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T 776/17 – Discretion correctly exercised but nevertheless Substantial Procedural Violation

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Brief outline of the case

The OD decided that:

  • Claim 1 as granted lack N over D4=US 5,565,528 (Not in the ISR/EPO).
  • AR1 was not admitted in the procedure.
  • AR2 lacked of IS over CPA=D18=WO 02/22767 (Not in the ISR/EPO) + D21= Calculation of the proprietor based on D18 filed during OP before the OD
  • AR3 was allowable.

D18 was a late filed document as it was filed one month before the OP before the OD.

The proprietor appealed the decision of the OD to maintain the patent according to AR3.

The proprietor’s request were, inter alia, as follows:

  • as MR maintenance as granted
  • or according to one of AR1-4, all filed with the statement setting out the grounds of appeal.

The proprietor also requested that documents D18 and D19 not be admitted into the proceedings.

The opponent’s requests were, inter alia, as follows:

– the appeal be dismissed, implying that the patent be maintained on the basis of AR4 before the board corresponding to AR3 found allowable by the OD

AR3 before the board should not be admitted into the proceedings

The board decided that

  • the MR was not allowable for lack of N as decided by the OD
  • AR 1 lacked IS over D18 as claim 1 of AR1 did only benefit from a partial priority.
  • AR2 lacked N over D4
  • AR3.allowed the patent to be maintained in amended form

The file was remitted to the OD for the adaptation of the description

On the admissibility of D18

The board considered that the OD had correctly exercised its discretion in admitting D18 as it was considered relevant, especially since the OD gave a detailed reasoning why AR2 was lacking IS over D2.

On the admissibility of AR3 in appeal

The admittance of AR3 is governed by Art 12(4) RPBA07.

AR3 was submitted in response to the late-filed objection of lack of inventive step based on D18.

The objection of lack of IS based on D18 was raised for the first time during the OP before the OD.

The board held that the proprietor could not have been expected to react to the objection by filing the appropriate set of claims to overcome the objection during the OP.

The new objection raised complex new issues to which the appellant could not be expected to respond on the spot during the OP. Thus, the proprietor could only submit AR3 with the statement of grounds of appeal.

The board has thus decided to admit AR3 into the proceedings in accordance with Art 12(4) RPBA07.

I would think that the same conclusion would be reached under the RPBA20.

The substantial procedural violation

When faced with the admittance of an objection of IS based on D18 the proprietor requested adjournment of the OP.

Together with the filing of D18, the opponent had only raised a N objection based on this document. It is only during OP that the opponent also raised an IS objection based on D18 as the CPA together with the assertion that no effect had been shown to be present.

Not providing the proprietor with sufficient time to react to this attack by granting its request to adjourn the OP represents a violation of the appellant’s right to be heard within the meaning of Art 113(1).

Since admittance of the IS attack based on D18 led to the rejection of AR 2, the violation of the appellant’s right to be heard constitutes a substantial procedural violation.

The board further noted that the conclusion made here that a SPV occurred in relation to the opposition division’s admittance of D18 is not in contradiction to the board’s conclusion above that in admitting D18 the OD applied the right principle in a reasonable way.

The SPV did not arise due to the admittance of D18 but due to the fact that after this admittance, OP were not adjourned.

Comments

The decision is interesting in that it shows that a first instance division can correctly exercise its discretion by applying the right principle in a reasonable way, but at the same time commit a substantial procedural violation.

What appears important here is that the proprietor “protested” against the late filed document and especially against the late objection of lack of IS by requesting adjournment of the OP.

It is worth reminding what happened in T 1605/16. In this case, the proprietor filed during OP before the OD experimental data which was admitted by the OD.

As the opponent did not request a review of the experimental data submitted by the proprietor during OP, the board could not find any violation of the right to be heard of the opponent. Since the experimental data were the subject of the OD’s decision they were part of the appeal proceedings and could not be ignored in appeal.

Conclusion

If a late filed submission is admitted but at the same time brings about a fundamental change in the legal and factual framework of the opposition procedure, the affected party should request adjournment of the OP.

Not filing such a request can be to the detriment of the affected party.

On the other hand, systematically requesting adjournment of OP in view of a late filed submission is not a generally acceptable way to act or react.

Such a request has to remain reasonable. I experienced a proprietor requesting 4 days to gain knowledge of document of 4 pages. He got 2 hours and that was well payed. I also experienced an opponent filing on the day of the OP a 75 pages long EP application. When asked what the important parts to be consulted first were, he answered that it was the abstract. You can guess what happened.

This means that a late filed submission should be easily grasped in a reasonable time. If the submission is lengthy and complicated, the OD has always the possibility to decide adjournment of the OP. This can be done on its volition, which is very rare, but rather upon request of the affected party.

The party having submitted the late submission might then be faced with a different apportionment of costs for the new OP.

On the other hand, in view of the production pressure, the OD might also be inclined not to grant adjournment as the file will still not be decided on the day of the original OP. The door is then open for a possible substantial procedural violation.

Pragmatism should however prevail in the interest of all parties.

https://www.epo.org/law-practice/case-law-appeals/recent/t170776eu1.html

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Comments

2 replies on “T 776/17 – Discretion correctly exercised but nevertheless Substantial Procedural Violation”

Daniel, I like the Board’s approach but, if I may, I have a couple of questions.

First, looking at the 15 page written submission filed by Oppt one month before the OD OP’s, we see D18 introduced as a novelty attack. But in the letter’s lengthy and expansive riff on Art 56, D18 is not mentioned at all. I wonder, what if….Oppt had in this letter simply mentioned the possibility of designating D18 as a credible CPA (or even the best CPA) starting point for the obviousness enquiry? Just that, no going into detail. That would have put the proprietor on notice, with a month still to go. Would that not have completely changed the trajectory of the case, from that moment on? That would be my expectation.

Second, can you guess why Oppt did not in that submission mention the possibility of taking D18 as the CPA? Is this gamesmanship, was it negligence, an oversight, or is there some other plausible explanation (perhaps that the writer thought that to do so would be to disable the D18 novelty attack?

DXThomassays:

Dear Max Drei,

Thanks for your comment.

I do not think that a mere reference to D18 as a possible CPA would have helped at all and would “have completely changed the trajectory”. Only a proper complete reasoning on IS, preferably according to the PSA, submitted in advance might have changed the situation. .

The reason for not coming at the same time with an attack on N and on IS based on D18 is quite simple and has been discussed in a previous post. You cannot say in the same breath that a document is destroying N and can as well be used as CPA for an attack on IS. It is one or the other. If it is destroying N then all the features are know from a given document. If a document is taken as CPA, there are necessarily differences with the claimed subject-matter.

The sort of objection often seen in statements of grounds of opposition that if the claim is not N stricken by a given document, late filed or not, its subject-matter is not inventive only earns a mild smile from a division. This is not a proper argumentation of lack of IS, with or without using the PSA. Remember that the onus of proof lies with the opponent.

I suspect that when the opponent realised during OP that a N objection would not be successful, he then came with his attack on IS with D18. I might even have prepared it in advance the IS attack, but did not file it as he was probably convinced that the N attack would be successful. .

It is not just drawing the attention to a document which is sufficient to “put the proprietor on notice”. It should also be remembered that as long as the document is not admitted in the procedure, the proprietor has no reason to take position beside that due to its late filing it should not be admitted. In no case should he take position in substance before the OP. Even if the likelihood of the document to be accepted is high, it is best for the proprietor to study the document and prepare himself to fight it, but he should by no means take position in substance on that document.

By taking position on substance before the OP he would de facto admit the document into the procedure. There is case law on this, e.g. T 787/01, T 68/02 and T 780/05. A late filed document which has been discussed in writing cannot be deemed inadmissible at the opening of the OP! There was certainly enough time to study it.

I have seen a patent revoked as the proprietor refuted in writing before the OP the N attack based on two late filed documents. The proprietor considered that the documents could not be destroying N. To the surprise of the proprietor the OD and the BA followed the opponent. The proprietor should at least have waited the OP in order to challenge the admissibility of the documents. Admissibility of the late filed documents was never at stake neither before the OD nor the BA.

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