T 1874/23: Limits to the right to oral proceedings under Art. 116 EPC on the request of the Applicant

Introduction

The Applicant-Appellant (A) timely requested re-establishment of rights under Art. 122 EPC and Rule 136(1) EPC into the deadlines for appealing the refusal of his application. The Boards of Appeal denied A’s auxiliary request for oral proceedings. Contrary to Art. 122(2) EPC, Rule 136(2) EPC and the “Eventualmaxime”, the request for re-establishment had failed to set out the grounds and facts in full. Oral proceedings would serve no legitimate purpose. The requirements of legal certainty in due time therefore weighed higher than A’s right to be heard during oral proceedings.

Background

Application EP 16842707.8, in the name of A, a natural person residing in the US, was refused by the Examining Division (ED) with a decision on 4 November 2022. The European representative reported the refusal and the due date for filing an appeal against the refusal to the US law firm handling patent applications on A’s behalf. The European representative sent a reminder prior to the due date.

A only found out about the failure to meet the deadline for appealing the refusal during a meeting, to discuss another case, with the European representative on 16 August 2023. 

On 13 October 2023, a request for re-establishment under Art. 122(1) EPC was filed, and in a separate submission, the notice of appeal and the grounds of appeal. The appeal fee and the fee for re-establishment were paid on 12 October 2023. The time limits prescribed by Rule 136(1) EPC were therefore met.

The request for re-establishment of rights was complemented by declarations of A as well as of the US representative of the US law firm, by copies of the e-mail correspondence between the European representative and the US representative reporting and reminding of the due date for filing an appeal, and an excerpt from the docketing system of the US law firm. 

A’s declaration referred, e.g., to standing instructions to maintain their patent applications and that they had not been informed about the deadline for appealing the refusal. If they had been aware of it, they would have instructed the US law firm to appeal the decision.

The US law firm’s declaration referred to their long experience, and explained their docketing system and standard procedures of docketing due dates. The appeal deadline had not been entered into the docketing system due to a human error by the paralegal of the US representative.

The Appeal

With the appeal, A requested that the decision to refuse be set aside and a Communication pursuant to Rule 71(3) EPC be issued based on claims 1-4 submitted with the grounds of appeal, and, as an auxiliary measure, requested oral proceedings under Art. 116 EPC.

On examining the submissions, the Board found that the requirements of all due care had not been met by all persons acting on behalf of A. The US law firm appeared to have lacked an effective system of cross-checks independent of the person responsible for monitoring time limits, as well as appropriate supervision of the paralegal. Neither from the request for re-establishment nor from any of the declarations the presence of such system of cross-checks, nor why it had failed, was apparent. Already based on this, the request for re-establishment into the time limit for the notice and grounds of appeal failed. Consequently, the notice and grounds of appeal were late filed, and the appeal was rejected as inadmissible, Rule 101(1) EPC and Art. 108 EPC. This decision was handed down in writing, without oral proceedings having taken place, despite these having been requested by A.

The Board stated that Rule 136(1) EPC required that a request for re-establishment of rights must substantiate the grounds and facts within the time limit for filing the request for re-establishment. The factual basis could not be altered after the expiry of the time limit set by Rule 136(1) EPC. The Board also referred to the principle of the “Eventualmaxime” or “Häufungsgrundsatz” in contracting states with a German law tradition, according to which the request must state all grounds for re-establishment and means of evidence without the possibility of submitting these at a later stage of the proceedings. It might only be permissible to complement the facts and evidence with a later submission if these requirements were met.

Since the request for re-establishment did not provide any factual assertions on at least an independent system of cross-checks or supervision of the paralegal, the Board held that there had been no immediate and complete substantiation of the grounds and facts as would have been necessary for requesting re-establishment within the time limit prescribed by Rule 136(1) EPC. The request for re-establishment must therefore fail. The factual assertions could not be complemented at a later point, nor was there any evidence that would have to be looked into or further facts that would have to be established based on A’s factual assertions. Consequently, the Board found that neither any further communication by the Board nor appointment of oral proceedings would serve any legitimate purpose. The Board stressed that it is not the purpose of oral proceedings in the context of re-establishment of rights to allow the appellant a further chance to substantiate factual assertions, submit new factual assertions, or to provide evidence despite the absence of factual assertions in the request.

The Board confirmed that the right to oral proceedings under Art. 116(1) EPC is a cornerstone of proceedings before the EPO, and that oral proceedings upon request are generally even seen as an “absolute” right. The Board however also found that the EPC and procedural principles generally recognized in the Contracting states of the EPO put restrictions even on this “absolute” right to oral proceedings, and listed a number of situations in which this would be the case. These include situations where oral proceedings would unduly prolong the proceedings, instead of bringing them to an end as quickly as possible, in contradiction to the requirement of legal certainty in due time. Even though the requirement of legal certainty generally cannot take precedence over the right to oral proceedings, the requirement of timely legal certainty is also recognized as a fundamental principle of the EPC. Where oral proceedings serve no legitimate purpose, the need for legal certainty in due time prevails and prevents a board from appointing oral proceedings.

The Board argued that, as shown by the listed examples of the jurisprudence, the language of Art. 116(1) EPC would be too broad, as it literally covered also cases where the appointment of oral proceedings cannot be justified. This understanding would be in line with established jurisprudence of the boards, applying the rules of interpretation of the Vienna Convention on the Law of Treaties (1969), Art. 31 and Art. 32, to the provisions of the EPC. Referring to these provisions, the Board stated that a literal interpretation must not contradict the purpose of the provision. The EPC should be interpreted in a “dynamic” or “evolutive” way in light of the convention’s object and purpose, taking into account developments since the EPC was signed. The Board argued that this approach was supported also by the European Convention on Human Rights, ECHR, which would be valid in the context of the EPC.

The instrument of re-establishment of rights under Art. 122 EPC and Rule 136 EPC had evolved over time, wherein the principle of the “Eventualmaxime” had been gradually adopted, to balance the right to be heard with procedural economy and with the interest of other parties in the fair conduct of proceedings.

Also the circumstances in which the Boards operate have experienced large changes over time, in particular with the introduction of the Unitary Patent and the Unified Patent Court, which according to the Board had led to a significant number of appeals having been filed with increasing focus on timely adjudication, which was also of increasing interest to third parties. At the same time, it remained a challenge for the boards to continue to provide effective justice to all parties within a reasonable timeframe.

The Board further referred to the development of case law of the European Court of Human Rights on Art. 6(1) ECHR and Art. 47(2) Charter of Fundamental Rights of the European Union, expressing fair trial principles of procedural law recognized in the Contracting States of the EPO. The holding of court hearings/oral proceedings in public is recognized as a fundamental principle of procedural law. However, the ECHR also identified a number of situations where oral proceedings could or even should be dispensed with in pursuit of a party’s right to a fair trial, giving increasing weight to procedural efficiency and economy. 

The Board concluded that, in analogy to the ECHR, a dynamic and evolutive approach should be applied and 

Based on these considerations, the Board concluded that in re-establishments of rights proceedings, where the principle of “Eventualmaxime” applies, preventing a party from going beyond their written submissions, legal certainty in due time and procedural economy have to prevail and oral proceedings do not have to be appointed. Consequently, there is no absolute right to oral proceedings under all circumstances. 

The Board finally stated that the Boards of the EPO are public service providers with limited resources which must be balanced between the interests of all parties, in an equal and non-discriminatory manner. Any procedural steps taken in (appeal) proceedings that is not required by the applicable rules would be to the detriment of other parties by delaying their cases. Such procedural steps would therefore be contrary to the board’s duty and function to do justice equally to all.

Decision of the Board

The request for re-establishment of rights is refused, and, as a consequence, the appeal is rejected as inadmissible. The initial request for oral proceedings has also become obsolete.

Summary written by the NLO EPO Case Law Team