Tuesday, 29 October 2013

T 584/09 - A Waste Of Time?

A kind colleague has informed me that Board 3.3.01 has now issued its final decision in case T 584/09.

In this case the opponent filed an appeal after the Opposition Division had maintained the patent in amended form.

In its first decision, dated February 3, 2011, Board 3.3.01 revoked the patent.

The Enlarged Board of appeal (EBA), in its decision R 21/11, set aside the decision because the deciding Board had not been aware of a request (to admit expert opinion D27) and, therefore, had ignored it.

The EBA dismissed the request to have the case decided by the Board in a new composition, but as the former chairman had retired, the remaining former members recused themselves and the Board accepted this in its second decision of March 1, 2013.

In its third decision, dated June 10, 2013, the Technical Board now again revoked the patent. This time document D27 was admitted, but it appears not to have played any role in the decision.

So this is another case where a petition for review is successful but in the end, it is not really worth the time and effort: außer Spesen nichts gewesen.

What do we learn from this? In my opinion, before you file a petition for review, you should consider not only (a) if there are any good reasons for the EBA to allow the petition (which is rare), but also (b) if so, if this is likely to lead to a different outcome.

I guess not many cases will pass this two stage test.

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

The file wrapper can be found here.


Anonymous said...

Oh, but it was a useful excercise. It kept the patent alive in law, allowing licensing income to flow. It permitted national tax breaks on IP-derived income to be maintained. It supported shareholder value, and market valuation or investor funding criteria. And it avoided for some time a final negative decision by an authoritative body which could be used to persuade an uneducated jury. Keeping a granted patent alive for even a handful of months can, for the right patent, be a jolly good thing for the patentee.

Anonymous said...

And additionally, it likely maintained an uncertainty, dissuading competitors from entering the market.

Obviously, seen from society's point of view, all this is abuse of the patent system.

It is nowadays easy to keep even a hopeless patent application alive for 10 years at limited cost.

Is this really how we as a society want the system to be?

oliver said...

Fair enough.

Obviously, you can hardly imagine any situation that is not to somebody’s advantage.

As to dissuasion, I am not so sure. A petition does not have suspensive effect, and, more importantly, there is Article 112a(6) EPC.

Anonymous said...

Yes, but Art 112a(6) EPC is not necessarily easy to define the boundaries for. What you can and can't do (e.g whether you can increase production later or make a variant later, etc) is always going to be uncertain. I'm sure few people will rely on it, especially is lots of money needs to be invested in the project.

Myshkin said...

I don't consider this particular petition to be abusive at all. The petition succeeded, which is exceptional and leaves in no doubt that the applicant had a very good reason to feel unhappy about how the appeal proceedings have been conducted. It is a good thing that violations of fundamental procedural rights are sanctioned. (Of course it would be better if they did not occur in the first place.)

I agree that an applicant before filing a petition should consider (a) if there are any good reasons for the EBA to allow the petition. To avoid wasting money he may also consider (b) if so, if this is likely to lead to a different outcome, but as long (a) is complied with (which is indeed rare) I believe it is in the interest of the public if he files the petition anyway.

oliver said...

Prince Myshkin, I have to admit that I do not understand your last remark.

More than once I have been the victim of substantial procedural violations on behalf of an OD, but as the misbehaviour did not fundamentally change the situation, I certainly would not have asked the Board for a remittal, as the only effect would have been a 4-5 year delay.

It may well be that it would be of public interest to have the ODs admonished whenever they commit substantial procedural violations, but life is short, and even more so for patents.

For similar reasons, I certainly would not file a petition if a Board had violated my right to be heard in a non-decisive manner.

Admittedly, I am not working in a field where one day of patent protection can be worth millions of euros.

Anonymous said...

Myshkin, Oliver,

Your discussion is the eternal fight between principle and pragmatism.

oliver said...

If the fight was to be eternal, I certainly would not like to have Myshkin on the other side.

But as far as I am concerned, rest assured that I intend to kick the bucket sooner or later.

Myshkin said...

We are not in any fight, are we? ;-)

Of course an applicant should first of all be concerned with his own interests, and it may not be in his interest to spend money on filing a petition for review that is not going to be of any help even if it succeeds. So applying criterion (b) of course makes sense.

My point was that a petition for review that is filed when only criterion (a) is fulfilled is, in my view, not an abuse of patent system. It is in the public's interest that checks on the powers of the Boards are effective. And this may also be in the (longer term) interest of the applicant himself. Oliver did not mention abuse of the patent system, but an anonymous commenter did.

So I agree that there exists a tension between pragmatism and principle.