CASELAW-EPO - reviews of EPO Boards of Appeal decisions

Brief outline of the case

The opponent appealed the rejection of the opposition.  

OP were scheduled for 08.09.2022 by summons issued on 26.11.2021.

On 12.08.2022 the parties were informed that the OP would be held by ViCo.

Following the summons, the opponent informed the board that it would speak English and requested simultaneous translation.

Simultaneous interpretation under R 4(5) was organised by the board.

In its preliminary opinion expressed in the annex to the original summons, the board considered, inter alia, that the claimed subject-matter as granted was not inventive starting from E13=WO 90/08468 as CPA. E13 is classified in the same IPC class as the patent and was not mentioned in the ISR established by the EPO (1X, 4A documents).

On 07.09.2022 the proprietor announced that he would not come to the OP and that simultaneous interpretation was unnecessary.

The summons for OP were cancelled on 07.09.2022.

The patent was eventually revoked for lack of IS over E13.

Announced absence of the proprietor

In its decision, Reasons Point 1, the board reminded the proprietor of the obligation to act in the context of non-participation in oral proceedings.

The proprietor completely ignored the passage in bold in the summons reminding parties that submissions regarding a planned non-attendance at the OP should be submitted at the earliest opportunity.

No reaction from the proprietor’s representative was filed following the summons.

It is only upon request of the registry of the board, that the proprietor’s representative informed the board in writing, without any justification, that he would not appear on the following day, that is  less than one day before the OP

The OP could thus only be cancelled in the late afternoon of the day before the scheduled date.

As a result, the board, the opponent and the interpreters had to prepare unnecessarily for the OP. Furthermore, due to the short notice of the announcement by the proprietor’s representative that he would not attend the OP, it was no longer possible to cancel the interpreters, so that costs were incurred by the European Patent Office in a completely unnecessary manner.

The board quoted Art 6 of epi’s code of conduct (OJ 2022, 06, A 61) stating that a member shall act courteously in his dealings with the European Patent Office and do everything possible to uphold the good reputation of the Institute and its members.

Form the board, an analogous obligation to act can be found in epi Resolution 4.2.4 in the Collection of Resolutions of the Council of the epi (available via the epi website, currently at https://patentepi.org/assets/uploads/documents/institute/070522-CoD.pdf; page 249 of the pdf document), which, with regard to the requirement for members to behave in a professional and courteous manner, states, inter alia, that the representative of a party who decides not to attend OP should inform the Board of the non-attendance as soon as possible, preferably at least one month before the OP.

It has also been repeatedly stated in the case law of the Boards of Appeal (Case Law of the Boards of Appeal of the European Patent Office, 10th edition 2022, III.C.5.3) that if a party intends not to participate in oral proceedings, both the Board and all other parties to the proceedings must be informed of this in writing as early as possible before the scheduled date.

The Board made clear that it was aware that there may be serious reasons why a party cancels participation in OP only at short notice. If this cancellation is made proactively and with an appropriate explanation, such a procedure would not run counter to the obligation to act formulated by epi and the Boards of Appeal.

However, this is exactly what was omitted in the present case. A reference to the absence from the OP was only made upon request by the registry of the board and without any justification.

This conclusion is also not contradicted by the fact that the respondent, i.e. the proprietor, did not request OP in the present case (see in particular T 930/92, headnote I and grounds for decision 3.2).

The proprietor’s representative thus clearly violated the obligation to act formulated by epi and the Boards of Appeal.

Comments

The problem is that when interpreters have been hired, the EPO has to pay them, whether they are acting or not.

The amount of money spent in vain for unnecessary simultaneous interpretation is far from being negligible.

In T 13/19 , without interpreters being involved, the board noted that “It is lamentable that the present board is hence compelled to refer to the statement of T 954/93 (cf. Reasons, point 2) and to recall that such conduct is reprehensible (see also T 930/92, Headnote I).

Older decisions speak about a discourteous attitude towards the board and the other party.

Being polite has never hurt anybody.

At least it would have been correct to directly inform the opponent of the fact that the proprietor did not intend to attend the OP.

Being deliberately absent without any good reason can also lead to a different apportionment of costs.

A decision of a different apportionment of costs can be taken even in the absence of a request from the other party.

The Headnote II of T 930/92 is very clear in this respect.

In spite of the OP being held by ViCo, the opponent had to prepare the OP as the cancellation of the latter only occurred late on the day before.

A different apportionment of costs would have seemed justified.

See for instance:

• T 280/15, Reasons Point 3, proprietor appellant, interpreters involved
• T 1310/18, Reasons Point 9, opponent appellant, interpreters involved citing T 258/13, Reasons Point 2.

https://www.epo.org/law-practice/case-law-appeals/recent/t182991du1.html

PS: T 954/93 cited by the board in T 13/19 could not be found when I wrote the blog, now it can be found