Friday, 17 May 2013

T 1125/10 – Passivity Breeds Doom

This is a revocation appeal.

When summoning the parties to oral proceedings (OPs), on October 16, 2009, the Opposition Division (OD) expressed its provisional opinion according to which the prior art on file did not destroy the novelty and inventive step of the claim of the opposed patent.

The proprietor informed the OD on December 12, that it would not attend the OPs.

On February 12, 2010, the opponent cited new documents E6 and E7.

The OPs were held on March 4, in the absence of the patent proprietor. At the end, the OD revoked the patent.

The patent proprietor filed an appeal as well as new requests taking into account E6 and E7.

It finally decided not to attend the OPs before the Board.

The Board found these requests to be inadmissible.

*** Translation of the French original ***

[1.1] Claims 1 of the main request and of auxiliary requests 1 to 3 have been amended by introducing the subject-matter of claims 5, 7, and 8 of the patent as granted (which correspond to original claims 5, 7, and 8). During the appeal proceedings [the patent proprietor] has presented no argument whatsoever in support of the inventiveness of claim 1 of the patent as granted. The [patent proprietor] does not contest that the decision of the first instance to revoke the patent on the ground of lack of inventive step of said claim was correct.

[1.2] In such a case where the patent proprietor requests the Board of appeal to examine new requests, the question arises whether these requests could have been filed in the course of the first instance proceedings, and their admission into the proceedings is within the discretion of the Board of appeal, which is entitled “to hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the first instance proceedings” (Article 12(4) RPBA).

[1.3] This discretionary power has to be exercised in view of the purpose of appeal proceedings, which are distinct from and independent of the first instance proceedings and aim at delivering a judicial decision on the validity (bien-fondé) of a decision issued beforehand by the first instance department. Thus the appeal gives the losing party the possibility to contest the first instance decision (G 9/91) and aims at removing the “adverse effect” (“grief”) by modifying or setting aside the impugned decision. As a consequence, a party cannot decide to present its case only before the second instance department. This would be tantamount to “forum shopping” and would jeopardize the normal distribution of functions between the first instance departments and the Boards of appeal (cf. T 1067/08 [7.2, 8.1]). Also, a party cannot compel [a Board] to remit the case to the first instance as it likes (T 240/04 [16.1-2]). Filing requests that could have been filed in the course of the first instance proceedings is also contrary to the principle according to which no party may take advantage of its own negligence (nemo auditur turpitudinem propriam allegansT 1705/07 [8.7])

[1.4] The following particular elements of this case are relevant in this regard:

[1.4.1] E6 and E7 have a publication date before the priority date of the opposed patent and, therefore, belong to the state of the art according to A 54(2). The passages cited by the opponent immediately reveal that the content of these two disclosures had the potential to overturn the provisional opinion of the OD because of the light they shed on the information contained in D1 in regard of the “dual phase” steels, even in case the documents had been cited for the first time during the OPs.

[1.4.2] The amendments of claims 1 consisting in a combination of the independent claim with one or several dependent claims were possible and appropriate during the opposition proceedings. The amendments are not surprising and do not give rise to particular problems. Such amendments can be made during an interruption of 10 to 15 minutes, which is a normal reaction during OPs before the OD.

[1.4.3] Unlike the situation dealt with in decision G 4/92, the [patent proprietor] was aware of the fact that two new documents were introduced by the opponent […] and of its arguments (at least) three days before the date on which the OPs were to be held. Thus, the [patent proprietor] had several options other than the filing of the requests comprising the amendments referred to above and in particular in point [1.4.2], such as:
  • requesting [the Board] not to admit the late-filed documents;
  • requesting a postponement of the OPs; and
  • reconsidering its decision not to attend the OPs.
[1.5] It has chosen none of these options. Even the statement of grounds of appeal did not contain any argument whatsoever related to this lack of reaction. As a matter of fact, the sole argument of the [patent proprietor] was that it believed that the OD should have postponed the OPs in order to allow the patent proprietor to react to the new documents and to their potential effect on the final decision, as three days clearly was much too short a time for preparing OPs in a proper way.

[1.6] However, the question to be answered is not so much whether there is a minimum time limit, nor how much time the [patent proprietor] would have needed for preparing the OPs under consideration, which it did not even intend to attend. As far as the discretionary power of the Board to hold inadmissible requests that have been presented for the first time during the appeal proceedings is concerned, the relevant question is whether the fact that the new requests have not already been examined by the first instance department is not due to the latter (here, the OD) but to the party concerned (here, the [patent proprietor]), whose behaviour has de facto hindered [the OD] from examining those requests (as has been stated in case T 1067/08 [8.1]).

[1.7] As for the OD, it has acted correctly; [the Board] cannot see any procedural violation. Under the circumstances [of the case], the only possible interpretation of the lack of reaction of the [patent proprietor] was that it was aware of [the situation], relied on the submissions that were on file and left it to the OD to decide according to its discretionary power. The [patent proprietor] knew, or should have known, that its passivity made the opponent and the OD understand that it would not contribute any more to the remaining proceedings. Moreover, the fact that it was very easy to check that the late-filed documents were quite suitable for establishing that a “dual-phase steel” as the one of D1 contained aluminium, that the OD had good reason to accept the documents E6 and E7 that had been filed after the time limit fixed pursuant to R 116(1) and to maintain the OPs and that it had no reason to postpone the OPs. Quite to the contrary, as things stood, the public and the parties could expect a decision to be taken without any further delay.

[1.8] As to the admissibility of the new requests filed before the Board of appeal, it clearly follows from the above that it was the sheer passivity of the [patent proprietor] in the presence of new and clearly relevant documents that caused the OD not to take a reasoned decision on the subject-matter of the claims as amended in response to these documents, and that, as a consequence, the Board of appeal is in a position where it either would be the first and last instance to decide, or had to remit the case to the first instance, despite the fact that the [patent proprietor] again did not attend the proceedings. Moreover, a discussion of and a decision on the requests in the appeal proceedings would offer the [patent proprietor] the possibility of remedying an omission for which it is responsible, for its sole benefit and to the detriment of the interest of the [opponent] and the public to have an immediate decision on the case.

[1.9] Consequently, the admission of the requests would be contrary to the purpose of appeal proceedings and the principles that govern it (see [1.2] above). Thus the Board of appeal makes use of its power to hold them inadmissible.

[1.10] As a consequence, there is not text submitted or agreed upon by the patent proprietor within the meaning of A 113(2). […]

The appeal is dismissed.

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

The file wrapper can be found here.

NB: This case has already been presented on Le blog du droit européen des brevets (here).


Anonymous said...

I am very uncomfortable with this decision.

If the proprietor was deemed to have received the opponents late filed (but relevant) prior art only 3days before the OP, it seems grossly unfair to expect the proprietor to take one of the three mentioned actions within 3 days. He may have been on holiday for these three days.

The OD should have postponed the OP themselves to give the proprietor time to consider its options.

This way the RIGHT to request oral proceedings and late-file documents if prima facie relevant becomes an OBLIGATION on the other party to attend OP and keep ample resources stand-by to immediately respond to last minute changes in the other party’s case. Surely this cannot be the intention of the EPC.

And then for the board to mentioned that the proprietor de facto hindered the OD because it didn’t respond within 3 days. Ridiculous.

If a party does not wish to attend oral proceedings, this is usually because it feels more comfortable with written argumentation and relies on the OD (or BOA) to do the right thing and pass fair judgement.

It should not be punished for such an approach, which is fully entitled to follow and which actually expresses faith in the system.

The rights to fair proceedings for the proprietor seem to have been shifted aside here.

I am outraged. This seems worthy of an eBOA review.

Sander van Rijnswou said...

It seems that you stay away from those Oral Proceedings at your own peril.

Nevertheless, I think that in this case it is not quite as bad as you suggest. Late documents E6 and E7 were filed three weeks before the OD, not three days. (Filing date of E6/E7 was 12.02.2010, OD was on 04.03.2010).

oliver said...

One of my teachers in EPCology told us : “Whenever I see a strange decision, I check whether the losing party was at the OPs. Very often, it was absent. When you do not go to the OPs, you should not be surprised if strange things happen.”

I would also like to point out that my translation “… whose behaviour has de facto hindered [the OD] from examining those requests …” somewhat amplifies the French (… a contrecarré, de fait, un tel examen”). A literal rendering would be: “… has de facto thwarted such an examination …”. Perhaps you find this wording less ridiculous.

Anonymous said...

At Sander: yes, filed three weeks before OP, but only deemed received by the proprietor 3 days before. That’s the only legally relevant time period.

If the 3 weeks are used as a relevant measure, this would imply an imposition on the proprietor to check the register in the weeks leading up to the OP, for which there is no basis in the EPC

I see the original OD decision as an infringement of A 113.1 ‘have had an opportunity to present their comments’. Three days is in my book not reasonably to be considered as ‘an opportunity’

Three days is not even sufficient for assessing the relevance of the late filed submissions and discussing with the applicant his options.

At Oliver: Isn't G4/92 there to avoid disadvantages from non attendence to OPs? In principle all proceedings before EPO are in writing. OPs are an exception that you are entitled to, but under no circumstance to the detriment of the other party who chooses not to exercise his right to OPs.

Where's the fairness, allowing the opponent years to come up with relevant prior art and then stating that the proprietor should have reacted within 3 days?

oliver said...

In France we have a saying: “Les absents ont toujours tort.” (He who is missing doesn’t get the vote) Or as Woody Allen put it: “Eighty percent of success is showing up.” It may be shocking and undesirable, but it a fact of experience, and quite human, I would say. So whenever you can, be there.

Incidentally, I would like to remind my readers that although they may post anonymous comments, it is by far preferable to use pseudonyms. May I ask you to never use the Anonymous option in threads where there was already an Anonymous (unless the first Anonymous was you).

ExaMinus said...

One may be surprised that the OD allowed the late-filed documents into the proceedings and did not consider postponement. Three days is certainly a short time, but the documents were received by the proprietor, and the decision strongly hints that the outcome would have been different had the proprietor raised his hand during these three days.

Moreover, the proprietor did not just failed to attend oral proceedings in opposition: He also withdraw his request for oral proceedings in appeal after having received a preliminary negative opinion from the board, and accordingly failed to attend for a second time. I take this to mean that he did not really care about his patent...

Myshkin said...

I see the original OD decision as an infringement of A 113.1 ‘have had an opportunity to present their comments’. Three days is in my book not reasonably to be considered as ‘an opportunity’

If three days were not enough, the proprietor could and should have asked for postponement of the oral proceedings.

The argument that the proprietor may have been on holiday for these three days does not hold water. A professional representative should notice incoming documents that need his immediate attention. If the representative was on holiday, he should have arranged proper replacement. And if the proprietor chose to not use the services of an attorney, that does not give him an excuse for not paying the same attention as a profesional representative would (or should) have paid.

In all likelihood, the proprietor consciously decided not to react in response to receiving the documents.

Nona3 said...

"No basis in the EPC" There cannot be a basis for every little detail in the EPC. There is something called due diligence, which may expected of parties who take part in proceedings. Whenever OP are looming, it is self evident that one checks if the other party has not come up with unexpected actions, which, unfortunately, frequently happens. There seems to be a tendency to blame the EPO for own mistakes. There are limits to that.

Anonymous said...

I'm the original anonymous.

Seems like I am relatively isolated on this one. Still, one or two tokens of support would be nice.

Yes, the propietor may have been lax.
Yes, it is wise for a prof rep to arrange for back-up if away for even a single day.
Yes, the case oozes that the proprietor didn't care and may have rubbed the OD up the wrong way.

But still: Opposition is inter-partes, and the OD should take a passive role.

R 116(1) specifies a final date for written submssions. GL D-VI-3.2 sets this deadline at 1 month, usually. This 1 month is there for a reason: fairness!

Under GL E=II-8.6 it has to be considered whether the other party can reasonably be expected to familiarise itself with the new facts. How can 3 days be considered reasonable? Let's throw the 1 month out of the window then!

Maybe I am missing something that causes me to react fiercely to this, but this is a matter of principle. No matter how annoying a party may appear to be, it has a right to be treated fairly as well.

Look at it the other way: You get a grant, then a opposition. You rightly don't see much danger in the opposition, which has dragged on now for more than a year, and you rely on on your written submission.

Then, out of the blue, three days before the OP, some damaging prior art pops up. And you are expected to respond with 3 days, if not you lose for ever.

How fair is that?

I have the feeling, but correct me if I am wrong, that you are all throwing out fair treatment for all parties in favour of speed of decision making.

Either the law is fair to all, or fair to none.

Why don't we just have duel. Or just see if the witch will sink or float.

If the OD sets a date for OPs, and you state you won't be there, you may expect that they take your written submissions as your whole case. To allow the other party to late file, but not to allow you to respond, is plain unfair.

For simple, formal, things, like filing translations, or priority docs, or search results, or replenishing a deposit account, you get at least a month.

But a late filed novelty attack on your granted patent should be analysed and responded to in 3 days? Really?

Manolis said...

Imagine the following situation: both parties present at the OPs, the opponent in the beginning brings in a new document. The OD considers it highly relevant and accepts it. The proprietor is expected to react to these new document within the time of the OPs - unless he requests adjournment. In that case, he does not even have the 3 days..

The OD is very limited in its actions towards the parties in order to keep impartiality. Even asking whether there are any more submissions to make is considered overstepping the impartiality principle. In this case, I would say that since the proprietor knew about the documents and had not reacted, the OD could not take his place and postpone the OPs for his sake. It would be taking sides - partiality. Reacting in this case does not mean necessarily responding to the arguments; a request to postpone the OPs or to dismiss the documents would have been sufficient.
G4/92 refers to submissions made during the OP, where the absent party de fact cannot know about them.

MaxDrei said...

Nice comment from Manolis but it is not so hard to be impartial, is it? It is the duty of the Chair to ask if there are any more requests, just to be crystal-clear what are the requests on which the Final Decision will be taken. But sometimes one has the Feeling that the Chair is asking one side or the other "leading" questions in order to "steer" that representative into saying the words that the OD want to hear in order to get to the "right" result.

This is particularly the case when the OD knows with side "ought" to win, but that party is in the hands of an incompetent representative. Then, impartiality can go out of the window, sacrificed to the greater good (?) of getting to the "right" result.

Or do I see it wrong, here?

Anonymous said...


Thank you for your reasonable reply.

I had considered the comparison with oral proceedings, just like the board has apparently done. And then 3 days is of course plenty of time, even if only to request more time.

The problem is however that during oral proceeding you come prepared and know new submissions may be made. You are into the case at that moment, with nothing else on your mind.

Here the new prior art came out of the blue 3 days before OP, completely unexpected.

Let’s identify the essence of this debate:

Do we agree that, just like a first party has a right to OPs, a second party has a right to rely on written submissions, and there can be no obligation on the 2nd party to attend OPs?

If we do, do we then also agree that, in order to guarantee fairness, there should be a cut-off date after which no further submissions may be accepted, at least no submissions that the other party should respond to?

If you answer yes to both, which I hope, the debate only revolves around whether 3 days is sufficient.

Considering that you get months for other acts (eg 2 months to submit a mere paper confirmation of a faxed document) and legal remedies on top of that, and that GLs give a cut-off date of 1 month, for me the answer is that 3 day is clearly insufficient.

You may consider 3 days sufficient by comparing it to the time you have at OPs. But please reconsider then if this is compatible with the above mentioned 2nd party’s right to written proceedings.

The way it looks now is some sort of ill-defined mixture. The submissions are in written form, but the required response time and alertness approach an OP scenario.

Manolis said...

@Max Drei: yes it is the duty of the chair to determine the pending requests of the parties before breaking to deliberate the decision...but (s)he is not allowed to ask "do you have any further requests to submit" to the proprietor after all the requests have been discussed and it looks like they will be refused. (citation coming soon...;-))

I'm afraid we cannot agree...;-)
The parties are not "invited" to OPs,they are "summoned". To my understanding, this means that they are obliged to attend, irrespective of whether they requested them or not. If a party decides not to attend, it cannot expect that the whole procedure will be adapted to the fact that it is not coming. There are rules to be respected, of course, like A113, G4/92 etc, but still, not coming to OP is not selecting the alternative to remain in the written procedure, it is abstaining of a step in the procedure - which will take place irrespective of whether you come or not.
Regarding the cut-off date, yes there is a meaning in it, in that if you want to be sure that your submission will be taken into account you have to respect it. It does not however mean that anything submitted after that date should not be admitted because the interest (of the EPO and the parties) is to arrive at the best possible outcome of the procedure (granting/maintaining a patent when there is something to grant/maintain or refuse it when there is relevant prior art). This interest prevails over the decision of party not to show up to OPs when it has been summoned to do so.

(sorry if my comment sounds a bit hostile, it was not meant to be that way)

Anonymous said...

Manolis, thanks for responding.

We do indeed not agree then on quite a fundamental issue.

I am happy we found that out, instead of throwing besides-the-point arguments back an forth.

I quote from G4.92 reason 8:

'in a case where (...) a Board of Appeal feels bound by Article 114 (1) EPC to examine new facts or evidence, it must, in accordance with Article 113(1) EPC, give the other parties the opportunity to comment before issuing a reasoned decision based on such facts or evidence.

Needless to say, this may lengthen the procedure, even if all the parties are present at oral proceedings, because they may not be able to comment immediately.

However, the party who submitted the new facts or evidence would have little cause for complaint (..), given that any delay would be the result of his own actions'

To me this is as clear as it gets, bar a G decision on this specific case.

Myshkin said...

The losing party here has had the opportunity to comment, or, if it considered time was too short, to request postponement. Three days is plenty to file a one-line letter.

If a party does not complain, should the OD do it for him? I agree with Manolis that that would not sit well with the principle of impartiality.

I see no contradiction with G 4/92, reason 8. The parties present at the oral proceedings when presented with new facts will have to make clear that they need more time before the Division or Board will decide to continue the proceedings in writing.

Roufousse T. Fairfly said...

I have some observations about the substance of the case, but I'd first like to point out a couple of novelties I noticed.

1) The board's decision was notified to the opponent through UPS. Even though the delivery is verified by a signature, I'm not sure whether it constitutes a "registered letter" in the sense of Rule 126(1). I would have spontaneously thought that a "lettre recommandée" was a public service defined by the UPU. But the difference between a public service and a private enterprise is getting blurrier in our "modern" times. I found nothing about this in the OJ or on the EPO website concerning this innovation. Did anyone else see anything regarding this?

2) I noticed for the first time the phrase "Décision authentifiée électroniquement" in lieu of the signatures of the chairman and of the registrar. I found a mention of this in the OJ, and upon verification I see that many of the newer cases issued are "authenticated" in that fashion. I am incapable to determine the nature of this authentication. Do DG3 members now have to use chip cards? I heard some years ago that examiners' computer equipment were to be eventually equipped with chip card readers.

How am I, as a member of the public, to verify that the document I am looking at is indeed authentic? There is no information comparable to the checksums that EPO online filing generates on the filing receipts, or used in electronic commerce in general. This looks to me a bit like the phrase Dieses Schreiben wurde maschinell erstellt und ist auch ohne Unterschrift gültig. often seen on bills or letters from your friendly tax collector.