European patent attorneys should make a joint effort and gather data to assess the impact of procedural issues on opposition procedures at the European Patent Office and, in the future, on decisions of the Unified Patent Court. Michael Wallinger, partner of law firm WRST, proposed this at the annual meeting of the European Patent Litigators Association EPLIT, 11 April 2016 in Amsterdam.
According to Wallinger, the statistical data are a very important tool for EPAs to decide on their litigation strategies. He thinks they will also lead to questions about the functioning of the Boards of Appeal of the EPO. At the EPLIT meeting he referred to a statistical analysis (epi information 1/15), showing that nearly fifty percent of the cases at the BoAs resulting in the revocation of the opposed patent were decided on formal aspects.
This is a suspiciously high number, he thinks. ‘The EPO has 28 technical Boards of Appeal and they are handling about 2000 opposition cases a year, which is about 70 cases per board. That is a very heavy workload. There are opposition cases in which you have ten or even more opponents, and thousands of pages which have to be read by the board members. So I have the feeling that what the BoAs are trying to do is finding formal holes and deciding on formal points. And that is not okay. But only if we have the real figures, it is possible to show whether the system is not working well and the Office must do something to improve it.’
A similar thing occurred in Germany in the fifties of the last century, Wallinger pointed out in a conversation with Kluwer IP Law. ‘In that period, the German Constitutional Court was obliged to accept all constitutional complaints and used formal restrictions to get rid of them, without deciding on the substantial law. Around 1955 however, a legal change was introduced and a committee of three judges was installed, who had to decide whether a case would be admitted. The quality of the Constitutional Court’s work improved due to this and today the court is very highly respected by all social groups in Germany. At the moment we have a similar situation at the EPO. I don’t say we should introduce the same mechanism with the Boards of Appeal. Rather, I think we should have more Boards, which are really independent from the Office, so we can have less formal and more substantial decisions.’
Wallinger is critical of the official EPO data. A table about the results of opposition proceedings in 2015, for instance, creates the impression that 31 percent of all patents which are opposed are upheld without amendments. However, this concerns only the first instance. ‘That is wrong and misleading’, according to Wallinger. ‘I have compared the first and second instance, and then you see that the outcome is much worse. Probably only 10 to 15 percent of patents remain unchanged in opposition proceedings.’
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The opposition rate is more or less constant at 5% all over since opening of the EPO. It is therefore not possible to say that oppositions and the way they are dealt with by oppositions divisions and boards of appeal are an indicator of the quality of the work done at the EPO, be it in first or second instance.
Some technical areas are prone to oppositions, some do not have any. It also depends on the commercial strategy of the opponents. And the technical areas vary. With a new upcoming technology the rate of opposition soars and often dwindles to nearly zero after a time when the technology has established itself.
That patents are revoked by the boards of appeal for formal reasons is a certainly a pity, but it is the consequence of the tactics of proprietors waiting either to enter appeal to file further requests or waiting shortly before, or even during oral proceedings, to file further requests. A communication from a board is not an invitation to file further requests, and filing a request which is full of problems of Art 84, 123(2) and/or which has manifestly no chance of success cannot help the situation of a proprietor. There is a clear line of case law saying there is no last chance for a proprietor to defend its patent. Why not take this to hart and be pro-active?
The rules of procedure of the Boards of Appeal, and especially their Art 12(4), 13(1) and 13(3) are in force since 2005, and it should not come as a surprise when requests are not admitted because they are too late, There is ample case law on the matter. In the last three years one can roughly estimate at 100+ the numbers of requests which have not been admitted under one of these 3 Articles of the RPBA. Not all not admitted requests led to a revocation, but probably quite a lot. Why not have a look at them. This would probably help to moderate your criticism towards the boards of appeal.
I do not think having more boards will improve the situation as the rules of procedure will remain the same, as well as the tactics from proprietors. It is only if they change their attitude that they will save more patents.
The filtering of cases is only done in case of a petition for review in order to weed out petitions which are clearly not admissible, and if clearly not inadmissible, clearly not allowable. Here as well when looking at case law of the EBA, if the proprietor has been heard on the non-admissibility of late requests, a petition for review has no chance of success.
I am not convinced that the UPC will help in the matter. But your plea for the UPC is very clear.
By the way, I am not and have never been a member of the boards, so my pleading is not pro domo.
I’m prompted by the comment from Daniel Thomas to add my 2 cents. Indeed, here comes a rant.
Frankly, the current mood of whingeing about DG3 revoking patents on “formal” grounds pisses me off mightily. As Daniel points out, the RPBoA are ages-old but still are ignored by the senior members of the patent attorney profession who remember older times when you could defer filing your Auxiliary Requests until the day of oral proceedings.
Tell me, readers in Germany, isn’t it still the case that in national German cases, this is still how cases are resolved. Little wonder then, that those who represent clients in cases at the DPMA and the BPatG don’t like it when they are instead appearing before a TBA in the EPO’s DG3 and are told that their requests are too late.
Of course, the EPO is also an author of its own misfortune. Until recently, some TBA chairs were as lax as the German national tribunals, in their tolerance of parties who hold their case back till the day of the oral proceedings. I can’t imagine why. I consider such behaviour an insult, primarily to the Rapporteur, who is charged with assessing the “full case” of each party when issuing the Summons and secondarily to the Chair and everybody on the other side of the litigation. That Chairs are belatedly stiffening their backbones should come as no surprise to anybody and should be welcomed rather than disparaged..
It is interesting to note that Mr Wallinger is at the origin of R 19/12 (the famous one) and when formal reasons are concerned, but to be used in his favour, he does not appear to be a beginner.
By the way, R 19/12 is published in the file (13.04.2016) if not yet on the Internet. The petition has been considered not allowable. It has made clear once again, that requests have to be filed timely and not to wait an adverse decision before filing requests.
On the other hand when looking at late requests which are not admitted and which leads to patents being revoked (or applications being refused) for lack of admissible requests, the proportion of German applicants/representatives is very high. Max Drei seems to have a point there.
German representatives seem to a certain extent to rely on case law of the BGH which is much more lenient for the applicants/proprietors than the boards of appeal. One BGH decision sticks out in this respect: BGH Z XR (Sensoranordnung) in which it was held, that should the subject-matter of a patent not be patentable, this does not imply that the subject-matter of all claims depending on it are automatically not patentable. It is only if the subject matter of the dependent claims is not patentable that it can be concluded that all the claims are not patentable.
German representatives seem thus to consider that there is an ex officio duty to look at the dependent claims. This is exactly an argument brought forward in the petition leading to R 19/12, see petition B-I-2, page 12, and in more detail C-VI-4, page 32.
This is by no way European practice, and this information is anything but a scoop. Only requests which have been positively filed can be examined, but if they are late, first their admissibility in the procedure has to be decided first. There is an ample body of European case law in this respect, and it appears wiser to look at the latter than to rely on the BGH when acting before the EPO.
If a proprietor would be positively invited to file further requests or even possibly allowable requests would be suggested by the OD or BA, they would without any doubt commit a substantial procedural violation by departing from the strict neutrality at the basis of any inter-partes procedure.
There is no last chance for the proprietor to defend its patent, See for instance T 2429/11, Point 4.4 of the reasons or T 2513/11 in which the representative even appealed to the Board to respect the proprietor’s right of property. The reply from the Board is nothing but unambiguous, see Point 3.2 of the reasons.
When looking at the case law of the boards of appeal they seem to work well, and it is to the representatives to take the RPBA to hart. The boards are as strict with late filed evidence [anything going beyond the legal and factual framework of the opposition, cf R 76(2,c)] as with late filed requests, exactly in view of the RPBA. That late filings of evidence or requests can be legitimate in certain circumstances is not a stake here.
It occurs to me that practice before a TBA at the EPO is a bit like those showdowns between management and Trade Union, where negotiations have stalled, and then some outside independent expert comes up with the basis of a settlement. Typically, the Union wants 6% but management offers only 2% and the outside expert declares that the right answer is 4%. But this is not the scenario I see with cases handled by DG3. Rather, DG3 follows the other approach, where the tribunal is NOT free to suggest a “split the difference” solution. Instead, it MUST select as the answer, EITHER the Request from management OR the Request from the workers.
Of course, in the either/or scenario, the respective requests will both be very close to what a reasonable mind would decide. If the Union proposes 4.5% but management holds to 2.5% as its best offer, the workers will get 4.5%. But if the hold out for 5% and management offers 3.5% then the workers will end up with only 3.5%.
The point is though, both sides have to give it their best shot early enough for it to prevail. Come up with it after the cut-off date and it will fail.
Meanwhile, back at the BGH, the judges there continue with their “split the difference” system. Don’t they? Isn’t that the key difference between life at the BGH and at DG3? Do we have a Game Theory expert in the house, who can muse further on these issues?