Wednesday, 29 February 2012

T 418/07 – Nonchalance

The opponent filed an appeal after the Opposition Division had rejected the opposition.

The decision is interesting because the patent proprietor had some rather unusual requests related to the oral proceedings (OPs) to be held before the Board:

Multiple representatives

[2] On 4 April 2011, shortly before the OPs on 4 May 2011, the [patent proprietor] appointed a second firm of representatives as joint representatives in addition to the firm already acting and asked the board to send copies of all correspondence to both firms […]. After the board gave a negative answer to that request in its communication of 12 April 2011, the [patent proprietor] repeated the request in a subsequent letter of 14 April 2011 […].

[3] While it is open to a party to appoint as many representatives as it may wish, the board is not aware of any requirement on it or on other parties to send correspondence to more than one representative of one party. If a party wants to retain multiple representatives, it must make its own arrangements for copying correspondence to them all. Parties cannot expect the board to provide copying services for their convenience.

Provision of translation in OPs

[4] The [patent proprietor] announced in its letter of 4 April 2011 that it would use German at the OPs and requested the board to provide translation from German into English for the benefit of the [opponent] and of one of its own employees who would attend the OPs and who does not speak German […].

[5] It is a right of any party to use any one of the three official languages in EPO proceedings, but the right to translation from either of the two other languages is circumscribed by R 4. It is clear from R 4(1) and (5) that a party who gives at least one month’s prior notice is free to use an official language other than the language of the proceedings and that interpretation must then be provided by the EPO.

[6] However, such interpretation is quite manifestly only for the benefit of other parties not using the same language who would otherwise be at a disadvantage. In the present case that might have included the [opponent] had it not decided not to attend the OPs but then it would clearly have been he, and not the [patent proprietor], who was responsible for requesting free translation at least one month before the date of the OPs (see R 4(1)). In the board’s view it is equally clear that a party which elects to use a language which is not understood by one of its own representatives or employees cannot for that reason request a free translation. The board cannot provide translation merely to suit the convenience of a party.

Requests for decisions in advance of OPs

[7] The [patent proprietor] made several attempts to obtain a decision or partial decision from the board before the date of the OPs. In one of its letters of 4 April 2011 it requested the board to indicate whether or not the OPs were necessary and also requested the board to inform it whether or not it intended to admit the documents whose admissibility the [patent proprietor] had challenged […]. This would have required the board to decide those admissibility issues before the OPs. In its letter of 21 April 2011, it limited its request for OPs so as only to be effective if its main request was not granted. Again this would have required the board to decide the main request before the OPs.

[8] The [patent proprietor’s] objective seems to have been the quite understandable one of avoiding or reducing the costs of attending the OPs. However, even if only one party makes or maintains a request for OPs, the board cannot make any decision before the OPs. The purpose of OPs being to hear the parties before making a decision, any decision or part-decision in advance of the OPs could deny a party the right to be heard, assist one party to the prejudice of another, and compromise the board’s duty of impartiality (see A 113(1) and decision R 11/08 [14]). If avoidable costs are a concern to a party, its remedy is to request not a premature decision but an apportionment of costs.

To download the whole decision, click here.

The file wrapper can be found here.