Friday, 19 November 2010

T 2249/08 – Lost Without A Guide

This decision deals with an appeal by the opponent following the maintenance of the opposed patent in amended form. The Board came to the conclusion that the patent was to be revoked for lack of novelty over document D3, which the opposition division (OD) had refused to admit. The part I found most noteworthy concerns the opponent’s request for reimbursement of the appeal fee.

[6.1] The OD held that “no opinion can be reached as to whether D3 is prima facie relevant or not and hence exercises discretion and decides not to allow the novelty objection based on D3 into the proceedings (R 116).” […]. Thus it is apparent that the OD exercised its discretion to disregard “facts and evidence” presented belatedly, i.e. after a final date in preparation for oral proceedings (OPs). Such discretionary decisions are normally not subject to review, unless the decision was based on the wrong principles or was otherwise manifestly unreasonable (see CLBA 5th edition (2006), Chapter VII.D.6.6). Thus any finding of a substantial procedural violation through a discretionary decision also presupposes such grave errors, as opposed to mere errors of judgement (see CLBA Chapter VII.D.15.4.5).

Further, it is also required that the criticised discretionary decision was decisive for the outcome of the decision under appeal (see cases T 712/97, J 14/99, J 21/98, J 6/99, cited in CLBA Chapter VII.D.15.4.1)

[6.2] In the present case the decision of the OD was reasoned with the following arguments:
(a) no specific argumentation based on D3 with respect to lack of novelty ... had previously been submitted
(b) throughout the written procedure no indication had been given that D3 might potentially be considered relevant for assessing novelty...
(c) no full, uncontested translation of D3 being presented and the provided translation being ambiguous […].

[6.3] As to the arguments a) and b), the appellant submitted that D3 has been timely mentioned during the opposition procedure as being basis for a possible novelty attack.

As to the argument c, pursuant to R 3(3), a party is not required to file a translation of a document being in a non-official language of the EPO, unless being explicitly invited to do so. In that case, the party must be given a reasonable time limit to file a translation. Given that document D3 has been in the proceedings from the very beginning, both the OD and the proprietor had ample opportunity to demand a translation, and the fact that a translation was filed only during the OPs ought not have entailed adverse consequences for the opponent.

Accordingly, the appellant maintained that the decision of the OD not to admit D3 into the proceedings for the question of novelty was manifestly wrong, amounting to a substantial procedural violation.

Timeliness of D3 as a novelty attack on its own

[6.4] Document D3 was cited in the notice of opposition. The grounds for opposition were inter alia based on A 100(a), explicitly mentioning lack of novelty and inventive step. The facts and arguments accompanying the notice of opposition (referred to as F&A) further explicitly dealt with documents D1 and D2 as both depriving novelty of the patent in suit. D3 is first mentioned in the passages dealing with inventive step, being identified as the priority document of D2 and cited to illustrate the purpose of the spatula employed in D2.

As such, no independent novelty attack based on D3 per se is elaborated in the detailed grounds of opposition. On the contrary, it appears that the specific arguments for a novelty objection based on D3 were raised only in the OPs. This is also illustrated by filing only during the OPs a translation of the relevant parts of D3 […].

[6.5] However, as submitted by the appellant, […] the F&A states:
“In case ... [ the claims were to be limited in a certain manner] ... , the Opponent would object to such a limitation in view of the fact that the same would not be novel and/or inventive in view of the cited documents D1-D3”.
In fact, the claims were limited in the auxiliary request as foreseen by the opponent. Thus at least formally, D3 has been indicated as novelty destroying even in case of a more limited claim, so that argument (b) of the OD […] is unfounded.

The validity of argument (c) is equally questionable, as the wording of R 3(3) explicitly permits parties to file documents without translation. If doubts arise, the party must be given an appropriate time limit for filing the translation, which - when filed within the time limit - apparently cannot be regarded as late, and hence cannot be ignored. See R 3(3), last sentence:
If a required translation is not filed in due time, the EPO may disregard the document in question.” (emphasis added by the board).
[6.6] That said, argument (a) of the OD […] still has some merit even on its own. While it is true that arguments can normally be advanced at any stage of the proceedings (as opposed to new evidence, such as a new document), in the given case the new arguments could not have been verified by the OD without a translation. However, the possibility of demanding a translation as foreseen by R 3(3), but only at a relatively late stage, - e.g. due to an issue which arises only in OPs - clearly contradicts with the need for the parties to have their case completely prepared for the OPs so that the case may be ready for a decision (R 116 (1) in combination with R 111(1)).

The board notes that the Guidelines appear to be completely silent on the application of R 3(3), and the board is also not aware of any applicable case law. In the absence of clear guidelines in case of such a contradiction the OD cannot be reprimanded for having decided in a manifestly unreasonable manner or for having relied on the wrong principles (see also T 234/86).

[6.7] Further, it is also questionable if the decision under appeal would have had a different outcome, had document D3 been considered for the issue of novelty. After all, this document and the disputed parts were taken into consideration for the examination of inventive step […], and the OD found that the patent as amended is not obvious in light of these documents. Thus, it appears to the board that a fortiori these documents could also not have taken away the novelty of the patent as amended, as least in the opinion of the OD. In other words, the decision of the OD not to discuss D3 for novelty does not appear to have been decisive, hence the procedural violation, if any, could not have been substantial.

The fact the finding on novelty or inventive step could have been erroneous or that it has been overturned by the board does not alter the character of this finding with respect to the question of a substantial procedural violation.

[6.8] Based on the above, the board finds that the OD did not commit a substantial procedural violation which could justify the reimbursement of the appeal fee.

Arguments that a reimbursement would be equitable for other reasons have not been put forward […]

The request for reimbursement of the appeal fee is refused.

Should you wish to download the whole decision, just click here.