Monday, January 04, 2021 R 10/18 - No obligation for a Board to discuss irrelevant arguments

Did they miss your submission, or was it not relevant?

The Enlarged board considers the catchword of R 8/15. Catchword 1 of that decision reads (in part, emphasis added): 

(...) One aspect of the right to be heard as covered by Article 113(1) EPC requires a board to consider a party's submissions, i.e. assess the facts, evidence and arguments submitted as to their relevance and correctness. Article 113(1) EPC is infringed if the Board does not address submissions that, in its view, are relevant for the decision in a manner adequate to show that the parties were heard on them, i.e. that the Board substantively considered those submissions. (...)

In this case, a potential issue with this rule is considered. If you don't see your arguments back in the decision then either: the board did not consider your arguments, or the board did consider them but found them to be irrelevant. The former case would infringe the right to be heard, while the latter would not. But how is an appellant to know which of these two options was the case?

The Enlarged board seems sympathetic to this view, but concludes that if you don't see a submission in the decision, then apparently it was not relevant. It leaves the door open though if there are indications to the contrary. 

This case R 10/18 provides the following catchword:

1. One aspect of the right to be heard as covered by Article 113(1) EPC requires a board to consider a party's submissions, i.e. assess the facts, evidence and arguments submitted as to their relevance and correctness.

Article 113(1) EPC is infringed if the board does not address submissions that, in its view, are relevant for the decision in a manner adequate to show that the parties were heard on them, i.e. that the board substantively considered those submissions. (See Reasons, point 2.1.1, affirming the relevant part of catchword 1 of R 8/15).

2. A board is presumed to have taken into account a party's submissions that it did not address in the reasons for its decision, meaning that it, first, took note of them and, second, considered them, i.e. assessed whether they were relevant and, if so, whether they were correct.

An exception may apply if there are indications to the contrary, e.g. if a board does not address in the reasons for its decision submissions by a party that, on an objective basis, are decisive for the outcome of the case, or dismisses such submissions without first assessing them as to their correctness. (See Reasons, point 2.1.1.2).

Friday, February 08, 2019 R 0003/18 - petition without "correct" grounds

This petition was filed on the grounds of Art. 112(a), EPC, i.e. on the grounds of fundamental procedural defect of the appeal proceedings. 

In the present case an appeal was filed against the decision of the examining division to refuse the patent application.
The applicant requested an extension of the time limit (four-month period under Art. 108, EPC) for filing the grounds of appeal  because he needed more time to find a representative who could represent him before the Board. The EPO refused the extension and the applicant requested re-establishment of rights in respect of said missed period. The request of re-establishement was refused and the appeal rejected as inadmissible (Art. 108 and Rule 101(1), EPC).

The petitioner claims that the fact that an extension of time limit was not granted for allowing him to change his representative, amounted to an estoppel situation, i.e. a situation in which the petitioner was deprived of the right to assert his appeal position, which is illegal in common law.

However, neither the BoA nor the president of EPO had referred a question regarding the estoppel situation to the Enlarged Board of Appeal (EBOA) pursuant Art. 112, reason for which the EBOA is not entitled to look into the issue of the estoppel situation and to eventually correct it because the grounds set out in Art. 112(a), EPC, used by the petitioner, do not entitle the EBOA to review the application of substantive law but only to remedy intolerable deficiencies occurring during individual appeal proceedings.

The petition for review was thus rejected as inadmissible under Rule 108(1) and Rule 109(2)(a), EPC.

Tuesday, November 27, 2018 R 0004/18 - Wait for a decision

This (yet unsuccessful) petition for review concerns appeal proceedings against a decision of the Examining Division.

The appeal was withdrawn by the representative of the applicant/petitioner during oral appeal proceedings reason for which the appellant later wanted to change his representative. In the minutes of the oral proceedings the BoA used the wording: "the Chairman gave the Boards  conclusion that claim 1 did not meet Art. 123(2)". The petitioner interpreted this wording as a decision of the BoA and requested correction of the word "conclusion" into "preliminary view". The request was refused by the BoA.

The appellant filed the petition based on several grounds under Art. 112a, EPC and further argued that the Examining Division by examining a divisional application of the patent application in suit referred to the minutes to as a decision, thereby adversely affecting the divisional, besides leading to the refusal of the parent. 

The Enlarged Board stated that a condition for filing a petition is the existence of a BoA decision. The minutes of oral proceeding and a correction thereof, are not a decision in the sense of Art. 106, EPC (confirmed by T 0838/92, T 0212/97, T 0231/99) and the appellant/petitioner withdrew the appeal even before oral proceedings were concluded and a decision could be issued. Therefore the Enlarged Board considered the petition inadmissible. 

Friday, September 28, 2018 T 1627/09 - self-recuse of Board of appeal after successful petition for review

Two board members recuse themselves

After the successful petition for review in R 2/14 of 22 April 2016, the case was remitted to the Board of Appeal that had originally decided not to set aside the opposition division's decision to revoke the patent. Upon remittal, the entire board that took that appeal-decision requested to be recused from the case  to avoid a potential perception of bias when they had to decide for a second time on the same issues (actually one member had already retired).  

Interestingly, an issue with Art. 24 also played during the petition for review when the Enlarged board had to decide if the Chairman of the Enlarged Board of Appeal could be allowed to perform both judicial tasks and executive tasks in his capacity as Vice-President Appeals. 

Wednesday, July 11, 2018 R 0003/17 - Another unsuccessful petition

This petition for review was filed against a decision of the BoA based on two main objections of the petitioner/patent proprietor:

(a) the Opposition Division did not allow for a fair debate during opposition proceedings, and did not give reasons in its decision of revoking the patent, on the admissibility of a disclaimer in claim 1, thus depriving the applicant/patent proprietor of the possibility of having this point re-examined in second instance proceedings. The BoA  further violated Rule 104(b), EPC  because it failed, upon request of rectification of the petitioner, to report such objection in the minutes of the oral appeal proceedings.

(b)   the BoA violated Art. 20(1) and Art. 21, RPBA and consequently Art. 113(1), EPC because the BoA appeared to deviate from the interpretation of Art. 123(2), EPC given by the Enlarged Board in G2/10.

The petition is rejected as clearly not well founded. 

Regarding (a): the patent proprietor had requested together with rectification of the minutes,  reimbursement of the appeal fee for the reasons given in (a) contested to the Opposition Division (see also point 2.1 of the present decision). However, the Enlarged Board is of the opinion that these requests were clearly abandoned by the respondent and thus there could not be any breach of Rule 104(b), EPC.

Regarding (b): the Enlarged Board simply states that an erroneous application of a rule of the RPBA is not per se ground for petition of review unless this brings to a substantial procedural defect under Art. 112a, EPC which appears not to be the case here.

Friday, March 02, 2018 R 3/16 - Do not frighten the Board of Appeal

This is a petition for review against a decision of a Board of Appeal rejecting the opposition of an opponent in an opposition case. During opposition the opponent requested replacement of the members of the division based on a suspicion of partiality. This request was rejected by the opposition division. 

The opponent then filed an appeal together with (late) new documents in which he made many new harsh requests. According to some of those requests  (a) the Board should have remitted the case to the opposition division without oral proceeding and before a different composition of the division, (b) the Board should have excluded a rapporteur of the Board from the proceedings because of his alleged incompetence (c) the Board should have been enlarged by a legally qualified member acquainted with the right to be heard issue ...(g) oral proceedings should have been held public such that members of the public could have witnessed the correctness of handling of the proceedings by the Board.

The Board considered request (a) inadmissible. The opponent/appellant insisted on request (a) and indicated that if request (a) was not fulfilled, a petition for review on the ground of procedural violation would have been risen. The appellant even filed to the Board a document describing the skills required by a technically qualified member of the Board of Appeal to show to the Board that the rapporteur objected did not qualified for the function, that the conduct of the Board was a disgrace and went on with this line of mistrust reasoning.

A petition for review was finally filed on the grounds of several procedural violations of the opposition division and Board of Appeal.

As one may expect the Enlarged Board found the conduct of the petitioner quite disrespectful and discarded the petition as clearly unallowable.   

Friday, February 02, 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.

Friday, November 11, 2016 R 1/15 - Petitioning for review of an insufficiently substantiated decision

In this petition for review, the petitioner (being the patent proprietor) asserts that the Board of Appeal relied in their decision on common general knowledge which the proprietor was unable to comment on. As such, the petitioner asserts that a fundamental violation of Article 113 occurred, which would be a valid ground for petition for review in accordance with Art. 112a(2c) EPC.

However, the Enlarged Board of Appeal concludes that the petition essentially is based on the assertion that the Board of Appeal insufficiently substantiated their decision, which is not one of the grounds for petition for review as enumerated by Art. 112a EPC. With reference to R 1/08 and R 22/10, the EBoA does acknowledge that while an insufficiently substantiated decision is in itself not a valid ground for petition for review, it may serve as  proof of the BoA not acknowledging a presentation of a party or taking such presentation into account in their decision-making process. The petitioner failed to assert such a violation. As such, the petition for review is deemed unallowable.

Tuesday, June 14, 2016 R 04/14 - Late filed request vs. right to be heard

This petition for review relates to whether or not non-admissibility of a late filed request can be in conflict with the right to be heard under Art. 113(1) EPC, either because of a surprising development of the case, or because of “prima facie” assessment of the allowability of the request.

In the underlying appeal proceedings, the petitioner’s (=proprietor’s) only pending request was not allowed due to lack of clarity. The petitioner was surprised that the discussion of clarity of this particular feature was resumed in the second oral proceedings. The Board had indicated in its summons to the second oral proceedings, that clarity of other features were to be discussed and that it should not be necessary to repeat the argument presented in the first oral proceedings (where this feature had been discussed but not decided on). However, respondent III had indicated in its response, that it still considered it relevant to discuss the clarity of the feature in question.

At the beginning of the second oral proceedings, the petitioner only had one request on file. This request is found unallowable due to lack to clarity. The petitioner filed a new main request during the oral proceedings, which request was not admitted into the proceedings.

The questions here addressed by the Enlarged Board of Appeal are therefore:

1. Can the Petitioner objectively be considered to have been surprised by the Board’s decision in the second oral proceedings?, and

2. Can a “prima facie” assessment of the allowability of a request constitute a violation of the right to be heard?

Tuesday, April 12, 2016 R 0013/14 - No, no, and again no on relocating the oral proceedings

This petition for review by the Enlarged Board of Appeal under Art 112a(c) and (d) EPC, results from an earlier decision T 1142/12 that was discussed in our DeltaPatents case law blog in June 2014 (read more). The petitioner is of the opinion that the Board of Appeal did not decide on two requests that the petitioner found relevant, namely those that dealt with relocating the location of the oral proceedings from The Hague to Munich. The Enlarged Board of Appeal (in its 5 member composition) thinks otherwise. The EBoA indicates that at first glance, when reading that the BoA held that it was not empowered to refer a question to the Enlarged Board, it could be concluded that the BoA did not decide on this particular request. However, the EBoA is of the opinion that the BoA said that this request was to be “rejected” for the same reason as given for the refusal to challenge the request for relocation of the oral proceedings. According to the EBoA: Whatever the terminology used, the fact remains that the request was rejected, i.e. a decision was made.