Better Safe than Sorry…

By a happy coincidence, the EPO Opposition Practice group on LinkedIn has recently blogged on a similar theme to my last post about numbers of requests. A very active member of that group, Mikko Piironen of Papula-Nevinpat  made the wise observation that similar problems appear “the other way round” in that in opposition proceedings opponents submit multiple citations against patents, some of them self-contradictory. He speculated that this may be done to draw the proceedings out. I think he may well be right but I also reckon the tactic may simply reflect a lack of sound judgment, or maybe just plain nervousness, as well as a failing in EPO procedure.

Logically, if document 1 is far and away the closest prior art, what purpose will be served by offering an alternative inventive step attack based on document 2? And if the best argument requires a combination of document 1 with document 3, why will a combination of documents 2 and 3 assist? Because, I suggest, the mind which has noticed the possibility of the alternative arguments does not have the confidence to rely on the best argument, or cannot avoid the nagging anxiety that the argument he or she knows to be best may not be seen that way by the opposition division or board of appeal, so the second-best is added in, and then the third-best and so on…

All very understandable. But how often do those who prepare such cases think how they come across when first read by the division or board? What would you prefer to read – 20 pages with four arguments of varying quality, the best usually first and the rest successively poor, or 5 pages with one well-presented and convincing argument?

Of course, it can be said that, as with multiple requests, the system encourages multiple attacks by discouraging late submissions and that this promotes the “better safe than sorry” approach. But English procedure is even tighter on late-filed submissions and yet multiple arguments are relatively rare compared with EPO proceedings. The difference, I suggest sotto voce, is that in EPO proceedings costs are only very rarely awarded for duplication, time-wasting and the like.

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