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Sunday, 10 May 2015

European Patent Office Oral Proceedings: ambushes, emotions and human psychology

This Kat came across a slightly old article on ‘The Functions of Oral Argument in the U.S. Supreme Court’ (here). It notes:

‘In addition to its functions for the court and counsel, oral argument provides some fascinating insights into human discourse. As Rembar suggests, through the argument we see “sensitivity and obtuseness; agility and rigidity; creative legal thinking and failures of the imagination. We see the advocate’s art, and the absence of it.”’
So what is demanded of an attorney at Oral Proceedings? Can one survive based on one’s knowledge of the European Patent Convention (EPC) and case law, or does one need to be a master of human psychology and emotions?

What is the purpose of Oral Proceedings?

Whenever the Appeal Board were in
a good mood they wore red 
Normally towards the end of opposition or appeal proceedings the relevant party, or parties, get summoned to Oral Proceedings. Sometimes this also happens towards the end of examination proceedings. At Oral Proceedings the Division or Board (referred to as the ‘EPO’ in the rest of this article) is going to make decisions on all the key issues. Years of arguments, strategies, disagreements and misunderstanding get sorted out in one, or possibly two, day(s).

Sensitivity and obtuseness

Surely in Oral Proceedings one simply presents one’s best case on each issue? The answer is ‘no’. Oral Proceedings have a dynamic of their own in which one gets to gradually know the EPO side. The EPO will have preferred documents to focus on, preferred arguments and a certain approach to each issue. They may feel another T decision is more relevant, and for some reason D35 may become the most relevant prior art document, and not D1 which you have spent days analysing (each prior art document is given its own 'D' number in EPO proceedings to act as a shorthand for it). So an attorney must quickly see the issues from new perspectives. If the EPO cannot be persuaded to change their perspective you must work within the way they see things.

Agility and rigidity

The attorney may feel ‘that is not the correct approach’, ‘that is not the correct problem’ or ‘that document does not say that’. However, if the argument is not winnable one gets over it and moves on. Carefully rehearsed arguments have to be changed, adapted or even discarded, and the unknown has to be entered. All the time one must be alert to what works and what does not, and one must adjust to thinking in terms of what is important to the EPO. One is not fighting the EPO, one is seeking to persuade them, and so one must tune in to their thought processes.

One must accept the
injustice when it happens
Ambushes and surprises

There are always surprises in oral proceedings. In examination Oral Proceedings the Division may suddenly take a different view of the case, particularly if the Chairman has his or her own views. A new prior art document can appear, or for some reason the Examining Division might take a liking to the Fourth Auxiliary Request. You may be handed a T decision that the EPO now thinks is particularly relevant to your case which they would like you to comment on (a T decision is a decision of an EPO Board of Appeal and such decisions are an important way of formulating case law at the EPO).

In opposition proceedings things can be trickier. Opponents can introduce new arguments that you have not prepared for, and the EPO can be receptive to them. The EPO can interpret a feature in the ‘wrong’ way so that it no longer provides the distance from the prior art that you had assumed it would. The key amendment that you think of to salvage inventive step is found to add matter, or the EPO decides it will not allow any more Claim Requests. So one must adopt the attitude of anything can happen on the day. One must take advantage of the new opportunities, and cope with the new problems.

Strategies and predicting what will happen

For every argument you make you must have already thought through the counter-argument and every implication. If you argue that X is inventive, then does that make Y insufficient? Does the argument in support of priority also imply that D1 is relevant to novelty? When you make the amendment what are the likely attacks against it? How are you going to respond? Are there safer arguments or amendments?

Auxiliary Claim Requests – the way to get something

Having the right Auxiliary Claim Requests is often the key to getting your client claims that are commercially useful. An attorney must have a realistic view of which Claim Requests have a chance of being granted and which features might be seen as contributing to patentability. That will help in formulating arguments and predicting what is likely to happen. As your Claim Requests get narrower in scope, the EPO will become more lenient as they realise that third parties will be inconvenienced less and less by the scope that you are asking for. Even if you only succeed in obtaining a Request with a narrow scope, that may be useful to your client, particularly where regulatory approval is going only cover a narrowly defined product or it would take a lot of development work to see which other variants are suitable.

Clearly it is useful to draft Auxiliary Requests that have their own distinct reasons for patentability. However one should be careful of not pre-judging which Requests will be accepted. Sometimes the EPO will allow a Request which represents a sort of middle position between the arguments presented by the different parties.

Work for it and never give up

As the Claim Requests go down one by one by it is easy to start to give up. However one must not. The next Request may be the one that survives. This is especially true on the second day of a hearing where the parties have started to tire. You have to keep going enthusiastically, even if you are not succeeding. Never assume that you don’t have a chance. There are plenty of EPO decisions that go against the case law, the ones that are never published, and which were decided because it simply ‘happened’ on the day.

How does one prepare?

Clearly one must know all the documents, and one should have a very good idea of all possible new arguments and amendments that might be introduced on the day. One must think through how the proceedings are likely to go. The EPO will decide on each issue sequentially, and so one must see, for example, what is likely to be found novel to prepare the most appropriate arguments for inventive step. It's best to assume that a lot more progress will be made in Oral Proceedings than was made in the written procedure, and so many new issues might arise. If sufficiency suddenly becomes important, then one needs to be prepared for that. Also, one should not overlook small points in one’s favour as they can contribute to supporting your position, and they may become more relevant to narrower Auxiliary Requests.
Lucinda could see that added
matter was going to be a problem

Are Oral Proceedings the best way to sort things out?

They certainly can be effective in dealing with a lot of issues quickly. In particular in the informal atmosphere of examination Oral Proceedings, talking through why the Examiner and the Applicant have stuck to their positions, can be very helpful. That may allow the Examiner to better understand the contribution and to work with the attorney to find a claim that satisfies both sides.

However, this Kat also sees that Oral Proceedings are subject to the vagaries of the day. Not all patent attorneys are brilliant advocates, and essentially the case will usually be decided by the quality of the oral arguments delivered on the day, with the written submissions being secondary. Those that have taken part in many Oral Proceedings will know of the injustice that happens when things are misunderstood or misinterpreted, or when the EPO has simply not fully appreciated or understood a complex argument. There is probably no better way to do things, and in the meantime Oral Proceedings continue to provide ‘fascinating insights into human discourse’.

30 comments:

MaxDrei said...

I should like to emphasize that the three members of the Division themselves do not know what will happen, once oral proceedings get underway. Each one of them has a different reaction to everything said by each patent attorney representative. When the Chair announces an adjournment and suggests a time to be back outside the door ready to resume, the Chair has no idea how long the Division will need, to resolve the issue for which the adjournment has been called.

The thing is though, those three members likely work in rooms on the same corridor of the same office building, and have to work with each other every day after the orals are closed. So, during the adjournement, they are going to be ever so polite to each other. The one with the strongest opinion will likely prevail then, over any misgivings of the other two members, because none of them want to fall out with a colleague. So it is no good presuading the two less forthright individuals on the panel. You just have to persuade the one who is sure that he knows best.

Anonymous said...

I have heard several times an attorney commenting:
I have read the documents for hours, but (have overlooked that important sentence in the 200- 300 pages of prior artt cited)

my silent comment was ( as a memeber of the ex/OP divison ) : i did not have the time to read 200 pages of prior , but a I asked my computer to go through the docuemnts looking for key words relation to novelty / problem/ inventive step ,
-it might be helpful for an attorney to invest into a tool
which allows full text search of the cited documents

Michael said...

As Bill Clinton discovered to his cost, one should be discrete about oral proceedings.

MaxDrei said...

Discrete? Huh? Scheduling perhaps? One at a time with a decent interval in between?

Indeed, at the EPO, scheduling them can be tricky. It was the same for Bill, I suppose.

More than one at the same time? Easy for the EPO but less so for Bill. Still, given the chance, I guess he would have been up for it.

Anonymous said...

common(?) or best of discussions of the division:
1.) the younges/least experienced examiner gives his opinion first , without hearing the opinion of the others
2) voting ; youngest examiner gives his vote
, then the other examiner , chairman is the last to vote
-often - when the first two to vote do not agree with eachother ,
rsumption of the discussion

that is what was taught by the DPMA and handed on to the EPO,
what will be the future? I hope it will not be a little slip of paper, delivered to the chairman , unsigned , indicating what the decision has to be ?

Hillary said...

Having considered G 2/98 in depth, Bill would have known that more than one at the same time is alright provided there is a limited number of clearly defined alternatives.

Anonymous said...

Leaving aside Bill Clinton's oral proceedings, I fully agree with the nub of the article. OP have a dynamic aspect which can never be underestimated.
When doing mock OPs to train people, one can observe that with the same patent, the same prior art, the way the OP goes and the way argumentation is presented is always different, and hence the result is always different.
OP have a dynamic on their own. Expect the unexpected, but if you are not well prepared, you will surely lose the case, even if, in principle, you could win it.

OldSchool said...

I wish I had a computer tool that would tell me which of the portions of the documents in the proceedings were relevant for novelty or inventive step. I must read the whole of each document myself to decide what I think is most relevant for those points, as well as to get a general enough understanding in case the other party or the Division/Board should decide that some apparently inconsequential passage is, in context, the key to the matter. It's rather like the old adage about advertising: 99% of the document is irrelevant to the arguments which will decide the case, the hard part is knowing which 99%

Maybe the EPO could put the tool it has developed for parsing documents to identify portions of documents relevant to novelty and inventive step online (as well as, maybe, sufficiency and addition of subject-matter), so that we can all save time and costs reading irrelevant evidence. Maybe we could do away with the Divisions and the attorneys completely, and just submit the evidence and the claims and ask the Big Electronic Brain to sort it all out. But until that happens, I shall keep reading and re-reading each document until I am sure that I have not missed anything.

Pure Neutral said...

Justice in the form of "over politeness" surely does not lead to the wisest of views necessarily becoming ascendant.

Quite naturally the reverse has been shown to be true throughout human history. The most manipulative (and the lowest of morals that allows that path to succeed) WILL succeed if the downside of human nature is not taken into account.

To assume otherwise invites folly.
To advocate otherwise invites suspicion.

Suleman Ali said...

MaxDrei,your comments don't just apply to the Oral Proceedings. Often one must try to dissect the structure of a negotiating team in business and try to identify the person on the other side which will act as the 'champion' for you. (http://lifescivc.com/2013/07/the-people-side-of-biotech-deal-making/)

Anon of 2:16 - yes, I think it's easy to lose a case because one did not prepare properly. One cannot win unwinnable cases, but one should not be the cause of failure.

Anons of 17:55 and 8:45, yes there seem to be evermore documents in proceedings. A lot of the work is simply making sense of everything.

Anon of 21:29, I must admit I'm quite glad that Divisions do have disagreements as I hope having more than one perspective increases the chances of a correct decision

MaxDrei said...

Does more than one Decider increase the chances of a correct Decision?

Most definitely yes. See The well-known Kahnemann book on Fast Thinking vs Slow Thinking and the extrapolation from there to Jonathan Haidt's "Elephant and Mahout" metaphor. The fast thinking part of the human brain is the elephant, the slow thinking part the elephant rider.

Once the elephant (First Member, let's call him) has (with his Annex to the Summons)set off down his chosen path through the brush, there is precious little anybody can do to get the elephant back on track. The Mahout certainly not. The Rider is the supreme jusifier of his mount's irrational instinctive behaviour, simply brilliant at explaining why the track his fast thinking took was always optimal. So, forget any possibility at oral proceedings to turn the First Member around.

In practice, Haidt avers, the best hope is two other elephants, one on each side of the rogue tusker. Let's call them "Chairman" and "Minute Writer". They do have the power to turn the rogue elephant around. That is, if they are up for it. Which they not always are.

Old man of EPO said...

Penny's worth...
OP only happen when the party or parties ask for them. If the division can refuse, it will - but only if the party hasn't asked for OP.
If only one party asks for OP in opposition proceedings, then chances are a decision will be assisted without OP. If no clear decision can be made then an OP will take place, sometimes even if only because the OD sees a major problem which even the absent party hasn't noticed.
I prefer to write a reasoned invitation with an opinion agreed with my chairman - the invitation may form a decision if both parties avoid the OP (sometimes because they plan to go to appeal irrespective).
The arguments are usually clear in OPPO and debate on known arguments is limited. But on the day the real issues arise with new requests, particularly admissibility and allowability. Plus Art 123(2) and 84 issues. Only then can 54 and 56 be discussed, if the requests are admitted.
Personal choice - tend to allow admissions as the final decision will be more valid. Refusing requests for bureaucratic reasons is not helpful, unless there is an unfairness to the other party.
The more we allow, the more time we spend and the longer the decision. I will spend a week plus on a case overall when we have multiple requests filed at different points over a period of 18 months or more from the first filing of an OPPO.
Finally, attorneys vary and we appreciate the difficulty of complex arguments. Too often we - and at least one party - face a party who is trying a scatter gun effort. Every weak argument is raised and often the objection is only minimally reasoned (if at all). Nevertheless at OD level we feel less free to dismiss out of hand for fear of procedural error.

MaxDrei said...

And there, dear readers, you have from the Old Man of the EPO, the essence of it. The deadly confirmation bias. Downstream of the Annex to the Summons, it's not turtles but Lord Salisbury all the way down.

What I mean is, the First Member and the Chairman put their heads together, to write the Decision of the OD, in the form of an annex to the Summons to OP's.

Lord Salisbury it was, in the House of Commons, who uttered those immortal words "I'm very willing to listen to all the evidence you have that confirms me in the decision I have already taken".

So, dear readers, if you want to win, you just have to get that Annex right, don't you?

Old man of EPO said...

No Max3, read it again.
I was pointing out that the first examiner doesn't decide the case and the rest go along for the ride. Even at the invitation stage, i would attempt to give an accurate assessment of the case and seek the advice of at least the chairman in doing so. The others don't just leave me to it. If my (our) assessment is correct, well and good. If wrong, then at least one party will see early where we are wrong or where their argumentation was misleading or not clear enough. At OP that can be sorted out. If, and it's rare, both parties decide not to come then you have an appealable decisionwhich you can expect. But normally both parties are just aware of Amy deficiencies in their cars and van react accordingly.
The alternative is for the parties to be in the dark or for the division to stay with a 'in hindsight' withdrawal of the arguments of the 1st member.
To suggest that is all a fait accompli is wrong. And to suggest that giving a considered opinion as early as possible is surprising. Perhaps it would help to leave the potatoes in the dark until 0900 on the day of decision?

Meldrew said...

Old Man of EPO

I still find it amazing that despite the damage caused by predictive texting your message is clear.

I am one potato that likes the light.

Anonymous said...

Old man, the problem of your approach is that your "discussion" with the chairman will inevitably affect her/his understanding of the case to the detriment of the applicant who is not present to give the other view of the matter. It would be better if you were allowed to discuss the case with a neutral party.

MaxDrei said...

Thanks for talking, Old Man. I really appreciate it.

A well-thought out Annex to the Summons can bring reality home to the parties, for the first time. After they have digested the Annex, they get their thinking straight, for the first time. New Requests emerge, and new arguments why the claims are invalid. As a representative, one then hopes for a whole fresh start, to the assessment of the case by the Division.

As you say, one could instead issue a bland Annex, that gives nothing away. I see this very often from DG3. But don't get me wrong, I like from the OD an Annex that rehearses the Decision that I'm gonna get, if I don't get active.

Old man of EPO said...

The trouble with a small box is that it is hard to review your text after the event. But thanks for translating into proper English!

Old man of EPO said...

Anon,
Of course i can't discuss it with anyone else for confidentiality reasons. And we have a 3 person board, the parties would be rightly annoyed about extra invisible members.

Ugly American said...

Would I be considered "too sensitive" if I were to take Old man of EPO's comment "the parties would be rightly annoyed about extra invisible members" to be a slight at the USPTO disclosed (and abandoned) SAWS program and the (unknown) non-disclosed other programs, whose presence, but not nature was disclosed by the USPTO in its communications concerning the SAWS program?

Anonymous said...

"Leave the potatoes in the dark".

I assumed that this was a verbatim translation of idiomatic German or Dutch. Since potatoes, left in the dark, don't go green and bitter, but deteriorate in sunlight, I had it down as meaning the same as letting sleeping dogs lie.

It's a shame it's not, really. I feel that the language would have been much improved by "die Kartoffeln im Dunkeln lassen"...

MaxDrei said...

Small potatoes? Anything but. We know that many Rapporteurs in DG3 definitely like to keep their precious potatoes in the dark till 09:00 on Hearing Day. It is, I fancy, not so much sleeping dogs as an urge to "keep one's powder dry" until battle commences.

I love how aphorisms change, from one European language to another. I desperately cross my fingers even while my German colleagues are bent on pressing their thumbs. I scratch your back while you scratch mine. In Germany they are more discreet. What quietly happens is that "one hand washes the other".

goldie said...

The appeal boards I have to deal with most often (mechanics) almost invariably establish quite extensive communications (20+ pages), which are sent together with the summons. I have to say that I do appreciate this service, because there are less surprises at the oral proceedings, and the discussions are more to the point. The drawback is that this means more work for the boards, as in most cases the communication triggers new requests. But seen from the user side, it is certainly worth the effort.

Old man of EPO said...

Ugly American,
Sorry, no slight was intended - I was blissfully ignorant.

Goldie,
I know the problem from my side too - my opinions just seem to inspire aux. requests ad infinitum.

Anon,
I like potatoes so maybe my misstatement was Clement Freudian based on my eating predilections?

Suleman Ali said...

Old Man of EPO, I think applicants and patentees are now very concerned about stages in the first and second instances where they won't be allowed to file further Requests. They are therefore taking a very cautious approach and filing lots of requests in case they face the situation where they are told they should have filed them earlier. In general EPO practice has become much stricter on filing further Requests, and so what you are seeing in terms of lots of Requests being filed is in reponse to that.

Old man of EPO said...

Point taken. And it doesn't really help any of us? Or is that just a reflection of the importance of the work which inevitably leads to care being taken and is just something we have to accept? While I have pressure re. production and would like a more clear cut (shorter) procedure, I am always aware that my needs are secondary to a fair and honest procedure. Even if that is through gritted teeth when facing 20+ requests vs the kitchen sink (with one OPPO party failing to turn up)

MaxDrei said...

Good discussion. What I should like to see is some meaningful sanction against those who abuse the process, following the "Polluter pays" principle.

For DG3 to pressure parties into putting their full case the the OD and then in their first written submission the the Board is eminently sensible. The backlog has to be kept in check in a way that is fair to all.

But if the process is managed carelessly, First Members of OD's might lose heart, and gradually get less and less inclined to write a thorough Annex to the Summons to oral proceedings. That would be a pity.

Suleman Ali said...

I suppose Appeal Boards are changing the nature of 'appeal' so that it is more about reviewing what happened at first instance, rather than redoing the case, by limiting requests (and so to an extent arguments) to those filed at first instance. That is more like the approach which the Courts adopt.

However I think the fact that auxiliary requests and filing new requests is important in the EPO system should be kept in mind. Unlike litigation, the EPO does have a philosophy of amending claims and we should be careful when changing the system to limit this. The purpose of examination and opposition at the EPO is to arrive at a set of valid claims. It is not to decide on validity of a single set of claims (which is what happens in litigation). I think Appeal Boards need to keep this in mind when making changes to procedures, as it does represent placing applicants and patentees at a (new) disadvantage.

MaxDrei said...

Well said, and I like to think that EPO panels are well able to, and willing to, distinguish i) a lengthy sequence of Requests that are "convergent" and a bona fide response to different ones of the slew of validity attacks from ii) even just one new Request that is "late" and jumps laterally to substantially different subject matter.

Raoul said...

What strikes me, is that nobody has referred to Rules of procedure of the Boards of Appeal. They are now more than 10 years old in their updated version, and it still surprising to see that parties seem to ignore them to a large extent. To sum them up, the most important articles are
-Art 12(1) basis of the proceedings
- Art 12(2), completeness of a party's case,
- Art 12(4) admissibility of submissions which should have been made or have been refused by the first instance
- Art 13(1) amendments to a party's case
- Art 13(3) any submission which may lead to postponement of OP is likely to be not admitted
- Art 15(6) the main objective is to arrive at a decision at the conclusion of the Oral Proceedings

The combined effect of Art 12(2) and Art 13(1) is to provide a cut-off point after which any further material submitted is ipso facto late, and the Board is empowered to ignore it.

When looking at the case law, 10 years ago the BA were targeting late filings of documents by opponents, and in the more recent years, they were targeting applicants/proprietors for late requests.

It is actually sad to see applications or patents lost simply because the applicant or proprietor has not been acting according the rules of procedures.

As a rule of thumb, in first instance any submission by the opponent after the 9 months is prima facie late and not automatically admitted in the proceedings, and for the applicant or proprietor anything flied after the time limit under R 116(1) EPC is also late.
In examination, R 137(3) should also not be forgotten.
For the Boards of appeal, comes on top the rules of procedure.

Yes it is good to file requests even in first instance, but they have to show a certain logic and not be hap hazard, hence the case law on converging requests or the refusal of a pick and mix approach.

In other words, back to the basics!

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