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Wednesday, 2 July 2014

Guidelines for interlocutory revision need revision


The European Patent Office (EPO) recently published its review of case law from 2012 and 2013. The IPKat’s eye was caught by a statement criticising the current EPO Guidelines on interlocutory revision (E-X, 7.1). (Merpel notes that when economist Paul Krugman strays from popular topics into the arcane and academic in his New York Times column, he flags this in the headline with the word “wonkish”; a similar warning might be appropriate here for those not innately excited by EPO procedural law.)
A rare photo of the IPKat with Nobel Laureate
Krugman, contemplating all things wonkish



Interlocutory revision requires EPO first instance departments to review any appeals filed against their decisions. If the appeal is well founded and overcomes the stated reasons for the decision, then the appeal is not sent to the appeal board. Instead the case is taken back up by the first instance department and the appeal is terminated.



As an example, if an application is refused for lack of novelty, and the applicant files a combination of claims 1 and 2 which is clearly novel, the Examining Division should grant interlocutory revision and begin examination of inventive step. If, however, the grounds of the decision dealt with the inventive step issue (e.g. it held that a combination of claims 1 and 2 would lack inventive step), then interlocutory revision is not granted because the amendments don’t overcome all of the stated reasons for the decision.



The Guidelines say that for interlocutory revision to apply, the amendments must not only deal with the stated grounds for the decision but also any objections raised obiter dictum in the decision, or in any earlier communication, or in oral proceedings.



Wrong, according to decision T 1060/13 which the authors of the case law review summarise as follows (edited slightly for readability):



According to T 1060/13 it is established case law of the boards of appeal that, in the event that the appeal is objectively to be considered as admissible and well-founded, the department of first instance is obliged to grant interlocutory revision; there is no room for discretion in the interests of procedural efficiency.

Official Journal Supplementary publication 5, 2014
An appeal is to be considered "well-founded" if at least the main request submitted with the appeal includes amendments which clearly meet the objections on which the decision relies. That there are other objections which have not been removed but which were not the subject of the contested decision cannot preclude the application of Art. 109(1) EPC 1973.

Thus, even if the amendments raise new objections not yet discussed, interlocutory revision must be allowed since an applicant should have the right to examination at two instances. Objections or remarks made in an obiter dictum of a decision under appeal cannot be taken into account (see e.g. T 1640/06 and T 726/10; the board disagreed with T 1034/11); the board pointed out that there were inconsistencies between the Guidelines and the established case law in this respect (Guidelines E-X, 7.4.2 – also in the current September 2013 version). 

What about Article 123(2), is it a special case? Does it give examiners extra power to refuse to consider amendments? The Guidelines thought so. In the opening sentence, before dealing with objections that might have been raised earlier in the procedure, an absolute rule is set down about interlocutory revision where Article 123(2) is breached:



If amendments made to the independent claims clearly do not meet the requirements of Art. 123(2), interlocutory revision should not be granted, but the Division should send the file to the Boards of Appeal.

This is also wrong, said the Board:



Conversely, based on the established case law, interlocutory revision must be granted if the amendments clearly overcome the grounds for refusal, even if further new objections arise […], i.e. irrespective of whether new objections under Article 123(2) EPC or whether previous objections or objections mentioned in an obiter dictum were raised by the first-instance department. The above applies equally to the Guidelines in the current version of September 2013.

Rather than this being a rogue decision, the inclusion of T 1060/13 in the OJ Supplement and the emphasis on the Guidelines being in conflict with "established case law", suggests we can expect the relevant section of the Guidelines to be heavily revised next time around. It would be welcome if the EPO could flag the online version in the meantime with a health warning.


10 comments:

Anonymous said...

Read the Guidelines for some general information on practice, but they have never been legally binding and are frequently unsupported by case law. The should never be taken at face value and it is lazy practice to do so.

Anonymous said...

Firstly, interlocutory revision apllies only for ex-parte cases. Not for oppositions.
Secondly, one aspect to interlocutory revision is that it aims to reduce useless appeals, since their issue is already solved. However, it risks to trap the applicant in a never ending succession of refusals, appeals, interlocutory revisions, again refusals, etc., making it de facto impossible to reach the boards to have his case examined at two instances.
Thus interlocutory revision is a very delicate instrument that should be handled with great care and measure.

Anonymous said...

Theoretically, interlocutory revision is possible in opposition proceedings. If the sole opponent has withdrawn its opposition, the proceedings may lead to the proprietor filing an appeal which would then be ex-parte.

Anonymous said...

Would the commentator who stated opposition proceedings become ex-parte because the opponent withdraws provide the full legal basis for their position?
Thanks.

David Brophy said...

Anon @ 17:23 - I'm not the earlier anonymous commenter, but I note T283/02 whose headnote says:

"The withdrawal of an opposition is a definitive procedural declaration which takes away the opponent’s status as an active party to the proceedings. This declaration does not require the agreement of either the opposition division or the patent proprietor. It shall take effect as soon as it is received by the EPO."

As the sole opponent loses its status as an active party, the only remaining active party is the patentee. Don't know if that's good enough to make the proceedings ex parte, but I'd be surprised if they were still regarded as inter partes. Also the Guidelines clearly indicate this is the EPO's interpretation of the law at E-X, 7.1 (Yes, I know, they're not the law etc., but they do cover the Office's legal interpretation and divisions are normally expected to work within them in normal cases, so they're not entirely irrelevant as some suggest.)

Anonymous said...

It is not absolutely clear whether opposition proceedings become ex-parte after the sole opponent has withdrawn his opposition. However, if an opposition division concedes interlocutory revision on an appeal by the patent proprietor in such circumstances, few cases would reach the boards of appeal so that they may rule whether this was a substantial procedural violation or not.
If for example the OD forgot to summon to the requested oral proceedings before issuing its decision and the proprietor then appeals, I doubt that the boards would consider it a serious procedural violation if the OD concedes interlocutory revision on the proprietor's appeal and holds the oral proceedings as requested. Of course in such a a situation the appeal fee should be refunded by the OD.

Anonymous said...

Just as a general note, my take-home message from this decision was that the BoA was telling EDs to stop wasting their time with pointless appeals and instead do what the EPC says they should do.

I note the previous comment about the potential for multiple cycles of interloc revision without being able to get before a BoA, but it does look like the BoA pushing back on unnecessary caseload, which has to be welcomed as helping to reduce pendency and the number of pending appeals.

MaxDrei said...

That last comment prompts the thought that distaste for what the activist President is busying himself with, widely spread within both of DG1 and DG3, can have the counter-intuitive and unforeseen effect of prompting DG1 and DG3 to sink their differences and start to co-operate better with each other, rather than each "passing the parcel" (of individual case files) backwards and forwards between the first instance and the second. I assume that neither DG1 nor DG3 wants to see taken away from the EPO the task of judicially reviewing decisions taken within the EPO.

I would welcome a shift of attitudes in both DG1 and DG3, henceforth to do what they each can, to ease the workload in the other of the two DG's.

As I see it, this is just one more way to raise "Quality". The self-interest of everybody in the EPO lies with that.

Anonymous said...

As the sole opponent loses its status as an active party, the only remaining active party is the patentee. Don't know if that's good enough to make the proceedings ex parte, but I'd be surprised if they were still regarded as inter partes. Also the Guidelines clearly indicate this is the EPO's interpretation of the law at E-X, 7.1.

Just for fun I did a quick search and found T 638/01:
5.1. As noted at 2.1(i) above, both opponents withdrew their oppositions prior to the taking of the decision under appeal, so that the procedure, in particular the appeal procedure, has become, definitively, an ex parte procedure; cf Schulte, Patentgesetz, 6th edition, page 980, margin number 5. One consequence of this change of procedural category is that the appeal falls to be considered for interlocutory revision by the opposition division by virtue of the wording of Article 109(1) EPC, second sentence.

Tim said...

And even with an opponent: T 168/03, if the decision is to revoke the patent for an incorrectly assumed failure to pay the for publishing a new specification of failure to file translations of amended claims.

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