R 19/11 – Forget Wednesbury

This petition concerns decision T 284/10 where Board 3.2.08 dismissed the opponent’s appeal and maintained the patent as granted.

The petition was based on the ground referred to in A 112a(2)(c), namely that a fundamental violation of A 113(1) had occurred in the appeal proceedings.

The petitioner complained about the way in which the Board had reinterpreted document D3. It asked the Enlarged Board (EBA) to consider in its decision the English judicial review ground of irrationality, also known as “Wednesbury unreasonableness”. A reasoning or decision is Wednesbury unreasonable (or irrational) if it is so unreasonable that no reasonable person acting reasonably could have made it.

The EBA found the petition not to be clearly inadmissible and then dealt with its allowability.

[2.1] With regard to the first issue, “The reinterpretation of D3, Column 43-51”, the EBA notes that the petitioner does not dispute that the content of document D3 has been thoroughly discussed, both during the written procedure and in the oral proceedings (OPs) held on 7 July 2011 before the board of appeal, so that its right to be heard in this respect has not been violated.

[2.2] In paragraph F.2 on page 12 of its petition, the petitioner summarised its position in relation to the re-interpretation of D3: “… this petition should succeed under A 112a(2)(c). Firstly, the board decided novelty and inventive step on the basis of an incorrect reinterpretation of a passage D3 of which the appellant was not aware and upon which he had no opportunity to comment. Secondly, the reinterpretation of D3 was the reason why the board decided the issues of novelty and inventive step in the way that it did. Thirdly, the reinterpretation of D3 is demonstrably wrong and sufficiently bizarre that there is no way the appellant could have anticipated it.”

According to established case law, the EBA has no jurisdiction and competence whatsoever to enter into the merits of the case under the provisions of A 112a. It is not competent to consider – even indirectly – the substance of the appeal. The board which heard the case has sovereign power to assess the facts presented to it (see R 1/08 and subsequent decisions).

The petitioner complained that in its written decision the board had adopted an interpretation of the critical passage of document D3 which should have been presented to the petitioner in advance so that it could have presented arguments on that view. However, as the EBA has already indicated in several previous decisions on petitions for review - some of them cited by the petitioner itself – such complaints do not disclose a denial of the right to be heard. The EBA’s jurisprudence clearly demonstrates the principle that parties are not entitled to advance indications of the reason or reasons for a decision before it is taken (see the summary of the case law in R 12/09 [11] and the several other decisions there referred to and subsequent decisions R 15/09 [4]; R 18/09 [14-15;18]; and R 15/10 [7-9]). If that principle applies to the reasons for a decision generally, it must apply equally to an interpretation of a passage in the state of the art forming only part of such reasons. Thus, there can be no such denial if a board of appeal, after hearing all parties in inter partes proceedings, subsequently reaches its own conclusion which is then recorded in its written decision.

A board hearing inter partes proceedings is obliged to complete neutrality. This requirement would be breached if a board, after having dispatched a communication expressing its preliminary and non-binding opinion, at OPs would inform a party of a possible different interpretation of a passage in a prior art document discussed at length at said OPs, even if that interpretation differs from those suggested by the parties. Therefore, if the EBA comes to the conclusion that the considerations that persuaded the board of appeal to arrive at its decision were related to discussions taking place in this respect in the proceedings in question, the petitioner’s argument cannot be successful. In other words, it is enough if the EBA finds that the new considerations were not unrelated to the discussions arising in the proceedings in question.

In the present case it is evident that the relevant passage of document D3 was explicitly addressed in item 5.3 of the annex to the summons to OPs. Also, in the decision itself the relevant technical issues which are of importance for the critical passage of document D3 and its possible interpretation, namely the angular positions of the protruding and receding portions of the circular profile and also the importance of their positions in relation to the phase of the periodic fluctuating load torque, are addressed […].

Consequently, the EBA cannot establish a violation of the principle of the right to be heard justifying the setting aside of the decision under review.

On this first issue, the petitioner submitted further that examination of the grounds for review relating to the right to be heard should include consideration of the adequacy of the reasoning of the board’s decision. The EBA cannot subscribe to this interpretation because it would go against the legislator’s intention to establish an exhaustive list of grounds for initiating review proceedings in accordance with A 112a (see point [2.4] below). The adequacy of the reasoning of the board’s decision as put forward by the petitioner can only be considered as a new ground for review and would represent an indirect way of allowing the case to consider the substance of the appeal, which is lege ferenda and has been consistently confirmed in case law as being outside the ambit of the review procedure.

[2.3] Concerning its second issue, the failure to fully consider a key argument, the petitioner submitted that an important inventive step argument had been overlooked and disregarded by the board in its decision. It argued that it was impossible to conclude on an objective basis whether the decision would have been the same if this argument had been properly considered.

The EBA notes that the petitioner states […] that the board had correctly summarised this argument of the appellant/petitioner on page 9 of its written decision. The evaluation of this argument, which was obviously not found convincing by the board, is given in item 5.1 of the written decision.

The fact that the board was not convinced by the “development” of this argument put forward by the petitioner during the OPs is a decision of the competent board on a substantive issue. A 112a does not alter the fact that the boards of appeal alone are the final substantive instance in proceedings under the EPC. The EBA cannot deviate from that, even through interpretation. Rather, it must confine itself strictly to the EPC’s exhaustive list of grounds for setting decisions aside. The substantive correctness of a decision’s findings and conclusions is not reviewable – even indirectly – under A 112a.

[2.4] Concerning the third issue, “the judicial ground of irrationality, otherwise known as “Wednesbury unreasonableness” and the invitation to the EBA to incorporate into its own canon an equivalent of the judicial review ground of irrationality, it is completely and unambiguously clear that the list of possible grounds contained in A 112a(2) and R 104 is exhaustive. This has been made abundantly clear in the EBA’s jurisprudence (see R 1/08 [2.1, last §]; R 16/09 [2.3.5-6]; R 10/09 [2.4-5]; R 18/09 [19]; R 1/11 [2.2] and R 20/10 [2.1]). The grounds enumerated in the legislation being exhaustive, there is no scope for creating an additional ground by analogy with the judicial ground of irrationality as the petitioner seeks to do.

[2.5] For the above reasons, the petition is clearly unallowable.

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