Monday, 17 December 2012

T 1011/09 – The Art Of Substitution

There is quite a bunch of case law dealing with the question under which circumstances oral proceedings (OPs) can be postponed. The present case shows that even the fact that the representative is summoned to OPs in another case will not always be considered sufficient for granting a postponement.

The applicant filed an appeal against the refusal of its application by the Examining Division (ED).

Two days after the receipt of the summons to OPs, the representative informed the ED that he had been summoned to OPs to be held on the very same day in another case.

The ED asked the representative to establish that the other summons had been received at an earlier date and why the representative could not be replaced by a colleague. The ED pointed out that the issues to be dealt with were rather straightforward.

In its response, the representative pointed out that the subject-matter was “all but simple” and announced that if a postponement was refused, the applicant would not be represented at the OPs and that an appeal including a request for reimbursement of the appeal fee would be filed because the ED would have “unjustifiably ignored” the  “serious factual reasons” invoked by the representative.

The ED appears not to have been impressed, because the OPs were held in the absence of the representative and the application was refused.

The Board agreed with this course of action:

*** Translation of the German original ***

The substantial procedural violations invoked

[2.1] In response to a request by the appellant, OPs before the ED were summoned during the first instance proceedings. After the summons had been issued, the appellant filed a request for postponement of the OPs. The request for postponement was justified by the fact that the representative of the appellant who was in charge of the file already had received summons to OPs to be held on the very same day in other proceedings before the EPO, so that the representative was unable to attend.  

The request for postponement of the OPs was dismissed by the ED and the impugned decision was declared at the end of the OPs that were held in the absence of the appellant and its representative, respectively.

The appellant has pointed out that the ED had committed a substantial procedural violation when it dismissed the request for postponement of the OPs and subsequently held the OPs in the absence of the appellant and its representative.

[2.2] According to point 2.2 of then applicable “Notice of the Vice-Presidents DG2 and DG3 dated 1 September 2000 concerning OPs before the EPO” (OJ EPO 2000, 456, hereinafter referred to as the “Notice”) a request for postponement of OPs could only be granted if, inter alia, the party concerned “can advance serious reasons which justify the fixing of a new date.” [bold text in the original]. According to point 2.3, such serious substantive reasons may in particular consist in “previously notified summons to OPs of the [representative concerned] in other proceedings before the EPO …”, as is the case here.

However, according to point 2.5 of the Notice, every request for fixing another date for OPs had to “contain a statement why another representative within the meaning of A 133(3) or A 134 cannot substitute the representative prevented from attending the OPs”. This implies that the justification had to go beyond the general wish of the appellant to be represented in OPs by the representative it was used to, which in itself is not sufficient, and that in particular there had to be reasons excluding or at least unacceptably impeding (unzumutbar erschweren) the replacement of the representative who could not attend (see, for instance, T 1080/99 [2.6], T 1067/03 [12.2]; T 300/04 [15.4] and T 178/03 [6.1]). The Board also was of the opinion that the requirement of justification contained in point 2.5 of the Notice presupposed that the fact that additional costs would arise – at least as long as they remain within reasonable limits – had to be accepted because in general such costs may be expected to arise when a representative is replaced by another, because the latter has to become acquainted with the case.

The Board has no reason to challenge the validity of the above provisions of the Notice.

[2.3] In the present case the appellant had made the following submissions during the first instance proceedings:
  • “a transfer of one of the two cases to another partner of the law firm appears not to make sense from the point of view of procedural economy” (letter dated September 19, 2008), and
  • “the subject-matter of the present application [is] all but simple […]. During the examination proceedings, twelve prior art documents have been cited. As a consequence, it would take an extraordinary amount of time to become acquainted with the present file. It is disproportionate that additional costs arise to the applicant because another patent attorney has to become thoroughly acquainted with the case, only because the EPO is unwilling to change the date” (letter dated November 24, 2008).
The ED had already informed the appellant by phone that (see minutes of the result of the telephone call of September 22, 2008, dated September 25, 2008):
“As the application is not complex, both technically and from a procedural point of view, it appears to be acceptable that another representative takes over the case.”
In the impugned decision, the ED has justified the dismissal of the request for a postponement of the OPs as follows […]:
“First, although there are 15 documents in the proceedings, only six of them were cited in the summons, and most of them have their origin in the inventors themselves. Some of them are equivalent and three of them have been introduced together with the summons and are, therefore, new to the person representing the applicant until then. Moreover, only a few figures, which are self-explaining, and a few paragraphs of each of the documents, each of which contains only few pages, have been cited in the summons. In view of all this and in view of the small volume of the application and the shortness of the examination proceedings, the ED is of the opinion that the present OPs constitute a rather simple case. Secondly, the ED indeed agrees with the representative that the amount of time that a substitute representative [would need] might be greater than for the person representing the applicant until then. However, this always holds true and cannot correspond to what is meant by the justification required in point 2.5 of said Notice of the EPO. As the second requirement 2.5 of said Notice of the EPO is not fulfilled, the OPs were not postponed […].”
[2.4] The substantive procedural violation invoked by the appellant raises the question of whether the dismissal of the request for postponement of the OPs by the ED was to be criticised in view of the circumstances of the case.

The ED had informed the appellant that the application was not complex, both technically and from a procedural point of view, so that it appeared to be acceptable that another representative took over the case. The arguments subsequently submitted by the appellant in its response were considered by the ED but, for the reasons given in the decision, they did not persuade the ED. In particular, the ED has explained in its decision why it considered the case to be rather simple and pointed out that the fact that the amount of time that a substitute representative [would need] would be greater than for the person representing the applicant until then could not correspond to what was meant in point 2.5 of the Notice because this would always hold true (see [2.3], last paragraph, above).

The Board is of the opinion that these considerations of the ED justifying the refusal to postpone the OPs are not to be criticised. In particular, the Board agrees with the ED that the present case is not particularly complex, difficult or voluminous. [The Board] cannot see any difficulties going beyond what is usual and which would have excluded or at least unacceptably impeded the replacement of the representative of the applicant who could not attend by another one of the representatives appointed under R 134. The arguments of the appellant, according to which among the representatives of the law firm that represented the appellant at that time only the representative who was unable to attend had been working in the present technical field, and another representative could not have attended, in particular because of the additional work and costs caused by [the replacement], because the applicant would not have paid the corresponding costs, are not suitable for rebutting the reasons that the ED gave in this respect (see point [2.2] above, second paragraph).

The reasons related to procedural economy invoked by the appellant, therefore, do not lead to the conclusion that the OPs before the ED would have had to be postponed.

[2.5] It follows from what has been said above that in the opinion of the Board, the refusal of the requested postponement of the OPs by the ED and the fact that the OPs were held in the absence of the appellant and its representative, respectively  – “the failure to grant OPs”, to use the words of the appellant – does not constitute a procedural violation. In particular, and contrary to the assertions of the appellant, there was no violation of A 116 EPC 1973 and, as a consequence, of the right to be heard enshrined in A 113(1) EPC 1973.

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

The file wrapper can be found here.


Roufousse T. Fairfly said...

I feel the decision of the ED and the board to be slightly harsh, I probably would have been more amenable to a rescheduling (forward, backward, or later on the same day), even though it is sometimes difficult at the EPO to set a date for an OP that simultaneously suits all three members and for which a room is available. The number of scheduled OPs is said to have outgrown the available facilities. Rooms may be (re)assigned shortly before the scheduled date, considering that many, if not most OPs don't take place. You would look up the room number at the entrance near the porters' desk instead of on the summons themselves.

The representative could have filed new main and/or auxiliary requests before the OP, but chose not to. This may have played a role in the board's appraisal of the case.

The summons for the OP in the colliding case (04005510) had been issued one month earlier.

Both OPs were held at the Pschorrhöfe, possibly in neigbouring rooms, with only a one half hour difference.

I wonder how the ED would have reacted if the applicant had popped into the room and said: "just wait for me a bit until I'm done next door"...

Mandataire en colère said...

Examiners and board members seem to live in a parallel world, free from financial constraints.
Replacing a colleague for an oral proceeding, even on a comparatively simple case, requires an additional work of many hours, which translate into several thousand Euros of fees. This either increases the (already high) costs for applicants/patent owners, or constitutes a loss for attorney firms.

Manolis said...

It should may be pointed out that the Notice of the OJ (2000/p.456) mentioned in this decision has been superseded by another one, published in OJ 2009/p.68. In this new version, the paragraph requiring the representative to justify why (s)he cannot be replaced has been removed. So it is no longer necessary to convince the ED/OD why another representative cannot handle the case.
It is also to be noted that this applies only to first instance proceedings, since the equivalent notice for the Boards (Special OJ 2007, p. 115) keeps this requirement, as it was also presented here in T 1771/08 some weeks ago.

MaxDrei said...

Proceedings at the EPO are supposed to be in writing. So it's not surprising that an ED or OD supposes oral proceedings to be a mere formality, along the lines of "Has the condemned man anything to say before we cut off his head?"

It is painful for an ED or OD to concede that orals are the first (and only) chance an Applicant (or party to opposition) gets, to address all three members of the Division, directly. Up to that point, everything is filtered to the other two members through the First Member.

I'm sorry, but as a representative I still believe that if only I can speak direct to all three members, I (and only me, not some colleague stooge filling in for me at short notice and not fully understanding the case) can turn around the collective opinion of the Division.

Fly, what say you to this view from the trenches? Any thoughts would be much appreciated.

Anonymous said...

From a US perspective once again, and while I understand that there are reasons why the EPO does not want to reschedule the oral proceedings, the forcing of an applicant to appear without his counsel of choice is unconstitutional. A judge cannot demand that a party change their attorney for scheduling reasons. Agree with the above that the EPO does not live in the real world.

Myshkin said...

Current practise according to the GL:

Unfortunately the wording is not very precise. It seems likely that "same representative" was meant instead of "same party". A representative is of course not a party to the proceedings.

Roufousse T. Fairfly said...

Fly, what say you to this view from the trenches? Any thoughts would be much appreciated.

Thanks for the sollicitation. I began writing something that turned into a kind of essay about what motivates an examiner (at least this one). It became a bit too long and unwieldy, so I consigned it to the mañana pile. (Ach, typisch Patentprüfer).

Perhaps at some other occasion, when I'll be in a better mood to distill out of it the subject-matter of a more general relevance.

MaxDrei said...

Fly, what a tease you are. Oh well, I shall just have to possess my soul in patience. I do hope that, one day, you will tell us though.

pantagruel said...


or should I say, MaxVier?