In its petition for review the opponent argued that Board 3.2.03 had violated its right to be heard in opposition case T 928/10.
The petitioner explained that it had requested a hearing of the witnesses Namensen and Karlsson in its statement of grounds of appeal. In its reply to the summons to oral proceedings (OPs), it had asked for them to be heard as experts – if they were not to be heard as witnesses – on the plausibility of the technical effects invoked by the patent proprietor. During the OPs the petitioner had asked to be allowed to state the reasons for this request. The chairman had replied that this question would be discussed later and had asked the witnesses to wait outside. After the Board had found that the fifth auxiliary request satisfied the requirements of A 123 and A 84, it invited the parties to comment on inventive step. Then the discussions were closed, so that the petitioner had no opportunity to discuss the question of whether the witnesses should be heard.
The Enlarged Board (EBA) explained that the petitioner should have acted differently.
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[1.3.2] Regarding the first alleged procedural violation (according to which the Board of appeal (BoA) has not ordered the hearing of the witnesses and/or experts, Messrs Namensen and Karlsson), it should be noted that the petitioner has acknowledged that the Board, immediately after the discussion of the requirements of A 84 and A 123 related to the fifth auxiliary request and after the chairman of the BoA had announced that this request satisfied those requirements from a formal point of view, has invited the parties to present their arguments concerning the inventive step involved in the subject-matter of this request. Then the chairman has declared that the discussions were closed and the BoA has deliberated.
Thus, it was up to the petitioner to indicate, during the discussion of inventive step, that it was necessary to hear Messrs Namensen and Karlssons (sic) as witnesses or as experts, in order to complete its case in this regard. When the chairman of the Board closed the discussions on the fifth auxiliary request, at the latest (NB: “the closure of the discussions” has to be distinguished from “the end of the OPs”), the petitioner should have realised that its corresponding request had been dismissed (expressly or implicitly) by the BoA. Thus the petitioner should have reacted during the discussion of inventive step, between the closure of the discussion and the closure of the OPs at the latest, in order to raise the grievance (soulever le grief) under consideration.
[1.3.3] In the course of the OPs before the EBA, the petitioner has explained that it could not have raised an objection pursuant to R 106 because the BoA had already taken a negative decision. It had not been possible to interrupt the chairman of the Board when he announced the decision, which occurred immediately after the re-opening of the proceedings, after the final deliberation.
This argument is not persuasive because a party that requests a BoA to take a decision in its favour has to participate actively in the proceedings (see R 4/08 (NB: this should read R 2/08) [9.10])
First, the petitioner has admitted, during the OPs before the EBA, that it had not repeated its former request for a hearing of the witnesses/experts before the decision had been announced at the end of the OPs. Moreover, the moment at which the petitioner could have intervened was when the chairman of the Board announced the closure of the discussions for deliberation, i.e. well before the chairman announced the decision. It is at this moment that it should have requested the re-opening of the discussion if it had the intention to require [the BoA] to examine its request for a hearing of the witnesses or experts, respectively, or if it needed these persons to be admitted into the OPs so that they could assist it in its submissions regarding inventive step. Consequently, the petitioner has had the opportunity and, what is more, the duty of drawing the attention of the BoA to these facts and [should have pointed out] that it considered the fact that the Board did not proceed with those requests to be a procedural violation pursuant to A 112a (see R 17/11 ).
Moreover, the petitioner had been informed via the communication of the BoA dated August 2, 2011 […], which made the petitioner understand that the Board, “in application of Article 12(4) RPBA considers inadmissible the new facts, evidence and requests filed with the statement of grounds of appeal, i.e. in particular the declarations and requests for a hearing of additional witnesses (Messrs Karlsson, Larsson, Namensen and Nielsson or Nielsen or Nielssen or Nilsson)”.
Thus, the assertion of the petitioner according to which it had been surprised by the fact that the BoA did not order the hearing of the witnesses or experts, respectively, is considered not to be well-founded.
To sum up, because it had forgotten to raise the objection of the alleged procedural violation before the BoA had announced its final decision and had declared the OPs closed, the petitioner has not fulfilled the requirement expressed in R 106.
Consequently, in application of R 109(2)(a), the petition for review is clearly inadmissible in view of R 106 as far as the first alleged procedural violation is concerned.
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