T 1336/09 – Anonymous Is Alright ...

... at least in ex parte proceedings. In a recent post I have reported T 146/07 where the Board deemed anonymous third party observations not to have been filed. The present decision – taken one day after T 146/07 – comes to a different conclusion.

[2.1] The third party observations […] were filed four working days only before the scheduled oral proceedings (OPs), citing two new documents which were obviously highly relevant against several of the requests then on file.

The appellant though having been informed of the filing of the observations in advance of the OPs neither requested that these be excluded from the procedure, nor that the OPs be postponed. At the start of the OPs, it filed an amended request in which due account had been taken of the new citations.

In these circumstances the board considered that the lateness of the observations should not per se be a bar to their admission into the procedure.

[2.2] In respect of the anonymous character of the observations under A 115, the Board notes that a Decision of the President of the EPO and a Notice from the EPO, both dated 10 May 2011 and concerning the filing of third party observations under A 115 by means of an online form made available on the website of the EPO, have been published in OJ EP0 2011, pages 418 and 420 respectively. The Decision in particular allows for third party observations being filed without signature (see Article 2 of the Decision), the Notice states that “Observations may be filed anonymously”(see the 4th paragraph under point "Formal requirements") .

Indeed, the boards of appeal of the EPO are bound only by the EPC, but the above dispositions in relation to anonymous third party observations are in line with earlier decisions of the boards, which did admit such observations both in ex-parte and in inter partes appeal proceedings, without apparent misgivings in relation to their anonymous character (see T 258/05 [V,3.3] in combination T 735/04 [2]).

Since the observations in the present case have been made under A 115 in an ex parte appeal before a technical board of appeal and are limited to the citation of pieces of prior art and the indication of the correspondences between their content and certain claimed features, which essentially are statements of facts, the present situation is also quite different from that in the decisions G 1/03 and G 2/03 in which the Enlarged Board of Appeal without further explanations did not take into account an anonymously filed statement made within the frame of the referral of a point of law in relation to the allowability of disclaimers.

The only requirements imposed on third party observations by R 114(1) are that they be filed in writing in an official language of the EPO and state the grounds on which they are based. The written form of the observation and the use of an official language indeed constitute the minimal conditions for allowing them to be communicated to the applicant or proprietor and to be commented upon by the latter, as provided for in R 114(2).

R 50(3) and by analogy R 86, which establish the requirement that documents filed in the examining or opposition procedure be signed, do not in the board’s opinion directly apply to third party observations. As a matter of fact, the reference in R 50(3), in relation to the case of a missing signature, to “the party concerned” indicates that the rule addresses the filing of documents by parties to the procedure, which a person who files third party observations clearly is not, as is expressly stated in A 115 (see the last sentence).

The board is aware of decision T 146/07 [3-6], dated the day before the date of the present decision and made public later, in which the deciding board disregarded third party observations because of their anonymous character, on the basis inter alia of a different appreciation of the relevance to this issue of R 50(3) and of decisions G 1/03 and G 2/03.

Contrary to the present instance, decision T 146/07 concerned an inter partes appeal, and it emphasised that “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 third party observations in order to avoid negative procedural consequences such as apportionment of costs.”

In ex parte proceedings however the appellant is the sole party and it can at any time raise new issues or submit new prior art - and so can the board of its own motion by virtue of A 114(1). Accordingly the risk of anonymous third party observations providing a cover for procedural abuse can be largely excluded in ex parte proceedings.

For these reasons the board considered that in the present circumstances the anonymous character of the third party observations did not bar them from being admitted into the procedure.

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

The file wrapper can be found here.