R 9/11 – Don’t Wait Too Long

Here is a recent decision on a petition for review. This petition had successfully passed the first stage examination (R 109(2)(a)), which does not happen very often; most petitions are rejected as clearly inadmissible or unallowable.

The petition concerned decision T 642/08, in which Board of Appeal 3.3.09 (referred to as “the Board”) maintained the opposed patent in amended form.

The Opposition Division had maintained the patent in amended form, which triggered an appeal by the opponent. Oral proceedings before the Board were held on March 15, 2011.

In an annex to the summons to OPs issued on December 1, 2010, the Board indicated that the only issue to be discussed at those proceedings appeared to be inventive step. In this context, D4 appeared to be the closest prior art.

On February 15, 2011, the opponent submitted additional arguments concerning lack of inventive step, and filed new document D24; it argued that claim 1 lacked inventive step in view of the combination of D4 with D24.

At the OPs the Board admitted document D24 and found the main request to lack inventive step in view of D4 in combination with D24.

The proprietor then withdrew the auxiliary request on file and submitted auxiliary requests A, B and C, the admissibility of which was then discussed. After deliberation, the Board informed the parties that only auxiliary request C would be admitted into the proceedings. The proprietor then requested the following written statement to be included in the minutes of the OPs:

“Respondent is of the opinion that the fact that D24 is admitted so late (1 month prior to OPs) in the proceedings followed by the subsequent denial of the admissibility of late filed claims is in violation of the right to be heard (R 113) [sic] and R 112 [sic]. The board also failed to ask why we believed that the Auxiliary Request A and B would overcome any of the objections. It is considered and submitted as a procedural violation of the right to be heard.”

Before the Enlarged Board of appeal (EBA), the patent proprietor argued as follows:

After the Board had decided to admit document D24 into the proceedings, the patent proprietor had not been given the opportunity to address the arguments raised by the opponent and the Board against admitting newly filed auxiliary requests A and B. The Board, before closing the debate on the admissibility of the new requests, had failed to allow the petitioner to address at least once the arguments put forward by the Board and the opponent which had not been raised during the written proceedings. These new auxiliary requests had been meant and submitted as a proper reaction to the new situation on the file. Also, the discussion had not addressed the issue of inventive step. From the chronology of this discussion it followed that the petitioner had only explained the amendments in the requests and where the basis for the amendments was to be found. The Board had indicated that it would be rather unwilling to accept product-by-process claims and that these did not overcome the objections raised against the main request. The opponent had argued on the merits of these requests. No further discussion had taken place. After the Board’s decision not to admit auxiliary requests A and B, the petitioner had immediately filed an objection. The Board had failed to ask it why it thought that the auxiliary requests overcame the objections. Thus, a severe violation of A 113 had occurred. This violation was also linked to the fact that the Board had not invited the petitioner to comment on the auxiliary requests as regards the prima facie issue of inventive step …

The Board found the petition to be admissible and then examined its substance:

The grounds of the petition - scope of the petition

[2.1] The petition alleges fundamental procedural defects on two grounds, namely A 112a(2)(c) and (d).

[2.2] The petitioner complains that, at the OPs on 15 March 2011, its right to be heard was denied in three ways:

(a) firstly, the Board decided on the admissibility of newly filed auxiliary requests A and B without giving the petitioner an opportunity to comment on objections raised by the Board and the [opponent] […];

(b) secondly, the Board decided to admit document D24 and rejected claims filed in response to that late document, thereby effectively depriving the petitioner of a reasonable opportunity to respond adequately to the introduction of the new document […];

(c) thirdly, the Board violated the right to fair proceedings by first allowing D24 to be filed late filing and then refusing new claims filed by the petitioner, thereby demonstrating bias which was contrary to the principle of fair proceedings […].

[2.3] As regards complaint (c), an alleged violation of the principle of procedural fairness is not as such a ground for a petition for review.

Consequently, complaint (c) can only be seen in terms of a violation of A 113 and hence A 112a(2)(c) EPC.

The petitioner agreed with this at the OPs on 7 December 2012.

Thus, the only remaining ground for the petition is that, at the OPs before the Board on 15 March 2011, a fundamental violation of A 113 occurred.

Allowability of the petition for review

[3.1] Complaint (a): At the OPs on 15 March 2011, the Board decided on the admissibility of newly filed auxiliary requests A and B without giving the petitioner an opportunity to comment on the objections raised by the Board and the [opponent].

[3.1.1] The petition invokes the ground of A 112a(2)(c). In the petitioner’s submissions and according to its handwritten statement, the Board decided on the appeal in violation of A 113 in a manner that gave the petitioner no opportunity to present its comments.

[3.1.2] The facts of the case show that, after admitting document D24 into the proceedings, the Board discussed extensively with the parties the subject-matter of claim 1 of the main request on its merits with regard to inventive step in view of D4 in combination with D24 […]. The Board concluded that the main request was not allowable.

After the Board’s conclusion on the non-patentability of claim 1 of the main request, the petitioner filed new auxiliary requests A, B and C and withdrew the previous auxiliary request.

Claim 1 of auxiliary request A corresponds to claim 1 of the main request, to which the feature of dependent claim 14 has been added. Claim 15 (process claim) is identical to claim 15 of the main request; claim 16 (product-by-process claim) of auxiliary request A corresponds to claim 1 of the main request, to which the following wording has been added: “… wherein the multilayer film is obtainable by a method as defined in claim 15”.

Claim 1 of auxiliary request B corresponds to claim 16 of auxiliary request A, i.e. claim 1 of the main request, to which the following wording has been added: “… wherein the multilayer film is obtainable by a method as defined in claim 15”. Claims 2 to 15 correspond to claims 2 to 15 of the main request.

[3.1.3] The issue of the admissibility of the newly filed auxiliary requests was then examined.

It is not contested by the petitioner that first of all the Board chairman invited the petitioner to explain the differences in, and the support for, the auxiliary requests. In the petition […] it is further indicated that the “[p]atentee also briefly referred to the experimental section and [0060] of the patent to emphasise that the subject matter of claim 1 of this request is associated with beneficial properties, namely that the material suffers from little if any shrinking after printing.”

Then, after the explanations of the petitioner, the [opponent] and the Board gave their comments as to why the new auxiliary requests did not overcome the objections raised with respect to the main request.

The statement of Mr de Lang, who was the authorised patent attorney for the petitioner, indicates that “the Opponent … inter alia criticised the new requests for lack of inventive step.” This is also confirmed by the petition, which states that the [opponent] “… not only addressed the differences and support issues, but he also argued on the merits of these requests” (see page 4, fourth paragraph).

At this stage the Board also emphasised the feature formulated as a product-by-process and newly added to claim 16 of auxiliary request A and claim 1 of auxiliary request B. The petition stresses that the Board indicated that it “… would be rather unwilling to accept product-by-process claims, as one could not verify whether or not these claims truly make a contribution to inventive step” (see page 4, fifth paragraph).

[3.1.4] The EBA concludes from the petitioner’s own submissions and statements that before the closure of the debate a discussion was held on the admissibility of the new auxiliary requests and various objections were raised […] by the Board chairman and also by the [opponent]. The petitioner, however, did not comment on these objections.

It would seem that from these two objections alone, made by the [opponent] and the Board before the closure of the debate, it was apparent that the two new auxiliary requests A and B could not be admitted into the proceedings, which would also explain […] why no argument was put forward by the petitioner to counter them.

Along the same lines, reference is made to the explanations of the [opponent] […] (“… it was not prima facie apparent how the introduction of the process feature into the product claim could overcome the inventive step raised against the main request, the proprietor’s representative chose not to respond to that question, and tried to shift the discussion to a consideration of Claim 1 of Auxiliary Request A and an advantage regarding printability as demonstrated by the examples of the patent in suit”).

[3.1.5] In any event, there is no doubt that the petitioner had the opportunity to state its case in respect of the admissibility of the auxiliary requests and, in particular, to address the merits of process claim 15 and product-by-process claim 16 of auxiliary request A as well as product-by-process claim 1 of auxiliary request B. Nor has it been alleged that it was prevented from doing so.

[3.1.6] It is part of the responsibility of any party (here: the petitioner) to state its case and to choose which line of argumentation and which particular arguments it wishes to put to the Board. This procedural responsibility cannot be placed on the Board; a party cannot just wait to be explicitly asked whether it wishes to expand on its previous submissions.

Hence, at the latest when the chairman is closing the debate on a specific issue, a party must not just passively follow the other party’s submissions and the Board’s remarks but must actively take the initiative to ensure that the Board continues the debate on the admissibility of a request, or it must amend the request in response to the Board’s remarks. Since the closure of the debate normally marks the point in the proceedings when the Board intends to start its deliberation on a specific issue, and thereafter potentially take a decision on it, a party wishing to present further submissions on that issue must intervene at that moment, without waiting to be asked.

Because the petitioner did not do so in this case, the chairman was justified in closing the debate on the admissibility of the new auxiliary requests. The petitioner could not expect the Board, which has to stay neutral in inter partes proceedings, to prompt the petitioner to make further submissions or ask for further explanations.

No violation of A 113(1) was therefore committed by the Board in this connection.

[3.1.7] Moreover, if there are doubts or expectations as to what is going to be deliberated, it is up to the party to verify this before the OPs are interrupted for deliberation.

Any party is expected actively to participate in the OPs and safeguard its interests. In this respect the EBA refers to its decision R 17/11 [19], in which it stressed that in appeal proceedings it is incumbent upon a party to make sure that the points it wishes to raise are actually raised in the proceedings. If it considers that an issue is going to be overlooked, it should raise it.

In that sense, the petitioner had the opportunity to raise the points it considered necessary before the Board interrupted the proceedings for deliberation. The Board was therefore not at fault in deciding to deliberate on the admissibility of the auxiliary requests and in pronouncing its conclusion after deliberation.

The petitioner’s right to be heard has thus not been violated (A 113(1)).

[3.2] Complaints (b) and (c): the admission of D24, the non-admission of auxiliary requests A and B, and the application of the principle of fair proceedings

[3.2.1] The admissibility of requests filed at a late stage in the appeal proceedings is subject to Article 13(1) RPBA, which provides that any amendment to a party’s case after it has filed its grounds of appeal or reply - and a new set of claims with a new feature is clearly such an amendment - is admissible not as of right but at the Board’s discretion. That discretion is to be exercised in view inter alia of three criteria, namely the complexity of the new subject-matter, the current state of the proceedings, and the need for procedural economy. The concept of “complexity” in Article 13(1) RPBA is not merely confined to the technical content of a proposed amendment to a party’s case. It also extends to any procedural complexity the amendment would entail.

This provision also applies when a new document has been admitted into the proceedings, even if this occurs during OPs. This discretionary power is exercised under the conditions set out above. It is for the Board to exercise this power, taking account of the particular circumstances of each case.

Since both the decision to admit or not to admit a late-filed document and the decision to admit or not to admit a late-filed request are primarily discretionary decisions of the competent Board, they can only be reviewed to the extent that the way in which a Board exercised its discretion constituted a fundamental violation of A 113. Whether the decision was right or wrong and whether the members of the EBA would have reached the same decision is – as with all discretionary decisions – not the relevant criterion.

[3.2.2] In this respect, the petitioner argues that the Board did not take into consideration the fact that document D24 was late filed when deciding not to admit auxiliary requests A and B. The petitioner is of the opinion that the auxiliary requests were not late filed within the meaning of A 114(2).

The petitioner further maintains that Article 13(2) RPBA, providing that other parties are entitled to submit their observations on any amendment not held inadmissible by the Board ex officio, was to be read as giving the petitioner a right to file new requests in reaction to the late-filed but admitted document D24.

However, apart from the fact that not only the document’s admissibility had been discussed with the parties but also its disclosure in view of the patent in suit had been extensively disputed by both parties, the petitioner’s right according to Article 13(2) RPBA does not inevitably extend to having all auxiliary requests – without any further examination of their prima facie allowability – automatically admitted into the proceedings.

[3.2.3] Hence, the petitioner can succeed only if it can be demonstrated that the Board declined to admit auxiliary requests A and B into the proceedings arbitrarily or on grounds that were not relevant to the exercise of its discretion, thereby unlawfully depriving the petitioner of its right to have these requests admitted and discussed in full. However, the EBA sees no evidence of that on file. The arguments used for admitting D24 and not admitting requests A and B, as mentioned in points [3], [3.1] and [5.1-3] of the reasons, are within the scope of Article 13(1) and (3) RPBA. Furthermore they were mentioned during the OPs and the petitioner was not denied the opportunity to comment on them, as the EBA has shown under point 3.1 above.

In consequence, the EBA is not convinced that there was a “biased distribution contrary to the principle of fair proceedings” or that the petitioner’s right to be heard has been fundamentally violated.

[4] For the above reasons, the petition is unallowable.

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