T 1077/06 – The Right To Be Heard, Again

[1] Against the grant of the patent in suit four oppositions were filed. The four opponents cited in their respective notices of opposition thirty documents, D1 to D30, which were presented in a consolidated list submitted by the patent proprietor as annex to a letter dated 6 November 2003.

[2] With additional submissions opponents 01, 02 and 03 filed nine additional documents. The patent proprietor added these documents to the already existing list as documents D31 to D39 and provided an updated list […]. In addition, opponent 02 […] filed a first “Research report Product Development”, referred to as document D46 […].

[3] On page 2 of his letter of 6 May 2005 the patent proprietor argued:

“Documents D31 to D39 and the test results submitted by opponent 02 were filed too late, because there were not filed within the opposition period. It is requested not to admit these documents and test results into the opposition proceedings.”

This passage is followed by a statement of why the Opposition Division (OD) should allow this request. With the same letter the patent proprietor filed four additional documents (D40 to D43). Document D44 was cited by opponent 04 in its note of Opposition […] and was subsequently referred to in the proceedings by this number.

[4] In a communication […] annexed to the summons to attend oral proceedings (OPs), the OD informed the parties that they considered the newly filed documents to be prima facie relevant and therefore to be admissible into the proceedings. However, they continued that “[t]he admissibility of the new evidence will be further discussed at the OPs.”

[5] OPs were scheduled for 28 to 29 March 2006. The date for the parties to make final submissions in preparation for the OPs was set to be no later than two months before this date.

[6] With letter dated 25 January 2006 opponent 02 filed a second “Research report Product Development”, referred to as document D47 […]. With letter dated 27 January 2006 the patent proprietor filed a new document D45.

[7] According to the minutes of the OPs before the OD, […] at the OPs the Chair announced “ … that all citations D1 through D27, D29 through D41 and D44, and all the experimental evidence provided by 02 were admitted into the proceedings as they were regarded prima facie as particularly relevant (pursuant to A 114)(1).” The minutes do not indicate that the parties were heard on this issue before the Chair announced this decision.

[8] After the announcement the Chair summarized the parties’ requests. The patent proprietor’s request not to admit documents D31 to D39 and D46 […] was not mentioned. The minutes state that all parties confirmed their requests […]. Only after the OD had decided that Patent proprietor’s main request before it contravened the requirements of R 57a, did the patent proprietor protest against the admittance of the late filed documents. The discussion was focussed on the admittance of opponent 02’s second “Research report Product Development” D47. The [corresponding] sentences […] of the minutes read:

“The admission of the experimental data of 25.01.2006 thus was not considered as a procedural violation by the OD but only as its prerogative under A 114. The Patentee was informed of his right to appeal to a higher instance.”

[9] The decision under appeal deals in point (I) with the “admissibility of documents D31-D43, D45 and technical evidence of 25.01.06 by 02.

In point (I)(1) of its decision the OD deals with patent proprietor’s arguments submitted with his letter dated 6 May 2005.

In point (I)(2) of its decision the OD comments on the arguments submitted by the patent proprietor at the OPs after the decision was announced by the Chair that D1 through D27, D29 through D41 and E44, and all the experimental evidence provided by O II were admitted into the proceedings.

In point (I)(3) of its decision the OD expresses its surprise that the patent proprietor objected to the admittance of opponent 02’s second “Research report Product Development” […] at such a late stage of the procedure, as this would have been possible earlier, firstly directly after the filing of this document and secondly at the OPs when the Chair summarised the parties’ requests. Finally it is remarked that the document has “not been considered for the present decision.”

A reasonable interpretation of this part of the decision is that the parties were not heard by the OD on this issue at the OPs before the Chair announced the decision to admit, among others, documents D31 to D39, D46 and D47 into the procedure.

[10] 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. This provision is a guarantee for the parties that proceedings before the EPO will be conducted openly and fairly (cf. J 20/85 [4] and J 3/90 [11]). The right to be heard is intended to ensure that the parties to proceedings are not taken by surprise by grounds mentioned in an adverse decision (cf. decision T 892/92 [2.1]).

The parties may present their comments either in writing, or orally during OPs. The express right to OPs is enshrined in A 116.

[11] The minutes of the OPs before the OD do not contain an indication that the parties were heard on the issue of whether or not documents D31 to D39, D46 and D47 should be allowed into the procedure. According to the minutes, the Chair of the OD announced at the very beginning of the OPs that documents D1 to D27, D29 to D41, D44, D46 and D47 were admitted into the proceedings.

[12] The Board at the OPs asked the parties for their recollections of whether or not the parties at the OPs before the OD were heard on the issue of allowing documents D31 to D39, D46 and D47 into the procedure. Those parties, respectively their representatives who were present at the OPs before the OD, namely opponents 01 and 03 […], confirmed that the parties were not heard before the Chair made the announcement to allow the documents in question into the procedure.

[13] Contrary to the argument presented by the [opponents] it was not necessary for the [patent proprietor] to file a renewed request at the OPs before the OD not to admit the documents, as this request was made in writing on 6 May 2005.

[14] [The opponents’] argument, that a party’s right to be heard is satisfied if said party, which had requested OPs according to A 116, has had the opportunity to argue in writing, cannot be followed by the Board. If this interpretation of A 113(1) were to be followed, the parties’ right to OPs safeguarded by A 116 would be redundant, with the unacceptable consequence that an OD or a Board of Appeal with regard to a controversial issue discussed during written procedure, would be entitled to give a decision on this issue right at the beginning of OPs without hearing the parties (see T 594/00 [4]).

[15] Moreover, the [opponents] emphasised that only one of the documents in question, namely D31, was actually referred to in the decision under appeal. Thus the decision is not therefore tainted by the disclosure in the remaining ten documents concerned.

The Board does not agree that the actual number of documents which have been referred to in the appealed decision is a factor which has decisive weight in a decision as to whether or not the patent proprietor’s right to be heard has been violated.

[16] As a consequence, the decision under appeal is based on grounds and evidence on which the patent proprietor has not had an opportunity to present his comments during the OPs and thus contravenes the requirements of A 113(1).

[17] According to Article 11 RPBA, “[a] Board shall remit a case to the department of first instance if fundamental deficiencies are apparent in the first instance proceedings, unless special reasons present themselves for doing otherwise” (emphasis added by the Board). When deciding whether or not to remit the case according to A 111(1) the Board examined if such special reasons exist in the present case.

[18] According to the case law of the Boards of Appeal the violation of the principle of the right to be heard is considered as a fundamental deficiency in proceedings (see T 125/91).

It is, however, also acknowledged that there is no absolute right of a party to have every aspect of a case examined in two instances (T 133/87 [2]). Other criteria, e.g. the general interest that proceedings are brought to a close within an appropriate period of time, have also to be taken into account.

[19] The [opponents] argued that, considering the aspect of procedural efficiency, it was within the discretion of the Board, even if new evidence was submitted during the appeal procedure, to allow it into the procedure and to decide the case without remitting it to the department of first instance. Attention was directed to decision T 416/07 [9-11], where this Board in a different composition, for reasons of procedural efficiency, had decided not to remit a case to the department of first instance but to decide itself.

In the case underlying decision T 416/07, the Board had to decide whether or not several documents submitted by the appellant/opponent after expiry of the time limit according to A 99(1), should be admitted into the procedure. Two of these documents had been filed at the OPs before the department of first instance and had not been admitted into the procedure by the OD. The remaining documents had been filed with [… the] appellant/opponent’s ground for appeal. The appellant/opponent had requested that the case be remitted to the department of first instance should all these documents not be admitted into the procedure.

The Board decided to admit the two documents submitted by the appellant/opponent at the OPs before the OD (T 416/07 [2-3]), but not to admit the documents submitted with its grounds for appeal (T 416/07 [5-7]). Finally the Board decided, for reasons of procedural efficiency, not to remit the case to the department of first instance (T 416/07 [9-11]).

As is apparent from the above the factual and procedural situation underlying decision T 416/07 is different and therefore the Board does not consider it to be relevant for the present case.

[20] Since the patent proprietor whose right to be heard has been violated requests the remittal of the case to the first instance, in the specific situation of the present case this request has precedence over apprehensions regarding an undue delay of the procedure (see T 594/00 [9]).

[21] The opponents argue that remittal to the first instance for further consideration of the question of admissibility of documents D31 to D39, D46 and D47 would be of no practical use and would only delay the procedure and prolong the period of legal uncertainty, as the patent proprietor has already made its arguments in writing, which have already been dealt with by the OD in the decision under appeal and which have been found to be insufficient to make a case for the non-admission of these documents.

However, the reasoning for this decision was given in writing after the OPs and is based on grounds and evidence on which the patent proprietor did not have an opportunity to present his comments in accordance with A 113(1) as they were not given the opportunity at the OPs to address this issue. Thus, any argument the patent proprietor wanted to present in this respect at the OPs, which it considered to be pertinent for the decision, could not be made, and is therefore neither dealt with nor mentioned in the decision under appeal. One cannot know if, and to which degree, the patent proprietor’s arguments, if allowed, might have influenced the decision taken by the OD. Since the patent proprietor’s right to be heard has been violated by the OD, being an authority of the first instance, this violation cannot be repaired by hearing the patent proprietors on this issue before an authority of the second instance, but only by remitting the case to the first instance (see T 594/00 [10]). This situation is not therefore one which lends itself to the application of the principle that there is no absolute right to a party to be heard at two instances (see T 133/87).

[22] The opponents moreover argued that the patent proprietor has abandoned his right to be heard by not attending the OPs before the Board. The Board cannot identify a legal basis in the EPC from which it could be concluded that a party, appealing against a decision of a department of first instance, which had been taken in violation of its right to be heard, when it does not appear at OPs before the department of second instance has retrospectively abandoned its right to be heard before the department of first instance.

[23] The Board concludes that there are no special reasons in the sense of Article 11 RPBA not to remit the case. It is emphasised that the precise and correct definition of those documents which belong to the state of the art is of utmost importance for the realization of a legally correct and reliable procedure before the departments of all instances of the EPO. Therefore, the case is remitted to the first instance for further prosecution (A 111(1)). […]

I tend to agree with the opponents: the present remittal, although justified on formal grounds, appears to have been a mere waste of time. 

By the way, in the meantime the OD has revoked the patent again, but this time, so it seems, the patent proprietor did not appeal the decision.

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