EP 3 002 637 B1 relates to a clock system with improved tribological properties.
Brief outline of the case
The OD revoked the patent and the proprietor appealed the decision.
The board confirmed the revocation.
The case is interesting as the opponent denied the admissibility of the appeal and status of the proprietor as a party to the proceedings.
The opponent’s point of view
The opponent argued that an opponent would ‘lose’ his status as a party to the proceedings if it were subsequently found that none of his grounds of opposition as submitted within the initial 9-month period prescribed by Art 99(1) were admissible.
It concluded that a proprietor should likewise lose his status as a party to the proceedings – or at least be denied any possibility of filing new requests – if it is subsequently found that none of his defences as submitted within the initial time limit prescribed by R 79(1) is admissible.
If this were not the case, a proprietor would be treated more favourably than an opponent. Such a difference in treatment would be manifestly contrary to the principle of procedural equality of the parties, which is one of the most fundamental principles of EPO inter partes proceedings.
The board’s decision
Art 99(3) states that opponents are parties, together with the proprietor of the patent, to the opposition proceedings. This provision does not set out any additional conditions, beyond the implicit condition that proceedings are in progress to which one may be a party ‘to the opposition proceedings’.
It is not only an opponent who ‘loses his status as a party to the proceedings’ if the grounds he has filed with his notice of opposition do not comply with R 76(2,c). On the contrary, in this case, the opposition must be rejected as inadmissible and there will therefore no longer be any opposition proceedings to which the opponent and the proprietor of the patent could be parties. Oppositions at the EPO are inter partes proceedings before the EPO.
A proprietor who does not defend his patent risks losing it. If, in opposition, he submits AR, there are no legal provisions comparable to those in Art 12 and 13 RPBA forbidding him to do so. Provided that the submission of such requests does not constitute an abuse of process, the OD is obliged to examine them. But even in this case, the proprietor will not lose his status as a party to the appeal proceedings.
The opponent’s argument is based on the principle that opposition proceedings could be in progress, but that the opponent could lose his status as a party to the proceedings. For the board, this cannot happen. Consequently, the very principle of the argument and the alleged inequality of treatment is irrelevant.
The Board observed that the OD has no discretion to refuse discussing grounds of opposition filed and substantiated within the nine months. According to R 77(1), the opposition is rejected in its entirety as inadmissible if the opposition does not comply with R 76(2,c), and not just the grounds of opposition filed within the nine months.
For the situation envisaged by the opponent to arise, it would be necessary for the opposition to comply with R 76(2,c), while any ground of opposition filed within the nine months would be inadmissible, without the OD having any discretion to refuse to admit grounds of attack filed within the nine months. This is not possible.
For this reason alone, the argument that, for reasons of equal treatment, the proprietor of the patent should lose his status as a party to the proceedings if all the arguments he put forward in his reply to the opposition pursuant to R 79(1) were to prove inadmissible, is not valid.
Comments
When it comes to an opposition, it is normal practice for the proprietor to try arguing that the opposition is not admissible. Opposition not admissible=no discussion in substance.
When it comes to appeal it is equally normal practice for the respondent to try arguing that the appeal is not admissible. Appeal not admissible=no no discussion in substance.
It is however surprising to see to what, let’s say strange, arguments, an opponent is capable of bringing forward in order to get rid of the appeal of the proprietor when the patent has been revoked.
I have seen a lot of tricks or attempts in order to bring the other party in difficulty with formal aspects.
However, claiming that, should the arguments brought forward by the proprietor in reply to the statement of grounds of opposition not be valid, i.e. not be able to allow maintenance in any form, the proprietor was loosing its status of party to the opposition is really far-fetched.
As the opponent’s representative is a well-know Munich firm of patent attorneys, could one conclude that föhn was impairing the writer of such statements? Did he have a bad night or any problem impairing common sense? Did he write in the aftermath of a trip to Oktoberfest?
Comments
4 replies on “T 1420/21 – Admissibility of an appeal – Can a proprietor lose its capacity of party in opposition?”
An “interesting” case. It does however put me in mind of a very unusual situation which I encountered as an opponent.
The patent was maintained in amended form by the Opposition Division. We appealed against the decision whereas the proprietor did not.
The proprietor did not file any reply whatsoever to our statement of grounds of appeal, not even to request Oral Proceedings.
Subsequently we received a summons to oral proceedings from the Board of Appeal (still without the proprietor having filed any arguments or any auxiliary requests). We asked the Board to switch from an in-person hearing to a VICO. At this point the proprietor sprang into life and filed a very strongly worded reply arguing that the hearing should be heard in person. However, this was still unaccompanied by any claims or arguments on the merits… and still no explicit request for oral proceedings.
All of this put us in a very odd position if the Oral Proceedings had gone ahead. As the proprietor had failed to file anything before receiving the summons, this meant that we were in the third level of convergence under the version of the RPBA 2020 which was in force at that time. Consequently, *anything* that the proprietor might have later filed, or said at the oral proceedings, would have been an amendment to their case falling under the provisions of Art 13(2) RPBA requiring exceptional circumstances. Arguably even the (implicit) request for oral proceedings in their letter objecting to VICO was itself an amendment.
If the oral proceedings had gone ahead it thus seemed to us that the proprietor would only have been able to plead for exceptional circumstances justifying the submission of oral arguments for the very first time in the appeal procedure. If the Board had denied the admissibility of such arguments then the proprietor would have been able to say nothing of substance. This, it seemed to us, would be tantamount to the proprietor abandoning their status as a party and assuming the status of an observer of the dialogue between us and the board.
I would have been fascinated to see how the Board would have dealt with this situation. However, the proprietor self-revoked its patent six months later, before we had received the Board’s preliminary communication, so I never found out.
@ Anon Y. Mouse
Thanks for your comment.
I have witnessed myself cases in which the proprietor did not reply to the opposition. This is perfectly legitimate in view of party disposition. In one case, the proprietor was aware of a public prior use towards the opponent. This PPU was however not raised by the opponent, but sufficient for the proprietor to give up its patent.
As long as there is no decision of the OD revoking the patent or maintaining it as granted or amended, the proprietor is party to the proceedings.
Once a first instance decision is appealed, the proprietor remains a party to the appeal until the board issued a final decision.
In view of the convergence requirements established by the RPBA, a proprietor might not be allowed to file new AR in appeal, but even then, he does not lose its right to be heard and is a party to the appeal proceedings.
In examination an application is deemed withdrawn if the applicant does not abide by time limits set by the ED or in the EPC. The notion of the patent being deemed withdrawn or revoked by not replying to time limit set by the OD, a board or by the EPC does not exist. Opposition proceedings are always closed with a decision of an OD or of a board.
It is thus not possible to argue that the proprietor has abandoned their status as a party and is therefore assuming the status of an observer of the dialogue between the opponent and the board. The proprietor could well turn up at the OP as he will be summoned by the OD or the board, should the OD or the board consider OP necessary.
During such an OP, the proprietor, even if new AR might not be admissible, could still argue that the opponent brings new grounds of opposition or new objections never raised previously. That those grounds/objections might not be admissible by the OD oder under the RPBA is however irrelevant.
In R 7/09 and R 4/17, the respondent/proprietor did not react to the appeal filed by the opponent for the simple reason that the statement of grounds of appeal had not been notified to the proprietor. The EBA held that the proprietor was not required to consult the register in order to see whether a statement of grounds of appeal was filed in due time. The EBA set aside the board’s decision and the appeal proceedings were reopened. This is a further reason to consider that the proprietor cannot lose its status of party to the proceedings.
If such a situation would occur in first instance, the OD would have committed a SPV, and the opposition proceedings would have been reopened.
Neither an opposant nor a proprietor can lose their status of party to the proceedings when an opposition is deemed filed and admissible. Even if the opposition is not admissible and the potential opponent is requesting an OP, OP have to be held and a decision taken. If the opponent files an appeal against the non-admissibility of the opposition and the appeal is deemed filed and admissible, appeal proceedings will be carried out, and with a corresponding request, OP will be held.
Claiming that an opponent is disadvantaged vis-à-vis the proprietor, and that both should can lose their status of party in certain circumstances is a view which defies any legal reasoning, when analysing what opposition proceedings before the EPO entail.
These are… interesting… arguments, to be sure. But perhaps the opponent really wanted their attorneys to make these arguments and their attorneys did not manage to talk them out of it. Such things can and do happen.
@ Extraneous Attorney,
You are perfectly right in your assumption, such things can and do happen.
In my experience, I have sometimes seen the following statement: “we have been asked to bring forward the following arguments”. The attorney does his job, but it is clear that he could not manage to talk his client out of it.
I am not sure that it is the case here. In his reply to appeal, the opponent’s representative complains over lots of pages that the proprietor waited the end of the period under R 116(1) for filing new requests. This is legitimate from the side of the proprietor and cannot be queried. The proprietor filed a new series of requests one week before the OP before the OD. Besides the MR in which a claim was deleted, the OD dismissed all AR as being too late and not overcoming the objections raised by the opponent.
The opponent’s representative was also of the opinion, that the proprietor should have been filed its whole case in its reply to the opposition. I fail to see any legal basis for such a requirement.