Wednesday, 23 March 2011

T 263/07 – Rapporteurs Don’t Chat

The present appeal was against the decision by the Examining Division (ED) to refuse a European patent application of the appellant on the basis that the subject-matter of the claims did not involve an inventive step.

The Board issued a summons to oral proceedings (OPs) to be held on January 18, 2011.

The appellant filed amended claims and stated that it would not be represented at the OPs. 

On January 10, 2011 a letter was received from the appellant requesting that the rapporteur telephone the appellant’s representative to discuss whether the application could be found in order for grant in accordance with one of the appellant’s requests prior to the OPs so that the OPs could be cancelled.

In a communication dated January 11, 2011 the board informed the appellant that the date for OPs was maintained.

OPs were held on January 18, 2011 in the absence of the appellant. The appeal was dismissed.

The decision contains a noteworthy statement on the request for a telephone interview.

[2.1] In the letter received on 10 January 2011 the appellant essentially requested a telephone interview with the rapporteur to discuss the allowability of the requests on file. As established in the case law of the boards of appeal, as a matter of principle, the EPC foresees the absolute right to OPs under A 116(1) EPC 1973, but not the right to a telephone interview (cf. Case Law of the Boards of Appeal of the EPO, 6th edition, 2010, VII.B.2.7.2 concerning the department of first instance, in particular).

[2.2] As to appeal proceedings more specifically, Articles 4 and 5 RPBA (Rules of Procedure of the Boards of Appeal of the European Patent Office, OJ EPO 2007, 536, the wording of which remains unchanged after the entry into force of EPC 2000) provide that certain steps in the proceedings may be taken by the rapporteur.

Where this is the case the rapporteur’s duties consist of either ensuring, under the board’s supervision, that the procedural rules or the directions of the board of appeal are complied with by the parties, or, where it comes to substantive matters (Article 5(3) RPBA), of acting on behalf of the board. This, in other words, implies that the other members of the board have been informed and put in the position to give an informed opinion on the action to be taken. To this end it is important that the same case is presented to all of the board’s members. If one of the board’s members were privy to evidence or arguments not available to the other members then this would be a breach of the principle of collective decision making and would be in conflict with A 21 EPC 1973; see T 1109/02 [1].

[2.3] Since the requested telephone interview could have led the rapporteur to take a position on an issue where a collective decision would have been required, or to commit the board without preliminary discussion, the request was refused as not being compatible with the above mentioned principle and rules governing appeal proceedings.

[2.4] A further communication by the board after the summons to OPs was not necessary and had also not been requested by the appellant. Under R 100(2) (corresponding to A 110(2) EPC 1973 in conjunction with R 66 (1) EPC 1973) the board shall invite the parties “as often as necessary” to file observations. In the present case OPs were arranged as requested by the appellant and because it was the most efficient procedural course of action to be taken at this stage. The purpose of OPs is to give the party the opportunity to present its case and to be heard. However a party gives up that opportunity if it does not attend the OPs. By filing amended claims before the OPs and then not attending those OPs the appellant must also expect a decision based on objections which may be raised against such claims in its absence, Article 15(3,6) RPBA.

In the present case the board had already raised objections regarding inter alia clarity and inventive step against the claims then on file (now auxiliary requests II and III) in the annex to the summons to OPs.

Since essentially the same objections also applied to the claims of the appellant’s new main request and auxiliary request I, the board considered a further communication to be unnecessary.

Should you wish to have a look at the whole document, just click here.

The file wrapper can be found here.