The petition for review was filed by the (second) opponent after the Board in decision T 919/07 had maintained the opposed patent in amended form. The discussion focused on the use the Board had made of document D28 in the oral proceedings (OPs).
[…] The petitioner contends that during OPs he was not aware, and could not foresee, that D28 would be regarded as experimental evidence in relation to the claims rather than the strenuously argued possible prejudice. The only experimental evidence on file was that contained in two other documents filed by the patentee. [1.3]
It is a matter of fact that the distinction on which the petition is based between D28 as evidence of “prejudice” and as “experimental evidence”, appeared for the first time in the decision. At least there is nothing leading the Enlarged Board to think that at some earlier point such a distinction was made. Thus, the exception mentioned in R 106 seems to apply and this Board considers that the petition is at least not clearly inadmissible. The question whether the fact that the Board stated that D28 was taken as experimental evidence and not as evidence of a prejudice deprived the opponent of an appropriate defence and violated its right to be heard is an issue regarding the substance and thus the allowability of the present petition. [1.4]
The petitioner contends that its right to be heard was violated and that the decision took it by surprise. In this respect, it relies on the assumption that its argumentation would have been different had the Board, prior to or during the OPs, drawn its attention to the fact that D28 would be regarded as experimental evidence and not as evidence of a prejudice. To dispute the merits of experimental evidence requires detailed arguments about the material facts which is not the case when the dispute is only about the existence or not of prejudice as a concept. The only arguments presented by both respondents in respect of D28 were related to its use as evidence of prejudice. In other words the petitioner alleges that the Board used D28 in an improper way and drew wrong information from it; this could have been avoided if the petitioner had known that D28 would be regarded as experimental evidence and been allowed to make the appropriate more detailed arguments. [2.1]
However, the fact that the patentee considered D28 to be a crucial document was already clear from its grounds of appeal, where it was discussed at length [… and the other opponent] replied at length. [2.2]
The question was also debated during the opposition proceedings. As the petitioner quoted in its petition, the other opponent stated in its submissions that the examples cited by the patentee did not represent a prejudice […]. It is also to be noted that in its submissions, the patentee […] explained in some detail why D28 suggests that the reaction would not proceed at all and why it was thus most surprising that the successful reaction occurs. [2.3]
It is true that as a matter of vocabulary, the patentee used the word “prejudice”. But it is equally true that it also submitted that what D28 was intended to prove was that the skilled person had no reasonable expectation of obtaining the McMurry reaction using the formula of the patent at issue. That D28 was discussed in detail under that angle is also evidenced by the fact that the patentee speaks of “the experimental results described in D28” [in its] grounds of appeal. [2.4]
Assuming for the sake of argument that D28 had been filed as evidence of technical prejudice in the meaning acknowledged by the case law (namely an opinion or a general preconceived idea widely and universally held by experts in that field), and that it was implicitly obvious for the respondents that this could not be the case, it would none the less remain a fact that the document formed part of the debate, and was presented by the appellant as crucial. Whatever the legal label allocated to this document, its contents were not a general concept but a description of a reaction which called for precise arguments- as was done in [the other opponent’s] written submissions. Whatever D28 was called, challenging the correctness of its technical disclosure was a necessary step in order to dispute that its specific results could amount to an opinion generally shared by experts in this field. This approach was not inconceivable for the petitioner who objected to the fact that “the Patentee extends the specific results obtained” to a prejudice against heterocoupling in general. The fact that it might be obvious that the reaction in question did not amount to a technical prejudice did not mean that the evidence of the reaction as disclosed in D28 should not or could not have been challenged. [2.5]
Because the change of the label put on D28 did not change the discussion to be held on it, the petitioner also cannot rely on T 18/81. [2.6]
Insofar as the submissions of the petitioner may be understood as challenging the correctness of the decision of the Board of Appeal in its interpretation of D28 and in maintaining the patent in amended form as a consequence of that interpretation, such a review would concern the question of the correct application of substantive law and is thus outside the scope of proceedings under A 112a. [2.7]
It follows from the foregoing that it is evident that no fundamental violation of the right to be heard occurred during appeal proceedings. Since that was the only violation alleged, the petition has to be rejected as clearly unallowable. [3]
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