Friday, 18 November 2011

R 3/10 – A Misunderstanding

Oops, they did it again: another petition for review has been granted!

The patent proprietor filed a petition for review after Board 3.2.04 had revoked his patent in decision T 136/09. He complained that he had not had an opportunity to comment on inventive step during the OPs that led to the revocation for lack of inventive step.

The Enlarged Board (EBA) found the petition to be sufficiently reasoned and to comply with R 106. It then dealt with the allowability of the petition:

[2.1] It is undisputed by the parties that the discussion of the main request in the oral proceedings (OPs) only turned on novelty. The course of the discussion was that the representative of the opponents was invited to speak first. He presented his arguments against the novelty of the main request. When he had done so, the representative of the petitioner was invited to respond. He explained why he thought the main request was novel. The questions raised by the Board only concerned aspects related to the issue of novelty. It is, furthermore, undisputed that when thereafter closing the debate, the Chairman indicated that the Board would decide on patentability.

[2.2] The petitioner’s submission is that, when the Chairman closed the debate, in the circumstances of the case the petitioner had no reason to assume that the Board would decide on more than had been discussed so far orally, which was only whether the main request was novel.

[2.3] In the signed declarations of the persons who attended the OPs before the Technical Board on behalf of the petitioner it is indicated that the Chairman opened the discussion by stating that the Board would like to discuss novelty, but that in the opening remarks the Chairman gave no indication that novelty and inventive step were to be discussed together. Furthermore, when closing the debate after the parties’ submissions on novelty, the Chairman stated “that the Board will decide on patentability” but nothing was specifically or explicitly mentioned about the Board’s intention to decide on both novelty and inventive step of the main request.

[2.4] In the minutes of the OPs one of the reasons given for dismissing the objection raised by the proprietor (after the announcement of the decision concerning the main request) is:
“The objection was dismissed by the Board, by pointing out that before the closing of the debate on the main request, the Chairman has explicitly stated that the Board will decide on both novelty and inventive step, …”.
There is, however, no direct entry in the minutes stating that before closing the debate the Board had informed the parties that the Board will decide on both novelty and inventive step.

In point 2 of the reasons for rejecting the request for correction of the minutes, which were issued in close temporal connection with the OPs, the circumstances in question are described in a different manner. It is said therein,
“Further, the Board is of the firm opinion that the Chairman indeed expressly stated that the issue of patentability will turn on both novelty and inventive step. This statement was made not only before closing the debate, but also at the commencement of the debate concerning the main request.”
It emerges from the terminology used that these remarks mainly refer to what was said at the commencement of the debate. The expression “patentability will turn on novelty and inventive step” makes no sense as a statement made after the discussion with the parties, when closing the debate.

[2.5] More importantly, however, the statement that the issue of patentability will turn on both novelty and inventive step cannot on an objective view be understood as meaning that novelty and inventive step were to be discussed and decided together. It can in fact mean no more than it says - that both issues are to be discussed and decided. Neither in the minutes nor in the reasons for rejecting the petitioner’s request for correction is it stated anywhere that the Board had informed the parties before or after the discussion on novelty that the discussion of and/or the decision on novelty and inventive step would take place together.

[2.6] It appears that, as a result of the Board’s statement that the issue of patentability would turn on novelty and inventive step, a very unfortunate misunderstanding arose. While the Board may have intended to Say that novelty and inventive step would be discussed together and decided together, that was not, or at least not clearly, expressed. The Board’s statement in fact only told the parties that novelty and inventive step were both issues to be discussed and, that being the apparent meaning of the statement (see point [2.5] above), the petitioner assumed accordingly that both those issues would be discussed before any decision was taken. That the petitioner did not understand that the Board intended to discuss and decide both issues together is also apparent from its representative’s answer “no” to the Chairman’s question, before he closed the debate after the discussion on novelty, whether the parties had any further comments. The same answer “no” from the representative of the respondents, who had also only addressed the Board on the issue of novelty of the main request, can have done nothing to alleviate the petitioner’s misunderstanding. Thus the petitioner only presented arguments on novelty because he thought, understandably, that there would be an opportunity later to address the Board on inventive step, in the event that the Board should acknowledge novelty and that a discussion of inventive step should thus become necessary. Such an expectation was all the more justified, since in its communication accompanying the summons to OPs, the Board had itself dealt with novelty and inventive step as separate points, its reasoning on each of those points having been based at least partly on different prior art and different arguments.

[2.7] In Chapter 1 of Part II of the EPC the term “patentability” covers a variety of potential objections; the Chairman cannot have meant to address all those objections when he used the term “patentability”, since most of them had never been a subject of the appeal proceedings. Hence, it is clear that the meaning to be attributed to the word “patentability” depends on the context in which it is used. Considering the circumstances of the present case set out above it has to be acknowledged that, when the debate was closed after the discussion on novelty, the petitioner had no reason to assume that the Board’s decision would address more than had been previously discussed orally, i.e. novelty.

[2.8] According to A 112a(2) (c) ( 5 ) the petition for review is allowable, and hence must be allowed, if a fundamental violation of A 113 EPC occurred in the appeal proceedings.

Whether or not that is the case must be determined on an objective basis.

It is not relevant that the Board did not deliberately deny the petitioner the opportunity to speak on inventive step. It appears clear that in the present case the members of the Board thought that the parties did not wish to make separate submissions on that issue and, once a formal decision on the main request had been given, there was no possibility for the Board to reopen the debate on inventive step.

The boards of appeal have constantly held that determining whether a substantial procedural violation justifying the reimbursement of the appeal fee has occurred in first instance proceedings (R 103(1) (a) EPC, R 67 EPC 1973), is to be decided exclusively on an objective basis (J 7/83, J 32/95, T 405/96 making reference to further decisions, T 400/02).

A “substantial procedural violation” is an objective deficiency affecting the entire proceedings (J 32/95 [4.1], making reference to earlier decision J 7/83). As the Legal Board of Appeal acknowledged in decision J 32/95, there can be a substantial procedural violation even if the deciding body acted in good faith. It does not imply that the deciding body should be reproached in any way.

Thus, a substantial procedural violation was e.g. acknowledged to have occurred in cases in which a request for OPs had not reached the file and, the deciding body not knowing that OPs had been requested, the decision was taken without OPs (T 405/96 [2], T 400/02 [2-3]).

Such an objective approach must also be applied when it comes to determining whether a fundamental violation of the petitioner’s right to be heard within the meaning of A 112a(2)(c) occurred. It is therefore not relevant that it was not the deciding Board’s intention in any way to deprive the petitioner of its right to be heard orally on the issue of inventive step.

[2.9] In the present case it cannot be denied that the violation of the petitioner’s right to be heard orally was objectively a fundamental one. As a result of the misunderstanding between the Board and the petitioner as to which aspect the Board’s decision on the main request would address and of the Board having announced a formal decision on the lack of inventive step, the petitioner had no possibility to speak on inventive step at all. Since the Board’s decision rejecting the main request was based only on lack of inventive step, while its novelty was acknowledged, the negative decision on the main request was exclusively due to the denial of inventive step by the Board.

[2.10] In the OPs before the EBA the respondent argued that in the case under appeal the relevant considerations for the assessment of inventive step were very close to the discussion having taken place on novelty. It could at best be said that claim 1 of the main request was just novel but it was then clearly obvious. In the context of review proceedings the EBA is not entitled to go into the merits of a party’s case. It is not entitled to assess whether or not and to what degree, if any, a party’s standpoint which it alleges it would have taken had it been given the opportunity to present it, would have been well founded. More importantly, however, in the context of determining whether a party’s right to be heard has been violated, this is not a relevant issue. The right to be heard is a fundamental right of the parties which has to be safeguarded, irrespective of the merits of the party’s submissions. The necessity to respect it is absolute and therefore cannot be made dependent on a prior assessment of the merits of the party’s submissions, which in the present case would involve an assessment of the degree of likelihood that the arguments of the petitioner would have convinced the Board to acknowledge inventive step.

It is the very essence of the right to be heard that the party is given a full opportunity to defend its case and to persuade the deciding body that its position is the correct one. This right would be undermined if it were made dependent on an evaluation as to whether the party’s standpoint is likely to be justified.

In order to answer the question of whether a fundamental violation of the petitioner’s right to be heard occurred as a result of the petitioner’s not having been heard on inventive step, it is therefore irrelevant whether the respondents are right in their assessment of the clear obviousness of the claimed solution.

[2.11] In a case such as the present, in which the ground of opposition, i.e. lack of inventive step, on which the revocation was based, was not discussed at all in the OPs, it is also irrelevant that that issue was discussed in writing between the parties.

The purpose of OPs is to allow each party to make an oral presentation of its arguments, to allow the Board to ask each party questions, to allow the parties to respond to such questions and to allow the Board and the parties to discuss issues, including controversial and perhaps crucial issues. The value of OPs is that matters may as a result be clarified and the Board may ultimately be satisfied that a party’s position is the right one, although it was not so satisfied by the written submissions alone.

Subject to the exception made in A 116(2) for OPs before the Receiving Section, the right of any party for OPs to be held on request and to present its case orally is absolute. It is, with respect to the party’s right to be heard on its case, a more specific embodiment of the general principle enshrined in Article 113(1) EPC, but is by no means subordinate to the latter provision or less important in any respect.

According to the established jurisprudence (see e.g. T 125/89 [7]) the parties’ absolute right to be heard in OPs, A 113(1) and A 116(1), is not restricted to new and substantial arguments which have not yet been presented in writing. Therefore, the fact that the petitioner made submissions on inventive step in writing is not a valid reason for denying that the petitioner’s right to be heard under A 113 was violated in a fundamental manner, as a result of its not having had the opportunity to present its arguments orally on the decisive issue of inventive step, entailing the rejection of the petitioner’s main request.

[2.12] For these reasons, the decision under review has to be set aside and the proceedings have to be reopened, in order to give the petitioner the opportunity to present its arguments on inventive step orally. The petitioner’s further objection, that the impugned decision relied on arguments which had not previously been put to the petitioner, need therefore not be dealt with here.

[3] Pursuant to R 110 the fee for the petition for review shall be reimbursed.

You can download the whole decision and have a look at the file wrapper here.


Henrik Skødt, Plougmann and Vingtoft said...

Most comments in the "blogosphere" on this decision revolve around the allowability of the petition and the misunderstanding caused by the TBA's conduction of the oral proceedings.

However, the discussion in point 1.4 on the admissibility of the petition is, in my view, equally interesting. Having been present at the oral proceedings before the TBA, I remember that we made sure to have the minutes reflect that we reserved the right to file a petition, which can indeed be found in the minutes. The oral submission on this point was made just before closing the oral proceedings, i.e. in connnection with the last auxiliary request.

Turning to point 1.4, the EBA discusses the fact that the petitioner could not have objected to its rights being violated during the discussion on the main request since the decision had already been made (in a binding manner) by the TBA. The EBA concludes that the petition therefore is admissible.

Looking at the actual wording of Rule 106 EPC, it states that an objection must be raised "during the appeal proceedings". In view of the EBA's discussion in point 1.4 it raises the question of how to interpret "during the appeal proceedings" in Rule 106 EPC. If "during the appeal proceedings" included up until the moment when the oral proceedings are closed, then the discussion in point 1.4 would in fact not have been necessary.

Hence, it would seem that the EBA considers "during the appeal proceedings" to be more limited, i.e. to be "during the discussion of the request in question". This should be kept in mind during oral proceedings, especially with those boards that start by making a "conclusion", i.e. not a decision on the various issues of a request.