Dr Keith Boden fails at the European Patent Office

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Dr Boden (partner in Fry Heath & Spence LLP) has upset someone else. After having been caught doctoring a letter to his client and being reprimanded for it (see our previous post discussing Keith Boden’s style of client care), this time it is a Board of Appeal at the European Patent Office.

We happened to spot the Appeal decision on European Patent Application no. 09807215.0 (see here for the application details and here for the decision itself). It’s about a hearing aid, which you can switch between modes by tapping on it – which is neat. Each time you tap, it moves to the next available mode. Sadly, there was a prior publication of a hearing aid which you tapped to change mode, the difference being that in the earlier one you had to tap according to a specific pattern for each mode. This one was said to be easier, because a single tap to move on one step is easier. It probably is, but that’s a very common control system and is seen almost everywhere. The Board of Appeal thought so, and rejected those claims as obvious despite Keith Boden’s arguments. Such is life – it happens to all of us from time to time.

OK, Dr Boden’s argument was that the earlier document taught one specific thing, and the new invention was different to that, so therefore went against the teaching of the prior document, and hence any suggestion that it was obvious to change the earlier arrangement was an ex post facto hindsight-based suggestion that was contrary to the document’s teaching. In the patent profession, we call that the “it’s novel therefore it’s inventive” argument. It’s a pretty straightforward fallacy which the Board saw straight through. But Dr Boden may have been under instructions to present that argument. We shouldn’t criticise for him that, without knowing more.

However, what caught our eye wasn’t the (unremarkable) decision. It was the way in which the case was handled, to the fairly obvious exasperation of the Board (albeit expressed in their careful manner). Why? Three reasons.

First, Dr Boden specifically requested “Oral Proceedings”, i.e. a formal Hearing at the European Patent Office in front of the Board of Appeal. One was duly appointed, Dr Boden was invited, he confirmed receipt of the invitation, and he didn’t turn up. We don’t know why, but it would be a simple courtesy to let the Board know he couldn’t make it and withdraw the request. Oral Proceedings are major task for the EPO and its staff and it’s polite to let them know they can stand down if you no longer intend to grace them with your presence. Wasting their time like this just adds another incremental cost to the EPO, slowing down everyone else’s cases and raising the cost of patenting for all of us.

Second, there was a fallback argument in Dr Boden’s appeal. He also presented a more limited version of the “claim” (i.e. the definition of the invention) that brought in features related to how the hearing aid detected the tap. That might well be inventive and patentable – but the Board pointed out that this was an entirely new case that had not been discussed with the first instance examiner. This is a major misunderstanding of the nature of an Appeal by Dr Boden. An Appeal is to discuss whether the first decision was right or wrong. If the examiner refused the application because Dr Boden failed to offer an allowable definition of the invention, then the decision was still right. The error was not the examiner’s, it was Dr Boden’s. So the Board dismissed this because if Dr Boden had wanted this claim to be considered, he should have submitted it at the correct time.

We see that the applicant has filed a fresh application so that this claim can be considered, and that they have used a different firm of attorneys. Sadly, that will have cost them about £11,000 in official fees (plus whatever the new firm charged them), as filing an application in those circumstances means you have to repay all the official fees paid up to that point on the parent application. For an application that has been pending that long, that’s painful. Especially when you could have avoided that (and the cost of the appeal) if your attorney had filed the claims at the right time.

Finally, all Appeal decisions come with a slip to let the attorney confirm safe receipt. This gives the EPO confidence that they can safely close their file. It’s another basic courtesy to return that. Dr Boden was sent the decision on 30 September 2019. along with a slip to confirm receipt He didn’t confirm receipt. So they sent the decision again on 13 November 2019, with another slip. He didn’t confirm receipt. So they reminded him on 17 January 2020. He didn’t confirm receipt. So they reminded him again on 19 March 2020. As of the date of writing this, there is still no sign of a confirmation of receipt. The EPO seems to have given up. Now, either four separate recorded letters to Dr Boden have failed to arrive, or Dr Boden is too rude or too disorganised to extend this basic courtesy to the EPO.

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