Tuesday, 31 March 2020

T 482/16 - Last-minute additional searches during the oral proceedings to make up for the poor search carried out earlier

In the present case, the applicant was confronted with two new documents, D2 and D3, introduced by the Examining Division during the oral proceedings for the first time. The applicant's request for postponement of the oral proceedings in view of this introduction of D2 and D3 was denied. Upon filing amendments trying to take the disclosure of D2 and D3 into account, the applicant was confronted with two further new documents, D4 and D5, also introduced by the Examining Division during the oral proceedings. No time was given to the appellant to consider these new documents. Rather, the appellant's request for postponement was rejected and the application refused. The applicant appealed the refusal. In the appeal, the Board concluded that: "[Therefore,] the appellant was confronted with new objections based on new evidence during the oral proceedings. Although it is possible for an examining division to introduce new evidence even at a late stage of proceedings, in the present case the course of the examination proceedings suggests that the examining division tried to make up for the poor search carried out when the application was filed by performing last-minute additional searches, in an attempt to find documents more relevant than D1 for the claimed subject-matter", as the Board noted that "According to the impugned decision, these new documents had been found by carrying out an additional search on the day of the oral proceedings, just before their start. This means that the introduction of D2 and D3 was not motivated by the new claim requests filed by the appellant to overcome the lack-of-clarity objection raised during the oral proceedings". "The Board concludes that, by rejecting the appellant's request for postponement of the oral proceedings, the examining division did not provide the appellant with the appropriate opportunity to present its comments on the objection of lack of novelty over D3 in the light of D4 and D5. The appellant's right to be heard on the examining division's novelty objection has thus been violated by the examining division's refusal of its request for adjournment of the oral proceedings, contrary to the requirement of Article 113(1) EPC. This amounts to a procedural violation."

Friday, 13 March 2020

R 0001/19 - Your surprise at a Board's decision doesn't necessarily render it surprising

The decision by the Board, which led to the present petition for review, was to revoke the patent for lack of inventive step, as the claimed effect was not achieved over the full scope of the claim. The Board's reasoning was based on a new document D46 that was admitted into the appeal proceedings, to further substantiate the case already made during opposition. The proprietor was surprised that the Board had placed so much reliance on D46 and had not received the impression during the oral hearing that D46 was considered to be highly relevant. The proprietor felt that the Board's decision was based on ex-officio argumentation on which it had not received the opportunity to respond, violating its right to be heard.

The Enlarged Board took a different view. During the written phase, the proprietor did not address the substantive issues raised by the opponent based on D46 because it had not expected D46 to be admitted into the proceedings. The admission of D46 was discussed at the oral hearing and the Board decided to allow it in. The Enlarged Board remarked that this could reasonably be interpreted as meaning that the document was thought to be important. D46 was discussed at a rather late stage in the hearing, but it was discussed and the proprietor limited itself to commenting on the oral submissions of the opponent.

The Board did not direct the proprietor to address the issues raised in the grounds of appeal, but in the interests of impartiality,it is generally recognized that a Board is under no obligation to inform a party that it deems a particular argument relevant. The Enlarged Board concluded that the proprietor had been given several opportunities to address the arguments on which the Appeal decision was based but, for a reason not attributable to an omission by the Board, decided not to do so. Consequently, there was no violation of its right to be heard.

Tuesday, 10 March 2020

T 3247/19 - How special does it need to be under RPBA2020?

In the present case, the appellant requested that the appealed decision be set aside and that the case be remitted to the examining division. However, with the RPBA revision, the rules for remittal changed. Art. 11 RPBA2007  provided "A Board shall remit a case to the department of first instance if fundamental deficiencies are apparent in the first instance proceedings, unless special reasons present themselves for doing otherwise". Art. 11 RPBA2020 however provides "The Board shall not remit a case to the department whose decision was appealed for further prosecution, unless special reasons present themselves for doing so. As a rule, fundamental deficiencies which are apparent in the proceedings before that department constitute such special reasons." OJ Suppl 2, 2 "Table setting out the amendments to the RPBA and the explanatory remarks" explained that "The aim of the new provision is to reduce the likelihood of a "ping-pong" effect between the Boards and the departments of first instance, and a consequent undue prolongation of the entire proceedings before the EPO. When exercising its discretion under Article 111 EPC, the Board should take account of this aim." and "Whether "special reasons" present themselves is to be decided on a case-by-case basis. If all issues can be decided without an undue burden, a Board should normally not remit the case. According to the second sentence of proposed new Article 11, where a Board ascertains that a fundamental deficiency is apparent in the proceedings at first instance, it will normally remit the case." The new version of Art. 11 applies to any appeal pending on, or filed after, the date of the entry into force (Art. 25(1) RPBA2020); however, not all decisions issued since 1/1/2020 expand on whether there are any specials reasons for remitting, and why (not).  The current deicison does.