Tuesday, 21 December 2010

T 1098/07 – A Pardonable Error

This decision deals with an appeal by the opponent following the rejection of the opposition by the Opposition Division (OD). The Board comes to the conclusion that there is no reason not to maintain the patent as granted. It then deals with a request for reimbursement of the appeal fee, based on a procedural violation. The Board is of the opinion that not all failures to consider evidence are substantial procedural violations: some are more pardonable than others.

[8.1] The [opponent’s] contentions in this regard concern the decision’s failure to mention or discuss in detail material and arguments submitted in the course of the opposition proceedings. Drawing E1 and photograph E2 are undoubtedly absent in the decision, as is any mention of the sketch drawn on a flipchart during the oral proceedings (OPs) before the Board. E3 to E11 on the other hand, though indicated, are not discussed in any detail.

[8.2] Failure to consider evidence will normally constitute a substantial procedural violation in that it deprives a party of basic rights enshrined in A 117(1) and A 113(1). Thus, in T 135/96 [3], ignoring documents (and arguments) relevant to inventive step was found to violate the party’s right to be heard. T 1110/03 made a similar finding where indirect evidence substantiating an allegation of fact relevant to novelty was disregarded.

[8.2.1] In this Board’s opinion, certain factors may nevertheless mitigate the severity of the violation. Thus, whether or not a failure of the decision to expressly mention material offered by a party in support of its case constitutes a substantial procedural violation, in particular of the rights to present evidence and be heard, will depend on the (prima facie) significance and evidentiary value of such material. Here the questions to be asked are: what facts is it intended to prove, how relevant is it to these facts and how likely is it that it will prove them? The circumstances under which the material is submitted - e.g. whether its role is made sufficiently clear and whether it is accompanied by arguments - may conceivably also play a role.

[8.2.2] Turning first to E1 and the sketch, the Board notes that E1 is merely an enlargement of part of a figure in D1, produced to better view its contents. The sketch is intended to illustrate the play of forces in the claimed coupling as understood by the [opponent]. Both serve merely as aids in distilling facts from the patent and the prior art and should rather be considered an integral part of the arguments. In as far as these are addressed in the decision […] the Board sees no reason why such aids should find an express mention in the decision.

[8.2.3] Photograph E2 of a coupling element was presented (together with E1) with the submission of 5 September 2006 “for easy assessment of the disclosures of D1”. E3 to E11 were said to pertain to an object sold by the Proprietor and were intended for “a better understanding/assessing of the ... patent” […]. As noted above, such material, which has no apparent link to D1 respectively the patent, can have little bearing on the relationship between D1 and the claimed invention. That is determined solely by the terms of D1 and the patent respectively. The significance and evidentiary value of this material are plainly limited.

What is more, this material was accompanied by little or no written comment. The only relevant passages are found in the letter of 5 September 2006 […] and 14 March 2007 […]. These state that it serves a better understanding of D1 and the patent, while describing E2 as “upper, front and side real size photographic views of the collar 11 of Figure 1 [of D1]”. No detail is given as to the material’s origin or how it might improve an understanding of D1 or the patent. Otherwise the submissions refer only to D1 (or D2) and the terms of the patent. Likewise, the minutes of the OPs before the OD, which are uncontested by the [opponent], also do not record extensive arguments concerning the above material.

In summary E2 to E11 thus, objectively, have little bearing on the main issues, and the [opponent] has made little effort to demonstrate otherwise before the OD. It appears unreasonable to the Board to require the OD to fully acknowledge, i.e. mention and discuss in detail, such prima facie irrelevant material, especially where the [opponent] has himself not made this effort.

The Board would agree that the OD’s failure to do so may not demonstrate the highest level of procedural rectitude. However, given that the underlying issue is addressed […], it is a pardonable error that has not deprived the [opponent] of any fundamental rights.

[8.3] As regards the further contention that the decision fails to address crucial arguments and (as a result) does not present a full line of reasoning, the Board firstly notes that according to established jurisprudence, cf. T 70/02, R 68(2) EPC 1973 does not require a decision to deal with all arguments in detail. In addition to the logical chain of facts and reasons, it should include some reasoning regarding the crucial points of dispute.

[8.3.1] In this regard, the decision does in fact address the central discussion concerning the terms “conical” and “tapering”, which E1 to E11 and the sketch were intended to illuminate, see reasons 5, first three paragraphs. The first paragraph summarizes the [opponent’s] arguments as “conical ... also encompasses tapered elements” and “a frustum-conical piece ... could also be used to describe a straight-sided one”. In the following paragraph the decision then refutes these arguments by stating that “anything that is defined as conical is by definition curved and tapered”. These passages are admittedly somewhat succinct. However, it shows that the OD identified as a central point of contention differences in interpretation of the term “conical” and that it understood this term in a narrower sense than just “tapered”. In the third paragraph this interpretation then serves to differentiate the invention from D1, which, in the division’s view, does not possess conically shaped tongues or a frustum-conical support element.

[8.3.2] These elements together constitute what the Board recognizes as a line of reasoning, which gives a fair idea of where the division saw differences between the invention and D1, and why. In the Board’s view this information should be sufficient to enable the adversely effected party to identify cardinal points of dispute - namely the differences in interpretation of “conical” - and to draft its appeal accordingly. Here also the Board is unable to detect a substantial procedure violation.

[8.4] The Board cannot allow the appeal on its merit, see above, nor has it found that a substantial procedural violation occurred.

As neither of the conditions for reimbursement of the appeal fee under R 67 are met, the request for reimbursement must fail.

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