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Don’t Repeat losing Appeal Arguments

Board of Appeal Chairperson European Patent Office (EPO)

In a series of articles, we will explore how data-driven legal research can be applied to improve client outcomes. In this article, we will focus on how to identify appellant arguments that were previously unsuccessful.

In particular, wouldn’t it be great to check if a previous appellant raised the same or similar arguments that you are planning to raise?

Especially, what if you could link such previous arguments to the actual Chairperson responsible for your appeal case?

All of this is possible with the ipQuants QuantView platform and in the following we will show you how!

Chairperson Insights

Don’t just limit your insights based on the Appeal Board responsible for your appeal, but make sure you understand your responsible Chairperson’s standpoint on the legal topic at issue.

Assume that we have an appeal case in which we are facing objections with respect to alleged non-technical features, which is quite common for computer implemented inventions (CII).

Chairperson Moufang, for example, has since 2010 decided 60 Examination Appeal Cases that reference at least the aspect of “non-technical” in the Reasons for the Decision section (see the following chart).

 

For the majority of these appellants the appeal was unsuccessful. In fact, 50 out of the 60 examination appeals were rejected by the Appeal Board led by Chairperson Moufang. Clearly, these type of appeal cases will be difficult to succeed on before Chairperson Moufang. That makes it even more important to ensure good case preparation.

Case Preparation Workflow

In order to ensure the best possible case preparation, consider implementing the following two simple steps:

1.Citation Analysis

Studying the appeal decisions that your Chairperson of interest usually cites, can deliver powerful insights. Within a couple of seconds, you will be able to get a deeper understanding of the thought process of the Chairperson.

In essence, if your appeal case corresponds to the parameters as per our above search query, you can anticipate one or more of the following decisions to be relied upon by Chairperson Moufang to support his arguments.

  1. T 0154/04   (Citation Count: 16)
  2. T 0641/00   (Citation Count: 9)
  3. G 0003/08  (Citation Count: 8)
  4. T 1143/06   (Citation Count: 6)
  5. T 0258/03   (Citation Count: 5)

 

Thus, it is more than advisable to review these decisions to avoid unexpected counter-arguments from the Board in future communications or during upcoming Oral Proceedings.

In addition, make sure you also analyze the Chairperson’s decisions in view of any cases you intend to cite.  For example, if you intend to cite decision T 643/00 to substantiate your arguments, use the QuantView Cited Decision filter. It will retrieve all cases of Chairperson Moufang, if any, that cite the decision of interest. More on this in a future article.

2.Appeal Outcome Analysis

Now that we know which decisions Chairperson Moufang usually cites, we can further limit the results based on the appeal outcome.

 

This enables us to study only those decisions, which had a positive or negative outcome for the appellant. It can be invaluable to check if your intended line of argumentation has already been tried in a previous case of your responsible Chairperson.

Thus, if we are to consider an argument in which we would like to rely on citing Decision T 0641/00 (Comvik), we can limit the result set by retrieving only those that had, e.g. a negative outcome for the appellant.

The following chart shows that in 2018 alone, Chairperson Moufang issued 7 decisions, in which he cited the Comvik decision and the outcome for the appellant was negative. Note the significant rise in negative outcomes in 2018.

You can now quickly retrieve the handful of cases and study the sections in which Chairperson Moufang outlines his interpretation of non-technical features.

Conclusion

We outlined two simple steps that will enable you to prepare a higher quality submission, while at the same time give you the confidence that the best and most efficient case preparation has been conducted on behalf of your client.

To reduce the legal risk for one of your client’s most important inventions, consider integrating these steps as standard work for future appeal submissions and oral proceedings preparation.

 

Want to learn more or try it out yourself? Contact us

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