In a very recent decision, i.e. decision T 1251/08, the EPO Board of Appeal (BoA) has confirmed the EPO’s generally very careful practice toward interviews and phone consultations with the attorneys representing the parties.

In the case in question, the applicant had appealed the Examining Division’s refusal to grant a certain European patent. Soon enough, the BoA had arranged oral proceedings.

As is known, oral proceedings at the EPO amount to a full-fledged formal hearing involving a panel of at least 3 BoA members. At the end of the hearing the actual decision (grant of the patent, definitive refusal of the application, etc.) is announced orally by the BoA. Thus, oral proceedings before a BoA represent a crucial moment in the fate of any given case, be it an application refused by the Examining Division or an opposition decided upon by the Opposition Division.

In the above case, the applicant’s European patent attorney had filed certain claim requests in advance of the oral proceedings, and had then called the BoA rapporteur requesting a discussion on the allowability of any such claim requests. The attorney had then called the rapporteur again, who had indicated that none of the claim requests were allowable When asked about the reasons for this, the rapporteur had indicated that he could not discuss the reasons on the phone. The day before the oral proceedings the attorney had also filed new claim requests and had phoned the BoA to inform them about this.

In its decision, the BoA has commented on the use of phone calls and phone interviews in appeal proceedings. As a first point, the BoA indicates that, while the European Patent Convention (EPC) provides for an absolute right to oral proceedings, it does not provide for “the right to an interview”. As regards the duties of the rapporteur, it clarifies that on substantive matters the rapporteur can act on his own only when he or she is sure to be acting on behalf of the BoA, which in turn means that “the other members of the board have been informed and put in the position to give an informed opinion on the action to be taken.” In the BoA’s view, this can not happen if one BoA member discusses substantive issues with the attorney in the absence of the other members. This is the reason why the rapporteur refused to discuss substantive issues with the attorney on the phone prior to the oral proceedings.

On the other hand, in T1251/08 the BoA also mentions that the call from the attorney to anticipate the upcoming submission, on the very last day before the hearing, of new claim requests, was helpful to ensure that the BoA would see such submission in time. In its decision, the BoA appears to say, albeit implicitly, that this type call by the attorney is not only appropriate but also helpful.

The above very careful approach to phone calls and phone interviews is, in many ways, identical to the one adopted by the EPO first instance divisions (Search, Examination and Opposition Divisions). This approach is surely different from the very interview-friendly approach currently adopted by some of the other major PTOs. It is important to know and acknowledge this difference, as this avoids making any requests which may be perceived, by the EPO, as unnecessarily antagonistic and allows instead to take a position which is not only based on thorough knowledge of the law, but is also perceived as cooperative by the EPO, thereby increasing the chances of a positive outcome.

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