Monday, 27 July 2015

T 1938/09 Procedural triggery?


Well before the oral proceedings, the proprietor/appellant requests the oral proceedings to be recorded and made public, The appellant next raises a partiality issue against the board (based on being a possible substitute for VP3). Subsequently, the appellant requested a stay of proceedings and questions to be referred to the Enlarged Board. 
None of the issues were successful.


Summary of Facts and Submissions

I. European patent No. 0 964 677, based on application No. 98 906 678.2 and on international application No. PCT/US1998/003584 published as WO 1998/036728, was granted with sixteen claims.

Independent claim 1 as granted reads as follows: [...]

II. Oppositions were filed against the granted patent under Article 100(a) EPC, lack of novelty and inventive step, Article 100(b) EPC, insufficiency of disclosure, and Article 100(c) EPC, added subject-matter.

III. The documents cited during the proceedings before the opposition division and the board of appeal include the following:

Expert opinion of Mr. Broß dated 7 September 2012, and filed by appellant's fax of 6 May 2014; filed for the first time to the EPO by letter of 8 May 2013 in review case R 8/13

Statement of a former chairperson of a technical board of appeal, dated 6 May 2014, and filed by appellant's fax of the same day

Excerpts from the OJ EPO showing the composition of the Presidium of the Boards of Appeal in the years 2004 to 2014, filed by letter of 28 August 2014

(E29) Driscoll, C.E., "Pain Management", Primary Care Vol. 14 (1987), No. 2, 337-352

IV. By its decision posted on 24 July 2009, the opposition division revoked the patent under Articles 101(2) and 101(3)(b) EPC.

The opposition division held that claim 1 of the patent as granted contained subject-matter extending beyond the content of the application as originally filed (Article 100(c) EPC).

Additionally, the subject-matter of the first auxiliary request was not inventive (Articles 100(a) and 56 EPC).

A second auxiliary request submitted during the proceedings was not admitted because it was held to be not suitable to overcome the objections against the patentability of the subject-matter of the first auxiliary request.

V. The patent proprietor lodged an appeal against that decision and filed grounds of appeal together with a request to maintain the patent as granted according to its main request or in amended form according to any of the first to fourth auxiliary requests. The first auxiliary request was identical to the first auxiliary request before the opposition division.

As a reply to the submissions of the respondent-opponents, the appellant filed auxiliary requests I to IV with letter of 19 December 2012.

VI. Both respondents had filed a response to the grounds of appeal, both dated 14 June 2010. They did not comment on auxiliary requests I to IV.

VII. Claim 1 of the first auxiliary request is [...]

VIII. After the summons to oral proceedings had been dispatched on 30 September 2013, the appellant requested the recording of a transcript of the oral proceedings with letter of 7 April 2014.

By letter of 6 May 2014 it filed an objection under Article 24(3) EPC to the members of the board on the ground of suspected partiality "in the event that any member of this appeal board has acted or is acting as the appointed substitute of VP3 in the course of these appeal proceedings".

The oral proceedings originally scheduled for 8 May 2014 were thereupon cancelled.

IX. By letter dated 15 May 2014 the board summoned the parties to oral proceedings to be held on 1 and 2 October 2014 and issued a communication pursuant to Article 15(1) Rules of Procedure of the Boards of Appeal (RPBA). It questioned the admissibility of the objection, and stated that at the oral proceedings it would decide on that issue in its original composition.

X. Observations on the admissibility of the objection were filed by the appellant in its letter of 20 June 2014 and by respondent 01 in its letter of 6 August 2014. The appellant, by letter of 28 August 2014, restricted its objection under Article 24(3) EPC to the Chairman of the board. The objections to the other members of the board were not maintained.

By fax of 19 September 2014 the appellant filed inter alia conditional requests for the referral of questions to the Enlarged Board of Appeal (EBA) and for a stay of the proceedings. The board issued a further communication on 24 September 2014 in which it expressed the preliminary view that the objection now restricted to the Chairman of the board was admissible.

Further, it indicated that it intended to reject the appellant's request for recording of a transcript of the oral proceedings and making it available to the parties.

XI. On 1 and 2 October 2014, oral proceedings took place before the board.

As far as the Article 24 EPC-related issues were concerned, the board decided in accordance with Article 116(4) EPC that they were not public.

XII. After hearing the parties and then deliberating, the board rejected the appellant's request for recording of a transcript of the oral proceedings and making it available to the parties.

XIII. After the board in its original composition had heard the parties and deliberated on the matter, the Chairman announced that the board had decided that the objection under Article 24(3) EPC against him was admissible.

XIV. The Chairman was replaced by an alternate to decide on the objection according to Article 24(4) EPC. The board in its alternate composition refused the objection by decision of 2 October 2014.

XV. The Chairman resumed the public oral proceedings before the board in its original composition on the same day. The board took notice of a written statement of the appellant filed "for inclusion in the minutes" (see attachment to the minutes of oral proceedings of 2 October 2014).

XVI. During the oral proceedings the appellant filed auxiliary request V, which was admitted into the proceedings.

The wording of its single claim is as follows [...]

XVII. After admission of this auxiliary request at the end of the second day of the oral proceedings the Chairman announced that the proceedings would continue in writing.

XVIII. On 17 October 2014 the board summoned to oral proceedings to be held on 9 to 13 March 2015 and sent a communication pursuant to Article 15(1) RPBA.

With its communication the board indicated inter alia that the parties should be prepared to discuss the single claim of auxiliary request V with respect to all requirements of the EPC.

XIX. With letter of 23 December 2014 the appellant requested that the oral proceedings be postponed because it intended to file a petition for review with respect to the decision to refuse the objection under Article 24(3) EPC against the Chairman of the board. It further requested that the following questions 1 to 3 be referred to the EBA unless the board agreed to the postponement.

The questions read as follows:

"1) Where one member of the Board of Appeal before which the case is pending has been objected to and where the rejection of the objection is or will be the subject of a petition for review under Article 112a EPC, is a stay of the appeal proceedings on the merits justified until after the petition for review and any subsequent proceedings relating to the objection have been finally decided?

2) May an alternate Board of Appeal which does not include the member who has been objected to delay the notification of the decision rejecting that objection until after the appeal proceedings on the merits have been progressed and/or decided with the result that a petition for review of the decision rejecting the objection cannot be filed before the appeal proceedings on the merits have been concluded?

3) May a Board of Appeal knowingly take procedural steps which may have the result of irreparably damaging a party to appeal proceedings pending before it?"

XX. The board issued a further communication and expressed its view that a decision concerning the newly filed procedural requests could only be taken after having heard the parties at the scheduled oral proceedings.

With respect to the request to postpone the oral proceedings the board indicated its preliminary opinion that according to Article 112a(3) EPC a petition for review had no suspensive effect and that the parties should be prepared to deal also with the substance of the case at the scheduled oral proceedings.

XXI. By letters of 6 February 2015, 26 February 2015 and 3 March 2015 the appellant reiterated its request for postponement. Furthermore, it requested that the oral proceedings be recorded and the recording made available to the parties.

XXII. With letter of 2 March 2015 the appellant submitted auxiliary requests VI and VII.

[...]

XXIII. Oral proceedings took place on 9 March 2015.

The board took notice of another written statement of the appellant filed "for inclusion in the minutes" (see attachment to the minutes of oral proceedings of 9 March 2015).

During these proceedings the appellant sought to file auxiliary requests VIIIa and VIIIb.

[...]
Auxiliary requests VIIIa and VIIIb were not admitted into the proceedings.

XXIV. The appellant further filed an objection under Rule 106 EPC in conjunction with Articles 112a(2)(c) and 113 EPC:

"Appellant Patentee hereby objects under Rule 106 EPC in combination with Art. 112a(2)(c) EPC and Art. 113 EPC to the non-admittance of Auxiliary requests VIIIa and VIIIb filed during oral proceedings on March 9, 2015:

In the oral hearings on March 9, 2015 new objections under Art. 84 EPC were raised by the Opponent as regards the understanding of the feature "wherein at 72 hours after initiation of the dosing interval the dosing of buprenorphine during the at least next 48 hours is maintained in accordance with zero order kinetics" which feature was introduced for the first time with Auxiliary request V filed during oral proceedings on October 2, 2014.

Appellant Patentee filed the above two Auxiliary requests VIIIa and VIIIb in an attempt to overcome the newly raised objections. The Auxiliary requests VIIIa and VIIIb were not admitted into the proceedings.

Thus, Appellant Patentee had no adequate opportunity to respond to the objections newly raised during the oral proceedings on March 9, 2015.

Against this background, Appellant Patentee considers the non-admittance of the two Auxiliary requests VIIIa and VIIIb a fundamental violation of its right to be heard."

XXV. The appellant's submissions, as far as relevant for the present decision, may be summarised as follows:

Arguments presented at the oral proceedings of 1 and 2 October 2014

Record of transcript

A record of a transcript of the oral proceedings was appropriate since the proceedings concerning the objection of partiality were of far-reaching importance. Moreover, the transcript could help in potential petition-for-review proceedings.

Admissibility of the objection of partiality

The objection of partiality against the Chairman of the board was not based on the expert opinion of Mr. Broß but on interlocutory decision R 19/12 of 25 April 2014 together with the further information contained in the statement of a former chairperson of a technical board of appeal, dated 6 May 2014. Mr. Broß had based his expert opinion purely on provisions contained in the EPC while decision R 19/12 related to activities of VP3 and consequently also its "elected" deputy which were not specifically laid down in the EPC. Accordingly, even if the latest procedural action had occurred in the knowledge of the expert opinion of Mr. Broß (Article 24(3) EPC, second sentence) the objection was not belated.

Sufficient substantiation followed from the evidence on file that the Chairman objected to was member of the presidium and according to Rule 12(5) EPC, these members potentially had to replace VP3. Additionally, the statement of a former chairperson of a technical board of appeal was on file that prior to the year 2010 chairpersons of technical boards of appeal deputised for the VP3 then in office, and took part in managerial meetings as the deputy of VP3.

Added subject-matter; main request and first to fourth auxiliary requests [...]
Admissibility of auxiliary requests I to IV [...]

Added subject-matter; auxiliary requests I to IV [...]

Admissibility of auxiliary request V [...]

Arguments presented with respect to the oral proceedings of 9 March 2015

Postponement of oral proceedings

The oral proceedings should be postponed until after a final decision relating to the objection against the Chairman of the board under Article 24(3) EPC had been reached. A petition for review pursuant to Article 112a EPC had already been filed and only a relatively short time would be necessary to see if it was likely to succeed. The patentee might suffer an irreversible loss of rights and irreparable commercial harm, whereas the opponents had not shown that they had a particular interest in an early decision, and there was also no reason to assume the general public would have such interest. Article 112a(3) EPC did not impose a positive obligation upon the board to continue in the substantive prosecution of the case, and did not deprive the board of the discretion to postpone, particularly as the situation was rather complex. Moreover, there were real prospects that the EBA would set aside the decision taken on the objection, given that Article 6(1) of the European Convention on Human Rights (ECHR) had been breached by the refusal of the Chairman to comment on the partiality objection. There was a body of case law of the European Court of Human Rights (ECtHR) and the European Court of Justice (ECJ) to the effect that a board had a positive duty to investigate partiality and to provide full and frank disclosure, irrespective of whether or not the final decision depended on this investigation.

Referral of questions to the EBA

The question of whether oral proceedings on the merits of a case should be stayed because of a pending petition for review concerning an interlocutory decision with respect to a suspicion of partiality in the same case, was of fundamental importance not only for the outcome of the present proceedings but also for the administration of justice in proceedings under the EPC, and thus legitimised the request to refer to the EBA the questions submitted with letter of 23 December 2014.

Admissibility of auxiliary requests VI and VII [...]

Clarity [...]

Admissibility of auxiliary requests VIIIa and VIIIb [...]

XXVI. The respondents' arguments, as far as relevant for the present decision, may be summarised as follows: [...]


Reasons for the Decision
1. The appeal is admissible.

2. Recording of oral proceedings

Whether or not a sound recording of oral proceedings is made is a matter of discretion for the board (R 17/09 of 1 October 2010, Reasons for the decision No. 9). The board did not consider the present case to involve such exceptional circumstances that a sound recording of the proceedings would have been justified. Even if such a sound recording were made, there would have been no legal basis for making it available to the parties.

Consequently, the request for recording the oral proceedings was refused.

3. Admissibility of the objection of partiality

3.1 If, in an admissible appeal, an objection under Article 24(3) EPC is made in respect of a board member by one of the parties, the board in its original composition must first decide on the admissibility of the objection (interlocutory decision R 12/09 of 3 December 2009, Reasons for the decision No. 2). An objection is inadmissible if, for example, the party has taken a procedural step while being aware of a reason for objection, or bases the objection on the nationality of the board member (Article 24(3) EPC, second and third sentences). Furthermore, the objection must be sufficiently substantiated in order to be admissible (R 12/09, Reasons for the decision No. 2).

3.2 The Chairman objected to was a member of the presidium and, according to Rule 12(5) EPC, all members of the presidium are potential deputies for VP3. Interlocutory decision R 19/12 of 25 April 2014 addressed for the first time the dual role of VP3 as Chairman of the EBA on the one hand, and as a member of EPO management on the other hand, as a basis for a perceived suspicion of lack of impartiality.

3.3 As the objection under Article 24(3) EPC is based on the link between decision R 19/12 and the member objected to being eligible for deputising for VP3, and the objection was filed directly after the publication of decision R 19/12, the objection has been sufficiently substantiated and the appellant has not taken a procedural step while being aware of the reason for objection.

3.4 The board is thus convinced that the objection under Article 24(3) EPC against the Chairman of the board is admissible.

4. Request for postponement of oral proceedings scheduled for 9 to 13 March 2015

The appellant's request is based on the assumption that the board had a general discretionary power to postpone proceedings at the request of one of the parties. The board recognises that, once oral proceedings have been fixed, serious reasons may arise which justify the fixing of a new date (Article 15(2) RPBA). Examples are given in the notice of the Vice-President of Directorate-General 3 dated 16 July 2007 (OJ EPO 2007, Special edition No. 3, 115). Also, in the present case the board cancelled the oral proceedings originally scheduled for 8 May 2014 in view of the objection under Article 24(3) EPC filed on 6 May 2014, to enable the board and the other parties to properly prepare for the discussion of the objection at oral proceedings. In these cases proceedings are normally not adjourned indefinitely; rather a new date is fixed (see the wording of Article 15(2) RPBA - "change of date" - and of the Notice of VP3 - "fixing of a new date").

Even if the board were to assume that it had a further-reaching discretion and could generally adjourn oral proceedings for an undefined period, Article 112a(3) EPC would speak against exercising such discretion in the case at issue. It is clear from Article 112a(3) EPC that the legislator did not want to attribute any suspensive effect to a petition for review.

Furthermore, in opposition proceedings, and thus also in opposition appeal proceedings, a decision should be reached as quickly as possible, not only in the interest of the parties, but also in the interest of the public at large in having clarified as soon as possible the question of whether an exclusive right has to be respected (G 2/04, OJ EPO 2005, 549, Reasons for the decision, point 2.1.4).

The appellant has furthermore argued that proceedings should be postponed as it was likely that the EBA would set aside the decision of the board in its alternate composition, and that proceedings would have to be re-opened. It is however not the task of the present board to speculate on what the EBA may or may not decide, and it cannot base its decisions on such speculation.

The decision of the board in its alternate composition on the objection under Article 24(3) EPC is binding for the board in its present composition and has the force of res judicata (see "Basic proposal for the revision of the EPC" MR/2/00 dated 13 October 2000, page 139, point 11). This force cannot be ignored by the board on the request of one of the parties.

In view of the above considerations the board is not only entitled but also obliged to continue with the examination of the substance of the appeal.


5. Referral of questions to the EBA under

Article 112(1)(a) EPC

The appellant requested that three questions be referred to the EBA.

5.1 According to Article 112(1)(a) EPC, if a point of law of fundamental importance arises, the board must refer questions to the EBA if it considers that a decision is required. It is then within the discretion of the board to decide whether a question is referred, and a board will usually not decide to refer a question if it is in no doubt that it can resolve the point of law itself.

5.2 Question 1 involves a point of law that the board was able to deal with without any doubt (see point 4 above). The same applies to Question 3. Additionally, when taking their decisions the boards are bound only by the provisions of the EPC and are not required to weigh up the economic implications.

Question 2 is no longer relevant in the current proceedings because the alternate board's decision on the objection against the Chairman under Article 24(3) EPC was issued on 27 February 2015, which is in advance of this decision on the merits announced on 9 March 2015. Moreover, given the fact that a petition for review has already been filed, the underlying cause also no longer has any factual basis from this point of view.

6. Admissibility of the auxiliary requests [...]

7. For the same reasons, applied mutatis mutandis, the objection under Rule 106 EPC, including the considerations given in the paper submitted during oral proceedings (see point XXIV. of this decision), was also to be rejected.

8. Articles 100(c) and 123(2) EPC [...]

9. Article 84 EPC [...]


Order

For these reasons it is decided that:

The appeal is dismissed.

This decision T1938/09 has European Case Law Identifier: ECLI:EP:BA:2015:T193809.20150309 The file wrapper can be found here. Photo "proceudre flyer" by Cristina Bejarano obtained via Flickr under CC BY 2.0 license (no changes made).

4 comments :

  1. Being the same representative as for the case R 08/13, and the same Board, no wonder that the haggling has started again.
    I think the decision is perfectly correct, and puts some things clear.
    One wonder what the interest of the representative can be to be constantly haggling with the Board or the EBA. Does this really help his client?

    ReplyDelete
    Replies
    1. I've wondered about that too. At least in this case the appeal was lost, so apparently it didn't help (at least not enough).

      Delete
  2. Same applicant as well. The patents at issue seem to be billion-dollar cases. Possibly the client has a strong incentive to keep something pending before the EPO as long as possible. In addition, you don't have that many options if your are certain you will never win anything with this particular chairman.

    ReplyDelete
    Replies
    1. There must be a lot at stake indeed; This case has 8 (!) divisionals.

      Delete

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