Friday, 8 November 2013

T 2557/12 – Not Quite Perverse

One more decision dealing with an Examining Division (ED) ignoring a request for oral proceedings (OPs) …

The applicant had replied to a communication sent by the ED; at the end of its letter, there was the following statement:

The ED nevertheless refused the application without OPs; the decision contained the following paragraph:

The Board found this refusal to hold OPs to constitute a substantial procedural violation:

[3.1] In the [applicant’s] view, the phrase “In the case of the Examining division would decide to reject the application, an oral proceeding would be requested pursuant to article 116 EPC.” concluding the applicant’s reply to the ED’s communication constituted a valid request for OPs. Thus, by refusing the application without summoning to OPs, the ED committed substantial procedural violations in the following respects :

(i) the EDs decision was based on a perverse and illogical interpretation of a request, and contravened the principle of legitimate expectations;

(ii) the decision violated the applicants fundamental right to be heard;

(iii) the ED ignored the EPO’ obligation to warn applicants if errors or omissions would lead to a loss of rights;

(iv) the case law relied on by the ED was not relevant to the present case.

[3.2] In the contested decision, the ED noted that the applicant had not requested OPs pursuant to A 116 […] because the cited phrase, due to the use of the subjunctive form “would be requested”, did not constitute a request for OPs. Reference was made in this respect to decisions T 528/96 and T 299/86. Consequently, instead of issuing a further communication or a summons to OPs, the ED issued its decision to refuse the application.

[3.3] In the Board’s view, the EDs interpretation is not altogether unreasonable and thus cannot be qualified as “perverse” or “illogic”. After all, the [applicant] itself takes into consideration the possibility of “errors and omissions” […]. Moreover, as a matter of principle, it lies in a party’s responsibility to file its requests in an unambiguous manner. In this context, it is added that, up to the decision taken, there is no action apparent on the part of the ED which could have nurtured any legitimate expectations on the applicant’s side as to a positive outcome of the examination proceedings.

[3.4] On the other hand, the ED’s categorical position that there was no valid request for OPs is not tenable. Notwithstanding its inherent ambiguity due to the use of the subjunctive formulation, the phrase in question leaves little doubt about the applicant’s intention to avoid an immediate refusal of its application.

In this situation, any risk of procedural deviance could have been easily avoided if the ED had sought respective clarification from the applicant before issuing its decision.

In fact, in the Board’s understanding the phrase in question should be considered more likely as a request for OPs than not.

[3.5] The ED saw analogies in its interpretation to the factual situations underlying decisions T 528/96 and T 299/86.

The Board disagrees because the statements made in these cases could not reasonably be interpreted as actual requests for OPs.

In case T 528/96 a patentee had stated in its response to the opposition “Should the opposition division feel that further information is required, the patentee will be pleased to respond in due course, either in writing or during the oral hearing”. The then deciding board did not consider the reference in this statement to an “oral hearing” to constitute a formal request for OPs according to A 116 (T 528/96 [2]).

In case T 299/86 the deciding board held in its interlocutory decision […] that the phrase “I reserve my right to request OPs under A 116” is not in itself an actual request for OPs since a clear distinction has to made between actually “making a request for OPs” and “reserving the right to make a request for OPs” (T 299/86 [4]).

[3.6] Instead, given the circumstances of the present case, the Board sees considerable similarities to the facts underlying case T 1136/10, where an applicant had stated “should the Examiner feel disposed to reject the application at any time, we would request OPs, purely as a precautionary measure, so as to avoid such a rejection”.

[3.7] In view of the above observations, the Board has come to the conclusion that the phrase concluding the applicant’s letter of 7 April 2010 should have been understood as a valid request for OPs in case the ED considered a rejection of the application. Ignoring this request constitutes a substantial procedural violation on the part of the ED since it deprived the applicant of its right to OPs (A 116) and of its right to be heard (A 113(1)).

Therefore, the Board complies with the [applicant’s] main request by setting the decision under appeal aside and remitting the case to the ED for OPs under A 116 to take place.

Moreover, it is equitable that the appeal fee should be reimbursed pursuant to R 103(1)(a).

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

The file wrapper can be found here.


Anonymous said...

It's incredible to see so bad faith from the ED. Wording was clear.

ED refusal in April 2012 - Appeal decision in Nov 2013 = 1 year an half lost!

In addition to the Appeal fee, the annuities shall be reimbursed!

M. Gandhi said...

Nothing can be more hurtful to an honourable man than that he should be accused of bad faith.

I'd rather opt for a bad day.

Anonymous said...

I thought "would" is a polite form of "will".

Anonymous said...

"will" is not unpolite. "would" was not necessary.

Anonymous said...

After the "would" request the applicant filed a reminder letter on 19 September 2011, enquiring when he can expect to receive the next official communication. I would bet that the only mistake in this case was this letter of 17 September 2011.

Anonymous said...

How would the ED have interpreted this request: "In case of refusal I would not request OP" ? As a unambiguous request for OP ??

MaxDrei said...

Delicious. I am an English native speaker and I find the wording free of ambiguity.

But that is not the point.

The representative is writing to the EPO, where English is a foreign language (to all but 5% of its staff).

The working language of the EPO is Globish. And, in Globish, the wording here is ambiguous.

Native English speaking representatives need to write to the EPO in Globish (rather than over the heads of readers, in highly-educated and exquisitely correct Oxbridge English).

Anonymous said...

Whatever. In case of doubt, you have to ask the party what it meant to say. Many parties, too, have to work in a foreign language. I find it appalling that people who themselves work in foreign languages dare to act like this. What kind of mentality is that? Anything to raise the "production"?

Anonymous said...

I had a request were a main request and several auxiliary requests had been filed saying: I request oral proceedings in case any of the requests is not allowed.
What was he requesting? OP if the main was not allowed or if none was allowed?

MaxDrei said...

Intriguingly, Anonymous tells the EPO Examiners "you have to ask".

I suspect many in the EPO don't take kindly to being told from outside the citadel what they "have" to do. I suspect that many in the EPO don't do "ask" but are more set on "tell".

But they might make an exception here, and reply to anon "Who says?".

To the other anon, as a practical matter you can proceed with fairness can't you? If you want to refuse, issue a Summons. If one of the auxiliaries fixes it though, call the representative. Either way, problem solved.

Grammarian said...

Max: I am *almost* with you on this one, but I do not, in fact, think that the wording is free from ambiguity in isolation, in standard English.

Firstly, "would" is not simply a polite form of "will". "Would" is a past tense of the verb "will". In English, it can be used in a conditional sense, which then can in particular cases be interpreted as a polite request. However, correct, precise and unambiguous use of conditionals in English is surprisingly complex, leading to the real possibility of misunderstanding if not used with care.

"Will you do this?" means "Is it your intention to do this?" The answer is "Yes, I will."

"Would you do this?" is an abbreviated form of the conditional "If I were to ask you to do this, would you do this?", hence expressing politeness by circumlocution i.e. not actually asking for this to be done, but rather enquiring what the intention of the person being asked would be if the request were indeed to be made. The answer is "Yes, I would.", meaning "If you were to ask me to do this, I would do this." The actual request is then normally not required (except by the most pedantic of schoolmasters), and may be left unsaid.

Now, we come to the problem in the wording "If the Examining Division would decide to reject the application, Oral Proceedings would be requested."

The case on which the conditional statement is based is "The Examining Division intended to decide to reject the application". The "would" here, being the past tense of "will", expresses intent but not action. This is correct, since "should" in the same position, being the past tense of "shall", would in contrast imply action completed ("The Examining Division decided to reject the application") by which point the request would be ineffective. We want the request to be triggered by the intention, not the action, so far so good.

However, the problem with the wording is in the second clause, namely "Oral Proceedings would be requested." This clause is a prediction as to what would be expected to happen if the conditional portion were fulfilled. It leaves it up to the Applicant (or another) to give actual effect to the prediction.

Consider the equivalent "If you stole his chocolate, he would hit you." This is a prediction, but requires the actual action (the hitting, like the requesting) to be completed at some future point by another actor.

So the whole "request" as drafted is simply a prediction that a request would be made, if the ED intended to refuse the application.

To make this request correctly and unambiguously, a present tense conditional clause and a present tense main clause are together required. This is fully acceptable in standard English, provided the main clause is a direct and inevitable result (and not merely a prediction or intention) of the conditional clause. So, if we wanted to be unambiguous, we should write most clearly "If the Examining Division
intends to refuse the application, Oral Proceedings are requested." An alternative, but equally correct, albiet slightly more formal is "If the Examining Division should intend to refuse the application, Oral Proceedings are requested." The slight difference here is that the latter formulation carries a stronger sense of "at some point in the future" than the former, and therefore might be preferred.

As for Globish, I imagine the safest wording would be a simple statement without nuance "The applicant requests oral proceedings to be appointed before any decision to refuse the application is taken", perhaps with the qualifier "but prefers the issuance of a further Examination Report to the appointment of Oral Proceedings", to avoid the request being met with an automatic summons.

Anonymous said...

I didn´t ask what could be done, but what was his request. He is an English native speaker and should suppposedly be able to articulate himself in an unambiguous manner. So what was his request?

MaxDrei said...

Isn't this fun. Thank you, both Grammarian and anon again.

G, I read you. In my cases, what
I write is "I request oral proceedings, before the ED takes any Decision adverse to Applicant" Is that safe?

Anon, I think his form of words should be taken to mean that orals are asked for, even if just one request is found not allowable. The way I read it, (and I think any reasonable mind has to read it this way) even if the First Auxiliary is OK, he still wants orals on his Main Request.

BTW Grammarian, care to comment on the tale (in the Kingsley Amis grammar if I remember right) of the Englishman who drowned in Scotland because he cried out "I shall drown and nobody will save me". He would have been saved if had instead cried out "I will drown and nobody shall save me." Two nations divided by a common (?) language?

When the verbal hurly-burly's done though, I do think this ED was a bit naughty, to refuse the application without orals. Was it not in fact plain as a pikestaff, to anybody but a vindictive jobsworth, what the rep was asking for?

Roufousse T. Fairfly said...


Anon, I think his form of words should be taken to mean that orals are asked for, even if just one request is found not allowable.

An unconditional request for an OP? I have only seen them in training as trick questions on the interpretation of requests, but haven't seen them in practice.

The way I read it, (and I think any reasonable mind has to read it this way) even if the First Auxiliary is OK, he still wants orals on his Main Request.

A communication under R. 71(3) is NOT, repeat, NOT, a decision under Art. 97, but the proposition of a text for grant. I don't see how a procedural error would occur.

From the Guidelines, C-V-1.1:

If during examination proceedings a main and auxiliary requests have been filed (see C-IV, 1 and E-IX, 3) and one of the requests is allowable, the communication pursuant to Rule 71(3) is to be issued on the basis of the (first) allowable request and must be accompanied by an explanation of the reasons why the higher-ranking requests are not allowable (see also H-III, 3).

However, if the examiner considers that NONE of the requests are allowable, then OPs MUST be summoned. Ditto if the proposed grant is refused, and applicant is not convincing in getting his upper-ranked request accepted.

You may have noticed that observations on auxiliary requests accompanying a R. 71(3) communication are given on a Form 2906 ("annex to a communication"), and not on a form 2916 ("grounds for the decision"). There is a reason for that.

I nevertheless strove to make my forms 2906 objecting to higher-ranked requests as polished as possible, in case they should form the basis of a decision.

The applicant has the option of deciding whether he consents the proposed text (which essentially corresponds to his request), or try to get a higher ranked through. See the guidelines. If the proposed text is accepted, then "die Sache hat sich erledigt", no formal decision has to be taken refusing the higher ranked request, and a positive decision under Art. 97(1) follows.

I don't remember any case of mine where the applicant disagreed with my reasoning for upper ranked requests. I must either have been extremely convincing, or there could be a "bird in the hand and bird or two in the bush" factor at play here.

BTW, speaking of Art. 97, did you notice that the order of Art. 97(1) and 97(2) EPC 1973 has been exchanged in EPC 2000? When the Art. 97 was rearranged, those [expletive deleted] diplomats considered that the emphasis should be put on granting patent, and not refusing them. If you look at examiners communications that went out in the early months after the entry in force of the new convention you will occasionally find some warning of the possible "grant" under 97(1).


Grammarian said...

Max: That wording seems wholly unexceptionable to me. I would use it with confidence.

The story to which you allude makes the point well, but I think that you have it backwards. It was "I will drown, and nobody shall save me!" that lead to the unfortunate Scotsman's death.

Here the use of the auxiliary "will" with the first person "I" emphasises the speaker's intention to drown, whereas the use of the auxiliary "shall" with the use of the third person "nobody" emphasises the obligation (or lack of it) of anybody to save him. He had much better shouted "I shall drown; nobody will save me.", meaning that the speaker predicted himself to drown since, as he percieved it, no-one intended to save him.

Fowler wrote it best in the King's English: "It is unfortunate that the idiomatic use, while it comes by nature to southern Englishmen, is so complicated that those who are not to the manner born can hardly acquire it; and for them the section is in danger of being useless. ... It must be said that the short and simple directions often given are worse than useless. The observant reader soon loses faith in them from their constant failure to take him right; and the unobservant is the victim of false security." -

What fun we're all having!

Grammarian said...

Oh, and as to your letter point, I agree. Regardless of what was written, the only useful interpretation that the wording could have served was as a precautionary request for oral proceedings. The Examiner's stance seems rather akin to the quibble of the Pirate King in the Pirates of Penzance, who holds poor Frederick bound to his 21-year indenture until the age of 84 because he was born on a leap-year, and the wording of the binding clause in question was "until his 21st birthday". The fictitious officious bystander in English contract interpretation would not, in practice, let such an unlikely interpretation stand.

Anonymous said...

> Was it not in fact plain as a pikestaff, to anybody but a vindictive jobsworth, what the rep was asking for?

Especially since the representative who filed the request was French and accordingly might not have a perfect grasp of the English language.

re "I request oral proceedings in case any of the requests is not allowed", this is clearly meant to mean OPs are requested if no request is considered allowable since otherwise the attorney would write "in case the main request is not allowable".

Anonymous said...

The best way to write unambiguous requests is to write in French.

MaxDrei said...

I hope the amusement is not confined to the commenters here.

Is anybody wondering like me whether that last comment is free from ambiguity. I'm not sure. But whether it is or not, I did enjoy it.

Now seriously, thanks to Grammarian not only for correcting me on the situation in Scotland but also for reminding us that the PHOSITA is not the only fictitious legal person with a role to play. The delightful notion of the "officious bystander" is just as important for the over-riding objective of doing justice.

MaxDrei said...

Overnight, the thought occurs, that what we learn from this story, as so often, is to be "Be careful what you ask for".

So it was too, with the drowning Englishman in Scotland.

Was he shouting:

A. Ich will ertrinken, und keine darf mich retten


B. Hilfe! Ich werde ertrinken, wenn keine mich rettet.

What do we learn from this? If you want to be clear....use German!

Grammarian, I think the Amis point, Kingsley's English, is that the cry means one thing in England and quite another in Scotland. You mention Fowler. Now wasn't he the Civil Service wallah who recommends we modern English users spell "connection" as "connexion"? Huh! I ask you! In this day and age, what's that then?

Still more fun to be had here, I believe.

Anonymous said...

O yes, plenty of fun! And Maxdrei you gave a nice example why examiners should be lenient on language. Because no German would say what you quoted. Normally a German (however, as I am not German native myself, I stand corrected) would use the masculine form of "kein", which is "keineR". Nobody would interpret that as not including also women. However, by your use of the female form "keine", you gave your sentence/cries a very specific meaning, ie that a man might save him, or that he would drown when not saved by a woman. The essence of the story: use language correctly. But when you are using a foreign language, you may make mistakes and I think in an environment such as the EPO, where most of the people use foreign languages most of the time, some leniency and goodwill in interpreting awkwardly formulated requests might be expected. I have seen incredible passages that I might not have understood if I had not known the mother tongue of the writer including the mistakes commonly made in that language. Example: "as" and "than". It makes difference if you say "longer than expected", or "longer as expected." In the first case it is an excuse eg for late filing, in the second it is not. Now in the context the intention was that something took longer than expected, though "as" had been written. In German the use of "als" (=as) in comparisons is the normal thing. They don't use "dann" (=than). But if you don't know that, you might give a completely wrong meaning to what had been actually intended. There some understanding and acceptance of explanations by the party are required. IMHO.

MaxDrei said...

Thanks for that nice contribution, anon. My favourite Germanism is the "until" trap, when going into English from "bis", as in "Please instruct us until December 24, 2013".

One hopes the reader knows what is being solicited, but many might not. For example, an English native speaker that is lacking experience with German native speakers might take the words at face value, and suppose that what is being requested is a stream of instructions, starting now and continuing, uninterrupted, until Christmas Eve.

Anonymous said...

I remember a case where the US examiner did not understand the claimed method because it was something like this: the method comprises a step of connecting A+B on the one hand and mixing C+D on the other hand. According to the examiner it was impossible to carry out the method with only two hands.

MaxDrei said...

Good laugh there anon. Thanks for that. But there are things you can do with two hands that are not possible with only one.

The English say "I'll scratch your back if you scratch mine". Does the equivalent German expression "One hand washes the other" have the same dubious connotations? I'm not sure.

Thomas Leonard said...

Wow. What a lot of discussion this has precipitated.

I wrote the Grounds of Appeal. I would like to take this opportunity (see what I did there?) to clarify that, whilst I am a native English speaker, the alleged ambiguous request for oral proceedings was filed by a previous representative (i.e. another firm) based in France.

Alas this important (from my perspective) point is not mentioned in the Decision.