Wednesday, 12 September 2012

R 3/12 – Education Matters

This petition was filed by the proprietor of the opposed patent after Board 3.3.02 had dismissed its appeal against the revocation of the patent.

The petition contained a not so common (but, in my opinion, rather desperate) argument regarding the technical competence of the members of the Board:

[1] A petition for review pursuant to A 112a(4) shall be filed in a reasoned statement setting out the grounds within a time limit of two months after the notification of the contested decision if the petition is based on paragraph 2(a) to (d) of A 112a. This is the case here. The petitioner filed his petition based on the ground of a violation of his right to be heard according to A 112a(2)c) and A 113 EPC 30 March 2012 i.e. within two months after the notification of the decision under review on 31 January 2012.

[2] R 107(2) prescribes that the petition shall indicate the reasons for setting aside the decision of the Board of Appeal (BoA) and the facts and evidence on which the petition is based. These requirements are not met for the following reasons.

[2.1] The petitioner refers in his petition to A 112a(2)c) and A 113 as the ground for his petition. However, there is no reasoning in the grounds of his petition indicating why his right to be heard under A 113 has been violated and on which facts his objection is based. He only points out, obviously with respect to R 106, that he became aware of the grounds of the decision through the written decision of the BoA. Since in his view this decision is clearly flawed, he argues that he did not have any opportunity to explain why the Board erred in its decision, except through the current petition […].

He explains in some detail why in his view the decision under consideration was wrong. He also raises the objection that the apparent failure of the BoA to understand the scientific facts discussed during the appeal proceedings contravened the “technically qualified” requirement of A 21(4)a).

[2.2] It is established case law of the Enlarged Board of appeal (EBA)  that a petition for review does not open a further instance of appeal, but only provides the right for a restricted judicial review founded on a limited number of grounds which are exhaustively defined in A 112a(2) and R 104 (see R 16/09 [2.3.5-6]; and R 10/09 [2.4]).

[2.3] Thus, a petition for review may not be filed on the ground that, as the petitioner submits, a decision is wrong in substance or that a member of a Board did not understand the appellant’s case and was therefore not qualified technically. According to the restricted number of grounds for a petition according to A 112a it is not the duty of the EBA to scrutinise the contested decision as to whether its reasoning is convincing or not.

[2.4] Furthermore, even if for the sake of argument it were to be established that a decision was based on an imperfect understanding of the technical issues, this has no implications for the technical qualifications of the board members in the sense of A 21, since this provision only implies a prescribed course of technical education of the members rather than providing a guarantee of an unquestionable understanding of a specific case.

[2.5] Finally the EBA would state that after the closure of the debate before the BoA a violation of the right to be heard can only occur if the contested decision is based on new facts which have not been discussed during the appeal proceedings. In this case, however, the petitioner does not in fact argue that his right to be heard has been violated during the oral proceedings or that new facts have influenced the decision under review. On the contrary, he actually refers to the reasons pointed out during the appeal proceedings.

[2.6] Thus, there are no facts whatsoever submitted in the grounds of the petition which could support the legal ground that the petitioner’s right to be heard has been violated. The arguments with respect to the correct understanding of the technical issues of the petitioner’s invention and its possible misunderstanding by the BoA in the contested decision are not relevant in petition proceedings under A 112a. As further facts and arguments are excluded when filed after the two months time limit under A 112a(4) the petition has to be considered as not reasoned in the sense of said provision.

[3] The EBA considers that the defect of the petition cannot be remedied. For that reason a communication pursuant to Article 13 RPEBA is not expedient and, as oral proceedings were not requested, a decision in writing is appropriate.

Thus, the EBA in a composition according to R 109(2)a) comes unanimously to the conclusion that the petition is to be rejected as clearly inadmissible.

NB: DG3 simultaneously published decision R 16/11. The decision is not very exciting (although the number of parties is impressive: there were 17 opponents) but I found it amusing to encounter an inhabitant of Patentland who had not been introduced to me yet: the “skilled reader of the decision” (point [2.3] of the decision).

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

The file wrapper can be found here.


Manolis said...

The new inhabitant of patentland is not so unknown, read also T 506/08 (reasons 2.5: fachmännischer Leser). Interesting also for the competetence of the BoA under the PCT.

Roufousse T. Fairfly said...

Oliver, the decision in R 16/11 is indeed nothing to write home about, but I find this statement made in the request for review to be kind of reassuring:

The EPO's procedures are a long way from the nightmare of [Kafka's] Der Prozess [...] .