The patent relates to rituximab for use in a method for treating joint damage.
Brief outline of the case
Following 7 oppositions and two interventions, the OD revoked the patent.
In decision T 2842/18, the board confirmed the revocation of the patent.
An objection under R 106, filed by the proprietor, was dismissed by the board.
After receipt of the minutes of the OP, the proprietor also filed a request for correction of the minutes which was rejected by the board.
The proprietor filed a petition for review.
The petition was admitted under R 109(2,a) and the EBA in the composition according to R 109(2,b) decided that the petition for review was clearly not allowable.
The petition for review
The petition for review was structured along two main lines of argumentation:
- The refusal to postpone the OP at the request of the proprietor
- The board assessed the requirements of Art 123(2), in the context of second medical use claims, not upon the established standard of literal disclosure of the words basis, but upon the basis of a new standard of its own invention.
We will concentrate on the refusal to postpone the OP.
The petitioner’s/proprietor’s point of view
The proprietor made three requests to postpone the OP in the appeal case. The board granted the first of these requests and rejected the two other requests.
The background to these requests was the COVID-19 situation of 2020.
As regards its second and third postponement requests, the proprietor argued that its principal representative during the opposition and appeal proceedings, (hereafter “SW”), based in the United Kingdom, had certain personal/national characteristics that made travelling to Munich and attending an in-person oral proceedings on 01.10.2020 inadvisable for him.
The proprietor considered that its right to be heard Art 113(1) had been violated for the following reasons:
(i) The refusal to recognize that parties at the EPO have a right to free choice of representation;
(ii) The determination to hold the OP regardless of the circumstances, both in general and specifically in relation to the appointed representative chosen by the proprietors;
(iii) De facto discrimination based on nationality/residence and personal characteristics of the appointed representative;
(iv) The improper weight given to the acceleration of the proceedings, unfairly to the benefit of the opponents and detriment of the proprietors who were forced to attend oral proceedings without the appointed representative of their choice;
(v) The disregard of the proprietors’ right to be heard fully, even with explicit statement that the board regarded the OP and hearing of the proprietors as essentially unnecessary for its decision.
As a consequence of the holding OP on 01.10.2020 the proprietor needed to replace SW at short notice with another representative.
For the proprietor, the free choice of representation is a constitutional right in Germany, similar provisions can be considered to apply in EPC member states and Art 134(1) has a similar effect.
The decision of the EBA on the refusal to postpone the OP
The EBA reminded that it has no competence under Art 112a to examine the merits of the decision and to go into the substance of a case. It referred to R 13/10 para 4, R 7/17 para 7 and 8, and to R 3/18 para 2.4, pages 13 – 14.
The EBA not being competent to decide on the merits of a case necessarily implies that the EBA, as a rule, has no power to control the normal exercise a board makes of its discretion and referred to R 10/09 para 2.2, and R 6/17 para 3.5. In this case, the board exercised its discretionary power under Art 15(2) RPBA as regards its decision not to further postpone the OP.
The exercise of discretion is only subject to review if arbitrary or manifestly illegal. Here the board referred to R 10/11 para 5.2 (“… illégalité manifestes …”, thereby involving a fundamental violation of the right to be heard, cf. R 9/11.
For the EBA, the proprietor cannot claim that the right to be heard has been infringed in respect of its request that the OP before the board be postponed.
Whether to postpone the OP of 01.10.2020, was the subject of submissions by the proprietor and a communication of the board of 30.09.2020 setting out the reasons for the board’s rejection of this request.
Indeed, the decision sets out in full detail, cf. para 5 to 30, the various submissions of the parties and the communications of the board.
Thus, there has been no violation of the proprietor’s right to be heard in this respect.
The EBA thus found this ground of petition unallowable.
Comments
No right for a party to be represented by a representative of choice
Before the introduction of the RPBA20, when filing a request for postponement, the requesting party had to give reasons why the prevented representative could not be replaced by another representative within the meaning of Article 133(3) or 134. This requirement has been dropped when the RPBA20 came into force.
On the other hand, the wish of parties to be represented by a representative of choice has been subject to some decisions of the boards.
In T 300/04, it was held that a party’s general desire to be represented by a specific member of an association of representatives is not considered sufficient ground for changing the date of OP. T 300/04 was confirmed in T 1610/08, T 1011/09, and although very briefly in T 767/03.
In T 1623/06, the professional representative of the proprietor-respondent, Mr P., requested postponement of the scheduled OP. The reason for this request was that the proprietor-respondent wished to be represented in the OP by Mr B., a sub-authorized professional representative who had represented the proprietor already in the OP before the OD. However, on the scheduled date Mr B. had to attend OP in another case before the EPO.
The board refused the request of the proprietor-respondent to postpone the OP. The fact that the further representative, Mr B., had attended the OP before the OD did not, in the board’s view, justify the postponement.
In R 3/08, following T 1623/06, the board considered that in the absence of an objection under R 106, the petition was not admissible as far as the refusal of postponement was concerned.
In T 1067/03, the board held that the pendency of further proceedings forming an overall complex goes beyond a general wish of a party to be represented by a usual representative in OP, and constitutes sufficient grounds to postpone an OP. This decision can thus be considered as an exception.
Case law of the boards and the procedural rules valid before the entry into force of the RPBA20 do thus not support the proprietor’s point of view that that parties at the EPO have a right to free choice of representation.
Different types of discretion
On the other hand, whilst the decision to admit or not a late filed request on the substance, or a late filed piece of prior art, does indeed need to delve into the merits of a case, in the present instance, the request was of purely procedural nature and did not need any discussion as to the merits of the case.
The EBA avoided any discussion on the points brought forward by the proprietor and simply maintained its stance that it does not want to interfere with the discretion given to the boards.
As the discretion at stake in the present case is of mere procedural nature, the argumentation of the EBA is not fully convincing.
No postponement in case of a multiplicity of parties
Last but not least, it is understandable that with 9 opponents, the board did not want to postpone once more the OP to the benefit of the proprietor, as a similar request for postponement of any of the opponents would have had to be granted.
On top of this, acceleration of the appeal proceedings was requested and granted in view of infringement proceedings in several national contracting states.
In T 1102/03, postponement was refused, although one representative had already firmly booked holidays. When the request for postponement was filed, eleven parties were involved.
https://www.epo.org/en/boards-of-appeal/decisions/r210007eu1
Comments
2 replies on “R 7/21 – No postponement of OP – No violation of the right to be heard”
After reading the file I cannot help but feel some sympathy for the Patentee here, at least on the point about non-postponement of the hearing.
The circumstances in which the Board refused to postpone the hearing are in hindsight quite astonishing as they were at the height of a very severe and rather sudden wave of the pandemic. Although the full details are not on the public file it seems that the Patentee’s representative had a health condition which he considered to put him at elevated risk. This apparently had the effect of forcing the Patentee to switch representative at short notice.
If you review the very extensive history of the review procedure it is clear that the question of the right of representation formed a very significant part of numerous submissions. The Board’s communication of 3 January 2022 considers this issue in at least some substance at points 6 to 9 and the minutes of 12 April 2023 show that the issue was discussed at a first set of oral proceedings before the Enlarged Board. Numerous letters from the Patentee and Opponents after those oral proceedings covering dozens of pages seem to suggest that this was still considered a live issue, i.e. that the Enlarged Board had not closed off consideration of the detail to focus instead on the formal issue of discretion.
After this the Enlarged Board held a second set of Oral Proceedings in November 2023. This seems to be very unusual during the review procedure.
After all of this, for the Enlarged Board to write such a brief decision, treating the rescheduling issue as merely a discretionary point which it has no power to review, feels like an excuse to dispose of the case as simply as possible and an insult to all of the parties involved.
I have the feeling that the EBA wanted to avoid discussing the potentially awkward topics raised about the conduct of the Board. Otherwise, if it were such a simple discretionary matter, why was this not identified in the EBA communication in January 2022 before the first set of oral proceedings?
@ Justice must not only be done but must be seen to be done
I can understand that you feel some sympathy for the proprietor, at least on the point relating to non-postponement of the OP.
I can also agree that the right of representation formed a very significant part of numerous submissions.
On the other hand, when looking at the file, the appeal procedure had been accelerated in view of numerous infringement actions pending before national courts and at the same time the proprietors could not agree to holding the OP by ViCo.
When a party is represented, it is then irrelevant whether the proprietor or a staff member residing in the US or in Switzerland could not attend. Those were supplementary reasons brought forward in the further requests for postponement filed shortly before the OP.
In its communication under Art 15(1) RPBA, sent to the parties on 29.09.2020, the board explained that it “does not doubt the representative’s account of his personal status, but notes that no documentary evidence has been provided to confirm that this status indeed puts the representative in a group of persons with an enhanced risk of a serious outcome if infected with Sars-CoV-2”.
The board also noted that the proprietors also had two additional authorised representatives, both with a Munich-based law firm. One of them had also participated in the OP before the OD. No serious grounds were provided as to why these authorised representatives were both unable to attend the OP.
I would therefore be inclined to think that the problem has been created primarily by the proprietor’s attitude: first, the proprietors have launched infringement actions before national courts, which led to acceleration of the appeal procedure; second at the same time the proprietor refused to hold OP by ViCo; third, no independent proof of the inability of the representative of choice that the latter was unable to travel; fourth, one further representative of the proprietor had been present at the OP before the OD. It brings me back to two old says: in English, you cannot have your cake and eat it, and in German, as you call into the forest, it echoes back.
Contrary to the OD, the board made clear in its communication under Art 15(1) RPBA that it considered claim 1 as infringing Art 123(2). This was also the reason for reducing the number of days foreseen for the OP from two to one day. Eventually, not only claim 1 as granted, but claim 1 of all the requests were infringing Art 123(2).
In view of the fact that postponement was granted once, it was clear that faced with further requests for postponement from one of the other eight parties, the board would have had the duty to grant any of those requests. This would have further delayed the decision of the board.
That under this circumstances, it could not be expected from the proprietors to be represented by a representative of choice does not come really as a surprise.
That, in view of the various infringement actions at national level, it was important for the proprietors to make anything possible to keep the patent alive, is clear. But this cannot be a reason for further postponing the OP.
It is correct that that two OP were held in the review procedure. The first was held in the composition under R 109(2,a) in a composition with 2 LM and 1 TM in which only the proprietor/petitioner was summoned. The second was held in the composition under R 109(2,b) with 3 LM and 2 TM in which not only the proprietor/petitioner was summoned, but all the other parties to appeal still in the procedure.
There was thus nothing unusual during the review procedure. In the first OP the EBA decided on the admissibility of the petition, and in the second one, the EBA decided on the allowability. The petition was considered as clearly not allowable.
That the EBA refused to distinguish between the discretion afforded to the boards in purely procedural matters, as it is the case when it comes to postponement of an OP, and when substantive aspects are implied, like when admitting ar not a late piece of prior art or a late request is to be regretted, but will not change the decision of the EBA.