Tuesday, 26 April 2011

T 933/10 – You Have To Tell Why

Curious as it may seem to attorneys who are not based in the Bavarian capital, some Munich based colleagues seem to consider that attending oral proceedings (OPs) in The Hague rather than in Munich is unacceptable. Not long ago, we have seen case T 689/05 where Board 3.5.04 refused to remit the case to the Examining Division (ED) and pointed out that 
“the procedural violation [i.e. that the impugned decision was not reasoned with regard to the refusal of the applicant’s requests to transfer the OPs to Munich] did not affect the entire proceedings and can thus not amount to a fundamental deficiency within the meaning of Article 11 RPBA.”
The facts underlying the present case are similar. During the course of the examination proceedings the ED issued, on July 2, 2009, summons to attend, on December 8, 2009, OPs at the EPO in Rijswijk (The Hague). By letter dated 11 August 2009 the applicant submitted: 
“Our client is concentrating its patent activity in Munich and it is therefore respectfully requested to hold the OPs scheduled for December 8, 2009 in Munich instead of Rijswijk.”
In a “Brief Communication” (EPO form 2008A) dated 1 September 2009 the ED stated:
“The OPs will take place as planned in Rijswijk. It is not forseen for the ED, which is located in Rijswijk, to travel to Munich for OPs during the examination procedure.”
In a letter dated 30 November 2009 the applicant confirmed, following a telephone conversation with the primary examiner, that it would neither attend nor be represented during the OPs if they took place in The Hague. However for the case that the OPs would take place in Munich it was indicated that the applicant would be represented during the OPs.

The decision of the ED records in the final paragraph of the “Summary of Facts and Submissions”:
“In preparation for the OPs the applicant filed a reply on 11-08-2009 and 30-11-2009 and requested to hold the OPs in Munich instead of Rijswijk. The Applicant further stated that he neither will attend or be represented during the OPs if the OPs take place in The Hague.”
The first paragraph of the Reasons for the Decision read:
“The present decision is based solely on the grounds of lack of novelty (A 52 and A 54), lack of inventive step (A 56) and clarity (A 84) which was communicated to the applicant with the communication dated 05-02-2008 and the summons for OPs dated 02-07-2009. The applicant did not attend the OPs and further evidence was not provided by the applicant.[…] Refusal of the application at this stage is justified and does not violate the applicants right to be heard (A 113(1)).”
The remaining reasons of the decision dealt with the substantive aspects of the application, i.e. A 54, A 56 and A 84.

The applicant filed an appeal and requested the case to be remitted to the ED with the order to hold OPs in Munich. It also requested, as an auxiliary request, that the following question be referred to the Enlarged Board (EBA):
“Can a request by a party to conduct OPs at the EPO in Munich instead of at the branch office in The Hague be denied?”
Board 3.3.03 comes to another conclusion than Board 3.5.04 in T 689/05.

A 113 / R 111

[2] R 111(2) (corresponding to R 68(2) EPC 1973) requires that decisions of the EPO which are open to appeal shall be reasoned. By this is meant that the decision has to contain the logical chain of reasoning which led to the relevant conclusion. See for example T 292/90 [2] and T 52/90 [2] as well as the various other decisions discussed in section VI.J.5.3.4 of “Case Law of the Boards of Appeal of the EPO”, 6th edition.

It is also the established case law of the EPO that the failure to provide reasons pursuant to R 111(2) (R 68(2) EPC 1973) constitutes a substantial procedural violation justifying reimbursement of the appeal fee - see T 493/88 [7] as well as section VII.E.17.4.4 of “Case Law of the Boards of Appeal of the EPO”, 6th Edition.

[2.1] The “Brief Communication” of 1 September 2009 issued by the ED in response to the request of the Applicant to hold OPs in Munich instead of The Hague […] merely stated that it was “not forseen” for an ED which was located in Rijswijk to travel to Munich for OPs.

This statement does not do more than elaborate the physical circumstances associated with the refusal of the request.

The communication thus contains nothing that can be regarded as “reasoning” justifying the refusal of the request concerning the venue of the OPs. Nor were any legal norms, e.g. Articles or Rules of the EPC or Information or Directives issued by the Office invoked by the ED to support its conclusion. 

Accordingly this communication cannot be regarded as containing any reasons at all in support of the conclusions reached, let alone as providing a “logical chain of reasoning” justifying the conclusions. 

[2.2] Regarding the status of this communication, as held in T 1012/03 [6], there was no need to decide whether the communication issued by the division was a non-appealable interlocutory decision or only a precautionary indication to the applicant. Either way, the refusal of the request to hold OPs in Munich was the subject of and therefore appealable with the final decision.

[2.3] In the present case, however, the written final decision also contained nothing that can be regarded as providing reasons to justify the refusal of the request of the applicant to hold oral proceedings at the EPO in Munich instead of in The Hague (Rijswijk). Although this matter was referred to in the Facts and Submissions of the decision under appeal […], this is not further mentioned in the reasons for the decision. 

[2.4] Pursuant to R 111(2) the absence of any reasoning in either the communication […] or the decision […] concerning the refusal of the request regarding the venue of OPs constitutes a serious procedural violation which according to the established case law (see above) would justify reimbursement of the appeal fee. 

[2.5] Further, an argument presented by the appellant/applicant in support of this request was not dealt with in the decision under appeal:
  • In its submissions to the ED (letter of 11 August 2009 […]) the Applicant gave a reason for its request to hold OPs in Munich, namely the concentration of the patent activities of the client in Munich;
  • Neither in the communication issued by the division, nor in the written decision is there even a reference to this argument, let alone a logical chain of reasoning showing why this argument would have to fail […];
  • On the contrary it is recalled that the first paragraph of the reasoning states […]:
“The present decision is based solely on the grounds of lack of novelty (A 52 and A 54), lack of inventive step (A 56) and clarity (A 84) which was communicated to the applicant with the communication dated 05-02-2008 and the summons for OPs dated 02-07-2009. […]”.
[2.5.1] According to the established jurisprudence of the boards of appeal, the opportunity to present comments and arguments guaranteed by A 113(1) is a fundamental principle of the examination, opposition and appeal procedures - see T 1123/04 [2.2.4].

[2.5.2] This is not just a right to present comments, but also to have these duly considered - see T 508/01 [4] which decision was also cited in the aforementioned T 1123/04.

[2.5.3] The fact that the decision under appeal failed to take account of an argument of the appellant/applicant represents a further violation of the right to be heard and consequently a further substantial procedural violation which would also justify reimbursement of the appeal fee. 

[2.6] Summarising, the decision under appeal suffers from two substantial procedural violations […]:
  • No reasons were given for the refusal of the request of the applicant to hold OPs in Munich instead of The Hague, which is contrary to R 111;
  • There is no evidence that an argument presented by the Applicant in support of this request was taken into account by the division in reaching its decision, i.e. the applicant had de facto been denied the right to be heard, which is contrary to A 113(1).
[3] Since each of these violations justifies in the Board's view referral back to the first instance and reimbursement of the appeal fee, it would be premature for the Board further to assess the probative value of the appellant/applicant's other arguments, for instance those based on T 1012/03 with respect to the seat of the Office. 

For these reasons it is decided that: 
1. The decision under appeal is set aside.
2. The case is remitted to the first instance for further prosecution.
3. Reimbursement of the appeal fee is ordered.

Please note that the Board did not order (as requested by the applicant) that OPs be held in Munich. I guess it does not even have the power to issue such an order.

Although formally justified, I do not find the remittal helpful. It is just a waste of time because the OD may be expected to decide as it did before, except that it will provide some reasons why the OPs are not held in Munich (which should not be too difficult). I much prefer the approach chosen in T 689/05.

To read the whole decision, click here. The file wrapper can be found here.

NB: T 689/05 is now also discussed on Le blog du droit européen des brevets.


Myshkin said...

I find it amazing that not giving reasons for rejecting a request that has no legal basis whatsoever in the first place can lead to a substantial procedural violation.

What about the many cases in which the applicant requests as a first auxiliary request an informal interview and only as a second auxiliary request oral proceedings, and in response is summoned to oral proceedings? I would be surprised if many refusal decisions give reasons for rejecting the request for the informal interview.

On 1 September 2009 the Division informed the applicant that the request was rejected because "[i]t is not foreseen for the examining division, which is located in Rijswijk, to travel to Munich for Oral Proceedings during the examination procedure". In other words, the reason for rejecting the request is that the requests lacks a legal basis under the EPC. I wonder what more was needed...

It is also remarkable that the Board needed oral proceedings to come to this decision. The relevant facts were completely clear from the outset. Was the Board suddenly gripped by fear for a petition?

If a failure to give reasons in the refusal decision for rejecting the request to hold the OP in Munich was a procedural deficiency at all, this deficiency certainly did not force the applicant to file an appeal. If full reasons had been given in the refusal decision, the applicant would still have been absent at the OP and the application would still have been refused. So the applicant would still have had to file an appeal if he wished to save the application (and wishing to save the application is the only justified reason for appealing a refusal decision). In such cases it is established case law that reimbursement of the appeal fee is not equitable, see T 9/08, point 5.5, T 320/99, point 4.3.2, J 32/95, point 3.5 and many more decisions.

pat-agoni-a said...

In my knowledge, T 1012/03 was the first decision dealing with this issue (OP in The Hague) and it did so in great detail.

If the Division would have simply referred to the conclusions reached in (and implicitly on the reasoning of) this decision, ie no right for OP in Munich, would that be sufficiently reasoned?

In particular, T 1012/03 discussed the meaning of "seat" and its possible implications. The appellant contested this interpretation in the present appeal. Instead of remitting the case back, expecting that the examining division provides some new insights on this issue (?), the board could (or should I say should?) have dealt with the substance of the appeal and gave reasons as to why they differed with the previous decisions or with the practice of the EPO. Time would have been saved and enlightenment given.

Anonymous said...

Couldn't agree more than with the comments above. It is this type of pointless remittal which in my view does more damage than anything else to the otherwise good reputation of the boards!

What particularly annoys me is the way some boards set far higher standards for the divisions than they apply to themselves. Can you imagine what short shrift an appellant would get from a board if he requested oral proceedings in the Hague just for his own convenience?!

Thankfully there is still some commonsense around, as witnessed by T 689/05.

Myshkin said...

In the letter of 11 August 2009, the representative only stated:
"Our client is concentrating its patent activity in Munich and it is therefore respectfully requested to hold the oral proceedings scheduled for 8 December 2009 in Munich instead of Rijswijk."

In my view, the client concentrating its patent activity in Munich is clearly presented as an explanation for making the request, not as an argument as to why the request had to be allowed. It is hardly conceivable that anyone would think that an applicant's business decision to concentrate its patent activity in Munich would somehow create a right to have oral proceedings moved from The Hague to Munich.

In the letter of 30 November 2009, it was only stated that the applicant would only attend the oral proceedings if they were held in Munich. Again, not a single argument given as to why the applicant had a right to oral proceedings in Munich.

It would have been nice if the ED had referred the applicant to T 1012/03, but at the time of the refusal by the ED the applicant had not even remotely made an attempt at arguing why the OP had to take place in Munich.

Only in the statement of grounds of 13 April 2010 did the applicant refer to Art. 4 and 6 EPC. (Together with some rather weak criticism of T 1012/03. In particular, in par. 2.6 the applicant cites a sentence from point 27, 2nd paragraph of T 1012/03 completely out of context. "In this case" clearly refers to the preceding sentence which explicitly is not discussing Art. 6(1) EPC. Now the applicant's whole case falls apart.)