Opposition guidelines – part 2

As promised by the INPI, the second and final part of their patent opposition guidelines has now been released. Here is the link to download the full pdf document. And as promised by me, here is now a summary of this new installment. As you will see, we now have a much clearer view of what the opposition à la française is going to look like. As a reminder, the presentation of the first part can be found here.

The opposition procedure consists of an admissibility phase, an instruction phase and a decision phase. I will pick up my comments again at the instruction phase, which starts after the expiry of the 9-month opposition time limit and after the end of the admissibility phase.

Notification of the opposition(s)

The INPI will “immediately” (French text: “sans délai”) notify all admissible oppositions to the patent proprietor and invite them to reply. As a side note, the admissibility phase seems to be ex parte, solely between the opponent and the INPI. I wonder whether the proprietor will be able to challenge the admissibility of the opposition after the so-called admissibility phase.

As to the notion of immediate notification to the patent proprietor, my understanding is that the notification will anyway not take place before the expiry of the 9-month time limit (even if an admissible opposition is filed a few days after the grant of the patent), as the instruction phase only starts after this expiry. Besides, in the case of multiple oppositions, the proceedings are supposed to be consolidated.

Overall timeline of the opposition proceedings

  • In its official communication to the patent proprietor, the INPI will invite the proprietor to respond to the opposition within a 3-month deadline, designated as “the first deadline“.
  • Within three months from the proprietor’s response, the INPI will communicate to all parties its preliminary opinion on the case, and invite all parties to file further observations within a 2-month deadline, designated as… “the second deadline“.
  • If one or more parties file observations within this second deadline, a so-called “written phase” begins. Each party will be invited to comment on the other parties’ submissions within another 2-month deadline  – yes, “the third deadline”, you nailed it!
  • Then the back and forth stops: no invitation to respond to submissions made within this third deadline will be sent.
  • An “oral phase” will take place upon request of one the parties, or on the INPI’s own motion (the expression “oral proceedings” was probably copyrighted).
  • If an oral phase takes place, summons to the oral phase will be issued, together with an additional opinion listing the main points to be addressed during the oral phase.

The first, second and third deadlines are not extendable. This means that the timeline is going to be tight, and the parties will have to be very quick.

Never play a game before carefully reading the rules.

Oral phase

The oral phase will take place at the INPI, in front of the “opposition commission” (the expression “opposition division” was probably copyrighted). As a reminder, this commission comprises three examiners. The chairperson can decide to add a legal member to the commission. The oral phase is public and will be conducted quite similarly to oral proceedings at the EPO. In particular, the opposition commission may interrupt the oral phrase for an interim deliberation, and the chairperson may then announce an intermediate opinion on one particular aspect. At the end of the oral phase, the chairperson will close the instruction phase of the opposition. It is not clear whether the final decision will be announced orally or not.

For the time being, the guidelines do not mention the possibility to conduct the oral phase by videoconference. I expect that the first hearings will likely not take place before approximately one year from now, which leaves some time for the INPI to decide to add this option, if they so wish.

Decision phase

If an oral phase takes place, the instruction phase ends once the oral phase is closed. In the alternative, the instruction phase ends:

  • at the expiry of the second deadline, if the parties have not replied to the invitation and have not requested to make oral observations;
  • or at least at the expiry of the third deadline, if the parties have not requested to make oral observations.

The end of the instruction phase is communicated to the parties. Then starts the decision phase, in which the INPI will draft and notify a reasoned decision on the opposition. If a decision is not issued within four months, the opposition will be rejected by default (the infamous “silence vaut rejet” principle). As already mentioned on this blog, the INPI will certainly make every effort so that this never happens.

The appeal deadline will be triggered by the receipt of the decision. As a reminder, the appeal will have to be filed in front of the Paris Cour d’appel, which is an entirely different kettle of fish. The appeal deadline is one month for a party residing in mainland France, two months for a party residing in the overseas territories, and three months for a party residing abroad – a rather unfortunate inequality. Appeal submissions must then be filed within three months after the notice of appeal.

Possible outcomes

The possible outcomes of the opposition are: the rejection of the opposition, the full revocation of the patent, the maintenance of the patent in amended form, but also… the partial revocation of the patent.

This fourth possible outcome is ambiguous in the statute and has given rise to some speculation. The guidelines give the example of an opposition challenging only claim 1, and a proprietor not filing any claim amendment. The INPI could then revoke claim 1 only. I wonder if this situation of partial revocation would also occur if the opponent challenges all claims, but the INPI concludes that only claim 1 is invalid.

In case of a partial revocation, the patent proprietor will be invited to file a request for modification of the patent in keeping with the decision of partial revocation. However, there is no deadline for doing so and no negative consequence if the patent proprietor remains inactive.

Commentators’ suspicions are thus confirmed: the partial revocation procedure does seem kind of messy.

Modifications of the patent 

The patent proprietor may file a modification of the patent at at least three stages: within the first deadline, the second deadline and the third deadline set out above. Any modification filed later, especially during the oral phase, will be deemed late-filed. Once the instruction phase is over, no more modification will be allowed.

Any modification of the patent must be occasioned by a ground for opposition raised by the opponent. This is more restrictive than at the EPO, where a modification may be filed to address a ground for opposition not raised by an opponent.

Naturally, amended claims will have to comply with all of the requirements of the Code de la propriété intellectuelle.

Interestingly, the description can only be amended to address the ground for opposition of insufficiency of disclosure. This provision is surprising. I do not expect that an objection of insufficiency of disclosure can frequently be overcome by amending the description – without adding new matter. What this also implies is that the description will not need to and actually cannot be adapted to amended claims. This is partly consistent with the examination guidelines, which do not require – but allow – an adaptation of the description when claims are amended in response to the search report.

Claim amendments can be filed in the form a main request and one or more auxiliary requests, which will be assessed in the order of preference stated by the proprietor, provided that their number is reasonable.

Late-filed submissions

The scope of the opposition and the grounds for opposition cannot be extended after the 9-month opposition deadline. This is more severe than at the EPO, wherein a late ground for opposition may be taken into account by the opposition division if it is prima facie relevant.

Facts and evidence which are not filed in due time by the parties may be admitted into the proceedings, at the INPI’s discretion. Factors to be taken into account include the relevance of the late-filed submission, the circumstances of the late filing and the possibility for all parties to debate it. This will apply in particular to new requests filed on the day of the oral phase.

A new submission made in the instruction phase as a direct and timely reaction to a submission of another party will not be considered late-filed.

It seems that new arguments may not be considered as late-filed. There is even a statement in the guidelines per which the parties should not merely repeat arguments already made in writing, during the oral phase – which sounds like an invitation to submit new arguments on the day of the oral phase.

That said, the boundary between new facts and new arguments probably remains to be determined. For instance, if a novelty objection based on D1 and an inventive step objection based on D2+D3 are raised within the 9-month period, will a new novelty objection based on D2 be considered as a late fact or a late argument (which would therefore be necessarily admissible)? How about an inventive step objection based on D2+D1? or based on D1+D3?

Language 

The language of the proceedings is French. Submissions must be filed in this language, otherwise they are inadmissible. French will also be the language used in the oral phase. The parties may bring their own interpreters to the oral phase.

Any exhibit or evidence should in principle be in French or translated into French. Otherwise, the INPI can invite a party to provide a translation within a deadline. It will be interesting to see how this provision will be implemented in practice. The majority of evidence filed in French opposition proceedings will likely be in English (or be translated into English). And it is a fact that all patent professionals, including INPI examiners, are able to read technical documents in English. We will see whether a French translation will be required for documents in the English language.

Stay of proceedings

There are several circumstances in which the opposition proceedings may be stayed: notably in case an ownership claim is filed in court, or if a nullity action is pending (although the judge may order a stay of the nullity suit, in which case the opposition can proceed).

As a more uncommon feature, the INPI may stay the proceedings if information is expected which may impact the outcome of the proceedings; or upon joint request of the parties, for a duration of four months, which can be renewed twice (thus for a total duration of 1 year). This may be useful in case the proprietor and the opponent need time to negotiate.

Apportionment of costs

For reasons of equity, for instance in the case of unjustified late submissions leading to additional expenditure, the INPI can order an apportionment of costs. However, the maximum amount to be apportioned is limited according to the following schedule:

  • 600 euros for costs incurred in the written phase.
  • 100 euros for costs incurred in the oral phase.
  • 500 euros for representation costs.

So the grand total would be 1200 euros, and it would likely only be possible to reach this amount in rather exceptional circumstances.

Therefore, it seems fair to say that parties may just as well completely forget about apportionment of costs, which will not be a factor – except for natural persons. The mere fact of requesting and arguing apportionment of costs may cost more than what may be finally apportioned.

* * *

These are the salient points that I have noted in the second part of the new guidelines.

Now that the first few oppositions have been filed – extremely few in fact, as far as I can tell based on recent issues of the Bulletin Officiel de la Propriété Industrielle – the opposition system is live. I hope readers will share updates on how it goes in practice.

Opposition guidelines – part 1

Reading the BOPI (Bulletin Officiel de la Propriété Industrielle) is barely more entertaining than reading the phone book.

This weekly publication by the French patent office (INPI) contains the abstracts of all published patent applications, as well as tons of bibliographic information.

Well, I must confess that I used to flip through the phone book once in a while, when we used to have those, without any purpose really. But today, I skimmed through some recent BOPIs with a purpose in mind.

Remember that the patent opposition “à la française has entered into force on April 1, 2020. I was curious to know how many oppositions have been filed yet. Looking at the BOPIs issued since then, it turns out that there has been only one.

The winner is FR 3080526, which relates to a device for heating milk. It is not entirely surprising that only one opposition has been filed, though. Oppositions can only be filed against patents granted as from April 1, 2020. Since there is a 9-month time limit after grant for filing an opposition, and since opponents tend to file their oppositions toward the very end of the opposition period – at least that is what we typically see at the EPO – it can be expected that oppositions may surge at the very end of 2020.

For anyone interested in the new opposition procedure, there is a much more interesting read, though: the first part of the opposition guidelines recently released by the INPI.

The patent guidelines of the INPI currently comprise three sections: one on patent filing and examination; one on “other procedures” which is concerned  inter alia with renewal fees and SPCs; and one on post-grant procedures, directed to limitation and opposition proceedings.

Only the initial phase of the opposition is addressed in the first part which has been officially released. Meanwhile, a draft of the second part has been communicated to various professional associations and is currently being reviewed and commented on.

What does this first part teach us? Most of it is actually a digestible recap of the relevant provisions of the Code de la propriété intellectuelle, but there are a couple of interesting additional details as well.

So here is my recap of the recap.

An opposition can be filed only against a national patent. It cannot be filed against a European patent, a utility certificate or an SPC. Any person except the patent proprietor may file an opposition. There is no standing requirement for the opponent.

The opponent must be represented if its residence or seat is outside of the EU or EEA – which means that opponents from the UK will ultimately need to be represented.

Just like at the EPO, an opposition may be jointly filed by several persons or entities. In that case, a common representative also needs to be appointed, and the joint opponents will be treated as a single party. Otherwise, unrelated persons or entities may independently file oppositions against the same patent. In that case, the INPI will handle all oppositions together in single joint proceedings.

The opposition time limit expires 9 months after the date of grant of the patent (more precisely, the date of the publication of the grant in the BOPI). No reestablishment of right is possible if the opposition is not filed in due time.

The grounds for opposition are listed as follows, in a limitative manner:

  • Lack of novelty.
  • Lack of inventive step.
  • Insufficiency of disclosure.
  • Extension of subject-matter beyond the content of the application as filed or initial application as filed (in the case of a divisional patent).
  • Lack of industrial application.
  • Subject-matter of the patent not being an invention.
  • Subject-matter of the patent being excluded from patentability (i.e. methods of surgical or therapeutic treatment of the human or animal body; methods of diagnosis applied to the human or animal body; inventions contrary to ordre public, morality or dignity of human persons; inventions relating the human body, its elements and products; inventions relating to animal races, plant varieties, essentially biological processes for the production of plants or animals, processes for modifying the genetic identity of animals which are likely to cause them suffering without any substantial medical benefit to man or animal, and animals resulting from such processes).

On the other hand, lack of clarity, lack of support in the description, lack of unity of invention, non-entitlement to the patent or an inaccurate designation of the inventors are not grounds for opposition.

The guidelines specify that the priority of the patent can be challenged in the context of lack of novelty or inventive step.

The opposition can be filed against the patent as a whole or against only some claims.

This the pop up window that users will get on the INPI portal when one of their patents has just been opposed.

An opposition can be withdrawn at any time (the part of the guidelines explaining what the INPI will do in such a case is not in the released part).

There is no mechanism for the intervention of an alleged infringer in pending opposition proceedings after the 9-month period, and third party observations are not allowed.

The admissibility of each opposition application (demande d’opposition”) is verified by a formalities officer.

During the written phase of the opposition proceedings, the opposition is handled by a main technical examiner (“examinateur référent“), who is someone else than the examiner who worked on the case during examination. He/she is assisted by two other technical examiners, and if needed by a legal specialist. During the oral phase, an opposition commission (“commission d’opposition“) comprising the above persons hears the parties. The discussion is chaired by the main examiner. His or her opinion is said to be dominating.

The process is thus slightly different from that of EPO oppositions, wherein the primary examiner mainly in charge of examining the case is not the chairperson of the opposition division.

All documents pertaining to the opposition proceedings are made public on the INPI website, at the exclusion of internal documents, documents comprising personal information or pertaining to a trade secret, or third party observations (which are inadmissible).

As a side remark, I hope that access to this documentation will indeed be thorough and quick. I was not able to find the opposition application against FR 3080526 online, although the mention of the opposition was published on the French patent register on April 8, 2020. Such access will be in particular critical in order for stakeholders to get familiar with how the INPI handles oppositions in practice.

An opposition application as well as any subsequent material must be filed online, on the INPI portal.

The actual filing of the opposition is triggered by the payment of the opposition fee (EUR. 600). Each opposition application will be given a number starting with “DM” (does any reader know what these initials mean?).

If the INPI portal is down, and only in this case, a fax filing will be accepted, provided that it is confirmed online within two working days. I think this provision is not user-friendly and is detrimental to legal certainty. If an opposition application is indeed filed by fax and only confirmed online after the expiry of the 9-month period, there will likely be a difficult discussion between the parties and with the INPI as to what it means for the portal to be “down“, who has the burden to prove this, etc.

The opposition application must be signed and contain the identity of the opponent, the identity of the opposed patent, a declaration stating the scope of the opposition, the grounds for opposition, and the underlying facts and evidence, optionally the designation of a representative, and the justification of the payment of the opposition fee. A power of attorney must be filed unless the representative is a French patent attorney or attorney at law. The INPI portal will assist the opponent with the retrieval of the relevant information on the opposed patent.

The declaration must be in French. The exhibits must also be in French or translated into French. It will be very important in practice to see whether exhibits in English will be tolerated. This would be highly desirable since the vast majority of the prior art that French patent professionals work with on a daily basis is in English. The section relating to language will be in the second release of the guidelines, but according to the current draft, the INPI will have discretion to admit documents in a foreign language if there is no comprehension issue. How the existence of a comprehension issue would be appraised remains to be seen.

The opposition fee must be paid via a debit order on an INPI account, or by credit card.

An opposition application can be complemented during the 9-month period. After this period, the scope and basis for the opposition cannot be extended. New facts and evidence can be submitted but will be treated as late-filed.

The parties have access to the entire written proceedings on a private part of the INPI portal, and this is also where they must make any further submissions.

When there is an inadmissibility issue with an opposition application, the INPI may notify the opponent within the 9-month period, if there is still time to do so. In principle, the various causes for inadmissibility cannot be remedied after the 9-month period, and in this case an inadmissibility decision is issued. It seems that this would be done without oral proceedings.

The grounds for inadmissibility derive from the various requirements set out above: improper identification of the opponent, filing not made on the INPI portal, etc.

One point may deserve an additional word: the declaration in support of the opposition application must sufficiently set out the justification for each ground for opposition.

A generic statement will not be considered as sufficient; for instance, with respect to lack of novelty / inventive step, specific prior art documents and specific passages of these documents must be cited. If the justification is insufficient for one ground, this ground is deemed to be unsubstantiated – I understand that it will not be possible to provide the missing substantiation afterwards. If all grounds are deemed to be unsubstantiated, then the opposition is held inadmissible.

That’s it for now.

The second part of the opposition guidelines currently at the draft stage contains all the relevant information on how the opposition proceeds after the admissibility review.

There is therefore a lot to say, but let’s wait until the final version is established to review it here.

By the way – not sure whether I have mentioned this before, but English-speaking readers may be interested to know that there is an English translation of the section of the guidelines dedicated to patent examination at the INPI: see here. Maybe the other sections will be translated as well at some point.

A packed Pacte

France has a funny bicameral system.

Both chambers of the parliament, the Assemblée nationale and the Sénat, get to debate on, amend and vote bills. But if they fail to agree on the same version of a bill, in the end the Assemblée nationale has the last word.

And so it is with the so-called “Loi Pacte“, first discussed on this blog post. There was some suspense as to what the bill would finally contain, as it bounced back and forth, being amended and dis-amended from one chamber to the other. But now the suspense has come to an end as the bill has been finally adopted and will become the law of the land.

Well, unless there is a last minute surprise, as the constitutionality of the bill will likely be challenged in front of the Conseil constitutionnel (our constitutional supreme court) by disgruntled members of parliament.

The final text is here and it is 408 pages long (yes, that is some packed Pacte). It has many different aspects, including some controversial ones – like the privatization of ADP (the company that runs Paris’ airports). It also contains some provisions on IP, including just a few ones on patent law – but they are very important provisions indeed.

Basically, the report that I previously made on the draft still stands, although the articles have been renumbered:

  • The maximum duration of utility certificates will be brought from 6 years to 10 years (article 118).
  • It will be possible to convert a utility certificate application into a patent application within a deadline which still needs to be determined, whereas only the opposite is possible as of today (article 118).
  • The government is authorized to rule by way of an ordonnance in order to set up a procedure for third parties to oppose a granted patent (article 121).
  • The INPI (French patent office) will be able to refuse a patent application if its subject-matter is not an invention or is excluded from patentability, in contrast with the current formulation, per which its subject-matter is “manifestly” not an invention or is “manifestly” excluded from patentability (article 122).
  • The INPI will be able to refuse a patent application if its subject-matter is not novel or not inventive, in contrast with the current formulation, per which an application may be refused if it was not modified despite a “manifest” lack of novelty (article 122).
  • Infringement actions will be time-barred five years after the day the right owner knew or should have known the last fact allowing them to act, as opposed to the current formulation, which is five years “from the facts” (article 124).
  • The statute of limitations will no longer apply to patent nullity actions (article 124).

So, there you have it, I don’t know if it is spring or winter, but a new season is definitely coming.

In the year 2525 – if patents can survive.

So what next? Well, first we will have to carefully look at transitional provisions.

In this respect, I have noted the following:

  • The new provisions on utility certificates shall enter into force when the implementing decree is published, or one year from the publication of the law at the latest.
  • The timeline for the introduction of the opposition proceedings is still unclear, as it will depend on the regulations (ordonnance) that the government will issue.
  • Provisions extending the scope of examination of patent applications by the INPI shall enter into force one year from the publication of the law.
  • The new provision on the statute of limitations for nullity actions will immediately enter into force – but will have no effect on decisions that have become res judicata. It remains to be seen how this will be interpreted in practice.

The bottom line is that, regarding the biggest changes for patent applicants, patent attorneys and the patent office, we have some time to get prepared – but we all know how that usually flies.

The nitty-gritty of the new system is still unclear and will require our full attention.

Moreover, another question mark is how the INPI will adapt to this upheaval.

Based on a report on a meeting between the INPI management and representatives of the patent profession a few weeks ago, the following seems to be contemplated at present:

  • The projected date of entry into force of the patent opposition proceedings is January 1, 2020 (this is quite ambitious).
  • The projected start of the examination of inventive step is mid-2021 (this is because the new law will only apply to newly filed applications, I presume).
  • In terms of HR efforts, 15 patent examiners currently working on a backlog of national search reports will be redeployed to deal with opposition cases, and 16 new patent examiners will be hired to deal in particular with the increased workload related to the examination proceedings.

We also learn from this report that the new French “provisional patent application“, that we have heard of a number of times, is not dead. It should be created soon by way of a government decree.

I am curious to know what such a provisional application will look like. So far, patent professionals have been extremely skeptical about this – to put it mildly.

According to one apocryphal anecdote, President Macron was told by a French start-upper a few years ago that U.S. law is much more favorable to innovators than French law, because they have provisional applications in the U.S.

As a reminder, filing a French patent application without claims and without paying any taxes gives you a filing date, which is all you need to later claim priority. So, if there is any truth to this anecdote, it probably means that our President never met a French patent attorney – or at least that such a meeting did not leave as strong an impression as the ones he had with start-up folks. Which, let’s face it, is quite understandable.

New opposition extensions

Since July 1, 2016, the EPO has implemented a new procedure to accelerate opposition proceedings. The EPO’s target is to reduce the total time needed for a decision in “straightforward cases” to 15 months, calculated as from expiry of the opposition period.

In keeping with this ambitious goal, the time period allocated to patent proprietors to reply to an opposition has been reduced. Or, to be more precise, the nominal period remains four months from the issuance of a communication by the EPO. But, formerly, a two-month extension was automatically granted upon request, and my understanding is that use was very often made of this possibility.

Nowadays, this extension is only “granted in exceptional, duly substantiated cases“, as indicated in the Guidelines, E-VIII, 1.6.

A few weeks ago, I filed a substantiated request for such an extension of the time limit on behalf of a patent proprietor, which was denied. I must say that I felt a little bit upset (if not offended), especially because I had the impression that in some occasions, when the shoe was in the other foot (i.e. I was representing the opponent), similar requests had been granted to the adverse patent proprietor.

Thinking a little bit about this, I realized that we have little to no information as to what an “exceptional” case is supposed to be for the EPO.

The only further, indirect, indication in the Guidelines is the paragraph which follows the one quoted above, and which concerns “other proceedings, for any communication raising a matter of substance“, whenever an extension up to a total of more than six months is requested. It is specified that this type of extension “should be allowed only exceptionally, when the reasons given are sufficient to show convincingly that a reply in the period previously laid down will not be possible. Such exceptional circumstances might be e.g. the fact that a representative or client is so seriously ill that he cannot deal with the case in time; or the need to perform extensive biological experiments or tests. On the other hand, foreseeable or avoidable circumstances (e.g. leave, pressure of other work) should not be accepted as a sufficiently exceptional circumstance”. 

Whether the same standard applies to a two-month extension in opposition proceedings (only in an “exceptional case“) as to an extension of more than two months in examination proceedings (which should be “allowed only exceptionally“) is anyone’s guess. I assume that formality officers have more specific internal guidelines, but by definition we know nothing about those.

In order to find out more, and without having the time to perform a very thorough analysis, I decided to take a random sample of opposition cases.

More precisely, I had a quick look at a number of opposed patents granted in June 2016 (opposition time limit in March 2017). I discarded all unusual cases (opposition withdrawn early, request for revocation of the patent filed in response to the opposition). There were approximately 150 cases remaining in my sample.

The first teaching is that no request for extension of time is filed in the vast majority of cases.

In my sample, the rate of request for extension of time was less than 18%. I assume that it may be even lower nowadays, as professionals are probably even more aware of the new policy now than they were back in March or April 2017. This is probably a significant change in the behavior of patent proprietors.

The second teaching relates to the success rate of requests for extension. I found that an extension is refused approximately 60% of the time.

Conversely, it is directly granted in approximately 30% of cases. The remaining cases (approximately 10%) are those where a request for extension is initially denied and then granted further to a second attempt.

Extension granted.

It is then interesting to enumerate various reasons offered in requests for extension, whether they were deemed sufficient or not by the EPO.  Please note that some requests contained several of the reasons listed below.

Some of the losing reasons first:

  • No justification at all – a non-starter of course.
  • Complexity of the opposition proceedings.
  • Necessity to coordinate the opposition case with other cases (parallel divisional applications, national invalidation trials).
  • A large number of cited documents, requiring extensive discussions.
  • A large number of pages to translate.
  • Difficulties understanding the opponent’s case.
  • Summer break season making a number of people unavailable for comments.
  • Instructions from a foreign client awaited.
  • Difficulties getting in touch with the inventor.
  • Difficulties getting in touch with staff having left the company.
  • Waiting for input from R&D.
  • Intention to prepare affidavits.
  • Change of representation.

And now some of the winning reasons:

  • Technical expert had a car accident.
  • Several oppositions filed.
  • Public prior use argument raised by the opponent.
  • Experiments being carried out by the proprietor.
  • Need to study an experimental report filed by the opponent.
  • Difficulties getting in touch with the inventor.
  • Many lengthy prior art documents cited.
  • Change of representation.

As a takeaway, I would say that, in order for a request for extension of time to be considered as relating to an “exceptional case“, any reason related to the normal conduct of business should be avoided.

Holidays, the need to coordinate several cases or to receive instructions from a distant client are not sufficient by themselves.

On the other hand, a truly unexpected event, such as a car accident, is not necessarily required.

Opposition proceedings that are more complex than usual often also qualify. But it is then necessary to be specific as to the unusual complexity of the case. Experimental testing, public prior use and multiple oppositions apparently meet the standard.

That said, there is still a grey area.

For instance, in a number of cases, it seems that a change of representation (which is very common after an opposition is received) is by itself sufficient to guarantee an extension of time – but not always. Similarly, difficulties to reach the inventors, or the number and length of cited documents, are sometimes viewed as giving the right to an extension of time, and sometimes not.

There was even a real surprise among the selection of cases that I looked at. Namely, a law firm explained that they had difficulties getting instructions from their client in Texas, as there had been disruptive floods in this area. Apparently, this was not deemed exceptional enough for the formalities officer…

In summary, you can never know for sure whether your request for extension of time will be granted or not, but looking at examples in other cases certainly helps making a prediction and tailoring your arguments.

On the other hand, as long as the patentee files at least a couple of requests in due time (typically, that the opposition be rejected, and that oral proceedings be summoned prior to any adverse decision), I think that in many cases it is still OK to submit a detailed argumentation shortly afterwards. There is no basis in the Guidelines to discard the patentee’s argumentation simply because it was filed after the initial deadline. In fact, arguments and amended claims filed before the oral proceedings, as long as within the R. 116 time limit, are usually always admitted into the proceedings. Only the filing of evidence within the R. 116 time limit is typically challenged and examined as to admissibility.

Partial opposition

Generally, opposition proceedings are an all-out war, and only the death of the patent can fully satisfy the opponent. But in rare occasions, one may come across an opponent who turns out to be less bloodthirsty, as in the recent case T 1264/12.

On the one hand, this decision is quite underwhelming, as the “reasons” section is remarkably short. But on the other hand, it seems interesting to have a closer look at the case, as it provides a rare example of a partial opposition.

The patent at stake is EP 1625093, owned by Bluestar Silicones France. In its granted version, the patent contains 21 claims.

Claim 1 is directed to a method of draining a flexible container containing a viscous product. Claims 2 to 10 depend on claim 1. Claim 11 is directed to a kit for carrying out the method according to any one of Claims 1 to 10. And claims 12 to 21 depend on claim 11.

The patent was opposed by a Finnish company named Oy Fluid-Bag Ab.

Rather unusually, the opposition only concerned claims 1-3, 8-13 and 21. As a side note, the opposition was filed in 2008, for a final decision issued 8 years later. This means that a partial opposition does not mean a speedy one…

Looking more closely at the claim structure in the patent, the following can be noted:

  • Method claims 4-6, which were unopposed, depend on claims 1-3 and form a group in which use is made of a draining device which notably comprises a pressure member having a piston, and a drainage vessel.
  • Method claim 7, which was likewise unopposed, also depends on claims 1-3 and forms another group of its own, in which use is made of a draining device which notably comprises at least one pressurizable drainage vessel, which is pressurized by means of a pressure fluid.
  • Method claim 8, which was opposed, also depends on claims 1-3 and forms another group of its own, in which use is made of a draining device comprising a pressure member having at least one roller and one counter-roller element.
  • Method claims 9-10, which were opposed, depend on claims 2-8 and are therefore relevant for the various groups mentioned above.
  • A similar structure applies to the kit claims. In particular, claims 14-16 (unopposed) depend on claims 11-13 and calls for a piston and a drainage vessel; claim 17 (unopposed) recites a pressurizable drainage vessel; and claim 21 (opposed) depends on claims 11-13 and notably recites a roller and a counter-roller element.

In summary, the patent seems to relate to three mutually exclusive embodiments, which I would call the piston embodiment, the pressurizable vessel embodiment, and the roller embodiment. Some claims apply to all three embodiments, while others apply specifically to one of those. It seems that only those claims which are relevant for the roller embodiment were opposed.

A roller (coaster) embodiment.
A roller (coaster) embodiment.

This is in fact confirmed by a helpful indication in the statement of facts and arguments of the opposition: “the opponent reserves the right to raise an objection against the claims if amended, on the basis of the description, to any such form that the draining of the container using roller(s) (corresponding to Figure 3 of the opposed patent) is readable from the claims“.

It seems that the opponent was not prepared to spend time and resources to challenge other embodiments than the one which obviously was of interest to them – which makes perfect sense. As a side note, in some cases it may even be beneficial for an opponent if a patent partially survives and lies in the way of third party competitors who may be interested in further technical solutions.

In first instance, the patent was maintained in amended form. But the amendment was apparently not good enough for Oy Fluid-Bag, who filed an appeal.

According to the appeal decision, the sole request of the patentee on file contained four independent claims:

  • One method claim corresponding to the combination of claims 1, 2, 4 and 9 as granted.
  • Another method claim corresponding to the combination of claims 1, 2, 7 and 9 as granted.
  • One kit claim corresponding to the combination of claims 11 and 14 as granted.
  • Another kit claim corresponding to the combination of claims 11 and 17 as granted.

In other terms, the patent was restricted to the piston embodiment and the pressurizable vessel embodiment. The roller embodiment was no longer covered.

The appeal decision, which as I said is very short, does not explain why these amendments were introduced. In order to understand what happened, we need to review the minutes of the oral proceedings.

It turns out that the main request of the patentee was originally that the appeal should be rejected and thus that the patent be maintained in the same form as in first instance. However, the Board found that kit claim 9 of this main request lacked inventive step.

An auxiliary request No.2 was then discussed, but kit claim 9 of this request was also found to lack inventive step.

At this point, the patentee had to fall back on auxiliary request No.3, restricted to the piston and pressurizable vessel embodiments. The appellant objected that one of the product claims was not fully clearly restricted to these embodiments, and the patentee thus filed an amended request on the spot to overcome the issue. This new request was admitted into the proceedings.

Then, the patentee withdrew all the other requests, presumably so as to avoid any negative statement from the Board in the written decision on some of the granted claims. This is why the decision is so short and focuses on the roller embodiment-only request.

Now, here (finally) comes the Board’s assessment of this final request, in my own unofficial translation:

Since the extent of the opposition is limited to claims 1-3, 8-13 and 21 of the patent as granted, the claim combinations mentioned above result in claimed subject-matter which was not challenged by the opposition (rule 76(2)(c) EPC). 

The subject-matter of the above-mentioned claims are not the subject of the opposition (see in this respect G 9/91 (OJ 1993, 408), item 10 of the reasons) and there is no procedure under articles 114 and 115 EPC relating to these non-challenged elements. Therefore, the Board has absolutely no power to rule on them, which also necessarily applies to claims which include their subject-matter.

The appellant confirmed this position of the Board during the oral proceedings. The Board can only maintain the patent with these claims (volenti non fit injuria). 

For the benefit of continental Europeans like me, the latter phrase seems to be not only a fancy display of Latin but also an actual legal concept under common law (albeit within a quite different context).

I do not doubt that the Board reached the correct decision in not reviewing the new main request.

That said, the founding decision G 9/91 quoted above does leave some room for examining claims other than those which were opposed.

The first sentence of the Enlarged Board’s headnote is the following:

The power of an Opposition Division or a Board of Appeal to examine and decide on the maintenance of a European patent under Articles 101 and 102 EPC depends upon the extent to which the patent is opposed in the notice of opposition pursuant to Rule 55(c) EPC.

But then the second sentence goes like:

However, subject-matters of claims depending on an independent claim, which falls in opposition or appeal proceedings, may be examined as to their patentability even if they have not been explicitly opposed, provided their validity is prima facie in doubt on the basis of already available information.

For instance, in T 525/96, only two process claims 13 and 14 were opposed. In an auxiliary request, these process claims were deleted, but a product-by-process claim, referring to the same process, remained. The Board examined whether this unopposed product-by-process claim was allowable, based on the above principles set forth in G 9/91, and came to a negative conclusion, leading to the rejection of the corresponding auxiliary request.

Therefore, the Board in T 1264/12 probably theoretically had the power to examine the unopposed piston embodiment and pressurizable vessel embodiment claims, if their validity was prima facie in doubt.

We can safely assume that this was not the case. In particular, the opponent had probably not submitted any prior art relevant with respect to other embodiments than the roller one which they were concerned with. Besides, the opponent apparently did not object to the third-auxiliary-turned-main request.

But strictly speaking, the absence of prima facie invalidity might be a missing step in the Board’s reasoning.


CASE REFERENCE: T 1264/12, Board of Appel 3.2.07, September 22, 2016, Oy Fluid-Bag Ab v. Bluestar Silicones France.