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Case Law of the Boards of Appeal

 
 
5.1. General

In J 11/94 (OJ 1995, 596), the Legal Board of Appeal referred the following question to the Enlarged Board of Appeal - might a board of appeal exercise discretion in deciding whether or not a person not entitled under Art. 134(1) and (7) EPC 1973 to represent parties to proceedings before the EPO could make submissions during oral proceedings in addition to the pleadings by the professional representative. Further, if such discretion existed, which criteria did the board have to observe when exercising it.

The Enlarged Board of Appeal also had to decide on a question referred to in decision T 803/93 (OJ 1996, 204). This question was whether, and if so in what circumstances, a person other than the professional representative (that is, an accompanying person) might make oral submissions on behalf of a party concerning either legal or technical issues, during oral proceedings under Art. 116 EPC 1973 before an opposition division or a board of appeal. This question went beyond the circumstances of J 11/94, which concerned ex parte proceedings involving only legal issues.

The Enlarged Board gave its answer in two decisions, G 2/94 (OJ 1996, 401) referring to J 11/94, and G 4/95 (OJ 1996, 412) occasioned by T 803/93.

In G 4/95 (OJ 1996, 412) the Enlarged Board noted that the appointment of a professional representative by a party involved the authorisation and identification of the professionally qualified person who was responsible for the presentation to the EPO of all submissions made by the party. Such presentation of a party's case was the essential core of the function of a professional representative under Art. 133 EPC 1973. During oral proceedings, a professional representative was expected to present the entire case of the party that he or she represented.

The Enlarged Board considered separately the presentation of facts and evidence, on the one hand, and the presentation of arguments, on the other hand.

As to the presentation of facts or evidence by an accompanying person, the Enlarged Board held that such oral submissions during oral proceedings - in addition to the complete presentation of the party's case by the professional representative - are not excluded under the EPC. They may be allowed under the overall discretionary control which the EPC gives to the EPO with respect to the filing of facts and evidence.

As to the question whether an accompanying person may make oral submissions during oral proceedings by way of argument, the Enlarged Board pointed out that Art. 133 EPC 1973 made no distinction between written and oral proceedings in connection with the requirements for representation. Thus a professional representative was responsible for all written and oral submissions made on behalf of the party who had appointed him. However, in the context of the written procedure provided under the Convention for oppositions and opposition appeals an appointed professional representative could submit additional documents signed by a third person (for example a professor of law or science). Provided that they were submitted under the responsibility and control of the professional representative, they did not have to be excluded from consideration in the proceedings in which they were filed. Similarly, during oral proceedings under Art. 116 EPC 1973 in the context of opposition or opposition appeal proceedings, a person accompanying the professional representative of a party was not excluded from making oral submissions in relation to either legal or technical issues on behalf of that party to the proceedings under the control of the professional representative, and in addition to the complete presentation of the party's case by the professional representative.

The Enlarged Board further held that such oral submissions could not be made as a matter of right, but only with the permission of and at the discretion of the EPO. The following criteria should be considered by the EPO when exercising its discretion:

(i) The professional representative should request permission for such oral submissions to be made. The request should state the name and qualifications of the accompanying person and should specify the subject-matter of the proposed oral submissions.

(ii) The request should be made sufficiently in advance of the oral proceedings so that all opposing parties are able properly to prepare themselves in relation to the proposed oral submissions.

(iii) A request made shortly before or at the oral proceedings should, in the absence of exceptional circumstances, be refused unless each opposing party has agreed to the making of the oral submissions requested.

(iv) The EPO should be satisfied that oral submissions by an accompanying person were made under the continuing responsibility and control of the professional representative.

In G 2/94 (OJ 1996, 401) the Enlarged Board made it clear that there was no difference as a matter of principle between the admissibility of such oral submissions in ex parte proceedings and in inter partes (opposition) proceedings, and that this matter had been fully considered in the context of opposition proceedings in G 4/95 (OJ 1996, 412). The Enlarged Board noted that it was important that the board should control the proceedings. The board should exercise its discretion in accordance with the circumstances of each individual case. The main criterion to be considered was that the board should be fully informed of all relevant matters before deciding the case. The board should be satisfied that the oral submissions were made by the accompanying person under the continuing responsibility and control of the professional representative.

In T 334/94 the board emphasised that for a legal or technical expert to be allowed to make submissions at oral proceedings on behalf of a party and under the control of that party's representative, certain criteria relating to Art. 113(1) EPC 1973 had to be fulfilled. G 4/95 had ruled that the party wanting such submissions to be made had to ask permission sufficiently in advance of the oral proceedings to give the other parties time to prepare. Only in exceptional circumstances should the EPO allow such a request if made just before the date of the hearing, unless all the other parties agreed. The board noted that the Enlarged Board had not defined what "sufficiently in advance" meant, or laid down a deadline for making such requests. In its view, the deadline of one month before the proceedings for filing submissions or new sets of claims was a minimum. On that basis, nominating an accompanying expert one week before the proceedings was not acceptable.

On the other hand, in T 899/97 the appellant (opponent) requested that a technical expert be allowed to speak during the oral proceedings in order to explain the physical phenomena that occurred when a prior art separator was used. Pointing out that the relevant letter from the appellant had reached him only two weeks before the oral proceedings, and referring to G 4/95 (OJ 1996, 412) and T 334/94, the respondent requested that this technical expert be refused permission to speak.

The board considered the particular circumstances of the case, i.e.:

that no time limit for making further submissions had been set by the board with the summons to oral proceedings

that the respondent (patent proprietor), although he had had two weeks’ notice of the technical expert’s appearance at the oral proceedings, had not taken any immediate action in this respect, but merely objected to his being heard at the beginning of the oral proceedings

that the respondent, when referring to the criteria (ii) and (iii) mentioned in headnote 2(b) of decision G 4/95, had not indicated any specific preparatory measure that had been rendered impossible or hindered by the relatively late presentation by this technical expert

that this technical expert was one of the authors of the test report (R2) filed by the appellant with the statement of grounds, that the board had raised some questions on this specific technical issue in the annex to the summons to oral proceedings, and that these technical issues had already been discussed before the department of first instance.

With this in mind the board held that the request to hear the technical expert had been submitted sufficiently in advance of the oral proceedings by the appellant, and that the respondent had been able “to properly prepare” himself "in relation to the oral submissions" by this technical expert, including explanations concerning the physical phenomena occurring in prior art separators as tested in R2 (see G 4/95).

In T 621/98, during oral proceedings, the board was faced with the question of whether the patent proprietor, who was professionally represented, needed to announce in advance his intention to make submissions during the proceedings, pursuant to G 4/95 (OJ 1996, 412). The board ruled that the patent proprietor was a party to the proceedings and as such was not to be treated as an accompanying person. As a party to the proceedings he had a right to take part in them.

In T 1208/06 the inventor was not identical to the patent proprietor, so T 621/98 did not apply. In the circumstances, and applying the criteria of G 4/95, the board held the opposition division to have acted correctly by categorising the inventor as an "accompanying person" and not as a party to the proceedings within the meaning of Art. 99(3) EPC and by rejecting the proprietor's request.

In T 89/04 Mr D. was a vice president of the company OpenTV. Since the company ACTV, Inc. was recorded in the Register of European Patents as the patentee, OpenTV, which was a different legal person, was not a party to the proceedings in accordance with Art. 99(4) and 107, second sentence, EPC 1973. Decision T 621/98, to which the patentee/respondent referred, did not apply to the case at issue, since it dealt with a different situation, where the professional representative was accompanied by the patentee. Mr D. was considered to be a person accompanying the representative and, therefore, the criteria set out in decision G 4/95 had to be met. A request which, as in this case, was made three days before oral proceedings, i.e. not sufficiently in advance, should, in the absence of exceptional circumstances, be permitted only if the opposing party agreed. Since the board saw no exceptional circumstances, and the appellant/opponent objected that he could not prepare himself properly, the board did not allow Mr D. to make oral submissions on behalf of the respondent (patentee) at the oral proceedings.

In T 475/01 the board, exercising its discretion under the Convention and taking account of the criteria established by the Enlarged Board of Appeal (see G 4/95, OJ 1996, 412), allowed oral submissions by the persons accompanying both parties at the oral proceedings. Unlike the respondent, the board took the view that neither the EPC nor the above Enlarged Board decision could be held to imply that a party that represented itself in proceedings was to be treated differently to a professional representative in respect of oral submissions by accompanying persons.

In T 1212/02 the appellant did not consent to a colleague of the representative of the respondent (opponent) making submissions before the board during oral proceedings. While the representative herself was authorised to act as a professional representative within the meaning of Art. 134 EPC 1973, the same was not true of her colleague, even though he too worked in the patent department of the same firm, the respondent's holding company, and was familiar with the case in point. The appellant (patentee) observed that no provision had yet been made under Art. 133(3) EPC 1973 to allow the employees of one legal person to represent another legal person.

As the appellant had argued, it was true that no legal provision had been made for the representative of one company to be undertaken by an employee of another company connected with the former company. It was also true that it was a matter for the board's discretion to allow a person who was not the professional representative authorised for the case in point to make oral submissions on legal or technical issues before the board, provided the criteria established in G 4/95 were met. To save time, the board in the case at issue decided on a pragmatic approach and allowed the professional representative's colleague to make submissions, but only after the representative had given an express assurance that she took full responsibility for such submissions.

In T 754/08, it had been announced that Mr R., a former patent attorney of the appellant/opponent in this case, would make technical statements during the oral proceedings. It was not disputed that Mr R. had the knowledge of a technical expert in the field of the patent in suit. However, in the respondent's/patent proprietor's view, since Mr R. was the former patent attorney of the appellant in this case, his submissions would be those of a professional representative. Since he was not authorised to act in the latter function, he should not be allowed to speak during the oral proceedings. The board decided that the conditions set out in the decision G 4/95 were applicable to any accompanying person. Therefore, there was no reason to exclude a former European patent attorney as such. Since the conditions were met the board saw no reason not to allow Mr R. to make oral submissions during the oral proceedings.

The board in T 302/02, applying G 4/95, did not allow the expert to make submissions. Concerning the admissibility of oral presentations by three technical experts, the board in T 2135/08 concluded that none of the three criteria i), ii) and iii) of G 4/95 were met, among other reasons since the requesting party had failed to state -even at the oral proceedings- the qualifications of these three persons and to specify the subject-matter of their proposed oral submissions. In T 1706/06, quoting G 4/95, the board said that a request made shortly before the oral proceedings should, in the absence of exceptional circumstances, be refused unless each opposing party has agreed to the making of the oral submissions requested. In the case in point the patent proprietor did not agree. Moreover the board considered that the filing of the request for the technical expert of the opponent to be heard was made "shortly" before the oral proceedings. No exceptional circumstances existed; the board refused the request for the technical expert to be heard. To cite a different example, in case T 1207/06 the patent proprietor questioned the admissibility of the presentation of submissions at the oral proceedings by the person accompanying the representative of the opponent, objecting that the accompanying person tried to present the entire opponent's case, which, according to G 4/95, was not allowed. The board in T 1207/06 did not agree with this objection and was satisfied that the four criteria in G 4/95 had been met.

In T 919/07, where the requests in writing concerning oral submissions by accompanying persons (one being an employee of one of the parties not allowed to represent this party) did not indicate what such submissions could contribute to the evidence on the file, the board exercised its discretion by deciding that the accompanying persons should be heard in the event that the board wished to ask them questions.

In T 520/07 the board did not share the respondent/patentee's view that the appellant could not be surprised by its request, the same accompanying person having already made submissions in oral proceedings before the opposition division. In all procedural matters, appeal proceedings were completely separate from first-instance ones, so requests made in the latter had no effect for the former.

For a classic application of the requirements set out in G 4/95 to a party's contention that, since the accompanying person was preparing for the European qualifying examination, he ought to be given a training opportunity, see T 378/08.

See R 3/08 for a petition for review based on the board's refusal to allow an employee of the petitioner to make submissions at oral proceedings.

At oral proceedings held before the opposition division on 25 February 2008, the division had refused Mr J permission to speak on behalf of the patent proprietor/ appellant. The board, in T 1687/08, found that the requirements for representation by a legal practitioner were fulfilled, i.e. that the letter dated 16 January 2008 represented an authorisation which established that Mr J was entitled to represent the patent proprietor. The board stated that from the minutes of the oral proceedings and the decision under appeal it was apparent that the opposition division had not considered Mr J to be a legal practitioner under Art. 134(8) EPC. Instead, it had treated him as an accompanying person, and therefore applied the requirements set out in decision G 4/95 (OJ 1996, 412). In particular they had based their refusal to allow Mr J to speak on the failure of the patent proprietor to announce his intention that Mr J should be able to make oral submissions before the date set in the summons to oral proceedings pursuant to R. 71a EPC 1973. Since the patent proprietor had requested Mr J's participation in the oral proceedings as a legal practitioner under Art. 134(8) EPC, not as an accompanying person within the meaning of decision G 4/95, the division's decision not to allow him to speak had been taken under the wrong legal provision. The board concluded that such a denial by the opposition division of the right of representation had to be considered as a substantial procedural violation. Nor was the board convinced by the respondent's arguments that the authorisation in the letter of 16 January 2008 was late-filed because R. 71a EPC 1973 was applicable to the filing of authorisations. R. 71a(1) EPC 1973 concerned only the filing of "written submissions" and "facts and evidence"; authorisations did not fall into either of those categories. The decision under appeal was set aside, the case remitted and the appeal fee reimbursed.