R 10/09 – Discretion Means Just That

When requests or documents are not admitted into the proceedings by a Board, is this enough to justify a petition for review? Only under very special circumstances, says the Enlarged Board (EBA). Because discretion is not an empty word.

[2.1] According to the petitioner, the decision not to admit an auxiliary request that had been filed within the time limit set by the Board of Appeal itself was a total surprise for it since it was given no opportunity at all to comment on the merits of a request which indeed represented a mere limitation of the granted patent by way of incorporation of dependent claims into claim 1. Further being the respondent in the appeal proceedings it saw no need when filing the auxiliary request in writing to explain why the newly defined subject-matter would be inventive, all the more in a case like this where the patent had been maintained unamended by the Opposition Division.

[2.2] That notwithstanding, the decision to admit or not to admit a request into the appeal proceedings is at the discretion of the Board of Appeal. Therefore the way in which this judicial body has exercised its discretion on a procedural matter falls outside the jurisdiction of the EBA since this would need a review of all facts and circumstances of the case, which necessarily would mean entering on the merits of the substantive issue.

Moreover the petitioner, who recognises that admission of new requests is at the discretion of the Board of Appeal, cannot claim that its right to be heard has been infringed in this respect since the issue of admissibility of the auxiliary request has been the object of debate during the oral proceedings (OPs) held before the Board of Appeal. This is confirmed in the petition itself […] and also in the decision of which review is sought […]

Finally the mere fact that a time limit for filing new submissions set by the Board of Appeal in a communication prior to OPs, has been respected by a party does not necessarily mean that any timely submission becomes for that reason alone admissible.

[2.3] The discretionary power contained in A 114(2), as well as in Article 13(1) RPBA, is as such not subject to review by the EBA, unless under A 112a(2) c) a fundamental violation of A 113 occurred while exercising this discretionary power.

Precisely this cannot be the case here since the issue of the admission of the auxiliary request was, as admitted by the petitioner, the object of debate during the OPs held before the Board of Appeal.

[2.4] That having been said and concerning A 112a(2)(d), the EBA notes that the alleged violation is not included in the list of fundamental procedural defects of R 104. This rule implements A 112a(2)(d) which provides: “any other fundamental procedural defect as defined in the Implementing Regulations”.

The wording of A 112a(2)(d) is quite clear:

• a petition for review can only be filed on the grounds it specifies
• it leaves it to the Implementing Regulations to define further procedural defects which may justify a petition for review. This implies that what is not defined by the Implementing Regulations does not qualify as a procedural defect in the sense of A 112a(2)(d).

R 104 is the implementing rule providing two additional fundamental procedural defects to wit, (a) the Board did not hold OPs despite a request to this end; or (b) it omitted to decide upon a request.

[2.5] Since the list of grounds for review mentioned in R 104 is exhaustive and since the Board decided on the admission of an auxiliary request R 104 is of no relevance here.

[3] The decision to accept late-filed documents E25 and E26 into the appeal proceedings, but to refuse the request for remittal to the first instance and further to revoke the patent on the basis of one of these documents also constitutes in the view of the petitioner a violation of A 113 pursuant to A 112a(2)c) as a second instance was denied the patent proprietor whereas given to the opponent. The petitioner added in this respect that the purpose and function of A 113 were inter alia to ensure that the parties be fairly and equally treated in the proceedings before the EPO. It referred to the principles set out in the Vienna Convention on the Law of Treaties, the European Convention on Human Rights and Fundamental Freedoms, and the TRIPS, more particularly to Article 65 of the latter. In its view it was fundamental that judicial decisions remain predictable, and that in inter partes proceedings, both parties be guaranteed due process of law, which required equality of treatment.

[3.1] The EBA considers that there is no need in the present case to decide whether the .provisions of the European Convention on Human Rights and Fundamental Freedoms of 4 November 1950 directly apply to the proceedings before the EPO which is not a party to said treaty. Nor can a mere imprecise reference to such other Treaties be decisive in the case in suit.

Indeed the guarantee of due process of law requires primarily that the relevant provisions of law be applied to the facts under consideration; i.e. in the case in suit A 114(2) together with Article 12(2) and (4) RPBA, as well as A 111(1) last sentence respectively.

[3.2] On the one hand it is standing case law under A 114(2) and Article 12(4) RPBA that the admission of new requests in appeal proceedings, the purpose of which is mainly to review the decision of the department of first instance, is a matter for the board’s discretion and not a right of any party.

On the other hand similarly, under A 111(1) last sentence the Boards of Appeal have the power either to decide on the appeal themselves or to remit the case to the department of first instance for further prosecution. The Boards of Appeal have developed a body of case law regarding the criteria for exercising this discretion. In particular, when applying Article 12( 2 )(a) RPBA, boards usually consider that documents filed together with the statement of grounds of appeal by the appealing party adversely affected by the decision of the first instance are presumed admissible if the introduction of these documents does constitute a legitimate reaction to the reasoning underlying the appealed decision.

[3.3] Moreover both issues have been the subject-matter of debate before the Board of Appeal, and were also addressed by the petitioner in its submissions in writing. Therefore for this very reason the petitioner cannot now claim that its right to be heard was violated in this respect.

In any case the EBA is not empowered under the provisions of A 112a to decide on the merits of a case, which also necessarily implies that it has no power to control the normal exercise a board makes of its discretion in respect of admission of late-filed documents or remittal of the case under consideration to the first instance.

After former Opponent 1 withdrew its opposition the registrar erroneously notified the remaining parties that the case was to be considered closed. This error was corrected later on. The registrar has no judicial function to decide an appeal, so no particular rights can be derived from this error. Moreover an administrative action cannot exhaust the rights of an appellant […] to have its case decided by the competent board of appeal. Relying on this error as a ground is therefore manifestly void of merit, even leaving aside the fact that it does not appear in the exhaustive list of grounds of review contained in A 112a(2)(a) to (e) together with R 104 (a) and (b), respectively.

[5] The issue of the admissibility of the appeal was discussed at large in writing […] as well as, on the petitioner’s ,, own admission, during the OPs held before the Board of Appeal. This body decided that point on the merits, and the EBA cannot identify anything in that respect that could constitute a procedural defect falling under the list of grounds of A 112a(2) and R 104, which, as has been mentioned above […], contains an exhaustive list.

[6] To summarise, none of the grounds relied on by the petitioner has been made out and the EBA sitting in its composition under R 109(2)(a) rejects the petition for review as clearly unallowable.

The petition for review is rejected as clearly unallowable.

You can download the whole decision here.