Maiwald Patentanwalts GmbH

1. Maiwald Patentanwalts GmbH __________________________________ Dr. Walter Maiwald Practical Approaches of European Oppositions Before The European Patent Office

2. Maiwald Patentanwalts GmbH Practical Approaches of European Oppositions Before The European Patent Office • Selecting and preparing evidence The European Patent Convention provides no effective limitation of the evidence that can on principle be used in an opposition: These are no final lists (note "include"). Other types of evidence are admissible (G 11/91, OJ EPO 93, 125).

3. Maiwald Patentanwalts GmbH Practical Approaches of European Oppositions Before The European Patent Office • In terms of practical importance, the sequence is more like this: • production of documents • requests for information • hearing witnesses - requires a decision under Rule 117 EPC • • • • • • • • • hearing the parties - requires a decision under Rule 117 EPC • opinion by experts - requires a decision under Rule 117 EPC • sworn statements in writing - the EPO may involve a competent national • court under Rule 120 EPC • inspection - requires a decision under Rule 117 EPC

4. Maiwald Patentanwalts GmbH Practical Approaches of European Oppositions Before The European Patent Office Do not rely on the EPO to establish the facts you need, as an opponent, for you! You have to make your own case, T 73/86; T 600/90; T 34/94; compare especially T 472/92, OJ EPO 98, 161; T 750/94, OJ EPO 98, 32. Where the EPO is convinced that your evidence is sufficiently relevant, it may reverse the onus of proof – T 129/88, OJ EPO 93, 598; T 582/90 (for a prior public use). In such cases, there will be a consequent need for the patentee, to establish the irrelevance of the opponent's allegation.

5. Maiwald Patentanwalts GmbH Practical Approaches of European Oppositions Before The European Patent Office Documents include (but are not limited to): - patent documents, e.g. all older published applications and granted patents; file wrapper contents once open to inspection (everything, unless expressly excluded from inspection!); priority documents in (foreign) public file wrappers (T 315/02); - "general knowledge of skilled persons" where laid down in Encyclopaedias, textbooks, dictionaries – note that this does not apply where a relevant search effort would be required, T 171/84, OJ EPO 1986, 95; T 676/94, or the info is not straightforwardly and unambiguously applicable, T 206/93; - technical and scientific publications – there are often problems showing the fact and date of publication; T 611/95; T 842/91; T 314/99 (where it was not enough to show that a thesis had been in a University library, in the absence of evidence for corresponding information accessible to the public);

6. Maiwald Patentanwalts GmbH Practical Approaches of European Oppositions Before The European Patent Office - commercial publications (company brochures, catalogues, manuals, specifications, product leaflets …). Such materials are often difficult to use in the absence of a printing date and sufficient evidence for actual distribution T 37/96; T 328/00 etc.; - published papers, transcripts, private notes etc. reflecting oral presentations, e.g. at congresses, conventions, public presentations …… often used to establish more disclosure than what they actually comprise, T 1212/97. May be supplemented by witness statement, commonly in the form of a declaration. The witness may be summoned to oral proceedings and cross- examined;

7. Maiwald Patentanwalts GmbH Practical Approaches of European Oppositions Before The European Patent Office - Prior public use is generally supported by documents, and these are generally accepted "at face value". However, there will be a tendency, in most cases, to refrain from interpreting such documents – especially from adding to their straightforward disclosure. Beware of gaps and do not rely on "plausible" or "self-evident" facts to fill any gap. To support prior public use, the opponent must prove ("beyond reasonable doubt" or "to the hilt") - the features of the allegedly used product or method - the fact that these features were made available to the public (one act of publication, to one member of the public, may be quite enough, T 482/89; T 1022/99). In both aspects, declarations by witnesses may be highly relevant. Where this is the case, prepare for the witnesses being summoned to appear at oral proceedings, and prepare (then) for cross-examination.

8. Maiwald Patentanwalts GmbH Practical Approaches of European Oppositions Before The European Patent Office Witness evidence by interrogating the witness in oral proceedings inevitably means that the EPO takes an active role in establishing the facts. The EPO will do its own questioning and it is difficult to control this, as a party. There is very little formality involved. Preliminary discussions between a party and its witness are basically acceptable (and expected) but attempts at influencing a witness can be detected (even in the initial interrogation by by the Division, and especially in the later cross-examination). The examiners are free to evaluate the witness statement as they think fit, T 665/00; T 270/90, OJ EPO 93, 725; T 750/94, OJ EPO 98, 32. Most examiners are technically trained people, with an addiction to facts and data, and a healthy cautiousness where "lawyering" and legalistic arguments are concerned.

9. Maiwald Patentanwalts GmbH Practical Approaches of European Oppositions Before The European Patent Office - You may use evidence generated by yourself. You may need to supplement your documents with data that need to be generated first by experiment or test. Many oppositions fail because no such data are supplied by the opponent, or the supplied data can be criticized for being inaccurate and/or not squarely based on the reference obtained by inappropriate testing or experimentation etc. Experiments need to be carefully planned, and always take longer to perform. This is an aspect you need to address as early as possible - and this is true for both parties!

10. Maiwald Patentanwalts GmbH Practical Approaches of European Oppositions Before The European Patent Office - Any party can rely on its own expert statements. These are commonly supplied in the form of declarations. Any party may bring their own expert(s) to oral proceedings, and the expert may provide statements there and then. - A party expert may only speak at oral proceedings if - this is expressly requested by the party; the expert has to be identified, and it has to be stated what he/she will speak about; - this request must be made well before the oral proceedings (usually, by the submission deadline of Rule 115 (1) EPC); - the expert must make his/her statements under supervision of the party's legal representative; - the "expert" can be a patent lawyer from a non-EU country, G 4/95, OJ EPO 96, 412.

11. Maiwald Patentanwalts GmbH Practical Approaches of European Oppositions Before The European Patent Office - The EPO will rarely interrogate a party, and is even less likely to appoint an expert. It will generally avoid taking evidence by inspection, or trying to force anybody to provide a sworn statement.

12. Maiwald Patentanwalts GmbH Practical Approaches of European Oppositions Before The European Patent Office So: Rely on documents, especially those not created for the purposes of the opposition procedure, as the basis of your argument. Where necessary, supplement the disclosure of your documents by the results of your own testing or experimentation. You may need to supply additional facts, and/or support your allegations based on documents, by offering (and initially, at least basically, providing by declaration) witness evidence. You may also need to file your own expert statements, by declaration - and you may bring your own expert to oral proceedings. Make sure your written evidence leaves no gaps and is commensurate with the claims in dispute. Make sure your data are complete, correctly obtained, and support your position! Understand what your witnesses and experts can (and will) contribute, also under cross-examination!

13. Maiwald Patentanwalts GmbH Practical Approaches of European Oppositions Before The European Patent Office 2. Using evidence - Rule 76 (c) EPC (only) requires that an opponent must make a (potentially successful) argument, to open the opposition procedure. This has been confirmed in a number of decisions, e.g. T 222/85, OJ 88, 128; T 925/91, OJ EPO 95, 469; T 1097/98. There is no need to provide all evidence necessary for a final examination, within the nine month opposition terms, T 1069/96. Generally, the EPO's Opposition Divisions and Appeal Boards are disinclined to reject an opposition under Rule 76 (c) EPC, for insufficient initial argument. - This means that additional evidence can be submitted by an opponent after the end of the opposition term.

14. Maiwald Patentanwalts GmbH Practical Approaches of European Oppositions Before The European Patent Office - The patentee will be given an (extendable) term for responding to the opposition, Rule 79 (1) EPC. There is no sanction comparable to rejection of the opposition as inadmissible under Rule 76 (c) EPC. An incomplete reply can generally be supplemented later, including the submission of amended claims.

15. Maiwald Patentanwalts GmbH Practical Approaches of European Oppositions Before The European Patent Office - However, there is a deadline to be observed by both parties: Note, the "need not" language: Belated evidence may, and will in most cases, be considered if the Opposition Division considers it relevant. Belated amended claims will in most cases be considered if grantable. Note also the "unless" language: Where e.g. the patentee files materially amended claims by the final date, the opponent must be permitted to react. Where the opponent submit a relevant reference by the deadline, the patentee must be allowed to react.

16. Maiwald Patentanwalts GmbH Practical Approaches of European Oppositions Before The European Patent Office In our experience, it is not generally a good idea to supply the EPO with all evidence which might possibly be relevant. Where the objections raised are well substantiated, we prefer to use only the most relevant evidence, at least initially, and keep the discussion focused on this, also in the later procedure. Often, this is a scenario for early, brief submissions and quick responses. Where the evidence is suboptimal, it can however be advantageous to submit all evidence at hand, without much analysis. Some EPO examiners will then try to make the submitting party's case, better than the party itself. Often, this is a scenario for late, long submissions and last minute responses. This applies, mutatis mutandis, also to the patentee's strategy.

17. Maiwald Patentanwalts GmbH Practical Approaches of European Oppositions Before The European Patent Office 3. Combating the other party's arguments The EPO's Opposition Divisions and Appeal Boards are formed from technical examiners (legally trained members, if at all involved, play very limited roles). Most examiners are fact-oriented, but have no specialist technical knowledge in the case's field. Most examiners are wary of being manipulated by clever lawyers.

18. Maiwald Patentanwalts GmbH Practical Approaches of European Oppositions Before The European Patent Office This has some important consequences: - Data , test results, experimental results and other such "hard facts" play a major role in convincing a panel. You win opposition cases based on data. Do that experiment, and a second one if you can. Do it upfront – you may not have the time later (and it will take longer to do than you think, anyway). - Where the other side relies on data, expose any weakness in them and submit your own data. - Avoid legalistic arguments. Many examiners have a fondness for "technical reality" (or rather, what they believe this is) and prefer a technical argument over a dogmatic one. Where you have a legal point, make it short and snappy. - If your case is in trouble, it may help to submit your evidence at a late stage.

19. Maiwald Patentanwalts GmbH Practical Approaches of European Oppositions Before The European Patent Office 4. Timing of submissions There are circumstances where late submission of evidence appears advantageous. Note however, that - submitting new data by the deadline of Rule 116 (1) may cause then to be disregarded. The other side will argue that there is not enough time left to do its own testing.

20. Maiwald Patentanwalts GmbH Practical Approaches of European Oppositions Before The European Patent Office - Submitting arguments and evidence too late (though well before the Rule 116 (1) deadline) may be ineffective, if the panel has already formed its opinion and is reluctant to revisit a taken position. Where, in first instance, the panel must initially consider the merits (when it has to write the Rule 116 (1) EPC communication, when summoning the parties to oral proceedings) it may take a position which it is later unwilling to change. - Submitting (admissible, since relevant) non-data evidence after the deadline of Rule 116 (1) EPC may be ineffective, if you get too close to the hearing date, and only get it in after the panel's deliberation preparing the hearing.

21. Maiwald Patentanwalts GmbH Practical Approaches of European Oppositions Before The European Patent Office 5. Oral Proceedings - Generally take place only if requested by at least one party. - Should be requested - because this makes timing easier, - to avoid surprise decisions, - because the discussion may produce the panel's opinion, or even change it, - because they often are the patentee's last chance to revise the claims.

22. Maiwald Patentanwalts GmbH Practical Approaches of European Oppositions Before The European Patent Office The EPO will issue a summons to attend oral proceedings, at least two months before the hearing date (Rule 115 (1) EPC). In first instance, the EPO must provide at least some comments on what must be discussed, with the summons (Rule 116 (1) EPC). These comments may range from the bleak ("Novelty will have to be discussed") to the copious (the draft decision grounds). Note that the AB's are not required to provide such comments, but sometimes do. These comments needs to be studied very carefully. An experienced European Patent practitioner will often be able to read from them quite precisely the strengths and weaknesses of the parties' respective positions. Any submissions after receipt of the summons should address the issues raised in the EPO's comments.

23. Maiwald Patentanwalts GmbH Practical Approaches of European Oppositions Before The European Patent Office 6.Rejecting panel members or panels A party may, in certain cases, come to believe that the unfavourable actions of a single examiner or indeed a complete Division or Appeal Board are in conflict with accepted EPO practise, and that there is method behind this. But can you do something about this?

24. Maiwald Patentanwalts GmbH Practical Approaches of European Oppositions Before The European Patent Office Consider Article 24 (3) EPC:

25. Maiwald Patentanwalts GmbH Practical Approaches of European Oppositions Before The European Patent Office - While Article 24 EPC verbatim only relates to Appeal Board members, it is applicable to examiners at Divisional level, G 5/91, OJ EPO 92, 617. - According to T 433/93, OJ EPO 97, 509 and T 900/02, the standard is whether the party concerned could, for good reasons, fear that the office procedure might not be fair (in a case where retrial by the Opposition Division was ordered by an Appeal Board, and the party was afraid that the Division might be influenced by its original opinion).

26. Maiwald Patentanwalts GmbH Practical Approaches of European Oppositions Before The European Patent Office - Note that by these standards, incompetence is not a valid ground of objection to a panel member. Objection is only given where a party is deliberately disadvantaged, or has a good reason to fear that this might occur. - Consider a case we had, T 479/04. We were acting for the opponent. The problem started when we received a preliminary opinion from the Opposition Division, of the "full decision grounds" type, stating not only that the Opposition Division intended to maintain the patent in amended form, but further asking the opponent to withdraw the request for oral proceedings, and requesting the patentee to adapt the description to the amended claims.

27. Maiwald Patentanwalts GmbH Practical Approaches of European Oppositions Before The European Patent Office We objected to the complete Opposition Division for fear of prejudice. The Opposition Division went on with the procedure, including oral proceedings, without paying any attention to our objection. It decided (without argument) that there was no ground for the objection, in its decision on the merits. The Appeal Board (3.3.3, under R. Young) decided that this was correct – there was no need for the Opposition Division to decide on the objection before deciding on the merits. The Appeal Board did not accept that this effectively removes the right to object, one important purpose of which is to prevent decisions on the merits by biased examiners. Consider an Opposition Division which was found to have been lavishly entertained by a party, while working on the case, and consider that this did indeed influence the panel. What would you expect to happen?

28. Maiwald Patentanwalts GmbH Practical Approaches of European Oppositions Before The European Patent Office Dr. Walter Maiwald maiwald@maiwald.eu Maiwald Patentanwalts GmbH www.maiwald.eu München – Hamburg – Düsseldorf, Germany Thank you for your attention.