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:
 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 ; R 8/08 [1.2.1-2]; R 6/09 ; 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  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 ).
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 ).
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.
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