This petition for review was filed by the patent proprietor after its patent had been revoked in decision T 764/06. The proprietor was upset by the decision of the Board not to admit any auxiliary requests during the oral proceedings (OPs), a decision taken before the proprietor could explain the subject-matter of the auxiliary requests.
The petitioner based its petition on two alleged defects: a violation of the right to be heard (A 112a(2) (c) and A 113) and a violation of the principle of impartiality, A 112a(2)(d) and R 104. We will deal only with the first defect today and leave the impartiality argument for a subsequent post.
[2.1] […] In its oral submissions the petitioner fastened on the fact that it had been heard only on admissibility issues in general and not on the subject-matter of the proposed auxiliary request, and could not comment on the substance; this amounted, in its view, to a violation of its right to be heard. In addition, the fact that the Board of Appeal had refused the filing of auxiliary requests without knowing the subject-matter thereof amounted to an abuse or a misuse of discretion and also to a breach of the principle of impartiality because in such circumstances it was general case law of the Boards of Appeal to admit new requests.
The right to be heard
[2.2] The petitioner focused on the allegation that the Board of Appeal misused its discretion because it decided in general without a proper set of claims in hand, leaving the petitioner no opportunity to comment on the subject-matter. In other words, if the Board of Appeal had let the petitioner expand on the technical issues of a precise set of claims, it would at least have stood a chance.
[2.2.1] Considering the facts […], the petitioner had been aware of the new challenge under A 100(c) raised by the opponent II in the grounds of appeal three years prior -to the oral proceedings (OPs) before the Board of Appeal. It had objected in its written submissions of 5 March 2007 and 29 December 2008, to the admissibility of this objection and also replied concerning its merits […]. The petitioner chose not to file an auxiliary request because it was sure that this new attack under A 123(2) was scientifically hopeless, as it argued during the OPs before the Enlarged Board (EBA) and had contended in its written submissions in appeal […].
It is thus important to note that it was only during the closing stages of OPs before the Board of Appeal, when it became clear that its main and sole request would not be allowed, that the petitioner started to express its intention to present an auxiliary request, and this evidently in the absence of a prepared set of claims in text form. Consequently the request of the patent proprietor is to be understood as a request for authorisation to file at least a set of claims as an auxiliary request.
Under these circumstances, where there had been opportunities to file auxiliary requests far earlier […], the Board of Appeal dealt with this last minute attempt by the petitioner to change the course of events, as an announced amendment to the case pursuant to Article 13 RPBA. This article leaves to the discretion of the Board of Appeal the question of the admissibility of amendments to a case.
[2.2.4] Article 13 RPBA makes a distinction between any amendment to a party’s case made after the filing of the grounds of appeal or the reply (Article 13(1)), and amendments sought to be made after OPs have been arranged (Article 13(3)). This article furthermore gives in paragraph (1) examples of criteria to be taken into consideration by the Board of Appeal when exercising its discretion: complexity of the new subject-matter, current state of the file and the need for procedural economy. In compliance with the wording of Article 13(1) RPBA which refers to the criteria as “inter alia” the boards of appeal have applied these criteria in different combinations depending on the circumstances of the case, considering them as exemplary and not cumulative. Therefore in the EBA’s view a situation may arise where the importance of one of them may outweigh the others.
[2.2.5] The question to be decided with respect to the alleged violation of the right to be heard, is whether the Board of Appeal decided not to admit auxiliary requests without giving the petitioner the opportunity to comment on the issues on which it based its decision.
[2.2.6] According to the petitioner, there was a debate about the forma1 admissibility of new requests; as it appears from its written submissions and as acknowledged during the OPs before the EBA, it was not limited in its pleading for the admissibility of auxiliary requests. It could explain the reasons why it intended to file this request, in particular the absence of a preliminary communication from the Board of Appeal informing it that the objection under A 100 c) would be admitted.
[2.2.7] It is evident from […] the Reasons of the decision under review that the criteria which weighed :’ with the Board of Appeal were as follows:
“It was clear in the given circumstances, that amended sets of claims, even if they were found to meet the requirements of A 123(2) (the same requirements as under A 100(c)), would have had to be examined in respect of all other formal and substantive requirements of the EPC, the board and the opponents not having had the opportunity for the necessary discussion of all issues raised by the amended claims, which were unknown to them and whose filing they didn’t expect given the late stage of the proceedings and the respondent’s behaviour up to then (cf. A 13 (3) EPC (sic): ‘Amendments sought to be made after OPs have been arranged shall not be admitted if they raise issues which the Board or the other party cannot reasonably be expected to deal with without adjournment of the OPs’)”.
[2.2.8] In other words, the Board of Appeal evidently exercised its discretion on the basis of all the exemplified criteria: the procedural stage which had been reached (terminally late), the subject-matter proposed to be admitted (an amended set of claims with the associated need for full examination) as well as the unexpectedness of the proposa1 […] which would militate against the need for procedural economy.
[2.2.9] Consequently, the EBA is satisfied that the petitioner could submit its arguments about the procedural issues on which the Board of Appeal based its decision to refuse auxiliary requests, especially the possible exceptional circumstances namely the reasons of a such late filing, put forward to justify the late filing.
[2.2.10] Seen against this background, the main argument of the petitioner, that no opportunity was given to speak to the subject-matter of the proposed auxiliary request, i.e. to the text of any amended claims to be filed is not relevant.
[2.2.11] It is the view of the EBA that it belongs to the discretion of the boards of appeal to decide which criteria are to have precedence according to the circumstances of the case.
[2.2.12] Much speaks, in the view of the EBA, for the criterion of lateness, in appropriate circumstances, to outweigh the criterion of the subject-matter to be submitted, in the exercise of discretion on admissibility of amended claims.
[2.2.13] In fact, the EBA sees no legal basis for an obligation incumbent on the Board of Appeal to hear the petitioner on substantive issues before deciding the issue of admissibility of a proposed auxiliary request if, given the particular circumstances of the case, these issues are found not to correspond to the relevant decisive criterion. A requirement for a party in any case to be invited to formulate and supply a text before any decision is taken as to the admissibility of a proposed auxiliary request, regardless of the relevant surrounding circumstances, would in the view of the EBA be to deprive the boards of appeal of the discretion explicitly provided by Article 13 RPBA.
[2.2.14] Equally irrelevant, and for the same reasons as set out above, is the petitioner’s argument that the Board of Appeal could not exercise its discretion in an informed and therefore appropriate way, in the absence of a knowledge of the text of the claims to be submitted.
[2.2.15] This argument on which the petitioner insisted at the OPs before the EBA, is in any case weakened by the statements in its written submissions, according to which, firstly the specific crystalline modification of the compound which was the subject-matter of the patent in suit could only be claimed in an auxiliary request by additional physical measurement parameters […] and secondly, in view of the statements, appearing no less than three times in the petition for review, that it had been indicated by the Respondent to the Board of Appeal during the OPs that the auxiliary request to be filed “will be based on the set of claims as originally filed”.
[2.2.16] These written statements, which contrast with the thrust of the petitioner’s oral arguments before the EBA, tend to indicate that neither the Board of Appeal nor the other party could have been in any appreciable doubt as to what the text of the proposed auxiliary request would be.
[2.2.17] Nor is it of any significance in the present case that the Board of Appeal had not issued a communication to inform the patent proprietor of its provisional opinion prior to the OPs. The critical issue had already been raised by the appellant in its statement of grounds of appeal […], three years before the OPs before the Board of Appeal.
As results from Article 12 RPBA and as already recalled in the decision R 21/09 […], the framework of the appeal proceedings in inter partes cases as in any judicial procedure is also defined by the written submissions of the parties. This is also a particular consequence of the general procedural principle of party disposition as defined for example in G 9/92 [1]. The communication of the Board of Appeal, if any, is a means at the Board’s disposa1 to streamline the appeal proceedings and above all the OPs. […]
[2.2.19] Consequently the EBA comes to the conclusion that the petitioner was fully able to explain its case as it stood at that time, when the only outstanding request, apart from the main request, was to be allowed to file an auxiliary request. Thus there was no violation of its right to be heard.
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