Toujours la politesse

C. Mercer (GB)

In an earlier article (see epi Information 2/2008), I reported on a meeting with members of the Boards of Appeal at which the question of non-attendance at oral proceedings was raised. As a result of that meeting, I wrote that, as a matter of professional courtesy and good practice, any party intending not to attend an oral proceedings should inform the Appeal Board as soon as possible.

It now appears that non-attendance at oral proceedings is also becoming a problem for Examining and Opposition Divisions.

Non-Attendance at Examining Division Oral Proceedings

The EPO is getting worried that, in an increasing number of cases, the applicant fails to attend oral proceedings before an Examining Division which have been arranged at the applicant’s request. This causes difficulties for the Examining Division and in particular can mean that the Examining Division has to spend time and effort in dealing with a case in which the applicant has no interest. As a matter of professional courtesy and good practice, any applicant intending not to attend an oral proceedings must inform the Examining Division, and must do so as soon as possible. In the majority of cases, this occurs. It should occur in all cases. However, even where the Examining Division is informed, there can still be problems.

Even if the applicant indicates that it will not attend the oral proceedings, the applicant may not indicate whether the request for oral proceedings has been withdrawn. Unless the applicant withdraws the request, the Examining Division will have to continue with the oral proceedings.

If the applicant indicates that it withdraws its request for oral proceedings, the Examining Division will still not know whether the applicant is interested in the application. If the applicant is no longer interested, it would be of great assistance to the Examining Division for the applicant actively to withdraw the application. If the applicant is still interested in the case, it would also be helpful for the applicant to indicate that it requires a decision according to the state of the file.

In some cases, as indicated in the headnote of T3/90, if oral proceedings are appointed as a result of a party’s request for such proceedings on an auxiliary basis, and if that party subsequently states that it will not be represented at the oral proceedings, such a statement should normally be treated as equivalent to a withdrawal of the request for oral proceedings.

Applicants should also consider seriously whether, having requested oral proceedings, not turning up is a good option. If the application is refused and the applicant appeals with amended claims, it is possible that the Board would reject the claims as inadmissible as they were not submitted, as they could have been, to the Examining Division (see Article 12(4) RPBA).

The normal result of non-attendance at oral proceedings leads to an overall inefficiency in the examination procedure. It certainly does not convey the impression that the applicant is interested in the outcome of the case. It is difficult for the Examining Divisions to deal with cases more quickly if they have to hold oral proceedings on cases in which the applicant has no interest.

Non-Attendance at Opposition Division Oral Proceedings

It is also the case that a party to an opposition decides not to attend oral proceedings before an Opposition Division without giving notice or only giving notice late. This can lead to significant wasted costs if the party had requested translation and wasted effort if the preliminary opinion of the Opposition Division was clearly against the non-attending party. The Opposition Division can award the costs incurred by the other parties against the non-attending party but cannot award the EPO’s costs. Thus, again, any party intending not to attend oral proceedings before an Opposition Division should inform the EPO and other parties as soon as possible. The party should also inform the EPO whether the request for oral proceedings is withdrawn, whether the party wishes for a decision on the basis of the written submissions or whether the party is withdrawing from the proceedings completely. If the Proprietor no longer has any interest in the patent, it is recommended that it should withdraw its approval of the text of the patent and indicate that no replacement text will be filed so that the proceedings can be terminated quickly and finally.

Toujours la Politesse

Better communication with the ultimate client, whether this is an in-house business unit or a company instructing a representative in private practice, would ensure that decisions as to whether to request and attend oral proceedings and whether to maintain an application, a patent or an opposition are discussed and agreed. If possible, we should monitor whether the client is still interested in the case. In any event, on receipt of the summons to oral proceedings, we should ask the client whether it is still interested in the case. If it is not, we should find out whether the client is prepared to withdraw the application, patent or opposition, thus closing the proceedings.

We should also inform the client what we will do if the client does not give us any instructions. The two main possibilities would be to indicate either that we will only attend the oral proceedings if the client specifically instructs us to do so or that we will definitely attend the oral proceedings unless the client specifically instructs us not to. In the first case, we should also indicate that, in the absence of instructions, we will notify the EPO, as soon as possible after receipt of the summons, we will not be attending the oral proceeding and that we withdraw any request for oral proceedings.

If we make efforts to persuade clients to deal efficiently with all cases in which they no longer have any interest, it should be possible for the EPO to deal more efficiently with cases which are more important to our clients.