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Wednesday, 11 November 2015

Video conferencing: a golden opportunity to reduce costs in patent proceedings

In a recently published decision of a European Patent Office (EPO) Board of Appeal (BoA) on an appeal against a decision of the Examination Division, T 2068/14, the applicant's professional representatives argued that ex parte oral proceedings should be held by video conferencing: 

"From the representative's current location, the representative has been unable to reach any of the EPO's locations in less than eight hours of travelling, including driving, contingency time and flights. ... Applicants must then effectively arrange and pay for three days of time, travel costs, and accommodation for two overnight stays, and must sometimes do this for more than one person".
The BoA was not convinced:
"Although the EPC [that's the European Patent Convention] safeguards an applicant's right to oral proceedings, it does not also ensure that the costs of attending the oral proceedings in person, possibly with a professional representative, are within the applicant's budget."

Indeed while patents are a great thing, it does cost money to obtain them --  and applicants should not rely on the EPO to remedy their self-imposed inconveniences. The EPC does not contain "poor law" provisions such as financial subsidies or leniencies for parties with a tight budget, contrary to some countries' national patent laws. Accordingly, applicants that operate on a tight budget must carefully consider if they are really and truly prepared to cover the costs entailed in EPC proceedings -- or whether they should rather accept any concessions that might be available under national patent laws. As Merpel notes, if they can't even afford the cost of dealing with the EPO in examination proceedings, and possibly in post-grant opposition proceedings, there's probably little chance of them being to afford the cost of litigating these patents nationally or, as will soon be likely, before the Unified Patent Court, wherever that litigation might be.

In its decision the BoA referred to another appeal against an Examination Division decision, T 1266/07 where the BoA said at para 1.2(b):

" ... oral proceedings held before the examining division are, in accordance with Article 116(3) EPC, not public, whereas those before the boards of appeal are public, Article 116(4) EPC. It will be necessary to ensure that the use of video conferencing is reconciled with the requirement that oral proceedings before the boards be public" (emphasis added).
While the decision in T 2068/14 appears to be correct in law, it seems to this Kat to be quite unacceptable in principle.  We live in an era in which travel is increasingly hazardous and inconvenient on account of security considerations but in which communication technologies have advanced greatly, that ex parte and inter partes proceedings can easily be conducted by video conferencing, with the option of adding third parties and an audience.  

Travel can be fun, but it comes at a cost ...
Much has been said about the need for the forthcoming unitary patent in Europe to be cost-effective and affordable by small and medium-sized enterprises, but somehow this discussion seems to be eternally focused on the fixing of an appropriate level of official fees.  However, official fees represent only a small proportion of an applicant's outlay measured from his or her first visit to a professional representative to the time when a patent has either been granted or buried.  Much as also been said about the need to make Europe more competitive as against the United States; well, the United States Patent & Trademark Office, where travel is already much easier and cheaper than in Europe, already offers appellants both video and telephonic options, with no apparent damage being inflicted on the machinery of justice.

The introduction of a video conferencing option would do much to make the European patent system affordable by those whom it has promised to attract. This Kat hopes that the rules are speedily changed to make it possible. 

Thanks go to Patentanwalt Heiko Sendrowski (Katpat!) for spotting and summarising this decision.

Great cat videos here
Cats conference here


Andy Spurr said...

I have to disagree with the comment:

... if they can't even afford the cost of dealing with the EPO in examination proceedings, and possibly in post-grant opposition proceedings, there's probably little chance of them being to afford the cost of litigating these patents ...

Funding is more readily available to patentees when in possession of a granted patent, either from investors or via litigation insurance (BTE or ATE). Litigation is therefore arguably more accessible than EPO proceedings.

Lulubelle H. MacTavish said...

The EPO are a bunch of miserable gits. Recently it scheduled an oral proceedings smack in the middle of Oktoberfest, when hotel prices are required to be telescopic, to allow the Moon to get past at night. When I and another representative, cottoning on to this late in the piece (Oktoberfest not figuring highly on the calendars of our respective countries) asked for the OP to be moved, the Opposition Division refused, saying, rather stuffily, that EVERYBODY knows that Oktoberfest takes place at the same time every year. I can only assume that EVERYBODY lives in Bavaria. Pity I never went - I wonder whether the OD would be sitting around with steins, filled with Gemütlichkeit and singing

Du, Du, liegst mir im Herzen
Du, Du, liegst mir in sinn
Du, Du, machst mir viel schmertzen
Weisst nicht wie gut ich dir bin!

and probably believing every word...

gloomysunday said...

I'm confused... Is there not already provison for ex parte oral proceedings to be held by video conference? I know you have to request them in advance, and can't change to video if also ready sommonsed to the EPO... but it's possible.

I hear different feedback from examiners about video proceedings, but it's more of a hassle for them, but a lot less hassle for the attorneys. Our firm had oral procedings by video, and the feedback was prety positive. It's the way forward.

Mr Shine said...

"We live in an era in which travel is increasingly hazardous and inconvenient on account of security considerations"

This is just false. Although people like to wistfully think of the good old days, travel in western Europe has never been safer in its history.

Outrageous comment.

Glad to be out of the madhouse said...

Jeremy, the EPO has a videoconferencing option for ex parte proceedings (and quite frankly, I'm not sure that remotely attending inter parte proceedings if the other party is present would be a good idea), it just gives too much discretion to Examining Divisions to refuse it. Not to mention the Boards' stick-in-the-mud ways, perfectly illustrated by point 1.2.5 in the Reasons of this decision, where the Board seemingly scolds the Applicant for choosing a representative not based in Munich.

@Ms. McTavish

While the OD's response in your case was quite laughable, it was in a tight spot if there were other parties involved that didn't ask for postponement: those other parties could have well whined, with some success in appeal, against allowing such a late-filed request for postponement. The OD was thus damned if it did and damned if it didn't. Of course, it could have saved everybody the inconvenience by not setting the OP at that date in the first place, but similar considerations around Fasching, the Munich Fair, and so on, would end up restricting the available dates a bit too much...

I personally had a better experience when an ED not only accepted to hold the OP by videoconference, but even to postpone them by one day when I realised that they fell on, coincidentally, November 11, a holiday where I work, but for obvious reasons not in any of the EPO sites...

Anonymous said...

"travel is increasingly hazardous and inconvenient on account of security considerations "


Anonymous said...

What month is Octoberfest? I'll make a not in my diary for future reference so as to avoid the pain and suffering inevitably incurred Fifi Trixibelle the third.

Anonymous said...



Anonymous said...

The video conference option has been introduced a few years ago for ex parte proceedings before the examining division and has hardly ever been used. I do not see why this should be extended to other kinds of proceedings

slartibartfast said...

Videoconferencing is available for ex parte proceedings before the Examining Divisions but not for Opposition Proceedings: see guidelines E-II 11.1.1 (

The Guidelines seem to be silent on what happens in appeal proceedings but I believe here that they are also not available.

Lulubelle H. MacTavish said...

Oktoberfest does NOT occur in October, but in September. It's apparently called "Oktoberfest" because it ends in October (first weekend thereof), having started in mid-September. Hotel prices can more than treble.

Mr Patent said...

Fifi Trixibelle the third, Oktoberfest is mostly in late September, and lasts just over two weeks. Contrary to what might be reasonably assumed, Oktoberfest is neither a month long nor entirely in October. Please mark your diary accordingly.

Anonymous said...

After-Party-Proceedings said

We live in an era in which entering the EPO premises is increasingly hazardous and inconvenient on account of security considerations any time of the year. So video conferencing is the way to go. But do make sure to control the risk of the connection being tapped! No recording is allowed.


Ron said...

I did hear of someone who attended an EPO Oral Proceedings during Oktoberfest and found the Board members wearing traditional Bavarian apparel (Lederhosen for the men and a Dirndl for the Lady), evidently so they could go straight to the festivities after the hearing.

Anonymous said...

Maybe After-Party-Proceedings is making a good point. We know that EPO management are analysing the use of their computer network and it is not therefore inconceivable that video conferences would be monitored by the investigative firm appointed by the EPO. Since the proceedings are ex-Parte and confidential between the representatives and the ED, does this prevent video conferences in the current EPO situation?

Wrote H. Bosch

MaxDrei said...

The Oktoberfest was originally a Wedding Reception that took place over the first week-end in October. By popular demand, it was progressively extended. How to do creep, German style? Start progressively earlier. So, today, the world's biggest and best party lasts a fortnight. But still finishes on the day that's traditional, and still goes by the same name that it always had. Anything illogical about that?

Alec Clelland said...

There's been a proposal on the table for at least five years to extend videoconferencing to ex parte oral proceedings in the BoA. I know because I wrote the paper. It's up to attorneys to push for change.

Anonymous said...

answer to ANDY SPURR

OD do not have much of a choice in setting dates for OP´s , the number of rooms are lmited and they are booked well in advance , the number of OP´s for a single examiner (used to be) is (?) (becoming) a limiting step for the number of dossiers any one examine is able to process (even wit a lot of personal time and effort invested).

Anonymous said...

"if they can't even afford the cost of dealing with the EPO in examination proceedings, and possibly in post-grant opposition proceedings, there's probably little chance of them being to afford the cost of litigating these patents nationally or, as will soon be likely, before the Unified Patent Court, wherever that litigation might be."

...and? Is Merpel of the opinion that a patent is only valuable to an applicant if it is used in litigation? I would assert otherwise.

Old sad man said...

in the discussion, one aspect seems to be forgotten, but it is an important one. Oral Proceedings by video-conference are certainly available for 1st instance ex-parte proceedings, but experience shows that it only works properly if people have met before in person. If this is not the case, the result will be disappointing. It is neither a legal nor a technical problem, but purely psychological. When one sees that video-conferences with people knowing each other do not properly work every time, so do not expect it to work when they do not know each other at all.
One of the previous commenters related the Boards of Appeal and the Guidelines. He has surely overseen that the Boards are not bound by the Guidelines just by the EPC and its implementing regulations.
The legal aspect of publicity of the debate in appeal and opposition proceedings is a legal problem. It might eventually be solved, but we are far from it. How can you have OP with 5 parties and a division by video-conference?
I have never heard such a pathetic argument that travelling nowadays within Europe is hazardous. Are the Boards and the divisions sitting in Sharm el Cheich?
If for a reason or another you are summoned before a court which is not next to your home, will you then request a video-conference so that you do not have to travel? You would not even dream of bringing such a request forward, for fear to look ridiculous. Even in the UPC it is only foreseen to a hold a preparation conference= Interim Conference by video-conference, the actual oral hearing will take place with the people present and rightly so.
As far as the Oktoberfest is concerned, some representatives are not against having oral proceedings at this time of year. I wonder why?
The present representative has really gone too far. Either he wanted to make himself known, or he did not realise how pathetic he looks, but I am not sure that in the end he has brought the cause he defends one inch further.
There is however a problem which has been dodged by all the politicians dealing with IP. No support is foreseen for SMEs, not only if they want to attack infringing competitors, and especially large companies, but also if they are attacked by large ones. If the politicians really would care for SMEs they would not just offer some discount on procedural fees, but provide a scheme which could really help those. But waffling about support for innovation is much easier.

Old man of EPO said...

Purely anecdotally, although I have used video-conferencing internally at the EPO, the only times an external party has requested it it has been agreed and arrangements made, only for the external party to cancel their request. So far ive never had even one video call and have never turned down a (rare) request.
Of course, maybe it's just my unwelcoming demeanour...

Anonymous said...

On a related note: I (patent attorney) have seen a significant increase in OP requested by the Examining Division over the last 6 months or so. Is there a new internal policy?

I have indeed already had a disappointed applicant who gave up because he was summoned to OP after only ONE examination round and didn't want to spend the money for someone to attend. He had a strong case, but was so disgusted by EPO that I doubt he will be wanting another European patent any time soon.

Meldrew said...

The problem is not oral proceedings. The problem is the frequency with which oral proceedings are appointed in cases where it is not necessary.

In opposition it is nearly always necessary. In examination oral proceedings are grossly over-used.

Turning up to oral proceedings to hear "we've read your case - move this word and we will allow the application" is sadly too frequent. It appears some examiners are technophobes and will not pick up the phone.

Also, appointing oral proceedings a year hence to get a case off a hard pressed examiners docket is a tactic some seem to employ (particularly for PACE cases?).

In short oral proceedings are useful to deal with an impass but not as the first tool to reach for. Who wants to go to court when ADR (written proceedings or a phone call) is available?

Oral proceedings should not be a tool for applicant oppression, bus sadly that is what they have become.

Lulubelle H. MacTavish said...

@glad to be out of the madhouse,

In our case, everyone, including the party on the other side (indeed, especially the party on the other side) wanted it moved to 2016. Yet another party had another OP scheduled AT THE SAME TIME ON THE SAME DAY and wanted ours moved to 2016. Would the OD change? Would it heck! The sheer idiocy of the thing took all our breath away. I think the last-mentioned party went so far as to lodge an official complaint.

Old sad man said...

I cannot agree with Meldrew.

The procedure before the EPO is written procedure, and oral proceedings are the only exception foreseen. Nothing like interviews or phone calls are provided for. It lies within the discretion of an examiner to accept an interview or a phone call. If he refuses, he does not commit a substantial procedural violation.

It is nice for the representative to state that if the division envisages refusal of the application, then oral proceedings are requested. He should then not be surprised to be summoned to oral proceedings. The rise in oral proceedings is also linked to this behaviour of the representatives. There are even some firms of representative who file a request for oral proceedings in an accompanying letter when filing. Such a request has to be taken into account, even one would say it is premature. The aim of such an action is clear: to lure divisions in substantial procedural violation.

Nowadays, the applicant receives an opinion in which states the objections against the application. If the reply to the opinion is not convincing, the applicant will then receive a further communication under Art 94. There are thus quasi automatic exchanges in the system.

If after this communication matters are not moving forward, it is not the examiner to blame if he summons to OP, but the present incredible production pressure which has not been decided by the examiner but by the "managers" of the office.

On the other hand experience shows that if after two exchanges with the applicant, matters do not move forward, then writing more communications is not prone to improve the situation.

By exchange I mean a real exchange, whereby this does not mean that in every communication new objections are raised or new prior art is quoted. This is also not correct, and if after such pseudo exchanges the examiners summons to OP, there is something wrong in the system or the way they apply it. Then a complaint appears legitimate.

Examiners are by no means technophobes, but an interview/telephone conversation does not bring them anything in terms of productivity/production. It just costs time, which they do not any longer have.

It would be much better to complain at the higher levels of management about their absurd policy re production.

This is also to be seen in the light to the instructions which clearly say that files which can easily be granted should be prioritised, so that in spite of an excess of searches, some grants are still possible. Otherwise the member states would not get renewal fees and become anxious about their budget.

When only more difficult cases are left, then you should not wonder that examiners take measures which might not look right in the eyes of the applicant, but are understandable in the present situation.

Another solution for examiners is to maximise the BEST effect. Make a shoddy search with only A documents and go over to a direct grant. That is probably the worse for the applicant as he will then invest into a patent which might not be worth the paper it is printed on.

It might sound cynical, but it matches the cynicism of the present pseudo EPO managers.

GrumpyAttorney said...

OSM: if we do not file a precautionary request for oral proceedings, then we risk refusal on the second OA without notice, if the first member of the Division disagrees with Applicant's position. Not filing a precuationary request for OPs is nearly professional negligency. Sorry about that, but that's the way the law reads.

Anonymous said...

"gave up because he was summoned to OP"

Giving up when you get a summons, without filing written submissions and calling the examiner to discuss them, seems premature. I have a pretty decent success rate of resolving things by written submissions and then calling the examiner, and so do my colleagues.

We tend to get more latitude from the client when responding to a summons too - if the client knows they do not want to authorise the cost of attending the oral proceedings, and the alternative is refusal, then narrower than ideal claims start to look more worthwhile.

Anonymous said...

To Anonymous@Thursday, 12 November 2015 at 07:07:00 GMT:

In a recent (informal) conversation with an EPO Examiner, they stated that they liked to issue a summons to OP early on as a means to expedite the prosecution process. I presume this is because the productivity targets are geared towards grant/refusal rather than a drawn-out examination. The inconvenience and - perhaps more importantly - cost burden this places on applicants did not seem to have been appreciated, or (more cynically) thought to be important.

So while there may not have been a policy shift in that direction as such, the ever-increasing pressure on Examiners to hit their targets may be a factor.

Ron said...

GrumpyAttorney is correct. I well remember the first opposition (against a client's patent) I was given to take over prosecution after qualifying where the first letter I received was a communication rejecting the appeal. The opponent's attorneys had, in their last response, only requested a further round of written communications before refusing the opposition, and had not made a precautionary request for Oral Proceedings at any stage in the appeal procedure.

The senior partner who had given me the case observed that he had never experienced this before, and that such a failure to request oral proceedings could well be grounds for a professional negligence action: the other side's attorneys were German and had probably followed the practice of the DPMA rather than the EPO.

Meldrew said...

Old Sad Man

"Nothing like interviews or phone calls are provided for".

Then why do the Guidelines provide for them in GLX C-VII, 2 - 2.6?: simply because they make life easier.

Work to Rule is a classic way of getting an organisation to seize up; picking up the phone will not solve all problems, but sometimes it can reduce them; a soothing voice is better than an acid pen [or so people tell me].

Grumpy Attorney and others have pointed out that not conditionally requesting oral proceedings might risk an allegation of negligence because of the risk of peremptory refusal. The attorney doesn't necessarily want them - he just can't afford not to ask.

It appears to me that:-

Attorneys do what attorneys do - because some examiners are shits or shite.
Examiners do what examiners do - because some attorneys are shits or shite.

The proportion of those who are shits or shite is probably roughly the same on both sides of the attorney/examiner divide [see 2nd fundamental law of stupidity -].

The net effect however is that the shits and the shite make life miserable for the rest of us by compelling us into behaviour that we would not adopt if we could be reasonably sure of reasonable behaviour on the other side [see 3rd-5th fundamental laws of stupidity].

The Handbook of Quality Procedures was an attempt to break this cycle by stating what people might reasonably expect, and some of us find it useful [all trainees should read it].

However it appears that the shits and the shites on both sides do not want to work to make each of our lives less stressful.

I believe the proportion of shits and shites to be low [but see 1st fundamental law of stupidity] and so there is a chance that we might improve everybody's experience by:-
- noting that not everybody is shit or shite
- giving everybody the chance to show they are not shit or shite (while taking prudent safeguards)
- picking up the phone
- reading the Handbook of Quality Procedures
- looking in the mirror to determine whether you are shitty or shite
- telling your colleagues, when they are behaving in a particularly obnoxious manner, that they make life miserable for their colleagues when they antagonise the other side in that manner

I am now off to pontificate elsewhere (after looking in the mirror)

Anonymous said...

To Anonymous 12 November 2015 at 13:23:00 GMT:

I agree with you, rationally it seemed premature, and I proposed to the client to try to contact the examiner to see if we could convince him by written submissions.

However, the client was so disgusted with the whole patent system, having already spent a considerable amount on US fees and not getting a US patent, that he simply had had enough and couldn't be bothered anymore. He somehow got the idea that he would not get a patent anyway, so any further expenses, irrespective of how little, should be avoided.

The summons to OP were simply the proverbial straw.

Anonymous said...

Zebedee *BOING*,

The Board's reasoning under point 1.2.5 is outrageous. The key issue here is whether an applicant in say Ireland should be significantly disadvantaged vis-a-vis an applicant in Munich on the whim of an Examining Division. Travel and Time is money. The idea that a "local" Munich based representative should be preferred to a longstanding and extensively engaged and local representative to the applicant is laughable.

"Moreover a party's right to be heard under Article 113(1) EPC does not imply a separate right of the party's representative to be heard and therefore does not imply a right to have oral proceedings before the EPO held by video conference (see point 1.3.18)."

This is not consistent with G4/95 and other case law. The Applicant has to use a Representative who effectively steps into the Applicant's shoes for EPO proceedings. To argue that in their role as Representative they do not have or have not acquired such a right is just plain idiotic.

Time for Bed Said Zebedee *BOING*

Old sad man said...

When I said, nothing like interviews or telephone calls is provided for, I manifestly meant the EPC. Please read my comment with the will to understand and not to misunderstand.

I can only repeat that by refusing an interview/telephone conversation, an examiner does not commit a procedural violation.

It is certainly efficient to phone when discussing simple matters, but I do not know any examiner willing to spend a long time on the phone discussing a case. He is not rewarded for such an action by his management. Merely requesting an informal contact after receiving a communication is not a reply to the objections. At least the position of the applicant has to be communicated to the examiner.

Rather than to pontificate about shits or shite, it should be looked at the production pressure nowadays existing. Not a word has been said on this point.

I agree that an auxiliary request for OP is the only way to avoid a quick decision.

But then do not be surprised when you are being summoned after two exchanges with the examiner. You get what you ask for.

That it is costly is perfectly known to examiners, and experience shows that it is only once the threat of further costs due to oral proceedings that the applicant/representative is prepared to move. With US or JP applicants it is sometimes the only way to bring things forward.

A. Tournee said...

To old sad man:

The present representative has really gone too far. Either he wanted to make himself known, or he did not realise how pathetic he looks, but I am not sure that in the end he has brought the cause he defends one inch further.

Here we see a perfect illustration of the fact that some (not all, but some) EPO employees (Examiners and BoA members alike) do not fully understand the realities of life as an attorney. Just because the attorney is doing something bizarre, inexplicable, or stupid, or persistently following a line of argument that seems to be doomed, doesn't necessarily mean that the attorney is a "shit or a shite" (as MaxDrei calls it).

As attorneys, we work for our clients, not for the EPO. There have been many occasions where I've advised my client that they're asking me to make unallowable claim amendments, or unpersuasive arguments, or to defend indefensible claims; but ultimately it is their call. If they choose not to take my advice, I can't simply refuse to do anything. I have to do what they instruct me to do, making them aware of the associated risks.

A well-timed Summons can sometimes break an obstinate client's resistance and cause them to see sense. However, it takes two to tango - my colleagues and I could tell you stories of occasions where the Examining Division, the Opposition Division, or the BoA, has taken a very harsh line in refusing claims which would probably have been allowable if they'd been filed earlier, basically admitting verbally that they'd been too annoyed by the history of the proceedings to contemplate granting anything. In these circumstances a little understanding of the real world outside the EPO wouldn't hurt; the reason we're filing the claims late is, in some cases, that it's the first time the client has actually listened to our advice and authorised us to do so...

So, in the case at hand, before making such sweeping assertions about the representative, consider the fact that he might just have been acting on his client's instructions even though he'd advised them that the chances of success were low (and, it has to be said, the professional fees involved in stubbornly arguing this point probably rapidly overtook the costs of flying to Munich and reserving a hotel room!)

fledermaus said...

If the rumours of a move of the Boards to Vienna are true and come to pass, then Oral Proceedings will become more expensive - possibly unaffordable - for even more parties. Now even professional representatives based in Munich or Berlin will need to incur travel costs and accommodation costs. So much for the EPO being responsive to the needs of users.

Anonymous said...

contacting an attorney in the Uk to resolve any issue ,
hopeless in 95 % of all cases,
so I stopped doing it (except for the 5% )

MaxDrei said...

Tournee reports that MaxDrei spoke about shit or shite. Not so. Have another look Tournee. Was it not Meldrew?

Garfield said...

Old sad man, 09:46"The rise in oral proceedings is also linked to this behaviour of the representatives. There are even some firms of representative who file a request for oral proceedings in an accompanying letter when filing."

I remember the early years of the EPO after it opened in 1978. Examination oral proceedings were rare. Applicants did not request them in every case. If a case was getting nowhere after a couple of exam reports, Examiners included a form paragraph stating that refusal could be expected. That was when you knew that your next response had to request oral proceedings as a precaution. Otherwise there was no need to do so.

Then the EPO management decided that examination proceedings went on too long. Examiners were instructed to refuse applications without warning, perhaps even after the applicant's first response. So attorneys started to request oral proceedings in every case.

Now the frequency of oral proceedings causes difficulties for both Examiners and applicants, including delays because of the difficulty of booking rooms, and the consequent unwillingness of the EPO to rearrange dates.

This was probably the first in a long line of issues where the EPO management has sought to influence applicant behaviour, but with counter-productive results because they failed to consult with applicants and didn't consider how they would react.

Old man of EPO said...

Anon at 1729,
Indeed. Sadly. Most calls I have had generally lead to a request for my suggestion to be put in writing as they need to consult their client. Not unreasonable of course, but that means I had to write anyway, so why phone+write? Ironically, I only have to satisfy a chairman so am more willing to come to a conclusion immediately if called. But rarely am...

A. Tournee said...

MaxDrei - indeed it was Meldrew. My apologies for the temporary confusion.

Old sad man said...

Especially to A. Tournee
I want to make it clear, that the vast majority of representatives work properly. This is also true for examiners. The latter, especially with some experience, realise that representatives are bound by instructions from their clients, even if they have advised them differently.
To be honest as well as examiners have their shortlist of "difficult" representatives, representatives have theirs for "difficult" examiners". That's life. We are only human. This does not change my first comment above here.
The case here is slightly different:
I have strong doubts that the client wanted questions to be put before the enlarged Board. He probably barely knows that it exists, less what are its functions.
Claiming four substantial procedural violations is also not common.
When you look at the case, the board accept one of them, relating to support under Art 123(2). Remittal was not an option, as the Board had strong objections about the clarity of the claims, and sadly the representative did not reply to objections of clarity raised by the Board itself. The application was refused for this reason. See 1.3.6 to 1.3.8, as well as 3.
For the second one, the board simply said that the claims had been so extensively amended so that the previous arguments on novelty and inventive step were not any longer applicable. See 1.3.9 and 1.3.10.
For the third one, relating to inventive step, the Board simply said that the decision of the examining division was correct, in deciding upon inventive step when disregarding features in the claim representing added subject-matter. See 1.3.11 and 12.
The last one related to the refusal of holding the oral proceedings by video conference and the avoidance of costs for his client. It is here that the representative went too far.
He merely implied that if the applicant choses a representative which does not reside near the EPO, he should have an automatic right for oral proceedings by video conference during examination. From the 11000+ members of epi a small number is located in the vicinity of one of the examining sites of the EPO. Accepting such a rule is not to be envisaged.
The Board correctly replied that “Although the EPC safeguards an applicant's right to oral proceedings, it does not also ensure that the costs of attending the oral proceedings in person, possibly with a professional representative, are within the applicant's budget”. That cost reasons often withhold representatives from coming to oral proceedings is well known to examiners, and to the Boards but such reasons cannot be taken into account for obvious reasons. It is to the member states to support SMEs in such situations. Here the EPO cannot, and would not be authorised to substitute himself to the member states.
There are a few decisions were the boards of appeal have considered that an examining division refusing to hold oral proceedings by video conferences committed a substantial procedural violation, either by not explaining why or by an arbitrary decision about the request. However the absence on the day scheduled of rooms suitable for video-conferences is a valid reason to refuse the request.
Oral proceedings by video conferences are not yet provided by the EPO for any other procedures than ex-parte ones. May be latter, but not for the time being.
Insisting, on a video conference as the representative did was quite surprising and certainly not common.
In German an old say is: depending on how you call into the woods, you get your reply.
Let’s leave it that it is an odd case.

On the other hand, that EPO management has sometimes taken decisions which are not necessarily to the advantage of parties and their representatives cannot be ignored. But there, the examiners are the wrong addressees. They have to cope with the instructions given.

MaxDrei said...

Such a lot of ignorance all round. Sigh.

The EPO Examiners increasingly accept that they are not knowledgeable enough to see behind the business decisions of an Applicant. Increasingly, they realise that they can't second guess industry. But how often does the representative acknowledge that being the "pig in the middle" between Applicant and EPO imposes very onerous duties and responsibilities to the client. She should know (but often doesn't) how best to make effective progress at the EPO, with minimal loss of valuable legal rights (scope of protection). She should know (but very often does not) how the world looks through the client's eyes. Two thoughts on that:

In the USA, if you can get past the patent Office, to issue of a patent, you have a so-called "presumption of validity". Only evidence, evidence that is clear and convincing, to a Jury of ordinary men and women, can prejudice the validity of a patent granted with the Seal and Ribbon of the Government of the United States of America. So Applicants from the USA are keen to "wear down" an EPO Examiner. If they only find a representative who is aggressive enough to drive claims through to issue, the future is assured, for every post-issue tribunal all over Europe will surely defer totally to whatever decisions the EPO's Exam Division took, prior to allowance of the application, right?

Any EPO representative who fails to explain to an American client the post-issue reality in Europe is failing in his duty to his client. Imagine contemplating filing an Opposition at the EPO. Isn't the very first thing you search for is an Art 100(c) attack? You hope for a proliferation of dodgy amendments and yourt heart leaps when you find something. Does the former Applicant realise what thrills his text fiddling and tweaking amendments are giving his competitors?

Second, while at the USPTO you can "wear down" the Examiner, with every continuation application getting wider claims through, the opposite is the case at the EPO. Your best chance of wide claims and a clean file is immediately after the EESR. Answer all the points, explain why your claim is clear, free from added matter, novel and inventive, conform the specification, sit back and wait for the 71(3) communication. Don't succumb to the strategy of your instructing associate, for a minimalist response. With every succeeding round in the dialogue with the ED, it just gets harder and harder to meet Art 84 and 123(2) EPC. Is that what your instructing associate's client wants? Surely not.

How many EPO representatives trust themselves to stand up to outside US counsel, and explain why the approach they are demanding is selling their own client down the river?

No wonder many experienced Examiners inside the EPO have a low opinion of the professional competence of many EPO representatives. These Examiners are not stupid. They are there to grant patents. Their scepticism of attorney performance is often justified.

Oh, and as for Orals before the ED, if they must take place, there has been a communication failure. And not all communication failures begin and end inside the walls of the EPO. My sense is that the communication failure happens more often somewhere in the communication chain outside the Office. If there is no alternative to orals, then I want to angage, eye to eye with the other two Members of the Division, so they can bring the First Member around to the majority view. For me, video is often a poor choice, for example when it gets in the way of the face to face communication which is the only thing that will stave off a refusal decision.

Of course, if you want orals because you have no idea what claim meets the requirements of the EPC and need the ED to do that drafting job for you, a video conference with the ED might actually be quite a good idea. And the ED will likely be able to write quite a good claim too.

THE US anon said...


EVERY one of your US "wear down the examiner" points is nothing more than a fallacy.

There is NO such thing in the US.


pest said...

Requests for OPs are ritual. Almost all OPs in examination are summonsed at the request of the applicant only, close to never at the instance of the division Art 114. Most of the time they are only used as a means to procrastinate the procedure before the EPO. In fact, in more than half of the cases the applicant does not bother to show up. Art 116 is mostly abused to only file further amendments and comments beyond what is foreseen under R. 137. In 99% of the cases the applicants are not interested in speedy prosecution, the game is to keep it pending, not having the application either granted nor refused. Refusal is better than grant under this paradigma. For a ridiculuous token fee (appeal fee) you buy another couple of years before the boards of appeal. If you are unlucky enough to get granted, file a divisional and drop the parent. That is a bit more expensive due to the accumulated annual fees having to be paid once more. Close to never they reject appeals as inadmissible, even though the ED was right on all requests before them, and the applicant does not even bother to argue otherwise.
Maintaining an application before the EPO is infinitely cheaper than having it granted and validated. 99% of the patents are never ascerted before any court, so why have them granted in the first place. For cross licensing all you need is a pending application. VICO OPs are as useless as face to face. Reps like them because it is easy to charge on them.
For the time being OPs and the right to be heard are cast in iron, into the EPC. Would be worthwhile to review this bad habit. iT is not by chance that the right to be heard in the Human Rights Conventions are only granted before a judicial instance, not an adminstrative one.
Rather implement a true judicial instance in reality required under the constitution of most member states than having petty tribunals formed by three engineers who usually feel uncomfortable already when putting on ties, they are right. They are engineers and are bothered by all this pseudolegal mess including OPs. Judges are trained and paid to do this kind of things and hopefully enjoy them.

Anonymous said...

As attorneys we work for the clients not the EPO

Well said. Examiners work for the public - protecting it from undeserved monopoles demanded by applicants - and NOT for the applicants and even less so for the representatives. Any fraternisation would be highly improper.

THE US anon said...

Anonymous @ 21:24,

You are FAR too adversarial and one-sided in you comment.


Maybe you want to take a step back and THINK about what the patent system - ANY patent system - is for.

There is a particular phrase that may (just may) help you: Quid Pro Quo.

Think about it.

Anonymous said...

Is pest an EPO Examiner and does she/have any experience of representing clients? I cannot be bothered to work my way through the fairy tale in detail, but how many time does it have to be explained that representatives don't usually want oral proceedings, but they are requested to stop an unanticipated refusal throwing us into having to file an appeal. Of course we often do not turn up for the proceedings. In case it has escaped Pest's attention, travelling to the EPO is going to be relatively expensive for the majority of representatives and in many cases it will involve at least a day and a half away from the office.

As for the bit about 99% of applicants not wanting speedy prosecution, I'd love to know where that comes from. While it may e cheaper to keep a European application pending rather than validate a granted patent where an applicant intends validating in a large number of countries, that is by no means universally true. I have clients who are only interested in having a patent in effect for France, Germany and the UK and given the relatively cheap renewals fees payable to INPI and the UKIPO and the lack of validation costs in any of those countries, such clients are generally not interested in keeping applications pending long enough to pay the renewal fees that kick in for the later years of European patent applications while not knowing whether they'll ever get anything for there money.

While it is true that most patents are never enforced, that ignores the value of patents as defensive tools and vehicles for licensing and while it is true a licence may be granted in respect of a pending application, that is by no means a given and having a patent will often put a licensor in a much better bargaining position.

Anonymous said...

'Well said. Examiners work for the public - protecting it from undeserved monopoles demanded by applicants.'

Really? Where in the EPC does this come from? According to Article 4EPC, it is the task of the European Patent Organisation to grant European patents, not to protect teh public. There seems to be a worrying amount of self-made law within the EPO that has no basis in the EPC. I have been told amongst other things that 'Colleagues sometimes make clarity objections, not because the claim in the language of the proceedings is unclear, but because it is believed the wording will be unclear in another language with which the examiner is unfamiliar'. I have also been told it is necessary to make something clearer for the benefit of non-technical judges who may have to deal with the patent. Strange, in my copy of the EPC the person of interest is the skilled person, not the non-technical judge.

Anonymous said...

Kobus said:
@anonymous 05:39
A slightly naive reading of Article 4 EPC. Although it is true that the article states that the task of the office is to grant patents, this does not mean that a patent should be granted for all applications. If this were the case then large parts of the EPC would be unnecessary. The examination procedure is supposed to ensure the correct balance between the monopoly granted and the contribution of the invention over the prior art. This principle is reflected in Article 83 EPC and 84 EPC (2nd sentence). The office must ensure (amongst other points) that the claims clearly define the invention. As claims are examined in only a single language (one of the three official languages as chosen by the applicant) the question of whether a future translation of the claims (provided by the applicant) can therefore not be even guessed at and is completely irrelevant during examination. The examiner will however object if the division is of the opinion that the claim is not clear to the skilled person reading the claims. Article 97 EPC requires the office to refuse the application if it does not meet the requirements of the EPC,for example due to a lack of clarity. The office indeed is supposed to act in the interests of the public. In particular this means that the office does not act in the interest of any particular person and has no preference as to whether the application is finally granted or refused. The contrast between this and the interest of a representative or applicant, who is only happy with a particular outcome, namely a grant, should not be overlooked. An applicant does not (or at least not always) view the application objectively, something which the examiner attepts to do. Whether the objective view is reasonable and justified is of course open to challenge. Oral proceedings are the best way of achieving this if the written proceedings or a phone call are not successful.

maxdrei said...

Just as the inventor is the last person to rely upon for an opinion whether his invention is inventive, so it is that the attorney who drafted the claim is the last person to rely upon for an opinion, whether that claim is" clear". Attorneys should therefore be grateful to Examiners who question clarity. They are removing motes from the one eye of the attorney.

Meldrew said...

Pest "In 99% of the cases the applicants are not interested in speedy prosecution, the game is to keep it pending, not having the application either granted nor refused."

And in 6% of cases applicants request PACE. That gives a workload of 105%. No wonder you are tetchy.

Anonymous said...

One aspect only briefly mentioned in this whole discussion is the impact on the procedure of the ever increasing pressure on examiners to "produce". Most examiners will have to "produce" 20% more than last year, quite a number even 60%! If they do not reach their targets, they loose their job. And there you are, in a foreign country, with no entitlement to any social support, no sickness insurance anymore, perhaps with a family, a mortgage..... And no possibility to fight your dismissal either! Now which examiner would not find ways of increasing production? And honestly, under that kind of pressure, the needs of applicants are not the first thing they think about. Of course that situation provokes reactions from the examiners, leading to reactions from the applicants, etc. etc. The result is bad patents and bad procedures. Nobody wants that. Nobody? Who is to blame for this situation? The management of the EPO. Those people have no idea about patents, not a clue about what it takes to decide on novelty, inventive step and the rest. I even heard someone high up say that examining is only crossing boxes. Is it novel? Yes. Inventive? No. Simple. No clue about the work behind those decisions and the need to reason them. Those people can and do easily say that production can increase by any number. Those people also can and do take a very undue influence on the working of the boards of appeal. That is what you get when you put "managers" at the top making rules for things they know nothing about. So, applicants, representatives, it does not make sense to attack examiners. It is more than time to start leaning on the EPO management, to tell the AC that they should have some knowledgeable people at the top and replace all those patent nitwit managers by capable people.

flown over the cuckoo's nest

MaxDrei said...

That laast comment, a heart-felt rant against ignorant managers who know nothing of the content of the task they are "managing" reminds me of the travails of the National Health Service in England. Even though the NHS is close to the heart of voters, it still suffers under "management" which demands ever-higher "productivity".

What a topsy-turvy world, in the West today. I understand that, in Japan, the role of management is still seen as being to attend to the smallest needs of the all-important "coal face" workers (without which the organisation is useless). Try suggesting that to self-important, arrogant managers in England, France, Germany or the EPO.

Anonymous said...

That`s quite a statement you make examiners will loose their job if they do not do produce 60% more?

First, all examiners should aim for average. So anyone asked to do 60% more, apparently did only 62.5% of average. Me thinks that`s not quite enough.
Second, do you have ANY evidence supporting your statement?

Just sayin`

Anonymous said...

at Anonymous, Sunday, 15 November 2015 at 11:10:00 GMT

'And there you are, in a foreign country, with no entitlement to any social support, no sickness insurance anymore, perhaps with a family, a mortgage..... And no possibility to fight your dismissal either!'

Yes, there you are, having had, for many years, a take-home pay twice your study mates who pursued a career in R&D. And stupid you if you spent it all.

There you are, in a civilised, prosperous country, where you can easily manage your daily business in English (one of the languages you were supposed to master) or in in German and English (two of the languages your were supposed to master).

There you are, a highly qualified, multilingual, professional with expat experience. Surely there'll be no job for you.

There you are, with a partner and children.... Children who are in highly sponsored (and not by you) high quality state education, and a partner who can also take a job.

I think most examiners are doing a good job, and you deserve your good life, and I don't like the hassle you are getting from your 'management'.

But please realise how objectively good you have it, and if you don't like it anymore, for what ever reason, then resign. There is happiness outside the golden cage as well....

Anonymous said...

While Maxdrei is no doubt correct that it is very easy for an attorney to become somewhat blinded to his/her supposed brilliance in drafting, in a field including some very strong competition, his comment about being grateful to examiners is a ridiculous generalisation. I cannot speak for his practice, but by the vast majority of the clarity objections I see are raised against applications that I have not drafted, but that have instead been drafted by attorneys in Australia, Canada, China, Japan, the US and so on. Accordingly, I don't find too much need of mote removal from my one functioning eye. Personally, I do not have a big issue with clarity objections per se and am generally receptive to questioning. It is very easy when you've spent literally hours working on a case to become somewhat blinkered and a fresh perspective can be useful. My primary objection is to objections that come without any reasoning. If Examiners took the trouble to explain objections, perhaps giving examples of what they think the language of the claim might cover that it should not, we might make some progress. Too often, objections comprise a bald statement that something is unclear or a garbled explanation. How much that is down to laziness, arrogance, lack of ability or lack of time, I am simply not in a position to say.

I am in general agreement with his comments about the rise of the manager class, although, just as the one-eyed attorney sometimes needs the help of an outsider, sometimes it is good for the professional, be they an engineer, doctor, patent attorney or whatever, to receive the benefit of the sight of someone from outside the trade. As with many things in life, it is a matter of degree.

Anonymous said...

To Kobus, I do not think my reading of Article 4 EPC is naïve just as, I suspect, you do not feel your lecture about not allowing all European applications and references to Articles 83, 84 and 97 EPC are not ever so slightly condescending. Strangely enough, as a patent attorney who sometimes has to put my reputation on the line when advising clients about infringement and validity, I am well aware of the problems that unclear claims and disclosures provide.

The point in raising Article 4 EPC is not to say that EPO examiners are not supposed to stand there like glorified traffic policemen waving applicants through, but to question the mindset that says examiners are there to protect the public. It's about the frame of mind with which you approach a task, ie the 'they shall not pass' mentality that appears to have infected some of the examiners I have dealt with as opposed to 'we are supposed to be granting patents for inventions'. It goes without saying that examiners should be rejecting applications that lack novelty etc, but it is the approach to the task of examining that is the issue. I see this partly reflected in comments on here about applicants and representatives busily clogging the pipeline with their ridiculous applications etc. I think that just as we attorneys need to step back and remember who is 'king', it would do no harm for examiners to recognise that without all those crappy applications we file, they might be flipping burgers at MacDonalds.

MaxDrei said...

Thanks for the feedback on my comments on "clarity" and Art 84 EPC. Perhaps I should now add a comment. Clarity between native English speakers is not the same as clarity between speakers of English as a foreign language. Anybody who is sceptical should take up the position of the proverbial fly on the proverbial conference room wall, when Asian clients come seeking advice in i) London and ii) Munich. In London they get advice from a native English speaker, and struggle to grasp it. In Munich they receive advice from a German, speaking in Globish-type English, and clearly they understand it.

Attention those who write claims in English, for consumption by the courts of mainland Europe. What your claim means to one who has English as a foreign language is important. So (for the sake of your clients) attend carefully to any difficulties EPO examiners have, in understanding your claims. It just might give you an insight into how your claims will be assessed, in court, on the mainland.

It reminds me of the differences between England and Scotland. You can cry out "I will drown, and no-one shall save me" or you can cry "I shall drown, and no-one will save me". Whether you are rescued, or allowed to drown yourself, depends on what you cry and whether you are in England or in Scotland. The "English" language is not easy.

Anonymous said...

MaxDrei has a point, in that it may be wise to consider these issues. I usually draft in Dutch, and do ususally consider my wording against the question 'would the translator manage to properly translate what I just wrote?'

And then again, other times, I just think 'F*** it', my job is to draft well, and the translator's job is to translate well, and if not, I can still correct the translation under the EPC.

There is a matter of principle as well. Should anybody (me in Dutch, the Brits in English, etc) be asked to mutilate their own language, draft inferior claims, for fear of not being understood by translators or continental judges?

I think not. But in the interest of my clients I sometimes do.

MaxDrei said...

I wonder whether that last comment from the anonymous Dutchman is serious, or just trying to provoke. There is a well-known and well-understood problem in English-speaking jurisdictions, that lawyers love to write in fuliginous obfuscatory style (it puts one over on the client, and facilitates higher billing rates, they suppose) and that the plain meaning will come through better, even to native English speakers, if one writes instead in plain English.

I suspect it's much the same in Dutch, eh anonymous?

Is there any substance in the notion, common in the USA, that the acme of patent drafting skill is to be deliberately and painstakingly ambiguous, so that your claims are construed narrowly when it goes to their validity but widely when it comes to infringement? Does anybody in bifurcatory Germany adopt that approach, I wonder. Or is it counter-productive, especially when prosecuting your case at the EPO.

Anonymous said...

Well MaxDrei, I have been (wrongly) accused of being a troll in the past, but I assure this is not the case.

A little provocation makes people consider 'truths'.

I am all for logic. If the claims are to be considered a certain way for validity, then they should be considered the same way for infringement.

But this is unrelated to the issue I brought up:

Should patent attorneys deliberately use (linguistically) a sub-par version of their native tongue so that others may later better understand it?

I am torn on this issue, and would love to hear how others deal with this.

I would argue that factually correct and linguistically optimal can NEVER be wrong. But we may serve our clients best by allowing some leeway for the imperfections of the target audience. It shouldn't be like that, but it is....

Anonymous said...

I wonder if MaxDrei's response to the anonymous Dutchman is serious or trying to provoke as he has come out with yet another sweeping, and in my experience, unjustified generalisation.

I was trained primarily by an English attorney who qualified in the early 1970s. I also received some training from another who qualified in the 1960s and was a typical English, Oxbridge, public school product. Both consistently hammered it into me that our job is to explain things to the client in clear terms and that it was not our job to show what clever chaps we are. I can remember the Oxbridge product telling me off for using the term restitutio in a letter (despite that's the term used in the EPC). He was firmly against using latin in letters to clients, preferring a simple English equivalent. I was also taught that there is no problem with being repetitive in letters and specifications, rather than using synonyms, it being pointed out that I wasn't producing works of literature and it was of no help to the recipient if he/she was having to work out whether the synonym was supposed to be conveying a slightly different meaning. I have worked in three different English firms, including working as a consultant for one firm in more than one of its offices and I've seen no evidence of the practices you mention.

Obviously I cannot speak for the entire British-based profession, but based on the limited evidence I have seen, you are peddling a myth. I also suspect that in many cases in which letters from lawyers are unclear, it is more to do with the ability of the patent attorney to convey ideas clearly and concisely and emphasise with the client, rather than the dishonest motives suggested.

As for our American cousins, if I was looking for works completely lacking in clarity, I would point to US Office Actions.

The Pigs said...

I have learned to ignore whatever MaxDrei posts, as his views are the very stuff of trollism and hypocrisy that he would label the writings of others.

He has often posted on US blogs that he posts with the intent to stir things up, at the same time that he does not really engage in conversation those who have different views.

Don't feed him.

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