Thursday, 11 October 2012

T 1467/11 – Shortcut

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

The OD had refused to admit both the main request and the first auxiliary request filed by the patent proprietor because they were late filed and would have required an additional search.

An appeal was filed in the name of Daimler AG and BorgWarner Turbo Systems GmbH. However, the patent had been transferred to Daimler AG and BorgWarner Inc. on November 6, 2008. The statement of grounds of appeal was filed in the name of BorgWarner Inc.

The opponents requested the Board to dismiss the appeal.

The patent proprietor corrected the name of the party to “BorgWarner Inc.” and requested the Board to stay the proceedings until the Enlarged Board of appeal had given its decision in case G 1/12.

The Board did not grant this request, for the following reasons:

*** Translation of the German original ***

[1] Under A 112(1)(a), in order to ensure uniform application of the law, or if a point of law of fundamental importance arises, the Board of appeal shall refer any question to the EBA if it considers that a decision is required.

Question 1 referred [to the EBA] in case G 1/12 concerns the possibility of correcting the name and address of a party that has been indicated by mistake, as a remedy to “deficiencies” provided by R 101(2), and of correcting this error under R 139, respectively. The questions referred could also arise in the present case, in the assessment of the admissibility of the appeal.

However, the Board does not believe a decision of the EBA to be required in the present case because the question of whether the appeal is admissible may be left open.  

The Board is of the opinion that it does not necessarily follow from A 110, first sentence (“If the appeal is admissible, the Board of appeal shall examine whether the appeal is allowable.”) that a decision on the admissibility of the request has to be taken at first. In configurations where the question of allowability can be decided without further ado but where a decision on admissibility cannot be taken yet, the latter decision need not be made. This interpretation prevents decisions from being delayed because [the Board] waits for a decision of the EBA that is manifestly not needed in the end.

Thus the request for a referral to the EBA is dismissed (A 112(1)(a), second sentence).

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

The file wrapper can be found here.


Myshkin said...

I don't like this shortcut. The question of admissibility logically comes before the question of allowability, so imho should be decided first. The text of Art. 110 also seems to confirm this. I'd say a Board is not competent to decide on allowability before a decision on admissibility has been taken.

In addition, taking this shortcut actually is unfair to the appellant: the only point of entering a substantive discussion while the question of admissibility is pending is to reach the conclusion that the appeal is unallowable. It is hardly conceivable that a Board would openly reach the conclusion that the appeal is allowable, only having to return to the question of admissibility and possibly finding that the appeal was inadmissible after all.

So at the point that the Board opens the discussion on allowability, or continues this discussion after a point of admissibility has been raised, the appellant effectively knows that his case is lost. He knows his case is lost already before he gets his fair chance of arguing his case.

I think I saw a similar case not too long ago.

Manolis said...

I beg to disagree with Myshkin.
In this case, abiding with the letter of the law would have caused a needles delay to the whole procedure. It was obvious that the appeal was not allowable, so why not terminate the case right away? I assume that, should there be any chance of success, then the question of admissibility would have to be clarified first, because in that case it would have been counterproductive to discuss the merits of an appeal that may be found inadmissible after all.
It happens all the time: a discussion on novelty based on a disclosure that is contested by the applicant/proprietor may be left open if it is clear that the claim lacks inventive step, even though the "normal" way would be to decide on novelty before going into is.

pat-agoni-a said...

I disagree with Manolis. The analogy with a novelty/inventiveness discussion is wrong. The admissibility of the appeal is required for the board to have jurisdiction in the case. Otherwise it is not competent to hear it. This is not an issue that can be left "for later".

Myshkin said...

"It was obvious that the appeal was not allowable, so why not terminate the case right away? I assume that, should there be any chance of success, then the question of admissibility would have to be clarified first (...)"

But does that not show (or at the very least: create the perception) that the Board has already made up its mind on the allowability when it chooses to leave the issue of admissibility aside for the moment?

I'm sure this is not how it went in this case, but imagine the opponent vehemently insisting that the proprietor's appeal against the revocation should be found inadmissible and the Board calming him down by saying that he should not worry: the proprietor's case is hopeless anyway, so now let's discuss inventive step.

oliver said...

I just came across another decision defending the same approach: T 2023/09.

Myshkin said...

T 2023/09 refers to a number of R-decisions in which the EBA decided the petition was clearly unallowable without deciding on whether the petition was clearly inadmissible. I find this analogy flawed, because Rule 109(2)(a) explicitly allows this approach.

Note that a petition not being "clearly inadmissible" does not imply that the petition is admissible; it could still turn out to be inadmissible when examined in more detail. So the fact that the 3-person EBA can find a petition "clearly unallowable" means that a definite decision on admissibility does not have to be reached.

Such provisions on an appeal being "clearly unallowable" do not exist. On the contrary, Art. 110 prescribes that "if the appeal is admissible, the BoA shall examine whether the appeal is allowable".

G 8/92 seems relevant here:
"2. Artikel 110 (1) EPÜ bestimmt:
"(1) Ist die Beschwerde zulässig, so prüft die Beschwerdekammer, ob die Beschwerde begründet ist."

3. Aus diesen Rechtsbestimmungen ergibt sich, daß eine Beschwerdekammer nur berechtigt ist, eine Rechtsfrage der Großen Beschwerdekammer vorzulegen, wenn die Beschwerde zulässig ist, es sei denn, daß die Vorlage gerade eine Rechtsfrage der Zulässigkeit der Beschwerde betrifft."

In my view, the link between point 2 and point 3 is that a BoA is only allowed to examine the allowability of an appeal if the appeal is admissible. But of course that is what Art. 110 already states.

G 8/92 continues:
"4. Wie sich aus der Vorlageentscheidung ergibt, ist im vorliegenden Fall die Beschwerde- begründungsfrist gemäß Artikel 108 Satz 3 EPÜ nicht eingehalten und ein Wiedereinsetzungs- antrag ist nicht gestellt worden. Daher sieht die vorlegende Kammer die Beschwerde als zur Zeit unzulässig an. Die Vorlage der Rechtsfragen, die die Begründetheit der Beschwerde betrifft, war daher verfrüht, so daß die Vorlage an die Große Beschwerdekammer zur Zeit als unzulässig angesehen werden muß."

So the BoA first has to decide on admissibility. Only after deciding that the appeal is admissible, it may refer questions relating to the allowability.