Thursday, 30 May 2013

R 15/11 – E Silentio Decreti

Here is what I believe to be the fourth successful petition for review (after R 7/09, R 3/10 and R 21/11). 

The Enlarged Board (EBA) dealt with decision T 832/09 where Board of appeal (BoA) 3.2.02 had dismissed the applicant’s appeal against the refusal of its application. The sole auxiliary request was dismissed for lack of clarity.

The petitioner pointed out that this clarity objection had never been raised; the petitioner had become aware of it only when the final decision was announced.

The EBA found no evidence to the contrary.

[2.1] As set out more in detail below (point [4], “Allowability”) there is nothing in the file of the appeal proceedings in question which supports the conclusion that the petitioner was or should have been aware during the appeal proceedings that compliance of the sole auxiliary request with A 84 was at issue.

[2.2] According to the petitioner […], the chairman, just before announcing the decision on the appeal, made a negative statement as to the compliance of the auxiliary request with A 84, but refused to give the petitioner’s representative the floor when he immediately tried to intervene and to address this requirement […] which, according to the petitioner, had never been discussed before or during the oral proceedings (OPs).

[2.3] In the circumstances of the present case it is immaterial for the purposes of R 106 whether or not these submissions give a true account of the conduct of the final stage of the OPs before the BoA. If they do, the total and final refusal to hear the petitioner effectively hindered the petitioner from exercising its right to be heard and, at the same time, prevented its representative from raising a relevant objection under R 106 (either directly or in reaction to the refusal to comment on the new objection). If for whatever reason the petitioner’s submissions regarding the final stage of the OPs in question were not taken into account by the EBA, then there would be no indication at all that the petitioner could possibly have been aware before notification of the decision under review that it would be based, within the meaning of A 113(1), on the lack of clarity in respect of the auxiliary request.

[3] Thus, on either view, the relevant objection could not be raised by the petitioner during the appeal proceedings. It follows that R 106 is satisfied.


[4] There is no explicit or implicit indication in the file of the appeal procedure from which it can be derived that in respect of the auxiliary request a possible lack of clarity (A 84) was at any time discussed with the petitioner or that at least an objection was raised in this respect.

[4.1] The petitioner is correct in saying that the statement in the communication accompanying the summons concerning a potential discussion of inter alia A 84 […] did not amount to a specific objection under that provision regarding the auxiliary request. It expressed, at best, a conditional and quite general intention of the BoA when drafting the communication. It cannot help establish whether or not the petitioner was then actually given the opportunity to comment on that requirement within the meaning of A 113(1).

[4.2] The reasoning in point [3], last paragraph of the decision under review […] is equally inconclusive in this respect, also insofar as it refers to explanations given by the petitioner during the OPs, both orally and in the form of additional written notes. There is nothing in this paragraph or elsewhere in the Reasons including, in particular, the Facts and Submissions, which indicate or imply that at any time during the OPs the petitioner was aware or could have been aware that compliance with A 84 was at issue. The reference in point 3, second paragraph to the ‘‘crucial paragraphs of the description referred to by the [petitioner]” […] are in this respect too vague in the face of the petitioner’s assertion about this […]. The written notes referred to in the decision are not further identified by the Board and the notes produced by the petitioner bear out what is said in the petition […] above, i.e., they do not concern the crucial passage in the claim found to be unclear.

[4.3] Neither do the petitioner’s submissions, in particular its account of the final stage of the OPs before the BoA […] in any way that the right to be heard was granted in respect of the critical ground for the decision in question- on the contrary, see point [2.3] above.

[5] The EBA does not have the power or ability to investigate further whether or not there might be other facts or indications which would suggest that at any time the petitioner was indeed aware or could have been aware that the BoA had doubts as to the compliance with A 84, an awareness which would have been the minimum prerequisite for an opportunity to comment on that ground within the meaning of A 113(1). In the absence of any such indication it is clearly not for the party which alleges a breach of its right under that provision to prove the negative (negativa non sunt probanda). Nor can the EBA, in the absence of any such indications, re-construct the detailed course of the entire appeal proceedings, in particular of the OPs, in a case where the decision of the BoA has been challenged under A 112a(2)(c). Any relevant document on file, in particular the parties’ written submissions, any communication under A 15(1) RPBA, the minutes of the OPs or the facts and submissions and/or the reasons for the decision pursuant to A 111 may serve the purpose of establishing what took place, it being the usual practice of the BoA to include the relevant information in the facts and submissions and/or the reasons for the decision (rather than in the minutes of the OPs). It is for the BoA to draft its own texts in a way that enables the reader, taking into account all documents on file, to conclude that the right to be heard within the meaning of A 113(1) was respected with regard to the grounds on which the decision of the BoA is based.

[6] No such conclusion regarding non-compliance of the auxiliary request with A 84, on which ground the appeal was eventually dismissed, is present in the reasons for the decision under review, in particular not in point [3], last paragraph (point [4.2], above). Had the clarity issue been raised earlier and in a manner enabling the petitioner to comment on it, one would expect that this would be indicated by the BoA or otherwise reflected in the written reasons for the decision under review, e.g. by dealing with the party’s reaction – normally counter-arguments or amended requests, or both - in the Summary of the facts and submissions and/or in the Reasons for the decision.

[7] Under these circumstances the EBA is not in a position to establish that the petitioner’s right to be heard has been respected. So it has to be assumed that a violation of the petitioner’s rights under A 113(1) occurred which qualifies as fundamental within the meaning of A 112a(2)(c) because it concerned the ground on which the appeal was eventually dismissed by the decision under review.

Request for replacement of the members of the BoA under R 108(3)

[8] What the petitioner’s argumentation in support of that request […] boils down to is, in effect, that the replacement of all members of the BoA should be an automatic (“routine”) measure whenever the violation of the petitioner’s rights which led to the setting aside of the decision of the BoA was a mistake of the BoA itself (and not, as e.g. in case R 21/11, due to circumstances outside the Board’s control), such a mistake bringing a suspicion of partiality upon each member of the responsible board.

[9] However, such a narrow understanding of the EBA’s discretion to replace or not to replace Board members cannot be derived from the wording of R 108(3), second sentence, nor does it properly reflect its purpose.

R 108(3), second sentence stipulates quite generally that the EBA may order the replacement of board members who participated in the decision set aside. Hence, even if the decision of the Board was flawed by a fundamental procedural deficiency within the meaning of A 112a, the replacement of board members still lies in the discretion of the EBA. This means that replacement does not ensue automatically from the fact of a deficiency within the meaning of A 112a having occurred. On the contrary, the rule is that the proceedings are re-opened before the BoA responsible under the business distribution scheme (see Revision of the EPC (EPC 2000), Synoptic presentation EPC 1973/2000 - Part II: The Implementing Regulations, OJ EPO Special edition 5/2007, 166). This serves the interest of procedural economy, since the board members who are familiar with the case will normally most efficiently deal with the case again.

More importantly, however, the principle relied on in decision R 21/11, namely that the replacement of members of the BoA should not be ordered without good reason, is not merely a matter of procedural economy. As the business distribution scheme of any court, the BDSBA (see Supplement to OJ EPO 1/2013, 12 for the current version) and the adherence to it is an important element of an independent, reliable and efficient judicial system which meets the standards set by, inter alia, Article 6 ECHR. Any change of a Board’s composition without good reason would be contrary to the evident purpose of the BDSBA - and, thus, also detrimental precisely to “the public’s confidence in the judicial character of appeal proceedings” which the petitioner referred to - and must, therefore, remain restricted to situations where for objective or clearly established subjective reasons an individual member can or should no longer participate in the case. This is not only reflected in the above cited wording of R 108(3), second sentence: “The EBA may order ...” but also in the wording “... that members [not: the members] ... shall be replaced” in R 108(3) and in Article 4(1) of the BDSBA: “If a member designated ...”.

[10] Just as a decision under A 24(4), an order under R 108(3) causes a change of the composition of the BoA as originally determined pursuant to Articles 2 and 3 BDSBA. In decision G 1/05 [8], the EBA underlined the importance of Board members’ discharging their duty to sit in the cases allocated to them in the particular composition as determined by the provisions applicable thereto, viz, the right of the parties to a hearing before a judge or court in the particular composition as determined by those provisions. This means not only that Board members cannot withdraw from the proceedings at will, but also that the provisions on business distribution must apply for a case re-opened before the board, unless there is a compelling reason for proceeding otherwise. It is therefore appropriate , when exercising the power of discretion conveyed by R 108(3), second sentence, to consider the criteria and standards that have been developed for the replacement of members of the BoA following an objection of suspected partiality pursuant to A 24(3) and (4). Actually, it is the allegation of suspected partiality on which the petitioner’s request to replace (also) the rapporteur is based.

[11] It is commonly recognised in the jurisprudence of the Boards of Appeal and elsewhere that the suspicion of partiality must be justified on an objective basis and that purely subjective impressions or vague suspicions are not enough (G 1/05 [20]). The question whether or not an objection on the ground of suspected partiality is justified can only be decided in the light of the particular circumstances of each individual case (G 5/91). Such a suspicion is not objectively justified for the sole reason that a position on the matter was adopted in a prior decision of a BoA in which the board member concerned had participated (G 1/05, see also J 15/04).

[12] In the present case there is nothing concrete in support of a reasonable suspicion of partiality regarding the rapporteur. In particular, it appears that the omission to grant the petitioner an opportunity to present its comments on the question of clarity was a mere oversight to which the rapporteur did not (actively) contribute. Under these circumstances the rapporteur’s ability to approach the petitioner’s submissions during the re-opened appeal proceedings with an open, unbiased mind is not in doubt, so that the EBA does not see a reason for exercising its power under R 108(3) in the way as requested by the petitioner.

[13] This conclusion is not affected by the petitioner’s reference to decision T 584/09 in which the replacement was decided under A 24(4) by the BoA following statements pursuant to A 24(2) that the two members concerned did not want to participate in the further proceedings in order to avoid suspicion of partiality. In contrast, the present request for replacement (of the one remaining member) is to be decided on by the EBA under R 108(3) and in the absence of any objective basis for a suspicion of partiality. It is, however, completely open how, in the re-opened proceedings, the BoA, in the event of a statement by the member concerned pursuant A 24(2) or an objection by the party pursuant to A 24(3), would decide on the question of replacing that member.

[14] The order to reimburse the fee for the petition is based on R 111.


For these reasons it is decided that:

1. The decision under review is set aside and the proceedings before BoA 3.2.02 are reopened.

2. The request that the members of the BoA who participated in the decision under review be replaced is rejected.

3. Reimbursement of the fee for the petition for review is ordered.

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

The file wrapper can be found here.

NB: This decision is also reported on Le blog du droit européen des brevets.


MaxDrei said...

For the time being, I can read only the first page of each document from the file wrapper, but I can at least discover the composition of the TBA that was involved. The names of the Chairman and Rapporteur are interesting. If I understand it right, the Rapporteur was formerly in DG1 (where I remember him as careful and fair) and has only recently made it upwards to DG3.

By contrast, the Chairman has been in DG3 as long as I can remember. All those years as a Legal Member, I recall, sitting silent while the other two members of 3.2.2 went diligently about their work.

So I think this Decision from the EBA is quite brave. It must be quite hard for any DG3 Panel to venture any criticism of one of their own. So, here, my compliments. Well done.

And good to send it back down to the same TBA Panel. Seems to me that this offers the best chance of progress to a final result which leaves everybody involved with the feeling that they have been fairly treated.

Anonymous said...

Max - you are not the only one who can only read the first page (irrespective of browser, as far as I can tell). The temporary solution is to download the whole doc by selecting it and hitting the download button.

Anonymous said...

@ Max: The chairman was Mr Noel who has already left the EPO. He was a technical and not a legal member, irrespective of whether he was silent or not.

oliver said...

If the chairman has left the EPO, the situation is indeed similar to what we had in T 584/09.

MaxDrei said...

Thank you anon, and sorry Mr Noel it must be that I have confused you with somebody else.

Kuifje said...


for those of us not so well versed in the internal working of EPO, please explain why a move from DG1 to DG3 is to be considered 'up'.

And please also explain your statement

'So I think this Decision from the EBA is quite brave. It must be quite hard for any DG3 Panel to venture any criticism of one of their own'

I can only make sense of this statement if you either
-imply that EBA decisions are not always as impartial as they should be ('one of their own' should be totally irrelvant)
-mean to say that the same group of people gets to review an earlier decision, which would indicate an insufficient organisation

Both bring up worrying images of a justice and law dispensing organisation that seems pre-occupied with itself rather than with justice for external parties.

MaxDrei said...

Don't worry Kuifje. No need to bring up those troubling Images. I recall a case at the Patents Court in London, where the witness was caught lying. Dut did the judge so state, in his written decision. Oh no. Instead he found a convenient euphemism, to get across that the man was not telling the truth. No worries though; justice was done.

DG = Directorate General. DG1 is the EPO's examining staff, whereas DG3 is the name for the Boards of Appeal. Examiners are under the thumb of EPO Management, but the Boards of Appeal are under nobody's thumb, not even the President of the EPO. So, a move out from under the thumb is "up" in your eyes too, is it not?

Anonymous said...

Kuifje, on "one of their own", you might wish to read the book of Catarina Holtz, published by the EPO (eposcript n°7), Due process for European patenting, in particular (but only, because the book deserves being read in its entirety) pages 210-2. And as to "up", my understanding is that an examiner is indeed promoted (i.e. goes up one level in the salary scale) whilst a director would not be.

Nano3 said...

Just a short advice on the "only first page" problem: the solution ;-) is to check the box before the document you want to see , then scroll up and click "selected documents" . You get all the pages with scrolling possibility. When you check the boxes of more documents, you get them all together, scrollable. I hope I am clear and that this helps.

Nona3 said...

Move from dg1 to dg3 is "up" for a number of reasons. 3 is higher than 1, for instance ;-) and the first instance is lower than the second one. But also because an examiner who is nominated( not promoted!) gets a higher grade, usually one, but two has happened. Not a director, as maxdrei? said correctly. Directors have the same grade as members of the boards. Members of dg3 are nominated by the council, not so examiners. Dg3 members have an explicit article in the EPC (23, I believe) stating their independence, not so examiners. The work of the board is judicial, not administrative.

Kuifje said...

I see now wrt DG1/DG3.

I thought, mistakenly, that they were at equivalent level, just dealing with different technical fields.

I can also see now why this would be considered 'up'.

Nona3 said...

I have to apologize, Kuifje.. Usually people who read and comment here are knowledgeable about the EPO, but of course that is not always the case. I just assumed that you knew that DG1 stands for the examiners and DG3 for the boards of appeal. That you apparently did not know that may have caused your question. So the examiners of DG1 form the first instance dealing with applications and oppositions. Their decisions may be appealed by a losing party and those appeals are treated by the boards of appeal of DG3 as the second instance. Those are completely independent from DG1.

Kuifje said...

I consider myself moderate knowledgable about the EPC in general having prepared for and sat the EQE (and now eagerly awaiting the result), but am a complete zero as to the internal workings of EPO.

And I am actually not too interested in those internal workings, as long as the quality delivered is good (overall: yes) and the speed is good (overall: no) and the cost is reaonable (overall: medium)

That's why I was stung by the remark about 'criticism of one of their own'.

The mere suggestion that considerations 'one of our own' could play a role in decisions, irrespective of whether they actually did play a role or not, is detrimental to my faith in the quality EPO delivers.

Francis said...

I believe that the situation where people review cases that have been conducted by their colleagues is not ideal. DG1 work is reviewed by DG3, which is independent from DG1, and that is good practice. In petitions for review DG3 examines DG3 work, which is not ideal. In some decisions on petitions for review you really feel the embarrassment and the desire not to annoy Board members. That being said, given the number of cases dealt with by the BoA (and, consequently, the number of cases that require review), the solution chosen by the lawmaker appears to be pragmatic. The creation of an extra review body would have been a waste of compentence, energy and money.

kuifje said...

On this topic:

What I often miss in BoA/EBoA proceedings is the perspective/justification of the original decision maker, be it ED, OD or BoA.

In an appeal also the 'quality' of the lower instance may be questioned, yet this lower instance has no formal say or defense.

Or are these matters informally discussed over coffee?

pat-agoni-a said...

@kuifje: no, the first instance is not represented in the appeal proceedings and is even barred from commenting their decisions or to inform the board by any other means than by what is written in the decision under appeal. The decision under appeal, and if needed the minutes of the oral proceedings, should be all what is needed to review the case. There are no informal contacts between the board mebers sitting in a case and the examiners that took the decision under appeal. The same is true for petitions for review before the EBA.

Nona3 said...

No Kuifje. Dg1and dg3 have no coffee together. You have a faulty perspective of the organization which is way beyond internal workings. It is the reflection of basic democratic principles according to which everybody has the right to have a second look at an unfavorable decision (except maybe employees of international organizations ). The boards decide on the requests of the parties. It is a second chance for the parties, not a quality judgement of the first instance decision. In a great number of cases the claims have been modified so that the first instance decision is not even about the same matter as the appeal decision. As ro reviews, they are not a review of the case, they are a check if the procedural rules have been adhered to, in particular if the complaining party has been heard. If one looks at the r cases, many are attempts to ave a third look at the case and that is simply not what the system is for. Also in national non-patent systems are there only two true instances, the high court only dealing with questions of law. Kuifje, if you sat the eye, and are apparently serious about becoming a rep, I can recommend you to study the legal basics of democratic systems. Those will be provided to you when you take the national exam as well.

kuifje said...

Funny how easily comments can be misunderstood, when I think we agree 99%

Let's defuse a bit:

Nona3, I fully agree with you. I do understand the basics of of democratic legal systems.

Which is exactly why I commented in the beginning on MaxDrei's suggestion that other factors than purely objective considerations might sometimes play a role in decisions. This is indeed not how a democratic legal system should operate.

Then I switched to the purely human factor, of the person having taken (part in) a lower instance decision, who then gets implicitly criticised by the higher instance for having taken the wrong decision, without any chance of defending themselves.

I realise this may hurt this person. From this persons perspective , it would be nice to be able to justify him/herself.

But I know that there is no formal justification possible under the EPC, don't worry.

And yet, the lower instance might have had valid considerations.

It might therefore be valuable for the higher instance to understand these considerations.

And so, purely as a theoretical option, I can well imagine the value both for proper decision making, as well as for the mental health of the persons who took the lower instance decision, of an informal chat allowing the lower instance to explain its reasoning.

Myshkin said...

If a decision of the first instance is overturned, this does not mean that the first instance did a bad job. Even if the claims are identical, it is normal that reasonable people sometimes come to different conclusions. But in any event, examiners ony serve the patent system and their personal pride or feelings is not a reason to give them a right to be heard in the appeal procedure.

And yet, the lower instance might have had valid considerations.

It might therefore be valuable for the higher instance to understand these considerations.

Certainly, but those considerations should be present in the reasoning of the decision.

an informal chat
Imo, if there is to be any chat, it should be a formal chat, held in the presence of the parties.

Nona3 said...

As myshkin said: the considerations of the first instance are in their decision. Just as the considerations of the boards. It is the independence if the boards that forbids a closer contact, which also a guarantee for the parties that the second instance takes a neutral position. There is already some criticism that the boards are not truly independent as both instances are paid by the EPO. Also, it is normal that the instance whose decision is appealed is not a party as if they had an interest in the case. They haven't. You have heard that the system of the EPO is being attacked before German and British national courts? And there, too, the EPO is not a party. Again, an appeal does not serve to judge the work of the first instance, but to give the losing party the opportunity to save something of his case and to guarantee, in so far as possible, that the decision is correct.