Friday, 10 October 2014

T 0427/11 -- The right to be heard




The opposition division found one of the auxiliary requests to be inventive in spite of the arguments of the opponents.  Opponents had the opinion that their arguments were not fully considered in this decision. Was their right to be heard violated?

Read the full decision to find further interesting sections on the admissibility of late filed evidence and requests, which are not included below.


Reasons for the Decision
1. Reimbursement of the appeal fees and remittal of the case

1.1 Both appellants argue that, in the impugned decision, the opposition division did not give due consideration to all relevant the submissions presented during the opposition proceedings on the issue of inventive step, thereby violating the right to be heard as laid down in Article 113(1) EPC 1973. In particular, the submission that the subject-matter claimed merely corresponded to the automation of an officer's tasks when issuing a passport was not adequately addressed. Moreover, it did not give any reasons why the public prior use according to documents D7 and D8 was closer to the subject-matter of claim 1 as maintained than the other prior art documents on file, in particular document E5', which appellant I had used as a starting point in the opposition proceedings for challenging the inventiveness of the subject-matter claimed.

1.2 The board notes that the right to be heard generally requires that those involved in proceedings before the European Patent Office be given an opportunity not only to present comments on the facts and considerations pertinent to the decision but also to have those comments demonstrably heard and considered, that is, reviewed with respect to their relevance for the decision on the matter. In general, Article 113(1) EPC 1973 guarantees a party's right to have the relevant grounds, i.e. the party's arguments raising reasonable doubts as to the legal or factual basis underlying the reasons for the decision, fully taken into account in the written decision, even though this can be done implicitly (cf. Case Law of the Boards of Appeal of the European Patent Office, 7**(th) edition, 2013, chapter III.B.1.1.).

1.3 Applying these principles to the case in issue, the board judges that the appellant's submissions mentioned above in paragraph 1.11.1 are not irrelevant given the opposition division's positive decision on inventive step of the subject-matter of claim 1 of the (then) second auxiliary request, which corresponds to the main request in the present appeal proceedings. Moreover, the opposition division manifestly took note of these inventive step objections and summarised them in the contested decision (cf. points 6.3.1 and 6.3.2 of the reasons). In its reasoning on why the subject-matter claimed involved an inventive step it started from the public prior use according to documents D7 and D8 as the closest prior art, however, without giving any reasons for doing so (cf. point 6.3.3 of the reasons):

"The Opposition Division holds that the public prior use as disclosed in D7 and D8 represents the most relevant prior art for the contested invention."

More particularly, in the contested decision the opposition division remained silent both on why it considered the public prior use according to documents D7 and D8 a more promising starting point than document E5', which appellant I had relied upon, and on why a combination of the system of document E5' with the self-contained page-turning mechanism of document E4 did not involve an inventive step. Moreover, it did not provide any arguments on why the subject-matter claimed did not merely correspond to the automation of an officer's tasks when issuing a passport. Regardless of the merits of the above objections, the decision is formally defective in that it is tainted by a lack of reasoning on a point relevant for the dispute, thereby resulting in a violation of the appellants' right to be heard guaranteed by Article 113(1) EPC 1973. This amounts to a substantial procedural violation justifying the reimbursement of the appeal fees of both appellants in the event that their appeals are allowable, Rule 67, first sentence, EPC 1973 (which continues to apply, cf. Article 1 of the Decision of the Administrative Council of 28 June 2001 on the transitional provisions under Article 7 of the Act revising the European Patent Convention of 29 November 2000 published in Special Edition No. 1 of OJ EPO 2007, 197; Article 2 of the Decision of the Administrative Council of 7 December 2006 amending the Implementing Regulations to the European Patent Convention 2000 published in OJ EPO 2007, 8; decision J 10/07, OJ EPO 2008, 567, Reasons No. 7).

1.4 Article 11 RPBA provides that a case shall be remitted to the department of first instance if fundamental deficiencies are apparent in the first instance proceedings, unless special reasons present themselves for doing otherwise.

The board holds that special reasons speak against a remittal of the present case to the opposition division, in particular the length of the proceedings to date and the considerable further delay which would ensue from a remittal. Additionally, the opposition division evidently took note of all the inventive step objections raised, even though the corresponding reasoning in the decision under appeal is incomplete. Consequently, considering all the relevant facts, the board concludes that a remittal of the case to the department of first instance would be inequitable. The board thus exercises its discretion under Article 111(1) EPC 1973 and Article 11 RPBA in the sense that it will itself decide on the merits of the appeals.

(...)

Order
For these reasons it is decided that:
1. The decision under appeal is set aside.
2. The patent is revoked.
3. The requests for reimbursement of the appeal fees are allowed.
 

This decision has European Case Law Identifier:  ECLI:EP:BA:2014:T042711.20140717. The whole decision can be found here. The file wrapper can be found here. Photo by Steve Jurvetson obtained via Flickr under (CC by 2.0) license. 


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