Tuesday, 22 October 2013

T 518/10 – Three In A Row

This decision is interesting on several counts; you might want to have a look at the discussion of the burden of proof regarding sufficiency of disclosure (point [7] of the reasons).

In what follows, you will find two passages concerning the patent proprietor’s request for a postponement of the oral proceedings (OPs) as well as a related A 106 objection.

Request for postponement of OPs

[2.1] With letter of 21 February 2013, the [patent proprietor’s] representative requested postponement of OPs scheduled for 9 April 2013 for the reasons that he was summoned to three OPs before different boards on three consecutive days preventing him from adequately preparing each case. As a further and more serious reason, the representative referred to an explosion at the production plant of the [patent proprietor], which had restricted the contact with his client thereby making it almost impossible to adequately deal with the present case.

[2.2] Both [opponents] objected to a postponement arguing that the [patent proprietor’s] representative had already been aware of the three hearings on three consecutive days by mid-December 2012. Furthermore, they submitted that, judging from the various activities of the [patent proprietor] in other patent matters, the [patent proprietor] was obviously not prevented by the explosion in dealing with those matters. The [opponents] believed that the [patent proprietor’s] request was a deliberate attempt to postpone a decision, “which could harm there global legal and public relation position”.

[2.3] According to Article 15(2) RPBA, the board has the discretion to exceptionally allow a change of date for OPs. Examples for circumstances that can be taken into account in exercising this discretion are given in the notice of the Vice-President of DG3 dated 16 July 2007 concerning OPs (OJ EPO 1/2013, Supplement, pages 68 to 69, hereinafter “the Notice”). Furthermore, in addition to the [patent proprietor’s] interest, the board has also to take into account the internal organisational burden of the board and the interest of other parties concerned, such as the [opponents] in the present case or parties in other appeals, since any postponement of a hearing in a specific case may cause delay in other proceedings.

[2.4] Article 15(2) RPBA and point 2 of the Notice state that the request to fix another date shall be filed as soon as possible after the grounds preventing the party concerned from attending OPs have arisen.

The board observes that the [patent proprietor’s] representative became aware of the fact that he was summoned to OPs on three consecutive days in December (date of acknowledgement of receipt of the third summons in the appeal T 1902/09 is 20 December 2012). Accordingly, if he was of the opinion that this situation adversely affected his professional duties to his clients, he could and should have filed a request for postponement immediately. No satisfactory reason was provided as to why the representative had waited two month to file the request. Furthermore, since the summons in T 1902/09 was received after the summons in the present case, a request for postponement should have been made for the former.

[2.5] According to point 2.3 of the Notice, every request for fixing another date for OPs should contain a statement why another representative cannot substitute for the representative prevented from attending (which was strictly speaking not the case here, since there was no actual clash of dates). The board notes that the [patent proprietor] has signed a general authorisation to Elkington and Fife LLP, and the representative has not provided convincing reasons as to why no other representative of Elkington and Fife LLP could substitute for the representative.

[2.6] The board also did not see sufficient reasons as to why the explosion in the [patent proprietor’s] firm impeded OPs from taking place on the scheduled day. It was appreciated that patent matters might not be amongst the most pressing issues after such a tragic event.

However, the explosion occurred at the beginning of November 2012 and, according to the representative’s submission, on 3 December 2012, Mr Huart, the General Counsel of the [patent proprietor], was informed of the summons to OPs for the beginning of April. If there had been concerns that this date would pose a problem for the [patent proprietor], a request for postponement of OPs should have been filed immediately.

Furthermore, the representative had apparently established contact with his client on 20 February 2013, and no clear and convincing reasons were provided as to why adequate preparation for the OPs as scheduled would not be possible with still six weeks to go, in particular since the board’s communication sent with the summons had not changed the relevant legal and technical framework and it could therefore be legitimately expected that the [patent proprietor] had previously made its complete case as required by Article 12(2) RPBA.

[2.7] For the aforementioned reasons, the board was not satisfied that the [patent proprietor’s] interest for a postponement should, exceptionally, outweigh the interests of other parties and the public. Accordingly, the request for postponement was refused and the date of the OPs maintained. […]

Objection under R 106 and A 112a(2)c)

[8.1] At the end of the OPs, the [patent proprietor] raised an objection under R 106 alleging that its right to be heard under A 113(1) had been violated. It argued that, by refusing its request for postponement of the OPs and not admitting documents E55, E56 and E60 into the appeal proceedings, the board had denied the [patent proprietor] an adequate opportunity to prepare OPs and to properly present its case.

[8.2] The board notes at the outset that the objection pursuant to R 106 was raised by the [patent proprietor] towards the end of OPs after the board had informed the parties of its negative opinion regarding sufficiency of disclosure of the subject-matter claimed in claim 1 of auxiliary request 3. The objection, however, pertained to alleged procedural defects that had arisen in the proceedings several hours (the refusal to admit documents E55, E56 and E60 into the appeal proceedings) and even several weeks before (the maintenance of the date of OPs by communication of 6 March 2013).

The board is aware that R 106 lays down an admissibility requirement for a petition of review the examination of which is within the jurisdiction of the Enlarged Board of Appeal. Nevertheless, the point in time at which an objection is raised affects the alternatives of responses available to the board concerned. As the Enlarged Board has consistently held, the requirement pursuant to R 106 to raise an objection should enable the board confronted with the objection to react immediately and appropriately by either removing the cause of the objection or, as provided in R 106, by dismissing it (R 4/08 [2.1]; R 14/11 [2.5-6] with further references).

With respect to the issue of postponement of OPs, the board had no other option than to dismiss the objection, since at the end of a full day of OPs the board was unable to revert to its communication of 6 March 2013 to maintain the date of the OPs. The [patent proprietor] should have raised any objection against this communication immediately after notification of said communication (see R 3/08 [1.4]; R 9/09 [1.5]).

As regards the refusal to admit documents E55, E56 and E60 into the appeal proceedings, the board informed the parties before lunch of its conclusion on this issue. At that point in time, the [patent proprietor] should have been aware of any possible impairment of its capability to fully argue its case for auxiliary request 3 with regard to the issue of sufficiency of disclosure. By adopting a wait-and-see attitude, the [patent proprietor] constrained the board’s possibilities to react to the objection raised subsequently under R 106.

However, these preliminary considerations were not decisive for dismissing the objection. The board’s reasons are as follows:

[8.3] The decision to change the date of OPs is within the authority and discretion of the board (Article 15(2) RPBA). It may or may not be exercised in the favour of the party requesting it, based on the circumstances of the case and the reasons provided by said party. In the present case, the board, in view of the arguments that were submitted by the parties, was not satisfied that a change of date was justified and, informing the parties of its reasons by fax and post on 6 March 2013, refused the [patent proprietor’s] request […]. In particular, the board noted that the explosion at the [patent proprietor’s] factory had already occurred one month before it had received the summons and that no satisfactory reasons had been provided as to why the request was filed only one and a half month before OPs were scheduled to take place. The board moreover observed that the [patent proprietor’s] representative had failed to provide clear reasons as to why the remaining time was not sufficient to prepare for the OPs.

The [patent proprietor] in its subsequent letter dated 8 March 2013 did not contest the board’s refusal of the request for postponement of the OPs and made no attempt to sustain or supplement its request for postponement by filing additional arguments or documents. Neither in the [patent proprietor’s] letter of 8 March 2013 nor during OPs did it raise, much less substantiate, objections that the board had exercised its discretion according to the wrong principles, or without taking into account the right principles or in an unreasonable way. Furthermore, the [patent proprietor] was aware of the issues under dispute since the beginning of the appeal procedure. It had ample opportunity to provide all the necessary facts, evidence and arguments at a much earlier stage of the proceedings, but decided not to do so. The board is therefore of the opinion that its discretionary decision not to change the date of the OPs, did not violate the [patent proprietor’s] right to be heard under A 113(1). For the sake of completeness, the board notes that the [patent proprietor] had an adequate opportunity to submit arguments regarding the issue of postponement. There was thus also no denial of the right to be heard in arriving at the decision.

[8.4] Concerning documents E55, E56 and E60, the board notes that the question of their admission was discussed at the OPs. During this discussion, the [patent proprietor] was not limited in its pleadings and was able to fully present all its arguments as to why it considered their admission into the appeal proceedings justified. This was not contested by the [patent proprietor]. Its objection was rather directed to the fact that the board did not exercise its discretion in the [patent proprietor’s] favour.

The board notes that, in inter partes proceedings, each party has an obligation to take an active part in the proceedings and to provide facts, evidence and arguments to support its case as early and as completely as possible (R 13/11 [18]; R 2/08 [9.10]; R 12/12 [6]). As set out in point 4.2 above, any amendment to a party’s case after it has filed its grounds of appeal or reply is not a matter of right, but lies within the discretionary power of the boards of appeal, which is exercised with due considerations of the relevant circumstances of the case (Article 13(1) RPBA).

In the board’s opinion, Article 13 RPBA is not in contradiction with a party’s right to be heard according to A 113(1), even when amendments to a party’s case are not taken into consideration. It is at the discretion of the boards, in the interest of a fair and reliable conduct of the proceedings as well as procedural economy, not to take into account submissions of a party, which has failed in its obligation to properly advance the proceedings, provided that the party concerned has been given adequate opportunity to present its case, yet for reasons for which it alone is responsible, has not made adequate use of this opportunity. Furthermore, the admission of a late-filed submission of a party should not lead to the opposing party being at a disadvantage in exercising its right to present its case in the time available.

In the present case the [patent proprietor] was aware of possible deficiencies in its case right from the beginning of the appeal proceedings. It had reasons and adequate opportunity to present the necessary evidence at a much earlier stage of the proceedings, but decided not to do so, to the disadvantage of the [opponents], who were confronted very late in the proceedings for the first time with an attempt to overcome an issue, which was already decisive for the decision under appeal and which was again addressed in the [opponents’] replies. Furthermore, the board notes that an objection that the board had exercised its discretion arbitrarily has not been advanced, let alone substantiated by the [patent proprietor].

Since the [patent proprietor] had adequate opportunity to comment on all relevant points related to the question of admission of documents E55, E56 or E60 before the board decided on their admission into the appeal proceedings, the board is of the opinion that the [patent proprietor’s] right to be heard had not been violated.

[8.5] The objection under R 106 was therefore dismissed.

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

The file wrapper can be found here.


Roufousse T. Fairfly said...

From the way the case for postponement was presented, the board took IMO the right decision. But it could have been argued more convincingly.

From the reports in the press, the management, including the chief counsel, had to deal with suspended share trading, the complete loss of the only production facility, three dead, 18 wounded including several grievously, nagging questions by the Environment Ministry as to why more acetone (the key solvent in their process, cf. WO02102394) was stored on site than the permit allowed, the immediate layoff of almost all employees... You could develop these points better than in a corporate press release.

The applicant may have understandably been less responsive to the representative's e-mails and phone calls as expected.

On the other hand the case was ripe for proceedings, and the representative is there for a reason.

Suspension of proceedings could have been requested if insolvency had been declared, but apparently the applicant did not want to go there. They have been recovering since despite huge losses, thanks to support from the Québec government. Nestlé also has a partnership with that company since 2007.

I'm nevertheless skeptical about the claimed virtues of Omega3 fatty acids, or the wisdom of tapping yet another marine fauna (krill), even if it is "properly managed".