15 May 2018

T 2154/13 - Not attending OP before OD

Key points

  • The patent proprietor did not attend oral proceedings before the OD, and then filed new auxiliary requests in appeal. The Board does not admit the requests.
  • " The Board considers that non-attendance at oral proceedings before the opposition division does not in itself justify the submission of new requests in appeal proceedings as a (presumed) reaction to the course of the oral proceedings in which the submitting party deliberately did not participate." 
  • "Following the principle according to which the appellant should be prevented from seeking unjustified procedural advantages in disregard of procedural economy and to the disadvantage of other parties (nemo auditur propriam turpitudinem allegans), the Board therefore decides not to admit auxiliary requests 1-3 into the appeal proceedings."
  • As a comment, " nemo auditur propriam turpitudinem allegans"  can be translated as "no one can be heard to invoke his own turpitude (=depraved behavior)". That seems different from what the Board states in English.  



EPO T 2154/13 -  link


3. Auxiliary requests - Admittance into the proceedings
3.1 Both respondents argued that none of these auxiliary requests should be admitted, because they could and should have been filed before the opposition division.
No argument on the admissibility of these requests has been submitted by the appellants.
3.2 The Board notes that the patent was revoked for lack of novelty in view of the disclosure of D6, and that this objection was raised and discussed only at the oral proceedings before the opposition division in the absence of the appellants.
The procedural conduct of the appellants raises the issue whether this party, exercising due care in its procedural actions, should have submitted these requests during the opposition proceedings. This question is strictly related to the application of Article 12(4) RPBA, which states that the Board has the discretionary power not to admit requests which could have been presented in the proceedings leading to the decision under appeal.

The Board considers that non-attendance at oral proceedings before the opposition division does not in itself justify the submission of new requests in appeal proceedings as a (presumed) reaction to the course of the oral proceedings in which the submitting party deliberately did not participate.
In addition, as also noted in the appealed decision (see point 4.3 of the reasons), the appellants were - or should have been - well aware of the fact that respondent 2 had raised an objection of lack of inventive step based on D6 as the closest prior art. Hence, auxiliary requests aimed at overcoming these objections could and should have been submitted during the opposition proceedings.
Following the principle according to which the appellant should be prevented from seeking unjustified procedural advantages in disregard of procedural economy and to the disadvantage of other parties (nemo auditur propriam turpitudinem allegans), the Board therefore decides not to admit auxiliary requests 1-3 into the appeal proceedings.

2 comments:

  1. Not sure that "deliberately did not participate" is enough to prove moral turpitude. For example, suppose a poor patentee from the other end of the world is using an EPO representative firm out on the edge of EPC-land (say, Bulgaria). The Summons from the OD is 100% positive for patentee, even enquiring whether the Opponent still wants his oral proceedings. Patentee, strapped for cash decides (deliberately) NOT to attend the scheduled orals.

    Then suppose the OD flips, at orals, and revokes the patent.

    If I were the Board, I might very well allow the patentee a slew of further aux requests, despite its not turning up to OD orals. You?

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  2. The latin phrase used by the Board is stronger than the English reason: "the principle according to which the appellant should be prevented from seeking unjustified procedural advantages in disregard of procedural economy and to the disadvantage of other parties". However, the English sentence leaves open why the procedural advantage is unjustified in this case.

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