Tuesday, 4 January 2011

R 15/10 – No Foretelling

In this decision the Enlarged Board (EBA) deals with a complaint against Board 3.4.02’s decision to revoke the opposed patent (T 2030/07). The petition for review is based on an alleged violation of the right to be heard. As a matter of fact, the Board had found the third auxiliary request to lack clarity because the mathematical formula for the curvature Cp of a refractive surface of the claimed progressive multifocal lens - which the patent proprietor had introduced into claim 1 in order to overcome an objection of lack of clarity by the Opposition Division (OD) - was itself unclear. The petitioner argued that this decision was based on grounds on which it did not have an opportunity to present arguments.

[4] It appears from the petition itself […] that the petitioner was at the oral proceedings (OPs) before the Board of Appeal heard on the only matter with which the petition is concerned – namely, the mathematical equation in claim 1 of the petitioner’s auxiliary request 3. Indeed, the petition recites that the Board invited the petitioner’s representative to explain the use of the equation […], what the representative said by way of such explanation […], and that the Board understood what it was told […].

[5] The petition also refers to several passages in the written decision to show that the Board understood the petitioner’s submissions. The […] Board’s summary […] of the petitioner’s arguments in support of its auxiliary request 3 […] is an almost verbatim reproduction of the relevant text of the petitioner’s arguments in its letter of 30 March 2010.

[6] [In] point [5.2] of the “Reasons for the Decision” […] the Board of Appeal records that the petitioner referred to the minutes of the OPs before the OD and then summarizes the arguments of the petitioner and the opponents […]. The EBA also notes there are further references to the petitioner’s (and the opponents’) submissions on the equation in point [5.1] of the reasons.

[7] It is therefore beyond all possible doubt that the petitioner was heard in this respect. Indeed, as indicated above, the petitioner relies specifically upon both its written and oral submissions on this issue as recorded by the Board of Appeal in its decision. It is abundantly clear, and not disputed by the petitioner, that the Board heard the arguments of all parties and then decided that those of the opponents should prevail. However, the petitioner’s complaint is that in its subsequent written decision the Board of Appeal took a view of the clarity of the claim containing the equation which was not, but should have been, put to the petitioner so that it could have presented arguments on that view.

[8] However, as the EBA has already indicated in several previous decisions on petitions for review, such complaints do not disclose a denial of the right to be heard. There can be no such denial if a Board of Appeal, after hearing the appellant in ex parte proceedings, or both or all parties in inter partes proceedings, subsequently reaches its own conclusion which is then recorded in its written decision.

[9] That in the present case the Board did not at the OPs indicate, or invite comments on, its own conclusion cannot be a denial of the right to be heard, let alone a denial amounting to a fundamental procedural deficiency. In all but the most clear cut cases a Board will simply not know before it has finished hearing the parties what its own conclusion may be, let alone the reasons it may give for such a conclusion. However, even if that should not be the case, it would be contrary to a Board’s necessary neutrality to assist a party by giving possible reasons for deciding against it (see R 1/08 [3.1]; R 18/09 [14]). As is clear from the EBA’s jurisprudence, parties are not entitled to advance indications of the reason or reasons for a decision before it is taken (see the summary of the case-law in R 12/09 [11] and the several other decisions there referred to; and subsequent decisions R 15/09 [4]; and R 18/09 [14-15;18]).

[10] It follows that the petitioner’s further argument […] - that the reason why the Board of Appeal may not have given any indication of its own view was that the OPs were conducted under time pressure - makes no difference. Since the Board was quite correct not to have given the parties any advance indication of its decision, the suggestion (even if correct) that time pressure may have been the reason for not doing so is irrelevant: observing proper procedure, even if paradoxically for an improper reason, cannot amount to a procedural violation.

In any event, the EBA notes that the petitioner argues […] that it was entitled to be told of the Board’s view of the clarity of the equation “no matter whether there was time pressure”, which entirely neutralizes the time pressure argument.

Although T 506/91 […] was concerned with a different situation, the EBA agrees with the observation in the decision ([2.7]) that shortness of time is not in itself a violation of proper procedure.

[11] Similarly, the fact that the petitioner was surprised by the Board’s decision can also make no difference. The Board heard both parties and then made a decision by which one party necessarily had to lose. That party may, on reading the decision, be surprised and feel that, if it had known the reasons in advance, it would have argued against them. But such purely subjective surprise cannot with hindsight form the basis for claiming a right to advance notice of reasons for a decision (see R 12/09 [13]). While no finding on the point is required, the EBA notes that in fact the Board of Appeal’s decision shows that, in its own view, it concurred with the arguments of the opponents which had been first raised in the opposition proceedings and reiterated on appeal in which case, objectively viewed, the petitioner should not have been surprised […].

[12] The petitioner also argues, although only to support the alleged fundamental nature of the alleged procedural violation, that in its decision the Board of Appeal took a position which is beyond the well established principles of assessment of clarity under A 84 […]. Since the EBA finds that there was no denial of the right to be heard and therefore no procedural violation, there is no question of whether a violation was fundamental. However, it appears that the petitioner’s underlying concern, and the source of its surprise on receiving the Board’s written decision, was the (as the petitioner believes) more stringent than usual criteria used by the Board for assessing the clarity requirement of A 84. Such matters clearly concern the substantive case decided by the Board of Appeal and it is not open to the EBA in petition proceedings to review the correctness or otherwise of the Board’s decision on the application of substantive law (see R 1/08 [2.1] and the travaux préparatoires cited there).

[13] While again no finding on the point is required, the EBA also notes that in fact the Board of Appeal’s decision shows that, as regards A 84, it was the requirement of support rather than that of clarity which was not satisfied. It appears that lack of support was the thrust of the opponents’ argument with which the Board, after hearing all the parties, ultimately agreed […].

[14] The EBA accordingly finds the petition clearly unallowable.

Should you wish to download the whole decision or have a look at the file wrapper, just click here.

NB: I have reported on another aspect of decision T 2030/07 in a previous post.