R 1/13 – The Premise

This is a petition for review of decision T 808/11 of Board of Appeal (BoA) 3.5.03, which had dismissed the patent proprietor’s appeal against the decision of the Opposition Division (OD) to maintain the patent in amended form.

During the oral proceedings (OPs), the Board had raised a clarity objection, in response to which the patent proprietor filed new auxiliary requests. There was a discussion in respect of the new requests at the end of which the chairman stated that amended claim 1 appeared to be clear. After a deliberation, the Board announced that the new requests were not admitted due to a prima facie lack of clarity, dismissed the appeal and terminated the proceedings.

The patent proprietor filed a petition for review. It argued that its right to be heard had been violated, for the following reasons:

• The amendments corresponded to a late objection and should have been admitted.
• The right to be heard under A 113 enshrines the possibility of a full reaction to overcome any late raised objection. This right can be safeguarded only by allowing a full discussion on the merits of new requests. Such a thorough discussion can in turn only be achieved by admitting new requests filed in response to the late objection. A prima facie assessment based on a cursory review made to establish whether a new request is likely to overcome an objection, such as that carried out in this case, is not adequate.
• A 113 overrules Article 13(1) RPBA. The fundamental right to a thorough discussion of new requests filed in response to late objections cannot be overruled by an assessment as to the likelihood of a new request overcoming the late objection, nor can the submission of such requests be considered to be late.
• According to consolidated EPO jurisprudence, prima facie examination is a legal assessment made available to Divisions and Boards for excluding those late filed submissions, e.g. new claims or fresh prior art, which may represent an abuse of the procedure. Responding to a late objection by filing new requests cannot represent a procedural abuse but rather follows from the legitimate right to respond to new issues.
• Assuming that the Board did have a discretion under Article 13(1) RPBA not to admit new requests in response to new objections, it exercised that discretion in an unduly restrictive manner. Considering the belatedness of the objection, neither the complexity of the subject-matter, nor the state of the proceedings, nor procedural economy could justify the adverse exercise of discretion.

The Enlarged Board (EBA) was not impressed:

[8] A 113(1) provides:

“(1) The decisions of the EPO may only be based on grounds or evidence on which the parties concerned have had an opportunity to present their comments.”

[9] The only violation of that provision alleged by the petitioner is the decision of the BoA not to admit the new requests into the appeal proceedings. However the EBA cannot find any suggestion in the petition of a denial of the petitioner’s opportunity to present its comments on the admissibility of those requests. Indeed, the petitioner refers to and relies on the discussion of the admissibility of those requests which took place during the OPs. Further, the petition itself, all of the five declarations filed therewith, the petitioner’s request to amend the minutes, the respondent’s observations on that request, and the Board’s communication responding to that request all refer to such a discussion. Further still, while the minutes of the OPs do not actually mention the discussion on that subject they do, by reference to the filing of the new requests with annexed copies and by reciting the formal requests of the petitioner, provide further confirmation that a discussion of the new requests took place. The same is true of the BoA’s written decision which refers to the filing of the new requests and the appellant’s view thereon.

[10] The EBA’s case law makes clear that it is sufficient for the purposes of A 113(1) that a reason for a decision under review corresponds to an argument which has been put forward by another party so that the petitioner was aware of it and thus was not taken by surprise. In such circumstances and in the absence of any contention or indication that a BoA has refused to hear the petitioner, it cannot be established that the petitioner had no opportunity to comment within the meaning of A 113(1) (see R 4/08 [3.3]).

[11] In decision R 4/08, the petitioner was the opponent and the decision related to that opponent’s alleged lack of opportunity to comment on the admissibility of the patent proprietor’s new requests. The principle in that decision must apply with at least as much – if not more – force when, as in this case, the petitioner is the patent proprietor and the issue is the admissibility of the petitioner’s own requests.

It is not merely undisputed fact but also part of the case advanced by the petitioner that it knew the objection (lack of clarity) to its previous request, that it filed its new requests to overcome that objection, that it argued its case for admissibility of those requests, and that the Board decided not to admit the requests because they were prima facie not clear and thus did not overcome the objection. Far from showing a denial of an opportunity to comment, the petition confirms that the opportunity occurred.

[12] The petitioner’s view of A 113(1) […] appears to be at variance with the case law (see point [10] above) and the EBA does not agree with the petitioner’s various arguments based on its view of the law. The petitioner refers to A 113 but quite clearly intends only A 113(1). Its arguments, four in number, are to the effect that the BoA did not consider the new requests sufficiently or was obliged to admit the new requests or exercised its discretion incorrectly and each argument is said to demonstrate a violation of A 113. That is inconsistent with the petitioner’s statement in the petition […]:

“The present petition is filed under A 112a(2)(c) on the grounds that a fundamental violation of A 113 occurred in the appeal proceedings of case T 808/11. The negatively affecting decision, hereinafter also “the decision”, violates A 113 in having not admitted the new third and fourth auxiliary requests (also “the new requests”) into the proceedings and in having dismissed the appeal immediately after announcing the non-admittance.”

It is evident that the decision of the BoA is the only alleged violation of A 113 and that the petitioner’s arguments do not each demonstrate a separate violation but are intended to provide reasons why the decision is said to be a violation. The EBA considers each of the four arguments in points [13] to [17] below.

[13.1] The petitioner’s first argument is that A 113 enshrines the possibility of a full reaction to overcome any late-raised objection, a right that can only be safeguarded by allowing a full discussion on the merits of new requests filed in response to a late objection which in turn can only be achieved by admitting such new requests. A prima facie assessment to establish whether a new request is likely to overcome an objection is not adequate to satisfy this supposed right to a thorough discussion under A 113 of all the points at issue. As support for this proposition, the petitioner cited a passage from decision R 3/10 [2.10].

[13.2] This argument is based on the false premise that “A 113 enshrines the possibility of a full reaction to overcome any late raised objection”. In fact A 113(1) does no such thing. It simply provides that decisions shall not be based on matters on which parties have not been heard or, to be precise, on which parties concerned have not had an opportunity to comment.

The decision in question here was whether or not to admit the petitioner’s new requests and, as already explained (see point [9] above), the petitioner had and used the opportunity to comment on that issue.

[13.3] The petitioner’s suggestion that the right to be heard carries with it, in the case of requests filed in response to late objections, a right to a full discussion which transcends the requirement of admissibility is simply incorrect. A late objection may lead to more latitude in the filing of requests in response but there is no certainty of admissibility, let alone of a more thorough discussion if admissibility is achieved. If the petitioner was correct, any request filed in response to a late objection would be admissible even if it clearly had no prospect of overcoming the objection. The requirement of admissibility for late-filed requests serves several purposes – inter alia to ensure the requests offer a prospect of success – and the requirement is not suspended for latecomers, however understandable the lateness of filing their requests may be. If that were not the case, Article 13 RPBA would have little or no purpose (as the petitioner’s second argument tacitly recognizes - see point [14.2] below).

[13.4] In decision R 9/11 [3.2.2] the EBA held that Article 13(2) RPBA, which gives parties a right to comment on new submissions filed by others, does not give those parties automatic admissibility of their new requests; it follows that there can be no such right of automatic admissibility for those making the new submissions. The petitioner submitted […] that R 9/11 was distinguishable from the present case and, in as much as the facts are different, that is correct but that does not mean that the legal significance of the earlier case is to be ignored (see R 11/08 [11]). The procedure for new requests is in fact well summarized in the warning to the appellant in the BoA’s communication […]:

“If amended claims are filed by the appellant, it will be necessary at the OPs to discuss their admissibility and, if these claims are held admissible, to discuss the question of whether or not the amendments, the claims and their subject-matter comply with the requirements of the EPC...”

The EBA also notes that, in the opposition proceedings, the petitioner filed an amended first auxiliary request during the OPs which was held inadmissible for several reasons, apparently after the OD had conducted the usual admissibility appraisal without (so far as the OD’s decision and the minutes of the OPs show) any objection on the part of the petitioner.

[13.5] The petitioner’s only support for its argument was a one-sentence passage it cited from the EBA’s decision R 3/10 which, with an insertion added by the petitioner, reads:

“This right [the right to be heard] would be undermined if it were made dependent on an evaluation as to whether the party’s standpoint is likely to be justified”.

The complete passage from which that sentence is taken reads as follows:

“It is the very essence of the right to be heard that the party is given a full opportunity to defend its case and to persuade the deciding body that its position is the correct one. This right would be undermined if it were made dependent on an evaluation as to whether the party’s standpoint is likely to be justified”.

Thus, in the case of the admissibility of its new requests, the petitioner had to be given a full opportunity to defend its case for admissibility and to persuade the BoA that its position was correct. As already observed (see point [9] above), that is what happened in the present case. In its proper context, the second sentence means no more than that a party should not be denied an opportunity to be heard because he may ultimately succeed or fail. That also happened in the present case in which the petitioner was heard on the admissibility of the new requests even though it ultimately lost (although it would appear from the petitioner’s own view of the chairman’s remark that the Board’s evaluation while hearing the petitioner was that it was likely to succeed). The passage from R 3/10 is entirely consistent with the EBA’s other jurisprudence on the right to be heard (see points [10] to [11] above).

[14.1] The petitioner’s second argument is that A 113 overrules Article 13(1) RPBA since the fundamental right to a thorough discussion of new requests filed in response to late-raised objections can neither be overruled by an assessment as to the likelihood of a new request overcoming that objection nor be considered late-filed, so the Board has no discretion in respect of the admissibility of such requests.

[14.2] This argument is no more than a necessary corollary of the previous argument which, as already observed (see point [13.3] above) would mean that Article 13 RPBA has little or no purpose. It is therefore an argument which the petitioner had to make to be consistent. However, the reasons for rejecting the argument are also consistent with those for rejecting the previous argument – it starts from the same false premise of a “right to a thorough discussion” and, once that false premise is dispelled, the argument cannot take matters any further.

[15] The petitioner’s third argument is that, according to consolidated EPO jurisprudence (an expression the petition does not explain), prima facie examination is a legal assessment for excluding those late filed submissions which represent an abuse of the procedure. Since in the present case, the petitioner was responding with new requests to a late objection, the new requests were not an abuse of procedure so a prima facie assessment resulting in non-admissibility was also a fundamental violation of the right to respond fully to new issues and represents a fundamental violation of A 113. Again, this argument supposes that the petitioner’s fallacious view that A 113 provides a “right of full response” which would avoid any requirement of admissibility is correct. The argument is also circuitous and self-serving – it pre-supposes that an admissibility assessment is only required for submissions which represent (undefined) abuses of procedure, then asserts that the petitioner’s new requests were not an abuse of procedure, and thus absolves those requests from the need for an admissibility assessment.

[16.1] The petitioner’s fourth and final argument was that, despite the previous arguments and assuming that the Board did have a discretion under Article 13(1) RPBA not to admit new requests in response to late objections, the Board exercised that discretion in an unduly restrictive manner. Thus, by reference to the provisions of that Article, the new requests could not be considered late and did not introduce any complexity as they attempted to overcome the objection; the state of the proceedings could not apply since the petitioner was responding to a new objection to terms which had been on file since the beginning of the appeal procedure; and procedural economy could not justify the adverse exercise of discretion since that would outweigh the right of the petitioner to defend its case. Thus the Board’s exercise of its discretion under Article 13(1) RPBA offended the more fundamental rights enshrined in A 113.

[16.2] Yet again this argument supposes “more fundamental rights enshrined in A 113” than can be read into that Article and, additionally, that those rights alleged to flow from A 113 override Article 13 RPBA. It is a combination of the three earlier arguments presented as an assessment by reference to the three criteria – complexity of new subject-matter, the state of the proceedings, and procedural economy – mentioned in Article 13(1) RPBA. The petitioner however overlooks that Article 13(1) RPBA states that the Board’s discretion shall be exercised in view of inter alia those criteria. Thus other considerations relevant to the admissibility issue in question can, and in practice are, taken into account. In the case of a new request with amended claims, one well-established criterion is whether the claims are likely to overcome the objection or objections in response to which the request has been filed.

[16.3] While the exercise of its discretion by the Board in this particular case is a substantive issue with which the EBA cannot interfere in petition proceedings (see for example R 9/11 [3.2.1]), it seems highly probable that in arriving at the decision under review the BoA did use the criterion of whether the claims were likely to overcome the objection in question. That is not only suggested by the reference in the respondent’s letter of 12 November 2012 to a detailed discussion on admissibility which ranged across clarity, support, added matter, novelty and inventive step […], but is endorsed by the petitioner itself which referred to that reference as an acknowledgment that a substantial amount of the argument at the OPs was about the admissibility of the new requests […], and is also confirmed by the decision under review which states in terms […] that the new requests were inadmissible because they were not clear within the meaning of A 84.

[17] For the reasons in points 9 to 16 above, and apart from the fact that the petition itself shows that the petitioner had an opportunity to comment on the admissibility of the new requests, the EBA cannot accept that the petitioner’s arguments demonstrate any violation of A 113. In further support of that conclusion the EBA notes, as it did in its preliminary opinion, that the petition offers no explanation as to why, when the petitioner had the opportunity to discuss admissibility of the new requests before the BoA, it made no reference to the arguments on which it now relies to show a violation of A 113. If, when it filed the new requests, the petitioner believed that the requests were automatically admissible and that the Board had no alternative but to proceed directly to a consideration of their allowability, it is to say the least strange that it did not make that submission to the BoA. The petitioner’s only answer to this is that it did not do so because of the chairman’s comment, or more precisely the interpretation the petitioner placed upon that comment. However, the petitioner and its representative were responsible for the conduct of their case and it was for them to submit the necessary arguments to support their case on their own initiative and at the appropriate time (see R 2/08 [8.5, 9.10] and R 13/11 [18]). That they did not say to the BoA when, as the case they now make in the petition proceedings makes clear, they had the opportunity to do so, that the Board was obliged to admit the new requests can only mean either that they did not at the time believe in (or perhaps even think of) those arguments and/or that they chose not to make the submission.

[18] All its previous arguments being wholly unconvincing, the only remaining argument deployed by the petitioner to support a denial of opportunity to comment is that the petitioner was surprised by the decision not to admit its new requests because of the remark by the chairman of the Board that the requests appeared to be clear. The petitioner submitted, though not in the petition, that it took that remark as a ruling on admissibility and that the legal basis for that is Article 15(4) RPBA […]. The EBA also finds this argument unconvincing for three reasons – the very nature of the remark, the purported legal basis of the argument, and its own jurisprudence on “surprise” arguments.

[19.1] As regards the nature of the chairman’s remark, the EBA notes that it was no more than a remark by one member of the BoA during the discussion on the admissibility of the petitioner’s new requests. Prior to the petition – in the petitioner’s request to amend the minutes of the OPs – and in the declarations filed with the petition, it is only referred to as an “indication” or “expression” by just the chairman. In the petition however it is elevated to the status of an indication or opinion of the whole Board, for example: “the positive indication given by the Board” […], “the Board acknowledges that the positive opinion was given” […] and “the Board gave an indication” […], and this is used to suggest there was a “sudden change of opinion of the Board” […].

The petitioner then proceeds to suggest that it was mislead by alleging that “correctly relying on this positive indication given by the Board, [it] had no doubts that at least admissibility of the new requests was accepted” […] and that it “could reasonably assume that any further submissions or requests were superfluous and thus refrained, in order to behave according to indications of the Board and to avoid an unnecessary lengthening of the OPs, from presenting further arguments” […].

At the OPs before the EBA, the petitioner went still further […] and called the remark a “ruling” on the admissibility of the requests which meant that the clarity objection had been overcome. It also submitted that it was “made to rely” on the chairman’s indication […] as if it was compelled to accept it without question.

[19.2] The EBA sees no merit in such re-interpretation of a remark made by one member of the Board into first an opinion of the whole Board and subsequently into a ruling of the Board. The petitioner and its representatives must have known at the time that the remark was that of one member only and any additional significance they gave it had nothing to do with the proceedings. To seek subsequently to elevate the remark into something more in order to support a petition for review is not merely unconvincing but implausible. The submission that the chairman’s remark prompted the petitioner’s representative to take instructions from the petitioner on a possible remittal of the case to the OD carries no weight - the fact that the petitioner or its representative chose to take any steps on the basis of their inherently implausible interpretation of the remark cannot make that interpretation any less implausible.

[19.3] The very wording of the petitioner’s argument reveals its weakness. It claims that the positive indication of the chairman’s remark meant there was no expectation that the Board would conclude that the new requests would not be admitted so no objection could have been raised by the petitioner […]. Such an argument is logically flawed: the expectation of one (desired) result does not preclude arguing against another (undesired) result.

The petitioner’s various submissions on this theme all suffer from this “would/could” weakness, for example:

“Based on the Board’s positive indication, the petitioner could reasonably assume that any further submissions or requests were superfluous and thus it refrained from presenting further arguments” […];

“the chairman had given an indication that the new requests were clear so the petitioner had no reason to make and was not induced to make further submissions” […]; and

“No objection was raised under R 106 because, on the basis of that positive indication, there was no reason to expect that a procedural violation would occur” […].

It is apparent that the petitioner conducted its case in reliance on its own assumptions. It was of course entitled to do that – as already observed (see point [17] above), the petitioner and its representative were responsible for the conduct of their case and it was for them to submit the necessary arguments to support their case on their own initiative and at the appropriate time (see R 2/08 [8.5, 9.10]). It follows that only the petitioner and its representative can be responsible if such assumptions prove incorrect and the petition for review procedure is not a remedy for the consequences.

[20] As regards the legal basis for the argument, the EBA observes first that the petitioner did ultimately acknowledge the weakness of the argument when, in reply to a question asked during the OPs, it agreed that the chairman of the Board had not actually said that the new requests were admissible. It thus became plain beyond doubt that the petitioner’s argument was based only on the interpretation it had chosen to give to the remark.

The EBA also has no hesitation in dismissing the petitioner’s argument that Article 15(4) RPBA has the effect that, if a chairman gives an indication, a party has to rely on it. Article 15(4) RPBA reads:

“The Chairman presides over the OPs and ensures their fair, orderly and efficient conduct.”

Those words simply cannot be interpreted to mean that a remark or indication by the chairman has to be relied on by a party without question, let alone that it has the status of a ruling or the removal of a previous objection. If the chairman could make remarks with any such effect during OPs and before the parties have concluded their submissions, that would in itself amount to a violation of A 113(1). It would also contradict Articles 15(5), 15(6) and 19(1) RPBA.

[21] Lastly the EBA observes that this line of argument is contrary to its established case law which has consistently held that, while surprise may be an understandable subjective reaction of a party which expects to but does not succeed, it cannot affect an objective review of the decision - so if the petitioner knew the issues which might be raised and had an opportunity to comment thereon, its subsequent surprise is of no relevance (see R 12/09 [13]; R 15/10 [11] ; R 13/11 [18]; and in particular R 6/11 [5.3], in which as in the present case the petitioner’s belief that the Board would decide in its favour was held to be immaterial to the fulfillment of requirements pursuant to A 113(1)).

[22] The petition does not show that any denial of opportunity to comment occurred and thus no violation of A 113 has been established. Therefore it is not necessary to consider the petitioner’s arguments that the alleged violation was fundamental. It follows from the absence of any violation of A 113 that the petition is clearly unallowable.

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