T 1439/09 – Disregarded Statements

In this case Board 3.3.08 confirmed decision T 146/07 where anonymous third party observations had been found not to be admissible.

[1.6] Anonymous, unsigned third party observations were filed during the appeal proceedings.

[1.7] In decision T 146/09 (sic), this board, in a different composition, held that the identification of a third party in the context of third party submissions in opposition proceedings was particularly important in order to allow the competent organ of the EPO to verify whether the observations were indeed filed by a third party rather than by a party to the proceedings. Otherwise, a party might be tempted to submit late observations and/or documents by means of anonymous third party observations in order to avoid negative procedural consequences such as apportionment of costs. Moreover, unsigned submissions by a party to the proceedings were deemed not to have been filed if, after a communication according to R 50(3) has been sent out by the EPO, they are not signed in due time. Since unsigned anonymous third party observations did not allow the EPO to send out such an invitation, they necessarily remained unsigned. As a consequence, they were deemed not to have been filed.

[1.8] In the present case, the board sees no need to depart from this line of reasoning. Therefore, the anonymous observations filed under A 115 are deemed not to have been filed and are disregarded by the board.

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

The file wrapper can be found here.

NB: T 146/07 was discussed on this blog (here). You might also want to have a look at T 1336/09, which deals with ex parte proceedings.

T 1336/09 – Anonymous Is Alright ...

... at least in ex parte proceedings. In a recent post I have reported T 146/07 where the Board deemed anonymous third party observations not to have been filed. The present decision – taken one day after T 146/07 – comes to a different conclusion.

[2.1] The third party observations […] were filed four working days only before the scheduled oral proceedings (OPs), citing two new documents which were obviously highly relevant against several of the requests then on file.

The appellant though having been informed of the filing of the observations in advance of the OPs neither requested that these be excluded from the procedure, nor that the OPs be postponed. At the start of the OPs, it filed an amended request in which due account had been taken of the new citations.

In these circumstances the board considered that the lateness of the observations should not per se be a bar to their admission into the procedure.

[2.2] In respect of the anonymous character of the observations under A 115, the Board notes that a Decision of the President of the EPO and a Notice from the EPO, both dated 10 May 2011 and concerning the filing of third party observations under A 115 by means of an online form made available on the website of the EPO, have been published in OJ EP0 2011, pages 418 and 420 respectively. The Decision in particular allows for third party observations being filed without signature (see Article 2 of the Decision), the Notice states that “Observations may be filed anonymously”(see the 4th paragraph under point "Formal requirements") .

Indeed, the boards of appeal of the EPO are bound only by the EPC, but the above dispositions in relation to anonymous third party observations are in line with earlier decisions of the boards, which did admit such observations both in ex-parte and in inter partes appeal proceedings, without apparent misgivings in relation to their anonymous character (see T 258/05 [V,3.3] in combination T 735/04 [2]).

Since the observations in the present case have been made under A 115 in an ex parte appeal before a technical board of appeal and are limited to the citation of pieces of prior art and the indication of the correspondences between their content and certain claimed features, which essentially are statements of facts, the present situation is also quite different from that in the decisions G 1/03 and G 2/03 in which the Enlarged Board of Appeal without further explanations did not take into account an anonymously filed statement made within the frame of the referral of a point of law in relation to the allowability of disclaimers.

The only requirements imposed on third party observations by R 114(1) are that they be filed in writing in an official language of the EPO and state the grounds on which they are based. The written form of the observation and the use of an official language indeed constitute the minimal conditions for allowing them to be communicated to the applicant or proprietor and to be commented upon by the latter, as provided for in R 114(2).

R 50(3) and by analogy R 86, which establish the requirement that documents filed in the examining or opposition procedure be signed, do not in the board’s opinion directly apply to third party observations. As a matter of fact, the reference in R 50(3), in relation to the case of a missing signature, to “the party concerned” indicates that the rule addresses the filing of documents by parties to the procedure, which a person who files third party observations clearly is not, as is expressly stated in A 115 (see the last sentence).

The board is aware of decision T 146/07 [3-6], dated the day before the date of the present decision and made public later, in which the deciding board disregarded third party observations because of their anonymous character, on the basis inter alia of a different appreciation of the relevance to this issue of R 50(3) and of decisions G 1/03 and G 2/03.

Contrary to the present instance, decision T 146/07 concerned an inter partes appeal, and it emphasised that “Identification is particularly important in the context of opposition proceedings in order to allow the competent organ of the EPO to verify whether the observations are indeed filed by a third party rather than by a party to the proceedings. Otherwise, a party might be tempted to submit late observations and/or documents by means of anonymous third party observations in order to avoid negative procedural consequences such as apportionment of costs.”

In ex parte proceedings however the appellant is the sole party and it can at any time raise new issues or submit new prior art - and so can the board of its own motion by virtue of A 114(1). Accordingly the risk of anonymous third party observations providing a cover for procedural abuse can be largely excluded in ex parte proceedings.

For these reasons the board considered that in the present circumstances the anonymous character of the third party observations did not bar them from being admitted into the procedure.

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

The file wrapper can be found here.

T 146/07 – Unsigned

The opponent filed an appeal against the decision of the Opposition Division to maintain the patent in amended form.

The parties were summoned to oral proceedings (OPs) to be held on January 20, 2011. After the opponent had announced that he would not attend the OPs and had withdrawn his request for OPs, the Board cancelled the OPs on January 10.

On January 18, the Board received anonymous third party observations (TPO).

Would it take them into account?

[3] Anonymous TPO were received by the board at a very late stage, i.e. after the scheduled OPs had already been cancelled in view of appellant’s announcement not to attend these proceedings and the withdrawal of its subsidiary request for OPs.

According to R 114(1), any observations by a third party shall be filed in writing. This requirement implies that the observations have to be signed (see R 50(3) and R 86) in order to allow an identification of the third party (see Schachenmann in: Singer/Stauder, EPÜ, 5th ed., A 115, marg. n° 13). Identification is particularly important in the context of opposition proceedings in order to allow the competent organ of the EPO to verify whether the observations are indeed filed by a third party rather than by a party to the proceedings. Otherwise, a party might be tempted to submit late observations and/or documents by means of anonymous TPO in order to avoid negative procedural consequences such as apportionment of costs.

[4] When a party to the proceedings submits an unsigned document, the document is deemed not to have been filed if, after a corresponding invitation has been sent out by the EPO, it is not signed in due time (see R 50(3)). Since unsigned anonymous TPO do not allow the EPO to send out such an invitation at all, they necessarily remain unsigned. This has the consequence that they are deemed not to have been filed.

[5] The board is aware that anonymously filed TPO may nevertheless be adopted by a party to the proceedings as its own or may even trigger objections by the competent organ of the EPO of its own motion (see decision T 735/04 [2], dealing with the exceptional situation that a highly relevant patent application of one of the patent proprietors had been submitted by an anonymous third party). However, in the absence of such a further procedural act, anonymous TPO are to be disregarded altogether. This view is in line with the decisions G 1/03 and G 2/03 in which the Enlarged Board of Appeal refused to take into account an anonymously filed third party statement (see Section VI(3) of the decisions).

[6] Thus, the anonymous observations under A 115 received on 18 January 2011 are deemed not to have been filed and are disregarded by the board.

If the approach set forth in Singer’s commentary is followed, TPO simply cannot be anonymous.

This may be formally correct (although I doubt that the lawmaker had TPO in mind when drafting R 36(3) EPC 1973, which has become R 50(3)), but I do not think that it is in the interest of the EPO (and of the public at large) to require the parties filing observations to reveal who they are. The question of apportionment of costs is too marginal to balance the benefit that can be drawn from allowing anonymous TPO. Yes, there may be cases of abuse of proceedings (this is also possible when straw men act as opponents), but I guess the vast majority of TPO are just that, and many of them would not have been filed if anonymity was not allowed.

As has been found in T 458/07, TPO filed during opposition (appeal) proceedings should be treated as late filed documents, in compliance with the rules the Boards have developed for such documents (considering prima facie relevance, procedural economy, …). In the present case this would have allowed the Board not to take into account the TPO, without even considering whether they were signed or not, which I believe to be irrelevant.

But let us imagine that the present approach prevails. I wonder whether the signature of a professional representative would be considered sufficient if the third party was not identified. After all, one of the parties could have requested the representative to file the observations.

Also, would the use of the EPO third party observation website (here) lead to a R 50(3) notification? The corresponding form allows to identify the third party, but as far as I can see, there is no easy way of signing the form.

Be that as it may, if you are a professional representative and you are asked to file TPO in opposition proceedings, the safest way, obviously, would be to reveal the identity of the party and sign the observations. But what should be done if the third party wants to stay incognito, as it most likely will? I think I would sign the observations as a professional representative and make a clear declaration that the third party is not a party to the proceedings. Perhaps this would dispel any doubts of the EPO about a possible abuse of proceedings.

Any thoughts?

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

The file wrapper can be found here.

T 1667/07 – On File?

Can an opponent rely on documents that had been filed as third party observations during the examination proceedings? Is there any objection to citing them for the first time in response to summons for oral proceedings (OPs) before the Board? In other words, are such documents “on file” and instantly available to the opponent without further ado? Nope, says the Board.

NB: All articles and rules refer to the EPC 1973.

[10] Documents E11, E12 and E13 are copies of submissions made by third parties during the examination of the application on which the present patent was granted. The submissions were treated by the examining division as observations under A 115. As evidence in support of grounds for opposition under A 100(a) and (b), these documents were filed one month before the OPs before the board. At the OPs, the [opponent] maintained that the documents in question were part of the file and that, in its view, the board had no discretion whether or not to admit them as evidence into the proceedings, but was bound to consider them.

[11] The board does not share this view. First, as far as documents E11, E12 and E13 have been submitted as evidence in support of fresh grounds for opposition raised for the first time on appeal, in particular lack of novelty, it is, in fact, correct that the board has no discretion when deciding whether the documents are considered or disregarded. Since according to decision G 10/91 the board cannot consider the fresh grounds of opposition put forward by the [opponent] for the first time in appeal proceedings - as the patent proprietor opposed to their introduction into the proceedings -, it cannot consider evidence submitted in their support either.

[12] Second, in the board’s view, as far as documents E11, E12 and E13 have been submitted as evidence in support of grounds for opposition put forward in the statement under R 55(c) (i.e. grounds for opposition under A 100(b) and A 100(a) in conjunction with A 56), they were not filed in due time and, consequently, the board is empowered to exercise the discretion conferred by A 114(2) to disregard them.

[13] The question whether or not evidence has been filed in due time has to be decided taking into account the circumstances of the particular case. In the present case, the grounds for opposition under A 100(b) and A 100(a) in conjunction with A 56 were put forward within the opposition period provided for in A 99(1). Thus, in principle, any evidence in support of these grounds had to be submitted within the opposition period, unless there were valid reasons not to do so.

[14] In the statement under R 55(c), only the observations under A 115 filed as document E13 in appeal proceedings were mentioned as evidence in support of the ground for opposition under A 100(b), in particular in connection with the objection that the patent failed to disclose leukapheresis as the technique which must be applied in order to prepare the pluripotent cells required as starting material in the method according to claim 1. Neither a copy of document E13 nor of documents E11 and E12 was filed within the opposition period or at a later stage of the opposition proceedings.

[15] The evidence in question could possibly have been submitted together with the statement of grounds of appeal, as a reaction to the adverse decision of the opposition division. However, in its statement of grounds the [opponent] neither relied on documents E11, E12 and E13 nor filed copies thereof. Incidentally, it should be also noted that the adverse finding of the opposition division concerning the objection of lack of disclosure of leukapheresis in the patent was not even contested by the [opponent] in its statement of grounds of appeal. 16. It was only in its submission in reply to the communication under Article 15(1) RPBA sent by the board in preparation for the OPs that the [opponent] relied on documents E11, E12 and E13 and filed copies thereof. However, no reasons were given which justified the documents having been submitted at this late stage of the proceedings, except for the remark that the documents in question were already “on file”.

It should be noted here that the evidence in question was certainly not filed pursuant to directions of the board (see Article 12(1)(c) RPBA), as the board had given no directions in this respect in its communication.

[17] In view of the circumstances outlined above, the board judges that the evidence in documents E11, E12 and E13 on which the [opponent] relied for the first time in its submission filed one month before the OPs before the board, was not submitted in due time. The fact that these documents were identical to observations filed by third parties during the examination proceedings, a copy of which was - as the [opponent] stressed – “on file”, does not change this judgement because, in the board’s view, the decisive issue is whether or not the [opponent] relied on these documents in due time for the board to be able to evaluate any possible evidence contained therein, and for the respondents to react thereto.

If you wish to download the whole decision, please click here.

T 458/07 – Late Filing By Third Parties

The present decision also deals with a rather rare situation: the filing of a document by a third party during the appeal proceedings.

On admission

On 25 February 2008, i.e. during the appeal proceedings a third party filed a submission pursuant to A 115. It contained inter alia document […] D27, disclosing in Example 6 a process for the purification of erythropoietin with anion exchange chromatography. Moreover, the submission contained a table setting out the compositions of the buffers used in the process according to Example 6 as well as conductivity values determined for these buffers. [59]

Document D27 is a late-filed document. Hence, its admissibility is at the discretion of the board pursuant to A 114(2) (see also T 390/07 [headnote]). [60]

[...] The observations under A 115 were filed more than 1 1/2 years before the oral proceedings so that the parties and the board had sufficient time to consider the document. In fact, appellant I has reacted already in the written proceedings to the submission of the third party by filing amended claims and a declaration, i.e. the declaration by Dr Dowd, document D29. Also the board has studied the submissions in order to get a view of their relevance, in particular of document D27 and has notified the parties that it considers document D27 to be relevant.

None of the parties has requested that the submission of the third party, in particular document D27, be disregarded.

Thus, the board decides to admit the submission of the third party into the proceedings. [61]

On remittal

A 111(1) gives the boards of appeal the discretion either to “exercise any power within the competence of the department which was responsible for the decision appealed” or to “remit the case to that department for further prosecution”. It follows from this provision that a board is not obliged to remit a case for consideration to the first instance only because new material has been submitted which has not been considered during the first instance proceedings. [62]

This is also not derivable from the Enlarged Board of Appeal’s decision G 9/91. It is stated in point 18 of the reasons: “The purpose of the appeal procedure inter partes is mainly to give the losing party the possibility of challenging the decision of the Opposition Division on its merits.” It is true that in the following passage the judicial and therefore less investigative nature of the appeal proceedings is highlighted in the decision G 9/91, however only to remark a contrast with the opposition proceedings which are of an administrative and therefore more investigative nature. [63]

When exercising the discretion given by A 111(1) the boards balance the public interest in procedural economy with the entitlement of the parties to fair proceedings. For the reasons given above in point 61, the board considers it appropriate to deal with document D27 itself, thus avoiding the delay in reaching a final decision which would be entailed if the case was remitted. [64]

Thus, [the patent proprietor’s] request for remittal to the first instance for consideration of document D27 is refused.

The treatment of the observation by the Board may be contrasted with the findings of T 156/84 [3.7] where it was said that A 114(2) evidently did not apply to observations by third parties under A 115(1) and that there was no provision imposing any limit on the period within which such observations have to be presented or empowering the EPO to disregard facts coming to its notice in this way, whenever they are presented. T 458/07 rather follows T 390/07: the document filed under A 115 is treated in the same way as any other late filed document. 

One might say that this is not unreasonable, because otherwise A 115 would provide the possibility of circumventing the strict rules that govern the treatment of documents filed belatedly by the parties, by asking a straw man to file the document. 

However, a party might still be tempted to use a straw man if otherwise the late filing as such might be considered abusive.

To read the whole decision, click here.