Friday, 3 December 2010

T 608/08 – No Sliding

After the patent had been maintained in amended form, the opponents filed appeals. The Board decided to revoke the patent for lack of inventive step. One of the opponents requested the appeal fee to be reimbursed because it had been denied an overhead projector in the oral proceedings (OPs) before the Opposition Division (OD).

The denial of the overhead projector appears to really have upset the opponent; it requested that two questions be referred to the Enlarged Board (EBA):
(1) whether the OD had the right to decide an important procedural question, in particular the question if a party was allowed to base its presentation on slides (Folien), before the beginning of OPs and without hearing the parties;
(2) whether an overhead projector was a common means of expression and whether it could be denied to a party to the proceedings during the OPs without justification and in particular without hearing the parties.

*** Translated from the German ***

[10] The request for reimbursement of the appeal fee is dismissed because there is no substantial procedural violation as required by R 103(1)(a).

[11] The [opponent] invoked the fact that the OD had refused its request that an overhead projector (Tageslichtprojektor) be made available, already before the OPs and, therefore, had violated its right to be heard.

According to […] the minutes of the OPs drafted by the OD, the OD has made the following declaration:
“VW’s request for making available an overhead projector, requested in the belated written submission of January 14, 2008, is not granted because it is not clear from the written submission what is to be shown and because no corresponding documents have been enclosed.”
[12] The [opponent] has explained during the OPs before the Board of appeal that its request would have had to be granted, even though it had not given any corresponding indications what it wanted to show with the overhead projector.

The Board does not share this opinion and refers to the decision T 1122/01 [2] cited by the [patent proprietor]. In Regarding the similar legal situation in Germany, the Board refers to the explanations given in the commentary Schulte, PatG, 8th edition, §91, number [4].

Contrary to the explanation of the [opponent], the use of an overhead projector does not constitute the use of an oral means of expression but a visual means of expression. Admitting such technical means may be useful in the interest of a streamlined and more comfortable way of conducting the proceedings as well as a common practice, but as a matter of principle within the discretion of the deciding instance, as it is the latter who conducts the OPs.

A 116 is a concrete form of the general right to be heard under A 113(1) and only confers a right to oral expression, but not a right to use technical means. As the [opponent] was able to express itself during the OPs, the fact that no overhead projector was available did not violate its right to OPs or its right to be heard. These provisions also do not oblige the OD to “cursorily” check the slides brought along by the [opponent] during the OPs. It was up to the [opponent] to file the documents such as slides for overhead projection in time before the OPs. The [opponent] cannot construe an obligation of the OD to screen and examine [such slides] during the OPs.

The procedural situation is very similar to the situation where an accompanying person is to be allowed to make oral statements to concrete legal and technical questions. Concerning this matter, the EBA has decided inter alia (G 4/95 [headnote 2]) that such a request should specify the subject-matter of the proposed oral submissions and should be made sufficiently in advance of the OPs so that all opposing parties are able properly to prepare themselves in relation to the proposed oral submissions. In order to protect the adverse party against a surprising submission it is necessary to ensure, when technical means are used, that the party is protected against manipulative presentations using those means, which justifies the requirement that the subject-matter be made known in due time before the OPs and, if necessary, that hardcopies of the slides that are to be projected with the overhead projector be filed. However, the [opponent’s] request before the OD did not comply with these requirements. Thus the fact that no overhead projector was made available does not constitute a procedural error. Therefore, the Board does not have to deal with the correctness of the allegation of the [opponent] that the request for use of an overhead projector was actually “decided” before the OPs.

[13] Moreover, the [opponent] was wrong in invoking a violation of its right to be heard based on the fact that the person of the OD drafting the minutes (? Protokollführer) did not grant the request of the [opponent] for a short period of time for studying the new request situation, although the patent proprietor had been given more than an hour for preparing the new auxiliary requests. The person drafting the minutes had wrongfully justified this refusal by stating that the opponent always had to be able to express its opinion on any requests, even without having time for studying the requests.

In principle the Board agrees with the [opponent] that when the patent proprietor files new claims, an opponent has to be offered an opportunity to study the new request situation, which means that at least the OPs have to be interrupted, possibly for a long time. However, it has to be emphasized that this only applies if claims the content of which is new have been filed. In the present case the OD has maintained the patent on the basis of auxiliary request III, which means that a procedural violation which allegedly concerns requests IV to VI cannot have been causative for the decision.

Auxiliary request III differed from the main request in that the former characterising feature was incorporated into the preamble and in that the features of dependent claims 3 and 11, which formerly depended on claim 1 were added as characterising features: “… characterised in that the source of light is a LED and in that the LED projects in part into the entry opening of the cover part.”

As claim 11 of the main request also referred back to its claim 3, the new text of auxiliary request III does not establish a new combination of claims. To this extent the limiting combination of claims coincided with the subject-matter of the claims of the main request. Therefore, the preparation required for the OPs on the basis of the main request filed also automatically included the subject-matter of auxiliary request III. The admission of auxiliary request III, therefore, did not create a new procedural situation necessitating an interruption of the OPs by the OD. This distinguishes the present case from the case underlying decision T 783/89 cited by the [opponent] where a completely new wording of claim 1 introduced a new feature which was not explicitly disclosed, neither in the requests on file by then, nor in the application (see reasons for the decision, [VI] and [4.3]).

The Board does not ignore the fact that even a new combination of features from dependent claims can be so complex that the need for a fair trial and the right to be heard necessitate an interruption of the OPs in order to allow the adverse party to study the case, even though the requests on file already (partly) contained the subject-matter of the newly filed limiting combination of claims. However, in the present case there was no such procedural situation because the technical feature of dependent claims 3 and 11 were modest (anspruchslos) on a technical level and did not set the technical subject-matter of what was the main request until then into a new, more complex technical context.

Based on this legal situation, the Board did not deem it necessary to answer the question of whether a legal opinion expressed by the person drafting the minutes can constitute a decision of the OD and of whether the [opponent] has failed to bring about such a decision.

Therefore, it is certain that the impugned decision was not based on a substantial procedural violation within the meaning of R 103(1).

[14] The requirements for a referral of legal questions to the EBA under A 112(1) were not fulfilled. The corresponding requests of the [opponent] had to be dismissed and did not form a basis for a referral by the Board of its own motion.

The questions formulated by the [opponent] in its written submission dated May 19, 2010, cannot be referred, if only because there is no general answer to the questions to be referred, because they are formulated in a way that is ambiguous from the point of view of procedural law (prozessrechtlich) or because in the case under consideration the answer depends to a great degree on the concrete facts of the case.

From the above explanations of the Board it is clear that it is always possible to make the provision of an overhead projector dependent on the timely submission of the content of the planned projection before the OPs. This legal opinion of the Board is in keeping with the decision T 1122/01 cited above and the principles for the preparation of OPs as set out by decision G 4/95 of the EBA. The Board is of the opinion that the differing legal opinion held by the [opponent] is not a sufficient reason that would require a referral to the EBA under A 112(1).

As to the second legal question raised by the [opponent], whether it is necessary to interrupt the OPs when new claims are filed by the patent proprietor, the Board has not taken its decision based on a legal understanding that differs fundamentally from the opinion expressed by the [opponent]. This also holds true for combinations of claims taken from dependent claims, if they create a new procedural situation for the [opponent] to which it did not have to be prepared. The question of whether the actual situation is such a situation is a factual question that has to be answered taking into consideration the circumstances of the case. Such a question cannot be referred to the EBA. In any case the differing legal opinion held by the [opponent] is not a sufficient basis that would require a referral to the EBA under A 112(1). […]

The request for reimbursement of the appeal fee is dismissed.

NB: I am not quite sure what is meant by ‘Protokollführer’ of the OD, so I translated by ‘person drafting the minutes’. It could be that the chairman or a registrar of the OD is meant. If one of my readers can clarify this detail, please leave a comment.

Should you wish to download the whole decision (in German), just click here.


Myshkin said...

The Protokollführer is indeed the minute taker. That he or she is being referred to in the decision and not the chairman (Vorsitzende) of the OD is curious.

Anonymous said...

Indeed the Protokollführer is the minute taker, usually the 2nd examiner of the OD. The "Protokollführer" is referred to in the decision of the BoA because it is him that was mentioned by the appellant in its grounds of appeal...

Manolis said...

The minute taker is usually the 2nd member of the OD unless there is a legal member added in the division. In this case, according to file inspection, there was none. It is curious that reference is made the minute writer, may be the appellant saw the chairman taking notes and mixed up the roles...

Anonymous said...

The roles played by examiners in three-member Oral Proceedings are approximately as follows.

Besides taking down notes for the minutes, the 2nd examiner also acts as an usher and a gopher. IDs must be checked, new documents reproduced for all present and originals kept for the record. The 2nd examiner will often be the one who liaises with the interpreters, i.e., tell them what to generally expect, provide them with a copies of the file, and advise them on the special terminology of the field.

The Chairman traditionally sits in the middle, with the 1st examiner to his right. He is something of a Monsieur Loyal, as his role is really to keep the circus under control. Late filed requests, authority of the parties present, novel lines of arguments, special requests such as interventions by accompanying persons or PowerPoint presentations, ordering of the questions to be discussed (e.g. Main Request: 123(2), novelty, I.S.; 1st auxiliary: usw...), making sure that everyone's right to be heard was respected, announcing the division's opinion, and of course, pronouncing the decision at the end, are some of his tasks.

Statements made by parties are often reformulated or repeated by the Chairman to make sure everyone understood (especially when a party is mumbling and/or downright blithering - I have a lot of admiration for interpreters), and to provide a few seconds for the division to think. The Chairman is the member who usually talks the most. I think the secret is to never let yourself be rushed, i.e., stop the debates whenever necessary, even if it takes 5 minutes to get the crowd in and out of the room, and let the division decide on a course of action.

The 1st examiner has of course (?) the deepest understanding of the technical aspects of the invention and of the procedural history. He will often discuss or recapitulate the facts at the behest of the chairman.

Minutes are prepared by the 2nd member, and approved by him and the chairman (the presence of two signatures might explain the appellant's confusion). No involvement of the 1st examiner is foreseen, even though the draft may be informally circulated to him for avoiding any blatant nonsense or discrepancies with the grounds for the decision.

The Board stated:

A 116 is a concrete form of the general right to be heard under A 113(1) and only confers a right to oral expression, but not a right to use technical means.

I wonder whether the Board only have only beamers ans laptops in mind, or also considered the broader context of the nature of Oral Proceedings. I'm thinking here of the use of video conference facilities in examination OPs. I can't identify the chain of authority starting with the Articles of the EPC which would allow the President to authorize the use of ViCos in the conduction of examination OPs, i.e., something akin to Rules 2(1) and 127 EPC defining the technical means which can be used in the context of "Schriftverkehr".