Saturday, 15 January 2011

T 1931/07 – Vae absentibus

In a comment to a recent post, a commentator mentioned the Examiner’s fear that applicants may not show at oral proceedings (OPs). The Boards do not have the same problem, because they have Article 15(3) RPBA, which is indeed very powerful.

[1.1] In the OPs before the Board the [opponent] presented a further objection with regard to the main request: in the course of the discussion it turned out that Claim 1 was considered to extend the protection conferred.

[1.2] The Board had to clarify the question whether the objection raised for the first time in the OPs was to be admitted, in particular since the [patent proprietor], although duly summoned, was not present at the said proceedings.

[1.3] Article 15(3) RPBA […] reads as follows:
“The Board shall not be obliged to delay any step in the proceedings, including its decision, by reason only of the absence at the OPs of any party duly summoned who may then be treated as relying only on its written case.”

[1.4] Furthermore, it is common practice at the EPO and in particular at the Boards of Appeal to examine amended claims with regard to the requirements of A 123(2) and (3) (see T 341/92, [2.3.4]; also T 915/02 [3.3]). The [patent proprietor] must therefore have been aware that such an examination would take place and that further objection could be raised in the OPs, all the more given the fact that with regard to the amended wording of the main request the [patent proprietor] should have been conscious that the extension of the protection conferred would arise from the comparison of the wording of the respective claim according to the patent as granted and the corresponding claim of the main request.

[1.5] By not reacting to the objections already raised in the annex to the summons and in particular by not attending the OPs the [patent proprietor] consciously decided not to present (further) comments.

[1.6] Thus, the Board decided to admit the objection with regard to A 123(3) of Claim 1 of the main request.

This objection proved fatal to the main request on file.

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

To have a look at the file wrapper, click here.

NB: This decision has already been reported on Le blog du droit européen des brevets.


Myshkin said...

Since I don't see how Art. 15(3) RPBA could possibly derogate from Art. 113(1) EPC, an OD should be able to do the same as this Board without infringing the right to be heard.

oliver said...

Point well taken. I can see no legal reason why this should not be possible.

pat-agoni-a said...

We may hope that the proprietor presents a petition for review and see what the EBA has to say on this point. It would be very interesting in any case.

Anonymous said...

Not too sure. Reading decisions on admissibility rendered under Art. 112A generally leave me with a persistent aftertaste of jesuitic casuistry.

Myshkin said...

Is there any R-decision in particular that you think should have had a different outcome?