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.

Allowability

[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.

Order

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.