T 184/10 – Speculation

[3.2] Document D14, which like the contested patent relates to the treatment of [non-insulin-dependent diabetes mellitus (NIDDM) …], constitutes the closest prior art.

The [patent proprietor] argued that document D14 did not qualify as closest prior art because of its speculative character.

Indeed, there are some phrases to be found in the first paragraph of the section “Future Trends in Treatment of NIDDM” on page 326 (e.g. “compounds that act as insulin sensitizers might be expected to have an important role in treatment”, “[a] group of drugs which may act in this manner, the thiazolidinediones…”, “[it] is interesting to speculate on the possible future role of the thiazolidinediones…”, “[it] is even more likely that they could play a role in combination therapy…” [emphasis by the board]) which, at first sight, might lead to such a conclusion.

However, the above-mentioned paragraph of document D14 also reveals that at the time when document D14 was published, the TZDs, and in particular ciglitazone, pioglitazone and englitazone, were undergoing human trials in patients with NIDDM and that further data concerning, among others, the mechanism of action, were available from animal models. Taking into consideration these data as well as common general knowledge, the author of document D14 then gave an outlook into future trends, which were of course not yet verified by experimental evidence.

In view of the fact that this outlook was based on the data available at the time, the skilled person would not dismiss it as pure speculation. Instead, he would regard it as a serious attempt to interpret the existing state of the art. As a consequence, the content of document D14 qualifies as closest prior art.

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

The file wrapper can be found here.

T 678/09 – The Trap Is In The Detail

Drafting disclaimers that fully comply with the requirements of G 1/03 is far from easy, as the present decision once more illustrates.

The Opposition Division (OD) had revoked the opposed patent inter alia for non-compliance with the requirements of A 123(2).

Impressive claim 1 of the main request (which was also the main request before the OD) read (in English translation)

1. Cosmetic compositions for topical use for protecting the skin and/or hair from UV radiation, comprising

(a) a UV-filter having the general formula I

wherein in A: R¹ is 2-ethylhexyl, R² is tert-butyl, X is NH

(b) another UV-filter selected from the group consisting of ethoxylated ethyl p-aminobenzoate (25 mol), 2-ethylhexyl p-methoxycinnamate, 2-phenylbenzimidazolesulfonic acid and its salts, 2-hydroxy-4-methoxybenzophenone, 2-hydroxy-4-methoxybenzophenone-5-sulfonic acid, 3-(4'-methylbenzylidene)-d,1-camphor, 2,4,6-tri(p-(2-ethylhexoxycarbonyl)anilino)-1,3,5-triazine, 4-(tert-butyl)-4'-methoxydibenzoylmethane,

as well as conventional cosmetic thinning agents, auxiliaries and carriers customary in cosmetics

with the exception of:

(1) cosmetic and/or dermatologic compositions containing

(i) 4-(tert-butyl)-4'-methoxydibenzoylmethane

(ii) at least one triazine derivative of the following formula

wherein R’ is 2-ethylhexyl and R is tert-butyl, and

(iii) at least one alkyl β-β’-diphenyl-acrylate or alkyl α-cyano-β, β’-diphenylacrylate of the following formula

 wherein

• R₇ and R’₇, which are identical or not, are present in m- or p-position and chosen from among: hydrogen, a linear or branched C_1-8 alkoxy group and a linear or branched C_1-4 alkyl group;

• R₈ is a linear or branched C_1-12 alkyl group

• R₉ is hydrogen or a –CN group, and wherein these compositions do not contain any 2-ethylhexyl p-methoxycinnamate;

in a cosmetically and/or dermatologically acceptable carrier;

(2) Oil/water day-cream consisting of 1.5 g of compound C, 3.5 g of 2-ethylhexyl-4-methoxycinnamate, 4.0 g of triglyceryl methylglucose distearate; 1.0 g of glyceryl stearate; 7.4 g of C₁₂-C₁₅ alkyl benzoate, 5.0 g of avocado oil, 5.0 g of diisopropyl adipate, 0.2 g of Carbomer 940, 0.3 g of imidazolidinyl urea, 0.2 g of methylparaben, 0.1 g of propylparaben, 0.15 g of aminomethyl propanol, 3.0 g of glycerine, and distilled water q.s. to 100.0;

or oil/water day-cream consisting of 1.5 g of compound C, 3.5 g of 3-(4’-methylbenzylydene)-camphor, 4.0 g of triglyceryl methylglucose distearate, 1.0 g of glyceryl stearate, 7.4 g of C₁₂-C₁₅ alkyl benzoate, 5.0 g of avocado oil, 5.0 g of diisopropyl adipate, 0.2 g of Carbomer 940, 0.3 g of imidazolidinyl urea, 0.2 g of methylparaben, 0.1 g of propylparaben, 0.15 g of aminomethyl propanol, 3.0 g of glycerine, and distilled water q.s. to 100.0;

or oil/water day-cream consisting of 1.5 g of compound C, 3.5 g of 2-hydroxy-4-methoxybenzophenone, 4.0 g of triglyceryl methylglucose distearate, 1.0 g of glyceryl stearate, 7.4 g of C₁₂-C₁₅ alkyl benzoate, 5.0 g of avocado oil, 5.0 g of diisopropyl adipate, 0.2 g of Carbomer 940, 0.3 g of imidazolidinyl urea, 0.2 g of methylparaben, 0.1 g of propylparaben, 0.15 g of aminomethyl propanol, 3.0 g of glycerine, and distilled water q.s. to 100.0;

wherein compound C is a sunscreen compound of the following formula:

where R = (CH₃)₃C–; R₁ = R₂ = C₄H₉–CH(C₂H₅)–CH₂; X=O;

(3) Cosmetic composition, comprising a cosmetic substrate containing 1 to 5% by weight of a dibenzoylmethanes of formula (I)

wherein Q means methoxy and and G means ter-butyl

and 1 to 6% by weight of a composition of formula (II)

where R = (CH₃)₃C–; R₁ = R₂ = C₄H₉–CH(C₂H₅)–CH₂; X=O;

with the proviso that the weight ratio of the compounds of formula (II) and formula (I) is of at least 1.

The Board agreed that this request violated A 123(2):

*** Translation of the German original ***

Document D9 (disclaimer 2, first alternative)

[3.4.2] Document D9 discloses in its claim 1 cosmetic compositions for the protection of human skin from sun radiation, comprising a 1,3,5-triazine derivative in combination with a p- methoxycinnamate in a cosmetically and/or dermatologically acceptable carrier. Both for the 1,3,5-triazine derivative as well for the methoxycinnamate the alkyl radicals of the ester and the amide group have to be chosen from lists. Only Example 4 discloses an oil/water day-cream wherein 2-ethylhexyl-4-methoxycinnamate is used as UV-filter – according to a UV-filter of list (b) of the opposed patent – in combination with a 1,3,5-triazine referred to as “compound C” – corresponding to triazine A of the opposed patent. Therefore, only the specific oil/water day-cream of Example 4 contains all the features of claim 1 of the opposed patent and, therefore, constitutes a novelty-destructive disclosure.

The first alternative of disclaimer 2 was incorporated into claim 1 in order to exclude this novelty-destructive part of the disclosure of document D9. According to the wording of the first alternative of disclaimer 2, what is excluded is an oil/water day-cream that is identical with the one of Example 4 of document D9 in respect of all the components used and their quantities. Only the brand names (Markenbezeichnungen) “Synthalen® K” and “Abiol©” were replaced by the designations “Carbomer 940” and “imidazolidinyl urea”. As mentioned in the impugned decision […] these designations are synonyms of these brand names that are generally acknowledged in manuals, so that their use instead of the brand names is not objectionable under A 84 or under A 123.

The [opponent] pointed out that the designation “Carbomer 940” was also a brand name the use of which in an amended claim was to be objected  under A 84.

However, the [opponent] has only asserted that the designation “Carbomer 940” was a brand name (Markenname) without providing any evidence. The fact that individual manufacturers use this designation for their corresponding commercial product does not necessarily mean that it is a brand name, all the more as this designation is also used in general manuals and their chemical composition is, therefore, considered to be generally known. Therefore, this argument of the [opponent] is not successful.

The [opponent] also argued that the brand name “Abiol©” was a specific compound, i.e. N,N’’- methylenbis (N'-(3-hydroxymethyl)-2,5-dioxy-4-imidazolidinyl)urea and not “imidazolidinyl urea”.

However, the designation “imidazolidinyl urea” is only a generally known common name of this very compound to the IUPAC designation of which the [opponent] refers. Therefore, this argument cannot succeed either.

Document D10 (disclaimer 2, second alternative)

[3.4.3] Document D10 discloses in its claim 1 cosmetic compositions for the protection of human skin from sun radiation, comprising a 1,3,5-triazine derivative in combination with a benzylidenecamphor derivative in a cosmetically and/or dermatologically acceptable carrier. Both for the 1,3,5-triazine derivative as well for the benzylidenecamphor derivative the alkyl radicals of the ester and the amide group have to be chosen from lists. Only Example 4 discloses an oil/water day-cream wherein 3-(4’-methylbenzylydene)-camphor is used as UV-filter – according to a UV-filter of list (b) of the opposed patent – in combination with a 1,3,5-triazine referred to as “compound C” – corresponding to triazine A of the opposed patent. Therefore, only the specific oil/water day-cream of Example 4 contains all the features of claim 1 of the opposed patent and, therefore, constitutes a novelty-destructive disclosure.

The second alternative of disclaimer 2 was incorporated into claim 1 in order to exclude this novelty-destructive part of the disclosure of document D9. According to the wording of the second alternative of disclaimer 2, what is excluded is an oil/water day-cream that is identical with the one of Example 4 of document D10 in respect of all the components used and their quantities. Only the brand names “Synthalen® K” and “Abiol©” were replaced by the designations “Carbomer 940” and “imidazolidinyl urea”. This replacement of the brand names is not to be objected, for the reasons given [above] for the first alternative.

The [opponent] argued that besides the objections regarding the replacement of the brand names “Synthalen® K” and “Abiol©” by the designations “Carbomer 940” and “imidazolidinyl urea” made in view of the first alternative, the specific composition of Example 4 of document D10 also contained “perfumes”, which were absent from the second alternative of disclaimer 2.

However, it has to be noted that the oil/water day-cream of Example 4 already has a total amount of 100.0 % even without the addition of “perfumes”. Therefore, the addition of “perfume” cannot be part of the oil/water day-cream disclosed in Example 4 and, therefore, does not have to be incorporated into the second alternative of disclaimer 2. As a consequence, this argument of the [opponent] cannot succeed.

Document D11 (disclaimer 2, third alternative)

[3.4.4] Document D11 discloses in its claim 1 cosmetic compositions for the protection of human skin from sun radiation, comprising a 1,3,5-triazine derivative in combination with a 2-hydroxy-4-methoxy-benzophenone derivative in a cosmetically and/or dermatologically acceptable carrier. Both for the 1,3,5-triazine derivative as well for the benzylidenecamphor (sic) derivative the alkyl radicals of the ester and the amide group have to be chosen from lists. Only Example 4 discloses an oil/water day-cream wherein 2-hydroxy-4-methoxy-benzophenone is used as UV-filter – according to a UV-filter of list (b) of the opposed patent – in combination with a 1,3,5-triazine referred to as “compound C” – corresponding to triazine A of the opposed patent. Therefore, only the specific oil/water day-cream of Example 4 contains all the features of claim 1 of the opposed patent and, therefore, constitutes a novelty-destructive disclosure.

The third alternative of disclaimer 2 was incorporated into claim 1 in order to exclude this novelty-destructive part of the disclosure of document D9. According to the wording of the third alternative of disclaimer 2, what is excluded is an oil/water day-cream that is identical with the one of Example 4 of document D10 in respect of all the components used and their quantities. Only the brand names “Synthalen® K” and “Abiol©” were replaced by the designations “Carbomer 940” and “imidazolidinyl urea”. This replacement of the brand names is not to be objected, for the reasons given [above] for the first alternative.

[3.4.5] Therefore, the Board is of the opinion that the introduction of disclaimer 2 with its first, second and third alternatives intended to exclude the novelty-destructive parts of the disclosures of documents D9, D10, and D11, is allowable and does not violate A 123(2).

Document D13 (first disclaimer)

[3.4.6] Document D13 discloses cosmetic and/or dermatologic compositions containing a combination of several UV-filters in a cosmetically or dermatologically acceptable carrier. It discloses cosmetic and/or dermatologic compositions containing the UV-filter combination of 4-(tert-butyl)-4’-methoxydibenzoylmethane with a UV-filter based on a 1,3,5-triazine derivative, wherein the preferred 1,3,5-triazine derivative corresponds to the triazine A claimed in the opposed patent. If at least one alkyl-β, β’-diphenylacrylate or alkyl (α-cyano)-β, β’-diphenylacrylate is added as a further UV-filter to this composition, its stability to light is increased […].

Thus document D13 discloses both compositions containing a combination of at least three UV-filters and compositions containing only two UV-filters, i.e. 4-(tert-butyl)-4’-methoxydibenzoylmethane and the 1,3,5-triazine derivative corresponding to claimed triazine A.

According to the wording of disclaimer (1) […], however, only cosmetic and/or dermatologic compositions containing at least three UV-filters, i.e. a combination of 4-(tert-butyl)-4’-methoxydibenzoylmethane, a 1,3,5-triazine derivative corresponding to triazine A of the opposed patent and at least one alkyl-β, β’-diphenylacrylate or alkyl (α-cyano)-β, β’-diphenylacrylate.

As a consequence, compositions that contain only the two UV-filters 4-(tert-butyl)-4’-methoxydibenzoylmethane and the 1,3,5-triazine derivative corresponding to triazine A of the opposed patent are not excluded from claim 1 of the opposed patent by the wording of disclaimer (1) and document D13 is still novelty-destructive for them (sic). As a consequence, the wording of the disclaimer is not appropriate for excluding the whole part of claim 1 that is not novel. Thus the passage introduced into claim 1 as “disclaimer (1)”, which is not found in the application documents as filed, is not a valid disclaimer within the meaning of decision G 1/03 and the introduction of this passage into claim 1 of the main request does not comply with the requirements of A 123(2).

The [patent proprietor] argued that the production of each composition began by providing the individual component; the [components] were added subsequently.  Therefore, page 9, lines 22 to 24 mentions a composition containing two UV-filters only as an intermediate step, but the cosmetic compositions constituting the invention of document D13 always contained a combination of three UV-filters. The disclosure of D13 that was to be excluded by the disclaimer was only defined by the features disclosed in combination (im Zusammenhang), i.e. a cosmetic and/or dermatologic compositon containing at least one alkyl-β, β’-diphenylacrylate or alkyl (α-cyano)-β, β’-diphenylacrylate in addition to the two UV-filters 4-(tert-butyl)-4’-methoxydibenzoylmethane and the 1,3,5-triazine derivative corresponding to claimed triazine A, but free of octyl methoxycinnamate.

However, it has to be noted that on page 9, lines 22 to 24, document D13 discloses a cosmetic sunscreen composition containings a combination of 4-(tert-butyl)-4’-methoxydibenzoylmethane and the 1,3,5-triazine derivative corresponding to claimed triazine A as UV-filters.

Whether this is a preliminary stage of the cosmetic composition containing three UV-filters or a reference composition of the then prior art is not relevant as far as the disclosure is concerned. Therefore, the argument of the [patent proprietor] cannot succeed.

[3.4.7] […] As claim 1 […] does not comply with the requirements of A 123(2) because of the presence of disclaimer 1, the Board is of the opinion that a detailed discussion of the allowability of disclaimer 1 is superfluous.

Should you wish to download the whole decision (in German), just click here.

The file wrapper can be found here.

T 28/10 – You Have To Concentrate

We have seen in the previous post that the Board confirmed the decision of the Opposition Division (OD) not to admit the patent proprietor’s main request. In today’s passage the Board considered the auxiliary requests on file and made some interesting comments on Article 12(4) RPBA with respect to former case law. 

NB: This is one of the rare Board decisions that invoke the Konzentrationsgrundsatz. I did not really know how to translate this term, which normally expresses the idea that proceedings should not be diluted, so I translated quite literally (“principle of concentration”). This principle is related to the principle of judicial economy.

Anyway, the patent proprietor asked the Board of appeal (BoA) to admit broadened auxiliary requests AR1 to AR10 altough they had not been presented before the OD. It justified the filing of these requests by pointing out that the previous patent proprietor had different economic interests and that the claims that had been defended before the OD were not economically relevant to the transferee. 

*** Translation of the German original ***

[3.1] The AR on which the impugned decision is based contain claims directed at

• the use of mixtures of ipconazole and at least one further fungicidal agent as microbiocidal agent for protecting technical materials (claim 4 of AR1 and claim 1 of AR2), and
• mixtures of active agents as such, wherein the definition of the further fungicidal agent was significantly reduced as compared to the use claims (claim 1 of AR1), respectively.

Present AR 1 to 10, however, contain claims directed at

• the use of the mixtures as fungicides (claim 1 of AR 3, 4, 6, 8, and 10)
• mixtures if ipconazole with further fungicidal agents which additionally comprise at least one of the following active substances or groups of active substances in addition to those of claim 1 of AR1 considered in the impugned decision: phenols, methoxyacrylates (such as azoxystrobin or trifloxystrobin) or one or several formerly deleted triazole compounds.

Such mixtures of active substances and uses, respectively, were not object of AR1 and AR2 filed on September 24, 2009, on which the impugned decision of the OD was based. Consequently, the sets of claims according to present AR1 to AR10 are directed to subject-matter that has been claimed for the first time in the appeal proceedings and have not been discussed before.

[3.2] The [patent proprietor] is of the opinion that claims on which the opposition proceedings had not been based could nevertheless be pursued in opposition appeal proceedings, even if this meant that [patent proprietor] defended the patent in a version that was broader than [the versions discussed] in the opposition proceedings. It invokes decision T 123/85 as well as decisions T 386/04 and T 755/00.

[3.2.1] Decision T 123/85 formed the basis for case law the essential findings of which may be summarised as follows:

In opposition proceedings, the patent proprietor cannot declare that it surrenders part of the patent and thereby irrevocably limit the patent (T 123/85 [3.1.1]). In principle (i.e. as far as there is no abuse of procedure) the patent proprietor having defended the patent in amended form only cannot be hindered from returning to a broader version (including the version as granted) of the patent during the appeal proceedings because intermediate limitations of the patent do not constitute a surrender of parts of the patent but have to be considered as drafting attempts intended to limit the patent in view of objections (T 123/85 [3.1.1-2]). Decisions T 755/00 [5] and T 386/04 [1], which have been invoked by the [patent proprietor], confirm this case law.

[3.2.2] The Board is of the opinion that in order to understand the ratio of decision T 123/85 and the case law that is based on it, it is necessary to distinguish between the patent as subjective right in rem (dinglich) the effect of which is governed by the national law of the Contracting States (A 64), on the one hand, and procedural actions directed at the patent as object of the opposition and opposition appeal proceedings, as well as the corresponding procedural rights, on the other hand (more on this distinction can be found in the EBA decision G 1/09 [3.2.1]).

[3.2.3] Insofar as decision T 123/85 [3.1.1], following decisions T 73/84 [4] and T 186/84, states that the patent proprietor could not surrender its patent as a whole or in part in the opposition proceedings, the term ‘surrender’ designates a unilateral delcaration through which the subjective rights conferred by a patent are abandoned as a whole or in part. In this context, decision T 123/85 points out that the EPC 1973 makes no provision for a patent proprietor to surrender the patent during opposition proceedings. As it was not possible to validly declare such a surrender before the EPO, the decision rejected the opinion of the opponent according to which limited sets of claims that were submitted in the course of the opposition proceedings had to be understood as declarations of surrender. In the context of decision T 123/85, this statement has to be limited to mean that a European patent as subjective right cannot be changed in a legally constitutive manner (rechtsgestaltend) – and, in particular, irrevocably limited – by means of a unilateral declaration of the patent proprietor in the opposition proceedings (cf. in this context G 1/90 [8]; T 386/01 [3.2]), so that limited sets of claims for the opposition proceedings are not to be seen as a surrender. In contrast, one cannot conclude from these statements that it has to be possible without procedural restrictions (verfahrensrechtlich vorbehaltlos) to revert to broader claim versions that have not been defended in the course of the opposition proceedings, [these broader claims being understood] as amendments to the procedurally relevant submissions.

[3.2.4]  T 123/85 based the possibility of subsequently amending sets of claims the purpose of which was the maintenance of the patent in amended form, on A 113(2) and, therefore, on the principle of party disposition (T 123/85 [3.1.1]; in this context, the reference to decision G 1/84 is obsolete: see G 9/93). Even when T 123/85 is followed, this possibility of amending the submissions is not without restrictions. Rather, the Board decided that this subsequent amendment must not constitute an abuse of procedure. The subsequent case law has confirmed this restriction. Decision T 123/85 does not define the notion of abuse of procedure in detail but has provided a concrete illustration by referring to the example of self-contradictory behaviour (venire contra factum proprium; T 123/85 [3.1.2]).

In this context decision T 123/85 also relies on decision T 64/85 [2.6], which states that an abuse of the possibility of reverting to previous claims after having filed amended claims. might be sanctioned under A 114(2) or R 86(3), respectively. Thus decision T 64/85 considered the principle of concentration (Konzentrationsgrundsatz) expressed in A 114(2) and R 86(3) EPC 1973 to be restrictive.

[3.2.5] The Board endorses this view, according to which – in addition to the prohibition of abuse of rights and the prohibition of reformation in peius (see e.g. T 934/02 [3.2]) – the principle of concentration of party submissions also restricts the principle of party disposition. As far as amendments of sets of claims in opposition and opposition appeal proceedings are concerned, the principle of concentration is laid down in R 116(2) and in Article 12(4) RPBA as well as Article 13 RPBA. It is true that a subsequent amendment of the submission is not completely excluded, via strict time limits for submitting certain elements, but it is within the discretion of the deciding body to take into account such amendments.

[3.2.6] R 116(2) was introduced as R 71a(2) EPC 1973 in a decision of the Administrative Council (AC) dated December 13, 1994, and entered into force on June 1, 1995 (JO EPO 1995, 9). Article 12(4) RPBA and Article 13 RPBA, introduced as Article 10a(4) and Article 10b RPBA, respectively, in a decision of the AC dated December 12, 2002, are applicable to proceedings in which the notice of appeal was received after the date of the entry into force of these amendments, i.e. on May 1, 2003 (Article 2 of the Decision of the Presidium, annexed to the Decision of the AC of December 12, 2002, JO EPO 2003, 61). The previous versions of the RPBA (RPBA of June 4, 1980, OJ EPO 1980, 171, in their version of OJ EPO 1983, 7) did not contain comparable provisions, nor did the versions of OJ EPO 1989, 361 or OJ EPO 2000, 316. Article 11(1), which was unchanged in all the versions until May 1, 2003, only required the Board to endeavour to ensure, if OPs were to take place, that the parties have provided all relevant information and documents, before the OPs.

[3.2.7] As a consequence, the legal situation has changed with respect to decision T 123/85 when R 116(2) as well as Articles 12(4) and 13 RPBA were enacted and it is not possible to apply this decision and the subsequent case law without taking into account these amendments. This also holds true for decision T 755/00 which was based on the RPBA as amended on October 1, 2000, which did not contain any provision corresponding to what is now Article 12(4) RPBA. Moreover, the decision did not concern the application of R 71a EPC 1973. As a consequence, this decision is not relevant for the present proceedings as it does not take into account the amendments of the law that are relevant for the latter (cf. T 1282/05 [1]).

[3.2.8] The RPBA in its version of May 1, 2003 (JO EPO 2003, 61) are not explicitly mentioned and taken into account in decision T 386/04, which had been cited by the [patent proprietor], either. Moreover, the reasons do not make clear whether the Board considered the discretion conferred to it by the RPBA to be restricted – based on decision T 123/85 and the case law based on it – such that a set of claims by which the patent proprietor reverts to broader subject-matter that has not been defended in previous proceedings could only be disregarded in case of an abuse of procedure. In the particular case which it had to decide upon the Board came to the conclusion that the behaviour of the patent proprietor – defending the patent as granted as its main request in the appeal proceedings for the first time – did not qualify as abuse of procedure. When doing so, the Board took into account the fact that the patent proprietor had defended the version of the patent as granted until shortly before the OPs before the OD. These findings are within the framework of the discretion conferred by the RPBA.

[3.2.9] According to what has been said, decisions T 386/04, T 755/00, and T 123/85 cannot support the point of view of the [patent proprietor] because they do not deal with the legal situation as modified by R 116(2) (previously R 71a(2) EPC 1973) and Articles 12(4) and 13 RPBA (previously Articles 10a and 10b RPBA) and do not meet the scope of the rule (Normzweck) pursued by these provisions, i.e. the acceleration of the proceedings. Whether sets of claims that are submitted in appeal proceedings are to be taken into account does not depend on the case law based on decision T 123/85; it depends on the procedural rules that now apply to the appeal proceedings and on the facts of the proceedings under consideration. Therefore, the decisive rule for the admission of AR1 to AR10 is Article 12(4) RPBA.

[3.3] Article 12(4) RPBA sanctions the violation of the duty to facilitate the progress of the proceedings (Verfahrensbeförderung) in first instance proceedings, i.e. the requirement – which is mandatory but which has not been honoured – to submit facts, evidence ore requests before a certain stage of the proceedings. Therefore, it serves the requirement of both fair and quick proceedings. If the appeal proceedings offered the parties the possibility of introducing submissions that could already have been filed (bereits veranlasste Vorbringen) in first instance proceedings, the parties could chose to base the appeal proceedings on disputed matter (Streitstoff) different from the matter that was considered by the OD and thereby create a completely new case, which prolongs the proceedings to the detriment of the adverse party, based on considerations that are not related to the case as such (sachfremd). Therefore, Article 12(4) RPBA prohibits carless and incomplete submissions on behalf of the parties in first instance proceedings but not candid attempts of the parties to introduce the relevant requests, facts and evidence when required by an appropriate and careful conduct of the proceedings.

On the other hand, it is not possible to use Article 12(4) RPBA as basis for a legal right – restricted by abuse of procedure – to the introduction of a set of claims directed at a broader version of the claims that has not been defended in the opposition proceedings so far. Rather, these provisions make clear that the principle of party disposition is breached (durchbrochen) by the principle of concentration in this respect. This opinion has been confirmed in the case law of the EBA according to which A 113(2) does not provide a legal right to have late filed submissions considered (R 11/11 [10]).

[3.4] In view of Article 12(4) RPBA the [patent proprietor] explained that there was no reason (Veranlassung) to file sets of claims corresponding to AR1 to AR10 because the economic interests of its legal predecessor, who had acted in the opposition proceedings, were different from those of the [patent proprietor] to whom [the patent] had been transferred. The following has to be objected:  

According to A 99(3) the patent proprietor is a party to the opposition proceedings. The case law has made clear that in a case where the patent is legally (rechtsgeschäftlich) transferred, the procedural party status is transferred to the transferee, too. The transfer of the party status with respect to substantive law has to be distinguished from the procedural effectiveness of the change of party. In order for a change of party to be effective for the proceedings under consideration, proof for the legal transfer has to be provided to the EPO. As a matter of fact, for the sake of procedural legal security, a change of party resulting from a legal transfer cannot take place outside the proceedings without formal knowledge of the Board, and cannot be retroactive either, because otherwise procedural actions or decisions could be made or take place in the absence of the new patent proprietor, who is the sole entitled party. Consequently, R 22(3) provides that a transfer shall has effect vis-à-vis the EPO only when it has been proven via the submission of documents. According to R 85 (also together with R 100(1)), this provision this provision also applies to any transfer of the European patent made during the opposition or opposition appeal proceedings, respectively (T 128/10 [3]).

In the present case transfer of the impugned patent was registered at the request of the appellant filed on November 23, 2011, based on an agreement signed on March 22, 2010, and April 12, 2010, respectively. As a consequence, the substitution of the legal predecessor by the appellant was only effective on November 23, 2011. Requests AR1 to AR10 were filed together with the statement of grounds of appeal dated March 15, 2010, before the legal transfer became effective vis-à-vis the EPO. Therefore, it is not possible to use the fact that the economic interests had changed as a consequence of the subsequent legal transfer in order to retrospectively explain why the legal predecessor had had no reason to file requests AR1 to AR10 before.

Even if the legal transfer had been effective before the statement of grounds of appeal had been filed on March 15, 2010, the admissibility of requests AR1 to AR10 would be within the discretion of the Board.

As a transferee, the appellant takes over the procedural status of its legal predecessor as soon as the legal transfer is effective vis-à-vis the EPO and, therefore, receives the status of a party to the proceedings. As such it has to enter into the proceedings at the very stage [the proceedings] have reached when the legal transfer takes place. It has to accept the effects of procedural actions of its legal predecessor. It would be contrary to legal security and, as far as inter partes proceedings are concerned, unfair towards the other parties to the proceedings, if the transferee of a patent could invoke the change of party – which does not require approval by the other parties – in order to change the object of the appeal proceedings without cogent reasons related to the course of the proceedings (in particular a different factual situation) with respect to the opposition proceedings.

Moreover, circumstances that are outside the proceedings (verfahrensextern) such as considerations of the patent proprietor as to which content the patent should be prosecuted, for economic or competitive reasons, are not aspects that can be taken into account when deciding when requests that determine the content of the patent have to be filed in appeal proceedings. Otherwise, a party to the proceedings could control the course of the proceedings (T 764/03 [6.4]; T 356/08 [2.2.2]).

Therefore, the Board is of the opinion that the change of the economic interests resulting from the legal transfer of the patent was not to be taken into account when exercising discretion under Article 12(4) RPBA. The [patent proprietor] has not submitted any further reason related to the course of the proceedings why there had been no reason to file requests AR1 to AR10 before.

[3.5] The Board is of the opinion that requests AR1 to AR10 could have been filed before the OD and that their filing could have been expected at an earlier time if the proceedings had been conducted in a careful manner. Consequently, the Board did not admit requests AR1 to AR10 into the proceedings (Article 12(4) RPBA).

OMG, what a translator’s nightmare that was!

The Board then refused to refer questions to the EBA and also found auxiliary requests 11 to 15 to be inadmissible under Article 13(1) RPBA. As there was no valid set of claims on file, the Board finally dismissed the appeal.

Should you wish to download the whole decision (in German), just click here.

The file wrapper can be found here.

T 28/10 – Abuse? Of Discretion?

This is an appeal against the revocation of the opposed patent by the Opposition Division (OD).

The patent proprietor complained that the OD had not admitted its main request filed during the oral proceedings (OPs), which corresponded to the claims as granted. Contrary to the findings of the OD, the filing of this request had not been abusive as its aim was to avoid a reformatio in peius situation.

The Board found the appeal as such to be admissible and then went on to examine the admissibilty of the main request:

*** Translation of the German original ***

[2.1] According to Article 12(4) RPBA (OJ EPO 2007, 536), the Board may decide not to take into account submissions of a party which could have been presented or were not admitted in the first instance proceedings. Insofar as [a Board] has to decide on the admission, into the appeal proceedings, of submissions that had not been admitted in the first instance proceedings, under Article 12(4) RPBA, this boils down to a review of the discretionary decision of the OD based on R 116(2). If the way in which the first instance body of the EPO has exercised its discretion is contested in the appeal, then, according to G 7/93 [2.6], it is not the function of a BoA to review all the facts and circumstances of the case as if it were in the place of the first instance department, in order to decide whether or not it would have exercised such discretion in the same way as the first instance department. If a first instance department is required under the EPC to exercise its discretion in certain circumstances, such a department should have a certain degree of freedom when exercising that discretion, without interference from the Boards of Appeal. In such cases a BoA should only overrule the way in which a first instance department has exercised its discretion if it comes to the conclusion either that the first instance department in its decision has not exercised its discretion in accordance with the right principles or that it has exercised its discretion in an unreasonable way, and has thus exceeded the proper limits of its discretion. Although the object of decision G 7/93 was the interpretation of R 51(6) EPC 1973, its explanations regarding the review of discretionary decisions are of general importance and have to be taken into account when applying Article 12(4) RPBA. Accordingly, the Board has to limit itself to a review of the way in which the OD has exercised its discretion when it decided not to admit the late filed request and should set aside the first instance decision only if it found that the discretion had been exercised in a wrongful way. Otherwise, the Board would circumvent the discretion conferred to the OD by R 116.

[2.2] The main request corresponds to the claims of the patent as granted. This request had not been defended in the written proceedings before the OD. Rather, it was filed only on the day of the OPs before the OD, where the (limited) set of claims of November 2, 2007, which had been in the proceedings until then […] had been replaced by the new main request and two more auxiliary requests. Thereby, the OD correctly applied R 116(2) by treating these requests as late-filed.

[2.3] The admission under R 116(2) of the main request filed on September 24, 2009, was discussed during the OPs […]. Therefore, the [patent proprietor] had the opportunity to make submissions regarding the reasons for the late filing. After having discussed with the parties, the OD exercised its discretion by not admitting this main request into the proceedings because it considered its late filing to be an abuse of procedure […]. In its reasons for its  decision the OD explained that the main request was not novel – as the patent proprietor had admitted – and, therefore, not suitable for overcoming a ground of opposition. Thus the filing of the main request amounted to an abuse of procedure.

[2.4] The Board cannot see a wrongful exercise of discretion in the fact that the OD based its decision above all on [the finding] that the patent proprietor admittedly did not intend to defend the late filed main request and acknowledged that this request did not comply with the requirements of A 54. The OD could indeed - without any arbitrariness - understand these statements of the [patent proprietor] to mean that even the [patent proprietor] did not consider the main request to be based on an acceptable (vertretbar) substantive legal position. The filing of such a request that openly (erklärtermaßen) does not pursue any justified legal claims has to be considered a violation of the duty to act in good faith (Gebot des Handelns nach Treu und Glauben) which obliges the parties to act in a candid (redlich) way (for the application of this principle to the actions of the parties, see G 2/97 [4.2]; R 4/09 [2.3.2]). 

The prodedural (verfahrensrechtlich) interest that has been invoked by the [patent proprietor] will be dealt with below […].

As a consequence, the OD has not exercised its discretion in accordance with wrong principles or in an unreasonable way by not admitting the main request of September 24, 2009, because of an abuse of procedure, nor did it act in an arbitrary manner insofar as it considered the violation of this procedural principle to be of decisive importance when exercising its discretion.

[2.5] The [patent proprietor] also objected that the purpose of the filing of the main request was to avoid a [situation of] reformatio in peius, which meant that there was no abuse of procedure. This argument cannot succeed.

[2.5.1] The principle of prohibition of reformatio in peius (Verschlechterungsverbot) concerns appeals (Rechtsmittelverfahren) and can be derived from the principle of party disposition (Verfügungsgrundsatz). The latter asserts that the appellant’s requests determine to which extent the judge can and may modify the impugned decision. Therefore, the requests forming the appeal (Rechtsmittelanträge) constitute the scope of the litigation beyond which the judge must not go. As a consequence, if there is only one appellant, the judge must not modify the impugned decision in a way that would disadvantage the appellant. This is referred to as the prohibition of reformatio in peius. In cases G 9/92 and G 4/93, the EBA decided that the prohibition of reformatio in peius can be applied in proceedings before the BoA. Whether it applies depends on the entitlement to file an appeal and on the filing of an appeal by the parties to the proceedings that are entitled to do so. All in all, it is only relevant in the case of an interlocutory decision maintaining the patent in amended form that is contested by only one of the adverse parties.

In the present case, however, the [patent proprietor] intended to defend the patent as granted. This is equivalent to the request that the oppositions be rejected. If this [request] had been granted, only the opponents would have been entitled to file an appeal. Therefore, the prohibition of reformatio in peius would not have applied in favour of the [patent proprietor]. Even if the patent had been revoked in view of the claims as granted, the prohibition of reformatio in peius would not have been relevant, because the outcome of the appeal proceedings could not have put the [patent proprietor] in a situation that is worse than the revocation by the OD. Therefore, it is not clear to which extent the prohibition of reformatio in peius could justify the filing of the main request corresponding to the claims as granted during the OPs before the OD. Therefore, the OD cannot be criticised for having exercised its discretion in a wrongful way by not taking into account the reference to the prohibition of reformatio in peius in favour of the [patent proprietor].

[2.5.2] As can be seen from the statement of grounds of appeal […] the [patent proprietor’s] reference to the prohibition of reformatio in peius indeed aimed at justifying its desire to maintain, by means of the main request, the possibility of filing an appeal and to make sure that it could amend – within the limits of A 123 – its requests in the appeal proceedings without being bound by the single set of claims filed before the OPs in the opposition proceedings.

Neither the prohibition of reformatio in peius nor the principle of party disposition that underlies it allow to derive the right that amended sets of claims filed by the applicant or the patent proprietor have to be taken into account at any stage of the proceedings (referring to A 113(2), which is related to the principle of party disposition, R 11/11 [10]). Rather, pursuant to R 116(2), this is within the discretion of the deciding body of first instance. As a consequence, it is not at the applicant’s or patent proprietor’s discretion to modify the object of the proceedings by filing amended sets of claims even at a late stage of the proceedings in order to change the course of the proceedings. All in all, the OD, when exercising its discretion, has neither violated a legal right of the [patent proprietor] nor left aside a relevant legal aspect.

[2.6] The remaining arguments submitted by the [patent proprietor] during the appeal proceedings do not establish a wrongful exercise of discretion by the OD either.

[2.6.1] First of all, the [patent proprietor] points out that the filing of the main request of September 24, 2009, was triggered by the submission of the [opponent] of August 21, 2009, wherein it first raised an objection of lack of novelty against claim 3 of the patent as granted, based on document D25. However, it has to be noted that the [opponent] had already attacked claims 1, 2 and 7 for lack of novelty (A 54) over document D25. The notices of opposition of the [opponents] comprised a series of further novelty objections. In view of that background, the BoA cannot see how the [patent proprietor’s] return to the set of claims as granted, which had not been defended until the OPs, can seriously be considered to be an appropriate reaction to a change of the course of the proceedings. As a matter of fact, the main request of September 24, 2009, did not overcome the objection of lack of novelty against claim 3, nor did it ensure a convergent conduct of the opposition proceedings. It rather meant a return to the point of departure of the proceedings.

[2.6.2] The [patent proprietor] also explained that the filing of the main request did not delay the proceedings and could not surprise because it was part of the patent as granted and, consequently, of the opposition filed by the respondents.

It may be true that, in view of the acknowledgement of lack of novelty, the required examination of the main request would not have taken a long time, but this aspect is not of decisive importance to the effect that it would justify challenging the balance of interests made by the OD based on the circumstances of the case and have an effect in favour of the [patent proprietor] on the decision on the admission of the main request.

The restraint required by decision G 7/93 [2.6] of the EBA when discretionary decisions are to be reviewed means that the Board may only intervene in the weighing of the circumstances to be carried out by the OD if the latter exercises its discretion in a wrongful way. In this context, the OD may rightfully give one aspect decisive importance over other aspects. In the impugned decision, the OD considered that there had been an abuse of procedure. Such abuses are not limited to behaviour that makes the postponement of the OPs necessary (cf. T 1067/08 [5.3]). As a consequence, the OD has not exercised its discretion in a wrongful way.

Apart from that, the second argument of the [patent proprietor] according to which the return to the claims as granted could not surprise is not correct. The Board agrees with the [opponents] that based on the behaviour of the [patent proprietor] until the OPs, the filing of a main request corresponding to the claims as granted was not to be expected. The [opponents] have referred to the following passage of the response to the notices of appeal dated November 2, 2007:

“[The patent proprietor] requires [the OD] to maintain the patent on the basis of claims 1 to 9 according to the enclosure and, for the rest (im Übrigen), to dismiss the oppositions.”

Together with the set of amended claims filed as enclosure to this submission, the [opponents] could legitimately understand in good faith that the [patent proprietor] did not have the intention to defend the claims as granted. This is all the more true as the [patent proprietor] did not come back to the patent as granted during the written proceedings. It is true that the filing of a request corresponding to the patent as granted did not concern an hitherto unknown object, but it still was surprising because the submission conflicted with the previous actions of the [patent proprietor] (venire contra factum proprium). Even in this respect [the Board] cannot find any wrongful exercise of discretion on behalf of the OD.

[2.7] As the Board has come to the conclusion that the first instance had exercised its discretion in accordance with the right principles and in a reasonable way, and had not exceeded the proper limits of its discretion conferred by A 116(2), the Board has not granted the request to admit the main request of September 24, 2009, into the proceedings (Article 12(4) RPBA, G 7/93 [2.6]).

NB: This decision has much more to offer, because the Board also dealt with the admissibility of several new auxiliary requests. In order to keep my posts reasonably short, I shall present these aspects in a forthcoming post.

Should you wish to download the whole decision (in German), just click here.

The file wrapper can be found here.

R 14/11 – A Statement, Please?

This petition for review concerns decision T 291/08 of Board 3.3.10 (apparently not yet published, but available via the Register here) wherein the Board of appeal (BoA) set aside the decision of the Opposition Division (OD) to maintain the patent in amended form and revoked the patent.

The petition was based on a fundamental violation of A 113(1) (A 112a(2)(c)).

The OD had found document D6 to be the closest prior art and had found the claims as amended to involve an inventive step. D6 referred to documents D8 to D10.

When filing its appeal, the opponent introduced documents D11 to D13 in order to demonstrate what the skilled person would expect when reading D6.

In an annex to the summons to oral proceedings (OPs), the rapporteur pointed out that the parties should be prepared to discuss which document (probably among D2, D6 and D8) represented the closest prior art.

During the OPs, the Board informed the parties that it considered D8 to be the closest prior art.

In its petition, the patent proprietor complained that the Board had raised a completely fresh objection based on D8 at the OPs. When this objection had been raised, the petitioner had requested remittal to the OD or, alternatively, postponement of the OPs to provide it with an adequate opportunity to respond. While remittal was refused, the Board granted a 30 minute adjournment for the petitioner to review D8 and consider the new line of argument advanced by the Board. The petitioner pointed out that this conduct of proceedings had violated its right to be heard.

The Enlarged Board (EBA) rejected the petition because the requirements of R 106 had not been complied with:

[2] The decisive issue in the present case is whether in the appeal proceedings the petitioner has raised an objection in respect of the procedural defect within the meaning of R 106.

[2.1] The petitioner admits that during the appeal proceedings it did not raise an express objection under R 106. The petitioner is, however, of the opinion that by the way in which it expressed itself in the OPs, it raised an implicit objection, fulfilling the requirements of R 106, when that Rule is interpreted correctly.

[2.2] R 106 in conjunction with R 109(1) define the admissibility requirement that the petitioner must have raised an objection in respect of the procedural defect during the appeal proceedings.

[2.3] The procedural defect within the meaning of A 112(a)(2)(c) identified in the petition is that a fundamental violation of A 113(1) occurred. According to the petitioner, the fundamental violation of A 113(1) arises from the Board’s decision to raise a completely fresh objection at the OPs based on D8 as the closest prior art and maintain that objection without giving the petitioner an adequate opportunity to respond. The petitioner had asked for remittal or postponement. Both were refused and the Board only granted a 30 minute interruption of the OPs. While it is accepted by the petitioner that remittal is discretionary, the Board’s refusal to grant postponement violated the petitioner’s right to be heard. The petitioner’s objection against the Board’s raising of an entirely new argument in the OPs had never been withdrawn and the Board was aware that the petitioner regarded its right to be heard as being violated by the Board’s refusal of a postponement.

[2.4] According to the petitioner, the EBA’s interpretation of R 106, following decision R 4/08, requiring an objection which is distinct from and additional to any requests relating to or protests against the conduct of the proceedings by the Board, is overly strict and unjustified. In particular, the interpretation given by the EBA in its communication, that an objection within the meaning of R 106 is an objection raised after the procedural defect has arisen, is incorrect. R 106 only speaks of an objection “in respect of” the procedural defect.

[2.5] In its decision R 4/08 the EBA for the first time considered in detail the meaning to be given to the admissibility requirement in R 106 that an objection in respect of the procedural defect must have been raised during the appeal proceedings. In that decision the wording and nature and purpose of the requirement to raise such an objection were all considered.

In point [2.1] of the reasons of the decision the EBA concluded:

“Firstly, the objection must be expressed by the party in such a form that the BoA is able to recognize immediately and without doubt that an objection pursuant to R 106 - that is one which is additional to and distinct from other statements, in particular arguing or even protesting against the conduct of the proceedings or against an individual procedural finding ... - is intended by the party concerned. This is a precondition for the Board to have been able to react immediately and appropriately by either removing the course of the objection or, as provided in R 106, by dismissing it. It therefore ensures for the parties and the public at large, legal certainty as to whether the substantive decision of the BoA is open to review pursuant to A 112(a). This is one of the evident purposes of the obligation to raise objections under R 106.

Secondly, for the same reasons the objection must be specific, that is the party must indicate unambiguously which particular defect of those listed in paragraph 2 (a) to (c) of Article 112a and R 104 it intends to rely on.”

[2.6] The principles developed in that decision have thereafter become established jurisprudence of the EBA and have been applied in numerous cases since including (this not being an exhaustive list) R 7/08 [2]; R 8/08 [1.2.1-2]; R 6/09 [6]; R 9/09 [1.5 et seq.]; R 1/10 [6.2 et seq.]; R 17/10 [2.1-3]; R 2/11 [2.1]; R 3/11 [3.1]; R 7/11 [2.1]; R 10/11 [3.1].

Of these decisions, decisions R 9/09 and R 1/10 specifically concerned the refusal of a requested postponement. Decision R 8/08 concerned the refusal of a requested remittal. In decision R 3/08, given prior to decision R 4/08 [1.4], the EBA had already ruled that the requirements of R 106 had clearly not been met in a situation in which, after a petitioner’s request for postponement of the OPs, the petitioner had not raised any objection against the Board’s communication not to postpone the OPs. In decisions R 17/10 [2.3] and R 8/08 [1.2.2], the EBA emphasized that a – procedural – request or criticism cannot be qualified as an objection within the meaning of R 106 before the Board has reacted to the request or criticism. An objection under R 106 cannot be formulated prematurely, this meaning that it cannot be formulated before a procedural defect has come into existence. The same rationale is also apparent from decision R 6/09 [6] where, in order to explain why R 106 was not fulfilled, the EBA observed that no objection was raised “after” hearing the Board’s definition of a certain term.

In view of the weight and consistency of this jurisprudence the petitioner’s argument – that its objection against the Board raising the new line of argument based on D8 and its request for remittal or postponement already qualify as an objection within the meaning of R 106 – does not hold good.

[2.7] This established jurisprudence is also fully in line with the wording of R 106. R 106 places an obligation on the objecting party to raise its objection under certain conditions, one of them being that the objection must be “in respect of the procedural defect”. The wording of R 106 thus requires the presence of a procedural defect as a precondition for raising an objection in respect of that defect. However, as long as the Board has not taken any decision on a procedural request of the party, there is no procedural defect to which the party can object. Therefore, as has been established in the jurisprudence, an objection under R 106 is a procedural act which has to be performed after the procedural defect has arisen in the proceedings.

Nothing else can be derived from the use of the term “in respect of” in the English version of R 106, since R 106 speaks of an objection in respect of “the” procedural defect and not in respect of “a” procedural defect. The same is also clear from the German and French versions of R 106 requiring in the German version that “der Verfahrensmangel beanstandet wurde” and, in the French version, that an objection was raised “à l’encontre du vice de procédure”.

[2.8] In the view of this EBA any deviation from the firmly established jurisprudence would require “very clear reasons for not following the earlier interpretation” (see G 9/93 [6]).

In points [2.8.1-4] below the EBA considers the petitioner’s reasons for not following the interpretation of R 106 in R 4/08.

[2.8.1] First, the petitioner argued that, according to the Vienna Convention on the Law of Treaties (“Vienna Convention”), the purpose of a provision has to be taken into consideration for its interpretation. The travaux préparatoires reveal only that the purpose of R 106 is to prevent abuse of procedure. It submitted that the EBA’s reasoning in decision R 4/08 as to the purpose R 106 is intended to serve, in particular its reliance on the issue of legal certainty, is not supported by the travaux préparatoires or any other authority that might influence the interpretation of the Rule.

According to Article 31.1 Vienna Convention, a treaty shall be interpreted in good faith in accordance with the ordinary meaning to be given to the terms of the treaty in their context and in the light of its object and purpose. The preparatory work and the circumstances of the conclusion of the treaty are mentioned in Article 32 Vienna Convention as a supplementary means of interpretation, in order to confirm the meaning resulting from the application of Article 31 or to determine the meaning when the interpretation according to Article 31 leaves the meaning ambiguous or obscure or leads to a result which would be manifestly absurd or unreasonable. It follows from these provisions, in particular from the only supplementary character of the preparatory work as a means of interpretation, that the meaning of the terms “in the light of the object and purpose of the Treaty” in Article 31 EPC (sic) is not simply tantamount to any purposes of the legislator as identified in the preparatory documents. What is addressed in Article 31 Vienna Convention is the objective purpose of the norm concerned which is to be determined in such manner as is derivable from the context of the norm and the object of the treaty. Hence, in accordance with the Vienna Convention, the EBA is perfectly entitled to define the objective purpose of R 106 on the basis of the ordinary meaning of its terms considered in the context and in the light of the object and purpose of the provisions in question, without any need to identify an explicit basis for such an interpretation in the preparatory documents to the EPC.

[2.8.2] Second, the petitioner’s criticism of the EBA’s statement in R 4/08 that R 106 ensures, for the parties and the public at large, legal certainty as to whether the substantive decision of the BoA is open to review pursuant to A 112(a), is not justified.

The petitioner’s argument that since, according to the travaux préparatoires, the interest of preserving legal certainty was the reason for providing a two-month time limit for filing a petition under A 112(a)(4), legal certainty has no relation to R 106, is unsound. The use of legal certainty in the context of one provision in the travaux préparatoires is no ground for not using it as a reason to interpret another provision – there is simply no valid connection between the two propositions.

[2.8.3] Third, the petitioner’s argument that, since R 106 expressly provides for a situation in which a petition can still be filed even though no objection under R 106 has been raised during the appeal proceedings, the absence of an objection is not sufficient to tell the public that no petition is possible, is also unsound. As the words “except where” in R 106 demonstrate, the situation that an objection could not be raised during the appeal proceedings is considered to be quite literally an exception. Hence, if anything, this exception, aimed at not denying justice to a petitioner who could not raise an objection during the appeal proceedings, confirms the importance of the general rule enshrined in R 106 that the right to file a petition presupposes that notice of the defect has been given during the appeal proceedings, so that every person involved in the proceedings or inspecting the file is made aware of the possibility that the Board’s decision, although final, might still be challenged based on a ground for review in accordance with A 112a. As the EBA rightly put it in decision R 4/08, legal certainty for the parties and the public at large is one of the evident purposes of the general rule enshrined in R 106.

[2.8.4] In the present EBA’s view, R 4/08 and the later decisions following it have also rightly emphasised the legal nature of an objection pursuant to R 106 as being a procedural act and not just a submission. It must, like any other procedural act, be clear and precise. Therefore, as the EBA stated in decision R 4/08 [2.1], this procedural act must be in such a form that the BoA is able to recognize immediately and without doubt that an objection pursuant to R 106 is raised, so that the Board is put in a position to perform its further duty under R 106, i.e. either to accede to it or to dismiss it and thereby to create a clear basis allowing the parties and the public to determine whether the ensuing substantive decision of the BoA is open to review pursuant to A 112(a).

[2.8.5] As a result, the EBA finds that none of the reasons advanced by the petitioner justify departing from the established jurisprudence regarding the requirements which raising an objection must fulfil in order to qualify as an objection within the meaning of R 106 as justified.

[2.9] As a second line of argument, the petitioner submitted that the facts of the present petition are different from R 4/08 so that R 4/08 did not create a precedent for the present decision.

[2.9.1] First, the EBA notes that like any other decisions of boards of appeal those of the EBA in review cases do not have the legal nature of creating a precedent in the sense that the EBA would have to show in which respect a later decision differs from an earlier one in order to be legally justified. Such differences are normal and the usefulness of case-law is not confined to similar or identical facts but lies in the principles or guidance (such as interpretation of legislative provisions) which, whether the facts are similar or not, can be extracted from earlier cases (see R 11/08 [11]).

The petitioner refers to the Board’s reference in decision R 4/08 to the fact that the minutes of the OPs did not contain any statement of the petitioner meeting the criteria set out for an objection within the meaning of R 106. According to the petitioner this statement refers to the normal situation that the minutes can be referred to as the basis for what was said and to support an allegation that an objection under R 106 was, or was not, raised. However, R 4/08 could not deal with a situation deviating from the norm such as the present case where the minutes did not contain the essentials of the OPs and the submissions of the parties as required, a fact which had been objected to in the petitioner’s letter of 4 August 2011.

This perceived difference is irrelevant for the present case. For the purpose of the present decision the EBA accepts the petitioner’s submission that it objected to the new line of argument advanced by the Board for the first time during the OPs and requested remittal or postponement to the opposition division which were refused. In the present case the decisive point as to which, as has been explained above, the EBA does not accept the petitioner’s view, is that the petitioner’s procedural behaviour did not qualify as an objection within the meaning of R 106.

[2.9.2] The petitioner also submitted that, as was evidenced by point [3.3] of the decision under review, by the Board’s own admission it was able to recognize that the petitioner challenged the decision of the Board as being potentially open to review. In this respect, the Board notes that the passage cited by the petitioner only refers to the petitioner’s request for remittal. The present petition is, however, not based on a violation of the petitioner’s right to be heard for failure to remit the case but – rightly – only on the Board’s refusal to grant postponement. Therefore, the cited passage of the decision under review does not support the petitioner’s conclusion that on the Board’s own admission the Board had understood that the decision of the Board was challenged by the petitioner as potentially open to review because the Board had refused the petitioner’s request for postponement and only granted a 30 minute interruption.

[2.9.3] Further, the petitioner submitted that the present case can be distinguished from R 4/08 in that in the present case the petitioner has presented evidence in the form of its account of the key aspects of the OPs in its letter of 4 August 2011 and the two sworn statements filed in response to the Board’s communication. Evidence could also be found in the written decision which is framed in the words of the Board itself. However, for the reasons indicated in paragraph [2.9.1] above, this difference, if any, is irrelevant.

[2.9.4] Finally, the petitioner made the criticism that the EBA seems to require, as a valid R 106 objection in this case, a separate objection raised by the petitioner after the refusal to remit. To which the Board observes that, subject only to the proviso that (on the petitioner’s own admission) its objection could not have been based on the refusal to remit but would have had to be based on the refusal to postpone the OPs, that is precisely what the petitioner should have done in order to fulfil the requirements of R 106.

The EBA cannot accept the petitioner’s arguments about the inextricable link between the original objection and the procedural defect. As the petitioner itself submitted, when a party objects to a Board’s conduct of OPs and requests some form of relief, the Board has two possibilities: it can either grant it or refuse it. If it is granted, there can be no procedural defect to the detriment of the requesting party. It is only if it is refused that there may be a procedural defect. This shows clearly why the established jurisprudence following decision R 4/08 is justified and there is no such inextricable link as the petitioner argues.

Further, the fact that, as the petitioner puts it, the same argument has to be raised twice is not convincing. All that is required from a party when the Board has refused its procedural request is to state that it regards its right to be heard as violated, since it is the very purpose of R 106 to give the Board a chance to correct such an error, if any, before a decision is based on it and thereby to avoid unnecessary petitions for review being filed. […]

The petition is rejected as clearly inadmissible.

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

The file wrapper can be found here.