EP 3 341 216 B1 relates to a single or dual transfer process for preparing and transferring relatively non-tearable or tear resistant single elements having sharp definition to objects to be protected, particularly security documents such as banknotes.
Brief outline of the case
The proprietors appealed against the OD’s decision revoking their patent.
In its decision the board held that claim 1 as granted was not new, AR 1 and 6 to 9 were not admitted into the proceedings under Art 12(3+5) RPBA, AR 2 to 5 were admitted but not allowable for lack of clarity, and AR 10 to 12 could form the basis for a remittal of the case to the OD. The board also decided that a reimbursement of the appeal fee was not equitable.
We will concentrate on the non-admissibility of AR 10-12 by the OD.
Not-admission of late filing of AR 10 to 12 by the OD
AR 10-12 in appeal are identical to AR III-V filed during the OP before the OD. The OD decided not to admit these AR into the opposition proceedings
According to the minutes of the OP before the OD, before AR III-V were submitted, the chairman announced that probably no further AR were to be admitted. From the minutes, it is also not apparent that the proprietors had an opportunity to comment on whether AR III-V should be admitted into the opposition proceedings before the chairman informed the parties that these AR were not admitted.
In the reasons for the decision, the OD explained that the “same issue” as with AR 2 was present in AR III, i.e. a lack of clarity.
According to the minutes, “The chairman informed that these documents are not admitted by the OD according to Art. 114(2), because it is not prima facie apparent that these requests are allowable.”
In its decision, it is stated that “The OD has therefore solely exercised its discretion under Article 114(2), and in this context, has considered the allowability of the late-filed amendments on a prima facie basis.“
The board’s decision
The board held that, whether the proprietors had had the opportunity to comment on whether these AR should be admitted into the opposition proceedings is different from whether the proprietors had already had an opportunity to file AR, whether the number of AR was unreasonably large or whether the amendments included in the AR were expected.
The OD’s discretionary decision not to admit the newly filed AR was thus based on a prima facie assessment of their allowability. It is not apparent that the proprietors had been given the opportunity to comment on this point before this decision was made.
This view is not altered by the fact that the proprietors had been informed by the chairman of the OD that “new claims should be from granted claims and new claims cannot have features from the description introduced during the OP”.
For these reasons alone, the OD’s decision not to admit AR III-V filed during the OP before the OD had to be set aside.
In a further aspect, the proprietors submited that feature G, leading to the clarity objection, was not present in claim 1 of AR III-V.
Therefore, it was not apparent how the “same issue” as with AR 2 could be present in these AR.
It is also not explicitly indicated in the reasons for the decision what issue is meant by “the same issue”. This was also not implicit in the context.
For the board, deleting a feature from a claim is also different from including a feature taken from the description into a claim during the OP. The term “same issue” is also used in the reasons without explaining what it means. It is also not the task of the board or the parties to speculate on what the OD might have had in mind when using this term.
Moreover, the OD explicitly set out that it considered the allowability of the late-filed amendments on a prima facie basis. The board does not take issue with the OD considering the allowability of the late-filed amendments on a prima facie basis.
However, it is not apparent from the reasons of the decision whether the OD considered the newly filed AR to be prima facie allowable and, if not, for what reasons. It does not seem apparent that this was because of the “same issue” for which AR 2 was not considered allowable, i.e. a lack of clarity in view of feature G.
The OD thus exercised its discretion in an unreasonable way, thereby exceeding the proper limits of its discretion. The OD’s decision not to admit AR III-V filed during the OP suffers from an error in the use of discretion. Also for this reason, that decision has to be set aside.
Moreover, for the board it is undisputed that the objection under Art 84 in view of feature G – i.e. the objection on which the board’s conclusion regarding AR 2-5, is based – is clearly overcome by AR 10-12.
The OD’s conclusions on the proprietors’ MR and AR1 were not affected by the procedural violation alleged by the proprietors, which therefore does not qualify as substantial. As the proprietors had anyway to appeal for the MR and AR1, it was not equitable to order a reimbursement of the appeal fee under R 103(1,a).
Comments
The decision is interesting in that it makes clear that a proprietor has to be heard on the prima facie allowability of late filed requests. This means that the OD has to look at them before deciding on their non-admissibility.
The OD cannot announce ex-cathedra that no further AR will be admitted without looking first to their substance.
In T 972/22 a number of AR have been filed in appeal, but where not admitted by the OD.
The proprietor argued that after the OD “arbitrarily refused” the filing of any other request to correct this deficiency, asserting that “no solution of the problems would be recognizable and that no further requests would be allowed”.
The OD had announced at the OP that former AR 2, filed during the OP after a break of 40’and a further brake of 15’, did not fulfil the requirements of Art 123(2) and was not admitted into the proceedings. The OD then refused the filing of any further amended AR in advance, without having seen the amendments.
Furthermore, no reasons for the OD’s refusal were given in the decision under appeal.
The board held that, by refusing any further amendment without knowing their content is, as a rule, an unreasonable way of exercising the discretion pursuant to R 116(2), and Art 114(2) and constitutes a SPV.
General considerations
In T 972/22, the OD committed a SPV, by not exercising its discretion the correct way. In T 1901/22 the OD did also not exercise its discretion in a correct way, but it did not end in a SPV. .
In T 101/22, according to the minutes of the OP before the OD, the OP started at 9:34 and ended at 15:40. The non-admitted AR were filed at 15:13.
In T 972/22, according to the minutes of the OP before the OD, the OP started at 9:25 and ended at 19:50. The non-admitted AR were filed after 18:00 (after the interpreters had left!).
In both cases, it is manifest that the OD did want to get read of the file as soon as possible. In spite of the production pressure lasting on ODs, this is not a reason to wrongly exercise their discretion when it comes to late filed requests.
In both cases, the ODs have not gained anything as they will have to hold new OP as the cases have been remitted.
The bare minimum is that the decision of the OD has to give reasons as to why the late-filed requests were not admitted.
Both decisions illustrate the sub-optimal working of ODs when it comes to OP. all by ViCo The first member issues a decision, the second member drafts minutes which do not tie up with the decision, and the chair signs both documents without batting an eyelid.
Comments
5 replies on “T 1901/22 – Incorrect exercise of the discretion of an OD in view of late filed AR”
In my opinion, “sub-optimal working of ODs when it comes to OP” has probably been worsened by the shift to OP by ViCo. This is because handling newly-filed AR during OP by ViCo is longer and more tedious than during in-person OP.
During in-person OP, the proprietor’s representative prints out the AR on paper in as many copies as needed, signs the copies, and hands them to everyone in the room (and to whoever has to hand them to the interpreters). Then, the discussion can begin.
During OP by ViCo, the proprietor’s representative has to e-mail the AR to the 2nd examiner of the OD, who then has to e-mail it to each party and to the interpreters, and make sure everyone has received it… Inevitably, this takes longer, not least because all the parties usually scramble to print out the AR on paper anyway. In one OP by ViCo with multiple parties and interpreters where I was a representative, the whole process took about 30 minutes for each AR. And the proprietor filed multiple ARs before their patent was eventually revoked! When you are wasting 30-90 minutes just to handle the ARs, you have this much less time to actually discuss them.
To be clear, I am not saying that the 2nd examiners of the OD are “slow” in handling the ARs. They are doing their best with the tools they have, and commendably, the OD always makes sure everyone has actually received the ARs before resuming OP. It is just that the whole process is (in my experience) so much slower than handing out the ARs on paper.
@ Extraneous Attorney
I can only agree that the shift to OP by ViCo in first instance has worsened the situation.
The blame is not to be given to the examiners, but to the upper management of the EPO.
There are no reasons, but financial ones, to insist on OP by ViCo in first instance. The EBA was complicit with the EPO’s upper management when it decided to limit G 1/21 to OP before the boards. I do not see any distinction between firt instance and boards of appeal when reading Art 116 as well as R 115 and 116.
Furthermore, deciding bodies in first instance are also not sitting together when holding OP. When holding OP by ViCo, the boards are not sitting together either. This situation is without any legal basis in the EPC.
By accepting the amendments of the EPC by “secondary legislation, the AC has actually given up its duty of control of the EPO’s upper management.
In general, examiners do not have any longer a fixed office and have to book a room when they want to come to the EPO. The upper management baptised this action “Bringing teams together!”
The whole way in which the EPO is run can only have a deleterious impact on the quality of the work delivered.
If the aim is to grant as much as possible and let the UPC decide on the validity of patents, the upper management could not do better.
The Boards could perhaps one time address the scenario where a patentee just goes on filing new auxiliary requests during the oral proceedings before the break (perhaps the patentee tries to force an adjournment of the oral proceedings, giving new summons and two more months of patent lifetime at least). Do you have experience with such a case?
I think this scenario is already addressed (although somewhat obliquely) in the current Guidelines, E-VI, 2.2.3.
> Before admitting these submissions, the division will next consider procedural expediency, the possibility of abuse of the procedure (e.g. one of the parties is obviously protracting the proceedings) […]
Link: https://www.epo.org/en/legal/guidelines-epc/2024/e_vi_2_2_3.html
If I were the opponent and the proprietor just kept on filing unallowable ARs during OP, I would eventually ask the OD not to admit the ARs, on the grounds that the proprietor is obviously trying to force an adjournment of the OP, and therefore committing an abuse of procedure.
@ Peter and Extraneous Attorney
Any request not filed by the proprietor within the time limit under R 116(1) is prima facie late.
It might nevertheless be admissible if it is filed in response to the way the proceedings advance, for instance when a new piece of prior art is admitted in the procedure or when new objections have been raised during the OP.
The first instance division has the discretion to admit such late filed requests or not.
Although applied in appeal, it was held in T 1617/08 and T 137/09 that the purpose of OP is to give the parties an opportunity to argue their case, but not to give an appellant/ patentee the opportunity to repeatedly modify its requests until an acceptable set of claims is found. This stance applies mutatis mutandis in first instance.
In my opinion and experience it should be prima facie apparent that a request filed during OP in opposition
– is not only clear in the meaning of G 3/14
– but as well does not contravene Art 123(2)
– does represent a fair attempt to overcome the objections raised up to then in the procedure
In this respect a combination of granted claims has more chances to be admitted in the procedure. An independent claim limited by features from the description or drawings might be admissible in case of new objections, but not when the legal and factual framework of the opposition has not changed. Art 123(2) is in such cases also a good tool to get red of such requests.
Even if new objections have been raised during OP, there is no right for a proprietor to continue filing further AR. It depends on the case but two or three attempts might be granted, but then the limit is reached. Late filed AR should also not be divergent.
I have never seen a proprietor trying to push postponement of an OP by continuously filing AR. Some opponents rather try to push postponement by requiring an inordinate length of time to asses new documents and/or new requests. This is however rare.
There is another way adopted by some parties, be it proprietor or opponent, to try to obtain a postponement of an OP: filibustering.
Each intervention of the representative is drawn out and seems never ending. Another way, in presence of a plurality of representatives for one party, is that each representative starts again from scratch when one representative of said party has just stopped speaking. With three representatives for one party, this can cost a lot of time.
The right to be heard under Art 113(1) does not mean that a party can try to obtain a decision by attrition of the ED/OD. It need strong nerves for a chairperson to put strict limits to such kind of useless waffling, but in my experience it works. It is however not generalised and very few firms of representatives use such tactics.
With the RPBA and the three levels of convergence, the boards are much better equipped to stop late filed requests and filibustering.
At the UPC, during an oral hearing, the presiding judge can decide when the panel is sufficiently informed and thereby limit a party’s oral submissions, cf. RoP 113.3.
Even in the absence of a corresponding provision, deciding bodies at the EPO can act similarly and at the same time respect the right to be heard. It is then a question of having solid minutes. .