tag:blogger.com,1999:blog-5574479.post5180487130575347624..comments2024-03-29T06:53:23.405+00:00Comments on The IPKat: European Patent Office Oral Proceedings: ambushes, emotions and human psychologyVerónica RodrÃguez Arguijohttp://www.blogger.com/profile/05763207846940036921noreply@blogger.comBlogger31125tag:blogger.com,1999:blog-5574479.post-8494499855653699692020-05-10T18:26:52.426+01:002020-05-10T18:26:52.426+01:00This comment has been removed by a blog administrator.ayanhttps://www.blogger.com/profile/02066898073106439423noreply@blogger.comtag:blogger.com,1999:blog-5574479.post-28410275277122521072015-05-14T17:48:37.285+01:002015-05-14T17:48:37.285+01:00What strikes me, is that nobody has referred to Ru...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 <br />-Art 12(1) basis of the proceedings<br />- Art 12(2), completeness of a party's case, <br />- Art 12(4) admissibility of submissions which should have been made or have been refused by the first instance<br />- Art 13(1) amendments to a party's case<br />- Art 13(3) any submission which may lead to postponement of OP is likely to be not admitted<br />- Art 15(6) the main objective is to arrive at a decision at the conclusion of the Oral Proceedings<br /> <br />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.<br /><br />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. <br /><br />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.<br /><br />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. <br />In examination, R 137(3) should also not be forgotten. <br />For the Boards of appeal, comes on top the rules of procedure. <br /><br />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.<br /><br />In other words, back to the basics!Raoulnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-9001079305674446392015-05-14T14:19:14.112+01:002015-05-14T14:19:14.112+01:00Well said, and I like to think that EPO panels are...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.MaxDreinoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-24891453732083100722015-05-14T13:04:22.061+01:002015-05-14T13:04:22.061+01:00I suppose Appeal Boards are changing the nature of...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.<br /><br />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.Suleman Alihttps://www.blogger.com/profile/18171832789491858471noreply@blogger.comtag:blogger.com,1999:blog-5574479.post-57605154924618617112015-05-14T10:34:31.877+01:002015-05-14T10:34:31.877+01:00Good discussion. What I should like to see is som...Good discussion. What I should like to see is some meaningful sanction against those who abuse the process, following the "Polluter pays" principle.<br /><br />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.<br /><br />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.MaxDreinoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-5444310622270293562015-05-14T10:02:20.440+01:002015-05-14T10:02:20.440+01:00Point taken. And it doesn't really help any of...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)Old man of EPOnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-55518833291789506352015-05-14T09:11:12.222+01:002015-05-14T09:11:12.222+01:00Old Man of EPO, I think applicants and patentees a...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.Suleman Alihttps://www.blogger.com/profile/18171832789491858471noreply@blogger.comtag:blogger.com,1999:blog-5574479.post-69268160855110758322015-05-14T07:31:18.055+01:002015-05-14T07:31:18.055+01:00Ugly American,
Sorry, no slight was intended - I w...Ugly American,<br />Sorry, no slight was intended - I was blissfully ignorant.<br /><br />Goldie,<br />I know the problem from my side too - my opinions just seem to inspire aux. requests ad infinitum.<br /><br />Anon, <br />I like potatoes so maybe my misstatement was Clement Freudian based on my eating predilections?Old man of EPOnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-10765560814059878892015-05-12T21:20:36.428+01:002015-05-12T21:20:36.428+01:00The appeal boards I have to deal with most often (...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.goldienoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-37117292579204053432015-05-12T16:18:45.946+01:002015-05-12T16:18:45.946+01:00Small potatoes? Anything but. We know that many ...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.<br /><br />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". MaxDreinoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-60135077354923768322015-05-12T15:14:36.691+01:002015-05-12T15:14:36.691+01:00"Leave the potatoes in the dark".
I ass..."Leave the potatoes in the dark".<br /><br />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.<br /><br />It's a shame it's not, really. I feel that the language would have been much improved by "die Kartoffeln im Dunkeln lassen"... Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-18410343658440096452015-05-12T15:03:32.709+01:002015-05-12T15:03:32.709+01:00Would I be considered "too sensitive" if...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 <i>was</i> disclosed by the USPTO in its communications concerning the SAWS program?Ugly Americannoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-74793502184635399432015-05-12T14:39:02.562+01:002015-05-12T14:39:02.562+01:00Anon,
Of course i can't discuss it with anyon...Anon, <br />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. Old man of EPOnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-42709455790088649842015-05-12T14:36:32.998+01:002015-05-12T14:36:32.998+01:00The trouble with a small box is that it is hard to...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 EPOnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-83549908863385404602015-05-12T13:51:21.356+01:002015-05-12T13:51:21.356+01:00Thanks for talking, Old Man. I really appreciate i...Thanks for talking, Old Man. I really appreciate it.<br /><br />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.<br /><br />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. MaxDreinoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-49887175741530027452015-05-12T13:21:12.810+01:002015-05-12T13:21:12.810+01:00Old man, the problem of your approach is that your...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.<br />Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-3687652096670915322015-05-12T12:43:50.873+01:002015-05-12T12:43:50.873+01:00Old Man of EPO
I still find it amazing that despi...Old Man of EPO<br /><br />I still find it amazing that despite the damage caused by predictive texting your message is clear. <br /><br />I am one potato that likes the light. Meldrewhttps://www.blogger.com/profile/09841440718012449720noreply@blogger.comtag:blogger.com,1999:blog-5574479.post-76911000695272691922015-05-12T11:30:02.184+01:002015-05-12T11:30:02.184+01:00No Max3, read it again.
I was pointing out that t...No Max3, read it again. <br />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. <br />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. <br />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? Old man of EPOnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-81647092917014014102015-05-12T09:55:18.939+01:002015-05-12T09:55:18.939+01:00And there, dear readers, you have from the Old Man...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.<br /><br />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.<br /><br />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".<br /><br />So, dear readers, if you want to win, you just have to get that Annex right, don't you?MaxDreinoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-42932883433329305162015-05-11T22:48:30.894+01:002015-05-11T22:48:30.894+01:00Penny's worth...
OP only happen when the party...Penny's worth...<br />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. <br />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.<br />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).<br />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. <br />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. <br />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.<br />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.Old man of EPOnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-28268870326289759442015-05-11T14:25:25.662+01:002015-05-11T14:25:25.662+01:00Does more than one Decider increase the chances of...Does more than one Decider increase the chances of a correct Decision?<br /><br />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. <br /><br />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.<br /><br />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.MaxDreinoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-86458239535998442052015-05-11T13:53:11.590+01:002015-05-11T13:53:11.590+01:00MaxDrei,your comments don't just apply to the ...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/)<br /><br />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.<br /><br />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.<br /><br />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 decisionSuleman Alihttps://www.blogger.com/profile/18171832789491858471noreply@blogger.comtag:blogger.com,1999:blog-5574479.post-91473820218186965682015-05-11T12:34:36.110+01:002015-05-11T12:34:36.110+01:00Justice in the form of "over politeness"...Justice in the form of "over politeness" surely does not lead to the wisest of views necessarily becoming ascendant.<br /><br />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.<br /><br />To assume otherwise invites folly.<br />To advocate otherwise invites suspicion.<br />Pure Neutralnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-73876061493515107952015-05-11T08:45:53.837+01:002015-05-11T08:45:53.837+01:00I wish I had a computer tool that would tell me wh...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% <br /><br />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.OldSchoolnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-37824924581364369642015-05-11T02:16:32.750+01:002015-05-11T02:16:32.750+01:00Leaving aside Bill Clinton's oral proceedings,...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.<br />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.<br />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.Anonymousnoreply@blogger.com