This appeal was against the decision of the Examining Division to refuse the application under consideration.
The Board summoned to oral proceedings (OPs) and in a communication set out its preliminary opinion concerning clarity, added subject-matter and inventive step.
In response to this communication, the appellant filed two further amended sets of claims forming the basis of a main and auxiliary request respectively to replace all previous requests.
The OPs were held in the absence of the appellant.
In what follows, the Board deals with the appellant’s absence and his right to be heard.
Absence of the appellant at the OPs
[4.1] As announced in advance, the duly summoned appellant did not attend the OPs. In accordance with R 115(2), the proceedings continued without him. As foreseen by Article 15(3) RPBA, the absent appellant was treated as relying only on his written case and the issuance of the decision was not delayed due to his absence at the OPs.
[4.2] In advance of the OPs the appellant requested that he be contacted by telephone should neither of the requests on file be considered to be substantially allowable “such that an allowable set of claims may be prepared before the date of the OPs”.
[4.3] Whilst A 116(1) foresees a fundamental right to OPs if requested by a party to the proceedings, a similar right to an informal telephone consultation does not exist (see T 552/06 [2.2]).
In the present case, the Board summoned to OPs at the appellant’s request and was prepared to discuss the case with the appellant during those OPs. A communication was issued in preparation of the OPs in which various objections of the Board were presented. The whole purpose of convening an OPs is to allow an exchange of opinions between the appellant and the entire Board and to ensure that the appellant has had ample opportunity to present its case before a decision is taken at the conclusion of those proceedings. If a party chooses not to attend the OPs, it gives up the opportunity to present its case is this manner. The Board notes that no request to re-schedule the OPs was made.
Under R 100(2) the Board shall invite the parties “as often as necessary” to file observations. In view of the fact that OPs had been appointed, a further opportunity to present observations or requests need not be given outside this framework, the OPs providing the necessary platform for this exchange of opinions.
[4.4] The Board does not rule out that there may be circumstances in which a telephone call may be appropriate: for example, if only minor objections remain which can be easily attended to by straightforward amendments. However, in the present case, the objections are of such nature that any further amendments are likely to entail more than just a simple modification to the wording of the claims or a straightforward adaptation of the description. In view of the late stage of the proceedings and the declared intention of the appellant not to attend the OPs, it is questionable whether any further requests involving possibly extensive amendments to the claims would have been admitted into the proceedings anyway.
Right to be heard
[5.1] The claims forming the basis of both requests were filed in response to the Board’s communication. A further communication was not issued before the OPs. Since the appellant did not attend these OPs, the Board had to consider whether taking a decision on these claims would infringe the requirements of A 113(1).
[5.2] Article 15(3) RPBA reads:
“The Board shall not be obliged to delay any step in the proceedings, including its decision, by reason only of the absence at the OPs of any party duly summoned who may then be treated as relying only on its written case”.
This text is the same as the text of Article 11(3) RPBA of 1 May 2003, the explanatory notes to which state the following (CA/133/02 dated 12 November 2002):
“This provision does not contradict the principle of the right to be heard pursuant to A 113(1) since that Article only affords the opportunity to be heard and, by absenting itself from the OPs, a party gives up that opportunity”.
[5.3] The Board follows the line taken in decision T 1704/06 [7.6], in which it was held that:
“[...] in the situation where an appellant submits new claims after OPs have been arranged but does not attend these proceedings, a board [...] can also refuse the new claims for substantive reasons [...] even if the claims have not been discussed before and were filed in good time before the OPs. This will in particular be the case if an examination of these substantive requirements is to be expected in the light of the prevailing legal and factual situation.”
In the present case, the appellant had to expect that a discussion of both formal and substantive issues relating to the newly filed sets of claims would take place during the OPs. Specifically, the appellant had to expect that the Board would at least consider the question of whether the new requests could be admitted into the proceedings and, if so, whether the amendments satisfy the requirements of A 123(2).
[5.4] It follows that in the present case, the Board was indeed in a position in the OPs to decide on the requests on file without violating the appellant’s right to be heard. By filing amended claims before the OPs and then not attending those OPs, the appellant must expect a decision based on objections which may be raised against those claims in his absence (Article 15(3), (6) RPBA). […]
The appeal is dismissed.
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