First the Italian torpedo and now the Haar-poon – Geography is Not the Only Issue in G2/19

When this Kat took on the pending referral G2/19 before the EPO Enlarged Board of Appeal to dwell on issues of geography in the greater Munich area, he mentioned that the same referral could warrant several additional Katposts to cover all the issues raised. Kat friend Gwilym Roberts from Kilburn & Strode took up the challenge and has had a closer look into the two other questions referred to the EBA. Over to Gwilym: 

"Referral G2/19 to the Enlarged Board has been the subject of some amusement because of the last of three questions it poses: does Haar count as Munich? IPKat has looked at this point but the other two questions have passed largely under the radar, yet the first could deliver chaos and the second catastrophic consequences for patent enforcement. 

Did someone say "favourite dirty trick"?

The case background is simple - a third party unsuccessfully submitted observations on clarity (art. 84 EPC) prior to grant of a patent application. Because the third party could not oppose based on art. 84 (because lack of clarity is nott a ground), instead it lodged an appeal against the grant of the patent on the basis that it was adversely affected. This is extraordinary. 

The issues referred are, roughly: (1) should oral proceedings be held to deal with the admissibility of the appeal, (2) does the complainer have standing as appellant and (3) the Haar thing. Question (1) has been looked at before (see for example T556/09, T114/09, T1289/10), but it would seem to open the door to frivolous abuse of proceedings. As long as the inadmissibility rules are applied responsibly, which seems to be the case generally (and it does not appear to be the subject of the complaint here), then there has to be a way of dismissing vexatious cases promptly. 

However, it seems amazing that no one has raised the second point before, which is effectively a covert attempt simultaneously to make clarity a ground of opposition, and to permit anyone to be an appellant. There are all kinds of problems with it:

• The filer of third party observations is not a party to the proceedings as explicitly provided under art. 115 EPC.
• Such parties should not be able to appeal grant of a patent.
• Clarity is deliberately not a ground of opposition. Similar conditions hold under at least UK revocation grounds (Section 72 PA77 sets out the available grounds and clarity is simply not there). Clarity is what patent offices use, pre-grant, to make sure the claim is in suitable shape to be able to assess infringement later. If an unclear claim slips through, it should be possible to shape a non-infringement case around it, and often the available invalidity grounds can be applied, insufficiency being a powerful option.
• If this became a tactic, then the ability to delay, confuse, obtain stays and so forth would become an immediate favourite dirty trick, a Haarpoon in place of the traditional Italian Torpedo.

This question should not be exercising a first instance Division, let alone an Appeal Board, let alone the Enlarged Board of Appeal. Yes, we want legal certainty, but this is easily achieved here by simply not admitting the case. The alternative is that any case, however inadmissible, however ridiculous, ends up before the EBA. That seems wrong. 

Question (3): is it coincidence that “Haar” rhymes with “Aaaaargh!”? Do we reduce the EBA, representing five of the finest legal minds IP has to offer, to an orienteering team? 

There is little point surmising as to why this particularly weird case should have been considered worthy of consideration at the highest forum but it would be nice if the EPO could kill it promptly, reserve EBA time for worthy issues and send a little signal of sanity in an ever more unpredictable public world. No amicus curiae are listed on the referral webpage yet but a collective plea from stakeholders to spike this one might be worth a punt."