Generally speaking, decisions on petitions for review are not very interesting reading. There are, however, exceptions. I find the present decision worth reading because it comments on a great number of shortcomings to be avoided when drafting such a petition and nicely sums up some of the principles established in previous decisions. The Enlarged Board (EBA) also makes some interesting statements on a false premise it detected in the petition.
This petition for review concerns decision T 79/08 of Board of appeal (BoA) 3.3.03 (also presented on this blog) dismissing the appeal of the patent proprietor against the decision of the Opposition Division to revoke his European patent.
All the independent claims of the patent as granted contained the feature that “at least about 1.5 wt-% of said fluoropolymer particles comprise substantially rod-shaped particles having a length to diameter ratio of greater than about 5”. During the oral proceedings (OPs) the OD held that the requirements of A 83 and A 54 were satisfied, but revoked the patent on basis of lack of inventive step. The decision contained a statement on how the weight percentage of rods was determined.
The patent proprietor filed an appeal. In his statement of grounds of appeal he addressed the OD’s decision on inventive step but not the statement on how to calculate the weight percentage of rods because, in his view, this aspect related to sufficiency of disclosure which the OD had acknowledged.
In first OPs the parties and the BoA discussed how the weight percentage was to be determined. The BoA decided to continue the procedure in writing to allow the opponent to file better quality photographs. The BoA then gave the parties two months to make further submissions on the correct calculation method. The opponent submitted that the “collective calculation method” yielded the values reported in examples 1 and 2 of the patent. The patent proprietor objected that a skilled person would rather use the “individual calculation method” since this was the only correct mathematical method.
Second OPs were held on October 28, 2010. After discussing sufficiency of disclosure of the main request, the BoA took a decision on all the auxiliary requests and closed the proceedings.
The written decision was issued on December 29, 2010.
The patent proprietor then filed a petition for review. The petition relies on six alleged fundamental procedural violations under A 112a(2)(c) and two further alleged violations under A 112a(2)(d):
(a) The BoA ruled on the auxiliary requests without giving the petitioner a chance to comment on those requests.
(b) The BoA did not admit the affidavit of the petitioner’s technical expert into the proceedings. This alleged violation was withdrawn during the OPs before the EBA.
(c) In its written decision BoA failed to acknowledge the correct method of calculation of the weight percentage of rods.
(d) In its written decision the BoA wrongly inferred from the patent that the inventor had not anticipated that the skilled reader would use the incorrect calculation.
(e) The BoA based the reasoning in its written decision on the “poor quality” of images in the patent which was both wrong and never discussed during the proceedings.
(f) The BoA based its decision on a different view of the calculation from that agreed by both parties and which was both completely wrong and not discussed.
(g) The BoA did not give reasons for not admitting the affidavit of the petitioner’s technical expert into the proceedings. This alleged violation was withdrawn during the OPs before the EBA.
(h) The BoA’s written decision was not reasoned with respect to the auxiliary requests.
The EBA found the petition not to be clearly inadmissible and then dealt with its allowability:
[4] The EBA will consider […] each of the alleged procedural violations (a), (c) to (f) and (h) […] and then consider the general argument relating to all the alleged violations (c) to (h).
(a) No chance to comment on the auxiliary requests
[5.1] The petitioner alleges it was given no chance to comment on the auxiliary requests before the BoA ruled on them. However, a party has no absolute right to be heard separately on each and every one of its auxiliary requests, either at all or in its chosen order of preference. No such right (or necessity) can be derived from the right to be heard under A 113(1). The right provided by that article is to comment on grounds for a decision and not to comment on individual requests or to repeat comments on grounds which apply to two or more requests. Thus, the requirement of that article that the parties have an opportunity to comment on the grounds for a decision is, by definition, satisfied if those grounds have been the grounds for a decision on the main request (or another auxiliary request) and the remaining requests are not allowed on the same grounds.
[5.2] In the present case the finding of non-compliance of the main request with A 83 was based on the conclusion that the person skilled in the art could not be sure of the correct calculation method for the content of the substantially rod-shaped particles […], that content being crucial and requiring the preparation of a dispersion having the correct fraction of substantially rod-shaped particles. However, the necessary information to achieve this was found to be absent from the patent in suit and it was held that the skilled person was not in a position - without undue burden and without inventive effort - to make good this deficit […]. As this reasoning is not in any way related to a particular value of the content in question, it must be equally valid for all those claims according to the auxiliary requests, which “rely on the definition of the content of rod-shaped particles” […]. This means that the reasons given for not allowing the main request also constitute the grounds under A 113(1) in respect of the auxiliary requests (including those with a value of 2 for the lower weight percentage), the essential legal and factual reasoning (see decisions cited in “Case Law of the BoAs of Appeal”, 6th Edition, page 438) being identical.
[5.3] As regards the discussion of the issue of sufficiency under A 83, the petitioner argues essentially that its representative had the impression that the BoA would decide in his favour on the main request and only provided part of his arguments supporting sufficiency of disclosure assuming that, even if he had misunderstood the BoA, he would have a chance to make these arguments with respect to the auxiliary requests. However, such considerations of a party (or it’s representative) are immaterial to the fulfilment of requirements pursuant to A 113(1). The EBA’s jurisprudence makes clear that the right to be heard is satisfied if the party is aware of, and thus has had the possibility to comment on, arguments of the other party on which the decision is based (see R 2/08 [8.2]; and R 4/08 [3.2-3]). That is even more true where a party’s representative, in view of the discussions before and with the BoA, felt himself in a position to make a reasoned guess at the BoA’s finding on a critical issue and adapted the manner of conducting his case accordingly.
[5.4] The petitioner’s contention that a discussion of the claims according to the auxiliary requests would have led to a different decision of the BoA is mere speculation, even if such a consequence of allowing further discussions of an issue in dispute can never be excluded. Of course, whether by opening a discussion of the auxiliary requests or in another way, the BoA could have granted the petitioner a further opportunity to defend its position as to the requirement of A 83 which possibly – although not likely in the given circumstances – might have eventually changed the view of the BoA. However, once the party – as here – has had an adequate opportunity to comment within the meaning of A 113(1), the granting of further such opportunities is purely within the discretion of the BoA in conducting the proceedings and thus a matter which is not open to review by the EBA.
(c) The BoA failed to acknowledge the correct method of calculation
[6] The allegation that in its written decision the BoA failed to acknowledge the correct method of calculation of the weight percentage of rods is pre-eminently a matter which concerns the substantive issues in the case and is thus not amenable to review (see R 1/08 [2.1] and the travaux préparatoires cited there). Even if (which the EBA is in no position to decide) the BoA did fail to acknowledge a correct method, that is not a matter which could lead to a finding of a fundamental violation of A 113(1). The EBA is confined to considering whether or not the parties were heard and, as is again clear from the petition itself which says the parties agreed on the method of calculation, the parties were indeed heard on the matter of that method. If, having heard the parties, a BoA then makes a decision with which one of them disagrees, there can be no violation of A 113(1).
(d) The BoA wrongly inferred from the patent that the inventor had not anticipated that the skilled reader would use the incorrect calculation
[7] This also relates quite clearly to substantive issues in the case and therefore cannot be the subject of review for the same reasons as in point [6] above. The EBA simply cannot decide whether or not the BoA’s observation about the patent in point [5.6] of its decision […] is wrong. In reality, the petitioner’s complaint in this respect is no more than that the BoA has made a statement with which it disagrees but mere disagreement with a decision by a losing party is not enough to establish a procedural violation.
(e) The BoA based its written decision
on the “poor quality” of images in the patent
[8.1] This also relates quite clearly to substantive issues in the case and therefore cannot be the subject of review for the same reasons as in point [6] above. Whether or not the BoA was wrong to consider the images in the patent to be of poor quality is again just an example of the petitioner disagreeing with the BoA’s decision.
[8.2] The additional assertion that the issue was never discussed during the written or oral proceedings appears incorrect. The words in the decision of which the petitioner complains are:
“the patent in suit itself provides no means by which the validity of such an insight could be tested. Raw data is provided only in the nature of images of extremely poor quality”.
The whole passage in the decision from which that is taken reads (see point [5.13]):
“Even accepting, for the sake of argument, that such insight would be within the range of normal, non-inventive ability of the skilled person, there remains the obstacle that the patent in suit itself provides no means by which the validity of such an insight could be tested. Raw data is provided only in the nature of images of extremely poor quality. In this connection it is recalled that the images provided by the [respondent] during the opposition proceedings were considered by the [petitioner] to be of insufficient quality to allow analysis (counting of the particles) notwithstanding that these images appear to be significantly clearer and of higher quality than those contained in the patent in suit”. [The words underlined were omitted by the petitioner in its quotation from this passage of the decision.]
The “insight” referred to in the opening words is that mentioned in the previous passage of the decision (see point [5.12]) where the BoA discusses at some length submissions of the petitioner. It is thus beyond doubt that the words the petitioner now complains of, far from representing a new issue introduced for the first time in the written decision, were in fact part of a lengthy consideration and ultimate rejection of an argument of the petitioner itself. There can of course be no question of a denying a party an opportunity to be heard in relation to an argument which that party has itself presented. It appears that, at best, the petitioner did not read the decision sufficiently carefully before framing this complaint.
[8.3] While the question of quality of images was discussed during the appeal proceedings, as shown by both the passage from the decision quoted above and the petition itself […], if the petitioner’s complaint is that the quality of images was not discussed as part of a reason for the BoA’s view of the petitioner’s argument, that cannot amount to a violation of A 113(1). The EBA’s jurisprudence clearly demonstrates the principle that parties are not entitled to advance indications of the reason or reasons for a decision before it is taken (see the summary of the case-law in R 12/09 [11] and the several other decisions there referred to; and subsequent decisions R 15/09 [4]; R 18/09 [14-15,18]; and R 15/10 [7-9]). If that principle applies to the reasons for a decision generally, it must apply equally to a comment forming only a part of such reasons.
(f) The BoA based its decision on a different view of the calculation
from that agreed by both parties and which was wrong and not discussed.
[9.1] All the EBA’s observations in relation to the alleged violation (c) also apply to alleged violation (f). Since this also concerns substantive issues it cannot be the subject of review for the same reasons as in point 6 above. To the extent the BoA may not have discussed its own view of the method of calculation as mentioned in the reasons for its decision, neither the petitioner nor the respondent was entitled to any advance indication of such reasons as explained in point [8.3] above.
[9.2] Moreover, the petitioner’s argument is factually fundamentally flawed. It relies […] on the text of point [5.16] of the decision under review which reads as follows:
“Indeed the BoA is aware that the entire foregoing section relies on making a key assumption – namely that the skilled person would identify the nature of the calculation as being the source of the divergences [between the reported values of rod content and the values obtained by using the average values]. This has in fact been assumed by both parties. However, this assumption is in the BoA’s view not valid. For example, it takes no account of the possibility of alternative sources of error such as clerical errors in the patent in suit, or even errors in collating or in analysing the data, e.g. instrumental errors.” [The words underlined were omitted, and the words in brackets added by the petitioner in its quotations from this text of the decision.]
On the basis of its own selective quotations the petitioner accuses the BoA of denying it the right to be heard and of prejudice […].
[9.3] However, a reading of the whole passage in its context makes quite clear that neither was the case. The passage begins with the words “the BoA is aware that the entire foregoing section relies on making a key assumption”. The “foregoing section” begins at point [5.12] which, as mentioned above (see point [8.2]), marks the beginning of the BoA’s lengthy consideration of the petitioner’s own argument as to the approach the skilled person would take to the method of calculation (which in turn follows a section beginning at point [5], some three pages earlier where, after having already found the disclosure of the patent itself insufficient (see point [4.8]), the BoA turns to consider whether the skilled person could by common general knowledge understand how to calculate the content of rod-shaped particles). In point [5.12] the BoA summarizes the petitioner’s argument, disregards another inconsistent argument (of the petitioner), and says that the argument would require a level of insight approaching inventive step. That is the “insight” then referred to in point [5.13] which leads the BoA to the problem that the patent provides no means to test the quality of such an insight (see the passage cited in full in point [8.2] above). Points [5.14-15] then continue the same examination of the petitioner’s argument to the conclusion that it had failed to show that the skilled person could rely on common general knowledge (see point [5.15]). The “entire foregoing section” is thus the BoA’s own reasoned treatment (in points [5.12-15]) of the petitioner’s own argument and the statement in point [5.16] as to that section relying on a key assumption is the BoA’s own qualification of its own assessment of the petitioner’s argument. Then, after observing that both parties made the same assumption, the BoA proceeds to explain (again, at some length - see points [5.16-18]) why that assumption of both parties was not accepted.
[9.4] The petitioner’s reliance on highly selective fragments of the BoA’s decision shows at best an unreasonably subjective reading of the decision. When those fragments are read in context it becomes abundantly clear that, far from denying the petitioner the right to be heard by raising matters not previously discussed, the decision goes to great lengths to explain why the BoA did not agree, first with the petitioner’s argument and then with an argument apparently agreed by both parties, all being arguments which were indeed discussed. Further, far from showing prejudice, it appears that the BoA was at pains to deal with all the submissions made to it and to explain its own reasons for disagreeing with one or both parties.
(h) The BoA’s written decision was not reasoned
with respect to the auxiliary requests
[10] This alleged violation is quite simply factually incorrect. It appears from the decision under review (see point [6], last two paragraphs) that the BoA’s written decision did in fact include reasons for rejecting the auxiliary requests, namely that in the view of the BoA the auxiliary requests were subject to the same objection as the main request.
[11] Finally, as regards the petitioner’s general argument relating to all the alleged violations (c) to (h), this is based on a wholly false premise, namely that A 112a(2)(d) requires that a BoA’s written decision must be reasoned.
[11.1] A 112a(2)(d) imposes no such requirement whatsoever; it merely specifies that petitions for review may be filed on the grounds that
“any other fundamental procedural defect defined in the Implementing Regulations occurred in the appeal proceedings”.
The reference to “other fundamental procedural defect” reflects the fact that the opening words of A 112a(2) are: “The petition may only be filed on the grounds that:” which make it completely clear that petitions for review are limited to the grounds appearing after those words in (a) to (e). Thus the grounds included by (d) are limited to those other procedural defects “defined in the Implementing Regulations”. The only provision in the Implementing Regulations which defines such grounds is R 104 which reads:
“A fundamental procedural defect under Article 112a, paragraph 2(d), may have occurred where the BoA,(a) contrary to A 116, failed to arrange for the holding of OPs requested by the petitioner, or(b) decided on the appeal without deciding on a request relevant to that decision.”
Thus, it is completely and unambiguously clear from R 104 that the Implementing Regulations only add two further grounds for petitions for review to those in A 112a(2) and that the list of possible grounds contained in A 112a(2) and R 104 is exhaustive. This has been made abundantly clear in the EBA’s jurisprudence (see R 1/08 [2.1, last paragraph]; R 16/09 [2.3.5-6]; R 10/09 [2.4-5]; R 18/09 [19]; R 1/11 [2.2]; and R 20/10 [2.1]). The grounds enumerated in the legislation being exhaustive, there is no scope for creating an additional ground by analogy with R 111 as the petitioner seeks to do […].
[11.2] Accordingly there is no ground for a petition for review, whether under A 112a(2) or otherwise, such as the petitioner puts forward that a decision of a BoA is not reasoned. In any event, such a provision would be unnecessary in view of the words of A 113(1) and the related grounds for a petition in A 112a(2)(c).
[11.3] Further, for the sake of completeness, the EBA observes that, as already indicated in respect of the particular passages complained of by the petitioner (see points [8.2] and [9.2-4] above), the decision under review in the present case appears to be comprehensively and clearly reasoned. The petitioner’s general complaint – that the decision contains inconsistent findings which are not in logical sequence such that the reader is unable to decide which of the various findings are correct and which are false – is a complaint which could only be made by a reader determined to disagree with the decision. An objective reading of the decision merely shows that the complaint itself is false.
[11.4] The decision T 278/00 to which the petitioner referred related to R 68(2) EPC 1973 (now R 111(2)) which requires that decisions which are open to appeal be reasoned. Decisions of BoA, which are open only to review but not to appeal, are clearly not covered by that rule. Further, as made clear above (see point [11.1-2]), it is no ground per se for a petition that a decision is not reasoned. As an interpretation of R 111(2), the principles summarized in the headnote of decision T 278/00 are as follows:
“ 1. The reasoning of a decision under appeal must be taken as it stands. The requirements of [R 111(2)] cannot be construed in such a way that in spite of the presence of unintelligible and therefore deficient reasoning, it is up to the BoA or the Appellant to speculate as to what might be the intended meaning of it.
2. The BoA must be in a position to assess on the basis of the reasoning given in the decision under appeal whether the conclusion drawn by the first instance was justified or not. This requirement is not satisfied when the BoA is unable to decide which of the various inconsistent findings indicated in and justifying the decision under appeal is correct and which is false.”
Even if those principles were applicable to decisions under review, they would only apply in the presence of unintelligible and therefore deficient reasoning and inconsistent findings such that it is not possible to decide which are correct and which are false. However, as already indicated (see point [11.3] above), the EBA considers that this is not so in the case of the decision under review.
[12] Accordingly the EBA finds no merit in any of the arguments of the petitioner and the petition is therefore unallowable. […]
The petition is unanimously rejected as clearly unallowable.
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