EP 3 177 039 B1 relates to a hearing aid with an antenna formed on a flexible carrier, and a method for manufacturing the same.
Brief outline of the case
The opposition was rejected and the opponent appealed.
The board held the claim 1 as granted lacked IS over D2=US 2015/0036854.
AR1-3 were not admitted under Art 13(2) RPBA.
The board decided revocation of the patent.
An objection under R 106 was dismissed.
The case is interesting as it deals with OP in-person vs. OP by ViCo and to late filings before a board.
The proprietor’s point of view on the format of the OP
The proprietor requested that the format of the OP, originally foreseen as ViCo be changed back to ViCo in writing prior to the scheduled date.
The proprietor considered that conducting OP by ViCo aligns with environmental objectives by avoiding international air travel and the associated carbon emissions.
During the OP before the board, the proprietor maintained its request that the OP be held by ViCo.
The board’s decision on the format of the OP
The proprietor’s request for holding the OP by ViCo or by a hybrid format was rejected by the board.
Pursuant to Art 15a(1) RPBA, the board may decide to hold OP under Article 116 EPC by ViCo if it considers it appropriate to do so, either upon request by a party or of its own motion. This decision falls within the board’s discretion.
The board observed that the procedural complexity of the case increased significantly due to the proprietor’s written reply to the board’s preliminary opinion.
In response to the board’s concise preliminary opinion comprising only four pages and sent nine months ahead of the OP, the proprietor filed a 68-page submission only one month prior to the date on which the OP were originally scheduled, which additionally included a request for a referral to the EBA.
Given the volume of this late submission and the proprietor’s indication that it had difficulties following the reasoning set out in the board’s preliminary opinion, the board considered the interactive immediacy of a face-to-face hearing to be indispensable for an efficient and effective discussion in the present case.
The board noted that the proprietor’s extensive written reply was filed only one month before the scheduled date of the OP.
The board acknowledged the proprietor’s general arguments regarding environmental responsibility. However, the choice of the format of OP is a judicial decision guided primarily by the need to ensure a fair and effective conduct of the OP.
In the absence of general travel restrictions or specific impediments preventing attendance, the board prioritised, for the present case, the format best suited to resolving the complex legal and technical issues raised by the proprietor’s late submissions.
Consequently, the request to hold the OP by ViCo was refused.
The proprietor’s point of view on the late filing of AR1-3
The proprietor argued that AR1-3 should be admitted because they were a direct response to “concerns raised for the first time by the board” in the board’s communication under Art 15(1) RPBA, specifically regarding the dimension and form of the claimed “indentation”.
It suggested that the timing of the filing was necessitated by the board’s preliminary opinion and maintained that filing new submissions one month before the hearing constituted “ample time” and adhered to a “customary practice”.
The bord’s decision on the late filing of AR1-3
The board could not recognise the presence of “exceptional circumstances” within the meaning of Art13(2) RPBA in the present case.
First, the board’s preliminary opinion addressed an existing inventive-step attack applying the problem-solution approach to the claims as granted. The board’s observation that the broad wording “accommodating at least a part” failed to achieve a technical effect over the whole scope claimed was a standard assessment of the causal link between the claimed features and the alleged technical problem.
Such an assessment is necessarily required, see G 2/21, Reasons 26: “[…] in order to determine the objective technical problem, the technical results and effects achieved by the claimed invention as compared with the closest prior art must be assessed”) to ensure that the determination of the alleged technical effects is not left to the parties alone but is subject to an examination by the board.
Secondly, regarding the timing, the board emphasised that the preliminary opinion had been issued nine months before the hearing. Waiting eight months to respond and filing amendments only one month before the date on which OP were originally scheduled, is contrary to the requirement of procedural economy and cannot be regarded as a legitimate response.
Contrary to the proprietor’s argument, it is neither discernible, nor has it been argued for which specific reasons the proprietor was indeed deprived of the ability to submit the amended claim requests at an earlier stage of the proceedings, i.e. at least shortly after having received the board’s communication under Art 15(1) RPBA, such that the opponent would have had enough time to consider the arguments and to prepare a corresponding reply.
Moreover, there is no “customary practice” in appeal proceedings that would grant a party the right to have submissions that are filed one month before OP automatically admitted into the appeal proceedings.
The proprietor was not able to give a single example that could underpin such an alleged “customary practice” which would anyway contradict the provision of Art 13(2) RPBA.
Prima facie allowability is also a relevant criterion which can be applied when exercising a board’s discretion with respect to amendments submitted under Art 13(2) RPBA.
Hence, even if the board were to consider AR1-3 in these proceedings, the amendments underlying these auxiliary requests are not prima facie allowable at least under Art 56 EPC since they fail to overcome the inventive-step objection raised against the MR and even give rise to new objections for the following reasons.
Comments
Format of OP
According to G 1/21, Reasons 45, the EBA held that in the absence of a general emergency impairing the parties’ possibilities to attend in-person OP at the EPO premises, OP in person is the optimum format or, to use a term well known in the field of European patent law, it is the gold standard.
After the issuance of G 2/21, Art 15a(1) RPBA should have been amended in order to establish that OP in person is the default setting for OP before the boards. The same applies mutatis mutandis for OP before first instance deciding bodies.
It is normal that the members of a deciding body of the EPO can be scattered around the member states when deciding on the fae of an application or of a patent?
It would be interesting to see what is the situation in the member states in this respect, cf. Art 125.
Late filing of AR
Art 13(2) RPBA is abundantly clear. Unless exceptional circumstances, e.g. a new objection raised by the board, no submission will be admitted at the third level of convergence, i.e. under Art 13(2) RPBA.
That late filed requests cannot be admitted if they give rise to new objections is already a possibility at the second level of convergence, i.e. under Art 13(1) RPBA.
Even if a request might be admissible under Art 13(2), the provisions of Art 13(1) apply as well and in the end, the request is not admissible, cf. T 824/18, Reasons 4.3, or T 1832/18, Reasons 6.
Waiting eight months to respond and filing amendments with new requests only one month before the date on which OP were originally scheduled, was certainly not the wisest thing to do. Referring to an alleged “common practice” when acting in such a derogatory way was adding insult to injury.
Even an OD would have been entitled not to admit requests filed one month before the OP as the date set under R 116(1) which is at least two months, but normally 4 months. See also Guidelines E-VI, 2.2.2
Comments
2 replies on “T 0094/24-Format of Oral Proceedings-Late filing of requests”
Out of 47 pages of reasons for the decision, 16 pages deal with R106 objections and a request for referral to the EBA, all submitted by the proprietor, and all of which went nowhere. That’s 34%. The board must have been quite annoyed with the proprietor’s representatives.
@ Extraneous attorney,
When I first read the decision, the first title for a post i tthought of was “a board has had enough”.
When I lecture on OP one of my key messages is: if you want a positive decision for your client, do not start antagonising the deciding body. Any legal means is at the disposition of a party, but the representative of this proprietor has really gone quite far.
I have prepared a second post, on the assessment of IS in the present case. Reading the questions the proprietor wanted the board to be forwarded to the EBA, show that the representative was clearly looking for trouble.