Wednesday, 12 January 2011

T 9/08 – Documentum Ex Machina

This case is interesting because the Board raised a substantial procedural violation of its own motion and remitted the case to the first instance although none of the parties had requested such a remittal.

[5.1] According to A 113(1) the decisions of the EPO may only be based on grounds or evidence on which the parties concerned have had an opportunity to present their comments.

[5.2] In the present case the contested decision found that the subject-matter of claim 1 as granted involved an inventive step. Under the heading “Inventive step (A 56)” the Opposition Division (OD) gave […] its reasoning on inventive step. It stated that with regard to the problem-solution approach
“[t]he closest prior art is identified in a fluorescent polymer having one or more repeating units of formula 1 and a molecular weight comprised within the claimed range. This polymer is described for example in document EP-A- 0 964 045”.
Thus, document EP-A-0 964 045 was clearly identified as representing the closest state of the art and starting point for the assessment of inventive step in the decision under appeal.

[5.3] The Board, after having inspected the content of the file, noted in its communication pursuant to Article 15 RPBA that the closest prior art document EP-A-0 964 045 had not been introduced into the proceedings before the department of first instance, but was mentioned for the first time in the written decision under appeal.

A comparison of the minutes and the decision under appeal further revealed that at the oral proceedings (OPs) before the OD held on 16 October 2007 the parties relied on the arguments in their written submissions […], so that even at the OPs before the OD it had not been discussed with the Parties that the closest state of the art in the assessment of inventive step was this fresh document.

Thus, in relying on a closest prior art document which had never been discussed with the parties, and which was cited for the first time in the written decision under appeal, the OD’s decision violated the parties’ right to be heard pursuant to A 113(1).

[5.4] For the above reasons the Board holds that the OD’s handling of the case constitutes a substantial procedural violation which justifies the remittal of the case to the first instance for further prosecution.

[5.5] The decision under appeal rejects the [opponent’s] objection against novelty in finding that the subject- matter of the patent in suit according to the then pending claims was novel and that document D12 supporting that objection was not admitted into the proceedings before the OD. Therefore, the [opponent] in any case had to file an appeal so that the reimbursement of the appeal fee, which was not requested, is not equitable.

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

To have a look at the file wrapper, click here.

This decision was also reported on Laurent Teyssèdre’s blog. If your command of the French language is sufficient, you should definitely have a look at Laurent’s post as well as his readers’ comments (don’t miss the one reporting a - hopefully rare - case of renvoi during first instance proceedings).