Tuesday, 10 April 2012

R 8/11 – Off Limits

This decision on a petition for review is interesting because the Board discussed the question of whether first-instance procedural violations could be the object of a petition.

The petition was filed by the opponent whose opposition had been rejected – very quickly – by the Opposition Division (OD) and whose subsequent appeal had been dismissed.

The impugned decision (T 571/09) has been discussed on this blog (here).

*** Translation of the German original ***

[1.2.1] Pursuant to A 112a(2) a petition for review may only be filed on the grounds mentioned in this provision. Pursuant to R 108(1), the petition for review is to be rejected as inadmissible if it does not comply with this provision.

The petitioner, who is adversely affected by the impugned decision, bases his petition for review on the violation of his right to be heard pursuant to A 113(1) together with A 112a(2)(c) both in the opposition and the opposition appeal proceedings. […]

[1.2.2] As also implied by R 106, A 112a only empowers the Enlarged Board of Appeal (EBA) to review procedural violations that have been committed by a Board of appeal (BoA). Therefore, according to the unambiguous wording of this provision, procedural violations that have occurred in the course of the proceedings before an Examining Division (ED) or an OD are excluded from a review under A 112a. The reason for this is that – in contrast to decisions of the BoA – decisions taken by the first instance body can be impugned by means of an appeal and procedural shortcomings can be corrected by the BoA.

[1.2.3] As a consequence, the present petition for review is clearly inadmissible to the extent to which the petitioner points out that his right under A 113(1) has been violated because the OD had rejected his opposition without giving him the opportunity to respond to the answer of the patent proprietor to the opposition […]. As a matter of fact, this submission concerns the opposition proceedings and not the opposition appeal proceedings. Insofar the submission had already been judicially reviewed by the competent Technical BoA.

[1.2.4] Contrary to the opinion of the petitioner, first instance decisions cannot be reviewed a second time, even if they involve an alleged violation of fundamental principles that are generally recognized, such as A 113(1). As a matter of fact, A 112a is an exceptional rule which opens the way to the EBA only within narrow limits, so as to allow [parties] to raise the – substantially limited – objection against decisions of BoA (which cannot, in principle, be impugned) that the appeal proceedings were affected by a substantial procedural violation within the meaning of A 112a(2) in conjunction with R 104. Being an extraordinary legal means, the review pursuant to A 112a is based on the balancing of legal interests by the lawmaker, whereby the latter has – subject to narrow requirements – given the priority to the cancellation (Aufhebung) of a decision of a BoA that is affected by a substantial procedural violation, and, thereby, to the abolition (Durchbrechung) of its legal force, over the confidence of the parties and the public in their continuance (Fortbestand), which also deserves protection (see also R 1/10 [6.1.1], referring to the requirements of R 106). However, whenever a decision can be reviewed in regular appeal proceedings, which is the case for decisions of the ED and the OD, then according to the purpose (Sinn und Zweck) of the review proceedings, it shall not be possible to request a further review of the very same alleged procedural violation after a decision of a BoA.

[1.2.5] Contrary to the opinion of the petitioner, this also holds true when the alleged procedural violation involves the – important – right to be heard pursuant to A 113(1).

[1.2.6] The EBA shares the opinion of the petitioner that A 113(1) is a central procedural right – if not the basic procedural right par excellence – the safeguard of which is the first duty of any jurisdiction based on the rule of law (rechtsstaatliche Gerichtsbarkeit). Otherwise the right to be heard would not have been explicitly incorporated into the EPC. The importance of this provision is also emphasized by Article 6 of the European Convention for Human Rights, as well as by the fact that the establishment of petitions for review pursuant to A 112a in the EPC 2000 treats the violation of this right as the paramount (as to its importance) ground for review.

[1.2.7] The extraordinary importance of the right to be heard for judicial proceedings based on the rule of law, however, does not establish the EBA as a further instance in all proceedings wherein the violation of A 113(1) by the granting authority (Erteilungsbehörde) has been criticized. This is because, unlike the Federal Constitutional Court in the legal system of the Federal Republic of Germany, the EBA does not have the role of a guardian of the procedural rights of the parties in all instances and, therefore, also in proceedings before the granting authority. The unambiguous wording of A 112a clearly makes such an understanding impossible because it limits the admissibility of a petition for review to a violation of rights by a BoA.

It is the BoA in their function as judicial authority (gerichtliche Instanz) that have the duty to examine whether the first instance has granted the parties the right to be heard. Therefore, the protection of this right does not necessarily require a further decision of the EBA.

[1.2.8] As an alleged violation of the right to be heard by the OD can – only – be asserted in the proceedings before the competent BoA, and not in review proceedings before the EBA – the petitioner’s argument according to which the BoA had perpetuated a substantial procedural violation of the first instance by its negative decision and its refusal to remit, and, therefore, again violated the right to be heard of the petitioner, cannot succeed. As a matter of fact, such an objection (Rüge) would make the very same objections (Einwände) regarding the violation of the right to be heard, on which the BoA had already decided, afresh subject of the proceedings (Verfahrensgegenstand), admittedly before the EBA. This, however, would result in an inadmissible circumvention of the explicit limitation of the review proceedings pursuant to A 112a to the substantial procedural violations mentioned in this provision, which precisely affect the appeal proceedings. This limitation not only results from the wording of the provision but also from the explicit will of the lawmaker (see The revised EPC (EPC 2000), Synoptic presentation EPC 1973/2000 – Part I: The Articles, Special edition No. 4 OJ EPO 2007, 144), which has been confirmed in the established case law of the EBA (Case Law of the BoA of the EPO, 6th edition, 2010 VII.E.15.1). Extending the application of review proceedings beyond the grounds given in A 112a(2) would be tantamount to disregarding the explicit will of the lawmaker, which is not an option for the EBA (an exhaustive list of the grounds for review and further references to the case law have again been provided in R 6/11 [11.1] recently).

[1.2.9] Moreover, based on the argumentation of the petitioner, one would always have to assume a perpetuation of a procedural violation when the BoA does not share the legal assessment of the case and finds no procedural violation. However, A 113(1) does not establish a right to a certain factual understanding but only the right that the relevant deciding authority allows the parties to submit sufficient arguments regarding all essential aspects of the case, that it takes notice of these submissions and that it takes them into account in its decision. This is what the BoA has done in the impugned decision by dealing with the submissions of the petitioner in a detailed and careful way, even if it has not come to the same conclusions.

[1.2.10] It follows that neither the assertion according to which the OD had violated the right to be heard of the petitioner, nor the assertion that the BoA had perpetuated this violation by finding that the OD had not violated the right to be heard, are objections (Rügen) that can be asserted in a petition for review.

[1.2.11] It may be left open whether the BoA was empowered to correct the original version of the impugned decision based on an obvious error under R 89 EPC 1973, as it has done in its decision of May 19, 2011.

The mere fact that the BoA has dealt with the alleged procedural violations in the context of the discussion of the request for reimbursement of the appeal fee pursuant to R 103 – possibly in the wrong place, from a systematic point of view – does not change the fact that it has dealt in detail with the alleged violation of A 113(1) by the OD.

Should you wish to download the whole decision (in German) or have a look at the file wrapper, click here.

NB: A similar decision has been reported here.