Friday, 25 November 2016

T 792/12: the atmosphere of the oral proceedings


Sometimes, when I read a decision, I feel the atmosphere of the oral proceedings. Sometimes it gives you also some information about the "happiness" of the Board, the Appellant and/or the Respondent. This recently published decision presents some interesting information with respect to these themes and gives a view of the Board whether they have to sit silently in the room or whether they may interrupt the parties.


Reasons for the Decision
1. Main request
1.1 Novelty (Article 54 EPC 1973)

1.1.8 In summary, the subject-matter of claim 1 thus lacks novelty at least with respect to E1 (Article 54 EPC 1973).
2. Procedural issues
2.1 The appellant's contention in the course of the discussion on the main request, that the Board seemed intent on sticking by its preliminary opinion, seemed not to want to listen to the arguments of the appellant and appeared to lack impartiality in the case by not being convinced by its arguments and interrupting on several occasions, is rejected.
2.2 In accordance with Article 15(1) of the Rules of Procedure of the Boards of Appeal (RPBA), the Chairman of the Board presides over the oral proceedings and ensures their fair, orderly and efficient conduct. When the Chairman sees a need to interject in a party's submissions to ensure that the proceedings are efficiently conducted, in particular to avoid a party repeating arguments, this is done. A Board is not required to passively listen to repetition. In the same way, a Chairman, or indeed any member of the Board, may interrupt when it is felt necessary to ask questions which the Board for example finds important for reaching its decision. The appellant's insistence that the Board not make any interruption during its pleadings, which it considered to indicate a lack of impartiality, is a misconception by that party of what constitutes a fair hearing.
2.3 The fact, as here, that a Board is not convinced by the representative's arguments on a certain matter, and even interrupts the representative to clarify how the representative sees that a certain argument is at all relevant to the claim in question, or to the matter of novelty or inventive step which is being discussed, does not imply that a Board is not listening or is intent on sticking by its provisional opinion. In the present case a significant portion of the representative's submissions particularly with respect to the main request, were a simple repetition of the numerous written submissions prior to oral proceedings, and indeed often a repetition of what had been presented already orally but a few minutes earlier. It is here of relevance to note that, when interrupted on one last occasion so as to limit further repetition, the representative of the appellant himself argued that during his submissions he had in fact made two new points not mentioned in writing (a general reference to T56/87 and a reference to Article 69 EPC - see above, both duly noted and commented upon in the course of the debate by the Board). The objections of the appellant are, at least for these reasons, unfounded.
3. Remittal to the first instance

4. Auxiliary request 1

5. Auxiliary request 2

6. Auxiliary request 3

7. Auxiliary request 4

8. Auxiliary request 5

9. Auxiliary request 11

10. Substantial procedural violation
10.1 As is evident from the minutes of the oral proceedings before the opposition division (see item A towards the end of page 1 thereof), the opposition division did not consider the patent proprietor's auxiliary requests 1 to 9 of 21 December 2011, as they were regarded as 'late filed' although the deadline for filing submissions before the oral proceedings had been observed. Whilst no formal mention of non-admittance is indicated, it is evident from the patent proprietor expressing its disagreement with the requests being considered late filed (end of item A in the minutes), and subsequently filing a new auxiliary request, that the auxiliary requests 1 to 9 were not admitted by the opposition division. Although item C of the minutes on page 4 states that the patentee announced that he wanted to submit a new auxiliary request, it cannot be understood from this that he had withdrawn any objection to the earlier auxiliary requests being regarded as late-filed.
10.2 There is mention of these auxiliary requests having been filed in point 6.2 of the facts and submissions of the decision, yet no reasoning at all is to be found in the decision as to why these requests were not considered / not admitted by the opposition division. Such lack of reasoning is contrary to the requirement of Rule 111(2) EPC and presents a substantial procedural violation.
10.3 Reimbursement of the appeal fee
10.3.1 In the present case the appeal is based on the non-allowability of both the main request (form as granted) and the single auxiliary request filed during the oral proceedings before the opposition division. The auxiliary request was filed in response to the main request having been found not allowable and the opposition division not admitting auxiliary requests 1 to 9 filed in response to the preliminary opinion of the division. It is thus apparent that, irrespective of the opposition division admitting auxiliary requests 1 to 9 or not, the proprietor would have had to file an appeal in order to try to defend its interests with respect to the main request. Furthermore, in the course of the oral proceedings, the appellant filed numerous auxiliary requests in addition to those already on file. Whilst these were subsequently withdrawn, including several of the original auxiliary requests 1 to 9, a number were considered at length prior to their withdrawal, thereby contributing to the case not simply being a re-consideration of requests on file before the opposition division. Also, the finding of the claims of auxiliary request 11 as allowable by the Board has no causal link with the procedural violation. In all the circumstances of the case, therefore, the Board finds that it would be inequitable to order reimbursement of the appeal fee.
10.3.2 The request for reimbursement of the appeal fee is thus refused.
For these reasons it is decided that:
1. The decision under appeal is set aside.
2. The case is remitted to the opposition division with the order to maintain the patent on the basis of claims 1 to 7 of auxiliary request 11 as filed during the oral proceedings before the Board and of a description and drawings to be adapted to these claims.
3. The request for reimbursement of the appeal fee is refused.
This decision T0792/12 (pdf) has European Case Law Identifier:  ECLI:EP:BA:2016:T079212.20160914. The file wrapper can be found here. Photo "Yoga Pose shows relaxing spirituality and calm" by Stuart Miles obtained via www.FreeDigitalPhotos.Net (no changes made).


  1. Some representatives are indeed of the opinion that by repeating their arguments, they become more pertinent. This is probably due to self suggestion, which should not be the case of a serious and competent representative.

    When reading Point 1 of the reasons, the proprietor's representative had ample opportunity to defend his case. Being frustrated when realising that he was not convincing does not allow to claim that the board is partial. The representative got what he deserved.

    In any case, the chairman of the Board stopped the representative in a more elegant way than the chairman of the opposition division in
    T 1647/15.

    By the way R 113.3UPC provides that "the presiding judge can decide when the panel is sufficiently informed and thereby limit a party’s oral submissions". It is much more precise than Art 15(1)RPBA.

    1. Indeed!

      We had that decision T 1647/15 on our blog
      last month.

    2. To me, that is more of a human trait. Repeated arguments can be seen in many places.

  2. It seems a little strange that the Minutes themselves don't contain any information on what happened.