Wednesday, 10 November 2010

R 15/09 – Blame Yourself

This petition for review deals with the revocation of the opposed patent by the Board of appeal in decision T 1068/06.

Claim 1 of the main request under consideration read:

1. An electric device (4) comprising a current terminal and a conductor arrangement consisting of a non-conductive carrier material (1) with at least one transparent electrically conductive layer (2), characterized in that at least one means (7) to be supplied with current is connected to the current terminal via the conductor arrangement, and the transparent electrically conductive layer (2) comprises a cross-sectional area of Asch and a specific resistance of δsch wherein the ratio is δsch/Asch ≤ 0.4 ohms/mm, preferably ≤ 0.3 ohms/mm.

The petitioner pointed out that its right to be heard had been violated. According to the petitioner, the decision to revoke the patent for lack of sufficiency of disclosure (A 100(b)) was based on arguments that had not been discussed during the oral proceedings (OPs) before the Board. The discussions were directed to the lower limit of the claimed δsch/Asch ratio and there had not been enough time to discuss the upper limit. Moreover, the auxiliary requests had not been discussed at all during the OPs. Finally, there had not been any decision on these auxiliary requests and on a request for an interlocutory decision filed by one of the opponents.

** Translated from the German **

Allowability of the petition

[4] As far as the fundamental violation of A 113 by not granting the right to be heard (A 112a(2)(c)) is concerned:

[4.1] Based on fundamental considerations, the Board has refrained from taking evidence concerning the concrete course of the debate during the OPs.

[4.1.1] The course of OPs is an event so unique and complex that it cannot be reproduced reliably and completely. One cannot expect the taking of evidence to produce an objective image of all the aspects that possibly influence the behaviour of parties during the proceedings. This is particularly true for hearing the parties to the proceedings as witnesses after the event and/or using their notes and reports. As a consequence, as far as possible, proceedings under A 112a should be based only on the minutes of the proceedings and the presentation of the facts in the decision to be reviewed. This limitation also serves the purpose of OPs as a forum allowing a direct and free personal dialogue between all the parties and the deciding organ and complies with general procedural principles, such as the principle of immediacy (Unmittelbarkeitsgrundsatz).

[4.1.2] Moreover, the attempt to reconstruct [the course of OPs] in a comprehensive and detailed way would not be in phase with the nature of the review proceedings, which are an extraordinary legal remedy (außerordentliches Rechtsmittel). As a matter of fact, the review of decisions of the Boards of appeal under A 112a being the last instance, it is in a strained relationship (in einem Spannungsverhältnis) to the principle of legal effect, and, therefore, to legal certainty. In order to take into account this strained relationship, the review of decisions of Boards of appeal under A 112a(2)(d) is expressly limited to “fundamental” procedural defects. This designates only such violations of rules which contradict the principles of legal proceedings in so fundamental a way that they are clearly visible and stand out from the detailed events of the OPs on which the parties do not agree.

[4.2] During the appeal proceedings the petitioner had competent advice. Its written and oral statements before the Board demonstrate this competence. As shown by the reasons for the decision on page 9 (and the petitioner has conceded before the Board that this is correct), the petitioner has made the following statement during the OPs:
“Moreover, it was obvious for the skilled person that both the length of the conductor arrangement and the current to be transmitted had an influence on the conduction losses. The skilled person could be expected to solve the problem of choosing an optimal cross-sectional area Asch of the conductive layer corresponding to the length of the conductor arrangement and complying with the condition δsch/Asch ≤ 0.4 ohms/mm mentioned in claim 1.”
This statement, which is not isolated but which has been made when discussing the fulfilment of the requirements of the EPC is hardly reconcilable with the assertion that during the OPs the discussions only concerned the undefined lower limit for the claimed domain δsch/Asch ≤ 0.4 ohms/mm (more precisely, the sufficiency of disclosure of the invention in view of the fact that the δsch/Asch ratio of claim 1 had no lower limit and comprised the impossible value 0). Rather this statement is closely related to the concrete reasons which are given in the decision for the lack of compliance with A 83 […].

The statement was made by the competent professional representative of the petitioner, who could be expected to be aware of the consequences of the questions and indications of the Board of appeal and the arguments of the adverse party, to question unclear explanations, to address possible misunderstandings and to oppose his own view of things to the views of the Board and the adverse party (see also R 12/09 [11]). This duty of co-operating in the proceedings in an active and responsible way was incumbent on the [representative of] the petitioner as a party to the appeal proceedings, all the more as such proceedings require more autonomy than grant proceedings. As a matter of fact, in inter partes proceedings, the neutrality of the deciding panel (Spruchkörper) and the principle of equal treatment of the parties require that the Board refrains from giving too extensive indications (allzu weitgehende Hinweise) both in OPs (see R 11/08 [14]) and in its communications to the parties (see R 3/09 [5.1-2] and R 12/09 [11,13]).

Even assuming (but the Board does not see any indication for this) that the representative of the petitioner was not aware of his duty to co-operate (Mitwirkungspflichten), this statement shows that he had the opportunity to present his comments on the reasons for the decision within the meaning of A 113(1) and has done so, quite to the point within the meaning of the reasons for the decision, even though he has not been successful.

[4.3] This is underlined by the fact that during the OPs the petitioner was given the opportunity of adapting its requests to the current state of discussion, which it has taken by filing a new first auxiliary request. In this request, very much like in all the other requests filed before, the domain δsch/Asch ≤ 0.4 ohms/mm has remained unamended, i.e. the very domain the allegedly undefined lower limit of which has been the sole object of discussion during the OPs, according to the petitioner.

[4.4] The necessity to decide on all factual requests (Sachanträge) in connection with the right to be heard (A 113) does not mean that these requests have to be formally invoked in the order given by the patent proprietor and that each and every factual and legal aspect has to be discussed individually with the parties. Rather, when there are several main and auxiliary requests, it is possible and it may even be mandatory, for reasons of procedural economy and in the interest of a factual discussion, to discuss at once a problem they have in common. In the present case, as long as it was clear or at least discernable to the parties that [the Board was dealing with] a reason for not granting the patent that was common to all requests, and as long as they had the opportunity to present their comments to this deficiency, at the latest during the OPs, the final decision according to which, as a consequence of this deficiency, none of the requests can be granted and, therefore, the patent is revoked, does not violate A 113(1).

[4.5] Given these circumstances, the core argument of the petitioner, according to which the upper limit of the ratio δsch/Asch ≤ 0.4 ohms/mm given in claim 1 was deemed decisive for the sufficiency of disclosure of the problem under A 83 for the first time in the decision, cannot succeed, neither from a factual nor from a legal point of view. Even if the upper limit of the δsch/Asch ratio was not concretely and/or explicitly addressed during the OPs (which is not confirmed by the written submissions (? Berichtsschreiben) of the representative of the petitioner), it is clear also from the statements of the petitioner […] that the requirements of A 83 were discussed during the OPs in a way that was not limited to the question of whether the lower limit of the domain was defined in an unambiguous way (and not limited to part of the requests of the patent proprietor, either). The corresponding arguments of the reasons for the decision […] do not refer only to the upper limit of this domain (and/or to only part of the requests).

[4.6] The petitioner’s impression that the reasons and the tenor of the decision are not supported by the results of the discussion of the factual and legal situation (Sach- und Streitstand) is obviously due to a misunderstanding of the meaning of the upper and lower limits of the δsch/Asch parameter in the debate and/or the reasons for the decision. This misunderstanding may have made the petitioner think that its auxiliary requests, which suffered from the same deficiency as the main request, had not been discussed and that the importance of the δsch/Asch parameter as far as its upper limit is concerned, had remained without discussion. However, each party bears the responsibility for subjective misunderstandings, even and particularly if they lead to surprises because the parties to the proceedings have been talking at cross purposes. A 112a cannot relieve (entbinden) a party of this risk (see R 4/08 [3.3] and R 12/09 [13]).

OPs serve the comprehensive discussion of the case, including new questions that may arise from the discussion, because otherwise written proceedings would be sufficient. However, when this discussion takes place, a Board of appeal does not have to address (ansprechen) all imaginable reasons for later decisions and discuss them with the parties, as long as their introduction (Einbeziehung) into the considerations have at least been addressed (angesprochen) in the proceedings and the awareness of their importance can be expected from a technically and legally (patentrechtlich) trained party (R 12/09 [11] referring to the established case law).

In the present case the importance of the upper limit for the sufficiency of disclosure of the invention was obvious and it was up to the petitioner to complete its explanations or at least to enquire. It may not have seen any reason to do so, but it is not possible to do so afterwards, once the decision is known, not even in review proceedings under A 112a.

[5] The alleged violation of A 112a(2)(d) together with R 104(b), because there had not been any decision on the patent proprietor’s request to maintain the patent within the scope of the auxiliary requests, does not exist:

The decision to revoke the patent necessarily contains the refusal of all auxiliary requests (directed to maintaining the patent in an alternative version).

[6] The alleged violation of A 112a(2)(d) together with R 104(b), because there had not been any decision on the request of one of the respondents for an interlocutory decision concerning the expression “transparent”, does not exist either:

Irrespective of whether the fact that a request for an interlocutory decision has been ignored can adversely affect, within the meaning of A 112a(1), parties which have not filed the request and irrespective of whether the interpretation of the expression “transparent” could possibly be the object of an interlocutory decision, it is within the discretion of the Board to take such an interlocutory decision or not to take it. By definition, such an interlocutory decision cannot be a factual or legal prerequisite for the final decision, which means that it cannot be relevant within the meaning of R 104(b).

[7] Thus the petition for review cannot succeed on the basis of A 112a(2)(d) together with R 104(b) or on the basis of A 112a(2)(c).

The petition for review is dismissed.

Should you wish to download the whole decision (in German), you can do so here.