Thursday, 14 February 2013

T 1500/10 – Not Just A Right

This is an examination appeal.

During the examination proceedings, the Examining Division (ED) objected in a first communication dated 29 September 2008 to the claims on file. The objections concerned lack of unity, lack of clarity, unallowable amendments, lack of novelty and of inventive step.

The applicant amended the claims.

Objections against the new claims were raised in a communication dated 12 February 2009. After the applicant filed new claims, the ED summoned it to oral proceedings (OPs) and sent, annexed to the summons, a communication dated 4 September 2009. In this communication, the ED raised objections under A 84 and A 123(2) to the claims then on file.

On 21 September 2009 and again on 7 December 2009, the applicant’s representative contacted the examiner by telephone and inquired whether the outstanding objections could be discussed over the phone. The examiner indicated on both occasions that a discussion over the phone prior to the appointed OPs was not considered appropriate.

With a letter dated 10 December 2009 the appellant submitted a revised set of claims and stated that there was a misunderstanding on the part of the ED and that it was not possible for it to understand where the misunderstanding lay. In the last paragraph of the letter it requested cancellation of the OPs and continuation of the proceedings in writing. The reason was that “... the applicant does not consider it beneficial to attend the forthcoming OPs”.

During a telephone conversation on 1st January 2010, the examiner again explained to the representative that the ED needed to discuss in OPs, and not just in an informal telephone conversation, whether the recently filed claims really satisfied the requirements of clarity, added subject-matter and, subject to a clear claim formulation, of novelty and inventive step.

Despite this explanation, the representative informed the ED by letter dated 8 January 2010 that he would not attend the OPs scheduled for 12 January 2010. Instead he requested that a decision under R 111(2) be issued on the basis of the submissions filed so far.

At the end of the OPs, held in the absence of the applicant, the ED issued the decision under appeal. The application was refused because claim 1 did not fulfil the requirements of A 84 and A 123(2) EPC.

The appellant requested that the decision be set aside and that the appeal fees  be reimbursed.

The Board found the main request on file to comply with both A 123 and A 84 and then dealt with the request for reimbursement:

[3.1] In the present case, the Board considers that the conduct of the applicant in the first instance proceedings was such that it is not equitable to reimburse the appeal fee even if it were assumed in its favour that a substantial procedural violation occurred.

[3.2] The reimbursement of the appeal fee under R 103(1)(a) is subject to three conditions:

i. the Board of Appeal considers the appeal to be allowable;

ii. a substantial procedural violation occurred during the proceedings before the first instance department;

iii. the reimbursement is equitable.

[3.3] According to the jurisprudence of the Boards of Appeal, the conduct of the appellant can render the reimbursement of the appeal fee not equitable (cf. condition iii) even if a substantial procedural violation occurred, in particular if the appellant made no use of opportunities given to it to participate in the initial proceedings (cf. decisions cited in Case Law, 6th edition, 2010, VII.E.17.3.2).

[3.4] It is generally recognised that the purpose of OPs is to settle as far as possible all outstanding questions relevant to the decision and to speed up the procedure (see Visser, The Annoted EPC, 19th edition, A 116, point 1; Benkard, EPÜ, 2nd edition, A 116 note 2; Singer-Stauder EPÜ Kommentar 5th edition, A 116 note 2; and also the “Notice from the EPO concerning non-attendance at OPs before the ED”, published in OJ EPO 2008, 471).

Accordingly, A 116(1) foresees that OPs shall take place not only at the request of a party but also at the instance of the EPO if it considers this to be expedient.

This provision and the use of the word “shall” in it has three important procedural consequences:

i. It follows from this provision that the parties have not only a right to OPs when they request them but also a duty to participate in OPs, where this is considered expedient by the Office in order to assist the Office to bring the proceedings to a close.

ii. It also follows that parties do not have a right to a solely written procedure.

iii. It further follows that under the EPC OPs are in themselves a procedural opportunity for a party to present comments and for the Office to present objections, even if these were not communicated beforehand. Whether in such a case a party who duly attends the OPs has the right to an interruption or even to a postponement of the OPs to answer these new objections will depend on the particular case. However, this is not the issue in the present case because the party did not attend the OPs.

The consequence of the non-observation of the duty to attend the OPs when they take place at the instance of the Office is set out on the one hand in R 115(2), according to which if a party duly summoned to OPs before the EPO does not appear as summoned, the proceedings may continue without that party, and on the other hand in the “Notice from the EPO concerning non-attendance at OPs before the ED”, published in OJ EPO 2008, 471, which also makes it clear that a duly summoned party who chooses not to attend OPs has to expect that a decision will be taken at the OPs even if it has submitted amended claims on which no communication was issued.

In fact, this Notice, together with R 115(2), make it clear that the OPs are themselves an opportunity for the applicant to present its comments, in accordance with A 113(1). They confirm that, if a party decides not to attend the OPs without a serious reason, it chooses not to make use of the opportunity to comment at the OPs on any of the objections raised during them and, as explained above, it has no right to make additional written submissions.

[3.5] As is apparent from the file, the ED repeatedly explained to the applicant that it considered the OPs to be necessary in order to clarify all the problems of the claims on file. It also appears from the file that it was clear to the appellant that the ED had difficulty in understanding the case submitted by it and considered OPs necessary to clarify the matter (see the letter of the appellant dated 10 December 2009).

It was clear to the appellant that the OPs were appointed not only at its request but also because the ED considered it expedient.

Thus, the applicant had an obligation to attend the OPs as explained above under point [3.4].

[3.6] Despite this clear situation, the applicant did not attend the OPs and did not give any serious reasons for not attending.

In fact, the only reason for not attending was given in its letter dated 8 January 2010 which states that “... the applicant does not consider it beneficial to attend the forthcoming OPs.” It confirmed in the appeal proceedings that this was its only reason for not attending OPs.

Serious reasons which could justify non-attendance at OPs are the same reasons that could justify postponement and have been exemplified in the Notice of the Vice-President of DG3 of the EPO dated 16 July 2007 concerning OPs before the Boards of Appeal (OJ EPO 2007, Special edition No. 3, 115). Although this Notice is directed to OPs before the Boards of Appeal, the criteria set out therein are generally valid for all departments of the Office. From the examples given in this Notice, it can be seen that serious reasons are personal or social circumstances which prevent the party or its representative from personally attending the OPs.

The Board does not consider the reason submitted by the appellant to be a personal or social circumstance which would have prevented it or its representative from personally attending the OPs.

[3.7] The appellant was very well aware of the consequences of its conduct. In its statement setting out the grounds of appeal it submitted: “As it turns out, the applicant’s fears as to what might occur at the OPs were fully realised …”. Therefore, it cannot be said that in view of the objections previously raised it was taken by surprise.

The appellant submits that its conduct was correct, because it had asked for a discussion of the case over the phone and this was refused.

However, a telephone conversation with one examiner cannot be considered to be a replacement for OPs because it does not allow the case to be concluded since the other members of the ED are not present.

[3.8] The appellant also appears to believe that it is up to the party to decide whether the proceedings should be conducted only in writing or over the telephone or in OPs, and the Office has to adapt itself to its wishes. As explained above, although the parties have a right to OPs when they request them, this does not mean that they have the right to decide in which way the proceedings as a whole are to be conducted.

[3.9] It follows that the appellant not only consciously did not make use of a procedural opportunity given to it to present its comments but also acted in a way which was contrary to its procedural duty to assist the Office in bringing the case to a close.

This amounts to a conduct which contributed – as did the conduct of the ED – to the procedural situation which arose in the OPs and to the alleged procedural violation. Furthermore, it cannot be ruled out that the appeal could have been avoided if the applicant had attended the OPs before the first instance.

[3.10] G 4/92 was cited by the appellant. This opinion of the Enlarged Board of Appeal, which did not deal with the question of the equitableness of the reimbursement of the appeal fee, concerned inter partes cases and a theoretical situation in which,
  • first, one party files new facts or evidence for the first time during OPs,
  • second, these facts or evidence are admitted by the opposition division although the late filing constitutes an abuse of procedure, and
  • third, the other party does not attend the OPs although it should be noted that the reasons for the non-attendance were not dealt with by the Enlarged Board.
In fact, the duty to hear the absent party was the consequence of the late filed submissions being admitted (see points [7] and [8] of the Opinion). Thus, the procedural situation under consideration in G 4/92 is a very specific one and, according to this Board, this opinion cannot form the basis for a general modification of the duty established in A 116(1).

Decision T 197/88, also cited by the appellant, is not applicable because in the present case the ED did give the applicant an opportunity to present comments. Decision T 951/92 is not relevant because it did not deal with the question of whether the reimbursement of the appeal fee was equitable.

[3.11] For the above reasons the reimbursement of the appeal fee is not equitable. […]

The case is remitted to the department of first instance with the order to proceed with substantive examination of the application on the basis of claims 1 to 5, filed at the OPs of 24 October 2012.

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

The file wrapper can be found here.

NB: This decision has also been commented on Le blog du droit européen des brevets (here)