In some cases a hearing is highly recommended as a way of achieving a positive outcome.
The Electrical, IT & Physics team at Griffith Hack are celebrating recent success in the ABB Schweiz AG  APO 27 (7 June 2019) case, which relates to power control within “microgrids” in electrical power grids which have multiple points of common coupling (“PCCs”) with other electrical power grids.
In this instance expert Patent Attorneys Nick Mountford and Jeremy Robinson requested a hearing when an Examiner became intransigent.
This article reflects on Nick and Jeremy’s recent experience and highlights two main advantages to requesting a hearing:
- As hearing decisions are on the public record, the Delegate conducting the hearing is likely to be more precise in their application of the relevant law which gives the applicant an advantage when the Examiner has failed to provide support for a position they’ve adopted in examination.
- The cost is similar to the main alternative course of action but delivers greater certainty.
The relevance of relevant law
It is not uncommon for Examiners to make assertions during prosecution. In ABB, in the third examination report the Examiner asserted that certain features which were new relative to the prior art were “merely a matter of design choice that would be obvious to a PSA [person skilled in the art] in relation to power networks”.
In the hearing submissions, we submitted that the report provided no additional explanation as to the reason that feature was considered obvious. Additionally, we submitted that no reasoning or evidence was put forward as to why such a modification would have formed part of the common general knowledge of the person skilled in the art at the priority date.
This forced the Delegate to look to whether the Examiner’s position was consistent with the case law and supported by the evidence. The Delegate said:
“The AstraZeneca case [relevant case law] does not permit the formulation of the problem to be based on information not available to the person skilled in the art either as common general knowledge or under subsection 7(3). While the specification acknowledges the prior existence of microgrids with more than one PCC, I have insufficient information before me in this case that such arrangements were common general knowledge at the relevant time, still less that the above-mentioned problems in respect to such arrangements were common general knowledge.”
From the above, you can see that the Delegate clearly identified 1. the relevant case law and 2. the lack of relevant evidence to support the Examiner’s position.
As a result, the Delegate went on to say:
“On the information before me in the present case, I find that the problems documented in the specification, and that may lead one to desire to control the second power flow as claimed, were not common general knowledge at the relevant time. Similarly, D1 is not directed to addressing such problems. Consequently, I think it cannot be fairly said that the control of the second power flow in dependence on changes in the first power flow, as claimed, was obvious at the relevant time."
Costs relative to other actions
Most cases that reach an impasse do so near the deadline for gaining acceptance of an application. While taking a case to hearing is expensive because detailed submissions need to be made and a hearing fee has to be paid, the other option at that point is usually to file a divisional application in order to extend prosecution and try to break the impasse in subsequent prosecution. Once you add up the cost of filing the divisional application, requesting examination, receiving an examination report and filing a response, the cost of taking the case to hearing is reasonable in comparison.
Filing a hearing request also stays the deadline for obtaining acceptance. As a result, unless the case taken to hearing is truly hopeless, the applicant should get additional time after a negative hearing outcome to decide whether to file a divisional application to pursue the case from another angle.
It is important not to proceed to hastily to a hearing; begin by responding to any assertions and giving the Examiner a chance to substantiate their position with evidence. Otherwise there is a risk that the Delegate might send the case back for further examination rather than giving a final decision in relation to the case. (See Apple Inc.  APO 54 (20 August 2018).)
Once it is clear that the Examiner has not been able to substantiate their position with evidence or their position is inconsistent with the case law, then a hearing is highly recommended as a way of achieving a positive outcome.