This petition was filed by the patent proprietor. Board 3.2.07 had revoked the opposed patent after the Opposition Division had rejected the opposition (decision T 321/10).
The Enlarged Board (EBA) found the petition not to be clearly inadmissible and then discussed whether it was clearly unallowable:
*** Translation of the German original ***
[2] The EBA agrees with the petitioner that the common technical knowledge in a given field has to be determined on a case-by-case basis in view of the corresponding facts and evidence, that such facts and evidence are, as a rule, found in encyclopaedias, manuals, and dictionaries, and that – as is the case for all facts or evidence – the party that does not invoke them has to be offered the opportunity to comment on them. This also holds true when – as happens from time to time – the new facts are not introduced into the proceedings by one of the parties but by the Board of appeal (BoA). In such a case each party must be offered the opportunity to present comments. Irrespective on how the facts were introduced, A 113(1) requires [the EPO] to offer the opportunity to present comments on facts forming the evidence or arguments on which a decision is based. If this opportunity is not offered, then the decision may not be based on those facts, and if this has happened, it can be set aside under A 112a(2)(c).
[3] In the present case it has to be established whether the petitioner has had the opportunity to comment on the facts on which the BoA has based its decision according to which auxiliary request II of the petitioner lacked inventive step […]. The only statements in this part of the decision which are criticized by the petitioner refer to what the petitioner calls “common technical knowledge” (“allgemeines Fachwissen”). (The decision only refers to “what a skilled person would do” (“fachmännisches Handeln”), but the EBA will consider, for the purposes of the review proceedings, that these two expressions are interchangeable […]. In contrast to citations from the decision that is to be reviewed the EBA will refer to “common technical knowledge”, as does the petitioner.)
[4] The minutes of the oral proceedings (Ops) before the BoA state, in general terms, that the “common technical knowledge” had been discussed in regard of the inventive step of all requests of the petitioner […]. Moreover, the impugned decision contains […] a summary of the submissions of the parties as well as arguments that are clearly related to the question whether the auxiliary requests involve an inventive step […]. Thus the decision makes clear that both parties have presented comments on “common technical knowledge” in regard of the inventive step involved in auxiliary request II. The petitioner also agreed with the EBA that such a discussion had taken place […].
[5] Therefore, the only difference between the minutes of the OPs and the written decision of the BoA on the one hand and the petition for review on the other hand, consists in the assertion of the petitioner that the BoA had not specified, during the OPs, what its indication of “common technical knowledge” was supposed to mean but had left it to the imagination of the parties. The petitioner also explains that it did not know what “common technical knowledge” was supposed to mean and could only assert that there was none. When reading the written decision, it had understood what the BoA had thought of when referring to “common technical knowledge” […]. For the purpose of the present decision, the EBA will assume, in favour of the petitioner, that the petitioner’s presentation of this discussion is correct and that the BoA has introduced the expression “common technical knowledge” without specifying what it was supposed to mean.
[6] The EBA is of the opinion that it cannot be correct that a party can or should accept such an indication that undisclosed facts are taken into account by the BoA or by another party, without these facts having been disclosed or commented upon. Obviously, the situation would have been completely different without this indication, but if the petitioner, as it has asserted, has heard of potential new facts that had not or only partially been disclosed, then it would have had to ask the BoA for explanations. Missing the opportunity to do so and then filing a petition for review is tantamount to acting on the way which the EBA in its decision R 21/11 [5] has found to be potentially unfair (“unbillig”). It is up to a party requesting a decision in its favour to actively participate in the proceedings and to do so in due time and of its own motion (see R 2/08 [8.5, 9.10]).
[7] These principles of the case law regarding petitions for review are not to be limited to the proper submissions of a party but also apply to statements on the submissions of another party or on arguments of the BoA. Thus the EBA noted in R 3/10 [2.11]:
“The purpose of OPs is to allow each party to make an oral presentation of its arguments, to allow the BoA to ask each party questions, to allow the parties to respond to such questions and to allow the BoA and the parties to discuss issues, including controversial and perhaps crucial issues. The value of OPs is that matters may as a result be clarified and the BoA may ultimately be satisfied that a party’s position is the right one, although it was not so satisfied by the written submissions alone.” (emphasis by the EBA)
According to the submissions of the petitioner, in the present case the BoA has asked the parties to answer questions and the petitioner – or its representative – has decided to only partially answer these questions and not to request the required clarification. It had had the opportunity to comment, but it did not make use of it in the way it could have. Under these circumstances one cannot find the right to be heard to have been violated.
[8] This conclusion of the EBA is based on the very arguments of the petitioner itself. The EBA is of the opinion that these arguments are self-contradictory and that the part of the decision that is criticised by the petitioner is based on facts that have been discussed by the parties.
[9] The petitioner explains that it had only understood from the written decision what “common technical knowledge” on which the BoA had based its decision was supposed to mean, i.e. the element which was presented as a fact in the decision, according to which the added feature (g) did not concern some specific action but rather some standard practice, and that the BoA, therefore, considered that it was part of the “common technical knowledge” that a material of higher quality would only be used to the extent to which it was required, depending on the particular application, and that if this purpose had been met and if this material of higher quality obviously was not required any more in order to meet a further purpose, then using an appropriate less expensive medium was part of what the skilled person would do […]. Although the petitioner asserts that these statements had only appeared in the written decision, they clearly reflect the submissions of the parties.
[10] Thus the appellant had declared, in the course of the OPs before the BoA […] that the problem of keeping the consumption of disinfecting gas as small as possible was a problem the skilled person encountered very commonly and that the solution of this problem according to said feature, when starting from the method according to D1 was obvious in view of what the skilled person would do.
[11] In the course of this discussion the petitioner declared […] that the method according to auxiliary request II further differed from the method disclosed in D1 by feature (g), which allowed to advantageously reduce the consumption of the – high quality – disinfecting medium by subsequently using a merely disinfected and/or sterile medium, and, as there was no indication whatsoever for this measure in the state of the art on file, that one had to consider that this feature, in combination with the other features of the corresponding claims, led to a method involving an inventive step. It was not possible to consider the specific measure according to feature (g) to be part of what the skilled person would do.
[12] It follows from a mere comparison of these arguments of both parties and the subsequent decision of the BoA that the arguments of the parties have covered the same issues as the decision of the BoA, i.e. that feature (g) had the effect of reducing the need to use the disinfecting (and more expensive) gas by using another (and less expensive) gas for shaping the bags, as well as the question of whether this was obvious for the skilled person because of his “general technical knowledge” (argument of the appellant) or not (argument of the petitioner). Moreover, the decision of the BoA, and in particular the passage criticised by the petitioner […] appears to be based on the arguments of the parties, to which the BoA refers […] before it comes to the conclusion that feature (g) does not require any specific action and that it is part of the “common technical knowledge” to use a second, less expensive gas for shaping the bags.
[13] For this reason also the EBA cannot see any indication that the decision is based on facts which the petitioner had not had an opportunity to comment upon. Quite to the contrary, the decision is clearly based on the arguments of the parties and the “common technical knowledge” which the petitioner allegedly only discovered in the decision was nothing but the conclusion of the BoA after it had heard the parties on the issue whether the skilled person would try to reduce the cost of the process, if possible. The only reason for the petitioner to be dissatisfied is that its argument was not successful.
[14] Irrespective of whether it considers only the arguments of the petitioner or, more objectively, all available information on the proceedings before the BoA, the EBA comes to the conclusion that the right to be heard has not been violated.
Thus the petition has to be dismissed as clearly unallowable.
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