Knowledge & News

Playing Fairly in Appeals

3 September 2018

Following an appeal by both the patentee (Eli Lilly) and the opponent (Dr Armin K. Bohman), the Board of Appeal of the European Patent Office has, in T0156/15, raised important points regarding the completeness of a party’s case and the requirement for fairness to both parties in the proceedings, as well as the nature of admissible expert evidence.
Late-filed submissions

The patentee filed expert evidence less than two weeks before oral proceedings before the Board, in response to a preliminary opinion of the Board. One (D42) was a technical declaration, while the other (D43) was an opinion of a former member of both the Technical Board of Appeal and the Enlarged Board of Appeal. In particular, the opinion D43 centred on whether the claims of the patent under appeal recited subject matter which extended beyond the content of the parent application as filed.
The patentee argued that this evidence was filed in response to the Board’s preliminary opinion which was not in the patentee’s favour. The patentee argued that it had been surprised by this preliminary opinion, which contradicted the opinion of the Opposition Division, and, therefore, it was only after receipt of the Board’s preliminary opinion that it was able to respond to this new assessment of the claims.
However, the Board held that the patentee should not have been surprised that the Board disagreed with the Opposition Division. In particular, the opponent had appealed the decision of the Opposition Division. Thus, as the Board pointed out, if a decision is appealed, there is every possibility that the Board will disagree with the appealed decision. The patentee should, therefore, have considered such a possibility, and should have planned its strategy accordingly.
With regard to the technical declaration (D42), the Board considered that it set out a large number of facts and assertions which the opponent would need time to respond to. The Board considered that the opponent would not have sufficient time to respond without an adjournment (as D42 and D43 were filed less than two weeks before oral proceedings), but that an adjournment would be contrary to the principle of procedural economy (and had also not been requested). Thus, D42 was not admitted.
With regard to the opinion of the former member of the Technical Board of Appeal and of the Enlarged Board of Appeal (D43, the Board pointed out that expert evidence was intended to assist the Board in matters which lie outside their technical expertise. However, the assessment of whether the claims recite subject matter extending beyond the content of the parent application as filed is entirely within the expertise of the Board of Appeal. The Board also considered that, if it were swayed by D43, it would be lending undue weight to the individual making the argument, rather than focus on the argument itself. Thus, D43 was also not admitted.
Late-filed requests

Auxiliary Requests 19 and 20 were filed during oral proceedings before the Board. In particular, Auxiliary Request 19 was filed only after the Board had announced the results of its deliberations on the Main Request and the preceding Auxiliary Requests, and Auxiliary Request 20 was filed only after the Board had announced the result of its deliberations on Auxiliary Request 19.
As a general point, the Board held that the “reactive approach” of the patentee was a fundamental flaw because it is incompatible with the judicial nature of appeal proceedings. In particular, all parties to the proceedings have a right to know from the start of proceedings the essential aspects of the case they have to meet, and the Board pointed out that the Rules of Procedure for the Boards of Appeal (Article 12(2)) requires the statement of grounds for appeal to set out the party’s complete case. Although the Board has discretion to admit late-filed facts, evidence and requests, the Board held that the overarching consideration when exercising discretion must always be that the proceedings are fair. The Board considered that, when a party reacts mainly to the communications or opinions of the Board, rather than to the submissions of the other party, it seeks an unfair advantage over the other party.
Referring to Auxiliary Requests 19 and 20 specifically, the Board held that these Requests were not admissible: firstly because they did not, prima facie, overcome the objections that they were directed towards and they raised new issues which needed to be considered; secondly, because the Board held that they were filed to allow the patentee to adjust its strategy in view of the Board’s deliberations during oral proceedings. The timing of the filing of these Auxiliary Requests meant that it was difficult for the opponent to react, thereby providing an unfair advantage to the patentee. The Board held that this was hard to reconcile with the principle of fairness of the procedure, and commented that this reason alone would have been enough to refuse admission even without considering whether the Auxiliary Requests overcame the deficiencies noted in the preceding Auxiliary Requests.
This decision highlights several points. First, that an appellant’s case must be as complete as possible at the time of filing the statement of grounds of appeal, and parties should, from the outset of the appeal, consider the possibility that the Board of Appeal might not agree with the first instance decision.
Second, parties should act in a way which is fair towards the opposing parties. In particular, this means that parties should not act in a manner which is reactive only to the Board’s opinions but, rather, should act in a manner which is reactive to the other party’s submissions.
Finally, parties should be careful that expert evidence provides guidance only on issues which are not within the expertise of the Board of Appeal.


Sophie Topham

Sophie Topham Associate London (UK) Chartered (UK) and European Patent Attorney

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