Friday 20 December 2013

T 2235/12 – Taken By Surprise


[3] In reply to the citation by the Examining Division (ED) of two new documents on 13 March 2012, the appellant submitted in the fax of 14 March 2012, i.e. one day prior to the oral proceedings (OPs) before the ED, that “in view of the very late citation of new references” it was “simply impossible to study the newly cited prior art D4 and D5 and get appropriate instructions from the US-client (via a US-law firm) within this extremely short time of one working day”. The appellant therefore requested to “set a new date for the hearing”, “to give all parties … sufficient time to review newly cited documents and discuss/prepare proper amendments”, see statement of grounds and letter of 14 March 2012.

[3.1] Given these facts, the board considers it necessary to examine whether the appellant’s right to be heard was violated because the subject of the proceedings had changed shortly before the date set for the OPs and whether the ED should have cancelled these proceedings and fixed a new date for them.

[3.2] Under A 113(1) EPC 1973, decisions may only be based on grounds or evidence on which the parties concerned have had an opportunity to present their comments. The applicant therefore has the right to react to objections raised by the ED. This can be done by providing comments or by amending requests in order to take into account the objection raised by the division.

[3.3] R 71a(1) EPC 1973 (corresponding to R 116(1)) specifies that, when issuing the summons to OPs, the EPO shall draw attention to the points which in its opinion need to be discussed for the purposes of the decision to be taken. At the same time a final date for making written submissions in preparation for the OPs shall be fixed. New facts and evidence presented after that date need not be considered, unless admitted on the grounds that the subject of the proceedings has changed (see also German and French versions of R 116(1): “soweit sie nicht wegen einer Änderung des dem Verfahren zugrunde liegenden Sachverhalts zuzulassen sind”, “à moins qu’il ne convienne de les admettre en raison d’un changement intervenu dans les faits de la cause.”) This provision has to be interpreted in the light of A 113(1) EPC 1973 so as to give the applicant an opportunity to submit comments or, if necessary, make amendments to its requests in view of the points to which the EPO drew attention. This principle is also reflected in the Guidelines for Examination, E-III 8.6, in the version of April 2010, stating that the parties “should always be given the opportunity to submit amendments intended to overcome objections raised by the Division which depart from a previously notified opinion.”

[3.4] In the present case […] the ED summoned to OPs indicating that claims 1 and 15 lacked clarity and that the subject-matter of these claims lacked novelty in view of D3. Following the submission of amended claims a telephone consultation took place, the results of which were communicated to the appellant and read as follows:
“The first examiner informed the representative that the current claim 1 lacked clarity concerning the the (sic) definition of the building blocks of the sensing system. The first examiner asked the representative to submit an improved version of claim 1, in order to overcome that deficiency.”
The appellant could therefore conclude that the objection with respect to lack of novelty in view of D3 had been overcome and that only clarity would have to be discussed in the OPs.

As a consequence, the appellant submitted amended claims asserting that they were “clarified as proposed by the Examiner” and expressed the view that it should be possible to cancel the OPs.

Two days before the OPs the ED informed the appellant that the date for OPs was maintained, introduced two additional documents D4 and D5 into the procedure, and objected that the subject-matter of claim 1 was not new in view of D4. The next day, the appellant requested postponement of the OPs in view of this new objection.

The board notes that the new objection was not related to any of the points which had been indicated in the summons. In particular, a discussion of novelty based on D4 could not be expected after amendments had been filed and discussed in the telephone interview. Hence, the subject of the OPs had changed.

[3.5] Under these circumstances, the appellant should have been given an adequate opportunity to react to the new objection either by submitting comments or by amending its requests.

[3.6] The ED’s argument that the appellant had sufficient time for a thorough consideration of D4 and D5 and that the appellant could not possibly be surprised by this decision is not convincing. The representative was given one working day to get acquainted with D4 and D5, contact its client and – if necessary – provide amendments overcoming the objections. The board accepts the argument of the appellant’s representative that it was impossible in view of the short timeframe to get appropriate instructions from the client.

[3.7] The board notes that the appellant’s representative deliberately chose not to attend the OPs on 15 March 2012. He also repeatedly expressed in writing the wish to avoid OPs. Procedural economy and legal certainty for third parties require that an applicant should not be allowed to prevent an ED from carrying out the examination in an efficient manner, for instance by delaying the decision or postponing the OPs (see also R 71(2) EPC 1973 corresponding to R 115(2)). However, the circumstances of the present case are exceptional, because two days before the date of the OPs the ED changed essential facts of the case on which it had relied in the summons to OPs. Attending the OPs would not have changed the fact that, in the present case, the timeframe of one working day was too short for the appellant to get appropriate instructions and to prepare for OPs which now had a new focus.

[3.8] Hence, rejecting the appellant’s request for a postponement of the OPs infringed the appellant’s right to be heard. Had the appellant been given sufficient time to react to the new objection, the ED, in dealing with the appellant’s arguments, could have explained the reasons why it was of the opinion that the different references to D4 did not constitute a conflation of prior-art embodiments with the embodiments of the invention and why the schematic drawing of figure 4 in D4 did disclose the arrangement of the components on a common substrate. This exchange of arguments could have avoided the necessity to file an appeal, or would have permitted the board to examine the case in full knowledge of the first instance’s view on the contentious issues.

[3.9] As a result the board considers reimbursement of the appeal fee to be equitable by reason of a substantial procedural violation (R 67 EPC 1973).

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

The file wrapper can be found here.

This decision has also been presented on Le blog du droit européen des brevets (here).

7 comments:

Andy said...

Shows that Examiners work as close to their deadlines as do patent attorneys. However the decision does address a serious issue. Often there are long communication lines for instructions where translations and agreements between several sets of attorneys may be necessary.

Kuifje said...

Can any of the kind readers who are examiners explain how such a situation might occur.

How can the ED genuinly have thought this would be acceptable?

Myshkin said...

The ED might have consulted the Case Law book. From III-B, 2.1.1 a):
In T 951/97 (OJ 1998, 440) the examining division introduced document D4 for the first time during oral proceedings. D4 had been mentioned in the European search report but had not been cited at any stage in the examination procedure prior to the oral proceedings. The board found that the half an hour adjournment of the oral proceedings before the examining division had been too short a period for an adequate analysis of the complex text of D4. It was clear that D4 was essential to the finding of the examining division in relation to inventive step; consequently, the decision was based on evidence on which the applicants had not had a sufficient opportunity to present their comments as required by Art. 113(1) EPC 1973 (see also T 492/03).

This suggests that an adjournment of 30 minutes after introducing a new document during an OP may be sufficient in case the document is relatively easy to understand, and that a full working day should normally be enough for more complicated documents.

Obviously a full working day is too short if the representative must be given a real opportunity to consult his client, but if that is the requirement, then introducing a new document during OP is impossible regardless of its simplicity (unless the representative does not object).

The same section of the Case Law book under b) has:
In T 376/98 the examining division had referred to document D4 for the first time during the oral proceedings, and had stayed the oral proceedings to give the applicant time for consideration. When the oral proceedings were resumed, the appellant requested a decision based on the documents on file. Regarding the introduction of D4 at the oral proceedings, the board noted that no procedural limitations were placed upon the examining division to cite relevant documents during any stage of the examination procedure, as long as the applicant was given a fair chance to comment on the objections raised before a final decision was taken (see T 1198/97). In the board's opinion, the appellant's request for a decision could only be taken to mean that the appellant was not interested in a further debate about the relevance of D4.
Obviously the applicant in T 376/98 should have requested even more time or continuation in writing.

The main question for me is whether an applicant has a right to be consulted whenever a "surprising" new document is introduced into the procedure (and the representative doesn't forget to claim this right).

Clearly there is no such right if the document merely serves as evidence of previously alleged common general knowledge or as evidence of a contested publication date. The introduction of such documents cannot be surprising and the applicant must prepare for it.

One could argue that an applicant should provide his representative with sufficient instructions regarding what kind of protection he really needs and that the representative should be able to do the technical and legal assessment of the case on his own.

Kuifje said...

On T 951/87 you wrote ’This suggests that an adjournment of 30 minutes after introducing a new document during an OP may be sufficient in case the document is relatively easy to understand, and that a full working day should normally be enough for more complicated documents’
Doesn’t suggest it at all. Half an hour was too short in this case. It may be used to imply that 30 mins is too short in similar cases, but not that 30 mins, or a day, would be enough in another case.
And don’t forget, in T 951/87 the applicant was present, with his day allocated to the OPs.
In the present case the new D came out of the blue, without neccessarily having time available or being in a state of mind to make a decision.

You also stated ‘Obviously a full working day is too short if the representative must be given a real opportunity to consult his client, but if that is the requirement, then introducing a new document during OP is impossible’.
The representative may be able to understand the document and comment on it, he may not need his client’s assistance for that. But he will need his client’s instructions on how to proceed, after the client has understood the new legal situation (which also takes time). Limit the claims to a dependent claim? Fight for the earlier claims even against the odds? A whole new request? A divisional? That’s not an easy call to make.

Further you questioned: ‘whether an applicant has a right to be consulted whenever a "surprising" new document is introduced into the procedure’
Of course he does. He has a fundamental right to a patent for his invention. Such a right can only be taken away by the authorities on solid legal grounds which may be disputed, not just simply by ‘respond within a day, or your application is refused [after we have taken several years to dig out and study half a dozen prior art documents]’
That’s like ‘Why do complain that we demolished your house? We gave you 3 hours notice before destroying your house, you could have responded. You were not at home that day to respond? Well tough luck, you should have been’
Grant of a patent for an invention is not a favour by EPO. It’s a right. A patent (application) is property, just like real estate is. Some unaccountable civil servant can’t just take your property, because you failed to respond quickly enough for his liking, at least not in a normal country.
Lastly ‘One could argue that an applicant should provide his representative with sufficient instructions regarding what kind of protection he really needs and that the representative should be able to do the technical and legal assessment of the case on his own’
One could argue that, indeed. And this is not uncommon just before OPs. But this can only be done given a specific legal and prior art situation, and for a short period of time. The applicant’s business may change over time, and with this the scope of protection that is most useful to him. ‘
Most importantly, no applicant can ever give instructions what to do when an unexpected event occurs, like in this case. That’s the nature of unexpected events: you can’t see them coming, and therefore can’t plan how you will react if they come.

Myshkin said...

First of all, I am not trying to argue that the ED was right. The question was how the ED could genuinely have thought that it was acceptable to not grant the request for postponement.

Regarding T 951/97, the Board in that decision stressed the fact that the document was of a more complex nature than typical patent literature. If this had not been a relevant factor, the Board would not have mentioned it. That they did mention it, certainly does suggest that 30 minutes might be enough if the new document had been a relatively uncomplicated patent document. Also note the word "therefore" in point 4.2 of T 951/97.

I don't know how complicated D4 was in the present case, but it would be surprising if it could not be studied in a few hours. In the worst case, the representative could have been given this time at the oral proceedings.

Anyway, it seems that the complexity of D4 was not really the issue here. What was decisive is that the representative had no time to consult his client.

The representative had complained about this, but the Division did not discuss this aspect in its decision. That in itself could possibly be regarded as a violation of the right to be heard. The decision decided to refuse the request for postponement without taking into account potentially relevant submissions of the applicant. But the Board did not make a point of this (and it seems unlikely this could have been a reason for reimbursement).

The Board agreed with the appellant that the representative should have been given time for discussing D4 with his client and for receiving new instructions.

Now let's have a look at T 1045/93:
"The argument that the representative could not study the citation with the assistance of the Applicant can also not be accepted. A professional representative is expected to act in full representation of his client and the EPC does not provide for the case that the Applicant is entitled additionally to the representative to an opportunity to present his comments."

A professional representative is not just a messenger, merely relaying what his client told him to say and do. The representative fully represents his client.

In the case leading to T 1045/93, the document had been mentioned by the applicant in the background section of the application and had been cited in the search report. During substantive examination it was mentioned for the first time during the OP. The representative had been given 20 minutes to study it, then asked for an opportunity to consult the inventor, i.e. he requested continuation in writing. The Board considered there was no such right.

So strictly speaking the representative did not assert a right of the applicant to give him new instructions, but I strongly doubt this would have made a difference.

That the document was known to the applicant might have made more of a difference, but that seems not to have been decisive, but only a further reason as to why there was no need for continuation in writing.

Regarding your property arguments, the application was refused for lack of novelty. There is no right to a patent if the invention lacks novelty. Obviously a decision to refuse must be based on facts and grounds on which the applicant has had a real possibility to comment, but in my view it is far from outrageous that the ED genuinely thought that that was the case here. By refusing to comment, as the applicant did here, he made a big gamble that the Board would be on his side (or maybe the consideration was that an appeal is cheaper anyway than attending the OP).

Of course it is very unfortunate that new documents were introduced 2 days before the OP. The ED cannot have been happy with that either. The question is then what is best: delay the procedure, to the detriment of all other applicants, or maintain the date for the OP. Of course the latter is only possible if Art. 113(1) allows it, and apparently it was not possible in this case.

Myshkin said...

From T 408/08:
2.1 Article 113(1) EPC (in its 1973 version applicable at the time of oral proceedings and issuance of the written decision) enshrines a party's right to be heard (as explicit in the heading of the same Article in its 2000 version). Thus "decisions ... may only be based on grounds or evidence on which the parties concerned have had an opportunity to present their comments". Where, for example, a new document is first cited by the examining division in oral proceedings, this basic procedural right will have been observed if the applicant is given an adequate amount of time to study the document and present comments, see e.g. T 0951/97 (OJ EPO 1998, 440) or T 0376/98. This is analogous to the procedure set out in the Guidelines for Examination in the EPO, E-III, 8.6, final paragraph of page III-7, when pertinent new facts or evidence are admitted during opposition oral proceedings.

This clearly conflicts with any right of the applicant to be consulted and give new instructions in case of newly cited documents.

From T 376/98:
4.3. Regarding the introduction of D4 only at the oral proceedings, it is to be noted that no procedural limitations are placed upon the Examining Division to cite relevant documents during any stage of the examining proceedings as long as the applicant is given a fair chance to express his opinion with respect to the objections raised before a final decision is taken (Article 113 EPC).

Again, hard to reconcile with an alleged right of the applicant to be consulted and to give new instructions.

From T 2434/09:
20. The applicant does not have a right in principle to continuation in writing if the department of first instance introduces a new document for the first time in oral proceedings and thereby changes the subject of the proceedings. Where a new document is first introduced by the examining division in oral proceedings, the party's right to be heard under Article 113(1) EPC 1973 is observed if the applicant is given an adequate amount of time to study the document and present comments (see e.g. decision T 376/98, Reasons, point 4.3, which also refers to T 951/97 (OJ EPO 1998, 440)). It is established jurisprudence that an adjournment of the oral proceedings giving the party sufficient time for an adequate analysis ensures its right to be heard in accordance with Article 113(1) EPC 1973 (see Case Law of the Boards of Appeal, 6th edition, 2010, VI.B.2.2.1). How much time is sufficient depends on the nature of the newly introduced document and the preceding procedure. This is also in line with decision T 951/97 (loc. cit., in particular Reasons, point 4.1), which was cited by the appellant.

So it actually seems fair to say that T 2235/12 is an exception, and that the ED's decision was in line with established case law. Unless one wants to argue that an ED should refrain from informing the applicant about the new documents 2 days in advance of the OP and instead introduce them during the OP...

Kuifje said...

Well, it appears Myshkin has convincing arguments that this was a lucky escape by the applicant and his representative.

Regardless of the arguments though, it goes against my sense of justice. It’s Hitchhiker’s Guide to the Galaxy all over again, situations like this.

The ED have had months or years to prepare their case. And then present a surprise like a new novelty removing document two days before, or at, OPs? That’s just not cricket.

I did, note, not want to imply that an applicant has a right to be consulted by his representative, and that proceedings should be delayed for that.

I just wanted to indicate that often, from the representatives perspective, there is a need for consultation. I have been appointed as rep, I have been authorised by the applicant to do certain things, but if for whatever reason I end up in a situation outside the scope of authorisation, I have to consult the client. I can’t improvise, that would make me liable for damages.