Monday, 17 September 2012

T 1021/08 – No Ping Pong Please

This is an appeal against the revocation of the opposed patent by the Opposition Division. All the relevant facts of the case will become clear from the chosen passage, which deals with written submissions by the parties:

[1] In the present case both the [patent proprietor] and [one of the opponents] filed additional written submissions after, respectively, filing their statement of grounds of appeal and replies […]. In the [patent proprietor’s] case, there were two additional submissions. The only written submissions which are necessarily taken into account are those referred to in Article 12(1) RPBA (to the extent they are relevant and comply with Article 12(2) RPBA - see Article 12(4) RPBA), namely an appellant’s notice and statement of grounds of appeal and the respondents’ replies, each of which should contain a party’s complete case (see Articles 12(1)(a)(b) and 12(2) RPBA). Any other submissions, unless answering a communication from the board (see Article 12(1)(c) RPBA and again subject to Article 12(4) RPBA), are amendments to a party’s case and admissible only at the board’s discretion (see Article 13(1) RPBA). No explanation was given for filing any of the late submissions and none of the parties concerned made any request for leave to amend its case thereby.

[2] The cited provisions of the RPBA quite clearly foresee only one written submission from each party supplemented as necessary by answers to communications (if any) from the board. They do not foresee, and there is no right to, responses to the reply or any further exchanges of written submissions. Indeed the current RPBA were intended inter alia to prevent such “ping pong” submissions (see the full summary of the legislative history in T 1621/09 [25-34]). While the board was able to decide the present case without needing to decide on their admissibility, such additional written submissions beyond those envisaged by the RPBA add to the work of the board (and the parties), tend to delay appeal proceedings, and could be the subject of costs orders under Article 16(1) RPBA.

NB: T 1621/09 was reported on this blog (here).

Should you wish to download the whole decision, just click here.

The file wrapper can be found here.