Friday, 4 February 2011

T 2291/08 – Prima Facie

This highly interesting decision deals with a situation where the Opposition Division (OD) introduced a new ground of opposition (A 100 (c)) of its own motion. The Board finds that it should not have done so, in particular because this ground had already been examined - and found not to be relevant - in an appeal against the refusal of the underlying application by the Examining Division (ED). There are also some very interesting statements on a possible case of partiality of an OD member and on how ODs should (or should not) be composed.

[2] The contested patent has been revoked for containing subject-matter that extends beyond the content of the application as originally filed (A 100(c)). This ground had not been raised by the Opponent in the notice of opposition, but had been introduced into the proceedings by the OD exercising its discretion under A 114(1). The question facing the Board in the present case is whether the OD had exercised its discretion correctly.

[3] Whilst the OD is entitled, pursuant to R 81(1) to examine grounds for opposition not invoked by the opponent, the circumstances in which an OD should consider raising a ground of its own volition are set out in the decisions of the Enlarged Board (EBA) G 9/91 and G 10/91. The view held by the EBA is that the notice of opposition, which includes a statement of the grounds on which the opposition is based (R 76(2)), has the purpose of establishing the legal and factual framework within which the substantive examination of the opposition in principle is to be conducted. This was considered important in order to give the patentee a fair chance to consider its position at an early stage of the opposition proceedings (see G 9/91 [6]).

[4] The EBA emphasised that consideration of grounds not covered in the notice of opposition is an exception to the above principle, and should only take place where prima facie there are clear reasons to believe such grounds are relevant and would in whole or in part prejudice the maintenance of the patent (G 9/91 [16]).

[5] The [patent proprietors] in the present case argue that the ground under A 100(c) vis-à-vis A 123(2) was not prima facie relevant, and thus should not have been admitted.

[6] It is relevant here that the application for the contested patent had initially been refused, and the decision appealed and heard as T 1190/01 before a different board of appeal from the present one. The Board in T 1190/01 [2] concluded that the disputed claim met the requirements of A 123(2).

[7] It is well established case law of the boards of appeal that a decision taken in examination appeal proceedings is not binding in subsequent opposition proceedings (see Case Law of the Boards of Appeal of the EPO, VII.E.1, penultimate paragraph). This means that, contrary to the suggestion of the [patent proprietors], the board’s decision concerning A 123(2) is not res judicata and was open to challenge, for example by an opponent citing A 100(c) in the notice of opposition; this would be comparable to the situations arising in T 1099/06 and T 167/93. The question though is whether the OD was right to raise the ground later of its own volition.

[8] The message of the EBA in G 9/91 and G 10/91 is clear; as stated above, new ground can only be introduced by an OD in exceptional circumstances and only when prima facie relevant. The [patent proprietors] are correct in stating that the expression “prima facie” means “at first sight” or “on the face of it”. This indicates that it should not be necessary to conduct a detailed examination of the new ground before determining whether or not it is relevant.

[9] The Board in T 1190/01 concluded that the amendments met the requirements of both A 123(2) and A 84. This is expressly stated in paragraph [2] of the Reasons for the Decision, which gives page 7, lines 28 to 30 as the basis for the amended feature “cooling at >10°C/s down to 480 and 750°C”. The cited passage in the description of the original application is part of a discussion about the different types of microstructures that can be achieved, and states that a “cooling speed of >10°C/s in the temperature interval 750-480°C encourages the formation of non equiaxed ferrite grains”. Thus, a cooling rate of >10°C/s from the hot deforming temperature down to the defined temperature range (Tavv), where coiling takes place, is not expressly defined in the original application. Nevertheless, examples of cooling rates >10°C/s down to this temperature range are disclosed (see for example Figure 2), with the maximum being 80°C/s. Although the claim does not now define an upper limit for the cooling rate, it might be argued that an appropriate value in practice would be readily apparent to the skilled person.

[10] The OD was also of the view that there was no support for the amendment of the claim to include the feature of “maintaining the austenite grain dimensions larger than 150 µm” in the hot deforming step. As indicated by the Board in T 1190/01, this feature is disclosed in the original application on page 7 (lines 30 to 31), where it is said to encourage the formation of non equiaxed grains. It would seem that this feature is indeed presented as being of relevance to all the steels contemplated by the application.

[11] Regarding claims 2 and 3, the OD was of the view that the omission of the expressions “as cast” and “a continuous pattern of the stress-strain diagram of the material” amounts to an unallowable generalisation contrary to A 123(2). The [patent proprietors] argue that the invention only concerns as cast structures […], and hence the claimed subject-matter must also relate to such steel strip, whether or not it is explicitly defined. The feature of “a continuous pattern of …” describes a property inherent to the steel product, hence failure to mention of this property neither adds nor detracts from the claimed subject-matter. There are thus plausible reasons why these amendments may be allowable.


[12] It is of no concern here whether, after detailed consideration, a claim has been amended to contain added subject-matter, but rather whether, given the exceptional circumstances of the late stage of the proceedings, the alleged objection is prima facie highly relevant.

[13] Given that the previous Board had expressly stated, together with a reference to a passage in the original application, that the amendments find support, and in addition, when the application as a whole is considered it is also plausible that the amended features were disclosed, it cannot be said that the allegations under A 100(c) are prima facie highly relevant.

[14] Consequently, the Board is of the view that introduction of the ground for opposition under A 100(c) by the OD of its own volition is contrary to G 9/91 and G 10/91 and, given the circumstances of the present case, constitutes a procedural violation.

[15] Since this was the sole ground cited by the OD for revocation of the patent, it is serious and justifies reimbursement of the appeal fee (R 103(1)(a)).

Main and First Auxiliary Requests

[16] The [patent proprietors] request that the decision under appeal be set aside and the granted patent (main request) or the claims filed with the grounds of appeal (first auxiliary request) be examined with respect to the grounds cited by the Opponent, without remittal of the case to the OD.

[17] Grant of the patent was opposed for lack of novelty and inventive step (A 100(a)) and for insufficient disclosure (A 100(b)). None of these grounds has been dealt with by the OD, and it is not the function of an appeal board to decide upon issues arising for the first time during the appeal proceedings. The case can only receive procedurally correct treatment if it is remitted to the department of first instance.

[18] Consequently, the main and first auxiliary requests of the [patent proprietors] are not allowed.

Second Auxiliary Request

[19] The [patent proprietors] request that the decision be set aside and the patent as granted or amended according to the first auxiliary request be remitted to an OD having a different composition. The reason given by the [patent proprietors] for this request is that the first examiner of the OD had “manifested an incontestable negative attitude against the patentability of the invention”, and that this examiner was also the first examiner of the ED that had dealt with the contested patent.

[20] The mere fact that the view held by an examiner on any particular issue differs from that of a party is per se insufficient for requesting a change in composition. In addition, the appointment of examiners to an OD is primarily an administrative function for which the director of the relevant department of first instance is responsible; the boards of appeal are limited to merely reviewing a case to establish whether the requirement of impartiality has been fulfilled (see T 838/02 [8]).

[21] Nevertheless justice must not only be done, but it must be seen to be done, and it is well established case law of the boards of appeal that a suspicion of partiality or bias may be sufficient to invalidate a first instance decision (see Case Law of the Boards of Appeal of the EPO, 6th edition 2010, VI.J.3), even though in the vast majority of cases in which suspicion of partiality is raised, no actual bias is established (see T 900/02 [4]).

In the present case, the combination of the following facts cast serious doubt on the impartiality of the OD:
- the merits of the disputed amendment had already been decided by a board of appeal;
- the ground under A 100(c) which led to revocation of the patent had not been raised by the opponent, but was introduced ex officio by the OD;
- the same primary examiner had acted in both decisions under appeal.

Such doubts are sufficient to declare the impugned decision null and void ab initio.

In addition, there should be no ground for dissatisfaction with the conduct of the further proceedings in this case, such as might be if the same OD were to revoke again the patent, even after an impeccably conducted proceedings.

[22] For these reasons the Board considers it appropriate to recommend that the case be heard by an OD having a different composition.

[23] The present case gives grounds for questioning whether the current arrangement, in which the same examiner may be responsible for drawing up the search report, drafting the European search opinion, and then carries out the function of first examiner in both the examination and ODs, can be considered judicially fair.

In particular, opposition is an independent procedure and is not to be seen as a continuation or extension of the examination procedure (see G 1/84 [9] and G 9/91 and G 10/91). A 19(2) requires that at least two members of the ED are replaced, and that the first examiner of the ED cannot become the chairman of the OD. However, this does not prevent the same examiner from carrying out the primary task of examining in both examination and opposition, which may lead to a continuity of views that blurs the independence of the two procedures.

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Myshkin said...

It is inconceivable that the drafters of the EPC were not aware that Art. 19(2) EPC allows the same person to be the first examiner in both the ED and the OD. If this is not "judicially fair", this only shows that it was never the intention to guarantee "judicially fair" first instance proceedings.

Anonymous said...

May be the next big change in the EPO will be the start of the BREAST project (Bringing Recours, Examination And Search Together).

Anonymous said...

I think that the real problem, as compared to the past when search and examination were carried out separately (even on different location), is that the search examiner is now also in the ED and OD. In fact, a search examiner may be more affected by the opposition proceedings than an ED or OD first examiner. The search is a work that the search examiner carried out alone (ED and OD are always a team of three or four). Think eg of the effect of relevant documents cited by the parties in opposition prioceedings that HE did not find...
Remember however that also EPI and industry were involved in EPC changes processes...