tag:blogger.com,1999:blog-5574479.post7649631322366376662..comments2024-03-29T06:53:23.405+00:00Comments on The IPKat: Not enough rigor shown by EPO Board of AppealVerónica RodrÃguez Arguijohttp://www.blogger.com/profile/05763207846940036921noreply@blogger.comBlogger18125tag:blogger.com,1999:blog-5574479.post-12437098639685442272011-11-27T15:14:59.341+00:002011-11-27T15:14:59.341+00:00> this thread is throwing useful light on what ...> this thread is throwing useful light on what chairmen of EPO oral proceedings have to cope with<br /><br />Are you thinking of nearly exploding representatives having been misled, enraged applicants paying through their noses, scared licensees fearing for the exclusivity, or do you mean first examiners out of control?Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-84492329666107052432011-11-26T19:03:57.357+00:002011-11-26T19:03:57.357+00:00A client once refused to pay for an update on the ...A client once refused to pay for an update on the progress of a 3rd party application because it had lapsed through non-payment of fees and he believed he had been advised (by a predecessor) the case had died and there was no ongoing work. He complained just after the application was re-instated by late-payment, which came to light when I looked into the case.<br /><br />The previous advice had been clear as to the possibility of reinstatement so the client had misunderstood. Now he just didn't want any more expense and he was content believing the application was dead. We dropped the charges, but should he have been advised that the application was alive once more?<br /><br />I won't say whether I did or did not, but sometimes lessons are best learnt the hard way.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-60384190333762748612011-11-26T15:47:25.900+00:002011-11-26T15:47:25.900+00:00"cope with"? Hardly being shot at! The p..."cope with"? Hardly being shot at! The pressure seems to be on getting a timely finish to get off home. No rushing for that budget flight with an unhappy/upset/irate client to deal with when they get home.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-88203865238460088702011-11-26T14:04:17.435+00:002011-11-26T14:04:17.435+00:00> Question is, was the representative obliged t...> Question is, was the representative obliged to consider these patents and alert the client to a potential infringement issue, if their only role was to deal with prosecution of the case?<br /><br />In my books, yes we should. One of the things that I like about this line of work is the high ethical standards that is the norm. Some times my duty is to inform the client about issues that do not make for billable hours such as when publication rather than patent application is the best solution for the client.<br /><br />> A comment such as "may be worth looking at these if you do a clearance check" would be helpful and not time consuming<br /><br />I go a lot further than that. With a Power of Attorney in hand I feel my duty to the client goes a long, long way. My experience is that such alerts cannot be invoiced but after a while, sometimes more than a year later, it can generate follow-up work that is paid and also tends to be extra interesting.<br /><br />> but do we not get what we pay for in life?<br /><br />Around here we have an expression that fate catches up with everyone.<br /><br />In this line of work we are also paid in reputation which in turn leads to more work as well as unusual and interesting work.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-40752455837431837602011-11-26T12:22:57.534+00:002011-11-26T12:22:57.534+00:00I must say one thing: this thread is throwing use...I must say one thing: this thread is throwing useful light on what chairmen of EPO oral proceedings have to cope with, in the course of a typical day's work.MaxDreinoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-17578179281090595072011-11-26T00:09:20.934+00:002011-11-26T00:09:20.934+00:00Intersting discussion. Very informative. More on o...Intersting discussion. Very informative. More on oral proceedings please.<br /><br />As an aside, it was decent of the examiner above to submit copies of 2 granted patents in his response, which would have helped the applicant assess potential infringement. Question is, was the representative obliged to consider these patents and alert the client to a potential infringement issue, if their only role was to deal with prosecution of the case?<br /><br />A comment such as "may be worth looking at these if you do a clearance check" would be helpful and not time consuming, but do we not get what we pay for in life?Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-620963138519768742011-11-25T22:05:53.677+00:002011-11-25T22:05:53.677+00:00Part 2:
>> Since the examiner made promises ...Part 2:<br />>> Since the examiner made promises to discuss the issues and then refused to do so<br /><br />> Are you referring to the 1st examiner, his summons, the chairman, or the division as a whole? If this were true, you'd have a solid case for a severe procedural violation of your right to be heard (Art. 113).<br /><br />The first examiner. And this happened several times.<br /><br />> Or is it that the debates were concluded once it was found that your requests clearly did not meet the EPC requirements without having to go through all objections?<br /><br />I take my duty towards my clients very seriously and I am not letting personal prestige getting in the way. We have therefore involved two separate very experienced external professional representatives to go through our work and we did that at our own expenses. Both agreed on our views.<br /><br />>> I am worried the minutes to be issued will not show what will actually take place.<br /><br />> Is this a past or future OP? The OP is your chance to address the division as a whole, and your main interlocutor is the chairman, not the 1st examiner. It is his duty to make sure that your right to be heard is respected. It is yours to state your case as clearly as possible, and request items to be recorded in the minutes.<br /><br />This is a future OP. All three examiners were supposed to review the file before setting the date for OP and once more on maintaining the date after further replies were sent by us. The first examiner states the two others agreed with him. And all three signed the documents.<br /><br />> The division must LISTEN to you, but is not obliged to AGREE with you.<br /><br />At this stage in the process I feel this will be a major improvement.<br /><br />> BTW, I'm all for thoroughness and transparency, but it is not always desirable to put in writing what REALLY happened at an OP.<br /><br />Considering the record so far I am deeply concerned that we do get to present our case and that whatever happens will go on record. I have never experienced a case go so completely off the tracks like this one.<br /><br />> In another case the representative confessed at the outset of the OP of being a total ignoramus in the invention's technical field, and quite literally begged the division for help. It suddenly became clear why the procedure went nowhere for years. The division ended up dictating the text of claims it considered allowable, and explained why. How can you decently express this in minutes?<br /><br />I have spent years with this client in everything from drafting to litigation. My preparations include those for appearing in court. I would like to think I am prepared. In the case I should be mistaken we have prepared a major team to appear at the OP. My client has the financial muscle to continue the process and I have my reputation on the line and am willing to fight for my client every inch of the way.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-15786336556482568442011-11-25T22:04:16.852+00:002011-11-25T22:04:16.852+00:00This is getting big so I had to split in 2 parts:
...This is getting big so I had to split in 2 parts:<br /><br />>> Procedural economy, it seems, only comes into play when it is to the advantage of the EPO. I am having serious problems about this currently where it seems the examiner wants to kill the application by strangling our client financially as the process has been hideously protracted and correspondingly costly.<br /><br />> I see a contradiction here. If your second sentence is true, then procedural economy was achieved neither for the EPO nor for your client. I would submit that it could also be interpreted that you have been rather successful over the years in preventing the division from reaching an unfavorable decision.<br /><br />There is no contradiction here. I have discussed the matter with the examiner, getting a promise for comments back. And I wait. And I wait some more. Then I call the examiner again and I am informed that the examiners have discussed the case and arrived at a conclusion. They just didn't return my call and actually informed me of this. Then more telephone calls, getting more promises for a technical discussion. And I wait and I wait some more before again calling the examiner who now finds these discussions "unproductive". I feel like exploding but remain polite.<br /><br />Your second assumption is not correct, rather I have spent a lot of effort to get a decision as quickly as possible.<br /><br />> You can lay much blame at the feet of examiners, but "strangling a client financially" is certainly not one of their pet vices. <br /><br />Twice recently I have received official communications where the examiners fail to address my arguments and instead encourage me to drop the case, in the interest of economy but of course.<br /><br />>> Killing the application by issuing an official rejection will be rather complicated for them.<br /><br />> Do you mean to say the case is now so messed up that the examiner is no longer sure where to begin (123(2)? 83? 84? 54(2)? 56? ...)? Or that there are dozens of outstanding requests?<br /><br />The file is rather extensive but has not yet reached the stage of messiness. Those few times we were able to inject a technical argument in sideways during telephone conversations we have been able to whittle down the various issues. Nevertheless there are many issues left where the examiner has not addressed our arguments in a meaningful way. To issue a rejection they will have to address these and our arguments are numerous, long and extensive. Unless they were to pull the classic USPTO examiner stunt of just dismissinbg everything with a "not persuasive" statement (which I do not expect), the decision will have to be on the massive side.<br /><br />>> I can very well imagine that debate behind closed doors.<br /><br />> Can you really?<br /><br />Oh yes.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-26010828316659723172011-11-25T12:43:13.460+00:002011-11-25T12:43:13.460+00:00And much would be helped if oral proceedings were ...And much would be helped if oral proceedings were recorded. <br /><br />Recording facilities are cheap, and perhaps knowing that there was a recording of the proceedings would reduce the incidence of attorneys not knowing their brief, and examiners and board members being "selective" in the content of the minutes. <br /><br />Recordal might also reduce the cost of appeal and review proceedings significantly, as decisions would be based on clear evidence rather than conflicting recollections. <br /><br />However, common sense is not common in some circles, so perhaps this suggestion will not be heard.Meldrewhttps://www.blogger.com/profile/09841440718012449720noreply@blogger.comtag:blogger.com,1999:blog-5574479.post-3518602776814512512011-11-25T10:49:13.734+00:002011-11-25T10:49:13.734+00:00In one of my first OPs the proceedings started by ...In one of my first OPs the proceedings started by the chairman announcing that they had already decided the question of X and would I address Y. My protest that I wished to present arguments about X was met by my being told that this would only unnecessarily prolong the proceedings as the point X had already been decided. <br /><br />So much for the right to be heard. Naturally, the exchange was not minuted, and I had no-one else to corroborate my version of what happened at the subsequent appeal. <br /><br />I wonder if things would have turned out differently had there not been 5 people to attest what had happened? The moral seems to be to take a team with you if the case is important, but this does of course have costs implications for UK practitioners.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-42885326219116269672011-11-25T07:54:55.949+00:002011-11-25T07:54:55.949+00:00This "right to be heard" is all very wel...This "right to be heard" is all very well, but what does a poor chairman do, when a representative (or a team of representatives) comes to the idea that, the longer the proceedings go on, the better the chances for his client of salvaging something from the proceedings. <br /><br />Nominally, the Chairman is in charge, but faced with a representative who is adamant that, so long as he has the floor, he has a perfect right to continue till he has finished saying all that he wants to say, what does one do? The clock is ticking, and there are still 99 auxiliary requests to be discussed.<br /><br />It is not such a rare event, that the n-th auxiliary request succeeds, even though it is immaterially different from the just refused (n-1)th auxiliary request. Request fatigue? And would that be an encouragement to representatives to stack up even more auxiliaries, in all their upcoming OP's? Roufousse, are you there today?MaxDreinoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-17125223240693628392011-11-25T03:15:39.067+00:002011-11-25T03:15:39.067+00:00Maxdrei:
One Chairman, retired by now I suppose, ...Maxdrei:<br /><br /><i>One Chairman, retired by now I suppose, would announce on each resumption of proceedings how his Board was "minded to decide" on that issue but that we would now move on to the next issue.</i><br /><br />Like another observer noticed, this is fairly standard practice in both first and second instances, and the usual expression employed is "the division is of the opinion that", which is hardly weaker than "minded to decide". The word "decide" should best be avoided until its time comes.<br /><br />Many years ago I witnessed a Q&A at the end of an interesting presentation to examining staff by a DG3 member. I was eager to see how the boards arrived at decisions, and was relieved to learn that their members are recruited amongst members of the human race, and that differences of opinion arose there too. The orator commented about a visit paid by EPO BoA to the BPatG (or was it the BGH?), and it seems that consensus is an issue there too. The German solution is apparently to simply strike out any litigious paragraphs in the decision.<br /><br />Minutes were a topic too, and the member indicated that the boards had a preference for detailed ones. It was acknowledged that boards too could need to issue in the future more detailed minutes with the introduction of the (then new) Review procedure.<br /><br />For the Review case I don't know how this could change the final outcome. Would you really expect the Board to change its mind, even after formally hearing the arguments on IS? What I understand from this patent is that it's about filleting fish that came straight out of the water.Roufousse T. Fairflynoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-16299720614093690582011-11-25T02:09:51.785+00:002011-11-25T02:09:51.785+00:00Procedural economy, it seems, only comes into play...<i>Procedural economy, it seems, only comes into play when it is to the advantage of the EPO. I am having serious problems about this currently where it seems the examiner wants to kill the application by strangling our client financially as the process has been hideously protracted and correspondingly costly.</i><br /><br />I see a contradiction here. If your second sentence is true, then procedural economy was achieved neither for the EPO nor for your client. I would submit that it could also be interpreted that you have been rather succesful over the years in preventing the division from reaching an unfavorable decision.<br /><br />You can lay much blame at the feet of examiners, but "strangling a client financially" is certainly <b>not</b> one of their pet vices. I once had a case taken over from another colleague in which I introduced two new B-documents, at a still very early stage of the procedure. I considered these to be a bullseye hit for the invention, and it was clear to me what besides their anticipation, they also meant disaster for the small applicant's emerging business, as it fell clearly within the scope of the issued claims. The rep loathed me for this, even though I took even more care than usual in prosecuting the case. Would it have been better to turn a blind eye, and issue an invalid patent? It wouldn't have been fair to the applicant or investors, or even third parties. There was no appeal.<br /><br /><i>Killing the application by issuing an official rejection will be rather complicated for them.</i><br /><br />Do you mean to say the case is now so messed up that the examiner is no longer sure where to begin (123(2)? 83? 84? 54(2)? 56? ...)? Or that there are dozens of outstanding requests?<br /><br /><i>I can very well imagine that debate behind closed doors.</i><br /><br />Can you really?<br /><br /><i>Since the examiner made promises to discuss the issues and then refused to do so</i><br /><br />Are you referring to the 1st examiner, his summons, the chairman, or the division as a whole? If this were true, you'd have a solid case for a severe procedural violation of your right to be heard (Art. 113).<br /><br />Or is it that the debates were concluded once it was found that your requests clearly did not meet the EPC requirements without having to go through all objections?<br /><br /><i>I am worried the minutes to be issued will not show what will actually take place.</i><br /><br />Is this a past or future OP? The OP is your chance to address the division as a whole, and your main interlocutor is the chairman, not the 1st examiner. It is his duty to make sure that your right to be heard is respected. It is yours to state your case as clearly as possible, and request items to be recorded in the minutes.<br /><br />The division must LISTEN to you, but is not obliged to AGREE with you.<br /><br />BTW, I'm all for thoroughness and transparency, but it is not always desirable to put in writing what REALLY happened at an OP.<br /><br />In one case the in-house representative came late and totally unprepared for the OP, was fairly ignorant of the EPC, and hardly remembered what the invention was about. The OP was interrupted at least half a dozen times to allow him to try to raise someone at the head office on the phone, unsuccesfully. He did not have a mobile, so I had to accompany him to another room. Long-distance calls could not be dialed from that area, even with my personal PIN code, so I had to plead every time with the switchboard attendant. We ended up granting something around 4PM, essentially because everyone had to go home or catch a train. The minutes hardly reflect any of this painful exercise. I did manage to have the last word in that case.<br /><br />In another case the representative confessed at the outset of the OP of being a total ignoramus in the invention's technical field, and quite literally begged the division for help. It suddenly became clear why the procedure went nowhere for years. The division ended up dictating the text of claims it considered allowable, and explained why. How can you decently express this in minutes?Roufousse T. Fairflynoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-45660184488559798732011-11-25T00:09:14.887+00:002011-11-25T00:09:14.887+00:00(Enough of the fictitious speculation says the IPK...<i>(Enough of the fictitious speculation says the IPKat. That's not how Board members discuss their cases.)</i><br /><br />Indeed not, and I did not really find your piece entertaining.<br /><br /><i>The IPKat wonders if oral proceedings would not be fairer for all concerned if decisions of the EPO -- both at first instance and on appeal -- did not become immediately binding and did not preclude even a discussion of procedural fairness at the moment the chairperson uttered the magic words "It is decided that ...".</i><br /><br />This is already possible in the current framework of Article <a href="http://www.epo.org/law-practice/legal-texts/html/epc/2010/e/ar116.html" rel="nofollow">116</a> EPC, and you will very occasionally see an OP terminated with an announcement that the procedure will be continued in writing. <br /><br />However the practice of striving to conclude OPs with an oral proceeding where a decision is pronounced certainly did not originate at the EPO, and is not unique to that institution. <br /><br />With your proposed approach, what should happen after the conclusion of an OP if a party begins amending documents in new directions, or reverts to previously withdrawn requests, or inundates the division with new facts and arguments? Should a new OP be summoned, or refused under Art. 116(1), second sentence? Should the procedure be resumed in writing? Should the new submissions be simply ignored? What is then the purpose of an OP? Is this fair to the other parties in OPPO proceedings?<br /><br /><i>After all, there must be countless examples where an examiner has realised that the orally-announced decision on e.g. inventive step does not stack up when one tries to reason it out in writing; in such cases one can often see that the eventual written decision is a vain attempt to dignify a poor decision with a threadbare cloak of reasoning.</i><br /><br />Your concern about the qualms of examiners obliged to draft poorly reasoned decisions is really quite touching. I think I ought to reciprocate and express sympathy for representatives who are obliged to defend quite hopeless cases to the bitter end...<br /><br />If you consider a decision to be ill-founded, APPEAL IT. If DG3 is convinced, it will eventually can it, and even refund your 1180 Euros if the division bungled. I grant you that it could take years, but so would your suggestion of salami-like OPs. <br /><br />Furthermore, in ex-parte examination proceedings the division could even decide in your favour under the provision of Article <a href="http://www.epo.org/law-practice/legal-texts/html/epc/2010/e/ar109.html" rel="nofollow">109(1)</a> and resume examination.Roufousse T. Fairflynoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-41008750715690140182011-11-24T21:33:11.036+00:002011-11-24T21:33:11.036+00:00I wonder about the origin of comment 3, immediatel...I wonder about the origin of comment 3, immediately above. To me it looks like DG3. Although the comment characterizes the statements of position during the day as mere "opinions" not "decisions" that "general practise" is not the way it feels, at least to this particular representative. <br /><br />Of course, for the Board it is self-evidently convenient to manage the manifold requests of the patent owner so that, at the end of the day, there are but a minimum to address in the written decision. Nobody could dispute that that's "efficient". But efficiency, and work-saving for the Board, is not the same thing as the Chairman arranging the oral exchanges during the day to optimise arrival, at the end of the day, at the right result. One is reminded of comment 1, about arrangements being adopted, when they suit the convenience of the EPO. Comment 3 seems to me to bear this out.<br /><br />One detects in comment 3 a distaste for "auxiliary requests". Why doesn't DG3 discreetly point out to the community of representatives that there are two categories of auxiliary requests, those that confirm that there is nothing patentable at the core, and those that zoom progressively in on a core of valid matter. The first sort are (of course) worse than useless to the patent-owning petitioner. <br /><br />Representatives: remember the old agage: when in a hole, stop digging. This will serve your patent-owning client better than serving up on his or her behalf ever more futile auxiliary requests. <br /><br />DG3: that should be enough to see off any perceived plague of tedious or useless auxiliaries.MaxDreinoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-66265907379126755902011-11-24T18:23:40.530+00:002011-11-24T18:23:40.530+00:00Max Drei's observed practise is widely used in...Max Drei's observed practise is widely used in the Boards of Appeal. General practise appears to be that intermediate "opinions" are given about requests dealt with during the oral proceedings and only at the end of the oral proceedings the chairman asks which of the requests dealt with during the proceedings should be decided upon. This allows for withdrawal of requests before the decision is given: a request decided upon cannot any longer be withdrawn and it has to be dealt with in the written decision. The present practise appears to be a response to the many auxiliary requests filed nowadays by the parties and this allows dealing with them in an efficient manner.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-33509038110408375872011-11-24T14:23:49.923+00:002011-11-24T14:23:49.923+00:00At oral proceedings, each issue is taken on its ow...At oral proceedings, each issue is taken on its own and in strict sequence, with a Decision on each issue, during the day. One Chairman, retired by now I suppose, would announce on each resumption of proceedings how his Board was "minded to decide" on that issue but that we would now move on to the next issue.<br /><br />He was wise enough to grasp that discussion of an issue later in the day often prompts a re-assessment of an issue addressed earlier in the day.<br /><br />An old softy, a wimp, you might say, but is that not the better way and why can't all the other DG3 Chairmen do the same? There's no RPBA Rule forbidding it, is there? With only the odd exception, DG3 Chairmen today are well able to manage, calmly and politely, even the most hectoring of representatives, so there is no need for them to fear that the oral proceedings will be interminable if they don't bang their gavel at every opportunity.MaxDreinoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-7563474967361642372011-11-24T13:58:42.140+00:002011-11-24T13:58:42.140+00:00Procedural economy, it seems, only comes into play...Procedural economy, it seems, only comes into play when it is to the advantage of the EPO. I am having serious problems about this currently where it seems the examiner wants to kill the application by strangling our client financially as the process has been hideously protracted and correspondingly costly. Killing the application by issuing an official rejection will be rather complicated for them.<br /><br />I can very well imagine that debate behind closed doors. Since the examiner made promises to discuss the issues and then refused to do so I am worried the minutes to be issued will not show what will actually take place.Anonymousnoreply@blogger.com