T 1251/08 – On The Phone Again

This is a decision on an appeal against the refusal of the application under consideration.

On March 27, 2012, the appellant was summoned to oral proceedings (OPs) to be held on June 29.

On June 8 the appellant’s representative telephoned the rapporteur requesting a telephone discussion with the rapporteur on June 18 or 19 to see whether any of the appellant’s requests filed so far were either allowable or would be allowable with minor amendments. The appellant argued that such a discussion could avoid OPs and thus save time and costs. The rapporteur declined the proposition.

On June 20 the appellant’s representative telephoned the rapporteur again. The rapporteur informed the representative that, in the board’s preliminary opinion, none of the main and auxiliary requests currently on file appeared to be allowable or would be allowable with only minor changes. The rapporteur declined a discussion of the board’s reasons for this on the telephone.

In the afternoon of June 28, the day before the OPs, the appellant’s representative telephoned the rapporteur to say that the appellant was submitting amended claims according to three new auxiliary requests. A letter to the same effect was received later the same day, accompanied by the texts of the three new auxiliary requests.

The Board remitted the case to the first instance for further prosecution based on an auxiliary request. It had also something to say on telephone interviews:

The appellant’s request for a telephone interview with the rapporteur

and an explanation of the board’s provisional opinion

[2.1] In the telephone call with the rapporteur on 8 June 2012 the appellant’s representative essentially requested a telephone interview with the rapporteur to discuss the allowability of certain requests on file. Although the request for an interview was not allowed, the representative nevertheless requested in a further telephone call with the rapporteur on 20 June 2012 an explanation of the board’s provisional opinion on the requests on file.

[2.2] As established in the case law of the boards of appeal, as a matter of principle, the EPC foresees the absolute right to OPs under A 116(1) EPC 1973, but not the right to a telephone interview (cf. Case Law, 6^th edition, 2010, VII.B.2.7.2 concerning the department of first instance, in particular).

As to appeal proceedings more specifically, Articles 4 and 5 RPBA […] provide that certain steps in the proceedings may be taken by the rapporteur. Where this is the case the rapporteur’s duties consist of either ensuring, under the board’s supervision, that the procedural rules or the directions of the board of appeal are complied with by the parties, or, where it comes to substantive matters (Article 5(3) RPBA), of acting on behalf of the board. This, in other words, implies that the other members of the board have been informed and put in the position to give an informed opinion on the action to be taken. To this end it is important that the same case is presented to all of the board’s members. If one of the board’s members were privy to evidence or arguments not available to the other members then this would be a breach of the principle of collective decision making and would be in conflict with A 21 EPC 1973; see T 1109/02 [1] and T 263/07 [2.1-3].

[2.3] Since the requested telephone interview and the enquiry regarding the reasons for the board’s provisional opinion on the requests could have led the rapporteur to take a position on an issue where a collective decision would have been required, or to commit the board without preliminary discussion, both requests were refused as not being compatible with the above mentioned principle and rules governing appeal proceedings.

[3]. A further communication by the board after the summons to OPs was not necessary and had also not been requested by the appellant. Under Rule 100(2) EPC (corresponding to Article 110(2) EPC 1973 in conjunction with Rule 66 (1) EPC 1973) the board shall invite the parties “as often as necessary” to file observations. In the present case OPs were arranged as requested by the appellant and because it was the most efficient procedural course of action to be taken at this stage.

The telephone call by the representative on the day before the OPs

[4] The board wishes to avoid giving the impression that it finds that it is never appropriate for parties in ex parte proceedings to telephone the rapporteur. Leaving aside the question of whether it is appropriate to file new requests on the day before an OPs, the representative’s telephone call on the day before the OPs to advise the board that several late requests were being filed by fax assisted the board in conducting these proceedings in an orderly manner. The board was consequently at least in a position to ensure that the late submission was distributed to the whole board as soon as possible.

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