E VIII 1.2, which deals with the "duration of the time limits to be determined by the EPO on the basis of EPC provisions".

So my response would be that your scenario does not make much sense. There is no equivalent to these communications merely for information in examination proceedings.

But I may be wrong. Perhaps one of the Examiners among the readers of this blog could shed some light on this question?

pat-agoni-a said...

Art 94 EPC deals with the examination of the application (I cleverly deduced this from the title of the article).
A 94(3) states the well known procedure that when defects are found the ED shall invite the applicant "as often as necessary" to file observations or to amend the application.
A 94(4) further states that if the applicant fails to reply in due time to "any" communication of the ED, the application is deemed withdrawn.
From this I would deduce that "any" (which in this context means all) communication requires a time limit.
This seems to agree with R 71(1) that "any" communication under A 94(3) shall invite the applicant to correct the application within a period to be specified.
In my opinion Mishkin's animal does n't exist.

Anonymous said...

Mishkin's animal may not exist, but there's a close relative, namely the minutes of a telephone conversation or personal interview with the examiner when they're sent only for information purposes. After such an informal conversation, it is crucial both for the examiner and the applicant to set out very clearly who does what next and when, otherwise there's a dangerous limbo with a potential for nasty surprises for both sides.

Anonymous said...

oliver: "Brief communication" (EPO form 2911). It reads "Please take note" on the cover page. One can attach any annex, e.g. what normally would be an A 94(3) communication. I am not aware of any instructions on how or when to use it. In my directorate it is sometimes used shortly before oral proceedings when you cannot send a normal communication anymore (a normal communication is always issued with a time limit of at least two months).
EPO examiner

pat-agoni-a said...

May I guess, that if after such an "informal" conversation, being it personal or via telephone, the application is refused, the board would find that a substantial procedural violation had occurred?
The only official "formal" communications are those foreseen under A 94 EPC.

oliver said...

Thank you all for these interesting comments!

Myshkin said...

Oops! Art. 96(2) should have been Art. 94(3), obviously.

I believe refusals after an "informal" communication happen quite regularly, namely when the applicant files amended claims in reply to summons to oral proceedings, the ED informs him by telephone (and telephone minutes in the form of an informal communication) of objections to the new claims, the applicant withdraws the request for oral proceedings, and the ED cancels the oral proceedings and issues a decision. (I guess instead of the telephone call plus minutes, also the "brief communication" mentioned by an anonymous could be used.)

I don't think this practice infringes Art. 113(1) EPC, as long as the applicant is given sufficient time to comment (which does not have to be a very long time, since the applicant/representative should normally have been able to comment on such objections during the oral proceedings).

I don't think such informal communications are against Art. 94, either. For example, it is accepted that the ED and the applicant can communicate via telephone. If it is not against A. 94 to issue an informal communicaton, imo it cannot be against A. 94 to refuse after such an informal communication. The refusal does not render the informal communication illegal.

Hmm, could it be that such "informal" communications are in fact communications under A. 94(3) that do not set a time limit, so that A. 94(4) does not apply for the reason that there is no "due time" within which to reply? That would explain the "any" in A. 94(4).

pat-agoni-a said...

I would find the following situation problematic:
(a) in an "informal" communication before the date of an appointed OP new objections are raised without setting a time limit,
(b) the applicant withdraws his request for OP,
(c) the ED cancels the OP, and
(d) issues a decision refusing the application based on the new objections.

Firstly, there is no reason for the ED for cancelling the OP, as they may be apointed by the office independently of whether a party requested them and can be conducted in the absence of the party.

Secondly, even if the "informal" communication could be seen as an A. 94(3) communication, it failed to set a time limit. This leaves the application in a limbo-like state and the applicant could well argue that the refusal took him by surprise, since he was still preparing his response to these objections (that was, he can argue, the reason for withdrawing his request for OP).

So, in my view, the safe way to procede would be to either set clearly a time limit for replying to the "informal" communication or to carry on with the OP, if they were appointed.

In general, such "informal" communications should be used for "simple" matters on which agreement of the applicant can be expected, since they raise the issue of what was really communicated in them.

Manolis said...

Sorry for not citing any legal basis but I am writing this in a hurry (with my doughter sitting on my lap and my son asking when are we leaving...long story!)

The ED cannot take a decision on grounds which the applicant has not had the opportunity to comment on.
For such an opportunity to be given the objections must be in a communication under art. 94. (ie with a time limit).
Raising objections "for information" is not foreseen.
The minutes of the telephone call can also be sent with a time limit like a communication under Art. 94.
The particular case where after telephone call the oral proceedings are cancelled and a refusal ensues and the applicant has filed amendments after the summons is quite delicate. However, if the minutes of the conversation show a discussion of the objection, it could be argued that the applicant has in reality had the opportunity to comment because he has done so!

Have a nice weekend!

Myshkin said...

"For such an opportunity to be given the objections must be in a communication under art. 94. (ie with a time limit)."

From the point of view of Art. 113(1), this is not the case in opposition (nor for decisions taken by the legal division), and I don't know why it would be different for examination. Certainly it is possible to give an opportunity to comment during oral proceedings.

What I am not sure about is whether a telephone call itself is sufficient, or whether only the notification of the written minutes counts. Does Art. 113(1) require "notification" (R. 125 EPC) of grounds and evidence? If so, how can this be reconciled with the well-established possibility of presenting new grounds and evidence during oral proceedings?

Even if Art. 113(1) requires "notification" of grounds and evidence, I don't see how Art. 113(1) requires that (during examination) this *must* be done in a communication under Art. 94(3) setting a time limit.

So again, I don't see any problem with Art. 113(1), of course provided the applicant is given a real opportunity to comment (i.e. a sufficient amount of time, depending on the circumstances).

Another possible problem is Art. 94(4) EPC, which could be interpreted as meaning that *any* communication by the ED must set a time limit. However, it seems well-established that communications by the ED not setting a time limit are possible (e.g. minutes of a telephone call). So sending such an "informal" communication during the examination procedure does not seem to be a procedural violation.

What is left is Art. 97(2) EPC. If no time limit is running, the ED has a discretion to refuse under Art. 97(2) or take some other action. It could be argued that an ED abuses this discretion if it refuses on grounds or evidence only presented in an informal communication, but I don't see why there would be such an absolute rule.

"The particular case where after telephone call the oral proceedings are cancelled and a refusal ensues and the applicant has filed amendments after the summons is quite delicate."

I agree this case is delicate, but my conclusion so far is that there is no reason why an ED can never do this. If the applicant is of the view that he needs more time, he should not simply withdraw the request for oral proceedings, but ask for postponement or in some way explain why he needs time.

Myshkin said...

Indeed the ED is not obliged to cancel the OP, but certainly the ED is allowed to cancel.

Regarding the "limbo-like state", in my view this state is not different from the state of an application after the applicant has replied in due time to a communication under Art. 94(3) from the ED. The ED has to make a move, and this could be refusal under Art. 97(2) (provided that Art. 113(1), 116(1), 123(1) are complied with and refusal would under the circumstances not amount to an abuse of discretion).

(I agree that holding the OP is safer. I'm just trying to get a better understanding of the issues, also in view of the remarks on the use of e-mail made by the Board in T 1854/08.)

Manolis said...

I think there is a basic misunderstanding: A113(1) does not require simple "notification" of grounds and evidence. It requires two things: a) the applicant becomes aware of the grounds and evidence and b) that he is given the opportunity to comment.

In fact it is even more stricter: the ED (or OD) has to show that it considered these comments of the applicant. See eg. J7/82 or Case Law Book page 438+

In order to guarantee the applicant´s opportunity to comment, the grounds and evidence must be normally presented in a communication under Art. 94, which sets a time limit. This is also gives the possibility to prove that this opportunity has been given, i.e. the ED has to wait until the time limit expires before proceeding to any decision.
Alternatively it can be done in a communication annexed to summons to OP, which in this case guarantees the applicant the opportunity to comment during the Oral Proceedings.
The case where the ED sends for information grounds and evidence and then refuses, obviously violates Art. 113. There is abundant case law concerning cases where new objections were presented in telephone conversations or emails and then refusal followed based on those grounds where it was considered substantial procedural violation.

In opposition, usually the OD sends one communication annexed to summons for oral proceedings. There is no time limit because there is a date for OP where parties have their opportunity to comment. The right to be heard of the prorpietor is guaranteed by the initial 4 months to react to the notice. What comes afterwards depends on case per case. If the opponent sends a second letter but the OD can decide only using grounds and evidence from the notice of opposition, then they can do it without waiting since the proprietor has had his right to comment. If they want to use new grounds and evidence from the second letter then they would probably invite the proprietor to comment.

Myshkin said...

"The case where the ED sends for information grounds and evidence and then refuses, obviously violates Art. 113. There is abundant case law concerning cases where new objections were presented in telephone conversations or emails and then refusal followed based on those grounds where it was considered substantial procedural violation."

I agree that in such cases the ED may easily misjudge the situation and infringe the right to be heard, but I really don't think such a violation is the automatic result of taking a decision based on grounds or evidence communicated only in an "informal" communication not setting a time limit. I also know of no case law that would support that view.

In particular, I wonder what aspect of Art. 113(1) would be violated: a) the communication of the grounds and evidence to the applicant, or b) the applicant being given an opportunity to comment.

I'm of course aware that Art. 113(1) requires both a) and b), and I did take this into account in my previous posts. I also know that a refusal should show that argument's have been considered, but that doesn't seem relevant for the present discussion.

In T 138/08, there was only a notice of opposition and a reply of the proprietor. I would think that the decision to reject the opposition must necessarily have been based on grounds and evidence submitted in the letter of the proprietor. (A more detailed look confirms this: the opposition is basically rejected for the reason that D3 does not disclose that the plunger stem is clamped, as argued by the proprietor.) This letter was communicated to the opponent without a time limit. Apparently, this neither infringes requirement a), nor requirement b). Of course this was during opposition, but Art. 113(1) clearly does not pose different requirements depending on the nature of the proceedings (examination / opposition).

pat-agoni-a said...

A 113(1) is nice and a fundamental principle which has to be followed in all instances. Nevertheless there are further different requirements in the EPC when dealing with examination and opposition.

R 71(1) EPC stipulates that in examination "any" communication under A 94(3) EPC shoud specify a time period. In my view, this leads to the conclusion that if a "communication" does not contain such a period it may not be regarded as a communication under this article. Communications under A 94(3) are the only basis on which a refusal can be based in connection with A 97(2), as only this article deals with examination (as well as R 71 which implements it).

From this I conclude that in examination a refusal after a "communication" which does not set a defined period in which an answer has to be submitted is not supported by the EPC .

Oppositions are a different matter. A 101(1) merely states that the OD invites the parties "as often as necessary" (no periods mentioned). Under R 81(2) these communications may or may not specify a period at the discretion of the OD.
Thus in opposition (after the reply of the proprietor has been received) there is no further requirement in the EPC for setting a time period and only the requirements of A 113 and 116 have to be observed. After that a decision can be taken.

Myshkin said...

If I understand you correctly, you are saying that it is Art. 97(2) that would be infringed by a refusal based on grounds or evidence communicated only in an "informal" communication.

I agree that Art. 97(2) may sometimes be infringed by issuing a refusal. This is certainly the case if e.g. the application is deemed to be withdrawn and probably also if a time limit is running (since then the EPC provides for a different legal consequence). Another way that Art. 97(2) can be infringed is if the ED abuses its discretion to refuse, or if the ED acts against the legitimate expectation of the applicant by refusing. For example, the ED has indicated that the next step will be appointment of oral proceedings, but instead it issues a refusal.

After an "informal" communication, the ED can in principle refuse, since the EPC does not provide for a different legal consequence. Such a refusal is therefore supported by the EPC: Art. 97(2). However, in many cases it could be argued that such a refusal would be against what the applicant can legitimately expect. But I think that depends on the case.

In the case of the OP scenario we discussed earlier, I don't think the applicant should be surprised by a refusal. It is different if the applicant has, for good reasons, asked for more time, e.g. after the introduction of a new document. (But then a refusal probably infringes Art. 113(1) as well.)

If instead you meant that R. 71(1) is infringed, I can't agree. Informal communications (i.e. not setting a time limit) are sent quite often by or on behalf of the ED (procedural issues, payment issues, copies of documents, minute of telephone calls). Such a communication does not infringe R. 71(1). I also don't see how sending such a communication could retroactively become a violation of R. 71(1) by a later refusal.

pat-agoni-a said...

I understand that the examination of an application is codified by A 94 and its implementing Rule (R 71). A 97 states the consequences of the examination, grant or refusal. The only possibility of the ED for communicating an objection against grant is through A 94.

The practice of the ED may or may not correspond to the EPC. "Informal" communications are not foreseen in the EPC and may be used at risk of a procedural violation.

In my understanding any new objection raised against an application has to set a time limit in which the applicant has the possibility to reply. Failure to reply, triggers the fiction of "deemed to be withdrawn". Without a time limit this fiction cannot be triggered.

A new objection without a time limit transports the application into the limbo.

I consider that a refusal under A 97(2) can only be issued after a previously established time limit has lapsed, since it would be refused for not meeting the requirements of the Convention (A 97), something that the ED should have communicated in a communication under A 94(3), which according to R 71(1) has to define a period in which the applicant can reply. I'm talking here of "new" objections, since objections that have been raised previously may be raised again in an "informal" communication without violating the EPC (assuming that A 113 is respected), since the corresponding time limit for replying to it has presumably already lapsed (However, if the "informal" communication takes place while the previous time limit is running, the refusal may only be issued after lapse of the time limit).

So if a communication raising "new" objections (and "new" should comprise an objection that, altough raised previously, was so unclearly formulated that it could not be expected to be understood) is sent without a time limit, it cannot be considered a communication under A 94(3) and R 71(1), independently of what one calls it (minutes of a telephone conversation, personal interview, etc).

I believe that it is undisputed that at least one communication under A 94(3) is required if objections against the grant of the application are raised. An "informal" communication is for this purpose insufficient (as first communication). Let's now assume that a first communication under A 94(3) was sent and the reply of the applicant received in time. An "informal" communication may then be used to clarify some misunderstandings, but if "new" objections are raised without a time limit no refusal can follow (and I believe I'm starting to repeat myself :-)).

Myshkin said...

(My comment was deemed too long, so I'll post in two parts.)

"The only possibility of the ED for communicating an objection against grant is through A 94."
Is it the act of communicating an objection in an informal communication that infringes the EPC, or is it the act of refusing an application based on this objection? What would according to you be the Article or Rule infringed by said infringing act?

"A new objection without a time limit transports the application into the limbo."
In terms of Art. 94, this limbo state is not different from the state of the application after the applicant has replied to a communication setting a time limit.

"I consider that a refusal under A 97(2) can only be issued after a previously established time limit has lapsed, (...)"
From this paragraph I understand that it is your position that any objection (or only objections on which a refusal is based?) must at some point be communicated in a communication setting a time limit. According to you, which provision of the EPC enforces this?

Myshkin said...

(2nd part)

"I believe that it is undisputed that at least one communication under A 94(3) is required if objections against the grant of the application are raised."
Previously it was, because of Art. 123(1) and R. 137(1) EPC: the applicant must be given the opportunity to amend. This might now already be different, because of the ESOP and new Rules 70a and 137(2) and (3) EPC. (Of course new R. 137 only applies to applications for which the SR was established on or after April 1, 2010.)

However, in my view there is and was no provision in the EPC that requires any objection (on which a refusal is based) to have been communicated in a communication under Art. 94(3). (And certainly not if we include oral proceedings.)

Maybe the provision that supports your view the best is Art. 123(1) EPC, second sentence. One could interpret this provision "per (new) objection". I don't think this is the correct interpretation if the applicant introduces new problems (clarity, added matter, etc.) while attempting to overcome objections communicated to him. Such new problems should of course be communicated to the applicant (oral proceedings in the absence of the applicant being a special case), but in my view they do not give the applicant an absolute right (as in A. 123(1), 2nd sentence) to make further amendments.

Hmm, actually, I am not sure that Art. 123(1), 2nd sentence, could not be complied with by a summons (e.g. directly after entering examination). But maybe we should not complicate this further for the moment :-)