Saturday, 25 September 2010

R 9/10 – The Right Not To Remit

I feel that I will soon give up reporting on R decisions because we now know the story. Unless the lawmaker changes A 112a (which, even if envisaged, would take some years) or the Administrative Council opens up R 104, petition for review proceedings will be of little real interest for parties to appeal proceedings. Still, from time to time there are interesting details to be gleaned in those decisions of the Enlarged Board of appeal (EBA).

The present decision deals with a petition for review of decision T 893/07, which we have reported in an earlier post.

[5] The only ground relied on in the petition is A 112a(2)(c) which specifies a fundamental violation of A 113. The only applicable provision of that Article can be A 113(1) which provides that decisions of the EPO (which includes the Boards of Appeal) may only be based on grounds or evidence on which the parties have had an opportunity to be heard – in short, the right to be heard.

The petitioner’s case that its right to be heard was denied is based solely on the Board’s decision to refuse to remit the case to the first instance in accordance with the petitioner’s auxiliary request […]. That refusal, according to the petitioner, denied it the chance of dealing adequately, i.e. at two instances, with document D3.

[6] The EBA generally agrees with the petitioner’s submissions […] that the right to be heard means an adequate opportunity to be heard. However, these submissions do not affect the present case. On the issue which the petitioner itself calls the “main issue” […] – namely whether or not the case should have been remitted to the first instance - the petitioner was, as the petition itself acknowledges, heard. There was quite clearly no denial of the right to be heard on that issue since the petitioner relies on the summary in the decision (see T 893/07 [3.1]) of its own arguments and makes no complaint whatsoever that it was denied any opportunity to be heard on this issue.

[7] As mentioned above […], the petitioner’s case that its right to be heard was denied is based solely on the Board’s decision to refuse to remit the case to the first instance. Thus the petitioner’s one and only real complaint is not that it was not heard on the issue of remittal but that the Board of Appeal, after hearing the petitioner, did not order remittal. This appears not only from its reasons for setting the decision aside […], but also from its opening argument […] and its argument about R 106 that its right to be heard was breached by the refusal to remit […]. However, and apart from what is said in point [6] above, there are several reasons why the actual decision cannot be reviewed in petition proceedings.

[8] First, there is no right to a remittal, only a discretion which may or may not be exercised in a party’s favour under A 111(1) and which is the subject of considerable case-law. The petition itself acknowledges this in the first part of its long attack on T 111/98 […] and in its expression of hope that the EBA will “confirm the correct principles to be applied by the Board of Appeal” […].

[9] Second, the right to be heard which has allegedly been lost is that of being heard again at first instance. However, if there is no right to a remittal, there is no right to a further hearing before the first instance so no right to be heard can have been denied. If, as in this case, there was no denial of the right to be heard in arriving at the decision on the remittal request, then al1 arguments as to other steps which might have been taken if remittal had been ordered are speculative and irrelevant (see R 12/09 [8]).

[10] Third, the issue whether to remit or not was a matter of substance in the appeal proceedings which the EBA cannot consider in petition proceedings (see R 1/08 [2.1]). The petitioner itself demonstrates this by basing the petition on its disagreement with the Board’s interpretation of the case-law […].

Further, the EBA cannot in petition proceedings act as a third instance or second-tier appellate tribunal (see again R 1/08 [2.1]). However, that is exactly what the petition seeks when it asks the EBA for a decision setting out the principles to be applied by the Board of Appeal in a re-opened case […].

[11] For completeness, the EBA notes there are two other comments in the petition which are critical of the Board of Appeal - that it raised new objections in its communication only ten weeks before the oral proceedings (OPs) and that it raised another new objection at the OPs […]. Neither of those criticisms is used to support the alleged fundamental procedural defect as such but, even if they were, the EBA’s view would not be different.

[12] The first of those points - that new objections were raised in the Board’s communication - cannot have any bearing on the petition at al1 since it appears from the petition itself […] that the petitioner overcame all objections in both the decision under appeal and the Board’s communication. The Board’s written decision confirms this by only dealing with the objection of lack of inventive step over D3 which was apparently first raised at the OPs.

[13] The second point - namely, that the objection of lack of inventive step over document D3 was only raised at the OPs - simply forms part of the misguided argument that the refusa1 to remit the case to the first instance was a denial of the right to be heard. Even if one accepts that the objection was raised late (and, since novelty over D3 was an objection raised in the communication, inventive step over D3 was at least a foreseeable objection from that point in time too), this appears to be the true reason why the petitioner wanted remittal. By “true reason” the EBA means that, although the petitioner observes that the objection was only raised at the OPs, its stated complaint is of inadequate opportunity to deal with D3 without remittal. D3 was raised in the communication ten weeks before the OPs, there was no request to adjourn those proceedings, and the petitioner came prepared to argue novelty over D3, did so and succeeded.

In truth, the request for remittal was only maintained, not because D3 was introduced ten weeks before, but because the Board, at the OPs, considered inventive step over D3 and ultimately found against the petitioner on that. But, as already explained […], the petitioner was heard on its request for remittal which was refused in the exercise of the Board’s discretion which was part of the substance of the case.

[14] Thus, even if the petitioner’s criticisms are elevated to the status of supporting arguments, there is no question of a denial of the right to be heard and no fundamental procedural defect.

The petition is clearly unallowable.

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


Myshkin said...

I'd like to note that Art. 112a EPC functions exactly as it should: to offer parties to appeal proceedings an opportunity to have fundamental breaches of the right to a fair trial corrected. In particular, it was never meant as a regular higher instance.

Oliver G. Randl said...

Fair enough. When little is to be expected, it is easy to come up to expectations. Still I think that with few amendments these proceedings could be made more useful.

pat-agoni-a said...

This case is indeed interesting. The petitioner wanted that the board remits the case so that the ground for lack of inventive step would be examined by the department of first instance. However, this could lead to a never ending story, since after a new refusal, a further appeal with an amended set of claims could follow, with a subsequent remittal, etc etc.

To avoid this, the boards would have to limit themselves to verify the decision of the department of first instance without allowing any amendments to the case! This would be the requested judicial review of the decision of the department of first instance.

However, if the parties are really well served by this, is another question. The discretion of the boards empower them to admit amendments which may lead to a reasonable, cost effective decision on the matter.

As the French say: "On ne peut avoir le beurre et l'argent du beurre."