R 4/09 – Ignorance Is Not Bliss

The present decision on a petition for review deals with a case where the petitioner based its argumentation on its attorney’s ignorance of a decision of the Enlarged Board of Appeal (EBA). As a matter of fact, during the oral proceedings (OPs), the Board pointed out that decision G 1/99 prohibits reformatio in peius. The patentee studied the contents of G 1/99 after the end of the appeal proceedings, and noted that G 1/99 in fact provided an exception to the principle of prohibition. So the proprietor contended that in the course of the oral proceedings he had been wrongfully informed of the real ambit of decision G 1/99 which actually provides for an exception to the principle of prohibition of reformatio in peius whereas on the contrary during oral proceedings said decision G 1/99 had been alleged to establish said prohibition.

[2.2] In the case in suit the petition is based on the alleged misleading information given by the Board during OPs which according to the petitioner constituted a fundamental violation of A 113, since the Board adopted in its reasoning in writing a completely contrary approach to the indications it gave in the OPs, thus depriving the petitioner of its right to comment on the grounds that directly caused the revocation of the patent. […]

[2.3.1] The petition for review filed with the EBA appears indeed to concern the scope of application of the principle of good faith also known as the principle of the protection of legitimate expectations, in proceedings before the EPO, rather than the right to be heard.

This principle is generally recognised among the Contracting States of the EPC and is well established in European Union Law (G 2/97). The Boards of Appeal have developed a substantial body of case law relying on the principle of good faith to be applied in the procedures before the EPO and which implies that measures taken by the EPO shall not violate the reasonable expectations of parties to such proceedings (G 5/88, G 7/88 and G 8/88, OJ EPO 1991, 137).

[2.3.2] The protection of this principle requires that the user of the European patent system, here the patent proprietor in opposition appeal procedure, does not suffer a disadvantage as a result of having relied on erroneous information received from the Board of Appeal (G 2/97 [4.1]). Nevertheless users of the European patent system, who are parties in proceedings before the EPO must act in good faith, and have the responsibility to take all necessary procedural actions to avoid a loss of right. The EBA, therefore, saw no justification for the suggestion that the principle of good faith imposes on a Board of Appeal an obligation to warn a party of deficiencies within the party’s own responsibility (G 2/97 [4.2]).

[2.3.3] In the case in suit, even if for the sake of argument it is assumed that the information of the Board during OPs was not clear enough, it remains nevertheless that the party, at least where, as here, it is represented by an authorized representative, is deemed to know the case law, and cannot plead lack of such knowledge as an excuse, “Ignorantia legis non excusat”.

Moreover the petitioner had the opportunity if he was not aware of the principles set forth in decision G 1/99 to ask for a break in order to study said decision. Furthermore, in the case in suit the Board could not have, without departing from its duty of neutrality in inter partes proceedings, suggested to the petitioner any possible wording of a claim in order to escape the prohibition. The petitioner, duly informed by the communication annexed to the summons to the OPs, was deemed to be aware of the fact that the invention claimed according to his main request might lack the claimed priority, and should have accordingly drafted his auxiliary requests.

[2.3.4] The question whether the exception mentioned in G 1/99 applies to the case at hand or (as stated in the impugned decision, [6.2]) it does not, concerns the merits of the case and is therefore outside the scope of the present proceedings.

[2.4] To summarise:

• it is not established that the Board gave any misleading information in the course of the OPs,
• a party to the proceedings is expected to be aware of the relevant law and case law, at least where, as here, it is represented by an authorized representative,
• it is established that decision G 1/99 had been discussed during the OPs, and that the petitioner who should have been aware of its teaching, did not ask for an interruption of the proceedings in order for him to react,
• it is not for the EBA in its competence under A 112a to examine the merits of the decision and to go into the substance of a case.

[2.5] Therefore, the petition for review is clearly unallowable and must be rejected.

If you wish to download the whole decision, you can find it here.

NB: This decision has already been reported on Le blog du droit européen.