Friday, 25 October 2013

T 1735/08 – In Its Own Time

This decision deals with the following request for correction of the minutes of the oral proceedings (OPs) before the Board of appeal, filed on July 12, 2012:

The Board explained that it did not see any reason to correct the minutes.

The opponent replied as follows, on September 19, 2012:

Here is what the Board had to say on that matter:

*** Translation of the German original ***

[1] Contrary to the opinion of the respondent/opponent 3, as far as the contents of minutes of OPs are concerned, the relevant legal basis is exclusively R 124(1). Accordingly the minutes shall inter alia contain the legally relevant (rechtserheblich ; NB: R 124 in its English version has only “relevant”) statements made by the parties.

[2] In the present context, the decisions of the Board, the operative part (Tenor) of which is incorporated into the minutes of the OPs, and the reasons of which are to be provided later on, are also [considered to be] legally relevant. However, in application of R 124(1) it is not required, nor is it customary in proceedings before the Board of appeal of the EPO, to introduce into the minutes that the Board has expressed a provisional opinion on [compliance with] the patentability requirements before announcing the decision.

[3] When, as here, the decision orders the impugned decision to be set aside and the case to be remitted to the first instance for further processing, the indication of the set of claims and the reasons, why the Board is of the opinion that this set of claims, which forms the basis for the further decision of the first instance, does indeed comply with certain requirements governing patents (Patentierungs-voraussetzungen) (such as A 123(2) in the present case), are not given in the order of the decision or in the minutes of the proceedings but in the reasons for the decision. This way of proceeding corresponds to the requirement that the operative part of the decision (Entscheidungsformel) be concise.

[4] Moreover, the operative part given in the minutes exactly corresponds to the text […] read out by the chairman of the Board during the OPs after the factual debate had been closed.

[5] Insofar as the respondent/opponent 3, in its letter dated September 19, 2012, justifying the request for correction of the minutes, refers to a passage annexed to the summons to OPs and dated March 20, 2012,  this [submission] cannot be successful because, as clearly and unambiguously stated at the beginning of the communication, this is a provisional and non-binding opinion the purpose of which is to prepare the OPs. […]

The request for correction of the minutes of the OPs is dismissed.

Should you wish to download the whole decision (in German), just click here.

The file wrapper can be found here.


Anonymous said...

A correction of the minutes can (should) succeed provided they do not reflect what happened during oral proceedings. If O.P. are summarized in the written decision and not in the minutes, then the only way to have this corrected is R.140 - quite a bit more challenging, I suspect. This may become more relevant now that BoA decisions may proceed further not only to 1st instance but also to EBoA.

Myshkin said...

I don't think I ever saw a formal decision on a request for correction of the minutes before.

I'm also not sure there is a legal basis for such decisions. Minutes are not issued through a decision. As far as I am aware, minutes are also not corrected through a decision. I do not see why the rejection of a request to correct the minutes should qualify as a decision.

On the other hand, it is not uncommon for a Board to explain in the decision why a request made during the OP to record a particular statement in the minutes was refused (see e.g. T 2405/10).

Alpha said...

I was told by an attorney once that one can use arguments at Oral Proceedings that could not be used in writing, referring to arguments which more daring. Minutes are an important way to keep such things under control, and so they should be regarded as important.

Anonymous said...

Minutes reflect what happened during OP. They do not contain arguments or reasoning, those can be found in the written decision, insofar as they are relevant for the final decision taken. So if the reason to refuse a request is eg 123(2), the final decision, which is the revocation of the patent or its maintenance on the basis of a different request, is in the minutes, not 123(2). I think that is, what the board said and where the representative went wrong.

Anonymous said...

It is daring to make daring statements during OP because if they influence the decision, they may well be summarized in the written decision.

Anonymous said...

It is daring to make daring statements during OP because they could be so funny that examiner jots them down verbatim, for the board's enjoyment.

Anonymous said...

Myshkin, don't you think the Boards know what they are doing?

Myshkin said...

They know what they are doing, but I can still question whether what they are doing is correct :-)

I believe other Boards do not issue formal decisions on requests for corrections of the minutes, but only issue a letter / communication.

I think it could even be doubted whether the Board (or Division) as such should reply. The minutes are signed by the minute taker (who is not necessarily a member of the Division or Board) and by the person who conducted the oral proceedings (i.e. the chairman). The minutes are therefore not issued by the Division or Board. Why should the Division or Board then be competent to deal with requests for correction of those minutes?