CHAPTER III ORAL PROCEEDINGS
1. General
By "oral proceedings" is meant formal proceedings within the meaning of Art. 116. The term does not therefore include informal personal interviews or telephone conversations, such as occur in examination proceedings (see C-VI, 6). In view of Rule 58(1), such informal personal interviews or telephone conversations are not allowed in opposition proceedings, in which more than one party is involved, unless the interview or telephone conversation concerns matters which do not affect the interests of other parties. An example is proceedings for examining the admissibility of opposition, provided this involves only the Office and the opponent concerned.
Oral proceedings will take place before the competent body, e.g. within the Receiving Section before the competent formalities officer and during the examination and opposition procedure before the whole Division.
»»Art. 18(2)
»»Art. 19(2)
2. Oral proceedings at the request of a party
If, in the course of proceedings, a party requests oral proceedings, the competent department must grant this request. The EPO will not inform the party concerned of this right but will expect him - if he does not obtain satisfaction from the competent department - to request oral proceedings (if he so wishes) before a decision is reached.
»»Art. 116(1)
"Nevertheless, oral proceedings shall take place before the Receiving Section at the request of the applicant only where the Receiving Section considers this to be expedient or where it envisages refusing the European patent application."
»»Art. 116(2)
The competent department will decide on the most appropriate date for the oral proceedings, which should only be held after the issues to be determined are sufficiently clear (see III, 5). If the competent department considers that a decision on the matter may be reached on the basis of the written evidence obtained and intends to take a decision (e.g. in accordance with Art. 97 or Art. 102) which fully concurs with the case put forward by the party or parties which requested the oral proceedings, the party or parties concerned should be informed accordingly and asked whether the request or requests for oral proceedings will be maintained even though the decision concurs with the case put forward; this will not apply if the party concerned has indicated that the request for oral proceedings has been made solely as a precaution to cover the eventuality of the case put forward by him not being accepted.
3. Request for further oral proceedings
"The EPO may reject a request for further oral proceedings before the same department where the parties and the subject of the proceedings are the same."
»»Art. 116(1)
Oral proceedings, particularly in opposition, are held to give the opportunity to finally discuss all matters raised and are normally terminated with a decision announced orally. The Division is bound by that decision, once announced, and it cannot reopen the proceedings to allow further submissions to be filed or to take into account new facts (see the two last paragraphs of VI, 2). Only if the Division, in the oral proceedings, has not announced a decision, but has decided to continue the proceedings in writing, can further submissions be examined. Such may be the case e.g. when the Examining Division indicates that it intends to grant a patent on the basis of the documents filed during the oral proceedings.
Thus, as a rule, in examination or opposition proceedings there will be no justification for further oral proceedings, for example where one of the parties wishes to re-examine from a different viewpoint a subject already discussed in the course of the proceedings, either before or during the original oral proceedings. However, if the oral proceedings are not terminated with a decision and after the oral proceedings the subject of the proceedings changes, for example where fresh evidence is admitted into the proceedings after the original oral proceedings, then a further oral proceedings will generally have to be held if requested (see T 194/96, not published in OJ).
4. Oral proceedings at the instance of the EPO
The competent department of the EPO may arrange for oral proceedings to take place without a request from a party if it considers this to be expedient.
»»Art. 116(1)
Oral proceedings will normally only be expedient if after an attempt at written clarification there are still questions or doubts which have a crucial bearing on the decision to be reached and which may be more efficiently or surely settled by oral discussion with the party or parties or if it is necessary to take evidence as part of oral proceedings (see IV, 1.3 and 1.6.1). The competent department should also bear in mind the need for economy in such procedures, since oral proceedings give rise to costs for both the EPO and the party or parties.
5. Preparation of oral proceedings
The purpose of oral proceedings should be to settle as far as possible all outstanding questions relevant to the decision. To this end proceedings should be carefully prepared after examination of all the written matter submitted and with this in mind the most appropriate date for conducting oral proceedings chosen.
Insofar as certain questions relevant to the decision are considered by the Office to require discussion, it will in many cases be expedient to inform the party or parties in a notice and possibly also to invite one or more of the parties to submit written observations or to produce evidence, where appropriate. Parties may produce evidence in support of their arguments on their own initiative. Where however the evidence is such as should have been put forward at an earlier stage, e.g. in opposition proceedings pursuant to D-IV, 1.2.2.1(v) and 5.4, it is for the competent body to consider whether the evidence not filed in due time shall be admitted (see VI, 2). Any observations should be received in time for them to be communicated to the other parties at the latest one month before the oral proceedings. The time limit for submission of observations should be fixed accordingly, particularly where the invitation to file observations is issued at the same time as the summons to oral proceedings.
If, exceptionally, a party wishes a document to be taken into consideration during oral proceedings which has not previously been introduced in the proceedings, the required number of copies of this document must also be submitted within the same time limit before the oral proceedings.
In proceedings with only one party, i.e. in proceedings before the Receiving Section or the Examining Division, there must be at least one copy for the competent department and in opposition proceedings at least one copy for the Opposition Division and the other parties.
As regards the late introduction of documents in oral proceedings, see III, 8.6.
6. Summons to oral proceedings
All parties must be duly summoned to oral proceedings by notification. The summons must state the subject and the date and time of the oral proceedings.
»»Rule 71
»»Art. 119
The summons will also be accompanied by a note drawing attention to the points which need to be discussed, will normally contain the provisional and non-binding opinion of the Division and will also fix a date up to which written submissions may be filed or documents which meet the requirements of the EPC may be submitted (see also D-VI, 3.2).
»»Rule 71a(1)
"At least two months' notice of the summons shall be given unless the parties agree to a shorter period."
The summons must state that if a party duly summoned does not appear as summoned, the proceedings may continue without him.
»»Rule 71
Opposition proceedings as a rule, even oral proceedings requested on the basis of totally different grounds for opposition, should be conducted as a single set of proceedings.
7. Requests for the postponement of oral proceedings
Requests for the postponement of oral proceedings must, for planning reasons, be received in good time before the arranged date. It will be possible to grant such requests only in justified cases, i.e. where refusal to do so would damage the party requesting the postponement and where the need for postponement does not arise from failure by that party to make provision for reasonably foreseeable circumstances (see also III, 8.3, fourth paragraph). Where appropriate, the consent of the other parties should be sought. If the competent body decides to postpone oral proceedings for official reasons, the parties should be notified as early as possible.
8. Conduct of oral proceedings
8.1 Admission of the public to proceedings
"Oral proceedings before the Receiving Section, the Examining Divisions and the Legal Division shall not be public."
»»Art. 116(3)
"Oral proceedings, including delivery of the decision (see III, 9), shall be public before the Opposition Divisions in so far as the Opposition Division does not decide otherwise in cases where admission of the public could have serious and unjustified disadvantages, in particular for a party to the proceedings."
This could, for example, be the case if one of the parties wishes to give information about sales figures or other commercial secrets in support of his case. Generally, the public will only be excluded whilst such information is being given.
»»Art. 116(4)
8.2 Conduct of oral proceedings
Before the Receiving Section oral proceedings will be conducted by the formalities officer and before the Examining or Opposition Divisions by the Chairman of the Division concerned.
The responsibilities of the person conducting the proceedings will include keeping order and conducting the proceedings as regards their formal and substantive aspects.
The person conducting the proceedings must in particular ensure that, where necessary, a list is prepared of all disputed or unclear points relevant to the decision to be reached, that these are discussed and that the party or parties have the opportunity of commenting on them.
On the other hand, the oral proceedings are to be conducted strictly and efficiently, so that the submissions of the party or parties and the discussions are not unnecessarily digressive and do not deal with points which are of no relevance to the decision to be reached. Repetition should be avoided as far as possible. In particular written material submitted at the appropriate time to the competent department and to the party or parties which has already been the subject of proceedings need not be read out in extenso. A simple reference to such written material may suffice.
8.3 Opening of oral proceedings: non-appearance of a party
The person conducting the proceedings will have the particulars of the persons taking part taken and their authorizations checked, where necessary, before the start of the oral proceedings. Parties and their representatives must identify themselves unless they are known to the person conducting the proceedings or any of the members of the Examining or Opposition Division. If parties do not appear or are not represented, a check will be made that they were duly summoned. The oral proceedings are then opened.
The person conducting the proceedings will introduce the parties present. He will have the particulars of the persons taking part in the proceedings recorded and will establish in what capacity they are present. Details of these steps and any consequences thereof will be recorded in the minutes (see III, 10).
If an absent party was not duly summoned, this is noted in the minutes and the oral proceedings are closed. A new date must be fixed for further oral proceedings.
If a party who has been duly summoned to oral proceedings does not appear as summoned, the oral proceedings may be conducted without him as a party should not be able to delay issuance of a decision by failing to appear.
»»Rule 71(2)
If, however, an adequately justified application for postponement has been received from a party who has failed to appear, in which it is convincingly argued, or is self-evident, that it was not possible to submit the application sufficiently early for the oral proceedings to be postponed in good time, the proceedings should be postponed and a new date fixed. If the delay in submitting the application is ascribable to the carelessness of the party concerned, the proceedings may, depending on the circumstances, still be postponed; if this happens in opposition proceedings, a decision on costs may have to be taken (see D-IX, 1.4).
If new facts or evidence are submitted during inter partes oral proceedings which a party, although duly summoned, fails to attend, it shall first be examined whether these submissions may be disregarded (Art. 114(2); see also 8.6 and VI, 2).
If new facts are taken into consideration, then at the end of the oral proceedings a decision based on these facts cannot be taken against the absent party.
New evidence can only be used against the absent party if it has been previously notified and merely supports the previous assertions of the party who submits it.
New arguments may be used anytime, insofar as they do not change the grounds on which the decision is based (see Opinion G 4/92, OJ 3/1994, 149).
An absent party cannot be considered taken by surprise if during oral proceedings the other side attempts to overcome objections raised before the oral proceedings. In particular, a submission during oral proceedings of a more restricted and/or formally amended set of claims with a view to overcome the objections of the opponent is not considered a "new fact"
(see T 133/92 and T 202/92, both not published in OJ). Neither is it unexpected that amended claims are examined for formal admissibility and for compliance with Art. 123(2) and (3) (see T 341/92, OJ 6/1995, 373).
8.4 Opening of the substantive part of the proceedings
In so far as necessary, the person conducting the proceedings will outline the stage reached in the proceedings and will indicate the most important matters in dispute according to the file. In examination or opposition proceedings this may also be done by the primary examiner.
8.5 Submissions by the parties
After the introduction referred to above, the party or parties will be allowed the floor in order to put their cases and to make applications on procedural matters and state the grounds thereof. In the normal course of events each party should have only one opportunity of making a comprehensive statement.
In opposition proceedings the opponents will generally speak first and the patent proprietor afterwards. Where there are a number of opponents, it may be expedient to grant the patent proprietor an opportunity of replying directly after the statement of each individual opponent. The opponents and the patent proprietor should be given the opportunity of making a final reply.
The submissions of the party or parties may be prepared in writing, although they should as far as possible be made extemporaneously. Passages from documents already introduced into the proceedings which are referred to again should only be read out where their precise wording is relevant.
Submissions by a person who is not qualified under Art. 133 and Art. 134 to represent parties to proceedings before the EPO may be admitted at oral proceedings when this person accompanies a professional representative representing that party. Such submissions, however, cannot be made as a matter of right, but only with the permission and at the discretion of the Examining or Opposition Division. In opposition proceedings the Division should consider in exercising its discretion whether (see Decision G 4/95, OJ 7/1996, 412):
(i) the party on behalf of which the person is to speak has filed a request to this effect;
(ii) the party making the request has indicated the name of the person, the subject-matter of the submission and the person's qualification to speak on this matter;
(iii) the request has been filed sufficiently in advance of the oral proceedings;
(iv) in the case of a late filed request, either there are exceptional circumstances justifying the admission of the submission or all the other parties agree to the making of the submission; and
(v) the submissions are made under the continuing responsibility and control of the professional representative.
If neither of the alternative conditions mentioned under (iv) are met, a late filed request should be refused. The time limit to be applied when deciding whether a request was late filed is that fixed in the summons under Rule 71a.
If a party is represented by an authorized employee rather than a professional representative the same considerations apply in respect of a person accompanying the authorized employee.
8.6 Facts, evidence or amendments introduced late
With respect to facts and evidence submitted late in the proceedings in general, see E-VI, 2.
Rule 71a(1), being an implementation of Art. 114(2) as a further development on the existing jurisprudence regarding facts or evidence not filed in due time, makes clear that the Division has a discretion to disregard new facts or evidence for the reason that they have not been filed before the date indicated in the summons under Rule 71a, unless they have to be admitted because the subject of the proceedings has changed. An example of such a change would be where, in timely response to the points raised in the note annexed to the summons, the proprietor files amendments which have the result that a new document becomes relevant; in such a case the opponent should be allowed to present this document and must be given a chance to comment on the amendments (Art. 113(1)).
»»Rule 71a(1)
Rule 71a(2) imposes the same obligations on the applicant or patent proprietor when submitting new documents which meet the requirements of the Convention (i.e. new amendments to the description, claims and drawings) as Rule 71a(1) imposes on the parties in submitting new facts and evidence. Here the Division also has the discretion to disregard amendments because they are filed too late before the oral proceedings. However, where the opponent files, before the indicated date, pertinent new material, the patent proprietor must be given a chance to present his comments and submit amendments (Art. 113(1)).
»»Rule 71a(2)
In exercising this discretion, the Division will in the first place have to consider the relevance of the late filed facts or evidence (see VI, 2) or the allowability of the late filed amendment, on a prima facie basis. If these facts or evidence are not relevant or if these amendments are clearly not allowable, they will not be admitted. Before admitting these submissions, the Division will next consider procedural expediency, the possibility of abuse of the procedure (e.g. one of the parties is obviously protracting the proceedings) and the question whether the parties can reasonably be expected to familiarize themselves in the time available with the new facts or evidence or the proposed amendments.
»»Rule 71a(1), (2)
As regards procedural expediency: where the late filed facts or evidence are relevant, but their introduction would cause a prolonged adjournment of the proceedings, the Division may decide to not admit these facts or evidence in the proceedings. An example would be where the witness lives abroad and still has to be found or lengthy tests are still necessary. The Division may, however, also postpone the proceedings and in doing so may have to consider the apportionment of costs (Art. 104).
An example of possible abuse of the proceedings would be a proliferation of auxiliary requests, introduced at short notice by the patent proprietor, which are not a reaction to the course of the proceedings. Another example would be an opponent who files an assertion of public prior use, based on activities of the opponent himself, late in the absence of good reasons for the delay (see T 534/89, OJ 7/1994, 464).
In opposition proceedings the parties should be heard on such matters. If the Opposition Division approves the introduction of new facts or evidence and if the other parties have not had sufficient time to study them, it should, where easily comprehensible subject-matter is involved, grant the parties an opportunity of familiarizing themselves with it, possibly by briefly interrupting the oral proceedings. If this is not feasible, the other parties must, upon request, be given the opportunity to comment in the proceedings subsequent to the oral proceedings, where appropriate in a further set of oral proceedings. Where possible, however, oral proceedings should not be adjourned. Where possible, legal commentaries, decisions (of a Board of Appeal, for example) and reports on legal decisions which are to be referred to in oral proceedings should be notified to the Opposition Division and the other parties in good time before the proceedings. They may, however, be quoted or submitted for the first time in the oral proceedings themselves if the Opposition Division agrees after consulting the parties.
As regards the costs which may be incurred for late submissions, see D-IX, 1.4.
8.7 Discussion of the facts and of the legal position
A discussion will be conducted with the party or parties concerning those technical or legal questions which are relevant to the decision and which, after the parties have made their submissions, do not appear to have been sufficiently clarified or discussed or are seemingly contradictory. Where necessary, it should be ensured that the party or parties file requests which are to the point and that the applicant or proprietor formulates the claims appropriately.
If the Examining or Opposition Division finds that some patentable subject-matter results from a limitation or an amendment of the claims, it should inform the applicant or proprietor of the fact and allow him an opportunity to submit amended claims based thereon.
If the competent department intends to depart from a previous legal assessment of the situation with which the parties are acquainted or from a prevailing legal opinion, or if facts or evidence already introduced into the proceedings are seen in a different light - e.g. during the deliberations of the Examining or Opposition Division (see III, 8.9) - so that the case takes a significant turn, the parties should be informed thereof.
8.8 Right of the other members of the Examining or Opposition Division to put questions
The Chairman must allow any member of the Examining or Opposition Division who so requests to put questions. He may determine at which point in the proceedings such questions may be put.
In oral proceedings questions may be put to the parties in connection with their statements or the discussion of the facts or of the legal position. When evidence is taken as part of oral proceedings questions may also be put to the witnesses, parties and experts called. As regards the right of the parties to put questions, see IV, 1.6.7.
8.9 Closure of oral proceedings
If the competent department considers that the matter has been sufficiently thoroughly discussed, it must decide on the subsequent procedure to be followed. Where the department consists of a number of members - as in the case of the Examining and Opposition Divisions – they shall, if necessary, deliberate on the matter in the absence of the parties. If new aspects emerge during the discussion and require further questions to be put to the parties, the proceedings may be restarted. The person conducting the proceedings may thereafter give the decision of the department. Otherwise he should inform the party or parties of the subsequent procedure and then close the oral proceedings.
While the department is bound by the decision it issues on substantive matters (see III, 9), it is free, as a result of further reflection, to inform the parties that it intends to depart from the procedure which it has announced.
The subsequent procedure may, for example, consist in the department issuing a further communication, imposing certain requirements on one of the parties, or informing the parties that it intends to grant or maintain the patent in an amended form. As regards the delivery of a decision in the last case, see III, 9.
If the patent is to be granted or maintained in an amended form it should be the aim to reach an agreement upon the final text in the oral proceedings. If, however, the Examining or Opposition Division indicates during the oral proceedings that it would be willing to grant or maintain a European patent provided that certain amendments are made which could not reasonably have been foreseen from the earlier procedure, the applicant or patent proprietor will be given a time limit of normally 2 to 4 months in which to submit such amendments. If the applicant or patent proprietor fails to do so, the application will be refused or the patent will be revoked.
9. Delivery of the decision
»»Rule 68(1), (2)
The delivery of the decision will follow a statement by the person conducting
the proceedings announcing the operative part of the decision (see also
III, 8.9 and X, 4).
The operative part may, for example, read as follows:
"The patent application ... is refused." or
"The opposition to the patent ... is rejected."
or
"The patent ... is revoked." or
"Taking account of the amendments made by the proprietor in the opposition proceedings, the patent and the invention to which it relates satisfy the requirements of the Convention."
Once a decision has been pronounced, submissions of the party or parties cannot be considered any longer and the decision stands, subject to the correction of errors in accordance with Rule 89. It may only be amended by appeal (see XI, 1, 7 and 8).
No pronouncement need be made at this point as to the reasons for the decision or the possibility of appeal. However the Examining or Opposition Division may give a short explanation of the reasons for the decision.
"Subsequently the decision in writing" containing the reasoning and information as to right of appeal "shall be notified to the parties" without undue delay. The period for appeal will only begin to run from the date of notification of the written decision.
Generally speaking it will not be possible to give a decision granting a European patent or maintaining it in amended form in oral proceedings since, in the case of the grant of a patent, the requirements laid down in Art. 97(2) and (5), and in the case of a patent being maintained in amended form, the requirements of Art. 102(3) and (5) must be fulfilled.
10. Minutes of oral proceedings
(As regards the minutes of taking of evidence, see IV, 1.7).
10.1 Formal requirements
»»Rule 76(1)
"Minutes of oral proceedings shall be drawn up."
The person conducting the proceedings must ensure that during the whole proceedings an employee is available to keep minutes. If necessary, during oral proceedings different employees may carry out the task of minute-writing in sequence. In this case it must be made clear in the minutes which section was drawn up by which employee. The employees are normally members of the competent department, e.g. the Examining or Opposition Division. The minutes are either taken down by hand by the member charged with the minute-taking or are dictated on to a dictating machine. If the minutes or parts of the minutes are dictated or read out, any objections to them must be raised immediately and recorded in the minutes. Following the proceedings the dictation or handwritten minutes are typed out.
The minutes shall be authenticated either by the signatures of the employee who drew them up and of the employee who conducted the oral proceedings or taking of evidence, or by any other appropriate means. "The parties shall be provided with a copy of the minutes."
Copies must be notified to them as soon as possible after the oral proceedings.
»»Rule 76(3)
»»Rule 76(4)
Provided the parties have been informed, oral proceedings may be recorded on sound recording apparatus. However, no person other than an EPO employee is allowed to introduce any kind of such apparatus into the hearing room (see Notice of the Vice-Presidents of the Directorates-General for Examination/Opposition and for Appeals, dated 25 February 1986 concerning sound recording devices in oral proceedings before the EPO, OJ 2/1986, 63). The recording should be kept until the end of any possible proceedings. Copies of the recording will not be provided to the parties.
The minutes must first include the date of the proceedings, the names of the members of the department, e.g. the Opposition Division, present and the name or names of the minute-writer or writers. Minutes must also include the details referred to in III, 8.3.
10.2 Subject-matter of minutes
Minutes must contain "the essentials of the oral proceedings" and "the relevant statements made by the parties".
»»Rule 76(1)
Relevant statements are, for example, new or amended procedural submissions or the withdrawal thereof, the fresh submission or amendment or withdrawal of application documents, such as claims, description and drawings, and statements of surrender.
The essentials of the oral proceedings include new statements by the party or parties and by the member or members of the department concerning the subject-matter of the proceedings. In examination and opposition proceedings the essentials are principally new statements arguing the presence or lack of novelty, inventive step and other criteria of patentability.
If in the course of the procedure prior to oral proceedings the department has delivered an opinion - e.g. on patentability - and changes this opinion in response to arguments put forward by the parties, e.g. following the deliberations of the Examining or Opposition Division, this must be mentioned in the minutes, with a statement of the reasons for doing so. The minutes should also contain procedural information, such as how the proceedings are to be continued after closure of the oral proceedings.
If a decision is given, the wording of the operative part must be reproduced in the minutes.
If the exact wording of a statement or submission is not of importance, only a concise summary of the essentials should appear in the minutes.
The minutes with the result reached during the proceedings are communicated to the parties as soon as possible.
|
