‘In addition to its functions for the court and counsel, oral argument provides some fascinating insights into human discourse. As Rembar suggests, through the argument we see “sensitivity and obtuseness; agility and rigidity; creative legal thinking and failures of the imagination. We see the advocate’s art, and the absence of it.”’So what is demanded of an attorney at Oral Proceedings? Can one survive based on one’s knowledge of the European Patent Convention (EPC) and case law, or does one need to be a master of human psychology and emotions?
What is the purpose of Oral Proceedings?
 |
| Whenever the Appeal Board were in a good mood they wore red |
Sensitivity and obtuseness
Surely in Oral Proceedings one simply presents one’s best case on each issue? The answer is ‘no’. Oral Proceedings have a dynamic of their own in which one gets to gradually know the EPO side. The EPO will have preferred documents to focus on, preferred arguments and a certain approach to each issue. They may feel another T decision is more relevant, and for some reason D35 may become the most relevant prior art document, and not D1 which you have spent days analysing (each prior art document is given its own 'D' number in EPO proceedings to act as a shorthand for it). So an attorney must quickly see the issues from new perspectives. If the EPO cannot be persuaded to change their perspective you must work within the way they see things.
Agility and rigidity
The attorney may feel ‘that is not the correct approach’, ‘that is not the correct problem’ or ‘that document does not say that’. However, if the argument is not winnable one gets over it and moves on. Carefully rehearsed arguments have to be changed, adapted or even discarded, and the unknown has to be entered. All the time one must be alert to what works and what does not, and one must adjust to thinking in terms of what is important to the EPO. One is not fighting the EPO, one is seeking to persuade them, and so one must tune in to their thought processes.
 |
| One must accept the injustice when it happens |
There are always surprises in oral proceedings. In examination Oral Proceedings the Division may suddenly take a different view of the case, particularly if the Chairman has his or her own views. A new prior art document can appear, or for some reason the Examining Division might take a liking to the Fourth Auxiliary Request. You may be handed a T decision that the EPO now thinks is particularly relevant to your case which they would like you to comment on (a T decision is a decision of an EPO Board of Appeal and such decisions are an important way of formulating case law at the EPO).
In opposition proceedings things can be trickier. Opponents can introduce new arguments that you have not prepared for, and the EPO can be receptive to them. The EPO can interpret a feature in the ‘wrong’ way so that it no longer provides the distance from the prior art that you had assumed it would. The key amendment that you think of to salvage inventive step is found to add matter, or the EPO decides it will not allow any more Claim Requests. So one must adopt the attitude of anything can happen on the day. One must take advantage of the new opportunities, and cope with the new problems.
Strategies and predicting what will happen
For every argument you make you must have already thought through the counter-argument and every implication. If you argue that X is inventive, then does that make Y insufficient? Does the argument in support of priority also imply that D1 is relevant to novelty? When you make the amendment what are the likely attacks against it? How are you going to respond? Are there safer arguments or amendments?
Auxiliary Claim Requests – the way to get something
Having the right Auxiliary Claim Requests is often the key to getting your client claims that are commercially useful. An attorney must have a realistic view of which Claim Requests have a chance of being granted and which features might be seen as contributing to patentability. That will help in formulating arguments and predicting what is likely to happen. As your Claim Requests get narrower in scope, the EPO will become more lenient as they realise that third parties will be inconvenienced less and less by the scope that you are asking for. Even if you only succeed in obtaining a Request with a narrow scope, that may be useful to your client, particularly where regulatory approval is going only cover a narrowly defined product or it would take a lot of development work to see which other variants are suitable.
Clearly it is useful to draft Auxiliary Requests that have their own distinct reasons for patentability. However one should be careful of not pre-judging which Requests will be accepted. Sometimes the EPO will allow a Request which represents a sort of middle position between the arguments presented by the different parties.
Work for it and never give up
As the Claim Requests go down one by one by it is easy to start to give up. However one must not. The next Request may be the one that survives. This is especially true on the second day of a hearing where the parties have started to tire. You have to keep going enthusiastically, even if you are not succeeding. Never assume that you don’t have a chance. There are plenty of EPO decisions that go against the case law, the ones that are never published, and which were decided because it simply ‘happened’ on the day.
How does one prepare?
Clearly one must know all the documents, and one should have a very good idea of all possible new arguments and amendments that might be introduced on the day. One must think through how the proceedings are likely to go. The EPO will decide on each issue sequentially, and so one must see, for example, what is likely to be found novel to prepare the most appropriate arguments for inventive step. It's best to assume that a lot more progress will be made in Oral Proceedings than was made in the written procedure, and so many new issues might arise. If sufficiency suddenly becomes important, then one needs to be prepared for that. Also, one should not overlook small points in one’s favour as they can contribute to supporting your position, and they may become more relevant to narrower Auxiliary Requests.
 |
| Lucinda could see that added matter was going to be a problem |
Are Oral Proceedings the best way to sort things out?
They certainly can be effective in dealing with a lot of issues quickly. In particular in the informal atmosphere of examination Oral Proceedings, talking through why the Examiner and the Applicant have stuck to their positions, can be very helpful. That may allow the Examiner to better understand the contribution and to work with the attorney to find a claim that satisfies both sides.
However, this Kat also sees that Oral Proceedings are subject to the vagaries of the day. Not all patent attorneys are brilliant advocates, and essentially the case will usually be decided by the quality of the oral arguments delivered on the day, with the written submissions being secondary. Those that have taken part in many Oral Proceedings will know of the injustice that happens when things are misunderstood or misinterpreted, or when the EPO has simply not fully appreciated or understood a complex argument. There is probably no better way to do things, and in the meantime Oral Proceedings continue to provide ‘fascinating insights into human discourse’.