Oral proceedings all’EPO in presenza di terze parti: la procedura e il comportamento in udienza 27 Aprile 2016, Bologna - Per seminario AIPPI Marco Conti

CONTENTS 2 1. EPO inter partes proceedings - overview 2. Substantial aspects 4. Parties behaviour 5. Tips 3. Procedural aspects

3 Chapter 1: EPO inter partes proceedings - overview

EPO composition 4 First instance Formalities Grant Refusal Appeal Opposition Maintenance Revocation Limitation Second instance Search Examination

Legal framework [1] 5

Legal framework [2] 6

Possible outcomes 7 Opposition final stage

Compositions 8 Opposition Division: R 19 EPC Board of Appeal: A 21(4) Chairmen - technical member- I member - technical - II member - technical member - (Legal member, to hear witnesses) 2 (3) technical members (chairman) 1 (2) legal members

9 Chapter 2: substantial aspects

Legal basis [1] 10 Right to be heard (A 113 EPC) - (1) opportunity to present comments - (2) decision on text submitted or agreed by proprietor - (4) public, if from opposition (granted patent) - (1) either instance of EPO or request of party Oral proceedings (A 116 EPC)

Legal basis [2] 11 Examination by EPO of his own motion (A 114 EPC) - (1) EPO shall examine the facts of his own motion; shall not be restricted to facts, evidence and arguments provided by the parties and the relief sought. - (2) EPO may disregard facts or evidence not submitted in due time by the parties concerned G9/91, G1/99 restrict application in inter partes proceedings R 76(2) EPC, RPBA 12-14

Grounds of opposition [1] 12 A 100 EPC - (a) not patentable under A52-57 (A54 novelty, A56 inventive step) - (c) subject matter extending beyond original disclosure (A123(2) amendments, A76(1) divisional applications - (b) insufficiency of disclosure (A83)

Grounds of opposition [2] 13 A 100 EPC - A123(3) EPC: broadening of scope  strict interpretation - A84 EPC: clarity  loose interpretation G3/14 Never a ground: A82 EPC, unity of invention A 101(3), R 80 EPC Possible additional grounds in case of amendments: A123(3) EPC, A84

14 Chapter 3: procedural aspects

Opposition: procedural steps 15 Opposition proceedings EPO Possible further writs between parties Reply to grounds of opp. 1m Patent grant 9 m Grounds of opposition Oral proceedings Last submissions Summons to oral pr. Opponent Patentee Time Limit Colours meaning:

Appeal: procedural steps 16 Appeal proceedings EPO Possible further writs between parties 1m Decision 2 m Notice of appeal Oral proceedings Last submissions Summons to oral pr. Appellant Other party Time Limit Colours meaning: 2 m Grounds of appeal Reply to grounds of appeal

Opposition outline 17

EPO rules of procedure 18 EPO Guidelines vs. RPBA - Opposition division (I instance): bound by Guidelines - BoA (II instance): not bound by the Guidelines; bound by EPC, G decisions

Late filings [1] 19 Legal provisions A 99(1) + Rule 76(2)(c) EPC; A114(2) EPC - Fresh grounds for opposition  grounds raised after the 9 month opposition period. - Late-filed facts or evidence  For opponent: after 9 month opposition period  For proprietor: after the reply to the opposition Exception: if filed as answer to unforeseeable turn of events

Late filings [2] 20 Admissibility criteria G10/91 on fresh grounds: prima facie relevance to the maintenance of the patent + A114(1) EPC T1002/92 late-filed facts, evidence : prima facie relevance to the maintenance of the patent + R 76(2)(c) EPC Further criteria: procedural abuse, excessive delay (e.g. T633/97) New arguments normally accepted (G4/92, but T1621/09)

Late filings [3] 21 Admissibility criteria - BoA Relevance criterion applies, more strict A 12(2) RPBA: the statement of grounds of appeal and the reply shall contain a party's complete case. A 12(4) RPBA: BoA has discretion to hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the first instance; everything presented by the parties shall be taken into account by the Board if and to the extent it relates to the case under appeal and meets the requirements in (2).

Late filings [4] 22 Admissibility criteria - BoA A 13(1) RPBA: any amendment to a party's case after grounds of appeal or reply may be admitted at the BoA discretion, in view of inter alia complexity new subject matter submitted, current state of proceedings procedural economy. A 13(3) RPBA: amendments after oral proceedings have been arranged shall not be admitted if they raise issues which the Board or the other party cannot reasonably be expected to deal with without adjournment of the oral proceedings.

Late filings [5] 23 Admissibility criteria – summary RPBA

24 Chapter 4: Parties behaviour

EPO approach to OP 25 One issue at the time! - Requests cascade: Main  Auxialiry 1  Aux Grounds / admissibility logic order (+ EPO discretion)

EPO approach to OP 26 - Postponement only for very serious reasons - Grounds / admissibility logic order (+ EPO discretion) - Accompanying persons (who speak) only upon request (G4/95: information indicated in the request)

Party’s behaviour [1] 27 > Identify your strong /weak points, focus on the strong points. > Check EPO preliminary opinion. Set up arguments going beyond previous writs. > If possible, avoid new last-minute submissions during the oral proceedings (e.g. new documents or claim requests). > Do not address the other party directly

Party’s behaviour [2] 28 > Speak only when invited by the chairman, do not interrupt the other party or the division/board > Listen to the division/board for a hint, adapt your strategy to the direction it is taking. > Provide copies to the parties and the division/board for any new document brought forward at the oral proceedings. > After the division/board has announced an opinion on a certain issue, do not go over it again, unless you have VERY serious reasons to do so.

29 Chapter 5: tips

Tips [1] 30 > If you cannot attend oral proceedings, inform the EPO and the other parties well in advance (risk an apportionment of costs against you) > Prepare your documents thoroughly and arrive in good time > Don't show body language > Don't talk to the other party; and don’t ignore the division/board.

Tips [2] 31 > Don't ignore any signs/messages given by the division/board > Careful about implicit abandoning of grounds of opposition or requests > Don't mix the issues or the various grounds! > Present your requests in time

Tips [3] 32 > Once a decision (or even an opinion) has been announced by the opposition/board, don't reopen the discussion. > With simultaneous interpretation, switch on/off your microphone, use short sentences to help the interpreters > As proprietor, do not refer to features which are not present in the claim under discussion > As proprietor, bring clean copies of the patent document, also in electronic form.

Tips [4] 33 > Be prepared to react if any submission goes beyond this legal and factual framework > As opponent, when filing late documents, explain why they should be admitted (relevancy; why not filed earlier) > As proprietor, when presenting requests at oral proceedings, be very careful as to they: − do not comprise elements taken from the description − do not infringe Article 123(2 and 3) − are clear (Article 84) − do overcome the objections raised

Tips [5] 34 > Prepare your next arguments during deliberation > Consider asking to put certain statements into the minutes in case of parallel infringement proceedings > Opponent: if many auxiliary requests, be careful considering to raise minor issues (taking precious time) > Proprietor: be careful not to waste time at the beginning, to keep more chances to have possible new requests admitted at a later stage of the oral proceedings

END 35 Thanks P: F: Ing. Marco Conti, Ph.D