Wednesday, 15 February 2012

T 36/11 – An All Too Sudden End

When an opposition is withdrawn, the Opposition Division (OD) can continue the proceedings of its own motion. But it does not have to, even if the patent proprietor would prefer to keep the proceedings alive.

An opposition had been filed on February 3, 2010 by Deutsche Telekom, but two weeks later the opponent withdrew the opposition.

The OD informed the patent proprietor of the withdrawal (on March 1) and then invited him to file his observations with respect to the notice of opposition (on March 12).

The proprietor filed observations on September 10.

On November 25, he was informed that the OD had decided to discontinue the proceedings.

He then filed an appeal against this decision.

The Board found this appeal to be inadmissible:

[1.1] In accordance with A 107 and R 101(1), one of the requirements for an appeal to be admissible is that the appellant is adversely affected by the decision under appeal. In the present case, this requirement is not met for the following reasons:

[1.2] In its reply dated 10 September 2010 to the communication issued by the OD, the proprietor requested that the opposition be dismissed. In support of its request, for each one of the claims as granted, the proprietor submitted arguments against the opponent’s arguments as set out in the notice of opposition in support of lack of novelty and/or lack of inventive step. Apart from a conditional request that oral proceedings be held, the proprietor did not submit any further requests.

[1.3] From the reply it can thus unambiguously be derived that the proprietor requested that the opposition be dismissed and, hence, that the patent be maintained as granted.

[1.4] By deciding to discontinue the opposition proceedings, the OD fully acceded to this request, since the decision had the immediate consequence that the patent was maintained as granted. In this respect, it is not relevant whether or not the order of the decision literally corresponds to the proprietor’s request. In the board’s view, what is decisive is that the substance of the decision given in the order fully accedes to the request, which in the present case is that the patent be maintained as granted.

[1.5] In the statement of grounds of appeal, the appellant argued that it was adversely affected by the decision, since, notwithstanding the opponent’s withdrawal, the EPO had invited the proprietor to file its observations, which was taken by the proprietor as a clear indication that the EPO planned to continue the opposition procedure of its own motion. Further, since it was evident to the proprietor that the EPO was going to examine the facts of its own motion, the appellant assumed that the further prior art as filed with the reply would also be considered and examined. Issuing a decision to maintain the patent as granted only after an examination of this prior art would have led to “the needed clarity on this patent, in the interest of the public and all parties involved”.

[1.6] These arguments are not convincing for the following reasons: With the communication dated 12 March 2010 the proprietor was invited to file its observations. This invitation cannot be interpreted as indicating that the proceedings would be continued. For example, a reply in which the proprietor were to submit that, in view of the withdrawal of the opposition, the opposition proceedings were to be discontinued, would have been fully compatible with the content of the communication. As to the prior art documents filed with the reply, the board notes that in the accompanying letter reference to these documents is only to be found at points II. 3 and 4, which read as follows:
“3. For the sake of completeness, Patentee submits as further items of prior art Exhibit E 10: Patent JP-03-244224 including English abstract and English claims Exhibit E 11: Patent JP-2001-197551 including English abstract and English claims and also machine translation of claims and description These items of prior art were cited by the Japanese Patent Office during examination of a Japanese family member of the patent in suit.

4. Furthermore, Patentee submits the following items of prior art which were cited by examiners of the USPTO during examination: Exhibit E 12: US6088002 Exhibit E 13: US20030003959”
In the board’s view, these submissions do not imply that the proprietor made a request that the opposition proceedings be continued and, more specifically, that the cited prior art documents be considered and examined by the OD. Nor do they imply or suggest that an examination of these documents would lead to “the needed clarity on this patent, in the interest of the public and all parties involved”.

[1.7] The board further notes that under A 113(1) the decisions of the EPO may only be based on grounds or evidence on which the parties concerned have had an opportunity to present their comments. This procedural right is intended to ensure that no party is caught unawares by reasons given in a decision turning down its request on which the party has not had the opportunity to comment. In the present case, since the opponent had withdrawn its opposition, the proprietor was the only remaining party to the opposition proceedings. Further, from the decision under appeal it follows that the OD had no cause to continue the proceedings of its own motion as the dossier stood at the time (see point II above). If the OD had considered that the stage reached in the opposition proceedings was such that they were likely to result in a limitation or revocation of the patent without further assistance from the opponent and without the OD itself having to undertake extensive further investigations, it should have continued the proceedings (cf. R 84(2), Guidelines, D-VII, 6.2 and 6.3).

In the present case, this situation apparently did not occur and, analogous to the case in examination proceedings in which the examining division is not obliged to issue a communication in which its reasons as to its positive findings on the grant of a patent are set out, the OD was not obliged to communicate to the proprietor the reasons as to its positive findings on the maintenance of the patent as granted in order to comply with A 113(1). Hence, there was no violation of the right to be heard, which might otherwise have adversely affected the proprietor.

[1.8] Since the decision corresponds to and is fully consistent with the proprietor’s unambiguous request at the time and the board sees no other reason why the proprietor would have been adversely affected at the time the decision was delivered, the board concludes that within the meaning of A 107 the proprietor was not adversely affected by the decision.

[1.9] Consequently, the appeal is to be rejected as inadmissible, A 107 and R 101(1).

I understand that if the patent proprietor had responded by filing a main request limiting claim 1 of the patent before the OD terminated the proceedings, the OD could not have acted as it did - or, if it had done so, the appeal would have been admissible.

To download the whole decision, click here.

The file wrapper can be found here.


oliver said...

I just came across T 560/90 where the OD was said to have committed a substantial procedural violation because it had terminated the proceedings (following the withdrawal of the opposition) although the patent proprietor had filed amended claims.

Roufousse T. Fairfly said...

(Part 1/3)

Servus Oliver!

What a mess!

On the one hand, under the circumstances I think rejecting the appeal was the least bad outcome under the circumstances.

On the other hand, another decision should have been reached, as I believe that the procedure was flawed.

On the other foot (I ran out of hands) this patent shouldn't exist.

The proprietor considered that it was appealing a decision pronounced by the "Opposition Division", and so did the BoA.

I submit that this may have not exactly been the case.

Form 2352 EPO issued 25.11.2010 was completed by a Formalities Officer "for the opposition division", as attested by the seal.

There is however no trace in the public record under Art. 128 of the identities of the members of the said division.

The practice in the corners of the EPO I used to haunt was to appoint an opposition division sometimes after the reply to the communication under Rule 79(1) was received. (In comparison, the DG3 president usually names board members within weeks after an appeal is filed).

At that point there is some idea of the overall complexity of the case (number of parties, languages, hearing of witnesses, number of requests, etc.). The division is selected by a director amongst the subset of examiners qualified for opposition work (formal OPPO training is however not an absolute prerequisite), depending on experience, familiarity with the technical field (resulting sometimes in previously involved first-instance examiners being co-opted to the oppo division), nationality (you would prefer to avoid a Freedonian-dominated division in a case pitting Sylvania against Freedonia), etc. There is also a certain logic to this: the division can completely appraise the case in one go, with the goal of directly summoning an OP, or issuing a decision (in the ideal case). With this deferred assignment you also reduce the risk of having to replace member and losing the intellectual investment in the case.

What seems to have happened here is that the FO would appear to have mechanically executed the steps laid-out in an internal procedural reference called "Le Fil d'Ariane", which you often see referred to in public documents. For each situation these sheets (or intranet pages) precisely spell out what should be accomplished in a given situation. These are IMO very well thought out, and I've witnessed senior FOs thoroughly discussing at length the procedural implications of certain proposed EPC rule modifications.

EVENT: Filing of OPPO (04.02.2010). Probable procedure: FO checks that the fees have been paid, that the grounds were filed on time, that all evidence cited is in the file and in an official language, that the opponent is properly represented if necessary, etc. Once this is done, the stuff is forwarded to the proprietor and appropriate codings are entered into the computer system, with an alarm signal reminding to "BEEF" (Bring Forward) the file for further actions after the expiry of the time limit. At some point the file should be handed over to a director for assignment to a division, but I don't know when exactly this should occur.

EVENT: Withdrawal of OPPO (18.02.2010, only two weeks later): FO forwards a copy to the proprietor, but I would wager that the procedure doesn't mention what should be done with any running time limit (or that step was overlooked), and the FO may not necessarily immediately assess the global state of the file.

At this point the proprietor could (SHOULD) have requested a clarification of the situation (and request the immediate cessation of the procedure), as he had been duly informed of the withdrawal.

Instead he replied to the notice of opposition, on 10.09.2010.

Two months later, Form 2352 EPO announcing the cessation of the proceedings was remitted to the internal postal service 19.11.2010.

Roufousse T. Fairfly said...

(Part 2/3)

What happened in those two months? Was a division actually assigned before 19.11.2010? This fact is recorded in internal computer systems; shouldn't there be a written trace of this in the wrapper? Did the FO defer to a division under Art. 19 before issuing the decision? Or was it the director normally responsible for naming a division who instructed the FO after being apprised of the facts?

Rule 11(3) allows the FO to make certain procedural acts within the bounds set by the president, as edicted in her decision dated 12.07.2007 concerning the entrustment to nonexamining staff of certain duties normally the responsibility of [...] opposition divisions, which include under Article 2, point 19 decisions concerning discontinuance of the opposition proceedings in cases covered by Rule 84 EPC where such proceedings are not continued by the opposition division of its own motion. [EMPHASIS ADDED]

(Special edition No. 3 OJ EPO 2007, page 119/158)

This prescription, as well as Rule 84 it refers to, implies IMO that a division must exist before the FO could exert the power s devoluted to him. Furthermore, whether or not proceedings are continued under Rule 84 and Art. 114 very much constitutes a decision, which would have to be made in writing according to Rule 111 EPC.

Form 2352 merely states that the EPO had no cause to continue the proceedings of its own motion as the dossier now stands. It doesn't state that a division under Art. 19 was actually convened and involved. It is not up to the formalities officer to decide on whether there are any substantial grounds justifying (any/further) involvement of the division. (Mind you, the boundaries between formal examination, substantive examination, and search, are increasingly blurred in all these silly rules spewed out by the AC).

I think that a form with check boxes deciding on Art. 114 and Rule 84 and dotted lines for the signatures of the division members would be sufficient, somewhat like the (infamous) form for a decision according to the state of the file. The blurb could border on the discretionary. The FO could then perform the "Schlussverfügung" under Art. 101 EPC without any further ado and with explicit authority, armed with the proof that the condition of the presidential decision is met.

In the present case the appellant might have had a slightly better chance of success if he had argued something along the preceding lines, as the boards are usually quite touchy on anything resembling a procedural error. But he might have at the most gained some time, which is what he seems to have been aiming for here. I can't imagine the proprietor arguing against his own patent, nor the division engaging in a complete examination without an opponent present.

The OPPO training very much emphasises that opposition is not a reexamination of the application, and that Art. 101 imposes strict limits on the extent of investigations. Art. 114 was rather frowned upon, even though the opposition divisions really have more latitude in that area than the boards. On the other hand one is often confronted with severe clarity problems which cannot be addressed head-on, and flawed arguments by the parties. The division must somehow put order in the submissions on hand and reach a decision, which can involve reaching your own conclusions and bridge some gaps in order to decide to maintain or revoke.

Roufousse T. Fairfly said...

(Part 3/3)

If the proprietor was really interested in obtaining a solid patent, he would have reacted to the A. 115 observations filed 04.07.2008... Curiously these were "withdrawn" with the letter received 15.10.2008: Namens und im Auftrag der Firma Deutsche Telekom AG, 53113 Bonn, werden die mit Schreiben vom 02. Juli 2008 vorgebrachten Einwendungen gegen die Patentierbarkeit der oben genannten Anmeldung zurückgezogen. Under what authority can a third party, who is not a party to the proceedings, "retract"?

The observations in question consisted of a decision of the DPMA concerning the priority application filed in German by E-Plus (the relationship between E-Plus and KPN is not clear to me). The scope of DE claims is not identical with the EP one, so I don't think double patenting objections apply here. (I don't know how this is handled in Germany anyway). The decision was appealed, and has been gathering dust for the last five years at the BPatG. Not bad for the proprietor.

Even though the claims were not identical, the examining division could still have looked into the reasoning and the documents on which it is based made by the colleagues downtown. That would have been a totally justified application of Art. 114, and the applicant could have fussed about this.

A patent was granted just a few weeks after the "withdrawal" of the third party observations...

Why is DTAG so hesitant? They have twice taken action, then quickly backpedaled. Even though central revokation is better, in the present case the issue might well end up before a German court anyway, so why not get there ASAP? For the proprietor,

The patent is obviously aimed at preventing the installation of mobile communications antennas on those towers which were planted by the old Bundespost (forerunner to the DTAG) all over West-Germany from the 1950 to the 1970s. These host on platforms point-to-point links (whose importance has decreased with the advent of dirt-cheap fiber optics), and on the tip TV and FM antennas.

The EP claim is directed to a tower more than 50m in height, and carrying two rings of antennas with differing distances from the axis. Big deal. I can foresee a lot of potential infringement from antennas mounted on those ubiquitous French water towers...

There is a lot that is wrong wrong with that claim.

In propagation, what counts is not so much the local height above local ground, but a measure called "EHAAT" (effective height above average terrain). You can have a relatively short structure on a high mountain. Take the Stuttgart Fernmeldeturm for instance. The microwave platforms at the bottom are less than 50m from ground, but are at a high altitude nevertheless. You will notice a several groups of white antennas at mid-height which are potential infringers. Can you decide that one ring has a radius greater than the other? If yes, does it matter? What is the purported technical effect? (A single sentence in the description discloses a somewhat contrived one).

I think I should better stop here, or I'll spend the rest of the night on this...