Tuesday, 3 September 2013

T 1351/10 – No Excuse

[2] The main request under consideration was filed as the [patent proprietor’s] fourth auxiliary request with letter of 4 February 2013, i.e. one month before the oral proceedings (OPs) before the board. It is identical to the main request underlying the decision of the opposition division (OD) […].

[2.1] According to Article 13(1) RPBA […] any amendment to a party’s case after it has filed its grounds of appeal or reply may be admitted and considered at the board’s discretion. The discretion shall be exercised in view of inter alia the complexity of the new subject matter submitted, the current state of the proceedings and the need for procedural economy.

[2.2] The [patent proprietor] argued that in August 2010, some days before the end of the time limit for filing the statement of grounds of appeal, the professional representative in this case was changed. It was not possible at that time to review the case carefully and to submit correct requests. Use had to be made of what the representative’s predecessor had prepared.

[2.3] However, a change of professional representative is not an objective excuse for not filing appropriate requests along with the statement of grounds of appeal, and in particular for not maintaining the main request underlying the decision under appeal. In fact, this rather presupposes a deliberate choice by the [patent proprietor]. In any case, a change of representative at the time of filing the statement of grounds of appeal certainly cannot justify the filing of the main request only one month before the date of OPs before the board.

[2.4] Moreover, in its letter dated 4 February 2013, the [patent proprietor] only stated with regard to the fourth auxiliary request: “It is requested that the patent be maintained in amended form with the same claim 1 submitted during the opposition procedure with letter of December 18, 2008 of the previous patent representative, and with dependent claims 2-5 of the patent as granted”. No arguments in support of the inventiveness of the subject-matter of claim 1 – which would challenge the decision of the OD in respect of the main request – were given.

[2.5] In the board’s view it would not serve the purpose of procedural economy in these appeal proceedings to allow the [patent proprietor] to defend its main request underlying the decision under appeal for the first time in OPs before the board. Moreover it would go against the principle of fair proceedings to admit the main request into the proceedings, since the [patent proprietor’s] conduct led the [opponent] to believe that the main request underlying the decision of the opposition proceedings would no longer be the subject of discussion, and, also due to the lack of any written arguments in support of the fourth auxiliary request in the [patent proprietor’s] letter of 4 February 2013, the [opponent]might well have been surprised by the [patent proprietor’s] arguments.

[2.6] Thus, the board, exercising its discretion under Article 13(1) RPBA, did not admit the main request into the proceedings.

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

The file wrapper can be found here.


Raoul said...

This decision is not surprising at all, as it is in line with a whole series of similar ones.

In the present case, T 1351/10, it would have been wiser to maintain said request when entering appeal, especially as auxiliary request 1 introduced during Oral proceedings before the Opposition Division was not admitted by the latter.

Since appeal procedures are primarily there to verify whether the decision of first instance was correct, it seems prima facie reasonable to start in appeal at least with a request which had been found not allowable by the first instance.

On the other hand other filing requests without any indication of their purpose and any explanations as to why they can overcome objections raised beforehand is also averse to them being admitted in the proceedings, cf. T 2422/09, T 1706/08 and T 1678/11.

A change of representative has never been a good excuse when filing requests late.

Just a few examples:

T 319/05, T 1457/08, or even missing the time limit under R116(1),as in T 1056/02.

Even the fact that a representative had an accident shortly before the OP and was changed did not allow to file auxiliary requests 1 and 2 (which actually consisted of a combination of granted claims) after this time limit, cf. T 1585/05. It was held that the proprietor has the responsibility for timely filing requests.

In this case it would have been wiser to request postponement as the accident of the representative is a serious reason for allowing postponing.

A change of proprietor and a concomitant change of representative is also not an excuse to file late requests, cf. T 799/05, since it must be assumed that all actions taken in the opposition proceedings and opposition appeal proceedings prior to the change in representative had been undertaken with agreement of the appellant and reflected the way in which the appellant wished to conduct its case.

A similar stance applies and even to a request for postponement of Oral Proceedings, see T 37/97 and T 301/08.

As a general comment, I would like to say that it appears surprising how little some representatives are aware of the Rules of Procedures of the Boards of Appeal, which are applied more and more strictly by the Boards.

I think here especially of

- Art 12(2)-completeness of a party's case,

- Art 12(4)-request which should have been filed or refused before the first instance, as well as

- Art 13(1)-amendment of a party's case, or

- Art 13(3)-no admission of requests which may necessitate to postpone Oral Proceedings.

MaxDrei said...

Good comment from Raoul. The Rules of Procedure of the Boards of Appeal are clear (always have been) but hitherto have been applied inconsistently, and sometimes appallingly loosely.

This is unfortunate. Tightening up on Rules is a contentious and problematic thing to do, ever likely to cause ill-feeling and resentment till practice becomes consistent and predictable. Once the class teacher loses discipline, getting it back is almost impossible.

Raoul, do you think DG3 has done everything in its power to warn the community of representatives, to the outermost circles of representatives, that the Rules of Procedure are, from now on, going to be imposed strictly.

I often wonder whether representatives make the mistake of supposing that a tribunal at the EPO will behave in the same way as a tribunal in their own national jurisdiction. Like German courts allowing the patent owner to re-write the claims during the determinative court hearing. And as for variations within DG3, do some German members of EPO DG3 still think the EPO ought to do what the German courts do

Anonymous said...

The rules have been revised at some point and I think that from that moment on 6their application has become stricter.