As any human interaction, oral proceedings (OPs) before a Board of appeal (BoA) can go dead wrong. The present petition for review shows that, as a rule, petitions for review will not allow to remedy such situations, unless the petitioner has extensively made use of the double-edged sword of R 106. There are also some very clear and fundamental statements as to what the right to be heard really encompasses.
The patent proprietor had filed the petition after BoA 3.2.08 in decision T 467/09 had dismissed its appeal against the revocation of its patent by the Opposition Division.
The petitioner pointed out that its right to be heard had been violated. Among other things, the chairman had interrupted its attempt to illustrate the meaning of a claim feature by citing passages of the patent and told it to “Stop reading the description to me!” (“Hören Sie auf, mir die Beschreibung vorzulesen !”). Moreover, the petitioner had made the following oral request when resuming the proceedings after a pause:
“The applicants (sic) declare that they do not agree with the decision of the BoA according to which the novelty of claim 1 on file is only based on the feature “plastics” and that, when inventive step was discussed, [the appellants] were not allowed to explain the synergy between the individual features of the claim on file in the context of a combination invention, and that [they] consider this to be a violation of the right to be heard.”
According to the petitioner, the oral request that this objection be cited in the minutes had been refused by the chairman without any justification “while the whole BoA laughed out loud” (unter lautem Gelächter der gesamten Beschwerdekammer).
What will the Enlarged Board (EBA) do with such a mess?
*** Translation of the German original ***
Admissibility of the request – R 106
[1] Among all the events which, in the eyes of the petitioner, justify, alone or in combination, a violation of the right to be heard, only one – i.e. the non-admission of submissions regarding the synergy of the features in claim 1 as filed during the OPs – corresponds as to its content to a complaint that has been formally expressed before the BoA, regardless of whether it was worded according to its assertion or according to the version that is recorded in the (corrected) minutes.
[2] The petitioners did not assert, and their presentation of the facts of the case does not support the assumption that they, or their representative, respectively, had raised an objection within the meaning of R 106 in view of the further alleged misconduct of the BoA, and in particular, the chairman, which had led to a “fundamental” violation of the right to be heard. Nor did they assert or is it apparent that they or their representative, respectively, had been hindered from raising an objection within the meaning of R 106 against the further conduct of the proceedings by the chairman and the behaviour of the members of the BoA before the decision was issued.
[2.1] It is clear that the persons taking part on behalf of the petitioner, and in particular the representative, found the way in which the chairman conducted the proceedings problematic, and that the course of the proceedings and even more so their outcome were unsatisfying to them. However, the right to be heard does not mean – not least also under the national law of their home country and country of their seat, respectively – the right to filing submissions that are unlimited as to duration and content. Rather, the deciding body has to decide on which grounds it wishes to base the decision and which facts, evidence, and arguments it considers relevant for the decision (entscheidungserheblich). It is only in respect of these [issues] that the parties to the proceedings have to be granted the right to be heard (A 113(1)) by being given the opportunity to comment, it being understood that the extent of this opportunity has to be sufficient (taking into account the written submissions).
[2.2] Insofar as the petitioner had the intention to assert a substantial procedural violation of the right to be heard based on these [events], they would have had to raise formal and specific objections during the OPs (R 4/08, R 7/08), and indeed could have done so. The same holds true for the further criticism expressed by the petitioner […]. However, for whatever reason, the petitioners have omitted to raise objections within the meaning of A 112a(2)(c).
[2.3] The formal objection, which was confirmed in the decision of the BoA via the request for correction of the minutes […], clearly and exclusively refers to the (asserted) non-admission of submissions regarding the synergy of individual claim features in the course of the OPs. Considering the moment at which it was raised, it cannot possibly have referred to the subsequent conduct of the proceedings and the compliance of the appeal proceedings as a whole with A 113(1).
[2.4] The fact that a specific submission of the petitioner regarding inventive step had not been perceived and understood (sinnerfassend wahrgenommen) and taken into account in the reasons for the decision […] could qualify as a circumstance that the petitioner could only have realized when it had received the decision to be reviewed. Therefore, a corresponding objection could not have been raised during the appeal proceedings.
[3] Thus the present request for review under A 112a is clearly inadmissible to the extent to which it does not refer to the objection that has been incorporated into the minutes […].
[4] As far as this objection is concerned, it may be doubted, in view of the order and the reasons for the decision for correcting the minutes, whether the further requirement under R 106 was fulfilled, i.e. that the “objection … was … dismissed by the BoA”. However, it view of the following considerations this does not have to be examined any further.
Allowability of the request
[5] Considering the objection against the non-admission of submissions on the synergy between individual features of the claim filed during the OPs:
[5.1] For the right to be heard to have been granted, it is not decisive whether a party had the opportunity to comment on all factual and legal questions it considers important. Rather, the right to comment within the meaning of A 113(1) refers to the grounds on which the decision is based. The latter are determined by the deciding body. Possible mistakes made by the deciding body concern the correctness of the decision as to its substance, but they do not constitute a violation of A 113(1), very much like the limitation or the refusal of the possibility to comment on factual or legal questions that are not essential to the (main) grounds on which the decision is based. Quite to the contrary, a fair, economical and appropriate conduct of the proceedings almost requires the chairman to prevent statements that get out of hand (ausufernd), that are not relevant (any more) or that are repetitive, on behalf of any party. This also holds true for comments as to the substance [of the case]. An example that often occurs in practice is the submission of further comments as to the relevance of a claim feature within the framework of the discussion of inventive step, if this question has already been exhaustively discussed when novelty was examined. The fact that parties have their own view on which submissions are necessary or useful (in view of a successful course of the proceedings) is natural and legitimate. However, the fact that the chairman does not comply with them at all, or only partially, or not at once, does not per se lead to a violation of the right to be heard. What has to be ensured, in order for the right to be heard to be granted, is that [the parties] have an appropriate opportunity to comment on the grounds on which the decision is subsequently based, and only on them.
[5.2] In the decision to be reviewed [the BoA] denied the existence of an inventive step in view of the closest prior art and the problem to be solved that results from it […]. When doing so, the BoA has not limited itself to give its reasons […] but has also explained why it could not endorse the arguments of the petitioners, in particular on the synergetic interaction between the claim features […]. The BoA rightly refers to the request for correction of the minutes […], i.e. the statement repeated in the decision on the appeal “The core of the claimed invention consists in …” […]. Moreover, […] the reasons for the decision deal with the argument of the appellant as to why the inventive step was based on a “synergetic interaction between the plastics of the bending rail (Biegeschiene) and the other features of the invention”.
[5.3] Such a thorough discussion of the arguments of the petitioners is not a requirement for the right to be heard within the meaning of A 113(2) to have been granted, but it constitutes (further) evidence for it. This also holds true for the wording of the objection raised during the Ops, as asserted by the petitioner (synergy between the individual features “within the meaning of a combination invention, in the context of the discussion of inventive step”), which is more narrow as to its content.
[5.4] Thus [the EBA] notes that the objection against the non-admission of submissions, which, according to the minutes of the proceedings, has been raised by the petitioners long before the end of the OPs, has not led to a violation of the petitioners’ right to be heard (within the meaning of A 113(1)) on the grounds of which the decision to be reviewed was based.
[6] The further objection mentioned above […] is not allowable either. In case the BoA had not “perceived and understood” (sinnerfassend wahrgenommen) a specific submission of the petitioners on inventive step and had not taken it into account in the reasons for the decision, this does not amount to a violation of the right to be heard but may affect the correctness of the decision as to its content. […]
To the extent to which the petition for review is not dismissed as clearly inadmissible, it is dismissed as clearly unallowable.
Should you wish to download the whole decision (in German), just click here.
The file wrapper can be found here.
3 comments:
I find it very surprising that the right to be heard should only extend to the gounds on which the decision is subsequently based, and only on thme. These are not known to the parties during the OPs. It is then strange that an objection under R 106 has to be made expressly during the OPs. At that stage it, under this reasoning, impossible to know if the right to be heard is violated. You would need to have read the decision first.
Hi Koen
I would agree with the EBA. Sure enough, there may be violations of the right to be heard that can only be spotted when the written decision is issued (and in this case a R 106 objection is not required), but during the OPs it is quite clear what is being discussed. If the debate concentrates on what the closest prior art is, and the Board refuses to let you comment on it, then you are clearly aware of the violation (and should unsheathe the R 106 sword).
This is why I like this decision - because it states things so clearly.
@Koen,
I believe the idea behind Art. 113 goes the other direction: it is not to give the applicant the right to be heard on the grounds of the decision (when the problem you mention may arise) but it is to safeguard that the decision is based on grounds that the applicant has had the right to be heard.
So, the onus is on the deciding Board /division to make sure that the grounds they want to base their decision on, have been discussed by the applicant and not for the applicant to make sure he recognises the grounds the decision is to be based on and make comments on them.
I hope I make sense here! (haven't had coffee yet!)
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