Tuesday, 24 September 2013

R 4/13 – Afterthoughts

This is a petition of review concerning case T 810/09 where Board 3.2.06 dismissed the appeal of the patent proprietor against the revocation of its patent.

The petition was not successful, but the decision contains some noteworthy statements.

The second complaint concerned an alleged violation of the right to be heard due to the fact that the “essentiality test” had not been considered:

[3.1] The file shows that the petitioner raised this issue in its grounds of appeal and that the Technical Board in its communication expressed its preliminary view that the test was not applicable in the circumstances of the case. It is not disputed that the point was then discussed during the oral proceedings (OPs) and that during the discussion the Board indicated its disagreement with the petitioner’s submission. In the OPs before the Enlarged Board (EBA) the petitioner said that the Technical Board had indeed made its view very clear that the “essentiality test” was not applicable. Further, it is not suggested in the petition that the petitioner did not know during the OPs that the Technical Board had come to the conclusion that the subject matter of the petitioner’s main request infringed A 123(2) and was not allowable and thus that the petitioner’s submission had not been accepted.

[3.2] No objection under R 106 was however raised by the petitioner. In the petition it was said that the petitioner was not able to present its arguments pointing to a procedural defect and a violation of the right to be heard because the Office’s September 2012 presentation on Amendments was not then available to the petitioner.

[3.3] In its communication the EBA said it did not understand what the procedural defect was alleged to have been or how the petitioner’s right to be heard was said to have been violated. The petition did not appear to substantiate any reason why the complaint which the petitioner was now making could not have been raised during the OPs before the Technical Board. The presentation said to have been issued by the EPO appeared to be irrelevant in this respect.

[3.4] In OPs before the EBA the petitioner in effect said that its right to be heard was infringed because the petitioner was not in a position to answer the Technical Board’s assertion that the essentiality test was not applicable. If the petitioner had had the Office’s presentation it might have been able to persuade the Technical Board otherwise.

[3.5] The petitioner, however, was not only in a position to answer the Technical Board’s view on the essentiality test but actually did so. The petitioner did not raise an objection under R 106 when the Board said the request was not allowable. It is always the case that a party may come across materials after a decision has been taken that could possibly have helped its case. But this has nothing to do with the right to be heard.

[3.6] As regards any complaint of a violation of the right to be heard in respect of this complaint, the petition is therefore clearly inadmissible.

[3.7] In the petition this complaint is headed “Fundamental procedural defect and violation of the right to be heard due to non-consideration of the so-called ‘essentiality test’” (underlining added by the Board). In the body of the petition under this complaint reference is also made to a “procedural defect and a violation of the right to be heard” (underlining added by the Board). To the extent that this complaint was intended to embrace a fundamental procedural defect under A 112a(2)(d), no such complaint was substantiated in the petition or explained subsequently (see also point 2.1, above). It was not alleged that any objection under R 106 was made in respect of this complaint or that the petitioner was unable to raise such an objection.

[3.8] As regards this complaint as a whole, therefore, it is clearly inadmissible.

The third complaint was that the right to be heard had been violated because a group of auxiliary requests had not been admitted.

[4.1] In the petition it was said that the reasoning given by the Technical Board for admitting these requests was virtually identical to the argument presented by Opponent 2 during the OPs. The petitioner nevertheless said that during the OPs the Technical Board did not “argue[] accordingly, but judged subject matter of claim 1 to contravene the requirements of A 123(3) as it was not prima facie clear whether the amendment broadened the scope of protection or not. Accordingly, the arguments presented in the written decision have not been presented or acknowledged by the Board of appeal during OPs.” Further arguments were advanced as to why the right to be heard had been infringed […].

[4.2] In its communication the EBA remarked that this complaint appeared to be partly based on something which the petitioner said it only learnt when it received the written reasons for the Board’s decision. The EBA said that it would therefore provisionally assume in the petitioner’s favour that the requirements of R 106 were satisfied. The EBA, however, went on to say that it again failed to understand the legal basis of the complaint. The petitioner did not allege that it was not given the opportunity to argue why this group of requests was admissible. Indeed the petitioner itself said that the written reasons given by the Board corresponded to the arguments of Opponent 2. It followed that the petitioner knew what the possible arguments against these requests were and had the opportunity to respond.

[4.3] During the OPs before the EBA the petitioner said that the Technical Board appeared to be uncertain that the objection was valid and so far as the petitioner was concerned the objection was technical nonsense anyway (it is not necessary to go into the petitioner’s explanation of why this was so). In effect the petitioner argued that if it had known the Board was going to take Opponent 2’s arguments seriously it would have wanted to make further submissions.

[4.4] The petitioner had heard Opponent 2’s submissions and had made its own in answer. The Board then decided against the petitioner. This can only have been because the Board did not agree with the petitioner. If the petitioner thought it needed to make further submissions it should have asked for the debate to be reopened. It did not do so. If it thought nevertheless that its right to be heard had in some way been infringed it could have raised an objection under R 106. It did not do so. To the extent that the petitioner was not told of the Board’s reasons for refusing these requests at the OPs, the case law of the EBA has repeatedly emphasised that it is not an aspect of the right to be heard under A 113(1) that a party is entitled to know in advance of the reasons why a board intends to reject a request (see e.g., decision R 12/09 [11]). This fact could therefore not constitute an infringement of the right to be heard. Even if the petitioner only learnt that the Technical Board had agreed with Opponent 2’s arguments when it received the written reasons, the petitioner accepts that these reasons fully accorded with Opponent 2’s arguments, being arguments which the petitioner had had the opportunity to answer and had in fact answered. As the EBA has said many times, the fact that the petitioner considers the Technical Board’s reasons are wrong is wholly irrelevant. See, e.g., decision R 2/08 [8.2].

[4.5] As regards this complaint, therefore, and whichever way the matter is looked at, even if the petition were not clearly inadmissible it is clearly unallowable.

Complaint # 4 also concerned the non-admission of requests

[5.1] In respect of this complaint the petitioner raised an objection under R 106 which corresponds to the objection now raised. The Technical Board dismissed the objection for reasons set out at point 11 of its written decision. As regards this complaint, therefore, the petition is admissible.

[5.2] The Technical Board refused to admit these requests relying on the discretion referred to in Article 12(4) RPBA. The opening words of this article state:
“(4) Without prejudice to the power of the Board to hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the first instance proceedings, ...”
[5.3] In the petition it was said that these requests were different from the second auxiliary request withdrawn before the Opposition Division (OD) and it was pure speculation to say, as the Technical Board did, that they could have been presented during those proceedings.

[5.4] It is correct that these requests did not correspond exactly to the second auxiliary request which was withdrawn before the OD. However, they are clearly based on this request and contain the crucial combination of two features that the splines are flush with the outer peripheral surface of the axle body and do not extend radially outwardly relative to the outer peripheral surface of the axle body. The Technical Board also took account of this point […]. However, it is not necessary to go into the issue further since in reality it is not disputed that auxiliary requests III.2 and III.3 could have been presented before the OD. In cases where the discretion not to admit requests is exercised by a Board in reliance on this part of Article 12(4) RPBA it is inevitably a matter of speculation whether and in what circumstances the party would have filed such requests. Such speculation is however irrelevant as regards the existence and exercise of the discretion and the Technical Board quite correctly did not enter into such speculation. In reality it is not therefore in dispute that the Technical Board had jurisdiction not to admit the requests.

[5.5] The point about the admittance of these requests had been raised in the Technical Board’s communication and the petitioner was heard on it at the OPs. The EBA has repeatedly pointed out that in such circumstances a petition for review cannot be used as a means of reviewing the way in which a judicial body such as a Board of Appeal has exercised its discretion in relation to a procedural matter: see decision R 10/09 [2.2] and decision R 11/11 [8].

[5.6] In the course of the OPs before the EBA the petitioner also emphasised that these requests, with the additional features added to those of the second auxiliary request withdrawn before the OD, solved all the objections by the Board to its previous requests. However, it was not suggested that the petitioner did not present or was prevented from making this argument to the Technical Board. To the extent that it was a relevant consideration therefore the petitioner had the opportunity to be heard on the point.

[5.7] As regards this complaint, therefore, it is clearly unallowable.

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

The file wrapper can be found here.


Anonymous said...

What a waste of the valuable time of the EBA! No wonder the boards have a backlog if they have to spend it on yet another attempt to abuse the revision system as a further instance. I wonder what the parties, who have to pay for this, would say if they understood this abuse of their resources. Or are they the ones pressing the representatives into this senseless fight?

MaxDrei said...

Parties to proceedings at the EPO are rational businessmen, who take rational business decisions. Even when the final outcome at the EPO is not in the slightest doubt, there can be good business reasons for being able to say in other discussions "The issue at the EPO is not yet finally decided. Proceedings are still pending. Anything is possible".

Anon says the time of DG3 is "valuable"? I question that. From the fees it charges parties to its proceedings, it seems not. Perhaps DG3 should institute a "Loser Pays" rule?

Anonymous said...

When there is not the slightest doubt about the outcome, telling business partners that "anything is possible" could come back to haunt the client. The client would be telling lies. In any event, filing a frivolous petition for review may be a rational business decision, but it is still an abuse of the system.

If all applicants that could afford to lose the money would act like this, the system would collapse and a new patent system would have to be constructed seeking a new balance between the interests of all parties involved that is overall less advantageous for the parties and society as a whole.

Luckily most applicants do not choose to take this path.

The anonymous raises the question whether in this case the client actually knew the fight was senseless. Did the professional representative inform him to the best of his abilities?

Another question is whether the professional representative's abilities enabled him to know that this fight was senseless? Did he realise there was absolutely no way that the EBA would accept his argument that not knowing about some powerpoint presentation had violated his right to be heard?

I do not know the answers to these questions.

Regarding the question whether the time of DG3 is valuable, maybe MaxDrei is trying to say that there is no excuse for not very considerably raising the appeal fee?

Anonymous said...

The reason for not raising the fees is the access to justice. On a practical level, it would not prevent big parties from frivolous behaviour, but it would hinder small parties to defend a reasonable case. Perhaps a system with a high fee that would (partly) be reimbursed when the case is won?