Thursday, 15 December 2011

R 7/11 – Closed

The patent proprietor filed a petition for review after Board of Appeal (BoA) 3.3.09 had revoked his patent in decision T 120/08 (cf. my post on this decision)

The petition for review was based on A 112a(2)c) and d) and asserted that a fundamental violation of the right to be heard occurred and that the BoA had taken its decision without deciding on a request relevant to that decision.

During the oral proceedings (OPs) before the BoA on October 14, 2010, a thorough discussion took place on the question of whether or not the claimed invention was sufficiently disclosed in respect of the feature “vacuum 1000 mbar” according to step c) of Claims 1 of the main and auxiliary requests. During this discussion the petitioner filed Greek patents D and E, and another document F to show what the skilled person would understand. At the end of the OPs the BoA revoked the patent for insufficiency of disclosure.

The petitioner reconstructed the course of the OPs before the BoA as follows: There was a first session from about 9.15 until 10 am where the petitioner defended its patent and, to this end, it submitted the Greek patents. The BoA interrupted the proceedings to consider these new documents. After half an hour the proceedings were resumed and the floor was given to the opponents, who discussed the test D44. The petitioner had only five minutes to respond and at the end of these five minutes the chairman put a question that the petitioner’s representative had difficulties in answering. At this point in time there was, according to the petitioner a break in proceedings, during which the petitioner wanted to prepare counterarguments; but when OPs were resumed, the BoA issued its final decision. In fact, the petitioner argues, it cannot be concluded from the minutes of OPs, which simply state that the chairman closed the debate, that the petitioner had any reason to assume that a final decision would be imminent. The OPs had previously been interrupted and the debate been declared terminated before this previous interruption; after this first interruption, however, OPs had been resumed and the discussion continued. The petitioner expected that the same would be the case with the second interruption. Once the decision of the BoA had been issued, it was too late to issue an objection. Therefore the petitioner submits that this is a case where an objection pursuant to R 106 could not have been raised.

The Enlarged Board (EBA) did not agree:

[2] Pursuant to R 106 a petition for review based on a fundamental procedural violation under A 112a paragraph 2(a) to (d) is only admissible where an objection in respect of the procedural defect was raised during the appeal proceedings and dismissed by the BoA, except where such objection could not be raised during the appeal proceedings.

[2.1] Raising an objection pursuant to R 106 is a procedural act and a precondition for access to an extraordinary legal remedy against final decisions of the BoAs of Appeal. Therefore such an objection must be expressed by a party in such a form that the deciding body is able to recognize immediately and without doubt that an objection pursuant to R 106 is intended. For the same reason such an objection must be specific, that is the party must indicate unambiguously which particular defect amongst those exhaustively listed in paragraph 2(a) to (c) of A 112a and R 104 it intends to rely on. (see R 4/08 [2.1], R 8/08 [1.2.3])

The alleged procedural violation resulting from the non-hearing of the petitioner’s experts by the BoA during the OPs concerns an event which occurred during OPs; it is related to the conduct of OPs and it cannot be disputed that the absence of such a hearing was an event, or non-event, which was apparent to the petitioner at the time. This defect should therefore have been objected to during the OPs pursuant to R 106.

[2.2] It is however the submission of the petitioner that the BoA did not make clear that the closure of the debate could lead directly to a final decision and the petitioner was not able, as a consequence, to raise an objection with respect to the absence of a hearing of its experts.

[2.3] However, the minutes of the OPs drafted under the responsibility of one of the members of the BoA and the chair pursuant to R 124(3) (which unless duly corrected authenticate the facts they relate) indicate that the debate was closed but do not reflect any objection from the petitioner about a misunderstanding of what had been announced, or any protest that the debate had been prematurely closed or the BoA had omitted to decide upon a request to hear experts.

Furthermore it indeed appears clearly from the documents on file and particularly from the petitioner’s request for correction of the minutes of the OPs before the BoA and also its letter after the refusal by the BoA to correct them that the absence of a hearing of the experts was not the relevant point and was not, at that time, considered by the petitioner as constitutive of a fundamental procedural violation of its right to be heard: the petitioner never raised an issue about the closure of the debate or an omitted request; nowhere is it stated that the debate had been closed only partially […]; nor did the petitioner complain that one of its requests had been omitted or that it had not been able to object because of the unexpected closure of the debate.

In fact, the request concerned only the statements of the opponents’ expert which should, according to the petitioner, have been transcribed in view of the written decision and a possible use before the national courts. The fact that the petitioner’s experts had not been asked for their comments was incidentally mentioned twice in passing but the petitioner did not draw from this fact any consequence as a basis for a request or any submission.

[2.4] At this stage the EBA can only repeat that it is hopeless to try to reconstruct what happened during the OPs as already stated in R 15/09. But even if the steps as described by the petitioner are taken to be correct relying on the principle of good faith, the EBA notes that the debate was declared closed. The necessary meaning of the expression “the debate is closed”, which corresponds to an important procedural step, is not open to multiple or relative interpretations; its announcement after a discussion of an issue with the parties must alert the parties to the fact that, unless otherwise announced by the BoA, the BoA does not intend to come back to this discussion, except of course in exceptional cases where the BoA decides to reopen the debate. At this precise point the parties and all the more professional representatives must bear in mind that a negative conclusion on the particular issue may be fatal for all the requests on file and as a consequence may result in a final decision, which is what happened in the current case following the decision about A 83.

Accordingly, if the petitioner had had something to add, either a request or an objection because of a procedural defect or only a doubt, it should have mentioned it when the BoA was about to pronounce the closure, namely at a point in time when the BoA still had the possibility to reopen the debate or refuse to do so.

This analysis is in line with R 6/10 [3.2], where the EBA considered that neither the minutes of the OPs nor any other part of the file indicated that the appellant had objected to the closure of the debate without the witness having been heard.

This is also in line with what has already been indicated about the parties’ roles and duties in R 2/08 of [8.5, 8.10] where the EBA stated that it was not possible for a party to allege as an afterthought the violation of its right to be heard based on the fact that the BoA had accepted a procedural objection during the OPs.

The EBA, in the present case, does not see that there was any obstacle to prevent the petitioner from complying with the requirement of R 106. All the facts point to the conclusion that this is an attempt to dress up a challenge of the decision on its merits as a petition for review, using the alleged violation of the right to be heard as clothing.

[3] The outshot of this is that the petition is clearly inadmissible. […]

The petition for review is rejected as clearly inadmissible.

To download the whole decision, click here.

The file wrapper can be found here.