Tuesday, 5 May 2015

T 2541/11 - "Right to be heard not absolute, but must be balanced"

The appellant-opponent lodged an appeal against the interlocutory decision of the opposition division  on the amended form in which European patent no. 1394387 could be maintained. The appellant-proprietor also lodged an appeal against the above interlocutory decision. The appellant-opponent filed a new document, E12, with their grounds of appeal. The Board did not admit this new document.

Background / Summary of Facts and Submissions
I. The appellant-opponent lodged an appeal, received 12 December 2011, against the interlocutory decision of the opposition division posted on 13 October 2011 on the amended form in which European patent no. 1394387 could be maintained and paid the appeal fee simultaneously. The statement setting out the grounds of appeal was filed on 23 February 2012.
The appellant-proprietor also lodged an appeal, received 14 December 2011 against the above interlocutory decision and paid the appeal fee simultaneously. The statement setting out the grounds of appeal was filed on 20 February 2012.
II. The opposition was filed against the patent as a whole and based inter alia on Article 100(a) together with Articles 52(1) and 54(3) EPC for lack of novelty and Article 56 EPC for lack of inventive step.
The division held, inter alia, that the grounds for opposition (novelty and inventive step) mentioned in Article 100(a) EPC did not prejudice maintenance of the patent as amended according to an auxiliary request, having regard to the following documents, amongst others: E1, E4, E6, E9.
III. The appellant-opponent filed the following document with their grounds of appeal: E12.
IV. Oral proceedings before the Board were duly held on 17 December 2014. During the oral proceedings, the appellant-opponent filed an objection under Rule 106 EPC in writing. It reads as follows:
Objection acc. to Rule 106 EPC; in the name of the opponent.
The decision to not admit reference E12 into the proceedings constitutes a violation against the right to be heard for the following reasons:

It is an aspect of the right to be heard that all parties are allowed to properly respond to the other parties' submissions and amendments. In the present case, the patentee filed amended claims after the opposition period. With the response to the opponent's appeal, he filed further amendments. All amendments concern features not taken from the dependent claims but rather from the specification, if at all, or the figures.
It is part of the opponent's right to be heard to fully react thereto by filing and relying additional prior art which, according to the opponents understanding, show essential features of the subject-matter of the amended claims. Not admitting this prior art for a full discussion rather than for a prima-facie discussion constitutes an unfair proceeding and thus the violation of Article 113 EPC.
If the decision is to not admit E12 into the proceedings, we request to be informed what date would have been the right deadline for filing it and having it admitted into the proceedings and what the respective regulation in the EPC or are the RPBA would be. Evidently, it cannot be the opposition deadline as the amendments undertaken by the patentee were not yet known to the opponent.
V. The appellant-proprietor requests that the decision under appeal be set aside and that the patent be maintained in amended form according to the claims of a main request [...].
The appellant-opponent requests that the decision under appeal be set aside and that the patent be revoked.
VI. Claim 1 of the main request reads as follows: "A turbocharger [...]"
VII. The appellant-opponent mainly argued as follows:
Admittance of E12
E12 is filed in response to developments in the proceedings. Figure 6 discloses all features of claim 1 including an impeller insert. Therefore E12 is novelty destroying for claim 1. Figure 4 of E12 is a better starting point for assessing inventive step than E9 since, as well as disclosing an impeller with a blind hole, it also discloses a retaining ring. Therefore E12 should be admitted.
Right to be heard
The party's right to be heard was not respected since the Board only assessed prima facie relevance of E12 and did not allow complete novelty and inventive step arguments to be presented based on E12.
VIII. The appellant-proprietor mainly argued as follows:
Admittance of E12
E12 is not prima facie relevant so should not be admitted into the proceedings. In figure 6 the hatched area between blind hole wall and the threaded part of the shaft is too narrow to depict an insert, so the feature is not disclosed. Figure 4 is not a good starting point to assess inventive step since it has no insert, therefore the problem of walking as discussed in the patent cannot occur.
Reasons for the Decision
1. The appeals are admissible.
2. Background
The patent concerns turbochargers and their impellers, specification paragraph [0001]. Impellers are typically made of aluminium alloys and provided with a steel insert for threading to the shaft, the joint between the insert and the impeller being achieved with an interference fit, paragraphs [0002] and [0004]. In use the joint is subjected to cyclic centrifugal and thermal stresses. This results in the insert "walking" along the impeller, specification paragraph [0005]. The invention aims to prevent this, paragraph [0006].
3. Admittance of E12
3.1 Document E12, the admission of which is contested, was filed with the grounds of appeal and thus outside the opposition period. It is therefore late filed and subject to the discretion afforded by Article 114(2) EPC. This fact is not changed by filing new evidence with a statement of grounds of appeal that meets the requirements of Article 12(2) RPBA. Such evidence remains late filed and thus subject to the discretion of Article 114(2) as may be inferred from Article 12(4) RPBA. In exercising their discretion the Boards consider, among other factors, relevance and whether or not late filing is justified by developments in the procedure, see Case Law of the Boards of Appeal, 7th edition, 2013 (CLBA) IV.C.1.4.5 b) and the decisions cited therein.
3.2 Firstly, no justification was originally provided for E12 which was cited in the grounds of appeal as one among other citations against claim 1 as granted and as held allowable by the opposition division (now both abandoned). It was first cited, again as one amongst other citations, against the set of claims of what is now the main request more than two years after its submission but again with no justification for this late submission. Only in the oral proceedings before the Board, over three years after the interlocutory decision and two and a half years after this set of claims was submitted, was it argued that the filing of E12 should be seen as a response to the decision's reading of the term "socket" in claim 1 as blind hole and the corresponding amendment made in claim 1 of the main request. This argument also fails to convince as two other documents, E1 and E9, already on file and on which the appellant-opponent also bases his case, show the contested feature of a blind hole in an impeller with an insert. For these reasons these late submission can carry but little weight for the Board in exercising its discretion.
3.3 Nor is the special significance of this document such that it outweighs the lack of justification for its late filing. In particular its significance over and above what is already on file is not immediately apparent to the Board. E1 and E9, already on file, both show inserts in blind holes (see below) nor is this contested. In E12 however it is not unequivocally clear to the Board from cursory inspection of the parts cited that it discloses an insert, which is a central feature of the claimed invention. Figure 6 might show part of annular spacer ring 94 (see column 7) inserting into the bore hole between the bore wall and the threads of the shaft. However, the otherwise detailed figure 6 shows the spacing to be so slender as to raise serious doubts as to whether it was indeed intended as a practicable feature, or is merely a drawing artefact. Column 7, lines 25 to 26, cited by the appellant-opponent furthermore has the spacer ring interference fitted onto the sleeve, and not inside it or the bore as required by claim 1.
As the feature of an insert is critical to novelty and inventive step and it is debatable whether that feature is indeed present in E12 that document whereas it is indisputably present in E1 and E9 together with the feature of a blind hole, it is unlikely to change the outcome of the proceedings.
3.4 For the above reasons the Board at the oral proceedings exercised its discretion in accordance with Article 114(2) EPC not to admit E12 into the procedure.
4. Objection under Rule 106
4.1 In reaction to the Board's announcement not to admit document E12 into the appeal proceedings, the appellant-opponent submitted that non-admission of E12 without a full discussion as to its relevance violated their right to be heard (Article 113(1) EPC) as that right entitled them to a full reaction to the late filed amendments.
4.2 The appellant-opponent does not contest that the E12 was filed outside the opposition period, or that the issue of its admissibility was raised (cf. the annex to the summons, point 2) and discussed by the parties (see minutes). In that he demands under Article 113(1) a "full reaction ... by filing and relying on additional prior art "and a "full discussion" thereof, he rather appears to question whether admissibility of evidence filed in response to unforeseeable amendments should be discussed at all. Thus, a right to present all arguments as if the document had been admitted, instead of arguments as to why it should be admitted, amounts to a de facto admittance of the document, implying, contrary to Article 114(2) EPC, that the Board had no discretion to disregard a late filed document. Indeed, the appellant-opponent's argument in this respect appears to pit the right to be heard under Article 113(1) EPC against the discretionary power of Article 114(2) EPC.
4.3 In adversarial proceedings the right to be heard is closely related to the principle of equality of arms which means that a party should be able to present its case without being unfairly disadvantaged vis-a-vis the other party, see e.g. Singer-Stauder: Europäisches Patentübereinkommen, 6**(th) edition 2013, p 934, 44. Any right to respond arises from this principle. However, in the Board's view that right is not absolute but must be balanced inter alia by the same need for procedural economy and due diligence that underpins Article 114(2) EPC and in a similar manner as this requirement sets limits on the power of ex officio examination of Article 114(1) EPC, which are particularly strict for opposition appeal proceedings before the EPO due to their nature and purpose as judicial review proceedings, cf. G9/91 (OJ EPO 1993, 408), reasons 18. Thus, in this case also, where new evidence is said to be presented in response to unforeseen amendments, Article 114(2) EPC will afford the Board discretionary power in disregarding such evidence. In the Board's view discretion is exercised in a fair and proper manner in accordance with established jurisprudence (CLBA, I.C.1.4.5 b) cited above) by weighing factors such as justification and significance. These factors were duly considered and the parties given an opportunity to comment thereon as noted above.
4.4 For these reasons the Board at the oral proceedings held: "The Rule 106 EPC objection is dismissed as the Board sees no violation of the right to be heard in the non-admission of E12. As indicated, the document is late filed and its admission is at the discretion of the Board, i.e. it sees no absolute right of a party to have late filed evidence considered fully. This is not changed even if the evidence is filed in response to unforeseeable developments in the procedure. The question of timing and time limits is moot."
5.-7. [...]
8. Amendments made to the description only serve to align it with the claims as amended in the main request. No objections have been raised under Article 123(2) EPC or are apparent to the Board. It concludes that taking into consideration the amendments made in appeal to the patent according to the main request, the patent and the invention to which it relates meet the requirements of the EPC. Pursuant to Article 101(3)(a) EPC it therefore decides to maintain the patent as amended according to the main request.
For these reasons it is decided that:
1. The decision under appeal is set aside.
2. The case is remitted to the department of first instance with the order to maintain the patent as amended in the following version:
Claims: 1-8 of the main request, filed as auxiliary request 3 with letter of 9 July 2012 and renumbered with letter of 15 December 2014
Description: page 2 as filed with letter of 9 July 2012, pages 3,4 as in the specification,
Figures: as in the specification.

This decision has European Case Law Identifier: ECLI:EP:BA:2014:T254111.20141217. The whole decision can be found here (pdf). The file wrapper can be found here. Photo"Balance of Trade". by Jed Sullivan obtained via Flickr under CC BY 2.0 license (no changes made).

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