20/10/2022
A recent case in which we were involved highlighted a long standing problem with inter partes proceedings before at the European Patent Office (EPO). Throughout a hearing, the Chairperson of the Opposition Division (“the OD”) or Technical Boards of Appeal (“the TBA”) is not required to give any guidance on how they reached a conclusion on a particular request or ground. In a best case this simply makes it difficult for parties to follow how the OD or TBA are thinking but in a worst case it can lead to inconsistencies on aspects of the case, which directly influence the final decision.
The legal position
Enlarged Board of Appeal Decision G0012/91 deals with the issue of determining the final point at which a first-instance department at the EPO can still take account of further submissions by the parties. G0012/91 makes it clear that the point in time at which a decision of the EPO enters into force, i.e. the moment it is pronounced or notified, is not the last moment at which parties may still submit observations. This must be done at an earlier point in the proceedings to allow the decision-making department time to deliberate and then to issue its decision based on the parties’ submissions. As far as oral proceedings are concerned, established Board of Appeal case law has this moment as the closing of the debate, as announced by the decision-making department, having first heard the parties’ submissions. Once the debate has been closed, further submissions by the parties must be disregarded unless the decision-making department decides to reopen the debate.
The same issue arises in appeal proceedings. The TBA closes the debate on each issue but has discretion to re-open the debate. This is codified in Rules of Procedure of the Boards of Appeal (RPBA) 2020.
In proceedings before the OD and TBA, the patentee’s requests are debated, and for each request, each ground of opposition is discussed in order. Typically the order is: added subject-matter, sufficiency, novelty and finally inventive step.
The OD or TBA hears the submissions from each party on an issue and then closes the debate on that issue before announcing a conclusion. The debate then moves on to the next ground or request.
However, within each debate the same questions often arise. In particular, the interpretation of claims; terms in claims or prior art must be debated for the assessment of added subject-matter, sufficiency and novelty and inventive step.
Unfortunately, if the conclusions on interpretation reached by the OD or TBA following these debates is not communicated to the parties during the hearing, inconsistencies inevitably occur.
An example of when things go wrong
We were recently involved in an opposition, acting for the patentee, where interpretation of claim 1 was discussed during the debate on added-subject matter. During the subsequent discussion of novelty, the opponent argued for an interpretation of claim 1 which was at odds with the interpretation apparently taken by the Opposition Division in reaching their conclusion on added subject-matter. In response to this we argued, not unreasonably, that the OD should adopt a consistent approach to claim interpretation throughout the proceedings and that because the debate on added subject-matter, which included interpretation of claim 1, was closed, the debate on interpretation of claim 1 was also, in effect, closed.
In response, the Chairperson of the OD pointed out that no decision is made until the conclusion of the oral proceedings, after all requests and issues have been discussed, and that they were very careful not to use the word “decision” at any point up until the end of the proceedings. In effect, the Chairperson was saying that they would be prepared to accept submissions based on different interpretations of claim 1 in the novelty and inventive step discussions right up until the point the “decision is made”.
The case law of the EPO Boards of Appeal suggest re-opening the debate is only done in exceptional circumstances. Although we are firmly of the opinion that adopting a different claim interpretation mid-proceedings should be considered an “exceptional circumstance” experience has taught us that it is very rare to be able to formally re-open the debate on a ground of opposition once it has been closed during oral proceedings.
The problem is compounded by the fact that the interpretation of claims adopted by the Opposition Division is rarely made clear during the oral proceedings. You only find out what the OD was thinking many months after the hearing in the subsequent written decision.
When a conclusion on each ground or request is announced in oral proceedings, only very brief reasoning is given if it is considered helpful for framing the next stage of discussion. By way of example, if a claim is novel, it is helpful to know which features are not considered present in the prior art to correctly frame the discussion on inventive step. Unfortunately, more often than not, no reasoning is given for conclusions reached on grounds of added subject-matter or sufficiency. Furthermore, even if brief reasoning is provided during oral proceedings, it is not binding and can be adjusted when the written decision is prepared.
In our case, we had to wait until the written decision to see how the OD reconciled their conflicting approach to claim interpretation for assessing added-subject matter and novelty. As it turns out, the written decision only confirmed our concerns that they had adopted an inconsistent approach but our only recourse for addressing this error was to file an appeal and take the matter up with the Technical Boards of Appeal.
Unfortunately, this is not an isolated incident and it affects both opponent and patentee alike. The problem is that as long as the Opposition Division (and Technical Boards of Appeal) refuse to provide clear reasons for how they reached conclusions throughout a hearing it is unlikely to go away in a hurry. In cases where claim interpretation is at issue, one obvious solution would be to dedicate part of the proceedings to interpreting the claim features independent of any ground of opposition. A “mini-Markman” debate could go a long way to resolving a number of these issues highlighted in this article. In the meantime, whether opponent or patentee, with an experienced representative and carefully constructed arguments, the current approach may be used to your advantage.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
