*** Translated from the German ***
NB : All provisions refer to the EPC 1973.
[10] The [patent proprietor] points out that the Opposition Division (OD) has made a legal error in its application of R 71a(1) when it considered that [the patent proprietor’s] submissions concerning the prior use Elsen were new facts and did not admit them into the proceedings. [The patent proprietor] considers this to constitute a substantial procedural violation.
[11] According to R 71a(1), new facts and evidence presented after the final date [for making written submissions] mentioned in the summons do not have to be considered, unless admitted on the grounds that the subject of the proceedings has changed. Both R 71a(1) and underlying A 114(2) refer to late filed facts and evidence, but not to new arguments, which can be filed during the whole proceedings (T 131/01, T 926/07). Thus, according to the case law, new arguments [that are submitted] in order to support facts that have already been submitted have to be taken into account under R 71a(1), even if they are submitted after the date mentioned in the summons, and cannot be rejected on the basis of A 114(2) either (T 131/01, T 926/07). The Board is of the opinion that this has to hold true even when new counter arguments based on facts that have already been submitted, are presented.
[12] Thus in the present case what is decisive is whether the submissions of the patent proprietor during the oral proceedings (OPs) are to be considered as new facts or as new arguments.
“Facts” within the meaning of A 114(2) are alleged facts (Sachverhalte) which are to be proved by evidence, as the case may be (T 926/07 and Singer/Stauder, EPÜ, 5th edition, A 114, marginal number 48). In its opinion G 4/92 [10], the Enlarged Board acted on the assumption that new arguments are not a new submission as such but a corroboration of facts that have already been submitted. According to the Board, arguments comprise submissions which are directed against facts that have already been submitted (including evidence, as the case may be).
During the OPs the patent proprietor explained the reasons for which it was of the opinion that the public prior use “Elsen”, which had been alleged by the opponent, was not completely established by the late filed documents D14 to D21.
As can be seen from the minutes, the patent proprietor dealt with the factual assertions of the opponent and in particular with the contents of written submissions D15 to D18 and pointed out what it considered to be contradictions and deficiencies. By doing so, its submissions have evaluated the allegations of the opponents and, above all, the evidence which the opponent had filed in order to provide proof for the public prior use it alleged, and explained why it was of the opinion that, in contrast to the explanations of the opponent and the provisional opinion of the OD contained in the summons, there was no complete chain of evidence. The Board is of the opinion that such challenging the public prior use that has been alleged by the opponent cannot constitute the submission of new facts. Rather, these explanations correspond to the submission of arguments in view of facts that are already on file and evidence related thereto. The same situation occurs, for example, when a patent proprietor explains why, in contrast to the assertions of the opponent, the claimed subject-matter is not obvious over the written prior art invoked by the opponent.
As for the above mentioned reasons the explanations of the patent proprietor are to be considered as arguments, neither R 71a nor A 114(2) provide a legal basis for the decision of the OD not to admit the submission of the patent proprietor. Thus the OD has incorrectly decided not to admit the submissions of the patent proprietor concerning the proof for the alleged prior public use. This way of proceeding of the OD was based on the incorrect finding that the submissions of the patent proprietor corresponded to the presentation of new facts. The Board is of the opinion that this finding amounts to a misjudgement by the first instance.
However, a misjudgement is not the same thing as a substantial procedural violation (see also “Case Law of the Boards of appeal of the EPO”, 5th edition 2006, VII.D.15.4.5).
[14] However, the Board finds that the OD has committed a substantial procedural violation by issuing a decision that is insufficiently reasoned.
[15] The decision of the OD has been taken and reasoned before December 13, 2007, the date on which the revised version of the EPC entered into force. Therefore, when the question of whether the decision is sufficiently reasoned, it is decisive whether the requirements of the then applicable R 68(2), first sentence, have been complied with.
[16] According to R 68(2), first sentence, decisions which are open to appeal have to be reasoned. According to the established case law, a decision has to contain, in logical sequence, the essential factual findings and legal considerations which justify the tenor. Moreover, the conclusions drawn from the facts and evidence must be made clear. Therefore, all the relevant facts and evidence must be discussed in detail in the decision including all the decisive considerations in respect of the factual and legal aspects of the case (see T 278/00 [2]). The mere reproduction of the result of considerations does not satisfy the requirement of a reasoned decision.
The requirement to provide reasons for a decision aims at giving the parties and, in case, for example, of opposition appeal proceedings, the Board of appeal, the possibility of checking whether the decision that has been taken is justified in view of the decisive considerations, facts and evidence.
[17] In the section entitled “Prior public use” […] the OD explains which submissions of the parties it admits into the proceedings.
The submissions of the patent proprietor during the OPs were not admitted into the proceedings (see [10] to [13] above).
Concerning the evidence D14 to D21 the OD states that the patent proprietor is of the opinion that those exhibits have been filed belatedly and should not be considered, because they concerned different facts (Tatbestand), but that the OD is of the opinion that those exhibits are relevant for the proceedings and were admitted into the proceedings. The OD then further explains that the patent proprietor had not availed itself of the offer to hear witnesses, which had been made by the opponent in the notice of opposition, and that during the whole written proceedings the patent proprietor had not submitted any facts which could cast doubt on the prior public use, but quite to the contrary, had reacted by filing amended claims. The Board is of the opinion that these explanations concern the questions of whether the factual assertions of the opponent were challenged by the patent proprietor. Whether factual assertions are challenged or not concerns the question of whether these assertions need to be proven and does not allow to draw conclusions on the relevance of the evidence that has been filed in this context. Therefore, the Board is of the opinion that in this part of the reasons for the decision it has not been shown for which reasons the OD considered the late filed evidence nD14 to D21 relevant and has admitted it into the proceedings.
[18] In the subsequent section of the reasons for the decision, which is entitled “Novelty” […] the OD only makes the following statement on the prior art that is relevant for novelty:
“The prior public use of a spring brake actuator, as proven by documents D1 to D21, is considered to be the closest prior art.”
[19] According to the wording of this statement the OD has based its reasoning on a single “prior public use …, as proven by documents D1 to D21”.
However, during the first instance proceedings, several prior public uses have been invoked by the opponent. In the notice of opposition, it has already alleged two different prior public uses “Lenze” and “Jungheinrich”. In its later submissions dated August 9, 2005, and July 10, 2006, the opponent first invoked the delivery of an industrial truck of the “ERE” 20 type to the company Hubert Elsen GmbH & Co. KG. In its letter dated November 9, 2006, the patent proprietor has submitted that it considered this delivery to be a late filed new submission of facts for another prior public use.
Although the opponent has asserted that there were at least two different prior public uses, the reasons for the decision do not give any indication which prior public use has finally been considered by the OD. Nor do the reasons disclose whether the OD considered the alleged delivery of an industrial truck of the “ERE” 20 type to the to the company Hubert Elsen GmbH & Co. KG to be a complementary submission concerning a prior public use that had already been alleged in the notice of opposition or if it acted on the assumption – as the patent proprietor did – that this was a submission of new facts concerning a further prior public use. The global reference to documents D1 to D21 does not allow to understand which prior public use is referred to in the reasons for the decision, as none of the prior public uses is concerned by all exhibits D1 to D21.
Therefore, the parties and the Board cannot understand which prior public use and, as a consequence, which object that had been made accessible to the public by a prior use, is concerned. Therefore, it is not clear what forms the prior art under A 54(2) in the impugned decision. Moreover, the Board cannot check whether the OD has taken into account the patent proprietor’s objection referring to a belated submission of facts by the opponent.
[20] It can be seen from the reasons for the decision that the OD has come to the result that exhibits D1 to D21 prove a prior public use. However, the mere reproduction of the result of the consideration of evidence cannot be considered to constitute reasons. The OD would have had to expose, in the reasons for the decision, in logical sequence, on which evidence its conviction is based, and why. However, the OD has not done so. Therefore, the Board is unable to understand how the evidence has been considered by the OD and why it came to the conclusion that a prior public use is established by exhibits D1 to D21 and, therefore, part of the prior art. Therefore, the Board cannot examine whether the evidence has been considered in a way that complies with the basic rules for the law of evidence (Beweisrecht) and the procedures for taking evidence applicable at the EPO.
In this context, the Board wishes to point out that facts concerning a prior public use which have been asserted during opposition proceedings and which are relevant for the decision need to be proven unless they are undisputed. However, the OD can establish the circumstances of a case which are relevant for the decision of its own motion, even when the adverse party does not dispute the submission of facts or even explicitly admits it. This follows from the principle that the Office shall examine of its own motion (Amtsermittlungsgrundsatz) under A 114(1), according to which the EPO shall examine the facts of its own motion, without being restricted by the submissions or the requests of the parties. It is also part of this duty [for the EPO] to take evidence of its own motion. Investigations [made by the EPO acting] of its own motion may, for example, be required when the OD has justified doubts or when the factual assertions or evidence that has been submitted in order to support them are contradictory.
In its response to the opposition dated February 28, 2005, the [patent proprietor] has already contested the public nature of the alleged public prior use “Lenze” and the technical features of the object of the prior use “Jungheinrich”. In its decision he OD has referred to the fact that “during the whole written proceedings the patent proprietor had not submitted any facts which could cast doubt on the prior public use” but that “quite to the contrary [it had] reacted by filing amended claims”. Even though the [patent proprietor] has indeed filed new requests comprising amended claims in its letter dated March 16, 2007, this cannot be interpreted to be as an acknowledgement of the alleged prior public use on behalf of the patent proprietor. Moreover, it is not relevant whether the [patent proprietor] has availed itself of the opponent’s offer to hear witnesses. Whenever, during opposition proceedings, parties submit or offer evidence, it is the duty of the OD to decide on its admission or rejection, taking into account the relevance of this evidence (T 142/97).
[21] In the impugned decision the assessment of novelty was only based on the “prior public use according to D12” and the spring brake actuator disclosed in D12 […]. However, the reasons for the decision do not contain any indication why the assessment of novelty was based exclusively on the public “prior use according to D12” and the disclosure if the schematic drawing D12, which had been filed as evidence, although only the “The prior public use …, as proven by documents D1 to D21” was acknowledged as prior art and the exhibits D1 to D21 contain several drawings. Therefore, the Board holds that the decision is not understandable also in this respect.
[22] For the above reasons the OD has not indicated in the impugned decision on which it based its conviction that the prior public use, as proven by documents D1 to D21, is considered to be part of the prior art, and how it came to this conclusion. Nor is it understandable which considerations have led the OD to the conclusion that, as far as novelty assessment is concerned, the technical features of the object of the prior use have to be taken from schematic drawing D12 […] alone. As the impugned decision does not contain this justification, the Board cannot examine whether the conclusions of the first instance were justified. Thus the Board has reached the conviction that the impugned decision is not reasoned within the meaning of R 68(2), first sentence.
The Board then decided to refund the appeal fee and to remit the case to the OD.
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