This is a petition for review that has been filed after Board of appeal (BoA) 3.5.01 had dismissed the appeal against the refusal of the application by the Examining Division (ED).
The ED had found the application to lack inventive step over document D1.
The applicant was represented by an attorney-at-law acting under A 134(8).
There were no oral proceedings (OPs) before the Enlarged Board (EBA).
The decision is not very exciting, but it contains some small gems.
*** Translation of the French original ***
[2] According to the EBA, the petition covers two aspects: (a) the decision of the BoA may only be based on grounds on which the parties concerned have had an opportunity to present their comments; (b) the conditions under which the OPs were held, in particular its conduct, have led to a fundamental violation of A 113.
[3] As to the first aspect, A 113(1) stipulates that the decisions of the EPO may only be based on grounds or evidence on which the parties concerned have had an opportunity to present their comments. A 113 also guarantees the appellant’s right – which is subject to certain limitations – to have the relevant grounds fully taken into account in the written decision (cf. R 19/10 [6.2]).
[4] The petitioner asserts that the decision on novelty was based on the reason (motif) which the chairman [of the BoA] had indicated at the end of the OPs, just before the decision was announced. According to this reason the invention differed from the teaching of D1 only by the nature of the source of information, which did not qualify as a technical feature […]. However, such remarks by the chairman of a BoA just before the announcement of the decision, which are made for information purposes only, do not constitute the reasons (motifs) of a decision. They are not made for this purpose; as a rule, they are not reported in official minutes and often they are not the result of an in-depth analysis. It is the written reasons justifying the dismissal of the appeal that are relevant.
Moreover, it is important to know whether the appellant has had the opportunity to present its comments on these reasons and/or whether these reasons duly take into account the arguments submitted by the appellant in the course of the proceedings. Thus the EBA does not have to further examine what the chairman of the BoA might have said on the subject of novelty when the OPs were resumed, before the appeal was officially dismissed.
[5] As to the written reasons of the Board, […] the petitioner does not argue that points A [according to which the appellant had argued during the written proceedings that D1 did not disclose icons but had admitted during the OPs that the clickable buttons of D1 could be considered to be icons] and B [according to which the appellant had argued during the written proceedings that D1 did not disclose the generation of a complete address but had admitted during the OPs that this was implicit in D1] did not deal with its arguments in favour of novelty […] in an appropriate manner. It does not criticize this part of the decision. It is points C [according to which “distant source of information” had to be interpreted broadly and did not contain any limitation as to the nature of the information, including the second structure menus disclosed in D2] and D [according to which any page could be a point of access (porte d’entrée)] that correspond to the [points] which have, according to the petitioner, been raised by the BoA during the OPs, contrary to all expectations. The last sentence of point C (“The distinction cited by the appellant only exists according to the mental state of the user and cannot be defined to constitute a technical difference”) reflects the indications of the petitioner concerning the statement of the chairman of the BoA following the resumption of the OPs.
[6] Thus the petition for review is to some extent unusual, in that the decision deals with (a) the two points which the petitioner admits to have raised in view of novelty, and (b) two other points which might help its cause (plaider en sa faveur) but which it has not raised, which have not been part of the grounds set forth (moyens invoqués) and which have only been raised by the BoA in the course of the OPs. However, the EBA does not need to further examine this question because the decision deals with the arguments which the appellant has actually raised (i.e. points A and B). Moreover, the mere fact that the decision deals with arguments which might never have been set forth by the appellant (points C and D), even if they might have helped its cause, cannot constitute a violation of A 113(1). In other words, there is no causal link between the alleged procedural violation and the decision.
[7] Considering the grounds, facts, arguments and evidence submitted in order to support the petition for review, the latter is clearly unallowable in this respect.
[8] As to the second aspect of the petition, the EBA makes the assumption, in favour of the petitioner, that the reasoning of the BoA concerning points C and D has somehow influenced its reasoning concerning points A and B or otherwise affected the decision to the detriment of the petitioner (although the EBA does not see how this could be the case).
[9] First of all, it has to be noted that the petitioner has had the opportunity to comment the two new points which it asserts the BoA has raised. This follows from the petition itself […], and from the passage of the decision explaining the argument concerning points C and D […]. In this respect the petitioner has not argued that the relevant passage misrepresented the facts. As to the petition, it says, in substance, that the opportunity to comment was insufficient and that the way in which the question had been dealt with was unfair.
[10] Irrespective of the precise course of the proceedings, the EBA does not have to examine the arguments raised by the petitioner as to their substance because they are fundamentally flawed. As a matter of fact, under R 106, a petition under A 112a(2)(c) is only admissible where an objection in respect of the procedural defect was raised during the appeal proceedings and dismissed by the BoA, except where such objection could not be raised during the appeal proceedings. However, [the petitioner] could have raised such an objection in respect of the way in which, according to the petitioner, the Board has introduced the points under consideration, before the interruption of the OPs or even upon resumption of the OPs. It clearly follows from the petition that these points have been raised when novelty was discussed. The petitioner could have contested the way in which the Board had proceeded and could have asked for more time for dealing with these points, or even a postponement of the OPs if necessary, and in any case raised an objection under R 106. The petitioner had to know that the BoA could base its decision on novelty on these points, otherwise there was no point in raising them. The petitioner acknowledges in its petition that it expected the question of inventive step to be discussed next. Irrespective of the fact that the petitioner said that it had been surprised when the chairman of the Board announced at the resumption of the proceedings that the appeal had to be dismissed, it had to be aware of the fact that the Board could decide the question of novelty to its detriment. This is the reason why the OPs had been interrupted for deliberation. Thus it was the petitioner’s duty to raise an objection if it considered that the Board had raised these points in a way that made it impossible for [the petitioner] to duly present its arguments and that its right to be heard had been violated. This is indeed the purpose of R 106.
[11] Finally, the petitioner has asserted that during the interruption of the OPs it had been surprised to learn from the sole third party present at the OPs, who had presented himself as the Examiner who had issued the decision to refuse the application, that the appeal would be dismissed, although the registrar had not even announced the resumption of the OPs yet. However, the EBA considers that this assertion has no impact on the grounds invoked by the petitioner regarding the violation of its right to be heard under A 113(1). Therefore, it is not necessary to make a comment on that issue.
[12] Considering the grounds, facts, arguments and evidence submitted in order to support the petition for review, the petition is clearly inadmissible in this respect.
[13] The pieces of information submitted by the petitioner in its letter of July 12, 2012, […] cannot alter the above conclusions.
[14] As to the submissions (prétentions) filed with the letter dated November 2, 2012, […] A 112a(4) requires a petition to be filed within two months of notification of the decision of the BoA. R 107(2) of the Implementing Regulations of the EPC stipulates that the “petition shall indicate the reasons for setting aside the decision of the BoA, and the facts and evidence on which the petition is based.” Pursuant to Article 12(1) RPEBA: “Notwithstanding R 109(3) the Board may consider new submissions made by the petitioner after expiry of the time limit for filing petitions for review, if this is justified for special reasons.”
[15] In its decision R 5/08 [22], the EBA has insisted on the fact that the contents of a petition must be presented in such a way that they enable the EBA to understand immediately why the fundamental procedural defect which affects the decision is such that the decision has to be set aside; it must set out the reasons, facts, arguments and evidence relied on, within two months after the filing of the petition (A 112a(4)). Even if the EBA may accept new submissions made by the petitioner after that time if this is justified for special reasons (Article 12(1) RPEBA), apart from any reasons accepted by the EBA as special enough to justify the submission of additional facts, arguments or evidence, the petition itself must be adequately substantiated.
[16] In the present case, in its submissions made in the letter dated November 2, 2012, [the petitioner] complains that the BoA had not dealt with the question related to D1, i.e. that it disclosed means for accessing information but not, under any circumstances, for accessing services. This complaint is not invoked at all in the petition for review and is, therefore, completely new. Thus it cannot, for this very reason, have any impact whatsoever on the above conclusions concerning the admissibility or the allowability of the petition for review based on the grounds, facts, arguments and evidence filed with the petition. There are, therefore, no special reasons justifying that the EBA consider the new submissions (Article 12(1) RPEBA). It also follows from the reasons given above that there is no good reason to further consider this complaint because it is clear that based on the grounds, facts, arguments and evidence filed with the petition for review, the petition is clearly unallowable to the extent to which it is not clearly inadmissible.
[17] Consequently, [the EBA] has to conclude that the petition for review is clearly unallowable to the extent to which it is not clearly inadmissible.
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