R 20/09 – The R 104 Guillotine Again

Most readers of this blog are certainly aware of the fact that petitions for review hardly ever succeed. This is essentially due to the fact that the lawmaker gave these proceedings a very limited domain of application. A 112a(2), together with its implementing rule R 104, provides a very short list of grounds, and the Enlarged Board (EBA) recently ruined the hopes – based on the word “may” in R 104 – that this list was not exhaustive (see the recent post on R 16/09).

The present decision gives yet another case where the A 112a(2) + R 104 guillotine was applied. The petitioner complained that it had been refused a fair trial in case T 2351/08. The case underlying the petition appears to be one of those (hopefully, rare) cases where things get out of hand and accusations fly. Apparently, the petitioner suspected Board members of having “fixed” the minutes, in particular to prepare disciplinary proceedings against one of its representatives (The file is not very clear on this matter but it could be related to the fact that a person accompanying the representative declared at the end of the oral proceedings (OPs) that he had recorded the proceedings, which is strictly forbidden.) Obviously, most of the relevant documents are not open to public inspection, so it is impossible to have a clear idea of what was going on. Be that as it may, the petition did not survive the guillotine test.

The petitioner filed two petitions: a first one “by way of precaution”, based on the minutes of the OPs, and a second one “merely by way of precaution”, after it had received the decision in writing.

*** Translated from the German ***

[3.1] In the first request/submission the petitioner asserted that a substantial procedural violation falling under A 112a(2)(d) had occurred because there had been, as the petitioner put it, a “violation of the right to a fair trial (Verfahrensgestaltung)”:

• The minutes of the proceedings did not contain a summary of the facts (R 102 (f)) and the indication of the reasons (R 102 (h)) was missing. Therefore, the decision concerning the appeal could not be understood at all. This could not have been objected to during the proceedings on September 8, 2009.

• The Board had not accepted to insert certain legally relevant statements of the representative of the petitioner into the minutes of the proceedings.

• As far as the Annex A of the request for insertion into the minutes (Protokollierungsantrag) was concerned, the minutes contained a presentation of the course of the OPs and of the requests filed by the petitioner that was abbreviated beyond recognition.

• The minutes did not contain any decision on the requests that had been filed orally or in writing during the proceedings.

• The Board was not competent for excluding documents from public inspection.

• Notwithstanding relevant remarks made by the representative of the petitioner, the Board could not be brought to act in a comprehensible way and to hear or to take into account the evidence produced. As the Board had not made statements as to the substance during the proceedings, it was not possible, in spite of repeated remarks, to find out whether the Board had “finally intellectually assimilated” a certain submission of the representative which was decisive in the eyes of the petitioner.

[3.2] None of these procedural shortcomings – assuming that the elements cited are indeed shortcomings and have existed – is cited in R 104 or elsewhere in the Implementing Regulations. The representative of the petitioner appears to have missed that, according to the express wording of A 112a (2)(d), other severe procedural defects can only be considered if they are cited in the Implementing Regulations.

The assertion that the minutes did not contain any decision on the requests that had been filed orally or in writing during the proceedings, is, as regards content, only an objection against the minutes (Protokollrüge), that is to say an objection against the incompleteness of the minutes of the proceedings, and does not qualify as substantiation of a severe procedural defect under R 104 (b), all the more as the petitioner did not indicate any concrete request that was relevant for the proceedings and which had not been decided upon.

[3.3] The assertion of the petitioner that it had objected to this “way of proceeding” during the OPs as a violation of its right to be heard (A 113, A 112a(2)(c)), which was also stated in the minutes – although “mutilated beyond recognition”, cannot change this: deficient minutes, lack of competence of the Board for deciding on exclusion from public inspection, or the impossibility of knowing whether the Board had “finally intellectually assimilated” a certain submission of the representative cannot constitute a violation of A 113 within the meaning of A 112a (2)(c), even on a conceptual level, and, therefore, even less so a severe violation of this provision.

[3.4] In its second statement of grounds for the request […] the petitioner pointed out:

[3.4.1] During the OPs, the representatives of the petitioner came to the conviction, in view of the announcement of the Board that it would refuse to hear and to take into account evidence that had been produced, scientific publications and the arguments of the petitioner, that the right of the petitioner to be heard had been violated; they insisted that the deficiency had to be remedied. A petition for review would not become necessary if the Board granted the right to be heard and took into consideration the facts, evidence and arguments presented when drafting its decision.

As regards content, this does not go beyond the request dealt with above under paragraph [3.3]. Whether facts, evidence and arguments are taken into account concerns the correctness of a decision as regards its substance, whereas A 113(1) relates to the question of whether the parties to the proceedings were able to express themselves in respect of the reasons on which the decision is based, irrespective of whether they are correct or not. The nature of the reasons is often only clear from the (written) reasons; as a matter of fact, there is no obligation to raise objections under R 106 in this case, because “such objection could not be raised during the appeal proceedings”. Alternatively, if the basic reasons of the decision to be taken can be foreseen during the proceedings, one has to assume that the parties were able to express themselves in this regard within the meaning of A 113(1), unless they were hindered from doing so by concrete circumstances, such as a certain way of proceeding of the Board during the OPs. Whether a representative assesses things differently and, therefore, feels compelled to raise an objection during the OPs is not relevant, neither for [answering] the question of whether this objection qualifies under R 106 (a question that the Board expressly leaves open here, because it is not relevant for the decision […]), nor for the requirements under A 113(1), that is to say that the reasons under considerations have to be decisive for the decision. The petitioner did not make any statement in this respect.

[3.4.2] Moreover, the submission points out that one could not seriously consider that reasons for the decision posted on February 19, 2010, at a time when the first request for petition was already known, have anything to do with the decision announced on September 8, 2009, or could support the latter […]. The reasons for the decision omitted facts that were relevant for the decision but contained unimportant passages which were legally irrelevant with respect to the decision […]. Neither in the OPs nor in the reasons for the decision had the Board dealt with the relevant assertions of the petitioner as given in its submission of September 7, 2009 […]. The intrinsic contradictions contained in the decision announced on September 8, 2009 had not been dissolved by the reasons for the decision but had even been amplified.

This submission is limited to sweeping statements and judgments that are not understandable on a factual level (sachlich nicht nachvollziehbar). It was not indicated, nor is it obvious, which of the grounds for setting aside a decision mentioned in A 112a and/or R 104 had been realized. As a general rule, an (alleged) deficiency of a decision of a Board of appeal in respect to its substance does not fulfil the requirement.

[3.4.3] The petitioner further submitted that the reasons given for rejecting the request for insertion into the minutes of the statement of the [patent proprietor], also contained in Annex A, were incorrect and were contradictory with respect to the other entries into the minutes (Protokollierungen) which partly pursued objectives that were alien to the proceedings, that is to say the initiation of disciplinary proceedings against one of the representatives of the petitioner. Such proceedings were indeed initiated following a complaint (Anzeige) of the representative of the patent proprietor and respondent. It appeared likely (liege nahe) that there had been a consultation between the latter and the chairwoman, which had left the Board shortly after the drafting of the reasons for the decision. The chairwoman had abused her powers to decide on the content of the minutes by not recording in writing legally relevant explanations of the parties and by recording “alleged declarations” which were not to be mentioned in the minutes, according to the rules established by herself […], in order to pursue objectives that were alien to the proceedings. There were no precise reasons for the exclusion from file inspection in the reasons for the decision. The way in which the Board proceeded, which incidentally exceeded the competence entrusted to it, was only understandable if such circumstances alien to the proceedings played a role.

As far as these submissions are to be understood as an objection of partiality of the chairwoman, it is to be noted that, in the absence of any objection of any of the parties under A 24(3) there has not been a decision on this matter. However, such a decision is a requirement for a situation (Tatbestand) to which A 112a (2) (a) is directed. The Board cannot see how a decision on exclusion from public inspection could give rise to a ground for setting aside a decision under A 112a(2) and/or R 104 c, and the petitioner has not brought forward any arguments in this regard.

[3.4.4] Finally the petitioner pointed out that, as could be seen from the reasons for the decision, the Board considered itself entitled not to take into account submissions and arguments of the petitioner as well as documents it had filed, as being belated. This was based on a wrong understanding of the case law with respect to A 114(2). Proceedings before the Board of appeal were similar to court proceedings (gerichtsähnliches Verfahren). As a matter of fact, an independent examination of administrative acts of the Examining and Opposition Divisions by the Boards were only possible if the principle according to which the Board was to examine [the case] of its own motion (Amtsermittlungsgrundsatz) was to be applied without any limitation, which means that, in application of A 114(1), a Board has to take into account all the matter at issue (Prozessstoff) in order to come to a decision that is correct as far as the substance of the case is concerned (materiell richtig). A 114(2) would not lead to a different conclusion. Rather, the Board had violated R 116(1) because the summons to OPs did not contain any indication to questions that had to be discussed and no point in time before which preparatory submissions had to be filed. As a consequence, the Board had not prepared the OPs as required, which in itself was sufficient for making it impossible not to take into account facts and evidence as well as grounds for opposition and appeal, lest the right to be heard of the petitioners then acting as appellant be violated. Article 10a of the Rules of Procedure, which had not been adopted by the Contracting states as such but only by the President, was based on a misunderstanding in regard of the position of the Boards. Moreover, Article 18 RPBA provides that the Rules of Procedure shall be binding upon the BA, provided that they do not lead to a situation which would be incompatible with the spirit and purpose of the Convention. Discretion as to whether the Board admits grounds of appeal, and if so, which grounds, and discretion as to which facts and evidence the Board takes into account and, therefore, which facts it decides upon, would lead the principle according to which a Boards is to examine [a case] of its own motion (Amtsermittlungsgrundsatz), as well as the spirit and purpose of the EPC expressed therein, ad absurdum and was, therefore, not covered by the EPC. The Board had not considered any of this in the proceedings; the reasons drafted by the chairwoman of the Board were also silent on this topic. Thus the decision was deficient for having violated the right to be heard and was to be set aside […].

Apart from the fundamental misunderstanding concerning the regulatory content (Regelungsgehalt) of A 114 expressed in this reasoning, a violation of this provision is not a situation (Tatbestand) to which A 112a (2) (a) and/or R 104 are directed. In the absence of arguments, it is not comprehensible how this [situation] constituted a violation of the right to be heard. Moreover, the Board once more points out that the correctness of a decision, as regards its substance, is not object of proceedings under A 112a, and that – quite in keeping with the predominant practice of national courts – under Article 5(5) RPBA the mandatory written reasons for decisions of Boards of appeal are “drafted” by the rapporteur and not by the chairman or chairwoman, who (together with the Registrar) authenticates the decision by signature (R 102). Also, the Rules of Procedure of the Boards of Appeal are not adopted by the President (of the EPO or any other institution). In this respect the submissions (of the representative) of the petitioner are inconsistent with the applicable law.

[4] It is obvious from all that has been said that neither the proceedings preceding the impugned decision of Board 3.3.04 nor the decision itself allow to bring to bear any of the grounds for setting aside the decision mentioned under A 112a and/or R 104 and invoked by the petitioner.

The request for petition is rejected as being clearly unallowable.

Should you wish to download the whole decision, you can do so here.

NB: This decision is being published simultaneously on Laurent Teyssèdre’s blog.