Thursday, 23 August 2012

T 160/09 – Transparency

This appeal was filed against the decision of the Examining Division (ED) to refuse the application under consideration (claiming a mobile terminal for a wireless telecommunications system) for lack of inventive step.

The decision was delivered during oral proceedings (OPs) before an ED in a different composition than the one having signed the summons to OPs. More specifically, instead of the second examiner who had signed the summons another examiner was present during OPs and signed both the minutes and the decision.

The decision contains several interesting paragraphs on procedural matters:

Remittal in case of an adverse decision

[1] If the board were to examine the case substantially and come to a negative conclusion, it would make no sense to then remit the case to the ED for further prosecution. The reasons for the decision of the board would have to be given, and the negative conclusions would therefore be part of the ratio decidendi of the decision. The ED would therefore be bound by those conclusions (A 111(2) EPC 1973). Thus the only purpose of such a remittal would be to give the appellant a further opportunity to amend its case to rely on new facts, such as new, more restricted, claims. But any such facts could and should be submitted to the board itself, preferably with the grounds of appeal (Articles 12(2) and 13(1) RPBA). The appellant is effectively asking for a blank cheque to further modify its case, together with a further opportunity to appeal. Accession to such a request would require truly exceptional circumstances, of a nature which the board cannot presently envisage. At any rate, no such circumstances have been claimed here. Hence, the appellant’s request to remit the case if the board intends to come to an adverse decision for the appellant cannot be granted.

[2] According to Article 11 RBPA the board shall remit the case to the department of first instance if fundamental deficiencies are apparent in the first instance proceedings, unless special reasons present themselves for doing otherwise. If no such reasons exist, the board will allow the appeal because of the fundamental deficiency alone and without assessing the substantive merits of the appeal, and will remit the case in order for this error to be corrected in further prosecution. So the board will first examine whether there is a fundamental deficiency in the first instance procedure which justifies an immediate remittal.

The alleged substantial procedural violations

Right to be heard

[3] The decision makes repeated reference to figure 4 of D2 […] which had not been mentioned in the written procedure nor, as it appears from the minutes, discussed during OPs. Thus it would appear that the appellant did not have an opportunity to comment on this aspect of the decision. Contrary to the appellant’s position, however, the board is of the opinion that the reference to figure 4 of D2 was not decisive for the decision.

[4] As regards the main request, the decision comes to its conclusion as to lack of inventive step of claim 1 over D1 and D2 without referring to figure 4 (see point 2-2.9). Figure 4 is mentioned later on with respect to claims 2 and 3 (point 3.1) and in a subsequent section dealing with the applicant’s arguments (points 4 et seq.) to show why they did not, according the ED, affect this conclusion. As regards the auxiliary request, the ED argue (sic) in the decision (point 5.1) that the “additional feature does not render the claimed subject matter inventive” because to use event subscription is “the most common way of implementing an event-based communication” and “well within the reach of the skilled person”. The ED further argue (sic) (point 5.2) that figure 4 of D2 provides an example of event subscription, and conclude (sic) (point 5.3) that “[t]herefore, the subject-matter of independent claims of the auxiliary request does not involve an inventive step”.

[5] The appellant pointed out that neither section 4 nor point 5.2 of the decision are labelled as obiter dicta nor placed sufficiently separate from the reasons (e.g. at the very end) to warrant the conclusion that they were meant as obiter dicta. The appellant was also of the opinion that the conclusion in point 5.3 relies on the arguments in both points 5.1 and 5.2.

[5.1] As a consequence, the appellant argued that these sections belong to the ratio decidendi of the decision un der appeal. The appellant also made reference to T 5/81 [headnote, 7] which states that “an alleged violation affecting a part of the decision other than its ratio decidendi cannot be a substantial violation” and submitted that, by implication, all procedural violations which do affect the ratio decidendi must be considered as substantial procedural violations.

[5.2] The appellant further argued that the board had to assess whether a substantial procedural violation had occurred on a purely objective basis and that therefore there was no room for any discretion on the board’s side based on subjective judgment. In case of doubt the board had, so the argument, no choice according to T 1505/06 [3.1] but to remit the case. It also argued that an objective assessment must be based on the structure of the decision […].

[6] The board agrees that a “substantial procedural violation” is an objective deficiency affecting the entire proceedings (J 7/83 [12]) which is to be determined on an objective basis (see J 32/95 [4.1]). However, the board’s assessment is indeed based on the pertinent objective facts, in particular the decision under appeal.

[6.1] In T 1505/06 the Opposition Division (OD) had refused the proprietor’s request to postpone the OPs but had failed to give their pertinent reasons in the minutes or in the final decision. Absent such reasons the board had found itself incapable of deciding whether OD had exercised its discretion properly or not and whether a substantial procedural violation had occurred, and therefore saw no choice but to remit the case to the OD for further prosecution (see esp. [3.1]). In the present case, the situation is significantly different: It is undisputed that the decision under appeal contains reasons for the relevant conclusion as to inventive step and thus there is a factual basis to decide whether or not the alleged violation of the right to be heard occurred or not.

[6.2] The board agrees with the appellant that the structure of the decision is an important aspect for analysing the reasons of a decision, but disagrees that it is the only one that may be taken into account for this analysis to be objective. Rather, the content of the individual arguments may and normally must be assessed, too.

[6.3] Also, the requirement that a decision be based on objective facts does not exclude that the board has to assess and judge the facts at issue nor that consequently the decision may also contain subjective elements.

[7] Having said that, the board interprets the reasons in the decision as follows:

[7.1] In point 2.6 of the decision it is argued that D2 dis closes that software modules are permitted to invoke functionality in their own layer or in layers below, whereas communication upwards through the layers is con figured to be handled by events. With respect to events, reference is made to the following disclosure of D2 […]:
“Upcalls arise in systems that receive asynchronous inputs through lower level components and that usher the processing of these inputs up through the system. Upcalls are common in net works and operating systems, and are initiated via hardware interrupts.”
[7.2] Point 4.4 of the decision repeats the applicant’s argument according to which “D2 does not disclose the ‘asymmetric’ operation between layers as claimed”. This argument is dismissed in point 4.5 with reference to the cited section of section 3.1. In point 4.6, reference to figure 4 along with the argument that “the receipt of a data packet” would represent a hardware interrupt “as introduced in section 3.1, line 14” the “processing” of which “implies its propagation upwards through all the layers” which would show “the existence of event-based processing in all layers of the system”.

[7.3] In the board’s judgment, the ED made reference to figure 4 of D2 as a specific example of the general statement in the cited passage of section 3.1 with respect to the existence and handling of hardware interrupts. Therefore, this reference merely illustrates an argument previously made by the ED and discussed with the applicant and does not introduce a new argument.

[7.4] The fact that, as the appellant pointed out during OPs, the board of appeal had expressed doubt in the summons to OPs as to whether section 3.1 of D2 actually discloses exclusively event-based upward communication and therefore disagreement with the ED’s argument in substance, is irrelevant for the issue at stake: Whether the appellant’s right to be heard was violated or not is a procedural question quite independent of the substantive question of whether the board agrees with the reasoning of the ED or their conclusion.

[7.5] Similarly, in the board’s opinion, the ED referred to figure 4 in point 5.2 in order to illustrate the argument made under point 5.1, whereas the conclusion as to lack of inventive step in point 5.3 does not depend on this example but is supported by the allegation of common knowledge under point 5.1 alone.

[8] The board thus comes to the conclusion that figure 4 of D2 was not decisive for the ED to arrive at their finding as to lack of an inventive step of the independent claims of both requests and thus is not a substantial procedural violation which would make an immediate remittal equitable under Article 11 RPBA.

Composition and constitution of the ED

[9] The appellant argued that the OPs did not take place before the legally appointed ED because the second examiner present at the OPs was not the same as the examiner having signed the summons, and because there is no evidence that the president of the EPO directly or by delegation had ordered or approved this change or according to what procedure.

[9.1] The appellant argued that absent such evidence it must be assumed that the new second examiner had appointed himself. The appellant argued that according to T 390/86 [7] such a “self-appointment” is illegal because members of the ED are personally appointed under A 18 EPC 1973 on a particular file. The appellant also suggested that “self-appointment” would offend against the appellant’s right to defend their case before an ED as “fairly diverse as possible”. The appellant did not however provide any evidence to corroborate the suspicion of self-appointment. According to the minutes […] the appellant had only asked why the second examiner was changed but when the ED referred to “organizational reasons” the appellant did not request further information to establish that this change was approved or by whom.

[9.2] The appellant did not question that the new second examiner might not be technically qualified as required by A 18(2) EPC 1973 or not be competent to deal with the pertinent parts of the international patent classification (cf. R 9(1) EPC 1973). The board also does not consider that the requirement of A 18(1) EPC 1973 that the EDs shall be responsible for the examination of European patent applications prohibits changes in their composition per se.

[9.3] The appellant did not, in fact, raise any objection against the individual new member, did not claim that the new ED had shown any lack of “fair diversity” to the appellant’s disadvantage, and generally did not argue that the appellant was negatively affected by the replacement.

[10] In T 390/86, the appealed decision was set aside be cause the written decision had not been signed by those members of the OD who had delivered the decision during OPs. In the reasons (points [7] and [8]) it is explained that the decision must be delivered by the examiners who are “appointed on a personal basis” to constitute a particular OD in order to decide the case and that wrong signatures on the written decision put into doubt whether the written decision reflected the views of the same examiners who had decided the case in oral proceedings. As the board reads it, T 390/86 does not prohibit that the composition of an OD be changed at all, nor does it require that the EPO follow a particular procedure to do this. In the present case there is no doubt that the written decision was signed by those examiners who had taken part in the OPs. For this reason alone T 390/86 does not apply to the present case.

[11] The appointment and possible replacement of members of the ED (and OD) are amongst the “necessary steps” which by A 10(2)(a) EPC 1973 the president is empowered to take to ensure the functioning of the EPO. The president may delegate these powers under A 10(2)(i) EPC 1973. In this respect, R 12(1) EPC 1973 provides that EDs are grouped together administratively so as to form directorates. In the board’s view this implies that the president delegates decisions about administrative matters regarding the ED, including the appointment and replacement of members, to the directorates.

[11.1] It is true that there is no evidence on file that the president has, directly or by delegation, approved the change in the composition of the ED. However, the EPC does not contain an explicit requirement that such evidence be made available. The board points out that neither is such evidence available for the initial allocation of the ED. In fact, to the best knowledge of the board such information is generally not publicly available.

[11.2] The sections of Guidelines for Examination as referred to by the appellant (Version June 2005, sections C-VI, 1.2 and 1.3) explain that a dossier is normally allocated to an ED responsible for the examination of applications in the technical field in which the particular application has been classified by the search division and under which conditions exceptions to this principle are made, that one member of the ED will, as a rule, be entrusted to carry out all the work up to the point of a decision to grant a patent or refuse the application, and that this primary examiner is normally the examiner who drafted the search report. The appellant considers that these sections make at least plausible that the initial appointment of an ED to an application is performed according to a well-defined procedure.

[11.3] The board however cannot see that these sections of the Guidelines relate to the question of whether the appointment takes place according to delegation by the president or according to what procedure. The board also disagrees with the appellant that the Guidelines relate to the initial appointment of an application as opposed to a change in the ED: They do not mention initial allocation explicitly, and there is no reason to assume that changes in the composition of the ED should not be made according to the same criteria. For this reason, the board considers the cited sections of the Guidelines to be irrelevant for the appellant’s argument.

[12] The appellant also argues that there is a generally accepted principle of transparency in procedural law in the contracting states of the EPC which the EPO should take into account under A 125 EPC 1973. This transparency principle would require that the procedure according to which the composition of the ED is changed be made public.

[12.1] In support of this allegation, the appellant refers to the European Treaties and therein specifically to:
  • Article 1 in section “Common Provisions” stating inter alia that “[t]his treaty marks a new stage in the process of creating an ever closer union among the peoples of Europe, in which decisions are taken as openly as possible and as closely as possible to the citizen”,
  • Article 10(3) in section “Provisions on Democratic Principles” stating inter alia that “[d]ecisions shall be taken as openly and as closely as possible to the citizen”, and to
  • Article 15(1) in section “Provisions Having General Application” stating that “[i]n order to promote good governance and ensure the participation of civil society, the Union’s institutions, bodies, offices and agencies shall conduct their work as openly as possible”.
[12.2] Firstly, the board notes that the objective for open decision making in Articles 1 and 10(3) explicitly refers to “the Union”, i.e. to the European Union as an organization separate from its member states. The board thus rejects the idea that a general principle accepted within the member states can be derived from the cited passages of the EU treaties.

[12.3] Secondly, the board is not of the opinion that the “democratic principle” according to which decisions shall be taken “as openly as possible” can be derived from the cited passages of the EU treaties as a point of procedural law as opposed to a non-enforceable commitment of the member states.

[12.4] Thirdly, the board considers that the vague reference to decisions which should be taken “as openly as possible” does not suffice to conclude that it would imply, as alleged by the appellant, the particular requirement to publish the appointment procedure of examiners. The appellant also did not claim that the procedures according to which tasks are allocated to administrative employees are conventionally published in member states of the European Union, nor was anecdotal evidence provided that some of them are. The board has no reason to assume that this is generally the case.

[12.5] The board therefore concludes that the appellant has failed to establish a transparency principle which would, according to A 125 EPC 1973, require the EPO to publish the appointment procedure of examiners. The board also finds that the appellant has not established that the replacement of the second examiner in the present case infringed on its right to be heard or constituted a fundamental procedural defect for other reasons.

[13] In summary, the board comes to the conclusion that no substantial procedural violation occurred which would on its own justify that the decision be set aside and the case be remitted to the first instance according to Article 11 RPBA. The request that such remittal should preferably be to an ED in a different composition is thus moot.

The appeal was dismissed.

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

The file wrapper can be found here.