Maiwald Patentanwalts GmbH

1
Maiwald Patentanwalts GmbH
Practical Approaches of European Oppositions
Before The European Patent Office

• __________________________________
• Dr. Walter Maiwald

2
Maiwald Patentanwalts GmbH
Practical Approaches of European Oppositions
Before The European Patent Office

• Selecting and preparing evidence
• The European Patent Convention provides no
  effective limitation of the evidence that can on
  principle be used in an opposition
• These are no final lists (note "include"). Other
  types of evidence are admissible (G 11/91, OJ EPO
  93, 125).

3
Maiwald Patentanwalts GmbH
Practical Approaches of European Oppositions
Before The European Patent Office

• In terms of practical importance, the sequence is
  more like this
• production of documents
• requests for information
• hearing witnesses -
  requires a decision under Rule 117 EPC
• hearing the parties -
  requires a decision under Rule 117 EPC
• opinion by experts -
  requires a decision under Rule 117 EPC
• sworn statements in writing - the EPO
  may involve a competent national
• 
  court under Rule 120 EPC
• inspection -
  requires a decision under Rule 117 EPC
• 
  

4
Maiwald Patentanwalts GmbH
Practical Approaches of European Oppositions
Before The European Patent Office
Do not rely on the EPO to establish the
facts you need, as an opponent, for you! You
have to make your own case, T 73/86 T 600/90 T
34/94 compare especially T 472/92, OJ EPO 98,
161 T 750/94, OJ EPO 98, 32. Where the EPO
is convinced that your evidence is sufficiently
relevant, it may reverse the onus of proof T
129/88, OJ EPO 93, 598 T 582/90 (for a prior
public use). In such cases, there will be a
consequent need for the patentee, to establish
the irrelevance of the opponent's allegation.


5
Maiwald Patentanwalts GmbH
Practical Approaches of European Oppositions
Before The European Patent Office
Documents include (but are not limited to) -
patent documents, e.g. all older published
applications and granted patents file
wrapper contents once open to inspection
(everything, unless expressly excluded from
inspection!) priority documents in (foreign)
public file wrappers (T 315/02) -
"general knowledge of skilled persons" where laid
down in Encyclopaedias, textbooks,
dictionaries note that this does not apply
where a relevant search effort would be
required, T 171/84, OJ EPO 1986, 95 T 676/94, or
the info is not straightforwardly and
unambiguously applicable, T 206/93 - technical
and scientific publications there are often
problems showing the fact and date of
publication T 611/95 T 842/91 T 314/99 (where
it was not enough to show that a thesis had
been in a University library, in the absence
of evidence for corresponding information
accessible to the public)

6
Maiwald Patentanwalts GmbH
Practical Approaches of European Oppositions
Before The European Patent Office
- commercial publications (company brochures,
catalogues, manuals, specifications, product
leaflets ). Such materials are often difficult
to use in the absence of a printing date and
sufficient evidence for actual distribution
T 37/96 T 328/00 etc. - published papers,
transcripts, private notes etc. reflecting oral
presentations, e.g. at congresses,
conventions, public presentations often used
to establish more disclosure than what they
actually comprise, T 1212/97. May be
supplemented by witness statement, commonly in
the form of a declaration. The witness may
be summoned to oral proceedings and cross-
examined

7
Maiwald Patentanwalts GmbH
Practical Approaches of European Oppositions
Before The European Patent Office
- Prior public use is generally supported by
documents, and these are generally accepted
"at face value". However, there will be a
tendency, in most cases, to refrain from
interpreting such documents especially from
adding to their straightforward disclosure.
Beware of gaps and do not rely on "plausible" or
"self-evident" facts to fill any gap. To
support prior public use, the opponent must prove
("beyond reasonable doubt" or "to the
hilt") - the features of the allegedly used
product or method - the fact that these
features were made available to the public (one
act of publication, to one member of the
public, may be quite enough, T 482/89 T
1022/99). In both aspects, declarations by
witnesses may be highly relevant. Where
this is the case, prepare for the witnesses being
summoned to appear at oral proceedings, and
prepare (then) for cross-examination.

8
Maiwald Patentanwalts GmbH
Practical Approaches of European Oppositions
Before The European Patent Office
Witness evidence by interrogating the witness
in oral proceedings inevitably means that
the EPO takes an active role in establishing the
facts. The EPO will do its own questioning
and it is difficult to control this, as a
party. There is very little formality involved.
Preliminary discussions between a party and
its witness are basically acceptable (and
expected) but attempts at influencing a
witness can be detected (even in the initial
interrogation by by the Division, and
especially in the later cross-examination).
The examiners are free to evaluate the witness
statement as they think fit, T 665/00 T
270/90, OJ EPO 93, 725 T 750/94, OJ EPO 98, 32.
Most examiners are technically trained
people, with an addiction to facts and data,
and a healthy cautiousness where "lawyering" and
legalistic arguments are concerned.

9
Maiwald Patentanwalts GmbH
Practical Approaches of European Oppositions
Before The European Patent Office
- You may use evidence generated by
yourself. You may need to supplement
your documents with data that need to be
generated first by experiment or test. Many
oppositions fail because no such data are
supplied by the opponent, or the supplied data
can be criticized for being inaccurate
and/or not squarely based on the reference
obtained by inappropriate testing or
experimentation etc. Experiments need to
be carefully planned, and always take longer
to perform. This is an aspect you need to
address as early as possible - and this is
true for both parties!

10
Maiwald Patentanwalts GmbH
Practical Approaches of European Oppositions
Before The European Patent Office
- Any party can rely on its own expert
statements. These are commonly supplied in
the form of declarations. Any party may bring
their own expert(s) to oral proceedings,
and the expert may provide statements there and
then. - A party expert may only speak
at oral proceedings if - this is expressly
requested by the party the expert has to be
identified, and it has to be stated what
he/she will speak about - this request must
be made well before the oral proceedings
(usually, by the submission deadline of Rule
115 (1) EPC) - the expert must make his/her
statements under supervision of the party's
legal representative - the "expert" can be a
patent lawyer from a non-EU country, G 4/95,
OJ EPO 96, 412.

11
Maiwald Patentanwalts GmbH
Practical Approaches of European Oppositions
Before The European Patent Office
- The EPO will rarely interrogate a
party, and is even less likely to appoint an
expert. It will generally avoid taking evidence
by inspection, or trying to force anybody to
provide a sworn statement.

12
Maiwald Patentanwalts GmbH
Practical Approaches of European Oppositions
Before The European Patent Office
So Rely on documents, especially those not
created for the purposes of the opposition
procedure, as the basis of your argument. Where
necessary, supplement the disclosure of your
documents by the results of your own testing or
experimentation. You may need to supply
additional facts, and/or support your
allegations based on documents, by offering (and
initially, at least basically, providing by
declaration) witness evidence. You may also need
to file your own expert statements, by
declaration - and you may bring your own expert
to oral proceedings. Make sure your written
evidence leaves no gaps and is commensurate
with the claims in dispute. Make sure your
data are complete, correctly obtained, and
support your position! Understand what your
witnesses and experts can (and will)
contribute, also under cross-examination!
13
Maiwald Patentanwalts GmbH
Practical Approaches of European Oppositions
Before The European Patent Office

• 2. Using evidence
• - Rule 76 (c) EPC (only) requires that an
  opponent must make a (potentially successful)
  argument, to open the opposition procedure. This
  has been confirmed in a number of decisions, e.g.
  T 222/85, OJ 88, 128 T 925/91, OJ EPO 95, 469
  T 1097/98. There is no need
• to provide all evidence necessary for a final
  examination, within the nine month opposition
  terms, T 1069/96. Generally, the EPO's
  Opposition Divisions and Appeal Boards are
  disinclined to reject an opposition under Rule
  76 (c) EPC, for insufficient initial argument.
• - This means that additional evidence can be
  submitted by an opponent after the end of the
  opposition term.

14
Maiwald Patentanwalts GmbH
Practical Approaches of European Oppositions
Before The European Patent Office
- The patentee will be given an
(extendable) term for responding to the
opposition, Rule 79 (1) EPC. There is no sanction
comparable to rejection of the opposition as
inadmissible under Rule 76 (c) EPC. An
incomplete reply can generally be supplemented
later, including the submission of amended
claims.

15
Maiwald Patentanwalts GmbH
Practical Approaches of European Oppositions
Before The European Patent Office

• - However, there is a deadline to be
  observed by both parties

16
Maiwald Patentanwalts GmbH
Practical Approaches of European Oppositions
Before The European Patent Office
In our experience, it is not generally a good
idea to supply the EPO with all evidence which
might possibly be relevant. Where the objections
raised are well substantiated, we prefer to use
only the most relevant evidence, at least
initially, and keep the discussion focused
on this, also in the later procedure. Often,
this is a scenario for early, brief submissions
and quick responses. Where the evidence is
suboptimal, it can however be advantageous to
submit all evidence at hand, without much
analysis. Some EPO examiners will then try to
make the submitting party's case, better than the
party itself. Often, this is a scenario for
late, long submissions and last minute
responses. This applies, mutatis mutandis, also
to the patentee's strategy.
17
Maiwald Patentanwalts GmbH
Practical Approaches of European Oppositions
Before The European Patent Office

• 3. Combating the other party's arguments
• The EPO's Opposition Divisions and Appeal Boards
  are formed from
• technical examiners (legally trained members, if
  at all involved, play very
• limited roles). Most examiners are
  fact-oriented, but have no specialist
• technical knowledge in the case's field. Most
  examiners are wary of
• being manipulated by clever lawyers.

18
Maiwald Patentanwalts GmbH
Practical Approaches of European Oppositions
Before The European Patent Office
This has some important consequences -
Data , test results, experimental results and
other such "hard facts" play a major role
in convincing a panel. You win opposition cases
based on data. Do that experiment, and a
second one if you can. Do it upfront you
may not have the time later (and it will take
longer to do than you think, anyway).
- Where the other side relies on data, expose
any weakness in them and submit your own
data. - Avoid legalistic arguments. Many
examiners have a fondness for "technical
reality" (or rather, what they believe this is)
and prefer a technical argument over a
dogmatic one. Where you have a legal point,
make it short and snappy. - If your case is
in trouble, it may help to submit your evidence
at a late stage.
19
Maiwald Patentanwalts GmbH
Practical Approaches of European Oppositions
Before The European Patent Office

• 4. Timing of submissions
• There are circumstances where late submission of
  evidence appears
• advantageous.
• Note however, that
• - submitting new data by the deadline of Rule
  116 (1) may cause then
• to be disregarded. The other side will
  argue that there is not enough
• time left to do its own testing.

20
Maiwald Patentanwalts GmbH
Practical Approaches of European Oppositions
Before The European Patent Office

• - Submitting arguments and evidence too late
  (though well before the
• Rule 116 (1) deadline) may be ineffective, if
  the panel has already
• formed its opinion and is reluctant to revisit
  a taken position. Where,
• in first instance, the panel must initially
  consider the merits (when it
• has to write the Rule 116 (1) EPC
  communication, when summoning
• the parties to oral proceedings) it may take a
  position which it is later
• unwilling to change.
• - Submitting (admissible, since relevant)
  non-data evidence after the
• deadline of Rule 116 (1) EPC may be
  ineffective, if you get too close
• to the hearing date, and only get it in after
  the panel's deliberation
• preparing the hearing.

21
Maiwald Patentanwalts GmbH
Practical Approaches of European Oppositions
Before The European Patent Office

• 5. Oral Proceedings
• - Generally take place only if requested by at
  least one party.
• - Should be requested
• - because this makes timing easier,
• - to avoid surprise decisions,
• - because the discussion may produce the
  panel's opinion, or even
• change it,
• - because they often are the patentee's last
  chance to revise
• the claims.

22
Maiwald Patentanwalts GmbH
Practical Approaches of European Oppositions
Before The European Patent Office

• The EPO will issue a summons to attend oral
  proceedings, at least two months before the
  hearing date (Rule 115 (1) EPC).
• In first instance, the EPO must provide at least
  some comments on what must be discussed, with the
  summons (Rule 116 (1) EPC).
• These comments may range from the bleak
  ("Novelty will have to be discussed") to the
  copious (the draft decision grounds). Note that
  the AB's are not required to provide such
  comments, but sometimes do.
• These comments needs to be studied very
  carefully. An experienced European Patent
  practitioner will often be able to read from them
  quite precisely the strengths and weaknesses of
  the parties' respective positions.
• Any submissions after receipt of the summons
  should address the issues raised in the EPO's
  comments.

23
Maiwald Patentanwalts GmbH
Practical Approaches of European Oppositions
Before The European Patent Office

• 6. Rejecting panel members or panels
• A party may, in certain cases, come to believe
  that the unfavourable
• actions of a single examiner or indeed a
  complete Division or
• Appeal Board are in conflict with accepted EPO
  practise, and that there
• is method behind this.
• But can you do something about this?

24
Maiwald Patentanwalts GmbH
Practical Approaches of European Oppositions
Before The European Patent Office

• Consider Article 24 (3) EPC

25
Maiwald Patentanwalts GmbH
Practical Approaches of European Oppositions
Before The European Patent Office

• - While Article 24 EPC verbatim only relates to
  Appeal Board members,
• it is applicable to examiners at Divisional
  level, G 5/91, OJ EPO 92, 617.
• - According to T 433/93, OJ EPO 97, 509 and T
  900/02, the standard
• is whether the party concerned could, for good
  reasons, fear that the
• office procedure might not be fair (in a case
  where retrial by the
• Opposition Division was ordered by an Appeal
  Board, and the party
• was afraid that the Division might be
  influenced by its original opinion).

26
Maiwald Patentanwalts GmbH
Practical Approaches of European Oppositions
Before The European Patent Office

• - Note that by these standards, incompetence is
  not a valid ground of
• objection to a panel member. Objection is only
  given where a party is
• deliberately disadvantaged, or has a good
  reason to fear that this might
• occur.
• - Consider a case we had, T 479/04. We were
  acting for the opponent.
• The problem started when we received a
  preliminary opinion from the
• Opposition Division, of the "full decision
  grounds" type, stating not
• only that the Opposition Division intended to
  maintain the patent in
• amended form, but further asking the opponent
  to withdraw the request
• for oral proceedings, and requesting the
  patentee to adapt the description
• to the amended claims.

27
Maiwald Patentanwalts GmbH
Practical Approaches of European Oppositions
Before The European Patent Office

• We objected to the complete Opposition Division
  for fear of prejudice.
• The Opposition Division went on with the
  procedure, including oral proceedings, without
  paying any attention to our objection. It decided
  (without argument) that there was no ground for
  the objection, in its decision on the merits.
  The Appeal Board (3.3.3, under R. Young)
  decided that this was correct there was no need
  for the Opposition Division to decide on the
  objection before deciding on the merits.
• The Appeal Board did not accept that this
  effectively removes the right to object,
  one important purpose of which is to prevent
  decisions on the merits by biased examiners.
• Consider an Opposition Division which was found
  to have been lavishly entertained by a party,
  while working on the case, and consider that this
  did indeed influence the panel. What would
  you expect to happen?

28
Maiwald Patentanwalts GmbH
Practical Approaches of European Oppositions
Before The European Patent Office
Thank you for your attention.

• Dr. Walter Maiwald
  maiwald_at_maiwald.eu
• Maiwald Patentanwalts GmbH
  www.maiwald.eu
• München Hamburg Düsseldorf, Germany