Tuesday, 3 May 2016

T 2086/13: Decision set aside and still partly binding?


In this opposition appeal there was a discussion about a (further) procedural violation of the Opposition Division. Another part of the decision relates to "not described in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art" - please read the whole decision if you interested in that part . 
In this case there was an earlier appeal (T 306/09) in which a first decision of the Opposition Divisional was set aside. The first decision contained a substantial procedural violation in the inventive step reasoning. The Board of the earlier appeal remitted the case back to the Opposition Division. Subsequently, the Opposition Division admitted a fresh ground of opposition in the proceedings. 
After the second decision of the Opposition Division, the appeal of this case was filed. The admission of the fresh ground is, according to the appellant, a new procedural violation. According to the appellant, the Opposition could only decide on the subject of inventive step, because (only) that part of the previous decision contained a procedural violation - all other parts of the decision "will stand unless specifically overturned by a higher court."
The original Board wrote "... the decision under appeal is set aside ...". What does that imply for the alleged new procedural violation?

Summary of Facts and Submissions
[...]
III. This is the second appeal in relation to the opposition against European patent No. 1 471 950. The first appeal T 306/09 lay from the decision of the opposition division to maintain the patent in amended form on the basis of an auxiliary request, but not allowing higher-ranking requests. The opposition division did not admit into the proceedings the ground under Article 100(b) EPC, raised after the opposition period. Both parties appealed that decision.
The outcome of the first appeal was to set aside the decision of the opposition division and remit the case to the opposition division for further prosecution due to a substantive procedural violation, lack of inventive step of the then pending main request having not been sufficiently reasoned.
IV. After said remittal, the opposition division admitted the ground of opposition under Article 100(b) EPC, decided that the claimed invention was not disclosed in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art, and revoked the patent in suit.
[...]
Reasons for the Decision
[...]
Alleged procedural violation by admitting the fresh ground under Article 100(b) EPC into the opposition proceedings
4. This is the second appeal in relation to the opposition proceedings against European patent No. 1 471 950. The outcome of the first appeal T 306/09 was to set aside the decision of the opposition division and remit the case to the opposition division due to a substantive procedural violation.
4.1 In the decision contested in the first appeal proceedings, the opposition division made use of its discretion not to admit into the proceedings the ground of opposition under Article 100(b) EPC, which had been raised after the nine-month opposition period.
After the remittal ordered by T 306/09, the opposition division admitted said ground into the proceedings, and decided to revoke the patent on that ground.
4.2 The appellant argued that the admission by the opposition division of this ground represented a procedural violation. With decision T 306/09, the board remitted the case "for further prosecution", "further" meaning examining whether any request on file defined an inventive subject-matter, given that the lack of inventive step have been decided by the opposition division with an insufficient reasoning, which the board had found not to comply with the requirements of Rule 111(2) EPC. Since this was the sole point found to be deficient by the board in T 306/09, the opposition division was only allowed to examine on remittal the question of inventive step and, consequently, not to "reopen" other issues such as the admissibility of the ground of opposition under Article 100(b) EPC. The appellant argued that "It is trite law that the findings of a lower tribunal will stand unless specifically overturned by a higher court".
4.3 The board cannot see any such limitation of the scope of the second opposition proceedings, i.e. the proceedings between the earlier and the present appeal. The appellant appear to argue implicitly that the parts of the first decision of the opposition division dealing with other issues beyond inventive step somehow became res judicata. In the opinion of the board, this would result in an untenable situation. In the present case, this would mean that some appeal grounds of the opponent put forward in its appeal of 31 March 2009 against the first decision would be disposed of either without any possibility for an appellate review (see e.g. the opposition ground of extension of subject-matter under Article 100(c) EPC), or if the first appeal decision T 306/09 were indeed considered as "the" appellate review, then such a decision is obviously not reasoned concerning this opposition ground, although it has been properly raised and reasoned in the first appeal. However, the deciding board had no obligation to consider any other issues for its decision on the finding of a substantial procedural violation, given that the first decision only had a single legal effect (the maintenance of the patent in an amended form). This single legal effect had to be revoked as soon as one ground against it were found well founded, and the deciding board did not err when it did not decide on any other issue.
4.4 The board holds that the procedural situation is far simpler. With decision T 306/09, the board decided that the (first) decision of the opposition division was tarnished by a fundamental procedural violation, and had to be set aside. Given that the decision only had a single legal effect, it was then set aside in its totality, including the part related to the admission of the ground of opposition under Article 100(b) EPC. Therefore, during the opposition proceedings following the remittal ordered by T 306/09, none of the decided issues remained, but had to be decided again. The decision did no longer exist, and therefore had no longer any binding effect on the opposition division. In this manner the division was also not prevented from examining again the new opposition grounds.
Use of the opposition division's discretion to admit the ground of opposition under Article 100(b) EPC into the proceedings
5. The appellant further argued that, notwithstanding the arguments under the previous point, the ground under Article 100(b) EPC was not prima facie relevant and, for that reason, the division should not have admitted it into the proceedings.
The opposition division considered this ground not only prima facie relevant but so relevant as to revoke the patent in suit solely on this ground. For this reason alone, the division did not use its discretion to admit this fresh ground of opposition in an unreasonable manner.
[...] 
Order
For these reasons it is decided that:
1. The appeal is dismissed.
This decision T 2086/13 (pdf) has European Case Law Identifier:  ECLI:EP:BA:2016:T208613.20160202. The file wrapper can be found here. Photo "Paper Torn" by Danilo Rizzuti obtained via FreeDigitalPhotos.net (no changes made).

9 comments :

  1. It looks common sense that if a decision is set aside in view of a substantial procedural violation, the original decision does not exist any longer and nothing can be saved from the original decision. There cannot be res judicata. Res judicata only if a given wording of claims is given by BA or an objection, e.g. Art 123(2) is overturned. Then only Art 123(2) cannot be discussed again.

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  2. At first sight, one can imagine that the proprietor feels short-changed here. The first time the opponent raised an Art. 100(b) objection was about 5 weeks before the first oral proceedings in first instance opposition. The fresh ground is not admitted in the procedure as not prima facie relevant.

    The OD then revokes the patent in part for lack of inventive step. In appeal, the board finds the inventive step insufficiently reasoned and remits.

    This time round, the OD finds that the exact same objection is prima facie relevant and admits it in the procedure after all. The patent is now revoked in full. In other words, the OD does a 180 on its previous opinion; apparently without any prompting thereto by the Board.

    This gives the impression, that if only the opposition division had reasoned their inventive step argument a bit better, the patent would have survived? Or would that only have caused the Board to reach the sufficiency of disclosure question and consequently come to the same conclusion as the OD had the second time round?

    The way I see it, is that the Board simply reverted for the first error they found, and the OD then realized they also erred in other aspects. They simply corrected those aspects as well, in a second better decision.

    What might be relevant here is that the reason the original decision found lack of inventive step is that the purported effect had not been achieved over the whole breadth of the claimed subject-matter. Perhaps, the OD realized after the remittal that in this case this line of reasoning was better dealt with under Art. 100(b) rather than 100(a).

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  3. I have great sympathy with Sander's view, but the question is clear: what does it mean when a decision is set aside due to a procedural violation? It seems that nothing is left of the decision. If the BA wanted to have something left, i.e. res judicata on a given aspect, they should have done so. I have never seen a BA acting in this way in case of a substantial procedural violation.
    In the present case, both parties appealed the first decision, the proprietor because some higher ranking requests were not granted, the opponent, inter alia, because the objection under 100,b) was not admitted.
    That the OD made a U turn is clear, but it could not come as surprise that 100,b) would come back after the first decision of the OD has been set aside.

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  4. Or would that only have caused the Board to reach the sufficiency of disclosure question and consequently come to the same conclusion as the OD had the second time round?

    The board could only have examined whether the OD had abused its discretion when deciding not to admit the fresh ground. That is not the same as deciding for itself whether the new objection was prima facie relevant. Assuming the OD had not abused its discretion, the board would have had no power to admit the fresh ground itself (unless the proprietor would have agreed).

    So something funny is going on here. Although the board has no power to set aside a non-abusive discretionary decision, that is apparently exactly what it did...

    If the OD had admitted the fresh ground in its first decision, it could apparently have decided not to admit it the second time around.

    If an ED or OD admits a main request and an auxiliary request and reasons inventive step for the main request insufficiently, after remittal by the board it can apparently decide not to admit the auxiliary request.

    And if an OD maintains the patent in amended form and only one party appeals, after a remittal for a substantive procedural violation anything is apparently still possible. Forget about the prohibition of reformatio in peius.

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  5. Decision overturned or not; the overall result may still be considered unfair, in a way. With the decision out of the way, things indeed needed to be newly decided upon. But the least they could have done, was to base a new decision on the facts that had also been the basis for the overturned decision. They should have stuck to their own view on the "prima facie" case, and not say (out of the blue) that what they first considered as black, they now consider as white. This at least could be called a surprise.

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  6. Let's put things in perspective.
    The U-turn of the OD might have apparently come as a surprise, but the question of sufficiency was not a new question which crept up after the first appeal.
    The ground was not accepted in the original decision since the OD stated that "both parties have a point", but no evidence in one way or the other was presented, cf. 2.6 of the reasons. When, in the same §, the OD acknowledged that there are compositions for which the determination of the parameters is possible, and other for which the determination is not possible, it is surprising that the ground of insufficiency was eventually not admitted, as the claim could not be implemented over the whole breath claimed.
    In the same decision the OD considered that in some cases the effect cannot be achieved, but in other it can be. The OD then concluded to lack of inventive step. This seems indeed more a problem of sufficiency than of inventive step. That is why the BA concluded that there was a substantial procedural violation, as then the reasoning for inventive step was incomplete, as this decision was taken without any reference to prior art.
    If the claim cannot be worked over all the scope claimed, then the problem is Art 83 and not Art 56, see for instance T 2228/12.
    In T 338/10 (second medical use claim) the Board chose to object Art 83 rather than 56 (grounds for revocation by OD), but there Art 100,b) was in the procedure.
    T 2001/12 gives a good picture about the relationship between Art 83 and 56.
    When looking at the whole case, the decision is by no means unfair. Just the OD revoked the patent for the wrong reason the first time. It would have been better for the OD to admit Art 100,b). The BA forced the division to come up with the correct reason. No surprise possible for the proprietor.

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    Replies
    1. But if the OD had given just enough unconvincing reasons for inventive step, the decision would have been sufficiently reasoned and the board would very likely not have been able to overrule the non-admittance of the fresh ground and would certainly not have been able to admit the fresh ground itself. At least that is how I understand the situation. Although I see and more or less agree with your point, I don't think the fact that the OD "mistakenly" picked Art. 56 instead of Art. 83 in its first decision would have given the board the possibility to introduce Art. 83 as fresh ground.

      The requirement that the inventive step objection had to be sufficiently reasoned was supposed to protect the party against whom the decision on inventive step was taken. But that party now suffers from the board's decision to remit the case in an attempt to "protect" the party.

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  7. When you look at the case, it is clear that the OD should have accepted to discuss the late filed ground on lacking sufficiency. The invention cannot be performed over the whole range claimed. As said before, some compositions seem to work, other not. What else is to be added?
    The Board could probably not have overturned the decision not to admit, but at the same time could not bring the ground in by itself without the consent of the proprietor.
    I am not sure the BA thought of "protecting" the proprietor, they simply wanted to find a reason to set the decision aside and remit to first instance, so the OD gave the board the opportunity to do so with a strange argumentation for inventive step. Fact is the decision on inventive step was not "unconvincing" it was incorrect as incorrect can be.
    "Suffering" is a word one should not bring in when it is about legal matters. What happened is certainly hard, but legal.

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  8. Legal matters should still be about the meaning behind rules; not about the rules itself. Things "legal" are not necessarily right.
    "Suffering" may just be the right word for a case where the outcome of a rule is not consistent with the meaning behind that rule.
    But this only on a side note. I am just following your discussion.

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