Friday, 2 February 2018

R 8/16 - A plurality of petition grounds

A petition for review with many grounds...

In opposition proceedings, the patent was upheld with amended claims. During appeal by the proprietor and an opponent, the Board revoked the patent for added subject-matter.

The proprietor-appellant filed a petition for review under Article 112a EPC against the decision of the Board. The petition lists various grounds, as enumerated below.

The EBA discusses the admissability and allowability of these grounds, including whether a counter-argument put forward during oral proceedings also represents a formal objection under Rule 106 EPC (admissibility of ground D), whether the right to be heard is violated if an admission of a request is not reasoned (allowability of ground C), whether the BoA is free to determine the order in which the requests are discussed (allowability of ground C), and why it is needed for the petition to already contain the specific arguments w.r.t. a fundamental violation of Article 113 EPC (rather than those being specified in a later response or during oral proceedings) (allowability of ground D)

Catchwords:
1. Only parties adversely affected by a decision may resort to a procedure under Article 112a EPC. The term 'fundamental violation' in Article 112a(2)(c) EPC also must be read in this light. An alleged violation cannot be fundamental, in the sense of 'intolerable', if it does not cause an adverse effect. (Reasons, point 23).

2. The principle of party disposition expressed in Article 113(2) EPC does not extend so as to permit a party to dictate how and in which order a deciding body of the EPO may examine the subject-matter before it. The only obligation on the EPO is not to overlook any still pending request in the final decision. A Board has no particular duty to give reasons why it chose to proceed as it did (Reasons, point 25).

3. A Board has no obligation to peruse the whole file of the first instance proceedings. It is the duty of the parties to raise issues again in the appeal proceedings, to the extent necessary, as stipulated by Articles 12(1) and (2) RPBA: "Appeal proceedings shall be based on [the submissions of the parties filed in the appeal proceedings, which] ... should specify expressly all the facts, arguments and evidence relied on" (Reasons, point 38).

The petition grounds:
XI. Right to be heard violations, Art. 112a(2)(c) and 113 EPC

A. The written decision of the Board contained no reasons why the claims as upheld by the Opposition Division were not allowable, thus not permitting the petitioner to understand why the decision under appeal was reversed.

B. The Board's decision did not explain what happened to the earlier withdrawn requests, but only referred to the petitioner's final requests that it confirmed at the end of the oral proceedings.

C. The decision contained no reasons why the main request was admitted, and why this decision was only made after the decision not to admit the later withdrawn auxiliary requests. This lack of reasons in the decision violated the petitioner's right to be heard, because arguments need not only be heard, but also must be acknowledged in a decision of the EPO.

D. The Board did not consider the main arguments of the petitioner, why the "only two bearing" feature does not add subject-matter. (...). The petitioner also submitted that the arguments not mentioned could well have changed the outcome of the decision.

XII. Fundamental procedural defect, Art. 112a(2)(d) EPC

E. The Board did not decide on a request pursuant to Rule 104(b) EPC, in that the main request was discussed and decided on only after a discussion and decision on the claims as upheld. In this respect, the petitioner raised an objection under Rule 106 EPC.

XIV. Further procedural violations

F. The petitioner was led into the inescapable trap of Article 123(2)/(3) EPC by the Examining Division, i.e. the European Patent Organisation itself provoked the error.

G. The petitioner lost its patent on a 'formalistic issue', against the spirit of Article 4(3) EPC, and after having spent considerable sums.

H. The considerations underlying petition grounds F and G were not taken into account by the Board, when revoking the patent, in full knowledge of pending parallel infringement actions.

Reasons for the Decision
1. The petitioner is adversely affected by the decision under review, and the petition was filed in accordance with the formal requirements pursuant to Article 112a(4) EPC and Rule 107 EPC.

Admissibility of the petition (Rule 106 EPC)

2. The petitioner explicitly stated that petition grounds A to D concern missing reasons in the written decision of the Board. The same is implicitly argued for the petition ground H. The EBA is satisfied that the petitioner could only have realised upon receipt of the written decision that its arguments were ignored by the Board, or that the decision did not deal at all with important issues. The EBA is satisfied that the petition is not clearly inadmissible in respect of these grounds. (Rules 106 and 109(2)(a) EPC).

3. Given that there is at least one admissible petition ground, the petition is admissible.

Petition ground E - Fundamental procedural defects (Article 112a(2)(d) EPC): Decision on an auxiliary request before the main request, no decision on a request

4. It is apparent from the nature of the objection and it is consistent with the minutes that the petitioner was aware of the alleged procedural defect and it would have been possible to raise an objection under Rule 106 EPC in the oral proceedings.

5. The EBA pointed out in its communication (see point XIV above) that contrary to the statement of the petitioner (page 4, end of 2nd paragraph of the petition), there is no evidence in the file that such an objection was raised by the petitioner in the appeal proceedings. The EBA also pointed out that a correction of the minutes was apparently not requested, nor did the petitioner call the correctness of the minutes into question in the petition itself.

6. The petitioner submitted in its response to the communication (point XV above) and also in the oral proceedings before the EBA that a proper objection was made, as testified by its representative (point XVI above), and that he saw no need to raise the question of the correctness of the minutes, either separately or later in the petition. In this respect the petitioner argued that unlike the decision, the minutes have no legal force, and requesting their correction is merely a possibility, but it is not obligatory.

7. The EBA considers that under the circumstances as presented by the petitioner, he would have been expected to object immediately to an omission from the minutes of his objection, already in view of Rule 124(1) EPC. There can be no doubt that a formal objection under Rule 106 EPC, entailing serious legal consequences, is a 'relevant statement' of a party for the purposes of Rule 124(1) EPC. For all parties, and also for the EBA the minutes of the oral proceedings serve as the authentic record of such relevant statements. In this regard, reference is made to the Case Law of the Boards of Appeal (CLBA) 8th Edition, 2016: Chapter IV.F.3.5.4., and the decisions cited therein, see in particular R 0006/14 of 28 May 2015, Point 7 of the Reasons. While it is true that there is no strict formal obligation on parties to request a correction, not doing so will leave them with the burden of proof against the minutes in case of dispute. The EBA notes that even the Guidelines explicitly foresee that an affected party requests a correction of the minutes, see Guidelines, Part E, Chapter II.10.4, from the version June 2012 onwards, and essentially unchanged since. The EBA is well aware that the Guidelines are only binding for the proceedings of the first instance, nevertheless it illustrates that diligent parties can be expected to take certain steps even in the absence of specific provisions in the Convention itself.

8. The EBA finds it plausible and as such not improbable that the petitioner argued in the oral proceedings before the Board that the order of discussion of the requests should be different. The minutes are silent in this regard. However, a mere argument against the proposed procedure of the Board cannot be considered as a formal objection under Rule 106 EPC. Rather, such an objection must be made in a form so that it is immediately and doubtlessly evident that the objection is a formal one under Rule 106 EPC. Reference is made to the CLBA 8th Edition, 2016: Chapter IV. F.3.5.2.

9. In fact, the petitioner conceded at the oral proceedings before the EBA that an explicit and unmistakeable reference to Rule 106 EPC or to a violation of the right to be heard were possibly not made in the context of the discussion on the order of the requests. In this respect the petitioner contends that this was not necessary, as the Board had an inherent obligation to correctly interpret the petitioner's submissions. The EBA rejects this argument. Contrary to the opinion of the petitioner, the Board had no obligation to interpret a simple counter-argument made in the course of the discussion as a formal objection under Rule 106 EPC.

10. The petitioner also submitted that an objection under Rule 106 EPC was not possible in the sense of this rule, as the expected objection could not have been raised in the appeal proceedings after the decision by the Board to discuss the main request only after the auxiliary requests, because the objection would have become obsolete. The EPA rejects this argument. Firstly, this submission plainly contradicts the statement in the petition, namely that an objection was actually made. Secondly, such an objection under Rule 106 EPC can and should be made as long as the cause of the objection can be remedied by the Board. This was the case here. It is clear that the oral proceedings were not over even after the discussions on the main request, and the Board had the power to re-open the debate on either the main or the auxiliary requests.

11. The petitioner submitted that the petition ground E can also be subsumed under Article 112a(2)(c) EPC, and as such did not require an objection under Rule 106 EPC in order to be admissible. This is incorrect as Rule 106 EPC explicitly refers to all the petition grounds under Article 112a(2)(a) to (d) EPC (emphasis by the EBA), i.e. also including the petition ground under Article 112a(2)(c) EPC.

12. In summary, the EBA holds that under the circumstances of this case an objection under Rule 106 EPC could and should have been filed, but was not. Therefore, the petition ground E is inadmissible pursuant to Rule 106 EPC, and as such clearly inadmissible for the purposes of Rule 109(2)(a) EPC.

Further procedural violations

Petition grounds F and G - Error by the European Patent Organisation/ Loss of patent on a 'formalistic issue'

13. The EBA understands the objections F and G as petition grounds on their own, and not merely additional arguments in support of the other and separate petition grounds. However, this does not change the fact that they cannot be subsumed under any of the provisions of Article 112a(2) EPC, as pointed out by the EBA in its communication.

14. The petitioner argued that the petition grounds F and G are to be subsumed under Articles 112a(2)(c) and 113 EPC, the latter being expressions of the requirement for a fair procedure in general. The principle of a fair procedure is also recognised in the Contracting States and as such is a principle which must be taken into account by the EPO pursuant to Article 125 EPC. Furthermore, the present case was special, so that there was room to treat the petition grounds F and G under Article 112a(2)(c) EPC.

15. Article 113 EPC is restricted to two specific aspects of the procedure before the EPO, and in this manner, Article 112a(2)(c) EPC is similarly restricted to the violation of these two specific aspects, see also below at point 18. The EBA concurs with the petitioner that Article 113(1) EPC in particular concerns an aspect of a fair procedure. However, it is not possible to draw the inverse conclusion, namely that any unfairness in the procedure, whether real or merely perceived, will immediately and automatically mean a violation of Article 113 EPC. In this manner, it is not apparent to the EBA why the petition grounds F and G would fall under Article 112a(2)(c) EPC. It is settled case law of the Enlarged Board of Appeal that Article 112a EPC contains an exhaustive list of petition grounds, see CLBA 8th Edition, 2016: Chapter IV.F.3.3.2. Article 125 EPC expressly states that it is only applicable in the absence of procedural provisions in the Convention. This is not the case here, and already for this reason Article 125 EPC cannot be the basis for extending the scope of Article 112a EPC. These considerations hold also for 'special' cases, apart from the fact that it is not apparent to the EBA what would make the present case special.

16. As stated in the communication of the EBA, it is manifest that none of the provisions of Articles 112a(2)(a),(b) or (e) EPC are applicable, while Article 112a(2)(d) EPC is not applicable absent a corresponding provision in the Implementing Regulations. The petitioner did not question these findings of the EBA.

17. Thus the Enlarged Board holds that the petition grounds F and G do not fall under any of the provisions of Article 112a(2)(a) to (e) EPC, and as such are not admissible.

Allowability of the petition

Petition grounds A to C

18. The Enlarged Board notes that Article 112a(2)(c) EPC is specifically limited to a fundamental violation of Article 113 EPC. This article is directed to two distinct issues: the right of a party to comment on decision grounds (Article 113(1) EPC), and the right of the proprietor to determine the text of the patent and the obligation of the EPO to base its decision only on a text which is approved by the proprietor (Article 113(2) EPC). All three grounds A to C appear to invoke the first issue, and only a part-aspect of C relates to the second issue.

Petition grounds A and B - missing reasons on claims as upheld by the Opposition Division

19. The Enlarged Board agrees with the petitioner that it is a corollary of the right to be heard in the sense of Article 113(1) EPC that under certain circumstances the absence of reasons in a decision may constitute a violation of this right.

20. The petition grounds A and B are related to the claims as upheld by the Opposition Division. These claims were pending at the beginning of the oral proceedings, as the Second Auxiliary Request, but were later withdrawn (together with other auxiliary requests), by way of replacing them with a set of auxiliary requests filed at the oral proceedings before the Board.

21. It may be true that the written decision of the Board did not permit either the petitioner or any other party to understand why the decision of the Opposition Division was overturned. However, it was the free decision of the petitioner to replace the pending auxiliary requests with new ones before the final decision of the Board. In this manner the Board no longer had the competence to formally decide on them in the final decision because they were no longer in the proceedings. This follows from the principle of party disposition, according to which it is in the hands of a party to determine the subject-matter on which the EPO should decide. This principle is expressed in Article 113(2) EPC, see e.g. the commentary Singer-Stauder: Europäisches Patentübereinkommen, 7th Edition 2016, page 1074, Randnr. 7 to Article 113 and generally the chapter on Article 113(2) EPC. Thus no fundamental violation of Article 113(1) EPC exists as regards this issue. On the contrary, giving reasons on withdrawn requests might well have given rise to an objection under Article 113(2) EPC.

Petition ground B - missing explanation of the fate of earlier requests

22. There was no need to include in the decision more details of the proceedings than absolutely necessary for understanding the substantive findings of the Board on the requests that were actually in the proceedings when the Chairman announced the decision. Otherwise the course of events was recorded in the minutes, so for any objective observer it is quite clear from the publicly accessible documents in the file why the claims as upheld were no longer mentioned in the decision.

Petition ground C - lack of reasoning on the admission of the main request and the order of treatment of requests

Lack of reasoning on the admission

23. The EBA considers that this ground falls under Article 113(1) EPC, and notes that this provision seemingly does not distinguish between decisions of the EPO which are for or against a party, but rather seems to dictate that a party must be heard in any case. The absence of the reasons is used to imply that the petitioner was not heard on the issue of the admission (even if the minutes do not support this contention). However, only parties adversely affected by a decision may file a petition. The term 'fundamental violation' in Article 112a(2)(c) EPC must also be read in this light. An alleged violation cannot be fundamental, in the sense of 'intolerable' (see CLBA 8th edition, 2016: Chapter IV.F.3.1, 2nd paragraph), if it does not cause an adverse effect. The petitioner did not explain and the EBA itself cannot see what adverse effect might have been caused by not hearing the petitioner on this issue, given that the admission of the petitioner's main request was clearly a positive result for the petitioner.

24. Thus the omission of the reasons for the admission of the main request may not be a practice which is expressly endorsed by the Enlarged Board, it is not seen as a fundamental violation of Article 113(1) EPC under the circumstances of the present case.

Order of treatment of requests

25. As a matter of principle, the Board was free to examine the (pending) claim requests in any order, and therefore it was also free to conduct the discussion on them in any order, without having to give reasons. The principle of party disposition expressed in Article 113(2) EPC does not extend so as to permit a party to dictate how and in which order a deciding body of the EPO may examine the subject-matter before it. In written proceedings this would be impossible for a party to control anyway. The only obligation on the EPO is not to overlook any still pending request before a final decision is taken. The order of examination or discussion is a question of procedural economy, for which mainly the deciding body is responsible. As long as a discussion on the substantive issues of the still pending requests is possible, even if only by reference to discussions on other requests (see R 0006/11 of 4 November 2011, Reasons, point 5.2), such a procedure is unobjectionable and the Board has no particular duty to give reasons why it chose to proceed as it did. Thus the petition ground C is clearly unallowable.

Petition ground D - violation of the right to be heard

26. Concerning the objection D, the Enlarged Board is also unable to see a violation of Article 113(1) EPC. The substantive outcome of the contested decision of the Board, i.e. the revocation of the patent was based on two distinct issues (apart from the admission of the main request, which was not adverse to the petitioner). The first issue was the non-compliance of the main request (claims as granted) with Article 123(2) EPC. The second issue, the non-admission of the newly filed auxiliary requests, was not criticised in the petition.

27. Concerning this latter issue, after receipt of the communication of the EBA the petitioner submitted that the petition also extended to the non-admission of the requests filed during the oral proceedings, but was unable to provide any identifiable basis for it in the petition itself. The EBA therefore disregards this issue, and deals only with the first one, the treatment by the Board of the Article 123(2) EPC objection.

28. The alleged non-compliance with Article 123(2) EPC could not have surprised the petitioner. The objection was already raised in the opposition proceedings. The Opposition Division referred to it in its preliminary opinion dated 21 November 2013 (point 6 on page 5). The decision of the Opposition Division does not discuss the patent as granted, because it was not maintained as a request by the proprietor, Nevertheless, Article 123(2) EPC issues were discussed in the decision in great detail. On appeal before the Board, appellant-opponent 2 raised Article 123(2) EPC objections against the main request in its reply (besides arguing the general inadmissibility of the proprietor-appellant's main request). The communication of the Board referred to these issues and also identified the objected to feature, the "only two bearings". The response to the Board's communication by the respondent opponent 1 takes it up again. The decision of the Board discusses the issue of added subject-matter on several pages (points 2.1-2.4). Thus on the basis of the file, the objection under Article 123(2) EPC and specifically against the "only two bearings" feature was an issue throughout the proceedings.

29. It is not apparent that the petitioner wanted to, or indeed did provide some other and crucial arguments on the question of added subject-matter in the written phase of the proceedings. In all three of its written submissions in the appeal proceedings the petitioner merely referred to the earlier discussions on this issue, apart from arguing generally on the interpretation of the claim features, such as the axial or radial type of the bearing.

30. The Board's decision contains arguments, mostly references to the description, which are stated to come from the proprietor-appellant. It must be presumed that these arguments were first presented in the oral proceedings, and the Board obviously took them into account.

31. The petitioner submitted in its response to the communication of the EBA and further in the oral proceedings before the EBA that it had raised several specific arguments on the issue of added subject-matter, which were not reflected anywhere in the decision. These were the following: (a) conclusions which could be derived from the axial and radial arrangement of the bearings, as explained by the petitioner's representative in the oral proceedings, (b) the wording of dependent claim 6: "the two bearings", with special emphasis on the wording "the", and finally (c) legal arguments generally on the question of original disclosure. The petitioner further stated that the issue of added subject-matter was extensively discussed before the Opposition Division, and the Board had a duty to study the whole file, hence also the earlier submissions of the petitioner.

32. In light of the file and the additional submissions of the petitioner, it is apparent that the petitioner was fully aware of the Board's and the opponents' objections under 123(2) EPC. The petitioner was given a full opportunity to present its case, also including its own arguments mentioned above. Thus there cannot be any violation of Article 113(1) EPC in this regard.

33. The question remains if the Board violated this article by not addressing in detail the specific arguments of the petitioner as set out in point 31 above.

34. These specific arguments are nowhere mentioned in the petition itself. The part of the petition that can be understood to relate to the allegedly overlooked argument(s) of ground D does not go beyond the generally worded argument which is cited in point XI, paragraph (D).

35. This general argument was clearly considered by the Board, in that the Board carefully analysed the 'overall change in the content', namely the "only two bearings" which is not found in the application as filed. Further the Board also examined what the skilled person would understand from the application (e.g. in point 2.3 of the Reasons), and it is also clear from the overall wording of the reasons in the contested decision that the Board was looking for an implicit teaching. It is possible that the petitioner formulated its arguments in different terms than the Board, but it is not required that a Board uses the very same words as a party (R 0013/12 of 14 November 2012, Reasons, point 2.2). Thus the decision of the Board is sufficiently reasoned and there is no violation of Article 113(1) EPC.

36. To the extent that the specific arguments advanced by the petitioner in the oral proceedings merely served to argue its general case, i.e. that the "only two bearings" feature was allowable under Article 123(2) EPC, the Enlarged Board points to the settled case law, according to which it is not necessary to consider each and every argument of the parties in detail (see CLBA 8th edition, 2016: Chapter IV.F.3.13.10,). Thus not addressing these arguments individually in the decision is not necessarily a fundamental violation of the petitioner's right to be heard. Apart from that, the question of the axial and radial bearings is analysed in detail in the decision.

37. If the petitioner's case of a fundamental violation of Article 113 EPC rested on the overlooking of any of these specific arguments, it would have been necessary to explicitly identify the overlooked specific argument or arguments already in the petition. The EBA notes that Rule 109(3) EPC requires that the EBA decides 'on the basis of the petition', i.e. the central arguments of the petitioner must be apparent from the petition. This is also demonstrated by the wording of Article 12(1) RPEBA, which explicitly refers to Rule 109(3) EPC, and permits the Enlarged Board to consider new submissions 'if this is justified for special reasons', i.e. only exceptionally. No such special reason has been advanced and the EBA cannot identify any.

38. The EBA also rejects the argument that the Board should have known and therefore should have considered the petitioner's arguments from the file, as presented before the Opposition Division. The Board had no obligation to peruse the whole file of the first instance proceedings. It is the duty of the parties to raise issues again in the appeal proceedings, to the extent necessary, as stipulated by Articles 12(1) and (2) RPBA: "Appeal proceedings shall be based on [the submissions of the parties filed in the appeal proceedings, which] ... should specify expressly all the facts, arguments and evidence relied on".

39. The EBA finds that petition ground D is clearly unallowable in the sense of Rule 109(2)(a) EPC.

Petition ground H lacking reasons with respect to petition grounds F and G

40. The EBA notes that the arguments forming the petition grounds F and G do not appear anywhere in the written submissions of the appeal proceedings. Neither in the petition, nor in its response to the communication of the EBA did the petitioner state that these arguments belonged to its core arguments on the decisive issue of the "only two bearings". In fact, the petition did not state at all that the petition grounds F and G were actively argued before the Board, but merely implied that these arguments ought to have been taken into account by the Board of its own motion.

41. Although this issue was raised by the EBA in its communication, the petitioner, apart from acknowledging its admissibility under Rule 106 EPC, has said nothing on ground H. In the oral proceedings before the EBA the petitioner merely submitted that the grounds F and G were obviously known to the Board and ought to have been considered under the aspect of general fairness by virtue of Article 125 EPC.

42. On the basis of these submissions the EBA finds that at no time during the appeal proceedings were the petition grounds F and G presented as a specific argument, as regards the allowability of the amendment resulting in the "only two bearings" feature.

43. Even when assuming, for the benefit of the petitioner, that the arguments were explicitly made in the course of the discussion on the "only two bearings" amendment, (presumably in the oral proceedings before the Board), the EBA fails to see how these arguments could have been expected to influence the decision on the issue of the amendment, a purely technical issue which needs to be decided from the point of view of the skilled person and on the basis of the application as filed, and nothing else. It is not apparent that the course of the examination or the existence of an infringement action should have played any role for the Board in deciding the issue under Article 123(2) EPC, contrary to the opinion of the petitioner. To that extent the Board could not have been reasonably expected to address these arguments in any detail. The Board may disregard irrelevant arguments, see e.g. R 0013/12 supra, Reasons, point 2.2.

44. Against this background, and in view of the reasons given above at point 36 in connection with the petition ground D, the EBA finds that the Board did not have to address the arguments underlying the petition grounds F and G. Thus the Board's omission of these arguments in the written decision is not a violation of Article 113(1) EPC. The petition ground H is clearly unallowable.

45. In summary, objections A to D and H are clearly unallowable, and objections E to G are clearly inadmissible, so that the petition as a whole must be rejected under Rule 109(2)(a) EPC.

Order

For these reasons it is decided that:

The petition for review is rejected as partly clearly inadmissible and as partly clearly unallowable.

This decision R 0008/16 (pdf) has European Case Law Identifier: ECLI:EP:BA:2017:R000816.20170710. The file wrapper can be found here. Photo from Pixabay under CC0 license.

7 comments :

  1. Surprised and puzzled4 February 2018 at 21:53

    I always thought that the order in which the auxiliary requests are filed is binding for the body of the EPO dealing with this requests.
    In the Guidelines
    - for examination; H-III, 3.3.1, the requests “must be filed in a clear order”;
    - for opposition, H-III, 3.4.1 and 3.4.2 “main or higher-ranking auxiliary requests” are mentioned.

    According to R 8/16, see point 25, "The principle of party disposition expressed in Article 113(2) EPC does not extend so as to permit a party to dictate how and in which order a deciding body of the EPO may examine the subject-matter before it".

    This is somehow bothering, as it means that the EPO can disregard the order in which the requests can be dealt with. It is clear that all the requests have to be considered in order not to contravene Art 113(2), but I am of the opinion that the order of the requests is something which cannot be ignored by the deciding body, be it an examining or or an opposition division, or even a board of appeal.

    In absolute this could mean that a body of the EPO, i.e. also an examining and opposition division, and certainly a board of appeal can for instance choose to look at the lower ranking request first, and then conclude that the higher ranking requests are not allowable, for instance as they are broader than the lower ranking request. Is this position really correct?

    If this way of dealing with auxiliary requests should become the rule, then applicants/proprietors will be reluctant to file auxiliary requests in advance, and will end in a trap as late filed requests can be considered as not-admissible. In other words, it is called a catch 22 situation.

    T 1672/13, is also worrying in this context. The change of order of the auxiliary requests led to the then resulting requests as not being allowable under Art 13(1) RPBA, as some requests were then consideed as non-convergent. If the deciding body of the EPO may examine the subject-matter in any order which it considers fit, then it should not come to such a non-admissibility after a change of order of requests. One or the other, but not both ways.

    Procedural economy should not be achieved at the cost of any party.

    It looks to me that the when dealing with petitions for review, the EBA tries to bring every good reasons to quash any attempt to reopen the appeal procedure. Formalism is pushed to a very large extent.

    I would however agree that, as stated in the present decision, that a Board has no duty to look in the file and consult what has happened before the opposition division. An appeal is not the continuation of the first instance proceedings and any reference to it can be ignored.

    ReplyDelete
  2. Hi, I think you are overinterpreting this a bit. The EBOA merely states that the board may start thinking about requests in any order it deems fit. They do not say that it is allowed to decide the requests in arbitrary order and allow e.g. auxiliary request 4 before even thinking about the main request. Think about a situation where there are 10 converging requests, i.e. every request has more features that the previous. If they now find that even the last request with the most features is not inventive, it follows that all the other requests with fewer features are also not inventive. In my opinion, such a reasoning is perfectly ok if the decision then starts by rejecting the main request and goes then to the auxiliary requests.

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  3. I agree with the view of Anonymous. In fact, I think the most important sentence of said decision is the 2nd sentence in the 2nd catchword:

    "The only obligation on the EPO is not to overlook any still pending request in the final decision."

    Assuming the situation described by "Anonymous" above, i.e. there are 10 converging requests pending.

    The 1st sentence of the 2nd catchword of R 8/16 stipulates that it is permissible for the EPO to examine the 10th request first and if not found patentable, conclude that all previous requests share this fate. This is procedurally economical and sounds reasonable to me.

    However, the 2nd sentence of the 2nd catchword of R 8/16 stipulates in my view that if the 10th request is found allowable, the EPO has to examine all other higher ranking requests for allowability because it may not overlook other pending requests.

    Additionally, it must reasonably be assumed that the applicant/proprietor prefers to have larger scope of protection, i.e. prefers to have a higher ranking request granted/maintained. In think this view also follows from A. 113(2) EPC which - in my view - prohibits that the applicant/proprietor obtains or keeps a patent in a form (text) which he does not want.

    It follows that if the Examining Division/Opposition Division have the impression that the 1st request is patentable, it is improbable that they will start thorough examination from 10th to 1st request. Evidently, this kind of procedure would be detrimental to procedural ecomomy.

    Still, I cannot see a material disadvantage for the applicant/proprietor: After the vast examination of all 10 requests and the conclusion that they are all allowable, the applicant/proprietor may choose which of the 10 patentable requests he wants (A. 113(2) EPC). Could be worse...

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  4. Surprised and puzzled5 February 2018 at 19:26

    To both anonymous: are you always only representing opponents?

    In § 25 it is stated directly and unambiguously that a party cannot "dictate how and in which order a deciding body of the EPO may examine the subject-matter before it". Distinguishing examination from decision is a nice play on words. The conclusion of the examination, i.e. the decision following examination, will be in the order decided by the EPO, thus ignoring the order given by the party. Otherwise the sentence is meaningless.

    In T 1439/05, it was held that the deciding body is bound by the order of the requests, and should the situation with respect of the requests become confuse, there is a duty to clarify the situation.

    In T 148/06, it was held that the filing of a series of requests without giving any order or ranking leads to the series of requests as being not admissible.

    Are these decisions obsolete? I doubt it.

    The sweeping statement by which the EBA has dismissed the corresponding ground is based on an rather surprising interpretation of Art 113(2). I would claim on the contrary, that Art 113(2) includes not only the requests, but the order in which those are filed.

    ReplyDelete
  5. @Surprised and puzzled

    Your surprise and puzzlement will be reduced if you accept that distinguishing between examination and decision is not a play of words.

    Did the board decide on a request without deciding on a higher ranking request? No.

    ReplyDelete
  6. Yes, they also write that in written proceedings, no one can know in which order requests were examined anyway. That strongly implies that they DO NOT mean the relevant body may arbitrarily pick a request and grant it, it only means you can not give them a specific order how they shall mentally tackle a case. The objection is a bit similar to "why did the examining division not talk about D1 before making a novelty attack based on D2?".

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  7. Surprised and puzzled6 February 2018 at 10:00

    @ dear anonymous'

    The real question is whether Art 113(2) limits the principle of party disposition to the content of the requests and not to the order in which they are presented. I consider that both, order and content, fall under Art 113(2). In this respect I disagree with the EBA, and especially with the rapporteur.

    Let's agree that we disagree and stop the discussion there. I cannot convince you, and you cannot convince me, any further discussion is thus moot.

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