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Thursday, 7 June 2012

Wasting the time of the Enlarged Board of Appeal? G1/12


While the IPKat was perusing the pending Enlarged Board of Appeal referrals for the post yesterday, he also considered the case G1/12.  This Kat had overlooked this before because the subject matter seemed dull and procedural, but nudged by the blogmeister, now realises that the case is noteworthy precisely BECAUSE it is dull and procedural.  More specifically, the IPKat is wondering whether it is an appropriate use of the resources of the EBA to be deciding upon procedural requirements.

Reducing procedural complexity?
The EPO is generally rather good at avoiding procedural complexity, and manages to decide even complex inter partes procedures involving many parties with a lack of fuss that most national courts fail to achieve most of the time.  Yet every now and then it seems to tie itself up on a procedural matter, such as this case.

The situation is quite simple.  The proprietor of record was changed at the EPO during opposition proceedings.  The patent was revoked by the Opposition Division, and the representative filed an appeal naming the original proprietor, not the proprietor of record.

The question, also quite simple, is whether this is an error that can be later corrected, or whether this is an error that, once the deadline for appeal had passed, becomes fatal so that an appeal is considered never to have validly been filed.

The referring Board of Appeal in decision T 445/08 of 30 January 2012 reviewed a number of previous cases wherein various errors in the identification of the appellant in various cases had been variously correctable or not.  However, it considered itself unable to adjudicate the case in front of it without a referral to the Enlarged Board of Appeal, and so formulated the following questions to go to the EBA:
(1) When a notice of appeal, in compliance with Rule 99(1)(a) EPC, contains the name and the address of the appellant as provided in Rule 41(2)(c) EPC and it is alleged that the identification is wrong due to an error, the true intention having been to file on behalf of the legal person which should have filed the appeal, is a request for substituting this other legal or natural person admissible as a remedy to "deficiencies" provided by Rule 101(2) EPC?
(2) If the answer is yes, what kind of evidence is to be considered to establish the true intention?
(3) If the answer to the first question is no, may the appellant's intention nevertheless play a role and justify the application of Rule 139 EPC?
(4) If the answer to questions (1) and (3) is no, are there any possibilities other than restitutio in integrum (when applicable)?
The President of the EPO and the parties have been invited to comment by the end of June 2012.  Furthermore, in a notice in the March edition of the Official Journal of the EPO, third parties have been invited to comment by the same deadline.  So there is still time for any interested readers to tell the EBA what they think.

Returning the question of whether the EBA really is needed to adjudicate on such matters, the IPKat observes that the EBA for the purposes of referrals such as these consists of seven rather senior and experienced members, and that a referral also takes time and effort (and money) on behalf of the parties unlucky enough to be involved in the case.  An EBA referral lengthens the appeal procedure by a couple of years, probably, these not being noted for their speediness in general in the first place.

There have been a steady trickle of EBA cases relating to relatively narrow points of procedure.  The most spectacular has been perhaps G1/11 (still pending, and reported by the IPKat here), which asks:
Is a technical board of appeal or the Legal Board of Appeal competent to hear an appeal against an EPO examining division's decision – taken separately from its decision granting a patent or refusing the application – not to refund search fees under Rule 64(2) EPC?
Also still pending is G 1/10, concerning whether a decision of grant can be corrected during opposition proceedings (noted by the IPKat here).

A decided case from the EBA in recent years, G 4/08, concerns whether a PCT application in an official EPO language (eg French) can have the language of the proceedings changed into another EPO language (eg English) on regional phase entry before the EPO (it can’t).  The IPKat does not seem to have commented on this at the time, which just shows how dull it is.

In view of these cases, the IPKat is left wondering whether the EPO, in particular its Boards of Appeal, might consider to decide issues of procedure which relate either to the internal procedures of the EPO (G 1/11) or to rather rare situations (the other cases) without invoking the whole resources of the Enlarged Board of Appeal and its attendance procedures.  Do his dear readers think that this type of case is a good use of the EBA resources?

5 comments:

hollyipltd said...

The Enlarged Board is there to decided on matters in certain specific situations and 'dull and procedural' stuff is what the EPO does a lot of the time. The more it is used the better. If it finds itself over-worked the EPO has the ability to provide more resources for it.

Meldrew said...

Rather dull, rather boring, but rather important.

Boring decisions can have big effects.

Take for example the question "whether a decision of grant can be corrected during opposition proceedings".

Seems pretty boring eh? But let us suppose a case where the decision to grant erroneously names GB as a designated country despite this designation being specifically withdrawn at time of filing, and let us suppose that this GB designation is then the source of extended litigation in the UK courts?

Would it not be nice for the defendant (and legal certainty) if the erroneous decision to grant could be corrected in opposition proceedings?

To refuse correction during opposition of errors made during prosecution would place the EPO on a par with the laws of the Medes and Persians – an error made could never be corrected by those most adversely affected by the error.

The EPO should reach a grown up decision – that when they screw up they should fix the screw-up, regardless of which "division" made the screw up and which "division" is dealing with the matter.

See EP1495908 and subsequent litigation where the above circumstances apply.

Anonymous said...

Re. "dull and procedural", I was once involved in a similar case in which appeal had been filed in the name of a by then no-longer-existent opponent, rather than its supposed successor in title, with the added zest that said succession involved a convoluted paper trail in which tax avoidance had clearly been the overriding concern. While indeed procedural, this case was far from dull. Indeed, it was probably the most entertaining case in my career so far, although probably not nearly as enjoyable for the hapless MegaCorp behind the appealant, or for the BigLaw firm which unsuccessfully tried to salvage the case for them...

Anonymous said...

Since Doug Adams found 42 as the "Answer to the Ultimate Question of Life, The Universe, and Everything" there are no more worthwhile questions for the EBA.

Anonymous said...

Well - for me, with all due respect, this is a quite quite clear case:

This alleged "error" could not have happened if there was not representative; the "old" patentee would not have had the idea to file an appeal with regard to the revocation of a patent it does not own any more, the new owner would not have filed in the other name.

With a representative involved, it is not at all "obvious" that another entity was giving instructions to file an appeal.

With the increased diligence required from professional representatives, the appeal is - unfortunately - gone, i.e. deemed not to be filed (party has got no right to appeal).

I agree that I cannot understand that we need a board of appeal for this.

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