Key points
- A new draft of the RPBA was published (here).
- The text is made gender neutral, and the term "Chairman" is replaced by "Chair" .
- At the beginning of each year, the Boards will publish an overview of the cases where they will likely hold oral proceedings in the upcoming year, or will issue a communication or a decision in written proceedings.
- Under proposed new Art. 11 RPBA, cases are as a rule not remitted back to the first instance, unless there are special reasons for a remittal. The aim is to reduce the "ping pong" between the Boards and the first instance departments. The explanatory remarks state that it is expected that "more issues will be raised and dealt with in the proceedings at first instance" reducing the need for a remittal.
- As a
comment, I don't see as of yet how this proposal aligns with the Board’s wish
to be a review body. I understand that a review body doesn’t examine
matters for the first time in appeal – meaning that it is “cassatory” and
remits the case if the impugned decision contains an error and is set
aside.
It is interesting that the explanatory note uses “dealt with” – does this mean “dealt with by the parties”, or “decided on by the first instance department”?
- New Article 12(4) which aims to "reverse the approach of current Art 12(4)". Basically, parts of the Statement of grounds (or reply) that do not comply "with the requirements of paragraph 2" are admitted at the discretion of the Board, "unless the party demonstrates that this part was admissibly raised and maintained in the proceedings leading to the decision under appeal". That exception is added in the revised draft.
- Paragraph 2 states that a party's appeal case shall be directed to the [requests, facts, objections, arguments and evidence] on which the decision under appeal was based. I assume that these are the “requirements of paragraph 2” which Art.12(4) refers to.
- The “power to hold inadmissible” facts, requests and evidence that should have been filed in the first instance proceedings, is moved to Article 12(6); Art. 12(6) clarifies that they are admitted only if the circumstances of the appeal case justify their admittance; and that this also applies to objections, and to “facts, objections evidence and requests which were no longer maintained”.
- I note that “were no longer maintained” appears to encompass both actively withdrawing a request in the first instance proceedings, as well as implicit waiver / implicit abandonment. The latter seems mostly relevant for “objections”, that term includes attacks. For example a novelty attack that is only mentioned briefly in a Notice of opposition, is not discussed at all before the OD, and is then relied on in appeal. Implicit waiver is of course a difficult thing to proof. If we call the party submitting the fact (objection, evidence, or request) the “moving party” and the opposing party the “non-moving party”, Art.12(6) suggests that the non-moving party has the burden of proof to show implicit waiver, but the “unless” exception of Art. 12(4) appears to lay the burden of proof with the moving party that the matter was maintained.
- Hence, the RPBA are possibly moving to a rule like the doctrine of “preserving issues/errors/arguments for appeal” as used in US appellate civil procedure. That doctrine seems highly complex. The following from a US law website is illustrative: “The four saddest words from the Court of Appeal are these: "Great argument; not preserved." Alas, even the sharpest legal mind and best honed rhetoric cannot resurrect a terrific argument that was not properly preserved for appellate review.”
- Comments are welcome! And hopefully the user conference on 5 December will shed more light on it, the same can be hoped for the final RPA's with the final explanatory notes.
About 25 years ago, I asked the TBA to remit to the OD. Its answer: No need. We can already infer from its lucid Interlocutory Decision what it would have decided on the issue you want to be remitted.
ReplyDeleteIn England, of course, there has never been any ping-pong playing because the first instance Judge always writes a careful reasoned Decision that covers all the issues in dispute, so the case need only go once upwards to the court of appeal. Look out for words in such Decisions along the lines of "But in case I am wrong on this issue, I must go on to consider (next issue up for consideration)"
And at the EPO? Fat chance any ED or OD will ever write an English-style Decision. These days, attacking the backlog is all that matters. When both the Examiners and the Appeal Boards attack their respective backlogs without respect for each other, the backlog can only grow, and things like "quality" and "procedural economy" becomes a sad bad joke.
I fully agree that in a system wherein appeal is restricted to mere review for errors, the first instance decision should cover all grounds, like in the UK. Otherwise ping-pong is built in. I also agree that with both the Boards and the first instance attacking their respective backlogs, both will issue narrow decisions (if an ED can refuse under Article 84, why deal with inventive step?). But I don't think it is a "bad joke", just two independent bodies each coping with its own backlogs. Justice delayed is justice denied, especially with a 20 year patent term running.
DeleteIn response to Max Drei, a comment from the reader "Schauinsland" submitted by email:
DeleteIt is an old discussion whether an ED or an OD should deal with all grounds at once.
When there is a problem of sufficiency or of added matter it appears not logical to decide on novelty or inventive step.
If it is not possible to reproduce the invention what on earth does it bring to decide whether it is novel/inventive or not? If the insufficiency is not absolute, then for the parts which are sufficiently disclosed, it would be possible to give an opinion on novelty or inventive step, but only for that part.
When there is added-matter in an independent claim, this claim does not have an effective date. It is thus not possible to decide which prior art is relevant. In examination.
In case of insufficiency or in case of added matter, auxiliary requests should be filed in order to attempt to overcome the objections. Unless there is at least one auxiliary request filed to this effect that a decision might be taken on other aspects like novelty or inventive step.
Although infrequent, there are cases when there is not only a problem of sufficiency, but as well a problem of added matter. The ED or OD has the discretion to decide on which grounds the application will be refused or the patent revoked. Asking in such a situation the ED or the OD to decide on all grounds, is simply illusory.
In any case, in view of present Art 12(4) RPBA, it is always advisable to file an auxiliary request in the attempt to overcome the objection. Waiting until the appeal is in general too late. With the new RPBA it might become even more difficult.
In opposition, the situation is much trickier when it comes to added matter, as then the proprietor might sit in an inescapable trap. If this is the case, then a decision on novelty or inventive step is useless. I would even claim that, should an OD continue examination with novelty or inventive step, commits a procedural violation.
The only case which can be saved is in presence on an intermediate generalisation. Such a patent can be saved, in that the claim is completed with the necessary features. But there again, if the proprietor should file an auxiliary request.
What has been said above here applies mutatis mutandis in cases of lack of novelty or inventive step.
It is thus to the applicant or the proprietor to decide whether he wants a more complete decision by filing auxiliary requests to that effect. If the applicant or proprietor does not file a request to that effect, why should the ED or the OD spend time on one or more virtual requests?
What seems much more important is in a case of ping pong, when the file is send back to the ED or the OD, it should get the highest priority, i.e. a possible new oral proceeding should not be scheduled 6 months ahead, but not much more over the two months according to R 115. I have seen cases were the file was left sleeping for more than 3 years! This is not normal.
If after remittal, the case goes back to the BA, then the BA should as well deal with the case with high priority. In view of the numerous OP at the BA, the time limit might be a bit further away, but the file should not sleep there more than 6 months.
It should be possible for the IT systems of the EPO to specially mark such files. What it needs is a will to implement such a system, rather than to claim that an ED or an OD should deliver “British” decisions.
The replies bring me to a realisation that one cannot usefully adopt, in the EPO solutions, that work well in English litigation. Here's why.
DeleteAn English patent action is held before a judge, sitting alone. That judge decides questions of fact and law. Facts are decided after intensive scrutiny of the cross-examination (about 6 feet in front of the judge's nose) of the opposed technical experts.The barrister is a mouthpiece for the technical expert on the other side. The facts of the case emerge and are laid bare. They are not appealable.
The judge is a former patents barrister, with 20 or so years of experience, plotting with his (or her) client in (formerly) smoke-filled rooms, how to get the desired result out of the judge. English patents judges know all the tricks: they have had 20 years of experience in pulling them. Nobody pulls the wool over their eyes.
Contrast that, gentle readers, with the experience of an EPO OD. Taking the issues one at a time, and stopping as soon as somerthing "sticks" seems to be about the limit of their competence.
In England, one in three losers (at most) appeals. Mostly, an appeal is hopeless, because the facts are established and the judge does not get the law wrong. And in the EPO?
I have no solution for the lengthy ping-pong games played by litigants at the EPO. All I know is that the Boards of Appeal cannot themselves solve the problems. The Examiners have to play their role competently and fairly too.