This is a decision by the Enlarged Board of Appeal in consolidated proceedings on six petitions for review - R
5/13, R 9/13, R 10/13, R 11/13, R 12/13 and R 13/13, all filed against decision
T 1760/11. The petitioners argued essentially a fundamental infringement of the right to
be heard (Articles 112a(2)(c) and 113(1) EPC).
All petitioners in essence argued
that the Board not only "fundamentally erred" in denying that document D1 was a
feasible starting point for the assessment of inventive step according to the
problem-solution approach. In addition, the petitioners argued, choosing document D2 instead of document
D1, the Board made a number of "basic errors in the evaluation of the technical
information before it and the application of established EPO case law to that
information".
The petitioners argued that the Board took a decision without hearing the petitioners' complete case by concluding that the subject-matter claimed involved an inventive step, after the debate on the issue of inventive step in the light of document D2 as
the closest prior art, without a debate on the ground of lack
of inventive step starting from document D1.
The petitioners further argued that, in addition, the Board applied the problem-solution approach wrongly in
allowing only one document as the starting point for discussing inventive step,
where the case law allowed for more than one document to be considered as the
closest prior art and for a discussion of lack of inventive step starting from
any of those documents. That denial implied an infringement of the right to be
heard according to Article 113(1) EPC.
The petitioners further argued that, in addition, the Board based its decision not to consider document D1 as a
starting point for inventive step merely on the parties' written submissions, and that the Board hereby deprived the petitioners of their right fully to present their
arguments by not giving them the opportunity to
present oral submissions on this point, even if the Board had a different view.
The decision extensively discusses how far the right to be heard extends, and when it is violated - as to procedural aspects and substantive aspects to the merits. The decision also emphasizes that a petition for review can not be used to assess whether the BoA correctly applied substantive patent law, in particular in using the problem-solution approach.
Reasons for the Decision
1. All petitioners are adversely affected by the decision under review. The
provisions of Article 112a(4) EPC and Rule 107 EPC are satisfied.
Scope of the petitions
2. The petitioners invoke multiple grounds for their respective petitions for
review.
3. The petitions for review are founded mainly on the allegation that the
appeal proceedings leading to the decision under review involved a fundamental
infringement of the petitioners' right to be heard (Articles 112a(2)(c) and
113(1) EPC) in that the Board took its decision on the patent proprietor's first
auxiliary request without allowing the petitioners to complete their submissions
on the ground of lack of inventive step, in particular in view of document
D1.
4. Additionally, the petitioners claim that the Board should have followed
their requests to refer the questions submitted by them concerning the selection
of the closest prior art and the concept of res judicata to the Enlarged Board
of Appeal according to Article 112(1)(a) EPC, or that the Board either ignored
the requested referral of the second question or failed to reason why it
rejected the referral.
[...]
Allowability of the petitions for review
9. The petitions essentially invoke the ground of petition for review
according to Articles 112a(2)(c) and 113(1) EPC.
Article 113(1) EPC provides:
"The decisions of the European Patent Office may only be based on grounds or
evidence on which the parties concerned have had an opportunity to present their
comments."
10. T
he petitioners submit that the Board decided on the appeal in
infringement of Article 113(1) EPC in a manner that gave the petitioners no
opportunity to present orally all their arguments on the issue of inventive step
of the claims according to the patent proprietor's first auxiliary request.
As established in case R 3/10 of 29 September 2011 (Reasons, point 2.10),
"the right to be heard is a fundamental right of the parties which has to be
safeguarded, irrespective of the merits of the party's submissions. The
necessity to respect it is absolute and therefore cannot be made dependent on a
prior assessment of the merits of the party's submissions, which in the present
case would involve an assessment of the degree of likelihood that the arguments
of the petitioner would have convinced the Board to acknowledge inventive step.
It is the very essence of the right to be heard that the party is given a full
opportunity to defend its case and to persuade the deciding body that its
position is the correct one. This right would be undermined if it were made
dependent on an evaluation as to whether the party's standpoint is likely to be
justified. In order to answer the question of whether a fundamental infringement
of the petitioner's right to be heard occurred as a result of the petitioner's
not having been heard on inventive step, it is therefore irrelevant whether the
respondents are right in their assessment of the clear obviousness of the
claimed solution."
11.
The petitioners' key objection lies with the Board's decision to choose
document D2 as the (only) closest prior art, rather than documents D1 and D11,
which had been proposed by the petitioners and the patent proprietor
respectively, and to limit the discussion of the issue of inventive step of the
claimed subject-matter according to the patent proprietor's first auxiliary
request on document D2 as the (only) starting point in applying the
problem-solution approach. According to the petitioners, had the Board allowed a
continued discussion of the issue of inventive step starting from document D1,
the petitioners would have demonstrated that the subject-matter of the claims
according to the first auxiliary request was obvious to the skilled person.
Since the Board refused that continued debate, it deprived the petitioners of
the opportunity to present arguments on this matter.
12. In support of this, the petitioners in their concluding submissions
during the oral proceedings put forward essentially three lines of argument:
(1) that the closest prior art could only be determined at the end of a
complete discussion of inventive step starting from all the documents that a
party or the parties chose to rely on (point 15 below);
(2) that the Board failed both to inform the parties of its intention to
select of its own motion document D2 and to invite the parties to comment on
this in order to convince the Board of the inaccuracy of its choice (point 16
below);
(3) that document D1 should also have been considered as a realistic starting
point for the discussion of inventive step (point 17 below).
13. Before investigating the aforementioned arguments, the Enlarged Board
notes that the examination whether or not the subject-matter of a patent claim
involves an inventive step according to the well-established problem-solution
approach is a matter of substantive law. That is equally true for the
determination of the closest prior art as the first step in the multi-stage
method of the problem-solution approach, whether one document alone or a
plurality of documents was taken as the starting point or most promising
springboard aiming at the invention.
14. In view of this, it has to be borne in mind that review proceedings based
on Article 112a(2)(c) EPC are confined to procedural defects so fundamental as
to be intolerable. It follows from the essential interest of legal certainty
that appeal proceedings leading to a final decision shall be re-opened only if
one of the grounds provided for in Article 112a EPC applies. The petition for
review is no means to review the correct application of substantive law
(consistent case law since R 1/08 of 15 July 2008, citing the travaux
préparatoires, and R 2/08 of 11 September 2008).
15. In respect of the first line of argument, the Enlarged Board cannot
follow the petitioners' view point that the closest prior art – at least in the
present case – could have been chosen only after all stages of the
problem-solution approach were completed.
According to the established case law of the boards of appeal, the
problem-solution approach is the key element for the assessment of inventive
step and is the one which is applied first and foremost. It follows a clear
method consisting of three main stages, of which the determination of the
closest prior state of the art is the first (see Case Law of the Boards of Appeal, 7th edition 2013, section I.D.2., p. 165 et seq.).
The petitioners put forward that the first stage of the problem-solution
approach could and should have been concluded only after the other two stages
had been gone through (i.e. after the "objective technical problem" to be solved
had been established and after it had been considered whether or not the claimed
invention, starting from the closest prior art and in view of the objective
technical problem, was obvious to the skilled person). In other words, the
petitioners argue that they should have been allowed to discuss all the issues
of inventive step of any stage of the problem-solution approach in respect of
all possible starting points they wished to rely on, despite the fact that the
Board structured the discussion by first establishing which document or
documents constituted the most promising starting point for an obvious
development leading to the invention. In this, the Board not only followed the
sequence for the debate announced in its communication annexed to the summons to
oral proceedings (page 8, second paragraph; page 9, last paragraph), but by
doing so it also systematically applied the standard method of the
problem-solution approach.
In so far as the petitioners alleged that the Board deviated from the
problem-solution approach by relying on a criterion that was irrelevant for the
determination of the closest prior art (i.e. the Board's opinion that "taking
document D1 as a starting point for the analysis of inventive step relies on a
hindsight knowledge of what is claimed and is therefore inappropriate for an
objective assessment of inventive step"; Reasons page 56), this allegation
concerns a substantive matter.
However, petition for review proceedings may not be used to review the
exercise by a Board of its discretionary power if that would involve an
impermissible consideration of substantive issues (see
R 1/08 of 15 July 2008,
Reasons, point 2.1;
R 10/09 of 22 June 2010, Reasons, point 2.2;
R 9/10 of 10
September 2010, Reasons, point 10;
R 13/11 of 20 April 2012, Reasons, point
4).
In petition proceedings, the Enlarged Board cannot act as a third instance or
second-tier appellate tribunal, nor can it examine whether or not the
substantive conclusions arrived at by the Board were justified; under no
circumstances may the petition for review be a means to review the correct
application of substantive law (see
Case Law, supra, section IV.E.9.2.4.b), p.
1066 et seq.;
R 1/08 of 15 July 2008, Reasons, point 2.1;
R 2/08 of 11 September
2008, Reasons, point 5;
R 9/08 of 21 January 2009, Reasons, point 6.3), w
hich
includes issues falling within the discretion of the Board (
R 10/09 of 22 June
2010, Reasons, point 2).
However, that is exactly what the petitioners seek by requesting the Enlarged
Board to reconsider the appeal proceedings on its merits and thereby to put its
evaluation of the merits above that of the Board. A technical review of the
Board's evaluation of inventive step in terms of whether it is objectively
correct or appropriate, is outside the jurisdiction of the Enlarged Board.
Finally, the Enlarged Board cannot accept the petitioners' contention that a
party, in principle, should be allowed to discuss any particular issue that it
relies on or even forms the subject of a request.
Neither the EPC nor the Rules of Procedure of the Boards of Appeal provide
any legal basis for such a general approach in appeal proceedings, in particular
in inter partes appeal proceedings. Nor is the existence of any such entitlement
supported by the principle of party disposition. That principle relates merely
to the parties' right of disposal over their requests by advancing, withholding
or withdrawing them as they see fit.
More relevant to the present case is another principle of appeal proceedings,
the principle of procedural economy, which requires a board of appeal to focus
on those points that are relevant for the decision. In the present case, the
Board considered that the case could be decided in respect of the issue of
inventive step by systematically applying the problem-solution approach stage by
stage. Thus, it systematically limited its decision-making and accordingly the
discussion with the parties to determining the closest prior art first, before
discussing the other aspects of the inventive step of the subject-matter claimed
according to the patent proprietor's first auxiliary request.
Consequently, the Enlarged Board does not follow the petitioners' argument
that the Board was obliged to let them continue to argue on the alleged lack of
inventive step starting from document D1 despite the Board's conclusion not to
take that document as the closest prior art and starting point for the further
discussion of inventive step.
Since the petitioners were given the opportunity to submit their arguments
with regard to the issue of determining the closest prior art, their right to be
heard has been observed. Once the Board had reached a substantive conclusion by
already excluding one or more documents (here: documents D1 and D11)
as starting
points for the assessment of inventive step, it was logically consistent to
exclude all other prior art not found to be the closest prior art as starting
point for the further discussion of inventive step according to the second and
third stages of the problem-solution approach. By following this methodology the
Board did not infringe the right to be heard, because – as indicated above – a
party is not entitled to be additionally heard on the application of the
problem-solution approach starting from other pieces of prior art than the
closest prior art.
Hence, no infringement of Article 113(1) EPC was committed by the Board.
16. With regard to the second line of argument, the Enlarged Board notes that
there is no evidence to support the petitioners' allegation that the Board
failed to inform the parties of its intention to select document D2 as the
closest prior art and to invite the parties to comment on this so that they
might convince the Board of the inaccuracy of its choice.
Rather, there is evidence that the Board actually indicated the possible
selection of document D2 as the closest prior art, at a point in time during the
proceedings that still allowed the petitioners to react to it.
First, in its communication annexed to the summons to oral proceedings, the
Board explicitly pointed to document D2 as
one of the documents to be considered
in the choice of the closest prior art.
Secondly, according to the minutes of the oral proceedings (pages 5 to 7) and
the Board's communication dated 10 January 2013,
the discussion concerning the
determination of the closest prior art among all of documents D1, D2 and D11
started on 14 November 2012 and continued the next day. The parties were invited
to present their arguments. During the debate, the Board first indicated its
preliminary opinion in respect of the teaching of document D1 and continued the
discussion regarding the choice of the closest prior art. After deliberation,
the parties were informed that the Board considered document D2 to be the
closest state of the art and subsequently they were invited to address the
questions of what the objective problem starting from that document was and
whether that problem had been solved.
For this reason, the Enlarged Board cannot find a basis for the petitioners'
allegation submitted with its second line of argument.
17. Concerning the third line of argument, that document D1 should also have
been considered as a realistic starting point for the discussion of inventive
step,
the Enlarged Board cannot identify any procedural defect.
The minutes of the oral proceedings show that the issue of whether or not the
document preferred by the petitioners (D1) was to be determined as an additional
starting point for the evaluation of inventive step was exhaustively discussed
with the parties (minutes, pages 5 and 6).
Furthermore, in the decision under review, the Board recapitulated in detail
the key arguments submitted by the parties, in particular the petitioners, in
this respect during the written as well as the oral proceedings (Facts and
Submissions points XII and XIII).
The Board gave its reasons for not choosing
document D1 (as well as document D11) as the closest prior art and for
considering document D2 to be the starting point on the basis of which to apply
the problem-solution approach in order to decide on the issue of inventive step
(Reasons, points 4 and 10 et seq.).
The minutes further record an intervention by inter alia petitioner IV
against the Board's approach of determining only one single document as the
starting point for the discussion on inventive step, and also a request to give
the petitioners the opportunity to address inventive step of the subject-matter
of the first auxiliary request starting from document D1, which the Board
rejected (minutes, pages 6 and 7).
Thus, the Board was obviously aware of the petitioners' arguments in favour
of document D1 as at least a second closest prior art document and gave reasons
why it came to a different conclusion (Reasons, points 4 and 10 et seq.).
Hence, the petitions, again, concentrate on the substantive decision of the
Board and on the petitioners' disagreement with the Board's determination of the
closest prior art as the starting point for the problem-solution approach when
assessing the issue of inventive step.
The petitioners dispute neither the
sequence of events during the oral proceedings (the request for correction of
the minutes, although refused, confirms the petitioners' objection to the
Board's refusal to discuss the issue of inventive step starting from document
D1) nor the fact that the question of which document or documents were to be
chosen as the closest prior art was discussed first.
Their ground for review
rather lies with the Board's substantive decision not
to take document D1 into consideration as a starting point in the subsequent
discussion of whether or not the claims according to the patent proprietor's
first auxiliary request involved an inventive step. It is this "refusal" that
the petitioners find to imply an infringement of their right to be heard. Their
argument is based on their opinion that, on the one hand, the Board was legally
bound by decision
T 401/04 of 19 December 2006 regarding the choice of document
D1 as the closest prior art or that, on the other hand, from a technical point
of view document D1 should have been determined at least as a second starting
point for the discussion of inventive step.
18. Consequently, none of the three lines of argument by the petitioners can
lead to the conclusion that the petitioners did not have sufficient opportunity
to comment on all aspects on which the decision was taken, so that no
infringement of Article 113(1) EPC was committed by the Board.
19. To investigate any further would mean assessing whether the Board
correctly understood the substantive arguments submitted by the parties and,
above all, whether it gave the right answer to them.
The (mere) fact that the
petitioners do not share the view of the Board and do not accept the outcome of
the decision under review would be a matter for a review of the merits of the
decision, which is not a means of redress provided for in the EPC.
20. Consequently, to the extent that the petitions for review are not clearly
inadmissible (see points 7 and 8 above), they are clearly unallowable.
[...]
This decision has European Case Law Identifier: ECLI:EP:BA:2014:R000513.20140210. The decision was put online on 16.07.2014 The whole decision can be found here. The file wrapper can be found here. Photo "Hear No See No Speak No EVIL" by Billy Rowlinson obtained via Flickr , no changes made, CC by 2.0 license.
