Opposition Matters 2020 - European Patent Office

Opposition Matters 2020

Online conference

21-22 October 2020

Auxiliary requests –

when and how?

Margarita Garcia | Alexandre Bitton

Source: epi

PhD in Chemistry (Warwick University)

European Patent Attorney at Total Research

& Technology Feluy (5 years) –

Polymers & Catalysts

EQE (2012)

[email protected]

3

Presenter

Margarita García Martín

mailto:[email protected]

Source: European Patent Office 4

Presenter

MSc in Engineering (FR/SE)

Test engineer – Automotive Industry

Examiner at the EPO in The Hague (19 years) –

Mobility & Mechatronics

Member of the Opposition directorate

EQE (2008)

LLM – CEIPI (2020)

[email protected]

Alexandre Bitton

mailto:[email protected]

European Patent Office 5

General considerations – Definition

Quiz:

Are auxiliary requests defined or mentioned in the EPC?



Quiz:

Are auxiliary requests defined or mentioned in the EPC?



In examination: T 79/89

CLB2019; III.I.1

No mention of auxiliary request in the EPC

Confirmed by case law: Opposition T 234/86

Definition:

An auxiliary request is a request for amendment

which is contingent upon the main request (or preceding

auxiliary requests) being held to be unallowable. (T 153/85)


Statistical data

Statistical data on applications/patents

for which a final action was dispatched

in 2019

Source: Directorate Business Analysis

and Planning

Percentage of files with auxiliary requests

Opposition Examination

64% 8%


Statistical data



in 2019


and Planning

Last set of auxiliary requests filed (in %)

7

77

1623

64

13

0

10

20

30

40

50

60

70

80

90

Exam Oppo

After deadline of

R.116 EPC

After summons and

up to deadline of

R.116 EPC

Before the

summons


Statistical data

Quiz:

Are oral proceedings cancelled in more than 20% of the case

after auxiliary requests are filed?


Statistical data



in 2019


and Planning

Outcome on O.P. after filing auxiliary requests

Opposition Examination

15%

58%

27%

8%

12%

80%

non attendance cancelled took place


Specificity of opposition proceedings

Publication

of Grant

Notice of

opposition

Expiry of

opposition

period

T0+15 months

(straightforward

cases)

Invitation to

proprietor to file

comments or

amendments

T0

9 months

Written

decision



Publication

of Grant

Notice of

opposition

Proprietor's

reply

(4 months)

Summons to

oral proceedings

(normally 6 months

in advance)

Expiry of

opposition

period

T0+15 months

(straightforward

cases)

Invitation to

proprietor to file

comments or

amendments

Communication

to opponent of

Proprietor's reply

without time limit

for filing comments

9 months

T0

Written

decision



Publication

of Grant

Notice of

opposition

Summons to

oral proceedings

(normally 6 months

in advance)

Expiry of

opposition

period

T0+15 months

(straightforward

cases)

Invitation to

proprietor to file

comments or

amendments

Communication

to opponent of

Proprietor's reply

without time limit

for filing comments

9 months

T0

Final date

for submissions/

amendments

(normally 2

months before

oral proceedings)

Written

decision

Proprietor's

reply

(4 months)

Oral

proceedings



(GL, E-III, 8.6)

Late filed for the Opponent

Subject to Art.114 EPC, unless change

of the subject of the proceedingsPublication

of Grant

Notice of

opposition

Expiry of

opposition

period

9 months

T0

T0+15 months

(straightforward

cases)

Written

decision



Publication

of Grant

Notice of

opposition

Expiry of

opposition

period

Invitation to

proprietor to file

comments or

amendments

T0

Late filed for the Proprietor

Subject to Art.114 EPC,

unless change of the subject of the

proceedings (GL, E-III, 8.6)

9 months

Proprietor's

reply

(4 months)

Written

decision



Publication

of Grant

Notice of

opposition

Summons to

oral proceedings

(normally 6 months

in advance)

Expiry of

opposition

period

Final date

for submissions/

amendments

(normally 2

months before

oral proceedings)

Late filed for the

Opponent/

Proprietor

Subject to

Art.114 or

R.116 EPCInvitation to

proprietor to file

comments or

amendments

Communication

to opponent of

Proprietor's reply

without time limit

for filing comments

T0

9 months

Written

decision

Oral

proceedings

Proprietor's

reply

(4 months)



Publication

of Grant

Notice of

opposition

Summons to

oral proceedings

(normally 6 months

in advance)

Expiry of

opposition

period

Final date

for submissions/

amendments

(normally 2

months before

oral proceedings)

Communication

to opponent of

Proprietor's reply

without time limit

for filing comments

T0

9 months

Late factor

Written

decision

Proprietor's

reply

(4 months)

Oral

proceedings

European Patent Office

The opposition division cannot refuse to admit

amendments in advance

Right to be heard always to be respected

(i.e. no surprise; opportunity to comment)

20

Admissibility of (auxiliary) requests

Guidelines, H-II, 3

Guidelines,

H-III, 3.4 ; H-II, 3

E-VI, 2.1 and 2.2; E-III, 8.6

Admissibility

Rule 80 EPC

Rule 116 EPC: late filed

Prima facie assessment (G9/91; G10/91)

Procedural efficiency



Proprietor's reply

to the notice of

Opposition (4 months)

time

Number of requests


Admissibility of (auxiliary) requests – late filed

Case Law 2019, 9th ed.

IV. C. 5 & V. A. 4.12.4

Guidelines

E-VI,2.2 ; H-II, 2.7.1

Convergence

▪ Convergence not directly mentioned in opposition

▪ Convergence in appeal for opposition files

Clear allowability

Prima facie assessment – EPC requirements met


Auxiliary request – anticipation (1/2)

Article 12 & 13 –

Rules of procedure of the BoA, 2020

(in force as of 01.01.2020)

First instance vs. second instance


Auxiliary request – anticipation (2/2)

Article 12 & 13 –

Rules of procedure of the BoA, 2020

(in force as of 01.01.2020)


T2214/15 (08.04.2020)

Auxiliary request 3 filed during the oral proceedings

and not admitted by the Board because there were

no exceptional circumstances in the present case,

as required by Article 13(2) RPBA 2020.

"… primary object of the appeal proceedings …

a judicial review of the impugned decision,

see Article 12(2) RPBA 2020"


Auxiliary request & VICO

Decision of the President of the

European Patent Office dated

14 April 2020 concerning the pilot

project for oral proceedings by

videoconference before opposition

divisions

(entry into force on 4 May 2020)

Pilot programme since May for oral proceedings


Auxiliary request & VICO (1)

Article 6 (2) –



14 April 2020 concerning the pilot project

for oral proceedings by videoconference

before opposition divisions


Where oral proceedings before an opposition division are held

by videoconference, documents submitted by one of the

parties in accordance with paragraph 1 will be transmitted to

the other parties by email to the email address specified by

each of those parties during the videoconference.

@


Auxiliary request & VICO – Quiz

Quiz:

Is it allowed to share your screen with the OD and other parties

during the VICO?



Article 6 (3) –







If the opposition division consents, a party may present its

screen for illustrative purposes; an item displayed in that way

will not be considered to constitute a document submitted

by that party.

≠



Article 6 (1) –







Where oral proceedings before an opposition division are held

by videoconference, documents are to be filed by means of

electronic communication in accordance with the substantive

provisions of the relevant decision of the President of the

European Patent Office. Where those provisions refer to

proceedings before an examining division,

they apply mutatis mutandis.



Article 1 (1) –



13 May 2020 concerning the filing of

documents during telephone consultations

and during interviews and oral proceedings

held by videoconference


During telephone consultations and during interviews and

oral proceedings held by videoconference, documents filed

subsequently as referred to in Rule 50 EPC, including

authorisations, must be filed by email.

@



Article 2 –








(1) Where the filed documents require signature, this signature

may be applied to the attached document or to the text of

the accompanying email.

(2) The signature may take the form of a string of characters

or a facsimile signature.

Signature Signature



Article 4 –








(1) Amended application or patent documents must be filed

as attachments.

(2) Attachments containing such amended documents must be

in PDF format and must comply with the WIPO Standard

for Filing and Processing in Electronic Form (Annex F).

PDF

European Patent Office

File (auxiliary) requests as soon as possible especially

if the case requires filing a high number of requests

Provide a clear order for the requests, including the

request for oral proceedings

Provide explanations for the auxiliary requests

(i.e. how does it overcome previously raised objections)


Technical requirements when oral proceedings are held

by VICO

35

Take-home messages

Acknowledgment:

Dörthe Nieber (EPO)

Frédéric Cavallo (EPO)

Opposition Matters 2020 - European Patent Office

Documents

Transcript of Opposition Matters 2020 - European Patent Office