Friday, 14 January 2011

T 520/07 – Appeal = New Deal

** Translated from the German **

[2] In its decision G 4/95 the Enlarged Board of appeal (EBA) found that there is no legal right to oral submissions by an accompanying person in oral proceedings (OPs) in opposition and opposition appeal proceedings. Rather, such oral submissions can only be made with the agreement and within the discretion of the EPO. In the exercise of this discretion, the criteria developed by the EBA have to be taken into account. If a request is made at the OPs, it should in the absence of exceptional circumstances be refused unless each opposing party agrees to the making of the oral submissions requested. (G 4/95 [10]).

In the present case the written submission dated January 16, 2009, only indicated that the employee of the [patent proprietor] [acting as] professional representative would represent the [patent proprietor] in the OPs [and that he would be] accompanied by Mr. S., and that the professional representative would make his submissions in the French language. The written submission did not contain a request for the accompanying person to present oral submissions before the Board. This request was made for the first time during the OPs before the Board.

The Board is of the opinion that there are no exceptional circumstances which would justify an admission of the oral submissions.

In particular the Board does not share the opinion of the [patent proprietor] that its request could not take the [opponent] by surprise because the same accompanying person already made oral submissions during the OPs before the Opposition Division (OD). Appeal proceedings are wholly separate and independent from the first instance proceedings. (T 34/90). Consequently, requests that have been made during first instance proceedings are not effective in subsequent appeal proceedings but have to be made during the Board of appeal (T 34/90 and T 501/92).

Therefore, it cannot be argued that the [opponent] should not have been surprised by oral submissions of the same accompanying person. Rather, it had the right to expect that for such oral submissions to be allowed during the OPs before the Board there would have to be another request taking into account the conditions laid down in G 4/95.

As the [opponent] has not accepted these oral submissions, the [patent proprietor’s] request that oral submissions of an accompanying person be admitted had to be dismissed.

Should you wish to download the whole decision (in German), just click here.

If you want to have a look at the file wrapper, click here.