- “2.1 The appellant requested that a technical expert, Prof. [R.], be allowed to provide an expert testimony during the oral proceedings. However, the Board considers itself to be sufficiently competent to decide the merits of the case without use of the technical assistance of experts, either provided by the parties or appointed independently by the Board. The Board therefore did not proceed to the hearing of the expert.”
EPO T 0471/16 - link
the declaration of Prof. [R.] at issue:
https://register.epo.org/application?documentId=EZE6S6J87859DSU&number=EP10728679&lng=en&npl=false
2. Hearing of technical expert
2.1 The appellant requested that a technical expert, Prof. [R.], be allowed to provide an expert testimony during the oral proceedings.
2.2 However, the Board considers itself to be sufficiently competent to decide the merits of the case without use of the technical assistance of experts, either provided by the parties or appointed independently by the Board. The Board therefore did not proceed to the hearing of the expert.
Reader X wrote:
ReplyDeleteA similar situation is to be found in T 480/11.
I have never seen a BA accepting an outside expert!
In first instance both the opponent would have had their experts acting as accompanying persons.
They both missed the opportunity, so it had to be done in appeal. The BA admitted the statements, but dismissed the declaration of the "expert" as being tainted by hindsight.
Technical experts of the parties rarely bring matters forward.
The opponent's expert will always claim that the person skilled in the art new the invention for a long time, and that of the proprietor that the patent is the seventh world marvel.
A lot of money could be saved by the parties by not coming up with such requests!
In T 421/16, a party tried during OP to have is accompanying person heard as expert during OP. No surprise that it was refused.
It is very rare that a witness is heard before a BA, one example T 2003/08. With the RPBA 20 it will be a surprise if it comes to it!
I thank reader X for his comments, but it's important to distinguish between witnesses under Article 117(1)(d) and "opinions by experts" under Article 117(1)(e). Witnesses testify about specific facts they have seen/observed themselves, e.g. the content of an oral disclosure they themselves attended. In this case, the matter was Article 117(1)(e) as I understand it, which is more rare. Note that an expert can be heard (Rule 117) but this does not make it a witness hearing. A professor can be a witness (e.g. about a lecture he/she gave or experiments carried out by him/her) but also an expert (giving evidence about e.g. C.G.K. at the relevant date).
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