Wednesday, 16 December 2009

T 725/05 – Obiter Dicta And The Right To Be Heard

[…] The [decision of the Opposition Division (OD)] reads on page 15, point (5), […]: "For the reasons discussed in items 2 - 4, none of the requests on file meets the requirements of the EPC, particularly of A 76(1), 123(2) and 123(3). Consequently, the patent is revoked pursuant to A 102(1).” [2]

This is followed by pages 16 to 19 of the Annex, wherein the OD expresses its opinion with regard to the requirements of A 83, sufficiency of disclosure. The introductory paragraph on page 16, point 6, reads: “Although not being a reason for the decision, the OD wishes to express an opinion to other topics that had been discussed in extensio [sic] during the procedure in writing.” [3]

It is evident from the minutes of the oral proceedings (OPs) before the OD, that the requirements of A 83 were not an issue discussed at the OPs. [4]

The Appellant infers from this situation that his right to be heard has been violated (A 113(1)). The addition of such considerations, which were not an issue at the OPs, to a decision might be appropriate for the Boards of Appeal or another last instance court, but not for an OD. The OD’s considerations on A 83 might have negatively influenced their decision with regard to added matter (A 76(1), 123(2) and 123(3)). Finally, the content of pages 16 to 19 of the appealed decision could lead to detrimental effects for the Appellant, for instance in proceedings before national courts.

By referring to decision T 900/02, the Appellant emphasised that justice must not only be done but must be seen to be done. Thus, the addition of these considerations to the written decision amounted to a substantial procedural violation. [5]

With regard to the nature and the significance of pages 16 to 19 of the appealed decision the Board notes that their content is marked as “not being a reason for the decision”. Thus, the content of these pages forms an obiter dictum, a remark or observation made by a deciding body that, although included in the papers of the decision, does not form part of the actual decision. On the other hand those parts of the appealed decision which are marked as “Reasons for the decision” and which end on the bottom of page 15 with the “Decision”, exclusively refer to issues on which the parties had ample opportunity to comment at the OPs before the OD. Thus, the parties right to be heard, which in A 113(1) is defined as meaning that they had an opportunity to present their comments (in writing and orally) on all grounds or evidence on which a decision of the EPO (here an OD) is based, has not been violated.

Decision T 900/02, referred to by the Appellant, is concerned with a suspicion of partiality, inevitably arising if a member of an OD first solicits and then accepts employment with a firm in which a partner or other employee is conducting a case pending before that member. This situation has nothing to do with the situation underlying the present case. The findings in decision T 900/02 are therefore not considered to be relevant for the present case. [6]

The Boards of Appeal, although in a procedurally different situation, have already examined whether or not a party to an inter partes proceedings can be adversely affected by an obiter dictum contained in a decision of an OD. The Board in decision T 473/98 decided that this is not the case and that moreover the inclusion of obiter dicta is appropriate for an OD as it may obviate the need for remittal in the event its decision (in this case revocation of the patent) is reversed on appeal (see point 2 of the reasons). [7]

A 76(1), 123(2) and 123(3) all are concerned with the issue of “added matter”. A 83 relates to sufficiency of disclosure. The Board is convinced that all requirements that have to be met by a European patent application or a granted patent which are laid down in the different Articles and Rules of the EPC have to be seen and considered as an integral whole. However, in the absence of any specific reference by the Appellant to an aspect or argument in either the reasons for the decision or in the obiter dictum, the Board does not see that the OD’s decision on added matter has been influenced by its opinion on sufficiency of disclosure. Moreover, the Board cannot duplicate Appellant’s suspicion that this could be seen differently by another deciding body, for instance a national court. [8]

For all these reasons the Board comes to the decision that the OD by adding an obiter dictum at the end of the appealed decision had not made a substantial procedural mistake which would require remittal of the case to the department of first instance for further prosecution according to A 111(1). [9] 

This decision has even more to offer. We'll see that tomorrow, if you like.

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