Why cancelling on oral proceedings on short notice without justification is considered a violation of the EPI Code of Conduct

• A proactive cancellation on oral proceedings on short notice does not contradict the EPI Code of Conduct if an appropriate justification is provided.
• Cancelling on short notice without justification however violates the Code of Conduct, irrespectively of whether or not oral proceedings had been requested.

Background

The Board summoned Opponent and Patentee to oral proceedings to be held on 8 September 2022. In response to the Opponent requesting simultaneous translation to English, the Board organized a simultaneous translation under Rule 4(5) EPC accordingly, including the provision of translators.

In its preliminary opinion sent with a communication under Art. 15(1) RPBA, the Board asserted that the claimed subject-matter was not inventive.

One day before oral proceedings, on the 7th of September, the Patentee briefly informed the Board in writing that their representative does not attend the oral proceedings and that a translator was not required. The Board cancelled the oral proceedings on the 7th of September.

The Board’s discussion on the Code of Conduct

The Board pointed our that the summons to oral proceedings contained the bold-printed request to submit “submissions regarding a planned non-participation to oral proceedings, as well as anything that may have an impact on the provision of translators, as soon as possible”.

The representative of the Patentee however had neither reacted to the Board’s communication nor had the representative informed the Board of their non-attendance on their own violation. The information came in only in response to the Board’s clerk less than a day before the oral proceedings. Consequently, the oral proceedings could be cancelled only late afternoon of the day before. As a consequence, the remaining participants---the Board, the Opponent, and the translators---had to prepare unnecessarily, and a cancellation of the translators was no longer possible, causing “totally unnecessary costs” for the European Patent Office (EPO).

According to the EPI Code of Conduct of the Institute of Professional Representatives before the EPO, a professional representative shall act politely in proceedings with the EPO and do everything possible to uphold the good reputation of the institute and its members. The Board pointed to the resolution regarding non-attendance at oral proceedings, section 4.2.4 of the EPI Code of Conduct, according to which a professional representative deciding not to attend oral proceedings shall inform the Board of the non-attendance as soon as possible, preferably at least one month prior before the oral proceedings.

The Board acknowledged that there may be severe reasons for cancelling only on short notice. According to the Board, a proactive cancellation on short notice including an appropriate justification did not contradict the Code of Conduct. These aspects were missing at the present case however: a cancellation note was only made when asked by the clerk of the Board and the cancellation note did not contain any justification.

The Board concluded that the Code of Conduct had been violated. The fact that the Patentee had not requested oral proceedings did not contradict this conclusion---the Board referred to T 0930/92, headnote I and reasons 3.2 therein.

The Board’s decision

The Board decided that the main request (the Patentee’s only request) was not inventive and that the patent shall be revoked.