Preparing for the incoming opposition to French patent.

Starting with the EPO opposition practice but not only...

G1/21, OP by Vico without the consent of the partie - amicus curiae

Relatively to the question referred to the Enlarged Board of Appeal (EBA) in G1/21 : "is the conduct of oral proceedings in the form of a videoconference compatible with the right to oral proceedings as enshrined in Article 116(1) EPC if not all of the parties to the proceedings have given their consent to the conduct of oral proceedings in the form of a videoconference?"


The meaning of Article 116(1) should be firstly considered. The first sentence of this article reads “Oral proceedings shall take place either at the instance of the European Patent Office if it considers this to be expedient or at the request of any party to the proceedings.”

This wording is identical to the wording of the same article of CBE73.

At the time where the CBE73 applied, the first reference to a possible meeting as a video conference with one of the bodies of the EPO seems to appeared in OJ EPO 1997, 572 for the case oral proceedings (OP) being held before Examining Division (ED).

It should be admitted that at in 1997, the technology was sufficient to hold OP as a video conference.

However it should not be admitted that such proposed OP before ED were equivalent to OP being held in traditional form, i.e. with a physical attendance at the EPO premises. Indeed the availability of the OP as a videoconference by OJ EPO 1997, 572 was subject to a waiver declaration according to which the "right to oral proceedings being held in the traditional form at the EPO premises" was irrevocably renounced.

It was then clearly admitted by the EPO that the right to OP encompasses the right to OP with physical attendance.

This required waiver was still in place when the EPC was revised in 2000 (with its entry into force only in 2007).

This revision did not change a coma of the Article 116(1), so that it must be admitted that the right deduced from Art116(1) EPC 73 (among which the right to physically attend to a requested OP) remains the same under Art116(1) EPC2000.

Contrary to a position held by a board of appeal (T2320/16 pt1.5.9), it could not be deduced from the silence of the Art116(1) about the form of the OP that the intention of the legislator of 2000 (revising the EPO) was to not exclude the possibility of OP in video conference. In 2000, the possibility to hold OP in video conference was subject to a waiver of the parties as for an OP with physical attendance. Accordingly, irrespective of the fact that OP in video conference was clearly possible in 2000, the Legislator in 2000 was also of the knowledge that art 116(1) EPC73 was implicitly inducing the physical attendance for OP so that the choice not to amend this article together with the revision is a clear pointer that this right of OP with physical attendance remained unaltered by the revision.

To be complete it should be mentioned that the abandonment of the waiver in 2006 (OJ EPO 2006, 585) is irrelevant to construe the intention of the Legislator revising the EPC in 2000, even it the entry into force of the revision of 2000 was postponed to 2007.

In other words, in 2000 at the time where the OP by video conference was clearly possible, the basic rule was that the OP should be held physically unless for the party to waive his right to physical attendance by accepting a videoconference. If the Legislator wanted to reduce this right to OP of the parties to a possible OP by video, the Legislator should have amended the article 116(1) with the revision to limit this right to OP to an OP possibly by videoconference only.


Therefore it could be deduced from the Article 116(1) EPC that an OP held by videoconference is not compatible with the right to oral proceedings unless to have the parties waived their right to OP with physical attendance.


As a side notes relative to T2320/16,

I. Re. pt. 1.5.2 : the board distinguishes OP from telephone conference (TC) in that a prerequisite of OP is that the parties can see the member of the Board and vice versa. But this prerequisite is not mention in Art 116(1) and TC are not referred to in the EPC. Accordingly, arguendo, following the reasoning of the board in T2320/16 should result in a possible right to OP being fulfilled by an OP held by TC, these proceedings being “oral”. The absurd result obtained proves that the absence of exclusion of oral proceedings by videoconference (as well as the absence of exclusion of OP by TC) could not be deduced as resulting as a right to OP fulfilled by an OP held by videoconference.

II. Re. pt. 1.5.10 : the board states “Furthermore, the board doubts whether procedural law in the contracting states is sufficiently developed and harmonised with regard to the status of oral proceedings by videoconference to the extent that the latter could be considered as one of the "principles of procedural law generally recognised in the contracting states" . This statement refers to the procedural law of the contracting states nowadays 2020/2021. If the current procedural law of the contracting states it not yet sufficiently developed regarding the status of OP by videoconference, it is a further pointer that in 2000 at the time of the revision, the intent of the Legislator revision the EPC was not to consider that the right to OP of art116(1), left unamended, was fulfilled by OP by videoconference without positive indication thereof in the wording of the article

T2294/16-D, Sicam C/ Snap-on Equipement : confirms that late filed CGK has a peculiar treatment for admissibility

https://www.epo.org/.../t162294eu1.pdf

POI : incidentally the ruling of the BoA confirms that the late evidence filed in the grounds of appeal should be admitted because it relates to CGK

pt 2 : "The board sees no reason not to admit document D7 into the appeal proceedings, as it merely provides evidence for the knowledge of the person skilled in the art."

In the present case, the respondent did not object to the admission of this document, but the above-mentioned ruling is independent from this particular fact.

it is worthnoting that here the A12(4) RPBA 2007 was applicable instead of A12(4)-(6) RPBA2020

Nevertheless, this decision seems to go back the old principle that CGK are never late, while CLBA V.A.4.13.1.c) is summarizing the caselaw in the following way : "Belated submissions may be taken into account as evidence of alleged common general knowledge, where such knowledge has been disputed"

UK Supreme Court, 2020, Aug 26, Huawei+ et al. v Conversant+ : courts has jurisdiction for injunction is no agreement on a global Frand licence

https://www.supremecourt.uk/live/court-01.html

Hot from the press ! Appeals are dismissed !

Unanimous decision of the Supreme Court panel that, as a result of ETSI IPR policy (thus because of the contractual background), the Court has a jurisdiction to grant an injunction in case the parties do not agree on a global FRAND licence

T1135/15-D, Neopost Technologies C/ Francotyp-Postalia : broader request in appeal held admissible

https://www.epo.org/law-practice/case-law-appeals/pdf/t151135fu1.pdf

POI : Main request in appeal broader than requests before OD is possible but may be considered under A12(4)RPBA2007 for admissibility

In principle it is not abusive (see pt.2.4)

In particular, no new feature have been introduced relative to prior requests

The other party did not raise additionnal issues for this request, only IA (see pt.2.7)

Having submitted this request would not have change the OD’s decision (see pt.2.9) so that not filing it earlier has not delay the proceedings

This request could have been filed earlier but should not have been filed earlier

See pt.2.10

T1418/17-C, Arnold & Shinjo c/ Richard Bergner : ltd revision on evaluation of evidence by OD + R13(1)RPBA2020 : admission of AR in answer to summons to OP

https://www.epo.org/.../t171418du1.pdf

(in German)

3 POI:

1. Evaluation of evidence by dpt of 1st instance : Revision by BoA limited to mistakes (of law, fact or logic)

2. RPBA2020 : abridged form for the reasons (w/o consent of parties) if BoA agrees with reasons of 1st instance Dpt

3. A13(1)RPBA2020 + trans. provisions : AuxReq filed after summons to OP admitted (// to AuxReq2 in OD, despite AR2 not in the answer to appeal)

IN DETAILS

1. Evaluation of evidence by dpt of 1st instance : Revision by BoA limited to mistakes

the BoA summarizes the CLBA II.G.4.2.1.b) quoting :

"Unless there is a mistake in the application of the law (e.g. a wrong standard of proof was applied), a BoA should therefore only revoke the evidence assessment of a first-instance panel and replace it with its own if this can be identified

(i) did not take essential aspects into account (T 1553/07, pt.20), or

(ii) has included irrelevant considerations (see T 2565/11 pt.1.2.1, 1st case) or

(iii) shows a violation of the laws of thought, such as logical errors and contradictions in the reasoning (see T 2565/11 pt.1.2.1, 2nd case)."

see p.1.3

2. Abridged form for the reasons (w/o consent of parties):

The BoA only refers to A15(8) RPBA to adopt an abridged, without taking care of noting parties' consent.

This is specific for the case of the BoA approving the finding of the 1st instance department. Otherwise, the adriged form could only be adopted in general with the approval of the parties (A15(7)RPBA).

see pts.1.4-1.5

3. RPBA2020 + trans. provisions : AuxReq filed after summons to OP admitted

Aux Req (eventually approved) has been filed in answer to the summons to OP in appeal (on Dec 2019)

refering to RPBA, the BoA applies A13(1) RPBA2020 (R13(2)RPBA2020 not applicable) "change of a party's case" when admitting this request because it was not filed in the anwser to appeal

However this late AR in appeal corresponds to AuxReq 2 before OP (unless for the abandonned method claims)

BoA asserts the following criteria:

- state of the proceedings : 7 months before OP, "adequate time was available"

- "prima facie" resolution of questions and objections raised by a party in the appeal proceedings: cancellation of method claims solve issues (lack of novelty resulting in the non allowability of main Request)

- changes give rise to give new objections + economy of the procedure : not on A84 or A123 as this AR consist of a combination of claims 1, 3 and 4 of B1 + on others points : not susbtantiated by the other party + combination of claims-B1 => not surprising

Noteworthy BoA insisted more on the fact that this AR is a combination of granted claims than on the fact that is consisted merely of a previous AR in OD (only in pt.3.2 for assertign complexity)

see pts.3

T1930/14-D, Hoffmann c/ Boehringer : clm construction & NO convergence of requests

https://www.epo.org/.../t141930eu1.html

3 POI:

  1. claimed purpose in a method => 0 limitation if tech effect

  2. construction with the desc only if claim not clear and unambiguous

  3. convergence of claim requests : not mandatory in Art.12(4) RPBA2007

IN DETAILS :

1. Claimed purpose (or use) in a method => limitation as in T1931/14 ?:

No when the claimed purpose is a technical effect necessarily achieved by the process pt.9, + //T304/08 cf T1931/14 pt.2.2.3-2.2.4

2. Claim construction in ligth of the desc:

Not "if the wording of a clm is in itself clear and unambiguous" "restrictive def contained in the desc of a term present in the clm must be disregarded" pt.10 cf T197/10-B & T2221/10-B // II.A.6.3.1

3. Convergence of claim requests:

AuxReq7 admissible despite non convergence / preceding AuxReq "Convergence of clm requests is not referred to in Art.12(4) RPBA2007 as a mandatory criterion for [inadmissibility]" pt.34, 53 & pt.VIII(p.20)

on twitter

T1050/19-D, Trumpf c/ Drägerwerk : abridged form for late doc admitted before OD & for late submissions in Appeal

https://www.epo.org/.../t191050du1.pdf

(in German)

POI:

  1. seeking consent for the abridged form for findings of OD : re. admission of late document

  2. unnamed abridged form for admission of late submissions after summons to OP

  3. IA reasoning during OP is not admitted despite change of the BoA's opinion on novelty after a negative preliminary opinion

IN DETAILS:

1. Seeking consent for the abridged form for findings of OD

BoA searched consent of the parties for the abridged form on any findings in so far the BoA follows the Opposition Division.

This consent does not appear to be mandatory in that case : A15(8) RPBA is to be read independently from A15(7° RPBA, where consent is needed (see above T1418/17, 2nd POI)

In particular, the BoA approved the OD for admission of late filed documents before OD, as a consequence BoA simply indicates in the grounds: "the board sees no reason to set aside the opposition division's discretionary decision regarding the admission of D8 and D9".

see pt.1

Take away : It is to be expected that the BoAs will less ans less revise effectively the disctretionary power of the OD to admit (or refuse) lated filed document.

& BTW : a request for oral proceedings could not be late, as it is not a change of the submissions but the exercise of the right to be heard

2. Unnamed abridged form for admission of late submissions after summons to OP

for admitting late submissions as an answer to the summons to OP (under RPBA2020) the BoA merely states that it does neither affect the procedural economy nor change the result of the decision to be issued

see pt.2

it is a particular short reasoning for admission under A13(1) RPBA 2020, that the BoA quoted (It misses in particular other criteria than procedural economy, like complexity and justification of late filing). It is all the more short that the correct provisions seems here to be A13(2) RPBA (summons was issued on april 2020), which adds the criteria of justification with cogent reasons.

Take away : the BoA's approach has been more practical than formal depsite the current trend of the RPBA to be (overly ?) procedural

3. IA reasoning during OP is not admitted despite change of the BoA's opinion

As should be expected, the fact the preliminary opinion is negative on novelty consistently with the impugned decision, is not an excuse for the Respondent/Opponent not to have proposed a substantiated reasoning of inventive step (reference to submissions in opposition being no reasoning). This should have been made at the time of the answer to appeal, since the Appelant/Patent Proprietor explained a novelty reasoning on its grounds of appeal. and this is respective of knowing the position of the BoA before the OP, because no inventive step reasoning was on file before OP : "Trotz Kenntnis dieser vorläufigen Einschätzung der Kammer wurde vor der mündlichen Verhandlung kein Vortrag zur erfinderischen Tätigkeit unterbreitet"

see pt.4.3