R 13/11 – False Hopes

The Boards’ handling of Article 12(4) RPBA is also sometimes discussed in petitions for review, as the present case shows. The case is also interesting because the petitioner invoked the principle of legitimate expectations.

The petition concerns decision T 23/10 of Technical Board of Appeal 3.3.02 (reported on this blog) dismissing the patent proprietor’s appeal against the decision of the OD to revoke its European patent.

The petition was based on the ground in A 112a(2)(c), i.e. that a fundamental violation of A 113 had occurred in the appeal proceedings.

The patent proprietor’s main request in the opposition proceedings was to maintain the patent as granted. In OPs the Opposition Division (OD) decided that claim 11 of the patent as granted did not meet the requirements of A 123(2) and A 76(1). Since a claim such as claim 11 as granted was also present in all the auxiliary requests 1 to 7, those requests also failed. After an adjournment the patent proprietor did not file any further requests and the OD decided to revoke the patent.

The [patent proprietor] filed an appeal in which it maintained the same main request and auxiliary requests 1 to 7 as before the OD and also filed auxiliary requests 8 to 15 in which claim 11 was omitted. The Board of Appeal issued a communication dated 16 September 2010 in which it expressed the provisional opinion that claim 1 of the main request did not satisfy A 123(2) and A 76(1), that it agreed with the decision under appeal as regards claim 11, and that it intended to remit the case to the first instance “in case that one of the requests on file meets the requirements of A 76 and A 123(2)”. In its response to the communication, the patent proprietor withdrew its main request and auxiliary requests 1 to 7. However, at the OPs before the Board on 18 January 2011 the remaining auxiliary requests 8 to 15 were held inadmissible in the exercise of the Board’s discretion under Article 12(4) RPBA. The appellant did not file any further requests and objected that by not admitting its auxiliary requests 8 to 15 into the proceedings the Board had denied it the right to be heard and thus a fundamental violation of A 113 had occurred.

By an order of 20 September 2011, the Enlarged Board (EBA) in its composition under R 109(2)(a) submitted the petition for review to the EBA in its composition under R 109(2)(b) – which, incidentally, does not happen very often ; only few petitions arrive at that stage.

What was the final verdict of the EBA?

[1] As indicated in the EBA’s provisional opinion of 1 February 2012, the petition is admissible. However the EBA considers the petition not to be allowable for the following reasons.

[2] Although the petition makes several references to the principle of legitimate expectations, and indeed takes that principle as its starting point […], the failure to observe that principle is not in itself a ground for a petition for review mentioned in A 112a(2) or R 104, the grounds mentioned in those provisions being exhaustive (see R 16/09 [2.3.5-6]; and R 10/09 [2.4]). The only ground mentioned in those provisions and relied on in the petition is that in A 112a(2)(c), namely that a fundamental violation of A 113 occurred.

[3] The alleged violation is described in the petition as:

“the complete refusal of the Board of Appeal to admit sets of claims that had been filed with [the] Grounds of Appeal [which] was ... unexpected and violated the principle of legitimate expectations and, most importantly, deprived the [[patent proprietor]] of its right to be heard under A 113 … The Board of Appeal’s application of its discretion under Article 12(4) RPBA was incorrect, and its refusal to admit Auxiliary Requests 8 to 15 into the proceedings resulted in an unreliable and unjust decision” […];

and

“the Board of Appeal contravened the [patent proprietor’s] right to be heard as a result of the incorrect application of the discretion given to the Boards of Appeal under Article 12(4) RPBA, which the Board themselves (sic) state at point 2.4 of the decision, is intended to serve the purpose of ensuring fair and reliable conduct of judicial proceedings” (see petition, page 10, first full paragraph; emphasis added in the petition).

[4] It is therefore abundantly clear that the [patent proprietor’s] real complaint is that the Board of Appeal decided in its discretion under Article 12(4) RPBA not to admit the [patent proprietor’s] auxiliary requests 8 to 15 into the proceedings. The case-law of the EBA shows clearly that petition proceedings may not be used to review the exercise by a Board of Appeal of a discretionary power if that would involve an impermissible consideration of substantive issues (see R 1/08 [2.1]; R 10/09 [2.2]; R 9/10 [10]). This has recently been confirmed in the specific context of the discretion in Article 12(4) RPBA (see R 11/11 [6]).

[5] It appears from both the minutes of the OPs […] and the decision under review […] that the issue of the admissibility of the [patent proprietor’s] auxiliary requests 8 to 15 was in fact discussed at the OPs before the Board of Appeal. The [patent proprietor] does not appear to dispute this, indeed at several places in its submissions to the EBA it acknowledged and admitted that the issue was discussed at the OPs ([…] the [patent proprietor] observes the issue was raised as a “deviation” from the Board’s preliminary opinion; […] the [patent proprietor] complains it was raised by the Board and not by the [opponent]; […] the [patent proprietor] observes the issue was first raised at the OPs; and […] the [patent proprietor’s] representative acknowledged it was an issue which could arise at OPs but he was surprised at the emphasis placed on it). The [opponent] also confirms the issue of admissibility of the auxiliary requests was discussed at the OPs […].

[6] Since it is thus beyond doubt, indeed agreed by all concerned, that the [patent proprietor] was heard on the admissibility of its auxiliary requests 8 to 15, the only question which arises is, as the EBA observed in its communication […], whether the [patent proprietor’s] opportunity to comment on that issue was adequate. Although the [patent proprietor] did not present its arguments in that way in the petition, the question of adequacy of opportunity could, as the EBA’s communication indicates, be extracted from the complaints that this issue was not mentioned in the Board’s preliminary opinion and that the Board’s decision during the OPs, which the [patent proprietor] calls an unexpected departure from the preliminary opinion, did not allow the [patent proprietor] an opportunity to present a full and complete case […].

[7] The EBA considers the opportunity was adequate. As the [opponent] has observed […], the [patent proprietor] (or its representative) must have known that auxiliary requests filed on appeal are only admissible in the Board of Appeal’s discretion and further must have known that Article 12(4) RPBA could lead to a finding of inadmissibility in the case of auxiliary requests which could have been presented at first instance. Indeed, that must or should have been a consideration also when the [patent proprietor] elected not to file further requests at the OPs before the OD. The [patent proprietor] has now in the petition proceedings put forward various explanations why that was not done but, as in decision R 11/11 [7], the EBA observes that these are reasons why the [patent proprietor] did not file such requests then, and not reasons why it could not do so. It is quite clear from the [patent proprietor’s] own submissions […] that it consciously chose not to do so.

[8] In any event, and for the sake of completeness, the EBA does not accept that the basis of the [patent proprietor’s] argument in this respect – that the decision of the OD was the first the [patent proprietor] knew of an objection to claim 11 as granted – is correct. The objection was made in the notice of opposition of the first opponent filed on 6 December 2007 […] and repeated in its reply of 27 August 2009 to the OD’s preliminary opinion […]. That latter submission also contains additional comments in response to the [patent proprietor’s] own reply to the notices of opposition of 25 September 2008 in which it referred to and presented arguments against this very objection […]. It appears therefore that, far from being surprised by the objection being raised at the OPs before the OD, the [patent proprietor] was squarely on notice of the objection from the commencement of the proceedings, had prepared an answer to it more than a year before the OPs, and was presented with the first opponent’s rejection of that answer prior to the OPs.

[9] The argument that the [patent proprietor] was taken by surprise at the OPs is therefore not credible and, without that argument, the other submissions in this respect – such as the need for time to consider the implications of amendment, the commercial importance of claim 11, and the need to wait for the written decision of the OD – must fall. The statement of the [patent proprietor] that the written decision of the OD contained reasoning never previously advanced either by the Division or the opponents […] is simply wrong, as a comparison of […] the first opponent’s notice of opposition and […] the OD’s decision shows. However, despite the implausibility of the [patent proprietor’s] arguments why it did not file auxiliary requests at the OPs before the OD, the EBA needs to make no finding as to why this was not actually done, or indeed why no explanation was provided when the requests were filed with the statement of grounds of appeal. Certainly there is no need to agree or disagree with the [opponent’s] assertion that it was an abusive delaying tactic on the part of the [patent proprietor], although it appears the Board of Appeal had some sympathy with that argument (see the decision, point [2.8]). As already mentioned […], the requests could have been filed at first instance – indeed, in view of the first opponent’s submissions, the [patent proprietor] would have had good reason to do so – and thus Article 12(4) RPBA applied.

[10] The [patent proprietor’s] argument as regards the adequacy of opportunity is based on the allegedly misleading nature of the Board of Appeal’s preliminary opinion. The [patent proprietor] argues that, since the opinion commented on substantive matters, the [patent proprietor] understood that its auxiliary requests were admissible and, on that understanding, withdrew one group of its requests leaving only the other group (auxiliary requests 8 to 15) which it had filed as new with the statement of grounds of appeal. Then, the argument continues, the [patent proprietor] was surprised to find at the OPs that admissibility of those remaining requests was in issue. The conclusion of the argument is that, if the [patent proprietor] had known that admissibility of those requests was still an issue to be discussed at the OPs, it would have prepared better and presented a fuller case.

[11] The EBA can understand how a communication containing a preliminary opinion may generate hopes of a particular outcome to the proceedings which, after subsequent developments, are not fulfilled. However, the EBA cannot agree that, by commenting only on substantive issues in its preliminary opinion, the Board could be considered to have decided already on questions of admissibility. It would have been quite wrong for the Board to have decided any issue prior to the OPs, as that could clearly have denied either or both parties the right to be heard at the OPs to which they were entitled and which they had both requested (A 113(1) and A 116(1)). Moreover, any comment on admissibility would have been no more than provisional (see Article 17(2) RPBA). Although it was put forward in the petition […] that the [patent proprietor] understood from the preliminary opinion that a decision to admit the auxiliary requests into the proceedings had actually been taken, the EBA considers that it was not in fact the case as, at the OPs before the EBA, the [patent proprietor’s] representative candidly admitted that he knew admissibility of auxiliary requests was an issue which could arise at OPs […]. While the preliminary opinion is open to the criticism that it did not mention the issue of admissibility of auxiliary requests, the omission of an issue which the parties and the Board knew could arise cannot be characterized as misleading.

[12] There is a further reason why the EBA considers that the [patent proprietor] should not have been surprised that admissibility of the auxiliary requests, although not mentioned in the preliminary opinion, was raised at the OPs. In its reply to the grounds of appeal the [opponent] had raised the objection that before the OD the [patent proprietor] had deliberately chosen not to file a set of claims which the OD could have considered […]. Although this was raised by the [opponent] not as an objection to admissibility of the auxiliary requests under Article 12(4) RPBA but as an objection to any remittal based on the claims in those requests, the [opponent] made an unambiguous attack on the [patent proprietor’s] behaviour in not filing at first instance requests which it then filed on appeal. In the light of that attack it was not surprising that the Board of Appeal considered admissibility of the auxiliary requests under Article 12(4) RPBA. Accordingly the [patent proprietor’s] argument must fail.

[13] The [patent proprietor’s] further argument that the question of admissibility of its auxiliary requests 8 to 15 was raised by the Board of Appeal and not by the [opponent] […] must also fail. It certainly did not prevent the [patent proprietor] being heard and it is unclear how it is suggested that it affected the adequacy of the opportunity to be heard. The [patent proprietor’s] argument is that this somehow represented a lack of neutrality on the part of the Board but, even assuming that were the case, there is no submission from the [patent proprietor] explaining how this lead to a violation of A 113. In any event, the EBA can see no valid criticism of the Board in this respect. While the [opponent] agrees […] that it did not challenge the admissibility of the auxiliary requests 8 to 15 as such in its reply (but only made submissions on them in the context of its arguments against remittal), the [patent proprietor] acknowledges that admissibility was an issue which could arise […]. That the Board might raise the question of Article 12(4) EPC (sic) if no-one else did was only to be expected and that the [opponent], once the issue was raised, requested a finding of inadmissibility, is wholly unsurprising.

[14] The [patent proprietor] having relied on an alleged inadequacy of opportunity to comment on the admissibility of its auxiliary requests, it was none the less unable to satisfy the EBA that it would have done anything differently if, for the sake of argument, the Board of Appeal’s preliminary opinion had mentioned the issue. The [patent proprietor] submitted in the petition that it was denied the opportunity to prepare a full response to the inadmissibility objections and, at the OPs before the EBA, that its representative would have invested more time on the issue but, when asked how the adequacy of the opportunity would have differed, could not add anything […]. That must be conclusive – if the [patent proprietor] itself cannot suggest anything additional it would have done or might have said if the matters of which it complains had not occurred, then its opportunity to be heard must have been adequate.

[15] The [patent proprietor] sought to distinguish this case from that of decision R 11/11 by the fact that, in the case under review there, admissibility of auxiliary requests had been in issue throughout the appeal proceedings […]. However, the EBA can attach no significance to that, not least because the admissibility of requests filed on appeal is always a matter for a Board’s discretion and will therefore be decided, either at OPs or otherwise, after the parties have made their submissions; so the matter will in fact be in issue throughout appeal proceedings whether the subject of submissions or not. Again, the EBA notes the [patent proprietor’s] acknowledgment that admissibility of such requests could arise at the OPs […].

[16] Further, there are in fact significant parallels between this case and R 11/11. In both cases the complaint was in essence that the non-admission of requests filed with the statement of the grounds of appeal violated the [patent proprietor’s] right to be heard (see R 11/11 [3] and point [4] above). In both cases the reason for non-admission was the exercise of the discretion in Article 12(4) RPBA (see R 11/11 [4] and points [3] and [4] above). In both cases the [patent proprietors] argued that they could not have presented their requests in the first instance proceedings since they were taken by surprise and did not know the reasons for the OD’s view (see R 11/11 [5] and point [8] above). In both cases it was not disputed that the [patent proprietor]s were in fact heard on admissibility (see R 11/11 [6] and point [5] above). And in both cases the EBA has held that, in any event, the [patent proprietor]s could have filed requests at first instance but did not do so (see R 11/11 [7] and point [7] above). The EBA sees no reason to differ here from the conclusion it reached (in a different composition) in decision R 11/11.

[17] It appears that the [patent proprietor’s] difficulties were not in fact caused by any actions or failings on the part of the Board of Appeal but were of its own making. Whether or not it really was surprised by the OD’s decision, it did not file further requests to overcome the objection to claim 11 in the opposition proceedings when it could in fact have done so. When it did file such requests with its statement of grounds of appeal, it did not anticipate the argument of inadmissibility under Article 12(4) RPBA by explaining why the requests could not have been filed at first instance, even though its representative knew admissibility of new requests on appeal was an issue which could arise. While the [patent proprietor] could understandably take some encouragement from the fact that admissibility of the requests was not mentioned in the Board’s preliminary opinion, it drew from that the unwarranted conclusion that admissibility of the requests had already been decided even though, paradoxically, it also knew that the issue could arise at the OPs.

[18] The [patent proprietor] and its representative were responsible for the conduct of their case and it was for them to submit the necessary arguments to support their case on their own initiative and at the appropriate time (see R 2/08 [8.5, 9.10]). If the [patent proprietor] was surprised by the result, such surprise may be an understandable subjective reaction but such subjective surprise cannot change the fact that the [patent proprietor] knew the issues which might be raised and had an adequate opportunity to comment thereon (see R 12/09 [13]; and R 15/10 [11]). Despite the assertions of a denial of the right to be heard, the detailed criticism of the reasons for the board’s decision and the arguments over the cited case-law make the petition read more like the grounds of a second appeal than a petition for review, demonstrating that the [patent proprietor’s] real complaint is with the substance of the decision which the EBA has no power to review. […]

The petition for review is rejected as unallowable.

In my opinion the argument based on good faith was not without force; its rejection once more confirms the EBA’s (well established) narrow interpretation of the grounds on which petitions for review can be granted. 

Should you wish to download the whole decision, just click here.

The file wrapper can be found here.