T 1610/08 – Honeymoon Killers

The patent proprietor filed an appeal against the decision of the Opposition Division to revoke the patent under consideration.

By communication of 20 June 2011, the Board summoned the parties to oral proceedings (OPs) scheduled for 21 September 2011 and forwarded its provisional opinion to them.

The opponent’s representative requested, by letters dated 28 June 2011 and 18 July 2011, that the OPs be postponed because he had firmly booked a honeymoon holiday that could not be rescheduled due to the wedding. The representative also pointed out that the patent proprietor’s representative supported the request and offered some arguments why he could not be replaced by a colleague:

The Board refused to postpone the OPs, for the following reasons:

[3] The respondent’s request for postponement of the OPs was considered in the light of the Rules of Procedure of the Boards of Appeal (RPBA) and the Notice of the Vice-President of Directorate-General 3 dated 16 July 2007 concerning OPs before the boards of appeal of the EPO (OJ EPO 2007, Special Edition No. 3, 115), referred to as the “Notice” hereinafter.

According to Article 15(2) RPBA, the Board has a discretion to allow exceptionally a change of date for OPs. In exercising its discretion, the Board has to take into account the internal organisational burden of the Board and the guidelines given to the public in the Notice.

The Notice (point 2.1) lists holidays which have been firmly booked before the summons as a potential serious reason for a representative to request a change of date for OPs.

Point 2.1 of the Notice has to be balanced against point 2.3 of the Notice, according to which every request for fixing another date for OPs should contain a statement why another representative within the meaning of A 133(3) or A 134 cannot substitute for the representative prevented from attending the OPs. Point 2.3 of the Notice thus makes it clear that substitution of a representative is a possible alternative to postponement.

The Board is of the opinion that the circumstances indicated by the respondent with respect to point 2.3 are in fact common to all cases in which substitution is involved. When a party is represented it is a normal situation that the party trusts its representative. The same is true for the point that substitution is likely to cause additional costs to the party. The new representative normally has to prepare the case he takes over and normally has to be paid for his work. Also the fact that the experience acquired during the preceding opposition proceedings is unique is the usual situation when a new representative must take over the representation during an appeal in an inter partes case.

If point 2.3 of the Notice was to be interpreted to mean that the reasons mentioned by the respondent would fulfil the criteria for excluding the possibility of a substitution, then the provision could never be applied and would be devoid of any meaning. This cannot reasonably be considered to have been the intention of the drafter.

In the Board’s view, only extraordinary circumstances, i.e. those which are not common to every case of substitution, should be accepted.

In general, a party can trust other representatives. The respondent’s letter of 14 July 2011 shows that this is also the case in the present proceedings. It was not submitted that it was impossible for other representatives to do the necessary preparation. Further, the present case does not imply special technical difficulties which might prevent the substitution of one representative having a background in the field of medical technology by another one of the numerous representatives of similar background from the same association of representatives. Nor have any particular technical, factual or legal circumstances been asserted which might warrant a different finding.

As far as costs are concerned, it is the decision of the representative in charge of the case whether he will pay the substitute himself or charge the costs to his client. In any case, this is not a relevant factor for the proceedings before the EPO because it does not affect the feasibility of the substitution per se. It simply means that additional costs might arise but does not imply that the party or the representative cannot afford these additional costs.

While experience of foregoing opposition proceedings can be useful, it is not necessary in order to represent a party competently before the board of appeal. No reasons have been submitted that make this case different.

The Board has taken into account the fact that the appellant had indicated that it would also be convenient to him for the OPs to be rescheduled (even though he did not file a request in this respect). However, this is only one aspect among others, as indicated above, and cannot not outweigh the constraints of the internal organisational burden for the Board.

For the above reasons, the Board considers that the submitted reasons do not amount to extraordinary circumstances that are not common to all cases of substitution. A party’s general desire to be represented by a specific member of an association of representatives is not considered sufficient ground for changing the date for OPs. Otherwise the provision according to point 2.3 of the Notice would have hardly any significance in practice.

The Board therefore refused the respondent’s request for postponement of the OPs.

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