Monday, 28 May 2012

R 17/11 – Speak Out

This petition for review concerns decision T 1668/09 where Board 3.2.07 had dismissed the appeal of the patent proprietor against the revocation of the opposed patent.

The petitioner raised two objections. Objection 1 was based on an alleged violation of the petitioner’s right to be heard when admitting document D16. The Board considered the objection to be unfounded.

Objection 2 was based on the treatment of (undated) brochure D5, which the Board had considered to be the closest prior art and over which the claims on file were found to lack an inventive step. The patent proprietor had pointed out during the written proceedings that D5 had not been established that this document had been made available to the public. According to the patent proprietor, the Board had taken its decision without deciding on the admissibility of D5, which amounted to a substantial procedural violation.

The Enlarged Board (EBA) considered this objection to be unfounded, too:

*** Translation of the German original ***

[13] The basic problem of the petitioner consists in that it does not assert in its request that it had asked [the Board] not to admit D5 at any time during the oral proceedings (OPs). Therefore, it lacks the required factual basis for justifying a request under A 112a(2)(d) in connection with R 104(b).

[14] In R 19/10, the EBA has noted that the EPC does not contain an explicit definition of the term “request” used in R 104(b), but that, according to the common practice in the proceedings before the EPO, requests are in general directed to executable legal consequences sought by the parties.  

This is also confirmed by the travaux préparatoires related to R 104(b), in particular CA/PL 5/02 rev. 1 Add. 1, p. 27 (referred by the President of the EPO to the “Patent Law” commission, October 7, 2002) where the following is stated:
“The assumption is that only requests submitted in writing or requests which the party had recorded in the minutes of the OPs will fall within the ambit of that provision.”
[15] In R 19/10 the EBA also established that the arguments provided by the parties in support of these legal consequences did not normally belong to its requests. When a request is not explicitly made by a party during the proceedings, the Board does not have the duty under R 104(b) to examine the submissions of the parties as to whether they might contain requests that have not been made explicitly.

[16] […] During the OPs before the EBA the petitioner insisted on the fact that in the course of a long day (the proceedings before the Technical Board (TBoA) lasted until 17:25) several arguments related to inventive step had been discussed, not only in view of D5 and D16, and that the petitioner had only found out which combination the TBoA considered to be potentially relevant for inventive step when receiving the written decision. D5 was a short document and had not played a role in the decision of the OD or in the detailed communication that the Board had sent to the parties. Moreover, there was no hint in this communication that the Board might consider D5 to play any role whatsoever in view of inventive step […]. Rather, the petitioner had assumed – rightly, in its opinion – that the TBoA would raise the question whether D5 was part of the prior art of its own motion, in order to discuss it and decide on it, if and when it considered D5 to be potentially relevant. Until then it was legitimate for [the petitioner] to assume that the contents of the communication of the TBoA still applied.

[17] At this stage of the review proceedings, where the EBA has only heard one party, it has to assume, in favour of the petitioner, that the question of the status of D5 had not been raised during the OPs. It is true that in its decision […] the TBoA only mentions that D5 is one of the two documents used by the Board as prior art, but the decision does not dwell on the objection of the petitioner that its publication before the priority date had not been established.

[18] However, the petitioner does not contend that D5 was discussed during the OPs before the TBoA within the framework of the substantive discussion of inventive step. This also follows from the impugned decision, where the arguments of the petitioner are recorded as follows […]:
“It was true that D5 concerned a packed, highly compressed filter tow bale of the kind under consideration. However, there was no hint in this document that the bale had the cuboid-shape defined in claim 1 without there being bothersome bulges (Auswölbungen) or neckings (Einschnürungen) and having the flatness of the upper and bottom sides of the bale as also defined in claim 1.”
The arguments of the [opponent] are also recorded […].

[19] The EBA does not know whether the status of D5 as prior art has not been discussed during the OPs. It may be that the TBoA has come to the conclusion, in view of the discussion on D5, which undoubtedly has taken place, that the petitioner had not maintained the objection. Anyway, this does not make any difference because the petition for review misses one fundamental point:

It is not the role of the Board of appeal to ensure of its own motion that all the points that have been raised at any stage of the appeal proceedings are discussed during the OPs. It is up to the parties to raise a point which they consider relevant and which they believe might be overlooked and to insist on it being dealt with – if necessary, by means of a formal request. If a Board then does not give a party the opportunity to state its arguments, this can justify the objection that the right to be heard pursuant to A 113(1) had been violated.

However, this is not true [in the case of] the petitioner.

[20] As the petitioner has not made any such request within the meaning of R 104(b), the petition for review is clearly unallowable in view of this objection.

Should you wish to download the whole decision or have a look at the file wrapper, just click here.

My post on related decision R 19/10 can be found here.