Tuesday, 2 February 2021

T 1370/15 - A board is allowed to introduce common general knowledge without evidence also in inter partes

The use of grids is well known in the art



After his patent was revoked in opposition, the proprietor filed an appeal. The opponent (respondent) did not make any submissions in response to the appeal. The board was not convinced that the appellant's requests were inventive taking the common general knowledge of the person skilled in the art into account. In particular, the common general knowledge should not be restricted to the material presented in the first-instance proceedings or the oral proceedings by the appellant. 

The board provided the following catchword:

Not only in ex parte-, but also in inter partes appeal proceedings, a board is allowed to introduce new ex officio common general knowledge without evidence of such knowledge which prejudices maintenance of the patent, to the extent that the board is knowledgeable in the respective technical field from the experience of its members working on cases in this field. (See Reasons, point 5.3)

(emphasis added)


Reasons for the Decision

(...)

3.4 In view of the above, the opposition division's finding that the subject-matter of claims 1 and 9 of the granted patent lacked novelty over the disclosure of D1 was not correct (Article 100(a) EPC).

(...)

4.3 In view of the above, the opposition division's finding that the subject-matter of claims 1 and 9 of the granted patent lacked novelty over the disclosure of D4 was not correct (Article 100(a) EPC).

5. The board's power to examine inventive step for claim 1 of the granted patent and claim 1 of the first to fourth auxiliary requests, and the scope of any such power

5.1 No remittal to the department of first instance

The foregoing examination of the appeal has revealed that it is allowable within the meaning of Article 111(1) EPC. This is because the opposition division erred in finding that the subject-matter of claims 1 and 9 of the granted patent lacked novelty (see point 4.3 above). Pursuant to Article 111(1) EPC:

Following the examination as to the allowability of the appeal, the Board of Appeal shall decide on the appeal. The Board of Appeal may either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further prosecution.

Making use of its discretion, the board decides to exercise the power within the jurisdiction ("competence") of the opposition division to examine the subject-matter of the claims submitted for a decision on appeal. As opposition proceedings were initiated in mid-2013 and the appeal was filed in mid-2015, a remittal of the case would unreasonably delay its final settlement. Furthermore, the board is knowledgeable in the relevant technical field of user interfaces for broadcast applications from the experience of its members working on cases in this field.

The appellant stressed that according to Article 12(2) RPBA 2020, the board's primary task was to review the decision under appeal. At the same time, the appellant denied that the board had power to introduce common general knowledge into the proceedings that had not been the subject of the decision under appeal.

Remitting the case to the opposition division would remove the restrictions of Article 12(2) RPBA 2020, whatever their scope may be (see below, point 5.3). In addition, it would comply with the principle that two tiers of assessment of an opposition should be available.

However, these considerations do not prompt the board to remit the case. Doing so would run counter to the principle embodied in revised Article 11 RPBA 2020 according to which a board "shall not remit a case to the department whose decision was appealed for further prosecution, unless special reasons present themselves for doing so". The explanatory remarks embodying the lawmakers' intention in this regard confirm the board's position. They read as follows:

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 ...

(See Supplementary publication 2, OJ EPO 2020, page 54.)

Remitting a case because of new submissions would thus generally be contrary to what was intended with Article 11 of the revised RPBA of 2020.

Accordingly, the board will proceed to tackle the issue of inventive step in respect of the subject-matter of claim 1 of each request.

In doing so, it will take into account the submissions related to the introduction of common general knowledge into the proceedings that were made orally and in writing (skeleton arguments) for the first time during the oral proceedings. The board introduced common general knowledge in its communication of 18 March 2020 attached to the summons to oral proceedings. The appellant replied in substance with the letter of 28 September 2020 without objecting to the introduction of common general knowledge into the proceedings. In the oral proceedings, the appellant stated that it was only in the preparation for these that it decided to raise this objection.

The board considers, favourably for the appellant, that these submissions are all of a legal nature, i.e. "arguments". The board will further assume in favour of the appellant that such fresh arguments may be introduced at any stage of the appeal proceedings, even during the oral proceedings and even if this means that, contrary to the boards' practice, a decision cannot be given at the end of the oral proceedings. The board thus considers, arguendo, the corresponding case law (see Case Law, V.A.4.10.1, in particular T 1914/12, point 7.2.3) to be good law. Upon their submission, those oral and written arguments therefore became part of the proceedings. As a consequence, the request to admit these arguments has no object.

In these circumstances, the board need not take a position on the question of whether this case law also applies if taking into account legal reasoning (arguments) causes a substantial delay of the proceedings, and if there is no good reason for coming up with the legal reasoning at a late or even the latest conceivable stage. While Article 114(2) EPC does indeed not mention the EPO's power to not admit ("disregard") legal reasoning (arguments), general principles of the law might prevent taking into account the legal reasoning under certain circumstances.

5.2 The board's power to examine inventive step at all

5.2.1 As to the substantiation of the ground of inventive step in the notice of opposition, the board notes that in point 3 of the notice, the opponent objected that the subject-matter of claim 1 of the granted patent lacked inventive step over the disclosure of D1 or D4. In this regard, it drew attention to references in D1 and D4 cited in section 2 of the notice of opposition in relation to the ground of lack of novelty. The opponent did not expressly assert, in particular, lack of inventive step over D1 in combination with the common general knowledge of the person skilled in the art as preliminarily found by the board.

5.2.2 With respect to whether or not the board is entitled to examine inventive step in respect of the subject-matter of claim 1 of the main request (and of the auxiliary requests as well; see point 7 below), the board affirms the view that it expressed in its communication annexed to the summons to oral proceedings. In point 6.1, the board essentially replicated a paragraph of section IV.C.3.4.2 of Case Law considering that this paragraph applied to the case at issue. It reads as follows:

If a patent has been opposed on the grounds of lack of novelty and lack of inventive step and if only the ground of novelty has been substantiated within the opposition period, a specific substantiation of the ground of lack of inventive step is not necessary. Under such circumstances a specific substantiation of the ground of lack of inventive step is not even generally possible since - given that novelty, i.e. the presence of a difference between the claimed subject-matter and a prior art, is a prerequisite for determining whether an invention involves an inventive step in view of that prior art - this would contradict the reasons in support of lack of novelty. Therefore, the objection of lack of inventive step does not constitute a fresh ground for opposition and can therefore be examined in the appeal proceedings without the agreement of the patentee.

In the board's view, the question of whether the contents of point 3 of the notice of opposition referred to above constitutes a substantiation in full or in part or no substantiation at all is immaterial. This is because, as stated in the preceding quote, in the present case, the opponent arguing lack of novelty could not be required to substantiate the ground of inventive step because having done so might have contradicted the reasons advanced in support of lack of novelty. Therefore, the fact that the opponent chose to provide a brief substantiation of the ground of inventive step without being required to do so cannot cannot be found to weigh against it. It follows that the board is entitled to examine the ground of lack of inventive step independent of how thoroughly it was substantiated.

5.2.3 The appellant agreed that in this case the board was entitled to examine the ground of inventive step because, in its opinion, that ground was fully substantiated in point 3 of the notice of opposition. Examination by the board was, however, "limited to the facts" (see skeleton arguments, middle of page 2), i.e. what was expressed in point 3: the subject-matter of claims 1 and 9 of the patent as granted (main request) lacks inventive step in light of either D1 or D4, with attention being drawn to references in D1 and D4 cited in section 2 of the notice of opposition and relating to the ground of lack of novelty.

5.3 The board's power to examine inventive step starting from D1 in view of common general knowledge

5.3.1 In the communication attached to the summons to oral proceedings and in the oral proceedings, the board expressed the view that the subject-matter of claim 1 of the main request lacked an inventive step not over D1 alone, but over D1 in view of the common general knowledge to which EPGs in the form of a UI, such as a grid or drop-down menus belonged. The appellant recognised that the board was knowledgeable in the technical field of user interfaces for broadcast applications, which included the common general knowledge introduced, from the experience of its members working on cases in this field. However, the appellant asserted that the board was not entitled to introduce an objection of inventive step based on these different facts.

5.3.2 This was a point of law of fundamental importance. The revised version of the RPBA expressly introduced in Article 12(2) RPBA 2020 that the primary function of the appeal proceedings was the review of the decision under appeal. In inter partes proceedings, the question that arose was where should the limits be for boards extending proceedings in dealing with new issues given that parties "could not make" amendments to their case (see also point XIX(e) above).

5.3.3 If the board was still minded to extend the scope of assessment of inventive step to a combination of D1 and common general knowledge and tended not to grant any of the claim requests, the appellant requested that the following question be referred to the Enlarged Board of Appeal pursuant to Article 112(1)(a) EPC:

"In inter partes appeal proceedings, is the Board allowed to introduce new ex officio facts and evidence which prejudice maintenance of the patent?" (see also point XIX(e) above).

5.3.4 The board notes that the question requested for referral relates to the current case only in so far as the term "facts and evidence" is restricted to "common general knowledge without evidence of such knowledge". In so far as the question goes beyond this, it is not relevant for deciding the case in question and to this extent is therefore inadmissible (see Case Law, V.B.2.3.3).

5.3.5 The board judges that an answer to this more narrowly worded question by the Enlarged Board of Appeal is not required. To ensure uniform application of the law, or if a point of law of fundamental importance arises, the board must, during proceedings on a case and either of its own motion or following a request from a party to the appeal, refer any question to the Enlarged Board of Appeal if it considers that a decision is required for the above purposes (Article 112(1)(a) EPC).

5.3.6 The board refuses this request. As to the option "to ensure uniform application of the law" because of divergent case law, the appellant has not submitted pertinent facts. Rather, the appellant agreed that the cases addressed in its skeleton arguments all went in the same direction supporting the appellant's position (see also point XIX(e) above).

5.3.7 The more narrowly worded question may concern an important point of law, but it can be answered by reference to the EPC without doubt (see Case Law, V.B.2.3.7).

5.3.8 The narrower question is similar to the second question requested for referral in ex parte case T 1092/12 (see point 6.2), asking:

"To what extent is a board entitled to rely upon an assertion of common general knowledge, without providing documentary evidence of such common knowledge, even though the assertion is contested?"

In the board's view, the answer to this second question applies mutatis mutandis. In pertinent part, it reads as follows:

there is ... no general obligation on a board to provide documentary evidence for the existence of a piece of common general knowledge. In proceedings before the EPO, a board of appeal has to respect the right to be heard and to give reasons for its decision. In cases where a board refers to common general knowledge as state of the art, it is not obliged to provide documents in every conceivable case. Doing so may be the most straightforward way to give convincing reasons why, for example, a certain feature was known in the art at the priority date of an application. But it is not the only way. It is also possible for a board to state what it deems to be known, and possibly where it is known from, in a way that puts the appellant in a position to try to convince the board that its findings are erroneous. Proceeding that way respects the party's right to be heard (see for example T 458/07, section 7 and R 20/11, sections 3.1 and 4, last sentence). In analogy to the situation in which documentary state of the art is presented, the appellant has the opportunity to comment on the board's view and provide arguments as to why the facts the board relies on are held to be wrong. A mere denial that such commonly known prior art existed is not sufficient. In its letter of 26 May 2017, the appellant complained that it was not in a position to prove a negative, i.e. what is not known to the skilled person. But that is not what the appellant is supposed to do. He could, for example, have provided evidence of when the contentious ... feature was introduced into the art, which the appellant however chose not to do.

5.3.9 The appellant citing T 1090/12 agreed that in ex parte proceedings the board was under no obligation to provide evidence for what may be considered common general knowledge. However, according to the appellant, this was not applicable in inter partes proceedings (see point XIX(e)). In this context, it relied on Article 12(2) RPBA 2020 and the decision of the Enlarged Board in case G 10/91, together with a number of subsequent board decisions applying the rationale of G 10/91.

The board disagrees with the appellant's view. It holds (a) that the extract of T 1090/12 reproduced above applies mutatis mutandis to inter partes appeal proceedings, in particular the current inter partes case, (b) that this conclusion is unaffected by the revised rules of procedure (RPBA 2020), in particular, Article 12(2), or (c) by the remaining objections raised by the appellant. The reasons are given below.

(a) The Enlarged Board held in G 10/91 (in point 8):

The purpose of the appeal procedure inter partes is mainly to give the losing party a possibility to challenge the decision of the Opposition Division on its merits. ... Furthermore, in contrast to the merely administrative character of the opposition procedure, the appeal procedure is to be considered as a judicial procedure ... Such procedure is by its very nature less investigative than an administrative procedure. Although Article 114(1) EPC formally covers also the appeal procedure, it is therefore justified to apply this provision generally in a more restrictive manner in such procedure than in opposition procedure. In particular with regard to fresh grounds for opposition, for the above reasons the Enlarged Board considers that such grounds may in principle not be introduced at the appeal stage. ... However, an exception to the above principle is justified in case the patentee agrees that a fresh ground for opposition may be considered ... If a fresh ground is admitted, the case should ... be remitted to the first instance for further prosecution, unless special reasons present themselves for doing otherwise.

In inter partes appeal proceedings, in principle, the parties submit facts and evidence to the board, and the board applies the law to the uncontested or proven facts. This also applies to common general knowledge in a specific technical field.

While the Enlarged Board found in G 10/91 that the appeal procedure in inter partes cases was less investigative than the procedure of the opposition division, Article 114(1) EPC - which requires the EPO to examine the facts of its own motion - still applies. This means that a board is not excluded outright from introducing new facts and evidence in inter partes proceedings.

The appellant argues that inter partes proceedings are less investigative. Thus, the board must not, of its own motion, introduce new facts and evidence into the proceedings.

The board notes that, in general, when a board introduces new facts or evidence into the proceedings, this is the consequence of its own investigations.

It is, however, not of an investigative nature when the board introduces facts relating to technical features that are either notoriously well-known or known to the board from its members' official experience. In such a situation, no investigations will have been necessary. The appellant recognised that the board was knowledgeable in the technical field of user interfaces for broadcast applications from the experience of its members working on cases in this field (see also point XIX(e) above). The board introduced knowledge pertaining to this technical field, i.e. on EPGs in the form of grids or tables.

The general danger perceived in the case law in accordance with G 10/91, independent of any basis for it, of a lack of impartiality in seeking, gathering and selecting evidence (see T 223/95, Reasons, point 4, cited in the skeleton arguments in fine) cannot exist in cases such as this case because it is merely pre-existing knowledge imparted on the party or parties.

As the board is in possession of this knowledge, no proof in the form of documentary evidence is needed. The appellant's objection that the board should not act as an expert witness for the opponent is ill conceived for this reason and also because a fact does not have to be proven by an opponent to a patentee (or vice versa) but to the board.

If the board is knowledgeable about what was common general knowledge before the priority date of the patent in suit, this knowledge need not be proven to the board. The party concerned must, however, be provided the chance to contest the board's introduction of common general knowledge.

The appellant had the opportunity to comment on the board's view and provide arguments why the facts the board relies on are held to be wrong. A mere denial that such commonly known prior art existed is not sufficient. In the oral proceedings, the appellant said that it could neither confirm nor deny the existence of it.

The appellant, however, did not, for example, provide evidence of when the contentious feature, i.e. an EPG in the form of grids or tables, was introduced into the art.

In the light of the foregoing, the answer to the narrower question requested for referral to the Enlarged Board:

"In inter partes appeal proceedings, is the Board allowed to introduce new ex officio common general knowledge without evidence of such knowledge which prejudices maintenance of the patent?"

is therefore: yes, to the extent that the board is knowledgeable in the respective technical field from the experience of its members working on cases in this field.

(b) RPBA 2020

The application mutatis mutandis of the extract from T 1090/12 quoted above to inter partes appeal proceedings, and thus the above answer to the narrower question requested for referral to the Enlarged Board, cannot be disputed on the basis of the revised Rules of Procedure of the Boards of Appeal that entered into force on 1 January 2020 (see Article 24(1) RPBA 2020).

The appellant repeatedly referred to newly introduced Article 12(2) RPBA 2020, mentioning "the primary object of the appeal proceedings [is] to review the decision under appeal in a judicial manner". As is clear from the portion from G 10/91 quoted above, this part of the provision is, in essence, a repetition of a main principle enunciated in the decision on that case. Its wording as such can therefore hardly be considered as imposing stricter rules on the boards in treating new material in the course of appeal proceedings from 1 January 2020, i.e. the date of entry into force of the revised RPBA. The "main purpose" put forward in G 10/91 of 31 March 1993 has not prevented the development of a substantial body of case law not only in ex parte but also inter partes cases on the admittance of submissions made for the first time in proceedings before the boards.

However, according to the foreword to the RPBA 2020 (ibid., third paragraph, emphasis added),

...changes have been made to clarify that the primary object of appeal proceedings is to review the decision under appeal in a judicial manner; one of the consequences of the Boards' function being above all to review the appealed decision is that, as the appeal proceedings progress, the possibilities for parties to amend their case become increasingly limited.

According to the "convergent approach" comprising three converging levels implemented in Articles 12(4), 13(1) and 13(2) RPBA 2020, it becomes increasingly difficult for parties to have new submissions accepted on appeal. This depends on the stage of the proceedings corresponding to the level of the convergent approach during which the submissions are made (i.e. at the outset of the appeal proceedings, with the statement of grounds of appeal or reply to it (Article 12(4)); after the initial stage of the proceedings, but before the period set in a communication under Rule 100(2) EPC has expired or a summons to oral proceedings has been notified (Article 13(1)); and thereafter (Article 13(2)); see the explanatory remarks on Articles 12(4), 13(1) and (2), ibid., pages 56 and 59-60).

It is in accordance with these provisions that, as the appeal proceedings progress, the possibilities for parties to amend their case become increasingly limited. Given that these provisions are addressed to the parties and not to the boards, they have no immediate impact on the boards raising new issues under Article 114(1) EPC. This applies, in particular, to a board introducing common general knowledge that its members have gathered in the course of their official experience, as in this case.

The explanatory remarks given with respect to Article 13(1) RPBA 2020 in Rules of Procedure of the Boards of Appeal (ibid., page 59, third paragraph in fine), confirm this finding. There it is said: "Where the Board raises an issue of its own motion under Article 114(1) EPC, the party's right to be heard under Article 113(1) EPC must be respected." This sentence makes it clear that a board, under the RPBA 2020, is not prohibited from raising issues of its own motion. The explanatory remarks do not confine application of this statement to ex parte cases. The appellant's inquiry into the impact of the more restrictive approach of the RPBA 2020 regarding parties' submissions made on appeal on new material introduced by the boards (see point XIX(e) in fine above) must therefore be answered such that there is no immediate impact. (In this case, incidentally, the board introduced common general knowledge garnered in the course of its official experience in the communication annexed to the summons to oral proceedings, and thus at the earliest stage possible.)

(c) The remaining objections

The remaining objections raised against the introduction of common general knowledge by the board without evidence of such knowledge (the objections are summarised in points XIX(a)-(e) above) are equally unconvincing. This should be self-evident from the analysis made above. In addition, the board only refers to the appellant's argument that national law suits would be more appropriate to challenge a patent long after its grant. (In this case, the application was filed around 11 years ago and the patent was granted around 8 years ago.) In T 389/95 that the appellant cited in support of its assertion (skeleton arguments, page 5), admittance of a new document would have entailed the remittal of the case causing an "accumulation of delays in such iterative looping". In cases such as the case at issue, however, the introduction of common general knowledge by the board does not delay the decision on the case.

5.3.10 In the light of the foregoing, the board reiterates that the extract of T 1092/10 reproduced above applies mutatis mutandis to inter partes appeal proceedings, in particular the current inter partes case.

6. Claim 1 of the granted patent - inventive step over D1 (Article 100(a) EPC)

6.1 Document D1 is the closest prior art for the assessment of inventive step of the subject-matter of claim 1 of the granted patent.

(...)

6.7.1 The board agrees with the appellant that the claimed UI allows a more efficient user interaction (see point XIX(n) above).

6.7.2 However, the board is not persuaded that the person skilled in the art seeking to increase user convenience in selecting search criteria would only have addressed the error messages that may be displayed if the user does not select at least one of blocks 41 and 42 at step 330 or at least one of blocks 43 and 44 at step 340 (see point XIX(o) above). Rather, the person skilled in the art would have recognised the need for a different UI to select different processing methods with respect to certain transmission methods.

6.7.3 It is a non sequitur to conclude that general knowledge does not include the common general knowledge of the person skilled in the art (see point XIX(p) above). It would be illogical if the person skilled in the art in a particular field (user interfaces) was not aware of the knowledge of the public at large (general knowledge) in this field. Thus, if tables (grids) and drop-down menus were generally known at the priority date (see point XIX(p) above), they must have been part of the common general knowledge of (a team including) a person developing user interfaces. The board is not convinced that the person skilled in the art would not have applied this common general knowledge to the field of broadcasting (see point XIX(p) above). In contrast to the appellant, the board is of the opinion that the person skilled in the art would have recognised that the generally known tables (grids) could be used for any user selection based on two factors by simply choosing appropriate variables (see point XIX(q) above). According to the board, before the priority date of the patent in suit, it belonged to the common general knowledge of the skilled person designing user interfaces for broadcast application that electronic program guide (EPG) tables (grids) allowed a user to select a program at the intersection of a column corresponding to a time slot and a row corresponding to a channel (see also point XIX(q) above). To someone working in the field of user interfaces, selecting items at the intersections of columns and rows of a table would have been a principle as basic as using a drill to drill a round hole in a wall. Therefore, the board is not convinced that its assessment is based on hindsight.

6.7.4 An EPG provides a user interface for inputting user selections to the broadcast receiver. The board is not convinced that the purpose and the frequency of use of an EPG would have dissuaded the person skilled in the art from considering the use of a similar table for inputting channel setup selections (see point XIX(r) above).

6.8 In view of the above, the subject-matter of claim 1 of the granted patent lacks inventive step over the disclosure of D1 combined with the common general knowledge of the person skilled in the art (Article 100(a) EPC).

(...)

8. Since none of the appellant's requests is allowable, the appeal is to be dismissed.

Order

For these reasons it is decided that:

1. The request for referral of a question to the Enlarged Board of Appeal is refused.

2. The appeal is dismissed. 


This decision T 1370/15 (pdf) has European Case Law Identifier: ECLI:EP:BA:2021:T137015.20210125. The file wrapper can be found here. Photo by cocoparisienne via Pixabay, under the Pixabay license (no changes made). 

8 comments :

  1. Art 1-I am always right-Art 2-Should I be wrong Art 1 applies3 February 2021 at 09:48

    This decision is a confirmation of T 190/12, now applied to opposition proceedings.

    This decision shows that BA do what they want and that nothing can stop them. It also shows that the non-existence of a revision instance as to substantive matters is sorely lacking in the EPO appeal system.

    The BA are masters of their own game, whatever the situation. Art 12(2) RPBA20 provides that the BA should merely carry out a judicial review of first instance decisions. Ok, but Art 111(1) gives them also the power to act as a first instance division and Art 114(1) allows them to take up ex officio any matter which they consider relevant. The question then arises: in which circumstances does the RPBA prevail and in which circumstances should the EPC prevail. But what Art 12(2) RPCR20 says appears not consistent with the EPC. A decision from the EBA in this matter could be useful.

    As remittal to the first instance is to be limited, cf. Art. 11 RPBA20, the proprietor has nothing to complain about, as it is exactly what the BA is doing in this case.

    That the transition from novelty to inventive step is possible in certain circumstances is a given, see G 1/95 and T 131/01. Those two decisions have not even been cited.

    The icing on the cake is that the general knowledge of the qualified person does not need to be demonstrated if a BA states what it is.

    We now best and nobody is there to query this stance.

    In T 190/12 and in the present proceeding, the BA refused to refer to the EBA and decided that there was no basis for such a referral. That the BA could be both judge and party in this matter does not seem to have occurred to it.

    It is one thing for a patent that has no basis not to be upheld, but for the BA to put itself in the opponent's shoes goes a long way, especially on the basis of an assertion by the BA.

    If the missing link is represented by general knowledge, there must be a possibility to show it quickly.

    Moreover, general knowledge is never late because it is immanent. But it still has to be demonstrated.

    If the patent is revoked, the proprietor has nothing left but the opponent still has the possibility of applying to a national court.

    The fate of a patent should not depend on the BA in which it is examined.

    The rapporteur in this case has been appointed chair of a board. Good luck!

    ReplyDelete
  2. The issue how much common general knowledge does the Board (or the ED, or the OD) possess is an interesting one. Disputed proceedings at the EPO are qualitatively different from those under adversarial English law, where the judge passively waits for evidence to be adduced, and must decide strictly in accordance with that evidence.

    If I understand it right, under civil law, the knowledge of the skilled person is imputed to "technical judges". They don't need evidence of the CGK because they possess it already.

    If you want to know how disputed proceedings run at a Patent Office under English law, have a look into the USPTO. Seriously, does mainland Europe want to go down that road? Surely not.

    ReplyDelete
  3. The issue surely is not what the common general knowledge of the skilled person is *now*, but what it was at the priority date of the application?

    It may be fine for the BoA to say "we are the skilled person, so whatever knowledge we have is the cgk". But why should they be able to assert without evidence what the skilled person knew *at the priority date*?

    In this case, the priority date is in 2008. Anyone claiming to remember exactly what they knew and when they knew it when the date in question is 12 years in the past should surely have to provide some evidence for this?

    ReplyDelete
  4. I welcome that last comment from Anonymous but remain sceptical. Witness evidence today, of what was fact 12 years ago, is always questionable. That's why cross-examination of witness evidence about facts in dispute is crucial to delivering justice.

    The thing is, what are facts agreed between the Parties, and what are facts genuinely in dispute? English law and civil law procedures have different ways to settle what facts are undisputed and what facts are in dispute. I like to think that when the ED, or the OD, or the TBA, announces what was the CGK in 2008, that statement concerns a fact that cannot seriously be disputed. If a Party seriously disagrees with the definition of the CGK given by the Board, the burden is on that Party to challenge that definition with cogent evidence.

    But I agree, that if the Board declares as fact a thing that is very much open to question, and not at all free from dispute, then it should base its pronouncement of fact on evidence that puts the point beyond dispute.

    ReplyDelete
  5. Isn't it a fundamental violation of Article 113 to deny to comply with the request of a party to give evidence of the allegation of the Board of Appeal as to what (they believe) is common general knowledge? It deprives the party of a fair chance to understand and to challenge the arguments based on it.
    Could a petition for review be successful based on the ground of Art.112a(2)(c)?

    If it is indeed such common knowledge, it should not take any effort for the Board to provide the evidence! Unless it is not of course... Or would the Board want to prevent the risk that the same evidence of common general knowledge would also allow the party to counter the Board's arguments, e.g., from information in another part of the same document?

    Apart from all legal reasons: is it not also a matter of showing respect for the parties to provide the evidence requested?

    ReplyDelete
  6. @Anonymous 17 February 2021 at 17:08:

    In (ex-part case) T 1090/12 (Plugin framework/ORACLE) of 29.6.2017, the Board argued, in reason 6.2:

    " there is also no general obligation on a board to provide documentary evidence for the existence of a piece of common general knowledge. In proceedings before the EPO, a board of appeal has to respect the right to be heard and to give reasons for its decision. In cases where a board refers to common general knowledge as state of the art, it is not obliged to provide documents in every conceivable case. Doing so may be the most straightforward way to give convincing reasons why, for example, a certain feature was known in the art at the priority date of an application. But it is not the only way. It is also possible for a board to state what it deems to be known, and possibly where it is known from, in a way that puts the appellant in a position to try to convince the board that its findings are erroneous. Proceeding that way respects the party's right to be heard (see for example T 458/07, section 7 and R 20/11, sections 3.1 and 4, last sentence). In analogy to the situation in which documentary state of the art is presented, the appellant has the opportunity to comment on the board's view and provide arguments as to why the facts the board relies on are held to be wrong. A mere denial that such commonly known prior art existed is not sufficient. In its letter of 26 May 2017, the appellant complained that it was not in a position to prove a negative, i.e. what is not known to the skilled person. But that is not what the appellant is supposed to do. He could, for example, have provided evidence of when the contentious array data structure feature was introduced into the art, which the appellant however chose not to do."

    Interesting reasoning... "" the right to be heard has not been violated by not giving evidence as to common general knowledge as the party could have tried to give evidence to the contrary".

    But also note that the Board did NOT present this as a GENERAL rule: it said ". In cases where a board refers to common general knowledge as state of the art, it is NOT OBLIGED to provide documents IN EVERY CONCEIVABLE CASE."
    That could be understood (and in my view shall be understood) that the main rule is that documents are given as evidence, but that there may be exceptional situations were it is not needed.

    Note that the Board in T 1090/12 refused to refer the following question to the Enlarged Board:
    "To what extent is a board of Appeal, when exercising power within the competence of the first instance department which was responsible for the decision appealed under Article 111(1) EPC, entitled to rely upon an assertion of common general knowledge, such as for interpreting a prior art citation or assessing a technical effect, without providing documentary evidence of such common knowledge, even though the assertion is contested and there is, in effect, no possibility of appeal against such assertion"
    as the Board considered that he question can be answered by reference to the EPC without doubt (see Case Law of the Boards of Appeal, 8th edition, IV., F., 2.3.7) - the usual way of denying a referral even if there are sounds reasons (the Board themselves consider whether there is doubt or not, and even when there is conflicting case law the Boards often indicate things like "the other Boards were wrong, we are sure that we are right, so we do not have any doubt"; whereas the legal certainty to all stakeholders would benefit, if not need, a referral with a (quasi-)binding effect if there is clearly conflicting case law or if there is reasonable reasons for doubt).

    By the way (to address Anonymous 17 February 2021 at 17:08's suggestion), the minutes of the oral proceedings in T 1090//12 do not indicate that an objection of a violation of the right to be heard was raised when the Board denied to give evidence, so that a petition for review would have had no chance - Rule 106 EPC.

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  7. In 1090/12, the appellant referred to Guidelines G-VII, 3.1 (""an assertion that something is common general knowledge need only be backed by documentary evidence (for example, a textbook) if this is contested") and submitted that this passage is binding on the boards of appeal when exercising the power of the examining division.
    The Board then indicated that they are not bound by the Guidelines (true, but note that Art.20(2) RPBA2020 provides: "If, in its decision, a Board gives a different interpretation of the Convention from that provided for in the Guidelines for Examination, it shall state its grounds for doing so if it considers that the decision will be more readily understood in the light of such grounds.")

    One may wonder whether the outcome would/could have been different if the appellant would instead have referred to the Case Law Book, In the 9th edition, 2019 edition that provides in I.C.2.8.5 (same text in 8th edition, July 2016, in force when the decision was issued) the following as the general rule:

    "Where an assertion that something is common general knowledge is challenged, the person making the assertion must provide proof that the subject-matter in question is in fact common general knowledge (T 438/97, T 329/04, T 941/04, T 690/06, T 2132/16). In the case of any dispute as to the extent of the relevant common general knowledge this, like any other fact in contention, has to be proved, for instance by documentary or oral evidence (T 939/92, OJ 1996, 309, see also T 766/91, T 1242/04, OJ 2007, 421; T 537/90, T 329/04 and T 811/06). The proof is regularly supplied in citing literature (T 475/88). According to T 766/91 and T 919/97, evidence of general technical knowledge need be submitted only if the latter’s existence is disputed."

    Note that this section refers to "person" and not to "party", such that it refers to parties as well as EPO divisions and bodies.

    The argument in T 1090/12 that the EPC does not provide for such an obligation is in my view not convincing: it is a general principle of law that the right to be heard includes the right to be able to understand what is stated and as part of that the principle "Who asserts needs to provide proof if the assertion is challenged" applies.

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  8. Be it this decision or T 1090/12, it shows dearly that a revision instance on the substance of decisions of BA should be provided for at the EPO.

    Rather than to file a referral on how to circumvent Art 53(b) without amending it, this would be a good topic for a referral from the president, as the BA are too reluctant to do it by themselves.

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