R 0012/22 - Why we must announce accompanying persons in advance

Key points

• The Enlarged Board (three member panel) in translation: "G 4/95 is aimed at the case where an accompanying person has special knowledge or experience in relation to the case and wishes to use this knowledge to present his case at the oral hearing. G 4/95 aims to prevent a party from gaining an advantage over opposing parties by bringing in such an accompanying person, who do not have such knowledge or experience and are therefore unable to respond adequately to such presentations at the oral hearing. 
• "For accompanying persons without such knowledge or experience [e.g. trainee patent attorneys], an announcement of their attendance and the topic on which they are to present their case would therefore not be necessary. "
•  "G 4/95 therefore aims to ensure equality of arms as a precautionary measure, even if this would be the case in individual cases without such an announcement, since [in the individual case, viz. the trainee patent attorney case] it is not intended that the accompanying person's presentation should go beyond the content of what would be expected from an authorised representative." ( "G 4/95 will also die Waffengleichheit vorsorglich sicherstellen, auch wenn diese in Einzelfällen ohne eine derartige Ankündigung gegeben wäre, da nicht beabsichtigt ist, dass der Vortrag der Begleitperson inhaltlich über den von einem zugelassen Vertreter zu erwartenden Vortrag hinausgeht.") 
• g 4/95, headnote 2 in part: ""(b) The following main criteria should be considered by the EPO when exercising its discretion to allow the making of oral submissions by an accompanying person in opposition or opposition appeal proceedings:

  (i) The professional representative should request permission for such oral submissions to be made. The request should state the name and qualifications of the accompanying person, and should specify the subject-matter of the proposed oral submissions.

  (ii) The request should be made sufficiently in advance of the oral proceedings so that all opposing parties are able properly to prepare themselves in relation to the proposed oral submissions

EPO 

You can find the link to the decision and an extract of it after the jump.

T 1890/15 - Experts oral proceedings Boards

Key points

• The Board notes in an obiter paragraph that " Should oral submissions by an accompanying person be considered and intended to be oral evidence comparable to a written statement ("affidavit") of said person, the same criteria as for the admission of late filed facts and evidence should apply. Indeed, submissions by an accompanying person involving the presentation of oral evidence will by definition relate to factual circumstances which will require that the opposing party be given an adequate and proper opportunity to present facts, evidence and arguments in reply (Article 13(2) RPBA). In the absence of exceptional circumstances and of an agreement by the opposing party, a request for hearing an accompanying person on specific facts which is filed either shortly before the date appointed for oral proceedings, or at the oral proceedings, will therefore be refused. " 
• As a comment, this may possibly mean that the Board notes that where an affidavit filed during the oral proceedings to evidence a certain fact would not be admissible, an oral submission by an accompanying person evidencing such a fact should not be a way to circumvent this; also to safeguard the right of the other party to provide counter-evidence to any facts asserted during such oral submissions. Note that oral submissions by accompanying persons are, as a matter of law, entirely different from a formal witness hearing under Art. 117 EPC. 
• The decision was taken already on 19.12.2017, the written decision was issued on 30.11.2018 so the Board needed some time for drafting the decision (perhaps for one of the other paragraphs of the decision, or for the one discussed above).

EPO T 1890/15 -  link



2.6 Although not relevant for its decision, the Board notes that in decision G 4/95, the Enlarged Board did not accept that Article 117 EPC provides a legal basis for hearing oral submissions by an accompanying person involving the presentation of facts and evidence (G 4/95, OJ 1996, 412, point 8 of the Reasons). In view of the reference to Article 117 EPC in general, it is not entirely clear whether the Enlarged Board considered that an accompanying person, in particular a technical expert, gives oral evidence by way of making oral submissions at the oral proceedings, or merely presents (legal or technical) arguments in place of the presentation of the case (pleading) by the professional representative. Should oral submissions by an accompanying person be considered and intended to be oral evidence comparable to a written statement ("affidavit") of said person, the same criteria as for the admission of late filed facts and evidence should apply. Indeed, submissions by an accompanying person involving the presentation of oral evidence will by definition relate to factual circumstances which will require that the opposing party be given an adequate and proper opportunity to present facts, evidence and arguments in reply (Article 13(2) RPBA). In the absence of exceptional circumstances and of an agreement by the opposing party, a request for hearing an accompanying person on specific facts which is filed either shortly before the date appointed for oral proceedings, or at the oral proceedings, will therefore be refused. This is in line with the conclusions in point 10 of the Reasons of G 4/95.

T 0661/14 - Former Examiner speaks

Key points

• " Since three authorised professional representatives were present at appellant 2's [opponent's]  side during the oral proceedings, the Board decided to authorise the [additional] accompanying person [for the opponent] to address the Board under their supervision." 
• From the file, the person was a former patent examiner with EPO and joined the patent attorney firm in July 2017 (straight from the EPO, it seems). The oral proceeding were held on 13 October 2017. 
• The Board disagrees with opponents arguments, considers the Main Requests allowable and remits the case with an order to maintain the patent in amended form accordingly.  

EPO T 0661/14 -  link

Reasons for the Decision

1. Accompanying person - right to speak on legal issues

Appellant 1 [proprietor] holds the view that accompanying persons at oral proceedings who are not qualified patent attorneys can only be allowed by the Board to speak on technical issues, and not to make submissions on legal issues. Hence, for appellant 1 the person accompanying appellant 2's [opponent's] authorised representative(s) at the oral proceedings should not be allowed to make submissions on legal issues.

The Board disagrees.

There is no reason, when dealing with the question whether an accompanying person may make oral submissions before the the Board, to make a distinction between legal and technical issues, provided that these submissions are made under the control and supervision of an authorised professional representative. In this respect the Board refers to the Case Law of the Boards of Appeal, 8th Edition 2016, III.R.5.1. Since three authorised professional representatives were present at appellant 2's side during the oral proceedings, the Board decided to authorise the accompanying person to address the Board under their supervision.

T 2036/12 - The CEO wishes to speak

Key points

• The OD had not allowed the CEO of the patent proprietor, who was present during the oral proceedings in addition to the professional representative, to speak. The Board notes that a CEO of a company (with an office in Germany) "is entitled to be a signatory" (in translation) and therefore can at any time speak. Therefore, not allowing the CEO to speak was a substantial procedural violation, even though the OD had allowed the professional representative to speak. 

EPO T 2036/12 -  link

1. Die Beschwerde ist zulässig.

2. Rechtliches Gehör (Artikel 113(1) EPÜ).

2.1 Mit der Beschwerdebegründung hatte die Beschwerdeführerin gerügt, dass die Einspruchsabteilung ihr das rechtliche Gehör gemäß Artikel 113(1) EPÜ versagt habe, da Herrn Schneemelcher, der Geschäftsführer der Patentinhaberin sei, in der mündlichen Verhandlung vor der Einspruchsabteilung nicht erlaubt worden war, zur Frage der erfinderischen Tätigkeit vorzutragen. Die Einspruchsabteilung habe in unzutreffender Weise in diesem Zusammenhang auf die Entscheidung G 4/95 der Großen Beschwerdekammer verwiesen.

T 2552/11 - Accompanying person

T 2552/11

For the decision, click here ("online on"  date 23.07.2015

Key points

• The request for allowing an accompanying person to speak should specify the subject-matter on which the person will speak. The present Board applies this requirement strictly.

Reasons for the Decision

1. The appeal is admissible.

2. Oral submissions by the accompanying person

2.1 The appellant announced in its letter dated 18 March 2015 that "Dr. Christoph Jeworrek will give a statement in court as an expert for chemistry. He will refer to the prior art documents cited by the opponent".

The appellant did not provide any evidence indicating that Mr. Jeworrek met the requirements of Article 133 EPC to represent the appellant, nor could his name be found in the list of professional representatives before the EPO.

During the oral proceedings of 14 April 2015 the respondent requested that Mr. Jeworrek not be heard. It emphasised that the appellant had not specified on what subject Mr. Jeworrek was supposed to speak.

2.2 According to decision G 04/95 (OJ EPO 1996, 412), oral submissions by an accompanying person are not a matter of right, but are subject to the permission and discretion of the EPO (see point (3)(a) of the order).

The criteria to be considered by the EPO when exercising this discretion are specified in this decision as follows (see point (3) of the order):

"(i) The professional representative should request permission for such oral submissions to be made. The request should state the name and qualifications of the accompanying person, and should specify the subject-matter of the proposed oral submissions.

(ii) The request should be made sufficiently in advance of the oral proceedings so that all opposing parties are able properly to prepare themselves in relation to the proposed oral submissions.

(iii) ... ."

The statement that Mr. Jeworrek would "refer to the prior art documents cited by the opponent" is very general.

Therefore, the information provided by the appellant about the subject-matter of Mr. Jeworrek's proposed oral submissions was not sufficient to enable the respondent to prepare itself properly.

For these reasons, the board exercised the discretion referred to in G 04/95 by not permitting oral submissions from Mr. Jeworrek.