Early certainty in opposition proceedings is clearly a desirable objective, and the President’s commitment to lowering the average duration of (normal) opposition proceedings to 15 months on the average deserves praise. In our experience, the new commitment has already started to result in that the summons to oral proceedings are issued sooner and that the hearings are scheduled on earlier dates than they used to be. This raise in the speed of opposition proceedings is a welcome development since it facilitates planning and helps to resolve the dispute between the parties expeditiously.
However, it must be emphasized that an overly strong focus on speed, rather than quality, is not in the interests of the parties to opposition proceedings. Quality should remain the top priority of the EPO in all of its proceedings.
In particular, I am of the opinion that the opposition divisions should be strongly encouraged by the EPO management to issue thorough decisions on all contentious issues, even if this may result in longer hearings and decisions in the first instance. The current practice is, unfortunately, mostly different. If, for example, an opposition division is of the view that the requests presented by the proprietor suffer from a problem under Art 123(2) EPC, it simply revokes the patent for this reason and completely abstains from issuing a decision on e.g. novelty and inventive step. Such a decision may well be an “early” one, but will not necessarily result in “certainty”. This is because if the Board of Appeal comes to a different conclusion on added matter and holds that the requirements of Art 123(2) EPC are fulfilled, it will remit the case to the opposition division for further prosecution. And this will cause another 5-6 years to pass before the case is finally resolved. Such kind of “early certainty” helps no one.
Thus, in view of the fact that the Boards of Appeal understand their role as a kind of administrative court and limit their review to checking the correctness of the first instance decision, a view which is supported by Enlarged Board of Appeal and the current Rules of Procedure, I think that the Opposition Divisions should do what they can to present the Boards of Appeal with a reviewable decision on all points in dispute, so that a case can normally be concluded in two instances without a remittal.
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Very often, if not most of the time, claims get changed before the BoA. That is mostly the reason that the first instance decision is set aside ( making me wonder why such changed claims were not filed before the first instance ). Giving a decision or opinion on the substance of claims that will cease to exist does not seem very efficient and it will most of the time not prevent remittal of the case.
This is a good point. My more recent experience, however, is that more and more Boards of appeal tend to reject claims that are for the first time filed during appeal. Patentees at least ought to appreciate that they run a considerable risk if they present completely new claims on appeal that must be remitted, if admitted. I would imagine that remittals can be avoided (at least most of the time), if (i) the BoA continue to be reluctant to admit claims that could and should have been filed before the first instance and (ii) do not hesitate deciding on the merits of an amended claim that has been admitted, even if there is – strictu sensu – no first instance decision on that very claim. After all, nothing in the EPC stands in the Boards’ way if they want to decide on the merits.
That oppositions should be dealt swiftly is certainly a positive development and can be approved. That quality should not been given up for the sake of expediency goes also without saying. But with the present production pressure, one should not put too much hopes in the matter.
I must however disagree with Mr Bausch on one point. An opposition division cannot give a decision on all contentious issues which have been brought up by the opponents or the proprietor. If, for instance, there is a lack of sufficiency, then it is my humble opinion not possible to decide on novelty and inventive step. A technical teaching which is not enabling cannot be compared with an enabling prior art.
The same goes for added subject-matter. If a claim contains added subject-matter, then the claim does not have an effective date. What is then the prior art which has to be taken into account? If a claim has an effective date, which is either the priority or the filing date, then a meaningful comparison with prior art can be made. This is not the case if a claim contains added subject-matter.
Especially if the claim at stake is an independent claim. Then the proprietor is in an inescapable trap. The only case in which he can escape is if the independent claim is the result of an intermediate generalisation. There at pinch it should be possible to add in a section distinct for the actual decision what the position could be in case the intermediate generalisation would be removed. But this is an exception rather than the rule.
I would go as far as to say that an opposition division would commit a substantial procedural violation if, in case of a lack of sufficiency and/or added subject-matter, the division would go through and decided as well on other aspects of patentability like novelty or inventive step.
A ping-pong between the Board and the Opposition should be avoided. I have seen cases in which first an opposition division first decided that there was a lack of sufficiency, and revoked the patent. The Board disagreed and remitted for further prosecution. Then the patent was revoked again for added subject-matter, and once again remitted, in order to be revoked once again for lack of inventive step. This is certainly not correct, and could be avoided if the Boards of Appeal would make use of their competence under Art 111 in such situations and would then decide through. But this is another story.
What is however to be wished is that the communication annexed to the summons deals with all contentious points. Rather than to make a summary of all the submissions of the parties, the division should really look thoroughly at the case and come up, whenever possible with a non-binding opinion on all contention points. This would certainly help, without binding the division, but if sufficiency or added subject matter is at stake the above difficulties remain.
According to Point 8, third §, Notice from the EPO concerning the opposition procedure as from 1 July 2016, OJ 2016, A42, one could infer that a non-binding opinion of the opposition on the positions adopted by the parties is now mandatory.
One should thus expect that it should go further than a mere listing of the points at stake. Stating that inventive step will be discussed when a ground of opposition is Art 100, a) and Art 56 is not helpful. It is stating the obvious and can be dispensed with. It will have to be seen if the quality of these communications improves or not. In view of the production pressure, one has to fear that this will not be case in spite of efforts of the examiners.
Remittals will be unavoidable, but there again it is a different story. In view of the own production requirements of the Boards, one can only hope that they will not remit every time they think they can. Wait and see….
To “Not Indifferent” I would suggest that an OD can cover all the points in the same way as an English court does, when looking at all the validity attacks. Thus “The claim goes down under Art 100(c). But if I am wrong on that I will now consider the 100(b) attacks. The claim survives those. But if I am wrong on that, I will now consider the 100(a) attacks.”
Where there is a will, there is a way, is how it is, in life, mostly. Why not here too?
I remember a case of mine, 25 years ago. I suggested to the TBA that it ought to remit, because the claim had not been part of the OD’s Decision. No need, said the Chair, we can tell from the OD’s written decision what it would have decided, on the claim we have been looking at today. So we can go ahead and decide on it, here and now, today!
Sorry dear Max Drei, neither an opposition division, nor a board of appeal is an English court. There is no cross examination or the like, and this is also not foreseen at the UPC. It is well known that you keep English courts in high esteem (I refer here to some reply of yours in IPKat), as that is even the reason why you think that UK should stay in the UPC, and adopt an English way of looking at things, but please do not confuse apples with pears.
By the way, you did not comment on the exact reasons why I consider that dealing with the issues of sufficiency and added subject-matter cannot be mixed with novelty and inventive step. Here it is not question of a expressing a certain will or not, it is simply to end up with a logical analysis of the topics at stake. That an English court might be able to do so, is interesting to know, but beside the point.
Part of the problem is that the boards of appeal are extremely unwilling to use to a full extent the powers conferred by Art 111, for whatever reason this might be. One reason could certainly be that a case remitted is a case more dealt with for the production statistic.
This, once again, shows the immense stupidity to reduce the work of examining/opposition divisions as well as boards of appeal to simply a points producing machinery.
This can only come from people who do not have a clue of the work involved in examining applications/patents and deciding on the correctness of first instance decisions. I do not know any country in which such intellectual work is counted like pees in a pod. But we have excellent managers looking after the health of the European patent system…..
Dear Not Indifferent, it is a pleasure to converse with you. But despite the care you take to get your meaning across, I am not following you. How is it that, only when you use English fact-finding tools can you cover all validity issues in the written decision? Personally, I think the methodology of fact-finding is irrelevant to the point at issue here.
Suppose I write an opposition in a case in which my novelty attack based on D1 is perfect. I must still argue that claim 1 lacks inventive step over D1 under the problem and solution approach. It is only if I am wrong about D1 though, that there is any feature in the claim that characterizes its subject matter relative to D1. Just as I write without knowing how the OD will judge the issues, so the judge in England writes, not knowing how the judges at the court of appeal will see the issues. Why cannot the OD do it too? It covers all the issues in its Annex to its Summons.
You may say it is all too much “front loading”. But there lies the challenge, to navigate a way between excessive ping pong and excessive front loading. The English courts have been wrestling with it for decades, pushed by the courts of mainland Europe to be more competitive, to do it faster and more economically, while retaining quality. It ain’t easy.
What am I not seeing? Can you say more?
Dear Max Drei,
I might, at a pinch, agree with you when it comes to novelty and inventive step, but not when sufficiency and added subject-matter are at stake. As I have said before, I do not see how such an invention/claim can be compared with the prior art. And you gave me no reason to change my point of view.
When it comes to novelty or inventive step, care has to be taken not to end up with a decision in which the internal logic is missing.
If the subject-matter of a claim lacks novelty, it necessarily means that there is no difference between the subject-matter of the claim and the prior art. The prior art is suitable for the given purpose, even if it is not from the same technical area (and not an accidental anticipation).
If the subject-matter of a claim lacks inventive step, it necessarily means that there is at least a difference between the subject-matter of the claim and the prior art. Here the choice of the closest prior art is also an important step in deciding upon inventive step, as the difference with the closest prior art has an effect, and an objective problem can be derived. If there is no different effect, then the objective problem is to find an alternative.
Taking the same document to launch first an attack on novelty, and then to launch an attack on inventive step, appears thus anything but logical. This is the reasons why candidates to the European Qualification Examination should never take a document used for novelty as closest prior art for inventive step. I have great sympathy for this position.
In real life, I can agree that it might not always be so easy, and a classical way of opponents is first to attack on inventive step, and then if the claim does not lack novelty on the basis of said document, it lacks inventive step. But this is not very convincing.
If a feature can be interpreted in different ways and may lead to a different conclusion as to novelty and inventive step, the division should give reasons for his interpretation and on the basis of this interpretation give its conclusions.
If a division considers that the claim lacks inventive step, it should thus not start by saying that it lacks novelty with respect of the closest prior art.
If a division is of the opinion that a claim lacks novelty then it should say so.
But for a division to say that on the basis of the same document a claim lacks novelty and inventive step is not a proper way to work.
May be in case of a decision on novelty, it could be possible to add, after the decision on novelty, but in a separate part from the decision, that a lack of inventive step might also be argued. The boards do however not like these addendum to decisions very much.
I agree that finding the right balance of front loading in order to avoid unnecessary ping-pong is a difficult question. But whatever happens, the internal logic in any decision should prevail.
Just an example: what does it look like when a division first decides on novelty and inventive step, and then ends up by saying that on top of this the claim is unclear. It was not unclear to such an extent that a decision on novelty or inventive step was possible, so is the claim really as unclear as it looks?
I am aware of the fact that I will not be able to convince you, but at least it is worth explaining each other’s position.
We are making progress, NI. I see the force of your arguments on the tension between novelty and inventive step.
A typical EESR will find a claim unclear under Art 84 but then go on to make assumptions about what the claim might mean. Based on those assumptions, it can reach opinions on Art 83, Art 84 and Art 56. Failing under Art 84 (or Art 83) seems to me not to be an impossible obstacle to going on to look at novelty and obviousness. Why shouldn’t OD’s routinely do the same?
You say it is to preserve the internal “logic” of the OD’s reasoning in its Decision. Now I of course have never had to write such a Decision, so have no sense of the difficulties. I do want these Decisions to be logical but I also want them to cover all the issues, whenever that level of front loading increases the overall speed and efficiency of the opposition process.
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