How to prepare for oral proceedings for European patents

Authors: Hans Hutter and René van Duijvenbode

Senior European patent attorneys will, with a certain nostalgia, remember the ‘good old days’ in which they could easily call an examiner of the European Patent Office (EPO) and informally discuss a pending application. Attorneys could also simply make an appointment with an examiner for an informal meeting to discuss a case in person. During such a meeting, the other two members of the examining division would be absent. Oral proceedings – especially before an examining division – also tended to be informal. An attorney had significant freedom to change pending claims extensively. Those good old days are gone. EPO proceedings have become increasingly formal, especially in relation to oral proceedings. Attorneys who do not correctly follow the formal rules for preparing and conducting oral proceedings can end up with empty hands. In examination, this can be repaired by filing a divisional application. However, this may be a costly and unnecessary affair. In opposition, no such repair is available. This chapter explains the legal background, but also provides ways to avoid such pitfalls. Both the European patent attorney and the applicant/owner have a responsibility here.

Legal basis

Articles 113, 114 and 116 and Rules 116 and 137 of the European Patent Convention (EPC) provide the general legal basis for how to interact with the EPO. Article 113 instructs the EPO to provide parties concerned with the option to defend their case: “The decisions of the European Patent Office may only be based on grounds or evidence on which the parties concerned have had an opportunity to present their comments.” However, parties cannot simply file documents to defend their case at any time they like. For example, after an applicant has filed an application, it may take a while before it gets an opportunity to do so. For instance, in accordance with Rule 137 of the EPC, an applicant may not amend its patent application in any way before it receives the search report. Only upon entering the European phase after the Patent Cooperation Treaty phase is it allowed to do so before the EPO starts the search (Rule 161 of the EPC). Together with the opinion accompanying the European search report, the applicant will be invited to comment on the search opinion and, if desired, file amended application documents (Rules 70a and 137 of the EPC). However, thereafter the EPO has no further obligation to allow the applicant to make additional amendments – Article 137(3) of the EPC explicitly states: “No further amendment may be made without the consent of the Examining Division.” This rule gives the EPO significant legal power to prohibit applicants from making further amendments. In practice, applicants almost always get one or two more opportunities to do so, but it is good to understand that the EPO need not do so. Finally, Article 114(2) stipulates that parties to EPO proceedings should meet the time limits given by the EPO: “The European Patent Office may disregard facts or evidence which are not submitted in due time by the parties concerned.”

Oral proceedings in examination

If written proceedings before the EPO do not result in a decision meeting the desires of a party, oral proceedings may be held. Oral proceedings are a fundamental right under Article 116(1) of the EPC, which states: “Oral proceedings shall take place either at the instance of the European Patent Office if it considers this to be expedient or at the request of any party to the proceedings.” In preparation for oral proceedings, the EPO sends an invitation specifying the date and location of the proceedings, topics to be discussed, a preliminary opinion of the EPO and – most importantly – a final date for filing submissions. This date is exceptionally two months, but usually one month prior to the oral proceedings and is to be taken very seriously. The invitation will include a sentence such as: “The attention of the applicant is drawn on the final date for making written submissions or amendments… Later amendments will be disregarded by the examining division if they do not overcome *prima facie* all the outstanding objections set out above or give rise to new objections.” Consequently, a party that wishes to be sure that all of its arguments and documents are considered by the EPO should send them to the EPO by that due date. The EPO may accept further amendments to claims during the oral proceedings, but is not obliged to do so. It will do so only if such late amendments solve all outstanding issues. A very European way to handle the EPO’s potential refusal to accept further amendments during the oral proceedings is through filing auxiliary requests, whereby one proposes a fall-back position for claims to be assessed by the EPO should it refuse the claims of the main request. Several such sets of auxiliary requests may be filed. It is recommended to do so by the date of filing the written submissions and not to wait for the oral proceedings themselves. Filing them on the date of oral proceedings runs a high risk of being refused on formal grounds. Applicants should not hesitate to file auxiliary requests; the EPO will not see this as weakening the main request and will seriously assess all requests. More importantly, if they are not filed at this stage of the proceedings, there is a high risk that they will never be admitted into the proceedings during appeal. There is no formal limit to the number of auxiliary requests that can be filed, but it should be reasonable. Too many may irritate the EPO and hamper the case. An important issue is the content of successive auxiliary requests. While the EPO was previously willing to accept consecutive auxiliary requests directed at unrelated subject matter, it no longer does so. It wishes to prevent ‘shooting for a prize’ and increasingly accepts auxiliary requests only where a following auxiliary request is limited in scope relative to a former one (*cf* T 1903/13). During the oral proceedings, the EPO starts with the admissibility of all claim sets filed. When they are filed by the due date, the ‘late filing’ argument cannot be used. However, claim sets not solving all outstanding issues may only be briefly commented on and then simply not admitted in the proceedings. Moreover, the EPO usually warns that further auxiliary requests may be filed during the oral proceedings only with its consent. The EPO must give such consent only if it refers to new prior art not mentioned before or when the EPO has changed its mind after sending the invitation for the oral proceedings with the preliminary opinion (T273/04). In practice, during oral proceedings in examination the EPO tends to be slightly flexible, because no patent has been granted yet and no other parties are involved.

Oral proceedings in opposition

Opposition proceedings are in principle governed by the same rules as examination proceedings. However, parties filing an opposition should also be aware that a notice of opposition must contain “a statement of the extent to which the European patent is opposed and of the grounds on which the opposition is based, as well as an indication of the facts and evidence presented in support of these grounds” (Rule 76(2)(c) of the EPC). The consequence of this rule is that all additional facts and evidence filed by an opponent at the course of the opposition proceedings are formally filed late and may accordingly be disregarded by the opposition division. The opposition division need only admit such further facts and evidence if they are *prima facie* relevant (ie, it is directly clear that assessing them will influence the outcome of the proceedings). To some extent there is room for discussing why such facts and evidence were not presented earlier in the proceedings. A high percentage of all opposition proceedings end up in oral proceedings because the parties usually cannot agree during the written proceedings. With the recent steps at the EPO to accelerate opposition proceedings, the timeframe for parties to settle will only decrease. At some point – now typically within four to six months after the patentee replies to the notice(s) of opposition – all parties will receive a formal invitation to such oral proceedings and must meet the due date for filing any submission, at the risk of not being admitted into the proceedings. Again, this date is one to two months before the hearing. The content of this invitation is essentially the same as that which an applicant will receive during examination. Because several parties are involved in opposition and their interests diverge, the opposition division tends to be more formal than an examining division. Consequently, it is even more highly recommended to file all facts, evidence and arguments by the due date of written submissions and not to await the date of oral proceedings. Here it is no exception that the opposition division does not admit a request even when filed at the final written submissions deadline, for it being filed late. It depends on the circumstances, but the patentee should be prepared to defend the timing of such request. During oral proceedings, the owner may file further requests only in case of newly cited and highly relevant prior art, or if the opposition changes its mind and accepts a new argument. Even then, often the opposition division will only allow for limiting to granted sub-claims, based on the argument that those were at least foreseeable to the opposing parties, and would not give rise to tedious clarity discussions. It has been suggested that the opposition division has been given guidance to allow only one attempt per ground. Owner should be aware that the opposition division does not want to take small steps. A request filed on the day should typically form a genuine attempt to solve all matters on file and definitely not introduce new issues.

Board of Appeal Rules of Procedure

The Board of Appeal has its own Rules of Procedure. They reflect that appeal proceedings are intended to appeal first-instance decisions. An appeal cannot be filed to completely re-open a case. Therefore, the Rules of Procedure specify that the board is empowered to hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the first-instance proceedings (*cf* Article 12 of the rules). Moreover, appeal proceedings must be based on the grounds of appeal as filed by the appellant and any communication from the Board of Appeal. In opposition proceedings, parties also have a basic right to comment on the content of any document of another party. They define the framework of the appeal and the board is reluctant to broaden the scope of the proceedings to items not addressed by any of the parties in time. Therefore, appellants should draft their submissions with great care. For example, the grounds of appeal or a reply thereto should contain the party’s complete case. All facts, evidence and arguments should be explicitly filed from the outset. It is at the board’s discretion to accept any new submission during the appeal proceedings. In practice, this will depend on the complexity of the submission and the state of the proceedings. In essence, the boards is not generous in using its discretion.

Oral proceedings in examination, appeal stage

During examination, the board will act according to the Rules of Procedure, but will show some flexibility because it understands that the appellant does not yet have a granted patent and the appeal is its last resort (apart from filing a divisional application and starting all over again against high costs). It is recommended to follow these Rules of Procedure, especially as to meeting submission deadlines. The Board of Appeal may be strict during oral proceedings as regards late filing. When the board suspects that a submission brings about a new case, it will not admit it into the proceedings. It will certainly do so when (auxiliary) claim sets are presented that could have been filed and defended before the examining division.

Oral proceedings in opposition, appeal stage

The main purpose of an appeal in opposition is to conduct a final review of the decision given by the opposition division and thereby provide the losing party with an opportunity to challenge that decision. Appeal proceedings in opposition are thus largely determined by the factual and legal scope of the preceding opposition proceedings. Again, because several parties with opposing interests are involved, the Rules of Procedure are generally applied more stringently. It is challenging to have admitted any new piece of evidence or a new request or argument – even a document or argument used in opposition proceedings but not brought forward at the onset of the appeal proceedings. The board has dismissed inventive step arguments based on a closest prior art presented at the hearing where such document was used for novelty in the appeal proceedings leading to the hearing. Illustrative is the common lack of a date for filing final written submissions on the invitation to the hearing. Attorneys arguing that they should be awarded such an opportunity are often merely gazed at. Ultimately, if the party wants to achieve something with the board, it better have tried the same thing in the first-instance proceedings. Even then there is no guarantee that the board will admit all previously submitted requests. Convergence is an important parameter here.

Practical lessons

• If a party is unsatisfied with the examiner’s opinion, it should not give up too easily. Do not file a request for issuing a statement as to the status of the file which can be appealed. Always file and defend a main request and all possible auxiliary requests. One may not get a new opportunity to do so before the Board of Appeal. Be aware that a request tried but withdrawn or abandoned in first-instance proceedings may be gone forever. If a request was not deemed persuasive at first instance, perhaps a variation thereto could still be presented in appeal. With no decision on that request at first instance, the board has every opportunity to dismiss further attempts.
• Always file any possible auxiliary request by the due date for written submissions in preparation of oral proceedings. Do not wait for the oral proceedings themselves. In opposition proceedings, consider filing these auxiliary requests already in reply to the notices of opposition. Anything later will run a serious risk of not being admitted into the proceedings because of late filing. Notably, filing auxiliary requests is not considered as weakening the main request and has become standard practice.

The good old days may be gone forever, at least when it comes to oral proceedings. However, there is still some room for flexibility at the EPO. The EPO recently intensified the informal telephone interviews in examination proceedings, with opportunities for to exchange arguments and discuss possible claim amendments in a matter of time, avoiding time-consuming official actions and small increments of progress in the file. The senior attorneys will undoubtedly appreciate this.

EU trademarks 2.0

Authors: Bart ten Doeschate and Marlous Stal-Hilders

Trademark practice in the European Union (EU) is undergoing an important overhaul. Under the trademark reform package, both the EU Trademark Directive (2015/2436) and the EU Trademark Regulation (207/2009) have changed on several essential subjects. The goal of these changes is to have a more consistent, user-friendly, accessible and modernised trademark system throughout the EU. As trademark law is harmonised, these changes affect not only EU trademark practice, but also the national trademark systems of EU member states.

This article addresses the most important topics from a practical perspective, focussing on four crucial points of the amended legislation.

Graphical representation

One of the most important changes to the directive is that trademarks no longer need to be graphically representable in order to be registered. The idea behind this change is that a sign should be able to be represented with generally available representation methods, rather than necessarily in a graphical way, making this part of trademark law more futureproof. This opens the door to non-traditional trademarks such as sound marks, scent marks and movement marks. While the requirement of graphical representation has been dropped, trademarks must be represented in a way – to cite the directive – “which is clear, precise, self-contained, easily accessible, intelligible, durable and objective”. This creates an interesting task for the national and EU trademark registries, as they may be required to allow their register to represent trademarks other than words and images. The technical challenges may be limited for sounds and movements, which can be captured in several commonly used file types (e.g., MP3, MP4, GIF). However, it will be difficult to represent scent marks (among other things) at this stage, as there is yet no technological way to make scent marks available to the authority and the public in an acceptable manner.

Absolute refusal grounds

The second important change is an extension of the absolute grounds of refusal. The previous directive stipulated three absolute refusal grounds aimed specifically at 3D marks. In the new directive, these refusal grounds apply not only to 3D mark applications, but to all trademark applications. Thus, an application will be refused where it consists of:

• a shape or any other characteristic which results from the nature of the goods themselves;
• a shape or any other characteristic of goods which is necessary to obtain a technical result; or
• a shape or any other characteristic which gives substantial value to the goods.

Nature of the goods

One could be faced with refusals of logos depicting an image of the product for which the application is intended. For example, a logo depicting a football in relation to footballs may be denied registration, as the shape of the logo results from the nature of the goods. Considering the case law of the European Court of Justice (ECJ) in this regard, displaying a football alone does not necessarily mean that the trademark as a whole is invalid. Only trademarks which consist exclusively of the shape of a product with one or more essential characteristics which are inherent to the generic function should be subject to refusal (C-205/13).

At first glance, the practical consequences of this additional refusal ground may be limited. The EUIPO already refuses device mark applications which are a common depiction of the goods for which the application is intended, based mainly on the lack of distinctiveness. However, an important difference between this refusal ground and refusal based on the nature of the goods is that the latter cannot be overcome by proving that the mark has acquired distinctiveness through use.

Technical result

Under the new directive, all trademarks consisting exclusively of a shape which is necessary to obtain a technical result will be refused. When taking into account the relevant ECJ case law (e.g., C-299/99 and C-48/09P), this concerns signs in which all of the essential characteristics of a shape perform a technical function. It is irrelevant if the sign also bears non-essential characteristics that do not have a technical function. Thus, for example, a trademark application for an image of a corkscrew which has no additional distinctive elements and which is intended for use on corkscrews may be refused based on this ground. The same goes for the sound of a popping cork in relation to sparkling wines, or a movement mark for opening a wine bottle.

Value of the goods

A sign will be refused registration where it consists exclusively of a shape or other characteristic that gives substantial value to the product. This means that where the shape of a sign makes consumers want to buy the product because of its aesthetic attractiveness, the sign will not qualify for trademark protection. The rationale behind this refusal ground is to prevent overlap between trademark and design protection. Applying this refusal ground for all trademark applications (instead of merely to 3D mark applications) may have far-reaching consequences. Although its scope is yet to be determined by ECJ case law, by the letter of the law and existing case law, this refusal ground could in theory prevent registration of all trademarks for goods which consumers buy because of the relevant trademark’s attractive appearance. In particular, logos may often be regarded as a valuable aesthetic aspect of a product and it cannot be denied that logos may give substantial value to the goods. For this reason, logos may be refused registration or subsequently invalidated. However, this consequence may be too far-reaching.

The ECJ has been requested to elaborate on these refusal grounds on several occasions in the context of 3D marks. However, it remains uncertain whether and to what extent these judgements would apply to all trademark variations.

Specification of goods and services

Many of the amendments in the new directive are a codification of ECJ case law and were already used by the trademark authorities before the introduction of this directive. For example, the new requirements for the specification of goods and services are a direct consequence of the ECJ’s *IP Translator* decision (C-307/10). In this case, the court ruled that the specification of goods and services should be clear and precise in order for authorities and economic operators to be able to determine the scope of a trademark registration. With the judgment, the ECJ banned the practice of using the class headings of a Nice class in order to include all possible goods under that class in a registration. Not only does a trademark registration cover only the literal wording of the classification used; in addition, trademark authorities will refuse items which are unclear or unprecise. Consequently, drafting a coherent specification of goods and services has become of paramount importance to the scope of protection of a trademark.

National trademarks 2.0: administrative cancellation proceedings

Another important novelty in the new directive is that it requires all national trademark authorities to provide for an administrative cancellation proceeding based on the descriptiveness, lack of distinctive character or lack of genuine use of a trademark, or a conflict with another party, in the sense of either confusing similarity or a registration made in bad faith.

At present, only the EUIPO offers a cancellation procedure. EUIPO administrative cancellation proceedings are efficient and cost effective when compared with a cancellation request filed in a regular court action.

The new directive orders national authorities to provide for a national administrative cancellation proceeding, without prejudice to the option to do so in a regular court action. Although an administrative cancellation proceeding is cost and time efficient, there are important differences from requesting cancellation before a civil court. While these differences depend on the national law of each country, in general one must take into account that the scope of an administrative cancellation is limited to the relevant trademark and based only on the particular trademark law. Other common aspects of IP infringement cases are not included in a cancellation proceeding. Moreover, it will not be possible to address a combination of IP infringements, as is usual in a court action. Therefore the administrative cancellation proceeding will not replace all cancellation requests before a civil court. However, the option to file an administrative cancellation action often allows for a quicker solution in disputes and trademark clearance projects.

The organisational burden on the national trademark authorities is considerable. For this reason, they have been given seven years to implement this part of the directive.

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