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T 184/17 - Addendum to my contribution on T 1042/18  

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When revising my presentations on procedural aspects in opposition in order to take into account T 1842/18, I came across T 184/17.

https://www.epo.org/law-practice/case-law-appeals/recent/t170184eu1.html

T 184/17 takes a contrary stance to T 1042/18.

In Point 4.3 of the reasons, the board asked itself whether the new objection of lack of IS still falls under the principle as expressed in G10/91, or if it can be admitted into the appeal proceedings without the agreement of the patentee.

The Board concurred with the conclusion drawn in T 131/01 (OJ EPO, 2003, 115) that under such circumstances a specific substantiation of the ground of lack of inventive step is not even generally possible since – given that novelty, i.e. the presence of a difference between the claimed subject-matter and a prior art, is a prerequisite for determining whether an invention involves an inventive step in view of that prior art – this would contradict the reasons in support of lack of novelty.

The Board held thus that the objection of lack of IS cannot be considered as a fresh ground for opposition.

The board therefore decided to admit the raised IS objection into the appeal proceedings under Art 114(2), although strictly speaking it could as well be considered late.

In T 1042/18 the board accepted that the objection of lack of IS based on documents D4 or D5 did not constitute a new ground of opposition within the meaning of the case law of the EBA, but blocked it under Art 114(2) by invoking Art 13(2) RPBA20.

In T 1042/18 it is specifically stated that the ruling in T 131/01 cannot, in the board’s view, be applied in its generality to the appeal proceedings and the rules on late filings under Art 13 RPBA20.

Comments

In all fairness it has to be said that T 184/17 was decided under the RPBA07 and not under the RPBA20.

The legal situation might thus have changed, but it does not alter the fact that, in matters of late filings, the discretion given to the board has been applied quite differently in T 184/17 and in T 1042/18.

In both cases the rules on late filings in the RPBA07 and in the RPBA20 have their legal basis in Art 114(2).

In T 184/17 the new line of argument was not late, although it could have been considered late under the RPBA07. In T 1042/18 it was considered late under the RPBA20 and that was it.

T 184/17 shows that the discretion of the boards can be applied in a more reasonable way when it comes to switch between lack of N and lack of IS on the basis of the same document once the board has decided that N was given.

If for one board the new line of argument IS instead of N, supported by existing case law, is not late, why can it not be the case before another board?  

The aim of the RPBA20 was clearly to help reducing the backlog of the boards. This is a legitimate aim, although the origin of the backlog is well known and was actually not directly caused by the boards.

It is however doubtful that the RPBA20 have been devised so that pragmatic and well established case law is simply thrown overboard for extremely formalistic reasons.

Like for combining claims as granted, deletion of claims or holding OP by ViCo, the discretion of the BA can be applied in many different ways.

In my humble opinion, T 131/01 and T 184/17 should be followed and T 1042/18 should remain a one-off.

In order to clarify the matter, a referral to the EBA appears more than necessary.

This should not only be the case here, but also when it comes to combining claims as granted, deletion of claims or holding OP by ViCo. See my various contributions on those topics.

However, it cannot be that it becomes a procedural lottery when going to appeal.

Some convergence in procedural case law is badly needed.

Original blog publication

https://blog.ipappify.de/t-1042-18-are-t-597-07-t-131-01-and-t-635-06-dead-a-further-surprise-under-art-132-rpba/

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11 replies on “T 184/17 – Addendum to my contribution on T 1042/18  ”

Anonymoussays:

If I understand your position correctly, you believe that T 1042/18, a single decision departing from previous practice, means that a referral to the EBA is “more than necessary”.

Meanwhile, on the issue of description amendments, you take the position that *two* dissenting decisions are simply “rogue” decisions which cannot be understood, should be ignored, and that you cannot understand what all the fuss is about – so there is no need for an EBA referral.

Is that correct?

DXThomassays:

Dear Anonymous,

To take refuge in anonymity is the courage of cowards.

I do not intent to reply anymore to such anonymous messages.

I do not wish a repeat of what happened on IPKat when discussing adaptation of the description.
Adaptation of the description is a matter of interpretation of the EPC.

As far as I am concerned, there is an established line of case law which does not warrant the song and dance you all made on IPKat, and certainly not a referral to the EBA.

This topic is exhausted.

On the other hand, in order to bring an end to the procedural lottery effect in the way the discretion of boards is presently applied by different boards, I do certainly consider a referral to the EBA as being necessary.

I could not care less of what you think of my position.

I repeat, unless a comment boils down to a personal attack, i will leave anonymous comments aside and for me they can end up where they are well kept: in a round receptacle which is found in any office.

Anonymoussays:

My comment was not intended as a personal attack and I am sorry if you saw it that way. “Je m’en fous de votre opinion” were reported words from Battistelli to the EPO staff. We should be better than that here.

I am not interested in reheating the debate about description amendments.

I am just trying to understand your view on Enlarged Board of Appeal referrals.

In the case of T 1042/18 we have an established line of case law represented by T 131/01, T 635/06, and T 597/07.

In the case of description amendments there is also an established line of case law.

In both situations we have new decisions which dissent from the established practice. In both situations the matter is of great importance to huge numbers of patents.

Either an EBA referral is legally justified, or it isn’t. The answer to that legal question should not depend on whether the established approach is to your liking and it should not depend on what you hope the outcome will be.

On the IPKat blog currently is a feature on T682/22, which is case where the TBA remitted a case to the ED expressing disapproval of the ED’s declining to perform any interlocutory review of the appeal brief. And in this blog we have a heated debate about procedure with cases going to appeal. In the USA, there is much talk of unseemly wrestling matches between the Appeal Court and the Supreme Court. One hopes that, within the EPO, there is no such wrestling match going on. I mean, ping-ponging cases backwards and forwards between the Divisions and the Boards is not efficient, not fair and not good for the reputation of the EPO.

DXThomassays:

T 184/17 – Dear Max Drei,

I can agree with you that “ping-ponging cases backwards and forwards between the Divisions and the Boards is not efficient, not fair and not good for the reputation of the EPO”.

In my comment on this blog of T 682/22, I considered that the exception for Art 123(2) when not granting interlocutory revision does not appear justified.

This stance has been in the Guidelines for a while and most probably the reasons for it have been forgotten. Even a previous board had tackled the EPO for this, cf. T 1060/13.

I would personally think that not granting interlocutory revision has more to do with the way examiner’s production is assessed, than anything else. When granting interlocutory revision, no more points can be gained and the file is not yet finished.

This was certainly not the reason for keeping an exception under Art 123(2).

DXThomassays:

@ Anonymous commenter,

My position on the referral is abundantly clear. When it comes to procedural aspects, the present situation at the boards is not showing a great deal of coherence, and a referral would do well to clarify the situation. As far as amendment of the description are concerned, my position is different. That’s it, and you have failed to convince me of the necessity of a referral to the EBA.

One aspect which should not be forgotten is that the Guidelines are also the expression of EPO policies. Like any other organisation the EPO has to be allowed to have certain policies. They should be in line with the EPC and as far as case law is concerned primarily with that of the EBA.

I have always understood, and I am probably not alone, that T and J decisions decisions are in principle not binding for the first instance as they are only valid in the situation in which they have been taken.

If they are mentioned expressis verbis in the Guidelines, then they are certainly binding, but not all the others. It is impossible for divisions of first instance to keep abreast of the case law. This is why only selected decisions are introduced in the Guidelines.

On the other hand, it is not because there are decisions going in a certain direction, which for instance is to the liking of representatives, that the Guidelines have to be immediately amended in order to take those into account (or a referral to the EBA be launched).

If this would be the case, the Guidelines would be constantly changed. This would not be of any help.

I remember the days when more than a year passed between two versions of the Guidelines.

It is only since 2013 that they are revised once a year, but this does not mean that they have to immediately follow the general case law of the boards.

I gave two examples, one where a change took place, the deletion under N of the purposive selection in selecting for ranges, cf. G-VI, 8(ii), one where no substantial change has occurred, the three point test=formerly essentiality test, cf. H-V, 3.1.

A further example came to my mind. According to the Guidelines, E-VIII, 2, a mere request for Oral Proceedings does not qualify as completion of the omitted act and therefore cannot lead to further processing being granted.

There are two decisions in which boards considered a request for OP as fulfilling the conditions for granting further processing, cf. T 1382/04 and T 861/03. Those two decisions were not and will probably never be followed by ED. Is this so bad?

It appears much better for all concerned that the Guidelines are not amended in hurry. Nobody would have any gain from such a behaviour.

I will conclude with a French say: do not confuse speed with haste! This applies to the Guidelines and to referrals.

Well, Daniel, with your comments on the interactions between the Divisions and the Boards, I think you expose some of the burgeoning problems at the EPO. Why is it that filing an appeal is a more or less automatic response to getting an adverse decision from a Division? Perhaps because the Divisions take no notice of the case law of the Boards of Appeal. For them, it doesn’t even exist. Why? Because the Boards are by now incapable of adhering to a common line. Meanwhile, behind the White Cliffs of Dover, why is it that only about 30% of those who lose in the English High Court receive advice from their lawyers that an appeal has a non-zero chance of success? I will tell you. It’s because the law is clear, and every one of the judges at first instance so rarely gets the law wrong. That jurisprudence is of course what the appeal court.
lays down.

Which system dispenses justice more fairly, with more justice, and much more speedily?

How has it come to this deteriorating situation, at the EPO? More and more ping-pong. Perhaps the Boards have lost any respect they once had for the Divisions, and the Divisions have lost any respect they once had for the decision-making of the Boards. And why that? Because all of them are obsessed these days, to the exclusion of all else, with box-ticking “productivity”? When will EPO management come to the realisation that there is more to “quality” than ticking boxes and counting beans.

To finish, in England we say “More haste, less speed”. Sometimes one wonders whether EPO management has ever heard of that idea.

And

DXThomassays:

Dear Max Drei,

I can understand your dissatisfaction to the fact that first instance divisions take no notice of the case law of the Boards of Appeal.
I would not say that it doesn’t even exist. It exists very well, but as I have tried to explain, only decisions of the EBA are binding for first instance divisions.

I do agree with you: it is as regrettable as for first instance divisions that production/productivity has now clearly made inroads in the boards.

As far as case law is concerned, T or J decisions are only binding for first instance divisions in so far as they are mentioned expressis verbis in the Guidelines.
This is hard reality and it might not be to your liking, but it is like it is.

It is also more or less impossible for an examiner to keep abreast of the case law of the BA.
This is why in the committee in charge of adapting the Guidelines a selection of decisions is made and only some T or J decisions are introduced in the Guidelines.
This is the way by which the Guidelines are adapted to case law. But there is no automatism.

This is why new case law, you might even find excellent for your client, is not necessarily taken into account by first instance divisions.
They are only bound by decisions mentioned in the Guidelines and have the discretion to ignore those not mentioned in them.
Examiners are further bound by the Guidelines and should not deviate from them without good reasons.
Parties may indeed expect the EPO to act in accordance with the Guidelines until such time as they – or the relevant legal provisions – are amended.

I would like to draw your attention to the introductory part of the Guidelines in which the following is said:

These Guidelines are updated at regular intervals to take account of developments in European patent law and practice. Usually, updates involve amendments to specific sentences or passages on individual pages, in order to bring the text into line with patent law and EPO practice as these continue to evolve.

The Guidelines do indeed take into account developments in European patent law.
Primarily this means decisions of the EBA.
T or J decisions are not automatically incorporated in the Guidelines.

The reason behind this, is to take into account the practice of the EPO. As an administration the EPO has certain policies.
Whether these policies are of the liking of the users is, certainly in the present times, rather irrelevant.
I do not need to dwell on this. I have given a series of examples.
Whether those policies are fully compatible with the spirit and the letter of the EPC is not apparently a problem bothering the present management of the EPO or of the BA.

It took me some time, but I seem to have understood why you and other representatives from over the Channel are so adamant about following case law.

You are all coming from a country having adopted a common law system. Common law is also known as judicial precedent, judge-made law, or case law.
Common law systems place great weight on court decisions, which are considered “law” with the same force of law as statutes.
To sum it up, all decisions in common law jurisdictions are precedent.

This is not the legal system for most of the EPC countries in which civil law prevails.
Civil law judges tend to give less weight to judicial precedent, which means that a civil law judge deciding a given case has more freedom to interpret the text of a statute independently.
This means that jurisprudence might change with time, but jurisprudence is not, or at least should not be, replacing the law.
The civil law system actually does go back to the Napoleonic Code, if not to Roman law.

There is thus a quite different approach under a civil law system in that it gives less importance to decisions of a judicial body.
It is not because a decision goes in a different direction than a preceding one that this new direction has to be followed immediately.
In a common law system, a judicial decision from the Appeal Court has nearly the force of a statute and has to be followed.

This does not mean that the evolution of case law does not have to be observed or that the decisions of the highest instance, which in general gives the interpretation of the law, can be ignored.

Insisting on a strict obedience to court decisions, in case of the EPO of the BA, actually boils down to imposing a common law system at the EPO.
I am not sure that this is what is wished by all the EPC contracting states.

That the judge in the High Court envisages all the possibilities and issues a decision far more complete than that of an administrative body, e.g. a first instance division, is understandable, but cannot be required at the EPO.

To my understanding, in the UK, the Appeal Court has a different function as it decides what the law, i.e. the statute, has to be.
First instance judges have to follow the precedents, they actually have little choice.
Some corrections can be introduced by the Supreme Court, but I think in a relatively minor number of cases.

The situation at the EPO has become even more complicated as the RPBA20 could make inroads in substantial law in that they can be considered giving to the boards the discretion to set aside long lines of case law, with just the purpose of making the boards more “efficient”.
If this “efficiency” is beneficial to the users and to the EPO is a different topic.

In this vein, I doubt that T 1042/18 will ever be mentioned in the Guidelines.

Thanks for that, Daniel. Your reply prompts me to riff further on my theme of jurisdictions learning from each other.

Applicants in the USA now routinely push their cases at the EPO, using PACE, to get a positive assessment of patentability of high enough quality to influence the USPTO in the direct of recognising patentability. I see that as a feather in the cap of the EPO (and its management). Conversely, parties litigate in England, despite the high cost, in order to expose the facts relevant to the validity of patent claims, not only all over mainland Europe but also everywhere else in the world.

Common law fact-finding is expensive but is effective to get at the relevant facts, wherther by experimental efforts to reproduce Examples given in the patent (these efforts being observed by the other side of the litigaton) or discovery of documents, or by cross-examination of the expert witness of each side by (using the proxy of the QC) the expert appearing for the other side. This is why 95% of cases initiated in the English courts settle before it gets to trial. In the lage majority of cases, the parties can see from the results of the fact-finding process which of them is destined to lose at trial, and settles rather than suffer the heavy consequences of losing at trial.

Suppose a trial in London lasts 5 days in court. Allow all day Tuesday, and Wednesday morning, for cross-examination of the professor of chemistry of Cambridge University followed by 1. 5 days of x-exam of that professor`s counterpart at Oxford. Watch it if you get the chance: it is quite impressive. By the time that is finished, the single judge hearing the case has in the transcript the material (in the form of witness statements) needed to pronounce authoritatively on the scientific facts of the case. Those with no experience of the power of x-exam have no appreciation how lethal it is for the witness to try to dissemble. It is often fatal for their client’s case.

Of course, not all patent disputes need such an expensive trial. But some do. And it is the possibility of such a trial that keeps serious Applicants at the EPO, with high value inventions, honest about what they write to the EPO. If you want your patent to withstand scrutiny in litigation in England, you don’t write anything dubious in your patent application or in any of your written submissions to the EPO.

Like I say, Europe`s diversity can teach the world much about how to litigate patent disputes. One looks to the EPO to learn from all EPC national jurisdictions, implement effectively all that it learns, and so maintain standards high enough for us all to be proud of.

Turning from the facts to the lawn, common law binding precedent seems to lawyers in those countries to be the ONLY serious way to adjudicate the law. But when it comes to the law of patent validity, the Darwinian evolution of the case law of the Boards of Appeal has made a much better body of jurisprudence than any national jurisdiction on Planet Earth. Not that this carries any weight with the big trans-national law firms (and their enablers in politics) who see the UPC as a virgin field ripe for ploughing and the EPO as nothing but an administrative cash cow fit only for endless milking.

DXThomassays:

Dear Max Drei,

It has never been in favour of a party telling black in one jurisdiction and white in another. It always backfires.
There is even the odd T decision stating that a feature must have the same meaning in first instance and in appeal.
It is not necessarily determining in European practice, but it is not received positively, even at the OD level.

Thanks for reminding us of the efficiency, but also the cost, of cross-examination as practiced in the UK.

When it is so efficient, one wonders if the British legal profession will not be so harmed with the creation of the UPC in spite of the UK having withdrawn from it.

When speaking about the UPC, I doubt very much that even the outline of an approach to cross-examination will be practiced.
If a witness/expert testimony is not contested it becomes a fact and hence no examination and even less cross- examination will occur. This is why a the celebration of some CEIPI anniversary, Me Véron, a French lawyer who is also an ardent proponent of the UPC, claimed that it will not be necessary to hear witnesses before the UPC. I was there and heard it myself…..

As far as validity is concerned, I would like to add that there is no obligation for the UPC to follow the case law of the BA/EBA and vice-versa. Instead of easing the situation, more confusion will most probably follow.
But one thing is clear: opposition divisions and BA will have no alternative but abide by the decisions of the EBA and should not follow diverging decisions of the UPC. One prime example coming to mind is the way to handle N or added-matter.

For obvious reasons I will not say anything about your statement on the EPO” [i]as nothing but an administrative cash cow fit only for endless milking”.

I will try to keep this short, Daniel. Yes, more confusion. Manna from Heaven for litigation lawyers.

No witnesses? Oh well, then it will come down to the age-old formula “One side’s word against the other. Both plausible. Accordingly, claimant has not proved its case. Accordingly, the court declines to grant the requested relief”. This formula lends itself to widespread abuse and rightfully brings disapprobation on any legal system that functions in this way. But (shoulder shrug) these days, who cares, when there’s so much money to be made in patent litigation.

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