Monday, 18 June 2018

R 7/16 - Decision on remittal before discussing substantive issues

The auxiliary police... could they have helped the petitioner?

This case is a petition for review following an appeal against a decision of the opposition division. Briefly speaking, auxiliary request V was held allowable during the opposition proceedings, but was found to contravene Article 100(c), 123(2) EPC during the appeal proceedings.

In its written decision (the decision under review), the BoA found that the decision of the opposition division presented a fundamental deficiency. Despite the fundamental deficiency, the BoA decided not to remit the case to the opposition division, thereby exercising its discretion under Art. 11 RPBA.

The petitioner's argues in the petition that the substance of the issues, to which the fundamental deficiency pertained, was not taken into consideration by the BoA when the remittal was discussed, and that this represented a fundamental violation of Article 113 EPC.

The EBoA notes that a detailed discussion of the substantive issues before a decision on the remittal would have rendered any remittal pointless since the first instance would have been bound by the considerations of the Board of Appeal or could have expected that its decision would be reversed if it was not in line with the considerations of the Board of Appeal. It was therefore only logical to limit the discussion on the requested remittal to procedural aspects. See also points 3.2.5 and 3.2.6.

Reasons for the Decision
1. The petitioner’s objections
1.1 The Enlarged Board in its communication of 7 February 2018 made the following distinction with respect to the Board of Appeal’s failure to remit the case (see above point XIII):
a) the failure to remit the main request, and
b) the failure to remit auxiliary requests
‘VII new’ and ‘VIII new’.
1.2 During oral proceedings before the Enlarged Board, the petitioner pointed out that its understanding had always been that the entire case (encompassing all requests then pending) should be remitted. Reference was made, inter alia, to Article 11 RPBA (which refers to the remittal of ‘a case’ and to the petitioner’s letter of 29 April 2016 (see, e.g., the quote from said letter under point VI above). The Board of Appeal had also made clear that the remittal of the entire case was discussed and decided upon (as indicated on the minutes of the oral proceedings, page 3, third paragraph).
1.3 As a consequence, the petitioner no longer argued that the Board of Appeal did not decide on all relevant requests. The discussion during oral proceedings before the Enlarged Board focused on how the remittal had been discussed in appeal proceedings and how the non-remittal was reasoned in the decision under review, and the petitioner clarified that only insufficient reasoning of the written decision was the basis of its objections.
2. Admissibility of the petition
2.1 The decision under review of 31 May 2016 of Board of Appeal 3.2.06 was notified on 11 July 2016. The petition was filed on 16 September 2016, and the corresponding fee was paid on the same day. The formal requirements of Rule 107(1) and (2) EPC have been complied with, and the petitioner is adversely affected by the decision under review.
2.2 During oral proceedings before the Enlarged Board the petitioner clarified that only insufficient reasoning of the written decision was the basis of its objections (see above point 1.3). Since the petitioner could not be aware of such deficiencies during appeal proceedings, no objection under Rule 106 EPC could be made (R 2/13 of 10 June 2013, Reasons, point 1; R 14/13 of 25 February 2015, Reasons, point 2).
2.3 The petition is therefore in compliance with Rules 106 and 107 EPC and admissible.
3. Allowability of the petition
3.1 Requirements for reasoning a decision
3.1.1 Under Rule 102(g) EPC the decisions of the Boards of Appeal shall contain reasons. Under Rule 111(2) EPC, examining and opposition divisions are obliged to give reasons for their decisions. While the violation of Rule 111(2) EPC may constitute a fundamental deficiency of a first instance decision in the terms of Article 11 RPBA, deficiencies in the reasoning of a decision in appeal are not a ground for a petition under Article 112a(2) EPC and can be the basis for a petition only if they amount to a fundamental violation of the right to be heard in view of Articles 112a(2)(c) and 113 EPC (R 1/15 of 3 June 2016, Reasons, point 3.5).
3.1.2 The right to be heard not only implies that a party is given the opportunity to present its views but also that its arguments are taken into account and considered. The reasoning in a decision should be such that a party can establish that the deciding body actually considered its arguments and can understand why – in case of an adverse decision – its arguments were found not to be convincing. Assessing the completeness of the reasoning would usually be beyond the scope of scrutiny under Article 113(1) EPC. For compliance with the right to be heard, reasons may be incomplete, but as long as they allow drawing the conclusion that the board, in the course of the appeal proceedings, substantively assessed a certain point as being part of the procedure and that it found to be relevant, there will be no violation of Article 113(1) EPC (R 8/15 of 18 July 2016, Reasons, points 2.2.2 and 2.2.3).
3.1.3 A board of appeal is not obliged to consider each and every argument of the parties in detail in its decision (R 2/13 of 10 June 2013, Reasons, point 2.2; R 15/12 of 11 March 2013, Reasons, point 5). On the other hand, the Board of Appeal may not, to the surprise of the parties and ex officio, use reasons in the written decision which have not been presented and discussed during appeal proceedings (R 16/13 of 8 December 2014, Reasons, point 3.3; R 3/13 of 30 January 2014, Reasons, point 2.2). However, a board of appeal is not required to provide the parties in advance with all foreseeable arguments which may appear in the decision (R 1/08 of 15 July 2008, Reasons, point 3.1). In any case, whether a point is allegedly missing in a decision or is presented for the first time in a decision to the surprise of the parties, such argument, reason or evidence needs to be clearly identified by the petitioner in the proceedings under Article 112a EPC.
3.2 First objection: Failure to give reasons on the decision not to remit the case
3.2.1 Under Article 11 RPBA, a Board may decide that a case is exceptionally not remitted to the department of first instance after it has found fundamental deficiencies in the first instance proceedings. Such decision is subject to the discretion of the Board concerned.
3.2.2 In the context of the petitioner’s arguments concerning the remittal it must be noted that the objection against the critical feature under Article 100(c) EPC was not a ‘fresh case’ raised late in the appeal proceedings but an objection that had been made by all opponents from the beginning of the opposition proceedings (see the notices of opposition of opponent 1, section D.1, of opponent 2, section 4.1, and of opponent 3, section D). Even though the opposition division did not give a reasoned decision on the critical feature in view of Article 100(c) EPC, the petitioner was aware of the objection and could and should have considered its counterarguments long before the Board of Appeal issued its communication.
3.2.3 However, the refusal of a remittal cannot per se be a ground for allowing a petition. Only if a party has not been sufficiently heard on the remittal issue, the refusal of a remittal can lead to a ground for a petition under Article 112a(2)(c) and 113 EPC (see R 2/16 of 28 October 2016, Reasons, point 3; R 9/10 of 10 September 2010, Reasons, points 7ss.; R 12/09 of 15 January 2010, Reasons, points 6ss.).
3.2.4 The petitioner confirmed during oral proceedings that the remittal had been discussed extensively (about three hours) during oral proceedings. The decision under review gave detailed reasons for the refusal of the request for remittal (pages 20 to 28). The petitioner did not argue that its arguments concerning the remittal were not considered or that the Board of Appeal presented ex officio reasons or arguments in the written reasons only.
3.2.5 The petitioner’s arguments concerning the reasoning focused on the fact that the substance of the issues under Articles 100(c) / 123(2) EPC was not taken into consideration when the remittal was discussed and that the written decision did not address these substantive issues in the context of the remittal.
3.2.6 The requested remittal should have given the petitioner the opportunity to be heard on the issues under Article 100(c) EPC before two instances (petition, last paragraph of page 7). However, a hearing before two instances implies that the first instance hears before the second instance. A detailed discussion of the substantive issues under Article 100(c) EPC before a decision on the remittal would have rendered any remittal pointless since the first instance would have been bound by the considerations of the Board of Appeal or could have expected that its decision would be reversed if it was not in line with the considerations of the Board of Appeal. It was therefore only logical to limit the discussion on the requested remittal to procedural aspects. As the reasons (pages 20 to 28) of the decision under review show, such procedural aspects were extensively discussed (for example, whether the issues under Articles 100(c) / 123(2) EPC constituted a fresh case or what a remittal or non-remittal would imply for the parties in terms of time or their right to be heard). The petitioner has not argued that specific elements of this discussion were not reflected in the written decision.
3.2.7 The petitioner further argued that in the discussion under Articles 100(c) / 123(2) EPC (after the remittal was refused), arguments were made that could not have been considered during the discussion on the requested remittal. However, the fact that certain arguments on the extension of the originally disclosed subject-matter could not be considered in the context of the remittal is a consequence of the logical order mentioned above (point 3.2.6).
3.2.8 The objection against the reasoning for the decision not to remit the case is therefore not founded and the petition clearly cannot be allowed as far as the first objection is concerned.
3.3 Second objection: Failure to give sufficient reasons for not allowing the main request
3.3.1 The petitioner’s objection that the Board did not give sufficient reasons for not allowing the main request under Article 100(c) EPC was maintained throughout the proceedings before the Enlarged Board. In its communication, the Enlarged Board explained that the substance of the reasons could not be reviewed in the present proceedings. Only if it could be demonstrated that specific arguments of the petitioner which it raised during appeal proceedings were not heard or considered in the appeal proceedings, the Enlarged Board could explore the reasons given in the decision under review (communication of 7 February 2018, point 15, referring to R 16/10 of 20 December 2010, Reasons, point 2.2.5).
3.3.2 During oral proceedings before the Enlarged Board, the petitioner did not specify such arguments which were not heard but referred to a number of deficiencies in the reasons of the decision under review. The petitioner referred to the Board of Appeal’s finding that the critical feature resulted from ‘further reflections’ on the basis of a specific disclosure in the originally filed application (point 6.4.2, see also page 15 of the petition). The Enlarged Board is not persuaded by the petitioner’s argument that such ‘further reflections’ needed to be specified in the decision. It follows from the context that the reference to ‘further reflections’ of the skilled person just implies that the feature in question was not clearly and unambiguously disclosed in the original application. The difference between the feature in the granted claim (the critical feature) and the relevant parts of the original application is dealt with extensively (points 6 to 6.6 of the decision under review) and no argument has been made that specific arguments concerning said difference were not considered.
3.3.3 During oral proceedings before the Enlarged Board, the petitioner further argued that there were discrepancies between the reasons for not allowing the main request under Article 100(c) EPC on the one hand (point 6) and the reasons for not allowing auxiliary request ‘VII new’ under Article 123(3) EPC on the other hand. The investigation of such discrepancies goes beyond the scope of review proceedings if the discrepancies cannot be shown to be related to a fundamental violation of the right to be heard.
3.3.4 For these reasons, the second objection concerning the reasoning for the decision not to allow certain requests under Article 100(c) / 123(2) EPC is not founded and the petition clearly cannot be allowed with respect to the second objection.
Order
For these reasons it is decided that:
The petition for review is rejected as being clearly unallowable.

This decision R 7/16 (pdf) has European Case Law Identifier: ECLI:EP:BA:2018:R000716.20180404. The file wrapper can be found here. Photo "Springfield Township Police Auxiliary" by Raymond Wambsgans obtained via Flickr under CC BY-SA 2.0 license (no changes made).

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