Monday, 28 January 2013

R 13/12 – For The Trained Only

This petition for review was filed after Board 3.2.08 had dismissed the appeal of the patent proprietor whose patent had been revoked by the Opposition Division (OD) (decision T 36/10).

The petitioner argued that the Board had come to its conclusion that claim 1 lacked novelty over D1 without considering or discussing the key arguments presented by the petitioner on how the skilled person would interpret a certain alloy in document D1.

The Enlarged Board (EBA) found the petition to be admissible and then discussed its allowability:

[2.1] The petitioner made it quite clear during the oral proceedings that the core of the petition was not that it had not had sufficient opportunity to present its case – indeed it had done so at length. The crucial point was that the decision did not consider and discuss the key arguments it had presented. More precisely it could not find in the decision anything that reflected its arguments regarding the non ambiguous disclosure in D1 of the three features and the argument of the self-contradiction contained in the opponent’s argumentation. The Board just said that D1 disclosed the different components.

[2.2] It is undisputed that the right to be heard is not a purely formal right to speak, which would be a travesty of this right, but implies an obligation for the boards of appeal to consider the parties’ argumentation. As a matter of fact this obligation is shaped by the circumstances of each case. This means that the boards have an obligation to discuss in their decisions issues and arguments to the extent that they are relevant for the decision and may disregard irrelevant arguments. In this respect the Boards are not obliged to use specific words or the same wording as that used by the parties and it must be accepted that refutation of arguments may be implicitly inferred from the particular reasoning held by the boards (see R 21/10 [2.4]).

[2.3] In the case in suit, the EBA although having no jurisdiction “ratione legis” nor “ratione materiae” to review the substantive assessments, is satisfied that the decision under review considered the petitioner’s arguments: it summarised the particular key argument submitted by the petitioner in paragraph V and, although not literally, mentioned it again in paragraph 2.2 of the reasons. The decision consists, as very often, of two steps. In paragraph 2.1 the Board explained how, in its view, D1 disclosed all the features of the claimed invention. Then in paragraph 2.3 the Board turned to the petitioner’s argumentation and explained why this argumentation had to be refuted.

[2.4] It is true that to refute the petitioner’s arguments the Board adopted an approach to D1 that was broader than that suggested by the petitioner, in the sense that the Board did not stick to the specific example and relied on a more general teaching of D1. But this had been the core of the discussion, even before the OD, and the petitioner did not contend that it came as a surprise. The EBA does not see here more than an analysis of a document of the prior art made by the Board which is at variance with the interpretation proposed by the petitioner, this analysis rejecting explicitly this interpretation. Indeed, the fact that the Board did not literally reproduce the specific words commonly used regarding the novelty assessment such as “unambiguous disclosure”, or did not explicitly say that there was no contradiction in the opponent’s argumentation as argued by the petitioner does not mean that the Board did not consider the petitioner’s argumentation. A decision of the Boards of Appeal is meant to be read by trained people capable of understanding a reasoning in its substance even if this reasoning does not reproduce literally the words used in the parties’ submissions. This is sufficient to satisfy the right to have its relevant arguments heard in the sense of “considered” (see R 1/08 [2.2, last paragraph and 3.1] about the limit of the EBA’s competence when the complaint overlaps the substantive assessment of inventiveness).

[2.5] Investigating further would involve assessing whether the Board had correctly understood the argumentation and, above all, given the correct answer. The EBA has often stated that the fact that the petitioner does not share the view of the Board of Appeal and does not accept the outcome of the decision is a matter for a review of the merits of the decision (a means of redress which does not exist in the EPC, the decisions of the Boards of Appeal being res judicata). Such a request, therefore, obviously, falls outside the ambit of the petition for review as intended by the legislator (see as example R 4/11).

In this respect the EBA has to remain vigilant and thwart any attempt to blur the frontier between what may clearly be a matter for a violation of the right to be heard under Article 113 and 112a(2)(c), (for instance an evident failure to consider an important factual submission), and anything else presented as a violation of the right to be heard but which actually pertains to the substantive merits of the decision by the Boards of Appeal.

Under no circumstances could an alleged violation of the right to be heard supply the parties with a means to put the EBA in a position where it is expected to check whether a board of appeal understood an argument correctly or drew the right conclusion from it.

In this respect R 6/11 remains an accurate reference, because at least the alleged defects (c) and also (d) overlap the violation of the right to be heard as intended by the petitioner in the present case: under the heading of a violation of the right to be heard and other defect, the petitioner then was also challenging the very reasons of the decision, arguing that the Board of Appeal did not explain, or not enough, or not in a logical sequence, why the petitioner’s arguments were not accepted. In the case in suit, as in R 6/11, the EBA is being expected to check the accuracy of the reasons given with respect to the petitioner’s arguments. (see R 6/11 [IX, 6] dealing with the alleged violation (c) according to which the Board did not explain why it took a different view than the one submitted by the petitioner and also agreed by the adversary party) . […]

The petition for review is rejected as clearly unallowable.

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

The file wrapper can be found here.