EP 3 070 550 B1 relates to modelling of an industrial automation environment in the cloud.
Brief outline of the case
The OD rejected the opposition and the opponent appealed.
The board summoned to OP by ViCo.
In a communication under Art 15(1), the board expressed a negative preliminary opinion regarding sufficiency of disclosure as regards all claim requests on file.
One day before the OP, the proprietor informed the board that it would not appear at the OP. The proprietor never replied in substance to the communication of the board.
The OP was cancelled and the decision taken in writing.
The board’s comments on the proprietor’s attitude
In the present case, the proprietor’s representative provided his ViCo details eight days before the OP, indicating an intention to participate.
However, he notified the board of his non-participation only one day before the scheduled proceedings.
Typically, such notifications are given well in advance, cf. T 930/92, Headnote I. Given that the board’s preliminary opinion was issued ten months ahead of the scheduled hearing, the proprietor had ample time to inform the board of its non-attendance well ahead of the OP.
While it is not uncommon for representatives to receive late instructions, they should seek timely directions from their clients, particularly when arranged OP approach.
In the presnt instance, the representative failed to communicate promptly with the board’s registry. Instead, the board received a brief written notice only one day before the arranged OP, without any further explanations.
The board, and presumably the opposing party’s representative, had already invested some time in preparing for the OP.
According to Article 6 of the epi Code of Conduct, members are required to act courteously in their dealings with the EPO. The same principle applies to behaviour towards other representatives, cf. Article 5(a) of the epi Code of Conduct.
Cancellation of OP
For the board, the proprietor effectively withdrew its request for OP by declaring its intent not to attend them. In turn, the board did not consider the conduct of OP to be expedient, cf. Art 116(1).
As a consequence, the decision was handed down in written proceedings, according to Art 12(8) RPBA.
Comments
The present case illustrates once more that the discretion offered to boards are applied in an arbitrary manner without any predictability.
Holding OP by ViCo
The OP was summoned on 31.08.2023 for the 18.07.2024. The summons indicated that the OP would be held by ViCo, without asking the parties whether they would agree to OP by ViCo.
Be it in August 2023 or in July 2024, there was no general emergency impairing the parties’ possibilities to attend in-person OP at the EPO. By summoning to OP by ViCo the present board bluntly ignored G 1/21. It did not even refer to Art 15a(1) RPBA.
The only conclusion possible is that the board summoned to ViCo for its own convenience.
If the board had asked the parties whether they agreed on OP by ViCo, holding OP by ViCo would have been perfectly acceptable.
Following G 1/21, Art 15a(1) RPBA should have been amended such that before holding OP by ViCo, the express agreement of the parties should be thought. Some boards do request parties to give reasons why they could not agree to OP by ViCo. There is no legal basis for such a request.
The parties will rarely oppose an ex-officio decision to hold OP by ViCo by a board for fear that any discretion given to the boards could be held against them.
By holding OP by ViCo, the board members do not even have to be present in the same location, cf. Art 15a(3) RPBA. This is not normal when a decision is taken by the last instance available to parties before the EPO. This is the more so as the EPC and its Implementing Regulations are silent on OP by ViCo.
It is not to be expected that the RPBA will be amended on the holding of OP by ViCo. This is not a scoop.
Apportionment of costs
The board noted that itself and the opposing party’s representative, had invested some time in preparing for the OP. A decision on a different apportionment of costs under Art 104 should have been made possible by the board.
By cancelling the OP on the eve of the OP, the board deprived the opponent from the procedural possibility of filing a request for a different apportionment of costs, cf. Art 16(1) RPBA, according to which it is only by request that a different apportionment of costs can be granted. In the present situation Art 16(1,c) would have been plainly applicable.
The order to cancel OP was taken on 17.07.2024, but the notification of the cancellation of the OP was only issued on 22.07.2024, i.e. well after the actual date of the OP. The decision of the board, dated 18.07.2024, was notified on 26.07.2024.
One conclusion comes to mind: the board simply thought of its production/productivity. It could and should have given the opponent the possibility to file a request for a different apportionment, but the chronology of events shows clearly that the board never envisaged this possibility. On the other hand, the board is talking about courtesy…..
The opponent saw the patent revoked, but the possibility of recouping the costs for the preparation of the OP cannot be replaced by a reference to the epi Code of Conduct.
Headnote II of T 930/92 mentions the possibility of a different apportionment of costs when a party declares it non-appearance at short notice. This part of the Headnote of T 930/92 seems to have escaped to the attention of the board.
On the procedure
Art 83 has never been a topic during examination. Clarity objections were raised in the ESO, but only IS objections were mainly raised.
In the minutes of a telephone conversation, shortly before grant, clarity objections were “discussed“, but the substance of those objections remains a mystery. Minutes of a telephone conversation should enable third parties to know and understand what has been “discussed”. The present type of minutes is useless.
In view of the outcome of the appeal, a further conclusion imposes itself: in view of the level of the objections raised by the board, the patent should never have been granted. The problem was apparently not clarity, but sufficiency.
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