EP 3 155 358 B1 relates to a system for guiding missiles for vehicles and moving targets.
Brief outline of the case
Following an opposition the proprietor filed a new MR. The OD decided that the new MR infringed Art 123(2). The OD admitted AR1 in the procedure but considered that it also infringed Art 123(2).
The patent was thus revoked.
The proprietor appealed the decision and considered that the OD committed a SPV by refusing to hear an accompanying person, Mr. Balthasart, actually one of the inventors.
The proprietor reiterated its request for hearing the accompanying person before the board. This request was rejected by the board.
The board confirmed that the MRn was infringing Art 123(2) and did not admit any AR, either under Art 13(2) and Art 12(6) RPBA. The patent was thus revoked for good.
The board also held that the OD did not commit a SPV.
The proprietor’s point of view on the alleged SPV
Following a provisional opinion of the OD, a request to only hear Mr Balthasart, one of the inventors, was submitted. Originally the proprietor had requested the hearing of two further members of staff of the proprietor.
The proprietor merely submitted in its request that Mr Balthasart, would “provide technical explanations or answers concerning the challenged invention as well as on the cited prior art documents, in particular D1, E2 and E4”.
The board’s decision on the alleged SPV
The board found no SPV in the OD’s decision not to hear Mr. Balthasart
It was not disputed that Mr. Balthasart was an “assistant to the representative” within the meaning of G 4/95. According to this decision, an oral presentation cannot be made as of right, but only with the authorization of the EPO, which is granted on a discretionary basis.
For the board, this request does not sufficiently specify the subject of the oral presentation. According to this request, Mr. Balthasart should “provide technical explanations or answers concerning the challenged invention as well as on the cited prior art documents, in particular D1, E2 and E4”.
The purpose of this request was therefore to allow Mr. Balthasart to comment, in principle, on any technical subject.
The OD rightly considered that this request was not sufficiently precise for the opponent to prepare its reply. The OD did not commit a SPV in abiding by the conditions set out in G 4/95.
The proprietor’s point of view on the admissibility of AR 1bis
The proprietor argued that he was very cooperative during examination and it was in fact the ED that created an ambiguity in the claim, as its highly subjective interpretation of a lack of clarity in the claim as filed gave rise to amendments that were not necessary.
The proprietor further argued that the amendment in appeal following the communication under Art 15(1) RPBA is justified by the exceptional circumstances in that an inventor cannot be deprived of the benefits of an invention that is manifestly valid in substance, and which has moreover been patented in many other countries.
The board’s decision on the non-admissibility of AR 1bis
The board did not admit AR 1bis under Art 13(2) RPBA as it did not recognize any exceptional circumstances.
The board acknowledged the proprietor’s attempt to be cooperative by filing claims during the examination procedure. However it is the applicant which is ultimately responsible for the text to be granted, cf. Art 113(2).
The question of whether the invention is indeed “manifestly valid in substance” cannot be taken literally. Rather, it should be the result of a substantive examination before the EPO. The fact that a patent has been granted by other jurisdictions is only an indicator, but not decisive evidence in this respect.
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Accompanying person
Without a proper indication on the topics on which an accompanying person is going to speak, a request for hearing such a person will not be granted by an OD.
Even if the accompanying person is properly announced and the topics properly indicated, and the other party agrees to hearing it, the OD has the discretion to hear or not the accompanying person. Experience shows that in opposition, accompanying persons rarely contribute positively to the discussion, as they merely defend the point of view of the party presenting it.
As there is no right for an accompanying person to speak before a deciding body of the EPO, the EPO will not provide for simultaneous interpretation in order to hear an accompanying person.
If the accompanying person is an employee of a party, then the party can give a power of attorney to the accompanying person. Then it can be heard.
When an accompanying person is allowed to address the deciding body, it is of utmost importance to properly brief it.
It can be quite dangerous to let an accompanying person speak freely and answer questions of the deciding body, as the accompanying person might, unwillingly, utter considerations which are not necessarily favourable to the party.
This does not mean that a representative cannot be accompanied by an “expert” of the party, as long as this person does not address the deciding body, e.g. an OD. A representative can always request a break in the OP if he needs to consult his expert.
Even if an accompanying person has been heard in first instance, it is not automatically heard before a board. The request has to be reiterated in appeal under the conditions of G 4/95, see T 520/07, Reasons 2, second §. See also R 3/08, Reasons 2.
In view of the valid RPBA, requesting for the first time in appeal to hear an accompanying person is doomed to fail.
Non-admissibility of AR 1bis
When a representative comes with the kind of arguments as those brought forward by the representative above here, the message given is quite clear: I am scrapping the bottom of the barrel and I count on your indulgence and compassion. This is never successful and rather pathetic, whether before the first instance or in appeal.
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