Friday, 23 December 2011

T 146/07 – Unsigned

The opponent filed an appeal against the decision of the Opposition Division to maintain the patent in amended form.

The parties were summoned to oral proceedings (OPs) to be held on January 20, 2011. After the opponent had announced that he would not attend the OPs and had withdrawn his request for OPs, the Board cancelled the OPs on January 10.

On January 18, the Board received anonymous third party observations (TPO).

Would it take them into account?

[3] Anonymous TPO were received by the board at a very late stage, i.e. after the scheduled OPs had already been cancelled in view of appellant’s announcement not to attend these proceedings and the withdrawal of its subsidiary request for OPs.

According to R 114(1), any observations by a third party shall be filed in writing. This requirement implies that the observations have to be signed (see R 50(3) and R 86) in order to allow an identification of the third party (see Schachenmann in: Singer/Stauder, EPÜ, 5th ed., A 115, marg. n° 13). Identification is particularly important in the context of opposition proceedings in order to allow the competent organ of the EPO to verify whether the observations are indeed filed by a third party rather than by a party to the proceedings. Otherwise, a party might be tempted to submit late observations and/or documents by means of anonymous TPO in order to avoid negative procedural consequences such as apportionment of costs.

[4] When a party to the proceedings submits an unsigned document, the document is deemed not to have been filed if, after a corresponding invitation has been sent out by the EPO, it is not signed in due time (see R 50(3)). Since unsigned anonymous TPO do not allow the EPO to send out such an invitation at all, they necessarily remain unsigned. This has the consequence that they are deemed not to have been filed.

[5] The board is aware that anonymously filed TPO may nevertheless be adopted by a party to the proceedings as its own or may even trigger objections by the competent organ of the EPO of its own motion (see decision T 735/04 [2], dealing with the exceptional situation that a highly relevant patent application of one of the patent proprietors had been submitted by an anonymous third party). However, in the absence of such a further procedural act, anonymous TPO are to be disregarded altogether. This view is in line with the decisions G 1/03 and G 2/03 in which the Enlarged Board of Appeal refused to take into account an anonymously filed third party statement (see Section VI(3) of the decisions).

[6] Thus, the anonymous observations under A 115 received on 18 January 2011 are deemed not to have been filed and are disregarded by the board.

If the approach set forth in Singer’s commentary is followed, TPO simply cannot be anonymous.

This may be formally correct (although I doubt that the lawmaker had TPO in mind when drafting R 36(3) EPC 1973, which has become R 50(3)), but I do not think that it is in the interest of the EPO (and of the public at large) to require the parties filing observations to reveal who they are. The question of apportionment of costs is too marginal to balance the benefit that can be drawn from allowing anonymous TPO. Yes, there may be cases of abuse of proceedings (this is also possible when straw men act as opponents), but I guess the vast majority of TPO are just that, and many of them would not have been filed if anonymity was not allowed.

As has been found in T 458/07, TPO filed during opposition (appeal) proceedings should be treated as late filed documents, in compliance with the rules the Boards have developed for such documents (considering prima facie relevance, procedural economy, …). In the present case this would have allowed the Board not to take into account the TPO, without even considering whether they were signed or not, which I believe to be irrelevant.

But let us imagine that the present approach prevails. I wonder whether the signature of a professional representative would be considered sufficient if the third party was not identified. After all, one of the parties could have requested the representative to file the observations.

Also, would the use of the EPO third party observation website (here) lead to a R 50(3) notification? The corresponding form allows to identify the third party, but as far as I can see, there is no easy way of signing the form.

Be that as it may, if you are a professional representative and you are asked to file TPO in opposition proceedings, the safest way, obviously, would be to reveal the identity of the party and sign the observations. But what should be done if the third party wants to stay incognito, as it most likely will? I think I would sign the observations as a professional representative and make a clear declaration that the third party is not a party to the proceedings. Perhaps this would dispel any doubts of the EPO about a possible abuse of proceedings.

Any thoughts?

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

The file wrapper can be found here.


Anonymous said...

S+S also takes the view that A. 115 observations can only address "patentability", i.e., Art. 52 to 57, which are found under that particular heading. It nevertheless appears to acknowledge in a footnote that this narrow interpretation is not universally shared, as I noted in Laurent's blog. I still haven't located the original Teschemacher reference.

Looking at the particulars of the case I'd say that the decision was something of a sleigh of hand. The board could have easily dismissed the TPO on a number of other grounds.

Visser mentions cases where signed with fantasy names such as "Buzz Lightyear". I wonder how this board would have reacted to that. And what if it was not that obvious that the identification was invented?

J-Dub said...

Hi, in the case of a French "CPI", it is in any case very disputable that you may act as a straw man at the EPO.
Namely, the Règlement Intérieur de la CNCPI states that you have to behave like a CPI "at all times", and forbids acting like a straw man.
However debatable this may seem, this point is often overlooked (quite to their advantage) by the majority of CPI exercing as European attorneys.
In other words, whether acting at the EPO or elsewhere, you still remain as CPI, and as such you cannot work as a straw man.

oliver said...

Oh, I always thought the « P » in CPI meant « paille » … ;-)

Rimbaud said...

J-Dub, thanks for raising this interesting point, which I also overlooked.

Anonymous said...

- what if the case was that the "observer" merely wanted the material to be officially on file? There was still the chance that it would be taken at face value, rather than being shut out on "procedural economy grounds".

The file has been poisoned successfully, the phrasing "Thus, the anonymous observations under Article 115 EPC received on 18 January 2011 are deemed not to have been filed and are disregarded by the board.[p. 16]" notwithstanding. They were disregarded as far as the decision goes but not completely.

Procedural and other economy is obtained for the potential infringer if sure-fire prior art is deposited by means of an observation. However, it would still be advisable to have a qualified European Patent Attorney write it.

Oliver, a whole Politically Correct Holiday Season without your vigilant eye - we shudder at the thought. Thank you, and we look forward to joining you in the New Year.

Best wishes,

George Brock-Nannestad