T 2534/10 – The Day After

The present appeal was filed against the decision of the Opposition Division (OD) to revoke the opposed patent.

The OD had summoned the parties to oral proceedings (OPs) to be held on March 16, 2010.

On this day, the main request and auxiliary requests 1 to 3 were discussed. The OPs ended at 22:38. At about 22:30, the chairman proposed that the proceedings be continued on the next day. The minutes have the following entry (English translation):

“… The chairman proposes to the parties to continue the proceedings on the next day.

Opponents 1 and 2 agree.

The patent proprietor prefers to continue on another day rather than on the next day because both representatives are already busy with other proceedings.

Opponent 1 insists that the proceedings be continued on the next day and notes that the patent proprietor is represented by two professional representatives. Therefore, it proposes that only one of the representatives be present, which would allow the other representative to attend the other proceedings.

The chairman interrupts the proceedings from 22:30 to 22:35.

The chairman tells the parties that the OD has decided to continue the proceedings tomorrow.

The chairman interrupts the proceedings at 22:38 on March 16, 2010.

The proceedings are continued on March 17, 2010, in room A 1011 of Module VIII of the EPO, Grasserstraße 9. Opponent 1 and 2 are present with the same representatives as on the day before. The patent proprietor is represented by Mr G. (as on the day before) and Mr M. (rather than Mr S. as on the day before).

The chairman opens the proceedings at 9:08 on March 17, 2010.”

The two representatives of the patent proprietor immediately requested exclusion of the whole opposition division. At about 2 p.m. the parties were informed that the deputy director had examined the request and had rejected it. At about 14:30, Mr S. joined the meeting. Auxiliary requests 4 to 10 were then discussed. The patent was finally revoked and the OD decided that the patent proprietor would have to pay the expenses - for half a day or proceedings and accommodation - that had arisen to the parties coming from places other than Munich.

Here is what the Board had to say on this case:

*** Translation of the German original ***

[2.1.2] R 115 provides at least two months’ notice for “OPs under A 116”. According to A 116, “OPs” (“eine mündliche Verhandlung”; NB: the German “eine” is ambiguous; it could be the indefinite article or the numeral “one”) shall take place either upon request or if [the EPO] considers this to be expedient. It follows from A 116(4) that OPs before the OD are public. The summons to OPs indicate the date and time. If the proceedings are to last several days, this is stated.

[2.1.3] Apparently there is no case law regarding the question whether the continuation of the proceedings on a day that is different from the day mentioned on the summons constitutes new OPs and whether R 115 is to be applied, which would mean that [the parties] would have to agree to a period that is shorter [than 2 months]. The [opponent] has pointed out that the continuation still was the same OPs and that, as a consequence, the OD could duly exercise its discretion in fixing a date for the continuation (Fortsetzungstermin) without having to respect the two-month period.

(a) The two-month period provided in R 115 serves the purpose that both parties, who cannot chose the date for the proceedings, have the opportunity to prepare themselves both regarding the contents and the organisation of the proceedings. If one of the summoned representatives encounters scheduling difficulties, he can point them out in due time and obtain a postponement, provided that the reasons are acceptable. Conversely, a professional representative can rely on the fact that there will not be proceedings on a day other than the day mentioned in the summons and that the representative can make arrangements for the day before and the day after the proceedings. As a consequence, there is neither a duty nor a necessity for the summoned representative to inform the OD, for instance that on the day after the day mentioned in the summons he has other proceedings or will be off for a vacation trip, simply because there is no scheduling problem. Also, a professional representative who has been summoned for one day will not, by way of precaution, have to look for accommodation (Übernachtungsmöglichkeit), and, as a rule, will not do so.

It follows from all this that the two-month period mentioned in R 115 makes allowance for a fundamental need for being able to schedule and predict events (Planbarkeit und Vorhersehbarkeit). In order for summoned representatives to be able to schedule, they have to be able to rely on the fact that the scheduled OPs take place within the time frame mentioned in the summons and do not exceed the latter. Therefore, the Board cannot see why the two-month period provided in R 115 would only be applicable to the first summons for OPs but not to their continuation on a day that is different from the calendar day referred to in the summons. As a matter of fact, the existing interests (Interessenlage) are the same. Therefore, the Board is of the opinion that the continuation of OPs beyond the calendar day mentioned in the summons requires new summons that have to comply with the requirements of R 115.

(b) In the present case, the summons mentioned OPs to be held on March 16, 2010. Therefore, the continuation of the proceedings decided by the OD on the evening of this day had to comply with the requirements of R 115.

Requirements of R 115

[2.2.1] It is uncontested that the two-month period was not respected for the continuation of the OPs on March 17. According to R 115 this is not required if “the parties agree to a shorter period”. According to the [opponent], the patent proprietor had tacitly (stillschweigend) agreed to a shortening of the period for summons by being present at the proceedings on the second day of the proceedings. As a consequence, it had accepted the continuation of the proceedings without any objection (rügelos).

[2.2.2] The Board cannot endorse the arguments of the [opponent], for several reasons.

(a) The principle of acceptation without objection (rügelose Einlassung)  pursuant to § 295 of the German code of civil procedure (CCP), which has been invoked by the [opponent] reads:

“§ 295 Objections to process (Verfahrensrügen)

(1) The infringement of a rule to which the proceedings are subject, and in particular of a rule governing the form of a procedural action, no longer may be objected to if the party has waived the rule’s being applied, or if the party has failed to object to the irregularity at the next hearing taking place as a result of the corresponding proceedings or at the hearing in which reference was made to the rule, in spite of the fact that the party appeared at the hearing and that it was aware, or must have been aware, of the irregularity.”

(b) Even if one wished to derive a general principle from § 295 CPC, the latter would only be applicable in the present case via A 125 if it was a general principle of procedural law generally recognised “in the Contracting States”. However, the [opponent] has not provided evidence that this principle also applies in the national law of Contracting States other than Germany, in view of shortening the period for summons.

(c) Moreover, the Board is not of the opinion that the presence of the representatives of the patent proprietor on the second day indeed qualifies as acceptation “without objection”. The minutes oif the OPs of the impugned decision read, at the bottom of page 14:

“The patent proprietor prefers to continue on another day rather than on the next day because both representatives are already busy with other proceedings.”

The fact that the patent proprietor was represented on the second day, but with a team the composition of which had changed, and that the representatives have made statements as to the substance of the case, cannot be considered to be a case of acceptation without objection but only expresses the attempt to limit the adverse effects as far as possible.

Finally, even if there had been acceptation without objection, it would not have complied with the requirements of R 115 because this provision expressly requires the parties to “agree”. Therefore, it is not enough if one of the parties does not raise explicit objections or, to use the language of § 295 CCP, “has failed to object to the irregularity”. Rather the party has to express its agreement in plain language (klipp und klar). This what the opponents had done, because the minutes, at the bottom of page 14 make the following statement on the continuation of the proceedings on the next day:

“Opponents 1 and 2 agree.”

However, according to the minutes, the patent proprietor did not and apparently it did not change its mind on the next day.

(d) Each of the reasons mentioned above leads to the conclusion that the behaviour of the patent proprietor cannot be interpreted to be an agreement to the continuation of the proceedings on the next day.

As a consequence, by continuing the proceedings on the next day, the OD has violated R 115.

Substantial procedural violation

[2.3] The [opponent] is of the opinion that a violation of R 115 cannot be considered to be substantial because the case of a continuation of OPs that had not been planned in advance is not foreseen in the EPC and because there was no established case law on that matter either.

However, a substantial procedural violation can also be made in good faith (in bestem Wissen und Gewissen) insofar as it is a violation of fundamental principles of the EPC. The principle that parties have to be able to schedule and predict events (Grundsätze der Planbarkeit und Vorhersehbarkeit), which are expressed in R 115, are expressions of the protection of legitimate expectations and as such fundamental. As is clearly shown by the present case, they are also closely related to the right to be heard if the shortened period leads to collisions of appointments (Terminkollisionen) that adversely affect a party in the procedural strategy it had planned. Therefore, in agreement with decision T 111/95, the Board considers the violation of R 115 to constitute a substantial procedural violation that leads to a remittal of the case to the first instance.

Remittal

[3] As the substantial procedural violation consists in the continuation of the proceedings on the next day, the Board does not consider it to be required or appropriate (weder erforderlich noch geboten) to repeat the part of the proceedings that is not defective, i.e. the first day of the proceedings. On the first day, the OD has examined, and decided on, the main request as well as auxiliary requests 1 to 3. After a discussion with the parties, the OD considered claim 1 of the main request not to involve an inventive step, claim 1 of auxiliary request 1 to violate A 123(2) and claim 1 of auxiliary request 2 not to be inventive. Auxiliary request 3 was not admitted into the proceedings. By announcing the revocation of the patent, the OD has made a binding statement on these requests in way that was apparent to the parties. Therefore, it has taken interlocutory decisions (Zwischenentscheidungen) on these requests.

As far as appeal proceedings are concerned, Article 8(2) RPBA makes clear that in case of a different composition of the Board (2) [a new member] shall be bound “by an interim decision which has already been taken”. Although there is no corresponding provision for first instance proceedings, Article 8(2) should be applied accordingly (Singer/Stauder-Schachenmann, EPÜ, 5^th edition, Köln 2010, A 116, marginal number 31). Consequently, the OD will have to continue the proceedings with the proviso that the main request and auxiliary requests 1 to 3 on which [the OD] has decided on March 16, 2010, are not examined afresh, regardless of whether its composition is the same or not.

In my opinion the Board should have reviewed the findings of the OD on the main request and auxiliary requests 1 to 3 before remitting the case. As things stand, the OD will now decide on the remaining requests and a (likely) appeal against its decision will have to cover all requests (including the main request and auxiliary requests 1 to 3) although the appealed decision will only deal with auxiliary requests 4 to 10. Isn’t this somewhat unfortunate?

Should you wish to download the whole decision (in German), just click here.

The file wrapper can be found here.