On 13 February Keltie held its first workshop in our new location at London Bridge. The speaker at this event was Christopher Rennie-Smith who came to share his experience of 15 years as a member of the EPO Boards of Appeal, most recently as chairman of a Board of Appeal (biotechnology) and member of the Enlarged Board of Appeal.
Christopher’s brief was to provide an overview of the functioning of the EPO Boards of Appeal with insights on the process from a Board perspective. This excellent seminar covered areas such as common perceptions, delays, communications, evidence, late submissions, oral proceedings and beyond appeals. This post will generally follow the structure of the talk. Christopher highlighted at the outset that he would not be considering specific cases or the current “politics” surrounding the independence of the Boards of Appeal.
Procedure at the Boards of Appeal is governed by the Rules of Procedure of the Boards of Appeal. Things were not always so well structured however and prior to the introduction of the RPBA it was not unusual for parties to an appeal to sporadically exchange communications every 6-10 months or so. Cases could see three or four communications from each side which led to case files that could take a day to disentangle and understand.
The RPBA brought some order to matters though Christopher noted it took until around 2009/2010 before the majority of the Boards were consistently using the rules.
Despite the presence of the RPBA Christopher noted that many European Patent Attorneys flout the rules and treat them as guidelines, providing as justification one of three general categories of excuse: two wrongs will later make a right; force majeure; or selfless justification (i.e. I couldn’t predict what the Board might want to discuss so here’s every single argument under the sun).
Many attendees at appeal appear to work under the mentality that appeals are a 2nd first instance procedure. However, as Christopher noted the various procedures at the EPO should be regarded as follows:
- Examination challenges applications
- Opposition challenges patents (i.e. the first instance is there to make a decision)
- Appeals challenge decisions (i.e. the second instance is there to challenge the first instance decision)
Many appeals include wording along the lines of “I reserve the right to respond to the other side’s arguments” whereas in reality there’s no actual right to be reserved! Appeals should start “The reason I don’t like the decision is…..”
Christopher noted that delays in appeal are very serious and that he was not aware of any Board with a case list of less than two years. On his own Board when he left the EPO there were somewhere in the region of 350-360 cases and some of the software boards have upwards of 400-450 cases to deal with!
In many cases the appeals process doesn’t finish until more than half the term of the patent has gone by, a situation that Christopher acknowledged as pretty shameful.
The cause of such delays may possibly be down to the success of the EPO but the cure is not so easy to see. More funding for more Boards perhaps or further tightening of procedure.
It is possible to ask for appeals to be accelerated but more people are actually asking for delays and extensions of time.
On the subject of postponement of oral proceedings it was noted that there are two limbs to the postponement rule that need to be met: is there a viable excuse and why can’t someone else step in. Christopher discussed how the EPO postponement notice actually refers to “changing the date” rather than postponing and so it is possible to bring the date of oral proceedings forward if there’s some sort of clash. Christopher pointed out that it’s amazing how many postponement requests are withdrawn if you try and suggest that the date be brought forward!
The Boards do not always send provisional opinions. The chemistry (not biotech!) Boards in particular seem to have very ambivalent attitudes to giving provision opinions justifying this by saying that issuing such an opinion may show bias and that it’s extra work (a view that Christopher has “no truck with”).
Most cases are decided on the documents. It was highlighted that the EPO never give out a document you’ve sent in to them. Instead, everything is scanned (into MADRAS, the Mother of All Document Retrieval and Archival Systems).
Usually this scanning process doesn’t matter if you’ve sent a copy of a document to the EPO. However, if you’ve sent an original document (that may have some interesting hand annotations on the back) then this document will be scanned and then sent to a warehouse in Spain never to be seen again (presumably a sort of Warehouse 13 for EPO artifacts). The EPO say that documents can be retrieved but apparently they’re not.
So, if something is important to the case, send a copy and bring the original!
On the subject of experiments Christopher noted that he likes the UK system where you can ask for leave to submit experimental evidence.
On the subject of experts, they can be useful in some circumstances but it seems uncertain how often the evidence of an expert has actually decided anything. Christopher said that, if used, an expert should not say what the decision should be. The Boards do not like being told what to decide or how to do their jobs!
Witnesses are rare as fresh evidence should have been heard earlier, e.g. during examination or in opposition.
Essentially, there shouldn’t be any late submissions. As far as late requests are concerned then if a request could have been filed at first instance but the party didn’t do this, then the Board will hold the request as inadmissible. This line of reasoning is now being applied to arguments as well.
On the subject of Article 12(4) RPBA, Christopher noted that there is a relevance condition within the article and he thinks this relevance criteria may begin to be invoked in the future to curb the levels of paperwork seen by the Boards.
Summary arguments a week or so before the Hearing would be useful in Christopher’s opinion and could operate in a similar way to skeleton arguments.
As far as simultaneous translation at Hearings is concerned we were advised always to ask for this. Even if you don’t actually need it you can put the headphones on, turn the sound down and buy yourself some thinking time as you’re “waiting for the translation”!
It was also noted that it may be the case that some Boards will not have any members who count the language of proceedings as their first language.
Body language can be important at Hearings. Remain motionless otherwise the Board may regard your arguments as weak (e.g. if you’re nodding vigorously while your colleague is speaking) or your opponent’s arguments as strong (if you are shaking your head while they are speaking)!
Also work on the principle of “There’s nothing up my sleeve…” Don’t hold back material or you could run the risk of a cost order going against you.
On the subject of lengthy hearings a couple of the audience members noted they’d been involved in proceedings that had continued long into the evening with no prospect of coming back the next day even though there was plainly enough material to warrant a second day.
Christopher suggested that if it appears in advance that there might be need for an additional day then this should be requested well in advance (e.g. if you have an appeal with proprietor and multiple appeal parties then this might warrant an additional day). If you don’t ask for an additional day in advance then the Board is likely to be hesitant in granting an additional day in light of the decision in T2534/10 (EPO link. K’s Law link (English translation)).
The talk concluded with a brief look at Enlarged Board of Appeals and Christopher asked if maybe there are too few EBoA referrals. On the issue of Petitions for Review it was pointed out that only a very small number have succeeded. This may be because there have been too many weak appeals but also because the EBoA is working with “narrow grounds interpreted narrowly.”
The afternoon concluded with a Q&A session and some “after discussion” over wine. I think the afternoon was a thoroughly enjoyable one and if you ever get the chance to hear Christopher Rennie-Smith talk then I’d suggest you take up the opportunity. You will not be disappointed!
Mark Richardson 24 February 2015